BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
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`STATES PATENT AND TRADEMARK OFFICE
`
`Trial No.:
`
`IPR 2013—00083
`
`In re:
`
`US. Patent No. 6,4l5,280
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`
`EMC Corp. & VMware, Inc.
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`Inventors:
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`David A. Farber and Ronald D. Lachman
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`*
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`November 7, 2013
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`PATENT OWNER’S MOTION TO EXCLUDE
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`2020057
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`
`
`STATES PATENT AND TRADEMARK OFFICE
`
`Trial No.:
`
`IPR 2013—00083
`
`In re:
`
`US. Patent No. 6,4l5,280
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`
`EMC Corp. & VMware, Inc.
`
`Inventors:
`
`David A. Farber and Ronald D. Lachman
`
`*
`
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`November 7, 2013
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`2020057
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`
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`A. CLARK’S REPLY DECLARATION STATEMENTS ABOUT
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`LANCER, AND LANGER ITSELF, SHOULD BE EXCLUDED
`
`The statements in the Reply Declaration of Douglas W. Clark (Ex. 1078) at
`
`paragraph 10 that rely upon and/or cite to Langer are objected to and should be
`
`excluded as irrelevant, prejudicial, confusing, lacking foundation, and beyond the
`
`scope of this IPR. See e.g., Federal Rules of Evidence (FRE) 401, 402, 403. See
`
`paragraph 10 of the Clark Reply Declaration, at page 8 last four lines and at page 9
`
`first six lines.
`
`(Ex. 1078.) Petitioner’s Reply relies on this paragraph of the Clark
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`Reply Declaration. (Pet. Reply 2-4, 7.) PO filed and served timely objections to
`
`these statements. See section 2 of PO’s objections filed/served October 8, 2013
`
`(Paper 54).
`
`This IPR was instituted based on Woodhill —— not on Langer. Reliance on
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`Langer on reply is outside the scope of this IPR and impermissible. This is also
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`improper because petitioner’s reply may only respond to arguments raised in
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`Patent Owner’s Response (PO did not mention Langer in its Response), and new
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`evidence such as these documents is improper. See e.g., 37 CFR § 42.23(b)
`
`(petitioner’s reply may only respond to arguments raised in PO’s response); 37
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`C.F.R. § 42.123(b) (late submission of supplemental information requires
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`motion/explanation of why not submitted earlier); and Office Patent Trial Practice
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`Guide, Vol. 77, No. 157, pg. 48767 at I (Aug. 14, 2012).
`Additionally, Langer (Ex. 1003) itself should be excluded as not properly
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`authenticated and as inadmissible hearsay. Despite no ground based on Langer
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`1
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`2020057
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`IPR_2013—00083
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`being instituted, Petitioner’s Reply relied on Langer as explained above.
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`Paragraph 10 of the Reply Declaration of Douglas W. Clark (EX. 1078) relies upon
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`Langer and alleges that Langer existed as of the time of Woodhill, and Petitioner’s
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`. Reply relies upon that paragraph. (Pet. Reply 2—4, 7.) PO properly objected to
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`Langer (Ex. 1003) as unauthenticated and as inadmissible hearsay, in a timely
`
`manner, via its objections that were filed and served on May 30, 2013 (Paper 22,
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`sections 1—4).
`
`FRE 901 requires parties to authenticate documents. Langer was allegedly
`
`printed off the Internet in 2003 based on the “7/29/2003” date in the lower—right
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`corner of the document. There is no evidence authenticating Langer as having
`
`been in existence prior to the April 11, 1995 effective filing date of the patent. No
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`witness of record has personal knowledge of Langer existing prior to April 11,
`
`1995, and electronic data such as Langer is inherently untrustworthy because it can
`
`be manipulated from virtually any location at any time. Novak v. Tueows, Ina, No.
`
`06-CV—1909 (JFB) (ARL), 2007 US. Dist. LEXIS 21269, *17—18 (E.D.N.Y. Mar.
`
`26, 2007) [attached as Ex. 2018]; St. Luke ’5 Cataract and Laser Institute v.
`
`Sanderson, 2006 WL 1320242, *2 (MD. Fla. 2006) (excluding documents
`
`obtained via the Internet and explaining that “web—sites are not self-authenticating)
`
`[attached as Ex. 2019]; Wady v. Provident Life and Accident [mun C0. 0fAm., 216
`
`F.Supp.2d 1060, 1064—65 (C.D. Calif. 2002) (excluding computer documents as
`
`unauthenticated — “anyone can put anything on the Internet .
