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 REPLY IN
`SUPPORT OF ITS MOTION TO EXCLUDE
`
`
`
`
`
`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 REPLY IN
`SUPPORT OF ITS MOTION TO EXCLUDE
`
`
`
`
`
`
`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`I.
`
`
`EXHIBIT 1012 SHOULD BE EXCLUDED
`
`Exhibit 1012 (the declaration of Dr. Kiaei submitted with Petitioner’s Reply)
`
`should be excluded under Fed. R. Evid. 402 and 403.
`
`A.
`
`Paragraphs 1-3, 8-16, and 25 of Exhibit 1012 Are Not Relevant
`
`Petitioner takes the position that Paragraphs 1-3, 8-16, and 25 of Exhibit
`
`1012 are relevant to this proceeding even though the Reply does not even cite to
`
`those paragraphs. Paper No. 31 at 2-3. As a general matter, it goes without saying
`
`that evidence that is not relied upon by a petitioner in its papers is not relevant to
`
`the proceeding. See SK Innovation Co. v. Gelgard, LLC, IPR2014-00679, Paper
`
`No. 58 at p. 49 (P.T.A.B. Sept. 25, 2015) (excluding exhibits under Fed. R. Evid.
`
`402 “[b]ecause Patent Owner did not cite [to the exhibits] in this proceeding”).
`
`Moreover, Petitioner’s argument that Paragraphs 1-3 and 15-16 are relevant
`
`because they are “responsive to certain assertions made by Dr. Chrissan in his
`
`Declaration, thus providing context for his testimony” is a non-starter. Id. at 3. If
`
`the “context” of Dr. Kiaei’s testimony is significant, Petitioner should have cited to
`
`Paragraphs 1-3 and 15-16 of Exhibit 1012 in its Reply.
`
`In addition, Petitioner acknowledges that Paragraphs 8-13 “more directly
`
`pertain[]” to IPR2016-01760 – and not this proceeding – but still argues that those
`
`paragraphs should not be excluded because there is a strong public policy for
`
`2
`
`
`
`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`making information filed in an administrative proceeding available to the public.
`
`Id. Under this logic, however, no exhibit a petitioner files with its papers should
`
`ever be excluded from an IPR – no matter how unrelated to the IPR. That cannot
`
`be the case. Moreover, excluded exhibits are not removed from the publicly
`
`accessible record – they just are not considered by the Board in rendering a final
`
`decision. For example, in Toshiba Corp. v. Optical Devices, LLC, IPR2014-01447,
`
`Paper No. 34, at 43-47 (P.T.A.B. Mar. 9, 2016) the Board excluded Exhibits 1015
`
`and 1016 and stated that it would not consider those exhibits, yet those exhibits can
`
`still be accessed by the public on Docket Navigator for that proceeding. As such,
`
`Paragraphs 8-13 should be excluded from this proceeding as irrelevant.
`
`Lastly, the cases Petitioner relies on in support of its argument regarding the
`
`relevance of Paragraphs 8-13 are inapposite. In Liberty Mutual, the party opposing
`
`exclusion actually relied on the exhibits being challenged – unlike Petitioner here.
`
`See Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, Paper
`
`No. 35 at 14 (reply citing to challenged Exhibits 1033 and 1034). Moreover, in
`
`CoreLogic the Board merely said that, because it did not rely on testimony
`
`challenged as inadmissible by the petitioner, the petitioner’s motion to exclude was
`
`moot. The Board did not say that a party can include any testimony it wants as an
`
`exhibit – even if the party does not rely on it – just because the Board may end up
`
`3
`
`
`
`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`not relying on the testimony in its Final Written Decision. See CoreLogic, Inc. v
`
`Boundary Sols., Inc., IPR2015-00219, Paper No. 48 at 12 (P.T.A.B. May 19,
`
`2016).
`
`B.
`
`Paragraphs 4-7, 17-21, and 23-24 of Exhibit 1012 Are Not
`Relevant
`
`As an initial matter, Petitioner mistakenly argues that Patent Owner failed to
`
`explain how and why the “newness” of the evidence found at Paragraphs 4-7, 17-
`
`21, and 23-24 renders it irrelevant. Paper No. 31 at 4. As stated in Patent Owner’s
`
`Motion, “[r]eply evidence . . . must be responsive and not merely new evidence
`
`that could have been presented earlier to support” the petition. Paper No. 25 at 3-
`
`4. For the many reasons provided in Patent Owner’s Motion, Paragraphs 4-7, 17-
`
`21, and 23-24 of Exhibit 1012 constitute such improper “new evidence,” and, thus,
`
`those paragraphs are not relevant to this proceeding. See 77 Fed. Reg. 48612,
`
`48620; 77 Fed. Reg. 48,756, 48,767; 37 C.F.R. 42.23(b); The Scotts Company LLC
`
`v. Encap, LLC, IPR2013-00110, Paper No. 79 at 5-6 (P.T.A.B. June 24, 2014)
`
`(declarations submitted with reply that included material that supported petition
`
`considered untimely); Baxter Healthcare Corp. v. Millennium Biologix, LLC,
`
`IPR2013-00590, Paper No. 40, at 3 (refusing to consider evidence that did “not
`
`merely rebut points made in Patent Owner’s Response” but was “instead new
`
`evidence that could have been presented earlier”).
