throbber
IPR2013-00083
`Docket No. 0100157-00244
`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’ MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(C)
`
`
`
`
`

`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`Statement of the Precise Relief Requested ...................................................... 1
`Basis for Exclusion of Brilliant Licensing Exhibits (Exs. 2009-12, 2014) ..... 2
`
`A.
`
`Statement of Material Facts ................................................................... 2
`
`i.
`ii.
`iii.
`
`Kinetech License (Ex. 2011)....................................................... 2
`Sharman License (Ex. 2012) ....................................................... 4
`Skype License (Ex. 2010) ........................................................... 6
`
`B.
`
`Statement of the Reasons for the Requested Relief .............................. 7
`
`i.
`ii.
`
`Relevant Law .............................................................................. 7
`The Brilliant Licensing Exhibits (Ex. 2009-12, 2014) Should
`Be Excluded As Irrelevant And Highly Prejudicial ................... 8
`
`
`
`
`
`
`
`i
`
`

`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`TABLE OF AUTHORITIES
`
`
`FEDERAL CASES
`Ex Parte Baylor Coll. of Med.,
`No. 2012-005140, 2012 WL 2316829 (B.P.A.I. June 15, 2012).......................... 9
`
`Page(s)
`
`Ferring B.V. v. Barr Labs., Inc.,
`437 F.3d 1181 (Fed. Cir. 2006) .......................................................................... 13
`
`Honeywell Int’l, Inc. v. Nikon Corp.,
`No. 04-01337, 2009 WL 577274 (D. Del. Mar. 4, 2009) ................................. 8-9
`
`In re Antor Media Corp.,
`689 F.3d 1282 (Fed. Cir. 2012) ...................................................................... 8, 10
`
`Iron Grip Barbell Co. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) ............................................................................ 9
`
`Tex. Digital Sys., Inc. v. Telegenix, Inc.,
`308 F.3d 1193 (Fed. Cir. 2002) .......................................................................... 10
`
`Utah Med. Prods., Inc. v. Graphic Controls Corp.,
`350 F.3d 1376 (Fed. Cir. 2003) .................................................................... 10-11
`
`FEDERAL RULES
`
`FED. R. EVID. 402 ................................................................................................... 1, 8
`
`FED. R. EVID. 403 ............................................................................................... 1, 8-9
`
`FED. R. EVID. 602 ............................................................................................. 1-2, 11
`
`
`
`
`
`
`
`ii
`
`

`

`FEDERAL REGULATIONS
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`
`37 C.F.R. § 1.56 ....................................................................................................... 13
`
`37 C.F.R. § 42.1 ......................................................................................................... 8
`
`37 C.F.R. § 42.11 ............................................................................................. 1-2, 13
`
`37 C.F.R. § 42.12 ..................................................................................................... 13
`
`37 C.F.R. § 42.62 ....................................................................................................... 8
`
`37 C.F.R. § 42.64 ....................................................................................................... 1
`
`
`
`iii
`
`

`

`I.
`
`Statement of the Precise Relief Requested
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`
`Pursuant to 37 C.F.R. § 42.64(c), EMC Corporation and VMware, Inc.
`
`(“Petitioners”) move to exclude Exhibits 2009-2012, and 2014, submitted by
`
`PersonalWeb Technologies, LLC (“Patent Owner”) in support of its Response
`
`(Doc. No. 45).
`
`Patent Owner has offered licensing agreements and declarations from its
`
`Chairman (Kevin Bermeister) in an attempt to prove that others objectively valued
`
`the challenged claims. However, cross-examination has revealed that the licenses
`
`were entered into between closely related parties and thus are irrelevant to any
`
`“objective” value of the claims. Mr. Bermeister’s declarations failed to identify
`
`these relationships between the parties, and his purported “valuations” of the
`
`licenses not only lack objective support but also are inconsistent with
`
`contemporaneous SEC filings.
`
`Petitioners served timely objections to this evidence on July 31, 2013 (Ex.
`
`1081), and cross-examined Mr. Bermeister on August 27, 2013. Petitioners now
`
`move to exclude these exhibits because they are irrelevant (FRE 402), and also
`
`highly prejudicial, confusing, and misleading (FRE 403).1
`
`
`1 Petitioners additionally move to exclude Exs. 2009, 2014 because such testimony
`
`lacks foundation (FRE 602), and violates the duty of candor (37 C.F.R. § 42.11).
`
`
`
`
`

