throbber
Filed on behalf of EMC Corporation and VMware, Inc.
`
`By: Peter M. Dichiara, Reg. No. 38,005
`
`David L. Cavanaugh, Reg. No. 36,476
` WILMER CUTLER PICKERING HALE AND DORR LLP
`
`peter.dichiara@wilmerhale.com
`
`david.cavanaugh@wilmerhale.com
`
`Tel.: 617-526-6466
`
`Fax: 617-526-5000
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`____________________________________________
`
`EMC CORPORATION and VMWARE, INC.,
`Petitioners
`
`v.
`
`Patent Owner of
`U.S. Patent No. 6,415,280 to Farber et al.
`
`
`
`
`
`
`
`
`
`
`
`IPR Case No. IPR2013-00083
`
`
`PETITIONERS’ REPLY
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`
`
`
`
`

`

` IPR2013-00083
`Docket No.: 0100157-00244
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................... 1
`I.
`II. WOODHILL ANTICIPATES CLAIMS 36 AND 38 ...................................... 1
`ARGUMENT 1: PersonalWeb’s contention that “Woodhill fails to disclose a
`‘request’ for a data file including ‘a hash of the contents of the data file.’” (Resp.
`§ IV, pp. 3-6, 11) (Claims 36 and 38) .................................................................... 1
`ARGUMENT 2: PersonalWeb’s contention that a “binary object in Woodhill is
`not a ‘data file’, because a binary object in Woodhill is not a named data item.”
`(Resp. § IV, pp. 6-8, 11) (Claims 36 and 38) ......................................................... 5
`ARGUMENT 3: PersonalWeb’s contention that “Woodhill fails to disclose a
`named ‘file’ that consists of only one binary object.” (Resp. § IV, pp. 8-9, 11)
`(Claims 36 and 38) ...............................................................................................10
`ARGUMENT 4: PersonalWeb’s contention that “the definition of ‘file’ given
`by Woodhill with respect to the program 24 that controls Woodhill’s backup
`procedure and self-auditing procedure relied upon by petitioner requires a ‘file’
`to have at least two binary objects.” (Resp. § IV, pp. 9-11, 11) (Claims 36 and
`38) .........................................................................................................................10
`III. WOODHILL RENDERS OBVIOUS CLAIMS 36 and 38 ...........................12
`ARGUMENT 5: PersonalWeb’s contention that “Claims 36 and 38 are not
`obvious over Woodhill” (Resp. § VI, pp. 11-12) .................................................12
`IV. Secondary considerations ...............................................................................12
`
`
`
`
`ii
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` IPR2013-00083
`Docket No.: 0100157-00244
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`I.
`
`INTRODUCTION
`
`PersonalWeb presents four arguments in an effort to support its position that
`
`Woodhill does not invalidate the challenged ‘280 claims. These four arguments
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`boil down to two contentions: (1) that Woodhill’s binary objects are not “named
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`data items”; and (2) that Woodhill does not disclose a “request including a hash of
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`the contents” of the data file. (Resp. 3-10.) Woodhill not only satisfies these
`
`requirements, however, but also operates like the ‘280 preferred embodiments.
`
`PersonalWeb’s arguments to the contrary rely on overly narrow constructions of
`
`the claims, misinterpret and ignore key portions of Woodhill’s disclosure, and
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`mischaracterize Dr. Clark’s testimony. The Board accordingly should reject the
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`challenged claims for the same reasons identified in its initial institution decision
`
`(“Decision”) and in view of the comments below.
`
`PersonalWeb’s response presents its arguments with respect to claim 36 first
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`(Resp. 3-10), and then applies these same arguments to claim 38 and to the
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`Woodhill obviousness ground. (Resp. 10-11.) The following sections address
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`PersonalWeb’s arguments in the order they are presented in PersonalWeb’s
`
`response with respect to claim 36.
