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 MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`June 6, 2014
`
`
`
`
`
`______________
`
`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 MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`June 6, 2014
`
`
`
`
`
`Case No. IPR2013-00246
`US Patent No. 6,108,704
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ..................................................................................................... 1
`
`ARGUMENT ............................................................................................................. 2
`
`A. WINS Should Be Excluded Because Petitioner Has Failed to
`Establish Its Public Availability ............................................................ 2
`
`B.
`
`C.
`
`The Antonov Declaration Relies On Facts Not in the Record
`and Should Be Excluded ....................................................................... 6
`
`Petitioner’s Evidence Relating to Contentions that are Outside
`the Scope of this Proceeding Should Be Excluded ............................... 9
`
`CONCLUSION ........................................................................................................15
`
`
`
`
`
`i
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`TABLE OF AUTHORITIES
`
`Cases
`
`Avaya Inc. v. Network-1 Security Solutions, Inc.,
`
`IPR2013-00071, Paper No. 103 (May 22, 2014) .................................................10
`
`Bruckelmyer v. Ground Heaters, Inc.,
`
`445 F.3d (Fed. Cir. 2006) ...................................................................................1, 3
`
`EMC Corporation v. Personal Web Technologies, LLC,
`
`IPR2013-00086, Paper No. 66 (May 15, 2014) ..................................................... 3
`
`In re Cronyn,
`
`890 F.2d (Fed. Cir. 1989) ....................................................................................... 3
`
`In re Enhanced Sec. Research, LLC,
`
`739 F.3d (Fed. Cir. 2014) ....................................................................................... 6
`
`K/S HIMPP v. Hear-Wear Technologies, LLC,
`
`2014 U.S. App. LEXIS 9698 (May 27, 2014) ....................................................1, 7
`
`Northern Telecom, Inc. v. Datapoint Corp.,
`
`908 F.2d (Fed. Cir. 1990) ....................................................................................... 3
`
`ResQNet.com, Inc. v. Lansa, Inc.,
`
`594 F.3d (Fed. Cir. 2010) ....................................................................................... 3
`
`ZTE Corporation v. Contentguard,
`
`IPR2013-00136, Paper No. 32 (November 5, 2013) ............................... 11, 12, 13
`
`Statutes
`
`35 U.S.C § 311(b) ..................................................................................................1, 6
`
`Rules
`
`37 C.F.R. § 42.123(b) ..............................................................................................13
`
`37 C.F.R. § 42.6(a)(3) ..............................................................................................11
`
`37 C.F.R. § 42.65(a) ...............................................................................................7, 9
`
`ii
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`Federal Rule of Evidence 401 ......................................................................... 7, 9, 13
`
`Federal Rule of Evidence 402 ..................................................................... 2, 7, 9, 13
`
`Federal Rule of Evidence 403 ..................................................................... 2, 7, 9, 13
`
`Federal Rule of Evidence 702 ................................................................................7, 9
`
`Federal Rule of Evidence 705 ................................................................................7, 9
`
`
`
`
`
`iii
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`PATENT OWNER’S EXHIBIT LIST
`CASE IPR2013-00246
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`
`PATENT OWNER EXHIBIT #
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`2007
`2008
`2009
`2010
`
`2011
`
`2012
`2013
`2014
`
`2015
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`2021
`2022
`
`DESCRIPTION
`Power of Attorney
`Request for Ex Parte Reexamination
`Reexamination Certificate
`Response to Non-Final Rejection in a
`Re-Examination
`Notice of Intent to Issue Ex Parte
`Reexamination Certificate
`Final Rejection
`List of References
`Complaint for Patent
`Stipulation for Dismissal
`June 11, 2013 Letter from P. Lee to P.
`Haughey
`June 17, 2013 Correspondence from P.