`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`II. Basis for Exclusion of Brilliant Licensing Exhibits (Ex. 2009-12, 2014)
`Statement of Material Facts
`A.
`1.
`
`Patent Owner has offered two declarations from its Chairman Kevin
`
`Bermeister (Exs. 2009, 2014) and three license agreements (Exs. 2010-12) in
`
`support of its argument that the challenged claims are not obvious because others
`
`have recognized the purported “value” of the claimed inventions. (Resp. 12.)
`
`These licenses were entered into between Patent Owner’s parent company,
`
`Brilliant Digital Entertainment, Inc. (“Brilliant”), Brilliant’s subsidiary, Altnet, Inc.
`
`(“Altnet”), and Kinetech, Inc. (“Kinetech”) (Ex. 2011), Sharman Networks
`
`Limited (“Sharman”) (Ex. 2012), and Skype, Inc. and “Affiliates” (“Skype”) (Ex.
`
`2010). Patent Owner has not proffered any evidence establishing a nexus between
`
`the licenses and the challenged claims. (See Exs. 2010-12.) Moreover, Mr.
`
`Bermeister conceded in cross-examination (Ex. 1077) that the parties to these
`
`licenses had, and in most cases continue to have, interlocking and overlapping
`
`ownership and business interests. (See infra ¶¶ 3, 6, 9.)
`
`i.
`2.
`
`Kinetech License (Ex. 2011)
`
`Patent Owner contends that Kinetech granted a license (Ex.
`
`2011) to Brilliant and Altnet, effective October 18, 2002, in exchange for warrants
`
`to purchase Brilliant common stock. (See, e.g., Ex. 2014, ¶ 4; Ex. 2011 at 6651-
`
`
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`- 2 -
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`

`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`52.) The Kinetech license (Ex. 2011) does not mention the challenged ’280 patent.
`
`(Ex. 2011 at 6650, 6661.)
`
`3. Mr. Bermeister conceded during cross-examination that, at the time
`
`the parties entered into the license, Brilliant had significant ties to Kinetech’s
`
`founder and principal, Ronald Lachman. (Ex. 1077 at 64-67, 73-74.) Mr.
`
`Lachman not only held stock in Brilliant (id. at 64, 66), but also was Brilliant’s and
`
`Altnet’s Chief Scientist (id. at 64-67, 73), and a partner in a capital company that
`
`also held shares in Brilliant. (See id. at 74.) Mr. Bermeister did not disclose any of
`
`these relationships in his declarations (Exs. 2009, 2014).
`
`4. Mr. Bermeister initially testified in his July 22, 2013 declaration that
`
`“[c]onsideration for this license was approximately $5,000,000.00.” (Ex. 2009, ¶ 7
`
`(emphasis added).) He later claimed in his supplemental August 14, 2013
`
`declaration, submitted in response to Petitioners’ objections, that this was a
`
`“typographical error,” and that Brilliant actually paid “approximately 5,000,000
`
`warrants which at the time of issuance were valued at approximately $1,000,000.”
`
`(Ex. 2014, ¶ 4 (emphasis added).) Mr. Bermeister conceded in cross-examination
`
`that this “valuation” was an estimate (Ex. 1077 at 32), that it was inconsistent with
`
`contemporaneous SEC filings (see, e.g., id. at 71-79), and that it did not follow
`
`reliable methods for valuing “restricted” warrants. (See, e.g., id. at 29-36,74-76.)
`
`Moreover, he did not disclose in his declarations or produce to Petitioners any of
`
`
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`

