Case IPR2016-01261
`Patent 8,457,113
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`Paper No. 47
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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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`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC.
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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 IPR2016-01261
`Patent Number: 8,457,113 B2
`________________
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`PATENT OWNER FOCAL IP, LLC’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64
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`Patent 8,457,113
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`Paper No. 47
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC.
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01261
`Patent Number: 8,457,113 B2
`________________
`
`
`
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`PATENT OWNER FOCAL IP, LLC’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64
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`Case IPR2016-01261
`Patent 8,457,113
`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner Focal IP, LLC hereby moves
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`Paper No. 47
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`to exclude Exhibits 1057, 1058, and portions of Exhibit 1065.
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`I.
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`PROCEDURAL HISTORY
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`Petitioners filed a petition for inter partes review on June 24, 2016 (Paper No.
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`1). Patent Owner filed a preliminary response on October 12, 2016 (Paper No. 11),
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`and Petitioners filed a reply to Patent Owner’s preliminary response on November
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`11, 2016 (Paper No. 17).1 The Board instituted trial on January 3, 2017 (Paper No.
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`19). Patent Owner filed a request for rehearing on January 17, 2017 (Paper No. 21),
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`which the Board denied on January 31, 2017 (Paper No. 23). Patent Owner filed its
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`Patent Owner Response on April 3, 2017 (Paper No. 30) accompanied by the
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`Declaration of Regis J. “Bud” Bates (Exhibit 2022). Patent Owner also filed a
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`contingent motion to amend on April 3, 2017 (Paper No. 31). Petitioners filed a
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`reply to Patent Owner’s response (Paper No. 34) and an opposition to Patent
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`Owner’s motion to amend (Paper No. 35) on June 26, 2017. Patent Owner filed
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`objections to evidence submitted, relied on, or cited by Petitioners in connection
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`1 Petitioners’ reply to Patent Owner’s preliminary response was originally
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`filed as Paper No. 14, but exceeded the ten-page limit. A corrected reply was filed
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`as Paper No. 17.
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`1
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`Case IPR2016-01261
`Patent 8,457,113
`with their reply and opposition to Patent Owner’s motion to amend on June 30, 2017
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`Paper No. 47
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`(Paper No. 38).
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`II.
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` ARGUMENT
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`Motions to exclude are authorized by 37 C.F.R. § 42.64(c). “The motion must
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`identify the objections in the record in order and must explain the objections.” 37
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`C.F.R. § 42.64(c). “A motion to exclude evidence must: (a) Identify where in the
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`record the objection originally was made; (b) Identify where in the record the
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`evidence sought to be excluded was relied upon by an opponent; (c) Address
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`objections to exhibits in numerical order; and (d) Explain each objection.” 77 Fed.
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`Reg. 48,756, 48,767 (Aug. 14, 2012).
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`The Federal Rules of Evidence apply in inter partes review proceedings. 37
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`C.F.R. § 42.62(a). Evidence is only admissible if it is relevant. Fed. R. Evid. 402.
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`“Evidence is relevant if: (a) it has any tendency to make a fact more or less probable
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`than it would be without the evidence; and (b) the fact is of consequence in
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`determining the action.” Fed. R. Evid. 401. Even if relevant, evidence may be
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`excluded “if its probative value is substantially outweighed by a danger of one or
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`more of the following: unfair prejudice, confusing the issues, misleading the jury,
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`undue delay, wasting time, or needlessly presenting cumulative evidence.” Fed. R.
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`Evid. 403.
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`2
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`Case IPR2016-01261
`Patent 8,457,113
`A. Exhibit 1057 Should Be Excluded In Connection With Petitioners’
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`Paper No. 47
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`Reply.
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`Exhibit 1057 is a copy of U.S. Patent No. 6,442,169 to Lewis (“Lewis).
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`Petitioners rely on Lewis as a new prior art reference to support their new and
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`untimely arguments that it was well-understood to a POSA to interconnect an IP
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`network to the PSTN through a tandem switch. Paper No. 34 at 9-10. Patent Owner
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`objected to Exhibit 1057 in Paper No. 38.
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`Patent Owner moves to exclude Exhibit 1057 in connection with Petitioners’
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`reply as irrelevant under Rule 402. The Board did not institute trial with respect to
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`Lewis (see Paper No. 19 at 25), nor did the petition ever argue that it was well-
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`understood to a POSA to interconnect an IP network to the PSTN through a tandem
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`switch. Petitioners improperly attempt to use Lewis to remedy the deficiencies of
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`the prior art Petitioners rely on in their petition. The trial is limited to the arguments,
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`evidence, and grounds raised in the petition and instituted by the Board. See 37
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`C.F.R. § 42.104(b)(5) (requiring the petitioner to identify in the petition the evidence
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`relied on to support the challenge); id. § 42.108(a) (“When instituting inter partes
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`review, the Board may authorize the review to proceed on all or some of the
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`challenged claims and on all or some of the grounds of unpatentability asserted for
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`each claim.”). Because Petitioners failed to timely bring this argument or this
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`evidence in their petition, Lewis is irrelevant.
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`3
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`Case IPR2016-01261
`Patent 8,457,113
`Further, any probative value is substantially outweighed by the danger of one
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`Paper No. 47
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`or more of the following: unfair prejudice, misleading the factfinders, and confusing
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`the issues. Lewis and the untimely argument it allegedly supports were not properly
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`raised in the petition. This evidence should therefore be excluded under Rule 403
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`to prevent unfair prejudice, misleading of the factfinders, and confusing of the
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`issues.2
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`B.
