`
`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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`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 Joni Y. Chang, Justin T. Arbes, and Glenn J. Perry
`____________________
`
`PATENT OWNER’S OPPOSITION TO
`AVAYA’S MOTION TO EXCLUDE
`
`
`1
`IPR2013-00385 and IPR2013-00495 have been joined with this proceeding.
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`
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`Case No. IPR2013-00071
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`
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`In its Motion, Avaya makes two types of arguments:
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`• evidentiary arguments as to why five categories of paragraphs of Dr. Knox’s 2nd
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`Declaration should be excluded (addressed in Section I below); and
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`• arguments relating to why the entire declaration should be excluded because it
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`allegedly extends the Reply page limit (addressed in Section II below).
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`I.
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`Section I: The challenged paragraphs should not be excluded.
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`A. The paragraphs not specifically cited in Network-1’s Reply should
`not be excluded.
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`Avaya argues that each paragraph not specifically cited in Network-1’s
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`Reply is inadmissible as irrelevant under Federal Rule of Evidence 401. Mot. at 2,
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`4-5. These paragraphs fall into three sub-categories.
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`Sub-category 1 includes 12 organizational paragraphs that provide structure
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`to the declaration (¶¶227-229; 242; 246; 259 -260; 283; 300; 301; 315; 327), e.g.:
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`
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`Ex. N1-2024, ¶283. Such organizational paragraphs are regularly included in
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`expert declarations and not cited in the corresponding briefs, as illustrated by
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`comparing these challenged paragraphs with the corresponding uncited
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`organizational paragraphs in Avaya’s own expert declarations. For example,
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`paragraph 315 of Dr. Knox’s Declaration:
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`Case No. IPR2013-00071
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`(Ex. N1-2024) parallels uncited Paragraph 15 of Dr. Zimmerman’s Declaration:
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`
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`Ex. AV-1041; see id. ¶¶66-67.
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`Sub-category 2 includes substantive paragraphs that are relevant under the
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`controlling test set forth in Federal Rule of Evidence 401 (¶¶230-231; 241; 243;
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`244-245; 247; 248; 249; 267-282; 284-291; 293; 298-299; 302; 316; 328-335).
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`Under Rule 401, “[e]vidence is relevant if: (a) it has any tendency to make a fact
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`more or less probable than it would be without the evidence; and (b) the fact is of
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`consequence in determining the action.” Avaya does not apply this controlling
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`standard to the paragraphs it moves to exclude because doing so would
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`demonstrate that such evidence is relevant. Comparing the facts in Network-1’s
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`Reply (which Avaya does not dispute are of consequence) with the evidence in the
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`challenged paragraphs demonstrates that the challenged evidence has a “tendency
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`to make [the facts in the Reply] more or less probable,” as shown in the following
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`examples, including those specifically called-out by Avaya:
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`2
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`Case No. IPR2013-00071
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`
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`facts of consequence (from Reply)
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`“‘the voltage’ in the proposed new
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`evidence from challenged paragraph
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`“‘the voltage’ in the proposed determining
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`step refers to, and is the same as, the
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`step refers to, and means the same thing
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`“‘voltage level’ in the prior step.”
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`as, the sensed ‘voltage level’ in the prior
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`Reply at 2.
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`sensing step.” ¶243.
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`“the system disclosed in Matsuno
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`“all that Matsuno determines based on the
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`determines whether local power is
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`sensed voltage (or voltage level) is
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`being supplied based on whether the
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`whether (a) the contact breaker points (8)
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`contract breaker points (8) are
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`are on or off, and (b) as a result, whether
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`opened or closed.” Reply at 4.
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`the local power supply is being supplied.”
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`¶267 (called-out by Avaya, Mot. at 5)
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`“If a device that cannot accept
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`“if an access device with a resistive
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`power (e.g., a device with a Bob
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`termination (such as a Bob Smith
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`Smith termination which is ‘unable
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`termination) that cannot accept phantom
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`to support remote power feed’
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`remote power is connected to the
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`(‘930, 3:7-11)) is connected and if
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`subscriber line disclosed in Matsuno and
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`local power stops, then the Matsuno
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`the local power stops, then contact breaker
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`circuitry would still send high
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`points (8) will turn on and remote power
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`power to the device even though it
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`will be delivered to an access device that
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`is not capable of accepting remote
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`is not capable of accepting remote power.”
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`3
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`Case No. IPR2013-00071
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`
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`power.” Reply at 4.
