UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`P.O.’S CHALLENGE TO DR. ROY’S PETITION DECLARATION
`(EX. 1002) SHOULD BE REJECTED ........................................................... 2
`A.
`P.O. Failed to Identify an Objection in the Record to Dr. Roy’s
`Petition Declaration ............................................................................... 2
`P.O. Failed to Timely Object to Dr. Roy’s Petition Declaration .......... 2
`The Requirements of Joinder Required Dr. Roy’s Petition
`Declaration to Be Substantively Identical to Dr. Akl’s ........................ 8
`P.O.’s Arguments against Dr. Roy’s Petition Declaration Go to
`Weight, Not Admissibility .................................................................. 10
`III. CONCLUSION .............................................................................................. 11
`
`
`B.
`C.
`
`D.
`
`
`
`
`
`-i-
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`P.O.’s motion to exclude Dr. Roy’s Declaration in support of the Petition (Ex.
`
`1002, “Dr. Roy’s Petition Declaration”) should be denied for at least the following
`
`reasons.
`
`At the threshold, P.O. failed to identify the objections to Dr. Roy’s declaration
`
`in the record, which is required under 37 C.F.R. § 42.64(c). Furthermore, P.O. failed
`
`to timely file an objection under 37 C.F.R. § 42.64(b)(1), as necessary to preserve
`
`its objection. As such, P.O. waived its objection, as the PTAB has confirmed in
`
`numerous analogous decisions.
`
`In addition, P.O.’s objection to Dr. Roy’s Petition Declaration is based on the
`
`similarity of Dr. Roy’s Petition Declaration to a declaration submitted by Dr. Robert
`
`Akl in an IPR proceeding to which Qualcomm sought joinder. The substance of Dr.
`
`Roy’s Petition Declaration is largely the same as Dr. Akl’s declaration because that
`
`is what the joinder rules require, and Dr. Roy confirmed that he had read and agreed
`
`with Dr. Akl’s opinions. In addition, although P.O.’s arguments to Dr. Roy’s Petition
`
`Declaration are meritless, at most they go to weight, not admissibility, of the
`
`challenged evidence.
`
`
`
`-1-
`
`
`
`
`
`II.
`
`P.O.’S CHALLENGE TO DR. ROY’S PETITION DECLARATION
`(EX. 1002) SHOULD BE REJECTED
`A.
`
`P.O. Failed to Identify an Objection in the Record to Dr. Roy’s
`Petition Declaration
`
`Under 37 C.F.R. § 42.64(c), “A motion to exclude evidence … must identify
`
`the objections in the record ….” Id. (emphasis added); see also GoPro, Inc. v.
`
`Contour IP Holdings LLC, IPR2015-01080, Paper 55 at 8 (PTAB Oct. 26, 2016),
`
`vacated on other grounds, 908 F.3d 690 (Fed. Cir. 2018) (“The motion must identify
`
`the objections in the record in order and must explain the objections.”) (citing 37
`
`C.F.R. § 42.64(c)).
`
`P.O.’s motion to exclude Dr. Roy’s Petition Declaration fails to satisfy this
`
`burden and should be denied for this reason alone. Mot. at 1-13 (failing to identify
`
`any objection in the record to Dr. Roy’s Petition Declaration); Cardiovascular Sys.,
`
`Inc. v. Shockwave Medical, Inc., IPR2019-00408, Paper 70 at 52 (PTAB July 20,
`
`2020) (“Here, Petitioner does not identify the portion of the record where its
`
`objection to Exhibits 2178-2180 were originally made…. [W]e deny Petitioner’s
`
`Motion to Exclude Exhibits 2178-2180.”).
`
`B.
`
`P.O. Failed to Timely Object to Dr. Roy’s Petition Declaration
`
`Under 37 C.F.R. § 42.64(b)(1), “[a]ny objection to evidence submitted during
`
`a preliminary proceeding must be filed within ten business days of the institution of
`
`the trial.” Id. (emphasis added). In addition, the filed objection must “must identify
`
`-2-
`
`
`
`
`
`the grounds for the objection with sufficient particularity to allow correction in the
`
`form of supplemental evidence.” Id.