`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`these SEC filings, including the “restricted” warrant agreement itself that was
`
`originally attached as an exhibit to the license, even after Petitioners’ objections.
`
`(See, e.g., id. at 34-36; Exs. 2009, 2014; Ex. 1081.)2
`
`Sharman License (Exhibit 2012)
`
`ii.
`Patent Owner contends, based on an incomplete, partially illegible
`
`5.
`
`agreement signed only by Sharman, that Brilliant and Altnet granted a sublicense
`
`to Sharman (Ex. 2012), effective the same day as the Kinetech license, October 18,
`
`2002. (Ex. 2009, ¶ 9; Ex. 2012) The Sharman license, like the Kinetech license,
`
`does not mention the challenged ’280 patent. (Ex. 2012.)
`
`6. Mr. Bermeister conceded in cross-examination that, at the time the
`
`parties entered into the Sharman license (Ex. 2012), Brilliant and Altnet had
`
`significant ties to Sharman. (See, e.g., Ex. 1077 at 14-15, 69, 81-89.) He admitted
`
`that Sharman was created with the intention of working jointly with Brilliant and
`
`Altnet to commercialize KaZaA peer-to-peer file sharing technology and that, at
`
`inception, Sharman had a technology bundling agreement with Brilliant and owned
`
`
`2 Only when Petitioners were able to locate the warrant agreement on the SEC
`
`website did they discover its “restricted” nature. (See Ex. 1077 at 73-74.)
`
`
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`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`Brilliant equity. (See id. at 21, 69, 81-87.)3 He further admitted that, prior to the
`
`license, the three companies had already formed a joint enterprise, shared joint
`
`commercial goals, and had exclusive rights in a joint commercial agreement. (See
`
`id. at 87-88.) In fact, Brilliant reported the Sharman license as a “related party
`
`transaction” on its SEC disclosures. (Id. at 107, 111, 150.) Mr. Bermeister did not
`
`disclose these relationships in his declarations (Exs. 2009, 2014).
`
`7. Mr. Bermeister testified in his July 22, 2013 declaration that Sharman
`
`“paid approximately $7,200,000.00” for the license. (Ex. 2009, ¶ 9.) The
`
`agreement required Sharman to pay Brilliant a lump sum of $500,000 that could be
`
`offset by amounts Brilliant then owed Sharman, a lump sum of $150,000 for the
`
`month of April 2003, and a monthly royalty of $120,000. (Ex. 2012 at 6450.)
`
`During cross-examination, Mr. Bermeister revealed that, when calculating the
`
`$7.2M amount Brilliant purportedly received from Sharman, he simply “picked”
`
`and “took a stab” at the number of months that Sharman must have paid royalties,
`
`
`3 Mr. Bermeister also revealed during cross-examination his involvement in the
`
`actual founding of Sharman: He introduced the KaZaA, B.V. principals to his
`
`business associate, who then formed Sharman and on its behalf acquired the
`
`KaZaA business and technology. (Ex. 1077 at 69, 81-86.)
`
`
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`and multiplied it by $120,000. (Ex. 1077 at 93-94 (emphasis added).)4 He
`
`conceded that he did not review a single document to confirm his estimations, and
`
`therefore ignored Sharman’s right to deduct Brilliant’s debts from its payments.
`
`(Id. at 95-97.) He also ignored SEC disclosures reporting Brilliant’s $3.06M
`
`accounts payable balance to Sharman in 2003, and Brilliant’s $1.15M accounts
`
`receivable balance from Sharman in 2005. (Id. at 97-98, 108-109, 150-152.)
`
`Skype License (Exhibit 2010)
`
`iii.
`Patent Owner contends that Brilliant and Altnet granted a license to
`
`8.
`
`Skype (Ex. 2010) effective November 19, 2009. (Ex. 2009, ¶ 6; Ex. 2010.) The
`
`Skype license (Ex. 2010) purports to cover a range of patents and continuations,
`
`including the challenged ’280 patent. (Ex. 2010.)
`
`9. Mr. Bermeister admitted during cross-examination that he was an
`
`early-stage investor in Skype, which the KaZaA principals founded around
`
`2002/2003. (Ex. 1077 at 12-13, 21.) He initially attempted to claim that he did not
`
`own any “direct or indirect interest” in Skype as of November 19, 2009, the
`
`effective date of the Skype license. (See id. at 13-14.) However, he later conceded
`
`that, on that very same date, Brilliant’s long-standing shareholders – i.e., Brilliant’s
`
`
`4 Bermeister claimed that he assumed payment for “six or seven years” (Ex. 1077
`
`at 96), but $7.2M divided by $120K curiously equals five years (60 months).
`
`
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`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`business partner and Altnet’s previous co-owner (Joltid, Ltd.), and Mr.
`
`Bermeister’s investment partner and cousin (Mark Dyne, on behalf of his
`
`company, Europlay Capital) – and others acquired Skype. (Id. at 15-16, 69-71-80,
`
`104-05, 124-125.) As part of the acquisition, Joltid acquired the equivalent of a
`
`one-percent equity stake in Skype (id. at 125), which they inexplicably transferred
`
`to an entity established primarily for the benefit of Bermeister’s immediate family
`
`trusts (SEP Investments PTY Limited) just a few months later. (Id. at 10-11, 125-
`
`30.)5 He further admitted that SEP (which he currently manages) also may have
`
`owned equity in Brilliant and/or Patent Owner at this time. (Id. at 10, 125-26.)
`
`10. Mr. Bermeister estimated in his July 22, 2013 declaration that Skype
`
`paid “approximately $4,000,000.000” for this license (Ex. 2010). (Ex. 2009, ¶ 6.)
`
`The agreement itself, however, specifies no consideration, refers only to
`
`consideration received by Skype, and Mr. Bermeister admitted that he had no
`
`personal knowledge of payment ever being made – he simply “recalled” lawyers
`
`purportedly confirming that it was. (See Ex. 2010; Ex. 1077 at 112-13, 117-121.)
`
`B.
`
`Statement of the Reasons for the Requested Relief
`i.
`The Federal Rules of Evidence (“FRE”) apply to the current proceedings.
`
`5 During cross-examination, he later denied, but then re-confirmed his and his
`
`Relevant Law
`
`immediate family trusts’ ownership interests in SEP. (See, e.g., id. at 126-38.)
`
`
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`- 7 -
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`

