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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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`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
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`v.
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`Focal IP, LLC,
`Patent Owner
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`Case No. IPR2016-01262
`U.S. Patent No. 7,764,777
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`PETITIONERS’ OPPOSITION TO MOTION TO EXCLUDE
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`DM2\8128579.1
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`I.
`II.
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`TABLE OF CONTENTS
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`LEGAL STANDARD GOVERNING REPLIES ....................................... 1
`THE REPLY EXHIBITS DIRECTLY REBUT PATENT
`OWNER’S RESPONSE ............................................................................... 2
`III. CONCLUSION ............................................................................................. 7
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`DM2\8128579.1
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`i
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`TABLE OF AUTHORITIES
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`Cases
`Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc., IPR2014-00579,
`Paper 45 at p. 29-30 (PTAB Sept. 28, 2015) .............................................. 2, 4-5, 7
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`Rules and Regulations
`37 C.F.R. § 42.23(b) ..............................................................................................1, 2
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`DM2\8128579.1
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`ii
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`Patent Owner’s Motion to Exclude should be denied because it
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`fundamentally misapplies the law regarding replies. The very purpose of a
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`petitioner’s reply is to respond to the arguments in a patent owner’s response. 37
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`C.F.R. § 42.23(b). As Petitioners repeatedly explained in their Reply (Paper 34)
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`and during the July 6, 2017 conference call with the Board, and as the Petitioners
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`identified in their Responsive Listing of Support Showing Reply Arguments are
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`Proper (Paper 42) (“Responsive Listing”), the disputed exhibits (i.e., those which
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`Patent Owner moves to exclude) and related arguments were included in the Reply
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`to rebut Patent Owner’s Response. Specifically, the new exhibits demonstrate that
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`Patent Owner’s arguments in the Response regarding the state of the art in May
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`2000 lack factual support and are simply inaccurate.
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`Patent Owner’s Motion now seeks to substantially modify the rule regarding
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`the proper scope of replies to hold that anything that directly rebuts arguments in a
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`response is nevertheless improper if it was not included in the Petition. That is
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`simply not the law, and such an approach would effectively nullify the utility and
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`purpose of a reply brief.
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`I.
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`LEGAL STANDARD GOVERNING REPLIES
`Patent Owner’s challenges to Exhibits 1057, 1058, and related portions of
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`Exhibit 1065, (the “Reply Exhibits”) are based on the mere fact that they were
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`submitted with the Reply and not the Petition. Such arguments are not a sufficient
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`basis for excluding these exhibits because Petitioners are permitted to submit
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`additional evidence that is responsive to arguments raised in a patent owner
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`response – “[t]he very nature of a reply is to rebut the patent owner’s response.”
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`Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc., IPR2014-00579,
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`Paper 45 at p. 29-30 (PTAB Sept. 28, 2015) (citing 37 C.F.R. § 42.23(b)). In fact,
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`the Board has found that “[t]he need to rely on new evidence may not arise until a
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`particular point has been raised in the patent owner response. Much depends on the
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`specific arguments made in the patent owner response.” Id. “The mere fact that a
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`petitioner submits rebuttal testimony that relies on new evidence not previously
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`identified in the petition does not suffice to establish its impropriety.” Id.
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`II. THE REPLY EXHIBITS DIRECTLY REBUT PATENT OWNER’S RESPONSE
`Patent Owner’s arguments in its Motion to Exclude fail to address that the
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`Reply Exhibits were submitted only to rebut new arguments in Patent Owner’s
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`Response and not to change or supplement the instituted Ground. Patent Owner’s
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`Response, and the accompanying declaration of its expert (Mr. Bates), relied on
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`three arguments premised on unsupported factual assertions. Reply, 1-3. The first
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`of these arguments was that a POSA understood in May 2000 that the only way to
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`connect to the PSTN was through a PSTN edge switch and therefore a POSA
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`would understand that Archer fails to disclose connecting a call processing system
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`to the PSTN through a PSTN tandem switch. Reply, 1-2; see also Response, 41-
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`48, 58-59 citing Exhibit 2022, ¶¶68-77, 90-91. In response to this first argument,
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`Petitioner submitted Reply Exhibits 1057 and 1058 which show that a POSA did in
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`fact know how to connect to the PSTN through a tandem switch—which directly
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`rebuts the testimony of Patent Owner’s expert. The need for these Reply Exhibits
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`arose only after Patent Owner filed its Response that contained first argument
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`misstating the state of the art in May 2000. The Reply Exhibits are not necessary
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`for Petitioners’ prima facie case; indeed, the Board instituted trial on Ground 1
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`without this evidence and this evidence does not change this Ground. Paper 19.