`
`This proceeding was instituted on July 19, 2021. Paper 14 at 1. Accordingly,
`
`UNM was required to file any objection to Dr. Roy’s Petition Declaration no later
`
`than July 27, 2021. However, UNM did not file an objection to Dr. Roy’s Petition
`
`Declaration1 until December 16, 2021 — more than four months too late. See Paper
`
`31 at 1.
`
`P.O.’s failure to timely object to Dr. Roy’s Petition Declaration mandates
`
`denial. See Les Ateliers Beau-Roc Inc. v. Air Power Sys. Co., LLC, IPR2020-01702,
`
`Paper 32 at 58 (PTAB Apr. 18, 2022) (“[B]ecause Patent Owner failed to file timely
`
`objections, Patent Owner's motion to exclude evidence under § 42.64 is denied.”);
`
`Cardiovascular Sys., IPR2019-00408, Paper 70 at 52 (“The failure to raise an
`
`objection at the appropriate time, results in a waiver of the objection.”);
`
`Growlerwerks, Inc. v. Drink Tanks Corp., IPR2017-00262, Paper 24 at 64 (PTAB
`
`Feb. 21, 2018) (denying patent owner’s motion to exclude evidence for failure to
`
`timely object, observing that “[b]y not timely objecting to Exhibit 1025, Patent
`
`
`1 UNM incorrectly filed its objections paper to Dr. Roy’s Petition Declaration as a
`
`“motion to exclude,” but the substance of that paper was an objection. See Papers
`
`31, 39.
`
`-3-
`
`
`
`
`
`Owner deprived Petitioner of an opportunity to respond with supplemental evidence
`
`as permitted by 37 C.F.R. § 42.64(b)(2)”); Search America, Inc. v. Transunion
`
`Intelligence, LLC, CBM2013-00037, Paper 67 at 15 (PTAB Feb. 3, 2015) (“We
`
`agree with Petitioner that Patent Owner waived its evidentiary objections to CSA/FS
`
`by failing to make a timely objection.”); University of Western Austrailia v.
`
`Academisch Ziekenhuis Leiden, Patent Interference No. 106,007, 2016 Pat. App.
`
`LEXIS 1975, *7 (PTAB. Apr. 29, 2016) (“If an objection is not timely made, the
`
`objection is waived.”).
`
`To the extent P.O. tries to argue that it did not completely understand the basis
`
`for its objections to Dr. Roy’s Petition Declaration until it deposed Dr. Roy, such an
`
`argument would be unavailing. First, P.O.’s December 16, 2021 objections to Dr.
`
`Roy’s Petition Declaration (Paper 31) would still be untimely. P.O. deposed Dr. Roy
`
`on Dec. 6, 2021 (Ex. 2014 at 1) and submitted its original Response on Dec. 7, 2021
`
`(Paper 28). Even if either of these dates somehow reset the clock for P.O. to object
`
`(which they do not), applying the 5-business-day time period to object to evidence
`
`that applies once a proceeding has been instituted, P.O.’s objection would have been
`
`due Dec. 13th or 14th, respectively, and thus P.O.’s objection on Dec. 16, 2021 would
`
`still be untimely. See 37 C.F.R. § 42.64(b)(1) (“Once a trial has been instituted, any
`
`objection must be filed within five business days of service of evidence to which the
`
`objection is directed.”). Although P.O.’s untimely objection paper cited 37 C.F.R.
`
`-4-
`
`
`
`
`
`§ 42.64(b)(1), it applied the wrong standard. Paper 30 at 1 (“These objections are
`
`being provided within 10 business days of receipt of the evidence to which the
`
`objection is related….”) (emphasis added).