`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`37 C.F.R. § 42.62. Under FRE 402, evidence must be relevant for it to be
`
`admissible. However, even relevant evidence may be excluded if more prejudicial,
`
`confusing, and misleading than relevant. FRE 403; see also 37 C.F.R. § 42.1(b)
`
`(PTAB procedures “shall be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding”).
`
`ii.
`
`The Brilliant Licensing Exhibits (Ex. 2009-12, 2014) Should
`Be Excluded As Irrelevant And Highly Prejudicial
`First, the Brilliant Licensing Exhibits (Ex. 2009-12, 2014) should be
`
`excluded as irrelevant because Patent Owner has not established a sufficient nexus
`
`between the scope of the license and the challenged claims. See In re Antor Media
`
`Corp., 689 F.3d 1282, 1293 (Fed. Cir. 2012). The Sharman license (Ex. 2012), for
`
`example, purports to cover not only U.S. Patent No. 5.978,791, but also “any
`
`other United States or foreign patent” filed by, issued, assigned, or licensed to
`
`Brilliant/Altnet that would be necessary for Sharman to “make, have made,
`
`use, import, sell and offer for sale” its KaZaA peer-to-peer file sharing
`
`technology. (Ex. 2012 at 6449, 6462 (emphasis added); see also Ex. 2011 at
`
`6650.) By covering essentially any and all patents that touch upon Brilliant,
`
`Altnet, and Sharman’s joint KaZaA file sharing technology, this license is not
`
`tethered in any way to the challenged claims. Honeywell Int’l, Inc. v. Nikon Corp.,
`
`No. 04-01337, 2009 WL 577274, at *1 (D. Del. Mar. 4, 2009) (Ex. 1082)
`
`
`
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`

