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`Case No. IPR2017-01393
`U.S. Patent No. 9,055,104
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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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` INTEL CORP., CAVIUM, INC., and DELL INC.,
`Petitioners,
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`v.
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`ALACRITECH, INC.,
`Patent Owner
`________________
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`Case IPR2017-013931
`U.S. Patent No. 9,055,104
`________________
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`Patent Owner’s Opposition to Petitioner’s Motion to Exclude
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`1 Cavium, Inc., which filed Petitions in Cases IPR2017-01714 and IPR2017-01735,
`has been joined as a petitioner in these proceedings. Dell Inc., which filed a
`Petition in Case IPR2018-00336, has been joined as a petitioner in IPR2017-
`01405.
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`06973-00001/10210513.1
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`Case No. IPR2017-01393
`U.S. Patent No. 9,055,104
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`Petitioner’s Motion to Exclude should be denied because 1) Petitioner
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`misapplies 37 C.F.R. § 42.65(a) , 2) Dr. Almeroth disclosed sufficient underlying
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`facts and the bases for all of his opinions in his expert declaration, and 3) Petitioner
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`has not been prejudiced by the allegedly “redundant” paragraphs in Dr. Almeroth’s
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`declaration or during Dr. Almeroth’s deposition.
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`I. Petitioners’ Motion Misapplies the Rules and Case Law
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`Petitioner, relying on 37 C.F.R. § § 42.65(a),argues that “[t]o the extent Dr.
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`Almeroth was merely repeating the statements in the POR or offering opinions
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`without providing the underlying support, Dr. Almeroth’s declaration is entitled to
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`little or no weight.” Petitioner’s Motion to Exclude at 2 (emphasis added).
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`However, as Judge Fishman ruled in Amazon.com, Inc. v. ZitoVault, LLC,
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`“regarding the objections under FRE 702, [the Board] note that under 37 C.F.R. §
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`42.65(a), ‘[e]xpert testimony that does not disclose the underlying facts or data on
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`which the opinion is based is entitled to little or no weight.’ Consequently, this
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`objection more properly goes to the weight to be given [the expert’s] testimony,
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`and not to its admissibility.” Amazon.com, Inc. v. ZitoVault, LLC, IPR2016-00021,
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`Paper 40 at 28. Therefore, Petitioner’s argument regarding weight is not a proper
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`basis for a motion to exclude. See also Fox Factory, Inc. v. SRAM, LLC.,
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`IPR2017-00472, Paper 64 at 54 (“To begin with, we note that the portion of 37
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`C.F.R. § 42.65(a) relied on by Petitioner deals only with the weight that can be
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`given evidence, not its admissibility. Thus, it is not a proper basis for a motion to
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`exclude.”). Because Intel’s motion to exclude is directed to the weight to be given
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`to Dr. Almeroth’s opinions (and not its admissibility) and the Board can make its
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`own determination regarding that weight, Intel’s motion to exclude should be
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`denied.
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`II. Dr. Almeroth Provides Sufficient Underlying Facts
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`Petitioner alleges that Dr. Almeroth “offer[s] opinions without providing the
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`underlying support.” Petitioner’s Motion to Exclude at 2. Petitioner’s allegations
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`are false and contradicted by Dr. Almeroth’s clear and well resonated opinions. Dr.
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`Almeroth provides sufficient underlying facts in his declarations, including the
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`analysis of the relevant portions of the prior art references and deposition
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`testimony of Petitioner’s expert, see Ex. 2026 ¶¶ 84-108, as well as the underlying
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`evidence of secondary considerations, including the license agreements and
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`various publications and articles concerning the patented technology at issue. See
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`Ex. 2026 ¶¶ 110-120. Patent Owner is entitled to reproduce and reference Dr.
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`Almeroth’s opinions and analyses in its briefs, and Petitioner cites no statutory
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`bases or case law prohibiting a party from referencing its own expert’s analyses of
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`the underlying facts. The weight of Dr. Almeroth’s testimony should not be
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`reduced merely because it is also faithfully reproduced in Patent Owner’s briefs.
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`Petitioner’s case law relating to situations where an expert “parrots” or
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`repeats attorney argument “word-for-word” are inapposite and do not support its
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`motion to exclude. Petitioner’s Motion to Exclude at 1-2. First, as discussed
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`above, Petitioner’s complaints go to the weight of Dr. Almeroth’s opinions and not
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`their admissibility. Second, Petitioner misreads (or misinterprets) Patent Owner’s
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`Response. Dr. Almeroth’s opinions do not parrot any attorney argument; rather, as
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`is clear from the liberal use of quotation marks and numerous citations to Dr.
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`Almeroth’s declaration, it is actually Patent Owner’s Response that faithfully
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`reproduces and cited to various portions of the opinions contained in Dr.
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`Almeroth’s declaration.
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`As one example, Patent Owner explains in its Response, “Dr. Almeroth
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`explains that the transmit DMA module refers to the DMA module for transmitting
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`data between the host computer and the network interface device. . . . In this
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`context of the transmit complete interrupt being generated ‘for handling by the
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`interrupt controller in the transmit DMA module,’ the ‘transmit complete interrupt’
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`refers to an interrupt that all the data has been transmitted from the host computer
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`and received by the network interface card—in contrast to data being transmitted
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`by network interface card. (Ex. 2026 at 101.)” Paper 30, p. 34. Because of the
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`express attribution to Dr. Almeroth, the liberal references to Dr. Almeroth’s
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`declaration, and the use of quotation marks, it is clear that: 1) Patent Owner’s
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`Response actually reproduces and references opinions rendered by Dr. Almeroth in
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`his expert declaration and 2) Dr. Almeroth is not simply “parroting” any attorney
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`argument.
