BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Trial No.:
`
`IPR 2013-00083
`
`In re:
`
`U.S. Patent No. 6,415,280
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`Inventors:
`
`EMC Corp. & VMware, Inc.
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`David A. Farber and Ronald D. Lachman
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`* * * * * * * * * * *
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`October 31, 2013
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS ON CROSS-
`EXAMINATION OF PETITIONER’S REPLY DECLARANT DOUGLAS W.
`CLARK
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`
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`2020057
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`STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Trial No.:
`
`IPR 2013-00083
`
`In re:
`
`U.S. Patent No. 6,415,280
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`Inventors:
`
`EMC Corp. & VMware, Inc.
`
`David A. Farber and Ronald D. Lachman
`
`
`
`
`
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`
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`* * * * * * * * * * *
`
`October 31, 2013
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS ON CROSS-
`EXAMINATION OF PETITIONER’S REPLY DECLARANT DOUGLAS W.
`CLARK
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`
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`2020057
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`EXAMPLE EXHIBITS REFERENCED DURING CROSS-EXAMINATION
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`At least the following exhibits were referred to and/or are related to the
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`cross-examination of Dr. Clark regarding his Reply Declaration that was submitted
`
`in support of petitioner’s reply (Exs. 2016-2017 filed herewith):
`
`Exhibit EMC 1005: Woodhill.
`Exhibit EMC 1074: Deposition Transcript of Robert Dewar
`Exhibit EMC 1078: Reply Declaration of Douglas W. Clark in IPR 2013-00083.
`Exhibit 2016: Deposition Transcript of Douglas W. Clark regarding his
`Reply Declaration (Transcript dated October 24, 2013).
`The American Heritage Dictionary, excerpt re “collection”
`(Clark Reply Dep. Ex. 3)
`
`Exhibit 2017:
`
`
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`OBSERVATIONS ON CROSS-EXAMINATION
`
`Pursuant to the Board’s October 17, 2013 Order, Patent Owner (PO) submits
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`the following observations on the October 24, 2013 cross-examination of
`
`petitioner’s reply declarant Douglas W. Clark:
`
`Observation #1. In Exhibit 2016, at page 112, lines 14-19, Dr. Clark
`
`testified that Woodhill’s granularization procedure is used for large database files
`
`with multiple binary objects. This testimony is relevant to at least PO’s arguments
`
`on page 10, lines 10-20, and page 2, first full paragraph, of its Response, and to
`
`paragraphs 7-9 and 15-16 of Exhibit EMC 1078. The testimony is relevant
`
`because it demonstrates that Woodhill’s granularization procedure does not meet
`
`the challenged claims because: (i) Woodhill does not disclose “a hash of the
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`IPR 2013-00083
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`contents of the data file” because Woodhill never applies a hash to multiple binary
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`objects, (ii) a single binary object of such a large database file having multiple
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`binary objects is not a “named data item” as explained on page 7 of PO’s
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`Response, and (iii) the reasons on page 10, lines 10-20 of PO’s Response.
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`Observation #2. In Exhibit 2016, from page 115, line 15, to page 116, line
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`7, Dr. Clark testified that Woodhill does not apply a hash to either multiple binary
`
`objects or to multiple granules. This testimony is relevant to at least PO’s
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`arguments on page 10, lines 10-20, of its Response, and to paragraphs 7-9 and 15-
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`16 of Exhibit EMC 1078. The testimony is relevant because it demonstrates at
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`least that Woodhill’s granularization procedure does not meet the challenged
`
`claims for the reasons explained above in Observation #1 above.
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`Observation #3. In Exhibit 2016, at page 113, lines 6-12, Dr. Clark
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`testified that Woodhill’s granules are not named files and do not have filenames.
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`This testimony is relevant to at least PO’s arguments on pages 6-7 and 10 of its
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`Response, and to paragraphs 7-9 and 15-16 of Exhibit EMC 1078. The testimony
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`is relevant because it demonstrates that Woodhill’s granules are not “data files”
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`(construed as named data items), and also evidences that binary objects are not
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`“data files.”
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` Observation #4. In Exhibit 2016, at page 106, lines 12-20, Dr. Clark
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`testified that in Woodhill program 24 controls the backup procedures, and from
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`page 106, line 21 to page 111, line 3, Dr. Clark testified that Woodhill’s statement
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`IPR 2013-00083
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`at col. 4:14-15, “program 24 views a file as a collection of data streams”, describes
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`a file with only one data stream despite the word “collection” combined with the
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`plural “streams.” This testimony is relevant to at least arguments in paragraphs 4-
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`6 of Exhibit 1078 regarding whether Woodhill discloses backing up a file having
`
`only one data stream. The testimony is relevant because it demonstrates that Dr.
