UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Juniper Networks, Inc., Ruckus Wireless, Inc., Brocade Communication
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`Systems, Inc. and Netgear, Inc.,
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`Petitioners
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`v.
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`ChriMar Systems, Inc.,
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`Patent Owner
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`Case No. IPR2016-01397
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`U.S. Patent No. 9,019,838
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`Petitioners’ Motion to Exclude
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Juniper Networks, Inc., Ruckus Wireless, Inc., Brocade Communication
`
`Systems, Inc. and Netgear, Inc.,
`
`Petitioners
`
`v.
`
`ChriMar Systems, Inc.,
`
`Patent Owner
`
`Case No. IPR2016-01397
`
`U.S. Patent No. 9,019,838
`
`Petitioners’ Motion to Exclude
`
`
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`TABLE OF CONTENTS
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`Page
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`I.
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`THE MADISETTI DECLARATION SHOULD BE EXCLUDED ............ 1
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`A.
`
`B.
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`C.
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`D.
`
`E.
`
`Legal Standard for the Admissibility of Expert Opinions ................. 1
`
`Opinions Are Based on the Wrong Time of Invention ...................... 2
`
`Opinions Based Only on Speculation Should be Excluded ............... 4
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`1.
`
`2.
`
`3.
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`No Basis For Opinions Regarding “Unused Pairs” ................. 5
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`Dr. Madisetti Misunderstands the IsoEthernet Standard ......... 6
`
`Dr. Madisetti Has No Basis for Opinions on Noise in Bloch .. 8
`
`Inconsistent Testimony Regarding Terminal Equipment .................. 8
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`Dr. Madisetti Fails to Read References as a Whole ......................... 10
`
`II.
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`THE IEEE EXHIBITS SHOULD BE EXCLUDED ................................. 11
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`III. EXHIBIT 2047 IS UNAUTHENTICATED, IRRELEVANT, HEARSAY12
`
`IV. EXHIBIT 2049 IS IRRELEVANT............................................................. 13
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`EXS. 2050 AND 2054, AND RELATED TESTIMONY FROM MR.
`CRAYFORD’S DEPOSITION ARE IRRELEVANT AND UNTIMELY 14
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`- i -
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`V.
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00403, Paper 42, 4 (July 29, 2015) aff’d 671 Fed. Appx.
`786 (Fed. Cir. Dec. 9, 2016) ................................................................................. 4
`
`Curtis v. M&S Petroleum, Inc.,
`174 F.3d 661 (5th Cir. 1999) ............................................................................ 2, 8
`
`Daubert v. Merrell Dow Pharm., Inc.,
`509 U.S. 579 (1993) .....................................................................................passim
`
`Hathaway v. Bazany,
`507 F.3d 312 (5th Cir. 2007) ........................................................................ 2, 4, 8
`
`Kumho Tire Co. v. Carmichael,
`526 U.S. 137 (1999) .....................................................................................passim
`
`Lewis v. Parish of Terrebonne,
`894 F.2d 142 (5th Cir. 1990) ........................................................................ 2, 4, 8
`
`Liquid Dynamics Corp. v. Vaughan Co., Inc.,
`449 F.3d 1209 (Fed. Cir. 2006) ............................................................................ 9
`
`Oracle Corp. v. Crossroads Sys., Inc.,
`IPR2014–01207, Paper 78 (PTAB Jan. 29, 2016) .............................................. 12
`
`Standard Innovation Corp. v. Lelo Inc.,
`IPR2014-00148, Paper 41, 10-11 (PTAB Apr. 23, 2015) ............................ 11, 13
`
`Rules
`F.R.E. 401 .........................................................................................................passim
`
`F.R.E. 402 .........................................................................................................passim
`
`F.R.E. 403 .........................................................................................................passim
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`F.R.E. 602 ................................................................................................................ 11
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`F.R.E. 702 .........................................................................................................passim
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`F.R.E. 703 .........................................................................................................passim
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`F.R.E. 801 .................................................................................................... 11, 12, 13
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`F.R.E. 802 .................................................................................................... 11, 12, 13
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`F.R.E. 804 ................................................................................................................ 11
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`F.R.E. 805 .......................................................................................................... 12, 13
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`F.R.E. 901 .................................................................................................... 11, 12, 13
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`Other Authorities
`37 C.F.R. § 42.65 ..............................................................................................passim
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`37 C.F.R. § 42.123 ................................................................................................... 15
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`
`TABLE OF EXHIBITS
`
`Number
`
`Short Name
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`10071
`1008
`
`1009
`
`1010
`
`'838 Patent
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`Crayford-1
`
`Hunter
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`Bulan
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`Bloch
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`IEEE-1993
`
`U.S. Patent 9,019,838 to Austermann, III
`et al.