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`¶269 (called-out by Avaya, Mot. at 5)
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`“Over 950 references have been
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`“for the minimum of 917 references
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`identified in the various
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`identified in the various proceedings, it
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`proceedings. … Distinguishing
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`would take me 9170 hours to address the
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`each would be time and cost
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`known references (or almost 4 ½ years,
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`prohibitive.” Reply at 5.
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`working full time 40 hours a week, 50
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`weeks a year).” ¶269 (called-out by
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`Avaya, Mot. at 5).
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`Avaya does not (and cannot) dispute that the evidence from these challenged
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`paragraphs (on the right) tend to make the facts of consequence (on the left) more
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`probable and, as a result, is relevant under Rule 401. The other paragraphs in this
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`category (¶¶230-231; 241; 244-245; 247; 248; 249; 268; 270-282; 284-291; 293;
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`298-299; 302; 316; 328-335) lay the necessary foundation for the cited paragraphs
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`in the declaration and either directly support or build support for positions taken
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`and arguments made in the Reply and are therefore relevant.
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`Sub-category 3 includes four paragraphs from Dr. Knox’s Declaration that
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`were inadvertently cited using incorrect paragraph numbers in the Reply. Dr.
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`Knox’s 2nd Declaration was originally numbered starting with Paragraph 1 but was
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`renumbered to start with Paragraph 219 to continue the numbering from his first
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`declaration. See Ex. N1-2024 ¶220. In doing so, however, the paragraphs in
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`4
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`
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`Argument 7 on page 5 of the Reply were inadvertently not renumbered. The
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`Case No. IPR2013-00071
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`correct corresponding correct paragraphs numbers are: ¶199 = ¶331; ¶120 = ¶332;
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`¶121 = ¶333; and ¶122 = ¶334, which can easily be confirmed by comparing the
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`substance of Argument 7 of the Reply (“Whether Network-1 was required to
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`address each known reference”) with (a) paragraphs 119–122 from Dr. Knox’s 1st
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`Declaration (Ex. N1-2015) which have nothing to do with this argument, and (b)
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`paragraphs 331–334 from Dr. Knox’s 2nd Declaration, which correspond perfectly
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`with the facts presented in the Reply. Accordingly, these paragraphs (while
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`mistakenly cited) are “relied upon in Patent Owner’s Reply Brief.” Mot. at 5.
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`Rather than applying the appropriate standard (Rule 401) to the challenged
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`paragraphs, Avaya asserts a made-up rule (not found in the Rules of Evidence) that
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`unless a paragraph in a supporting declaration is specifically referenced in a brief,
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`it cannot be relevant because (a) a motion must provide a full statement of the
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`reasons for relief (37 C.F.R. § 42.22(a)(2)), (b) a reply must comply with the
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`contents of a motion (37 C.F.R. § 42.23(a)), and (c) because the challenged
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`paragraphs are not cited in the Motion or Reply, they must be irrelevant because
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`they are not a “reason for relief.” This argument fails at every level.
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`First, Avaya misinterprets 37 C.F.R. § 42.22. A reply is not required to
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`present a full statement of the reasons for relief (i.e., repeat every argument from a
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`motion). In addition to the logistical challenge of repeating every argument in a 5
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`5
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`page reply, 37 C.F.R. § 42.23(b) confirms the exact opposite – that a reply is not
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`Case No. IPR2013-00071
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`required to (and may be prohibited from) presenting all “reasons for relief”
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`because it can only respond to arguments raised in an opposition: “(b) All
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`arguments for the relief requested in a motion must be made in the motion. A
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`reply may only respond to arguments raised in the corresponding opposition….”
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`Second, there are various reasons why paragraphs in expert declarations are
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`relevant but generally not cited in briefs; for example they provide (a) expert
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`qualifications (e.g., N1-2015 ¶¶2-6), (b) foundational background (e.g., ¶¶219 –
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`223), and (c) the required foundation for the expert’s conclusions (e.g., ¶284
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`presenting an overview of a reference). Such reasons are illustrated in Avaya’s
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`own briefs which do not cite the same types of paragraphs that are not cited from
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`Dr. Knox’s Declaration (e.g., Avaya does not cite to the first 16 paragraphs of
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`Zimmerman’s Declaration in any of its briefs – AV-1011 ¶¶1-16).
