Paper 42
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC.
`Petitioners,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA
`Patent Owner.
`
`______________
`
`Case No. 2017IPR-01068
`U.S. Patent 5,859,601
`
`PETITIONERS’ OBJECTIONS TO PATENT OWNER’S EVIDENCE
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC.
`Petitioners,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA
`Patent Owner.
`
`______________
`
`Case No. 2017IPR-01068
`U.S. Patent 5,859,601
`
`PETITIONERS’ OBJECTIONS TO PATENT OWNER’S EVIDENCE
`
`
`
`Under 37 C.F.R. § 42.64(b)(1), LSI Corporation and Avago Technologies
`
`U.S., Inc. (collectively “Petitioners”) hereby object to the evidence submitted with
`
`Patent Owner’s Response to Petition filed July 14, 2020, in response to the Board’s
`
`Decision of April 21, 2020 (Paper 35) that instituted the trial for Inter Partes
`
`Review of U.S. Patent No. 5,859,601 (“’601 Patent”). The objections are timely
`
`filed and served within five business days of service of the evidence.
`
`Petitioners object to Exhibit 2007 (April 13, 2008 Soljanin Decl. in Regents
`
`of the University of Minnesota v. LSI Corporation et al., Case No. 18-cv-00821-
`
`EJD-NMC, Dkt. 204-4 (N.D. Cal.)).
`
`First, Ex. 2007 as cited is irrelevant because indefiniteness is not at issue in
`
`this IPR. See, e.g., Patent Owner response at 2 (“[S]he rendered herself incapable
`
`of opining on anticipation of the Challenged Claims by asserting, in sworn
`
`testimony in connection with the related district court proceeding, that five terms in
`
`the Challenged Claims were indefinite. Ex. 2007, ¶¶ 37-59.”) (footnote omitted);
`
`see also id. at 30-31 (citing Ex. 2007, Section VII and arguing that Dr. Soljanin’s
`
`April 13, 2008 Declaration (Ex. 2007) as to indefiniteness “essentially disqualifies
`
`here from opining that she finds those same claim elements in the prior art[.]”).
`
`Thus, the portions of Exhibit 2007 cited by Patent Owner should be excluded
`
`under Federal Rules of Evidence (“FRE”) 402 and 403.
`
`2
`
`
`
`Second, Exhibit 2007 is inadmissible hearsay and should be excluded under
`
`FRE 801 and 802. Further, the content of Exhibit 2007 cited by Patent Owner does
`
`not qualify for any exception under FRE 803.
`
`Third, Patent Owner uses Exhibit 2007 to make untimely and waived
`
`objections to Prof. Solanin’s direct testimony (Ex. 1010). See, e.g., Patent Owner
`
`Response at 2, 30-34 (citing Exhibits 2007 and 2008 as basis for disqualifying
`
`Prof. Soljanin’s direct testimony in this IPR). Patent Owner waived any such
`
`objections, which were due within ten business days of the institution of the trial.
`
`See 37 C.F.R. § 42.64(b)(1) (“Any objection to evidence submitted during a
`
`preliminary proceeding must be filed within ten business days of the institution of
`
`trial.”). Thus, Exhibit 2007 should also be excluded under 37 C.F.R. § 42.64(b)(1)
`
`to the extent it is being offered by Patent Owner to make untimely objections to
`
`Prof. Soljanin’s direct testimony.
`
`Petitioners object to Exhibit 2008 (May 9, 2018 Soljain Dep. Tr, in Regents
`
`of the University of Minnesota v. LSI Corporation et al., Case No. 18-cv-00821-
`
`EJD-NMC, Dkt. 204-4 (N.D. Cal.)).
`
`First, Ex. 2008 is irrelevant because indefiniteness is not at issue in this IPR.
`
`See, e.g., Patent Owner response at 2 (“[S]he rendered herself incapable of opining
`
`on anticipation of the Challenged Claims by asserting, in sworn testimony in
`
`3
`
`
`
`connection with the related district court proceeding, that five terms in the
`
`Challenged Claims were indefinite. Ex. 2007, ¶¶ 37-59.”) (footnote omitted); see
`
`also id. at 30-31 (citing Ex. 2007, Section VII and arguing that Dr. Soljanin’s
`
`Declaration as to indefiniteness “essentially disqualifies here from opining that she
`
`finds those same claim elements in the prior art[.]”). Thus, the portions of Exhibit
`
`2008 cited by Patent Owner relating to indefiniteness in the litigation underlying
`
`this IPR should be excluded under FRE 402 and 403.
