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 IPR2016-01760
`Patent No. 9,094,268
`_____________
`
`PATENT OWNER’S REPLY IN
`SUPPORT OF ITS MOTION TO EXCLUDE
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`
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`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 IPR2016-01760
`Patent No. 9,094,268
`_____________
`
`PATENT OWNER’S REPLY IN
`SUPPORT OF ITS MOTION TO EXCLUDE
`
`
`
`
`
`
`
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`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01760
`U.S. Patent No. 9,094,268
`
`I.
`
`PARAGRAPHS 1-10, 14, AND 16-25 OF EXHIBIT 1012 AND 1016
`SHOULD BE EXCLUDED
`
`Paragraphs 1-10, 14, and 16-25 of Exhibit 1012 and Exhibit 1016 should be
`
`
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`excluded under Fed. R. Evid. 402 and 403. Exhibit 1012 is the declaration of Dr.
`
`Kiaei, and Exhibit 1016 is a copy of U.S. Patent No. 5,909,463. Both were
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`submitted for the first time with Petitioner’s Reply.
`
`A.
`
`Paragraphs 1-4, 7, 24, and 25 of Exhibit 1012 Are Not Relevant
`
`Petitioner takes the position that Paragraphs 1-4, 7, 24, and 25 of Exhibit
`
`1012 are relevant to this proceeding even though the Reply does not even cite to
`
`those paragraphs. Paper No. 32 at 2-3. As a general matter, it goes without saying
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`that evidence that is not relied upon by a party 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 1-4, 7, and 24 are relevant
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`because they are “responsive to certain assertions made by Dr. Chrissan in his
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`Declaration, thus providing context for his testimony” is a non-starter. Id. at 3. If
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`the “context” of Dr. Kiaei’s testimony is significant, Petitioner should have cited to
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`Paragraphs 1-4, 7, and 24 of Exhibit 1012 in its Reply.
`
`1
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`
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`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01760
`U.S. Patent No. 9,094,268
`
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`In addition, Petitioner argues that Paragraphs 1-4, 7, and 24-25 should not be
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`excluded because there is a strong public policy for making information filed in an
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`administrative proceeding available to the public. Id. Under this logic, however,
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`no exhibit a petitioner files with its papers should ever be excluded from an IPR –
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`no matter how unrelated to the IPR. That cannot be the case. Moreover, excluded
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`exhibits are not removed from the publicly accessible record – they just are not
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`considered by the Board in rendering a final decision. For example, in Toshiba
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`Corp. v. Optical Devices, LLC, IPR2014-01447, Paper No. 34, at 43-47 (P.T.A.B.
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`Mar. 9, 2016) the Board excluded Exhibits 1015 and 1016 and stated that it would
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`not consider those exhibits, yet those exhibits can still be accessed by the public on
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`Docket Navigator for that proceeding. As such, Paragraphs 1-4, 7, and 24-25
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`should be excluded from this proceeding as irrelevant.
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`Lastly, the cases Petitioner relies on in support of its argument regarding the
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`relevance of Paragraphs 1-4, 7, 24, and 25 are inapposite. In Liberty Mutual, the
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`party opposing exclusion actually relied on the exhibits being challenged – unlike
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`Petitioner here. See Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-
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`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
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`testimony challenged as inadmissible by the petitioner, the petitioner’s motion to
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`2
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`
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`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01760
`U.S. Patent No. 9,094,268
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`exclude was moot. The Board did not say that a party can include any testimony it
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`wants as an exhibit – even if the party does not rely on it – just because the Board
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`may end up not relying on the testimony in its Final Written Decision. See
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`CoreLogic, Inc. v Boundary Sols., Inc., IPR2015-00219, Paper No. 48 at 12
`
`(P.T.A.B. May 19, 2016).
`
`B.
`
`Paragraphs 5-6, 8-10, 14, and 16-23 of Exhibit 1012 and Exhibit
`1016 Are Not Relevant
`
`As an initial matter, Petitioner mistakenly argues that Patent Owner failed to
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`explain how and why the “newness” of the evidence found at Paragraphs 5-6, 8-10,
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`14, and 16-23 and Exhibit 1016 renders it irrelevant. Paper No. 32 at 4. As stated
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`in Patent Owner’s Motion, “[r]eply evidence . . . must be responsive and not
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`merely new evidence that could have been presented earlier to support” the
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`petition. Paper No. 26 at 3-4. For the many reasons provided in Patent Owner’s
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`Motion, Paragraphs 5-6, 8-10, 14, and 16-23 of Exhibit 1012 constitute such
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`improper “new evidence,” and, thus, those paragraphs are not relevant to this
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`proceeding. See 77 Fed. Reg. 48612, 48620; 77 Fed. Reg. 48,756, 48,767; 37
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`C.F.R. 42.23(b); The Scotts Company LLC v. Encap, LLC, IPR2013-00110, Paper
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`No. 79 at 5-6 (P.T.A.B. June 24, 2014) (declarations submitted with reply that
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`included material that supported petition considered untimely); Baxter Healthcare
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`Corp. v. Millennium Biologix, LLC, IPR2013-00590, Paper No. 40, at 3 (refusing
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`3
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`
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`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01760
`U.S. Patent No. 9,094,268
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`to consider evidence that did “not merely rebut points made in Patent Owner’s
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`Response” but was “instead new evidence that could have been presented earlier”).
