Trials@uspto.gov
`571-272-7822
`
`Paper 75
`Entered: December 2, 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
`November 27, 2013 among counsel for Petitioners Avaya Inc. (“Avaya”),
`
`
`1 Cases IPR2013-00385 and IPR2013-00495 have been joined with this
`proceeding.
`
`
`571-272-7822
`
`Paper 75
`Entered: December 2, 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
`November 27, 2013 among counsel for Petitioners Avaya Inc. (“Avaya”),
`
`
`1 Cases IPR2013-00385 and IPR2013-00495 have been joined with this
`proceeding.
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`Sony Corporation of America, and Dell Inc. (“Dell”); counsel for Patent
`Owner; and Judges Chang, Arbes, and Perry. The call was requested by
`Avaya to seek authorization to file a motion to strike portions of a
`declaration submitted by Patent Owner’s declarant, Dr. James Knox.
`
`
`Second Declaration of Dr. Knox
`Patent Owner filed a motion to amend (Paper 43) and first declaration
`from Dr. Knox (Exhibit 2015). Avaya filed an opposition (Paper 57) to the
`motion to amend. Patent Owner then filed a five-page reply (Paper 65) and
`56-page second declaration from Dr. Knox (Exhibit 2024). Avaya filed an
`objection (Paper 72) to the second declaration.
`During the call, Avaya argued that certain portions of Dr. Knox’s
`testimony in the second declaration are improper new evidence because they
`could have been submitted earlier in the first declaration and go beyond the
`proper scope of what may be submitted in reply to an opposition. See
`37 C.F.R. § 42.23(b) (a reply “may only respond to arguments raised in the
`corresponding opposition”); Rules of Practice for Trials Before the Patent
`Trial and Appeal Board and Judicial Review of Patent Trial and Appeal
`Board Decisions; Final Rule, 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012)
`(“Rules of Practice”) (“Oppositions and replies may rely upon appropriate
`evidence to support the positions asserted. Reply evidence, however, must
`be responsive and not merely new evidence that could have been presented
`earlier to support the movant’s motion.”). Patent Owner argued that the
`second declaration only responds to points raised in Avaya’s opposition and
`the declaration (Exhibit 1041) submitted by Avaya’s declarant, Dr. George
`A. Zimmerman, with Avaya’s opposition.
`
`
`
`
`2
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`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`The Board explained that a motion to strike or motion to exclude is
`not the proper mechanism for raising the issue of whether a reply or reply
`evidence is beyond the proper scope permitted under the rules. In the
`absence of special circumstance, the Board will determine whether a reply
`and supporting evidence contain material exceeding the proper scope when
`the Board reviews all of the pertinent papers and prepares the final written
`decision. The Board may exclude all or portions of Patent Owner’s reply
`and Dr. Knox’s second declaration or, alternatively, decline to consider any
`improper argument and related evidence, at that time. Additional briefing on
`the issue is not necessary.
`Further, as discussed during the call, Avaya will have an opportunity
`to address Dr. Knox’s testimony when it cross-examines him and also to
`submit a motion for observation regarding that cross-examination if
`necessary. The parties are reminded that an observation (or response to an
`observation) is not an opportunity to raise new issues, re-argue issues, or
`pursue objections. Each observation should be in the following form:
`In Exhibit __, on page __, lines __, the witness testified
`__. This testimony is relevant to the __ on page __ of __. The
`testimony is relevant because __.
`The entire observation should not exceed one short paragraph. The Board
`may decline consideration or entry of excessively long or argumentative
`observations (or responses to observations).
`
`
`
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`3
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`Case IPR2013-00071
`Patent 6,218,930
`
`
`Motions to Exclude
`The parties also requested guidance regarding motions to exclude
`evidence. Avaya2 and Patent Owner each may file a single motion to
`exclude, limited to fifteen pages. See 37 C.F.R. § 42.24(a)(1)(v). A motion
`to exclude must identify specifically each piece of evidence sought to be
`excluded, identify where in the record the evidence was relied upon by the
`opposing party, identify where in the record the corresponding objection was
`made, and explain the objection. See 37 C.F.R. § 42.64(c). A motion to
`exclude may only raise issues related to the admissibility of evidence (e.g.,
`hearsay), not the credibility of witnesses or sufficiency of the evidence. See
`Rules of Practice, 77 Fed. Reg. at 48633; Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48767 (Aug. 14, 2012).
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Avaya’s request for authorization to file a motion to
`strike portions of Dr. Knox’s second declaration (Exhibit 2024) is denied.
`
`
`
`2 Dell’s ability to file an additional paper to address points of disagreement
`with a consolidated filing is addressed in Paper 40. No other Petitioner may
`file a motion to exclude.
`
`
`
`4
`
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`
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`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
`
`
`
`
`
`
`5
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