`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`(excluding 21 licenses under FRE 403 because they “lacked a sufficient nexus to
`
`the asserted patent claim”).
`
`Second, any hypothetical nexus that could be established between any of the
`
`licenses (Ex. 2010-12) and the challenged claims would only be minimally
`
`relevant in light of the heavily related and interlocking/overlapping
`
`ownership/business interests of Brilliant, Altnet, Kinetech, Sharman, and Skype as
`
`of the effective date of each license. (See, e.g., supra ¶¶ 3, 6, 9.) The fact that
`
`closely-related companies licensed patents to each other does not tend to prove that
`
`the claimed invention was “commercially successful” nor that others “objectively”
`
`valued it. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed.
`
`Cir. 2004) (only “objective” evidence of “commercial success,” such as licensing,
`
`can potentially prove nonobviousness); see also Ex Parte Baylor Coll. of Med., No.
`
`2012-005140, 2012 WL 2316829, at *9 (B.P.A.I. June 15, 2012) (placing minimal
`
`if any weight on 19 licenses valued at $19.3M absent proof that licenses were
`
`motivated by anything other than general commercial interests).
`
`
`
`Mr. Bermeister’s cross-examination revealed a complex web of
`
`ownership/business interests that entangle Patent Owner’s predecessors-in-interest
`
`(Brilliant/Altnet) with Kinetech, Sharman, and Skype, and that likely influenced
`
`the decisions to license. (See supra ¶¶ 3, 6, 9.) For example, because
`
`Brilliant/Altnet shared the same technology director with Kinetech (the challenged
`
`
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`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`patent’s co-inventor) and operated as a joint enterprise with Sharman, the Kinetech
`
`(Ex. 2011) and Sharman licenses (Ex. 2012) may have been motivated by a desire
`
`to prop up the potential exclusionary power of the patent against joint competitors,
`
`rather than a recognition of the validity or intrinsic value of the claimed inventions.
`
`(See supra ¶¶ 3, 6.) As for the Skype license (Ex. 2010), Mr. Bermeister could not
`
`explain why SEP (an entity established primarily to benefit his immediate family
`
`trusts and that he currently manages) acquired a significant equity interest in Skype
`
`around the time of the purported license. (See supra ¶ 9.) See In re Antor, 689
`
`F.3d at 1293 (insufficient nexus when licensing motivated by “prior business
`
`relationships” or “other economic reasons”); Tex. Digital Sys., Inc. v. Telegenix,
`
`Inc., 308 F.3d 1193, 1217-18 (Fed. Cir. 2002) (affirming exclusion of testimony as
`
`“unreliable and potentially confusing”).
`
`Third, Mr. Bermeister did not provide any reasonable basis or explanation
`
`for his estimated “value” of each license, and his testimony is utterly lacking in
`
`reliability. Utah Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376,
`
`1385-86 (Fed. Cir. 2003) (affirming exclusion of licenses and corresponding
`
`
`
`- 10 -
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`

