UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA) INC.,
`Petitioner,
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`v.
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`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
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`PTAB Case No. IPR2019-01365
`Patent No. 7,039,435
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`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EVIDENCE
`UNDER 37 C.F.R. § 42.64(B)(1)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA) INC.,
`Petitioner,
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`v.
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`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
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`PTAB Case No. IPR2019-01365
`Patent No. 7,039,435
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`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EVIDENCE
`UNDER 37 C.F.R. § 42.64(B)(1)
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`Petitioner hereby objects under 37 C.F.R. § 42.64(b)(1) to the following
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`evidence in Bell Northern Research, LLC’s (“BNR” or “Patent Owner”) Response
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`(Paper 19) filed on May 12, 2020. As required by Rule 42.64, these objections are
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`being filed and served within five (5) business days of service of evidence by
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`Patent Owner on Petitioner.
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`I.
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`IDENTIFICATION OF CHALLENGED EVIDENCE AND
`GROUNDS FOR OBJECTIONS
`Exhibit 2022 - Declaration of Mark Horenstein, Ph.D.
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`A.
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`Petitioner objects to Exhibit 2022 to the extent that Patent Owner has
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`violated its duty to disclose relevant information under 37 C.F.R. § 42.51(b)(1)(iii)
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`that is inconsistent with the positions advanced by its expert, Dr. Horenstein,
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`concurrent with the filing of its Patent Owner’s Response. Petitioner discovered
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`that Dr. Horenstein has provided at least sworn testimony in the form of
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`declarations submitted in support of previous IPR petitions that are inconsistent
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`with his current declaration and inconsistent with sworn deposition testimony he
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`gave on January 8, 2020.1 See Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267,
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`1 Dr. Horenstein has provided inconsistent testimony in at least the following
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`declarations in prior IPR proceedings: IPR2015-01023, Ex. 1022; IPR2015-00609,
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`Ex. 1008; IPR2015-01928, Ex. 1015; IPR2015-01149, Ex. 1012; IPR2019-01319
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`Ex. 2053; IPR2019-01320 Ex. 2053.
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`1272–73 (Fed. Cir. 2017) (finding that inconsistencies in expert testimony bear on
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`the credibility of the expert in an IPR proceeding).
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`Petitioner further objects to Exhibit 2022 under Federal Rules of Evidence
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`rules 403 and 702. Given Dr. Horenstein’s inconsistent testimony, Exhibit 2022 is
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`unfairly prejudicial, confuses the issues, is misleading, and wastes the Board and
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`parties’ time. Additionally, based on Dr. Horenstein’s inconsistent testimony,
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`Exhibit 2022 is not the product of reliable principles and methods, and
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`Dr. Horenstein has failed to reliably apply principles and methods to the facts of
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`the case.
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`B.
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`Exhibit 2025 - Declaration of Chad Hilyard
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`Petitioner further objects to Exhibit 2025 under Federal Rules of Evidence
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`rules 401/402, 403, 602, 802, and 1002. Given Mr. Hilyard’s attempts to provide
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`testimony for time periods when he was no longer at LSI, and thus for which he
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`does not have personal knowledge of LSI’s licensing practices or any
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`considerations as to patent licensing or agreements, Exhibit 2025 includes hearsay
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`statements, is irrelevant, unfairly prejudicial, confuses the issues, is misleading,
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`and wastes the Board and parties’ time. Petitioner further objects to Exhibit 2022,
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`Dr. Horenstein’s declaration, and Paper 19, the Patent Owner’s Response, to the
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`extent they rely on the impermissible hearsay and irrelevant statements provided in
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`Mr. Hilyard’s Declaration.
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`C.
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`Exhibits 2024, 2027
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`Petitioner further objects to the form of Exhibits 2024 and 2027, which were
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`marked AEO and provided in full, instead of in the proper form under PTAB
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`policies relating to documents for which a Motion to Seal or Protective Order may
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`be considered applicable. Petitioner notes that at least Exhibits 2024 and 2027 have
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`been produced in the related district court litigation, in a format that may also serve
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`useful in this proceeding.
