Filed on behalf of TQ Delta, LLC
`By: Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: pmcandrews@mcandrews-ip.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01466
`Patent No. 8,611,404
`_____________
`
`PATENT OWNER’S MOTION TO EXCLUDE INADMISSIBLE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`
`
`By: Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: pmcandrews@mcandrews-ip.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01466
`Patent No. 8,611,404
`_____________
`
`PATENT OWNER’S MOTION TO EXCLUDE INADMISSIBLE
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner TQ Delta, LLC (“Patent
`
`Owner”) hereby moves to exclude Petitioner’s Exhibit 1012 for lack of
`
`admissibility under the Federal Rules of Evidence.1
`
`II. EXHIBIT 1012 SHOULD BE EXCLUDED
`
`
`Exhibit 1012 is a declaration of Petitioner’s expert, Dr. Kiaei, that was
`
`submitted with Petitioner’s Reply (the “Reply Declaration”) for this IPR
`
`proceeding and for IPR2016-01760 (the subject of which is Patent Owner’s U.S.
`
`Patent No. 9,094,268). For the reasons discussed below, Ex. 1012 should be
`
`excluded under Fed. R. Evid. 402 and 403.
`
`A.
`
`Paragraphs 1-3, 8-16, 22, and 25 of Exhibit 1012 Should Be
`Excluded Because Petitioner’s Reply Does Not Cite to Them
`
`
`The Board should exclude Paragraphs 1-3, 8-16, 22, and 25 of Exhibit 1012
`
`under Fed. R. Evid. 402 and 403. Patent Owner timely objected to Paragraphs 1-3,
`
`8-16, 22, and 25 of Exhibit 1012 on those grounds. See Paper 16 at 2.
`
`
`1 Patent Owner does not waive its objections to Petitioner’s improper new
`
`arguments and evidence (identified in Paper No. 22) submitted for the first time on
`
`Reply. This motion only addresses inadmissibility under the FRE.
`
`2
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`
`First, Paragraphs 1-3, 8-16, 22, and 25 are not relevant. Petitioner’s Reply
`
`for this proceeding does not cite to those paragraphs. Therefore, the testimony at
`
`those paragraphs is not relevant to the issues in this proceeding and should be
`
`excluded pursuant to Fed. R. Evid. 402. See Fed. R. Evid. 402 (“Irrelevant
`
`evidence is not admissible.”).
`
`Moreover, any effort by Petitioner now to explain the relevance of
`
`Paragraphs 1-3, 8-16, 22, and 25 to this proceeding would result in confusion,
`
`delay, and wasted time. Accordingly, Paragraphs 1-3, 8-16, 22, and 25 of Exhibit
`
`1012 should also be excluded under Fed. R. Evid. 403. See Fed. R. Evid. 403
`
`(“The court may exclude relevant evidence 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.”).
`
`B.
`
`Paragraphs 4-7, 17-21, and 23-24 of Exhibit 1012 Should Be
`Excluded Because they Constitute New Evidence
`that
`is
`Improperly Introduced in Petitioner’s Reply
`The Board should exclude Paragraphs 4-7, 17-21, and 23-24 of Exhibit 1012
`
`as irrelevant under Fed. R. Evid. 402 because they constitute new evidence. The
`
`testimony in those paragraphs could have – and should have – been presented in
`
`Dr. Kiaei’s first declaration (Ex. 1003). “A reply may only respond to arguments
`
`3
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`raised in the… patent owner response.” 37 C.F.R. § 42.23(b). While “replies may
`
`rely upon appropriate evidence,” “[r]eply evidence… must be responsive and not
`
`merely new evidence that could have been presented earlier to support” the
`
`petition. See 77 Fed. Reg. 48612, 48620 (Comments regarding 37 C.F.R. §
`
`42.23(b)) (emphasis added). Moreover, Paragraphs 4-7, 17-21, and 23-24 should
`
`also be excluded under Fed. R. Evid. 403 because their inclusion in this proceeding
`
`would result in confusion, delay, and wasted time. See Fed. R. Evid. 403. Patent
`
`Owner timely objected to Paragraphs 4-7, 17-21, and 23-24 of Exhibit 1012 on
`
`those grounds. See Paper 16 at 2.
`
`1.
