Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 46
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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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`YMAX CORPORATION
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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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`________________
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`Case IPR2016-01260
`Patent Number: 8,457,113
`________________
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`PATENT OWNER’S RESPONSE TO PETITIONER’S OBSERVATION
`ON CROSS-EXAMINATION OF PATENT OWNER’S
`REPLY WITNESS REGIS J. “BUD” BATES
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`Patent 8,457,113
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`Paper No. 46
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`YMAX CORPORATION
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01260
`Patent Number: 8,457,113
`________________
`
`
`
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`PATENT OWNER’S RESPONSE TO PETITIONER’S OBSERVATION
`ON CROSS-EXAMINATION OF PATENT OWNER’S
`REPLY WITNESS REGIS J. “BUD” BATES
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`Case IPR2016-01260
`Patent 8,457,113
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`Patent Owner Focal IP, LLC respectfully submits this response to Petitioner’s
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`Paper No. 46
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`
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`observations on cross-examination of Patent Owner’s reply witness Mr. Bates filed
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`on August 21, 2017 (“Petitioner’s Observation”).
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`I.
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`PETITIONER’S OBSERVATION SHOULD BE STRICKEN IN ITS
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`ENTIRETY BASED ON NUMEROUS RULES VIOLATIONS
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`Petitioner’s Observation should be stricken in its entirety because it violates
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`numerous rules. See Medtronic v. Nuvasive, IPR2013-00506 (Paper No. 37, Oct.
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`15, 2014) at p. 3 (“In considering whether a motion for observations, or a response,
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`is improper, the entire motion or response may be dismissed and not considered if
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`there is even one excessively long or argumentative observation or response.”).
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`First, “[a]n observation is not an opportunity to raise new issues, re-argue
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`issues, or to pursue objections.” Id. at 2. Petitioner violated this rule in nearly every
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`observation, and Petitioner’s Observation should be stricken accordingly. See, e.g.,
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`observations 4 and 5 where Petitioner attempts to re-argue claim construction of the
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`claimed PSTN tandem switch even though Petitioner’s expert already provided a
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`concise construction of this term in paragraph 22 of his declaration identified as
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`exhibit 1045.
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`Next, “[e]ach observation should not exceed on short paragraph and should
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`not contain arguments.” See Medtronic at 2. Each of Petitioner’s observations
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`improperly includes arguments. Further, many of Petitioner’s observations are
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`Case IPR2016-01260
`Patent 8,457,113
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`excessively long, not short. See, e.g., observation 10, which is 16 lines long.
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`Paper No. 46
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`Further, Petitioner’s Observation improperly presents observations of its own
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`witness, not a reply witness as required by the scheduling order. Observation
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`numbers 2, 3, 6, 8, and 10 observe the deposition testimony of Petitioner’s own
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`expert, and Petitioner’s Observation should be expunged for at least these reasons.
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`See Seagate Tech. v. Enova Tech. Corp., IPR2014-01178 (Paper 45, Oct. 28, 2015),
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`pp. 4-5.
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`II. RESPONSES TO OBSERVATIONS
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`1.
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`Response to Observation #1
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`This testimony is relevant to Mr. Bates’ review of certain prior art references
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`where Petitioner only relied on the prior art reference for a single quote or a few
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`small passages where it was not necessary for Mr. Bates to review the entire
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`document. For example, Petitioner’s Opposition to the Motion to Amend
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`(“Petitioner’s Opposition”) relied on 6 lines of prior art reference Elliot identified
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`as Exhibit 1035, which is a 264 page document. See Petitioner’s Opposition at 17;
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`see also Exhibit 1045 (“ForysDec.”), ¶¶84-86 which reference a few figures and
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`small snippets of Elliot.
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`2.
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`Response to Observation #2
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`This testimony is relevant to whether or not Lamb’s purported tandem access
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`controller teaches a connection to an edge switch, which is also referred to as a
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`Case IPR2016-01260
`Patent 8,457,113
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`central office in certain references. In the same line of questioning observed by
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`Paper No. 46
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`Petitioner, Mr. Bates testified that:
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`16· · · ·Q.· I'm just asking if you think you could find
`17· edge switch if you were given the chance.
`18· · · ·A.· I don't -- I don't know that I can answer that
`19· right now.· What I do recall from the bulk of what
`20· everything is, Lamb uses the term "central office." I
`21· don't recall off the top of my head, and I would have to
`22· look it over to determine if they used the term "edge
`23· switch."
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`See Exhibit 1048, p. 9, lines 16-23; see also p. 16, lines 4-7 and p. 17, lines 20-22,
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`which supports Patent Owner’s positions.
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`3.