`
`Declaration of Ian Crayford in Support of
`Petition
`
`WO 96/23377 to Hunter
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`U.S. Patent 5,089,927 to Bulan et al.
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`U.S. Patent 4,173,714 to Bloch et al.
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`IEEE International Standard ISO/IEC
`8802-3: 1993
`
`IEEE-1995 (part 1)
`
`IEEE Standard 802.3u-1995
`
`IEEE-1995 (part 2)
`
`IEEE Standard 802.3u-1995
`
`Huizinga
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`Blacharski
`
`U.S. Patent 4,046,972 to Huizinga et al.
`
`Dan Blacharski, "Maximum Bandwith: A
`Serious Guide to High-Speed
`Networking", Que Corporation (1997)
`
`
`1 IEEE Standard 802.3u-1995 has been separated into Exhibits 1007 and
`
`1008 to comply with file size limitations for Exhibits. Exhibits 1007 and 1008 are
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`continuously paginated, from 1-200, and 201-415, respectively.
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`Related Matters
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`Crayford C.V.
`
`Resume of Ian Crayford
`
`IEEE Press Release
`
`Randy H. Katz, "High Performance
`Network and Channel-Based Storage",
`Report UCB/CSD 91/650, September
`1991
`
`List of Pending Cases Involving U.S.
`Patent 9,019,838
`
`IEEE Standards Association News &
`Events: Press Releases "IEEE 802.3
`Standard for Ethernet Marks 30 Years of
`Innovation and Global Market Growth"
`
`Chrimar Systems, Inc. et al. v. Juniper
`Networks, Inc., Case No. 6:15-cv-00630
`(N.D. Cal.), Dkt. No. 1.
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`Number
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`Short Name
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`Description
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`1011
`
`Katz
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`1012
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`1013
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`1014
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`1015
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`Complaint
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`'058 patent
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`U.S. Patent 6,247,058 to Miller et al.
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`N/A
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`N/A
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`N/A
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`Madisetti
`Declaration
`
`Level One
`
`Pulse
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`Valor
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`Gordnia Declaration in support of pro hac
`vice motion
`
`Kagan Declaration in support of pro hac
`vice motion
`
`Reserved
`
`Deposition transcript for the June 21 and
`June 22, 2017 deposition of Dr. Vijay
`Madisetti
`
`Level One LXT914 Data Sheet, June
`1997, Revision 2.2
`
`Pulse LAN Isolation Transformer Catalog,
`May 1998
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`Valor Electronics Products Catalog, 1992
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`- v -
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`
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`Number
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`Short Name
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`Description
`(excerpts)
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
`
`Halo
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`Halo TD43-2006K Drawing, December
`18, 1996
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`Fisher or '998 patent U.S. Patent 5,994,998 to Fisher et al.
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`'911 Patent
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`U.S. Patent 6,140,911 to Fisher et al.