`
`II. WOODHILL ANTICIPATES CLAIMS 36 AND 38
`ARGUMENT 1: PersonalWeb’s contention that “Woodhill fails to disclose a
`‘request’ for a data file including ‘a hash of the contents of the data file.’”
`(Resp. § IV, pp. 3-6, 11) (Claims 36 and 38)
`
`As PersonalWeb’s expert concedes, restore operations (and self-audits in
`
`1
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` IPR2013-00083
`Docket No.: 0100157-00244
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`particular) must have “requests” to the backup file server to obtain data from it.
`
`(Dewar Tr. 135; Ex. 1074.) Woodhill is explicit that, for these requests (e.g., self-
`
`audit procedures), the binary object is “identified by a Binary Object Identification
`
`Record 58.” (Woodhill 18:16-23; Ex. 1005; Dewar Tr. 135; Ex. 1074.) It is
`
`equally explicit that this Record 58 includes Binary Object Identifier 74 with hash
`
`field 70, representing a hash of the contents of the binary object. (Woodhill Fig. 3,
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`8:38-65; Ex. 1005.) PersonalWeb cannot dispute these critical disclosures.
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`Instead, it attempts to argue that neither the Binary Object Identification Record 58
`
`nor the Binary Object Identifier 74 is included in any “request.” (Resp. 4.) This
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`argument is critically flawed for at least two reasons.
`
`First, PersonalWeb premises the argument on a strained interpretation of
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`Woodhill’s self-audit procedure and an overly-narrow interpretation of the claims.
`
`Woodhill explicitly states that it “initiates a restore of a… binary object identified
`
`by a Binary Object Identification Record 58.” (Woodhill 18:12-20; Ex. 1005.)
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`There is no reasonable interpretation of this passage other than that Woodhill’s
`
`request for a restore (i.e., client request) includes Binary Object Identification
`
`Record 58. (Reply Clark Decl. ¶ 10; Ex 1078.) As PersonalWeb acknowledges,
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`“the Binary Object Identification Record includes a Binary Object Identifier 74,
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`and the Identifier includes a hash field 70” representing a hash of the contents of
`
`the binary object. (Resp. at 4 (emphasis added); see also Woodhill Fig. 3, 8:38-65;
`
`Ex. 1005; Dewar Tr. 136; Ex. 1074). Woodhill’s self-audit procedure thus
`
`2
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` IPR2013-00083
`Docket No.: 0100157-00244
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`squarely satisfies the claims.1 Dr. Clark confirms that the Binary Object Identifier
`
`74 within the Binary Object Identification Record 58 is used to identify and request
`
`binary objects to restore to the local computer. (Reply Clark Decl. ¶¶ 8-15; Ex.
`
`1078; see also Dewar Tr. 135-136; Ex. 1074.)
`
`Second, PersonalWeb’s argument completely ignores other relevant portions
`
`of Woodhill. For example, Woodhill also discloses that, when restoring a large,
`
`granularized file, it “transmits an ‘update request’ to the remote backup file server
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`12 which includes the Binary Object Identification Record 58” for a desired
`
`binary object, so that it may be retrieved from the backup file server and restored
`
`on the local computer. (Woodhill 17:18-47, specifically 17: 42-45 (emphasis
`
`added); Ex. 1005; Reply Clark Decl. ¶ 15; Ex. 1078.) This passage similarly
`
`confirms that restore operations transmit requests that include Binary Object
`
`Identification Records 58 having Binary Object Identifiers 74 with hash fields 70
`
`
`1 PersonalWeb focuses, in particular, on the unsurprising fact that the Binary
`
`Object Identification Record 58 is “stored in File Database 25,” suggesting that this
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`somehow precludes the record from being used as part of a request for a binary
`
`object. (Resp. 4-5.) As Dr. Clark confirms, however, File Database 25 is merely
`
`the location on each local computer in which Binary Object Identification Records
`
`58 are stored prior to their use as part of client requests transmitted from those
`
`local computers. (Reply Clark Decl. ¶ 12; Ex. 1078.)