`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`valuation testimony as unreliable).6 Mr. Bermeister initially estimated that the
`
`value of the Kinetech (Ex. 2011), Sharman (Ex. 2012), and Skype (Ex. 2010)
`
`licenses were $5M (warrants), $7.2M (royalties), and $4M ( “good and valuable
`
`consideration”), respectively. (See supra ¶¶ 4, 7, 10.) After receiving Petitioners’
`
`objections, Mr. Bermeister then submitted a supplemental declaration correcting
`
`what he claimed to be a “typographical” error, revealing that consideration for the
`
`Kinetech license (Ex. 2011) was 5M warrants “valued” at $1M. (See supra ¶ 4.)
`
`During cross-examination, Mr. Bermeister further revealed that the primary basis
`
`he had for these estimations was his “recollection,” that he never consulted any
`
`other company document to confirm his recollection, and that he did not factor into
`
`his mental calculations various public SEC disclosures that strongly suggested a
`
`much lower valuation. (See supra ¶¶ 4, 7, 10.)
`
`For example, when estimating the “value” of the Kinetech license (Ex.
`
`2011), he ignored the warrant agreement itself as well as SEC disclosures revealing
`
`that around the time of the license, Brilliant was valued at 15 cents/share, it had
`
`accumulated losses of $59.2M, its warrants to Kinetech were heavily
`
`
`6 For these reasons, Mr. Bermeister’s testimony regarding the purported “value” of
`
`the Exs. 2010-2012 licenses (Ex. 2009, ¶¶ 6, 7, 9; Ex. 2014, ¶ 4) lacks foundation
`
`and personal knowledge, and should also be excluded under FRE 602.
`
`
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`restricted, and it valued these warrants using the Black Scholes model as a
`
`$30K (0.6 cent/warrant) expense. (Ex. 1077 at 61-62, 73-79.) Despite this
`
`evidence to the contrary, Mr. Bermeister “valued” these restricted warrants to
`
`purchase shares of a heavily indebted company at $1M (20 cents/warrant) – an
`
`amount higher than the value of the shares themselves and 33 times higher than the
`
`Black Scholes value of the warrant expense as disclosed to the SEC during the
`
`relevant time. (Id.; see also Ex. 2014, ¶ 4.) Similarly, when estimating the “value”
`
`of the Sharman license (Ex. 2012) at $7.2M, he simply “picked” and “took a
`
`stab” at the number of months that Sharman purportedly paid royalties and ignored
`
`(perhaps also forgot about) Sharman’s contractual right to deduct Brilliant’s debts
`
`from its payments, as well as the millions of dollars Brilliant still owed Sharman in
`
`2003 and Sharman owed Brilliant in 2005 per Brilliant’s public SEC disclosures.
`
`(See supra ¶ 7.) As for his basis for estimating the $4M “value” of the Skype
`
`license (Ex. 2010), which did not on its face specify any fee or rate, he could not
`
`explain why the license only referred to consideration received by Skype, and he
`
`admitted that he had no non-hearsay basis for claiming that any payment was ever
`
`received. (See supra ¶ 10.) Given the clear lack of support for the purported value
`
`of any of these licenses, Mr. Bermeister’s testimony on the subject is not
`
`reasonable, lacks reliability, and should be excluded.
`
`Fourth, Mr. Bermeister’s declarations (Ex. 2009, 2014) and the related
`
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`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`licenses (Ex. 2010-12) also should be excluded under 37 C.F.R. §§ 42.11, 42.12,
`
`and 42.51 because of material omissions including, for example, failure to disclose
`
`the interlocking business relationships of the licensing parties and the inconsistent
`
`SEC disclosures regarding license valuation. (See supra ¶¶ 3-4, 6-9.) See, e.g., 37
`
`C.F.R. §§ 42.11 (PTAB duty of candor and good faith), 42.51(b)(1)(iii) (duty to
`
`advance positions and indicate all inconsistencies simultaneously), 42.12
`
`(evidentiary exclusion available for violations of §§ 42.11 and 42.51 duties,
`
`including misrepresenting facts and advancing misleading arguments); see also 37
`
`C.F.R. § 1.56(b)(2) (USPTO duty to disclose inconsistencies with party’s
`
`arguments regarding patentability); Ferring B.V. v. Barr Labs., Inc., 437 F.3d
`
`1181, 1186-91, 1193-95 (Fed. Cir. 2006) (affirming unenforceability, inequitable
`
`conduct, and violation of rule 1.56 duty of candor because declarants and patentee
`
`did not disclose their interlocking/overlapping business/financial relationships).
`
`
`
`
`
`
`
`- 13 -
`
`

`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`
`
`
`Dated: November 7, 2013
`
`/Peter M. Dichiara/
`
`Respectfully Submitted,
`
`Peter M. 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 -
`
`

`

`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 7, 2013, I caused a true and correct copy
`
`of the following materials:
`
`• Petitioners’ Motion to Exclude Evidence pursuant to 37 C.F.R. § 42.64(c)
`
`• Exhibits 1081-1082
`
`• List of Exhibits
`
`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
`
`/Heather M. Petruzzi/
`Heather M. Petruzzi
`Reg. No. 71,270
`
`- 15 -
`
`
`
`
`
`
`
`

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