UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS INC.,
`Petitioner
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00108
`U.S. Patent No. 8,416,862
`____________
`
`
`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EVIDENCE
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS INC.,
`Petitioner
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00108
`U.S. Patent No. 8,416,862
`____________
`
`
`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EVIDENCE
`
`
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`Pursuant 37 C.F.R. § 42.64(b), Petitioner objects to evidence submitted by
`
`Patent Owner during the preliminary, pre-institution stage of this IPR, which was
`
`instituted on May 20, 2020. Specifically, Petitioner objects to the following
`
`exhibits submitted by Patent Owner for the bases noted below:
`
` Ex. 2004 (“Declaration of Dr. Edwin A. Hernandez-Mondragon”) –
`
`FRE 801-802
`
` Ex. 2007 (“LinkedIn profile for Carlos Aldana”) – FRE 801-802 and
`
`901, and 37 C.F.R. § 42.53(a);
`
` Ex. 2008 (“LinkedIn profile for Joonsuk Kim”) – FRE 801-802 and
`
`901;
`
` Ex. 2009 (“EE Times, 802.11n deal imminent, says Broadcom exec”) –
`
`FRE 801-802 and 901;
`
` Ex. 2010 (“Broadcom press release, Avago Technologies to Acquire
`
`Broadcom for $37 Billion”) – FRE 801-802 and 901;
`
` Ex. 2011 (“Phys.org, WWise Consortium Submits Joint Proposal to the
`
`IEEE 802.11 Task Group N”) – FRE 801-802 and 901;
`
` Ex. 2016 (“Qualcomm.com, MU-MIMO: How your Snapdragon
`
`processor powered device could be three times faster over Wi-Fi”) –
`
`FRE 801-802 and 901;
`
` Ex. 2017 (“FierceWireless.com, Qualcomm ups WiFi capacity via
`1
`
`
`
`
`
`
`
`
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`802.11ac multiuser MIMO”) – FRE 801-802 and 901;
`
` Ex. 2018 (“Snapdragon Phone Finder”) – FRE 801-802 and 901;
`
` Ex. 2019 (“Declaration of Afzal Dean”) – FRE 401, 403, and 1002;
`
` Ex. 2020 (“Excerpts from IEEE Std 802.11 2016, Part 11: Wireless
`
`LAN Medium Access Control and Physical Layer Specifications”) –
`
`FRE 801-802 and 901; and
`
` Ex. 2022 (“Excerpts from Perahia, et al., Next Generation Wireless
`
`LANs”) – FRE 801-802 and 901.
`
`EXHIBITS 2007 AND 2008
`
`Exhibits 2007 and 2008 are asserted by Patent Owner as providing
`
`background information for the inventors of the ’862 patent and for the original
`
`assignee of the ’862 patent. Patent Owner’s Preliminary Response (“POPR”) at
`
`pp. 3-4. However, these are merely printouts of LinkedIn pages purported to be
`
`associated with the inventors. Patent Owner has provided no authentication that
`
`these LinkedIn pages actually correspond to the inventors of the ’862 patent or
`
`that they provide accurate information purported for the inventors and the
`
`original assignee of the ’862 patent. Furthermore, Patent Owner has not
`
`authenticated the source of the content provided on these printouts or that the
`
`printouts are actually an accurate representation of this content as it appears on
`
`the LinkedIn website. Accordingly, Petitioner objects to Exhibits 2007 and 2008
`
`
`
`2
`
`
`
`
`
`under FRE 901 for a lack of authentication.
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`Additionally, Petitioner objects to Exhibits 2007 and 2008 as inadmissible
`
`hearsay under FRE 801 and 802 because they amount to out of court statements
`
`that are offered in the POPR (pp. 3-4) for the truth of the matter asserted. None
`
`of the hearsay exceptions under FRE 803 are satisfied by these out of court
`
`statements.
`
`Furthermore, Patent Owner is effectively trying to use Exhibits 2007 and
`
`2008 as testimonial evidence purported to emanate from the inventors without
`
`submitting a sworn affidavit from the inventors. This is in violation of 37 C.F.R.
`
`§ 42.53(a), which requires that “[u]ncompelled direct testimony must be
`
`submitted in the form of an affidavit” (emphasis added). Accordingly, Petitioner
`
`additionally objects to Exhibits 2007 and 2008 as violating the requirements of
`
`37 C.F.R. § 42.53(a).
`
`EXHIBITS 2009-2011 AND 2016-2018
`
`Exhibits 2009, 2010, and 2011 are asserted by Patent Owner as providing
`
`background information for the original assignee of the ’862 patent and the
`
`market within which the original assignee operated. POPR at pp. 3-4. Similarly,
`
`Patent Owner asserts Exhibits 2016, 2017, and 2018 to support the proposition
`
`that the technology of the ’862 patent has had “widespread industry adoption.”
