UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`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. IPR2016-01261
`U.S. Patent No. 8,457,113
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`
`
`PETITIONERS’ REPLY IN SUPPORT OF THEIR MOTION TO
`EXCLUDE
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`DM2\8148266.3
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`
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`
`
`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. IPR2016-01261
`U.S. Patent No. 8,457,113
`
`
`
`PETITIONERS’ REPLY IN SUPPORT OF THEIR MOTION TO
`EXCLUDE
`
`DM2\8148266.3
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`
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`I.
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`PATENT OWNER HAS NOT OVERCOME THE ARGUMENTS IN THE MOTION
`TO EXCLUDE FOR EXHIBITS 2011, 2021, 2024, 2025, 2027-2030, 2041, AND
`2065
`For the reasons set forth in Petitioners’ Motion to Exclude (Paper 50)1,
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`Exhibit 2011 remains irrelevant under F.R.E. 402 and any attempted reliance on
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`this exhibit by the Patent Owner for the first time during the oral hearing remains
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`improper under F.R.E. 403 and the Board’s rules. Patent Owner acknowledges
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`that it does not cite to Exhibit 2011 in any paper in this proceeding. Paper 51,
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`Opposition to Motion to Exclude (“Opposition”), at 7. Thus, the Board should
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`exclude this exhibit and reject any attempt by Patent Owner to make any argument
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`relying on this document at the oral hearing, like the one it improperly attempts to
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`inject for the first time in its Opposition. Id.; Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“A party may . . . only present
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`arguments relied upon in the papers previously submitted. No new evidence or
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`arguments may be presented at the oral argument.”)
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`Patent Owner acknowledges that Exhibits 2021, 2024, 2025, and 2027-2030
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`are incomplete transcripts and submissions of witnesses who have not submitted
`
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`1 Petitioners have requested permission from the Board to file a Corrected Motion
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`to Exclude to simply reorder the arguments in the Motion to address the objections
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`in numerical order (as Patent Owner raised in its Opposition). See Paper 51, 11.
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`DM2\8148266.3
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`1
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`declarations or any direct testimony in the present case, and of entities who are not
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`petitioners in the present case. Opposition at 8-9. Patent Owner’s argument that
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`Petitioners, instead of itself, needed to submit the complete transcripts and
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`submissions for each of these exhibits with their Reply is yet another improper
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`attempt to shift Patent Owner’s burden of complying with the F.R.E. onto
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`Petitioners. Rather, Petitioners followed the procedures set forth in F.R.E. 106 and
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`37 C.F.R. 42.64 by timely objecting to these exhibits as incomplete and preserving
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`those objections in its Motion to Exclude. Patent Owner refused to respond to
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`these objections with supplemental evidence including the complete documents
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`and thus failed to cure its lack of compliance with the F.R.E. Petitioners’ filing of
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`Exhibit 1061 did not retroactively relieve Patent Owner of its obligation to comply
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`with the Federal Rules, or with those of this Board, for all of these exhibits. Thus,
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`Exhibits 2021, 2024, 2025, and 2027-2030 remain inadmissible in this IPR.
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`Patent Owner acknowledges that it included additional briefing on page 1 of
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`Exhibit 2041 in contravention of the Board’s order. Opposition, 10; Paper 29,
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`Order on Motion to Amend, at 2-3 (“[T]he aforementioned appendix must contain
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`only citations and exact text of the specification . . . Patent Owner may reproduce
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`only exact text of the specification alongside the corresponding citations.”)
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`Whether this additional briefing does or does not provide a “factual introduction as
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`to the applications that are referenced in the subsequent claim charts” (as Patent
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`DM2\8148266.3
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`2
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`Owner alleges) is inapposite. By including this briefing in its appendix, rather than
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`in its Motion to Amend, Patent Owner circumvented the page limits of 37 C.F.R. §
`
`42.24(b). Thus, the Board should exclude at least this portion of Exhibit 2041.
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`Exhibit 2065 remains inadmissible as set forth in Petitioners’ Motion and for
`
`the same reasons set forth above for Exhibits 2021, 2024, 2025, and 2027-2030.
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`II. MR. BATES’S MOTION TO AMEND REPLY DECLARATION (EXHIBIT 2070)
`REMAINS INADMISSIBLE AND SHOULD BE EXCLUDED
`Mr. Bates’s opinions in Exhibit 2070 are premised on the wrong legal
`
`standard such that they cannot be accepted as reliable. Motion to Exclude, 1-9.
