throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 76
`
`
` Entered: December 13, 2013
`
`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
`
`
`
`Introduction
`
`On December 12, 2013, a telephone conference call was held between
`
`respective counsel for the parties and Judges Turner, Chang, and Zecher. The
`
`telephone conference call was initiated by PersonalWeb to discuss the propriety of
`
`EMC’s demonstrative exhibit (Ex. 10972) and the usage of “October 1993 Walnut
`
`Creek CD-ROM” at the final oral hearing, which is scheduled for December 16,
`
`2013. The oral arguments for all six above-identified inter partes reviews will be
`
`merged and conducted at the same time.
`
`No New Evidence
`
`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
`
`opposed and argued that using the CD-ROM would be inappropriate.
`
`At a final oral hearing, a party may rely upon evidence that has been
`
`submitted previously in the proceeding and only may present arguments relied
`
`upon in the papers submitted previously. Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48768 (Aug. 14, 2012). Demonstrative exhibits should not include
`
`new evidence or arguments. CBS Interactive Inc. v. Helferich Patent Licensing,
`
`LLC., Case IPR2013-00033, Paper 118.
`
`The Board agreed with PersonalWeb that the physical copy of the CD-ROM
`
`is new evidence. Indeed, although a picture of the CD-ROM was submitted
`
`
`
`2 For the purpose of clarity and expediency, IPR2013-00085 is representative and
`all citations are to IPR2013-00085 unless otherwise noted.
`
`2
`
`

`

`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`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
`
`
`
`the above-identified proceedings, nor has it been served on PersonalWeb.
`
`Introducing new evidence at this late juncture—when the trial issues had been
`
`briefed fully by both parties—would prejudice PersonalWeb, who would not have
`
`the opportunity to respond or challenge the authentication of the CD-ROM.
`
`For the foregoing reasons, EMC is not authorized to use the physical copy of
`
`the “October 1993 Walnut Creek CD-ROM” at the final oral hearing. EMC,
`
`however, may present a picture of the CD-ROM, as a demonstrative (Ex. 1097,
`
`slide 21), because the picture was submitted previously (Ex. 1052) in support of
`
`the Declaration of Mr. Jason S. Sadofsky (Ex. 1081).
`
`Motion to Exclude Demonstratives
`
`During the conference call, PersonalWeb sought leave to file a motion to
`
`exclude any of EMC’s demonstrative slides that are not discussed substantively at
`
`the oral hearing. PersonalWeb also requested that its motion to exclude evidence
`
`(Paper 55) be applicable to EMC’s demonstrative slides to the extent that they
`
`contain the same content as the evidence sought to be excluded. PersonalWeb’s
`
`requests are not authorized for the reasons stated below.
`
`Demonstrative exhibits are not evidence. As noted by the Board,
`
`demonstrative exhibits merely include evidence or arguments that have been
`
`submitted previously in the proceeding. They should not contain new evidence or
`
`arguments. PersonalWeb has not identified, nor alleged, that any of EMC’s
`
`demonstrative slides contain new evidence or arguments. The Board also noted
`
`that no substantive paper submitted by EMC is referring to, or relying upon, the
`
`3
`
`

`

`IPR2013-00082, Patent 5,978,791
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`demonstrative slides. Therefore, PersonalWeb has not provided sufficient reasons
`
`IPR2013-00085, Patent 7,945,539
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`
`
`
`
`
`
`as to why a motion to exclude any of EMC’s demonstrative slides is necessary.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that EMC is not authorized to use the physical copy of the
`
`“October 1993 Walnut Creek CD-ROM” at the final oral hearing; and
`
`FURTHER ORDERED that PersonalWeb is not authorized to file a motion
`
`to exclude EMC’s demonstrative exhibit (Ex. 1097).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket