Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Paper No. 49
`Filed: April 11, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`ARRIS GROUP, INC., and COX COMMUNICATIONS, INC.,
`Petitioners
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner
`____________________
`
`CASE IPR2015-006351
`Patent 5,563,883
`____________________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT
`OF ITS MOTION TO EXCLUDE EVIDENCE
`
`
`1 Cox Communications, Inc., who filed a Petition in IPR2015-01796, has been
`joined as a petitioner in this proceeding.
`
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`U.S. Patent No. 5,563,883
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`
`
`
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`Paper No. 49
`Filed: April 11, 2016
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`ARRIS GROUP, INC., and COX COMMUNICATIONS, INC.,
`Petitioners
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner
`____________________
`
`CASE IPR2015-006351
`Patent 5,563,883
`____________________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT
`OF ITS MOTION TO EXCLUDE EVIDENCE
`
`
`1 Cox Communications, Inc., who filed a Petition in IPR2015-01796, has been
`joined as a petitioner in this proceeding.
`
`
`
`
`
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Paper No. 49
`Filed: April 11, 2016
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`Table of Contents
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`I.
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`INTRODUCTION ................................................................................................... 1
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`II. ARGUMENT ........................................................................................................... 1
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`A. Exhibits 1005-1007 and 1010 Are Not Admissible Under Fed. R. Evid.
`803(16) Because They Have Not Been Authenticated ...................................... 1
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`1.
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`2.
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`3.
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`Exhibits 1005-1007 and 1010 Are Neither Self-Authenticating Under
`Fed. R. Evid. 902(5) Nor Authenticated as Public Records Under Fed.
`R. Evid. 901(b)(7)(B) ................................................................................. 1
`
`Exhibits 1005-1007 and 1010 Are Not Authenticated Under Fed. R.
`Evid. 901(b)(8) ........................................................................................... 3
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`Exhibits 1005-1007 and 1010 Do Not Fall Under the Residual
`Exception to the Hearsay Rule ................................................................... 3
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`4.
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`Patent Owner Properly Objected to Exhibit 1010 ...................................... 4
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`B. Petitioners Implicitly Concede That Exhibits 1018, 1019 and 1026-1032 Are
`Inadmissible to Prove That the MPT Specifications, Alleged to be Prior Art,
`Were Published Between 1991 and 1992 ........................................................... 4
`
`C. Exhibits 1033 and 1034 Are Irrelevant to Show a Purported Inconsistency in
`C-Cation’s Positions ........................................................................................... 5
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`III. CONCLUSION ......................................................................................................... 5
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`i
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Cases
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`Paper No. 49
`Filed: April 11, 2016
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`Table of Authorities
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`Bedingfield v. Deen, 487 F. App'x 219 (5th Cir. 2012) ............................................. 3
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`Compass Bank v. Intellectual Ventures II LLC, IPR2014-00724, Paper 41
`(P.T.A.B. Nov. 5, 2015) .......................................................................................... 4
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`Rules
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`FED. R. EVID. 803 ....................................................................................................... 3
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`Treatises
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`30 CHARLES ALLEN WRIGHT & ARTHUR MILLER, FEDERAL PRACTICE AND
`PROCEDURE § 7057 (2d ed.) .................................................................................... 3
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`31 CHARLES ALLEN WRIGHT & ARTHUR MILLER, FEDERAL PRACTICE AND
`PROCEDURE § 7104 (2d ed.) .................................................................................... 2
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`5 JACK B. WEINSTEIN & MARGARET A. BERGER, WEINSTEIN'S FEDERAL EVIDENCE §
`803.18 (2d ed. 1997) ............................................................................................... 3
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`Regulations
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`37 C.F.R. § 1.68 ......................................................................................................... 2
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`37 C.F.R. § 42.2 ......................................................................................................... 2
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`37 C.F.R. § 42.53(a) ................................................................................................... 2
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`ii
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`I.
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`INTRODUCTION
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`Paper No. 49
`Filed: April 11, 2016
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`C-Cation submits this Reply in response to the Petitioners’ Opposition
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`(“Opposition”) (Paper 46) to C-Cation’s Motion to Exclude Evidence (Paper
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`43). To the extent that C-Cation does not specifically address an argument of
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`Petitioners here, C-Cation rests on its motion.
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`II. ARGUMENT
`A. Exhibits 1005-1007 and 1010 Are Not Admissible Under Fed. R.
`Evid. 803(16) Because They Have Not Been Authenticated
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`Exhibits 1005-1007 are the MPT Specifications that Petitioners contend
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`are prior art. C-Cation objected to these exhibits not with respect to what they
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`disclose, but rather with respect to Petitioner’s reliance on the truth of assertions
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`in them, i.e., that they were “published.” For that purpose, they are hearsay.
