Case 1:15-cv-00842-RGA Document 565 Filed 04/19/21 Page 1 of 8 PageID #: 34809
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`CHANBOND, LLC,
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`Plaintiff,
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`Civil Action No. 15-842-RGA
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`v.
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`ATLANTIC BROADBAND GROUP, LLC, :
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`et al.,
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`Defendants.
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`MEMORANDUM ORDER
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`In connection with the proposed Chanbond v. Cox pretrial order, there was a dispute
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`about the admissibility of portions of the deposition of Anthony Wechselberger. (D.I. 500 at 33-
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`36). Mr. Wechselberger was deposed on April 28, 2017, in connection with an instituted IPR
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`concerning the ‘822 patent, one of the three asserted patents-in-suit. (See id; D.I. 438). He
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`offered opinions during the deposition; Plaintiff asserts some of them are consistent with its
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`expert’s opinions and inconsistent with Cox’s expert’s opinions. Both experts have some
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`citations to this deposition testimony in their expert reports. It seems extremely likely Mr.
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`Wechselberger will be unavailable for the trial in this case.
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`In the proposed pretrial order, the parties argue about the applicability of Federal Rule of
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`Evidence 804(b)(1), and Cox also argues that the testimony should be excluded under Rule 403.
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`Plaintiff does not address Rule 403. (D.I. 500 at 33-36).
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`We discussed the issue at the pretrial conference. (D.I. 509 at 23-31, 41-44). We agreed
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`that there would be additional submissions, which were duly filed. (D.I. 508, 510, 514). The
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`Case 1:15-cv-00842-RGA Document 565 Filed 04/19/21 Page 2 of 8 PageID #: 34810
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`submissions include the proposed testimony,1 with various annotations by the parties. (D.I. 508-
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`4; see D.I. 510-4; D.I. 514-2). In the additional submissions, both sides make arguments
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`concerning Rule 804(b)(1) and Rule 703, but only Cox addresses Rule 403 concerns.
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`I believe that Plaintiff is only asserting one claim of the ‘822 patent—claim 14. (D.I. 505
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`at 1; D.I. 506 at 1).2
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`I quote the five proposed excerpts.
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`Q. So the question is the second embodiment that you mentioned is at column 5, lines 22
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`through 25; correct? A. Yes. Q. In this embodiment the sets of additional channels are
`predefined; right? A. That's what Tiedemann says, yes. Q. These additional channels are still
`dynamically allocated; correct? A. Yes. Q. So a person of ordinary skill would know that a
`channel can be dynamically allocated even though the set of possible channels is pre-assigned
`before communication starts; is that right? A. You'll have to run that question by me again. It
`took a bit to come out. I lost it. Q. A person of ordinary skill would know that channels can be
`dynamically allocated even though the set of possible channels is pre-assigned before
`communication starts? A. I would agree with that.
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`Q. If you turn to Exhibit 1001, the '822 patent, at column 9, line 3 through 5, you can
`read it to yourself, but on line 5 there is a mention of parallel-to-serial conversion. Do you see
`that? A. So here he's talking about Figure 2. Q. Please feel free to review whatever other
`portions of the '822 patent you need to. A. Figure 2 is called a local RF receiver baseband out
`for use in sending baseband information to a wideband network and receiving digital and
`nondigital information. Back to column 9. Okay. Okay. And your question again, if there was
`one? Q. Yes. At line 5 -- sorry. Column 9, line 5 there is a mention of parallel-to-serial
`conversion. Do you see that? A. Yes. Q. What does "parallel" mean in this context? A. So the
`output -- looking at Figure 2, the output of demodulator 220, which is referenced right above the
`particular citation you focused on, says the demodulator -- I'm reading line 1. It says the
`demodulator 220 strips the RF carrier signal from the digital baseband signal as known in the art.