`
`Second, the PTAB has repeatedly affirmed that information learned after
`
`institution does not extend the deadline to object to pre-institution evidence within
`
`10 business days. The Board’s reasoning in GoPro, Inc. v. Contour IP Holdings LLC
`
`is instructive:
`
`Patent Owner submitted Exhibits 2001 and 2002 with its Preliminary
`Response on July 30, 2015, prior to our Decision on Institution on
`October 28, 2015. Therefore, Petitioner was required to object to the
`evidence within ten business days of institution. Petitioner, however,
`did not object until January 26, 2016, and thus waived any objection to
`Exhibits 2001 and 2002…. Petitioner argues that its objections were
`timely because Petitioner filed them within five business days of Patent
`Owner filing its Response and a declaration from Michael P. Duffey
`(Exhibit 2012) purportedly authenticating
`the
`two web page
`printouts…. Petitioner, however, is not moving to exclude Exhibit
`2012, in which case an objection to the exhibit filed within five business
`days of its service would have been timely. Rather, Petitioner is moving
`to exclude Exhibits 2001 and 2002, which were submitted during the
`“preliminary proceeding.” Pursuant to 37 C.F.R. § 42.64(b)(1), any
`objection was due within ten business days of institution, and Petitioner
`failed to meet that requirement. Petitioner's Motion to Exclude is denied
`as to Exhibits 2001 and 2002.
`
`-5-
`
`
`
`
`
`GoPro, Inc. v. Contour IP Holdings LLC, IPR2015-01080, Paper 55 at 7 (PTAB
`
`Oct. 26, 2016), vacated on other grounds, 888 F.3d 1170 (Fed. Cir. 2018). Under
`
`the same reasoning, P.O. is moving to exclude Dr. Roy’s Petition Declaration, not
`
`his deposition transcript, and P.O.’s objections were due within 10 business days of
`
`institution. The Board’s reasoning in Apple Inc. v. Achates Reference Publishing,
`
`Inc. also is instructive:
`
`Achates alleges various reasons why Mr. Schneier's declaration
`(Exhibit 1041) should be excluded…. The declaration, however, was
`submitted by Apple with its Petition for inter partes review (Paper 2).
`Because the evidence was submitted during a preliminary proceeding,
`any objection to such evidence must have been served within ten
`business days of the institution of the trial. 37 C.F.R. § 42.64(b)(1).
`Achates does not allege that Apple was served with any objection
`within ten business days of the institution of trial (Paper 22, dated June
`3, 2013) or at any other time. Instead, Achates submits that 37 C.F.R.
`§ 42.64 does not apply “because the bases of the objections arose when
`[Apple] failed to update Mr. Schneier's declaration as part of its Reply.”
`Mot. to Exclude 7. Achates does not point to any rule or authority in
`support of the theory that Apple had a duty to “update” a declaration
`that was submitted with the Petition for inter partes review. Moreover,
`Apple would have had the right to serve supplemental evidence for the
`purpose of correcting any evidentiary deficiencies in the declaration,
`had Apple been provided with proper and timely notice, as required by
`37 C.F.R. § 42.64. Thus, we are not persuaded that Mr. Schneier's
`declaration should be excluded.”
`
`-6-
`
`
`
`
`
`Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080, Paper 90 at 49
`
`(PTAB June 2, 2014). Under the same reasoning, to the extent P.O. offers any reason
`
`for why it was not required to object to Dr. Roy’s Petition Declaration within 10
`
`business days of institution (and it has offered none), such reason should be rejected.
`
`Lastly, if P.O. believed that there was good cause to excuse its untimely
`
`objection to Dr. Roy’s Petition Declaration, it was required to request that the Board
`
`waive or suspend the requirement of 37 C.F.R. § 42.64(b)(1) prior to filing its late
`
`objections. See Nintendo of America Inc. v. Motion Games, LLC, IPR2014-00164,
`
`Paper 51 at 26 (PTAB May 15, 2015) (“As Patent Owner, itself, points out, Patent
`
`Owner's Motion to Exclude is based upon objections, which were untimely
`
`served…. Patent Owner did not request that the Board waive or suspend the
`
`requirement of 37 C.F.R. § 42.64(b)(1) prior to filing the late objections.”). P.O. here
`
`did not do that, and it is too late to request such a suspension of the rules in a motion
`
`to exclude, much less a reply to a motion to exclude, irrespective of whether there
`
`would be any prejudice to Petitioner (and there would be). See id. (“In as much as
`
`Patent Owner does so now in its Motion to Exclude, Patent Owner's request is
`
`denied. Patent Owner's Motion to Exclude proffers no showing of good cause as to
`
`why the late service of the objection should be excused (37 C.F.R. § 42.5(c)(3)),
`
`other than to argue that Petitioner suffered no prejudice.”)