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`Response to Observation #3
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`As an initial matter, in this observation and many others, Petitioner misstates
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`the testimony of Mr. Bates, which is highlighted by Petitioner’s omission of
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`providing quotes of the transcript. In the same line of questioning observed by
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`Petitioner, Mr. Bates testified that:
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`2· · · ·Q.· So you're saying that Lamb's TA -- TNS or THS
`3· doesn't receive call signaling, that's your opinion?
`4· · · ·A.· What I'm saying is Lamb is defining an edge
`5· switch, okay, and it's TNS and THS.· The TNS is
`6· connected at the central office, the edge switch.· The
`7· THS is a board of that.· They can signal each other.
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`See Exhibit 1048, p. 16, lines 2-7; see also p. 17, line 10 – p. 18, line 13, which
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`supports Patent Owner’s positions.
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`Case IPR2016-01260
`Patent 8,457,113
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`4.
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`Response to Observation #4
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`Paper No. 46
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`Petitioner’s observation is related to the definition of STPs, not to the
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`definition of the claimed PSTN tandem switch. Further, Petitioner misstates the
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`record and attempts to improperly re-argue its claim construction position where
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`Petitioner’s construction for the claimed “PSTN tandem switch” is interchangeable
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`with the term “access tandem switch.” See ForysDec at ¶55.
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`5.
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`Response to Observation #5
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`Petitioner misstates the record and attempts to improperly re-argue its claim
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`construction position where Petitioner’s construction for the claimed “PSTN tandem
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`switch” is interchangeable with the term “access tandem switch.” See ForysDec at
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`¶55. Further, Petitioner improperly ended their citation it observed in the middle of
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`an answer by Mr. Bates where Petitioner chopped off the most relevant portion of
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`the answer given by Mr. Bates:
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`4· however, a POSA would understand that a tandem
`5· switch is going to carry voice and not the signaling.
`6· As a matter of fact, if I recall correctly, all of
`7· the -- or most of the experts in both side of this case
`8· have said the same thing.
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`See Exhibit 1048, p. 25, lines 4-8.
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`6.
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`Response to Observation #6
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`Petitioner’s observation is related to the definition of STPs, not to the
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`definition of the claimed PSTN tandem switch as it alleges. Further, Petitioner
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`Case IPR2016-01260
`Patent 8,457,113
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`misstates the record and attempts to improperly re-argue its claim construction
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`Paper No. 46
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`position where Petitioner’s construction for the claimed “PSTN tandem switch” is
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`interchangeable with the term “access tandem switch.” See ForysDec at ¶55.
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`Further, Mr. Bates testified that tandem switches and STPs are different for a variety
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`of reasons, including:
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`8· · · ·Q.· And does this figure illustrate an STP
`9· connected to central office switches?
`10· · · · · · · · MR. MURPHY:· Objection, form.
`11· · · ·A.· It shows the STP communicating with the central
`12· office.· And to answer an earlier question you asked, is
`13· the tandem switch -- or is an STP a tandem switch?
`14· These are defined as completely separate and distinct
`15· items.· A tandem is designated with a T.· An STP, the
`16· signaling portion of the network, is designated with
`17· STP.· They are different.
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`See Exhibit 1048, p. 26, lines 8-17.
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`7.
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`Response to Observation #7
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`Petitioner misstates the testimony of Mr. Bates, which is highlighted by
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`Petitioner’s omission of providing quotes of the transcript. In the same line of
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`questioning observed by Petitioner, Mr. Bates repeatedly testified exactly the
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`opposite as to what Petitioner alleges:
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`15· · · ·Q.· So in your opinion, is -- are Lines 231 and 232
`16· of Figure 4 telephone lines?
`17· · · ·A.· In my opinion, those are lines, those phones
`18· are connected to that switch.· That's an edge switch, a
`19· central office switch 202-2, and it shows that the
`20· telephones are connected to that switch.
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 46
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`See Exhibit 1048, p. 28, lines 15-20; see also p. 30, lines 1-5 (“I’m going to use that
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`wire, that line, to generate my connection.”); see also p. 30, line 18-25 (“You’re
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`misrepresenting what I’m saying. … There is a physical set of wires. … We create
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`the connection, the call connection that device across that line.”); see also p. 31,
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`lines 6-9 (“The physical construct still has to be there. … And that’s what I keep
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`telling you.”); see also p. 31, line 25 by the questioning attorney for Petitioner
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`referring to line 231 (“Q: I don’t disagree there’s a physical connection.”).
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`8.
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`Response to Observation #8
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`Petitioner misstates the testimony of Mr. Bates, which is highlighted by
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`Petitioner’s omission of providing quotes of the transcript. In the same line of
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`questioning observed by Petitioner, Mr. Bates repeatedly testified exactly the
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`opposite as to what Petitioner alleges:
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`15· · · ·Q.· So in your opinion, is -- are Lines 231 and 232
`16· of Figure 4 telephone lines?
