Filed on behalf of TQ Delta, LLC
`By: Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: pmcandrews@mcandrews-ip.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`DISH NETWORK, L.L.C.,
`Petitioner,
`v.
`
`TQ DELTA, LLC,
`Patent Owner
`_____________
`
`Case IPR2016-01470
`Patent No. 8,611,404
`_____________
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE INADMISSIBLE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: Peter J. McAndrews
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail: pmcandrews@mcandrews-ip.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`DISH NETWORK, L.L.C.,
`Petitioner,
`v.
`
`TQ DELTA, LLC,
`Patent Owner
`_____________
`
`Case IPR2016-01470
`Patent No. 8,611,404
`_____________
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE INADMISSIBLE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2016-01470
`U.S. Patent No. 8,611,404
`
`
`Petitioner has no legal or practical basis to have its dozens of un-used, un-
`
`authenticated, and unreliable exhibits admitted into evidence. Indeed, each of
`
`Petitioner’s arguments has the law woefully backwards.
`
`(1)
`
` Petitioner’s assertion that it can rely solely on attorney argument to
`
`authenticate an Internet publication is contrary to law. For example, Petitioner
`
`claims that Exhibits 1019, 1035, 1036, and 1052 should each be considered a
`
`periodical and self-authenticating because “it was published by either Electronic
`
`Products Magazine or EE Times, both of which are reputable publications.” But
`
`according to whom? Petitioner offers only attorney argument that either document
`
`was actually published by either of these entities, or that either entity is reputable.
`
`Even if one assumes that the logos and copyright notices indicate that the
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`documents were published by those entities, that does not automatically make them
`
`periodicals absent actual evidence that the websites or publications are themselves
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`reputable periodicals relied upon by persons of ordinary skill. Anyone can put a
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`logo and copyright notice on a website and give it an official sounding name.
`
`(2)
`
`Petitioner’s belief that it is only relying on these documents for what
`
`they “describe,” thus making them non-hearsay, is backwards. That is exactly the
`
`definition of hearsay—reliance for the “truth of the matter asserted.” Petitioner
`
`cites to cases for the inapplicable proposition that asserted prior art references are
`
`1
`
`
`
`
`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2016-01470
`U.S. Patent No. 8,611,404
`
`not hearsay because they are only relied upon for their disclosure—i.e., it only
`
`matters whether statements in the prior art exist and not whether they are true. See
`
`Pet. Opp. at 2. But that is not how Petitioner is using these exhibits. The
`
`challenged exhibits are not being relied upon as prior art, i.e., merely for their
`
`disclosure, but rather to affirmatively prove up whether or not something Petitioner
`
`says about DSL modems is true.
`
`For example, Petitioner is relying on Exhibit 1019 for the truth that the
`
`“Motorola CopperGold chip set described in Bowie . . . implements ADSL
`
`technology” and Exhibit 1052 for the truth that “video streaming was available in
`
`the early 1990s.” (Pet. Opp. at 1.) These are affirmative statements that Petitioner
`
`was trying to prove as fact, to prove what something else in a prior art reference
`
`(e.g., Bowie’s reference to Motorola CopperGold chips) allegedly means. If the
`
`statements in the exhibits are false, then it renders Petitioner’s conclusions false.
`
`Similarly, with respect to the remaining exhibits, Petitioner alleges that they
`
`are relied upon to “describe ADSL technology generally” (Exhibits 1021, 1022,
`
`1029-1031, 1033, 1036, 1038, 1042, 1043), allegedly “accurately characterize the
`
`state of the art at the relevant time” (Ex. 1035, 1023-1028, 1040, 1041, 1045, 1047,
`
`1048, 1051), or “corroborate that Bell Telephone developed a video phone in
`
`1964” (Ex. 1002). Each of these also is a black-letter example of relying on an
`
`2
`
`
`
`
`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2016-01470
`U.S. Patent No. 8,611,404
`
`exhibit for the truth of what it says—that they in fact describe actual features of
`
`ADSL technology or “accurately” (in Petitioner’s own words) characterize the art.
`
`As an example, if one of Petitioner’s Internet forum exhibits were to state
`
`(incorrectly) that DSL was capable of transmission speeds of 1 trillion Mbps, that
`
`would not “accurately” characterize the prior art or “describe ADSL technology.”
`
`In other words, to serve the purpose for which Petitioner claims it is relying upon
`
`them, the statements in the exhibits must be true. As such, they are hearsay.
`
`(3) Even if the Exhibits could overcome the authenticity and hearsay
`
`problems of (1) and (2), Petitioner has still not shown how most of them are
`
`relevant. Neither Petitioner nor its expert ever even referenced at least 22 of the
`
`exhibits—Petitioner’s apparent theory that it can have an expert just list a
`
`multitude of documents as “background” and have them admitted just in case it
`
`might use them or cite to them is contrary to the letter and spirit of the Federal
`
`Rules of Evidence. So too, is Petitioner’s attempt to flip the burden on Patent
`
`Owner to provide evidence that the exhibits are not relevant or not reliable.
