UNITED STATES PATENT AND TRADEMARK OFFICE
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`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’ Opposition to Chrimar’s 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’ Opposition to Chrimar’s 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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`II. 
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`CHRIMAR’S HEARSAY OBJECTIONS ARE WITHOUT MERIT ......... 2 
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`CHRIMAR’S NON-EVIDENTIARY OBJECTIONS ARE IMPROPER .. 3 
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`III.  REPLY EXHIBITS DIRECTLY REBUT CHRIMAR’S RESPONSE ....... 4 
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ............................................................................ 6
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`Biomarin Pharm. Inc. v. Genzyme Therapeutic Products Ltd. P’ship,
`IPR2013-00537, Paper No. 79 (PTAB Feb. 23, 2015) ......................................... 2
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`Corning Inc. v. DSM IP Assets B.V.,
`IPR2013-00052, Paper No. 88 (PTAB May 1, 2014) ...................................... 6, 7
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`Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc.,
`IPR2014-00579, Paper 45 (PTAB Sept. 28, 2015) ................................. 4, 5, 6, 12
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`Johnson Controls, Inc. v. Wildcat Licensing WI, LLC,
`IPR2014-00304, Paper 44 (PTAB June 22, 2014) ............................................. 13
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`Case No. CBM2012-00002, Paper 66, slip op. (PTAB Jan. 23,
`2014) ..................................................................................................................... 4
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`MaxLinear, Inc. v. Cresta Tech. Corp.,
`IPR2015-00594, Paper No. 90 (PTAB Aug. 15, 2016) ........................................ 7
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`Medtronic, Inc. v. NuVasive, Inc.,
`IPR2014-00087, Paper 44 (PTAB Apr. 3, 2015) ............................................... 15
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`Micron Tech., Inc. v. Innovative Memory Sys., Inc.,
`IPR2016-00320, Paper 40 (PTAB June 5, 2017) ............................................... 14
`
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2012-00026; IPR2013-00109, Paper No. 66 (PTAB Nov. 1,
`2013) ................................................................................................................... 14
`
`Nestle Purina PetCare Co. v. Oil-Dri Corp. of Am.,
`IPR2015-00737, Paper No. 37 (PTAB June 20, 2016) ........................................ 7
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`Nintendo of Am., Inc. v. iLife Techs., Inc.,
`IPR2015-00115, Paper 39 (PTAB Apr. 28, 2015) ........................................... 3, 4
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`Petroleum Geo-Services Inc. v. WesternGeco LLC,
`IPR2014-01475, Paper 18 (PTAB Mar. 17, 2015) ............................................. 15
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`Preston v. Marathon Oil Co.,
`684 F.3d 1276 (Fed. Cir. 2012) .......................................................................... 14
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`Toshiba Corp. v. Optical Devices, LLC,
`IPR2014-01447, Paper No. 34 (PTAB Mar. 9, 2016) ...................................... 7, 8
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`Statutes
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`35 U.S.C. §102(a) ...................................................................................................... 7
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`35 U.S.C. §102(e) ...................................................................................................... 7
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`Rules
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`Fed. R. Evid. 703 ....................................................................................................... 2
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`Fed. R. Evid. 803(6) ................................................................................................... 3
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`Fed. R. Evid. 803(8) ................................................................................................... 2
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`Other Authorities
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`37 C.F.R. § 42.23(b) .................................................................................................. 5
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`37 C.F.R. § 42.64 ....................................................................................................... 1
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) ....................... 1, 4
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`A motion to exclude preserves timely evidentiary objections. 37 C.F.R.
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`§ 42.64(c). In its Objections (Paper 36), Chrimar included certain evidentiary
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`objections based on the Federal Rules of Evidence. Of those objections, Chrimar’s
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`Motion (Paper 45) addresses only hearsay. As explained below, Chrimar’s hearsay
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`objections are without merit and should be denied.
