Trials@uspto.gov
`571-272-7822
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` Entered: September 3, 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 order 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.
`
`
`571-272-7822
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`
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` Entered: September 3, 2013
`
`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 order 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 August 30, 2013, the following individuals participated in a conference
`
`call:
`
`1. David Cavanugh, counsel for Petitioners (“EMC”);
`2. Joseph Rhoa, counsel for Patent Owner (“PersonalWeb”); and
`3. Kevin Turner, Joni Chang, and Michael Zecher, Administrative Patent
`Judges.
`
`During the conference call, EMC requested authorization to rely on
`supplemental evidence in its reply—namely, supplemental evidence (Ex. 1042-
`10722) that was submitted previously pursuant to 37 C.F.R. § 42.64(b)(2), in
`response to PersonalWeb’s evidentiary objection (Paper 28). See Paper 41 at 4.
`PersonalWeb also requested authorization to object to any prior-filed supplemental
`evidence relied upon in EMC’s reply pursuant to 37 C.F.R. § 42.64(b)(1). Upon
`consideration of the parties’ requests, the Board authorized EMC to rely on prior-
`filed supplemental evidence in its reply, and authorized PersonalWeb to object to
`evidence relied upon in EMC’s reply, including any prior-filed supplemental
`evidence. Any objection to evidence must be served within five business days of
`the filing of EMC’s reply, and must identify the grounds for the objection with
`sufficient particularity to allow correction in the form of supplemental evidence in
`compliance with 37 C.F.R. § 42.64(b)(1).
`EMC further sought guidance on whether the “printed publication” argument
`presented in the patent owner response should be addressed in its reply or in an
`
`2 For the purpose of clarity and expediency, IPR2013-00082 is representative and
`all citations are to IPR2013-00082 unless otherwise noted.
`
`2
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`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`opposition to a motion to exclude. In its patent owner response, PersonalWeb
`argues that certain references (i.e., Langer and Kantor3) relied upon by EMC to
`support the instituted grounds of unpatentability are not “printed publication.”
`Upon inquiry by the Board, PersonalWeb clarified that it intends to file a motion to
`exclude that will present arguments directed to inadmissibility of evidence based
`on the Federal Rules of Evidence. The Board indicated that EMC may address the
`“printed publication” argument in its reply and the inadmissibility arguments in its
`opposition to motion to exclude, in a level of detail that is necessary to rebut those
`arguments sufficiently.
`EMC further requested additional pages for its reply. EMC contends that
`additional pages are needed to respond to issues raised in the patent owner
`response, which contains numerous arguments, including the “printed publication”
`argument, and claim constructions of terms that were not construed explicitly
`before. The Board noted that EMC had the opportunity to provide its claim
`constructions in its petition, and there are not many challenged claims. EMC
`reasonably could have foreseen the “printed publication” argument at the time of
`filing its petition. Moreover, EMC may rely upon prior-filed supplemental
`evidence and new testimony in its reply. Upon consideration of EMC’s request,
`the Board was not persuaded that additional pages should be authorized for EMC’s
`reply.
`
`3 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”).
`3
`
`
`
`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
`
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that EMC is authorized to rely on prior-filed supplemental
`evidence in its reply;
`FURTHER ORDERED that PersonalWeb is authorized to object to any
`evidence relied upon in EMC’s reply, including prior-filed supplemental evidence;
`any objection to evidence must be served within five business days of the filing of
`EMC’s reply, and must identify the grounds for the objection with sufficient
`particularity to allow correction in the form of supplemental evidence in
`compliance with 37 C.F.R. § 42.64(b)(1); and
`FURTHER ORDERED that EMC’s request for additional pages to use in
`its reply is denied.
`
`
`
`
`
`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
`
`4
`
`
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