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.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`Case No. IPR2016-01262
`U.S. Patent No. 7,764,777
`
`PETITIONERS’ FIRST SET OF OBJECTIONS TO PATENT OWNER’S
`EVIDENCE PURSUANT TO 37 C.F.R. 42.6
`
`
`
`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. IPR2016-01262
`U.S. Patent No. 7,764,777
`
`PETITIONERS’ FIRST SET OF OBJECTIONS TO PATENT OWNER’S
`EVIDENCE PURSUANT TO 37 C.F.R. 42.6
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioners Bright House Networks,
`
`LLC, WideOpenWest Finance, LLC, Knology of Florida, Inc., and Birch
`
`Communications, Inc. (collectively “Petitioners”) hereby submit the following
`
`objections to Patent Owner Focal IP, LLC’s (“Patent Owner”) Exhibits 2011,
`
`2021, 2023-2025, 2027-2030, 2041, 2064, and 2065, and any reference to/reliance
`
`on the foregoing, in Patent Owner’s Response in the above-captioned inter partes
`
`review (“Response”) and Patent Owner’s Motion to Amend in the above-captioned
`
`inter partes review (“Motion to Amend”). As required by 37 C.F.R. § 42.62,
`
`Petitioners’ objections below apply the Federal Rules of Evidence (“F.R.E.”).
`
`Petitioners’ objections are timely under 37 C.F.R. § 42.64(b)(1) because
`
`they are being filed and served within five (5) business days of the filing of Patent
`
`Owner’s Response on April 3, 2017. Petitioners’ objections provide notice to
`
`Patent Owner that Petitioners may move to exclude these exhibits under 37 C.F.R.
`
`§ 42.64(c).
`
`I.
`
`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
`
`any reference to or reliance thereon. Exhibits 2021 and 2027 are respective copies
`
`of excerpts of the trial transcript of the cross-examination of Mr. Dean Willis, and
`
`excerpts of a declaration of Mr. Dean Willis, from inter partes review proceedings
`
`IPR2016-01254 and IPR2016-01257. Exhibit 2024 is a copy of excerpts of Cisco
`
`1
`
`
`
`Systems, Inc.’s petition for inter partes review from inter partes review proceeding
`
`IPR2016-01254.
`
`Exhibits 2028-2030, and 2065, are respective copies of excerpts of the trial
`
`transcript of the cross-examination of Dr. Tal Lavian, and excerpts of a declaration
`
`of Dr. Tal Lavian, from inter partes review proceedings IPR2016-01256, IPR2016-
`
`01258, and IPR2016-01260. Exhibit 2025 is a copy of excerpts of YMax
`
`Corporation’s petition for inter partes review from inter partes review proceeding
`
`IPR2016-01260.
`
`Neither Mr. Willis nor Dr. Lavian are witnesses in the present proceeding
`
`and have not submitted declarations or any direct testimony in the present case.
`
`Additionally, neither Cisco Systems, Inc. nor YMax Corporation are petitioners in
`
`the present case.
`
`Grounds for objection:
`
`In addition to the objections already made of record during the cross
`
`examination as reflected in the transcripts per 37 C.F.R. § 42.64(a) for Exhibits
`
`2021 and 2029, Petitioners object to Exhibits 2021, 2024, 2025, 2027-2030, 2064,
`
`and 2065 and Patent Owner’s reference to or reliance thereon, under F.R.E. 106
`
`(incomplete), 402 (relevance), 403 (confusing, waste of time, unfair prejudice),
`
`and/or 1006 (improper summary), as testimony of persons that are not witnesses
`
`nor declarants in the present case, as submissions by entities that are not petitioners
`
`2
`
`
`
`in the present case, as incomplete transcripts and submissions of such witnesses
`
`and entities, and as Patent Owner’s reference to or reliance thereon is taken out of
`
`context.
`
`Petitioners also object to Exhibits 2021 and 2029 under Rule 106
`
`(incomplete) and Rule 403 (misleading, confusing, unfair prejudice) to the extent
`
`they respectively lack Mr. Willis’ and Dr. Lavian’s errata sheet.
`
`II. OBJECTIONS TO EXHIBIT 2011 AND ANY REFERENCE TO/RELIANCE
`THEREON
`Evidence objected to: Exhibit 2011 and any reference to or reliance thereon.
`
`Exhibit 2011 is an opening claim construction expert declaration of Dr. Eric
`
`Burger filed by Bright House Networks, LLC, WideOpenWest Finance, LLC,
`
`Knology of Florida, Inc., Birch Communications, Inc., and T3 Communications,
`
`Inc., in district court litigation Case Nos. 3:15- cv-742-J-32MCR, 3:15-cv-743-J-
`
`32MCR, 3:15-cv-746-J-32MCR, 3:15-cv-747-J-32MCR.