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`Chrimar’s remaining non-evidentiary objections are not proper under 37
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`C.F.R. § 42.64. In particular, Chrimar’s argument that Petitioners’ Reply Exhibits
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`are “untimely” evidence offered to “supplement” Petitioners’ arguments after the
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`Petition was filed is not an evidentiary objection. See Paper 45, 1-10. Chrimar’s
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`Motion to Exclude (except for the hearsay section) is also improper under Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) because it presents
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`non-evidentiary arguments about the timeliness of Petitioners’ submission of
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`certain exhibits with its Reply (Paper 32). Chrimar argues that Exhibits 1020-1043
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`(herein, “Reply Exhibits”) should be excluded because they relate to arguments
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`that should have been made in the Petition.1 This is a procedurally flawed attack
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`on the sufficiency of the Petition, rather than a proper preservation of evidentiary
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`objections. Also, Chrimar overlooks that the law allows Petitioners to rely on
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`1 Chrimar’s motion does not present argument for Exs. 1020, 1030, 1043,
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`and 1046 (except to request exclusion of testimony based on the Reply Exhibits).
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`additional evidence in the Reply to rebut arguments first made in the Response.
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`I.
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`CHRIMAR’S HEARSAY OBJECTIONS ARE WITHOUT MERIT
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`Chrimar’s hearsay objections are directed only to Exhibits 1021-1029, 1031,
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`and 10352. Paper 45, 9-12. First, even if these exhibits are hearsay, which they are
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`not, Petitioners’ expert, Mr. Crayford, is permitted to rely on them to support his
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`opinions. Fed. R. Evid. 703 (“If experts in the particular field would reasonably
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`rely on those kinds of facts or data in forming an opinion on the subject, they need
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`not be admissible for the opinion to be admitted.”). Therefore, Chrimar’s request
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`that the portions of Mr. Crayford’s declaration (Ex. 1046) that rely on these
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`Exhibits should be excluded is without merit and should be denied. Paper 45, 12.
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`Turning to the Exhibits, they are not hearsay because Petitioners rely on
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`them to show what information an ordinary artisan would have had access to and
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`known about and “what [the Exhibits] describe[] to an ordinary artisan, not for
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`proving the truth of the matters addressed in the document[s].” Biomarin Pharm.
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`Inc. v. Genzyme Therapeutic Products Ltd. P’ship, IPR2013-00537, Paper No. 79
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`at 25 (PTAB Feb. 23, 2015). In other words, these Exhibits are not hearsay
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`2 Chrimar’s motion appears to inadvertently say Exhibit 1034 instead of Exhibit
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`1035, as Chrimar has not made a hearsay objection to Exhibit 1034. Paper 36, 14
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`(no hearsay objection to Ex. 1034).
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`because they are not being offered for the truth of what is disclosed, rather for the
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`fact that it was disclosed and a POSITA would have been aware of this disclosure.
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`Furthermore, exceptions to the hearsay rule apply. Exhibits 1025-1029 are
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`issued U.S. Patents and fall within the Public Records exception of Fed. R. Evid.
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`803(8). Exhibits 1031 and 1035 are commercial publications of the kind that are
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`generally published in the ordinary course of business activity and relied on by
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`persons in the engineering fields; they fall within the Records of Regularly
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`Conducted Activity exception of Fed. R. Evid. 803(6).
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`Following Chrimar’s objections to these exhibits (Paper 36), Petitioners
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`served the Third Declaration of Ian Crayford (Exhibit 1048), which provides
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`evidence that Exhibit 1031 was published by October 14, 1997 (Ex. 1048, ¶ 26,
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`Exhibit I) and that Exhibit 1035 was published by March 1, 1997 (Id., ¶ 28, Exhibit
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`J). Thus, the evidentiary record establishes that by April 10, 1998, a POSITA
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`would have had access to and known about the disclosures of Exhibits 1031 and
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`1035. And with respect to Exhibits 1021-1024, Mr. Crayford’s Third Declaration
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`provides evidence that these documents existed and were publicly available at or
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`around the dates published on each exhibit. Id., ¶¶ 9-13, Exhibits A-C, K.
