`
`Filed on behalf of Proxyconn, Inc.
`By:
`
`Matthew L. Cutler (mcutler@hdp.com)
`
`
`Bryan K. Wheelock (bwheelock@hdp.com)
`
`
`Douglas A. Robinson (drobinson@hdp.com)
`
`
`Harness, Dickey & Pierce, PLC
`
`
`7700 Bonhomme Ave., Suite 400
`
`
`St. Louis, MO 63105
`
`
`Tel: (314) 726-7500
`
`
`Fax: (314) 726-7501
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v .
`
`PROXYCONN, INC.
`Patent Owner
`
`_____________
`
`Case IPR2012-00026, IPR2013-00109
`Patent 6,757,717 B 1
`_____________
`
`PATENT OWNER’S MOTION TO
`EXCLUDE DEPOSITION TESTIMONY
`
`
`
`
`
`IPR2012-00026 and IPR2013-00109
`
`Petitioner Microsoft Corp. (“Microsoft”) has relied upon deposition testimony
`
`from Dr. Alon Konchitsky, an expert witness retained by Patent Owner Proxyconn,
`
`Inc. (“Proxyconn”). Proxyconn now moves to exclude certain portions of that
`
`testimony because it was elicited during improper cross-examination. See 37 C.F.R.
`
`§ 42.64(c).
`
`Specifically, Dr. Konchitsky submitted direct testimony in the form of a
`
`declaration (Ex. 2002). His direct testimony was directed to the issue of
`
`differences between the Original Claims and the prior art relied on in the Grounds
`
`for rejection. See, e.g., Ex. 2002 at ¶¶ 16, 20, 23 (regarding the Perlman
`
`reference), 29, 30, 37 (Yohe), 46 (Perlman and Yohe), 47, 50 (Santos), 53, 56, 58
`
`60 (DRP), and 67–68 (Mattis).
`
`At his deposition, though, Microsoft repeatedly questioned Dr. Konchitsky
`
`about claim construction issues that are unrelated to his declaration opinions, and
`
`thus outside the scope of direct testimony. That questioning thus violated 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”). Proxyconn timely
`
`objected to each improper question during the deposition in accordance with
`
`§ 41.155(a), and now moves to exclude the inadmissible testimony upon which
`
`Petitioner Microsoft relies.
`
`2
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`
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`IPR2012-00026 and IPR2013-00109
`
`Patent Owner now moves to exclude the following portions of Exhibit 1024
`
`that reflect testimony outside the scope of Dr. Konchitsky’s direct testimony
`
`(citing to page and line numbers of the deposition transcript).
`
`Ex. 1024, Transcript (“Tr.”) at 36:11–16, 41:23–43:2, 43:14–44:17, 47:25–
`
`49:7, 54:4–12, and 67:7–12
`
`
`
`As shown below, each of these passages of Microsoft’s Exhibit 1024 reflects
`
`testimony on issues not addressed in Dr. Konchitsky’s declaration, and thus,
`
`outside the scope of his direct testimony
`
`1. Ex. 1024, Tr. at 36:11–16
`
`For context, the reference to “lines 65 and 66 and 67” in the preceding passage
`
`refers to column 7 of the ‘717 patent (Ex. 1002) that is subject to this proceeding.
`
`
`
`3
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`
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`IPR2012-00026 and IPR2013-00109
`
`Nowhere in Dr. Konchitsky’s declaration does he address the issue of whether the
`
`‘717 patent’s claims require a request for “particular” data. Rather, this issue of
`
`claim construction and specification support is outside the scope of his direct
`
`testimony, and Microsoft’s deposition questioning on this topic should be excluded
`
`pursuant to 37 C.F.R. § 42.53(d)(5)(ii).
`
`2. Ex. 1024, Tr. at 41:23–43:2
`
`(continued on next page)
`
`
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`4
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`IPR2012-00026 and IPR2013-00109
`IPR2012—00026 and IPR2013—00109
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`HR. HHEELOCK: Objection.
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`Form and scope.
`
`THE WITNESS:
`
`I don't think so.
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`BY MR. VANDENBERG:
`
`Q.
`
`Does the '717 patent describe any scheme for
`
`storing data without duplication?
`
`A.
`
`Um -—
`
`HR. WHEELOCK: Objection.
`
`Form and scope.
`
`THE HITNESS: Again, could you be more specific
`
`because, again, you took a general data structure,
`
`like
`
`linked list or binary tree,
`
`that to my best education,
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`experience, actual implementations I've done in the
`
`past, that's not relevant to the system,
`
`to the
`
`mechanism,
`
`to the technique that is described here in
`
`'717.
`
`I don't see how they are even related because
`
`here, it describes a way to go from transferring
`
`information from one place to another, based on
`
`particular procedure of calculating digital digest or -—
`
`or calculating some information on the data, based on
`
`particular or maybe method or state machine.
`
`And the way that the data is organized or the
`
`way that the data -- that the machine or that the
`
`equipment is accessing the memory, that's -- that's
`
`very -- that is an element,
`
`that like saying if the car
`
`is driving, so it goes from one place to another, and
`
`that's what it is.
`
`So I do not recall a particular
`
`technique to access this data in memory.
