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
`_____________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`____________
`
`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
`_____________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2016-01760
`
`Pursuant to 37 C.F.R. § 42.23, Cisco Systems Inc., (“Petitioner”) hereby
`
`opposes TQ Delta, LLC’s (“Patent Owner”) Motion to Exclude (Paper 26 “Mot.
`
`Excl.”) Exhibits 1012 and 1016. The Board should deny TQ Delta’s Motion to
`
`Exclude in its entirety for the reasons that follow.
`
`I.
`
`The Board Should Not Exclude Exhibits 1012 and 1016 under
`Fed. R. Evid. 402
`
`TQ Delta’s arguments pertaining to the alleged inadmissibility of Exhibit
`
`1012 (Declaration of Dr. Kiaei) and Exhibit 1016 (U.S. Patent No. 5,909,463) as
`
`irrelevant under Fed. R. Evid. 402 are unavailing.
`
`As movant, TQ Delta has the burden of showing that an exhibit is not
`
`admissible under the Federal Rules of Evidence. 37 C.F.R. § 42.20(c). Rule 401
`
`dictates that evidence is relevant if “it has any tendency to make a fact more or less
`
`probable than it would be without the evidence.” Fed. R. Evid. 401. Both the
`
`Federal Circuit and the Board have recognized that there is a “low threshold for
`
`relevancy.” OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1407 (Fed. Cir.
`
`1997); Laird Techs., Inc. v. GrafTech Int’l Holdings, Inc., IPR2014-00025, Paper
`
`45 at 44 (PTAB Mar. 25, 2015).
`
`a. Paragraphs 1-4, 7, 24, and 25 of Exhibit 1012 are relevant.
`
`TQ Delta argues that Paragraphs 1-4, 7, 24, and 25 of Exhibit 1012 are not
`
`relevant under Fed. R. Evid. 402 because “Petitioner’s Reply does not cite to those
`
`2
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2016-01760
`paragraphs.” Mot. Excl. at 3. This argument misses the point. The evidence in
`
`Paragraphs 1-4, 7, and 24 of Exhibit 1012 establishes that Dr. Kiaei’s testimony is
`
`responsive to certain assertions made by Dr. Chrissan in his Declaration, thus
`
`providing context for his testimony. The evidence at Paragraph 25 of Exhibit 1012
`
`establishes that Dr. Kiaei submitted his testimony under oath. Accordingly, this
`
`evidence in Paragraphs 1-4, 7, 24, and 25 of Exhibit 1012 is relevant for
`
`establishing the context of Dr. Kiaei’s testimony and for assessing the credibility of
`
`his testimony.
`
`Moreover, this evidence should not be excluded because “there is a strong
`
`public policy for making all information filed in an administrative proceeding
`
`available to the public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`
`CBM2012-00010, Paper 59 at 40 (PTAB February 24, 2014). Where the Board
`
`does not need to rely on challenged testimony, the motion to exclude is dismissed
`
`as moot. See, e.g., CoreLogic, Inc. v. Boundary Sols., Inc., IPR2015-00219, Paper
`
`48 at 12 (PTAB May 19, 2016).
`
`Therefore, Paragraphs 1-4, 7, 24, and 25 of Exhibit 1012 should not be
`
`excluded.
`
`b. TQ Delta’s arguments regarding Paragraphs 5-6, 8-10, 14, and
`16-23 of Exhibit 1012 and Exhibit 1016 do not address their
`admissibility under the rules of evidence.
`
`TQ Delta’s arguments that Paragraphs 5-6, 8-10, 14, and 16-23 of Exhibit
`
`3
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2016-01760
`1012 and Exhibit 1016 “constitute new evidence” and “support the new argument”
`
`fail to address the admissibility of the evidence under FRE 402. Mot. Excl. at 3-
`
`12. TQ Delta’s principle argument is that the evidence was not introduced with the
`
`petition, ignoring the fact 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.” Genzyme Therapeutic Prods. v. Biomarin Pharm., 825 F.3d 1360, 1367
`
`(Fed. Cir. 2016).
`
`Therefore, because TQ Delta’s arguments do not explain how or why the
`
`“newness” of the evidence allegedly relates to its relevancy, TQ Delta has failed to
`
`meet its burden under 37 C.F.R. § 42.20(c). The exhibits should not be excluded.
`
`c. Paragraphs 5-6, 8-10, 14, and 16-23 of Exhibit 1012 and Exhibit
`1016 are relevant.
`
`Petitioner’s evidence in Paragraphs 5-6, 8-10, 14, and 16-23 of Exhibit 1012
`
`and Exhibit 1016 is relevant to arguments raised in the Patent Owner Response
`
`(Paper 13, “Response”) to which Petitioner is entitled to reply. 37 C.F.R. §
`
`42.23(b). The evidence’s relevancy to specific issues and arguments is identified
`
`below.
`
`Dr. Kiaei’s testimony in Exhibit 1012 at Paragraphs 5-6 and 8-10 is relevant
`
`to TQ Delta’s proposed constructions of the terms “maintaining synchronization
`
`with a second transceiver” and “parameter(s) associated with the full power mode
`
`operation.” Response at 19-23.
