`
`Filed on behalf of Patent Owner Network-1 Security Solutions, Inc.
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`By: Robert G. Mukai, Esq.
`Charles F. Wieland III, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314-2727
`Telephone (703) 836-6620
`Facsimile (703) 836-2021
`robert.mukai@bipc.com
`charles.wieland@bipc.com
`
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`AVAYA INC., DELL INC., SONY CORP. OF AMERICA, and
`HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`
`____________________
`
`Case IPR2013-000711
`Patent 6,218,930
`Administrative Patent Judges Jameson Lee, Joni Y. Chang and Justin T. Arbes
`____________________
`
`PATENT OWNER’S MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`1
`IPR2013-00385 and IPR2013-00495 have been joined with this proceeding.
`
`
`
`
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`Case No. IPR2013-00071
`Patent Owner’s Motion to Exclude
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`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner Network-1 moves to exclude
`
`
`
`Exhibit AV-1042, which is the Expert Report of Dr. Melvin Ray Mercer (the
`
`“Mercer Report”) for the following reasons:
`
`(1) it is inadmissible hearsay under Rules 801 and 802 of the Federal Rules
`
`of Evidence; and
`
`(2) it is inadmissible hearsay within hearsay under Rule 805 of the Federal
`
`Rules of Evidence.
`
`I.
`
`Background.
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`A. Mercer Report.
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`The Mercer Report is a 2010 expert report from Dr. Melvin Mercer served
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`on behalf of the defendants in the lawsuit Network-1 Security Solutions, Inc. v.
`
`Cisco Sys., Case No. 6:08-CV-30 (E.D. Tex.) (the “Cisco Litigation”). Dr. Mercer
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`has not submitted a declaration and has no role in this IPR proceeding.
`
`B.
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`Petitioners’ Reliance on Mercer Report.
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`Petitioners filed the Mercer Report as Exhibit AV-1042 in connection with
`
`their Reply to Patent Owner’s Response (Paper 56). Of the 145-page Mercer
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`Report, Petitioners rely on and quote a single sentence:
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`“Neither the inventors nor the officers of Merlot were able to identify
`
`any praise or recognition for, or expression of surprise about, the
`
`invention of the ‘930 patent.”
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`
`
`
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`Case No. IPR2013-00071
`Patent Owner’s Motion to Exclude
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`
`Reply at 14 (quoting Mercer Report, pages 110-111).
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`C. Network-1’s objection.
`
`Pursuant to the requirement of 37 C.F.R. §42.64(b)(1) that “any objection
`
`must be served within five business days of service of evidence to which the
`
`objection is directed,” Network-1 timely served its Objection to the Mercer Report
`
`on October 29, 2013, five business days after its service:
`
`“The Patent Owner, Network-1, objects to the admissibility of
`
`Petitioner’s Exhibit AV-1042 (Expert Report of Melvin Mercer). The
`
`basis of the objection is the evidence constitutes and contains
`
`inadmissible hearsay under Rules 801, 802 and 805 of the Federal
`
`Rules of Evidence.”
`
`Exhibit N1-2028 (Objection to Evidence Pursuant to 37 C.F.R. §42.64(b)(1)) at 1).
`
`Petitioners served no supplemental evidence to correct the Objection. See
`
`37 C.F.R. § 42.64(b)(2).
`
`II. The Mercer Report should be excluded as inadmissible hearsay.
`
`The Mercer Report is (A) hearsay, and (B) inadmissible.
`
`A.
`
` The Mercer Report is hearsay.
`
`Rule 801 of the Federal Rules of Evidence defines “hearsay” as “a statement
`
`that: (1) the declarant does not make while testifying at the current trial or hearing;
`
`and (2) a party offers in evidence to prove the truth of the matter asserted in the
`
`2
`
`
`
`Case No. IPR2013-00071
`Patent Owner’s Motion to Exclude
`
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`statement.” Fed. R. Evid. 801. The Mercer Report falls under both (1) and (2).
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`(1) Dr. Mercer did not testify in this IPR proceeding. He did not submit a
`
`declaration, and he was not deposed. Accordingly, the entirety of the Mercer
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`Report consists of Dr. Mercer’s statements that were not made “while testifying at
`
`the current trial or hearing.”