`
`Second, Exhibit 2008 is inadmissible hearsay and should be excluded under
`
`FRE 801 and 802. Further, the content of Exhibit 2008 cited by Patent Owner does
`
`not qualify for any exception under FRE 803.
`
`Third, Patent Owner uses Exhibit 2008 to make untimely and waived
`
`objections to Prof. Solanin’s direct testimony (Ex. 1010). See, e.g., Patent Owner
`
`Response at 30 (“UMN deposed her in May 2018 on her Litigation Declaration
`
`(Ex. 2008) … Her testimony shows that her opinions in support of Petitioners’
`
`challenges are unreliable and not credible.”); see also id. at 30-34 (citing Exhibits
`
`2007 and 2008 as basis for disqualifying Prof. Soljanin’s direct testimony in this
`
`IPR). Patent Owner waived any such objections, which were due within ten
`
`business days of the institution of the trial. See 37 C.F.R. § 42.64(b)(1) (“Any
`
`objection to evidence submitted during a preliminary proceeding must be filed
`
`within ten business days of the institution of trial.”). Thus, Exhibit 2008 should
`
`4
`
`
`
`also be excluded under 37 C.F.R. § 42.64(b)(1) to the extent it is being offered by
`
`Patent Owner to make untimely objections to Prof. Soljanin’s direct testimony.
`
`Petitioners object to Exhibit 2011 (June 12, 2020 Soljanin Dep. Tr. in
`
`IPR2017-01068).
`
`First, the portions of Ex. 2011 containing discussion of Ex. 2017 or
`
`2018should be excluded for all of the same reasons that Exs. 2017 and 2018 should
`
`themselves be excluded. As explained above, Exs. 2017 and 2018 should be
`
`excluded under FRE 402, 403, 801, 802, and 37 C.F.R. § 42.64(b)(1).
`
`Second, the portions of Exhibit 2011 that contain discussion of 2017 or 2018
`
`should be excluded as outside the scope of Prof. Soljanin’s direct testimony (Ex.
`
`1011). See 37 C.F.R. § 42.53(d)(5)(ii) (“For cross-examination testimony, the
`
`scope of the examination is limited to the scope of the direct testimony.”).
`
`Petitioners object to Exhibit 2027 (Excerpts from K. Ashar, Magnetic Disk
`
`Drive Technology, IEEE Press, 1997). Ex. 2027 is not relevant to claim
`
`construction at least because it was published after the alleged priority date for the
`
`’601 patent. Thus, Ex. 2027 should be excluded under FRE 402 and 403.
`
`5
`
`
`
`Petitioners object to Exhibit 2036 (B. Vasic et al., CRC Press, 2005). Ex.
`
`2036 is not relevant to claim construction at least because it was published after the
`
`alleged priority date for the ’601 patent. Thus, Ex. 2036 should be excluded under
`
`FRE 402 and 403.
`
`Petitioners object to Exhibit 2029 (Excerpts from Merriam-Webster’s
`
`Collegiate Dictionary, 10th Ed., 1996). Ex. 2029 is not relevant to claim
`
`construction because a person of ordinary skill in the relevant art would not
`
`consider a non-technical dictionary in construing the claims. Moreover, Ex. 2029
`
`is not relevant to claim construction because Patent Owner has not shown that it
`
`was published before the alleged priority date for the ’601 patent. For all of these
`
`reasons, Ex. 2029 should be excluded under FRE 402 and 403.
`
`Petitioners object to Exhibit 2017 (McLaughlin Decl.).
`
`First, the McLaughlin Declaration is not relevant, and it is unreliable, to the
`
`extent it relies on Exs. 2027, 2036, and 2029 for claim construction. As explained
`
`above, each of Exhibits 2027, 2036, and 2029 should be excluded. Thus, the
`
`portions of the McLaughlin declaration citing or relying on Exhibits 2027, 2036,
`
`and 2029 for the purposes of claim construction are inadmissible under FRE 402,
`
`403, and FRE 703.
