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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1,
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`Petitioners,
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`v.
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`UNM RAINFOREST INNOVATIONS,
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`Patent Owner.
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`PTAB Case No. IPR2021-00375
`Patent No. 8,265,096 B2
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE
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`1 ZyXEL Communications Corporation was joined as a Petitioner in this proceeding
`based on a petition and motion for joinder filed in IPR2021-00734, which were
`granted.
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`Patent Owner UNMRI respectfully submits this Reply to Petitioners’
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`Response (“Response”) to Patent Owner’s Motion to Exclude EX1002 (Declaration
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`of Dr. S. Roy).
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`I.
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`TIMELINE
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`The below timeline demonstrates the reasonableness of Patent Owner’s
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`objections:
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`• Dec. 28, 2020 – Petitioners file EX1002, Patent Owner has no reason
`to believe anything therein is objectionable;
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`• July 19, 2021 – Institution Decision issues;
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`• Nov. 18, 2021 – Patent Owner requested Petitioners to make Dr. Roy
`available for deposition in the week of Nov. 29 – Dec. 3;
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`• Nov. 22, 2021 – Petitioners respond but offers Dr. Roy’s deposition
`only on the last day before Dec. 7, 2021, Patent Owner’s deadline for
`the Patent Owner’s Response and Motion to Amend;
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`• Dec. 6, 2021 – Deposition of Dr. Roy; Patent Owner discovers that Dr.
`Roy did not perform the requisite analysis required by Fed. R. Evid.
`702(d) but does not have the supporting evidence – the transcript;
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`• Dec. 7, 2021 – Patent Owner Response (Paper 28) and Motion to
`Amend (Paper 27) filed, including objections to EX1002 “[t]he
`technical aspects of the Roy declaration (EX1002) should be
`discounted in their entirety because they do not reflect the work of Dr.
`Roy. . . . Patent Owner intends to request authorization from the Board
`to file a motion to strike the technical aspects of the Roy declaration in
`their entirety.” (Paper 28 at 34); Patent Owner files EX2014 (Roy rough
`transcript); due to Petitioners’ delay of the Roy deposition, Patent
`Owner was forced to at first rely on the rough transcript;
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`• Dec. 14, 2021 – Petitioners object to EX2014 (Roy rough transcript);
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`1
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`• Dec. 16, 2021 – Patent Owner receives final Roy Depo transcript and
`files objections to evidence (Paper 31) with citations to the final
`transcript and identifying to the objections raised to EX1002 in Paper
`28;
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`• Dec. 20, 2021 – Patent Owner files the Roy final transcript as EX2015;
`and
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`• May 4, 2022 – Patent Owner files its Motion to Exclude (Paper 55)
`referring to its objections to EX1002 raised both in its Patent Owner’s
`Response (Paper 28) and Objections to Evidence (Paper 31).
`PATENT OWNER’S OBJECTIONS WERE TIMELY.
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`II.
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`First, Petitioners argue that “UNM was required to file any objection to Dr.
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`Roy’s Petition Declaration no later than July 27, 2021.” Response at 3. However,
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`Patent Owner had no objection to EX1002 on its face. The objection is based not on
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`the analysis itself, but on the fact that Dr. Roy simply signed off on the work of
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`another expert, and so became a mere mouthpiece for another non-testifying expert
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`in violation of Fed. R. Evid. 702(d). Patent Owner, therefore, did not become aware
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`of the evidentiary problem with EX1002 until the deposition of Dr. Roy, which, due
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`to Petitioners’ delay, did not take place until Dec. 6, 2021.
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`Petitioners’ citation to GoPro, Inc. v. Contour IP Holdings LLC, IPR2015-
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`01080, Paper 55 at 7 (PTAB Oct. 26, 2016), vacated on other grounds, 888 F.3d
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`1170 (Fed. Cir. 2018) is inapposite. It concerns objections to exhibits where the
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`Board rejected that a declaration authenticating the exhibit affected the timing of
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`proper objections. Unlike GoPro, Patent Owner, in this instance, had no grounds
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`2
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`for an objection at all until Dr. Roy explicitly misrepresented and mischaracterized
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`his work on the substance of EX1002. Similarly inapposite is Petitioners’ citation
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`to Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080, Paper 90
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`(PTAB June 2, 2014). There, the Board rejected the argument that “the bases of the
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`objections arose when [Apple] failed to update Mr. Schneier’s declaration as part of
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`its Reply.” Apple at 49. That is not the issue here.
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`Pursuant to 37 C.F.R. § 42.64(b)(1), “[o]nce a trial has been instituted, any
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`objection must be filed within five business days of service of evidence to which the
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`objection is directed. The objection must identify the grounds for the objection with
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`sufficient particularity to allow correction in the form of supplemental evidence.”
