UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`Sipnet EU S.R.O.,
`
`
`
`Petitioner
`
`v.
`
`Straight Path IP Group, Inc.,
`
`Patent Owner
`
`
`______________
`
`Case No. IPR2013-00246
`
`U.S. Patent No. 6,108,704
`
`
`______________
`
`
`
`Before KALYAN K. DESHPANDE, THOMAS L. GIANNETTI, and TRENTON
`A. WARD, Administrative Patent Judges.
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`
`May 6, 2014
`
`
`
`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`Sipnet EU S.R.O.,
`
`
`
`Petitioner
`
`v.
`
`Straight Path IP Group, Inc.,
`
`Patent Owner
`
`
`______________
`
`Case No. IPR2013-00246
`
`U.S. Patent No. 6,108,704
`
`
`______________
`
`
`
`Before KALYAN K. DESHPANDE, THOMAS L. GIANNETTI, and TRENTON
`A. WARD, Administrative Patent Judges.
`
`
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`
`May 6, 2014
`
`
`
`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`
`
`Case No. IPR2013-00246
`US Patent No. 6,108,704
`
`
`
`In accordance with 37 C.F.R. § 42.64(b)(1), Straight Path IP Group, Inc.
`
`(“Patent Owner”) hereby submits the following objections to Exhibit 1017, Exhibit
`
`1018, Exhibit 1019, Exhibit 1020, Exhibit 1021, and Exhibit 1023, as provided by
`
`Sipnet EU S.R.O. (“Petitioner”) in its Reply to Patent Owner’s Response Pursuant
`
`to 37 C.F.R. § 42.23 (“Reply,” Paper No. 33).
`
`Pursuant to 37 C.F.R. § 42.62(a), Patent Owner’s objections below apply the
`
`Federal Rules of Evidence (“FRE”).
`
`Patent Owner objects to Exhibits 1017-1021 and Exhibit 1023 for the following
`
`reasons:
`
`A.
`
`Exhibits 1017-1019 and Any Reference To or Reliance Thereon
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`Exhibits 1017-10191 are objected to as being in violation of 37 C.F.R. § 42.123(b)2
`
`(“Late Submission of Supplemental Information”); FRE 401, FRE 402 (“Test for
`
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`1 Exhibit 1017 is a declaration of a former consultant for Decisions Systems Plus,
`
`Inc. (Yuri Kolesnikov), Exhibit 1018 is a declaration of a paralegal for Petitioner’s
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`counsel (Leslie Ehrlich), and Exhibit 1019 is a compilation of screenshots from a
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`digital CD-ROM guide (Windows NT 3.5 User Guide).
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`2 See EMC Corporation v. Personal Web Technologies, LLC, IPR2013-00082,
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`Paper No. 41 at 4 (June 19, 2013) (noting that submitter of supplemental evidence
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`
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`2
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`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`Relevant Evidence”); FRE 403 (“Excluding Relevant Evidence for Prejudice,
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`Confusion, Waste of Time, or Other Reasons”); and FRE 801, FRE 802
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`(“Exclusions from Hearsay”).
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`1.
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`Exhibits 1017-1019 are objected under FRE 401, FRE 402, FRE 403,
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`and 37 C.F.R. § 42.123(b) as being not relevant to establishing the publication or
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`public availability of Exhibit 1004, alleged prior art “WINS.” Petitioner has
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`submitted Exhibits 1017-1019 in response to Patent Owner’s January 30 Response
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`(Paper No. 30), which stated, “Petitioner has been unable to establish that WINS
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`(Exhibit 1004) was a publicly available reference, despite several requests for
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`supplemental evidence from Patent Owner.”3 As noted in Patent Owner’s
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`Response, the WINS reference is a specific manual discussing the Microsoft
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`Windows NT 3.5 system labeled “For Distribution Only With a New PC.”4
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`Petitioner initially attempted to establish the publication of Exhibit 1004 via
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`Exhibit 1005, a Wikipedia webpage. After Patent Owner objected to the
`
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`may rely on the supplemental evidence only for the issues raised by previous
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`evidentiary objections).
