Paper: 8
`Trials@uspto.gov
`Entered: July 5, 2018
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., LG
`ELECTRONICS MOBILECOMM U.S.A. INC., LG ELECTRONICS
`MOBILE RESEARCH U.S.A. LLC, AND LG ELECTRONICS
`ALABAMA, INC.,
`Petitioner
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`
`Cases:
`IPR2018-00493 (Patent 7,834,586 B2)
`IPR2018-00495 (Patent 7,239,111 B2)
`IPR2018-00508 (Patent 8,232,766 B2)
`
`Before BRYAN F. MOORE, LYNNE E. PETTIGREW,
`JON B. TORNQUIST, CHRISTOPHER L. OGDEN, and
`ARTHUR M. PESLAK, Administrative Patent Judges.1
`
`PESLAK, Administrative Patent Judge.
`
`
`
`
`
`1 Because this Order involves the same issue in three cases, the
`Administrative Patent Judges assigned to all three cases are listed. None of
`the three listed cases involves an expanded panel of judges.
`
`
`
`
`Trials@uspto.gov
`Entered: July 5, 2018
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., LG
`ELECTRONICS MOBILECOMM U.S.A. INC., LG ELECTRONICS
`MOBILE RESEARCH U.S.A. LLC, AND LG ELECTRONICS
`ALABAMA, INC.,
`Petitioner
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner.
`
`
`Cases:
`IPR2018-00493 (Patent 7,834,586 B2)
`IPR2018-00495 (Patent 7,239,111 B2)
`IPR2018-00508 (Patent 8,232,766 B2)
`
`Before BRYAN F. MOORE, LYNNE E. PETTIGREW,
`JON B. TORNQUIST, CHRISTOPHER L. OGDEN, and
`ARTHUR M. PESLAK, Administrative Patent Judges.1
`
`PESLAK, Administrative Patent Judge.
`
`
`
`
`
`1 Because this Order involves the same issue in three cases, the
`Administrative Patent Judges assigned to all three cases are listed. None of
`the three listed cases involves an expanded panel of judges.
`
`
`
`
`
`IPR2018-00493 (Patent 7,834,586 B2)
`IPR2018-00495 (Patent 7,239,111 B2)
`IPR2018-00508 (Patent 8,232,766 B2)
`
`
`ORDER
`Denying Authorization for Petitioner Reply to
`Patent Owner’s Preliminary Response
`37 C.F.R. §§ 42.5, 42.108(c)
`
`On June 12, 2018, counsel for Petitioner in IPR2018-00493, IPR2018-
`
`00495, and IPR2018-00508 sent an email to the Board stating that Petitioner
`“seeks an order authorizing Petitioner to file a 5-page Reply under 37 C.F.R.
`§§ 42.108(c) to Patent Owner’s Preliminary Response, in each of the
`identified proceedings.” Petitioner states in the email that the reason for the
`request is Patent Owner’s introduction of deposition testimony of a Mr.
`Garney2 in the Patent Owner’s Preliminary Response. Petitioner asserts the
`testimony is “improper hearsay” because Petitioner was not a party to the
`litigation for which the deposition was taken. The email indicates that
`Patent Owner opposes the request.
`
`The Board held a teleconference on June 21, 2018, to address
`Petitioner’s request. Counsel for both parties and Judges Moore, Pettigrew,
`Tornquist, Ogden, and Peslak participated in the teleconference. A
`transcript of the call is entered in the record as Exhibit 1031 in all three cases
`(“Tr.”). Because the issues raised by Petitioner’s request are substantially
`
`
`2 IPR2018-00493, Ex. 2005; IPR2018-00295, Ex. 2003; IPR2018-00508,
`Ex. 2005. Patent Owner filed excerpts of Mr. Garney’s deposition
`transcript, not the entire transcript of the testimony. Id., passim.
`
`2
`
`
`
`IPR2018-00493 (Patent 7,834,586 B2)
`IPR2018-00495 (Patent 7,239,111 B2)
`IPR2018-00508 (Patent 8,232,766 B2)
`
`the same in all three cases, we issue one order that will be entered in each
`IPR proceeding.
`
`DISCUSSION
`Our rules state that “[a] petitioner may seek leave to file a reply to the
`
`preliminary response” and that “[a]ny such request must make a showing of
`good cause.” 37 C.F.R. § 42.108(c). During the teleconference, Petitioner
`stated that “there are three reasons why there is good cause . . . to file a reply
`to Patent Owner’s preliminary response.” Tr. 5:25–63. First, Petitioner
`asserts that “it wasn’t foreseen that Patent Owner would have filed the
`deposition transcript of Mr. Garney, who was not LG Electronics[’s] expert,
`and LG Electronics was not a part[y] to the proceeding to which the
`transcript pertains.” Id. at 6:4–8. Second, Petitioner states that while its
`District Court litigation counsel may have had access to Mr. Garney’s
`deposition transcript, counsel of record in these IPRs did not have access to
`the transcript at the time of the filing of the Petitions because of restrictions
`in a protective order entered in underlying litigation. Id. at 6:15–25. Third,
`Petitioner asserts that a reply “would inform the Board’s analysis and put
`proper context [for] Mr. Garney’s testimony.” Id. at 7:8–9. Petitioner also
`notes that as of the date of the teleconference, IPR counsel did not “have
`possession of that testimony” and requested that Patent Owner “file the full
`transcript of” Mr. Garney’s testimony. Id. at 12:22–23, 13:9.
