IPR2021-00906
`U.S. Patent No. 7,580,388 B2
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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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`CRADLEPOINT, INC., HONEYWELL INTERNATIONAL, INC.,
`SIERRA WIRELESS, INC., TCL COMMUNICATION TECHNOLOGY
`HOLDINGS LIMITED, TCT MOBILE INTERNATIONAL LIMITED,
`TCT MOBILE, INC., TCT MOBILE (US) INC., TCT MOBILE (US)
`HOLDINGS INC., AND THALES DIS AIS DEUTSCHLAND GMBH,
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`Petitioner,
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`v.
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`3G LICENSING SA,
`Patent Owner.
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`Patent No. 7,580,388 B2
`Issue Date: August 25, 2009
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`PETITIONER’S MOTION TO EXCLUDE
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`Inter Partes Review No.: IPR2021-00906
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`U.S. Patent No. 7,580,388 B2
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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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`CRADLEPOINT, INC., HONEYWELL INTERNATIONAL, INC.,
`SIERRA WIRELESS, INC., TCL COMMUNICATION TECHNOLOGY
`HOLDINGS LIMITED, TCT MOBILE INTERNATIONAL LIMITED,
`TCT MOBILE, INC., TCT MOBILE (US) INC., TCT MOBILE (US)
`HOLDINGS INC., AND THALES DIS AIS DEUTSCHLAND GMBH,
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`Petitioner,
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`v.
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`3G LICENSING SA,
`Patent Owner.
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`Patent No. 7,580,388 B2
`Issue Date: August 25, 2009
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`PETITIONER’S MOTION TO EXCLUDE
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`Inter Partes Review No.: IPR2021-00906
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
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`TABLE OF CONTENTS
`TABLE OF CONTENTS ........................................................................................ ii
`I.
`INTRODUCTION ........................................................................................... 1
`A. Exhibits 2019-2031 - Lack Foundation. .................................................. 1
`B. Exclusion of Exhibit 2019, 2021-2031 – Prejudicial and Not
`Relevant. .................................................................................................. 3
`II. CONCLUSION ................................................................................................ 5
`CERTIFICATE OF SERVICE ................................................................................ a
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`Petitioner’s Motion To Exclude
`Page ii
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
`TABLE OF AUTHORITIES
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`Cases
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................. 5
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) .......................................................................... 5
`Rules
`Fed. R. Evid. 401 ................................................................................................. 1, 5
`Fed. R. Evid. 402 ................................................................................................. 1, 5
`Fed. R. Evid. 403 ............................................................................................. 1, 3, 5
`Fed. R. Evid. 702 ............................................................................................. 1, 3, 5
`Fed. R. Evid. 703 ............................................................................................. 1, 3, 5
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`Petitioner’s Motion To Exclude
`Page iii
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
`TABLE OF EXHIBITS
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`Exhibit
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`Title
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`1001
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`U.S. Patent No. 7,780,388 to Kim (“the ’388 patent”)
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`1002
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`1003
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`1004
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`Prosecution History of U.S. Patent No. 7,580,388, including
`Prosecution History of U.S. Provisional Patent Application Nos.
`60/576,214 and 60/589,630
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`(3GPP); Technical
`3rd Generation Partnership Project
`Specification for the Radio Resource Control (RRC) protocol:
`3GPP TS 25.331 V6.1.0 (2004-03) (“TS-25.331”)1
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`Bannister, Mather, & Coope, Convergence Technologies for 3G
`Networks, IP, UMTS, EGPRS and ATM, Wiley, March 2004,
`(“Bannister”)2
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`1005
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`U.S. Patent No. 7,333,443 (“Beckmann”)
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`1006
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`Declaration of James Olivier, Ph.D.
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`1007
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`Declaration of Craig Bishop
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`1008
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`Declaration of James Mullins, Ph.D.
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`1 Only the currently relied on portions of the technical specification have been submitted as exhibits. Petitioner
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`reserves the right to submit additional portions in response to any Patent Owner’s submissions or constructions.
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`2 Only the currently relied on portions of the book have been submitted as an exhibit. Petitioner reserves the right to
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`submit additional portions in response to any Patent Owner’s submissions or constructions.
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`Petitioner’s Motion To Exclude
`Page iv
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
`(3GPP); Technical
`3rd Generation Partnership Project
`1014
`Specification for the Radio Resource Control (RRC) protocol:
`3GPP TS 25.331 V6.1.0 (2004-03), Section 8.5.9.
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`1015
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`(3GPP); Technical
`3rd Generation Partnership Project
`Specification for the Radio Resource Control (RRC) protocol:
`3GPP TS 25.331 V6.1.0 (2004-03), Sections 10.2.16c, 10.2.41,
`and Initial Direct Transfer pseudo code. 3
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`1016
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`Second Declaration of James Olivier, Ph. D.