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`Moreover, the Reply confirms that the Petition sets forth how the instituted Ground
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`renders the challenged claims obvious whether the Board adopts Patent Owner’s
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`narrow claim constructions or broader constructions including those set forth by
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`Petitioners. Reply, 4-7, 12-17, 27-28 (Petition citations omitted); see also
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`generally Responsive Listing.
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`This dispute is akin to that in Ford in which the Board denied patent owner’s
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`motion to exclude and held it was proper for the petitioner “[to] rely on new
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`evidence or different aspects of previously submitted evidence” in its Reply. Ford
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`Motor Co., IPR2014-00579, Paper 45 at p. 29-30. In Ford, the patent owner
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`“questioned the feasibility of the starter motor/battery connection taught by the
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`Bumby references that Ford relied upon in its Petition” by claiming “that a
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`conventional starter motor ‘cannot be used’ and ‘is not possible’ with Bumby’s
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`hybrid battery and submitted the testimony of its own declarant that ‘cost and
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`technical complexity’ would not have precluded Bumby’s configuration.” Id.
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`(citations omitted). The petitioner (Ford), “in turn, submitted the challenged
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`testimony and exhibit in rebuttal to show that Bumby’s starter motor/battery
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`connection would have been feasible, and in fact, was well-known and obvious to
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`skilled artisans in the relevant time frame.” Id. The Board held this was an
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`“appropriate use of rebuttal evidence” by Ford to satisfy its burden. Id. Ford had
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`“merely elaborated on an initial position raised in its Petition and presented
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`evidence in direct rebuttal to Paice’s Response.” Id.
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`As in Ford, the Petitioners here rely on the Reply Exhibits to directly rebut
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`Patent Owner’s Response and to correct its expert’s (Mr. Bates) factual errors. As
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`set forth in the Petition, a POSA would understand that Archer discloses server
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`processor 128 coupled to a PSTN tandem switch in PSTN 118 (136) via gateway
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`126. Pet., 21-26, 36-37, 39-40, 41, 42-45, 48-49; Exhibit 1002, ¶¶119, 129-143,
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`191-194, 207, 213-220, 232-238; Exhibit 2019, 267:19-268:4; 271:2-273:12. In its
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`Response, relying on its expert’s testimony, Patent Owner argued:
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`Prior to the date of the invention of the Challenged Patent, a POSA
`would understand that any prior art disclosing an edge device external
`to the PSTN must access the PSTN through an edge switch first, not a
`tandem switch. Response, 41 citing Exhibit 1022, ¶68.
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`It was only after Patent Owner made this inaccurate argument that the need
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`arose for Petitioners to rebut Mr. Bates’s underlying opinion regarding the state of
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`the art, thus making Petitioner’s submission of Reply Exhibits 1057 and 1058 an
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`“appropriate use of rebuttal evidence.” Ford, Paper 45 at p. 29-30. As explained
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`by Dr. LaPorta in his rebuttal declaration (Exhibit 1065), contrary to Mr. Bates’s
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`opinion in his declaration in support of the Response, interconnecting PSTN and IP
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`networks at the tandem level was well known and posed no technical challenges
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`over interconnecting such networks at a different switch such as a PSTN end office
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`switch. Reply, 12-13. Thus, Reply Exhibit 1065 discussing Reply Exhibits 1057
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`and 1058 is also an appropriate use of rebuttal evidence for the same reasoning as
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`the underlying exhibits.