`Haughey to P. Lee
`IPR2012-00041 Decision
`Patent Owner’s Certificate of Service
`Declaration of Alan M. Fisch in
`Support of Motion for Admission Pro
`Hac Vice
`Certificate of Service
`Declaration of Jason F. Hoffman in
`Support of Motion for Admission Pro
`Hac Vice
`Declaration of R. William Sigler in
`Support of Motion for Admission Pro
`Hac Vice
`Declaration of Professor Ketan Mayer-
`Patel
`Curriculum Vitae of Prof. Ketan
`Mayer-Patel
`Declaration of David K. Callahan
`Stalker Complaint
`Stalker Summons
`
`iv
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`PATENT OWNER EXHIBIT #
`2023
`2024
`2025
`2026
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`2027
`
`2028
`
`2029
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`2030
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`2031
`2032
`2033
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`2034
`
`2035
`2036
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`2037
`
`2038
`
`2039
`
`2040
`2041
`2042
`
`
`2043
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`2044
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`DESCRIPTION
`Declaration of Michelle Chatelain
`Sipnet - Contacts
`Sipnet.Net
`Dec. 10, 2013 Petitioner Response to
`Discovery
`Oct. 28, 2013 Patent Owner
`Interrogatories
`Nov. 26, 2013 Petitioner Objections to
`Interrogatories
`Dec. 20, 2013 Petitioner Response to
`Supplemental Discovery Requests
`CommuniGate – Tario
`Communications
`CommuniGate – Yuri Kolesnikov
`Dec. 4, 2013 Telephonic Hearing
`Oct. 25, 2013 Patent Owner Objections
`to Exhibits
`Nov. 6, 2013 Petitioner Supplemental
`Evidence
`NT Resource Kit
`Nov. 27, 2013 Petitioner Supplemental
`Evidence
`Nov. 27, 2013 Petitioner Decl. of Yuri
`Kolesnikov
`May 11, 2010 Office Action in a
`Reexamination
`Nov. 6 2013 Petitioner Supplemental
`Evidence (A)(1)
`[Reserved]
`[Reserved]
`Y. Kolesnikov LinkedIn Profile
`(served on Petitioner at May 29, 2014
`Y. Kolesnikov Deposition)
`May 29, 2014 Y. Kolesnikov
`Deposition Transcript
`May 29, 2014 L. Ehrlich Deposition
`Transcript
`
`v
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`PATENT OWNER EXHIBIT #
`2045
`
`2046
`
`2047
`
`
`
`
`
`DESCRIPTION
`May 30, 2014 V. Antonov Deposition
`Transcript
`Oct. 25, 2013 Patent Owner Objections
`to Evidence
`May 6, 2014 Patent Owner Objections
`to Evidence
`
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`Patent Owner’s motion presents three questions:
`
`INTRODUCTION
`
`1. The Federal Circuit announced in Bruckelmyer v. Ground Heaters that a
`
`party challenging validity must establish through the evidence that a reference was
`
`“disseminated or otherwise made available” to the public.1 Petitioner has not
`
`developed evidence showing that WINS (Ex. 1004) was disseminated to anyone,
`
`despite the availability of discovery. Petitioner instead relies upon a separate CD-
`
`ROM product that includes over 10,000 differences from WINS, a declaration
`
`from its outside counsel’s paralegal, and a declaration from another witness who
`
`had never seen Exhibit 1004 before his deposition. Given Petitioner’s failure to
`
`support its argument that WINS was publicly disseminated, should WINS be
`
`excluded?
`
`2. Section 311(b) of the Patent Act limits this proceeding to rejections based
`
`on patents and printed publications. The Federal Circuit emphasized this point last
`
`week in K/S HIMPP v. Hear-Wear Technologies, LLC, pronouncing that “the
`
`Board cannot accept general conclusions about what is ‘basic knowledge’ or
`
`‘common sense’ as a replacement for documentary evidence.”2 The declaration of
`
`
`1 Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006).
`
`2 2014 U.S. App. LEXIS 9698, *11 (May 27, 2014).
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`Vadim Antonov, Petitioner’s expert, does not rely upon the prior art of record here
`
`— WINS and NetBIOS. Instead, he bases his opinions on a collection of general
`
`concepts, documents, and products that are not part of the record. Because Mr.
`
`Antonov’s declaration fails to rely on the prior art of record, should the Board
`
`exclude it in its entirety?
`
`3. The Board may exclude irrelevant evidence under FRE 402 and 403.
`
`Evidence regarding issues outside the scope of the record is irrelevant. Several
`
`sections of the Antonov Declaration and several miscellaneous exhibits relate
`
`solely to issues outside the scope of this proceeding. Should the Board exercise its
`
`discretion to exclude this evidence under FRE 402 and 403?
`
`The answer to all three questions is “yes.” The exclusion of this evidence at
`
`this stage would be appropriate, as it would bring the record in line with Federal
`
`Circuit law and streamline the record in advance of the hearing.
