Filed on behalf of Patent Owner Network-1 Security Solutions, Inc.
`
`By: Robert G. Mukai, Esq.
`Charles F. Wieland III, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314-2727
`Telephone (703) 836-6620
`Facsimile (703) 836-2021
`robert.mukai@bipc.com
`charles.wieland@bipc.com
`
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`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`AVAYA INC., DELL INC., SONY CORP. OF AMERICA, and
`HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`
`____________________
`
`Case IPR2013-000711
`Patent 6,218,930
`Administrative Patent Judges Joni Y. Chang, Justin T. Arbes, and Glenn J. Perry
`____________________
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`1
`IPR2013-00385 and IPR2013-00495 have been joined with this proceeding.
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`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 REPLY TO PETITIONER’S OPPOSITION TO
`MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`1
`IPR2013-00385 and IPR2013-00495 have been joined with this proceeding.
`
`
`
`Case No. IPR2013-00071
`
`
`
`
`In its Opposition, Avaya (1) relies on untimely new evidence that should be
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`expunged, (2) attempts to divert the Board’s attention from the sole issue raised in
`
`Network-1’s motion (whether the Mercer Report is inadmissible hearsay) based on
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`flawed arguments, and (3) fails to rebut Network-1’s showing that the Mercer
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`Report is inadmissible hearsay. Network-1 addresses (1) through (3) in turn.
`
`I.
`
`Avaya’s new evidence is untimely and should be expunged.
`
`In opposing this motion, Avaya attempts to introduce into the record six new
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`exhibits: AV 1048–1053. This is procedurally improper, and these new exhibits
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`should be expunged from the record, for two reasons.
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`First, attempting to introduce new exhibits at this stage of the proceedings
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`violates 37 C.F.R. §42.64(b)(2):
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`Supplemental evidence. The party relying on evidence to which an
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`objection is timely served may respond to the objection by serving
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`supplemental evidence within ten business days of service of the objection.
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`37 C.F.R. §42.64(b)(2) (emphasis added). Network-1 timely served its objection
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`to the Mercer Report on October 29, 2013. Accordingly, if Avaya intended to rely
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`on any supplemental evidence (AV 1048–1053) to respond to Network-1’s
`
`objection, it was required to serve such evidence by November 5, 2013. It did not.
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`Second, attempting to introduce these new exhibits just a few weeks before
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`oral argument violates the Scheduling Order. The due date for Motions to Exclude
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`1
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`
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`was December 11, 2013. Paper 69. Avaya’s untimely evidence prevents
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`Case No. IPR2013-00071
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`Network-1 from objecting to and bringing a Motion to Exclude such evidence.
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`Accordingly, these exhibits should be expunged from the record.
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`II. Avaya’s attempt to divert the Board’s attention from the sole issue in
`this motion is irrelevant and flawed.
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`Most of Avaya’s brief attempts to divert the Board’s attention from the issue
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`presented in Network-1’s motion – whether the Mercer Report is admissible. The
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`issue is not whether Network-1 complied with its disclosure obligations. If this
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`issue were properly briefed, Network-1 would demonstrate that it has. Moreover
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`there are two critical flaws with Avaya’s diversion:
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`Flaw 1: Avaya argues that the entire 145 page Mercer Report should be
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`introduced as evidence solely based on footnote 287 of the report. If the footnote
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`were admissible, that would not make the entire 145-page report admissible.
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`Flaw 2: The Deptula transcript does not include any “relevant information
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`that is inconsistent with a position advanced” by Network-1. 37 CFR
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`§42.51(b)(1)(iii). The quoted footnote (287) makes two points: Deptula is not
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`aware (1) that he or Merlot received recognition or praise for the ‘930 Patent, and
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`(2) of anyone who expressed surprise for the ideas in the ‘930 Patent. Opp. 4.
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`These points, which are at best marginally relevant, are not inconsistent with any
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`positions advanced by Network-1. Network-1 never asserted that (a) Deptula or
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`Merlot received recognition or praise for the ‘930 Patent, or (b) Deptula was aware
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`2
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`
`
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`of anyone who expressed surprised for the ideas expressed in the ‘930 Patent.
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`Case No. IPR2013-00071
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`III. The Mercer Report is inadmissible hearsay.
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`
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`In its Motion, Network-1 demonstrated that the Mercer report is (a)
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`inadmissible hearsay under Rules 801 and 802, and (b) inadmissible hearsay within
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`hearsay under Rule 805. Avaya makes two arguments in response. Both fail.
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`
`
`
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`A.
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`The Mercer Report is not admissible under Rule 807.
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`Avaya contends that the Mercer Report is admissible under Rule 807. This
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`contention fails from the outset because the Report cannot even satisfy the first
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`requirement of admissibility under Rule 807: that “the statement has equivalent
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`circumstantial guarantees of trustworthiness.” Fed. R. Evid. 807 (emphasis added).
