Case IPR2016-01254
`Patent 8,457,113
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`Paper No. 41
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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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`CISCO SYSTEMS, INC.,
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`Petitioner
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`v.
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`FOCAL IP, LLC,
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`Patent Owner
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`________________
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`Case IPR2016-01254
`Patent Number: 8,457,113
`________________
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`PATENT OWNER FOCAL IP, LLC’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64
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`Patent 8,457,113
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`Paper No. 41
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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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`CISCO SYSTEMS, INC.,
`
`Petitioner
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`
`v.
`
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01254
`Patent Number: 8,457,113
`________________
`
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`
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`PATENT OWNER FOCAL IP, LLC’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64
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`Case IPR2016-01254
`Patent 8,457,113
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`Paper No. 41
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`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner Focal IP, LLC hereby moves
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`to exclude Exhibits 1046, 1047, 1048, 1049, and 1058.
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`I.
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`PROCEDURAL HISTORY
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`Petitioner filed a petition for inter partes review on June 23, 2016 (Paper No.
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`2). Patent Owner filed a preliminary response on October 12, 2016 (Paper No. 8),
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`and the Board instituted trial on December 28, 2016 (Paper No. 15). Patent Owner
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`filed a request for rehearing on January 11, 2017 (Paper No. 17), which the Board
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`denied on January 31, 2017 (Paper No. 18). Patent Owner filed its Patent Owner
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`Response on April 3, 2017 (Paper No. 25) accompanied by the Declaration of Regis
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`J. “Bud” Bates (Exhibit 2022). Petitioner filed a reply on June 26, 2017 (Paper No.
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`28). Patent Owner filed objections to evidence submitted, relied on, or cited by
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`Petitioner in connection with its reply on June 30, 2017 (Paper No. 30). After
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`receiving permission from the Board, Petitioner filed a revised reply on July 11,
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`2017 (Paper No. 34), including a new exhibit (Exhibit 1058). Petitioner did not
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`submit an expert declaration in connection with its reply. As authorized by the
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`Board, Patent Owner filed a supplemental objection related to the exhibit submitted
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`in connection with Petitioner’s revised reply (Paper No. 36).
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`1
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`Case IPR2016-01254
`Patent 8,457,113
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` ARGUMENT
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`II.
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`Paper No. 41
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`Motions to exclude are authorized by 37 C.F.R. § 42.64(c). “The motion must
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`identify the objections in the record in order and must explain the objections.” 37
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`C.F.R. § 42.64(c). “A motion to exclude evidence must: (a) Identify where in the
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`record the objection originally was made; (b) Identify where in the record the
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`evidence sought to be excluded was relied upon by an opponent; (c) Address
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`objections to exhibits in numerical order; and (d) Explain each objection.” 77 Fed.
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`Reg. 48,756, 48,767 (Aug. 14, 2012).
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`The Federal Rules of Evidence apply in inter partes review proceedings. 37
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`C.F.R. § 42.62(a). Evidence is only admissible if it is relevant. Fed. R. Evid. 402.
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`“Evidence is relevant if: (a) it has any tendency to make a fact more or less probable
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`than it would be without the evidence; and (b) the fact is of consequence in
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`determining the action.” Fed. R. Evid. 401. Even if relevant, evidence may be
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`excluded “if its probative value is substantially outweighed by a danger of one or
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`more of the following: unfair prejudice, confusing the issues, misleading the jury,
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`undue delay, wasting time, or needlessly presenting cumulative evidence.” Fed. R.
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`Evid. 403. In addition, hearsay is not admissible unless otherwise provided by
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`statute, the Federal Rules of Evidence, or another applicable rule. Fed. R. Evid. 802.
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`2
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`Patent 8,457,113
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`A. Exhibit 1046 Should Be Excluded.
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`Paper No. 41
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`Exhibit 1046 is a copy of U.S. Patent No. 6,442,169 to Lewis (“Lewis).
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`Petitioner relies on Lewis as a new prior art reference to support its new and
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`untimely arguments that it was allegedly well-understood to a POSA to interconnect
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`an IP network to the PSTN through a tandem switch. Paper No. 34 at 8-9. Patent
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`Owner objected to Exhibit 1046 in Paper No. 30.