`
`ARGUMENT
`
`A. WINS Should Be Excluded Because Petitioner Has Failed to
`Establish Its Public Availability
`
`To rely on WINS (Exhibit 1004) as prior art, Federal Circuit law requires
`
`Petitioner to establish that WINS was publicly available.3 The Federal Circuit
`
`
`3 Patent Owner set forth its objection to Exhibit 1004 in its July 15, 2013
`
`Preliminary Response (Paper No. 8) and January 30, 2014 Response (Paper No.
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`2
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`pronounced in Bruckelmyer v. Ground Heaters that a party must establish that a
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`reference “has been disseminated or otherwise made available” to the public in
`
`order for that reference to qualify as prior art. 445 F.3d 1374, 1378 (Fed. Cir.
`
`2006). The Federal Circuit also requires that “[a] document, to serve as a ‘printed
`
`publication’, must be generally available.” Northern Telecom, Inc. v. Datapoint
`
`Corp., 908 F.2d 931, 936 (Fed. Cir. 1990). The key inquiry into whether a
`
`document was made publically available is “whether the reference was made
`
`‘sufficiently accessible to the public interested in the art’ before the critical date.”
`
`EMC Corporation v. Personal Web Technologies, LLC, IPR2013-00086, Paper
`
`No. 66 at 18 (May 15, 2014), citing In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir.
`
`1989). The Federal Circuit has noted that in the case of a software product and its
`
`corresponding documentation, the document’s general availability must be proven
`
`independently of the product. See ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860,
`
`865-66 (Fed. Cir. 2010).
`
`
`30). Paper No. 8 at 16-17; Paper No. 30 at 54-60. Patent Owner also timely
`
`served objections to Petitioner’s evidence that allegedly related to the public
`
`availability of Ex. 1004 on Oct. 25, 2013 (Ex. 2046, Oct. 25 2013 Patent Owner
`
`Objections to Evidence) and May 6, 2014 (Ex. 2047, May 6, 2014 Patent Owner
`
`Objections to Evidence).
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`Petitioner has not met the Federal Circuit standard. Petitioner has had at
`
`least nine months to develop evidence that WINS meets the standard for public
`
`availability. During this time, Petitioner failed to obtain, adduce, or produce any
`
`discovery from Microsoft, which created the WINS product. And none of the
`
`evidence that Petitioner has developed meets the standard for establishing public
`
`availability.
`
`The Yuri Guide fails to support Petitioner’s contention that WINS was
`
`publicly available. The Yuri Guide is a compilation of screen shots from a digital
`
`CD-ROM Guide. It is undisputed that the Yuri Guide (Ex. 1019) is not identical to
`
`the WINS reference (Ex. 1004). Rather, the Yuri Guide includes more than 10,000
`
`differences from WINS (Ex. 1004). Petitioner’s own declarant, Leslie Ehrlich,
`
`testified to this at deposition:
`
`Q. And so the total amount of changes in comparison of the two
`
`documents, that being Exhibit 1004 and Exhibit 1018 [sic,
`
`1019], was 10,264 changes, correct?
`
`A. Correct.
`
`Q. And as a result of all these changes, it is clear that the two
`
`documents are not identical, correct?
`
`A. Correct.
`
`Ex. 2044, Ehrlich Dep. at 23:19-24:2.
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`Petitioner also relies on Ms. Ehrlich’s testimony to support its argument that
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`WINS was publicly available. Ms. Ehrlich, however, is a paralegal at Petitioner’s
`
`outside counsels’ law firm. She has no personal knowledge of whether WINS was
`
`ever published or made publicly available:
`
`Q. Do you know when -- or do you know if Exhibit 1004 was ever
`
`published?
`
`A. No.
`
`Q. Do you know if Exhibit 1004 was ever made publicly
`
`available?
`
`A. No.
`
`
`Ex. 2044, Ehrlich Dep. at 15:25-16:5. Her testimony thus does not provide support
`
`for Petitioner’s argument that WINS was publicly available.
`
`The other witness upon which Petitioner relies, Mr. Kolesnikov, similarly
`
`fails to provide support for Petitioner’s argument. Mr. Kolesnikov could not
`
`confirm at deposition whether he had ever previously seen Exhibit 1004. Ex.
`
`2043, Kolesnikov Dep. at 24:2-13; 25:1-16. He also testified that he did not know
`
`where the Petitioner obtained Exhibit 1004. Ex. 2043, Kolesnikov Dep. at 44:6-22.
