`
`By: John D. Vandenberg (Reg. No. 31,312)
`
`john.vandenberg@klarquist.com
`Stephen J. Joncus (Reg. No. 44,809)
`stephen.joncus@klarquist.com
`Salumeh R. Loesch (pro hac vice)
`salumeh.loesch@klarquist.com
`Klarquist Sparkman, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`
`____________
`
`Case IPR2012-00026 (TLG)
`Case IPR2013-00109 (TLG)
`Patent 6,757,717 B1
`
`____________
`
`MICROSOFT CORPORATION’S CORRECTED
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`Pursuant to 37.C.F.R. § 42.64 and the Federal Rules of Evidence, petitioner
`
`Microsoft Corporation (“Microsoft”) moves to exclude patent owner Proxyconn,
`
`Inc.’s (“Proxyconn”) Exhibit Number 2002, the Declaration of Alon Konchitsky
`
`(“Konchitsky’s Declaration” or “Konchitsky Declaration”), submitted in support of
`
`Patent Owner’s Response (corrected version filed on June 20, 2013). Microsoft’s
`
`motion is based on the Federal Rules of Evidence (“FRE”), relevant case law, and
`
`the PTAB’s Rules.
`
`I. MICROSOFT TIMELY OBJECTED
`TO DR. KONCHITSKY’S TESTIMONY
`
`Microsoft timely objected to Exhibit 2002, the Declaration of Alon
`
`Konchitsky. Proxyconn presented this evidence with its Response on May 21,
`
`2013. Microsoft timely objected on May 29, 2013, pursuant to 37 C.F.R. §
`
`42.64(b)(1), identifying the grounds for the objection with sufficient particularity
`
`to allow correction in the form of supplemental evidence. (See Ex. 1027 (copy of
`
`Microsoft’s Objections to Exhibits)1.) Specifically, Microsoft objected to the
`
`admissibility of Dr. Konchitsky’s Declaration because he “is not qualified as an
`
`expert on the matters on which he opines” and his testimony does not satisfy the
`
`requirements of FRE 702(b)-(d). (Ex. 1027 at 1-2.)
`
`
`1 Microsoft also objected to Proxyconn’s Exhibit 2004, in response to which
`Proxyconn submitted supplemental evidence (Exhibit 2005).
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 1
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`Microsoft again raised its objection in its Reply to Patent Owner’s Corrected
`
`Response, filed on August 21, and submitted the 3rd Declaration of Professor
`
`Darrell D. E. Long, Exhibit 1025, which provided further support for Microsoft’s
`
`objections.
`
`II.
`
`PROXYCONN RELIED ON DR. KONCHITSKY’S TESTIMONY
`
`In the Corrected Patent Owner’s Response filed June 20, 2013, Proxyconn
`
`relies on the direct testimony presented in Dr. Konchitsky’s Declaration (Ex. 2002)
`
`and cites to the Declaration throughout its argument (at pages 11-12 and 17-39).
`
`Proxyconn uses the Konchitsky Declaration to support its arguments of what
`
`a person of skill in the art would know (see, e.g., Resp. at 12, 29-30), the teachings
`
`of the prior art and the patent (see, e.g., id. at 17-24, 27-31, 33-35, 37-40), and the
`
`technology generally (see, e.g., id. at 22, 25, 26, 32, 36-37, 39, 43). But, Dr.
`
`Konchitsky is not a person of skill in the art and is not sufficiently familiar with the
`
`technology and field of the art to opine on such matters.
`
`III. DR. KONCHITSKY’S DIRECT
`TESTIMONY SHOULD BE EXCLUDED
`
`Dr. Konchitsky’s direct testimony (Ex. 2002) should be excluded as
`
`inadmissible under FRE 602, 701, and 702 because Dr. Konchitsky is not an expert
`
`in the field and does not have personal knowledge on which to base his testimony.
`
`Further, Dr. Konchitsky’s testimony, even if he is found to be an expert, is
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 2
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`inadmissible because (1) it is not based on “facts or data,” (2) is not the “product of
`
`reliable principles and methods,” and (3) does not show a reliable application of
`
`“principles and methods to the facts of the case.” FRE 702(b)-(d).