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`3
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` IPR2013-00083
`Docket No.: 0100157-00244
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`representing a hash of file contents. (Reply Clark Decl. ¶ 15; Ex. 1078.)
`
` PersonalWeb claims Dr. Clark “acknowledged” that Woodhill “fails to
`
`describe the Binary Object Identifier 74 as part of [the] request.” (Resp. 5-6.) To
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`the contrary, Dr. Clark was unequivocal that restore requests include Binary Object
`
`Identification Record 58 and that Record 58 clearly includes hashes in Binary
`
`Object Identifier 74. (Clark Decl. ¶ 26; Ex. 1009; see also Clark Tr. 216-17; Ex.
`
`2008.) The portion of his testimony cited by PersonalWeb only concerns which
`
`portion of the record is used to access the binary object, not what is used to request
`
`it. Moreover, although Dr. Clark agreed that Woodhill’s text does not explicitly
`
`“say” which field of the Binary Object Identification Record 58 is used (Clark Tr.
`
`167-68, 172-73; Ex. 2008), he confirmed that there was no need for this level of
`
`specificity for such a basic operation because a person of skill in the art would
`
`understand to “take a Binary Object Identifier and use[ ] that to look up the binary
`
`object” (id. 216-17).2 Woodhill’s text does not delve deeper into the unnecessary
`
`
`2 As Dr. Clark explains, accessing binary objects using their identifiers was a well-
`
`known basic operation at the time of the Woodhill patent (as evidenced by, for
`
`example, the Langer reference from 1991). (Reply Clark Decl. ¶ 10; Ex. 1078; see
`
`also IPR2013-00085, Resp. 41 (PersonalWeb acknowledges that Langer “appears
`
`to disclose” accessing a file with standalone file by employing an MD5 its of the
`
`file contents”); Ex. 1079; In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n
`
`4
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` IPR2013-00083
`Docket No.: 0100157-00244
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`details of specific fields (e.g., 64, 66, 68 or 70) because they are self-evident –
`
`there should be no surprise that the “Binary Object Identifier 74 of the Binary
`
`Object Identification Record (as the name alone suggests) is used to identify and
`
`access a Binary Object. This is precisely why Woodhill refers to Binary Object
`
`Identifier 74 as an “identifier” and also why Woodhill’s claim 1 recites it as a
`
`“name.” (Woodhill 22:3-4; Ex. 1005.) Indeed, PersonalWeb’s expert admits that
`
`Woodhill does not suggest that binary objects would be identified in any way other
`
`than by information from Binary Object Identification Records 58. (Dewar Tr.
`
`136-137; Ex 1074.)
`
`ARGUMENT 2: PersonalWeb’s contention that a “binary object in Woodhill
`is not a ‘data file’, because a binary object in Woodhill is not a named data
`item.” (Resp. § IV, pp. 6-8, 11) (Claims 36 and 38)
`
`The Board has construed a “data file” as a “named data item, such as a
`
`simple file that includes a single, fixed sequence of data bytes, or a compound file
`
`that includes multiple, fixed sequences of data bytes.” (Decision 10-11.) Neither
`
`PersonalWeb nor its expert disputes this construction. Nor can they reasonably
`
`dispute that Woodhill (like the ‘280 patent) discloses data files named with
`
`filenames (Woodhill 3:44-61; Ex. 1005); that these data files may be requested, for
`
`
`
`considering the disclosure of a reference, it is proper to take into account not only
`
`specific teachings of the reference but also the inferences which one skilled in the
`
`art would reasonably be expected to draw therefrom.”)
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`5
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`Docket No.: 0100157-00244
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`example, by restore operations (id. 18:20-23; see also 17:17-22 ); that each file is
`
`made up of one or more binary objects (id. 2:3, 21:64-65); and that each binary
`
`object is a fixed sequence of bytes (id. 4:12-47.) PersonalWeb nevertheless
`
`contends that Woodhill does not disclose requests for a “data file” because
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`Woodhill’s requests identify binary objects rather than data files. (Resp. 6-8.)
