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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`VOIP-PAL.COM, INC.
`Patent Owner
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`Case No. IPR2016-01198
`Patent 9,179,005
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE
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`1
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`Patent Owner challenges two opinions proffered by Petitioner’s expert,
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`IPR2016-01198
`U.S. Patent No. 9,179,005
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`Dr. Henry Houh. First, Patent Owner disagrees with Dr. Houh’s opinion that the
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`Chu ’684 prior art reference could be improved by modifying it in accordance with
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`the dialed digit modification teachings of the Chu ’366 reference and, separately,
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`the Chen reference (collectively, the “Secondary References”). Paper 40, Motion
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`to Exclude at 1. Second, Patent Owner disagrees with Dr. Houh’s opinion and
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`Petitioner’s reliance thereon regarding the meaning of “subscriber” in the
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`Challenged Patent and in the Chu ’684 reference. But a mere disagreement with an
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`expert’s opinion is not grounds to exclude an exhibit and Voip-Pal cites no
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`authority supporting this position. Indeed, both of these challenges misconstrue the
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`facts and the law, look at individual paragraphs in a vacuum, and are more
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`properly addressed to the weight to be accorded Dr. Houh’s opinions, not their
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`admissibility. Because the Board is well-positioned to evaluate Dr. Houh’s
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`opinions and accord them the appropriate weight, Patent Owner’s motion should
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`be denied.
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`The remainder of Patent Owner’s objections in its Motion to Exclude relate
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`to how Petitioner has characterized the testimony of Patent Owner’s own
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`declarants. There, Patent Owner seeks to exclude Apple’s arguments and not the
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`evidence itself. As the Board already noted “such content is not proper for a
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`motion to exclude.” Paper 43, at 3.
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`IPR2016-01198
`U.S. Patent No. 9,179,005
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`a. Excluding Evidence is an Extreme Remedy and Voip-Pal’s
`Motion Should be Denied to Ensure a Complete Record for the
`Public and for Appellate Review
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`Patent Owner seeks an extreme remedy—exclusion of evidence that it
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`disagrees with from the formal record in this case. However, well-settled precedent
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`with the Board makes clear that the preferred course of action is “to assign the
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`appropriate weight to be accorded to evidence” instead of excluding the evidence.
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`See Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00002
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`(PTAB Jan. 23, 2014 (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
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`1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and
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`conclude that the lack of factual corroboration warrants discounting the opinions
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`expressed in the declarations.”).
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`Moreover, because the Board is sitting as a non-jury tribunal with
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`administrative expertise and it is well-positioned to determine and assign
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`appropriate weight to the evidence without resorting to formal exclusion that might
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`later be held reversible error. See, e.g., SEC v. Guenthner, 395 F. Supp. 2d 835,
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`842 n.3 (D. Neb. 2005); Builders Steel Co. v. Comm’r, 179 F.2d 377, 379 (8th Cir.
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`1950). This is why the PTAB generally prefers to determine the appropriate weight
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`to give expert evidence “without resorting to formal exclusion that might later be
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`held reversible error.” Informatica Corp. v. Protegrity Corp., CBM2015-00021,
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`Paper 38 at 52 (PTAB May 31, 2016). Indeed, “[i]n an inter partes review, we
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`regard it as the better course to have a complete record of the evidence to facilitate
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`IPR2016-01198
`U.S. Patent No. 9,179,005
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`public access, as well as appellate review.” Sony Computer Entm’t Am. LLC v.
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`Game Controller Tech. LLC, IPR2013-00634, Paper 32 at 31 (PTAB Apr. 14,
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`2015); see also Gnosis S.p.A. v. S. Alabama Med. Sci. Found., IPR2013-00118,
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`Paper 64 at 43 (PTAB June 20, 2014) (citing Donnelly Garment Co. v. NLRB, 123
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`F.2d 215, 224 (8th Cir. 1941) (“If the record on review contains not only all
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`evidence which was clearly admissible, but also all evidence of doubtful
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`admissibility, the court which is called upon to review the case can usually make
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`an end of it, whereas if evidence was excluded which that court regards as having
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`been admissible, a new trial or rehearing cannot be avoided.”)).