`
`A. Dr. Konchitsky Does Not Qualify As An Expert In This
`Field And Does Not Qualify As A Person Of Skill In The Art
`
`Dr. Konchitsky’s CV submitted by Proxyconn explains that he has been an
`
`expert in the fields of “voice technologies, adaptive speech processing, voice
`
`coders, wireless voice communications, portable processing/architecture and
`
`operating systems.” (Ex. 2003 at 1.) His CV also identifies his work experience,
`
`which has been focused on voice communications and mobile and wireless
`
`technologies. In addition, he has done some coding. (Id. at 1-2.) The technology
`
`at issue in this IPR, however, involves generally the sending of data over
`
`communication networks, and more specifically distributed data storage systems
`
`and networking, and code theories and cryptographic hash functions. (See, e.g.,
`
`’717 patent at 1:10-15, 6:24-47.) Dr. Konchitsky is not an expert in this field and
`
`admitted in his deposition that he was unfamiliar with much of the relevant
`
`background and terminology in the field. (Ex. 1024 (Konchitsky Tr., July 2, 2013)
`
`at 145:23-155:2.) Such unfamiliarity with the relevant field is grounds for
`
`excluding his testimony. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550
`
`F.3d 1356, 1361 (Fed. Cir. 2006) (dismissing expert testimony where expert did
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 3
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`not possess “the relevant expertise in the pertinent art”).
`
`Dr. Darrell Long, Microsoft’s expert witness, explains in his declaration (Ex.
`
`1025) that Dr. Konchitsky is not an expert in the field relevant to the ’717 patent
`
`and the prior art in this IPR. Dr. Long’s assessment is based on Dr. Konchitsky’s
`
`testimony that he does not have the common knowledge about HTTP, caching, file
`
`systems, and other topics relevant to this IPR. Further, he has not written on
`
`matters in this field, is not a member of various organizations in this field, and has
`
`not worked in this field. (Id.) In fact, Dr. Konchitsky does not qualify as a person
`
`of skill in the art based on Dr. Long’s definition (Dr. Konchitsky does not provide
`
`a definition of a person of skill in the art). (Id. at 2.) A person of skill in the art
`
`would have had several years of practical experience working in operating
`
`systems, in particular the data storage subsystem (or the equivalent post-graduate
`
`academic work). There is nothing in Dr. Konchitsky’s CV that shows this requisite
`
`practical or educational experience. (Id. at 12.)
`
`
`
`Proxyconn has the burden of establishing that Dr. Konchitsky’s testimony is
`
`admissible based on his “knowledge, skill, experience, training, or education.”
`
`FRE 702; see also Sundance, 550 F.3d at 1361 (placing burden on propounding
`
`party “to explain how [expert] possesses the relevant expertise in the pertinent
`
`art”). Courts determine whether expert testimony is reliable by assessing whether
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 4
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`the expert is qualified in the relevant field. Extreme Networks, Inc. v. Enterasys
`
`Networks, Inc., 395 Fed. App. 709, 715 (Fed. Cir. 2010) (“General experience in a
`
`related field may not suffice when experience and skill in specific product design
`
`are necessary to resolve patent issues.”); Flex-Rext, LLC v. Steelcase, Inc., 455
`
`F3d 1351, 1360-61 (Fed. Cir. 2006) (affirming exclusion of expert’s testimony
`
`where expert did not show that his expertise was in the particular field at issue).
`
`Microsoft challenged Dr. Konchitsky’s expertise in its May 29 Objections (Ex.
`
`1027), during Dr. Konchitsky’s July 2 deposition (Ex. 1024), in its August 21
`
`Reply to Patent Owner’s Response, and in Dr. Long’s August 1 declaration (Ex.
`
`1025). To date, Proxyconn has not come forth with any rebuttal evidence that Dr.
`
`Konchitsky is an expert in the field, showing that he has the requisite “knowledge,
`
`skill, experience, training, or education.” As such, Proxyconn has not met its
`
`burden and Dr. Konchitsky’s testimony is inadmissible.
`
`1.
`
`Dr. Konchitksy Lacks Sufficient
`Knowledge To Testify As An Expert
`
`Dr. Konchitsky is not sufficiently familiar with the technologies at issue in
`
`this IPR to testify as an expert. For example, he is “generally familiar” with but
`
`“would need to read [] again” the GET request in the HTTP protocol. (Ex. 1024 at
`
`22:6-22.) The HTTP protocol is discussed in several of the references at issue in
`
`this IPR (Ex. 1003 at 10; Ex. 1004 at 14:4-5), and is cited prior art to the ’717
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 5
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`patent. An HTTP GET request identifies the desired resource by its URL, and is
`
`basic knowledge that a person of skill in the art in 1998-99 would have known.
`
`(Ex. 1025 at 5.) Yet, Dr. Konchitsky was not familiar enough with any of the
`
`methods of the HTTP protocol, including the GET method, to testify about them.