`
`These arguments rely on a flawed and overly-narrow construction of the claims
`
`that would exclude the ‘280 embodiments. The ‘280 embodiments – like Woodhill
`
`– request data files based on hashes of their segments or parts. PersonalWeb’s
`
`arguments also completely ignore Woodhill’s relevant disclosures.
`
`First, PersonalWeb contends that Woodhill fails to satisfy the claims
`
`because, according to PersonalWeb, “[b]inary objects in Woodhill are not
`
`‘named’” and “Binary Object Identifiers are not file names.” (Resp. 7 (emphasis
`
`added).) Contrary to PersonalWeb’s arguments, however, the claims do not
`
`demand that the request for the data file include a “file name” or even a “name.” 3
`
`Instead, the claims require only that the “request” be “for the data file” (i.e., for a
`
`named data item) and that it include “a hash of the contents of the data file.” (‘280
`
`
`3 PersonalWeb misplaces reliance on Dr. Clark’s testimony, stating that he agreed
`
`“that Binary Object Identifiers 74 in Woodhill are not file names.” (Resp. 7.) As
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`stated above, the request must be “for the data file,” but at no place does the claim
`
`require the request to include a file name.
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`6
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`Docket No.: 0100157-00244
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`patent, 43:62-64, 44:10-13; Ex. 1001.) Woodhill clearly satisfies these
`
`requirements. In Woodhill -- as in the ‘280 embodiments – binary objects are parts
`
`or segments of named data files. (Woodhill 3:44-4:47, specifically 3:54-61; see
`
`also id. 2:3 Ex. 1005.) As PersonalWeb’s expert concedes, Woodhill’s restore
`
`operations are for these named data files. (Dewar Tr. 140; Ex. 1074; see also
`
`Woodhill 17:18-45, 18:16-19; Ex. 1005.) The restore requests identify the data
`
`file’s binary objects with Binary Object Identification Records 58 including Binary
`
`Object Identifiers 74 with hashes 70 of the contents of the binary objects.
`
`(Woodhill 17:18-45, 18:16-19; Ex. 1005; see also Reply Clark Decl. ¶¶ 8-15; Ex.
`
`1078.) This is all the claim requires.
`
`Second, PersonalWeb also makes the related argument that Woodhill’s
`
`requests do not include a “hash of the contents of the data file” because Woodhill
`
`hashes binary objects rather than data files. (Resp. 7-8.) This argument ignores
`
`that the binary objects are the contents of the data files. In fact, Woodhill once
`
`again operates just like the ‘280 embodiments. In Woodhill, data files are divided
`
`into binary objects whose contents (and thus the file’s contents) are hashed.
`
`(Woodhill 8:21-23 (“The Binary Object Hash field 70 is calculated against the
`
`contents of the binary object.”); id. 3:54-61, 4:12-23, 7:60-8:31; Ex. 1005; see also
`
`Reply Clark Decl. ¶¶ 4, 12; Ex. 1078.) PersonalWeb’s argument that the hash
`
`included in the request must be based on “all data in the data file” (Resp. 8) is thus
`
`not only overly-narrow but also misplaced. This is clearly not the broadest
`
`7
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` IPR2013-00083
`Docket No.: 0100157-00244
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`reasonable construction of the claims. Instead, it is an improper attempt to re-write
`
`the actual claim phrase “the request including a hash of the contents of the data
`
`file” to “the request including a hash of all of the contents of the data file.”
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`Moreover, it cannot be correct because it would exclude the ‘280 preferred
`
`embodiments. As the Board’s construction confirms, “data files” include both
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`simple and compound files. (Decision 10.) In the ‘280 patent, as in Woodhill,
`
`compound files are divided into segments, and the data of the compound file is
`
`provided in response to separate requests for segments having hashes of the
`
`segments. (‘280 patent 21: 30-50 and 34:4-8; Ex. 1001; see also Reply Clark Decl.
