`571-272-7822
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` Paper 76
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` Entered: December 13, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION
`Petitioner
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Cases IPR2013-00082 (Patent 5,978,791)
`IPR2013-00083 (Patent 6,415,280)
`IPR2013-00084 (Patent 7,945,544)
`IPR2013-00085 (Patent 7,945,539)
`IPR2013-00086 (Patent 7,949,662)
`IPR2013-00087 (Patent 8,001,096)1
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order addresses issues that are identical in all six cases. Therefore, we
`exercise our discretion to issue one order to be filed in each of the six cases. The
`parties, however, are not authorized to use this style heading in any subsequent
`papers. Note that Petitioners for IPR2013-00082 and IPR2013-00083 are EMC
`Corporation and VMware, Inc.
`
`
`
`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`
`
`
`
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`
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`Introduction
`
`On December 12, 2013, a telephone conference call was held between
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`respective counsel for the parties and Judges Turner, Chang, and Zecher. The
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`telephone conference call was initiated by PersonalWeb to discuss the propriety of
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`EMC’s demonstrative exhibit (Ex. 10972) and the usage of “October 1993 Walnut
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`Creek CD-ROM” at the final oral hearing, which is scheduled for December 16,
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`2013. The oral arguments for all six above-identified inter partes reviews will be
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`merged and conducted at the same time.
`
`No New Evidence
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`EMC indicated that it intends to use the physical copy of the “October 1993
`
`Walnut Creek CD-ROM,” as a demonstrative. Ex. 1097, p. ii. PersonalWeb
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`opposed and argued that using the CD-ROM would be inappropriate.
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`At a final oral hearing, a party may rely upon evidence that has been
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`submitted previously in the proceeding and only may present arguments relied
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`upon in the papers submitted previously. Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48768 (Aug. 14, 2012). Demonstrative exhibits should not include
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`new evidence or arguments. CBS Interactive Inc. v. Helferich Patent Licensing,
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`LLC., Case IPR2013-00033, Paper 118.
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`The Board agreed with PersonalWeb that the physical copy of the CD-ROM
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`is new evidence. Indeed, although a picture of the CD-ROM was submitted
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`
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`2 For the purpose of clarity and expediency, IPR2013-00085 is representative and
`all citations are to IPR2013-00085 unless otherwise noted.
`
`2
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`
`
`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
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`previously (Ex. 1052), a physical copy of the CD-ROM has not been filed in any of
`
`
`
`
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`
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`the above-identified proceedings, nor has it been served on PersonalWeb.
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`Introducing new evidence at this late juncture—when the trial issues had been
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`briefed fully by both parties—would prejudice PersonalWeb, who would not have
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`the opportunity to respond or challenge the authentication of the CD-ROM.
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`For the foregoing reasons, EMC is not authorized to use the physical copy of
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`the “October 1993 Walnut Creek CD-ROM” at the final oral hearing. EMC,
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`however, may present a picture of the CD-ROM, as a demonstrative (Ex. 1097,
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`slide 21), because the picture was submitted previously (Ex. 1052) in support of
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`the Declaration of Mr. Jason S. Sadofsky (Ex. 1081).
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`Motion to Exclude Demonstratives
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`During the conference call, PersonalWeb sought leave to file a motion to
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`exclude any of EMC’s demonstrative slides that are not discussed substantively at
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`the oral hearing. PersonalWeb also requested that its motion to exclude evidence
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`(Paper 55) be applicable to EMC’s demonstrative slides to the extent that they
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`contain the same content as the evidence sought to be excluded. PersonalWeb’s
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`requests are not authorized for the reasons stated below.
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`Demonstrative exhibits are not evidence. As noted by the Board,
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`demonstrative exhibits merely include evidence or arguments that have been
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`submitted previously in the proceeding. They should not contain new evidence or
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`arguments. PersonalWeb has not identified, nor alleged, that any of EMC’s
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`demonstrative slides contain new evidence or arguments. The Board also noted
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`that no substantive paper submitted by EMC is referring to, or relying upon, the
`
`3
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`
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`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
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`demonstrative slides. Therefore, PersonalWeb has not provided sufficient reasons
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`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
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`
`
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`
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`as to why a motion to exclude any of EMC’s demonstrative slides is necessary.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that EMC is not authorized to use the physical copy of the
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`“October 1993 Walnut Creek CD-ROM” at the final oral hearing; and
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`FURTHER ORDERED that PersonalWeb is not authorized to file a motion
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`to exclude EMC’s demonstrative exhibit (Ex. 1097).
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`PETITIONER:
`Peter M. Dichiara, Esq.
`David L. Cavanaugh, Esq.
`WILMER CUTLER PICKERING HALE & DORR LLP
`peter.dichiara@wilmerhale.com
`david.cavanaugh@wilmerhale.com
`
`
`PATENT OWNER:
`Joseph A. Rhoa, Esq.
`Updeep. S. Gill, Esq.
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`4
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