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`The Reply further properly identified that Mr. Bates cited no factual support
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`for this opinion, and that, during his deposition, he acknowledged that he did not
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`actively research the state of the art with respect to converging IP and PSTN
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`networks. Reply, 11; Exhibit 1059, 192:11-14. The Reply also properly identified
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`that Mr. Bates’s allegedly supporting citations for this opinion in the testimony of
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`Petitioners’ expert, and the experts of other Petitioners in different IPRs, were
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`taken out of context. Reply, 11. Specifically, the Reply identified that both Dr. La
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`Porta (Petitioners’ expert) and Mr. Willis (expert in other IPRs) testified that Mr.
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`Bates’s opinion is inaccurate with respect to converging PSTN and IP networks.
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`Id., 11 citing Exhibit 2019, 350:4-24; Exhibit 1061, 80:9-20. Furthermore, the
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`Reply identified that, when presented with this conflicting testimony, Mr. Bates
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`acknowledged that it was well known to interconnect an IP carrier network and the
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`PSTN at a tandem switch. Reply, 11 citing Exhibit 1059, 205:15-206:16
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`(testifying that “the network as it existed” “prior to May 4, 2000” included a
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`“connecting node between an IP carrier [network] and the PSTN . . . at a higher
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`switch level, like a tandem switch” and that this “higher level switch, like a tandem
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`switch” would communicate with “PCM” or “TDM” on “the PSTN side.”),
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`211:21-213:14, 250:23-251:17.
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`Because the Reply Exhibits expose Patent Owner’s misrepresentations to the
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`Board and discredit Mr. Bates’s testimony, Patent Owner now seeks their
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`exclusion by arguing that these exhibits should have been submitted with the
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`Petition. But there was no reason for the Reply Exhibits to have been submitted
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`with the Petition when (1) the instituted Ground indisputably discloses a system in
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`which a device external to the PSTN sent and received call requests via the PSTN
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`through a controller on an IP network connected to a PSTN tandem switch via a
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`gateway, and (2) the prosecution history of the challenged patents clearly show the
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`breadth of the newly introduced claim term “switching facility.” Both the Petition
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`and the Reply provide numerous citations to these teachings in Archer and Archer
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`in view of Chang. See, e.g., Pet., 21-26, 31-32, 34-37, 39-40, 41, 42-45, 48-49;
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`Reply, 4-8, 12-14, 16-17. This issue is not even reasonably in dispute, but Mr.
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`Bates nevertheless offered opinions to the contrary that required rebuttal. And it is
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`Patent Owner, not Petitioners, who presented new, narrower claim constructions in
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`its Response that are clearly contradictory from the broad definitions it previously
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`ascribed to such claim terms during the prosecution history of the challenged
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`patents. The fact that the Reply Exhibits may further confirm the veracity of the
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`original evidence submitted with the Petition, or the prima facie case, does not
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`make them any less admissible. Ford specifically addressed this issue and held
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`that such evidence is admissible. IPR2014-00579, Paper 45, at 29-30.
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`III. CONCLUSION
`For at least the above reasons, the Board should deny Patent Owner’s
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`request to exclude the Reply Exhibits.
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`By:
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`Respectfully submitted,
`DUANE MORRIS LLP
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`/s/ Patrick D. McPherson
`Patrick D. McPherson
`Reg. No. 46,255
`Lead Counsel
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`Dated: August 28, 2017
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`DUANE MORRIS LLP
`ATTN: Patrick McPherson
`505 9th Street, NW, Suite 1000
`Washington, DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
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`DM2\8128579.1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.53, the undersigned certifies that on August 28, 2017, a
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`complete and entire electronic copy of Petitioners’ Opposition to Patent Owner’s
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`Motion to Exclude was served electronically via email on the following:
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`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
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`John Murphy
`murphy@nelbum.com
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`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
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`Victor Siber
`vsiber@siberlaw.com
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`Hanna Madbak
`hmadbak@siberlaw.com
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`DM2\8128579.1
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`1
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`By: /s/ Christopher J. Tyson
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`Christopher J. Tyson
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`Reg. No. 63,850
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`Back-up Counsel
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