`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
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`v.
`
`Focal IP, LLC,
`Patent Owner
`
`Case No. IPR2016-01261
`U.S. Patent No. 8,457,113
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`PETITIONERS’ FIRST SET OF OBJECTIONS TO PATENT OWNER’S
`EVIDENCE PURSUANT TO 37 C.F.R. 42.6
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`
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioners Bright House Networks,
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`LLC, WideOpenWest Finance, LLC, Knology of Florida, Inc., and Birch
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`Communications, Inc. (collectively “Petitioners”) hereby submit the following
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`objections to Patent Owner Focal IP, LLC’s (“Patent Owner”) Exhibits 2011,
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`2021, 2024-2026, 2027-2030, 2041, and 2065, and any reference to/reliance on the
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`foregoing, in Patent Owner’s Response in the above-captioned inter partes review
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`(“Response”) and Patent Owner’s Motion to Amend in the above-captioned inter
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`partes review (“Motion to Amend”). As required by 37 C.F.R. § 42.62, Petitioners’
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`objections below 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 Response on April 3, 2017. Petitioners’ objections provide notice to
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`Patent Owner that Petitioners may move to exclude these exhibits under 37 C.F.R.
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`§ 42.64(c).
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`I.
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`OBJECTIONS TO EXHIBITS 2021, 2024, 2025, 2027- 2030 AND 2065, AND
`ANY REFERENCE TO/RELIANCE THEREON
`Evidence objected to: Exhibits 2021, 2024, 2025, 2027-2030, and 2065, and
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`any reference to or reliance thereon. Exhibits 2021 and 2027 are respective copies
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`of excerpts of the trial transcript of the cross-examination of Mr. Dean Willis, and
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`excerpts of a declaration of Mr. Dean Willis, from inter partes review proceedings
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`IPR2016-01254 and IPR2016-01257. Exhibit 2024 is a copy of excerpts of Cisco
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`1
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`Systems, Inc.’s petition for inter partes review from inter partes review proceeding
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`IPR2016-01254.
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`Exhibits 2028-2030, and 2065, are respective copies of excerpts of the trial
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`transcript of the cross-examination of Dr. Tal Lavian, and excerpts of a declaration
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`of Dr. Tal Lavian, from inter partes review proceedings IPR2016-01256, IPR2016-
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`01258, and IPR2016-01260. Exhibit 2025 is a copy of excerpts of YMax
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`Corporation’s petition for inter partes review from inter partes review proceeding
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`IPR2016-01260.
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`Neither Mr. Willis nor Dr. Lavian are witnesses in the present proceeding
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`and have not submitted declarations or any direct testimony in the present case.
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`Additionally, neither Cisco Systems, Inc. nor YMax Corporation are petitioners in
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`the present case.
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`Grounds for objection:
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`In addition to the objections already made of record during the cross
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`examination as reflected in the transcripts per 37 C.F.R. § 42.64(a) for Exhibits
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`2021 and 2029, Petitioners object to Exhibits 2021, 2024, 2025, 2027-2030, and
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`2065, and Patent Owner’s reference to or reliance thereon, under F.R.E. 106
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`(incomplete), 402 (relevance), 403 (confusing, waste of time, unfair prejudice),
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`and/or 1006 (improper summary), as testimony of persons that are not witnesses
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`nor declarants in the present case, as submissions by entities that are not petitioners
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`2
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`in the present case, as incomplete transcripts and submissions of such witnesses
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`and entities, and as Patent Owner’s reference to or reliance thereon is taken out of
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`context.
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`Petitioners also object to Exhibits 2021 and 2029 under Rule 106
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`(incomplete) and Rule 403 (misleading, confusing, unfair prejudice) to the extent
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`they respectively lack Mr. Willis’ and Dr. Lavian’s errata sheet.
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`II. OBJECTIONS TO EXHIBIT 2011 AND ANY REFERENCE TO/RELIANCE
`THEREON
`Evidence objected to: Exhibit 2011 and any reference to or reliance thereon.
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`Exhibit 2011 is an opening claim construction expert declaration of Dr. Eric
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`Burger filed by Bright House Networks, LLC, WideOpenWest Finance, LLC,
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`Knology of Florida, Inc., Birch Communications, Inc., and T3 Communications,
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`Inc., in district court litigation Case Nos. 3:15- cv-742-J-32MCR, 3:15-cv-743-J-
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`32MCR, 3:15-cv-746-J-32MCR, 3:15-cv-747-J-32MCR.
