Filed on behalf of TQ Delta, LLC
`By: Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: pmcandrews@mcandrews-ip.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ARRIS GROUP, INC.,
`Petitioner,
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01160
`Patent No. 8,611,404
`_____________
`
`PATENT OWNER’S MOTION TO EXCLUDE INADMISSIBLE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`
`
`By: Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: pmcandrews@mcandrews-ip.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ARRIS GROUP, INC.,
`Petitioner,
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01160
`Patent No. 8,611,404
`_____________
`
`PATENT OWNER’S MOTION TO EXCLUDE INADMISSIBLE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01160
`U.S. Patent No. 8,611,404
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner TQ Delta, LLC (“Patent
`
`Owner”) hereby moves to exclude certain of Petitioner’s exhibits for lack of
`
`admissibility under the Federal Rules of Evidence.1
`
`In particular, Patent Owner moves to exclude portions of Exhibit 1003 and
`
`to exclude Exhibits 1007, 1008, 1010, 1011, 1012, 1014, 1015, 1016, and 1019.
`
`II.
`
`
`
`PORTIONS OF EXHIBIT 1003 AND EXHIBITS 1007, 1008, 1010,
`1011, 1012, 1014, 1015, 1016, AND 1019 SHOULD BE EXCLUDED
`
`A.
`
`Paragraphs 21-23, 25-28, and 147-249 of Exhibit 1003 should be
`excluded as irrelevant under Fed. R. Evid. 402
`
`The Board should exclude Paragraphs 21-23, 25-28, and 147-249 of Exhibit
`
`1003 because they are not relevant. Exhibit 1003 is the declaration of Petitioner’s
`
`expert.
`
`Petitioner relied on Paragraphs 21-23, 25-28, and 147-249 of Exhibit 1003 at
`
`least at pages 15-16, 19, 28-29, and 46-58 of the Petition. Patent Owner timely
`
`objected to Exhibit 1003 on the ground of relevance. See Paper 10 at 2.
`
`
`1 Patent Owner does not waive its objections to Petitioner’s improper new
`
`arguments and evidence submitted for the first time on Reply. This motion only
`
`addresses inadmissibility under the FRE.
`
`2
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01160
`U.S. Patent No. 8,611,404
`
`
`The Board should exclude Paragraphs 21-23, 25-28, and 147-249 of Exhibit
`
`1003 because those paragraphs are not relevant to the ground upon which
`
`institution was based. The Petition included two grounds – (1) alleged invalidity
`
`over the combination of Bowie (Ex. 1005), Vanzieleghem (Ex. 1006), and the
`
`1995 ADSL Standard (Ex. 1009), and (2) alleged invalidity over T1E1.4/97-161R1
`
`(Ex. 1007), T1E1.4/97-319 (Ex. 1008), and the 1995 ADSL Standard. The Board
`
`instituted review based on the first ground but declined to institute review based on
`
`the second ground. See Paper No. 8 at 2, 15-16. Petitioner relied on Paragraphs
`
`21-23, 25-28, and 147-249 of Exhibit 1003 solely to support the second ground of
`
`invalidity provided in the Petition. Therefore, the testimony at those paragraphs is
`
`irrelevant to the issues as trial and should be excluded pursuant to Fed. R. Evid.
`
`402. See Fed. R. Evid. 402 (“Irrelevant evidence is not admissible.”).
`
`B.
`
`Exhibits 1007, 1008, 1010, 1011, 1012, 1014, 1015, and 1016 should
`be excluded under Fed. R. Evid. 402, 403, 802, and 901
`
`The Board should exclude Exhibits 1007, 1008, 1010, 1011, 1012, 1014,
`
`1015, and 1016 because they are (1) not relevant, (2) will cause confusion, delay,
`
`and a waste of time, if admitted, (3) are hearsay, and (4) are not authenticated.
`
`Exhibit 1007 is purportedly a T1E1.4/97-161R1 paper entitled “Warm Re-
`
`Start for ADSL.” Petitioner relied on Exhibit 1007 at least at pages 19, 28, 29, 47,
`
`and 52-55 of the Petition. Exhibit 1008 is purportedly a T1E1.4/97-319 paper
`
`3
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01160
`U.S. Patent No. 8,611,404
`
`entitled “Power Down in Multicarrier Transmission.” Petitioner relied on Exhibit
`
`1007 at least at pages 14, 20, 28, 47, and 50-58 of the Petition. Exhibit 1010 is
`
`purportedly a Standards Committee T1 – Telecommunications Procedures Manual.