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`Patent Owner acknowledges that it applied the wrong legal standard in its Motion
`
`to Amend, but remarkably argues that Mr. Bates did not rely on this
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`misunderstanding of the law in his opinions. Opposition, 5-6. Mr. Bates’s
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`statements in his declaration submitted in support of Patent Owner’s Motion to
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`Amend Reply demonstrate that this argument is false. Indeed, Mr. Bates identified
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`that his “opinions are [] informed by my understanding of the relevant law.”
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`Exhibit 2070, ¶22. Moreover, various statements in his declaration reflect that Mr.
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`Bates’s opinions are in fact informed by Patent Owner’s misunderstanding of the
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`relevant law governing motions to amend such as:
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` “I understand that . . . the following factors must be evaluated to
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`determine whether a party challenging a patent claim’s validity has met
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`its burden of proof that the claimed invention is obvious.” Id., ¶26;
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`DM2\8148266.3
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`3
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` “A party challenging validity must show that a person of ordinary skill in
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`the art would have had a reason to combine the teachings of the prior art
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`to achieve the claimed invention and would have had a reasonable
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`expectation of success in doing so.” Id., ¶29;
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` “I understand that a party challenging the claims of a patent must present
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`evidence sufficient to establish some articulated, rational reason to select
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`and combine the teachings of the prior art to produce the claimed
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`invention with a reasonable expectation of success.” Id., ¶31;
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` “Petitioner failed to map numerous limitations of the Substitute Claim to
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`each of the references, but rather focused on certain features.” Id., ¶32;
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` “Petitioner did not even attempt to show . . .” Id., ¶¶44-45;
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` “Petitioner did not even attempt to satisfy these limitations . . .” Id., ¶50;
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` “Petitioner has not provided any reasons as to how or why any reference
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`could be modified or combined to read on each of the limitations recited
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`in the Substitute Claim.” Id., ¶54;
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` “Petitioner did not even attempt to address . . .” Id.;
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` “Petitioner did not even attempt to show how any prior art reference
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`could possibly render the Substitute Claim obvious.” Id.
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`Contrary to Patent Owner’s arguments (Opposition, 7), Mr. Bates’s
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`unfettered reliance on Patent Owner’s misunderstanding of the law is further
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`DM2\8148266.3
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`4
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`evident from his wholly conclusory statements regarding combinations of prior art
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`known to the Patent Owner. Exhibit 2070, ¶54. Indeed, Mr. Bates’s alleged
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`opinions on combinations (See id.) do not cite any factual support and fail to even
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`acknowledge the admitted state of the art by the challenged patents as confirmed
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`by his own deposition testimony. Motion, 6 citing Exhibits 1059, 1060; Cf. Paper
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`29, Motion to Amend Order, 5-6 (“Conclusory statements to the effect that no prior
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`art known to Patent Owner renders obvious the proposed substitute claims . . . are
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`not meaningful.”) Rather, Mr. Bates’s opinions in this paragraph are clearly
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`premised on his incorrect understanding that Petitioners bear the burden of
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`explaining how the claims as a whole, including claim features outside of those
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`identified in Patent Owner’s Motion to Amend, are obvious over combinations of
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`the prior art of record. Exhibit 2070, ¶54 (“Petitioner has not provided any reasons
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`. . . Petitioner did not even attempt to address . . . Petitioner did not even attempt
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`to show . . .”). Thus, Petitioners’ arguments in their Motion to Exclude do go to
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`admissibility of these opinions (under F.R.E. 702, 703, and 403) and not simply to
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`the weight of this inaccurate evidence (as Patent Owner contends). Motion, 5-9;
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`Opposition, 1-3, 6-7. And a Motion to Exclude is the only proper vehicle for
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`Petitioners to obtain exclusion of this evidence. See Valeo N.A., Inc., et al., v.
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`Magna Elecs., Inc., IPR2014-01204, Paper 52, at 14-15 (P.T.A.B. Jan. 25, 2016)
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`citing 37 C.F.R. § 42.64; cf. Opposition, 1-3, 6-7.
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`DM2\8148266.3
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`5
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`Dated: September 5, 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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`
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`By:
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`Respectfully submitted,
`DUANE MORRIS LLP
`
`/s/ Patrick D. McPherson
`Patrick D. McPherson
`Reg. No. 46,255
`Lead Counsel
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`
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`DM2\8148266.3
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.53, the undersigned certifies that on September 5, 2017,
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`a complete and entire electronic copy of Petitioners’ Reply to Their Motion to
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`Exclude was served electronically via email on the 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
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`DM2\8148266.3
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`1
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`By: /s/ Christopher J. Tyson
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`Christopher J. Tyson
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`Reg. No. 63,850
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`Back-up Counsel
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