Trials@uspto.gov
`571-272-7822
`
` Paper 25
`Entered: June 20, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`An initial conference call in the above proceeding was held on June
`
`18, 2013 between respective counsel for Petitioner and Patent Owner, and
`
`Judges Lee, Chang, and Arbes. The purpose of the call was to discuss any
`
`proposed changes to the Scheduling Order (Paper 19) and any motions the
`
`
`571-272-7822
`
` Paper 25
`Entered: June 20, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`An initial conference call in the above proceeding was held on June
`
`18, 2013 between respective counsel for Petitioner and Patent Owner, and
`
`Judges Lee, Chang, and Arbes. The purpose of the call was to discuss any
`
`proposed changes to the Scheduling Order (Paper 19) and any motions the
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`parties intend to file. Prior to the call, Petitioner and Patent Owner filed lists
`
`of proposed motions (Papers 22 and 23). The following issues were
`
`discussed during the call.
`
`
`
`Schedule
`
`The parties indicated that they do not have any issues with the
`
`Scheduling Order, subject to the Board’s decision on Petitioner’s request for
`
`rehearing (Paper 20) and any motions for joinder that may be filed.
`
`Petitioner’s request will be decided in due course and no motions for joinder
`
`have yet been filed. Patent Owner also indicated that it opposes Petitioner’s
`
`rehearing request and is prepared to brief the issues contained therein if
`
`desired by the Board. No further briefing is authorized.
`
`
`
`Motion to Submit Supplemental Information
`
`Petitioner stated that it may want to submit supplemental information,
`
`specifically an additional declaration from Dr. George A. Zimmerman
`
`regarding the “low level current” limitation of the claims. Petitioner’s
`
`request is only speculative at this point. Petitioner further did not explain
`
`sufficiently during the call why it believes supplemental information is
`
`warranted under the circumstances or why such information could not have
`
`been presented earlier with its Petition. Thus, Petitioner is not authorized at
`
`this time to file a motion to submit an additional declaration from Dr.
`
`Zimmerman as supplemental information under 37 C.F.R. § 42.123(a).
`
`
`
`
`
`2
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`Discovery Motions
`
`Petitioner argued that certain materials, including (1) documents
`
`showing allegedly inconsistent claim interpretations proposed by Patent
`
`Owner in previous litigations involving the challenged patent, and (2)
`
`statements made by Patent Owner’s Chief Executive Officer, are subject to
`
`routine discovery under 37 C.F.R. § 42.51(b)(1) and should be produced by
`
`Patent Owner. Petitioner also argued that should the materials not be
`
`considered routine discovery, Petitioner would seek them as additional
`
`discovery under 37 C.F.R. § 42.51(b)(2). Patent Owner stated that it
`
`believes it has provided all routine discovery required by rule, but will look
`
`into the specific materials that Petitioner mentioned during the call.
`
`Patent Owner separately raised a concern with draft expert reports and
`
`expert communications with counsel. Patent Owner argued that such
`
`materials are not discoverable in district court litigation and should not be
`
`discoverable in an inter partes review, which allows only limited discovery
`
`and is designed to be a cost-effective alternative to litigation. Petitioner
`
`disagreed, arguing that the Federal Rules of Civil Procedure do not apply in
`
`this proceeding and Petitioner should be able to obtain such materials as a
`
`matter of fairness because Patent Owner has access to them via the previous
`
`litigations, whereas Petitioner, who was not a party to those cases, does not.
`
`As discussed during the call, no motions regarding discovery are
`
`authorized at this time. Patent Owner confirmed that it complied with the
`
`rules for routine discovery. Petitioner has not presented any evidence
`
`indicating that Patent Owner failed to do so or identified any specific
`
`materials it believes should have been produced but were not. Further, to the
`
`extent Petitioner desires a broad class of information not produced by Patent
`
`
`
`3
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`Owner as routine discovery, Petitioner has not demonstrated a basis for
`
`authorizing a motion for additional discovery as “necessary in the interest of
`
`justice” under 35 U.S.C. § 316(a)(5)(B) and 37 C.F.R. § 42.51(b)(2). We
`
`refer the parties to the Decision on Motion for Additional Discovery, Case
`
`IPR2012-00001, Paper 26, dated March 5, 2013, for a discussion of the
`
`relevant factors in determining whether additional discovery in an inter
`
`partes review is “necessary in the interest of justice.” Petitioner during the
`
`call did not articulate how the appropriate factors would apply to the
`
`circumstances of this proceeding.
