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 REPLY
`IN SUPPORT OF ITS MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`_______________________________
`
`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 REPLY
`IN SUPPORT OF ITS MOTION TO EXCLUDE EVIDENCE
`
`
`
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`
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`
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`
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`Patent Owner may be uncomfortable with the characterization of its Second
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`Declaration as a “dumping grounds.” But the fact remains that Patent Owner used
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`its Second Declaration to interject the Irrelevant Arguments that it could not fit
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`(and did not use) in its Reply Brief, and then used its expert as a vehicle to address
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`Patent Law Testimony and District Court Litigation Arguments.
`
`I.
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`THE IRRELVANT ARGUMENTS
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`Patent Owner addresses the Irrelevant Arguments in Section I.A. of its
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`Opposition, first conceding that they were “paragraphs not specifically cited” in its
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`Reply Brief. Opp’n at 1.
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`“Arguments must not be incorporated by reference from one document into
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`another document.” 37 C.F.R. 42.6(a)(3). The Board explained the policy behind
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`this rule during the final rulemaking process:
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`The prohibition against incorporation by reference minimizes the
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`chance that an argument would be overlooked and eliminates abuses
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`that arise from incorporation and combination. In DeSilva v.
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`DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999), the court rejected
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`“adoption by reference” as a self-help increase in the length of the
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`brief and noted that incorporation is a pointless imposition on the
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`court’s time as it requires the judges to play archeologist with the
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`record. The same rationale applies to Board proceedings.
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`77 Fed. Reg. 48617 (emphasis added).
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`
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`1
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`
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`While Patent Owner would violate Rule 42.6(a)(3) if it had incorporated the
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`Irrelevant Arguments by reference, it goes one step further in the wrong direction
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`by not providing any reference to Irrelevant Arguments at all in its Reply Brief.
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`Instead, it makes the Board “play archeologist with the record” and attempts (in
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`limited instances) to use its Opposition to this Motion (Paper 88) as an after-the-
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`fact roadmap to correlate its Reply Brief with its Second Declaration. Then Patent
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`Owner makes the Board do the brunt of the work, leaving it to analyze whether the
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`remaining 43 paragraphs have foundation and support (addressed in Section I.A.,
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`below) and whether 4 paragraphs “were inadvertently cited using incorrect
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`paragraph numbers” in the Reply Brief (addressed in Section I.B, below).
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`A. Lack of Foundation and Support
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`While Patent Owner points to narrow instances where it claims that
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`foundation and support exist, it pointlessly imposes on the Board the task of
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`determining whether 43 paragraphs (¶¶ 230, 231, 241, 244, 245, 247, 248, 249,
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`268, 270–282, 284–291, 293, 298, 299, 302, 316, 328–335) “lay the necessary
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`foundation and… directly support or build support for positions taken and
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`arguments made in its” Reply Brief. Opp’n at 4. It provides no explanation how
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`each of these specific paragraphs purportedly meet these tests. These are not
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`foundational arguments or arguments that directly or indirectly build support.
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`
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`2
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`
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`They are entirely new arguments not addressed in Patent Owner’s Reply Brief.
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`They are exactly the type of abuse that the Board should prohibit.
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`Woodmas (¶¶ 284–290). The Reply Brief makes only one argument on
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`what Woodmas does or does not disclose—whether it discloses the “determining”
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`step. The Second Declaration further addresses two additional and distinct
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`elements: the preamble (¶¶ 285–286) and the “Ethernet data node adapted for…”
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`limitation (¶¶ 287–290). These other elements are not referenced in the Reply
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`Brief.
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`Matsuno (¶¶ 267–281). These paragraphs address statements by Avaya’s
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`expert, Zimmerman, concerning the Matsuno reference. The Reply Brief does not
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`address any of Zimmerman’s specific statements.
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`Section VI of Exhibit 2024 (¶¶ 328–335). In these paragraphs, Knox
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`argues why proposed substitute claims 10 and 11 are “not obvious over other
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`references brought to the attention during previous litigations.” None of these
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`arguments are cited or relied upon in Patent Owner’s Reply Brief.