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`II. CHRIMAR’S NON-EVIDENTIARY OBJECTIONS ARE IMPROPER
`Chrimar’s remaining arguments, which relate to the timeliness of the Reply
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`Exhibits, are procedurally improper because they reflect a thinly veiled attempt to
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
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`challenge the sufficiency of the Petition (i.e., a sur-reply) rather than the proper
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`subject of a motion to exclude. “A motion to exclude is available to parties to
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`explain why certain evidence is inadmissible, and is not the proper place to raise
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`arguments regarding the scope of a reply.” Nintendo of Am., Inc. v. iLife Techs.,
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`Inc., IPR2015-00115, Paper 39 at p. 57 (PTAB Apr. 28, 2015); see also, Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (“A motion to exclude
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`must explain why the evidence is not admissible (e.g., relevance or hearsay) but
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`may not be used to challenge the sufficiency of the evidence to prove a particular
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`fact.”). A motion to exclude “is not a mechanism to argue that a reply contains
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`new arguments or relies on evidence necessary to make out a prima facie case.”
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`Nintendo of Am., Inc., IPR2015-00115, Paper 39 at p. 57 (quoting Liberty Mutual
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`Insurance Co. v. Progressive Casualty Insurance Co., Case No. CBM2012-00002,
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`Paper 66 at p. 62 (PTAB Jan. 23, 2014)). Chrimar sought and was granted the
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`right to file a limited motion to strike to raise these arguments and it should not be
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`permitted to evade the Board’s page limits by rearguing its motion to strike in its
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`longer motion to exclude. Paper 42.
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`III. REPLY EXHIBITS DIRECTLY REBUT CHRIMAR’S RESPONSE
`Chrimar’s non-evidentiary challenges to the Reply Exhibits are based on the
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`mere fact that they were submitted with the Reply and not the Petition. In addition
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`to being procedurally flawed, Chrimar’s arguments are not a sufficient basis for
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`excluding these exhibits because Petitioners are permitted to submit additional
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`evidence that is responsive to arguments raised in a patent owner response – “[t]he
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`very nature of a reply is to rebut the patent owner’s response.” Ford Motor Co. v.
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`Paice LLC & The Abell Foundation, Inc., IPR2014-00579, Paper 45 at p. 29-30
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`(PTAB Sept. 28, 2015) (citing 37 C.F.R. § 42.23(b)). In fact, the Board has found
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`that “[t]he need to rely on new evidence may not arise until a particular point has
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`been raised in the patent owner response. Much depends on the specific arguments
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`made in the patent owner response.” Id. “The mere fact that a petitioner submits
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`rebuttal testimony that relies on new evidence not previously identified in the
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`petition does not suffice to establish its impropriety.” Id.
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`Chrimar’s arguments fail to address that Petitioners’ Reply confirms that the
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`Reply Exhibits were submitted only to rebut new arguments in Chrimar’s
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`Response and not to change or supplement the two instituted Grounds. As detailed
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`in the Reply, Chrimar’s Response and the accompanying declaration of Dr.
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`Madisetti contain numerous unsupported factual assertions, including significant
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`misrepresentations about the state of the art and the knowledge of a POSITA. The
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`Reply Exhibits directly rebut these arguments and nothing more. The need for
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`these Reply Exhibits arose only after Chrimar filed its Response that contained the
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`aforementioned misstatements. The Reply Exhibits are not necessary for
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`Petitioners’ prima facie case; indeed, the Board instituted trial on both Grounds
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`without this evidence and this evidence does not change those Grounds. Paper 8.
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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). “Ford, in turn, submitted the challenged testimony and exhibit
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`in rebuttal to show that Bumby’s starter motor/battery connection would have been
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`feasible, and in fact, was well-known and obvious to skilled artisans in the relevant
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`time frame.” Id. The Board held this was an “appropriate use of rebuttal
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`evidence” by Ford to satisfy its burden. Id. Ford had “merely elaborated on an
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`initial position raised in its Petition and presented evidence in direct rebuttal to
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`Paice’s Response.” Id. As in Ford, the Petitioners here rely on the Reply Exhibits
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`to directly rebut Chrimar’s Response and to correct Chrimar’s factual errors.
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`None of the cases cited by Chrimar stand for the proposition that Petitioners
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`are precluded from providing such evidence. In Ariosa Diagnostics v. Verinata
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
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`Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015), the Federal Circuit vacated the
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`Board’s decision to exclude an exhibit precisely because the Board erred in
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`“refusing to consider Exhibit 1010 for what it showed about the background
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`knowledge that a skilled artisan would have possessed.” In Corning Inc. v. DSM
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`IP Assets B.V., IPR2013-00052, Paper No. 88, at 10-11 (PTAB May 1, 2014), the
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`Petitioner conceded that the new reply evidence (“new batch of samples tested
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`under a new protocol”) corrected errors in expert opinions submitted with its
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`Petition and did not rebut the patent owner’s response; by contrast, Petitioners here
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`are not correcting or replacing any of the evidence submitted with the Petition.