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`Avaya makes two arguments in its attempt to support this requirement:
`
`
`
`(1) that the report was “lodged in a case against Patent Owner.” Opp. 6.
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`This argument does not make sense. Every time a court excludes a document as
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`hearsay, that document was filed or lodged in a case. Lodging or filing a document
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`with a court does not transform hearsay into non-hearsay. Moreover, case law
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`confirms that lodged or filed expert reports are excluded as hearsay. See Kuryakyn
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`Holdings, Inc. v. Just in Time Distrib. Co., 2013 U.S. Dist. LEXIS 160940, *9 n.3
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`(W.D. Wis., Nov. 12, 2013) (“The court will not admit either side’s expert reports
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`because they constitute hearsay.”); Redondo Constr., Co. v. Izquierdo, 929 F.
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`Supp. 2d 14, 19 (D.P.R. 2013) (“Expert reports are inadmissible hearsay.”).
`
`3
`
`
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`(2) that the cited footnote is “sworn deposition testimony.” Id. This
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`Case No. IPR2013-00071
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`
`
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`argument fails for two reasons. First, this argument only relates to a single
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`footnote (287) from the entire 145-page report. That one footnote includes sworn
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`deposition testimony cannot serve as a guarantee of trustworthiness for the other
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`145 pages. Second, deposition transcripts are excluded as inadmissible hearsay,
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`especially those from another proceeding. Avaya does not cite any authority for its
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`argument – because the authority is directly to the contrary. See Planet Goalie,
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`Inc. v. Monkeysports, Inc., 2013 U.S. Dist. LEXIS 57499,14 (C.D. Cal. Apr. 22,
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`2013) (holding that “deposition testimony [of a non-party] is hearsay” and
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`therefore not “admissible evidence”); Marshak v. Treadwell, 58 F. Supp. 2d 551,
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`570 (D.N.J. 1999) (“Charlie Thomas was neither a party nor a witness in the
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`instant litigation and his deposition transcript from a prior lawsuit was therefore
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`objectionable, on its face, as hearsay.”).
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`
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`B.
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`The Deptula quote is not an admission of a party opponent.
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`Avaya attempts to overcome the second layer of hearsay with a flawed
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`contention that “the Deptula Transcript constitutes non-hearsay as an admission by
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`a party opponent.” Opp. 7 (citing Fed. R. Evid. 801(d)(2)(C)-(D)).
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`First, to be non-hearsay under Rule 801(d)(2)(C), the statement must be
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`“made by a person whom the party authorized to make a statement on the subject.”
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`Fed. R. Evid. 801(d)(2)(C). Avaya’s speculation that Deptula was “likely …
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`4
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`
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`authorized” is insufficient as a matter of law and factually incorrect. Deptula was
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`Case No. IPR2013-00071
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`testifying as a third party witness. He was not authorized by Network-1 to make a
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`statement on this subject, or on any other subject.
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`Second, to be non-hearsay under Rule 801(d)(2)(D), the statement must be
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`“made by the party’s agent or employee on a matter within the scope of that
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`relationship and while it existed.” Deptula was not an employee of Network-1 at
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`the time of his testimony, or at any other time. Nor was he offering testimony as
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`an agent of Network-1. Again, Avaya’s unsupported speculation to the contrary
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`cannot save its argument.
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`
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`Avaya contends that, even if the report is excluded, the “[u]nderlying
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`opinion of Avaya’s expert, Dr. George Zimmerman is still admissible” because he
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`could reasonably rely on the Deptula testimony under Rule 703. Opp. 8. This
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`argument is misplaced because Dr. Zimmerman has not relied on any Deptula
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`testimony (let alone the cited testimony). See AV-1011 (Zimmerman Decl.) and
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`AV-1041 (2nd Zimmerman Decl.) (neither reference any Deptula testimony).
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`IV. Conclusion.
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`Exhibit AV-1042 (the Mercer Report) should be excluded as evidence from
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`this proceeding and Avaya’s new exhibits (AV-1048 – AV-1053) should be
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`expunged.
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`5
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`
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`
`
`Date: December 30, 2013
`
`1737 King Street, Suite 500
`Alexandria, VA 22314
`Telephone (703) 836-6620
`
`
`
`
`
`Case No. IPR2013-00071
`
`Respectfully submitted,
`BUCHANAN INGERSOLL & ROONEY PC
`
`/Charles F. Wieland/
`By:
`Charles F. Wieland III
`Registration No. 33,096
`Counsel for NETWORK-1 SECURITY
` SOLUTIONS, INC.
`
`
`
`
`
`
`6
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`OWNER’S REPLY TO PETITIONER’S OPPOSITION TO MOTION TO
`EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c) is being served via electronic
`mail (with Petitioner’s Consent) upon the following this 30th 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 30, 2013
`
`
`
`
`
`
`
`
`
`/Charles F. Wieland III/
`Charles F. Wieland III
`Registration No. 33,096
`Counsel for NETWORK-1 SECURITY
` SOLUTIONS, INC.
`
`
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