Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2013-00071
`
`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 OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`DCACTIVE-26181707.2
`
`
`
`IPR2013-00071
`
`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 OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`DCACTIVE-26181707.2
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2013-00071
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`Because Petitioner Avaya Inc. (“Avaya”) was not a party to earlier district
`
`court litigation involving Cisco (“Cisco Litigation”), it has little insight into the full
`
`scope of inconsistent statements made during those proceedings involving the ’930
`
`patent. Despite Avaya’s requests for information from that litigation, Patent
`
`Owner has unfairly used this knowledge asymmetry to its advantage. Patent
`
`Owner has only selectively produced certain documents while withholding most
`
`documents, such as the testimony of the inventors themselves.
`
`First, Patent Owner claimed that it could not produce Cisco Litigation
`
`documents because they were subject to the district court’s protective order. Ex.
`
`AV-1048. After Avaya stressed the relevance, Patent Owner produced only a
`
`small subset, but withheld the vast majority of the Cisco Litigation documents.
`
`Second, after Avaya asked repeatedly for other Cisco Litigation documents
`
`(including deposition transcripts) (See Ex. AV-1049-51), Patent Owner claimed
`
`that it would be too burdensome to identify inconsistent statements in the lengthy
`
`record. Ex. AV-1052. This position was particularly baseless given “well
`
`established familiarity” with the prior litigations of Patent Owner’s outside
`
`counsel. See Motion for Pro Hac Vice Admission, at 3 (Paper 11).
`
`Third, after production of an expert report from Dr. Melvin Ray Mercer
`
`regarding the invalidity of the ’930 patent (“Mercer Report”), Avaya brought to
`
`Patent Owner’s attention that the Mercer Report specifically referenced the
`
` 1
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`DCACTIVE-26181707.2
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`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
`
`inventor deposition transcripts, Network-1 can confirm that the transcripts do not
`
`include information inconsistent with a position it has advanced in the IPR
`
`proceeding.” Ex. AV-1052 (emphasis added). This statement is false and
`
`misleading. See Section I.A, infra.
`
`Fourth, when Avaya in its Reply Brief (Paper 56) identified and referenced
`
`an inconsistent statement in the Mercer Report, Patent Owner objected to it as
`
`hearsay. But the alleged out of court statement was from the very same inventor
`
`deposition transcript (“Deptula Transcript”) that it had refused to produce
`
`throughout these proceedings.
`
`Under Federal Rule of Evidence 807, the Board should deny Patent Owner’s
`
`Motion to Exclude (Paper 83) under the residual hearsay exception. See Fed. R.
`
`Evid. 8071. In particular, Patent Owner was obligated under 37 C.F.R. §
`
`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.
`
`(“Avaya”) was able to obtain through reasonable efforts, and it should not be
`
`
`1 Patent Owner’s Motion to Exclude (Paper 83) was unsigned in violation of
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` 2
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`
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`37 C.F.R. 42.6(a)(4).
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`DCACTIVE-26181707.2
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2013-00071
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`excluded. Patent Owner cannot have it both ways. It cannot shirk its duty to
`
`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.
`
`I.
`
`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.
`
`A.
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`Patent Owner’s Automatic Duty to Produce the Deptula
`Transcript
`
`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
`
`patent] are not obvious.” Patent Owner Response (Paper 44) at 54. Acceptance in
`
`the industry is a secondary consideration. Bayer Healthcare Pharms., Inc. v.
`
`Watson Pharms., Inc., 713 F.3d 1369, 1377 (Fed. Cir. 2013). But Patent Owner
`
`ignores and has failed to produce the Deptula Transcript, which includes the
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` 3
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`
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`following admission:
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`DCACTIVE-26181707.2
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2013-00071
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`Q: Did you ever receive any recognition or praise for the
`
`‘930 patent?
`
`A:
`
`I don’t believe so.
`
`Q: Did Merlot [the prior assignee of the ‘930 patent] ever
`
`receive any recognition or praise for the ‘930 patent?
`
`MR. EICHMANN: Objection to form.
`
`A:
`
`I don’t know.
`
`Q: Are you aware of anyone who ever expressed surprise for
`
`the ideas expressed in the ‘930 patent?
`
`MR. EICHMANN: Objection to form.
`
`A:
`
`I’m not aware, no.
`
`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
`
`of the Deptula Transcript to support the following proposition:
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`Neither the inventors nor the officers of [the assignee of the
`
`patent] were able to identify any praise or recognition for, or
`
`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).
`
`The Deptula Transcript is relevant as the inventor’s factual knowledge
`
`concerning the secondary consideration of acceptance. Under 37 C.F.R. §
`
`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.,
`
`lack of acceptance] that is inconsistent with a position advanced [i.e., that
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` 4
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`DCACTIVE-26181707.2
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2013-00071
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`secondary factors demonstrate a lack of obviousness] by the party [Patent
`
`Owner].” Patent Owner has never produced the Deptula Transcript, and has failed
`
`to comply with Rule 42.51(b)(1)(iii).