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`Moreover, Petitioner’s only response to Patent Owner’s argument that the
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`testimony found in Paragraphs 5-6, 8-10, 14, and 16-23 of Exhibit 1012 and
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`Exhibit 1016 should have been submitted with the Petition is a non sequitur
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`quotation from a Federal Circuit case that “[t]he purpose of the trial in an inter
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`parties review proceeding is to give the parties an opportunity to build a record by
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`introducing evidence.” See Paper No. 32 at 4. That quote does not explain why
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`Paragraphs 5-6, 8-10, 14, and 16-23 and Exhibit 1016 should not have been
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`submitted with the Petition. Moreover, nothing in that quote suggests that
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`Petitioner can fill gaps in its Petition by introducing new evidence at any time it
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`wants to in the proceeding – especially when Patent Owner does not have an
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`opportunity to reply to that new evidence.
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`At pages 4-5 of its Opposition, Petitioner purports to provide reasons why
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`Paragraphs 5-6 and 8-10, Paragraph 14 and Exhibit 1016, Paragraphs 16-18,
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`Paragraphs 19-21, and Paragraphs 22-23 are relevant. See Paper No. 31 at 4-5. In
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`doing so, however, Petitioner just repeats a variation of the generic statement that
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`“Dr. Kiaei’s testimony at Paragraphs X [or Exhibit 1016] is relevant to TQ Delta’s
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`argument regarding Y” and that “This testimony evidences what persons of
`
`4
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`
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`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01760
`U.S. Patent No. 9,094,268
`
`ordinary skill in the art understood at the time.”1 See id. Petitioner never actually
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`addresses Patent Owner’s specific and detailed arguments as to why each of
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`Paragraphs 5-6, 8-10, 14, and 16-23 and Exhibit 1016 constitutes new evidence
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`that should have been submitted with the Petition or why submission of those
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`paragraphs and Exhibit 1016 with the Reply is prejudicial to Patent Owner. See
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`Paper No. 26 at 4-12. Nor does Petitioner explain how Paragraphs 5-6, 8-10, 14,
`
`and 16-23 and Exhibit 1016 are “responsive” to Patent Owner’s arguments. As
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`such, Patent Owner’s arguments as to why Paragraphs 5-6, 8-10, 14, and 16-23 and
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`Exhibit 1016 constitute improper new evidence remain unrebutted.
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`Accordingly, the Board should exclude Paragraphs 5-6, 8-10, 14, and 16-23
`
`of Exhibit 1012 and Exhibit 1016 as irrelevant under Fed. R. Evid. 402.
`
`
`
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`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
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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.” See Paper No. 32 at 5-6. That quote cannot be found in the case to which
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`Petitioner attributes it. Regardless, the quote does not support submitting evidence
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`regarding knowledge of a relevant field for the first time in support of a reply.
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`
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`5
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`
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`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01760
`U.S. Patent No. 9,094,268
`
`
`C.
`
`Paragraphs 1-10, 14, and 16-25 of Exhibit 1012 and Exhibit 1016
`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.
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`32 at 6-7. That is not the case. It is clear from Patent Owner’s Motion that
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`allowing Paragraphs 1-10, 14, and 16-25 of Exhibit 1012 into evidence would, at a
`
`minimum, (1) confuse the issues because those paragraphs include new, untimely
`
`arguments that could be confused with the arguments found in the Petition, (2)
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`prejudice Patent Owner because Patent Owner and its expert do not have an
`
`opportunity to submit papers in response to the new opinions found at those
`
`paragraphs, 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
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`belatedly and improperly submitted.
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`Similarly, it is clear from Patent Owner’s Motion that allowing Exhibit 1016
`
`into evidence would, at a minimum, (1) confuse the issues because Exhibit 1016 is
`
`a new reference that Petitioner is relying on to support its obviousness arguments,
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`(2) prejudice Patent Owner because Patent Owner and its expert do not have an
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`opportunity to submit papers to discuss Exhibit 1016, and (3) result in delay and
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`6
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`
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`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01760
`U.S. Patent No. 9,094,268
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`wasted time because Patent Owner (if given the opportunity) and the Board may
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`now have to address the belatedly and improperly submitted Exhibit 1016.
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` Petitioner further argues that the Board should not exclude Paragraphs 1-10,
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`14, and 16-25 of Exhibit 1012 or Exhibit 1016 under Fed. R. Evid 403 because the
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`Board is well positioned to determine and assign appropriate weight to evidence
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`presented. Paper No. 32 at 7. This argument misses the point. That the Board is
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`capable of weighing evidence does not change the fact that allowing the challenged
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`paragraphs of Exhibit 1012 and Exhibit 1016 into evidence would still create
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`unnecessary confusion, prejudice Patent Owner, and waste time for the reasons
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`discussed above.
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`Therefore, Paragraphs 1-10, 14, and 16-25 of Exhibit 1012 and Exhibit 1016
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`should be excluded under Fed. R. Evid. 403.
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`II. CONCLUSION
`
`
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`For at least the foregoing reasons and those provided in Patent Owner’s
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`Motion to Exclude (Paper No. 26), Patent Owner respectfully requests that the
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`Board exclude the evidence discussed above.
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`Dated: October 23, 2017
`
`
`
`
`
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`Respectfully submitted,
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`McAndrews, Held & Malloy, Ltd.
`
`7
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`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01760
`U.S. Patent No. 9,094,268
`
`
`
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`
`
`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
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`
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`Patent Owner’s Reply in Support of Its Motion to Exclude
`IPR2016-01760
`U.S. Patent No. 9,094,268
`
`
`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,
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`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
`
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`Facsimile: 312-775-8100
`
`
`
`CUSTOMER NUMBER: 23446
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