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`“Voltage” / “Voltage Level” (¶¶ 231, 241, 244, 245, 247). Patent Owner,
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`again through Knox, makes several arguments regarding “voltage” or “voltage
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`level” that are not cited or relied on in Patent Owner’s Reply Brief or elsewhere.
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`See Exhibit N1-2024 (¶¶ 228–231, 241–247).
`
`
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`3
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`
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`
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`These are all clear and indisputable examples of Patent Owner seeking to
`
`make its case through its expert declaration. See 77 Fed. Reg. 48617 (citing
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`Globespanvirata, Inc. v. Tex. Instruments, Inc., 2005 WL 3077915, * 1 (D. N.J.
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`2005) and noting the improper practice of using “cursory statements in a motion”
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`combined with “making [a] case through incorporation of expert declaration and a
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`claim chart”). The Board should exclude them.
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`B.
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`The “Inadvertently Cited” Paragraphs
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`Patent Owner further imposes upon the Board by what it claims to be its
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`“inadvertent[]” citation to “incorrect paragraph numbers.” Had Avaya not
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`objected, the Board would have been forced to read Patent Owner’s mind and
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`arrive at its decoder-ring solution: “¶199=¶331; ¶120=¶332; ¶121=¶333; and
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`¶122=¶334.” It unapologetically shrugs off any obligation to make its papers clear
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`to the Board making the excuse that it “would exalt form over substance.” Opp’n
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`at 6. The Board should not be put upon to act as an archeologist, especially when
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`the Patent Owner has not previously attempted to fix the supposed inadvertent
`
`error.
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`II. THE PATENT LAW TESTIMONY
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`Patent Owner claims that the Patent Law Testimony does not constitute
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`“inadmissible patent law opinions.” As an initial matter, the issue is not whether
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`Knox provided opinions, but whether he provided any “[t]estimony on United
`
`
`
`4
`
`
`
`
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`States patent law.” See 37 C.F.R. § 42.65(a). Knox clearly did so in his Second
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`Declaration. Contrary to Patent Owner’s assertion, Opp’n at 7, Knox did not
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`testify by “identify[ing] his understanding of the law.” In ¶ 230, for instance,
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`Knox states baldly and without referencing his understanding that “[a]dding a new
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`step cannot broaden the scope of the original claim.” All Knox testimony on
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`patent law should be excluded.
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`III. THE DISTRICT COURT LITIGATION ARGUMENTS
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`Patent Owner’s claim that Knox did not “compare costs of an IPR
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`proceeding to the overall costs of litigation” flies in the face of Knox’s own
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`testimony where he testifies that “[d]istinguishing each reference … would not be
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`an efficient and cost-effective alternative to district court litigation.” Exhibit N1-
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`2024, ¶ 333. How can he testify whether this proceeding is efficient and cost-
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`effective without a baseline understanding of the district court litigation that he
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`contrasts? He cannot, and this testimony should be excluded.
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`IV. NO REQUIREMENT TO OBJECT TO ENTIRE DECLARATION
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`Patent Owner wrongly claims that Avaya was required to object to the entire
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`Second Declaration as a “dumping ground.” This argument confuses the specific
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`requisite objections under 37 C.F.R. § 42.64(c)—which Avaya properly made—
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`with the specific remedy (total exclusion) that Avaya seeks. Nothing in the Rules
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`requires that Avaya identify the remedy sought in a motion to exclude.
`
`
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`5
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`
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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.
`
`
`
`
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`December 30, 2013
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`6
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`
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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 30th day of December 2013, a true and correct
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`copy of the foregoing “PETITIONER AVAYA INC.’S REPLY IN SUPPORT OF
`
`ITS MOTION TO EXCLUDE EVIDENCE” was served, by electronic mail, upon
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`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.
`
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`December 30, 2013
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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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