BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
`
`STATES PATENT AND TRADEMARK OFFICE
`
`Trial No.:
`
`IPR 2013—00082
`
`In re:
`
`US. Patent No. 5,978,791
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`
`EMC Corporation & VMware, Inc.
`
`Inventors:
`
`David A. Farber and Ronald D. Lachman
`
`For: DATA PROCESSING SYSTEM USING SUBSTANTIALLY UNIQUE
`IDENTIFIERS TO IDENTIFY DATA ITEMS, WHEREBY IDENETICAL
`
`DATA ITEMS HAVE THE SAME IDENTIFIERS
`
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`October 8, 2013
`
`PATENT OWNER’S OBJECTIONS TO DOCUMENTS/EVIDENCE
`
`PURSUANT TO 37 C.F.R. § 42.64gbzg11
`
`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Board’s Order dated September
`
`3, 2013, patent owner PersonalWeb Technologies, LLC objects to the
`
`documents/evidence identified below that were submitted by petitioner(s) on reply
`
`and/or that were prior—filed supplemental evidence relied upon by petitioner on
`
`reply, for the following reasons:
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`1. Each of (a) Exhibit 1075 (Peterson), (b) Exhibit 1076 (Tanenbaum), (c)
`
`the statements in the Reply Declaration of Douglas W. Clark (labeled
`
`Ex. 1081) at paragraphs 13 and 24 that rely upon and/or cite to Exhibit
`
`1
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`‘
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`2020057
`
`
`
`STATES PATENT AND TRADEMARK OFFICE
`
`Trial No.:
`
`IPR 2013—00082
`
`In re:
`
`US. Patent No. 5,978,791
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`
`EMC Corporation & VMware, Inc.
`
`Inventors:
`
`David A. Farber and Ronald D. Lachman
`
`For: DATA PROCESSING SYSTEM USING SUBSTANTIALLY UNIQUE
`IDENTIFIERS TO IDENTIFY DATA ITEMS, WHEREBY IDENETICAL
`
`DATA ITEMS HAVE THE SAME IDENTIFIERS
`
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`
`October 8, 2013
`
`PATENT OWNER’S OBJECTIONS TO DOCUMENTS/EVIDENCE
`
`PURSUANT TO 37 C.F.R. § 42.64gbzg11
`
`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Board’s Order dated September
`
`3, 2013, patent owner PersonalWeb Technologies, LLC objects to the
`
`documents/evidence identified below that were submitted by petitioner(s) on reply
`
`and/or that were prior—filed supplemental evidence relied upon by petitioner on
`
`reply, for the following reasons:
`
`1. Each of (a) Exhibit 1075 (Peterson), (b) Exhibit 1076 (Tanenbaum), (c)
`
`the statements in the Reply Declaration of Douglas W. Clark (labeled
`
`Ex. 1081) at paragraphs 13 and 24 that rely upon and/or cite to Exhibit
`
`1
`
`‘
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`2020057
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`
`
`Patent Owner’s Objections to Evidence/Documents
`
`IPR 2013-00082 (US 5,978,791)
`
`1075 and/or 1076, (d) the statements in the Reply Declaration of
`
`Douglas W. Clark at paragraph 20 that rely upon and/or cite to Langer or
`
`Ex. 1082, and (e) the statements in the Reply Declaration of Douglas W.
`
`Clark at paragraphs 27—28 that rely upon and/or cite to Ex. 1012, are
`
`objected to as irrelevant, prejudicial, confusing, lacking foundation, and
`
`beyond the scope of this IPR. See e.g., Federal Rules of Evidence (FRE)
`
`401, 402, 403. This IPR was instituted based on Woodhill. This lPR
`
`was not instituted in any respect on Exhibit 1075, Exhibit 1076, Exhibit
`
`1012, Exhibit 1082, or Langer, and reliance on these exhibits is outside
`
`the scope of this IPR and impermissible for the reasons explained above.