`
`POPR at p. 62. However, these Exhibits are merely printouts of purported online
`
`
`
`3
`
`
`
`
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`articles and webpages. Patent Owner has not authenticated these Exhibits as
`
`actually corresponding to the online articles and webpages that they purport to
`
`be, let alone that they accurately reflect the information contained in the articles
`
`and webpages as of the date of publication identified in each Exhibit.
`
`Accordingly, Petitioner objects to Exhibits 2009, 2010, 2011, 2016, 2017, and
`
`2018 for lack of authentication.
`
`Additionally, Petitioner objects to Exhibits 2009, 2010, 2011, 2016, 2017,
`
`and 2018 as inadmissible hearsay under FRE 801 and 802 because they amount
`
`to out of court statements that are offered in the POPR (pp. 3-4, 62) for the truth
`
`of the matter asserted. None of the hearsay exceptions under FRE 803 are
`
`satisfied by these out of court statements.
`
`EXHIBIT 2019
`
`Patent Owner asserts Exhibit 2019 as providing evidence that other
`
`companies have executed licenses to the ’862 patent in support of its secondary
`
`consideration arguments. POPR at p. 65. Exhibit 2019 merely states that
`
`Kyocera, Huawei, and ZTE entered into license agreements with Patent Owner
`
`for the ’862 patent, but does not provide any specifics regarding these licenses,
`
`such as their terms, duration, or products to which these licenses apply. Ex. 2019
`
`at ¶¶ 5-7. Accordingly, Petitioner submits that, without further details or
`
`information, the relevance of these purported licenses between Patent Owner and
`
`
`
`4
`
`
`
`
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`various third parties, who are unrelated and unassociated with Petitioner, is
`
`unclear. Accordingly, Petitioner objects to Exhibit 2019 as lacking relevance
`
`under FRE 401.
`
`For similar reasons, Petitioner submits that Exhibit 2019 is unfairly
`
`prejudicial to Petitioner because it implies that the third parties have recognized
`
`that the ’862 patent is valid and enforceable via these purported licenses. For
`
`example, Petitioner fails to mention that IPR invalidity proceedings had been
`
`initiated by at least two of these third parties. See IPR2019-01438 and IPR2019-
`
`01439. Accordingly, Petitioner objects to Exhibit 2019 under FRE 403 as being
`
`potentially misleading and unfairly prejudicial.
`
`Petitioner also objects to Exhibit 2019 under FRE 1002 for not being the
`
`best evidence for the purported licenses. FRE 1002 states that “[a]n original
`
`writing . . . is required in order to prove its contents.” The best evidence of these
`
`purported licenses would be the licenses themselves, not testimony about the
`
`licenses. Accordingly, at least paragraphs 5-7 of Exhibit 2019 regarding these
`
`licenses are inadmissible under FRE 1002.
`
`EXHIBITS 2020 AND 2022
`
`Patent Owner asserts Exhibits 2020 and 2022 purportedly demonstrate
`
`“widespread industry adoption” of the ’862 patent. POPR at pp. 46-62.
`
`However, these Exhibits are merely excerpts of a purported standard and book.
`
`
`
`5
`
`
`
`
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`Patent Owner has not authenticated these exhibits as actually corresponding to
`
`the standard and book that they purport to be, let alone that they accurately
`
`reflect the information contained in the standard and book. Accordingly,
`
`Petitioner objects to Exhibits 2020 and 2022 for lack of authentication.
`
` Additionally, Petitioner objects to Exhibits 2020 and 2022 as inadmissible
`
`hearsay under FRE 801 and 802 because they amount to out of court statements
`
`that are offered in the POPR (pp. 46-62) for the truth of the matter asserted.
`
`None of the hearsay exceptions under FRE 803 are satisfied by these out of court
`
`statements.
`
`EXHIBIT 2004
`
`Exhibit 2004 is the declaration of Dr. Edwin A. Hernandez-Mondragon. It
`
`references several portions of the exhibits objected to above. See, e.g., Ex. 2004
`
`at ¶¶ 89-91. Accordingly, Petitioner also objects to any portions of Exhibit 2004
`
`that reference or rely upon information contained in the exhibits objected to
`
`above, and for the same bases articulated above.
`
`
`Dated: June 4, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(Control No. IPR2020-00108)
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Timothy W. Riffe/
`Timothy W. Riffe, Reg. No. 43,881
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-626-5070, F: 877-769-7945
`Attorneys for Petitioner
`
`
`
`6
`
`
`
`
`
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e), the undersigned certifies that on June 4,
`
`2020, a complete and entire copy of this Petitioner’s Objections to Patent Owner’s
`
`Evidence was provided via email to the Patent Owner by serving the
`
`correspondence address of record as follows:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Paul J. Skiermont
`Sadaf R. Abdullah
`Steven J. Udick
`Skiermont Derby LLP
`1601 Elm Street
`Dallas, TX 75201
`
`Mieke K. Malmberg
`Skiermont Derby LLP
`800 Wilshire Boulevard, Suite 1450
`Los Angeles, CA 90017
`
`Email: BNR_SDTeam@skiermontderby.com
`
`
`
`
`
`
`
`
`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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
