`571-272-7822
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` Paper 11
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`Entered: February 6, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`EMC Corporation and VMware, Inc.
`Petitioner,
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`v.
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`Personal Web Technologies, LLC.
`Patent Owner.
`____________
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`Case IPR2013-00083 (JYC)
`Patent 6,415,280
`____________
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`Before KEVIN F. TURNER, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
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`CHANG, Administrative Patent Judge.
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`ORDER
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`A telephone conference call was held on February 5, 2013, between the
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`Patent judges and respective counsel for the parties. EMC’s counsel initiated the
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`call to seek authorization to file three replacement exhibits in this proceeding and
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`two other inter partes review proceedings (Ex. 1038 in IPR2013-00082; Ex. 1034
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`IPR2013-00083
`Patent 6,415,280
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`in IPR2013-00083; and Ex. 1047 in IPR2013-00085). Each of the original exhibits
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`appears to be a claim chart from another proceeding.
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`During the conference call, EMC requested authorization to file the
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`replacement exhibits and indicated that the replacement exhibits would contain no
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`substantive changes. Rather, the replacement exhibits would simply present the
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`information in a short, concise, and user-friendly manner that would be easier for
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`the Board to consider the information. EMC further explained that the replacement
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`exhibit for Ex. 1047 in IPR2013-00085 would contain information regarding the
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`prior art publication rather than the alleged on-sale product. EMC also offered to
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`provide confirmation that no new information would be provided in the
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`replacement exhibits. Prior to the conference call, EMC provided a copy of the
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`proposed replacement exhibits to counsel for Personal Web.
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`In response, Personal Web argued that, based on its review of the proposed
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`replacement exhibits, they appear to contain substantive and drastic changes,
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`including removing information that is helpful to Personal Web. According to
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`Personal Web, the changes are more than correcting a clerical or typographical
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`mistake under 37 C.F.R. § 42.104(c) and Personal Web would be prejudiced as it
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`has already been analyzing the petitions, declarations, and exhibits for roughly one
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`and half months. Personal Web also pointed out that 37 C.F.R. § 42.123 permits a
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`IPR2013-00083
`Patent 6,415,280
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`motion to submit supplemental information after a trial has been instituted, but not
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`before institution.
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` Upon consideration of both parties’ arguments, the Board finds Personal
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`Web’s arguments persuasive. The original exhibits appear to be readable and are
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`presented in a sufficiently organized format. Moreover, the filing of replacement
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`exhibits at this time before institution would place an unnecessary burden on
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`Personal Web while they prepare to file patent owner preliminary responses that
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`are due next month.
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`Accordingly, it is
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`ORDERED that EMC’s request for authorization to file replacement
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`exhibits is denied.
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`IPR2013-00083
`Patent 6,415,280
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`PETITIONER:
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`Peter M. Dichiara, Esq.
`David L. Cavanaugh, Esq.
`WILMER CUTLER PICKERING HALE & DORR LLP
`peter.dichiara@wilmerhale.com
`daidcavanaugh@wilmerhale.com
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`PATENT OWNER:
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`Joseph A. Rhoa, Esq.
`Updeep. S. Gill, Esq.
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
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