`
`B. Avaya Made More Than a “Reasonable Effort” to Obtain the
`Deptula Transcript
`
`Despite Patent Owner’s duty to automatically produce the Deptula
`
`
`
`Transcript, it never did so even after three separate requests that would have
`
`covered it:
`
`• On June 26, 2013, Avaya asked Patent Owner to produce “[a]ll
`
`deposition transcripts from the prior district court litigations.” Email
`
`from Lindsay to Wieland of 06/26/13 (Ex. AV-1049).
`
`• On September 12, 2013, Avaya specifically asked for information
`
`inconsistent with positions it has taken with respect to secondary
`
`considerations, as well as the evidence cited in expert reports. Email
`
`from Lindsay to Wieland of 09/12/2013 (Ex. AV-1050).
`
`• On September 18, 2013, Patent Owner finally produced the Mercer
`
`Report. Email from Luner to Lindsay of 09/18/2013 (Ex. AV-1053).
`
`• On October 1, 2013, Avaya “again request[ed] the production of the
`
`inventor deposition transcripts, particularly since portions of those
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` 5
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`DCACTIVE-26181707.2
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2013-00071
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`transcripts are referenced in the information that was produced.”
`
`Email from Lindsay to Wieland of 10/1/2013 (Ex. AV-1051).
`
`Avaya has thus made more than a reasonable effort to obtain the Deptula
`
`Transcript.
`
`C. The Mercer Report is Admissible Under Rule 807
`
`Under Federal Rule of Evidence 807, a hearsay statement is not excluded if:
`
`(1)
`
`the statement has equivalent circumstantial guarantees of
`
`trustworthiness;
`
`(2)
`
`it is offered as evidence of a material fact;
`
`(3)
`
`it is more probative on the point for which it is offered
`
`than any other evidence that the proponent can obtain
`
`through reasonable efforts; and
`
`(4)
`
`admitting it will best serve the purposes of these rules
`
`and the interests of justice.
`
`Fed. R. Evid. 807.
`
`Here, all four requirements are met.
`
`First, the Mercer Report has the equivalent circumstantial guarantees of
`
`trustworthiness. It is a signed expert opinion lodged in a case against Patent
`
`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.
`
`Patent Owner presumably represented Deptula at his deposition, had the right to
`
`cross examine Mercer on his report, and was allowed to respond with a rebuttal
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` 6
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`DCACTIVE-26181707.2
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2013-00071
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`expert report. All of these factors are equivalent circumstantial guarantees of
`
`trustworthiness.
`
`Second, the Mercer Report is being offered for a material fact: secondary
`
`consideration of no acceptance in the industry.
`
`Third, the Mercer Report is more probative than information Avaya could
`
`have obtained through “reasonable efforts.” As noted in Section B, above, Patent
`
`Owner should have automatically produced the Deptula Transcript without Avaya
`
`even asking. Here, Avaya went above and beyond its obligations, by further
`
`asking for the Deptula Transcript in three separate requests.
`
`Fourth, admitting the Mercer Report will best serve the interests of justice.
`
`Patent Owner’s violation of its duty to produce the Deptula Transcript under 37
`
`C.F.R. § 42.51(b)(1)(iii) should not be condoned by excluding the Mercer Report.
`
`Fundamental fairness dictates that Patent Owner should not be able to conceal the
`
`Deptula Transcript, and then claim that the only produced document that
`
`referenced it—the Mercer Report—should be excluded.
`
`II. LACK OF HEARSAY WITHIN HEARSAY
`
`The Mercer Report is also not hearsay within hearsay as Patent Owner
`
`contends. Motion to Exclude (Paper 83), at 4. In particular, the Deptula Transcript
`
`constitutes non-hearsay as an admission by a party opponent. Fed. R. Evid.
`
`801(d)(2)(C)-(D). Deptula was likely either authorized to speak on behalf of
`
` 7
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`DCACTIVE-26181707.2
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`
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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
`
`servant”), and thus his testimony cannot serve a basis for hearsay within hearsay.
`
`Fed. R. Evid. 805.
`
`Even if not admission by a party opponent, the Deptula Transcript should be
`
`admissible under the residual exception for the same reasons noted above in
`
`Section II.C. Fed. R. Evid. 807.
`
`III. ZIMMERMAN’S OPINION OR INFERENCE UPON WHICH THE
`MERCER REPORT IS BASED IS STILL ADMISSIBLE
`
`
`
`Patent Owner only asks for the exclusion of the Mercer Report itself. See
`
`Paper 83, at 5. Under Federal Rule of Evidence 703, the underlying opinion of
`
`Avaya’s expert, Dr. George Zimmerman, is still admissible because the deposition
`
`testimony of the inventor, Deptula, is the “type [of facts or data] reasonably relied
`
`upon by experts in the particular field in forming opinions or inferences upon the
`
`subject.”
`
`IV. CONCLUSION
`
`For the reasons set forth above, Avaya respectfully asks the Board to deny
`
`Patent Owner’s Motion to Exclude (Paper 83).
`
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` 8
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`DCACTIVE-26181707.2
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`
`IPR2013-00071
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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.
`
`
`
`December 23, 2013
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`DCACTIVE-26181707.2
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`
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)
`
`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
`
`OWNER’S MOTION TO EXCLUDE” 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.
`
`
`December 23, 2013
`
`
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`
`
`
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`
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`Respectfully submitted,
`
`
` /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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