Filed on behalf of Microsoft Corporation
`
`By: John D. Vandenberg (Reg. No. 31,312)
`
`john.vandenberg@klarquist.com
`Stephen J. Joncus (Reg. No. 44,809)
`stephen.joncus@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 OPPOSITION TO PATENT
`OWNER’S MOTION TO EXCLUDE DEPOSITION TESTIMONY
`
`
`
`By: John D. Vandenberg (Reg. No. 31,312)
`
`john.vandenberg@klarquist.com
`Stephen J. Joncus (Reg. No. 44,809)
`stephen.joncus@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 OPPOSITION TO PATENT
`OWNER’S MOTION TO EXCLUDE DEPOSITION TESTIMONY
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent No. 6,757,717
`
`
`Petitioner opposes Patent Owner’s motion to exclude six excerpts of Dr.
`
`Konchitsky’s cross-examination testimony “about claim construction issues” (Dkt.
`
`No. 59, p. 2), and requests that the Board deny the motion in its entirety.
`
`When a witness testifies on direct that a prior art reference lacks a certain
`
`element of a patent claim, and bases that testimony on an incorrect construction of
`
`the claim language, that opens the door to cross examination on the correct
`
`construction of that claim language. That indisputable proposition defeats Patent
`
`Owner’s motion to exclude.
`
`“Search”
`
`Original claim 22 recites “searching for data with the same digital digest in
`
`said network cache memory.” Five of the six cross-examination excerpts Patent
`
`Owner moves to exclude concern the meaning of “search” in this patent. (Ex.
`
`1024, 41:23–43:2, 43:14–44:17, 47:25–49:7, 54:4–12, 67:7–12.)
`
`On direct, Dr. Konchitsky repeatedly testified that certain prior art did not
`
`disclose this “search” step. (Ex. 2002, ¶¶ 23, 37, 38, 39, 43, 45, 50 and 51.) In this
`
`testimony, he presumed and implied a narrow meaning of “search” in this patent.
`
`For example, he testified that “Perlman does not disclose the step of searching for
`
`data with the same digital digest in the network cache memory as required by
`
`Original Claims 22-24. In Perlman the receiving routers receive an identifier and
`
`each simply compares the received identifier with its existing identifier. The
`
`MICROSOFT’S OPPOSITION TO PROXYCONN’S
`MOTION TO EXCLUDE DEPOSITION TESTIMONY
`
`Page 1
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent No. 6,757,717
`
`
`receiving routers are not searching for data files using the identifier as the key, or
`
`among multiple identifiers.” (Ex. 2002, ¶ 23.) This construes “search” in this
`
`patent as excluding looking for a desired item by comparing its unique identifier
`
`with the unique identifier of an already possessed item. Dr. Konchitsky rendered
`
`similar opinions about this “search” step, and prior art supposedly lacking this
`
`“search” step, in paragraphs 37, 38, 39, 43, 45, 50 and 51of his direct testimony, as
`
`well. (Ex. 2002.) Each presumed a narrow construction of “search.”
`
`Dr. Konchitsky also implied that his presumed constructions of claim scope,
`
`which he necessarily used to compare the claims to the prior art, were based on his
`
`understanding of the patent’s disclosure: “I have read U.S. Patent No. 6,757,717
`
`(the “’717 Patent”). . . . I have considered the patent's disclosures from the
`
`perspective of a person of ordinary skill in the art in 1998.” (Ex. 2002, ¶ 12.)
`
`As noted, five of the six challenged cross-examination excerpts address this
`
`exact same issue, namely, the meaning of “search” in this patent. (Ex. 1024,
`
`41:23–43:2, 43:14–44:17, 47:25–49:7, 54:4–12, 67:7–12.) More specifically,
`
`Petitioner obtained and cited that cross-examination testimony to undermine Dr.
`
`Konchitsky’s above-identified direct-examination testimony, by showing that
`
`“search” in this patent does not have the narrow meaning he presumed on direct.
`
`For example, Petitioner’s Reply cites two of the challenged excerpts from Dr.
`
`Konchitsky’s cross examination in support of this point: “Patent Owner implies
`
`MICROSOFT’S OPPOSITION TO PROXYCONN’S
`MOTION TO EXCLUDE DEPOSITION TESTIMONY
`
`Page 2
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent No. 6,757,717
`
`
`that ‘search’ requires more than one digest-to-digest comparison operation (POR,
`
`pp. 20, 27)—but nothing in the patent so defines ‘search.’ (See Konchitsky TR
`
`54:4-12 (’717 patent does not require as part of the search looking at multiple
`
`digest values stored at receiver), 67:7-12).” (Dkt. No. 46, p. 4.)
`
`In part, Petitioner established through this cross examination that the
`
`intrinsic evidence of the patent’s disclosure does not support the narrow
`
`construction of “search” that Dr. Konchitsky had presumed on direct: “Not only
`
`does the ’717 patent not require the specific type of search Patent Owner assumes,
`
`it does not even describe such a search. The patent discloses no particular search
`
`algorithm or mechanism at all—beyond comparing two digest values for a match.