`
`Dr. Konchitsky “do[es] not recall” the details of caching servers (Ex. 1024 at
`
`110:15-111:12), even though caching servers are a fundamental part of distributed
`
`data storage systems, networking, and the World Wide Web (Ex. 1025 at 6). The
`
`’717 patent discusses “[m]any known applications and protocols … for caching
`
`and verifying of data transmitted via a network.” (’717 patent at 1:18-20.) Dr.
`
`Konchitsky cannot be an expert discussing the ’717 patent when he is unfamiliar
`
`with the basics of the technology at issue.
`
`Likewise, Dr. Konchitsky is unfamiliar with Harvest or Squid web caches
`
`(Ex. 1024 at 150:15-20, 153:11-12.) Both these web caches deal with reducing
`
`network bandwidth consumption, the same subject as the ’717 patent, are cited in
`
`the prior art (Ex. 1004 at 13; Ex. 1010 at 33), and are well-known in the field (Ex.
`
`1025 at 7). Yet, Dr. Konchitsky is unfamiliar with them.
`
`Dr. Konchitsky inaccurately defined NFS and LBFS, and was unfamiliar
`
`with AFS and Sprite. (Ex. 1024 at 150:21-152:5.) NFS, LBFS, and Sprite are data
`
`storage systems with which an expert in the field would be familiar, and AFS has
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 6
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`been required reading in graduate courses in distributed systems and data storage
`
`for over 20 years. (Ex. 1025 at 9.) NFS is the network file system developed by
`
`Sun Microsystems (id.); yet Dr. Konchitsky erroneously testified that it was “one
`
`of those file systems” and that “there has been several of them” (Ex. 1024 at
`
`151:24, 152:4-5). LBFS is a specific network file system developed at MIT (Ex.
`
`1025 at 9); yet Dr. Konchitsky testified that he did not remember the acronym, and
`
`did not know that it was created at MIT (Ex. 1024 at 150:21-22, 151:6-12). AFS is
`
`a seminal distributed network file system developed at Carnegie Mellon (Ex. 1025
`
`at 9-10); yet Dr. Konchitsky knew only that it was “a kind of file system” but did
`
`not know anything else about it (Ex. 1024 at 151:13-18.) Sprite is a distributed
`
`operating system developed at UC Berkeley known for its caching techniques (Ex.
`
`1025 at 10); yet Dr. Konchitsky had not heard of it (Ex. 1024 at 151:19-22).
`
`Dr. Konchitsky misunderstood the Rysnc protocol (Ex. 1024 at 152:6-
`
`153:1), which uses chunk-based encoding to synchronize files over a network
`
`while reducing the consumption of network bandwidth—a technology that an
`
`expert in this field should understand (Ex. 1025 at 10). Dr. Konchitsky
`
`misunderstood Venti (Ex. 1024 at 153:7-10), a single-instance network storage
`
`system that uses hashes of data blocks as the address of the data (Ex. 1025 at 11).
`
`And he misunderstood Ross Williams’s work (Ex. 1024 at 153:23-154:12), which
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 7
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`includes a seminal patent on data deduplication and compression (Ex. 1025 at 11).
`
`Finally, he had not heard of Xdelta (Ex. 1024 at 153:2-4), an open source utility for
`
`computing the differences between files (Ex. 1025 at 10).
`
`Given Dr. Konchitsky’s lack of familiarity and knowledge of this exemplary
`
`list of technologies and systems well-known in the field, it is clear that Dr.
`
`Konchitsky does not have sufficient knowledge to testify as an expert in this field.
`
`2.
`
`Dr. Konchitsky Lacks Sufficient
`Experience To Testify As An Expert
`
`Dr. Konchitsky’s CV shows that he has had experience in “distributed
`
`computing” and “client server” (Exs. 2003 (CV submitted by Proxyconn for this
`
`IPR) and 1022 (publicly-available CV)), but these are broad categories. His
`
`patents, work experience, and writings do not show that he has had any specific,
`
`relevant experience in these categories. (Id.)
`
`Based on what is listed on Dr. Konchitsky’s CV, Dr. Konchitsky does not
`
`have a patent related to data storage, distributed data storage systems and
`
`networking, coding theory, or cryptographic hash functions. (See Exs. 2003, 1022;
`
`see also, Ex. 1025 at 12-13; Ex. 1024 at 149:21-25.) Even more telling, Dr.