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`Voip-Pal’s objections amount to nothing more than a disagreement with his
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`characterization of the prior art and his ultimate opinion that the prior art obviates
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`each of the Challenged Claims. But Patent Owner’s disagreement is not grounds
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`to exclude Dr. Houh’s opinions, especially in light of the overwhelming precedent
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`against such a draconian remedy.
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`b. Voip-Pal Provides No Explanation for Why Dr. Houh’s Opinions
`Violate FRE 701-703 and FRE 401-403
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`Patent Owner sets forth two main disagreements with Dr. Houh’s opinions.
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`The entirety of these disagreements are set forth in two short paragraphs without
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`any explanation as to how these opinions allegedly violate the FRE. The first
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`disagreement appears to be that Dr. Houh made an assertion in paragraphs 38 and
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`43 of his declaration that is “unsupported by any citation to Chu ‘684 or
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`explanation.” Paper 40, at 1. Patent Owner then broadly claims that this is
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`“improper testimony under FRE 701-703” and “should also be excluded under
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`FRE 401-403 as irrelevant and misleading.” Id. The second disagreement is
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`equally devoid of details claiming
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`that Dr. Houh has a “fundamental
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`misunderstanding of ‘subscriber’ and ‘subscriber-specific dial plan’” and,
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`therefore, “should also be excluded under FRE 401-403 as irrelevant and
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`misleading.” Id.
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`Patent Owner apparently leaves it to Petitioner and the Board to guess why
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`and how FRE 701-703 and FRE 401-403 apply. This guessing game is
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`insufficient under the Board’s guidelines for Motions to Exclude. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A
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`motion to exclude must explain why the evidence is not admissible (e.g.,
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`relevance or hearsay)….”). Board precedent also makes clear that merely citing to
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`a series of Federal Rules of Evidence without explanation for how they apply is
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`insufficient. See Samsung Electronics America, Inc., et al. v. Smartflash LLC,
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`CBM2014-00190, Paper 47, at 25 (“We also are not persuaded by this argument.
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`Petitioner does not explain, for example, why Rules 701 and 702 apply to the
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`excerpts at issue.”).
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`The failure to provide details is particularly problematic here. For example,
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`FRE 701 relates to “Opinion Testimony by Lay Witnesses.” Patent Owner has not
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`contested Dr. Houh’s qualifications as an expert so it is difficult to comprehend
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`how a rule relating to lay witness testimony would be applicable here. The citation
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`to FRE 703 is equally confusing. Rule 703 discusses how otherwise inadmissible
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`evidence may be relied on by an expert and how that otherwise inadmissible
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`evidence may be shown to the jury. Of course, this case is not being presented to a
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`jury and it is unclear why Patent Owner believes this rule would be applicable
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`here. Nestle Healthcare Nutrition, Inc. v. Steuben Foods, Inc., IPR2015-00249,
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`Paper 76, at 13 (“Our determination is not made by a jury, so this caveat [in Rule
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`703] does not apply.”); see also 37 C.F.R. § 42.62(b) (portions of the Federal
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`Rules of Evidence relating to juries do not apply). Perhaps Patent Owner is
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`moving under Rule 702, but that section includes 4 distinct subparts and typically
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`is used as part of a Daubert challenge. Because Patent Owner provides Petitioner
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`and the Board with no more detail than “Dr. Houh’s unsupported statements …
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`are improper testimony under FRE 701-703,” it is unclear if or how they believe
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`any particular section of Rule 702 applies. The citations to FRE 401-403 fare no
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`better. For example, Rule 403 is commonly applied to evidence that will
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`“mislead[] the jury,” but, as noted above, this rule has little (if any) applicability
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`to proceedings before the Board. That is why the Board has noted that objections
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`under FRE 401-403 are “not well suited to a bench trial, such as this.” Bungie,
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`IPR2016-01198
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`Inc. v. Worlds Inc., IPR2015-01319, Pap.42 60 (Dec. 6, 2016).