`
`4
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2016-01760
`Dr. Kiaei’s testimony at Paragraph 14 in Exhibit 1012 and Exhibit 1016 are
`
`relevant to TQ Delta’s argument regarding Yamano’s low power mode. This
`
`testimony explains the understanding of a person of ordinary skill in the art
`
`regarding echo cancelers. Response at 27-28.
`
`Dr. Kiaei’s testimony at Paragraphs 16-18 in Exhibit 1012 is relevant to
`
`arguments raised by TQ Delta regarding prior art synchronization signals. This
`
`testimony explains what persons of ordinary skill in the art understood regarding
`
`these signals. Response at 19-22, 31.
`
`Dr. Kiaei’s testimony at Paragraphs 19-21 in Exhibit 1012 is relevant to
`
`arguments raised by TQ Delta regarding activating circuitry in Bowie during low
`
`power mode. This testimony explains what persons of ordinary skill in the art
`
`understood at the time. Response at 54.
`
`Dr. Kiaei’s testimony at Paragraphs 22 and 23 in Exhibit 1012 is relevant to
`
`TQ Delta’s argument regarding the compatibility of the prior art. This testimony
`
`explains what persons of ordinary skill in the art understood at the time. Response
`
`at 37-39.
`
`In sum, the evidence in Paragraphs 5-6, 8-10, 14, and 16-23 of Exhibit 1012
`
`and Exhibit 1016 is relevant to arguments raised in TQ Delta’s Response and
`
`relevant to the state of the art. See Rules of Practice for Trials before the Patent
`
`Trial and Appeal Board, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2014); Liberty
`
`5
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2016-01760
`Mut. Ins. Co. v. Progressive Cas. Ins., CBM2012-00010, Paper 59 (PTAB Feb. 24,
`
`2014) (“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 art.”).
`
`Therefore, for the reasons set forth above, the Board should deny TQ Delta’s
`
`Motion to Exclude Exhibits 1012 and 1016 under Fed. R. Evid. 402. See Kyocera
`
`Corp. v. Softview LLC, IPR2013-00007, Paper 51 at 34 (PTAB March 27, 2014) (a
`
`motion to exclude “is neither a substantive sur-reply, nor a proper vehicle for
`
`arguing whether a reply or supporting evidence is of appropriate scope.”); see also
`
`Laird Techs., Inc. v. GrafTech Int’l Holdings, Inc., IPR2014-00025, Paper 45 at 44
`
`(PTAB Mar. 25, 2015) (“A motion to exclude . . . is not an appropriate mechanism
`
`for challenging the sufficiency of evidence or the proper weight that should be
`
`afforded an argument.”).
`
`II.
`
`The Board Should Not Exclude Exhibits 1012 and 1016 Under
`Fed. R. Evid. 403
`
`TQ Delta also argues that even if relevant, the admission of Exhibits 1012
`
`and 1016 causes “unfair prejudice, confusion, delay, and wasted time” and should
`
`be excluded under Fed. R. Evid. 403. Mot. Excl. at 3, 4, and 12.
`
`Other than the above noted conclusory assertion, however, TQ Delta
`
`provides no explanation or evidence demonstrating that the “probative value [of
`
`Exhibits 1012 and 1016] is substantially outweighed by a danger of . . . unfair
`6
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2016-01760
`prejudice, confusing the issues, misleading the jury, undue delay, wasting time.”
`
`Fed. R. Evid. 403. There is no credible reason whatsoever to exclude this
`
`probative evidence. Moreover, “[s]imilar to a district court in a bench trial, the
`
`Board, sitting as a non-jury tribunal with administrative expertise, is well-
`
`positioned to determine and assign appropriate weight to evidence presented.”
`
`Mobotix Corp., v. Comcam International, Inc., Case IPR2015-00093, Paper 22 at 3
`
`(PTAB Apr. 28, 2016); see also, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d
`
`215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the
`
`admissibility of evidence is equally capable of sifting it accurately after it has been
`
`received . . . .”).
`
`Therefore, because TQ Delta has not met its burden to show any prejudicial
`
`effect and because the Board is well-positioned to weigh the evidence, admissible
`
`Exhibits 1012 and 1016 should not be excluded under Fed. R. Evid. 403.
`
`III. Conclusion
`
`For the above noted reasons, Petitioner respectfully requests that the Board
`
`deny TQ Delta’s Motion to Exclude.
`
`October 16, 2017
`
`Respectfully submitted,
`
`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioner
`Registration No. 32,271
`
`7
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2016-01760
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
`service was made on the Patent Owner as detailed below.
`
`Date of service
`
`October 16, 2017
`
`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-IPR2016-01760@mcandrews-ip.com
`
`Documents served
`
`Petitioner’s Opposition to Patent Owner’s Motion
`to Exclude
`
`Persons served
`
`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
`
`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioner
`Registration No. 32,271
`
`8
`
`
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