UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`CISCO SYSTEMS, INC.,
`Petitioner
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`v.
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`TQ DELTA, LLC,
`Patent Owner
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`_____________________
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`Case IPR2016-01466
`Patent No. 8,611,404
`_____________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
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`CISCO SYSTEMS, INC.,
`Petitioner
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner
`
`_____________________
`
`Case IPR2016-01466
`Patent No. 8,611,404
`_____________________
`
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01466
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`Pursuant to 37 C.F.R. § 42.23, Cisco Systems Inc., (“Petitioner”) hereby
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`opposes TQ Delta, LLC’s (“Patent Owner”) Motion to Exclude (Paper 25 “Mot.
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`Excl.”) Exhibit 1012. The Board should deny TQ Delta’s Motion to Exclude in its
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`entirety for the reasons that follow.
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`I.
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`The Board Should Not Exclude Exhibit 1012 under Fed. R. Evid. 402
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`TQ Delta’s arguments pertaining to the alleged inadmissibility of Exhibit
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`1012 (Declaration of Dr. Kiaei) as irrelevant under Fed. R. Evid. 402 are
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`unavailing.
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`As movant, TQ Delta has the burden of showing that an exhibit is not
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`admissible under the Federal Rules of Evidence. 37 C.F.R. § 42.20(c). Rule 401
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`dictates that evidence is relevant if “it has any tendency to make a fact more or less
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`probable than it would be without the evidence.” Fed. R. Evid. 401. Both the
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`Federal Circuit and the Board have recognized that there is a “low threshold for
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`relevancy.” OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1407 (Fed. Cir.
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`1997); Laird Techs., Inc. v. GrafTech Int’l Holdings, Inc., IPR2014-00025, Paper
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`45 at 44 (PTAB Mar. 25, 2015).
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`a. Paragraphs 1-3, 8-16, and 25 of Exhibit 1012 are relevant.
`TQ Delta argues that Paragraphs 1-3, 8-16, and 25 of Exhibit 1012 are not
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`relevant under Fed. R. Evid. 402 because “Petitioner’s Reply for this proceeding
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`does not cite to those paragraphs.” Mot. Excl. at 3. This argument misses the
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`2
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01466
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`point. The evidence in Paragraphs 1-3 and 15-16 of Exhibit 1012 establishes that
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`Dr. Kiaei’s testimony is responsive to certain assertions made by Dr. Chrissan in
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`his Declaration, thus providing context for his testimony. The evidence at
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`Paragraph 25 of Exhibit 1012 establishes that Dr. Kiaei submitted his testimony
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`under oath. Accordingly, the evidence in Paragraphs 1-3, 15-16, and 25 is relevant
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`for establishing the context of Dr. Kiaei’s testimony and for assessing the
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`credibility of his testimony.
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`Moreover, although the testimony at Paragraphs 8-13 more directly pertains
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`to related IPR2016-01760, it should not be excluded because “there is a strong
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`public policy for making all information filed in an administrative proceeding
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`available to the public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
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`CBM2012-00010, Paper 59 at 40 (PTAB February 24, 2014). Where the Board
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`does not need to rely on challenged testimony, the motion to exclude is dismissed
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`as moot. See, e.g., CoreLogic, Inc. v. Boundary Sols., Inc., IPR2015-00219, Paper
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`48 at 12 (PTAB May 19, 2016).
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`Therefore, Paragraphs 1-3, 8-16, and 25 of Exhibit 1012 should not be
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`excluded.
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`b. TQ Delta’s arguments regarding Paragraphs 4-7, 17-21, and 23-
`24 of Exhibit 1012 do not address their admissibility under the
`rules of evidence.
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`3
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01466
`TQ Delta’s arguments that Paragraphs 4-7, 17-21, and 23-24 of Exhibit 1012
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`“constitute new evidence,” fail to address the admissibility of the evidence under
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`FRE 402. Mot. Excl. at 3-9. TQ Delta’s principle argument is that the evidence
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`was not introduced with the petition, ignoring the fact that “[t]he purpose of the
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`trial in an inter parties review proceeding is to give the parties an opportunity to
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`build a record by introducing evidence.” Genzyme Therapeutic Prods. v. Biomarin
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`Pharm., 825 F.3d 1360, 1367 (Fed. Cir. 2016).
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`Therefore, because TQ Delta’s arguments do not explain how or why the
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`“newness” of the evidence allegedly relates to its relevancy, TQ Delta has failed to
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`meet its burden under 37 C.F.R. § 42.20(c). The exhibits should not be excluded.
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`c. Paragraphs 4-7, 17-21, and 23-24 of Exhibit 1012 are relevant.
`Petitioner’s evidence in Paragraphs is 4-7, 17-21, and 23-24 is relevant to
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`arguments raised in the Patent Owner Response (Paper 11, “Response”). The
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`evidence’s relevancy to specific issues and arguments is identified below.
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`Dr. Kiaei’s testimony in Exhibit 1012 at Paragraphs 4-7 is relevant to TQ
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`Delta’s newly proposed constructions of the terms “synchronization signal” and
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`“parameter(s) associated with the full power mode operation.” Response at 17-22.
