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’ OPPOSITION TO PATENT OWNER’S
`
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`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’ OPPOSITION TO PATENT OWNER’S
`
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Introduction ...................................................................................................... 1
`Dr. Clark’s Statements Referencing Langer, and Langer Itself, Should Not
`Be Excluded ..................................................................................................... 1
`
`A. Dr. Clark’s Statements Should Not Be Excluded ................................. 1
`B.
`Langer Should Not Be Excluded ........................................................... 2
`
`Langer has been authenticated .................................................... 2
`1.
`Langer is not hearsay and falls within hearsay exceptions ......... 4
`2.
`III. Dr. Clark’s References to Woodhill’s Claim Language Should Not Be
`Excluded .......................................................................................................... 5
`
`
`
`
`
`
`
`- ii -
`
`
`
`I.
`
`Introduction
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`
`Patent Owner moves to exclude various statements in Dr. Clark’s Reply
`
`Declaration. The challenged statements are relevant to the instituted grounds and
`
`are admissible to respond to the arguments in Patent Owner’s Response. Patent
`
`Owner further claims that Langer (Ex. 1003) is non-authenticated hearsay, but it
`
`has been authenticated under multiple provisions of FRE 901 and 902 and falls
`
`under multiple hearsay exceptions. Patent Owner’s motion to exclude should
`
`therefore be denied.
`
`II. Dr. Clark’s Statements Referencing Langer, and Langer Itself, Should
`Not Be Excluded
`A. Dr. Clark’s Statements Should Not Be Excluded
`Dr. Clark’s reference to Langer in ¶ 10 – offered in response to Patent
`
`Owner’s new argument that Woodhill does not disclose a “client request”
`
`including a hash of the contents of a data file (Resp. 3-6; Dewar Decl. ¶102; Ex.
`
`2013) – are relevant and admissible. Contrary to Patent Owner’s contentions, Dr.
`
`Clark’s testimony is directly relevant to an instituted ground (invalidity based on
`
`Woodhill) and confirms that it was well-known at the time of Woodhill to request
`
`a file using a hash-based identifier and is directly relevant to how much detail one
`
`would expect Woodhill to state within this context. (See Ex. 1078 ¶10.) Indeed,
`
`Patent Owner appears to concede this point in a related IPR, where it states that
`
`“Langer appears to disclose accessing a standalone file by employing an MD5 of
`
`
`
`- 1 -
`
`
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`the file contents.” (IPR2013-00085, Resp. 41; Ex. 1079.) Dr. Clark is not relying
`
`on Langer as prior art per se but as evidence concerning the state of the art and
`
`requisite detail needed for a basic computer operation.
`
`B.
`
`Langer Should Not Be Excluded
`1.
`
`Langer has been authenticated
`
`Patent Owner contends that Langer (Ex. 1003) cannot be authenticated
`
`without direct testimony from a witness with “personal knowledge” that the
`
`manual existed prior to the critical date. But this argument rests on a faulty legal
`
`premise. Petitioners need only produce evidence “sufficient to support a finding”
`
`that the reference “is what the proponent claims it is.” See Fed. R. Evid. 901(a).
`
`This burden is “not high” and requires only a “prima facie showing” that the
`
`evidence is what the proponent claims it to be. U.S. v. Vidacak, 553 F.3d 344, 349
`
`(4th Cir. 2009). As one court explained, “There is no single way . . . to
`
`authenticate evidence. . . . [T]he direct testimony of a custodian or a percipient
`
`witness is not a sine qua non to the authentication of a writing.” U.S. v. Garcia,
`
`452 F.3d 36, 40 (1st Cir. 2006) (internal quotations omitted); see also Moleculon
`
`Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed. Cir. 1986) (“It is hornbook
`
`law that direct evidence of a fact is not necessary. ‘Circumstantial evidence is not
`
`only sufficient, but may also be more certain, satisfying and persuasive than direct
`
`
`
`- 2 -
`
`
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`evidence.’”) (citations omitted). Langer (Ex. 1003) easily meets the requirements
`
`for authentication under multiple provisions of FRE 901 and 902.
`
`First, Petitioners have submitted sworn testimony from Keith Moore, a
`
`person skilled in the art of Usenet formatting and distribution during the timeframe
`
`surrounding Langer’s August 7, 1991 posting date, and who authenticated Langer
`
`under FRE 901(b)(1) and (4). (Ex. 1048 at 5-7.) Mr. Moore testified that, during
`
`the 1991-1992 timeframe and while working at the University of Tennessee’s
`
`Computer Science Department, his responsibilities included maintaining the
`
`department’s local Usenet node, developing Usenet-related software, and studying
`
`in detail the standards specifying Usenet article formatting. (Id. at 6-7.) Based on
`
`this knowledge and experience, Mr. Moore observed that the distinctive markings
`
`on Langer (Ex. 1003) were consistent with those found on Usenet newsgroup
`
`periodicals posted in the 1991-1992 timeframe and verified Langer’s authenticity
`
`as a 1991 Usenet periodical on that basis. (Ex. 1048 at 7-11.) For example, he
`
`confirmed that Langer’s distinctive header fields contained unique 1991-era Usenet
`
`formatting and content. (Id. at 7-8.) Patent Owner has not offered any testimony
`
`to the contrary.
