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 IPR2013-00071
`U.S. Patent No. 6,218,930
`____________________
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, AND GLENN J. PERRY,
`Administrative Patent Judges
`____________________
`
`
`PETITIONER AVAYA INC.’S MOTION TO EXCLUDE EVIDENCE
`
`
`DCACTIVE-26001606.6
`
`
`
`
`
`_______________________________
`
`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 IPR2013-00071
`U.S. Patent No. 6,218,930
`____________________
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, AND GLENN J. PERRY,
`Administrative Patent Judges
`____________________
`
`
`PETITIONER AVAYA INC.’S MOTION TO EXCLUDE EVIDENCE
`
`
`DCACTIVE-26001606.6
`
`
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`
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`Since the inception of trial Patent Owner has attempted to circumvent the
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`Board’s strict page limits by improperly interjecting attorney argument into the
`
`record via its expert declarations. In the most recent (and egregious) example,
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`Patent Owner submitted a 56-page second declaration (plus Appendix) from its
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`expert, Dr. James Knox (“Knox”), in support of its 5-page reply. Compare Second
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`Declaration of James Knox (Exhibit N1-2024) (“Second Declaration”) with Reply
`
`to Opposition to Motion to Amend (Paper 65) (“Reply Brief”). Whole sections of
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`attorney argument are made in the Second Declaration, but utterly absent in the
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`Reply Brief.
`
`Patent Owner uses its technical expert as a mouthpiece to “testify” on a
`
`mishmash of topics, including United States patent law, the beliefs of prior adverse
`
`parties, and the cost-effectiveness of inter partes proceedings compared to district
`
`court litigation. Indeed, if you strip away the perfunctory introductory statements
`
`of “It is my understanding …” or “I understand that …”, then the expert Second
`
`Declaration reads almost exactly as a legal brief that could have been written by
`
`Patent Owner’s counsel.
`
`To condone Patent Owner’s tactics would set a policy incentivizing future
`
`parties to cram arguments ad infinitum into expert declarations, irrespective of the
`
`brief itself or an expert’s field of expertise. Such bloated declarations would place
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`an undue burden on this Board to parse out and digest. Once entered into the
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`DCACTIVE-26001606.6
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`record, they would also create a confusing and ambiguous record for future courts
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`(including the Federal Circuit on any appeal) to understand what this Board did
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`(and did not) actually consider.
`
`In addition to these policy concerns, nearly half of the Second Declaration—
`
`60 of the 117 paragraphs of Exhibit N1-2024—constitutes inadmissible evidence,
`
`and should be excluded:
`
`• Fifty-seven (57) paragraphs (¶¶ 227–231, 241–249, 259, 260, 267–291, 298–
`
`302, 315, 316, and 327–335) (“Irrelevant Arguments”) are not even cited by
`
`Patent Owner in its Reply Brief, and are inadmissible under Federal Rule of
`
`Evidence 401;
`
`• Eleven (11) paragraphs (¶¶ 230–232, 242–245, 300, 310, 315, and 335)
`
`(“Patent Law Testimony”) consist of improper testimony on United States
`
`patent law, and are inadmissible under Federal Rule of Evidence 702 and 37
`
`C.F.R. § 42.65(a);
`
`• Four (4) paragraphs (¶¶ 331–334) (“District Court Litigation Arguments”)
`
`consist of testimony on the purported efficient and cost-effective alternatives
`
`to district court litigation, and are inadmissible under Federal Rules of
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`Evidence 702 (Patent Owner’s technical expert is not qualified to express an
`
`opinion about such topics), 401 (irrelevance, as noted above), and 602 (lack
`
`of personal knowledge);
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`DCACTIVE-26001606.6
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`• Paragraph 328 includes speculative testimony regarding what defendants in
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`a prior litigation “focused” or “believed” to be the closest prior art. Under
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`Federal Rule of Evidence 602, it is inadmissible testimony outside the scope
`
`of the Patent Owner’s technical expert’s personal knowledge; and
`
`• Paragraph 326 constitutes testimony concerning the purported view of those
`
`skilled in the art with respect to the De Nicolo system, and is inadmissible
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`under Federal Rules of Evidence 801 and 802 (hearsay) and 602 (lack of
`
`personal knowledge).
