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`IPR2013-00071
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________________________
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`AVAYA INC., DELL INC., SONY CORPORATION OF AMERICA,
`and HEWLETT-PACKARD CO.
`Petitioners
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`v.
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`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
`____________________
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`
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`PETITIONER AVAYA INC.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`DCACTIVE-26181707.2
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2013-00071
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`Because Petitioner Avaya Inc. (“Avaya”) was not a party to earlier district
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`court litigation involving Cisco (“Cisco Litigation”), it has little insight into the full
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`scope of inconsistent statements made during those proceedings involving the ’930
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`patent. Despite Avaya’s requests for information from that litigation, Patent
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`Owner has unfairly used this knowledge asymmetry to its advantage. Patent
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`Owner has only selectively produced certain documents while withholding most
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`documents, such as the testimony of the inventors themselves.
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`First, Patent Owner claimed that it could not produce Cisco Litigation
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`documents because they were subject to the district court’s protective order. Ex.
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`AV-1048. After Avaya stressed the relevance, Patent Owner produced only a
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`small subset, but withheld the vast majority of the Cisco Litigation documents.
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`Second, after Avaya asked repeatedly for other Cisco Litigation documents
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`(including deposition transcripts) (See Ex. AV-1049-51), Patent Owner claimed
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`that it would be too burdensome to identify inconsistent statements in the lengthy
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`record. Ex. AV-1052. This position was particularly baseless given “well
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`established familiarity” with the prior litigations of Patent Owner’s outside
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`counsel. See Motion for Pro Hac Vice Admission, at 3 (Paper 11).
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`Third, after production of an expert report from Dr. Melvin Ray Mercer
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`regarding the invalidity of the ’930 patent (“Mercer Report”), Avaya brought to
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`Patent Owner’s attention that the Mercer Report specifically referenced the
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`DCACTIVE-26181707.2
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2013-00071
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`inventor deposition transcripts (which still had not been produced). In response,
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`Patent Owner represented that “[r]egarding your specific inquiry concerning the
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`inventor deposition transcripts, Network-1 can confirm that the transcripts do not
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`include information inconsistent with a position it has advanced in the IPR
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`proceeding.” Ex. AV-1052 (emphasis added). This statement is false and
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`misleading. See Section I.A, infra.
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`Fourth, when Avaya in its Reply Brief (Paper 56) identified and referenced
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`an inconsistent statement in the Mercer Report, Patent Owner objected to it as
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`hearsay. But the alleged out of court statement was from the very same inventor
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`deposition transcript (“Deptula Transcript”) that it had refused to produce
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`throughout these proceedings.
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`Under Federal Rule of Evidence 807, the Board should deny Patent Owner’s
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`Motion to Exclude (Paper 83) under the residual hearsay exception. See Fed. R.
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`Evid. 8071. In particular, Patent Owner was obligated under 37 C.F.R. §
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`42.51(b)(1)(iii) to automatically produce the Deptula Transcript. Accordingly, the
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`Mercer Report is more probative than evidence that Petitioner Avaya Inc.
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`(“Avaya”) was able to obtain through reasonable efforts, and it should not be
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`1 Patent Owner’s Motion to Exclude (Paper 83) was unsigned in violation of
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`37 C.F.R. 42.6(a)(4).
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`DCACTIVE-26181707.2
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2013-00071
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`excluded. Patent Owner cannot have it both ways. It cannot shirk its duty to
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`produce the Deptula Transcript, and then object to the Mercer Report because it
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`referenced the very same Deptula Transcript that it withheld. The Board should
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`not condone Patent Owner’s behavior, and should deny its motion to exclude.
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`I.
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`THE MERCER REPORT SHOULD NOT BE EXCLUDED
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`Before addressing the requirements of Rule 807 itself in Section I.C., Avaya
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`addresses two predicates to the Rule 807 analysis. Section I.A. describes Patent
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`Owner’s failure to produce the Deptula Transcript that would have, if it were
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`produced, been more probative than the Mercer Report. Section I.B. lays out
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`Avaya’s reasonable efforts to make Patent Owner comply with its obligation to
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`produce the Deptula Transcript.