`
`Petitioner relied on Exhibit 1010 at least at pages 14-16 of the Petition. Exhibit
`
`1011 is purportedly a T1E1.4/97-362 Meeting Report. Petitioner relied on Exhibit
`
`1011 at least at pages 17-19 and 28-29 of the Petition. Exhibit 1012 is purportedly
`
`a T1E1.4/97-463 Meeting Report. Petitioner relied on Exhibit 1012 at least at page
`
`17 of the Petition. Exhibit 1014 is purportedly correspondence from the Alliance
`
`of Telecommunications Industry Solutions to the Federal Communications
`
`Commission. Petitioner relied on Exhibit 1014 at least at pages 15 and 16 of the
`
`Petition. Exhibit 1015 is purportedly an Aware, Inc. Annual Report. Petitioner
`
`relied on Exhibit 1015 at least at page 16 of the Petition. Exhibit 16 is a purported
`
`Internet Archive screen capture. Petitioner relied on Exhibit 1016 at least at page
`
`18 of the Petition.
`
`Patent Owner timely objected to Exhibits 1007, 1008, 1010, 1011, 1012,
`
`1014, 1015, and 1016 on the grounds of relevance (Fed. R. Evid. 402), confusion,
`
`delay, and waste of time (Fed. R. Evid. 403), hearsay (Fed. R. Evid. 801-807), and
`
`authenticity (Fed. R. Evid. 901). See Paper 10 at 2-6.
`
`
`
`4
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01160
`U.S. Patent No. 8,611,404
`
`
`1.
`
`Exhibits 1007, 1008, 1010, 1011, 1012, 1014, 1015, and 1016
`should be excluded as irrelevant under Fed. R. Evid. 402
`
`
`The aforementioned exhibits are not relevant under Fed. R. Evid. 402
`
`because they are not related to any ground upon which trial was instituted. Again,
`
`the Board instituted review based on the first ground provided in the Petition but
`
`declined to institute review based on the second ground. See Paper No. 8 at 2, 15-
`
`16. In the Petition, Petitioner relied on Exhibits 1007, 1008, 1010, 1011, 1012,
`
`1014, 1015, and 1016 solely to support its arguments with respect to the second
`
`ground – not to support its arguments with respect to the first ground.
`
`Accordingly, Exhibits 1007, 1008, 1010, 1011, 1012, 1014, 1015, and 1016 are not
`
`relevant to the issues at trial and, therefore, should be excluded. See Fed. R. Evid.
`
`402.
`
`In addition, Exhibits 1007 and 1008 are also not relevant because Petitioner
`
`has not established that those exhibits are prior art. Petitioner bears the burden of
`
`establishing that Exhibits 1007 and 1008 are “printed publications” – and, thus,
`
`prior art – under pre-AIA 35 U.S.C. § 102. “Public accessibility” is the
`
`“touchstone in determining whether a reference constitutes a ‘printed publication’”
`
`under Section 102. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194
`
`(Fed. Cir. 2008). “A given reference is ‘publicly accessible’ upon a satisfactory
`
`showing that such document has been disseminated or otherwise made available to
`
`5
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01160
`U.S. Patent No. 8,611,404
`
`the extent that a person interested and ordinarily skilled in the subject matter or art
`
`exercising reasonable diligence, can locate it.” Id. As explained in Patent Owner’s
`
`Preliminary Response, the Petition has not demonstrated when or how the Exhibits
`
`1007 and 1008 were made publicly accessible. See Paper No. 7 at 31-46. Because
`
`Petitioner has not established that Exhibits 1007 and 1008 are prior art, those
`
`exhibits are irrelevant under Fed. R. Evid. 402.
`
`2.
`
`Exhibits 1007, 1008, 1010, 1011, 1012, 1014, 1015, and 1016
`should be excluded under Fed. R. Evid. 403
`
`To the extent that any of Exhibits 1007, 1008, 1010, 1011, 1012, 1014,
`
`1015, and 1016 do have any relevance to the Petition and this proceeding outside
`
`of the second ground, Petitioner has not explained that relevance. Any argument
`
`for raising the relevance of those exhibits now would result in confusion, delay and
`
`wasted time. Accordingly, Exhibits 1007, 1008, 1010, 1011, 1012, 1014, 1015,
`
`and 1016 should also be excluded under Fed. R. Evid. 403. See Fed. R. Evid. 403
`
`(“The court may exclude relevant evidence if its probative value is substantially
`
`outweighed by a danger of one or more of the following: unfair prejudice,
`
`confusing the issues, misleading the jury, undue delay, wasting time, or needlessly
`
`presenting cumulative evidence.”).
`
`
`
`6
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01160
`U.S. Patent No. 8,611,404
`
`
`3.