`
`Because of Patent Owner’s pattern and practice of using its expert’s
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`declarations as a “dumping grounds” for inadmissible arguments that it could not
`
`fit into its five-page reply, for example, Petitioner Avaya Inc. (“Avaya”) moves to
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`exclude the Second Declaration (Exhibit N1-2024) in its entirety pursuant to 37
`
`C.F.R. §42.64(c). Alternatively, Avaya moves to exclude the above-referenced
`
`paragraphs. Avaya raised all of the above-listed bases in objections it timely
`
`served on Patent Owner on November 21, 2013 (Avaya’s Objections to Evidence,
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`Paper 72).
`
`Because the excessive length of the Second Declaration makes it impossible
`
`to address each excludable paragraph individually, Avaya has grouped its
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`arguments in Sections I-IV below based on the above bullet point categories.
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`DCACTIVE-26001606.6
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`I.
`
`THE IRRELEVANT ARGUMENTS
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`The Irrelevant Arguments constitute nearly half of the paragraphs of Exhibit
`
`N1-2024. None are cited in the in the body of its Reply Brief or otherwise relied
`
`upon by Patent Owner, and each paragraph should be excluded as irrelevant. See
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`Fed. R. Evid. 401.
`
`Relevant evidence is evidence “having any tendency to make the existence
`
`of any fact that is of consequence to the determination of the action more probable
`
`or less probable than it would be without the evidence,” and all evidence that is
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`irrelevant is inadmissible. Fed. R. Evid. 401, 402 (emphasis added). In filing its
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`motion to amend and Reply Brief, however, Patent Owner was required to provide
`
`a “full statement of the reasons for relief.” 37 C.F.R. § 42.22(a)(2) (specifying
`
`contents for motions); 37 C.F.R. § 42.23(a) (requiring replies to “comply with the
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`content requirements for motions”). The Irrelevant Arguments—because they are
`
`not cited in the motion to amend or Reply Brief—cannot constitute Patent Owner’s
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`“reasons for relief.” Accordingly, the Irrelevant Arguments fall far short of
`
`qualifying as facts “of consequence,” must therefore be irrelevant, and should be
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`excluded.
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`Certain examples of irrelevant arguments include:
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`Woodmas. In its Reply Brief, Patent Owner makes only one argument on
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`what Woodmas does or does not disclose—whether it discloses the “determining”
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` 4
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`DCACTIVE-26001606.6
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`step. Paper 65, at 4. But Knox’s declaration argues that other elements are
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`purportedly not disclosed, specifically the preamble (¶¶ 285–286) and the
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`“Ethernet data node adapted for…” limitation (¶¶ 287–290). Knox also
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`accompanies this discussion with a lengthy “Overview” paragraph (¶ 284). Patent
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`Owner fails to cite to any of these paragraphs or arguments in its Reply Brief.
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`Matsuno. In 15 paragraphs (¶¶ 267–281) spanning 15 pages, Patent Owner
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`uses Knox to dispute four separate statements by Avaya’s expert, Zimmerman,
`
`concerning the Matsuno reference. Patent Owner fails to cite any of these
`
`paragraph in its Reply Brief or elsewhere. Nor does Patent Owner address any of
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`Zimmerman’s specific statements.
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`Section VI of Exhibit 2024. In Section VI of Exhibit 2024 (¶¶ 327–335),
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`Patent Owner, through its proxy Knox, argues why proposed substitute claims 10
`
`and 11 are “not obvious over other references brought to the attention during
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`previous litigations.” None of these arguments are cited or relied upon in Patent
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`Owner’s Reply Brief or elsewhere.
`
`“Voltage” / “Voltage Level.” Patent Owner, again through Knox, makes
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`several arguments regarding “voltage” or “voltage level” that are not cited or relied
`
`on in Patent Owner’s Reply Brief or elsewhere. See Exhibit N1-2024 (¶¶ 228–231,
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` 5
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`
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`241–247).
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`DCACTIVE-26001606.6
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`Together these and the other Irrelevant Arguments demonstrate how Patent
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`Owner improperly attempts to interject argument via its expert’s declaration and in
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`violation of the five-page limit for reply briefs. See 37 C.F.R. § 42.24(c)(2).
`
`II. THE PATENT LAW TESTIMONY
`
`Patent Owner relies on two paragraphs of Patent Law Testimony. Paper 65,
`
`at 2 (relying upon Paragraph 232 of Exhibit 2024 ) and 5 (relying on Paragraph
`
`310 of Exhibit 2024). The other Patent Law Testimony (¶¶ 230, 231, 242–245,
`
`300, 315, and 335) are not relied upon as noted in Section II, above.