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`Clark’s opinion regarding the number of data streams in each file backed up in
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`Woodhill by program 24 contradicts this language in Woodhill.
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`Observation #5. In Exhibit 2016, at page 85, lines 1-5, and from page 86,
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`line 17 to page 87, line 4, Dr. Clark testified that one of ordinary skill in the art
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`would understand remote backup server 12 in Fig. 1 of Woodhill to have a storage
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`device, and at page 88, lines 9-20 he testified that it was possible that database 25
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`was also stored at the remote backup server 12. This testimony is relevant to at
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`least the arguments in paragraph 11 of Exhibit 1078. The testimony is relevant
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`because it demonstrates that, in view of Woodhill’s description at col. 2:59-62 and
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`Figs. 1-2, database 25 may also be stored at remote backup server 12.
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`Observation #6. In Exhibit 2016, at page 99, lines 2-17, when asked if
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`Woodhill describes saving a binary object identifier as the “name” of the
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`associated binary object anyplace other than in Woodhill’s issued claims, Dr. Clark
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`testified “I am not positive. I think not.” This testimony is relevant to at least (i)
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`the arguments in PO’s Response from page 2 (three lines from the bottom) to page
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`3, line 5, and at page 7, (ii) pages 145-55 and 158 of Exhibit EMC 1074, and (iii)
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`paragraphs 7 and 13 of Exhibit 1078. The testimony is relevant because it
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`demonstrates that the subject matter added to Woodhill on January 5, 1996
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`(including the “name” language in Woodhill’s claims) was added after the April
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`11, 1995 effective filing date of the ‘791 patent, was not in Woodhill’s originally-
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`filed specification, and is not “prior art” to the ‘791 patent as explained at pages 2-
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`3 of PO’s Response (see prosecution history of Woodhill at Ex. 2007).1
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`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
`
`
`
`Nixon & Vanderhye, PC
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
`Telephone: (703) 816-4000
`
`
`1 Patent Owner has submitted a complete copy of the October 24, 2013 Clark
`
`deposition transcript herewith for the Board’s convenience. PO reserves its right to
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`move to exclude portions of that transcript subject to PO’s objections therein.
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`IPR 2013-00083
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`PATENT OWNER’S EXHIBIT LIST
`Exhibit No. Brief Description
`
`2001
`
`2002
`
`2003
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`2004
`
`2005
`
`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`2015
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`2016
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`2017
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`Claim construction of “substantially unique identifier” by the U.S.
`District Court for the District of Massachusetts.
`U.S. Patent No. 7,318,237, and portion of prosecution history
`thereof citing Browne.
`Altnet’s Opening Claim Construction Brief, in case styled Altnet
`Inc. v. Streamcast Networks, Inc., CV-06-5086, dated March 29,
`2007.
`CWIS’ Opening Markman Brief, CV-02-11430, dated July 25,
`2003.
`Patent Owner’s Opening Claim Construction Brief in litigation,
`dated June 5, 2013.
`Patent Owner’s Reply Claim Construction Brief in litigation, dated
`July 8, 2013.
`Excerpts from file history of U.S. 5,649,196 to Woodhill.
`
`Deposition Transcript of Douglas W. Clark (July 10-11, 2013)
`
`Declaration of Kevin Bermeister
`
`Skype License Agreement
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`Brilliant Digital/Altnet License Agreement
`
`Sharman License Agreement
`
`Declaration of Robert B. K. Dewar
`
`Supplemental Declaration of Kevin Bermeister
`
`Claim Construction Order in Related Litigations (Aug. 5, 2013)
`
`Deposition Transcript of Douglas W. Clark regarding his reply
`declaration submitted with Reply (October 24, 2013)
`The American Heritage Dictionary, excerpt re “collection” (1975)
`(Clark Reply Dep. Ex. 3)
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`IPR 2013-00083
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`CERTIFICATE OF SERVICE
`I hereby certify service of the foregoing Patent Owner’s Motion for
`
`Observations on Cross-Examination of Petitioner’s Reply Declarant Douglas W.
`
`Clark (including any new exhibits) to the following lead counsel for petitioner on
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`October 31, 2013 via email (under an agreement between the parties):
`
`Peter M. Dichiara
`WilmerHale
`60 State Street
`Boston, MA 02109
`(peter.dichiara@wilmerhale.com)
`
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`
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`By: /Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
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`6
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`2020057
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