`
`Paragraphs 4-7 of Exhibit 1012
`
`Paragraphs 4-7 of Exhibit 1012, on which Petitioner relied at pages 6-7 of its
`
`Reply, include new opinions regarding the meaning and scope of the claim term
`
`“synchronization signal,” a claim term recited in U.S. Pat. No. 8,611,404.2 In
`
`particular, Dr. Kiaei provides new testimony about how the claims “never limit
`
`synchronization to any specific type” and that the term “synchronization signal”
`
`
`2 They also provide new opinions regarding the claim term “maintaining
`
`synchronization with a second transceiver,” which is recited in claims of the patent
`
`under examination in IPR2016-01760, U.S. Patent No. 9,094,268.
`
`4
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`“must be broad enough
`
`to
`
`include”
`
`timing synchronization and frame
`
`synchronization. See Ex. 1012 at 3-5.
`
`This testimony regarding the scope of “synchronization signal” could have –
`
`and should have – been made in Dr. Kiaei’s first declaration. Indeed, as the term
`
`“synchronization signal” does not appear in the specification, Dr. Kiaei certainly
`
`should have anticipated that its construction would require more than the cursory
`
`analysis provided in his first declaration. See Ex. 1003 at ¶¶ 53-56. Moreover,
`
`Patent Owner and its expert have no opportunity to respond to this new testimony
`
`from Dr. Kiaei regarding the scope of “synchronization signal.”
`
`Therefore, Paragraphs 4-7 of the Reply Declaration should be excluded.
`
`2.
`
`Paragraphs 17-18 of Exhibit 1012
`
`Paragraphs 17-18 of Exhibit 1012, on which Petitioner relies at pages 16 and
`
`17 of its Reply, should be excluded because they offer improper new testimony
`
`about the teachings of the prior art that was not (but could have been) presented in
`
`Dr. Kiaei’s first declaration.
`
`At paragraph 17, Dr. Kiaei testifies for the first time that Yamano’s “timing
`
`signal” is used “to maintain synchronization by correcting timing errors to avoid
`
`re-initialization.” Ex. 1012 at 9-10. Despite spending several pages of his first
`
`declaration discussing Yamano and its “timing signal,” see Ex. 1003 at pp. 26-31,
`
`5
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`54-57, Dr. Kiaei never once discussed whether that signal could be used to correct
`
`timing errors. There is no reason he could not have. Moreover, Dr. Kiaei cites to
`
`the ADSL Standard (Ex. 1007) in support of his statement that a “POSITA knew
`
`that a purpose of maintaining synchronization is to correct errors.” Ex. 1012 at 10.
`
`In his first declaration, however, Dr. Kiaei relied only on Yamano for teaching a
`
`“synchronization signal.” See Ex. 1003 at 54-57. Thus, Dr. Kiaei now is making a
`
`completely new invalidity argument in his Reply Declaration – i.e., Yamano in
`
`combination with the ADSL Standard teaches a “synchronization signal.”
`
`Turning to Paragraph 18, Dr. Kiaei states for the first time that Yamano’s
`
`“timing signal” is used to “periodically detect ‘the presence of packet data’ or, in
`
`other words, the beginning of a superframe boundary.” Ex. 1012 at 10. Nowhere
`
`in his first declaration does Kiaei state that Yamano’s “timing signal” is used to
`
`detect superframe boundaries or explain how it does so – despite spending several
`
`pages of his first declaration discussing Yamano and its timing signal. See Ex.
`
`1003 at 54-57. Again, if part of the function of Yamano’s timing signal was to
`
`detect superframe boundaries as Dr. Kiaei now contends, he should have said as
`
`much in his first declaration.
`
`6
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`
`Dr. Kiaei’s newfound understanding at paragraphs 17 and 18 of his Reply
`
`Declaration about what Yamano’s “timing signal” does should be excluded as
`
`improper new evidence.
`
`3.
`
`Paragraphs 19-21 of Exhibit 1012
`
`Petitioner relied on Paragraphs 19-21 of Exhibit 1012 at pages 21 and 24 of
`
`the Reply. Paragraphs 19-21 should also be excluded. At those paragraphs, Dr.
`
`Kiaei, for the first time, takes the position that both Bowie and Yamano are
`
`“capable of receiving a synchronization signal in low power mode.” In particular,
`
`Dr. Kiaei states that (1) a POSITA would understand that Bowie’s resume signal
`
`detector would be used to detect a synchronization signal in low power mode, (2) a
`
`POSITA would understand that Yamano’s non-idle detector 401 receives a timing
`
`signal to maintain synchronization in low power mode, and (3) modifying Bowie’s
`
`resume signal detector to also detect Yamano’s “timing signal” would be well
`
`within the level of a POSITA. See Ex. 1012 at 11-12. This is new testimony that
`
`Dr. Kiaei should have made in his first declaration.