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`5
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`In sum, Petitioner has not submitted any evidence that shows that WINS
`
`(Ex. 1004) was publically available.4 WINS (Ex. 1004) therefore cannot be
`
`considered prior art, and should be excluded from this proceeding. See Paper No.
`
`30, Patent Owner Response at 54-60.
`
`B.
`
`The Antonov Declaration Relies On Facts Not in the Record and
`Should Be Excluded
`
`Section 311(b) of the Patent Act limits the scope of this proceeding to two
`
`forms of prior art — patents and printed publications:
`
`A petitioner in an inter partes review may request to cancel as unpatentable
`
`1 or more claims of a patent only on a ground that could be raised under
`
`section 102 or 103 and only on the basis of prior art consisting of patents or
`
`printed publications.
`
`Based on this limitation, the Federal Circuit teaches that the Board cannot rely on
`
`purported basic knowledge in the art as a basis for rejections. Rather, rejections
`
`
`4 The Federal Circuit recently noted that the public availability of a software
`
`manual could be established by a declaration attesting to the release of the manual.
`
`In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1354-55 (Fed. Cir. 2014). In
`
`that case, however, the CEO of the company that produced the software provided a
`
`declaration establishing the public dissemination of such software. Here,
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`Petitioner could have obtained a similar declaration, but did not.
`
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`must find support in the evidence. Just last week, the Federal Circuit reiterated this
`
`teaching in K/S HIMPP v. Hear-Wear Technologies:
`
`[T]he Board cannot accept general conclusions about what is ‘basic
`
`knowledge’ or ‘common sense’ as a replacement for documentary
`
`evidence for core factual findings in a determination of patentability.
`
`To hold otherwise would be to embark down a slippery slope which
`
`would permit the examining process to deviate from the well-
`
`established and time-honored requirement that rejections be supported
`
`by evidence.
`
`2014 U.S. App. LEXIS 9698, *11 (May 27, 2014). The Federal Circuit in K/S
`
`went on to affirm the Board’s decision to reject a petitioner’s obviousness
`
`contention because the petitioner had “failed to cite any evidence on the record” in
`
`support. Id. at *13. It would be appropriate to apply the Federal Circuit’s K/S
`
`holding here, and exclude the Antonov Declaration in its entirety.5
`
`Petitioner based its invalidity contentions on NetBIOS and NetBIOS in view
`
`of the WINS manual. Mr. Antonov, however, declined to limit his opinions to
`
`NetBIOS or WINS. Rather, Mr. Antonov based his opinions on software products
`
`and multiple technical documents not of record. For example, Mr. Antonov
`
`
`5 Straight Path filed timely objections to Exhibit 1023 because it violates 37 C.F.R.
`
`§ 42.65(a) and FRE 401, 402, 403, 702, and 705. Ex. 2047 at 5-7.
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`7
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`testified that he relied upon the WINS product rather than the WINS reference in
`
`forming his opinions:
`
`Q.
`
`Is your opinion with respect to WINS with respect to the product
`
`WINS?
`
`A. Uh-huh (affirmative).
`
`Q. And it's the product WINS as you know has been implemented over
`
`the years, correct?
`
`A. Yes.
`
`Q. And your opinions with respect to WINS are not based on simply, say,
`
`the Microsoft manual -- I think it's Exhibit 1004 -- that was produced
`
`to us in this case?
`
`A. No, I had experience of work on WINS as a product over the years.
`
`Ex. 2045, Antonov Dep. at 24:14-25. Indeed, Mr. Antonov confirmed at
`
`deposition that his entire opinion depends on a collection of concepts, documents,
`
`and products that are not part of the record:
`
`[M]y declaration, all of it depends on things being already known or
`
`implemented by previous published documents or products.
`
`Ex. 2045, Antonov Dep. at 30:19-23.
`
`Mr. Antonov also confirmed at deposition that Paragraphs 27-28, 41-47, and
`
`54-59 of his Declaration are completely unsupported by the required references.