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`C-Cation also objected to Exhibit 1010 because it is offered only to prove the
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`truth of assertions regarding the alleged publication of the MPT Specifications.
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`Petitioners rely solely on the ancient documents exception to the hearsay
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`rule, Fed. R. Evid. 803(16), to establish admissibility, but have failed to meet
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`the authentication requirement under that rule for each exhibit.
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`1.
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`Exhibits 1005-1007 and 1010 Are Neither Self-Authenticating
`Under Fed. R. Evid. 902(5) Nor Authenticated as Public
`Records Under Fed. R. Evid. 901(b)(7)(B)
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`Petitioners rely on the unsworn certificates of Ms. Julia Fraser to establish
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`that the “Radiocommunications Agency” was a “public authority” under Rule
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`1
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`902(5) and to authenticate Exhibits 1005-1007 and 1010 under Rule
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`Paper No. 49
`Filed: April 11, 2016
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`901(b)(7)(B). “In determining whether a matter is authentic, a court only may
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`consider evidence that is itself admissible.” 31 CHARLES ALLEN WRIGHT &
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`ARTHUR MILLER, FEDERAL PRACTICE AND PROCEDURE § 7104 (2d ed.).
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`Here, the Fraser certificates are not admissible testimony because they do
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`not comply with the Board’s rules. See 37 C.F.R. § 42.53(a) (“Uncompelled
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`direct testimony must be submitted in the form of an affidavit.”); 37 C.F.R. §
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`42.2 (“Affidavit means affidavit or declaration under § 1.68 of this chapter.”);
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`see also 37 C.F.R. § 1.68 (declarant must be “warned that willful false
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`statements and the like are punishable by fine or imprisonment, or both”).
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`Pursuant to 28 U.S.C. § 1746, an unsworn declaration executed outside the
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`United States may be used instead of an affidavit, but must include the
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`following statement by the witness: “I declare (or certify, verify, or state) under
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`penalty of perjury under the laws of the United States of America that the
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`foregoing is true and correct.” The Fraser certificates do not include this
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`statement.
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`The Fraser certificates also do not comply with Rule 902(3), which
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`requires purported foreign public documents to be accompanied by “a final
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`certification that certifies the genuineness of the signature and official position
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`of the signer or attester.”
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`2
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Paper No. 49
`Filed: April 11, 2016
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`2.
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`Exhibits 1005-1007 and 1010 Are Not Authenticated Under
`Fed. R. Evid. 901(b)(8)
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`Petitioners fail to offer any authority which supports their position that
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`they need not establish authenticity under Rule 901(b)(8). Opp’n at. 2.
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`Petitioners are incorrect. See FED. R. EVID. 803 cmt. Exception (16)
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`(commenting on “[a]uthenticating a document as ancient . . . as provided in
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`Rule 901(b)(8)”); 30 CHARLES ALLEN WRIGHT & ARTHUR MILLER, FEDERAL
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`PRACTICE AND PROCEDURE § 7057 (2d ed.) (citing Rule 901(b)(8) for
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`establishing authenticity); 5 JACK B. WEINSTEIN & MARGARET A. BERGER,
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`WEINSTEIN'S FEDERAL EVIDENCE § 803.18 (2d ed. 1997) (citing Rule 901(b)(8)
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`for establishing authenticity). As explained above, the Fraser certificates are
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`not admissible under C.F.R. § 42.53(a), and cannot establish that Exhibits 1005-
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`1007 and 1010 were “in a place where, if authentic, [they] would likely be”
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`under Rule 901(b)(8).
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`3.
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`Exhibits 1005-1007 and 1010 Do Not Fall Under the Residual
`Exception to the Hearsay Rule
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`The residual exception to the hearsay rule is “rarely” used, and whenever
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`used, the proponent “bears a heavy burden to come forward with indicia of both
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`trustworthiness and probative force.” Bedingfield v. Deen, 487 F. App'x 219,
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`228 (5th Cir. 2012) (emphasis added). Here, Petitioners’ have not offered
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`anything more than conclusory statements without any citation to the record.
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`3
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Paper No. 49
`Filed: April 11, 2016
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`4.
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`Patent Owner Properly Objected to Exhibit 1010
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`Petitioners assert that because Patent Owner objected to Exhibit 1010
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`under Fed. R. Evid. 802, Opp’n at 15, C-Cation is precluded from arguing the
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`failure to authenticate Exhibit 1010 as an ancient document. However, failure
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`to object to documents “as authentic does not obviate the requirement to
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`determine that the documents are authentic before [application of] the ancient
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`document exception to hearsay.” Compass Bank v. Intellectual Ventures II
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`LLC, IPR2014-00724, Paper 41, p. 56 (P.T.A.B. Nov. 5, 2015).