`
`To that point, in his first declaration, Dr. Kiaei relied on only Yamano for
`
`teaching the limitations of transmitting and receiving a “synchronization signal” in
`
`low power mode. See Ex. 1003 at 54-57, 72-75. He never opined that Bowie’s
`
`resume signal detector could be used to detect a synchronization signal in low
`
`7
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`power mode, let alone that a POSITA would have modified Bowie’s resume signal
`
`detector to detect Yamano’s “timing signal.” Indeed, in paragraphs 19-21 of his
`
`Reply Declaration, Dr. Kiaei does not cite to any language from his first
`
`declaration but does twice cite to a new section of Bowie (Ex. 1005 at 5:28-31)
`
`that he did not cite in his first declaration.
`
`As such, Dr. Kiaei’s statements at paragraphs 19-21 of his Reply Declaration
`
`constitute a brand new argument as to why a POSITA would have allegedly
`
`combined the cited references – this despite the fact that Petitioner is supposed to
`
`put forth its prima facie obviousness case in its Petition. Patent Owner will be
`
`prejudiced if this new opinion testimony is not excluded because Patent Owner
`
`(and its expert) will not have an opportunity to rebut the testimony. Dr. Kiaei and
`
`Petitioner should not be allowed to start over with a new obviousness argument at
`
`the reply stage of the proceeding. Moreover, Dr. Kiaei does not even explain what
`
`the opinions at Paragraphs 19-21 are in response to. Thus, the testimony at
`
`Paragraphs 19-21 should be excluded.
`
`4.
`
`Paragraphs 23-24 of Exhibit 1012
`
`Petitioner, at page 26 of the Reply, relied on Paragraphs 23 and 24 of
`
`Exhibit 1012. Paragraphs 23 and 24 of Dr. Kiaei’s Reply Declaration should be
`
`8
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`excluded because they include new arguments about the alleged compatibility of
`
`Yamano with the ADSL Standard.
`
`In that regard, at Paragraphs 23 and 24, Dr. Kiaei testifies for the first time
`
`that a POSITA would understand that Yamano’s burst mode embodiment is
`
`compatible with the ADSL standard because it would just be “an additional
`
`function that the standard permits” and because “Yamano’s burst mode can use the
`
`ADSL protocol to transmit data.” See Ex. 1012 at 12-13. Dr. Kiaei’s first
`
`declaration includes an entire section about why it allegedly would have been
`
`obvious to combine Yamano and the ADSL Standard. See Ex. 1003 at 37-38.
`
`There simply is no reason Dr. Kiaei could not have included the opinions he now
`
`provides at paragraphs 23 and 24 of his Reply Declaration in that section of his
`
`first declaration. Dr. Kiaei is using his Reply Declaration to fill in gaps in his first
`
`declaration. He should not be allowed to do so because it is improper reply
`
`evidence and because Patent Owner has no opportunity to provide rebuttal expert
`
`testimony in response.
`
`Furthermore, Dr. Kiaei does not even explain what testimony he is
`
`responding to at Paragraphs 23 and 24.
`
`Thus, the new testimony at Paragraphs 23 and 24 should be excluded.
`
`
`
`9
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`III. CONCLUSION
`
`
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`exclude the evidence discussed above.
`
`
`Dated: October 2, 2017
`
`
`Respectfully submitted,
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`Office: (312) 775-8000
`Fax: (312) 775-8100
`Email: pmcandrews@mcandrews-ip.com
`
`Lead Counsel for Patent Owner
`
`
`
`10
`
`
`
`Patent Owner’s Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Patent
`
`Owner’s Motion to Exclude was served on October 2, 2017, via email to counsel
`
`for Petitioner at the following:
`
`Lead Counsel
`
`Back-up Counsel
`
`Theodore M. Foster
`USPTO Reg. No. 57,456
`Haynes and Boone LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Tel: 972-739-8649
`Fax: 972-692-9156
`ipr.theo.foster@haynesboone.com
`
`Michael S. Parsons
`USPTO Reg. No. 58,767
`Haynes and Boone LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Tel: 972-739-8611
`Fax: 972-692-9003
`michael.parsons.ipr@haynesboone.com
`
`
`
`
`
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`
`
`
`
`David L. McCombs
`USPTO Reg. No. 32,271
`Haynes and Boone LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`Tel: 214-651-5533
`Fax: 214-200-0853
`david.mccombs.ipr@haynesboone.com
`
`
`
`MCANDREWS, HELD & MALLOY
`
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`CUSTOMER NUMBER: 23446
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