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`Patent Owner moves to exclude Exhibit 1046 as irrelevant under Rule 402.
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`The Board did not institute trial with respect to Lewis (see Paper No. 15 at 29), nor
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`did the petition ever argue that it was well-understood to a POSA to interconnect an
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`IP network to the PSTN through a tandem switch. Petitioner improperly attempts
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`to use Lewis to remedy the deficiencies of the prior art Petitioner relies on in its
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`petition. The trial is limited to the arguments, evidence, and grounds raised in the
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`petition and instituted by the Board. See 37 C.F.R. § 42.104(b)(5) (requiring the
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`petitioner to identify in the petition the evidence relied on to support the challenge);
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`id. § 42.108(a) (“When instituting inter partes review, the Board may authorize the
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`review to proceed on all or some of the challenged claims and on all or some of the
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`grounds of unpatentability asserted for each claim.”). Because Petitioner failed to
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`timely bring this argument or this evidence in its petition, Lewis is irrelevant under
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`Rule 402.
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`3
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`Patent 8,457,113
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`Paper No. 41
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`Further, any probative value is substantially outweighed by the danger of one
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`or more of the following: unfair prejudice, misleading the factfinders, and confusing
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`the issues. Lewis and the untimely argument it allegedly supports were not properly
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`raised in the petition. This evidence should therefore be excluded under Rule 403
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`to prevent unfair prejudice, misleading of the factfinders, and confusing of the
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`issues.
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`B.
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`Exhibit 1047 Should Be Excluded.
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`Exhibit 1047 is a copy of U.S. Patent No. 6,333,931 to LaPier (“LaPier”).
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`Petitioner relies on LaPier as a new prior art reference to support its new and
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`untimely arguments that it was well-understood to a POSA to interconnect an IP
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`network to the PSTN through a tandem switch. Paper No. 34 at 9-10. Patent Owner
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`objected to Exhibit 1046 in Paper No. 30.
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`Patent Owner moves to exclude Exhibit 1047 as irrelevant under Rule 402.
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`The Board did not institute trial with respect to LaPier (see Paper No. 15 at 29), nor
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`did the petition ever argue that it was well-understood to a POSA to interconnect an
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`IP network to the PSTN through a tandem switch. Petitioner improperly attempts
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`to use LaPier to remedy the deficiencies of the prior art Petitioner relies on in its
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`petition. The trial is limited to the arguments, evidence, and grounds raised in the
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`petition and/or instituted by the Board. See 37 C.F.R. § 42.104(b)(5) (requiring the
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`Patent 8,457,113
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`petitioner to identify in the petition the evidence relied on to support the challenge);
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`Paper No. 41
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`id. § 42.108(a) (“When instituting inter partes review, the Board may authorize the
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`review to proceed on all or some of the challenged claims and on all or some of the
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`grounds of unpatentability asserted for each claim.”). Because Petitioner failed to
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`timely bring this argument or evidence in its petition, LaPier is irrelevant under Rule
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`402.
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`Further, any probative value is substantially outweighed by the danger of one
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`or more of the following: unfair prejudice, misleading the factfinders, and confusing
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`the issues. LaPier and the untimely argument it allegedly supports were not properly
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`raised in the petition. This evidence should therefore be excluded under Rule 403
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`to prevent unfair prejudice, misleading of the factfinders, and confusing of the
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`issues.
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`C. Exhibits 1048 and 1049 Should Be Excluded.
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`Exhibits 1048 and 1049 are the transcript of the deposition of Patent Owner’s
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`expert, Regis J. “Bud” Bates, Jr., in IPR2016-01259, IPR2016-01261, IPR2016-
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`01262, and IPR2016-01263, which are different proceedings from this one.1
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`Petitioner relies on Exhibits 1048 and 1049 at various places in its reply, including
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`1 Mr. Bates’s deposition occurred over two days. The transcript therefore
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`contains two volumes, which were filed as separate exhibits.
