`Patent 8,457,113
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`Paper No. 48
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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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`Case IPR2016-01254
`Patent Number: 8,457,113
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`PATENT OWNER FOCAL IP, LLC’S REPLY IN SUPPORT OF
`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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`Patent Owner’s motion to exclude should be granted. Petitioner uses Lewis
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`Paper No. 48
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`and LaPier to improperly raise new issues. In addition, Petitioner has not explained
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`why the Related IPR Exhibits are relevant and not hearsay. Lewis, LaPier, and the
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`Related IPR Exhibits should therefore be excluded.
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`I.
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`Lewis and LaPier Should be Excluded
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`As an initial matter, the Board should disregard Petitioner’s arguments
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`regarding Lewis and LaPier because Petitioner’s opposition impermissibly argues
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`the merits of the case. Instead of merely stating why it believes that Lewis and
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`LaPier are relevant to the instituted grounds, Petitioner’s opposition includes
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`substantial argument regarding the merits of the case. See Paper No. 45 at 4-6.
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`Motions to exclude (and their corresponding oppositions) are not the proper place
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`for substantive arguments. See Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
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`CBM2012-00002, Paper No. 66 at 62 (P.T.A.B. Jan. 23, 2014) (“While a motion to
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`exclude may raise issues related to admissibility of evidence, it is not an opportunity
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`to file a sur-reply . . . .”). The Board should therefore ignore Petitioner’s arguments.
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`Moreover, Lewis and LaPier are not relevant to the issues raised in the petition
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`and the grounds instituted by the Board. Petitioner argues that its petition explains
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`that “a POSA would understand that Burger and Archer discloses a server/processor
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`coupled to a PSTN tandem switch in PSTN.” Paper No. 45 at 4. Petitioner further
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`argues that Lewis and LaPier were necessary to rebut Mr. Bates’s opinion that
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`Case IPR2016-01254
`Patent 8,457,113
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`“[p]rior to the date of the invention . . . a POSA would understand that any prior art
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`Paper No. 48
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`disclosing an edge device external to the PSTN must access the PSTN through an
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`edge switch first, not a tandem switch.” Paper No. 45 at 5 (emphasis added).
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`Petitioner claims that the Reply Exhibits demonstrate what a POSA would
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`have understood in May 2000. See id. at 2-3. But there is no evidence that Lewis
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`and LaPier were even known to the public at that time and could have been
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`considered by a POSA or anyone else not employed by the assignees. Lewis claims
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`a priority date of November 20, 1998, and LaPier claims a priority date of December
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`28, 1998. Assuming both of these patents (or related applications) were published
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`18 months after their respective priority dates, they would have been published after
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`the priority date of the ’113 Patent. Given the testimony that Petitioner would like
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`to rebut with the Reply Exhibits concerns Mr. Bates testifying about the knowledge
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`of a POSA as of the ’113 Patent’s priority date, these Exhibits are wholly deficient
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`because a POSA would not have known about these patents at that time.1
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`1 Patent Owner understands that while the Reply Exhibits may be prior art to
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`the ’113 Patent under 35 U.S.C. § 102, that is not the proper focus. Petitioner
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`attempts to use these Exhibits to show what the knowledge of a POSA would have
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`been at the time the ’113 Patent was filed, and for a POSA to have been informed
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`by these Exhibits, they would need to have been publicly available at that time.
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`2
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`Patent 8,457,113
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`Although a complete discussion of the technical aspects of Lewis and LaPier
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`Paper No. 48
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`is outside the scope of this reply, Patent Owner disputes that Lewis and LaPier show
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`an edge device external to the PSTN that accesses the PSTN directly through a
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`tandem switch. Petitioner’s spin of Lewis and LaPier simply emphasizes the
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`deficiencies of the art cited in the original petition. Indeed, Burger and Archer, two
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`of Petitioner’s primary references, do not even mention tandem switches. It is these
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`deficiencies that Petitioner seeks to cure with Lewis and LaPier, not any statements
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`by Mr. Bates.
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`In summary, instead of merely using the new exhibits to elaborate on its
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`positions raised in the petition, as the Board held was proper in Ford Motor Co. v.
