`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`Patent of PROXYCONN, INC.
`Patent Owner
`_________
`
`
`
`
`
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`IPR2012-00026, IPR2013-00109
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`6,757,717 B1
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`September 16, 1999
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`June 29, 2004
`
`Leonid Goldstein
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`SYSTEMS AND METHODS FOR DATA ACCESS
`
`16502-400002
`
`_____________
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`Cases:
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`Patent No.:
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`Filed:
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`Issued :
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`Inventor:
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`Title:
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`Docket No.:
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`
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`PATENT OWNER’S REPLY TO
`MICROSOFT’S OPPOSITION TO PATENT OWNER’S MOTION
`TO AMEND UNDER 37 C.F.R. § 42.121
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`IPR2012-00026 and IPR2013-00109
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`Substitute Claims 35-41 conform to the rules of 37 C.F.R. §41.121 and are
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`patentable over the grounds of review being considered. Microsoft’s Opposition
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`admits to the patentability of the substitute claims, attempts to improperly inject a
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`new ground of review, and presents argument unsupported by law.
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`Notwithstanding Microsoft’s Opposition, Proxyconn’s Motion to Amend should be
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`granted, or in the alternative, Proxyconn should be permitted to re-file.
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`1.
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`No Ground of Review for Claims 35, 36, 38, 40, and 41 is based on DRP
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`Substitute claims 35, 36, 38, 40, and 41 are amended versions of challenged
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`claims 1, 3, 10, 22, and 23, respectively. Four different grounds of review have
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`been granted for these challenged claims. In its Opposition, Microsoft only argues
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`that the substitute claims are anticipated by Yohe (IPR2012-00026, EX1005). In
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`doing so, Microsoft admits substitute claims 35, 36, 38, 40, and 41 are patentable
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`over Perlman (IPR2012-00026, EX1003), Santos (IPR2012-00026, EX1004), and
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`the combination of Perlman and Yohe. Proxyconn agrees.
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`Microsoft further chides Proxyconn for not distinguishing substitute claims
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`35, 36, 38, 40, or 41 over DRP (IPR2013-00109, EX1003). However, the
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`substitute claims are based on claims 1, 3, 10, 22, and 23, respectively, and these
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`challenged claims are NOT subject to any ground of review based on DRP. By its
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`arguments, Microsoft attempts to inject a new ground of review into the
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`proceeding. Microsoft’s effort to do so is improper.
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`2
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`
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`IPR2012-00026 and IPR2013-00109
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`37 C.F.R. 41.121 states a Motion to Amend may be denied if it “does not
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`respond to a ground of unpatentability involved in the trial.” The only ground
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`involved in the trial and based on DRP is “Anticipation by DRP: claims 6, 7, 9, 11,
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`12, and 14.” See IPR2013-00109, Paper 14. Prior to Microsoft’s Opposition, there
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`had been no argument that claims 1, 3, 10, 22, and 23 are anticipated by DRP.
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`Indeed, there are no claims charts, expert testimony, or other materials submitted
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`by Microsoft to advance such an argument. A ground of review based anticipation
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`of claims 1, 3, 10, 22, and 23 by DRP is not in this proceeding. Proxyconn’s
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`narrowing Motion cannot be an instrument for Microsoft to inject this new ground
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`of review. Microsoft’s arguments regarding DRP and substitute claims 35, 36, 38,
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`40, or 41 should be rejected.
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`2.
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`Dr. Konchitsky is Not an Agent of Proxyconn.
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`Microsoft argues in its Opposition that Proxyconn’s expert is an agent of
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`Proxyconn, and that his testimony, which was beyond the scope of his declaration
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`and objected to by counsel for Proxyconn, constitute admissions of Proxyconn.
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`Microsoft’s position is unsupported by law. See Kirk v. Raymark Indus., Inc., 61
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`F.3d 147 (3d Cir. 1995). Proxyconn has retained and paid Dr. Konchitsky for his
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`testimony. Dr. Konchitsky, however, has not submitted to the control of
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`Proxyconn with respect to the content of his testimony. Dr. Konchitsky has
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`formed and testified to his own opinions. As such, Dr. Konchitsky is not an agent
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`3
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`of Proxyconn, and not empowered to make admissions on behalf of Proxyconn –
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`IPR2012-00026 and IPR2013-00109
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`especially about subjects beyond the scope of his original declaration.
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`Without relying on Dr. Konchitsky’s statement as admissions, Microsoft’s
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`arguments are merely summaries of the art already addressed in Proxyconn’s
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`Motion and IPR Response. See IPR2012-00026, Papers 44 and 45. Microsoft has
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`failed to submit or incorporate any argument from its expert, Dr. Long, regarding
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`patentability of the substitute claims. The substitute claims are patentable, and
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`Microsoft’s arguments to the contrary are unsupported.
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`3.
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`The Form and Content of the Motion to Amend
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`Microsoft argues Proxyconn’s Motion is over-length and contains
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`insufficient substance, citing to Idle Free Systems Inc. v. Bergstrom, Inc. IPR2012-
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`00027, Paper 26 (USPTO PTAB June 11, 2012). Initially, an inadvertent error
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`caused the content of the Motion to extend a few lines onto the 16th page.