`
`De Nicolo or '468
`patent
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`'356 patent
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`Smith
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`Chrimar
`Presentation to
`IEEE
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`U.S. Patent 6,115,468 to De Nicolo
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`U.S. Patent 6,295,356 to De Nicolo
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`U.S. Patent 5,321,372 to Smith
`
`"Power on the 802.3 connection July 11th
`& 12th, 2000 Power, Detection and
`Discovery over the Existing Ethernet
`Wiring" by CMS Technologies
`
`Madisetti
`Deposition Exhibit
`2
`
`Madisetti Deposition Exhibit 2, Belden
`"Conduit and Media Twist" white paper,
`August 25, 1997
`
`IEEE 802.9
`
`IEEE 802.9 Standard, 1994
`
`IEEE Dictionary
`
`Madisetti
`Deposition Exhibit
`1
`
`The IEEE Standard Dictionary of
`Electrical and Electronics Terms, Sixth
`Edition, 1996 (excerpts)
`
`Madisetti Deposition Exhibit 1, June 22,
`2017
`
`1035
`
`Lucent
`
`
`
`
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`Lucent Technologies, "TransTalk™ 9000
`Digital Wireless System MDW 9030P
`Wireless Pocketphone Installation and
`Use," March 1997 (excerpts)
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`Number
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`Short Name
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`Description
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`1036
`
`1037
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`1038
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`1039
`
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`1040
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`1041
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`Agenda
`
`Muir
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`Frazier
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`Karam
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`Nootbar
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`Love
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`1042
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`Nakamura
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`'012 patent
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`'107 patent
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`'760 patent
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`Crayford-2
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`Crayford Dep.
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`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`
`
`
`
`Steve Carlson, "802.3 DTE Power via
`MDI Study Group" (November 1999)
`
`Robert Muir, "DTE power over MDI -
`DTE Discovery Process Proposal"
`(November 1999)
`
`Howard Frazier, Karl Nakamura and
`Roger Karam, "Power over the MDI"
`(January 2000)
`Roger Karam, "Common mode Rejection
`Through Center Tap of Magnetics"
`(March 2000)
`
`Michael Nootbar, "Why Power Over
`Signal Pairs?" (March 2000)
`
`Robert Love and Dave Kooistra, "User
`Requirements for Cabling Support" (May
`2000)
`
`Karl Nakamura and Roger Karam, "Power
`over the MDI using the two Signal Pairs"
`(May 2000)
`
`U.S. Patent 8,155,012 to Austermann, III
`et al.
`
`U.S. Patent 8,942,107 to Austermann, III
`et al.
`
`U.S. Patent 8,902,760 to Austermann, III
`et al.
`
`Second Declaration of Ian Crayford In
`Support Of Reply
`
`Excerpts from the second deposition of
`Ian Crayford, July 21, 2017
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`Petitioners hereby move to exclude: (1) the declaration of Dr. Vijay
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`Madisetti (Ex. 2038, “Madisetti Decl.”); (2) Exs. 2040-2046 (“IEEE Exhibits”); (3)
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`the declaration of Clyde Camp (Ex. 2048, “Camp Decl.”); (4) Exhibit 2047; (5)
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`Exhibit 2049; and (6) Exhibits 2050 and 2054, and related testimony from Mr.
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`Crayford’s second deposition. Petitioners’ motion is based on timely filed
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`objections (Paper 26), and objections made on the record at Mr. Crayford’s second
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`deposition (Ex. 1047, 35:18-19, 35:24-36:1, 171:20-21, 172:3-7).
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`I.
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`THE MADISETTI DECLARATION SHOULD BE EXCLUDED
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`Dr. Madisetti is Chrimar’s proffered expert and his Declaration includes
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`opinions regarding the state of the art and how a person of ordinary skill in the art
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`would understand the prior art and the scope of the challenged claims. Dr.
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`Madisetti’s opinions, however, are riddled with so many factual and technical
`
`misunderstandings that they cannot be accepted as reliable. As discussed below,
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`the Madisetti Decl. should be excluded at least under F.R.E. 702, 703, 37 C.F.R.
`
`§ 42.65 and the standards in Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579
`
`(1993) and Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999). Paper 26, 1-2.
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`A. Legal Standard for the Admissibility of Expert Opinions
`
`To be admissible, expert testimony and opinions: (1) must be the product of
`
`“reliable principles and methods” that are “reliably applied” to the facts of the
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`case; and (2) must “help the trier of fact to understand the evidence or determine a
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`fact in issue.” F.R.E. 702; see also Daubert, 509 U.S. at 589; Kumho Tire, 526
`
`U.S. at 147. Reliability involves an “assessment of whether the reasoning or
`
`methodology underlying the testimony is scientifically valid.” Daubert, 509 U.S.
`
`at 592-593. Expert opinions “must be preceded by facts in evidence and cannot be
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`the basis of speculation or conjecture.” Lewis v. Parish of Terrebonne, 894 F.2d
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`142, 146 (5th Cir. 1990); see also Hathaway v. Bazany, 507 F.3d 312, 318 (5th Cir.