`
`¶ 14; Ex. 1078.) PersonalWeb’s attempt to rewrite the claims to require a hash of
`
`the complete “data file” rather than hashes of its segments would thus exclude the
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`preferred embodiments. As the Federal Circuit has repeatedly confirmed, such a
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`construction is “rarely, if ever” correct. See, e.g., Accent Packaging, Inc. v.
`
`Leggett & Platt, Inc., 707 F.3d 1318 (Fed. Cir. 2013).
`
`Finally, even if the Board were to adopt PersonalWeb’s narrow view of the
`
`claims, Woodhill plainly states that a “binary object identifier [is] the name of the
`
`associated binary object.” (Woodhill 22:3-4 (emphasis added); Ex. 1005.) Given
`
`this explicit disclosure, binary objects are “named data items” under any
`
`construction. Moreover, Woodhill describes files having only a single binary
`
`object. (See infra, Argument 3.) For example, Woodhill describes a system that
`
`includes “data files comprised of one or more binary objects” (Woodhill 1:66-2:3
`
`8
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` IPR2013-00083
`Docket No.: 0100157-00244
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`(emphasis added); Ex. 1005), and claims an embodiment including “means for
`
`dividing each data file into one or more binary objects.” (Id. 21:64-65 (emphasis
`
`added).) As Dr. Clark confirms, files having a single binary object would be
`
`named by their file name, in addition to being named by a Binary Object Identifier.
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`(Reply Clark Decl. ¶¶ 4-7; Ex. 1078.) In this situation, Woodhill’s restore requests
`
`would include hashes of all of the contents of the data file, thus satisfying even
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`PersonalWeb’s overly-narrow construction. (Reply Clark Decl. ¶ 12; Ex. 1078.)4
`
`
`
`
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`4 PersonalWeb’s attempt to change the Board’s constructions post-institution is an
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`unfair attempt to subvert the clearly-defined procedure of IPR. Altering a claim
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`construction is no different in effect than amending a claim: both change the
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`claim’s scope. PersonalWeb should not be permitted to do with claim construction
`
`something that they chose not to do through claim amendment. In the case of the
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`‘280 claims, for example, Langer and Kantor – currently being considered in
`
`related IPRs – both disclose creating hashes against all bits in a file. (Dewar Tr.
`
`367-68 (Langer discloses a MD5 hash against all bits in a package); Ex. 1074;
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`IPR2013-00087, Resp. 18 (Kantor’s “‘y’ procedure calculates a CRC value based
`
`on ‘every byte in the zipfile’”); Ex. 1080) Accordingly, PersonalWeb’s attempt to
`
`preserve patentability through a new claim construction should be rejected.
`
`9
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`

`

` IPR2013-00083
`Docket No.: 0100157-00244
`ARGUMENT 3: PersonalWeb’s contention that “Woodhill fails to disclose a
`named ‘file’ that consists of only one binary object.” (Resp. § IV, pp. 8-9, 11)
`(Claims 36 and 38)
`
`PersonalWeb asserts that Woodhill “fails to disclose a named ‘file’ that
`
`consists of only one binary object.” (Resp. 8.) From this, it argues that “even if a
`
`‘file’ in Woodhill were to include only one binary object, the hash of that binary
`
`object . . .would not necessarily be a ‘hash of the contents of the data file.’” (Resp.
`
`8-9 (emphasis added.)). However, nothing in the ‘280 claims require a “file” that
`
`consists of only one “data item.” Moreover, PersonalWeb’s argument directly
`
`conflicts with Woodhill’s clear disclosure that a named file may consist of only
`
`one binary object (Woodhill 3:54-61, 1:66-2:3; see also 21:64-65; Ex. 1005) and
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`that the binary object identifier for such a file would necessarily be a hash of the
`
`contents of the binary object and thus the data file (Id. 8:58-60.) Woodhill
`
`accordingly discloses files having a single binary object where the hash of the
`
`binary object is a hash of the entire contents of the file. (Reply Clark Decl. ¶¶ 4-6;
`
`Ex. 1078.)