`
`We also encourage the parties, to the extent possible, to make requests
`
`for specific materials to which the opposing party can respond. The parties
`
`should confer and, if the opposing party refuses to produce the specific
`
`materials, the requester may arrange a conference call to explain why it
`
`believes discovery of those materials is warranted. Of course, the parties are
`
`free to agree amongst themselves as to what is and is not discoverable in this
`
`proceeding.
`
`
`
`Motion to Amend
`
`Patent Owner stated that it may file a motion to amend. As discussed
`
`during the call, the parties should note the guidance regarding motions to
`
`amend provided in the Board’s Trial Practice Guide and recent decisions,
`
`including Case IPR2012-00005, Paper 27, dated June 3, 2013, and Case
`
`IPR2012-00027, Paper 26, dated June 11, 2013. Patent Owner is
`
`encouraged to request another conference call to discuss specific proposed
`
`claim amendments prior to filing a motion to amend.
`
`
`
`4
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`Patent Owner also asked how proposed amendments should be
`
`presented where an independent claim (e.g., claim 1) is being challenged in a
`
`proceeding but a dependent claim (e.g., claim 2) is not, and proposed
`
`amendments to the independent claim may necessitate changes in the
`
`corresponding dependent claims. In that scenario, Patent Owner should
`
`present a proposed substitute claim (e.g., claim 3) for the independent claim.
`
`The dependent claim not part of the proceeding will remain in the same form
`
`as it was issued in the patent, including its dependency from the original
`
`independent claim.
`
`
`
`Motions to Exclude Evidence and for Observation
`on Cross-Examination
`
`Both parties indicated that they may file motions to exclude evidence
`
`and for observation on cross-examination, but have no specific issues at this
`
`time. The Scheduling Order provides due dates for such motions. The
`
`parties also were reminded of the obligation to object to evidence by the
`
`deadlines listed in 37 C.F.R. § 42.64.
`
`
`
`Deposition of Dr. Zimmerman
`
`Patent Owner requested authorization under 37 C.F.R. § 42.53(a) to
`
`video-record and submit the deposition of Dr. Zimmerman. Patent Owner
`
`argued that it would pay for all costs associated with video recording and
`
`that without video, there would be no opportunity to view the witness’s
`
`testimony later should the Board desire to do so. Petitioner argued that
`
`video-recorded testimony is not necessary. By recording the deposition,
`
`Patent Owner is only preserving an opportunity for the Board to review the
`
`
`
`5
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`video. Patent Owner therefore is authorized to video-record the deposition.
`
`After further consideration, however, we will require Patent Owner to
`
`obtain permission from the Board if and when it desires to submit the video
`
`as an exhibit in this proceeding. The deposition has not yet taken place and
`
`it is unknown which portions (if any) of the potentially lengthy video may
`
`warrant the Board’s consideration. Should Patent Owner believe there is a
`
`need to submit certain portions of the testimony (rather than a transcript) for
`
`the Board’s consideration after the deposition, Patent Owner should request
`
`another conference call.
`
`
`
`Status of Litigation
`
`The parties stated that the related litigation between the parties,
`
`Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al., E.D.
`
`Tex. Case No. 6:11-cv-00492-LED-JDL, has been stayed pending the
`
`resolution of the instant proceeding and the stayed ex parte Reexamination
`
`Control No. 90/012,401.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that all due dates set forth in the Scheduling Order
`
`remain unchanged;
`
`FURTHER ORDERED that Petitioner is not authorized at this time
`
`to file a motion to submit an additional declaration from Dr. Zimmerman as
`
`supplemental information under 37 C.F.R. § 42.123(a);
`
`FURTHER ORDERED that no discovery motions are authorized at
`
`this time;
`
`
`
`6
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`FURTHER ORDERED that Patent Owner is authorized to file a
`
`motion to amend no later than DUE DATE 1; and
`
`FURTHER ORDERED that Patent Owner may, at its own cost,
`
`video-record the deposition of Dr. Zimmerman, but Patent Owner must
`
`obtain the Board’s permission prior to submitting any portion of the video as
`
`an exhibit in this proceeding.
`
`
`
`7
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`PETITIONER:
`
`Jeffrey D. Sanok
`Jonathan Lindsay
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`JSanok@Crowell.com
`JLindsay@Crowell.com
`
`
`PATENT OWNER:
`
`Robert G. Mukai
`Charles F. Wieland III
`BUCHANAN, INGERSOLL & ROONEY P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Robert.Mukai@BIPC.com
`Charles.Wieland@BIPC.com
`
`
`
`
`8
`
`
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