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`3 Only the currently relied on portions of the technical specification have been submitted as exhibits. Petitioner
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`reserves the right to submit additional portions in response to any Patent Owner’s submissions or constructions.
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`Petitioner’s Motion To Exclude
`Page v
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
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`INTRODUCTION
`Petitioner moves to exclude the opinions of Patent Owner’s (PO’s) Expert,
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`I.
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`Michael J. Smith’s contained in his Third Declaration, Ex. 2018, and subsequent
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`Exhibits 2019-2031, upon which he relies. Twelve of the thirteen exhibits (Ex. 2019,
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`2021-2031) post-date the critical date of the ’388 patent, and hence would not be
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`considered by a POSITA at the time of the invention. Dr. Smith also fails to provide
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`an adequate foundation for Exhibit 2020 because he provides no evidence as to when
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`it was publicly available. Therefore, each of these Exhibits 2019-2031 lacks
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`relevance under Federal Rules of Evidence 401, 402, and 403, and should be
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`excluded. Because of that, Dr. Smith’s opinions relying on these Exhibits are
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`unsupported and lack sufficient probative value under Federal Rules of Evidence 702
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`and 703 should also be excluded. Petitioner previously objected to Dr. Smith’s Third
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`Declaration, Ex. 2018 and to Exhibits 2019-2031 in Paper 34 and now moves to
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`exclude opinion testimony from Ex. 2018 that is directed to Exhibits 2019-2031, as
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`well Exhibits 2019-2031. See Paper 34.
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`A. Exhibits 2019-2031 - Lack Foundation.
`Dr. Smith claims to have considered all the exhibits cited in this proceeding
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`(Ex. 2018, ¶ 14). He then proceeds to make the statement that the “additional new
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`material attached to this declaration are publicly accessible. Id. at ¶ 16. Yet, there
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`Petitioner’s Motion To Exclude
`Page 1
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
`are no documents attached to Dr. Smith’s Declaration and no exhibits filed with his
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`declaration. Dr. Smith never provides clarity as to what new documents he claims
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`are attached to his Third Declaration. Instead, Dr. Smith proceeds to make a general
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`statement that “3GPP’s materials I cited may be obtained by searching the public
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`3GPP file repository and FTP site.” Id. at ¶ 17 (purportedly referring to Exs. 2019-
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`2031). However, Dr. Smith does not state that he obtained Exs. 2019-2031 from the
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`public 3GPP file repository and FTP site. Instead, in his Third Declaration, Dr.
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`Smith merely references his Second Declaration: “I explained in detail how I
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`obtained 3GPP’s materials [Exs. 2008-2011] in my Second Declaration.” Id. at ¶ 18.
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`In the Second Declaration, Dr. Smith explained how to obtain other documents from
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`the 3Gpp file repository, but makes no reference to Exhibits 2019-2031, much less
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`how to find them in the 3GPP file repository and FTP site.
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`Even assuming Exhibits 2019-3031 are available today using the public 3GPP
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`file repository and FTP site, PO has provided no foundation as to when the reference
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`became publicly available. Dr. Smith’s statements in his third Declaration, relying
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`on his Second Declaration, Ex. 2007, ¶ 18, illustrate merely that he was viewing
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`directories created in 2006 and 2008. Dr. Smith’s statement “[i] explained in detail
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`how I obtained 3GPP’s material in my second declaration,” Ex. 2018, ¶ 18, therefore,
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`does not explain how and if he found the “attached documents,” presumably Exhibits
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`2019-2031.
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`Petitioner’s Motion To Exclude
`Page 2
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
`Simply stating documents “may be found,” as in paragraph 17, does not
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`provide the foundation. Neither Dr. Smith’s Second or Third Declaration explains
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`WHAT (the specific documents to which he refers), WHERE (the location of the
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`specific documents), WHO (the person that found the specific documents at the
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`location), or WHEN (the date that each specific document was publicly available at
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`the location). The directory Dr. Smith refers to in his Second Declaration was
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`available as of 2006 and 2008. Yet, no foundation has been provided that Exs. 2019-
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`2031 were publicly available before the directory dates of 2006 and 2008. Indeed,
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`no foundation has been provided that Exhibits 2019-2031 were publicly available at
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`or before the critical date in this IPR of June 2004. PO also provides no foundation
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`that the specific documents Dr. Smith reviewed were found by him at the identified
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`3GGP repository.
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`As with Exhibits 2019-2031 lack the foundation required by the Federal Rules
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`of Evidence 702 and 703 and 403, they must be excluded along with all opinion
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`testimony of Dr. Smith regarding those exhibits (Ex. 2018, ¶¶ 16-18, 52, 57-68, 82,
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`84-85).
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`B.
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`Exclusion of Exhibit 2019, 2021-2031 – Prejudicial and
`Not Relevant.