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`Because Patent Owner has failed to provide an explanation as to how the
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`cited portions of the FRE should apply, its Motion to Exclude should be denied.
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`c. Patent Owner’s First Disagreement Improperly Examines Two
`Paragraphs
`in Isolation and Ignores Dr. Houh’s Lengthy
`Declaration and Discussions that Support the Challenged
`Testimony
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`Turning to the substance of Patent Owner’s first disagreement, it is without
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`merit. As noted above, the first disagreement is that Dr. Houh’s opinions in
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`paragraph 38 and 43 of his declaration “is unsupported by any citation to Chu ‘684
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`or explanation.” Paper 40, Motion to Exclude at 1. Patent Owner’s argument seeks
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`to examine Dr. Houh’s opinions in these two paragraphs in a vacuum and ignore
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`Dr. Houh’s lengthy discussion of the Challenged Patent (Ex. 1009, Houh
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`Declaration at ¶¶ 22-25), the state of the art (Id. at ¶¶ 26-34), and specific
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`motivations to combine Chu ’684 and the Secondary References (Id. at ¶¶ 35-44).
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`All of these paragraphs in his declaration work together to inform Houh’s opinion
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`regarding modifications to Chu ’684. And a simple review of these portions of his
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`declaration make clear that his opinions in paragraphs 38 and 43 are “based on
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`sufficient facts or data” under FRE 702(b). Thus, it is difficult to ascertain exactly
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`what Patent Owner demands by seeking to examine these two paragraphs in
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`IPR2016-01198
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`isolation.
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`Nonetheless, the underlying issue for Dr. Houh’s opinions in paragraphs 38
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`and 43 is straightforward and a simple explanation of the technology makes clear
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`that Patent Owner’s argument is both disingenuous and misleading. Traditional
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`PSTN phones are hardwired to a physical central office location, which enables
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`PSTN callers to dial short form numbers (e.g., 7 digit local numbers) without
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`entering the full E.164 international standard number corresponding to the callee.
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`Using its known geographic information, the PSTN can “complete” the callee
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`number and route the call correctly. IP phones, conversely, are not tied to any
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`specific physical location and thus do not inherently provide the user an option to
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`dial short form numbers. Thus, some additional functionality must be provided to
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`an IP-based telephony service to allow users to dial as if they were calling from a
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`PSTN phone.
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`This is the central concept in the Challenged patent and both Secondary
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`References. In the following excerpt, Chu ’366 discussed at length the distinction
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`between IP-based and PSTN phones as well as why IP-based telephony systems
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`would need additional functionality in order to allow callers to dial as if they were
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`calling from a PSTN phone:
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`E.164 [ ] provides a uniform means for identifying any telephone
`number in the world to any telephony user in the world. . . .
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`When making telephone calls via a traditional PSTN, a subscriber
`is able to enter abbreviated numbers for local and national
`telephone calls. For example, for a local call in the United States, a
`user may simply enter the seven digit telephone number without an
`E.164 prefix, the country code or the area code. Local and
`national calls are possible with PSTN systems because the fixed-
`line phones from which such calls are made are hardwired
`directly to the local PSTN center.
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`By contrast, there is no such concept of local, long distance or
`national calls when making a call via Internet telephony. VoIP
`calls use the Internet, which is world-wide and not tied to any single
`location. While a VoIP call may be made between two local points,
`that call may be routed through servers located across the globe.
`Consequently, existing global VoIP service providers require
`users to enter fully formatted E.l64 telephone numbers. Even
`when making a local call, within for example the United States,
`instead of simply entering the seven digit telephone number, the VoIP
`subscriber must enter “+,” then the country code, then the area code,
`telephone number. This
`is
`time consuming and
`then
`the
`bothersome, especially when subscribers are used to the concept
`of abbreviated telephone numbers for local and national calls with
`traditional PSTN systems.
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`Ex. 1003, Chu ’366 at 1:18-47 (emphasis added).
