`Patent 7,764,777
`
`
`
`Paper No. 47
`
`
`
`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 IPR2016-01262
`Patent Number: 7,764,777
`________________
`
`
`
`
`PATENT OWNER FOCAL IP, LLC’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01262
`Patent 7,764,777
`
`
`
`
`Paper No. 47
`
`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner Focal IP, LLC hereby moves
`
`to exclude Exhibits 1057, 1058, and portions of Exhibit 1065.
`
`I.
`
`PROCEDURAL HISTORY
`
`Petitioners filed a petition for inter partes review on June 24, 2016 (Paper No.
`
`1). Patent Owner filed a preliminary response on October 19, 2016 (Paper No. 11),
`
`and Petitioners filed a reply to Patent Owner’s preliminary response on November
`
`11, 2016 (Paper No. 17).1 The Board instituted trial on January 3, 2017 (Paper No.
`
`19). Patent Owner filed a request for rehearing on January 17, 2017 (Paper No. 21),
`
`which the Board denied on January 24, 2017 (Paper No. 23). Patent Owner filed its
`
`Patent Owner Response on April 3, 2017 (Paper No. 30) accompanied by the
`
`Declaration of Regis J. “Bud” Bates (Exhibit 2022). Patent Owner also filed a
`
`contingent motion to amend on April 3, 2017 (Paper No. 31). Petitioners filed a
`
`reply to Patent Owner’s response (Paper No. 34) and an opposition to Patent
`
`Owner’s motion to amend (Paper No. 35) on June 26, 2017. Patent Owner filed
`
`objections to evidence submitted, relied on, or cited by Petitioners in connection
`
`
`1 Petitioner’s reply to Patent Owner’s preliminary response was originally
`
`filed as Paper No. 14, but exceeded the ten-page limit. A corrected reply was filed
`
`as Paper No. 17.
`
`
`
`1
`
`
`
`Case IPR2016-01262
`Patent 7,764,777
`
`with their reply and opposition to Patent Owner’s motion to amend on June 30, 2017
`
`Paper No. 47
`
`
`
`(Paper No. 38).
`
`II.
`
` ARGUMENT
`
`Motions to exclude are authorized by 37 C.F.R. § 42.64(c). “The motion must
`
`identify the objections in the record in order and must explain the objections.” 37
`
`C.F.R. § 42.64(c). “A motion to exclude evidence must: (a) Identify where in the
`
`record the objection originally was made; (b) Identify where in the record the
`
`evidence sought to be excluded was relied upon by an opponent; (c) Address
`
`objections to exhibits in numerical order; and (d) Explain each objection.” 77 Fed.
`
`Reg. 48,756, 48,767 (Aug. 14, 2012).
`
`The Federal Rules of Evidence apply in inter partes review proceedings. 37
`
`C.F.R. § 42.62(a). Evidence is only admissible if it is relevant. Fed. R. Evid. 402.
`
`“Evidence is relevant if: (a) it has any tendency to make a fact more or less probable
`
`than it would be without the evidence; and (b) the fact is of consequence in
`
`determining the action.” Fed. R. Evid. 401. Even if relevant, evidence may be
`
`excluded “if its probative value is substantially outweighed by a danger of one or
`
`more of the following: unfair prejudice, confusing the issues, misleading the jury,
`
`undue delay, wasting time, or needlessly presenting cumulative evidence.” Fed. R.
`
`Evid. 403.
`
`
`
`2
`
`
`
`Case IPR2016-01262
`Patent 7,764,777
`
`
`
`
`Paper No. 47
`
`A. Exhibit 1057 Should Be Excluded In Connection With Petitioners’
`
`Reply.
`
`Exhibit 1057 is a copy of U.S. Patent No. 6,442,169 to Lewis (“Lewis).
`
`Petitioners rely on Lewis as a new prior art reference to support their new and
`
`untimely arguments that it was well-understood to a POSA to interconnect an IP
`
`network to the PSTN through a tandem switch. Paper No. 34 at 8-9. Patent Owner
`
`objected to Exhibit 1057 in Paper No. 38.
`
`Patent Owner moves to exclude Exhibit 1057 in connection with Petitioners’
`
`reply as irrelevant under Rule 402. The Board did not institute trial with respect to
`
`Lewis (see Paper No. 19 at 19), nor did the petition ever argue that it was well-
`
`understood to a POSA to interconnect an IP network to the PSTN through a tandem
`
`switch. Petitioners improperly attempt to use Lewis to remedy the deficiencies of
`
`the prior art Petitioners rely on in their petition. The trial is limited to the arguments,
`
`evidence, and grounds raised in the petition and instituted by the Board. See 37
`
`C.F.R. § 42.104(b)(5) (requiring the petitioner to identify in the petition the evidence
`
`relied on to support the challenge); id. § 42.108(a) (“When instituting inter partes
`
`review, the Board may authorize the review to proceed on all or some of the
`
`challenged claims and on all or some of the grounds of unpatentability asserted for
`
`each claim.”). Because Petitioners failed to timely bring this argument or this
`
`evidence in their petition, Lewis is irrelevant.
`3
`
`
`
`
`
`Case IPR2016-01262
`Patent 7,764,777
`
`
`
`
`Paper No. 47
`
`Further, any probative value is substantially outweighed by the danger by one
`
`or more of the following: unfair prejudice, misleading the factfinders, and confusing
`
`the issues. Lewis and the untimely argument it allegedly supports were not properly
`
`raised in the petition. This evidence should therefore be excluded under Rule 403
`
`to prevent unfair prejudice, misleading of the factfinders, and confusing of the
`
`issues.2
`
`B.