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`Third, such an argument would improperly exalt form over substance. If the
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`rule were that paragraphs cited in briefs are admissible but paragraphs that are not
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`cited are inadmissible, all paragraphs in a declaration would be routinely cited to
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`make them admissible, whether they are relevant or not. And any relevant uncited
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`paragraph would be excluded. To avoid such an absurd result, whether a
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`paragraph is relevant and admissible must depend on the test set forth in Rule 401,
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`not whether the paragraph is specifically cited in a brief.
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`6
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`Case No. IPR2013-00071
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`B. Dr. Knox does not render patent law opinions.
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`Avaya argues that Dr. Knox improperly renders patent law opinions. Mot. at
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`2; 6-7. The paragraphs identified by Avaya fall into two general categories, neither
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`of which constitutes inadmissible patent law opinions.
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`Category 1 includes paragraphs in which Dr. Knox: (a) sets forth his
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`understanding of the law provided to him by counsel (see Ex. N1-2015, ¶10) that
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`he uses as context for his technical opinions, and (b) then applies his technical
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`opinions to such understanding (¶¶230, 232, 244). Because Dr. Knox presents his
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`understanding of the law as the general premise to which he applies technical facts
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`and opinions, Network-1 does not rely (and correspondingly the Board would not
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`rely) on Dr. Knox as support for the law. Rather, Network-1 relies on (a)
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`controlling legal authority for the legal premises, and (b) Dr. Knox’s declaration
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`for the technical facts and opinions that Network-1 applies to the controlling law.
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`As a concrete example, Paragraph 310 provides:
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`In this paragraph, Dr. Knox does not render legal opinions but rather identifies his
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`understanding of the law (provided by counsel) regarding analogous art. Dr. Knox
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`then uses this understanding (provided by counsel) as a framework to apply his
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`7
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`technical opinions in paragraphs 311 – 314 that follow. As set forth in the briefing,
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`Case No. IPR2013-00071
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`Network-1 relied on Federal Circuit authority (rather than Dr. Knox’s
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`understanding) for this legal premise:
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`
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`Paper 42 at 51. Because Dr. Knox references the law as a framework rather than
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`provides legal opinions, such references are not inadmissible. See Hangarter v.
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`Provident Life & Accident Ins. Co., 373 F.3d 998, 1017 (9th Cir. 2004 ) (“[A]
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`witness may refer to the law in expressing an opinion without that reference
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`rendering the testimony inadmissible.”).
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`Category 2 includes paragraphs in which Dr. Knox identifies Avaya’s and
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`Dr. Zimmerman’s arguments (¶¶231, 242-243, 300, and 315), for example:
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`8
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`Case No. IPR2013-00071
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`¶300. Identifying Avaya’s arguments is not improperly presenting legal opinions.
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`
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`Paragraph 245 does not fall into either category identified above but instead
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`quotes certain passages from the ‘930 Patent and presents opinions as to how one
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`of ordinary skill in the art would understand such passages. Paragraph 335 simply
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`states that the same secondary factors addressed in Dr. Knox’s first declaration
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`“apply to the proposed substitute claims.”
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`C. Paragraphs 331-334 (estimating the costs associated with Dr.
`Knox addressing all known references) are based on admissible
`facts to which Dr. Knox has personal knowledge.
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`Avaya asserts that Paragraph 331–334 are expert opinions outside of Dr.
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`Knox’s expertise regarding “overall litigation costs” and, as a result, are
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`inadmissible opinions under Rule 702 and lack foundation under Rule 602.
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`Contrary to Avaya’s assertion, the facts presented in these paragraphs are not
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`opinions about “overall litigation costs” unknown to Dr. Knox but rather are facts
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`known to Dr. Knox based on his personal knowledge from the Cisco Litigation. In
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`particular, Dr. Knox has personal knowledge about the following facts: [a] “the
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`Invalidity Contentions in the Cisco Litigation” and the number of references
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`identified (¶¶331, 333); [b] the time it takes him to address references (¶334); [c]
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`the hourly rate he charges (¶334); and [d] whether it would be “practically
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`impossible and cost prohibitive [for him] to address each prior art reference that is
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`known to Network-1 as a result of the various litigations, Inter Partes Reviews,
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`9
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`and re-examination proceeding.” ¶331. Paragraph ¶332 is not an opinion on
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`Case No. IPR2013-00071
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`litigation costs but simply presents his understanding of the law (as provided by
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`counsel) that gives his factual statements context. See Section I(2) above.