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`3 Patent Owner’s Response Pursuant to 37 C.F.R. § 42.120 (“Response”), Paper
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`No. 30 at 54.
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`4 Response, Paper No. 30 at 55; Ex. 1004 at 1.
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`3
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`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
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`
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`admissibility of Exhibit 1005, Petitioner served Patent Owner with several
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`documents that discussed the Microsoft Windows NT 3.5 server product, but did
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`not refer to the manual submitted as Exhibit 1004. Petitioner then submitted
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`Exhibits 1017-10195 in another attempt to demonstrate the public availability of
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`Exhibit 1004. These exhibits suffered from the same deficiency as Petitioner’s
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`previous submissions, and only discussed the Microsoft server product and a CD-
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`ROM that was distributed with the server product. To date, Petitioner has not
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`submitted documents that establish the public availability of Exhibit 1004 as
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`required by Federal Circuit precedent.6 Exhibits 1017-1019 do not refer to the
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`manual submitted by Petitioner as Exhibit 1004, the “WINS” alleged prior art.
`
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`5 Exhibits 1017-1019 were originally served on Patent Owner as Exhibits 1016-
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`1018 on November 27, 2013.
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`6 ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 865-66 (Fed. Cir. 2010) (absent
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`evidence as to "the source publication, or public accessibility of either manual,”
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`documents associated with a publicly available computer product could not be
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`considered publicly available prior art); see also Norian Corp. v. Stryker Corp.,
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`363 F.3d 1321, 1330 (Fed. Cir. 2004) (publication must be established with
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`specific evidence of actual availability, despite “general practice” to make such
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`documents available).
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`
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`4
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`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`Patent Owner therefore respectfully submits that Exhibits 1017-1019 are in
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`violation of FRE 401, FRE 402, FRE 403, and 37 C.F.R. § 42.123(b) as being
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`irrelevant, prejudicial and confusing evidence, and impermissible supplemental
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`evidence for failing to establish the public availability of Exhibit 1004.
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`2.
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`Exhibits 1017-1019 are further objected to as being impermissible
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`hearsay under FRE 801 and 802. The submitted Exhibits merely discuss the CD-
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`ROM that came with the server product, and not actually the submitted manual,
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`Exhibit 1004. Exhibits 1017-1019 have been offered to establish the public
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`availability of Exhibit 1004, but are out of court statements offered for the truth of
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`the matter therein and constitute impermissible hearsay.
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`B.
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`Exhibits 1020-1021 and Any Reference To or Reliance Thereon
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`Exhibits 1020-10217 are objected to as being in violation of 37 C.F.R. §
`
`42.123(b), FRE 401, 402, and 403 as being impermissible supplemental evidence
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`and not relevant to the proceeding. These submitted articles do not establish the
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`public availability of Exhibit 1004 or its release date, and are therefore irrelevant,
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`prejudicial, and confusing to this proceeding.
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`C. Exhibit 1023 and Any Reference To or Reliance Thereon
`
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`7 Exhibit 1020 is an evaluation of the LAN Server and NT Server, and Exhibit
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`1021 is an article discussing Microsoft’s “Solution Server Program.”
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`5
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`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
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`
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`Exhibit 1023 (the “Expert Declaration”)8 is objected to as being in violation of 37
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`C.F.R. § 42.123(b); 37 C.F.R. § 42.23(b) (“Outside the Scope of Response and
`
`Petition”); 37 C.F.R. § 42.65(a) (“Expert Testimony”); FRE 401, 402, and 403;
`
`FRE 801 and 802; and FRE 702 and 705 (“Testimony by Expert Witnesses”;
`
`“Disclosing the Facts or Data Underlying an Expert”).
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`1.