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`Paice LLC, Petitioner is using Lewis and LaPier to impermissibly add new
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`arguments that it did not make in its petition.2 IPR2014-00579, Paper No. 45 at 30
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`(P.T.A.B. Sep. 28, 2015) (“In its reply, Ford merely elaborated on an initial position
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`raised in its Petition and presented evidence in direct rebuttal to Paice’s Response.”).
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`The Board should therefore exclude Lewis and LaPier.
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`2 Petitioner’s argument is also belied by its argument in reply that Burger and
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`Archer disclose connecting to the PSTN through a tandem switch. Paper No. 28 at
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`6-7. If Petitioner believes this is true, it is unclear why it also relies on Lewis and
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`LaPier unless it uses them as the basis for additional grounds of unpatentability.
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`Case IPR2016-01254
`Patent 8,457,113
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`II. Exhibits 1048, 1049 and 1058 Should Be Excluded
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`Paper No. 48
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`The Board should also exclude Exhibits 1048, 1049, and 1058 (which
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`Petitioner refers to as “the Related IPR Exhibits”). Petitioner argues that these
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`exhibits are admissible for two reasons. First, Petitioner argues that the PTAB has
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`already decided that testimony from allegedly related proceedings is admissible. See
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`Paper No. 45 at 7-8 (citing Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00583,
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`Paper No. 50 at 16 (P.T.A.B. Sep. 9, 2015)). Second, Petitioner argues that Patent
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`Owner also relied on evidence from other proceedings. Neither argument supports
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`the admissibility of Exhibits 1048, 1049, and 1058 here.
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`Petitioner argues that Edmund Optics dictates that Exhibits 1048, 1049, and
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`1058 are admissible in this case. Petitioner mischaracterizes the holding in Edmund
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`Optics. In Edmund Optics, the petitioner sought to exclude its expert’s declaration
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`and deposition testimony from another IPR proceeding. Edmund Optics, Paper No.
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`50 at 16-18. Despite denying the motion to exclude, the Board did not hold that the
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`testimony was relevant or not hearsay. Id. Indeed, the Board questioned the
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`relevancy of the testimony and stated that it was affording the testimony little
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`weight. Id. Thus, contrary to Petitioner’s argument, Edmund Optics does not
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`support the admissibility of Exhibits 1048, 1049, and 1058.
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`Petitioner overplays the similarity of the co-pending IPRs. While there are
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`some similarities, Petitioner has not disputed that the co-pending IPRs involve
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`Case IPR2016-01254
`Patent 8,457,113
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`different claims, different prior art, and different petitioners making different
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`Paper No. 48
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`arguments. Indeed, Petitioner sought to hold a separate oral argument for its own
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`proceedings (see Paper No. 40), and even refused Patent Owner’s request to hold a
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`joint oral argument with respect to claim construction. Moreover, with respect to
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`Mr. Bates, Petitioner had the opportunity to take his deposition in this proceeding,
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`yet admitted that it declined to do so. Paper No. 45 at 8. That the co-pending IPRs
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`involve some similar issues does not excuse Petitioner’s failure to take discovery.
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`Finally, Petitioner argues that Exhibits 1048, 1049, and 1058 should be
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`admissible because Patent Owner also relies on evidence that originated in other
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`proceedings. Paper No. 48 at 8-9. But Petitioner had the opportunity to move to
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`exclude any evidence that Patent Owner relied on, yet chose not to challenge these
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`exhibits based on relevance or hearsay grounds. Petitioner instead challenged a
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`number of exhibits under Rules 106, 403, and 1006. Paper No. 43. Patent Owner
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`explained why these exhibits are admissible, including why they are relevant. See
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`Paper No. 44 at 3. Petitioner has not attempted to make any such showing for
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`Exhibits 1048, 1049, and 1058. These exhibits should therefore be excluded.
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`Dated: September 5, 2017
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`Registration No. 48,476
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`Case IPR2016-01254
`Patent 8,457,113
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`Paper No. 48
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 5th day of September 2017, a copy of Patent
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`Owner FOCAL IP, LLC’s Reply in Support of Motion to Exclude Evidence Under
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`37 C.F.R. § 42.64 has been 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: September 5, 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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