`
`6
`
`
`
`Second, Prof. McLaughlin’s opinion on claim construction is unreliable
`
`because he has not reliably applied the principles and methods of claim
`
`construction to the facts of this case. As a first example, Prof. McLaughlin is
`
`aware of information that is directly inconsistent with his proposed construction of
`
`“transitions,” but Prof. McLaughlin failed to serve that information on Petitioners
`
`under 37 C.F.R. § 42.51(b)(1)(iii). The inconsistent information includes
`
`information from the named inventors of the ’601 patent and the Patent Owner.
`
`Further, he did not disclose such information to the Board in his Declaration, in
`
`contravention of his duty of candor to disclose such information. See id; 37 C.F.R.
`
`§ 1.56. Thus, Prof. McLaughlin’s opinions as to claim construction, and his
`
`opinions as to anticipation based on his proposed construction, should be excluded
`
`as unreliable under FRE 703.
`
`Petitioners object to Exhibit 2016 (Moon Declaration).
`
`First, Ex. 2016 is not relevant, and it is unreliable, to the extent it relies on
`
`Exs. 2027, 2036, and 2029 for claim construction. As explained above, each of
`
`Exhibits 2027, 2036, and 2029 should be excluded. Thus, the portions of the
`
`Moon Declaration citing or relying on Exhibits 2027, 2036, and 2029 for the
`
`purposes of claim construction are inadmissible under FRE 402, 403, and FRE
`
`703.
`
`7
`
`
`
`Second, the Moon declaration is irrelevant and unreliable to the extent it
`
`relies on the proposed construction of “transitions” set forth in the McLaughlin
`
`Declaration (Ex. 2017), and to the extent that it relies on any conclusions as to
`
`anticipation by Prof. McLaughlin premised on his flawed claim construction. See
`
`Exhibit 2016, at e.g., page 13, ¶ 33 (“I have read and reviewed Sections III, IV, V,
`
`and VI of Ex. 2017 and I agree with them and incorporate them herein by reference
`
`in their entirety.”); see also id. at page 35, ¶ 72 (stating that he agrees with and
`
`“incorporate by reference Section IV of Prof. McLaughlin’s declaration”). As
`
`explained above with respect to Ex. 2017, the portions of Prof. McLaughlin’s
`
`Declaration regarding claim construction, and the application of that construction
`
`to anticipation, should be excluded under FRE 402, 403, and 703. Thus, the
`
`portions of Dr. Moon’s Declaration that rely on those portions of Prof.
`
`McLaughlin’s Declaration should be excluded as well. Moreover, Dr. Moon, like
`
`Prof. McLaughlin, was aware of information that directly contradicts Prof.
`
`McLaughlin’s proposed claim construction, yet Dr. Moon did not serve that
`
`information or bring it to the Board’s attention, in contravention of his duty of
`
`candor to do so under 37 C.F.R. § 42.51(b)(1)(iii) and 37 C.F.R. § 1.56. The
`
`inconsistent information includes information from Dr. Moon himself, his co-
`
`inventor, and the Patent Owner.
`
`8
`
`
`
`Dated: July 21, 2020
`
`Respectfully submitted,
`
`
`
`By:
`/s/ Kristopher L. Reed
`Kristopher L. Reed
`Registration No. 58,694
`kreed@kilpatricktownsend.com
`(303)-405-8536
`Edward J. Mayle
`Registration No. 65,444
`tmayle@kilpatricktownsend.com
`(303)-607-3368
`
`KILPATRICK TOWNSEND & STOCKTON
`LLP
`1400 Wewatta St, #600
`Denver, CO 80202
`
`Counsel for Petitioners
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on July 21, 2020, I caused a true and correct copy of the
`foregoing PETITIONERS’ OBJECTIONS TO EXHIBITS PURSUANT TO 37
`C.F.R. § 42.64(b)(1) to be served via electronic mail as agreed by the Patent
`Owner on the following attorneys of record:
`
`Patrick J. McElhinny (Patrick.mcelhinny@klgates.com); and
`Mark G. Knedeisen (mark.knedeisen@klgates.com).
`
`By: /s/ Kristopher L. Reed
`Kristopher L. Reed
`Lead Counsel for Petitioner
`
`10
`
`
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