`
`Second, Langer (Ex. 1003) also has been independently authenticated under
`
`FRE 901(b)(3) by Mr. Moore’s testimony comparing it with an equivalent version
`
`(the “Langer Authentication Specimen”) he obtained from the “Google Groups”
`
`
`
`- 3 -
`
`
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`website, a reputable Usenet archive that contains compilations of Usenet
`
`periodicals dating back to the 1980s. (Ex. 1048 at 10.)
`
`Third, Langer (Ex. 1003) has been authenticated under 901(b)(8) because it
`
`is more than 20 years old and Mr. Moore’s testimony as described above precludes
`
`any reasonable suspicion regarding its authenticity.
`
`Finally, Langer (Ex. 1003) is self-authenticating under FRE 902(6) and (7)
`
`because, as detailed above, it contains various inscriptions indicating its origin as a
`
`Usenet newsgroup periodical and Usenet’s control over its distribution. (See, e.g.,
`
`Ex. 1048 at 7-8; see also id. at 11.)
`
`2.
`
`Langer is not hearsay and falls within hearsay exceptions
`
`Langer (Ex. 1003) is not hearsay because it is being offered for what it
`
`describes, and not for the truth of its disclosure. See, e.g, Coolidge v. Efendic,
`
`Interference No. 105,457, 2008 WL 2080735, at * 30 (BPAI May 16, 2008)
`
`(confirming that prior art was not hearsay because it was offered to prove what it
`
`describes); Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990)
`
`(same), judgment aff’d, 959 F.2d 226 (Fed. Cir. 1992); FRE 801(c) 1972 Adv.
`
`Comm. Note (“If the significance of an offered statement lies solely in the fact that
`
`it was made, no issue is raised as to the truth of anything asserted, and the
`
`statement is not hearsay.”) Additionally, the August 7, 1991 posting dates on
`
`Langer’s header and URL were both automatically generated by the hosting
`
`
`
`- 4 -
`
`
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`computer (and not “statements” by an out-of-court “declarant”) and therefore are
`
`admissible as non-hearsay to prove Langer’s 1991 publication. (Ex. 1048 at 7.)
`
`See, e.g., United States v. Hamilton, 413 F.3d 1138, 1142-43 (10th Cir. 2005)
`
`(affirming finding that header information automatically generated by hosting
`
`computer was not hearsay).
`
`Moreover, even if any portion of Langer (Ex. 1003) were hearsay (which it
`
`is not), it would still be admissible under multiple exceptions to the hearsay rule
`
`including the ancient document exception (FRE 803(16)) and the residual
`
`exception (FRE 807). Langer is more than 20 years old. Petitioners have
`
`submitted extensive testimony by Mr. Moore verifying its authenticity, origin, and
`
`trustworthiness, and Patent Owner has not (and cannot) offer any evidence casting
`
`doubt on its trustworthiness.
`
`III. Dr. Clark’s References to Woodhill’s Claim Language Should Not Be
`Excluded
`
`PersonalWeb also moves to exclude Dr. Clark’s references to Woodhill’s
`
`claim language – referring to Woodhill’s binary object identifiers as “the name of
`
`the associated binary object” (Woodhill 22:3-4; Ex. 1005) – on the ground that
`
`Woodhill added this claim language after April 11, 1995. However, Dr. Clark’s
`
`testimony is responsive to PersonalWeb’s argument that Woodhill’s “binary
`
`objects” are not “named data items.” (Resp. at 6-7 (emphasis in original).)
`
`
`
`- 5 -
`
`
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`Petitioners do not contend that Woodhill’s claim amendment is prior art.
`
`However, Woodhill’s specification is indisputably prior art, and the claims serve to
`
`corroborate the disclosures in the specification and how that specification would be
`
`understood by a person skilled in the art, because the claims and claim
`
`amendments must have support in the specification itself. Woodhill’s specification
`
`is clear that, in requests for binary objects, the binary object is “identified by a
`
`Binary Object Identification Record 58” including a Binary Object Identifier 74
`
`with hash field 70. (Woodhill 18:16-23; see also Fig. 3, 7:60-8:65; Ex. 1005.)
`
`Consequently, the claim amendment corroborates that the specification’s
`
`references to Binary Object Identifiers would be understood by a person skilled in
`
`the art as “names.”
`
`For these reasons, Patent Owner’s Motion to Exclude should be denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 6 -
`
`
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`Respectfully Submitted,
`
`Dated: November 21, 2013
`
`/Peter M. Dichiara/
`
`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
`
`
`
`
`
`
`- 7 -
`
`
`
`IPR2013-00083
`Docket No. 0100157-00244
`U.S. Patent No. 6,415,280
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 21, 2013, I caused a true and correct copy
`
`of the following materials:
`
` Petitioners’ Opposition to Patent Owner’s Motion to Exclude Evidence
`
`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
`
`- 8 -
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