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`Dr. Kiaei’s testimony at Paragraphs 17-18 in Exhibit 1012 is relevant to
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`arguments raised by TQ Delta regarding prior art synchronization signals. This
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`testimony evidences what persons of ordinary skill in the art understood regarding
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`4
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`these signals. Response at 17-18, 38-45.
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01466
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`Dr. Kiaei’s testimony at Paragraphs 19-21 in Exhibit 1012 is relevant to
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`arguments raised by TQ Delta regarding activating circuitry in Bowie during low
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`power mode. This testimony evidences what persons of ordinary skill in the art
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`understood at the time. Response at 52-54.
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`Dr. Kiaei’s testimony at Paragraphs 23 and 24 in Exhibit 1012 is relevant to
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`TQ Delta’s argument regarding the compatibility of the prior art. This testimony
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`evidences what persons of ordinary skill in the art understood at the time.
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`Response at 55-57.
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`In sum, the evidence in Paragraphs 4-7, 17-21, and 23-24 of Exhibit 1012 is
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`relevant to arguments raised in TQ Delta’s Response and relevant to the state of
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`the art. See Rules of Practice for Trials before the Patent Trial and Appeal Board,
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`77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2014); Liberty Mut. Ins. Co. v. Progressive
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`Cas. Ins., CBM2012-00010, Paper 59 (PTAB Feb. 24, 2014) (“The law is well
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`established that the Board will not exclude evidence that is proffered to show what
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`a [person of ordinary skill in the art] would have known about the relevant field of
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`art.”).
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`Therefore, for the reasons set forth above, the Board should deny TQ Delta’s
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`Motion to Exclude Exhibit 1012 under Fed. R. Evid. 402. See Kyocera Corp. v.
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`Softview LLC, IPR2013-00007, Paper 51 at 34 (PTAB March 27, 2014) (a motion
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`5
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01466
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`to exclude “is neither a substantive sur-reply, nor a proper vehicle for arguing
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`whether a reply or supporting evidence is of appropriate scope.”); see also Laird
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`Techs., Inc. v. GrafTech Int’l Holdings, Inc., IPR2014-00025, Paper 45 at 44
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`(PTAB Mar. 25, 2015) (“A motion to exclude . . . is not an appropriate mechanism
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`for challenging the sufficiency of evidence or the proper weight that should be
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`afforded an argument.”).
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`II. The Board Should Not Exclude Exhibit 1012 Under Fed. R. Evid. 403
`TQ Delta also argues that even if relevant, the admission of Exhibit 1012
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`causes “unfair prejudice, confusion, delay, and wasted time” and should be
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`excluded under Fed. R. Evid. 403. Mot. Excl. at 3 and 4.
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`Other than the above noted conclusory assertion, however, TQ Delta
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`provides no explanation or evidence demonstrating that the “probative value [of
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`Exhibit 1012] is substantially outweighed by a danger of . . . unfair prejudice,
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`confusing the issues, misleading the jury, undue delay, wasting time.” Fed. R.
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`Evid. 403. There is no credible reason whatsoever to exclude this probative
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`evidence. Moreover, “[s]imilar to a district court in a bench trial, the Board, sitting
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`as a non-jury tribunal with administrative expertise, is well-positioned to determine
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`and assign appropriate weight to evidence presented.” Mobotix Corp., v. Comcam
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`International, Inc., Case IPR2015-00093, Paper 22 at 3 (PTAB Apr. 28, 2016); see
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`also, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941)
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`6
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01466
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`(“One who is capable of ruling accurately upon the admissibility of evidence is
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`equally capable of sifting it accurately after it has been received . . . .”).
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`Therefore, because TQ Delta has not met its burden to show any prejudicial
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`effect and because the Board is well-positioned to weigh the evidence, admissible
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`Exhibit 1012 should not be excluded under Fed. R. Evid. 403.
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`III. Conclusion
`For the above noted reasons, Petitioner respectfully requests that the Board
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`deny TQ Delta’s Motion to Exclude.
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`October 16, 2017
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`Respectfully submitted,
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`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioner
`Registration No. 32,271
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`7
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` Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2016-01466
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
`service was made on the TQ Delta as detailed below.
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`Date of service
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`October 16, 2017
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`Persons served
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`Manner of service
`Email: pmcandrews@mcandrews-ip.com;
`twimbiscus@mcandrews-ip.com; smcbride@mcandrews-ip.com;
`cscharff@mcandrews-ip.com; rchiplunkar@mcandrews-ip.com;
`dpetty@mcandrews-ip.com; TQD-IPR2016-01466@mcandrews-ip.com
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`Documents served
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`Petitioner’s Opposition to Patent Owner’s Motion
`to Exclude
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`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`David Z. Petty
`Rajendra A. Chiplunkar (admitted PHV)
`MCANDREWS, HELD & MALLOY, LTD
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
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`
`
`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioner
`Registration No. 32,271
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`8
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