UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CISCO SYSTEMS, INC.
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case No. IPR2016-01257
`Patent: 8,457,113
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF THEIR MOTION TO
`EXCLUDE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CISCO SYSTEMS, INC.
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case No. IPR2016-01257
`Patent: 8,457,113
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF THEIR MOTION TO
`EXCLUDE
`
`
`
`Case IPR2016-01257
`Patent No. 8,457,113
`
`
`I. MR. BATES’ DECLARATION (EXHIBIT 2070) SHOULD BE EXCLUDED
`Mr. Bates’ opinions in Exhibit 2070 are premised on the wrong legal
`
`standard such that they cannot be accepted as reliable. Motion to Exclude, 1-9.
`
`Patent Owner acknowledges that it applied the wrong legal standard in its Motion
`
`to Amend, but remarkably argues that Mr. Bates did not rely on this
`
`misunderstanding of the law in his opinions. Paper 47, Opposition at 5-6. Mr.
`
`Bates’ statements in his declaration submitted in support of Patent Owner’s Motion
`
`to Amend demonstrate that this argument is false. Indeed, Mr. Bates identified that
`
`his “opinions are [] informed by my understanding of the relevant law.” Exhibit
`
`2070, ¶22. Moreover, various statements in his declaration reflect that Mr. Bates’s
`
`opinions are in fact informed by Patent Owner’s misunderstanding of the relevant
`
`law governing motions to amend such as:
`
` “A party challenging validity must show that a person of ordinary skill in
`
`the art would have had a reason to combine the teachings of the prior art
`
`to achieve the claimed invention and would have had a reasonable
`
`expectation of success in doing so.” Id., ¶29;
`
` “I understand that a party challenging the claims of a patent must present
`
`evidence sufficient to establish some articulated, rational reason to select
`
`and combine the teachings of the prior art to produce the claimed
`
`1
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`Case IPR2016-01257
`Patent No. 8,457,113
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`
`invention with a reasonable expectation of success, which is sometimes
`
`referred to as a prima facie conclusion . . . of obviousness.” Id., ¶31;
`
` “Petitioner failed to address many of the amended claim limitations . . .
`
`.” Id., ¶32;
`
` “Petitioner did not even address each of these claim limitations” Id.,
`
`¶42;
`
` “Petitioner did not even attempt to show . . .” Id., ¶53;
`
` “Petitioner has not provided any reasons as to how or why any reference
`
`could be modified or combined to read on each of the limitations recited
`
`in the Substitute Claim.” Id., ¶57;
`
` “Petitioner did not even attempt to address the majority of the claim
`
`limitations.” Id.;
`
` “Petitioner did not even attempt to show how any prior art reference
`
`could possibly render the Substitute Claim obvious.” Id.
`
`Contrary to Patent Owner’s arguments (Opposition, 7), Mr. Bates’
`
`unfettered reliance on Patent Owner’s misunderstanding of the law is further
`
`evident from his wholly conclusory statements regarding combinations of prior art
`
`known to the Patent Owner. Exhibit 2070, ¶57. Indeed, Mr. Bates’ alleged
`
`opinions on combinations (See id.) do not cite any factual support and fail to even
`
`acknowledge the admitted state of the art by the challenged patents as confirmed
`
`2
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`Case IPR2016-01257
`Patent No. 8,457,113
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`by his own deposition testimony. Rather, Mr. Bates’ opinions in this paragraph are
`
`clearly premised on his incorrect understanding that Petitioners bear the burden of
`
`explaining how the claims as a whole, including claim features outside of those
`
`identified in Patent Owner’s Motion to Amend, are obvious over combinations of
`
`the prior art of record. Exhibit 2070, ¶57 (“Petitioner has not provided any reasons
`
`. . . Petitioner did not even attempt to address . . . Petitioner did not even attempt
`
`to show . . .”). Thus, Petitioners’ arguments in their Motion to Exclude do go to
`
`admissibility of these opinions (under F.R.E. 702, 703, and 403) and not simply to
`
`the weight of this inaccurate evidence (as Patent Owner contends). And a Motion
`
`to Exclude is the only proper vehicle for Petitioners to obtain exclusion of this
`
`evidence. See Valeo N.A., Inc., et al., v. Magna Elecs., Inc., IPR2014-01204,
`
`Paper 52, at 14-15 (P.T.A.B. Jan. 25, 2016) citing 37 C.F.R. § 42.64; cf.