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`III. The Deposition Instruction Is Irrelevant
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`Petitioner further argues Dr. Almeroth’s declaration should “be excluded
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`because Patent Owner’s improper instruction not to answer prevented Petitioner
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`from determining the basis for Dr. Almeroth’s report.” Petitioner’s Motion to
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`Exclude at 4. Petitioner does not cite any authority granting a motion to exclude
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`based on deposition instructions. In addition, as admitted by the Petitioner, the
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`question at issue related to “why portions of the Patent Owner’s oppositions were
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`identical to the expert’s purported declaration.” Id. at 3. This question has nothing
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`to do with the “basis” for Dr. Almeroth’s declaration, which counsel for Petitioner
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`explored at length during the deposition. It is clearly directed to the exchange of
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`drafts between counsel and the expert and is specifically formulated to elicit
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`expert-attorney communications, which is privileged. See Fed. R. Civ. P.
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`26(b)(4)(C) (“Rules 26(b)(3)(A) and (B) protect communications between the
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`party’s attorney and any witness required to provide a report under Rule
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`26(a)(2)(B), regardless of the form of the communications.”); Office Patent Trial
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`Practice Guide, Appendix D: Testimony Guidelines, 77 Fed. Reg. at 48, 772-73
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`(“Counsel may instruct a witness not to answer only when necessary to preserve a
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`U.S. Patent No. 9,055,104
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`privilege, to enforce a limitation ordered by the Board, or to present a motion to
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`terminate or limit the testimony.”). Indeed, counsel for Patent Owner permitted Dr.
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`Almeroth to answer a substantially similar question posed shortly prior to the
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`testimony cited in Petitioner’s motion that did not call for expert-attorney
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`communications. Ex. 2018 at 181:20-182:23 (permitting the witness to answer the
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`question “[d]id you copy what the lawyers wrote in the responses, or did they copy
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`you?”). In addition, Patent Owner’s counsel specifically asked Petitioner’s counsel
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`to rephrase the question so as to not implicate any privileged communications, but
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`counsel chose not to do so. Id. at 185:13-23 (“This is [directed to] expert
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`disclosure [to an attorney], so I'm going to instruct the witness not to answer. This
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`is clearly -- this is communication between an expert and his attorney. This is
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`privileged information. If you want to ask him -- can you rephrase the question to
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`not implicate any communications between an expert and the attorney?”).
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`Patent Owner’s instructions did not prevent Petitioner from asking Dr.
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`Almeroth about the basis for any of the opinions contained in his declaration. In
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`fact, a simple way to determine the basis for Dr. Almeroth’s opinions would have
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`been to ask the witness “What are the bases of [certain paragraphs of your
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`declaration]?” Petitioner’s counsel chose not to rephrase his question, despite a
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`suggestion to do so by Patent Owner’s counsel, and thus, cannot claim any
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`prejudice due to his own failure.
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`Case No. IPR2017-01393
`U.S. Patent No. 9,055,104
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`Therefore, Patent Owner requests the Board deny Petitioner’s Motion to
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`Exclude Ex. 2026.
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`Date: June 22, 2018
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` Respectfully submitted,
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`By: /s/ James M. Glass, Reg. No. 46,729
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`Email: jimglass@quinnemanuel.com
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`Lead Attorney for Patent Owner –
`Alacritech, Inc.
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`Case No. IPR2017-01393
`U.S. Patent No. 9,055,104
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certify that Patent
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`Owner’s Opposition to Petitioner’s Motion to Exclude was served on June 22,
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`2018 by filing it through the Patent Review Processing System, as well as by e-
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`mailing copies to:
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`Garland T. Stephens (Reg. No. 37,242)
`garland.stephens@weil.com
`intel.alacritech.ipr@weil.com
`WEIL, GOTSHAL & MANGES LLP
`700 LOUISIANA, SUITE 1700
`HOUSTON, TX 77002-2784
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`Anne M. Cappella (Reg. No. 43,217)
`Adrian Percer (Reg. No. 46,986)
`Jeremy Jason Lang (Reg. No. 73,604)
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3141
`Fax: (650) 802-3100
`anne.cappella@weil.com
`adrian.percer@weil.com
`jason.lang@weil.com
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`Patrick McPherson (Reg. No. 46,255)
`David T. Xue
`Karineh Khachatourian
`DUANE MORRIS LLP
`PDMcPherson@duanemorris.com
`DTXue@duanemorris.com
`karinehk@duanemorris.com
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`Christopher TL Douglas (Reg. No. 56,950)
`Kirk Bradley
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`Case No. IPR2017-01393
`U.S. Patent No. 9,055,104
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`ALSTON & BIRD LLP
`101 South Tryon Street, Suite 4000
`Charlotte, North Carolina 28280
`christopher.douglas@alston.com
`kirk.bradley@alston.com
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`Date: June 22, 2018
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`Respectfully submitted,
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`By: /s/ James M. Glass, Reg. No. 46,729
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`jimglass@quinnemanuel.com
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`Lead Attorney for Patent Owner –
`Alacritech, Inc.
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`06973-00001/10210513.1
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