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`2007). The expert’s testimony must be grounded in methods of science and must
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`relate to an issue in the case. Daubert, 509 U.S. at 589; Curtis v. M&S Petroleum,
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`Inc., 174 F.3d 661, 668 (5th Cir. 1999). It is an abuse of discretion to admit expert
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`testimony that is not relevant or reliable. Kumho Tire, 526 U.S. at 142.
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`B. Opinions Are Based on the Wrong Time of Invention
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`The Madisetti Decl. should be excluded under F.R.E. 401, 402, 403, 702,
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`703, and 37 C.F.R. § 42.65 as irrelevant, prejudicial, and unreliable expert
`
`testimony because Dr. Madisetti relies on the wrong time of invention. Dr.
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`Madisetti unequivocally states in his declaration that he is relying on 1997 as the
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`time of the invention for the challenged claims. Ex. 2038, ¶¶37 (“At the time of
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`Chrimar’s invention (1997)”)2; see also id., ¶¶ 85, 90, 155, 189, 232 (alleging
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`unsupported facts about the state of the art in 1997). For this IPR, the invention
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`date of the challenged claims is April 10, 1998, the earliest priority date on the face
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`2 The “1997” date in parenthesis is in the original Madisetti Declaration.
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`of the patent. Reply (Paper 32), 2; Ex. 1001, 1. Chrimar has not proffered any
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`evidence to establish an earlier date and has represented that it will not do so.
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`Dr. Madisetti’s misunderstanding as to the time of the invention is not
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`inconsequential. Due to this fundamental error, Dr. Madisetti makes unreliable
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`assertions about the state of the art, disclosure of the challenged patents, scope of
`
`the claims, and obviousness grounds precisely because he assumes that the time of
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`the invention is earlier than it actually is. For example, he ignores prior art that
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`falls between the time of invention on which he relies (an unspecified day in 1997)
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`and the actual time of invention (April 10, 1998) that refute his assertions (each of
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`which requires analysis at the correct time of invention). Based on this error, he
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`opines that “Power over Ethernet (‘PoE’) did not exist in 1997.” See, e.g., Ex.
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`2038, ¶¶ 90, 155, 189, 232; see also id., ¶¶ 37, 56, 67, 88, 93, 157, 191. But, there
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`is evidence in the record—prior art patents cited on the face of the ‘838 patent—
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`that confirm delivering phantom power over Ethernet did exist before Chrimar’s
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`alleged invention on April 10, 1998. Reply, §IV.A; Exs. 1025-1028; Ex, 1046,
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`¶¶ 29-33.3 A POSITA at the correct time of invention (April 10, 1998) would have
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`3 Notably, this evidence also disproves Dr. Madisetti’s opinion that there was a
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`preference for power delivery over “unused pairs.” See, e.g., Reply, §V.B; Ex.
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`1046, ¶¶ 57-59.
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`had knowledge of these references, which are dated May 1997 and March 1998.
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`Exs. 1025-1028. Dr. Madisetti admits he did not consider them when forming his
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`opinions because he “disagree[s] that they are prior art.” Ex. 1020, 197:4-200:8.
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`This example calls into question the reliability of Dr. Madisetti’s opinions
`
`and methodologies that are premised on the wrong time of invention and ignore
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`both the relevant prior art and the knowledge of a POSITA at the time of the actual
`
`invention. See, e.g., Apple Inc. v. VirnetX Inc., IPR2014-00403, Paper 42, 4 (July
`
`29, 2015) (BRI is considered as of the time of the invention) aff’d 671 Fed. Appx.
`
`786 (Mem), (Fed. Cir. Dec. 9, 2016), citing In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). Accordingly, the Madisetti Decl. should be excluded
`
`based on F.R.E. 702, 703, and 37 C.F.R. § 42.65. Also, because Dr. Madisetti’s
`
`opinions assume an incorrect date of invention, they should be excluded as
`
`irrelevant and prejudicial based on F.R.E. 401, 402, and 403.
`
`C. Opinions Based Only on Speculation Should be Excluded
`
`The existence of sufficient facts and a reliable methodology, as opposed to
`
`speculation and conjecture, is mandatory for expert testimony to be admissible.