`
`Exhibits 1007, 1008, 1010, 1011, 1012, 1014, 1015, and 1016
`should be excluded under Fed. R. Evid. 802
`
`
`In addition, Exhibits 1007, 1008, 1010, 1011, 1012, 1014, 1015, and 1016
`
`are inadmissible hearsay under Fed. R. Evid. 801-802. They are being relied on in
`
`the Petition and the declaration of Petitioner’s expert for the truth of the matters
`
`asserted. For example, with respect to Exhibit 1007, see the Petition at pages 18,
`
`19, 28, 29, 47, 52-55 and see the declaration (Ex. 1003) at, e.g., pages 17, 18, 116,
`
`118, 120, 121, 132-134, 136-138, 154. With respect to Exhibit 1008, see the
`
`Petition at pages 20, 28, 47, 50-58 and see the declaration (Ex. 1003) at, e.g., pages
`
`18, 115, 116, 119, 120, 128, 129, 135-139. With respect to Exhibit 1010, see the
`
`Petition at pages 14-16. With respect to Exhibit 1011, see the Petition at pages 17-
`
`19, 28-29. With respect to Exhibit 1012, see the Petition at page 17. With respect
`
`to Exhibit 1014, see the Petition at pages 15-16 and see the declaration (Ex. 1003)
`
`at pages 15-16. With respect to Exhibit 1015, see the Petition at page 16. With
`
`respect to Exhibit 1016, see the Petition at page 18. Moreover, Exhibits 1007,
`
`1008, 1010, 1011, 1012, 1014, 1015, and 1016 do not fall within any hearsay
`
`exception.
`
`
`
`
`
`7
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01160
`U.S. Patent No. 8,611,404
`
`
`4.
`
`Exhibits 1007, 1008, 1010, 1011, 1012, 1014, 1015, and 1016
`should be excluded under Fed. R. Evid. 901 and 902
`
`
`Lastly, Exhibits 1007, 1008, 1010, 1011, 1012, 1014, 1015, and 1016 have
`
`not been authenticated as required by Fed. R. Evid. 901 and are not self-
`
`authenticating under Fed. R. Evid. 902.
`
`
`
`For at least the aforementioned reasons, the Board should exclude Exhibits
`
`1007, 1008, 1010, 1011, 1012, 1014, 1015, and 1016.
`
`C.
`
`Exhibit 1019 should be excluded under Fed. R. Evid. 402
`
`The Board should exclude Exhibit 1019 as not relevant. Exhibit 1019 is
`
`purportedly an office action mailed July 24, 2003 for Pat. App. Ser. No.
`
`09/573,527. Petitioner submitted Ex. 1019 as supplemental evidence in response
`
`to Patent Owner’s objections that Ex. 1009 is hearsay and not authenticated. See
`
`Paper Nos. 10 and 12. Patent Owner timely objected to Exhibit 1019 on the
`
`ground of relevance (Fed. R. Evid. 402). See Paper 14 at 2.
`
`While Exhibit 1019 does not cure the deficiencies that served as the basis for
`
`Patent Owner’s objections to Exhibit 1009, Patent Owner does not seek to exclude
`
`Exhibit 1009 in this Motion. Accordingly, Ex. 1019 is not relevant to this
`
`proceeding and should be excluded pursuant to Fed. R. Evid. 402.
`
`
`
`
`
`8
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01160
`U.S. Patent No. 8,611,404
`
`III. CONCLUSION
`
`
`
`For the foregoing reasons, Patent Owner respectfully request that the Board
`
`exclude from the record the evidence discussed above.
`
`
`Dated: August 4, 2017
`
`
`Respectfully submitted,
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`Office: (312) 775-8000
`Fax: (312) 775-8100
`Email: pmcandrews@mcandrews-ip.com
`
`Lead Counsel for Patent Owner
`
`
`
`9
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01160
`U.S. Patent No. 8,611,404
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Patent
`
`Owner’s Motion to Exclude Inadmissible Evidence Pursuant to 37 C.F.R. §
`
`42.64 was served on August 4, 2017, via email to counsel for Petitioner at the
`
`Back-up Counsel
`
`Bob Starr
`ARRIS Group, Inc.
`3871 Lakefield Dr.
`Suwanee, GA 30024
`Tel. 678-473-8416
`Fax 678-473-8095
`bob.starr@arris.com
`
`Dan Gresham
`Thomas Horstemeyer, LLP
`3200 Windy Hill Road SE
`Suite 1600E
`Atlanta, GA 30039
`Tel. 770-933-9500
`Fax 770-951-0933
`dan.gresham@thomashorstemeyer.com
`
`
`
`
`
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`
`
`
`
`following:
`
`Lead Counsel
`
`Charles Griggers
`Thomas Horstemeyer, LLP
`3200 Windy Hill Road SE
`Suite 1600E
`Atlanta, GA 30039
`Tel. 770-933-9500
`Fax 770-951-0933
`charles.griggers@thomashorstemeyer.com
`
`
`
`
`MCANDREWS, HELD & MALLOY
`
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`CUSTOMER NUMBER: 23446
`
`
`
`
`
`
`
`
`
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