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`Avaya asserts: “While Knox did serve as an invalidity expert in the prior
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`litigations and might have knowledge regarding the large volume of prior art, he
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`has no knowledge or expertise relating to overall litigation costs, including the fees
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`and costs incurred, the discovery burden on parties, and the possible disruption to
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`business caused by litigation.” Mot. at 8. This argument is a red herring. Nothing
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`in Paragraphs 331-334 refer to “overall litigation costs, including the fees and costs
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`incurred, the discovery burden on the parties, and the possible disruption to
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`business caused by litigation.” Dr. Knox never made any statements (or expressed
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`any opinions) regarding such costs and fees – he does not compare the costs of an
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`IPR proceeding to the overall costs of litigation. Rather, based on his personal
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`knowledge, Dr. Knox states the undisputed proposition that addressing all 950
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`references would not be “an efficient and cost-effective alternative.” Knox ¶333.
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`Avaya’s argument would only make sense if Dr. Knox opined that IPRs were less
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`costly than litigation. Dr. Knox makes no such assertion.
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`D.
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`Paragraph 328 (identifying how Chang was addressed in the Cisco
`Litigation) is admissible based on Dr. Knox’s personal knowledge.
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`Avaya asserts that Paragraph 328 is inadmissible under Rule 602 as
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`“speculative testimony” and that Dr. Knox lacks personal knowledge regarding the
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`10
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`statements made in this paragraph. Mot. at 8-9. Avaya’s argument is misplaced.
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`Case No. IPR2013-00071
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`In Paragraph 328, Dr. Knox stated:
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` “Although the Defendants in the prior litigations were aware of the
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`various art cited by Avaya, they focused on Chang. This is reflected
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`in my Rebuttal Report in which I (a) addressed Chang as the first
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`reference; and (b) spent more time addressing Chang than any other
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`reference, as reflected in the table of contents of my Rebuttal Report.
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`AV-1030 (ii–v; Table of Contents).”
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`Contrary to Avaya’s assertion, Dr. Knox, who served as the validity expert
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`in the prior litigation, has personal knowledge of what art the Defendants in
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`the Cisco Litigation focused on (i.e., presented to Network-1 and the Court)
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`and, in particular, (a) what art the Defendants were aware of (see Exhibits
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`N1-1003, N1-0027), (b) the order that Dr. Knox addressed the art in his
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`Expert Report, and (c) the amount of time that Dr. Knox spent addressing
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`the references. (And because a defendant wants to present its most
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`persuasive case, a defendant tends to focus on the prior art it believes is most
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`relevant). Because Dr. Knox had personal knowledge of such facts, Avaya’s
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`argument that Dr. Knox lacks personal knowledge is misplaced.
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`E. Paragraph 326 (quoting Exhibit N1-2020 which is in evidence in
`this proceeding) is not inadmissible hearsay.
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`Avaya asserts that Paragraph 326 is inadmissible hearsay because Dr. Knox
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`quotes from Exhibit N1-2020 which, Avaya asserts, is inadmissible hearsay. Mot.
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`11
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`at 9-10 (“[t]he quoted portion thus constitutes hearsay.”) Quoting evidence that is
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`already in the record is not inadmissible hearsay. Avaya did not object or move to
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`Case No. IPR2013-00071
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`exclude Exhibit N1-2020. In fact, in his first declaration, Dr. Knox quoted this
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`same paragraph from Exhibit N1-2020 and Avaya neither objected to the exhibit
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`nor Dr. Knox’s declaration quoting the exhibit. See Exh. 2015 at §191. As a
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`result, Exhibit N1-2020 is evidence in the record and Dr. Knox’s reference to such
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`evidence is not inadmissible.
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`II.
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`Section II: Avaya’s “dumping ground” page-limit argument fails.
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`Avaya asserts that Dr. Knox’s declaration should be excluded in its entirety
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`because Network-1 has a “pattern and practice of using its expert’s declarations as
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`a ‘dumping grounds’ for inadmissible arguments” to extend the page limit of its
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`briefs. Mot. at 3 (apparently referring to Dr. Knox’s 1st Declaration, to which
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`Avaya did not object, and his 2nd Declaration, which constitute the only two
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`declarations submitted by Network-1 in this proceeding). Avaya’s “dumping
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`ground” page limit arguments fail at every level, both procedurally and
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`substantively.
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`A. Procedural response.
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`Avaya’s argument fails at two procedural levels.
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`First, a Motion to Exclude is not the proper vehicle for arguing that Dr.
