`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`
`
`Case No. IPR2016-01259
`U.S. Patent No. 8,155,298
`
`
`
`PETITIONERS’ MOTION TO EXCLUDE
`
`
`
`
`
`
`I.
`II.
`
`
`
`
`
`TABLE OF CONTENTS
`
`EXHIBIT 2011 SHOULD BE EXCLUDED .............................................. 1
`EXHIBITS 2021, 2024, 2025, 2027-2030, AND 2065 SHOULD BE
`EXCLUDED .................................................................................................. 2
`
`
`
`
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. 136 (2016) ................................ 2
`
`
`Rules and Regulations
`37 C.F.R. § 42.64(c) ................................................................................................... 1
`37 C.F.R. § 42.123 ..................................................................................................... 2
`Fed. R. Evid. 106 ....................................................................................................... 4
`Fed. R. Evid. 402 ....................................................................................................... 2
`Fed. R. Evid. 403 ...................................................................................................2, 4
`Fed. R. Evid. 1006 ..................................................................................................... 4
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)...2
`
`
`
`
`ii
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64(c), Petitioners Bright House Networks, LLC,
`
`WideOpenWest Finance, LLC, Knology of Florida, Inc., and Birch
`
`Communications, Inc. (collectively “Petitioners”) hereby move to exclude: (1) an
`
`opening claim construction expert declaration of Dr. Eric Burger filed by Bright
`
`House Networks, LLC, WideOpenWest Finance, LLC, Knology of Florida, Inc.,
`
`Birch Communications, Inc., and T3 Communications, Inc., in district court
`
`litigation Case Nos. 3:15- cv-742-J-32MCR, 3:15-cv-743-J-32MCR, 3:15-cv-746-
`
`J-32MCR, 3:15-cv-747-J-32MCR (Exhibit 2011, “Burger Litigation Declaration”);
`
`and (2) Exhibits 2021, 2024, 2025, 2027-2030, and 2065.
`
`Petitioners have complied with the requirements of 37 C.F.R. § 42.64(c).
`
`Specifically, Petitioners timely objected to each of these exhibits and, for each
`
`exhibit, identified and explained the particular evidentiary grounds for their
`
`objections. Paper 34.
`
`I.
`
`EXHIBIT 2011 SHOULD BE EXCLUDED
`Petitioners move to exclude Exhibit 2011 because this exhibit is irrelevant,
`
`confuses the issues, wastes time, and is prejudicial. Paper 34, 3. Exhibit 2011 is
`
`an opening claim construction expert declaration of Dr. Eric Burger filed by Bright
`
`House Networks, LLC, WideOpenWest Finance, LLC, Knology of Florida, Inc.,
`
`Birch Communications, Inc., and T3 Communications, Inc., in district court
`
`
`
`1
`
`
`
`
`
`litigation Case Nos. 3:15- cv-742-J-32MCR, 3:15-cv-743-J-32MCR, 3:15-cv-746-
`
`J-32MCR, 3:15-cv-747-J-32MCR.
`
`This declaration should be excluded based on Federal Rules of Evidence
`
`(“F.R.E.”) 402 because it is not relevant to any issue in this IPR proceeding, and
`
`based on F.R.E. 403 because it confuses the issues in this IPR, wastes time, and is
`
`prejudicial to Petitioners. Patent Owner does not rely on this declaration in its
`
`Response and thus any attempt to rely on it at the oral hearing is impermissible.
`
`See Paper 30 (“Response”); Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,768 (Aug. 14, 2012); 37 C.F.R. § 42.123. Even if Patent Owner had
`
`relied on this declaration in its Response, Mr. Burger is not a witness nor declarant
`
`in the present proceeding, and his declaration was filed in a different forum with a
`
`different claim construction standard than the broadest reasonable interpretation
`
`standard applicable to this IPR proceeding. Cuozzo Speed Technologies, LLC v.
`
`Lee, 579 U.S. 136 (2016).
`
`Thus, Exhibit 2011 should be excluded.
`
`II. EXHIBITS 2021, 2024, 2025, 2027-2030, AND 2065 SHOULD BE EXCLUDED
`Petitioners move to exclude Exhibits 2021, 2024, 2025, 2027-2030, and
`
`2065, and any reference to or reliance thereon by Patent Owner, because these
`
`exhibits are incomplete transcripts and submissions of witnesses who have not
`
`submitted declarations or any direct testimony in the present case, and entities who
`
`
`
`2
`
`
`
`
`
`are not petitioners in the present case, and as Patent Owner’s reference to or
`
`reliance thereon is taken out of context. Thus, these exhibits confuse the issues in
`
`this IPR, waste time, and are prejudicial to Petitioners.
`
`Exhibits 2021 and 2027 are respective copies of excerpts of the trial
`
`transcript of the cross-examination of Mr. Dean Willis, and excerpts of a
`
`declaration of Mr. Willis, from inter partes review proceedings IPR2016-01254
`
`and IPR2016-01257. Exhibit 2024 is a copy of excerpts of Cisco Systems, Inc.’s
`
`petition for inter partes review from inter partes review proceeding IPR2016-
`
`01254. Exhibits 2028-2030, and 2065, are respective copies of excerpts of the trial
`
`transcript of the cross-examination of Dr. Tal Lavian, and excerpts of a declaration
`
`of Dr. Lavian, from inter partes review proceedings IPR2016-01256, IPR2016-
`
`01258, and IPR2016-01260. Exhibit 2025 is a copy of excerpts of YMax
`
`Corporation’s petition for inter partes review from inter partes review proceeding
`
`IPR2016-01260. Neither Mr. Willis nor Dr. Lavian are witnesses in the present
`
`proceeding and have not submitted declarations or any direct testimony in the
`
`present case. Additionally, neither Cisco Systems, Inc. nor YMax Corporation are
`
`petitioners in the present case.
`
`These exhibits should be excluded under F.R.E. 106, 403, and 1006, because
`
`they include only Patent Owner’s cherry-picked excerpts of the entire transcripts
`
`and submissions of such witnesses and entities, and because Patent Owner relies
`
`
`
`3
`
`
`
`
`
`upon these excerpts out of the context of the rest of the testimony and documents.
`
`For example, none of these excerpts involved testimony regarding interconnecting
`
`two different types of networks (such as an IP network and a circuit switched
`
`network) like the prior art of record in this proceeding. And Patent Owner has
`
`deliberately excluded testimony of such witnesses in which the interconnection of
`
`two different types of networks was discussed. See, e.g., Exhibit 2021, IPR2016-
`
`01254, 80:2-20. Moreover, Exhibits 2021 and 2029 are also incomplete as they
`
`lack the respective witnesses’ errata sheet.
`
`Thus, Exhibits 2021, 2024, 2025, 2027-2030, and 2065 should be excluded.
`
`Respectfully submitted,
`
`
`
`By: /Wayne Stacy/
`Wayne Stacy
`USPTO Reg. No. 45,125
`Baker Botts LLP
`101 California Street, Suite 3600
`San Francisco, CA 94111
`LEAD COUNSEL FOR
`PETITIONERS
`
`Dated: August 21, 2017
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.53, the undersigned certifies that on August 21, 2017, a
`
`complete and entire electronic copy of Petitioners’ 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: August 21, 2017
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /Wayne Stacy/
`Wayne Stacy
`USPTO Reg. No. 45,125
`Baker Botts LLP
`101 California Street, Suite 3600
`San Francisco, CA 94111
`LEAD COUNSEL FOR
`PETITIONERS
`
`1
`
`