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`Grounds for objection:
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`Petitioners object to Exhibit 2011, and Patent Owner’s reference to or
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`reliance thereon, under F.R.E. 402 (relevance) and 403 (confusing, waste of time,
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`unfair prejudice) as this declaration was filed in a different forum with a different
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`claim construction standard and its use would unfairly prejudice Petitioners, waste
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`time and confuse the issues in this proceeding.
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`III. OBJECTIONS TO EXHIBIT 2026 AND ANY REFERENCE TO/RELIANCE
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`3
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`THEREON IN THIS PROCEEDING
`Evidence objected to: Exhibit 2026 and any reference to or reliance thereon
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`in this proceeding. Exhibit 2026 is a copy of excerpts from the declaration of Dr.
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`Thomas F. La Porta from inter partes review proceeding IPR2016-01262.
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`IPR2016-01262 is a different proceeding from this proceeding (IPR2016-01261),
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`and Petitioners challenge a different patent, and different claims in such patent, in
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`IPR2016-01262 than in this proceeding.
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`Grounds for objection:
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`Petitioners object to Exhibit 2026, and Patent Owner’s reference to or
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`reliance thereon in this proceeding, under F.R.E. 106 (incomplete), 402
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`(relevance), 403 (confusing, waste of time, unfair prejudice), and/or 1006
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`(improper summary), because it does not contain the opinions of Dr. Thomas F. La
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`Porta that are relevant to this proceeding, the challenged patent in this proceeding,
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`nor the challenged claims in this proceeding.
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`IV. OBJECTIONS TO EXHIBIT 2041 AND ANY REFERENCE TO/RELIANCE
`THEREON IN THIS PROCEEDING
`Evidence objected to: Exhibit 2041 and any reference to or reliance thereon
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`in this proceeding. Exhibit 2041 is Patent Owner’s “Listing of Section 112 Written
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`Description Support for the Proposed Substitute Claims”. The Board authorized
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`the Patent Owner to “address the requirement to show written description support
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`for each proposed substitute claim in accordance with 37 C.F.R. § 42.121(b) in a
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`4
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`claim listing appendix to the motion to amend that does not count toward the page
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`limit of the motion.” March 21, 2017 Order, Paper 29. However, the Board
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`specifically ordered that “[t]he aforementioned appendix must contain only
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`citations and exact text of the specification showing written description in the
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`specification for each claim limitation of each proposed substitute claim in
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`accordance with 37 C.F.R. § 42.121(b)”, “Patent Owner should not include in its
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`appendix any argument or characterizations in support of written description,” and
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`“Patent Owner may reproduce only exact text of the specification alongside the
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`corresponding citations.” Id. at 2-3 (emphasis added).
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`Grounds for objection:
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`Petitioners object to Exhibit 2041, and Patent Owner’s reference to or
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`reliance thereon in this proceeding, under 37 C.F.R. § 42.24(a) and the Board’s
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`March 21, 2017 order (Paper 29) because Exhibit 2041 includes additional briefing
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`and argument rather than “only citations and exact text of the specification” in
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`violation of the page limits of 37 C.F.R. § 42.24(b) and in direct contravention of
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`the Board’s order.
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`5
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`Dated: April 10, 2017
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`DUANE MORRIS LLP
`ATTN: Patrick McPherson
`505 9th Street, NW, Suite 1000
`Washington, DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
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`Respectfully submitted,
`DUANE MORRIS LLP
`
`By:
`
`/s/ Patrick D. McPherson
`Patrick D. McPherson
`Reg. No. 46,255
`Lead Counsel
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.53, the undersigned certifies that on April 10, 2017, a
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`complete and entire electronic copy of Petitioners’ Objections to Patent Owner’s
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`Evidence Pursuant to 37 C.F.R. § 42.6 was served electronically via email on the
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`following:
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`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
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`John Murphy
`murphy@nelbum.com
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`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
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`Victor Siber
`vsiber@siberlaw.com
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`Hanna Madbak
`hmadbak@siberlaw.com
`
`By: /s/ Christopher J. Tyson
`Christopher J. Tyson
`Reg. No. 63,850
`Back-up Counsel
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`7
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