`
`Exhibit 1058 Should Be Excluded In Connection With Petitioners’
`
`Reply.
`
`Exhibit 1058 is a copy of U.S. Patent No. 6,333,931 to LaPier (“LaPier”).
`
`Petitioners rely on LaPier as a new prior art reference to support their new and
`
`untimely arguments that it was well-understood to a POSA to interconnect an IP
`
`
`2 Petitioners also rely on Lewis in connection with their opposition to Patent
`
`Owner’s motion to amend. Patent Owner does not object to the use of Lewis in
`
`connection with the motion to amend, but only seeks its exclusion in connection with
`
`Petitioners’ reply. Cf. Fed. R. Evid. 105 (“If the court admits evidence that is
`
`admissible against a party or for a purpose—but not against another party or for
`
`another purpose—the court, on timely request, must restrict the evidence to its
`
`proper scope and instruct the jury accordingly.”).
`
`
`
`4
`
`
`
`Case IPR2016-01262
`Patent 7,764,777
`
`network to the PSTN through a tandem switch. Paper No. 34 at 10. Patent Owner
`
`Paper No. 47
`
`
`
`objected to Exhibit 1058 in Paper No. 38.
`
`Patent Owner moves to exclude Exhibit 1058 in connection with Petitioner’s
`
`reply as irrelevant under Rule 402. The Board did not institute trial with respect to
`
`LaPier (see Paper No. 19 at 19), nor did the petition ever argue that it was well-
`
`understood to a POSA to interconnect an IP network to the PSTN through a tandem
`
`switch. Petitioners improperly attempt to use LaPier to remedy the deficiencies of
`
`the prior art Petitioners rely on in their petition. The trial is limited to the arguments,
`
`evidence, and grounds raised in the petition and/or instituted by the Board. See 37
`
`C.F.R. § 42.104(b)(5) (requiring the petitioner to identify in the petition the evidence
`
`relied on to support the challenge); id. § 42.108(a) (“When instituting inter partes
`
`review, the Board may authorize the review to proceed on all or some of the
`
`challenged claims and on all or some of the grounds of unpatentability asserted for
`
`each claim.”). Because Petitioners failed to timely bring this argument or evidence
`
`in their petition, LaPier is irrelevant under Rule 402.
`
`Further, any probative value is substantially outweighed by the danger by one
`
`or more of the following: unfair prejudice, misleading the factfinders, and confusing
`
`the issues. LaPier and the untimely argument it allegedly supports were not properly
`
`raised in the petition. This evidence should therefore be excluded under Rule 403
`
`
`
`5
`
`
`
`Case IPR2016-01262
`Patent 7,764,777
`
`to prevent unfair prejudice, misleading of the factfinders, and confusing of the
`
`Paper No. 47
`
`
`
`issues.3
`
`C.
`
`Portions of Exhibit 1065 Should Be Excluded.
`
`Exhibit 1065 is the Expert Declaration of Thomas F. La Porta that Petitioner
`
`submitted in connection with their reply. Patent Owner objected to portions of
`
`Exhibit 1065 in Paper No. 38.
`
`Patent Owner moves to exclude paragraphs 34-36 and 41-434 and all other
`
`paragraphs of Exhibit 1065 to the extent they rely, directly or indirectly, on the new
`
`arguments concerning Lewis and LaPier as irrelevant under Rules 402 and 403. As
`
`discussed above, Lewis and LaPier are irrelevant. Accordingly, Dr. La Porta’s
`
`
`3 Petitioners also rely on LaPier in connection with their opposition to Patent
`
`Owner’s motion to amend. Patent Owner does not object to the use of LaPier in
`
`connection with the motion to amend, but only seeks its exclusion in connection with
`
`Petitioners’ reply. Cf. Fed. R. Evid. 105 (“If the court admits evidence that is
`
`admissible against a party or for a purpose—but not against another party or for
`
`another purpose—the court, on timely request, must restrict the evidence to its
`
`proper scope and instruct the jury accordingly.”).
`
`4 Petitioners rely on paragraphs 34-36 and 41-43 on pages 8-12 of their reply
`
`(Paper No. 34).
`
`
`
`6
`
`
`
`Case IPR2016-01262
`Patent 7,764,777
`
`testimony regarding these new arguments and Lewis and LaPier is similarly
`
`Paper No. 47
`
`
`
`irrelevant, and should be excluded.
`
`
`Dated: August 21, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`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
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 21st day of August 2017, a copy of Patent Owner
`
`FOCAL IP, LLC’s Motion to Exclude Evidence Under 37 C.F.R. § 42.64 has been
`
`served in its entirety via email on the following:
`
`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
`
`Sarah J. Guske
`BAKER BOTTS L.L.P.
`101 California Street, #3070
`San Francisco, CA 94111
`Phone: (415) 291-6205
`Facsimile: (415) 291-6305
`
`
`
`7
`
`
`
`
`
`Paper No. 47
`
`Case IPR2016-01262
`Patent 7,764,777
`
`sarah.guske@bakerbotts.com
`
`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
`
`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
`
`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
`
`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
`
`
`
`
`
`
`
`
`
`8
`
`
`
`Case IPR2016-01262
`Patent 7,764,777
`
`Dated: August 21, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper No. 47
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`