`
`Konchitsky’s CV lists his areas of “Expertise,” none of which are relevant to the
`
`’717 patent and the prior art asserted in this IPR. (Ex. 1022 at 1.) Accordingly,
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 8
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`Dr. Konchitsky does not present any experience that would qualify him as an
`
`expert in this field.
`
`B. Dr. Konchitsky Has No Personal
`Knowledge On Which To Base His Testimony
`
`Dr. Konchitsky does not purport to have personal knowledge of the facts
`
`testified to in his Declaration. (See FRE 602, 701.) He was not involved with the
`
`development of any of the prior art and he was not involved with the ’717 patent.
`
`His testimony is introduced solely as expert testimony under FRE 702. As
`
`explained above, Dr. Konchitsky does not qualify as an expert under FRE 702.
`
`C. Dr. Konchitsky’s Testimony
`Does Not Meet The Requirements Of FRE 702
`
`Dr. Konchitsky’s testimony, if used as expert testimony, does not meet the
`
`standards of FRE 702. As explained above, Dr. Konchitsky does not have the
`
`requisite understanding of data storage technologies and systems necessary to
`
`understand the field, prior art references, motivations to combine, and similarities
`
`or differences between references and the ’717 patent. He therefore could not have
`
`“based [his testimony] on sufficient facts or data,” as required by FRE 702(b).
`
`Dr. Konchitsky does not provide any testimony regarding the person of skill
`
`in the art, for example, the experience, education, and skill of a person of skill in
`
`the art. Dr. Konchitsky does not define the field of the invention, beyond this
`
`statement: “The ‘717 Patent relates to data access. As described in the
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 9
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`Background (col. 1, lines 8-26) the problem addressed is a client computer
`
`requesting data from a remote computer.” (Ex. 2002 ¶ 13.) Yet Dr. Konchitsky
`
`testified that he viewed the patent and prior art from the perspective of this
`
`undefined person of ordinary skill in the art in 1998 (see id. ¶¶ 12, 14) and
`
`repeatedly testified as to what a person of skill in the art would understand (see id.
`
`¶¶ 15, 19, 21, 22, 27, 33, 41, 42, 48, 51, 57, 63, 66, 69). Without a definition of a
`
`“person having ordinary skill in the art” and a description of the “art” or field, Dr.
`
`Konchitsky’s testimony does not provide any basis to determine what a person of
`
`skill in the art would have understood: there is no basis on which to identify that
`
`person of skill.2 Thus, there is no way to determine whether Dr. Konchitsky’s
`
`“testimony is the product of reliable principles and methods” under FRE 702(c).
`
`Finally, Dr. Konchitsky did not “reliably appl[y] the principles and methods
`
`to the facts of the case.” FRE 702(d). He did not have a grasp of the basic facts
`
`based on his experience and knowledge in the field of data storage to understand
`
`the art and technology at issue. And he did not define the methods he was using to
`
`define the art and technology because he failed to define the person of skill in the
`
`art. Together and alone, these failures render his opinion inadmissible.
`
`
`2 The definition of a person having ordinary skill in the art is relevant to understanding
`what is claimed in the ’717 patent and a determination of whether the ’717 patent is anticipated
`or rendered obvious by the prior art.
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 10
`
`
`
`IV. CONCLUSION
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`For the reasons set forth above, the Declaration of Alon Konchitsky (Ex.
`
`2002) is inadmissible.
`
`
`
`Dated: October 14, 2013
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/John D. Vandenberg/
`John D. Vandenberg
`Registration No. 31,312
`Stephen J. Joncus
`Registration No. 44,809
`Salumeh R. Loesch
`Pro Hac Vice
`Klarquist Sparkman, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`Microsoft Corporation’s Corrected Motion to Exclude Evidence
`
`Page 11
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that a complete copy of Microsoft Corporation’s
`
`Corrected Motion to Exclude Evidence, was served on the official correspondence
`
`address for the U.S. Patent No. 6,757,717 shown in PAIR and the attorneys of
`
`record for Plaintiff in this proceeding and in the concurrent litigation matter:
`
`MATTHEW L. CUTLER
`BRYAN K. WHEELOCK
`DOUGLAS A. ROBINSON
`HARNESS, DICKEY & PIERCE, PLC
`7700 BONHOMME, SUITE 400
`ST. LOUIS, MO 63105
`
`via EMAIL on October 14, 2013, and EXPRESS MAIL on October 15, 2013.
`
`
`
`
`
`By /John D. Vandenberg/
`
`John D. Vandenberg, Reg. No. 31,312
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
`
`