`
`Lewis, 894 F.2d at 146; Hathaway, 507 F.3d at 318. Yet, Dr. Madisetti offers
`
`numerous opinions based only on his unsupported speculation. In each such
`
`instance, Dr. Madisetti’s opinions are subject to exclusion based on F.R.E. 702,
`
`703, 37 C.F.R. § 42.65, and the standards set forth in Daubert and Kumho Tire.
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
`
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`1.
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`No Basis For Opinions Regarding “Unused Pairs”
`
`Dr. Madisetti opines that an ordinary artisan at the time of the invention
`
`would not have made the combinations in the two instituted grounds because the
`
`artisan would have preferred to “supply power” over unused pairs rather than data
`
`pairs. Ex. 2038, §V.A.2 (p. 25). The foundation of Dr. Madisetti’s opinion is his
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`belief that “unused pairs” over which a DC current can be supplied would be
`
`readily available at the time of the invention, which he incorrectly assumes is 1997.
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`Ex. 2038, ¶¶ 37, 51. Dr. Madisetti provides no support for this proposition other
`
`than his own speculations regarding a handful of 1999-2000 IEEE Exhibits. Ex.
`
`1020, 353:6-17. For example, he speculates that (1) “unused wires were readily
`
`available in Ethernet installations” (Ex. 2038, ¶ 51) and (2) “CAT-3 and CAT-5 are
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`cable standards that require cables with eight conductors twisted into four pairs”
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`(id., ¶ 54). While Petitioners’ Reply explains why Dr. Madisetti is substantively
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`incorrect (Paper 32, 14-15), the fundamental issue in this motion is that opinions
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`should not be admitted if they are not based on reliable scientific methodologies
`
`and principles. Daubert, 509 U.S. at 592-593.
`
`The problems with Dr. Madisetti’s opinions were further exposed during his
`
`deposition. When asked what methodology led him to his conclusions, he could
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`only repeat that he was relying on his “knowledge and experience.” See. e.g., Ex.
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`1020, 342:5-343:2; 351:9-17, 353:6-17. Yet, his knowledge and experience failed
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`to account for the fact that 25-pair cables were used with the 10Base-T standard in
`
`April 1998 and that they did not have unused pairs. Reply, 14-15. Likewise, Dr.
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`Madisetti was not aware that 2-pair Cat-3 and Cat-5 cables were available at that
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`time and also did not have unused pairs. Id. These are significant deficiencies
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`because they show that Dr. Madisetti’s incorrect speculations about the availability
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`of unused pairs stem from him not knowing, or purposefully ignoring, that there
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`were network implementations in which “unused pairs” were not available.
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`Moreover, although Dr. Madisetti speculates that the 1999-2000 IEEE Exhibits
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`confirm “the legacy infrastructure that uses four pair” (Ex.1020, 357:16-358:11),
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`one of those documents, in fact, refers to “2-pair legacy systems.” (Ex. 2042, 1).
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`Because Dr. Madisetti’s speculative opinions contradict the evidence and fail to
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`account for the state of the art and the understandings of ordinary artisans at the
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`time of the invention regarding installed legacy networks, his opinions should be
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`excluded based on F.R.E. 702, 703, 37 C.F.R. § 42.65, Daubert, and Kumho.
`
`2.
`
`Dr. Madisetti Misunderstands the IsoEthernet Standard
`
`Dr. Madisetti’s opinions regarding the teachings of Hunter are unreliable
`
`because they are based on his misunderstanding of isoEthernet (see, e.g., Ex. 2038,
`
`¶¶ 76-79) and they should be excluded under F.R.E. 702, 703, and 37 C.F.R.
`
`§ 42.65. Specifically, referring to the “IEEE standard called 802.9a,” Dr. Madisetti
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`opines that “isoEthernet used ISDN signals, not Ethernet signals to transmit data.”
