`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`CISCO SYSTEMS, INC.,
`Petitioner
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`
`
`Case No. IPR2016-01257
`U.S. Patent No. 8,457,113
`
`
`
`PETITIONER’S SECOND SET OF OBJECTIONS TO PATENT OWNER’S
`EVIDENCE PURSUANT TO 37 C.F.R. 42.6
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner Cisco Systems, Inc.
`
`(“Petitioner”) hereby submits the following objections to Patent Owner Focal IP,
`
`LLC’s (“Patent Owner”) Exhibit 2070 and any reference to/reliance on the
`
`foregoing, in Patent Owner’s Reply in Support of Patent Owner’s Contingent
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`Motion to Amend Claim 143 in the above-captioned inter partes review (“Motion
`
`to Amend Reply”). As required by 37 C.F.R. § 42.62, Petitioners’ objections below
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`apply the Federal Rules of Evidence (“F.R.E.”).
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`Petitioners’ objections are timely under 37 C.F.R. § 42.64(b)(1) because
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`they are being filed and served within five (5) business days of the filing of Patent
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`Owner’s Motion to Amend Reply on July 31, 2017. Petitioners’ objections
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`provide notice to Patent Owner that Petitioners may move to exclude this exhibit
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`under 37 C.F.R. § 42.64(c).
`
`I.
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`OBJECTIONS TO EXHIBIT 2070 AND ANY REFERENCE TO/RELIANCE
`THEREON
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`Evidence objected to: Exhibit 2070 and any reference to or reliance thereon.
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`Exhibit 2070 is a Declaration of Regis J. “Bud” Bates in support of Patent Owner’s
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`Motion to Amend Reply.
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`Grounds for objection:
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`Petitioners object to Exhibit 2070, and Patent Owner’s reference to or
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`reliance thereon, as being inadmissible under F.R.E. 702, 703 (expert testimony),
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`and 37 C.F.R. § 42.20(c) because Mr. Bates’s opinions are premised on Petitioners
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`1
`
`
`
`
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`bearing the burden of proving patentability of proposed substitute claim 184 which
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`is the wrong legal standard. See, e.g., Exhibit 2070, ¶¶32, 47, 57-58; Motion to
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`Amend Reply, 1 (“PO believes Petitioner bears the burden of proving that the
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`Substitute Claim is not patentable.”); cf. Nike v. Adidas AG, 812 F.3d 1326, 1333-
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`34 (Fed. Cir. 2016) (“[T]he burden of proving patentability of a proposed
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`substitute claim [is] on the movant: the patent owner.”); MasterImage 3D v. RealD,
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`IPR2015-00040, 2015 WL 4383224 (PTAB July 15, 2015) (“The burden is not on
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`the petitioner to show unpatentability, but on the patent owner to show patentable
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`distinction over the prior art of record and also prior art known to the patent
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`owner.”) Petitioners further object to Exhibit 2070, and Patent Owner’s reference
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`to or reliance thereon, as being inadmissible under F.R.E. 702, 703, and 37 C.F.R.
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`§ 42.20(c) because Mr. Bates fails to address combinations of the prior art of
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`record and prior art known to the patent owner.
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`Petitioners further object to Exhibit 2070, and Patent Owner’s reference to
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`or reliance thereon, as being inadmissible under F.R.E. 702, 703, 403 (confusing,
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`waste of time, unfair prejudice), 37 C.F.R. § 42.23(b) and Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012), because Exhibit
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`2070 contains opinions and statements outside the proper scope of a Reply
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`Declaration including, for example, untimely opinions and statements attempting
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`to attribute patentability to claim limitations other than the two limitations argued
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`2
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`
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`in the Motion to Amend and/or opinions and statements that could have been
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`included in Mr. Bates’s declaration in support of such Motion. See, e.g., Exhibit
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`2070, ¶¶47-48, 50-51, 57 ; cf. Exhibit 2040, ¶¶116-145, 152.
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`
`
`Dated: August 7, 2017
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`BAKER BOTTS LLP
`ATTN: Wayne Stacy
`101 California Street, Suite 3600
`San Francisco, CA 94111
`Tel: 415-291-6206
`Fax: 415-291-6308
`
`
`
`
`
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`
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`Respectfully submitted,
`
`By: /Wayne Stacy/
`Wayne Stacy
`USPTO Reg. No. 45,125
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`
`3
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.53, the undersigned certifies that on August 7,
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`2017, a complete and entire electronic copy of Petitioner’s Objections to Patent
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`Owner’s Evidence Pursuant to 37 C.F.R. § 42.6 were provided via the Patent
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`Trial and Appeal Board End to End (PTAB E2E) System as well as delivering a
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`copy electronically via email on the following:
`
`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
`
`John Murphy
`murphy@nelbum.com
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`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`
`
`
`
`Dated August 7, 2017
`
`LEAD COUNSEL FOR PETITIONERS
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`
`
`
`
`By: /Wayne Stacy/
`Wayne Stacy
`USPTO Reg. No. 45,125
`
`
`4
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`
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