`Following the demodulation the IP signals, plural, are combined by a digital combiner 212,
`which is shown in the Figure. So into combiner 212 -- into the digital combiner 212 are -- you
`could see at least two inputs coming from the demodulator 220. Those are parallel inputs, which
`he describes as being converted into a single serial stream. Q. And just to -- for clarity of the
`record, we're talking about Figure 2; correct? A. Yes. The lead-in to the top of column 9, unless
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`1 Plaintiff refers to the highlighted portions of the Wechselberger testimony as “representative.” (D.I. 508 at 2 n.3).
`I am not sure what is meant by this word, but my interpretation (in light of what I requested at the pretrial
`conference) is that the highlighted testimony is essentially the universe of what Plaintiff wants to offer, although it
`might offer less.
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` The PTAB declined to institute the IPR on claim 14. The IPR resulted in the invalidation of claim 1 of the ‘822
`patent, but absent some circumstance I am now unaware of, the jury will not be permitted to hear that. In the IPR,
`“channel” was construed as “a path for transmitting electric signals.” No other term required construction.
`(Although I construed various terms, “channel” was not one of them. (D.I. 86)).
`Page 2 of 8
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`Case 1:15-cv-00842-RGA Document 565 Filed 04/19/21 Page 3 of 8 PageID #: 34811
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`I missed a transition, begins at the top of line 8 in a description of Figure 2, taking us all the way
`through the various components; and Figure 2 is still the subject by the time you get to the top of
`column 9. Q. So going back to my earlier question, what does the '822 patent mean by parallel-
`to-serial conversion here? A. It means simply there are parallel streams of digital information or
`parallel -- since he's talking about an IP signal there, that stands for Internet Protocol, so we
`would assume those signals are digital. It says "digital signals are combined." So you have a
`plurality or at least more than one IP digital signal arriving at the combiner 212 at its input,
`which is the right-hand side of that box. So you have simultaneous streams of IP digital
`information entering the combiner. Those will then be converted into a single bitstream, which
`he then denotes as a high speed serial digital output. . . . Q. Yes. Can you explain your opinion
`that Tiedemann's multiplexer 127 performs parallel-to-serial conversion. A. I have a citation at
`paragraph 224 of my report which is actually the same one you just called to my attention a few
`moments ago at column 8. The citation says, quote, multiplexer, or MUX, M-U-X, 127 combines
`the decoded data transmitted on the primary channel with the decoded data transmitted on the
`additional channels. The resembled data packet is provided to data sink 130. So in conjunction
`with the Figure I show in paragraph 221 of my report, which was taken from Tiedemann Figure
`3, you can see at the top of page 137 of my report the primary decoder 122 outputting the
`information on the primary channel, and the output of the additional channels is shown in the
`box 126 called additional decoder, and those are both going into the multiplexer 127. So here
`you see the parallel paths of information, just like we talked about in the '822 patent, with the
`single now combined information going to the data sink 130. Q. Can you think of a multiplexer
`that would not perform parallel-to-serial conversion? A. Well, the term "multiplexer" generally
`would be understood by a person of ordinary skill to take in multiple inputs and combine them
`into some different number of outputs. It doesn't have to be one output. You could have eight in,
`two out. You could have eight in, one out. So multiplexing comes in all different kinds of
`flavors. And it's not typical, in my experience, to usually refer to that as parallel-to-serial
`conversion, although certainly in the context of the claim here it's understood what's going on.
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`Q. If you look at Exhibit 1009 Tiedemann at column 8, lines 23 and 24, I'm just going to
`read it because it's very short. It says, "The reassembled data packet is provided to data sink
`130." Did I read that right? A. Yes. Q. Do you read that Tiedemann's multiplexer 127
`reassembles the data packet before providing -- before providing it to data sink 130? A. Well,
`one has to take him literally at what he says, which is what you read answers your question. He
`says the reassembled, past tense, data packet is provided to data sink. So whatever else the
`multiplexer did, it also reassembled. Q. So the answer is "yes"? A. Yes. The answer is yes. Q.