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`Opposition, 1-3, 6-7.
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`As such, the Board should also exclude Exhibit 2070.
`
`II. EXHIBITS 2023, 2025, 2028-2030, 2041, AND 2065 SHOULD BE EXCLUDED
`Patent Owner acknowledges that Exhibits 2023, 2025, and 2028-2030 are
`
`incomplete transcripts and submissions of witnesses who have not submitted
`
`declarations or any direct testimony in the present case, and of entities who are not
`
`petitioners in the present case. Opposition at 7. Patent Owner’s argument that
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`Petitioners, instead of itself, needed to submit the complete transcripts and
`
`3
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`
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`Case IPR2016-01257
`Patent No. 8,457,113
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`submissions for each of these exhibits with their Reply is yet another improper
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`attempt to shift Patent Owner’s burden of complying with the F.R.E. onto
`
`Petitioners. Rather, Petitioners followed the procedures set forth in F.R.E. 106 and
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`37 C.F.R. 42.64 by timely objecting to these exhibits as incomplete and preserving
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`those objections in its Motion to Exclude. See Paper No. 27 (Cisco’s Objections to
`
`Evidence). Patent Owner refused to respond to these objections with supplemental
`
`evidence including the complete documents and thus failed to cure its lack of
`
`compliance with the F.R.E. Thus, Exhibits 2023, 2025, and 2028-2030 remain
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`inadmissible in this IPR.
`
`Patent Owner acknowledges that it included additional briefing on page 1 of
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`Exhibit 2041 in contravention of the Board’s order. Opposition, 9-10; Order on
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`Motion to Amend, at 2-3 (“[T]he aforementioned appendix must contain only
`
`citations and exact text of the specification . . . Patent Owner may reproduce only
`
`exact text of the specification alongside the corresponding citations.”) Whether
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`this additional briefing does or does not provide a “factual introduction as to the
`
`applications that are referenced in the subsequent claim charts” (as Patent Owner
`
`alleges) is inapposite. By including this briefing in its appendix, rather than in its
`
`Motion to Amend, Patent Owner circumvented the page limits of 37 C.F.R. §
`
`42.24(b). Thus, the Board should exclude at least this portion of Exhibit 2041.
`
`4
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`Case IPR2016-01257
`Patent No. 8,457,113
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`Exhibit 2065 remains inadmissible as set forth in Petitioners’ Motion and for
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`the same reasons set forth above for Exhibits 2023, 2025, and 2028-2030.
`
`
`
`Dated: September 5, 2017
`
`BAKER BOTTS L.L.P.
`ATTN: Wayne O. Stacy
`101 California Street, Suite 3600
`San Francisco, CA 94111
`Tel: (415) 291-6206
`Fax: (415) 291-6306
`
`
`
`
`
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Reg. No. 45,125
`Lead Counsel
`
`
`
`
`5
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`
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`Case IPR2016-01257
`Patent No. 8,457,113
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.53, the undersigned certifies that on September 5, 2017,
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`a complete and entire electronic copy of Petitioner’s Reply ISO Motion to
`
`Exclude was served electronically via email on the following:
`
`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
`
`John Murphy
`murphy@nelbum.com
`
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`
`Victor Siber
`vsiber@siberlaw.com
`
`Hanna Madbak
`hmadbak@siberlaw.com
`
`
`
`
`
`
`
`
`Dated September 5, 2017
`
`LEAD COUNSEL FOR PETITIONERS
`
`
`
`By: /Wayne O. Stacy/
`Wayne Stacy
`Reg. No. 45,125
`Lead Counsel
`
`
`
`
`
`
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