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`Proxyconn requests permission to re-file and conform the Motion to the 15-page
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`limit promulgated in 37 C.F.R. §42.24.
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`Further, the Idle Free decision had not yet been rendered when Proxyconn
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`filed its Motion. Consequently, when the Motion was filed, Proxyconn was
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`unaware of that decision or the expectations for certain types of expert support
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`explained therein. Accordingly, to the extent not already consistent with the Idle
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`Free decision, Proxyconn respectfully requests permission to re-file its Motion.
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`
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`4
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`
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`4.
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`IPR2012-00026 and IPR2013-00109
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`Consistent with 37 C.F.R. §42.121(a)(2)(ii), the Substitute Claims do not
`add New Matter or Enlarge the Scope of Any Challenged Claim.
`
`Amendments in the substitute claims are supported at the citations to the
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`‘717 patent provided in the Motion to Amend. In opposing Proxyconn’s Motion,
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`Microsoft creates a requirement that the original specification include verbatim
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`support for any amendment. For example, with respect to substitute claim 35,
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`Microsoft admits the ‘717 patent discloses “beginning a transaction with the
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`receiver sending ‘a request to the sender/computer,’” yet argues this disclosure is
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`insufficient to support “receiver/computer configured to initiate a request for data”
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`as recited in substitute claim 35. Microsoft’s Opposition to Proxyconn’s Corrected
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`Motion to Amend, Paper 48 at p. 2. There is no requirement to have verbatim
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`support, and Microsoft’s attempt to argue such a requirement is unsupported by
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`law. Microsoft levels similar baseless arguments against substitute claims 37-41.
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`Each of the substitute claims is supported by the original ‘717 patent, and
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`Microsoft’s arguments should be rejected.
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`Additionally, Proxyconn has not sought to enlarge the scope of any claim,
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`when properly interpreted in view of the ‘717 patent. For example, with respect to
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`substitute claim 40, Proxyconn amends the claim to recite searching specifically
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`for “each received digital digest,” which is narrower than merely searching
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`generally for data by the digital digest, as is recited by claim 22 (from which it is
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`based). Substitute claim 40 is narrower in all respects as compared to original
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`5
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`
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`claim 22. Microsoft’s argument 36, 38 and 41 are similarly baseless. None of the
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`IPR2012-00026 and IPR2013-00109
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`substitute claims enlarge the scope of claim on which it is based. Microsoft’s
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`arguments should be rejected.
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`5.
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`The Substitute claims are Patentable over the Grounds of Review under
`consideration by the Board
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`With regard to patentability in view of the prior art, the substitute claims are
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`patentable for the reasons explained in its Motion and in Proxyconn’s IPR
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`Response. Briefly, for example, Microsoft pulls apart the computers and
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`operations of Yohe and rearranges them using Proxyconn’s claims as a map. This
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`is improper, because anticipation – the only ground argued by Microsoft – requires
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`the art to not only teach all the elements of the claim, “but also disclose those
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`elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
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`1359, 1369 (Fed. Cir. Oct. 20, 2008). Additionally, Yohe fails to disclose, among
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`other things, (1) a receiver/computer configured to initiate a request for data, (2)
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`storing a digital digest in a permanent storage memory, (3) receiver/computer
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`configured to search for a digital digest, and (4) sending a digital digest in response
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`to a request. And, DRP fails to disclose, among other things, (1) caching computer
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`having means for calculating a digital digest, (2) receiving a response signal, and
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`(3) transmitting a digital digest in response to the request for data. Plainly, Yohe
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`and DRP do not anticipate any of the substitute claims.
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`6
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`
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`Dated: September 23, 2013
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`
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`
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`IPR2012-00026 and IPR2013-00109
`
`
`/Matthew L. Cutler /
`MATTHEW L. CUTLER, Reg. No. 43,574
`BRYAN K. WHEELOCK, Reg. No. 31,441
`DOUGLAS A. ROBINSON, Reg. No. 59,703
`HARNESS, DICKEY & PIERCE, PLC
`7700 Bonhomme Ave., Suite 400
`St. Louis, MO 63105
`Telephone: (314) 726-7500
`Facsimile: (314) 726-7501
`mcutler@hdp.com
`bwheelock@hdp.com
`drobinson@hdp.com
`
`Attorneys for Patent Owner, Proxyconn, Inc.
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`
`7
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`
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`IPR2012-00026 and IPR2013-00109
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`It is hereby certified that on this 23rd day of September, 2013, a copy of the
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`foregoing document was served via FedEx and Electronic Mail upon the following
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`Counsel for Microsoft at the addresses listed below:
`
`John D. Vandenberg
`john.vandenberg@klarquist.com
`Stephen J. Joncus
`stephen.joncus@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center
`Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204-2988
`Tel.: (503) 595-5300
`Fax: (503) 595-5301
`
`
`Attorneys for Petitioner, Microsoft Corporation
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`
`
`
`/Matthew L. Cutler /
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`
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`
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`8
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`
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