`
`4
`
`
`
`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`
`Moreover, Petitioner’s only response to Patent Owner’s argument that the
`
`testimony found in Paragraphs 4-7, 17-21, and 23-24 of Exhibit 1012 should have
`
`been submitted with the Petition is a non sequitur quotation from a Federal Circuit
`
`case that “[t]he purpose of the trial in an inter parties review proceeding is to give
`
`the parties an opportunity to build a record by introducing evidence.” See Paper
`
`No. 31 at 4. That quote does not explain why Paragraphs 4-7, 17-21, and 23-24
`
`should not have been submitted with the Petition. Moreover, nothing in that quote
`
`suggests that Petitioner can fill gaps in its Petition by introducing new evidence at
`
`any time it wants to in the proceeding – especially when Patent Owner does not
`
`have an opportunity to reply to that new evidence.
`
`At pages 4-5 of its Opposition, Petitioner purports to provide reasons why
`
`Paragraphs 4-7, Paragraphs 17-18, Paragraphs 19-21, and Paragraphs 23-24 are
`
`relevant. See Paper No. 31 at 4-5. In doing so, however, Petitioner just repeats a
`
`variation of the generic statement that “Dr. Kiaei’s testimony at Paragraphs X is
`
`relevant to TQ Delta’s argument regarding Y” and that “This testimony evidences
`
`what persons of ordinary skill in the art understood at the time.”1 See id. at 4-5.
`
`1 Petitioner supports its argument with the following quote: “The law is well
`
`established that the Board will not exclude evidence that is proffered to show what
`
`a [person of ordinary skill in the art] would have known about the relevant field of
`
`5
`
`
`
`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`Petitioner never actually addresses Patent Owner’s specific and detailed arguments
`
`as to why each of Paragraphs 4-7, 17-21, and 23-24 constitutes new evidence that
`
`should have been submitted with the Petition or why submission of those
`
`paragraphs with the Reply is prejudicial to Patent Owner. See Paper No. 25 at 4-9.
`
`Nor does Petitioner explain how those paragraphs are “responsive” to Patent
`
`Owner’s arguments. As such, Patent Owner’s arguments as to why Paragraph 4-7,
`
`17-21, and 23-24 constitute improper new evidence remain unrebutted.
`
`Accordingly, the Board should exclude Paragraphs 4-7, 17-21, and 23-24 of
`
`Exhibit 1012 as irrelevant under Fed. R. Evid. 402.
`
`C. Exhibit 1012 Should Be Excluded Under Fed. R. Evid. 403
`
`
`Petitioner argues that Patent Owner did not demonstrate that the probative
`
`value of Exhibit 1012 is substantially outweighed by a danger of unfair prejudice,
`
`confusing the issues, misleading the jury, undue delay, or wasting time. Paper No.
`
`31 at 6. That is not the case. It is clear from Patent Owner’s Motion that allowing
`
`Exhibit 1012 into evidence would, at a minimum, (1) confuse the issues because
`
`Exhibit 1012 includes new, untimely arguments that could be confused with the
`
`art.” See Paper No. 31 at 5. That quote cannot be found in the case to which
`
`Petitioner attributes it. Regardless, the quote does not support submitting evidence
`
`regarding knowledge of a relevant field for the first time in support of a reply.
`
`6
`
`
`
`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`arguments found in the Petition, (2) prejudice Patent Owner because Patent Owner
`
`and its expert do not have an opportunity to submit papers in response to the new
`
`opinions found in Exhibit 1012, and (3) result in delay and wasted time because
`
`Patent Owner (if given the opportunity) and the Board may now have to address
`
`evidence that was belatedly and improperly submitted.
`
`Petitioner further argues that the Board should not exclude Exhibit 1012
`
`under Fed. R. Evid 403 because the Board is well positioned to determine and
`
`assign appropriate weight to evidence presented. Paper No. 31 at 6. This
`
`argument misses the point. That the Board is capable of weighing evidence does
`
`not change the fact that allowing Exhibit 1012 into evidence would still create
`
`unnecessary confusion, prejudice Patent Owner, and waste time for the reasons
`
`discussed above.
`
`Therefore, Exhibit 1012 should be excluded under Fed. R. Evid. 403.
`
`II. CONCLUSION
`
`
`
`For at least the foregoing reasons and those provided in Patent Owner’s
`
`Motion to Exclude (Paper No. 25), Patent Owner respectfully requests that the
`
`Board exclude the evidence discussed above.
`
`7
`
`
`
`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01466
`U.S. Patent No. 8,611,404
`
`Dated: October 23, 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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`Patent Owner’s Reply in Support of Its 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 Reply in Support of Its Motion to Exclude was served on October 23,
`
`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