`
`.
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`. any evidence
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`2020057
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`IPR 2013—00083
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`procured off the Internet is adequate for almost nothing”); and St. Clair v. Johnny ’5
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`Oyster & Shrimp, Inc, 76 F.Supp.2d 773, 774—75 (S.D. Tex. 1999) (the “Web
`
`provides no way of verifying the authenticity .
`
`. .”, that there is a “presumption that
`
`the information he discovered on the Internet is inherently untrustworthy”) And
`
`Langer is not self—authenticating.
`
`Petitioner’s witnesses regarding Langer testified that the first time they saw
`
`Langer was in 2012 or 2013. (Moore Dep. 49=50 [Ex 2020]; Clark Dep. 180 [Ex
`
`2008].) The fact that Langer is mysteriously missing the required Usenet “path”
`
`header further calls its authenticity into question. (Moore Dep. 30, 32-33, 50 [Ex
`
`2020]; Moore Decl. fl] 17 [Ex 1052].) Petitioner has not established that Langer
`
`existed prior to April 11, 1995 or at the time of Woodhill. No witness has personal
`
`knowledge of Langer’s alleged existence prior to April 11, 1995 or at the time of
`
`Woodhill. There is no declaration from any author of Langer as to when it was
`
`created. And there is no testimony from any witness having personal knowledge
`
`of having reviewed or received Langer prior to April 11, 1995. Petitioner provides
`
`attorney argument to support its allegations. It is well established that attorney
`
`argument is neither evidence nor a substitute for evidence.
`
`FRE 801 defines hearsay, and FRE 802 makes hearsay inadmissible. Dates
`
`in Langer, or any other information that purports to date Langer, are inadmissible
`
`hearsay not subject to any hearsay exception. Tucows, 2007 U.S. Dist. LEXIS
`
`21269, *14—16 (excluding printouts from the Internet as inadmissible hearsay) [Ex
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`2020057
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`IPR 2013—00083
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`2018]; Hilgraeve, Inc. v. Symantec Corp, 271 F.Supp.2d 964, 974-75 (ED. Mich.
`
`2003) (explaining that copyright dates and other dates imprinted on a document
`
`are hearsay when offered to prove the truth of the matter asserted, such as that the
`
`document was publicly accessible as of that date); and St. Clair, 76 F.Supp.2d at
`
`774-75 (“any evidence procured off the Internet is adequate for almost nothing,
`
`even under the most liberal interpretation of the hearsay exception rules found in
`
`F.R.E. 807.”) Furthermore, the entirety of Langer is inadmissible hearsay to the
`
`extent that petitioner contends that any statements therein were made prior to the
`
`critical date.
`
`Petitioner has failed to meet its burden of properly authenticating Langer
`
`under the FRE, and has failed to establish that Langer represented state of the art at
`
`the time of the invention. 37 CPR. §42.1(d). Langer should be excluded at least
`
`for failing to be properly authenticated under FRE 901—902, and/or because dates
`
`and any other information thereon purporting to date them are inadmissible hearsay
`
`not subject to any hearsay exception.
`
`B. STATEMENTS IN CLARK’S REPLY DECLARATION
`
`RELYING ON CLAIM LANGUAGE OF WOODHILL SHOULD
`
`BE EXCLUDED BECAUSE THAT SUBJECT MATTER IN
`
`WOODHILL IS NOT “PRIOR ART”
`
`The statements in the Reply Declaration of Douglas W. Clark (Ex. 1078), at
`
`paragraphs 7 and 13, that rely upon and/or cite to the claims of Woodhill (Ex.
`
`1005) are objected to and should be excluded as irrelevant, prejudicial, confiising,
`
`lacking foundation, and beyond the scope of this IPR. See paragraph 7, last
`
`4
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`2020057
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`
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`IPR 2013-00083
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`sentence, and paragraph 13, last sentence.
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`(EX. 1078.) The relied—upon “name”
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`subject matter in the claims of Woodhill is not “prior ar ” to the ‘280 patent and
`
`has not been shown to be “prior art” to the ‘280 patent. See e. g, Federal Rules of
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`Evidence (FRE) 401, 402, 403, 702, 703.