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`There is no disagreement between the parties that Chu ’684 teaches a VoIP-
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`IPR2016-01198
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`based telephony system. See Paper 17, Response (“Chu ’684 discloses an
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`architecture for providing voice-over-IP virtual private network (VoIP VPN)
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`services to an organization/enterprise.”). Similarly, there is no disagreement
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`between the parties that Chu ’684 does not teach reformatting dialed digits such
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`that callers could dial as if they were calling from the PSTN. See Paper 5,
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`Preliminary Response at 23 (“While the ‘005 Patent discloses a mechanism for
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`private network classification using a reformatted number (e.g., step 269 in Fig.
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`8B), there is no comparable disclosure in [ ] Chu ‘684.”). It is thus disingenuous
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`for Patent Owner to dispute Dr. Houh’s opinion that callers in the Chu ’684 system
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`could not “place calls as if they were dialing from a standard PSTN phone.” Paper
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`40, Motion to Exclude at 1. That IP-based telephony systems did not permit dialing
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`as if on a standard PSTN phone is one of the most central concepts to the
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`Challenged Patent and this proceeding.
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`Dr. Houh’s declaration goes to great lengths to explain the distinctions
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`between dialing from IP-based telephony systems and the PSTN, including an
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`explanation of how the Challenged Patent and Secondary References allows IP-
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`based callers to dial as if they were on the PSTN. See Ex. 1009, Houh Declaration
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`at ¶¶ 23-34. Dr. Houh also explains in detail Chu ‘684, the Secondary References,
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`and motivations to combine the same. Id. at ¶¶ 35-44.
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`Given that the parties agree on the fundamental nature of Chu ‘684 and
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`IPR2016-01198
`U.S. Patent No. 9,179,005
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`given further that the distinction between VoIP and PSTN dialing is central to this
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`proceeding, Patent Owner cannot feign ignorance of Dr. Houh’s opinion and its
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`underlying rationale regarding why one of skill in the art would add the dialed digit
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`reformatting features from the Secondary References to Chu ’684. This opinion is
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`fully supported by the record, relevant, and not in any way misleading.
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`Accordingly, the Board should decline to exclude ¶¶ 38 and 43 from Ex. 1009.
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`d. Patent Owner’s Second Disagreement Attempts to Confuse the
`Record Based on Differing Uses of “Subscriber”
`in the
`Challenged Patent and Prior Art and is Without Merit
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`Patent Owner’s second disagreement appears to arise out of its own
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`confusion regarding the use of the term “subscriber” in the Challenged Patent and
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`Chu ’684. See, e.g. Ex. 2043, Houh Trans. at 15:12-13 (Patent Owner’s counsel
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`admitting “[t]here is some confusion on my part relative to the use of the term
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`‘subscriber’ in Chu ’684.”). Dr. Houh, through two days of deposition testimony,
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`repeatedly explained the distinction used in these references as well as his own
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`convention adopted for clarity in his declaration. See, e.g., Id. at 16:11-23
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`(explaining that the Challenged Patent and Chu ’684 use “subscriber” in “different
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`senses” and that Dr. Houh “tried to use the terminology of the ’815 patent” for
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`clarity); Ex. 2044, Houh Trans. at 221:20-222:4 (confirming enterprise meaning
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`of “subscriber” in Chu ’684). Patent Owner simply misconstrues Dr. Houh’s
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`opinions and testimony to manufacture inconsistencies where none exist.1
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`IPR2016-01198
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`Dr. Houh’s and Petitioner’s position on “subscriber” was made clear in
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`Dr. Houh’s declaration, Dr. Houh’s two-day deposition, and Petitioner’s reply.
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`Each of those made clear that Petitioner’s obvious combinations rely on the caller-
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`specific profiles
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`taught
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`in
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`the Secondary References, which are easily
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`incorporated into the Chu ’684 system by virtue of that system already including
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`the necessary infrastructure to locate caller-specific information. See, e.g., Ex.
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`1009, Houh Declaration at 45-47 (explaining caller-specific infrastructure in Chu
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`‘684 and caller-specific profiles in Secondary References); Ex. 2044, Houh Trans.