`So a person of ordinary skill in the art would know that the combiner in the claims of the '822
`patent does not simply merge the data together but also properly resequences the data in the
`original order? A. Now you're referencing Claim 1C and 19D? Q. I am referencing the
`combiner limitation of Claims 1 and 19 of the '822 patent. A. So I'm looking at my report at
`page 138, paragraph -- the box leading into paragraph 224. So there we have that limitation. Q.
`That is correct. A. And what was the question again about that? Q. The question is a person of
`ordinary skill in the art would know that the combiner limitation of the '822 patent does not
`simply merge the data together but also resequences the data in the right order. A. Well, the
`claim only cites what it claims and it doesn't say anything either way about your question, so I
`don't think it's proper to read into the claim anything other than the claim language. It doesn't say
`anything about resequencing. . . . Q. So I think you can agree that the claims of the '822 patent do
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`Case 1:15-cv-00842-RGA Document 565 Filed 04/19/21 Page 4 of 8 PageID #: 34812
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`not exclude a combiner that in addition to combining data also resequences the data in the correct
`order? A. The claim doesn't say that data sequence has any function. So, you know, it doesn't
`exclude it and it doesn't include it. It's silent on the issue. . . . Q. You don't know a reason why
`the '822 patent would exclude a combiner that resequences the data in the right order? A. I can't
`think of a reason why it would exclude it. I just said I don't recall if it addressed that issue. Q. So
`as best you understand, a person of ordinary skill in the art would know that the combiner in the
`'822 patent claims can resequence the data in the right order? A. That issue is nonexistent in the
`claim, so there is no reason for a person of ordinary skill reading the claim to even consider it.
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`Q. That single datastream that comes out of multiplexer 127 would include data
`addressed to the first addressable device and data addressed to the second addressable device?
`A. If there are more than one addressable devices and you had MUX 127 put everything down
`into a single stream, then that single stream would now contain a multiplex of information
`destined for two addressable devices. Q. That would still be within the scope of the claims of the
`'822 patent; correct? A. Yeah, appears to be. . . . Q. So you agree that a person of ordinary skill
`in the art reading the '822 patent would understand that the combiner limitation of Claims 1 and
`19 can be met by a combiner that combines the at least two channels into a single datastream for
`all traffic, regardless of what specific addressable device it is intended for? A. Well, putting a
`mild correction on the very end of that, that single stream would contain the information destined
`for all the addressable devices, and there is nothing in the combiner limitation that says you
`could not do that, because it says -- because it combines it into a digital stream. So, and if there
`is at least one addressable device, there could be more addressable devices so that a digital
`stream would indeed contain data that was destined for more than one addressable device. . . .
`Q. So you agree that the digital stream of the '822 patent, Claims 1 and 19, can contain data
`bound for different addressable devices? A. Yes. . . . Q. Now assume, as we did before, that two
`addressable devices are connected to Tiedemann's mobile station in this combination with
`Gorsuch. Is that scenario realistic? A. Yes, I believe so. Q. In that case the channel-in-use
`information would still identify the channels assigned to the mobile station and not to any
`specific addressable device; correct? A. The question again? Q. In the case where two
`addressable devices are connected to the Tiedemann's mobile station in combination with
`Gorsuch, the channel-in-use information would identify the channels assigned to the mobile
`station and not to any specific addressable device; is that correct? A. I think I agree, because
`Gorsuch provides the targeting for the addressable devices in conjunction with the traffic
`management processes that are embodied in its ISDN modems, whereas Tiedemann, contrastly,
`identifies the additional -- the primary and additional channels through the Walsh Code
`assignments. . . . Q. In your proposed combination of Tiedemann and Gorsuch, the channel-in-
`use information does not identify channels carrying traffic addressed to any particular
`addressable device; is that right? A. It doesn't identify traffic addressed to a particular
`addressable device. I would agree with that. Q. So a person of ordinary skill in the art would
`know that the language of the claims of the '822 patent can be met where the channel-in-use
`information does not identify any channels with information addressed to a particular
`addressable device? A. Yeah. That requirement is not found in the first claim element. It just
`says it receives channel-in-use information which identifies the channel in the modulated RF
`signal that includes information addressed to at least one addressable device, so it's not particular
`as to which device. Q. A person of ordinary skill in the art would know that the language of the
`claim in the input limitation can be met where the channel-in-use information identifies the
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`Case 1:15-cv-00842-RGA Document 565 Filed 04/19/21 Page 5 of 8 PageID #: 34813
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`channels with information addressed to any of the addressable devices but not a specific
`addressable device. A. I agree with that.