`
`
`
`Moreover, Petitioner’s Reply may only respond to arguments raised in
`
`Patent Owner’s Response, and new evidence such as Exhibits 1075,
`
`1076 and 1081 that could have been presented with the original petition
`
`are improper. See e.g., Office Patent Trial Practice Guide, Vol. 77, N0.
`
`157, pg. 48767 at 1 (Aug. 14,2012); and 37 CFR § 42.23(b).
`
`2. The following statements in the Reply Declaration of Douglas W. Clark
`
`(labeled Ex. 1081) are objected to as contradicting his prior testimony:
`
`page 4, lines 6-14; page 5, lines 6~12 and 15—17; page 6, lines 16—20;
`
`page 7, lines 11-13; page 10, line 12 to page 11, line 12; page 12, line 1
`
`to page 13, line 3; page 14, lines 5-8; page 19, lines 1—20; page 22, lines
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`1-5; page 23, lines 4—14 and 16—20; page 24, lines l—l7; and page 25, line
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`2020057
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`Patent Owner‘s Objections to Evidence/Documents
`
`IPR 2013-00082 (US 5,978,791)
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`1 to page 27, line 8. Petitioner cannot rely on a new declaration that
`
`contradicts prior deposition and/or declaration testimony. See for
`
`example the reasons discussed in the following cases. Bickerstaflv.
`
`Vassar College, 196 F.3d 435, 455 (2d Cir. NY. 1999); Kavowras v.
`
`NY. Times Co, 132 Fed. Appx. 381, 383 (2d Cir. 2005); Golden V.
`
`Merrill Lynch & Co, 2007 US. Dist. LEXIS 90106, at *23—24
`
`(S.D.N.Y. Dec. 6, 2007); Ramos v. Baldor Specialty Foods, Inc, 201 1
`
`US. Dist. LEXIS 66631 (S.D.N.Y. June 16, 2011); Brown v.
`
`Henderson, 257 F.3d 246, 252 (2d Cir. 2001); Durant v. A.C.S. State &
`
`Local Solutions, Inc, 460 F. Supp. 2d 492, 494—95, 498 (S.D.N.Y.
`
`2006); Mitchell v. Washingtonville Cent. Sch. Dist, 992 F. Supp. 395,
`
`409-10 (S.D.N.Y. 1998), afl’d, 190 F.3d 1 (2d Cir. 1999); and Banting v.
`
`Nagy, 452 F. Supp. 2d 447, 460 (S.D.N.Y. 2006). For example and
`
`Without limitation, see Clark’s prior conflicting deposition testimony
`
`from July 2013 at deposition pages 134, 142—45, 150—51, 158—168, 171—
`
`79.
`
`3. The statements in the Reply Declaration of Douglas W. Clark (labeled
`
`EX. 1081), at paragraphs 17—19 and 23, that rely upon and/or cite to the
`
`claims of Woodhill (EX. 1005) are objected to as irrelevant, prejudicial,
`
`confusing, lacking foundation, and beyond the scope of this lPR. The
`
`relied—upon subject matter in the claims of Woodhill is not “prior art” to
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`2020057
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`
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`Patent Owner’s Objections to Evidence/Documents
`
`IPR 2013-00082 (US 5,978,791)
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`the ‘791 patent and has not been shown to be “prior art” to the ‘791
`
`patent. See eg, Federal Rules of Evidence (FRE) 401, 402, 403, 702,
`
`703. Woodhill was “filed” before April 11, 1995 (the effective filing
`
`date of the ‘791 patent), but was not published until after April 11, 1995.
`
`Any material added to Woodhill after April 11, 1995 (e.g., including the
`
`information in the claims of Woodhill which Dr. Clark cites to and now
`
`relies upon, such as the “name” recitations in the claims of Woodhill in
`
`connection with binary object identifier) cannot be relied upon herein
`
`and are not prior art. A copy of Woodhill’s file history was previously
`
`provided to evidence the content in Woodhill that can be relied on in this
`
`IPR under Section 102(e).
`
`(EX. 2007.)