`
`Patent Owner responds that Petitioner appears to have abandoned the
`original premise stated in the email for filing a reply, i.e., that Mr. Garney’s
`
`3
`
`
`
`IPR2018-00493 (Patent 7,834,586 B2)
`IPR2018-00495 (Patent 7,239,111 B2)
`IPR2018-00508 (Patent 8,232,766 B2)
`
`testimony is hearsay. Tr. 9:6–10.3 Patent Owner asserts that the submission
`of Mr. Garney’s testimony is “totally foreseeable based on” Petitioner’s
`argument that SE1 signaling is “suitable for USB signaling” and has
`“obvious beneficial results.” Id. at 9:16–21 (quoting from Petition in
`IPR2018-00508). According to Patent Owner, “Mr. Garney’s testimony
`directly undermines those points, so it’s fair – it’s foreseeable that Patent
`Owner is going to raise such testimony by another neutral expert.” Id. at
`9:25–10:4. Patent Owner next asserts that Petitioner “realize[s] a gap in the
`petition” caused by Mr. Garney’s testimony and is improperly “trying to
`make new arguments” to the Board to cure the gap in the Petition which
`would be “totally prejudicial for the patent owner.” Id. at 11:10–11, 21–22.
`We are not persuaded that Petitioner has shown good cause for a reply
`to Patent Owner’s Preliminary Response.
`
`Patent Owner’s arguments regarding SE1 signaling appear to be
`responsive to statements in the Petition (e.g., IPR2018-00508, Pet. 23–24)
`that SE1 signals are suitable for USB signaling. Petitioner, however, does
`not argue that Patent Owner’s arguments regarding SE1 signaling are
`unforeseeable but rather that the submission of Mr. Garney’s testimony in
`support of Patent Owner’s arguments is unforeseeable. In that regard, we
`note that Patent Owner relies on the testimony of its own declarants, Dr.
`Kenneth Fernald (IPR2018-00493 and -00508) and Mr. Baranowski
`(IPR2018-00495) (Ex. 2001) and the USB 2.0 Specification (Ex. 1010), in
`
`3 Petitioner denies that the hearsay argument has been abandoned. Tr.
`12:16–19. Nevertheless, the existence of a disputed admissibility issue is
`not good cause to file a reply, because the proper time for objecting to
`evidence is after the institution of trial. See 37 C.F.R. § 42.64.
`
`4
`
`
`
`IPR2018-00493 (Patent 7,834,586 B2)
`IPR2018-00495 (Patent 7,239,111 B2)
`IPR2018-00508 (Patent 8,232,766 B2)
`
`addition to Mr. Garney’s testimony to support these arguments. See e.g.,
`IPR2018-00508, Prelim. Resp. 29–30. Given that Petitioner relies on both
`documentary evidence and other testimonial evidence, whether the
`submission of Mr. Garney’s testimony was unforeseeable is not
`determinative of whether good cause exists for the filing of a reply to Patent
`Owner’s Preliminary Response. Petitioner’s Request for Authorization to
`file a reply to Patent Owner’s Preliminary Response is, thus, denied because
`Petitioner has not established that Patent Owner’s arguments were
`unforeseeable and Patent Owner relies on evidence other than Mr. Garney’s
`testimony in support of the argument.
`
`Our rules provide that “the proponent of the testimony must arrange
`for providing a copy of the transcript to all other parties” and the transcript
`“must be filed as an exhibit.” 37 C.F.R. § 42.53(7). Because Patent Owner,
`as proponent of Mr. Garney’s testimony, has not filed a complete copy of
`Mr. Garney’s deposition transcript and Petitioner’s counsel represented that
`the complete testimony had not been provided to Petitioner as of the date of
`the teleconference in this matter, we direct Patent Owner to file a complete
`copy of Mr. Garney’s deposition transcript.
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s request for authorization to file a reply to
`
`Patent Owner’s Preliminary Response is denied;
`
`FURTHER ORDERED that this order shall be entered in the record of
`each of IPR2018-00493, IPR2018-00495, and IPR2018-00508; and
`
`5
`
`
`
`IPR2018-00493 (Patent 7,834,586 B2)
`IPR2018-00495 (Patent 7,239,111 B2)
`IPR2018-00508 (Patent 8,232,766 B2)
`
`FURTHER ORDERED that Patent Owner shall file a complete copy
`
`of Mr. Garney’s deposition transcript within 5 business days of the entry of
`this order.
`
`
`
`
`
`PETITIONER:
`
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`Gregory P. Huh
`gregory.huh.ipr@haynesboone.com
`David M. O’Dell
`david.odell.ipr@haynesboone.com
`Adam C. Fowles
`adam.fowles.ipr@haynesboone.com
`
`
`
`
`PATENT OWNER:
`
`Hong Zhong
`hzhong@irell.com
`
`Michael Fleming
`mfleming@irell.com
`
`
`
`
`
`
`6
`
`
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