Case IPR2016-01254
`Patent 8,457,113
`
`
`
`Paper No. 48
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`CISCO SYSTEMS, INC.,
`
`Petitioner
`
`
`v.
`
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01254
`Patent Number: 8,457,113
`________________
`
`
`
`
`PATENT OWNER FOCAL IP, LLC’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`Patent 8,457,113
`
`
`
`Paper No. 48
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`CISCO SYSTEMS, INC.,
`
`Petitioner
`
`
`v.
`
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01254
`Patent Number: 8,457,113
`________________
`
`
`
`
`PATENT OWNER FOCAL IP, LLC’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01254
`Patent 8,457,113
`
`Patent Owner’s motion to exclude should be granted. Petitioner uses Lewis
`
`Paper No. 48
`
`
`
`and LaPier to improperly raise new issues. In addition, Petitioner has not explained
`
`why the Related IPR Exhibits are relevant and not hearsay. Lewis, LaPier, and the
`
`Related IPR Exhibits should therefore be excluded.
`
`I.
`
`Lewis and LaPier Should be Excluded
`
`As an initial matter, the Board should disregard Petitioner’s arguments
`
`regarding Lewis and LaPier because Petitioner’s opposition impermissibly argues
`
`the merits of the case. Instead of merely stating why it believes that Lewis and
`
`LaPier are relevant to the instituted grounds, Petitioner’s opposition includes
`
`substantial argument regarding the merits of the case. See Paper No. 45 at 4-6.
`
`Motions to exclude (and their corresponding oppositions) are not the proper place
`
`for substantive arguments. See Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
`
`CBM2012-00002, Paper No. 66 at 62 (P.T.A.B. Jan. 23, 2014) (“While a motion to
`
`exclude may raise issues related to admissibility of evidence, it is not an opportunity
`
`to file a sur-reply . . . .”). The Board should therefore ignore Petitioner’s arguments.
`
`Moreover, Lewis and LaPier are not relevant to the issues raised in the petition
`
`and the grounds instituted by the Board. Petitioner argues that its petition explains
`
`that “a POSA would understand that Burger and Archer discloses a server/processor
`
`coupled to a PSTN tandem switch in PSTN.” Paper No. 45 at 4. Petitioner further
`
`argues that Lewis and LaPier were necessary to rebut Mr. Bates’s opinion that
`1
`
`
`
`
`
`Case IPR2016-01254
`Patent 8,457,113
`
`“[p]rior to the date of the invention . . . a POSA would understand that any prior art
`
`Paper No. 48
`
`
`
`disclosing an edge device external to the PSTN must access the PSTN through an
`
`edge switch first, not a tandem switch.” Paper No. 45 at 5 (emphasis added).
`
`Petitioner claims that the Reply Exhibits demonstrate what a POSA would
`
`have understood in May 2000. See id. at 2-3. But there is no evidence that Lewis
`
`and LaPier were even known to the public at that time and could have been
`
`considered by a POSA or anyone else not employed by the assignees. Lewis claims
`
`a priority date of November 20, 1998, and LaPier claims a priority date of December
`
`28, 1998. Assuming both of these patents (or related applications) were published
`
`18 months after their respective priority dates, they would have been published after
`
`the priority date of the ’113 Patent. Given the testimony that Petitioner would like
`
`to rebut with the Reply Exhibits concerns Mr. Bates testifying about the knowledge
`
`of a POSA as of the ’113 Patent’s priority date, these Exhibits are wholly deficient
`
`because a POSA would not have known about these patents at that time.1
`
`
`1 Patent Owner understands that while the Reply Exhibits may be prior art to
`
`the ’113 Patent under 35 U.S.C. § 102, that is not the proper focus. Petitioner
`
`attempts to use these Exhibits to show what the knowledge of a POSA would have
`
`been at the time the ’113 Patent was filed, and for a POSA to have been informed
`
`by these Exhibits, they would need to have been publicly available at that time.
`
`
`
`2
`
`
`
`Case IPR2016-01254
`Patent 8,457,113
`
`Although a complete discussion of the technical aspects of Lewis and LaPier
`
`Paper No. 48
`
`
`
`is outside the scope of this reply, Patent Owner disputes that Lewis and LaPier show
`
`an edge device external to the PSTN that accesses the PSTN directly through a
`
`tandem switch. Petitioner’s spin of Lewis and LaPier simply emphasizes the
`
`deficiencies of the art cited in the original petition. Indeed, Burger and Archer, two
`
`of Petitioner’s primary references, do not even mention tandem switches. It is these
`
`deficiencies that Petitioner seeks to cure with Lewis and LaPier, not any statements
`
`by Mr. Bates.
