`571-272-7822
`
`Paper 50
`Entered: September 24, 2013
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVAYA INC., DELL INC., SONY CORPORATION OF AMERICA,
`and HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-000711
`Patent 6,218,930
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and GLENN J. PERRY,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`A conference call in the above proceeding was held on September 23,
`
`2013 among respective counsel for Petitioners and Patent Owner, and Judges
`
`
`1 Cases IPR2013-00385 and IPR2013-00495 have been joined with this
`proceeding.
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`Chang, Arbes, and Perry. Petitioner Avaya Inc. (“Avaya”) requested the call
`
`to discuss Patent Owner’s purportedly late production of certain discovery.
`
`Specifically, Patent Owner served with its response on August 7, 2013, a
`
`declaration from Dr. James Knox (Exhibit 2015). The parties then
`
`scheduled Dr. Knox’s deposition for September 24, 2013. From September
`
`18 to 22, 2013, Patent Owner produced certain expert reports and deposition
`
`transcripts from Dr. Knox in related litigations involving Patent 6,218,930
`
`(the “’930 patent”), as well as other litigation expert reports pertaining to the
`
`’930 patent.
`
`Avaya requested that the trial schedule be extended to allow it
`
`sufficient time to review the new materials and prepare for the deposition.
`
`Patent Owner opposed the request. The parties expressed disagreement as to
`
`whether the new materials were produced late and as to whether they contain
`
`“relevant information that is inconsistent with a position advanced by
`
`[Patent Owner] during the proceeding” that should have been produced by
`
`Patent Owner as routine discovery under 37 C.F.R. § 42.51(b)(1)(iii).
`
`The Board proposed going forward with Dr. Knox’s deposition as
`
`scheduled on September 24, 2013, and extending DUE DATE 2 by two
`
`weeks and DUE DATE 3 by one week to accommodate a second deposition
`
`of Dr. Knox regarding the newly produced materials if necessary. The
`
`parties agreed that with the modified schedule, a single deposition of Dr.
`
`Knox covering all issues could be scheduled, which would resolve the
`
`dispute. A Revised Scheduling Order modifying DUE DATES 2 and 3 will
`
`be entered concurrently with this Order.
`
`Finally, the parties were reminded that discovery provided by one
`
`party in the instant proceeding should be provided to all other parties
`
`
`
`
`2
`
`
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`(e.g., from Patent Owner to all four Petitioners). If a party believes there is a
`
`reason not to do so for certain discovery, the party should request a
`
`conference call.
`
`
`
`
`
`
`3
`
`
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`PETITIONERS:
`
`Jeffrey D. Sanok
`Jonathan Lindsay
`CROWELL & MORING LLP
`JSanok@Crowell.com
`JLindsay@Crowell.com
`
`
`
`Michael J. Scheer
`Thomas M. Dunham
`WINSTON & STRAWN LLP
`mscheer@winston.com
` tdunham@winston.com
`
`
`
`Lionel M. Lavenue
`Erika Arner
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
` erika.arner@finnegan.com
`
`
`Robert J. Walters
`Charles J. Hawkins
`McDERMOTT WILL & EMERY LLP
`rwalters@mwe.com
` chawkins@mwe.com
`
`
`
`PATENT OWNER:
`
`Robert G. Mukai
`Charles F. Wieland III
`BUCHANAN, INGERSOLL & ROONEY P.C.
`Robert.Mukai@BIPC.com
`Charles.Wieland@BIPC.com
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