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`Ex. 2038, ¶ 76. He provides nothing to support this sweeping statement. Based on
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`that opinion, Dr. Madisetti then opines that, when Hunter talks about a “10base-T
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`bus [that] conventionally comprises two twisted-pair conductors,” this means that
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`the conductors “would have been used for isoEthernet connections, which carried
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`ISDN (not Ethernet) traffic.” Id., ¶ 77. Dr. Madisetti goes on to opine that the
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`“Ethernet® AU interface” in Hunter is an “Attachment Unit Interface” and from
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`this draws more incorrect conclusions about the teachings of Hunter. Id., n.5.
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`None of these opinions are based on any scientifically reliable support and, instead,
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`are based only on Dr. Madisetti’s speculations and misunderstanding of
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`isoEthernet. In reality, the IEEE isoEthernet standard confirms that (1) isoEthernet
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`used ISDN and Ethernet (10Base-T signals), (2) twisted-pair conductors carried
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`both ISDN and Ethernet traffic in the isoEthernet standard, and (3) that the “AU
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`interface” in Hunter is an isoEthernet “Access Unit Interface.” Reply, 16-17, 23;
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`Ex. 1010, 165; Ex. 1032, 29, 387. In response to Dr. Madisetti’s statements and to
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`establish the unreliability of his opinions, Petitioners included the isoEthernet
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`standard as an exhibit with their Replies for the Board to make its own assessment
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`of Dr. Madisetti’s errors. Ex. 1032. In any case, Dr. Madisetti’s opinions resulting
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`from his misunderstanding of isoEthernet should be excluded under F.R.E. 401,
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`402, 403, 702, 703, and 37 C.F.R. § 42.65 because they are unreliable, irrelevant,
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`and prejudicial.
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`3.
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`Dr. Madisetti Has No Basis for Opinions on Noise in Bloch
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`Dr. Madisetti’s opinions regarding noise in the circuitry of Bloch should be
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`excluded under F.R.E. 702, 703, 37 C.F.R. § 42.65, Daubert, and Kumho because
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`his opinions are not preceded by facts in evidence or grounded in any reliable
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`scientific methodology. Lewis, 894 F.2d at 146; see also Hathaway, 507 F.3d at
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`318; Daubert, 509 U.S. at 589; Curtis, 174 F.3d at 668.
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`Dr. Madisetti opines that an ordinary artisan would not implement the Bloch
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`circuitry (Ground 2) in an Ethernet environment because doing so would introduce
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`noise that would interfere with Ethernet communications. Ex. 2038, ¶¶ 30, 86. Dr.
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`Madisetti, however, does not identify what scientific principles and methods he
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`uses or how he arrives at his conclusions by reliably applying those principles and
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`methods to the evidence in the record. Without this, it is not possible to assess
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`whether the reasoning or methodology underlying his testimony is scientifically
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`valid. Therefore, his opinions should be excluded because they are unreliable and
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`fall short of the requirements of F.R.E. 702, 703, 37 C.F.R. § 42.65, and Daubert.
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`D.
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`Inconsistent Testimony Regarding Terminal Equipment
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`Dr. Madisetti provides pages of discussion and reinterpretations of the
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`figures from Hunter to support his opinion that Hunter does not teach an Ethernet
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`terminal/end device and instead teaches what Dr. Madisetti calls an “intermediate
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`hub.” Ex. 2038, ¶ 69. His opinion should be excluded under F.R.E. 702, 703, and
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`37 C.F.R. § 42.65 because it is premised on an incorrect claim construction,
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`negated by his own testimony, and not supported by any reliable methodology.
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`First, Dr. Madisetti’s opinion appears to be premised on a new construction
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`of “terminal equipment.” He writes “[b]y definition, such a device [Ethernet data
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`terminal equipment] is at the end of a network.” Ex. 2038, ¶ 167. This
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`construction is narrower than the broadest reasonable interpretation of the
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`limitation and is even narrower than the construction proposed by Chrimar in its
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`Preliminary Response: “Ethernet data terminal equipment” should be construed as
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`“device at which data transmission can originate or terminate and that is capable of
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`Ethernet communication.” Paper 6, 13. In other words, Dr. Madisetti proposes to
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`limit terminal equipment/end device (a term he uses to represent a number of claim
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`limitations) to devices that do not have connectors on each side. Id. His opinions
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`based on this narrowed construction are inadmissible. Liquid Dynamics Corp. v.
