Trials@uspto.gov
`571-272-7822
`
` Paper No: 65
` Entered: November 1, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`____________
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and MITCHELL G.
`WEATHERLY, Administrative Patent Judges.
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`ORDER
`Decision on Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
` Paper No: 65
` Entered: November 1, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`____________
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and MITCHELL G.
`WEATHERLY, Administrative Patent Judges.
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`ORDER
`Decision on Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`Petitioner, Microsoft Corporation, moves under 37 C.F.R. § 42.64(c) to
`
`exclude the direct testimony of Patent Owner’s technical expert, Dr. Alon
`
`Konchitsky. Paper 56 (“Motion”). The declaration of Dr. Konchitsky (Ex. 2002)
`
`is proffered by Patent Owner, Proxyconn, Inc., under Fed. R. Evid. 702. Patent
`
`Owner opposes the motion. Paper 62 (“Opposition”). For the following reasons,
`
`Petitioner’s motion is denied.
`
`DISCUSSION
`
`The gist of Petitioner’s motion is that Dr. Konchitsky is not an expert in the
`
`pertinent technical field and that he lacks personal knowledge on which to base his
`
`testimony. Motion 2. Dr. Konchitsky’s qualifications are summarized in his
`
`curriculum vitae. Ex. 2003. He holds a PhD in electrical engineering, has served
`
`as an expert witness and consultant in various patent matters, held technical and
`
`managerial positions with several communications companies, including Nokia
`
`Mobile Phone & Radio Frequency Co., is a member of many technical and
`
`professional organizations, including IEEE, and named as an inventor on a large
`
`number of U.S. patents.
`
`Petitioner contends that Dr. Konchitsky is unqualified to provide expert
`
`testimony under Fed. R. Evid. 702 because his experience is concentrated in the
`
`field of communications technology (voice, mobile, and wireless). Motion 3.
`
`
`
`2
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`Petitioner contends that the ʼ717 patent1 at issue in this proceeding, in contrast,
`
`“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.” Id. Petitioner contends that Dr. Konchitsky is not
`
`an expert in this field.
`
`Petitioner also contends that Dr. Konchitsky lacks sufficient personal
`
`knowledge of certain matters, including those described at pages 5–8 of its motion.
`
`These include the HTTP protocol’s “GET” request, the details of caching servers,
`
`the “Harvest” and “Squid” web caches, various network file systems, and utilities
`
`for computing differences between files. Id. at 5–8.
`
`Patent Owner responds that Dr. Konchitsky’s training and experience
`
`qualify him to testify under Rule 702. Opposition 2. Patent Owner points to Dr.
`
`Konchitsky’s experience in the field of communications networks. Id. According
`
`to Patent Owner, this is relevant to the technology of the ʼ717 patent, which
`
`describes the field of the invention as being addressed to “increasing the speed of
`
`data accessing in communication networks.” Opposition 3, quoting ʼ717 patent,
`
`col. 1, lines 10–15.
`
`
`1 U.S. Patent 6,757,717.
`
`
`
`3
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`Patent Owner further responds that Dr. Konchitsky’s supposed lack of
`
`knowledge of certain matters (e.g., the HTTP “GET” request) is no proper basis for
`
`excluding his testimony. Opposition 9–14. According to Patent Owner, Dr.
`
`Konchitsky adequately answered the questions posed to him by Petitioner at his
`
`deposition, testing his knowledge of certain specifics. Id. In any event, according
`
`to Patent Owner, the questions posed to Dr. Konchitsky at his deposition were not
`
`“tied to the ʼ717 patent, or the field of invention, as defined by [Petitioner].”
`
`Opposition 9.
`
`We agree with Patent Owner that Dr. Konchitsky’s testimony should not be
`
`excluded. Dr. Konchitsky’s qualifications and experience are sufficient to qualify
`
`him as an expert in the pertinent field under Rule 702. Petitioner’s own general
`
`description of the relevant field (communication networks), as well as the
`
`description in the ʼ717 patent, are broad enough to encompass Dr. Konchitsky’s
`
`qualifications. In any case, there is no requirement of a perfect match between the
`
`expert’s experience and the field of the patent. See SEB S.A. v. Montgomery Ward
`
`& Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). We conclude, therefore, that Dr.
`
`Konchitsky’s testimony is likely to assist the Board in determining the issues in
`
`this proceeding.
`
`
`
`4
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`Finally, we agree with Patent Owner that Petitioner’s list of alleged
`
`insufficiencies in Dr. Konchitsky’s personal knowledge are an insufficient basis to
`
`exclude his testimony. At best, these go to the weight of his testimony, and not its
`
`admissibility.
`
`In view of the foregoing, it is hereby
`
`ORDERED that Petitioner Microsoft Corporation’s Corrected Motion to
`
`Exclude Evidence (Paper 56) is denied.
`
`For Patent Owner
`
`Matthew L. Cutler
`Harness, Dickey & Pierce, PLC
`mcutler@hdp.com
`
`Bryan K. Wheelock
`Harness, Dickey & Pierce, PLC
`bwheelock@hdp.com
`
`Douglas A. Robinson
`Harness, Dickey & Pierce, PLC
`drobinson@hdp.com
`
`For Petitioner
`
`John D. Vandenberg
`Klarquist Sparkman LLP
`john.vandenberg@klarquist.com
`
`Stephen J. Joncus
`Klarquist Sparkman LLP
`stephen.joncus@klarquist.com
`
`
`
`5
`
`
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