`
`(Cf. Konchitsky TR 41:23-43:7).” (Dkt. No. 46, p. 4.) As noted, Dr. Konchitsky
`
`purported to base his opinions on his understanding of the patent’s disclosure (Ex.
`
`2002, ¶ 12), opening up the door to cross examination on that understanding.
`
`After explaining the correct construction of “search,” and how Dr.
`
`Konchitsky’s cross examination supports that correct construction, Petitioner then
`
`explained how the prior art references disclosed the “search” step as that term is
`
`properly construed. For example, “Patent Owner’s first attempted distinction
`
`(POR, p. 19) rests on its incorrect construction of ‘data access,’ and its second
`
`alleged distinction (id., p. 20) rests, in part, on its incorrect construction of
`
`‘search.’” (Dkt. No. 46, p. 10.) Similarly, “Patent Owner’s attempted distinction
`
`MICROSOFT’S OPPOSITION TO PROXYCONN’S
`MOTION TO EXCLUDE DEPOSITION TESTIMONY
`
`Page 3
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`
`
`IPR2012-00026 and IPR2013-00109
`Patent No. 6,757,717
`
`
`over Yohe rests entirely on its incorrect construction of search.’ (POR, pp. 27,
`
`32).” (Dkt. No. 46, p. 11.)
`
`In sum, the challenged cross-examination testimony about “search” directly
`
`refuted Dr. Konchitsky’s direct-examination testimony about “search” and
`
`therefore fell squarely within the scope of direct.
`
`“Data Access”
`
`
`
`The sixth challenged cross-examination excerpt (Ex. 1024, 36:11-16)
`
`concerns the meaning of “data access” in the claims. This testimony is admissible
`
`for the same reasons stated above for the “search” related testimony.
`
`“Data access” appears in several challenged claims. For example, claim 11
`
`recites “A method performed by a sender/computer in a packet-switched network
`
`for increasing data access, . . . .” On direct, Dr. Konchitsky testified that certain
`
`prior art failed to disclose this “data access” element, based on his presumed,
`
`narrow construction of the term. (Ex. 2002, ¶¶ 13, 15, 16, 19, 40.) For example,
`
`he testified: “In my opinion Perlman solves a different problem than the system of
`
`'717 Patent claims 1 and 3 or the method of claims 22-24, because Perlman
`
`involves database synchronization by keeping all computers up to date. Where the
`
`'717 Patent provides a data access response to request-for-information at a
`
`receiver-computer.” (Ex. 2002, ¶ 16.) Elsewhere, he seems to construe the claims
`
`as requiring a “specific request,” and distinguishes prior art on this basis. (Ex.
`
`MICROSOFT’S OPPOSITION TO PROXYCONN’S
`MOTION TO EXCLUDE DEPOSITION TESTIMONY
`
`Page 4
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent No. 6,757,717
`
`
`2002, ¶ 40.) Thus, he construed “data access” narrowly to require a receiver to
`
`request the specific data in question.
`
`Petitioner cross examined Dr. Konchitsky on this claim-construction issue,
`
`to undermine his presumed construction and thereby undermine his opinions based
`
`on this presumed construction. Specifically, on cross examination, he conceded
`
`that in this patent a sender may “push” the accessed data to the receiver without a
`
`request for that data from the receiver. (Ex. 1024, 36:11-39:17, 69:21-24, 71:8-
`
`22.) This refutes his direct testimony on this claim term. Patent Owner’s motion
`
`to exclude part of this testimony should be denied because the testimony directly
`
`refutes Dr. Konchitsky’s direct testimony and thus is squarely within the scope of
`
`that direct.
`
`Dated: October 17, 2013
`
`
`
`Respectfully submitted,
`
`
`
`
`/John D. Vandenberg/
`John D. Vandenberg, Reg. No. 31,312
`Stephen J. Joncus, Reg. No. 44,809
`Klarquist Sparkman, LLP
`121 S.W. Salmon Street, Suite 1600
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`MICROSOFT’S OPPOSITION TO PROXYCONN’S
`MOTION TO EXCLUDE DEPOSITION TESTIMONY
`
`Page 5
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent No. 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
`
`Opposition to Patent Owner’s Motion to Exclude Deposition Testimony was
`
`served on the attorneys of record for the Patent Owner in this proceeding:
`
`MATTHEW L. CUTLER
`BRYAN K. WHEELOCK
`DOUGLAS A. ROBINSON
`HARNESS, DICKEY & PIERCE, PLC
`7700 BONHOMME, SUITE 400
`ST. LOUIS, MO 63105
`
`via EXPRESS MAIL, on October 17, 2013.
`
`
`
`
`
`By: /John D. Vandenberg/
`John D. Vandenberg, Reg. No. 31,312
`Klarquist Sparkman, LLP
`121 S.W. Salmon Street, Suite 1600
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
`
`
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