`
`With respect to all Patent Law Testimony, Patent Owner’s technical expert,
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`Knox, states that he is only qualified to render opinions on “electronics, data
`
`communications, Ethernet networks, ISDN networks, the ’930 Patent, and the
`
`references addressed in [his first] declaration [Exhibit N1-2015].” See Exhibit N1-
`
`2015, ¶ 2. He is not qualified to render opinions on United States patent law, and
`
`the Patent Law Testimony is accordingly inadmissible under Federal Rule of
`
`Evidence 702. Fed. R. Evid. 702. Moreover, even if he was qualified, the Patent
`
`Law Testimony would still not be admissible, as the regulations expressly state that
`
`any “[t]estimony on United States patent law … will not be admitted.” See 37
`
`C.F.R. § 42.65(a).
`
`Despite having only no legal qualifications, Knox opines on topics running
`
`the gamut from testifying about the antecedent basis rule (¶ 232), whether adding a
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` 6
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`DCACTIVE-26001606.6
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`step can broaden a claim (¶¶ 230 and 231), legal conclusions as to obviousness (¶¶
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`300, 310, 315, and 335), the written description requirement (¶¶ 242–245). None
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`of these topics are the proper subject of a technical expert’s testimony. See, e.g.,
`
`Applied Medical Resources Corp. v. United States Surgical Corp., 147 F.3d 1374,
`
`1381 (Fed. Cir. 1998) (affirming district court exclusion of testimony on patent law
`
`because it was “beyond the scope of his expertise as a technical witness”).
`
`Knox often makes broad sweeping legal conclusions in response to legal
`
`arguments made by Avaya itself. Tellingly, he often responds to legal arguments
`
`made by Avaya in its brief (as opposed to Avaya’s expert):
`
`I understand that Avaya also contends that the proposed new claims
`
`are not obvious over Matsuno and De Nicolo in view of Chang. Opp.
`
`at 12-13. I respectfully disagree with Avaya for the following four
`
`reasons.
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`See, e.g., Exhibit N1-2024, ¶ 315 (emphasis added).
`
`
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`These and other examples demonstrate how Patent Owner is using
`
`Knox improperly to make legal arguments and circumvent page
`
`restrictions—not to provide evidence. The Board should exclude them.
`
` 7
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`DCACTIVE-26001606.6
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`III. THE DISTRICT COURT LITIGATION ARGUMENTS
`
`The District Court Litigation Arguments were not relied upon by Patent
`
`Owner in its Reply Brief or elsewhere, and are therefore inadmissible under
`
`Federal Rule of Evidence 401. See Section I, above.
`
`Even if relied upon, the District Court Litigation Arguments are inadmissible
`
`as expressing opinions beyond Knox’s technical qualification. As one example,
`
`Knox opines that “[d]istinguishing each reference identified by [prior defendants]
`
`would not be an efficient and cost-effective alternative to district court litigation.”
`
`Exhibit N1-2024, ¶ 333. Knox is not an expert qualified to speak to efficiency,
`
`costs incurred in inter partes reviews or district court litigation, cost-effectiveness,
`
`or alternatives to district court litigation. While Knox did serve as an invalidity
`
`expert in the prior litigations and might have knowledge regarding the large
`
`volume of prior art, he has no knowledge or expertise relating to overall litigation
`
`costs, including the fees and costs incurred, the discovery burden on parties, and
`
`the possible disruption to business caused by litigation.
`
`The District Court Litigation Arguments should therefore be excluded under
`
`Federal Rule of Evidence 702.
`
`IV. THE CISCO DEFENDANTS’ PRIOR ART BELIEF AND FOCUS
`
`Knox also purports to have insight on what the Cisco Defendants “believed”
`
`to be the “closest prior art references, if not the closest prior art reference.” See
`
` 8
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`
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`DCACTIVE-26001606.6
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`
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`Exhibit N1-2024, ¶ 328. He also testified on what the Cisco Defendants “focused”
`
`on with respect to prior art. Id. As an initial matter, Patent Owner does not rely on
`
`Paragraph 328 in its Reply Brief or elsewhere, and therefore Paragraph 328 should
`
`be excluded as inadmissible under Federal Rule of Evidence 401. See Section I,
`
`above.
