UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TCT MOBILE (US), INC.; TCT MOBILE (US) HOLDINGS, INC.;
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD.; AND TCL
`COMMUNICATION, INC.,
`Petitioners
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner
`
`U.S. Patent No. 7,834,586
`Issue Date: November 16, 2010
`Title: MULTIFUNCTIONAL CHARGER SYSTEM AND METHOD
`
`Case No. IPR2021-00599
`
`PETITIONERS’ MOTION TO EXCLUDE EVIDENCE PURSUANT
`TO 37 C.F.R. § 42.64(c)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TCT MOBILE (US), INC.; TCT MOBILE (US) HOLDINGS, INC.;
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD.; AND TCL
`COMMUNICATION, INC.,
`Petitioners
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner
`
`U.S. Patent No. 7,834,586
`Issue Date: November 16, 2010
`Title: MULTIFUNCTIONAL CHARGER SYSTEM AND METHOD
`
`Case No. IPR2021-00599
`
`PETITIONERS’ MOTION TO EXCLUDE EVIDENCE PURSUANT
`TO 37 C.F.R. § 42.64(c)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Netflix, Inc. v. DivX, LLC,
`IPR2020-00511, Paper 46 (FWD) ........................................................................ 1
`Other Authorities
`37 C.F.R. § 42.64 ....................................................................................................... 1
`37 CFR § 42.23(b) ................................................................................................. 1, 2
`85 Fed. Reg. 79128, Dec. 9, 2020 .............................................................................. 1
`
`i
`
`
`
`Petitioners’ Exhibit List
`
`Description
`U.S. Patent No. 7,834,586 to Fischer et al., “Multifunctional
`Charger System and Method,” filed Feb. 26, 2010 (the “’586
`Patent”)
`U.S. Patent File History of the ’586 Patent (the “’586 File
`History”)
`Declaration of Dr. Jacob Baker regarding U.S. Patent No.
`7,834,586 (“Baker”)
`Curriculum Vitae of Dr. Jacob Baker
`U.S. Patent No. 7,239,111 (“Fischer”)
`U.S. Provisional Application No. 60/273,021 (the “’021
`provisional”)
`U.S. Provisional Application No. 60/330,486 (the “’486
`provisional”)
`Universal Serial Bus Specification, Revision 1.1, September 23,
`1998 (“USB 1.1”)
`Universal Serial Bus Specification, Revision 2.0, April 27, 2000
`(“USB 2.0”)
`U.S. Patent No. 6,531,845 (“Kerai”)
`U.S. Patent No. 6,625,738 (“Shiga”)
`U.S. Patent Application Publication No. 2003/0135766
`(“Zyskowski”)
`U.S. Patent No. 6,625,790 (“Casebolt”)
`Cypress CY7C63722/23 CY7C63742/43 enCoRe™ USB
`Combination Low-Speed USB & PS/2 Peripheral Controller, by
`Cypress Semiconductor Corporation, published May 25, 2000
`(“Cypress enCoRe” or “Cypress Datasheet”)
`Japanese Patent Application No. 2000-165513A (“Morita”)
`Amended Complaint, Fundamental Innovation Systems Int’l LLC
`v. TCT Mobile (US) Inc. et al., No. 1-20-cv-00552-CFC (D. Del.
`Sep. 11, 2020) (“Complaint”)
`U.S. Patent No. 6,668,296 (“Dougherty”)
`U.S. Patent No. 5,923,146 (“Martensson”)
`
`Exhibit
`1001
`
`1002
`
`1003
`
`1004
`1005
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`1011
`1012
`
`1013
`1014
`
`1015
`1016
`
`1017
`1018
`
`ii
`
`
`
`Exhibit
`1019
`
`1020
`
`1021
`
`1022
`1023
`1024
`1025
`1026
`
`1027
`
`1028
`
`Description
`Japanese Patent Application No. 2000-165513A (“Morita”) with
`updated Certificate of Accuracy
`Japanese Patent Application No. 2000-165513A (“Morita”) with
`corrected Certificate of Accuracy
`Deposition Transcript of Dr. Kenneth Fernald, taken on February
`18, 2022
`U.S. Des. Patent No. 353,371 (“Delhaes”)
`U.S. Des. Patent No. 335,861 (“Tattari”)
`U.S. Des. Patent No. 349, 899 (“Siddoway”)
`U.S. Patent No. 6,708,278 (“Howard”)
`Reply Declaration of Dr. Jacob Baker regarding U.S. Patent No.