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`A.
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`Patent Owner’s Automatic Duty to Produce the Deptula
`Transcript
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`In proceedings before this Board, Patent Owner has asserted that the
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`“objective secondary factors demonstrate that the Challenged Claims [of the ‘930
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`patent] are not obvious.” Patent Owner Response (Paper 44) at 54. Acceptance in
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`the industry is a secondary consideration. Bayer Healthcare Pharms., Inc. v.
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`Watson Pharms., Inc., 713 F.3d 1369, 1377 (Fed. Cir. 2013). But Patent Owner
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`ignores and has failed to produce the Deptula Transcript, which includes the
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`following admission:
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`DCACTIVE-26181707.2
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2013-00071
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`Q: Did you ever receive any recognition or praise for the
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`‘930 patent?
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`A:
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`I don’t believe so.
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`Q: Did Merlot [the prior assignee of the ‘930 patent] ever
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`receive any recognition or praise for the ‘930 patent?
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`MR. EICHMANN: Objection to form.
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`A:
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`I don’t know.
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`Q: Are you aware of anyone who ever expressed surprise for
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`the ideas expressed in the ‘930 patent?
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`MR. EICHMANN: Objection to form.
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`A:
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`I’m not aware, no.
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`Exhibit 1042 at 110-11 n.287 (citing Deptula Transcript, at 16-17),
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`In his report, Cisco’s expert, Mercer, then cited to the above-quoted portion
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`of the Deptula Transcript to support the following proposition:
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`Neither the inventors nor the officers of [the assignee of the
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`patent] were able to identify any praise or recognition for, or
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`expression of surprise about, the invention of the ‘930 patent.
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`Exhibit 1042, at 110-11 n.287 (citing Deptula Transcript, at 16-17).
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`The Deptula Transcript is relevant as the inventor’s factual knowledge
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`concerning the secondary consideration of acceptance. Under 37 C.F.R. §
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`42.51(b)(1)(iii), Patent Owner was thus obligated to automatically produce the
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`Deptula Transcript as routine discovery because it was “relevant information [i.e.,
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`lack of acceptance] that is inconsistent with a position advanced [i.e., that
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`DCACTIVE-26181707.2
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2013-00071
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`secondary factors demonstrate a lack of obviousness] by the party [Patent
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`Owner].” Patent Owner has never produced the Deptula Transcript, and has failed
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`to comply with Rule 42.51(b)(1)(iii).
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`B. Avaya Made More Than a “Reasonable Effort” to Obtain the
`Deptula Transcript
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`Despite Patent Owner’s duty to automatically produce the Deptula
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`Transcript, it never did so even after three separate requests that would have
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`covered it:
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`• On June 26, 2013, Avaya asked Patent Owner to produce “[a]ll
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`deposition transcripts from the prior district court litigations.” Email
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`from Lindsay to Wieland of 06/26/13 (Ex. AV-1049).
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`• On September 12, 2013, Avaya specifically asked for information
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`inconsistent with positions it has taken with respect to secondary
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`considerations, as well as the evidence cited in expert reports. Email
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`from Lindsay to Wieland of 09/12/2013 (Ex. AV-1050).
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`• On September 18, 2013, Patent Owner finally produced the Mercer
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`Report. Email from Luner to Lindsay of 09/18/2013 (Ex. AV-1053).
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`• On October 1, 2013, Avaya “again request[ed] the production of the
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`inventor deposition transcripts, particularly since portions of those
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`DCACTIVE-26181707.2
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2013-00071
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`transcripts are referenced in the information that was produced.”
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`Email from Lindsay to Wieland of 10/1/2013 (Ex. AV-1051).
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`Avaya has thus made more than a reasonable effort to obtain the Deptula
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`Transcript.
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`C. The Mercer Report is Admissible Under Rule 807
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`Under Federal Rule of Evidence 807, a hearsay statement is not excluded if:
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`(1)
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`the statement has equivalent circumstantial guarantees of
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`trustworthiness;
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`(2)
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`it is offered as evidence of a material fact;
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`(3)
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`it is more probative on the point for which it is offered
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`than any other evidence that the proponent can obtain
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`through reasonable efforts; and
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`(4)
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`admitting it will best serve the purposes of these rules
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`and the interests of justice.