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`Instead, Petitioners are doing what the Board in Corning explained Corning should
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`have done—provide a “rebuttal to contradict DSM’s allegation and any supporting
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`evidence to confirm the veracity of Corning’s original [] data.” Id.
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`Chrimar’s remaining cases are distinguishable. See MaxLinear, Inc. v.
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`Cresta Tech. Corp., IPR2015-00594, Paper No. 90 (PTAB Aug. 15, 2016) (Board
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`declined to consider the petitioner’s new reply argument that a reference was prior
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`art under §102(a) when the petition had relied only on §102(e)); Nestle Purina
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`PetCare Co. v. Oil-Dri Corp. of Am., IPR2015-00737, Paper No. 37, at 23 (PTAB
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`June 20, 2016) (petitioner submitted declaration from a new expert with its reply to
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`argue for the first time a motivation to combine the prior art references); Toshiba
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`Corp. v. Optical Devices, LLC, IPR2014-01447, Paper No. 34 (PTAB Mar. 9,
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
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`2016) (patent owner preliminary response challenged public accessibility of prior
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`art and petitioner submitted responsive evidence with reply rather than as
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`supplemental evidence). None of these cases are like the instant case where
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`Petitioners submitted additional evidence with the Reply to directly rebut
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`arguments made for the first time in the Patent Owner Response. Assuming
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`arguendo that the Board considers Chrimar’s arguments, they are addressed below.
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`Exhibits 1021-1024, 1029, and 1043: Mr. Crayford relies on Exhibits 1021-
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`1024, 1029, and 1043 to rebut Dr. Madisetti’s incorrect opinions about Bob Smith
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`Terminations (“BSTs”) and Common Mode Chokes (“CMC”). Chrimar’s
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`Response argues that any invalidating prior art combination must take into account
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`BSTs or CMCs. Response (Paper 25), 7, 13-16. Chrimar’s argument is premised
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`on Dr. Madisetti’s mistaken belief that BSTs or CMCs were present in the entire
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`installed base of Ethernet equipment as of the date of Chrimar’s invention. Id., 15
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`(citing Ex. 2038, ¶ 45). While this entire argument is a red herring because the
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`claims of the ‘838 patent do not require BSTs or CMCs, which are not even
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`referenced anywhere in the ‘838 patent, Dr. Madisetti’s understanding also is
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`factually incorrect, as he later conceded at his deposition. Reply, 3-4; Ex. 1020,
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`55:19-23. To rebut Chrimar’s argument and show inaccuracies in Dr. Madisetti’s
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`opinion, the Reply and Mr. Crayford rely on Exhibits 1021-1024 and 1029 to show
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`that BSTs and CMCs were not present or required in Ethernet networks at the time.
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`Reply, 3-5.
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`Exhibits 1021-1024 and 1029 could not have been submitted with the
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`Petition because Petitioners could not have anticipated that Dr. Madisetti would
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`offer inaccurate and unsupported opinions regarding BSTs and CMCs, which are
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`not even required by the ‘838 patent claims. These Exhibits only rebut those
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`opinions that were first offered in Chrimar’s Response. And although the ‘838
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`patent specification references “pre-existing wiring or cables” or “conventional
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`multi-wire cables,” that does not mean the claims require BSTs or CMCs, which,
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`as Dr. Madisetti and Exhibits 1021-1024 and 1029 confirm, were not present or
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`required in all conventional or pre-existing Ethernet implementations at the
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`relevant time.3
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`Exhibits 1025-1028: Exhibits 1025-1028 are prior art patents that are cited
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`on the face of the ‘838 patent. Mr. Crayford relies on these exhibits to directly
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`rebut Chrimar’s and Dr. Madisetti’s misunderstanding of the state of the art at the
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`time of invention. Reply, 7, 14. Dr. Madisetti incorrectly opined that “Power over
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`3 Chrimar and Dr. Madisetti also fail to appreciate that BSTs and CMCs are
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`incorporated into Ethernet equipment, not wiring or cables. Thus, there is no
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`logical connection between the specification mentioning preexisting wires/cables
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`and Chrimar’s conclusion that the claims require BSTs or CMCs.