`
`Petitioner does not dispute that it bears the burden of showing that each exhibit it
`
`submits is admissible, including that it is relevant to a specific issue in this IPR.
`
`Banks v. Vilsack, 958 F. Supp. 2d 78, 82 (D.D.C. 2013) (“The proponent of the
`
`evidence bears the burden of establishing that the evidence is relevant.”); United
`
`3
`
`
`
`
`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2016-01470
`U.S. Patent No. 8,611,404
`
`States v. 275.81 Acres of Land, 2013 U.S. Dist. LEXIS 34416, at *22 (W.D. Pa.
`
`Mar. 13, 2013) (“The burden of establishing the admissibility and relevance of
`
`evidence rests on the proponent.”); AAMCO Transmissions, Inc. v. Baker, 591 F.
`
`Supp. 2d 788, 793 (E.D. Pa. 2008) (“the proponent of the evidence [] has the
`
`burden of establishing its admissibility”). Vaguely having its expert claim that the
`
`documents go to “background” is far from sufficient to carry Petitioner’s burden.
`
`How exactly are they relevant to background? What portions of the documents?
`
`What products or features described in the documents? Petitioner never explains.
`
`(4)
`
`Petitioner’s back-up argument that any and all documents listed in an
`
`expert declaration automatically overcome hearsay and authenticity deficiencies
`
`and become admissible as exhibits on the record is also not sustainable.
`
`Numerous legal decisions hold the opposite. See, e.g., Finchum v. Ford Motor
`
`Co., 57 F.3d 526, 532 (7th Cir. 1995) (fact that expert relied on exhibit “does not
`
`automatically mean that the information itself is independently admissible in
`
`evidence . . . the [Plaintiff] could not have introduced the exhibit into evidence
`
`because of the hearsay rule”); Boim v. Holy Land Found. for Relief & Dev., 549
`
`F.3d 685, 703 (7th Cir. 2008) (“a judge must take care that the expert is not being
`
`used as a vehicle for circumventing the rule against hearsay”); United States v.
`
`Rodriguez, 125 F. Supp. 3d 1216, 1252 (D.N.M. 2015) (“The expert may not,
`
`4
`
`
`
`
`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2016-01470
`U.S. Patent No. 8,611,404
`
`however, simply transmit . . . hearsay [or other inadmissible evidence] to the
`
`jury.”). And Petitioner’s citation to a contrary Board decision (Nestle) is
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`inapplicable as it was not designated as representative or precedential.
`
`Indeed, if one accepted Petitioner’s argument, there would then be no such
`
`thing as a motion to exclude in an IPR—everything would be admitted as an
`
`exhibit, always, by simply citing to it in the expert’s declaration (which is
`
`invariably the case for any exhibit in an IPR). That cannot be the result intended
`
`by the Director in instituting Rule 42.64 governing objections and motions to
`
`exclude—that they be meaningless.
`
`In any event, however, all of this is moot. That is because Petitioner skipped
`
`a crucial step for its expert to even be permitted to rely upon these otherwise
`
`inadmissible documents under FRE 703—Petitioner must provide evidence that the
`
`documents are ones that “experts in the particular field would reasonably rely on.”
`
`FRE 703. Neither Petitioner nor its expert ever made any such showing with
`
`respect to any of these challenged exhibits.
`
`Dated: October 23, 2017
`
`
`
`5
`
`
`
`
`
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`McANDREWS, HELD & MALLOY,
`LTD.
`500 West Madison St., Suite 3400
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`
`
`Patent Owner’s Reply in Support of its Motion to Exclude
`IPR2016-01470
`U.S. Patent No. 8,611,404
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Patent
`
`Owner’s Reply In Support of its Motion To Exclude was served on October 23,
`
`2017, via e-mail to counsel for Petitioners at the following:
`
`Lead Counsel
`Heidi L. Keefe
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW,
`Suite 700
`Washington, DC 20004
`Tel: 650-843-5001
`Fax: 650-849-7400
`USPTO Reg. No. 40,673
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`
`
`Back-up Counsel
`Stephen McBride
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW,
`Suite 700
`Washington, DC 20004
`Tel: 703-456-8000
`Fax: 703-456-8100
`smcbride@cooley.com
`Dish-TQDelta@cooley.com
`zpatdcdocketing@cooley.com
`
`Jennifer Volk
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW,
`Suite 700
`Washington, DC 20004
`Tel: 703-456-8000
`Fax: 703-456-8100
`USPTO Reg. No. 62,305
`jvolkfortier@cooley.com
`
`
`MCANDREWS, HELD & MALLOY
`
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`CUSTOMER NUMBER: 23446
`Date: October 23, 2017
`
`
`
`
`
`
`
`
`
`/Peter J. McAndrews/
`Peter J. McAndrews
`Registration No. 38,547
`
`
`
`
`
`
`
`
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