`
`
`
`Page 42
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`
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`5
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`IPR2012-00026 and IPR2013-00109
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`
`
`Dr. Konchitsky’s direct testimony did not concern data storage “structure” or
`
`“schemes” in the context of the ‘717 patent; rather, as reflected in the testimony
`
`above, Dr. Konchitsky’s declaration addressed the data transfer teachings of the
`
`‘717 patent. Thus, Microsoft’s questioning on storage structures or schemes was
`
`outside the scope of direct testimony, and should be excluded pursuant to 37
`
`C.F.R. § 42.53(d)(5)(ii).
`
`3. Ex. 1024, Tr. at 43:14–44:17, 47:25–49:7, and Tr. 54:4–12
`
`Microsoft also improperly questioned Dr. Konchitsky concerning the ‘717
`
`patent’s teachings on search strategies:
`
`43:14–44:17
`
`
`
`6
`
`
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`IPR2012-00026 and IPR2013-00109
`IPR2012—00026 and IPR2013—00109
`
`sort,
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`that is a search because that's a -- that is
`
`telling whether the information or the data is there or
`
`not.
`
`So in some way or form,
`
`that is a search.
`
`BY MR. VANDENBERG:
`
`Q.
`
`So checking whether or not particular data is
`
`in a particular location is a form of search; is that
`
`what you're saying?
`
`HR. HHEELOCK: Objection to scope.
`
`THE WITNESS: Again, I didn't say "'location'"I or
`
`"particular 10cation.’I
`
`I just said, "digest," “digital
`
`digest,‘ that are calculated on data,
`
`in that sense,
`
`that is a kind of a search because it says, if this data
`
`is there or not.
`
`So you can call it search, unless you
`
`would -- how would you define 'search'? I would say it
`
`this way. Or if you would please define “search" and
`
`I'll show that is what I meant in this particular
`
`digital digest.
`
`
`
`***
`***
`
`47:25–49:7
`4725—4917
`
`Q.
`
`Is that step the same step that we just read in
`
`Page 47
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`IPR2012-00026 and IPR2013-00109
`IPR2012—00026 and IPR2013—00109
`
`1
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`the text, namely,
`
`the receiver/computer searching its
`
`network cache memory for data with the same digest?
`
`HR. WHEELOCK: Objection as to scope.
`
`Go ahead.
`
`THE HITNESS: Yes,
`
`this is part of it. This is
`
`part of it. And again, I'm not talking about search
`
`that is similar to Google search.
`
`I'm talking about
`
`'search' as it is defined here, for data with the same
`
`digest.
`
`BY MR. VANDENBERG:
`
`Q.
`
`So when it says, search for data with the same
`
`digest,
`
`the drawing, figure 5, refers to that as, ”Check
`
`for digest in cache'; correct?
`
`HR. WHEELOCK: Objection as to scope.
`
`THE WITNESS: That's part of it. That's part
`
`of the overall search procedure because it starts with
`
`the digital digest, which is -- that is a part of the
`
`search, and check if this digest is in the cache, and
`
`then issue a response for yes or no.
`
`So all of that together, all of those, that is
`
`called submodules or commands or sublogs would be
`
`building up together this search function that is
`
`mentioned.
`
`BY MR. VANDENBERG:
`
`Q.
`
`Now,
`
`the digest that has been sent and that the
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`IPR2012-00026 and IPR2013-00109
`
`***
`
`54:4–12
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`
`
`
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`
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`As with storage structures or schemes, Dr. Konchitsky’s declaration did not
`
`address the ‘717 patent’s teachings on how (or if) the ‘717 teaches how to “search”
`
`for data. Thus, Microsoft’s questioning on this topic goes beyond the scope of his
`
`direct testimony and should be excluded pursuant to 37 C.F.R. § 42.53(d)(5)(ii).
`
`
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`9
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`
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`4. Ex. 1024, Tr. 67:7–12
`
`IPR2012-00026 and IPR2013-00109
`
`
`
`Dr. Konchitsky’s declaration does not address the function of a “comparison
`
`means.” Thus, this questioning pertains to claim scope issues that are outside the
`
`scope of direct testimony, and should therefore be excluded pursuant to 37 C.F.R.
`
`
`
`§ 42.53(d)(5)(ii).
`
`Conclusion
`
`The Board should exclude evidence secured through improper cross-
`
`examination, including Dr. Konchitsky’s answers to questions that were outside
`
`the scope of his direct testimony, as shown above.
`
`Statement Regarding Fees
`
`No fees are required for filing this motion; however, the Commissioner is
`
`authorized to charge any additional fees that may be required, or to credit any
`
`overpayment, to Harness, Dickey & Pierce, Deposit Account No. 08-0750.
`
`10
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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.
`
`
`Dated: October 14, 2013
`
`
`
`
`
`
`11
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`
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`IPR2012-00026 and IPR2013-00109
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
`
`It is hereby certified that on this 14th day of October, 2013, a copy of the
`
`foregoing document was served via FedEx upon the following, with a courtesy
`
`copy also sent to the email 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
`
`
`/Matthew L. Cutler /
`
`
`
`12
`
`
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