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`4. The “capable”, “can” and “may” statements regarding Woodhill in the
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`Reply Declaration of Douglas W. Clark (labeled Ex. 1081), at (i) page
`
`10, lines 12—13, (ii) page 12, lines 1—5, (iii) page 17, lines 17-19, and (iv)
`
`page 19, lines 17-19, are objected to as irrelevant, prejudicial, confusing,
`
`lacking foundation, and beyond the scope of this IPR. The issue in this
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`IPR is what Woodhill discloses (what is necessarily present in Woodhill)
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`— not what Woodhill is “capable” of or “may” do according to Douglas
`
`W. Clark. For example, a computer is “capable” of being programmed
`
`in many manners - but just because a computer is “capable” of being
`
`programmed in a given manner does not mean that it is programmed in
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`2020057
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`Patent Owner’s Objections to Evidence/Documents
`
`IPR 2013-00082 (US 5,978,791)
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`that manner and to the contrary it is likely not programmed in that given
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`manner.
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`5. The following statement in the Reply Declaration of Douglas W. Clark
`
`(labeled EX. 1081) is objected to, to the extent it is a new obviousness
`
`allegation, that was not previously made, is prejudicial, is outside the
`
`scope of this IPR, lacks foundation, lacks underlying facts and data, and
`
`is in violation of FRE 702, 705. See the Reply Declaration of Douglas
`
`W. Clark (labeled EX. 1081) at page 18, lines 8-11. Such new
`
`allegations could have been presented with the original petition and are
`
`improper, and patent owner was never given an opportunity to address
`
`same. See e.g., Office Patent Trial Practice Guide, Vol. 77, N0. 157, pg.
`
`48767 at I (Aug. 14, 2012).
`
`6. Dr. Clark’s obviousness allegations in his Reply declaration are also
`
`objected to as not being supported by facts or data, as he did not follow
`
`the required protocol of Graham v. John Deere,y383 US. 1 (1966), in
`
`alleging obviousness and did not consider and analyze all factors
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`required by that case.
`
`7. The following statements in the Reply Declaration of Douglas W. Clark
`
`(labeled Ex. 1081) are objected to as lacking foundation, assuming facts
`
`not in evidence, conclusory, and representing improper opinion
`
`testimony not supported by underlying facts or data contrary to F.R.E.
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`2020057
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`Patent Owner’s Objections to Evidence/Documents
`
`IPR 2013—00082 (US 5,978,791)
`
`702, F.R.E. 705, and Office Patent Trial Practice Guide, Vol. 77, No.
`
`157, pg. 48763 (Aug. 14,2012): page 3, lines 4-6; page 4, lines 5—14;
`
`page 5, lines 5—17; page 7, line 13; page 10, line 12 to page 11, line 12;
`
`page 12, lines 1—5; page 14, lines 4—8; page 19, lines 17—19; page 23,
`
`lines 4-5; and page 26, lines 1—3.
`
`Respectfully submitted,
`
`NIXON & VANDERHYE P.C.
`
`By:
`
`
`/Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`Updeep (Mickey) S. Gill
`Reg. No. 37,334
`Counsel for Patent Owner PersonalWeb
`
`JAR:caj
`Nixon & Vanderhye, PC
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203—1808
`Telephone: (703) 816-4000
`Facsimile: (703) 816—4100
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`2020057
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`Patent Owner’s Objections to Evidence/Documents
`
`IPR 2013-00082 (US 5,978,791)
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`CERTIFICATE OF SERVICE
`
`I hereby certify service of the foregoing Patent Owner’s Objections to
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`Documents/Evidence Pursuant to 37 CPR. § 42.64(b)(1) to the following counsel
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`for petitioner on October 8, 2013 Via email (pursuant to agreement between the
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`parties):
`
`Peter M. Dichiara
`
`WilmerHale
`
`60 State Street
`
`Boston, MA 02109
`(peter.dichiara@wilm erhale.corn)
`
`By:
`
`/Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`
`2020057
`
`
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