Case IPR2016-01261
`Patent 8,457,113
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`Paper No. 56
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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 REPLY IN SUPPORT OF
`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. 56
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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 REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64
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`Case IPR2016-01261
`Patent 8,457,113
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`Petitioners’ opposition to Patent Owner’s motion to exclude mischaracterizes
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`Paper No. 56
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`the record. Lewis and LaPier, which Petitioners raised for the first time in reply,
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`raise new arguments that Petitioners failed to make in their petition and that the
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`Board did not consider when instituting review. Lewis and LaPier are therefore
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`irrelevant to the instituted grounds and should be excluded.
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`I.
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`Lewis and LaPier Should be Excluded
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`As an initial matter, the Board should disregard Petitioners’ arguments
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`regarding Lewis and LaPier because Petitioners’ opposition impermissibly argues
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`the merits of the case. Instead of merely stating why it believes that Lewis and
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`LaPier are relevant to the instituted grounds, Petitioners’ opposition includes
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`substantial argument regarding the merits of the case. See Paper No. 52 at 5-7.
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`Motions to exclude (and their corresponding oppositions) are not the proper place
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`for substantive arguments. See Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
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`CBM2012-00002, Paper No. 66 at 62 (P.T.A.B. Jan. 23, 2014) (“While a motion to
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`exclude may raise issues related to admissibility of evidence, it is not an opportunity
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`to file a sur-reply . . . .”). The Board should therefore ignore Petitioners’ arguments.
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`Moreover, Lewis and LaPier are not relevant to the issues raised in the petition
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`and the grounds instituted by the Board. Petitioners argue that their petition explains
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`that “a POSA would understand that Archer discloses server processor 128 coupled
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`to a PSTN tandem switch in PSTN 118 (136) via gateway 126.” Paper No. 52 at 4.
`1
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`Case IPR2016-01261
`Patent 8,457,113
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`Petitioners further argue that Lewis and LaPier were necessary to rebut Mr. Bates’s
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`Paper No. 56
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`opinion that “[p]rior to the date of the invention . . . a POSA would understand that
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`any prior art disclosing an edge device external to the PSTN must access the PSTN
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`through an edge switch first, not a tandem switch.” Paper No. 52 at 5-6 (emphasis
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`added).
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`Petitioners claim that the Reply Exhibits demonstrate what a POSA would
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`have understood in May 2000. See id. at 2-3. But there is no evidence that Lewis
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`and LaPier were even known to the public at that time and could have been
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`considered by a POSA or anyone else not employed by the assignees. Lewis claims
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`a priority date of November 20, 1998, and LaPier claims a priority date of December
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`28, 1998. Assuming both of these patents (or related applications) were published
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`18 months after their respective priority dates, they would have been published after
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`the priority date of the ’113 Patent. Given the testimony that Petitioners would like
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`to rebut with the Reply Exhibits concerns Mr. Bates testifying about the knowledge
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`of a POSA as of the ’113 Patent’s priority date, these Exhibits are wholly deficient
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`because a POSA would not have known about these patents at that time.1
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`1 Patent Owner understands that while the Reply Exhibits may be prior art to
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`the ’113 Patent under 35 U.S.C. § 102, that is not the proper focus. Petitioners
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`2
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`Case IPR2016-01261
`Patent 8,457,113
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`Although a complete discussion of the technical aspects of Lewis and LaPier
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`Paper No. 56
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`is outside the scope of this reply, Patent Owner disputes that Lewis and LaPier show
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`an edge device external to the PSTN that accesses the PSTN directly through a
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`tandem switch. Petitioners’ spin of Lewis and LaPier simply emphasizes the
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`deficiencies of the art cited in the original petition. Indeed, Archer, Petitioners’
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`primary reference, does not even mention tandem switches. It is these deficiencies
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`that Petitioners seek to cure with Lewis and LaPier, not any statements by Mr. Bates,
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`which go to the knowledge of a POSA at a point in time before Lewis and LaPier
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`were publicly available.
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`In summary, instead of merely using the new exhibits to elaborate on their
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`positions raised in the petition, as the Board held was proper in Ford Motor Co. v.
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`Paice LLC, Petitioners are using Lewis and LaPier to impermissibly add new
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`arguments that they did not make in their petition.2 IPR2014-00579, Paper No. 45
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`attempt to use these Exhibits to show what the knowledge of a POSA would have
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`been at the time the ’113 Patent was filed, and for a POSA to have been informed
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`by these Exhibits, they would need to have been publicly available at that time.
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`2 Petitioners’ argument is also belied by its argument in reply that Archer
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`discloses connecting to the PSTN through a tandem switch. Paper No. 34 at 7-8. If
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`3
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`Case IPR2016-01261
`Patent 8,457,113
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`at 30 (P.T.A.B. Sep. 28, 2015) (“In its reply, Ford merely elaborated on an initial
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`Paper No. 56
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`position raised in its Petition and presented evidence in direct rebuttal to Paice’s
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`Response.”). The Board should therefore exclude Lewis and LaPier.
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`Dated: September 5, 2017
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`Registration No. 48,476
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 5th day of September 2017, a copy of Patent
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`Owner FOCAL IP, LLC’s Reply in Support of Motion to Exclude Evidence Under
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`37 C.F.R. § 42.64 has been 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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`Petitioners believe this is true, it is unclear why they also rely on Lewis and LaPier
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`unless Petitioners use them as the basis for additional grounds of unpatentability.
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`Paper No. 56
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`Case IPR2016-01261
`Patent 8,457,113
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`Phone: (415) 291-6205
`Facsimile: (415) 291-6305
`sarah.guske@bakerbotts.com
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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: September 5, 2017
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`Paper No. 56
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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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`6
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