`17· · · ·A.· In my opinion, those are lines, those phones
`18· are connected to that switch.· That's an edge switch, a
`19· central office switch 202-2, and it shows that the
`20· telephones are connected to that switch.
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`See Exhibit 1048, p. 28, lines 15-20; see also p. 30, lines 1-5 (“I’m going to use that
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`wire, that line, to generate my connection.”); see also p. 30, line 18-25 (“You’re
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`misrepresenting what I’m saying. … There is a physical set of wires. … We create
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`the connection, the call connection that device across that line.”); see also p. 31,
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`Case IPR2016-01260
`Patent 8,457,113
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`lines 6-9 (“The physical construct still has to be there. … And that’s what I keep
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`Paper No. 46
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`telling you.”); see also p. 31, line 25 by the questioning attorney for Petitioner
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`referring to telephone line 231 (“Q: I don’t disagree there’s a physical connection.”).
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`9.
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`Response to Observation #9
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`Petitioner misstates the testimony of Mr. Bates, which is highlighted by
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`Petitioner’s omission of providing quotes of the transcript. Rather, Petitioner
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`broadly cites to five pages of deposition testimony that allegedly support Petitioner’s
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`misstatement of the testimony of Mr. Bates. In the same line of questioning
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`observed by Petitioner, Mr. Bates repeatedly testifies to positions directly opposite
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`as to what Petitioner alleges, such as:
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`18· · · ·A.· This is using the central office.· The TNS is
`19· located at the central office, at the edge switch.· It's
`20· responsible for building the connections to the end
`21· user, 231 and 232, if you will.· That's what that device
`22· is doing.· The TAC communicates with the tandem switch
`23· out in the PSTN, not at the edge.· There's a complete
`24· different cycle there.
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`See Exhibit 1048, p. 35, lines 18-24.
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`10. Response to Observation #10
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`Petitioner again grossly misstates the testimony of Mr. Bates, where
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`Petitioner broadly cites to over three pages of deposition testimony that allegedly
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`supports Petitioner’s misstatement of the testimony of Mr. Bates. As an initial
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`matter, none of the questions at the deposition were even directed to the written
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`Patent 8,457,113
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`description support that Patent Owner relies on for this term challenged by
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`Paper No. 46
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`Petitioner. See, e.g., Patent Owner Reply at p. 11 citing to Exhibit 2041 at pp. 7-9,
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`21-23, 35-37, and 49-51 that “[t]he ’113 Patent clearly supports the Substitute
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`Claim.” Indeed, Petitioner was asking questions about the ’777 Patent, not the ’113
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`Patent, but putting this aside, Petitioner still did not ask questions about this term in
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`the same context of the specification relied upon by Patent Owner. Further,
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`Petitioner asks questions “how is terminates being used there?” in asking about
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`unrelated disclosure in different contexts than the written description support relied
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`upon by Patent Owner, where Petitioner mischaracterizes the testimony to somehow
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`apply to the entire patent. See Exhibit 1048, p. 40, lines 3-20.
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`11. Response to Observation #11
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`Petitioner again misstates the testimony of Mr. Bates. Contrary to the
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`allegations by Petitioner, Mr. Bates testified:
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`·2· · · · · · · · So what you're saying is, if the first call
`·3· is answered before the second call, that is outside the
`·4· scope of the claim?
`·5· · · · · · · · MR. MURPHY:· Objection, form.
`·6· · · ·A.· In my opinion, yes.· The TAC is going to
`·7· receive the call, hold the call, place the second call
`·8· request, wait until that call is answered.· If the call
`·9· doesn't get answered, what would the TAC do with it if
`10· it answered the first call?· So the TAC is responsible
`11· for making sure the second party -- the second call is
`12· completed and answered before it joins the two together,
`13· before it answers the first call.
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`Patent 8,457,113
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`See Exhibit 1048, p. 63, lines 2-13.
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`Paper No. 46
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`Dated: August 28, 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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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 46
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 28th day of August 2017, a copy of Patent Owner’s
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`Response to Petitioner’s Observations has been served in its entirety via email on
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`the following:
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`Joseph J. Richetti
`Alexander Walden
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-4630
`Email: joe.richetti@bryancave.com
`Email: alexander.walden@bryancave.com
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`Email: PTAB-NY@bryancave.com
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`Mark D. Passler
`David Brafman
`AKERMAN LLP
`777 South Flagler Drive
`Suite 1100 West Tower
`West Palm Beach, FL 33401
`Tel: (561) 653-5000
`Fax: (561) 659-6313
`Mark.passler@akerman.com
`David.brafman@akerman.com
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`Dated: August 28, 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
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 46
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`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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