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`Ethernet (‘PoE’) did not exist in 1997.” Resp., 8; Ex. 2038, ¶¶ 90, 155, 189, 232.
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`Setting aside the fact that this opinion is irrelevant because the claims are not
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`directed at power over Ethernet and the date of invention is not 1997, the factual
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`assertion itself is false. The Hunter reference in Ground 1 alone shows that by
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`1996 “the concept of phantom power ha[d] been extended significantly to operate
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`with data bearing-LAN buses,” including 10Base-T Ethernet buses. Reply, 6-7.
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`Exhibits 1025-1028, which are cited on the face of the ‘838 patent, further confirm
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`that as early as 1997, and certainly by the time of Chrimar’s alleged invention on
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`April 10, 1998, phantom powering over Ethernet data lines was well-known in the
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`art. Reply, 7, 14. Petitioners rely on these exhibits to rebut Chrimar’s arguments
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`to the contrary and to point out significant deficiencies in Dr. Madisetti’s
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`credibility. As detailed in the Reply, Dr. Madisetti’s opinions are inconsistent with
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`the disclosures of Exhibits 1025-1028. Id. Dr. Madisetti admitted he ignored these
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`documents (Exhibits 1025-1028) because he incorrectly believed 1997 is the time
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`of the invention and that these Exhibits are not prior art. Paper 46, 2-4.
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`Finally, Chrimar’s argument about its missed opportunity to “swear behind”
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`Exhibits 1027 and 1028 (the De Nicolo patents) is a red herring because, even
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`before the Petitioners identified the De Nicolo patents in the Reply, Chrimar and
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`Dr. Madisetti expressly relied on 1997 as Chrimar’s invention date. See Resp., 7;
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`Ex. 2038, ¶ 37. It was Chrimar’s burden to produce evidence to support this earlier
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
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`date—particularly when its expert was relying on 1997 to form all of his opinions.
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`Finally, for the avoidance of doubt and at the risk of stating the obvious,
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`Petitioners are not relying on Exhibits 1025-1028 to modify either Grounds 1 or 2.
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`Exhibit 1032: In support of Chrimar’s Response, Dr. Madisetti opined that
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`“isoEthernet used ISDN signals, not Ethernet signals to transmit data.” Ex. 2038,
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`¶ 76. He also opined that, when Hunter talks about a “10base-T bus [that]
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`conventionally comprises two twisted-pair conductors,” this means that the
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`conductors “would have been used for isoEthernet connections, which carried
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`ISDN (not Ethernet) traffic.” Id., ¶ 77. He further opined that “Ethernet® AU
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`interface” in Hunter is an “Attachment Unit Interface.” Id., n.5. None of these
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`opinions are based on any evidence, only on his speculations about isoEthernet that
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`first surfaced when he submitted his declaration with Chrimar’s Response.
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`Dr. Madisetti’s opinions reflect a misunderstanding of isoEthernet. To
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`expose Dr. Madisetti’s error, Mr. Crayford relies on the IEEE 802.9a isoEthernet
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`standard that was submitted as Exhibit 1032. Reply, 15-16, 23. This standard
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`shows that, contrary to Dr. Madisetti’s opinions, (1) isoEthernet used ISDN and
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`Ethernet (10Base-T signals), (2) twisted-pair conductors carried both ISDN and
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`Ethernet traffic in the isoEthernet standard, and (3) that “AU” is an abbreviation
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`for an isoEthernet “Access Unit.” Reply, 15-16, 23; Ex. 1032, 29, 387.