`
`The Expert Declaration is objected to under § 42.123(b), § 42.23(b),
`
`and FRE 401, 402, and 403 as being improperly submitted in Petitioner’s Reply to
`
`present new theories of unpatentability. The Expert Declaration, submitted in
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`Petitioner’s April 29, 2014 Reply, presents new theories to support Petitioner’s
`
`invalidity arguments in an attempt to make out a prima facie case of
`
`unpatentability.9 First, this Expert Declaration should have instead been submitted
`
`with Petitioner’s original April 11, 2013 Petition for Inter Partes Review (Paper
`
`No. 1). Second, it offers arguments of unpatentability that Petitioner does not rely
`
`upon in its Reply. For example, Paragraphs 62-66 and Paragraph 70 of Section XI
`
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`8 Exhibit 1023 is Petitioner’s Expert Declaration, Declaration of Vadim Antonov.
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`9 See, e.g., Office Patent Trial Practice Guide, Vol. 77, Fed. Reg. 48756, 48767
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`(Aug. 14, 2012); see also Blackberry Corporation v. Mobilemedia Ideas, LLC,
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`IPR2013-00036, Paper 40 (July 26, 2013).
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`
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`6
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`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`and the entirety of Section XII were not referenced in the Reply or relied upon by
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`Petitioner in its Reply.
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`Patent Owner therefore respectfully submits that the Expert Declaration is
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`untimely and an improper evidentiary submission under § 42.123(b), § 42.23(b),
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`and FRE 401, 402, and 403.
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`2.
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`The Expert Declaration is further objected to under § 42.23(b) and
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`FRE 401, 402, and 403 as being prejudicial to Petitioner. Patent Owner was
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`unable to address the new arguments and evidence contained within the Expert
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`Declaration in its January 30 Response because Petitioner did not submit the
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`Expert Declaration with its original Petition.10
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`3.
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`The Expert Declaration is objected to under § 42.65(a) and FRE 702
`
`and 705 as stating opinions that are not supported by underlying facts or data. For
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`example, in Paragraphs 45 and 46, the expert, Mr. Vadim Antonov, discusses the
`
`delivery of a datagram packet in the NetBIOS-over-TCP network, but does not
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`support his discussion with any references to the NetBIOS reference.11
`
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`10 See, e.g., Office Patent Trial Practice Guide, Vol. 77, Fed. Reg. 48756, 48767
`
`(Aug. 14, 2012).
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`11 See Ex. 1023, Expert Declaration at ¶¶ 45-46.
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`
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`7
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`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`
`
`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`4.
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`The Expert Declaration is further objected to under FRE 801 and 802
`
`as being impermissible hearsay.
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`These objections are being timely served within 5 business days of the
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`service of evidence, in accordance with 37 C.F.R. § 42.64(b)(1). The service of
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`evidence occurred on April 29, 2014 (Paper No. 33).
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`8
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`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
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`
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`Respectfully Submitted,
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`
`
`/Patrick J. Lee/
`Patrick J. Lee (Reg. No. 61,746)
`Michelle M. Chatelain (Reg. No. 71,435)
`Fisch Hoffman Sigler LLP
`5335 Wisconsin Avenue
`Suite 830
`Washington, D.C. 20015
`Telephone: 202-362-3500
`Fax: 202-362-3501
`Email: patrick.lee@fischllp.com
`Email: michelle.chatelain@fischllp.com
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`9
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`Date: May 6, 2013
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`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S
`OBJECTIONS TO EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(b)(1) was
`served, by agreement of the parties, by electronic mail on counsel for the Petitioner
`on May 6, 2014 as follows:
`
`
`Paul C. Haughey
`Michael T. Morlock
`Kilpatrick Townsend & Stockton, LLP
`phaughey@kilpatricktownsend.com
`mmorlock@kilpatricktownsend.com
`
`/ Patrick J. Lee /
`Patrick J. Lee (Reg. No. 61,746)
`Michelle M. Chatelain (Reg. No. 71,435)
`Fisch Hoffman Sigler LLP
`5335 Wisconsin Avenue NW
`Suite 830
`Washington, DC 20015
`Telephone: 202-362-3500
`Fax: 202-362-3501
`Email: patrick.lee@fischllp.com
`Email: michelle.chatelain@fischllp.com
`Attorneys for Patent Owner
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`
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`Dated: May 6, 2014
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`Straight Path Ex. 2047
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
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