`7,834,586 (“Baker Reply”)
`IBM, Personal System/2, Model 95 XP 486, Technical Reference
`(1990)
`Email Thread, A. Zhong to J. Lang, dated March 16, 2022
`
`iii
`
`
`
`In accordance with 37 C.F.R. § 42.64, and the Scheduling Order (Paper 9),
`
`Petitioner moves to exclude Patent Owner’s Exhibit 2030 based on Petitioner’s
`
`Objection to Patent Owner’s Evidence (Paper 26).1 Patent Owner (“PO”) filed and
`
`relied on this exhibit with Paper 24 (its sur-reply). Paper 24 at 1, n. 2, 13, 30.
`
`PO introduced Exhibit 2030 during the deposition of Dr. Baker and filed
`
`Exhibit 2030 for the first time with its sur-reply. Ex. 2025 at 46:6-14; Paper 24 at
`
`30. PO relies on Exhibit 2030 in its sur-reply—but does not even cite
`
`corresponding deposition testimony about Exhibit 2030. Paper 24 at 1, n. 2, 13,
`
`30.
`
`Exhibit 2030 constitutes new evidence prohibited for sur-reply. The rules
`
`are clear: “[a] sur-reply … may not be accompanied by new evidence other than
`
`deposition transcripts of the cross-examination of any reply witness.” 37 CFR §
`
`42.23(b) (85 Fed. Reg. 79128, Dec. 9, 2020); see also Trial Practice Guide
`
`(November 2019) at 73-74 (“The sur-reply may not be accompanied by new
`
`evidence other than deposition transcripts of the cross-examination of any reply
`
`witness.”). Exhibit 2030 was filed with PO’s sur-reply and therefore must be
`
`excluded under 37 CFR § 42.23(b). Netflix, Inc. v. DivX, LLC, IPR2020-00511,
`
`Paper 46 (FWD), at 52-56.
`
`1 Petitioner also objected during deposition when Patent Owner entered Exhibit
`2030. Ex. 2025 at 46:6-14.
`
`1
`
`
`
`Rule 37 CFR § 42.23(b) is clear on its face and lists only a single exception
`
`to its prohibition on new evidence: a deposition “transcript” may be filed. No
`
`exception is provided for other exhibits, regardless of whether they are shown to a
`
`deponent. PO should not be permitted to circumvent 37 CFR § 42.23(b) by
`
`sandbagging a deponent with new exhibits; doing so would render the rule
`
`meaningless.
`
`Ironically, PO agrees that the rules prohibit the introduction of Exhibit 2030.
`
`In seeking an extension for its sur-reply, Petitioner brought up that Petitioner may
`
`need to file a motion to exclude evidence. PO’s counsel said that will not be an
`
`issue because: “[f]or sur-replies, under the rules, we can file only Baker
`
`transcript; and the only other thing that we might file is the errata if any of
`
`Fernald deposition transcript for completeness.” 3/16/2022 Email Thread, A.
`
`Zhong to J. Lang, Ex. 1028. Amazingly, PO’s counsel not only went back on its
`
`word, but is attempting to circumvent the very rules that she agrees prohibit the
`
`introduction of Exhibit 2030.
`
`2
`
`
`
`Dated: May 9, 2022
`
`Respectfully submitted,
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`
`/Jeffrey Johnson/
`By:
`Jeffrey Johnson, Reg. No. 53,078
`Email: 3J6PTABDocket@orrick.com
`609 Main Street, 40th Floor
`Houston, TX 77002-3106
`Main: (713) 658-6400
`Fax: (713) 658-6401
`
`Robert J. Benson (to be admitted pro hac vice)
`Email: R75PTABDocket@orrick.com
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`Main: (949) 567-6700
`Fax: (949) 567-6710
`Jeremy Jason Lang
`USPTO Reg. No. 73,604
`Email: PTABDocketJJL2@orrick.com
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`Main: (650) 614-7400
`Fax: (650) 614-7401
`
`Attorneys for Petitioners
`
`3
`
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`The undersigned certifies that on May 9, 2022, a copy of the foregoing was
`
`served in its entirety by filing through the Patent Trial and Appeal Board End to
`
`End System, as well as via electronic mail, upon the following attorneys of record
`
`for the Patent Owner:
`
`Hong Annita Zhong
`Jason Sheasby
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`
`hzhong@irell.com
`jsheasby@irell.com
`FundamentalIPRs@irell.com
`
`Attorneys for Patent Owner
`Fundamental Innovation Systems International LLC
`
` /Valerie Cloyd/
` Valerie Cloyd
`
`
`
`
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