`
`ARGUMENT 4: PersonalWeb’s contention that “the definition of ‘file’ given
`by Woodhill with respect to the program 24 that controls Woodhill’s backup
`procedure and self-auditing procedure relied upon by petitioner requires a
`‘file’ to have at least two binary objects.” (Resp. § IV, pp. 9-11, 11) (Claims 36
`and 38)
`
`In contrast to its third argument, PersonalWeb’s fourth argument
`
`acknowledges that “Woodhill refers to ‘data files comprised of one or more binary
`
`objects.’” (Resp. 9. (emphasis added.)) PersonalWeb asserts, however, that
`
`10
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`Docket No.: 0100157-00244
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`Woodhill “defines a ‘file’ as viewed by Distributed Storage Manager program 24
`
`as ‘a collection of data streams’ – with ‘streams’ being plural.” (Resp. 9.)
`
`PersonalWeb then continues, “[t]hus, according to Woodhill’s express definition, a
`
`‘file’ . . . requires at least two data streams.” (Id. (emphasis added).) In fact,
`
`Woodhill’s actual text states only that “[t]he Distributed Storage Manager program
`
`24 views a file as a collection of data streams.” (Woodhill 4:12-15; Ex. 1005).
`
`This falls far short of a definition and, even if it were, it does not demand that a file
`
`have two streams. To the contrary, PersonalWeb’s expert – who could not even
`
`say whether he had even read the Board’s Decision in connection with his work on
`
`the case (Dewar Tr. 23-24; Ex. 1074) – readily admitted that a “collection” of files
`
`(a directory) can have zero, one, or more files (i.e., it does not require at least two).
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`(Dewar Tr. 111; Ex. 1074.) Moreover, there is no basis for PersonalWeb’s
`
`contention that “[t]he Board agreed that Woodhill defines a ‘file’ in this manner.”
`
`(Resp. 9 (emphasis added, citing Decision 14).) The Board simply re-iterated the
`
`actual text of Woodhill verbatim and never suggested it was a definition of file as
`
`used in Woodhill. Accordingly, Woodhill’s description of a file having a
`
`“collection of data streams” clearly encompasses files having only one data stream,
`
`and PersonalWeb’s argument that a file must have two data streams is misplaced.
`
`(See Reply Clark Decl. ¶¶ 4-7, 16; Ex. 1078.)
`
`Moreover, even if PersonalWeb were correct that a file must have two or
`
`more data streams (which it is not), Woodhill discloses restoring large database
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`Docket No.: 0100157-00244
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`files with no limit on their number of data streams or binary objects, clearly
`
`satisfying the claim. (Woodhill 14:62-65 (Woodhill’s “granularization” procedure
`
`applies to “large database files”), 17:18-21 (granularized files may be restored to
`
`previous versions); Ex. 1005; see also Reply Clark Decl. ¶ 15; Ex. 1078.)
`
`III. WOODHILL RENDERS OBVIOUS CLAIMS 36 AND 38
`ARGUMENT 5: PersonalWeb’s contention that “Claims 36 and 38 are not
`obvious over Woodhill” (Resp. § VI, pp. 11-12)
`
`In his original declaration for this case, Dr. Clark confirmed that “it would
`
`be well within the routine creativity of a person of ordinary skill in the art to add an
`
`additional remote backup file server, or servers, to the system disclosed in
`
`Woodhill.” (Clark Decl. ¶ 29; Ex. 1009.) PersonalWeb does not dispute that it
`
`would have been obvious to add this additional remote backup server 12 to
`
`Woodhill, but instead merely relies on Arguments 1-4 in support of this argument
`
`(Resp. 11.) For the reasons described above, those arguments should be rejected.