`
`-7-
`
`
`
`
`
`Accordingly, P.O.’s failure to timely object to Dr. Roy’s Petition Declaration
`
`mandates denial of P.O.’s motion to exclude Dr. Roy’s Petition Declaration.
`
`C. The Requirements of Joinder Required Dr. Roy’s Petition
`Declaration to Be Substantively Identical to Dr. Akl’s
`
`P.O. objects to Dr. Roy’s Petition Declaration based on (1) the substantive
`
`similarity of Dr. Roy’s Petition Declaration to a declaration submitted by Dr. Robert
`
`Akl in an IPR proceeding to which Petitioner sought joinder (Mot. at 4); and (2) its
`
`accusation that Petitioner hid the substantive similarity of Dr. Roy’s Petition
`
`Declaration to Dr. Akl’s (Mot. at 2). P.O. is wrong in both respects.
`
`P.O.’s argument is fundamentally flawed because it ignores the joinder
`
`requirements upon Petitioner. Indeed, because Petitioner initially sought joinder
`
`with an IPR proceeding filed by Intel, Dr. Roy’s declaration was required to be
`
`substantively identical to Dr. Akl’s, as discussed in Petitioner’s motion for joinder:
`
`Qualcomm submits a copycat declaration from Dr. Sumit Roy, on
`whom Qualcomm will rely only in the event that Intel is terminated
`from the proceedings. The supporting declaration submitted by
`Qualcomm only differs from that filed by Intel (from Dr. Robert Akl)
`in that it has been updated to list the qualifications and personal
`experience of Dr. Roy. The opinions set forth in Dr. Roy’s declaration
`are identical to the opinions set forth in the declaration of Dr. Akl filed
`in the Intel IPR, and Dr. Roy’s discussion of the prior art and his
`analysis is the same as the analysis of Intel’s expert. See Celltrion, Inc.
`v. Genentech, Inc., IPR2018-01019, Paper 11 at 14 (P.T.A.B. Oct. 30,
`
`-8-
`
`
`
`
`
`2018) (granting motion for joinder of petitioner who “relie[d] on
`different experts” when the petitioner “assert[ed] that its ‘copycat
`declarations’ provide a discussion and analysis that ‘is substantially the
`same as the analysis of Pfizer’s experts’ and will not be relied upon
`unless [the original petitioner] is terminated from the proceedings.”)
`
`Paper 3 at 6 n. 1. Had Dr. Roy’s declaration not been substantively identical to Dr.
`
`Akl’s, it may have introduced new issues and been a basis for denying joinder. See
`
`Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 14. P.O.’s motion to
`
`exclude fails to even acknowledge these joinder requirements.
`
`Moreover, P.O.’s claim that Petitioner tried to hide the similarity of Dr. Roy’s
`
`Petition Declaration to Dr. Akl’s is meritless. As noted above, both the Petition and
`
`Motion for Joinder candidly acknowledged that Dr. Roy’s declaration is
`
`substantively identical to Dr. Akl’s. See Pet. at 5 n. 1, 2 (“Dr. Roy’s declaration is
`
`substantively identical to Dr. Robert Akl’s declaration in the Intel IPR. See Ex.
`
`1028.”); see also Paper 3 (motion for joinder with the Intel IPR). Even Dr. Roy
`
`candidly acknowledged that he “use[d] the [Akl] report as the basis of [his] report.”
`
`Ex. 2015 at 55:3-4.
`
`In addition to ignoring that Dr. Roy’s declaration was required to be
`
`substantively identical to Dr. Akl’s, P.O.’s motion to exclude also ignores that Dr.