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`Because Exhibit 1032 exposes Chrimar’s misrepresentations to the Board
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`and discredits Dr. Madisetti’s testimony, Chrimar now seeks its exclusion by
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`arguing that it should have been submitted with the Petition. But there was no
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`reason for the isoEthernet standard to have been submitted with the Petition when
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`Hunter indisputably discloses a system that operates on 10Base-T and 100Base-T
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`Ethernet. Both the Petition and the Reply provide numerous citations to these
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`teachings of 10Base-T and 100Base-T Ethernet in Hunter. See, e.g., Pet., 7, 25-28;
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`Reply, 15-16. This issue is not even reasonably in dispute, but Dr. Madisetti
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`nevertheless offered opinions to the contrary that required rebuttal. Petitioners
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`could not have reasonably anticipated that Chrimar would rely on an expert who is
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`so unfamiliar with the isoEthernet standard that he would testify that isoEthernet
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`does not teach Ethernet. And the fact that Exhibit 1032 may further confirm the
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`veracity of the original evidence submitted with the Petition or the prima facie case
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`does not make it any less admissible. Ford specifically addressed this issue and
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`held that such evidence is admissible. IPR2014-00579, Paper 45 at p. 29-30.
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`Exhibit 1033: Exhibit 1033 is an IEEE dictionary definition for the term
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`“data terminal equipment.” Petitioners rely on this exhibit to rebut Dr. Madisetti’s
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`opinion that certain claim limitations, which are variations on the term “data
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`terminal equipment,” should be construed in a manner that is inconsistent with the
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`broadest reasonable interpretation (“BRI”) of “data terminal equipment.” For
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`example, Dr. Madisetti opines that “[b]y definition, such a device [Ethernet data
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`terminal equipment] is at the end of a network.” Ex. 2038, ¶ 167. Chrimar also
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`argues that this term is limited to devices that do not have connectors on each side.
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`Resp., 35-40. Exhibit 1033 shows this construction is inconsistent with the
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`ordinary meaning of “data terminal equipment” in April 1998, which was “[a]
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`device that serves as a data source and/or a data sink.” Ex. 1033, 10.
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`Petitioners are not using this definition to support a new claim construction.
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`Rather, it is Chrimar who has presented a new construction in its Response that
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`differs from the construction it previously sought in its Preliminary Response
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`(Paper 6, 13). See Johnson Controls, Inc. v. Wildcat Licensing WI, LLC, IPR2014-
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`00304, Paper 44 at p. 33-34 (PTAB June 22, 2014) (Petitioner’s reply evidence,
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`dictionary definitions, were admissible because they responded to Patent Owner’s
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`claim construction arguments in Response, which were inconsistent with BRI.).
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`Exhibit 1034: Exhibit 1034 is a drawing Dr. Madisetti voluntarily drew at
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`his deposition. His accompanying testimony, which drew no objections from
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`Chrimar’s counsel, clearly states “I would like to make this [the drawing] an
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`exhibit.” Ex. 1020, 315:19-20. Dr. Madisetti testified that he made the drawing in
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`response to the question “where in Figure 4 [of the specification] is there
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`disclosure of the Ethernet terminal equipment.” Id. 317:17-23. Chrimar’s counsel
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`did not object, and there are no objections on record for Chrimar to rely on its
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`motion to exclude. Still, Petitioners address Chrimar’s arguments.
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`Chrimar’s “duress” argument is without merit. Dr. Madisetti was not even
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`asked to make this drawing, much less placed under duress. He decided to respond
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`to a question by generating this drawing, which took him over 30 minutes to
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`create. Both the PTAB and the Federal Circuit consider drawings generated during
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`depositions. See, e.g., Preston v. Marathon Oil Co., 684 F.3d 1276, 1288 (Fed.
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`Cir. 2012); Micron Tech., Inc. v. Innovative Memory Sys., Inc., IPR2016-00320,
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`Paper 40 at p. 28-30 (PTAB June 5, 2017). Moreover, the Response and Dr.
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`Madisetti’s declaration include at least one other drawing by him. Ex. 1020,
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`420:17-421:3. Chrimar provides no reason why the drawing generated at the
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`deposition should be treated any differently than the drawings in the Response.
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`Exhibit 1034 is also within the scope of Dr. Madisetti’s direct testimony. He
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`admitted that “he [had] applied the BRI for the claims” in view of the specification.