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`Exhibit 1058 Should Be Excluded In Connection With Petitioners’
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`Reply.
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`Exhibit 1058 is a copy of U.S. Patent No. 6,333,931 to LaPier (“LaPier”).
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`Petitioners rely on LaPier as a new prior art reference to support their new and
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`untimely arguments that it was well-understood to a POSA to interconnect an IP
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`2 Petitioners also rely on Lewis in connection with their opposition to Patent
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`Owner’s motion to amend. Patent Owner does not object to the use of Lewis in
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`connection with the motion to amend, but only seeks its exclusion in connection with
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`Petitioners’ reply. Cf. Fed. R. Evid. 105 (“If the court admits evidence that is
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`admissible against a party or for a purpose—but not against another party or for
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`another purpose—the court, on timely request, must restrict the evidence to its
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`proper scope and instruct the jury accordingly.”).
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`4
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`Case IPR2016-01261
`Patent 8,457,113
`network to the PSTN through a tandem switch. Paper No. 34 at 10-11. Patent
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`Paper No. 47
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`Owner objected to Exhibit 1058 in Paper No. 38.
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`Patent Owner moves to exclude Exhibit 1058 in connection with Petitioners’
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`reply as irrelevant under Rule 402. The Board did not institute trial with respect to
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`LaPier (see Paper No. 19 at 25), nor did the petition ever argue that it was well-
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`understood to a POSA to interconnect an IP network to the PSTN through a tandem
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`switch. Petitioners improperly attempt to use LaPier to remedy the deficiencies of
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`the prior art Petitioners rely on in their petition. The trial is limited to the arguments,
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`evidence, and grounds raised in the petition and/or instituted by the Board. See 37
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`C.F.R. § 42.104(b)(5) (requiring the petitioner to identify in the petition the evidence
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`relied on to support the challenge); id. § 42.108(a) (“When instituting inter partes
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`review, the Board may authorize the review to proceed on all or some of the
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`challenged claims and on all or some of the grounds of unpatentability asserted for
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`each claim.”). Because Petitioners failed to timely bring this argument or evidence
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`in their Petition, LaPier is irrelevant under Rule 402.
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`Further, any probative value is substantially outweighed by the danger by one
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`or more of the following: unfair prejudice, misleading the factfinders, and confusing
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`the issues. LaPier and the untimely argument it allegedly supports were not properly
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`raised in the petition. This evidence should therefore be excluded under Rule 403
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`5
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`Case IPR2016-01261
`Patent 8,457,113
`to prevent unfair prejudice, misleading of the factfinders, and confusing of the
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`Paper No. 47
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`issues.3
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`C.
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`Portions of Exhibit 1065 Should Be Excluded.
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`Exhibit 1065 is the Expert Declaration of Thomas F. La Porta that Petitioners
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`submitted in connection with their reply. Patent Owner objected to portions of
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`Exhibit 1065 in Paper No. 38.
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`Patent Owner moves to exclude paragraphs 35-37 and 42-444 and all other
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`paragraphs of Exhibit 1065 to the extent they rely, directly or indirectly, on the new
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`arguments concerning Lewis and LaPier as irrelevant under Rules 402 and 403. As
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`discussed above, Lewis and LaPier are irrelevant. Accordingly, Dr. La Porta’s
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`3 Petitioners also rely on LaPier in connection with their opposition to Patent
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`Owner’s motion to amend. Patent Owner does not object to the use of LaPier in
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`connection with the motion to amend, but only seeks its exclusion in connection with
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`Petitioners’ reply. Cf. Fed. R. Evid. 105 (“If the court admits evidence that is
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`admissible against a party or for a purpose—but not against another party or for
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`another purpose—the court, on timely request, must restrict the evidence to its
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`proper scope and instruct the jury accordingly.”).
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`4 Petitioners rely on paragraph 35-37 and 42-44 on pages 9-13 of their reply
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`(Paper No. 34).
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`6
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`Case IPR2016-01261
`Patent 8,457,113
`testimony regarding these new arguments and Lewis and LaPier is similarly
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`Paper No. 47
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`irrelevant, and should be excluded.
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`Dated: August 21, 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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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 21st day of August 2017, a copy of Patent Owner
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`FOCAL IP, LLC’s Motion to Exclude Evidence Under 37 C.F.R. § 42.64 has been
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`served in its entirety via email on the following:
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`Wayne Stacy
`BAKER BOTTS L.L.P.
`2001 Ross Avenue
`Dallas, TX 75201
`Phone: (214) 953-6678
`Facsimile: (214) 661-4678
`wayne.stacy@bakerbotts.com
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`Sarah J. Guske
`BAKER BOTTS L.L.P.
`101 California Street, #3070
`San Francisco, CA 94111
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`Paper No. 47
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`Case IPR2016-01261
`Patent 8,457,113
`Phone: (415) 291-6205
`Facsimile: (415) 291-6305
`sarah.guske@bakerbotts.com
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`
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`May Eaton
`BAKER BOTTS L.L.P.
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7520
`Facsimile: (650) 739-7620
`may.eaton@bakerbotts.com
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`Patrick McPherson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
`PDMcPherson@duanemorris.com
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`Christopher Tyson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-7851
`Fax: 202-776-7801
`CJTyson@duanemorris.com
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`Kyle Lynn Elliott
`Spencer Fane LLP
`1000 Walnut, Suite 1400
`Kansas City, MO 64106
`Tel: 816-292-8150
`Fax: 816-474-3216
`sfbbaction@spencerfane.com
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`Case IPR2016-01261
`Patent 8,457,113
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`Dated: August 21, 2017
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`Paper No. 47
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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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`9
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