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`Only one day after the Dec. 6, 2021 deposition of Dr. Roy, Patent Owner filed its
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`evidentiary objections. Paper 28 at 34 (“[t]he technical aspects of the Roy
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`declaration (EX1002) should be discounted in their entirety because they do not
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`reflect the work of Dr. Roy. . . . Patent Owner intends to request authorization from
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`the Board to file a motion to strike the technical aspects of the Roy declaration in
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`their entirety.”) Despite forcing Patent Owner to rely on the rough transcript by its
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`delay of the deposition, Petitioners objected to the rough transcript as evidence.
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`Patent Owner then renewed its objections on Dec. 16, 2021, the same day that it
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`received the final transcript. Finally, Patent Owner’s Motion to Exclude (Paper 55)
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`3
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`refers to the same evidentiary objection. Patent Owner has met the requirements of
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`37 C.F.R. § 42.64.
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`III. PATENT OWNER’S MOTION IDENTIFIED THE OBJECTIONS.
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`Patent Owner’s Motion to Exclude (Paper 51) referenced the exact objections
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`raised in Paper 28 (filed Dec. 7, 2021) and detailed further in Paper 31 (filed on Dec.
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`16, 2021). Patent Owner has met the requirements of 37 C.F.R. § 42.64.
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`IV. THE JOINDER REQUIREMENTS ARE IRRELEVANT
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`Petitioners argue that Patent Owner’s objections relate to “the substantive
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`similarity of Dr. Roy’s Petition Declaration to a declaration submitted by Dr. Robert
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`Akl” and that “Petitioners hid the substantive similarity of Dr. Roy’s Petition
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`Declaration to Dr. Akl’s.” This is wrong. Patent Owner objects to Dr. Roy’s
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`misrepresentation of having authored the report himself. Roy Depo (EX2015), taken
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`Dec. 6, 2021 at 60:2-61:10 (testifying that he “wrote” various sections of the report
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`bearing his signature.) This is exacerbated further by the fact that the report does
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`not include the report of Dr. Akl in its otherwise exhaustive list of “Materials Relied
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`Upon.” EX1002 at 10–12. Dr. Roy, in fact, made no mention of the Akl Report
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`whatsoever, until specifically asked about it. And even then, he only said he
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`considered it and briefly read it before writing his own report. Roy Depo (EX2015),
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`taken Dec. 6, 2021, at 110:14-111:17 (“I had once taken a quick look at the Ackel
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`[sic] declaration, but thereafter, I focused on [my] drafts”).
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`4
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`As stated previously, Patent Owner’s objection is based solely on the fact that
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`Dr. Roy simply signed his name to the work of another expert, and so became a mere
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`mouthpiece for another non-testifying expert in violation of Fed. R. Evid. 702(d)
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`without further citation or attribution. Dr. Roy could have adopted Dr. Akl’s report
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`and included it in the materials relied upon listing. Instead, Dr. Roy simply signed
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`it and testified that he wrote it. Only after Dr. Roy testified that he did not perform
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`the necessary analysis himself could Patent Owner assert its objection.
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`V. EX1002 MUST BE EXCLUDED
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`Federal Rules of Evidence 702 and 703 govern the admissibility of expert
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`testimony and require that (1) the expert has reliably applied the principles and
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`methods to the facts of the case and (2) that the expert is not merely the mouthpiece
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`for another non-testifying expert. Fed. R. Evid. 702 and 703. Petitioners’ expert
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`report must be excluded for violating both requirements. Additionally, Dr. Roy’s
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`credibility has been severely diminished by—first—not disclosing the original
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`expert report as a basis for his report, and—second—misrepresenting his own work
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`in drafting the report under oath. Patent Owner could find no instance in which the
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`Board has been confronted with such egregious violations of these rules, and in
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`particular, the affirmative misrepresentation of the expert’s work under oath.
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`VI. CONCLUSION
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`EX1002 must be excluded in violation of Fed. R. Evid. 702 and 703.
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`5
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`Dated: May 13, 2022
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`Respectfully submitted,
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`/s/ Jay P. Kesan
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`Jay P. Kesan, Reg. No. 37,488
`Cecil E. Key
`Henning Schmidt
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tysons Blvd. Suite 1500
`Tysons Corner, VA 22102
`jkesan@dimuro.com
`ckey@dimuro.com
`hschmidt@dimuro.com
`Telephone: (703) 289-5118
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`
`Ari Rafilson, Reg. No. 58,693
`SHORE CHAN LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`arafilson@shorechan.com
`Telephone: (214) 593-9110
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`Attorneys for Patent Owner
`UNM RAINFOREST INNOVATIONS
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`6
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
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`that on May 13, 2022, the foregoing document was filed electronically through the
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`Patent Trial and Appeal Board’s PTABE2E System and provided, via electronic
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`service, to the Petitioners by serving the correspondence address of record.
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`Dated: May 13, 2022
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`/s/ Jay P. Kesan
`Jay P. Kesan
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`7
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