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’ REPLY IN SUPPORT OF MOTION TO EXCLUDE
`
`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’ REPLY IN SUPPORT OF MOTION TO EXCLUDE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`
`
`
`I.
`
`II.
`
`Page
`ARGUMENT .................................................................................................. 1
`A.
`PO Failed to Address Petitioner's Arguments ...................................... 1
`B.
`PO’s Arguments are Strawman Arguments, Invented to Find a
`Procedural “Win” ................................................................................. 2
`1.
`Strawman 1. There is no condition precedent of a motion
`to strike before a motion to exclude ........................................... 2
`Strawman 2. There are no inconsistent positions ..................... 3
`Strawman 3. Scope objections are not allowed in
`motions to exclude ..................................................................... 4
`Strawman 4. Refreshing the memory of a witness is not
`a basis to introduce new evidence .............................................. 4
`CONCLUSION ............................................................................................... 5
`
`2.
`3.
`
`4.
`
`TABLE OF CONTENTS
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Netflix, Inc. v. DivX, LLC,
`IPR2020-00511, Paper 34 (PTAB, April 13, 2021) ............................................. 3
`Other Authorities
`37 CFR 42.23 ............................................................................................................. 1
`37 CFR 42.51(b)(1)(iii) .............................................................................................. 3
`37 CFR § 42.23(b) ................................................................................................. 1, 2
`85 Fed. Reg. 79128, Dec. 9, 2020 .............................................................................. 1
`
`iv
`
`
`
`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
`
`vi
`
`
`
`Exhibit
`1019
`
`1020
`
`1021
`
`1022
`1023
`1024
`1025
`1026
`
`1027
`
`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)
`
`vii
`
`
`
`Patent Owner's ("PO") opposition is more telling for what it omits than what
`
`it includes. Petitioner’s concise Motion to Exclude asserts two foundational
`
`arguments: (i) Exhibit 2030 is new evidence prohibited by 37 CFR 42.23 and the
`
`Trial Practice Guide and not covered by any of the stated exceptions, and (ii) PO
`
`agreed and represented that Rule 42.23 would exclude them from submitting
`
`Exhibit 2030 to sandbag Petitioner. Motion at 1-2. PO fails to offer any rebuttal
`
`on either point. Rule 42.23 is not mentioned or cited in its opposition. Likewise,
`
`PO conveniently ignores its own agreement and representation to avoid its bad
`
`behavior. Failing to address Petitioner’s arguments is fatal to its position.
`
`Instead, POs opposition is nothing more than deflection and avoidance based
`
`on strawman arguments.
`
`I.
`
`ARGUMENT
`
`PO Failed to Address Petitioner's Arguments
`A.
`Plainly stated: Rule 42.23 prohibits new evidence from being introduced in a
`
`sur-reply. 37 CFR § 42.23(b) (85 Fed. Reg. 79128, Dec. 9, 2020) (“a sur-reply ...
`
`may not be accompanied by new evidence other than deposition transcripts of the
`
`cross examination of any reply witness”); 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 does not fall within the single exception identified
`
`1
`
`
`
`by the rule, i.e., a deposition transcript. Offering no rebuttal on this point, PO
`
`acquiesces. Therefore, Exhibit 2030 must be excluded under 37 CFR § 42.23(b).
`
`In responding to PO’s inquiry regarding an extension of time to file its sur-
`
`reply, Petitioner’s counsel raised an objection that the delay would run up against
`
`the motion to exclude deadline. 3/16/2022 Email Thread between A.Zhong and
`
`J.Lang, Ex. 1028. To avoid Petitioner’s objection, PO represented that it would only
`
`file with its sur-reply the Baker transcript and the errata to Dr. Fernald’s deposition
`
`transcript. Id. Further, counsel for PO acknowledged that Exhibit 2030 would not
`
`be allowed under the rules. Id. (“For sur-replies, under the rules, we can file only
`
`Baker transcript …”). Allowing PO’s counsel to sandbag Petitioner to avoid its
`
`objection to the extension would be inequitable and invite gamesmanship among
`
`parties.
`
`B.
`
`PO’s Arguments are Strawman Arguments, Invented to Find a
`Procedural “Win”
`1.
`Strawman 1. There is no condition precedent of a motion to
`strike before a motion to exclude
`In its first strawman argument, PO sets up a procedural misstep by Petitioner
`
`where no such procedural requirement exists. Specifically, PO argues that a
`
`condition precedent to filing a motion to exclude new evidence is to first file a
`
`motion to strike. Tellingly, PO cannot cite a single case for such a proposition.
`
`Instead, PO cites the permissive language of the Trial Practice Guide that a party
`
`2
`
`
`
`“may request authorization to file a motion to strike.” PO fails to cite any
`
`authority that the rules or the Trial Practice Guide prohibit a motion to exclude
`
`new evidence, such as Exhibit 2030, or that the rules or the Trial Practice Guide
`
`dictate a condition precedent of filing a motion to strike before filing or in lieu of a
`
`motion to exclude. Indeed, the Netflix Board allowed the exact issues in a motion
`
`to exclude without creating any condition precedent as suggested by PO. Netflix,
`
`Inc. v. DivX, LLC, IPR2020-00511, Paper 34 at 2 (PTAB, April 13, 2021).