`
`Woodhill was “filed” before April 11, 1995 (the effective filing date of the
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`‘280 patent), but was not published until after April 11, 1995. Any material added
`
`to Woodhill after April 11, 1995 (e.g., including the information in the claims of
`
`Woodhill which Dr. Clark cites to and now relies upon, such as the “name”
`
`recitations in the claims of Woodhill in connection with binary object identifier)
`
`cannot be relied upon in this lPR and is not prior art, for the reasons explained on
`
`pages 2~3 of PO’s Response. The testimony of both parties’ experts indicates that
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`this subject matter that was added to the claims in Woodhill after April 11, 1995 is
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`not described in Woodhill’s originally filed specification, and thus is not prior art
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`to the ‘280 patent. (Clark Dep. 99 [Ex. 2016]; and Dewar Dep. 145—155, 158 [Ex
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`1074].) A copy of Woodhill’s file history was previously provided to evidence the
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`content in Woodhill that can be relied on in this lPR under Section 102(e).
`
`(EX.
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`2007.)
`
`Petitioner relies on these statements, from paragraphs 7 and 13 of the Clark
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`Reply Declaration, in its reply. (Pet. Reply 3, 7, 9, 11.) PO filed and served timely
`
`objections to these statements. See section 1 of PO’s objections filed/served
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`October 8, 2013 (Paper 54).
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`2020057
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`
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`IPR 2013—00083
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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
`
`PATENT OWNER’S EXHIBIT LIST
`
`
`Exhibit No.
`Brief Description
`
`
`2001
`Claim construction of “substantially unique identifier” by the US.
`
`_District Court for the District of Massachusetts.
`2002
`US. Patent No. 7,318,237, and portion of prosecution history
`
`thereof citing Browne.
`Altnet’s Opening Claim Construction Brief, in case styled Abner
`Inc. v. Streamcasz‘ Networks, Inc, CV—06—5086, dated March 29,
`
`2007.
`,
`
`2003
`
`2004
`CWIS’ Opening Markman Brief, CV—02—11430, dated July 25,
`
`2003.
`
`2005
`Patent Owner’s Opening Claim Construction Brief in litigation,
`
`dated June 5,2013.
`
`2006
`Patent Owner’s Reply Claim Construction Brief in litigation, dated
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`July 8, 2013.
`2007
`Excerpts from file history of US. 5,649,196 to Woodhill.
`
`
` Brilliant Digital/Altnet License Agreement
`
` 2011
`
`2008
`Deposition Transcript of Douglas W. Clark (July 10—1 1, 2013)
`
`
`2009
`Declaration of Kevin Bermeister
`
`
`2010
`
`Skype License Agreement
`
`
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`2020057
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`
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`lPR 2013—00083
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`2012
`Sharman License Agreement
`
`
`2013
`
`Declaration of Robert B. K. Dewar
`
`
`
`
`
`
`
`2014
`Supplemental Declaration of Kevin Bermeister
`
`
`2015
`Claim Construction Order in Related Litigations (Aug. 5, 2013)
`
`
`2016
`Deposition Transcript of Douglas W. Clark regarding his reply
`
`declaration submitted with Reply (October 24, 2013)
`2017
`The American Heritage Dictionary, excerpt re “collection” (1975)
`
`(Clark Reply Dep. EX. 3)
`2018
`Novak v. Tucows, Inc, No. 06—CV—1909 (JFB) (ARL), 2007 US
`
`Dist. LEXIS 21269 (E.D.N.Y. Mar. 26, 2007)
`St. Luke is Cataract and Laser Institute v. Sanderson, 2006 WL
`1320242 (M.D. Fla. 2006)
`Deposition Transcript of B. Moore
`2020
`
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`2019
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`CERTIFICATE OF SERVICE
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`I hereby certify service of the foregoing Patent Owner’s Motion to Exclude
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`to the following lead counsel for petitioner on November 7, 2013 via email (under
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`an agreement between the parties):
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`Peter M. Dichiara
`
`WilmerHale
`
`60 State Street
`
`Boston, MA 02109
`(peter.dichiara@wilmerhale.com)
`
`By:
`
`
`/Joseph A. Rhoa/
`
`Joseph A. Rhoa
`Reg. No. 37,515
`
`2020057
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