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`Fed. R. Evid. 807.
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`Here, all four requirements are met.
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`First, the Mercer Report has the equivalent circumstantial guarantees of
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`trustworthiness. It is a signed expert opinion lodged in a case against Patent
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`Owner. The particular portion of the Mercer Report references the Deptula
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`Transcript, which was sworn deposition testimony recorded by a court reporter.
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`Patent Owner presumably represented Deptula at his deposition, had the right to
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`cross examine Mercer on his report, and was allowed to respond with a rebuttal
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`DCACTIVE-26181707.2
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2013-00071
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`expert report. All of these factors are equivalent circumstantial guarantees of
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`trustworthiness.
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`Second, the Mercer Report is being offered for a material fact: secondary
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`consideration of no acceptance in the industry.
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`Third, the Mercer Report is more probative than information Avaya could
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`have obtained through “reasonable efforts.” As noted in Section B, above, Patent
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`Owner should have automatically produced the Deptula Transcript without Avaya
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`even asking. Here, Avaya went above and beyond its obligations, by further
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`asking for the Deptula Transcript in three separate requests.
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`Fourth, admitting the Mercer Report will best serve the interests of justice.
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`Patent Owner’s violation of its duty to produce the Deptula Transcript under 37
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`C.F.R. § 42.51(b)(1)(iii) should not be condoned by excluding the Mercer Report.
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`Fundamental fairness dictates that Patent Owner should not be able to conceal the
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`Deptula Transcript, and then claim that the only produced document that
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`referenced it—the Mercer Report—should be excluded.
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`II. LACK OF HEARSAY WITHIN HEARSAY
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`The Mercer Report is also not hearsay within hearsay as Patent Owner
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`contends. Motion to Exclude (Paper 83), at 4. In particular, the Deptula Transcript
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`constitutes non-hearsay as an admission by a party opponent. Fed. R. Evid.
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`801(d)(2)(C)-(D). Deptula was likely either authorized to speak on behalf of
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`DCACTIVE-26181707.2
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2013-00071
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`Patent Owner and/or acting as a consultant (i.e., constituting an “agent or
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`servant”), and thus his testimony cannot serve a basis for hearsay within hearsay.
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`Fed. R. Evid. 805.
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`Even if not admission by a party opponent, the Deptula Transcript should be
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`admissible under the residual exception for the same reasons noted above in
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`Section II.C. Fed. R. Evid. 807.
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`III. ZIMMERMAN’S OPINION OR INFERENCE UPON WHICH THE
`MERCER REPORT IS BASED IS STILL ADMISSIBLE
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`
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`Patent Owner only asks for the exclusion of the Mercer Report itself. See
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`Paper 83, at 5. Under Federal Rule of Evidence 703, the underlying opinion of
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`Avaya’s expert, Dr. George Zimmerman, is still admissible because the deposition
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`testimony of the inventor, Deptula, is the “type [of facts or data] reasonably relied
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`upon by experts in the particular field in forming opinions or inferences upon the
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`subject.”
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`IV. CONCLUSION
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`For the reasons set forth above, Avaya respectfully asks the Board to deny
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`Patent Owner’s Motion to Exclude (Paper 83).
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`DCACTIVE-26181707.2
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`IPR2013-00071
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`Respectfully submitted,
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`
`
` /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
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`Attorneys for Petitioner Avaya Inc.
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`December 23, 2013
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`DCACTIVE-26181707.2
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)
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`I hereby certify that on this 23rd day of December 2013, a true and correct
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`copy of the foregoing “PETITIONER AVAYA INC.’S OPPOSITION TO PATENT
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`OWNER’S MOTION TO EXCLUDE” was served, by electronic mail, upon the
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`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
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`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.
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`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.
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`December 23, 2013
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`Respectfully submitted,
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`
` /Jonathan Lindsay/
`Jonathan M. Lindsay, Reg. No. 45,810
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595