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`(2) Petitioners offer the Mercer Report into evidence for the sole purpose of
`
`proving the truth of the following assertion made by Dr. Mercer in his Report –
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`“Neither the inventors nor the officers of Merlot were able to identify any praise or
`
`recognition for, or expression of surprise about, the invention of the ‘930 patent.”
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`Reply at 14 (quoting Mercer Report at pages 110-111). The Mercer Report is not
`
`cited or used for any other purpose. Accordingly, the Mercer Report has been
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`offered to prove the truth of a matter asserted in the Mercer Report.
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`Because the Mercer Report falls under (1) and (2), it is hearsay.
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`B.
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`The Mercer Report is inadmissible.
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`Rule 802 of the Federal Rules of Evidence provides that “[h]earsay is not
`
`admissible unless any of the following provides otherwise: [1] a federal statute;
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`[2] these rules; or [3] other rules prescribed by the Supreme Court.” Fed. R. Evid.
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`802. Because none of hearsay exceptions [1] through [3] apply to the type of
`
`hearsay statement at issue here, the Mercer Report is inadmissible.
`
`
`
`3
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`Case No. IPR2013-00071
`Patent Owner’s Motion to Exclude
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`
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`III. The Mercer Report should be excluded as inadmissible hearsay within
`hearsay.
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`Even worse, the sole statement from the Mercer Report on which Petitioners
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`rely is not merely inadmissible hearsay; it is inadmissible hearsay within hearsay.
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`That is, the statement is not merely a statement by Dr. Mercer that was (1) not
`
`made in this IPR proceeding, and (2) offered for the truth of the matter asserted;
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`the purported underlying statements of the “inventors” and “officers” that Dr.
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`Mercer is relaying in the statement presented by Petitioners were also (1) not made
`
`in this IPR proceeding, and (2) offered for the truth of the matter asserted.
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`Pursuant to Rule 805 of the Federal Rules of Evidence, for such “hearsay within
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`hearsay” statements to be admissible, “each part of the combined statements [must]
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`conform[] with an exception to the rule.” Here, neither part – i.e., neither Dr.
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`Mercer’s statements nor the underlying statements of the “inventors” and
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`“officers” – conforms with a hearsay exception. Accordingly, the Mercer Report
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`must also be excluded as hearsay within hearsay.
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`4
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`Case No. IPR2013-00071
`Patent Owner’s Motion to Exclude
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`V. Conclusion.
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`For the foregoing reasons, Exhibit AV-1042 (the Mercer Report) should be
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`excluded as evidence from this IPR proceeding.
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`
`
`
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`Respectfully submitted,
`
`BUCHANAN INGERSOLL & ROONEY PC
`
`Date: December 11, 2013
`
`1737 King Street, Suite 500
`Alexandria, VA 22314
`Telephone (703) 836-6620
`
`
`
`
`
`
`By:
`Charles F. Wieland III
`Registration No. 33,096
`Counsel for NETWORK-1 SECURITY
`
` SOLUTIONS, INC.
`
`
`
`
`
`5
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`
`
`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER’S MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c) is
`
`being served via electronic mail (with Petitioner’s Consent) upon the following this
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`11th day of December 2013, via electronic mail, as follows:
`
`
`
`Jeffrey D. Sanok and Jonathan Lindsay
`AV1-PRPS@Crowell.com
`JSanok@Crowell.com
`JLindsay@Crowell.com
`Counsel for Avaya Inc.
`
`Michael J. Scheer and Thomas M. Dunham
`WINSTON & STRAWN LLP
`mscheer@winston.com
`tdunham@winston.com
`Counsel for Dell, Inc.
`
`Lionel M. Lavenue and Erika Arner
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`erika.arner@finnegan.com
`Counsel for Sony Corp. of America
`
`Robert J. Walters and Charles J. Hawkins
`McDERMOTT WILL & EMERY LLP
`rwalters@mwe.com
`chawkins@mwe.com
`Counsel for Hewlett-Packard Co.
`
`Date: December 11, 2013
`
`
`
`
`
`
`
`
`
`
`/Charles F. Wieland III/
`Charles F. Wieland III
`Registration No. 33,096
`Counsel for NETWORK-1 SECURITY
` SOLUTIONS, INC.
`
`
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