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`Vaughan Co., Inc., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006) (correctly “excluded
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`the expert opinion evidence as irrelevant because it was based on an impermissible
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`claim construction” and “the evidence could prejudice and confuse”).
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`Second, Dr. Madisetti’s narrowed construction is even at odds with his own
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`testimony. At his deposition, Dr. Madisetti testified that intermediate devices
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`disclosed in the challenged patent’s embodiments, i.e., devices that are not at the
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`end of the network, are within the scope of the “terminal equipment” claim
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`limitation. Reply, 16-20 (reproducing Ex. 1034, which is Dr. Madisetti’s hand
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`drawing). Accordingly, Dr. Madisetti’s opinions are irrelevant and prejudicial
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`under F.R.E. 401, 402, and 403, and they fall short of what is expected from an
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`expert under F.R.E. 702, 703, 37 C.F.R. § 42.65, and Daubert.
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`E. Dr. Madisetti Fails to Read References as a Whole
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`Dr. Madisetti’s opinions regarding the teachings of Hunter are inconsistent
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`with Federal Circuit precedent that requires a reference to be read as a whole and,
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`therefore, his opinions should be excluded because they are unreliable and
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`irrelevant. F.R.E. 401, 402, 403, 702, 703, and 37 C.F.R. § 42.65. For example,
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`Dr. Madisetti insists that “Hunter affirmatively steers an ordinary artisan away”
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`from using a current limiting device such as Bulan’s protective circuit because
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`Hunter says that “protective device 213 is desirable, but not necessary to the
`
`present invention.” Ex. 2038, ¶ 83. This opinion, however, is based on a reading
`
`of this Hunter excerpt in a vacuum. Although Hunter states that a protective
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`device is not necessary, it goes on to disclose a protective device and, in fact,
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`includes such a device in the claims. Reply, 24. Dr. Madisetti’s opinions, which
`
`overlook these portions of Hunter and focus only on the phrase “not necessary to
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`the present invention,” are unreliable and inconsistent with Federal Circuit law on
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`obviousness, and therefore should be excluded under F.R.E. 401, 402, 403, 702,
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`703, and 37 C.F.R. § 42.65.
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`II. THE IEEE EXHIBITS SHOULD BE EXCLUDED
`
`Petitioners move to exclude Exhibits 2040-2046 (“IEEE Exhibits”), the
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`Camp Decl. (Ex. 2048), and related testimony in the Madisetti Decl. because these
`
`exhibits are irrelevant, unauthenticated, hearsay, and prejudicial. Paper 26, 1-5;
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`F.R.E. 901, 801, 802, 804, 401, 402, 403. The IEEE Exhibits are unauthenticated
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`website printouts that are being offered to prove the truth of the matters they
`
`purportedly discuss (whether power delivery over Ethernet signal pairs was
`
`feasible and whether power delivery over unused pairs was preferred). Resp., 21-
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`25. Unauthenticated and hearsay website printouts are frequently excluded by the
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`Board pursuant to F.R.E. 901 and 801/802 where the proponent fails to proffer
`
`testimony of a witness with personal knowledge of the information from the
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`website itself. See Standard Innovation Corp. v. Lelo Inc., IPR2014-00148, Paper
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`41, 10-11 (PTAB Apr. 23, 2015).
`
`Chrimar has failed to meet its burden by relying on the Camp declaration to
`
`authenticate the IEEE Exhibits. Mr. Camp has no personal knowledge of the facts
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`to which he attests. F.R.E. 602. First, he admits he was not a member of the
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`IEEE’s 802.3af committee (the committee allegedly responsible for these
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`documents). Ex. 2048, ¶ 3. Second, he does not establish that he is “personally
`
`aware” of the committee’s work. Id., ¶ 3. Third, the IEEE Exhibits are from 1999
`
`or 2000, precisely the time during which Mr. Camp admits he was not a member of
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`the IEEE Standards Association Standards Board. Id., ¶ 2. Mr. Camp has no basis
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`for his testimony in paragraphs 4-11, and the Camp Decl. fails to authenticate the
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`IEEE Exhibits, which should be excluded under F.R.E. 901, 801, 802, and 805.