`
`In summary, instead of merely using the new exhibits to elaborate on its
`
`positions raised in the petition, as the Board held was proper in Ford Motor Co. v.
`
`Paice LLC, Petitioner is using Lewis and LaPier to impermissibly add new
`
`arguments that it did not make in its petition.2 IPR2014-00579, Paper No. 45 at 30
`
`(P.T.A.B. Sep. 28, 2015) (“In its reply, Ford merely elaborated on an initial position
`
`raised in its Petition and presented evidence in direct rebuttal to Paice’s Response.”).
`
`The Board should therefore exclude Lewis and LaPier.
`
`
`2 Petitioner’s argument is also belied by its argument in reply that Burger and
`
`Archer disclose connecting to the PSTN through a tandem switch. Paper No. 28 at
`
`6-7. If Petitioner believes this is true, it is unclear why it also relies on Lewis and
`
`LaPier unless it uses them as the basis for additional grounds of unpatentability.
`
`
`
`3
`
`
`
`Case IPR2016-01254
`Patent 8,457,113
`
`II. Exhibits 1048, 1049 and 1058 Should Be Excluded
`
`
`
`Paper No. 48
`
`The Board should also exclude Exhibits 1048, 1049, and 1058 (which
`
`Petitioner refers to as “the Related IPR Exhibits”). Petitioner argues that these
`
`exhibits are admissible for two reasons. First, Petitioner argues that the PTAB has
`
`already decided that testimony from allegedly related proceedings is admissible. See
`
`Paper No. 45 at 7-8 (citing Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00583,
`
`Paper No. 50 at 16 (P.T.A.B. Sep. 9, 2015)). Second, Petitioner argues that Patent
`
`Owner also relied on evidence from other proceedings. Neither argument supports
`
`the admissibility of Exhibits 1048, 1049, and 1058 here.
`
`
`
`Petitioner argues that Edmund Optics dictates that Exhibits 1048, 1049, and
`
`1058 are admissible in this case. Petitioner mischaracterizes the holding in Edmund
`
`Optics. In Edmund Optics, the petitioner sought to exclude its expert’s declaration
`
`and deposition testimony from another IPR proceeding. Edmund Optics, Paper No.
`
`50 at 16-18. Despite denying the motion to exclude, the Board did not hold that the
`
`testimony was relevant or not hearsay. Id. Indeed, the Board questioned the
`
`relevancy of the testimony and stated that it was affording the testimony little
`
`weight. Id. Thus, contrary to Petitioner’s argument, Edmund Optics does not
`
`support the admissibility of Exhibits 1048, 1049, and 1058.
`
`Petitioner overplays the similarity of the co-pending IPRs. While there are
`
`some similarities, Petitioner has not disputed that the co-pending IPRs involve
`4
`
`
`
`
`
`Case IPR2016-01254
`Patent 8,457,113
`
`different claims, different prior art, and different petitioners making different
`
`Paper No. 48
`
`
`
`arguments. Indeed, Petitioner sought to hold a separate oral argument for its own
`
`proceedings (see Paper No. 40), and even refused Patent Owner’s request to hold a
`
`joint oral argument with respect to claim construction. Moreover, with respect to
`
`Mr. Bates, Petitioner had the opportunity to take his deposition in this proceeding,
`
`yet admitted that it declined to do so. Paper No. 45 at 8. That the co-pending IPRs
`
`involve some similar issues does not excuse Petitioner’s failure to take discovery.
`
`Finally, Petitioner argues that Exhibits 1048, 1049, and 1058 should be
`
`admissible because Patent Owner also relies on evidence that originated in other
`
`proceedings. Paper No. 48 at 8-9. But Petitioner had the opportunity to move to
`
`exclude any evidence that Patent Owner relied on, yet chose not to challenge these
`
`exhibits based on relevance or hearsay grounds. Petitioner instead challenged a
`
`number of exhibits under Rules 106, 403, and 1006. Paper No. 43. Patent Owner
`
`explained why these exhibits are admissible, including why they are relevant. See
`
`Paper No. 44 at 3. Petitioner has not attempted to make any such showing for
`
`Exhibits 1048, 1049, and 1058. These exhibits should therefore be excluded.
`
`Dated: September 5, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`Registration No. 48,476
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2016-01254
`Patent 8,457,113
`
`
`
`
`Paper No. 48
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 5th day of September 2017, a copy of Patent
`
`Owner FOCAL IP, LLC’s Reply in Support of Motion to Exclude Evidence Under
`
`37 C.F.R. § 42.64 has been served in its entirety via email on the following:
`
`
`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
`
`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
`
`
`
`
`Dated: September 5, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