`
`Grounds for objection:
`
`Petitioners object to Exhibit 2011, and Patent Owner’s reference to or
`
`reliance thereon, under F.R.E. 402 (relevance) and 403 (confusing, waste of time,
`
`unfair prejudice) as this declaration was filed in a different forum with a different
`
`claim construction standard and its use would unfairly prejudice Petitioners, waste
`
`time and confuse the issues in this proceeding.
`
`III. OBJECTIONS TO EXHIBITS 2023 AND 2064 AND ANY REFERENCE
`
`3
`
`
`
`TO/RELIANCE THEREON IN THIS PROCEEDING
`Evidence objected to: Exhibits 2023 and 2064 and any reference to or
`
`reliance thereon in this proceeding. Exhibit 2023 is a copy of excerpts from a
`
`petition for inter partes review from inter partes review proceeding IPR2016-
`
`01261. Exhibit 2064 is a copy of excerpts from a declaration of Dr. Thomas F. La
`
`Porta from inter partes review proceeding IPR2016-01261. IPR2016-01261 is a
`
`different proceeding from this proceeding (IPR2016-01262), and Petitioners
`
`challenge a different patent, and different claims in such patent, in IPR2016-01261
`
`than in this proceeding.
`
`Grounds for objection:
`
`Petitioners object to Exhibits 2023 and 2064, and Patent Owner’s reference
`
`to or reliance thereon in this proceeding, under F.R.E. 106 (incomplete), 402
`
`(relevance), 403 (confusing, waste of time, unfair prejudice), and/or 1006
`
`(improper summary), because the exhibits do not contain the opinions of Dr.
`
`Thomas F. La Porta, or the submissions of Petitioners, that are relevant to this
`
`proceeding, the challenged patent in this proceeding, nor the challenged claims in
`
`this proceeding.
`
`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
`
`in this proceeding. Exhibit 2041 is Patent Owner’s “Listing of Section 112 Written
`
`4
`
`
`
`Description Support for the Proposed Substitute Claims”. The Board authorized
`
`the Patent Owner to “address the requirement to show written description support
`
`for each proposed substitute claim in accordance with 37 C.F.R. § 42.121(b) in a
`
`claim listing appendix to the motion to amend that does not count toward the page
`
`limit of the motion.” March 21, 2017 Order, Paper 29. However, the Board
`
`specifically ordered that “[t]he aforementioned appendix must contain only
`
`citations and exact text of the specification showing written description in the
`
`specification for each claim limitation of each proposed substitute claim in
`
`accordance with 37 C.F.R. § 42.121(b)”, “Patent Owner should not include in its
`
`appendix any argument or characterizations in support of written description,” and
`
`“Patent Owner may reproduce only exact text of the specification alongside the
`
`corresponding citations.” Id. at 2-3 (emphasis added).
`
`Grounds for objection:
`
`Petitioners object to Exhibit 2041, and Patent Owner’s reference to or
`
`reliance thereon in this proceeding, under 37 C.F.R. § 42.24(a) and the Board’s
`
`March 21, 2017 order (Paper 29) because Exhibit 2041 includes additional briefing
`
`and argument rather than “only citations and exact text of the specification” in
`
`violation of the page limits of 37 C.F.R. § 42.24(b) and in direct contravention of
`
`the Board’s order.
`
`5
`
`
`
`Dated: April 10, 2017
`
`DUANE MORRIS LLP
`ATTN: Patrick McPherson
`505 9th Street, NW, Suite 1000
`Washington, DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
`
`
`
`Respectfully submitted,
`DUANE MORRIS LLP
`
`By:
`
`/s/ Patrick D. McPherson
`Patrick D. McPherson
`Reg. No. 46,255
`Lead Counsel
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.53, the undersigned certifies that on April 10, 2017, a
`
`complete and entire electronic copy of Petitioners’ Objections to Patent Owner’s
`
`Evidence Pursuant to 37 C.F.R. § 42.6 was served electronically via email on the
`
`following:
`
`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
`
`John Murphy
`murphy@nelbum.com
`
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`
`Victor Siber
`vsiber@siberlaw.com
`
`Hanna Madbak
`hmadbak@siberlaw.com
`
`By: /s/ Christopher J. Tyson
`Christopher J. Tyson
`Reg. No. 63,850
`Back-up Counsel
`
`1
`
`
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