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`Knox’s entire declaration should be excluded under policy grounds. As this Board
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`12
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`confirmed: “[a] motion to exclude may only raise issues related to the
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`Case No. IPR2013-00071
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`admissibility of evidence (e.g., hearsay)...” Paper 75 at 4. Avaya’s page-limit
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`argument is not an admissibility argument but rather, as acknowledged by Avaya,
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`is based on “policy concerns” (Opp. at 2) and should not be addressed in this
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`Motion.
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`Second, Avaya did not previously object to Dr. Knox’s declaration in its
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`entirety or object based on page-limit grounds. A Motion to Exclude can only
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`address objections presented in the notice of objections, thereby giving a party a
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`chance to cure any alleged defect:
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`• “The objection must identify the grounds for the objection with sufficient
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`particularity to allow correction in the form of supplemental evidence.”
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`37 C.F.R. §42.64(b).
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`• “The motion must identify the objections in the record ....” 37 C.F.R.
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`§42.64(c).
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`In particular, “[a] motion to exclude evidence must: (a) Identify where in the
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`record the objection originally was made.” Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48756, 48767. Avaya did not previously object to Dr. Knox’s entire
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`Declaration as a “dumping ground” that improperly extends page limits. See Paper
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`72. Accordingly, Avaya’s page-limit argument should be rejected based on this
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`second procedural basis.
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`13
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`B.
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`Substantive response.
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`Case No. IPR2013-00071
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`Substantively, Dr. Knox’s Declaration is not a “dumping ground” that
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`improperly extends the page limit of Network-1’s reply. First, contrary to Avaya’s
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`assertions, as set forth above in Section I, the objected paragraphs are not a
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`“mishmash of topics” constituting “inadmissible arguments” (Mot. at 1) but rather
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`relevant technical facts and opinions that form the foundation for the arguments
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`presented in Network-1’s Reply. Second, that Knox’s Declaration is lengthy is a
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`reason to include rather than exclude such evidence. Conclusory opinions in
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`declarations are inadmissible. See, e.g., Carotek, Inc. v. Kobayashi Ventures, LLC,
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`875 F. Supp. 2d 313, 337 (S.D.N.Y. 2012) (“An expert opinion is inadmissible as
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`conclusory if it ‘cannot reasonably be assessed for reliability.’”) (quoting Comm.
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`Note to Fed. R. Evid. 702 (2000)). To avoid conclusory opinions, Dr. Knox
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`included detailed foundation – facts and opinions – to support his conclusions (e.g.,
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`he presented an “Overview of Woodmas” (¶284) to support his conclusions about
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`what Woodmas discloses). That Dr. Knox’s opinions are supported by substantial
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`facts (resulting in a lengthy declaration) is a reason why Dr. Knox’s Declaration is
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`admissible, not inadmissible.
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`Avaya Asserts: “Patent Owner uses its technical expert as a mouthpiece to
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`‘testify’ on a mishmash of topics, including United States patent law, the beliefs of
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`prior adverse parties, and the cost-effectiveness of inter partes proceedings
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`14
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`compared to district court litigation.” Mot. at 1. Avaya is wrong: Dr. Knox did
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`not “testify” on any of the “mishmash” topics identified by Avaya. As explained
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`Case No. IPR2013-00071
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`above: (1) Dr. Knox did not testify about patent law but rather stated his
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`understanding of the law as presented by counsel, (2) presented facts based on his
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`personal knowledge from the Cisco Litigation, and (3) presented the costs
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`associated with addressing 900+ references based on his percipient knowledge.
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`Respectfully submitted,
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`BUCHANAN INGERSOLL & ROONEY PC
`
`Date: December 23, 2013
`
`1737 King Street, Suite 500
`Alexandria, VA 22314
`Telephone (703) 836-6620
`
`By: /Charles F. Wieland III
`Charles F. Wieland III
`Registration No. 33,096
`Counsel for NETWORK-1 SECURITY
`
` SOLUTIONS, INC.
`
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`15
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing PATENT
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`OWNER’S OPPOSITION TO AVAYA’S MOTION TO EXCLUDE is being
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`served via electronic mail (with Petitioner’s Consent) upon the following this 23rd
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`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 23, 2013
`
`
`
`
`
`
`
`
`
`
`/Charles F. Wieland III/
`Charles F. Wieland III
`Registration No. 33,096
`Counsel for NETWORK-1 SECURITY
` SOLUTIONS, INC.
`
`