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`The IEEE Exhibits also are irrelevant and unfairly prejudicial because they
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`do not relate to any issue in this IPR. First, they are not evidence of
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`nonobviousness because “[t]o be relevant, evidence of nonobviousness must be
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`commensurate in scope with the claimed invention.” Oracle Corp. v. Crossroads
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`Sys., Inc., IPR2014–01207, Paper 78, *38 (PTAB Jan. 29, 2016). Exhibits 2040-
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`2046 do not pertain to any of the challenged claims or limitations. Reply, 9-10;
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`Ex. 1046, ¶¶ 36-44. Second, they are not relevant to the state of the art at the time
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`of the invention (April 10, 1998) because they are from 1999-2000. Exs. 2040-
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`2046; Ex. 2048, ¶¶ 5-11. Third, there is no evidence that these documents, which
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`post-date April 10, 1998, describe the state of the art at the actual time of the
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`invention. Reply, 2, 9-10. The IEEE Exhibits and Dr. Madisetti’s related
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`testimony (Ex. 2038, ¶¶ 36, 56-67) therefore also should be excluded based on
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`F.R.E. 401, 402, and 403 because they are not relevant to any issue in this IPR.
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`III. EXHIBIT 2047 IS UNAUTHENTICATED, IRRELEVANT, HEARSAY
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`Exhibit 2047, titled “What is the Internet?”, is a website printout that is
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`unauthenticated and also hearsay because it is being offered to prove the truth of
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`the matters it purportedly discusses (the meaning of “protocol”). Paper 26, 5-6.
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`As it failed to do for the IEEE Exhibits, Chrimar again has not met its burden of
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`authentication. Here, Chrimar does not even provide the testimony of a declarant;
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`Chrimar simply provides a URL link, which is insufficient for authentication. Ex.
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`2038, ¶ 104; Standard, Paper 41, 10-11. Moreover, it is not clear what this
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`document is or how it relates to any issue in this IPR. The document purports to
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`talk about the Internet but states in the first paragraph that it “does not specify an
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`Internet standard.” Ex. 2047, 1. At best, it is an unauthenticated account of one
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`person’s understanding of the Internet and Internet protocols in May 1993. It
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`should be excluded based on F.R.E. 901 and also F.R.E. 801, 802, and 805.
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`Exhibit 2047 also should be excluded based on F.R.E. 401, 402, and 403
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`because it is not relevant to any issue in the IPR. Chrimar relies on Exhibit 2047 to
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`construe “detection protocol.” Resp., 12-13, 43. Under the broadest reasonable
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`interpretation standard, it is improper to consider extrinsic evidence that
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`contradicts the intrinsic record or that is not from around the time of the invention;
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`Exhibit 2047 suffers from both of these flaws. Reply, 26-27. It is further
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`irrelevant because it purports to discuss Internet communication protocols, when
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`the claim limitation is “detection protocol.” Ex. 2047 and Dr. Madisetti’s related
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`testimony (Ex. 2038, ¶¶ 103-104, 137-139, 183-184, 211-212, 255-256) therefore
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`should be excluded based on F.R.E. 401, 402, and 403 because they are not
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`relevant.
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`IPR2016-01397 Petitioners’ Motion to Exclude
`U.S. Patent No. 9,019,838
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`IV. EXHIBIT 2049 IS IRRELEVANT
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`Exhibit 2049 and Dr. Madisetti’s related testimony should be excluded based
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`on F.R.E. 401, 402, and 403 because this exhibit is not relevant, is unfairly
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`prejudicial, and confuses the issues. Paper 26, 6-7. Chrimar and Dr. Madisetti rely
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`on this exhibit to argue that the shortcomings in the prior art that Bulan addresses
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`are not a “common ‘problem’” and from there conclude that a POSITA would not
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`make the combination of Ground 1. Resp. 29-31; Ex. 2038, ¶¶ 82, 85. First,
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`whether a problem is “common” is irrelevant to the issues of obviousness and a
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`motivation to combine. Second, Bulan clearly identifies to a POSITA the
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`shortcomings of prior art thermistors when used to power devices that have DC to
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`DC converters (such as the equipment in Hunter). Petition, 10-12. Third, unlike
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`Bulan and Hunter, Exhibit 2049 does not address supplying DC power to a d
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