IPR2016-01470
`U.S. Patent No. 8,611,404
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH NETWORK L.L.C.
`Petitioner
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`v.
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`TQ DELTA LLC
`Patent Owner
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`Case IPR2016-01470
`Patent 8,611,404
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE
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`U.S. Patent No. 8,611,404
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH NETWORK L.L.C.
`Petitioner
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`v.
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`TQ DELTA LLC
`Patent Owner
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`Case IPR2016-01470
`Patent 8,611,404
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE
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`INTRODUCTION
`Patent Owner TQ Delta’s Motion to Exclude (“Motion”) should be denied for
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`IPR2016-01470
`U.S. Patent No. 8,611,404
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`I.
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`the reasons that follow.
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`II. EXHIBITS 1019, 1035, 1036 AND 1052 ARE ADMISSIBLE
`The above exhibits are authentic under FRE 901. Each is considered a
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`periodical and is self-authenticating because it was published by either Electronic
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`Products Magazine or EE Times, both of which are reputable publications. The fact
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`that the articles were found online is irrelevant. The cases that Patent Owner cites to
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`on page 1 of its Motion, which hold that “print-outs from the Internet” are not self-
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`authenticating, are not applicable here because the Internet print-outs in those cases
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`(a) were not published online by any reputable publication, and (b) would not have
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`been considered a self-authenticating periodical even if published in physical form.
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`Regardless, exhibits 1019, 1035, 1036 and 1052 have distinctive
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`characteristics that sufficiently authenticate webpages. FRE 901(b)(4). The
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`standard for admissibility under FRE 901 is “slight.” United States v. Turner, 718
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`F.3d 226, 232 (3d Cir. 2013). Distinctive characteristics include “dates, websites,
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`trademarks, copyright notices, and URL links” indicating the document is what it
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`purports to be. SAP America, Inc. v. Lakshmi Arunachalam, IPR2013-00195, Paper
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`60 at 22 (PTAB Sept. 18, 2014). Exhibit 1019 bears Electronic Products
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`Magazine’s logo, copyright notice and the date the article was posted to the
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`1
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`IPR2016-01470
`U.S. Patent No. 8,611,404
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`website. Exhibits 1035, 1036 and 1052 each bear the EE Times URL and logo, a
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`copyright notice, the date and time the article was posted to the website, and a
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`retrieval date. Patent Owner provides no showing these characteristics are
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`untrustworthy. See SDI Techs., Inc. v. Bose Corp., IPR2013-00350, Paper 36, at
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`16-18 (PTAB Nov. 7, 2014).
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`Patent Owner also suggests that exhibits 1019, 1035, 1036 and 1052 are
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`hearsay. (Motion, 3.) But, as just discussed, these exhibits are self-authenticating
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`periodicals and therefore not hearsay. The exhibits are also “offered for what they
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`describe, and not to prove the truth of the matter asserted;” as a result, they cannot
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`be considered hearsay. EMC Corp. v. PersonalWeb Techs, LLC et al., IPR2013-
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`00087, Paper 69 at 42-43 (PTAB May 15, 2014) (holding that “prior art references
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`are not hearsay because they are offered for what they describe, and not to prove
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`the truth of the matters asserted”) (citing Joy Techs., Inc. v. Manbeck, 751 F. Supp.
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`225, 233 n. 2 (D.D.C. 1990), judgement aff’d, 959 F.2d 226 (Fed. Cir. 1992)). For
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`example, exhibit 1019 is cited by Petitioner’s expert to corroborate that the
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`Motorola CopperGold chip set described in Bowie (Ex. 1004, 3:44-47) implements
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`ADSL technology. (Ex. 1002, ¶ 127.) Exhibit 1052 is cited to corroborate that
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`video streaming was available in the early 1990s. (Ex. 1002, ¶ 168.) Exhibit 1036
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`is cited in the technology tutorial section of Petitioner’s expert declaration to
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`describe ADSL technology generally. (Ex. 1002, ¶ 76.) And, exhibit 1035 is listed
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`2
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`IPR2016-01470
`U.S. Patent No. 8,611,404
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`solely in the “materials considered” section of the Petitioner’s expert declaration
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`because they are relevant “references [that] accurately characterize the state of the
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`art at the relevant time” and were considered by Petitioner’s expert as part of
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`preparing his declaration. (Ex. 1002, ¶ 24.)