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`Q. Now on to the additional channels. The base station sends the channel assignment
`message to the mobile station, Tiedemann, in advance of sending data to the mobile station;
`correct? A. In advance of...? Q. Sending data on those channels to the mobile station. A.
`Correct. Q. So in Tiedemann at the time the mobile station receives the channel assignment
`message, no additional channels are in use yet? A. Channel assignment -- the answer to that is
`maybe, because there may have been a previous channel assignment message which established,
`say, one additional channel. Maybe that's not enough bandwidth; so, you know, a new channel
`assignment message can come out allocating additional channels. So at the time the additional
`channels are allocated, there may have been a predecessor additional channel in effect. Q. But
`it's also possible that there were no additional channels prior to that channel assignment message;
`is that right? A. Sure. Q. In your opinion, even in that scenario, Tiedemann would meet the
`claim language; correct? A. Which claim language? Q. The language of channel-in-use
`information. Let me spell out it would be the limitation of an input configured to receive a
`modulated RF signal containing multiple channels and to receive channel-in-use information. A.
`So what's the question? Q. The question is even in the scenario where there were no additional
`channels prior to the channel assignment message, Tiedemann would need the claim language of
`an input configured to receive channel-in-use information? A. Yes.
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` now address the arguments of the parties.
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`First, Rule 804(b)(1). “In order for former testimony to be admissible as an exception to
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`the hearsay rule: (1) the declarant must be unavailable; (2) testimony must be taken at a hearing,
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`deposition, or civil action or proceeding; and (3) the party against whom the testimony is now
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`offered must have had an opportunity and similar motive to develop the testimony by direct,
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`cross, or redirect examination.” Kirk v. Raymark Indus., Inc., 61 F.3d 147, 164 (3d Cir. 1995).
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`The point in dispute is the third. In the IPR, the party was Cisco, which is indemnifying
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`Cox in this case. There is no dispute before me that Cisco counts as Cox’s predecessor-in-
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`interest. The argument is about whether Cisco had “similar motive to develop the testimony.” I
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`think the answer is no.
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`At the IPR, the issue in dispute was whether various claims of the ‘822 patent, not
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`including claim 14, were invalid as obvious under the prior art combination of Tiedemann,
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`Case 1:15-cv-00842-RGA Document 565 Filed 04/19/21 Page 6 of 8 PageID #: 34814
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`Gilhousen, and Gorsuch. That is not the issue, though, for which Plaintiff offers it now. Rather,
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`Plaintiff suggests that the testimony shows infringement.
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`I think Plaintiff is advancing two arguments about why the testimony supports
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`infringement. One is extremely convoluted, but I would describe it as, if Tiedemann meets an
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`element, Tiedemann is the same as an accused product in that regard, so therefore the accused
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`product also meets the limitation.3 The other is more straightforward. Some testimony opines
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`on what a POSA would understand about various subjects, at least some of which appear to be
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`relevant to issues that I expect will arise at trial. Regardless, I do not think the proper motive
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`comparison is between Cisco’s raising of invalidity defenses and Cox’s raising of the same
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`invalidity defenses (see D.I. 514); rather, I think the proper motive comparison is between
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`Cisco’s raising of invalidity defenses and Cox’s raising of non-infringement arguments. For
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`invalidity purposes, Cisco/Cox wanted to read the prior art and the claims as broadly as possible;
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`for infringement purposes, Cisco/Cox does not necessarily care about the prior art, but surely
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`wants to read the claims narrowly. Those goals are not the same or similar motivation; they are
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`different motivations. Thus, I do not think the Wechselberger testimony is admissible as former
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`testimony under Rule 804(b)(1).