`PO makes no effort to provide dates prior to the critical date for Exhibits 2019,
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`2021-2031. Hence, these post-critical date references are irrelevant and prejudicial,
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`Petitioner’s Motion To Exclude
`Page 3
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
`and have no probative value. Therefore, it would be proper for the Board to exclude
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`them.
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`The critical date for references to be considered by a POSITA at the relevant
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`time of the invention is June 1, 2004. Paper 18, n.4 (Provisional Applications filed
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`June 1, 2004 and July 20, 2004). However, the dates of these Exhibits are:
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`Ex. 2019 On page indicated, updated August 17, 2021
`Ex. 2021 Last update September 17, 2004
`Ex. 2022 September 20, 2004
`Ex. 2023 Last update October 19, 2004
`Ex. 2024 February 14-18, 2005
`Ex. 2025 February 21, 2005
`Ex. 2026 February 14, 2005
`Ex. 2027 February 14, 2005
`Ex. 2028 February 14, 2006
`Ex. 2029 May 9-13, 2005
`Ex. 2030 May 9-13, 2005
`Ex. 2031 May 9-13, 2005
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`Exhibits 2019, 2021-2031 postdate the critical date of June 1, 2004. Hence, a
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`POSITA, at the time of the invention, would not have access to them. Further, the
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`reliance of Dr. Smith on these references in his Third Declaration, Ex. 2018,
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`demonstrates impermissible hindsight, using later references after the critical date to
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`color the teachings and meanings of earlier references. See In re Fine, 837 F.2d
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`1071,1075 (Fed. Cir. 1988). Although references after a critical date may be used
`Petitioner’s Motion To Exclude
`Page 4
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
`when dealing with Graham factors relating to secondary indicia of nonobviousness
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`(See Graham v. John Deere Co., 383 U.S. 1 (1966)), PO is not using any of these
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`references for that purpose, but rather for what they teach.
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`Under Federal Rules of Evidence 401, 402, 403, 702, and 703, Exhibits 2019,
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`2021-2031 must be excluded along with all opinion testimony of Dr. Smith
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`regarding those exhibits (Ex. 2018, ¶¶ 16-18, 57-68, 82, 84-85).
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`II. CONCLUSION
`The Board should exclude Exhibits 2019-2031 for lack of foundation as
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`required by the Federal Rules of Evidence. Exhibits 2019, 2021-2031 also must be
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`excluded because they postdate the critical date of the patent at issue in this IPR,
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`making them irrelevant and prejudicial. Further all opinion testimony of Dr. Smith
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`regarding those exhibits (Ex. 2018, ¶¶ 16-18, 52, 57-68, 82, 84-85) must be excluded
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`as it relies on the Exhibits.
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`Date: September 15, 2022
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`Respectfully submitted,
`ADDYHART P.C.
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`/s/ Meredith Martin Addy
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`Meredith M. Addy (Reg. No. 37,883)
`(312) 320-4200
`meredith@addyhart.com
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`AddyHart P.C.
`10 Glenlake Parkway, Suite 130
`Atlanta, GA 30328
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`Robert Hart (Reg. No. 35,184)
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`Petitioner’s Motion To Exclude
`Page 5
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
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`(949) 337-0568
`robert@addyhart.com
`Gregory B. Gulliver (Reg. No. 44,138)
`(312) 720-0308
`gbgulliver@addyhart.com
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`AddyHart P.C.
`401 North Michigan Ave.
`Suite 1200-1
`Chicago, IL 60611
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`Attorneys for Petitioner
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`Petitioner’s Motion To Exclude
`Page 6
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`IPR2021-00906
`U.S. Patent No. 7,580,388 B2
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.121, the undersigned hereby certifies that a true
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`copy of the PETITIONER’S MOTION TO EXCLUDE has been served by
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`electronic mail on the attorneys of record for Patent Owner:
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`Timothy Devlin
`Devlin Law Firm LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Phone: (302) 449-9010
`Fax: (302) 353-4251
`TD-PTAB@devlinlawfirm.com
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`Neil Benchell
`Devlin Law Firm LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Phone: (302) 449-9010
`Fax: (302) 353-4251
`nbenchell@devlinlawfirm.com
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`Date: September 15, 2022
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`Stephanie Berger
`Devlin Law Firm LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Phone: (302) 449-9010
`Fax: (302) 353-4251
`sberger@devlinlawfirm.com
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`Andrew DeMarco
`Devlin Law Firm LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Phone: (302) 449-9010
`Fax: (302) 353-4251
`ademarco@devlinlawfirm.com
`dlflitparas@devlinlawfirm.com
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`By: /s/ Meredith M. Addy
`Meredith M. Addy
`ADDYHART P.C.
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`PETITIONER’S MOTION TO EXCLUDE
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