`
`IV. SECONDARY CONSIDERATIONS
`
`PersonalWeb relies on three prior licenses to support its argument that
`
`claims 36 and 38 are not obvious. (Resp. 12.) However, it has failed to establish
`
`the required nexus. See In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995).
`
`The agreements grant licenses to an array of U.S. and foreign patents, and
`
`PersonalWeb has not provided any evidence that the claims-at-issue motivated the
`
`decision to license. (See, e.g., Ex. 2012 at § 1.1.4.) Moreover, the cross-
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`examination of PersonalWeb’s declarant, Kevin Bermeister, revealed that each of
`
`the three licenses involved related parties with interlocking ownership and/or
`
`business interests, undermining any inference that the agreements represent a
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`recognition of the merits of the claimed inventions. (See Bermeister Tr. 54-57, 63-
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`66, 85-89, 121-144; Ex. 1077.)5 For example, PersonalWeb cites Exhibit 2012, a
`
`sublicense from Brilliant Digital Entertainment, Inc. (“BDE”) and Altnet, Inc. to
`
`Sharman Networks Ltd. But the Bermeister declaration fails to reveal that Shaman
`
`and Altnet formed a joint enterprise to share profits before the license was signed
`
`or that Sharman received warrants for 11 million shares of BDE as part of their
`
`joint enterprise agreement. (Id. at 85-89.) Similarly, while PersonalWeb alleges
`
`that the consideration paid for the licenses exceeded any reasonable litigation cost,
`
`on cross-examination, it became clear that Mr. Bermeister had no basis for the
`
`“consideration” values contained in his declaration. (Id. at 28-37, 53-57, 72-76,
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`92-98, 112-113, 117-121 (Skype license (Ex. 2010) does not specify any
`
`consideration from the licensee; Kinetech license (Ex. 2011) was granted in
`
`exchange for warrants in BDE shares that did not immediately vest and were
`
`contingent on BDE’s continued employment of Kinetech’s controlling shareholder;
`
`
`5 Petitioner intends to file a motion to exclude the secondary considerations
`
`evidence that PersonalWeb has submitted based on Bermeister’s cross-
`
`examination.
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`Docket No.: 0100157-00244
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`and Sharman license (Ex. 2012) specified royalties that could be offset by
`
`undefined sums owed by BDE/Altnet, and Bermeister “estimated” what had been
`
`paid, rather than confirming through financial records). Consequently,
`
`PersonalWeb has failed to rebut the overwhelming evidence of obviousness.
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`
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`Respectfully Submitted,
`
`Dated: October 2, 2013
`
`/Peter M. Dichiara/
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`Peter Dichiara
`Registration No. 38,005
`Cynthia Vreeland
`Admitted pro hac vice
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`Boston, Massachusetts 02109
`peter.dichiara@wilmerhale.com
`Tel.: 617-526-6466
`Fax: 617-526-5000
`
`14
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`

` IPR2013-00083
`Docket No.: 0100157-00244
`CERTIFICATE OF SERVICE
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`I hereby certify that on October 2, 2013, I caused a true and correct copy of
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`the following materials:
`
`• Petitioners’ Reply
`
`• Exhibits 1074-1080
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`• List of Exhibits
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`to be served via email on the following counsel of record for Patent Owner:
`
`Joseph A. Rhoa, Lead Counsel
`USPTO Reg. No. 37,515
`NIXON & VANDERHYE P.C.
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
`jar@nixonvan.com
`Tel.: 703-816-4043
`
`Updeep S. Gill, Backup Counsel
`USPTO Reg. No. 37,344
`NIXON & VANDERHYE P.C.
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
`usg@nixonvan.com
`Tel.: 703-816-4030
`
`/Owen K. Allen/
`
`
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`Owen K. Allen
`
`Reg. No. 71,118
`
`15
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`

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