`
`Moreover, as an expert adverse to the Cisco Defendants, Knox would have
`
`absolutely no insight into the beliefs or focus of the Cisco Defendants. His
`
`testimony amounts to rank speculation of an opposing party’s views. Knox implies
`
`that he has some insight into the Cisco defendants’ playbook based on positions it
`
`took during the prior litigations. But the reality is that the Cisco defendants may
`
`have emphasized or deemphasized certain prior art references for a whole host of
`
`strategic reasons, none of which were made privy to Knox. Accordingly, this
`
`testimony should be excluded under Federal Rule of Evidence 602.
`
`V. THE DE NICOLO SYSTEM
`
`Knox cites and quotes a portion of Exhibit N1-2020 for the proposition
`
`regarding alleged skepticism of the De Nicolo system. See Exhibit N1-2024, ¶
`
`326. Exhibit N1-2020 is an email from an individual named “Larry Miller” with
`
`no indication of an affiliation to any entity.
`
`The quoted portion thus constitutes hearsay because (1) Miller did not make
`
`his statement “while testifying at the current trial” and (2) Patent Owner “offers it
`
` 9
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`DCACTIVE-26001606.6
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`
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`as evidence to prove the truth of the matter asserted in the statement.” Fed. R.
`
`Evid. 801(c). Nor does it constitutes non-hearsay—Miller was not testifying and
`
`subject to cross examination (Fed. R. Evid. 801(d)(1)) nor does Miller’s statement
`
`constitute an opposing party’s statement (Fed. R. Evid. 801(d)(2)). And it fails to
`
`fall within any of the recognized hearsay exceptions of Federal Rule of Evidence.
`
`See generally Fed. R. Evid. 802. The quoted portion is thus inadmissible.
`
`Because Knox has not established that the quoted portion is not the type of
`
`information that “experts in the particular field would reasonably rely,” it cannot
`
`come in under Federal Rule of Evidence 703.
`
`Nor does Knox purport to have any personal knowledge of the quoted
`
`portion, and thus the quoted portion is inadmissible under Federal Rule of
`
`Evidence 602.
`
`VI. CONCLUSION
`
`For the reasons set forth above, Avaya respectfully asks the Board to
`
`exclude the Second Declaration (Exhibit N1-2024) in its entirety. In the
`
`alternative, Avaya asks the Board to, at a minimum, exclude Paragraphs 227–232,
`
`241–249, 259, 260, 267–291, 298–302, 310, 315, 316, and 326–335 of the Second
`
`Declaration.
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`DCACTIVE-26001606.6
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`10
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`December 11, 2013
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`Respectfully submitted,
`
`
`
` /Jeffrey D. Sanok/
`
`Jeffrey D. Sanok, Reg. No. 32,169
`Jonathan M. Lindsay, Reg. No. 45,810
`Brian M. Koide, Reg. No. 41,123
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`Telephone No.: (202) 624-2500
`Facsimile No.: (202) 628-8844
`
`Attorneys for Petitioner Avaya Inc.
`
`DCACTIVE-26001606.6
`
`
`11
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)
`
`I hereby certify that on this 11th day of December 2013, a true and correct
`copy of the foregoing “PETITIONER AVAYA INC.’S MOTION TO EXCLUDE
`EVIDENCE” was served, by electronic mail, upon the following:
`
`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
`Counsel for Network-1 Security Solutions, Inc.
`
`Lionel M. Lavenue, Esq.
`Erika Arner, Esq.
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`(571) 203-2700
`lionel.lavenue@finnegan.com
`erika.arner@finnegan.com
`Counsel for Sony Corp. of America
`
`Michael J. Scheer
`Thomas M. Dunham
`WINSTON & STRAWN LLP
`200 Park Ave.
`New York, NY 10166
`(212) 294-4700
`mscheer@winston.com
`tdunham@winston.com
`Counsel for Dell Inc.
`
`Robert J. Walters, Esq.
`Charles J. Hawkins, Esq.
`MCDERMOTT WILL & EMERY LLP
`500 North Capitol Street, N.W.
`Washington, DC 20001
`(202) 756-8019
`rwalters@mwe.com
`chawkins@mwe.com
`Counsel for Hewlett-Packard Co.
`
`Respectfully submitted,
`
`
`December 11, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Jonathan Lindsay/
`Jonathan M. Lindsay, Reg. No. 45,810
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`
`
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