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`Ex. 1020, 241:23-242:16. Thus, it was entirely appropriate for Dr. Madisetti to be
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`cross-examined about his opinions regarding the BRI in view of the specification,
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`including whether the embodiments depicted in the patent drawings disclose the
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`claim limitations. See Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 and
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`IPR2013-00109, Paper No. 66 at p. 2-3, (PTAB Nov. 1, 2013) (expert “necessarily
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`construed the claims in opining on whether certain claim elements are disclosed in
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`the prior art. Petitioner was entitled to explore those opinions fully on cross-
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`examination, including questioning the expert on [his] constructions.”).
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`Exhibits 1036-1042: Petitioners submitted Exhibits 1036-1042 to directly
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`rebut Chrimar’s and its expert’s arguments based on Patent Owner Exhibits 2040-
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`2046. Reply, 9-10. All of these Exhibits are presentations and meeting minutes
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`from the 1999-2000 IEEE committee that standardized delivering phantom power
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`over Ethernet data lines. While Petitioners contend that none of the presentations
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`or meeting minutes are relevant to the IPR, Dr. Madisetti chose to cherry-pick a
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`subset of them (Exhibits 2040-2046) to support his incorrect conclusions about the
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`state of the art and alleged skepticism by experts. Resp. 21-25; Ex. 2038, ¶¶ 56-67.
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`To rebut this, Mr. Crayford identified Exhibits 1036-1042 that disprove Dr.
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`Madisetti’s opinion. Ex. 1046, ¶¶ 36-44. The record shows Chrimar and Dr.
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`Madisetti ignored IEEE documents that undermine the positions Chrimar took in
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`its Response. Exhibits 1036-1042 are a few examples of such documents they
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`ignored. In fact, Dr. Madisetti conceded his methodology was unreliable when he
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`admitted that he did not know whether he had reviewed all the available IEEE
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`documents. Ex. 1020, 359:10-19. Also Chrimar misstates the law when it argues
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`that Petitioners had the burden to address skepticism in the Petition. Motion, 6.
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`Patent Owner has the burden to produce evidence of secondary indicia of non-
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`obviousness in the first instance. See Medtronic, Inc. v. NuVasive, Inc., IPR2014-
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`00087, Paper 44 at p. 21 (PTAB Apr. 3, 2015); Petroleum Geo-Services Inc. v.
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`WesternGeco LLC, IPR2014-01475, Paper 18 at p. 28 (PTAB Mar. 17, 2015).
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
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`Date: August 11, 2017
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`Respectfully submitted,
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`/s/ Talin Gordnia
`Talin Gordnia (Reg. No. 76,214)
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`Talin Gordnia, Reg. No. 76,214
`tgordnia@irell.com
`Michael Fleming, Reg. No. 67,933
`mfleming@irell.com
`Jonathan Kagan, pro hac vice
`jkagan@irell.com
`IRELL & MANELLA, LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`Telephone: (310) 277-1010
`Fax: (310) 203-7199
`
`Nima Hefazi, Reg. No. 63,658
`nhefazi@irell.com
`IRELL & MANELLA, LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`Telephone: (949) 760-0991
`Fax: (949) 760-5200
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`Attorneys for Petitioner
`Juniper Networks, Inc.
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`IPR2016-01397 Petitioners’ Opposition to Chrimar’s Motion to Exclude
`U.S. Patent No. 9,019,838
`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. section 42.6 that a complete copy of
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`
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`the PETITIONERS’ OPPOSITION TO CHRIMAR’S MOTION TO
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`EXCLUDE are being served by electronic mail, as agreed to by the parties, the
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`same day as the filing of the above-identified documents in the United States
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`Patent and Trademark Office/Patent Trial and Appeal Board, upon:
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`Frank A. Angileri (Reg. No. 36,733)
`Thomas A. Lewry (Reg. No. 30,770)
`Marc Lorelli (Reg. No. 43,759)
`Christopher C. Smith (Reg. No. 59,669)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`CHRMC0111IPR1@brookskushman.com
`
`
`
`
`Richard W. Hoffman (Reg. No. 33,711)
`REISING ETHINGTON PC
`755 West Big Beaver Rd., Ste. 1850
`Troy, MI 48084
`Hoffman@reising.com
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`
`
`
`
` /Susan M. Langworthy/
` Susan M. Langworthy
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`August 11, 2017
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