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`D.
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`Exhibit 2027
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`Petitioner further objects to Exhibit 2027 under Federal Rules of Evidence
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`rules 401/402, 403, and 802. It is not clear what Exhibit 2027 purports to
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`represent, and Exhibit 2027 not only appears to be a draft document since it
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`contains mark-ups, but even if taken for the argument for which BNR purports to
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`provide it, Exhibit 2027 particularly constitutes hearsay information/statements,
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`and is irrelevant, unfairly prejudicial, confuses the issues, is misleading, and
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`wastes the Board and parties’ time. Petitioner further objects to Exhibit 2022, Dr.
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`Horenstein’s declaration, and Paper 19, the Patent Owner’s Response, to the extent
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`they rely on the impermissible hearsay and irrelevant information/statements
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`provided in Exhibit 2027.
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`E.
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`Exhibit 2028 – “Market Share 4Q17 Update”
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`Petitioner further objects to Exhibit 2028 under Federal Rules of Evidence
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`rules 401/402, 403, 802, and 1002. It is not clear what Exhibit 2028 purports to
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`represent, but even if taken for the arguments for which BNR purports to provide
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`it, Exhibit 2028 then particularly constitutes hearsay information/statements, and
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`is irrelevant, unfairly prejudicial, confuses the issues, is misleading, and wastes the
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`Board and parties’ time. Petitioner further objects to Exhibit 2022, Dr.
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`Horenstein’s declaration, and Paper 19, the Patent Owner’s Response, to the extent
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`they rely on the impermissible hearsay and irrelevant information/statements
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`provided in Exhibit 2028.
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`II. Conclusion
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`To the extent that Patent Owner fails to correct the defects identified above,
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`Petitioner reserves the right to file a Motion to Exclude under 37 C.F.R. § 42.64(c).
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`Dated: May 19, 2020
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`Respectfully Submitted,
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`/Amol A. Parikh/
`Amol A. Parikh
`USPTO Reg. No. 60,671
`MCDERMOTT WILL & EMERY LLP
`444 West Lake Street, Suite 4000
`Chicago, IL 60606
`Phone: 312-984-6477
`Fax: 312-984-7700
`amparikh@mwe.com
`jrbaker@mwe.com
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`Charles McMahon
`USPTO Reg. No. 44,926
`MCDERMOTT WILL & EMERY LLP
`444 West Lake Street, Suite 4000
`Chicago, Illinois 60606
`Phone: 312-984-7641
`Fax: 312-984-7700
`cmcmahon@mwe.com
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`Thomas M. DaMario
`USPTO Reg. No. 77,142
`MCDERMOTT WILL & EMERY LLP
`444 West Lake Street, Suite 4000
`Chicago, Illinois 60606
`Phone: 312-984-7527
`Fax: 312-984-7700
`tdamario@mwe.com
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`Jiaxiao Zhang
`USPTO Reg. No. 63,235
`MCDERMOTT WILL & EMERY LLP
`18565 Jamboree Road, Suite 250
`Irvine, California 92612
`Phone: 949-757-6398
`Fax: 949-851-9348
`jiazhang@mwe.com
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing
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`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EVIDENCE was
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`served in its entirety this 19th day of May 2020, by electronic mail on the Patent
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`Owner via its attorneys of record:
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`SKIERMONT DERBY LLP
`Steven W. Hartsell
`Alexander E. Gasser
`Paul J. Skiermont
`Sadaf R. Abdullah
`Mieke K. Malmberg
`BNR_SDTeam@skiermontderby.com
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`Dated: May 19, 2020
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`Respectfully submitted,
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`/Amol A. Parikh/
`Lead Counsel
`Amol A. Parikh
`USPTO Reg. No. 60,671
`MCDERMOTT WILL & EMERY LLP
`444 West Lake Street, Suite 4000
`Chicago, IL 606060-0029
`Phone: 312-984-6477
`Fax: 312-984-7700
`amparikh@mwe.com
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