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`Regardless, even if these exhibits were considered hearsay, experts in inter
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`partes review proceedings may rely on hearsay in their declarations. Fed. R. Evid.
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`703; Nestle Healthcare Nutrition, Inc. v. Steuben Foods, Inc., Case IPR2015-00249,
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`Paper 76 at 13-14 (P.T.A.B. June 2, 2016) (agreeing that hearsay evidence relied
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`upon by expert is admissible because “Federal Rule of Evidence 703 permits an
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`expert to base an opinion on facts or data in the case that an expert has been made
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`aware of it experts in the field would reasonably have relied on such facts or data in
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`forming an opinion”); Brose N. Am., Inc. and Brose Fahrzeugteile GmBH & Co. Kg,
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`Hallstadt v. Uusi, LLC, Case IPR2014-00417, Paper 49 at 26 (P.T.A.B. July 20,
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`2015) (“… an expert may rely upon evidence regardless of whether the evidence is
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`admissible…”). For these reasons, Patent Owner’s hearsay argument has no merit.
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`III. EXHIBITS 1021-1031, 1033, 1038-1043, 1045-1048 AND 1051 ARE
`ADMISSIBLE.
`These exhibits are not hearsay. They are offered for what they describe, and
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`not to prove the truth of the matter asserted; and, as a result, they cannot be
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`considered hearsay. SeeEMC Corp. at 42-43 (PTAB May 15, 2014). For example,
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`IPR2016-01470
`U.S. Patent No. 8,611,404
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`exhibits 1021, 1022, 1029-1031, 1033, 1038, 1042 and 1043 are merely cited in the
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`technology tutorial section of Petitioner’s expert declaration to describe ADSL
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`technology generally. (See, e.g., Ex. 1002, ¶¶ 51, 52, 67, 77, 86, 93, page 47.)
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`Exhibit 1046 is cited by Petitioner’s expert to simply corroborate that Bell
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`Telephone developed a video phone in 1964. (Ex. 1002, ¶ 176.) Exhibits 1023-
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`1028, 1040, 1041, 1045, 1047, 1048 and 1051 are listed solely in the “materials
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`considered” section of the Petitioner’s expert declaration because they are relevant
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`“references [that] accurately characterize the state of the art at the relevant time”
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`and were considered by Petitioner’s expert as part of preparing his declaration. (Ex.
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`1002, ¶ 25.) Regardless, even if these exhibits are considered hearsay (a position to
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`which Petitioner does not acquiesce), as just discussed, Petitioner’s expert is still
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`permitted
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`to rely upon
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`the above-mentioned exhibits regardless of
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`their
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`admissibility. Fed. R. Evid. 703; see also Brose N. Am., Case IPR2014-00417,
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`Paper 49 at 26. Therefore, Patent Owner’s arguments with respect to these exhibits
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`have no merit.
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`For at least these reasons, Patent Owner’s Motion to Exclude the exhibits
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`listed herein should be denied.
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`IPR2016-01470
`U.S. Patent No. 8,611,404
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`Respectfully submitted,
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
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`By:
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`Dated: October 16, 2017
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: 650-843-5001
`Fax: 650-849-7400
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`IPR2016-01470
`U.S. Patent No. 8,611,404
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. Sections 42.6, that a complete copy of
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`the attached PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE and related documents are being served via electronic
`mail on the 16th day of October, 2017, upon counsel of record for the Patent Owner
`as follows:
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`Peter J. McAndrews
`pmcandrews@mcandrews-ip.com
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`Thomas J. Wimbiscus
`twimbiscus@ mcandrews-ip.com
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`Scott P. McBride
`smcbride@ mcandrews-ip.com
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`Christopher M. Scharff
`cscharff@ mcandrews-ip.com
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`Dated: October 16, 2017
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`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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` /Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
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