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`B.
`
`Petitioners Implicitly Concede That Exhibits 1018, 1019 and
`1026-1032 Are Inadmissible to Prove That the MPT
`Specifications, Alleged to be Prior Art, Were Published
`Between 1991 and 1992
`
`In its motion, C-Cation pointed out that each of Exhibits 1018, 1019 and
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`1026-1032 either fail to identify the version of the MPT Specifications offered
`
`in evidence or, in fact, identify a 1988 version that is not in evidence and the
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`contents of which is unknown. Because each of Exhibits 1018, 1019 and 1026-
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`1032 was relied on by Petitioners to prove that Exhibits 1005-1007 were
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`publicly accessible before the critical date, C-Cation argued that each Exhibit
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`should be excluded for lack of relevance. Petitioners concede that these
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`Exhibits do not identify Exhibits 1005-1007, and now contend that these
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`Exhibits are relevant to prove something else—“that persons skilled in the art
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`were well aware of the RA’s work on the MPT Specifications and thus would
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`4
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`have been led to the RA to obtain copies of then then-current MPT
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`Paper No. 49
`Filed: April 11, 2016
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`Specifications.” Opp’n 12. But, it simply does not follow from any purported
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`awareness of RA’s work that Exhibits 1005-1007 in particular were publicly
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`accessible. Thus, Exhibits 1018, 1019 and 1026-1032 remain irrelevant for that
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`purpose and should be excluded.
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`C. Exhibits 1033 and 1034 Are Irrelevant to Show a Purported
`Inconsistency in C-Cation’s Positions
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`Petitioners argue that the TSC in the MPT Specifications accepts, or not,
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`a request for registration based on the channel on which the request is received,
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`and, therefore, operates in this critical respect in the same way as the Cisco
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`CMTS. This argument is utterly devoid of support. Nowhere in the MPT
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`Specifications is there any indication that the TSC decides what channel it
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`wants the requesting radio unit to be on, and accepts, or not, a registration
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`request depending on whether the radio unit transmits on the desired channel, as
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`the Cisco CMTS does. Ex. 1034 at 289 (describing the CMTS “ignoring a
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`cable modem’s ranging request (RNG-REQ) message until it uses the correct
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`target channels”). Therefore, there is no inconsistency in C-Cation’s positions,
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`and Exhibits 1033 and 1034 are irrelevant.
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`III. CONCLUSION
`For the reasons stated above and in C-Cation’s motion, the Board should
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`exclude Exhibits 1005-1007, 1010, 1014, 1015, 1018-1019 and 1026-1034.
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`5
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Date: April 11, 2016
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`Paper No. 49
`Filed: April 11, 2016
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`Respectfully submitted,
`KENYON & KENYON LLP
`
`/Walter E. Hanley, Jr./
`
`Walter E. Hanley, Jr. (Reg. No. 28,720)
`whanley@kenyon.com
`Lead Counsel for Patent Owner
`
`Sheila Mortazavi (Reg. No. 43,343)
`smortazavi@kenyon.com
`Backup Counsel for Patent Owner
`
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
`Fax: (212) 425-5288
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`6
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Paper No. 49
`Filed: April 11, 2016
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`Certificate of Service
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`
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE EVIDENCE was served
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`via e-mail on April 11, 2016, in its entirety on the following:
`
`LEAD COUNSEL
`FOR ARRIS GROUP, INC.
`
`Andrew R. Sommer
`asommer@winston.com
`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, D.C. 20006-3817
`T: (202) 282-5000
`F: (202) 282-5100
`
`BACKUP COUNSEL
`FOR ARRIS GROUP, INC.
`
`Jonathan E. Retsky
`jretsky@winston.com
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`T: (312) 558-3791
`F: (312) 558-5700
`
`
`LEAD COUNSEL
`FOR COX COMMUNICATIONS, INC.
`
`Mitchell G. Stockwell (Reg. #39,389)
`mstockwell@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta , GA 30309-4528 USA
`Telephone: (404) 815-6500
`Fax: (404) 541-3403
`
`BACKUP COUNSEL
`FOR COX COMMUNICATIONS, INC.
`
`
`Michael J. Turton (Reg. #40,852)
`mturton@kilpatricktownsend.com
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta , GA 30309-4528 USA
`Telephone: (404) 815-6500
`Fax: (404) 541-3403
`
`
`/Walter E. Hanley, Jr./
`
`Walter E. Hanley, Jr. (Reg. #28,720)
`Lead Counsel for Patent Owner
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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