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`Patent 8,457,113
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`on pages 4-7, 10-11, 15, 17-18, and 26-27 (Paper No. 34). Patent Owner objected
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`Paper No. 41
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`to Exhibits 1048 and 1049 in Paper No. 30.
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`Patent Owner moves to exclude Exhibits 1048 and 1049 as hearsay under
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`Federal Rules of Evidence 801 and 802. The deposition was taken in connection
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`with other proceedings involving different petitioners and different petitions, and
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`Petitioner attempts to introduce Mr. Bates’s statements for the truth of the matter
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`asserted in the statements—that Mr. Bates undertook certain work and has certain
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`opinions related to those proceedings. The transcript is therefore hearsay. See Fed.
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`R. Evid. 801(c).
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`Moreover, the transcript does not qualify for the former testimony exception.
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`See Fed. R. Evid. 804(b)(1). To qualify for that exception, the witness must be
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`unavailable. To the contrary, Mr. Bates travelled to Fort Worth, Texas to be
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`available for his deposition in this proceeding scheduled for May 11, 2017, but
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`Petitioner Cisco chose to cancel this deposition. See Paper No. 27 (Cisco’s
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`Deposition Notice of Mr. Bates).
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`D. Exhibit 1058 Should Be Excluded.
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`Exhibit 1058 comprises excerpts of the deposition transcript of Dr. Thomas
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`F. La Porta in IPR2016-01259, IPR2016-01261, IPR2016-01262, and IPR2016-
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`01263, which are different proceedings from this one. Petitioner relies on Exhibit
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`Case IPR2016-01254
`Patent 8,457,113
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`1058 at various places in its reply, including on pages 5, 6, 7, and 11 (Paper No. 34).
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`Paper No. 41
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`Patent Owner objected to Exhibit 1058 in Paper No. 36.
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`Patent Owner moves to exclude Exhibit 1058 as hearsay under Federal Rules
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`of Evidence 801 and 802. The deposition was taken in connection with other
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`proceedings, not this one, and Petitioner attempts to bolster attorney arguments by
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`using Dr. La Porta’s statements for the truth of the matter asserted in the
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`statements—that Dr. La Porta has certain opinions related to those proceedings. The
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`transcript is therefore hearsay. See Fed. R. Evid. 802(c).
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`Finally, even if not hearsay, Exhibit 1058 should be excluded as irrelevant
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`under Federal Rule of Evidence 402. It appears that, instead of crafting a reply
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`tailored to its own proceeding, Cisco merely copied the replies filed by the Bright
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`House Networks petitioner groups in IPR2016-01259, IPR2016-01261, IPR2016-
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`01262, and IPR2016-01263, which included numerous arguments and citations to
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`papers related to those proceedings. This resulted in several errors that Cisco has
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`only partially cured in its revised filing of its reply. For example, Cisco’s revised
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`reply now includes a number of citations to Exhibit 1058 that do not actually appear
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`in that Exhibit. Paper No. 35 at 5, 6, 7. For at least these reasons, Exhibit 1058 is
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`irrelevant under Rule 402. For analogous reasons, Exhibit 1058 should be excluded
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`under Rule 403 because any probative value is outweighed by the danger of unfair
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`prejudice, misleading of the factfinder, or confusing the issues.
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`Case IPR2016-01254
`Patent 8,457,113
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`Paper No. 41
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`Dated: August 21, 2017
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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`Case IPR2016-01254
`Patent 8,457,113
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`Paper No. 41
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 21st day of August 2017, a copy of Patent Owner
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`FOCAL IP, LLC’s Motion to Exclude Evidence Under 37 C.F.R. § 42.64 has been
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`served in its entirety via email on the following:
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`
`Wayne Stacy
`BAKER BOTTS L.L.P.
`2001 Ross Avenue
`Dallas, TX 75201
`Phone: (214) 953-6678
`Facsimile: (214) 661-4678
`wayne.stacy@bakerbotts.com
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`Sarah J. Guske
`BAKER BOTTS L.L.P.
`101 California Street, #3070
`San Francisco, CA 94111
`Phone: (415) 291-6205
`Facsimile: (415) 291-6305
`sarah.guske@bakerbotts.com
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`Dated: August 21, 2017
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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