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`Second, Rule 703. “An expert may base an opinion on facts or data in the case that the
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`expert has been made aware of or personally observed. If experts in the particular field would
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`reasonably 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. But if the facts or data would otherwise be
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`inadmissible, the proponent of the opinion may disclose them to the jury only if their probative
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`3 I would tend to think this argument, which is essentially “reverse practicing the prior art,” is probably a non-starter
`for the same reason that “practicing the prior art” is not a permissible argument.
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`Case 1:15-cv-00842-RGA Document 565 Filed 04/19/21 Page 7 of 8 PageID #: 34815
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`value in helping the jury evaluate the opinion substantially outweighs their prejudicial effect.”
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`Fed. R. Evid. 703.
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`There are a number of problems with Plaintiff’s argument on its Rule 703 theory. First, it
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`is less than clear that Dr. Nettles is relying upon anything Mr. Wechselberger said. In the papers
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`submitted to me, in particular, the Reply Report, there are three places that have been cited to me
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`where Dr. Nettles quotes Mr. Wechselberger. The first two are introduced with, “My opinions
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`are consistent with the testimony of Mr. Wechselberger . . .” (D.I. 514-2, ¶¶ 94, 108). The third
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`place has a different introduction, which is immediately followed by, “To be clear, I am relying
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`on the testimony of Mr. Wechselberger only to the extent it shows that Defendants’ position is
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`inconsistent with that of their own expert.” (Id., ¶ 294). Dr. Nettles does not rely upon the
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`Wechselberger testimony to form any of his opinions. He formed them independently. Rather,
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`he relies upon the Wechselberger testimony as a substitute for cross-examining Cox’s expert (Dr.
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`Cromarty) with someone else’s opinions. Plaintiff has not addressed the requirement that it
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`needs to show that the “probative value in helping the jury evaluate [Dr. Nettles’] opinion
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`substantially outweighs their prejudicial effect.” Thus, without Plaintiff even attempting the
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`Rule 703 predicate for admission, its argument fails. The testimony will not be admitted under
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`Rule 703 either.
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`As I see it, the only point of stating anything about the Wechselberger testimony is
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`essentially because Mr. Wechselberger stated it to advance Cox’s interests and it is contrary to
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`what Cox now sees as its interests. It makes Cox look dishonest. But Plaintiff does not rely
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`upon the Rule 801(d) bases for admitting statements of a party-opponent, presumably because
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`those grounds have usually been rejected as a basis for allowing such evidence.
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`Given that Plaintiff’s expert does not appear to be relying upon the Wechselberger
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`testimony for any of his opinions, and certainly is not mainly relying upon it for anything, I will
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`grant Cox’s request under Rule 403 to exclude not only the testimony but any reference to the
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`testimony. It has at most little probative value, which is substantially outweighed by the risk of
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`unfair prejudice, confusion, and waste of time, as the introduction of such testimony would open
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`the door to arguments about Tiedemann (which is referred to frequently in the proposed
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`testimony, but which the jury would not otherwise hear about), explanation of what an IPR is,
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`explanation as why claim 14 was not part of the decision, and possibly the explanation of the
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`relationship between Cisco and Cox. See Fed. R. Evid. 403.
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`Both sides are prohibited from referring to Mr. Wechselberger or his testimony.
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`IT IS SO ORDERED this 19th day of April 2021.
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`/s/ Richard G. Andrews
`United States District Judge
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`Page 8 of 8
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