`
`Strawman 2. There are no inconsistent positions
`2.
`In its second strawman, PO relies on the duty to inform the Board under 37
`
`CFR 42.51(b)(1)(iii) of inconsistencies in a party’s position as a basis to introduce
`
`new evidence. The problem is – no inconsistency exists.
`
`As an initial matter, attorneys could routinely assert “inconsistency” as a
`
`basis to introduce new evidence simply where they disagree with certain
`
`arguments. Allowing PO’s pretext will do nothing but invite gamesmanship.
`
`Regardless, there is no inconsistency. A single signal can convey more than one
`
`attribute at the same time, such as both (1) power source type and that this type is
`
`(2) either that a charging connection is available, and/or that a device is not a USB
`
`host or hub. PO does not address that the specification itself says this. Paper 19 at
`
`11. Moreover, Dr. Baker’s testimony has steadfastly remained consistent that the
`
`prior art discloses using an SE1 signal as the identification signal, just as disclosed
`
`3
`
`
`
`by the patents at issue, which satisfies every claim element where an identification
`
`signal is required. PO’s conviction on this point (a total of 3 sentences out of 25
`
`pages of text in its sur-reply) is compelling evidence of the pretext of its position.
`
`3.
`
`Strawman 3. Scope objections are not allowed in motions to
`exclude
`PO argues that Petitioner fails to object or allege that Exhibit 2030 or Dr.
`
`Baker’s deposition testimony associated therewith exceeded the scope. However,
`
`the Trial Practice Guide expressly prohibits raising scope objections in a motion to
`
`exclude. Trial Practice Guide (November 2019) at 79 (“Nor should a motion to
`
`exclude address arguments or evidence that a party believes exceeds the proper
`
`scope of reply or sur-reply.”).
`
`4.
`
`Strawman 4. Refreshing the memory of a witness is not a
`basis to introduce new evidence
`Setting aside the irrelevance of PO’s deposition tactics and questioning to
`
`create the “refreshing” of Dr. Baker’s memory, PO fails to cite any authority that
`
`simply using a document to refresh a deponent’s memory is a basis for introducing
`
`new evidence. PO doesn’t even offer attorney argument as to why or how the
`
`alleged refreshing of recollection creates the necessary foundation. Instead, PO
`
`merely concludes it should prevail “because EX2030 was introduced to fresh [sic ]
`
`Dr. Baker’s memory.” Opposition at 11. Again, such precedent would invite
`
`4
`
`
`
`gamesmanship because a skilled attorney can invariably find ways to “refresh” a
`
`deponent’s memory using new evidence it wants to introduce.
`
`PO also argues that because Exhibit 2030 was used to refresh Dr. Baker’s
`
`memory, it is similarly situated to Exhibits 2026 and 2031, which Petitioner did not
`
`object to. This simply is not true. Exhibit 2026 is the errata to the deposition
`
`transcript of Dr. Fernald, Exhibit 1021. It merely corrects typos in evidence
`
`already of record. It does not introduce new evidence. Exhibit 2031 is a drawing
`
`that Dr. Baker created during his deposition in this action. As such, it is part of
`
`his deposition transcript. Dr. Baker choose to provide testimony in visual form and
`
`the court reporter cannot record images or drawings, only the spoken word. Again,
`
`it is not new evidence introduced by PO.
`
`II.
`
`CONCLUSION
`For all of the reasons stated herein, Petitioner respectfully requests its Motion
`
`be granted.
`
`Dated: May 23, 2022
`
`Respectfully submitted,
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`By:
`/Jeffrey Johnson/
`
`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
`
`5
`
`
`
`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
`ORRICK, HERRINGTON & SUTCLIFFE, LLP
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`Main: (650) 614-7400
`Fax: (650) 614-7401
`
`Attorneys for Petitioners
`
`6
`
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`The undersigned certifies that on May 23, 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
`
` /Karen Johnson/
` Karen Johnson
`
`
`
`CERTIFICATE OF COMPLIANCE – 37 CFR § 42.24
`Pursuant to 37 C.F.R. §42.24 et seq., the undersigned certifies that this
`
`document complies with the type-volume limitations. This document contains
`
`1,108 words as calculated by the “Word Count” feature of Microsoft Word Office
`
`365, the word processing program used to create it.
`
`Dated: May 23, 2022
`
` /Jeffrey Johnson/
`Jeffrey Johnson, Reg. No. 53,078
`Email: 3J6PTABDocket@orrick.com
`609 Main Street, 40th Floor
`Houston, TX 77002-3106
`
`Attorney for Petitioners
`
`
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