Trials@uspto.gov
`571-272-7822
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`Entered: June 19, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION
`Petitioner,
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Cases IPR2013-00082 (Patent 5,978,791)
`IPR2013-00083 (Patent 6,415,280)
`IPR2013-00084 (Patent 7,945,544)
`IPR2013-00085 (Patent 7,945,539)
`IPR2013-00086 (Patent 7,949,662)
`IPR2013-00087 (Patent 8,001,096)1
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order addresses issues that are identical in all six cases. Therefore, we
`exercise our discretion to issue one opinion to be filed in each of the six cases. The
`parties, however, are not authorized to use this style heading in any subsequent
`papers. Note that the petitioners for IPR2013-00082 and IPR2013-00083 are EMC
`Corporation and VMware, Inc.
`
`

`

`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`
`
`
`
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`
`
`On June 17, 2013, a telephone conference call was held between respective
`
`counsel for the parties and Judges Turner, Chang, and Zecher. The telephone
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`conference call was initiated by PersonalWeb, seeking clarification on whether
`
`EMC’s exhibits (Ex. 1042-10722) filed as supplemental evidence in response to
`
`PersonalWeb’s evidentiary objection (Paper 28) comply with 37 C.F.R. § 42.64.
`
`During the conference call, PersonalWeb alleged that EMC’s supplemental
`
`evidence is not responsive to PersonalWeb’s evidentiary objections, and requested
`
`that all of those EMC’s exhibits be expunged from the record for each trial.
`
`PersonalWeb further requested an extension of time for filing a patent owner
`
`response should the Board decline to expunge those exhibits.
`
`At the outset, the Board noted that PersonalWeb’s evidentiary objection is
`
`unduly broad. Notably, PersonalWeb objects to references (e.g., Browne, Langer,
`
`and Kantor3) that are not relied upon by EMC to support any of the instituted
`
`grounds of unpatentability. See Decision on Institution, entered May 17, 2013,
`
`Paper 21, p. 33 (All of the instituted grounds of unpatentability are based on U.S.
`
`
`
`2 For the purpose of clarity and expediency, IPR2013-00082 is representative and
`all citations are to IPR2013-00082 unless otherwise noted.
`
`3
`
` Shirley Browne et al., “Location-Independent Naming of Virtual Distributed
`Software Repositories,” University of Tennessee Technical Report CS-95-278
`(Feb. 1995)(Ex. 1002)(“Browne”).
`
`Albert Langer, “Re: dl/describe (File Descriptions),” post to the “alt.sources”
`newsgroup on Aug. 7, 1991 (Ex. 1003)(“Langer”).
`
`Frederick W. Kantor, “FWKCS™ Contents_Signature System Version 1.22,”
`Zipfile FWKCS122.ZIP (Aug. 10, 1993)(Ex. 1004)(“Kantor”).
`2
`
`

`

`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`Patent 5,649,196 issued to Woodhill). And none of the six inter partes reviews
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`
`
`
`
`
`
`were instituted based on Browne.
`
`Although PersonalWeb indicated that it has filed the same evidentiary
`
`objection for all six inter partes reviews for consistency, the Board nevertheless
`
`reminded the parties to be mindful that an inter partes review is a focused
`
`proceeding, and a final determination must be issued not later than one year after
`
`the date of institution, except for good cause. 35 U.S.C. § 316(a)(11); 37 C.F.R.
`
`§ 42.100(c). Filing the same broad evidentiary objection in all six trials, without
`
`considering whether such an objection would be meaningful for the particular trial,
`
`causes unnecessary delay and increases costs to the Board and opposing party. All
`
`portions of Part 42, Title 37, Code of Federal Regulations, including 37 C.F.R.
`
`§ 42.64, are construed to secure the just, speedy, and inexpensive resolution of
`
`every proceeding.4
`
`The Board next noted that if, upon reconsidering EMC’s original evidence in
`
`light of the supplemental evidence, PersonalWeb is still of the opinion that the
`
`original evidence is inadmissible, PersonalWeb may file a motion to exclude such
`
`
`
`4 37 C.F.R. § 42.1(b); 35 U.S.C. 316(a)(6) (“The Director shall prescribe
`regulations. . . (6) prescribing sanctions for abuse of discovery, abuse of process,
`or any other improper use of the proceeding, such as to harass or to cause
`unnecessary delay or an unnecessary increase in the cost of the proceeding.”
`Emphasis added.) 35 U.S.C. §§ 316(b) and 326(b) (“In prescribing regulations
`under this section, the Director shall consider the effect of any such regulation on
`the economy, the integrity of the patent system, the efficient administration of the
`Office, and the ability of the Office to timely complete proceedings instituted under
`this chapter.” Emphasis added.)
`
`
`3
`
`

`

`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`evidence. 37 C.F.R. § 42.64(c). But any motion to exclude must identify any
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`
`
`
`
`
`
`objections in the record and must explain those objections. Further, a motion to
`
`exclude must be tailored narrowly, objecting to only evidence that is relied upon
`
`by EMC to support the instituted grounds of unpatentability in the particular trial.
`
`Therefore, PersonalWeb should not expect the Board to sort through a broad
`
`motion to exclude evidence.
`
`Additionally, the Board clarified that EMC may rely on the supplemental
`
`evidence only for the issues raised by PersonalWeb’s evidentiary objection or
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`motion to exclude under 37 C.F.R. § 42.64. Should EMC find it necessary to rely
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`on the submitted supplemental evidence for other purposes (e.g., in its reply to the
`
`patent owner’s response or an opposition to a motion to amend claims), EMC
`
`should seek authorization from the Board. In the situation where authorization is
`
`granted, the Board would provide PersonalWeb an opportunity to object to the
`
`supplemental evidence relied upon by EMC in its brief. Therefore, the Board
`
`determined that it is not necessary to expunge EMC’s exhibits filed as
`
`supplemental evidence in response to PersonalWeb’s evidentiary objection.
`
`To increase efficiency and minimize delays, the Board encouraged the
`
`parties to work together on the evidentiary issues and deposition of declarants.
`
`While the due date for filing the patent owner response is July 25, 2013 (DUE
`
`DATE 1, Notice of Stipulation, Paper 38), the due date for filing a motion to
`
`exclude evidence is November 7, 2013 (DUE DATE 4). Therefore, PersonalWeb
`
`has nearly five months from the filing of EMC’s supplemental evidence to file a
`
`motion to exclude. Moreover, the parties may stipulate to different dates for DUE
`
`DATES 1 through 3 (earlier or later, but no later than DUE DATE 4).
`
`4
`
`

`

`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`Accordingly, the Board determined that it is not necessary to modify DUE
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`
`
`
`
`
`
`DATE 1 at this time.
`
`It is
`
`ORDERED that EMC’s exhibits filed as supplemental evidence in response
`
`to PersonalWeb’s evidentiary objection will not be expunged; and
`
`FURTHER ORDERED that no extension of time for filing the patent
`
`owner response is authorized.
`
`
`
`
`
`
`
`
`
`PETITIONER:
`Peter M. Dichiara, Esq.
`David L. Cavanaugh, Esq.
`WILMER CUTLER PICKERING HALE & DORR LLP
`peter.dichiara@wilmerhale.com
`david.cavanaugh@wilmerhale.com
`
`
`PATENT OWNER:
`Joseph A. Rhoa, Esq.
`Updeep. S. Gill, Esq.
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`5
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`