`
`Roy reviewed his declaration in its entirety and agreed with Dr. Akl’s opinions. Ex.
`
`2013 at 111:18–112:5. At bottom, P.O. cites no support for the extraordinary
`
`-9-
`
`
`
`
`
`proposition that an expert is not permitted to sign a declaration that agrees with the
`
`opinions of another expert. P.O.’s motion to exclude Dr. Roy’s Petition Declaration
`
`is baseless and should be denied.
`
`D.
`
`P.O.’s Arguments against Dr. Roy’s Petition Declaration Go to
`Weight, Not Admissibility
`
`Lastly, even if the issue that joinder required the similarity between Dr. Roy’s
`
`and Dr. Akl’s declarations is set aside, P.O.’s arguments challenging Dr. Roy’s
`
`Petition Declaration are fundamentally flawed because they go to weight, not
`
`admissibility. See Amneal Pharmaceuticals, LLC, v. Purdue Pharma L.P., IPR2016-
`
`01412, Paper 39 at 36 (PTAB Feb. 8, 2018) (“We again find Petitioner's arguments
`
`go to the weight rather than admissibility.”); Biodelivery Sciences Int’l, Inc. v.
`
`Monosol RX, LLC, IPR2015-00169, Paper 69 at 36 (PTAB Mar. 24, 2016) (“[T]hat
`
`Patent Owner, from its cross-examination of Dr. Reitman, was able discover facts
`
`pertinent to our consideration of the Reitman Declaration, goes to the probative
`
`weight of the Declaration, rather than its admissibility.”); Ascend Performance
`
`Materials Operations LLC v. Samsung SDI Co., Ltd., IPR2020-00349, Paper 53 at
`
`11 (PTAB July 15, 2021) (“[W]e take into account the qualifications of an expert
`
`witness—and any shortcomings revealed
`
`through cross-examination—when
`
`evaluating the weight to be given that witness's testimony. But the wholesale
`
`exclusion of a witness's declarations is rarely called for in a proceeding before the
`
`Board.”).
`
`-10-
`
`
`
`
`
`Moreover, even though P.O.’s arguments go to weight, not admissibility, they
`
`do not diminish the weight that should be given to Dr. Roy’s Petition Declaration.
`
`P.O.’s argument that Dr. Roy misrepresented his involvement in making edits to his
`
`Petition Declaration is belied by the fact that Dr. Roy candidly acknowledged that
`
`he “use[d] the [Akl] report as the basis of [his] report.” Ex. 2015 at 55:3-4. To the
`
`contrary, if anything, the fact that two experts independently agreed with the
`
`technical substance of Dr. Roy’s Petition Declaration should only serve to strengthen
`
`the weight of those opinions, not reduce them.
`
`III. CONCLUSION
`
`For the above reasons, P.O.’s Motion to Exclude Dr. Roy’s Petition
`
`Declaration should be denied.
`
`
`
`Dated: May 9, 2022
`
`Respectfully submitted,
`
`/s/ Jonathan I. Detrixhe
`Lead Counsel
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
`
`Back-up Counsel
`Jonah D. Mitchell (admitted hac vice)
`Christine M. Morgan (admitted pro hac vice)
`
`-11-
`
`
`
`
`
`
`
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jmitchell@reedsmith.com
`cmorgan@reedsmith.com
`
`Peter J. Chassman (Reg. No. 38,841)
`Michael J. Forbes (Reg. No. 73,898)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`mforbes@reedsmith.com
`
`Counsel for Petitioner
`
`-12-
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
`
`that on May 9, 2022, a complete copy of Petitioner’s Opposition to Patent Owner’s
`
`Motion to Exclude was filed electronically through the Patent Trial and Appeal
`
`Board’s PTABE2E System and provided, via electronic service, to the Patent Owner
`
`by serving the correspondence address of record.
`
`Dated: May 9, 2022
`
`Respectfully submitted,
`/ Jonathan I. Detrixhe /
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
`
`Counsel for Petitioner
`
`
`
`13
`
`
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