`571-272-7822
`
`
` Paper No: 66
` 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
`
`
`Patent Owner, Proxyconn, Inc., moves to exclude certain cross-examination
`
`testimony of its technical expert, Dr. Alon Konchitsky. Paper 59 (“Motion”).
`
`Petitioner, Microsoft Corporation, opposes the motion. Paper 60 (“Opposition”).
`
`For the following reasons, Patent Owner’s motion is denied.
`
`DISCUSSION
`
`Patent Owner alleges that the testimony it seeks to exclude was elicited
`
`during “improper cross-examination.” Motion 2. Petitioner contends that in cross-
`
`examining Dr. Konchitsky, Patent Owner’s counsel exceeded the scope of direct
`
`examination by questioning the expert witness about claim construction opinions
`
`“unrelated” to the opinions expressed in his declaration (Ex. 2002). Id. Patent
`
`Owner points to six instances of such testimony. Id. at 3-10.
`
`Petitioner responds that Patent Owner opened the door to such cross-
`
`examination by eliciting testimony from Dr. Konchitsky on claim scope and claim
`
`construction. Opposition 1. In particular, Petitioner contends that in
`
`distinguishing challenged claims of the ʼ717 patent1 from certain prior art, Dr.
`
`Konchitsky took positions on the meaning of certain terms in the claims that
`
`opened him to cross-examination on those matters. Petitioner points to the terms
`
`“search” (identified with five of the deposition excerpts Petitioner seeks to
`
`exclude), and “data access” (identified with the sixth excerpt). Id. at 1, 4.
`
`We agree with Petitioner that Dr. Konchitsky’s testimony should not be
`
`excluded. We have reviewed the excerpts and conclude that they are related
`
`sufficiently to the subject matter of Dr. Konchitsky’s direct testimony, concerning
`
`the relation of the ʼ717 patent claims to the prior art, to make them fair game for
`
`cross-examination. Dr. Konchitsky’s testimony that certain prior art does not
`
`
`1 U.S. Patent 6,757,717.
`
`
`
`2
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`disclose certain steps such as “search,” opened him to cross-examination on the
`
`meaning he attaches to those terms.
`
`Patent Owner, in reply, asserts that because Dr. Konchitsky’s direct
`
`testimony “did not address claim construction,” the motion should be granted.
`
`Paper 64 (“Reply”). We disagree with this characterization of the direct testimony.
`
`Dr. Konchitsky necessarily construed the claims in opining on whether certain
`
`claim elements are disclosed in the prior art. Petritioner was entitled to explore
`
`those opinions fully on cross-examination, including questioning the expert on the
`
`constructions he applied. Patent Owner, likewise, had the opportunity to conduct
`
`further examination as necessary on redirect.
`
`Patent Owner’s reliance (Reply 2-3) on a Mobile Hi-Tech Wheels v. CIA
`
`Wheel Group, 514 F.Supp.2d 1172 (C.D. Cal. 2007), is misplaced. The issue
`
`before the district court there was not the proper scope of cross-examination. The
`
`case concludes, instead, that the jury was not confused by the testimony of a
`
`witness (the plaintiff’s vice president, Mr. Pruden) concerning the development of
`
`the patented design. Id. at 1192. The court concluded that the witness’ description
`
`of the design did not constitute a “claim construction.” Id. at 1193. It is not clear
`
`from the decision whether Mr. Pruden was testifying as an expert. In any event,
`
`the testimony quoted in the decision is not comparable to the expert opinions
`
`provided by Dr. Konchitsky on direct. Further, the decision says nothing about
`
`limiting the scope of Mr. Pruden’s cross-examination.
`
`In summary, the fact that Dr. Konchitsky did not expressly render claim
`
`construction opinions on direct does not preclude cross-examination on that topic,
`
`given the nature of the opinions that he expressed on direct.
`
`
`
`
`
`3
`
`
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`
`
`In view of the foregoing, it is hereby
`
`ORDERED that Patent Owner’s Motion to Exclude Deposition Testimony
`
`(Paper 59) 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
`
`
`
`4
`
`
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