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`at 224:12-227:9 (explaining the same with specific reference to challenged ¶ 45 of
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`Dr. Houh’s declaration); Paper 34, Reply at 23-24 (explaining combination).
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`Accordingly, Petitioner’s reliance on these disparate uses of “subscriber” and
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`Dr. Houh’s opinions regarding the same has been entirely consistent throughout
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`this proceeding. Patent Owner may disagree with Petitioner’s position, but a
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`challenge to the sufficiency of petitioner’s arguments or evidence is improper in a
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`Motion to Exclude. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`1 It is difficult to ascertain what relief Patent Owner is seeking in its second disagreement.
`Though the Motion to Exclude is directed at Dr. Houh’s opinions in paragraphs 37, 42, and 45,
`Patent Owner’s real issue is that Dr. Houh’s testimony “led to Apple’s Petition mischaracterizing
`‘dial plans’ in Chu ‘684 as being caller-specific (rather than enterprise-specific)”. Paper 40, at 2.
`Thus, the second disagreement is a thinly veiled attempt to exclude Petitioner’s arguments.
`This is, of course, improper for a motion to exclude. See Paper 43, Order, at 3 (“[A] motion
`seeking to exclude an opposing party’s argument is beyond the scope of § 42.64 and will not be
`successful.”).
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`48,767 (Aug. 14, 2012) (“A motion to exclude … may not be used to challenge
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`IPR2016-01198
`U.S. Patent No. 9,179,005
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`the sufficiency of the evidence to prove a particular fact.”). As such, Patent
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`Owner’s second disagreement should be rejected and paragraphs 37, 42, and 45
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`should not be excluded.
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`2.
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`Patent Owner’s Request Regarding its own Witnesses Should be
`Rejected
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`The remainder of Patent Owner’s motion to exclude relate to Exhibits 1010-
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`1013 and 1015. These exhibits are deposition transcripts of Patent Owner’s own
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`declarants. Notably, Patent Owner is not seeking to exclude the deposition
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`transcripts or the declarants themselves. Instead, Patent Owner is seeking to strike
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`Petitioner’s arguments relating to these exhibits. See, e.g., Paper 40, at 6 (“Apple’s
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`citations to Ex. 1010 are misleading under FRE 401-403 and incomplete under
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`FRE 106, and should be excluded.”) As this Board has already noted, “such
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`content is not proper for a motion to exclude” and “a motion seeking to exclude an
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`opposing party’s argument is beyond the scope of § 42.64 and will not be
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`successful.” Paper 43, at 3. Accordingly, Petitioner will provide no further
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`response to these portions of Patent Owner’s motion to exclude.
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`
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`Date: June 26, 2017
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`Respectfully submitted,
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`/s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Eric A. Buresh, Reg. No. 50,394
`ERISE IP, P.A.
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`IPR2016-01198
`U.S. Patent No. 9,179,005
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`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`(913) 777-5600 Phone
`(913) 777-5601 Fax
`eric.buresh@eriseip.com
`adam.seitz@eriseip.com
`Paul R. Hart, Reg. No. 59,646
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`(913) 777-5600 Phone
`(913) 777-5601 Fax
`paul.hart@eriseip.com
`ATTORNEYS FOR PETITIONER
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`IPR2016-01198
`U.S. Patent No. 9,179,005
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on June 26, 2017, a true and correct copy of
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`this Petitioner’s Opposition to Patent Owner’s Motion to Exclude was served upon
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`the following counsel for Patent Owner, via the email correspondence address of
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`record:
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`
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`Kerry Taylor, Reg. No. 43,947
`2kst@knobbe.com
`John M. Carson, Reg. No. 34,303
`2jmc@knobbe.com
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`858-707-4000 Phone
`858-707-4001 Fax
`
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`Respectfully submitted,
`
`BY:
`
`/s/ Paul R. Hart
`Paul R. Hart, Reg. No. 59,646
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`
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`ATTORNEY FOR PETITIONER
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