`
`Ex. 2045, Antonov Dep. at 59:17-60:8; 70:24-71:14; 79:16-80:18; 81:15-82:10;
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`86:24-87:2; 94:14-95:12; 110:7-21; 116:24-117:10; 134:12-20. Further, numerous
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`paragraphs of the Antonov Declaration do not include any citations to evidence,
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`including Paragraphs 40-46. Mr. Antonov also offered an opinion on anticipation
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`without providing any claim charts to support the relationship between the
`
`challenged claims and the prior art at issue. Ex. 2045, Antonov Dep. at 22:11-23;
`
`see also Ex. 1023, Antonov Declaration.
`
`Because the opinions in the Antonov Declaration are not supported by
`
`proper underlying facts or data, Patent Owner respectfully requests that the
`
`Antonov Declaration, Exhibit 1023, be excluded in its entirety as in violation of 37
`
`C.F.R. § 42.65(a) and FRE 401, 402, 403, 702 and 705. See Ex. 2047 at 5-7.
`
`C.
`
`Petitioner’s Evidence Relating to Contentions that are Outside the
`Scope of this Proceeding Should Be Excluded
`
`Petitioner has submitted substantial evidence that relates to issues outside
`
`the scope of this proceeding. Such evidence is irrelevant, and thus should be
`
`excluded under FRE 402 and 403. Indeed, the exclusion of such evidence would
`
`streamline the upcoming hearing process.
`
`First, Sections IX-X of the Antonov Declaration should be excluded because
`
`they include opinions that claims 33-37 are anticipated, an issue outside the scope
`
`of this proceeding. The Board limited its institution of this proceeding on claims
`
`33-37 to “[o]bviousness [] over NetBIOS and WINS.” Paper No. 11, Decision to
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`Institute at 21. The Board explicitly found that it was “not persuaded Petitioner is
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`reasonably likely to prevail on the challenge that claims 33-37 are anticipated by
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`NetBIOS, because Petitioner did not provide sufficient evidence that NetBIOS
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`discloses that the processes [have] ‘dynamically assigned network protocol
`
`addresses.’” Paper No. 11, Decision to Institute at 14-15. Nonetheless, Mr.
`
`Antonov testified that it was his opinion that NetBIOS alone anticipated claims 33-
`
`37. Ex. 2045, Antonov Dep. at 23:22-24:4. And Mr. Antonov confirmed that his
`
`opinions in his declaration are limited to anticipation:
`
`[Q.] Your declaration – your opinions in this declaration are limited to an
`
`opinion that the claims at issue are anticipated by the prior art, is that
`
`correct?
`
`A. Yes, that is correct.
`
`Ex. 2045, Antonov Dep. at 32:11-15. Mr. Antonov’s anticipation opinions have no
`
`bearing on the issue to be decided here for claims 33-37 – obviousness – and thus
`
`should be excluded.
`
`Second, Sections VIII-X of the Antonov Declaration should be excluded
`
`because they present new arguments that were not previously relied upon by
`
`Petitioner. The Board has stated that it will not consider arguments advanced for
`
`the first time in a Reply declaration. See Avaya Inc. v. Network-1 Security
`
`Solutions, Inc., IPR2013-00071, Paper No. 103 at 28-29 (May 22, 2014). Sections
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`VIII-IX of the Antonov Declaration present a new claim construction argument for
`
`the term “network protocol address.” Petitioner did not offer a construction of
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`“network protocol address” in its original Petition. Paper No. 1, Petition at 5-8.
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`The Board did not request construction of “network protocol address” in its
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`Decision to Institute, and Patent Owner did not construe “network protocol
`
`address” in its Response. Further, Section X of the Antonov Declaration argues
`
`that NetBIOS teaches dynamic addressing. Petitioner had previously argued that
`
`NetBIOS in combination with WINS was required to teach dynamic addressing,
`
`and the Board agreed with Petitioner in its Decision to Institute that WINS was
`
`required to teach dynamic addressing. Paper No. 1, Petition at 26; Paper No. 11,
`
`Decision to Institute at 14-15. Sections VIII-X of the Antonov Declaration should
`
`thus be excluded by the Board.
`
`
`
`Third, Sections VII, VIII, IX, XI, and XII of the Antonov Declaration should
`
`be excluded because they exceed the scope of Petitioner’s arguments in its Reply.
`
`These sections comprise an attempt to circumvent the page limits set by 37 C.F.R.
`
`§ 42.6(a)(3), a practice that the Board has frowned upon. In ZTE Corporation v.
`
`Contentguard, the Board explained that
`
`[A] party may not make its case within the declaration of an expert
`
`and state in the motion itself that readers simply should refer to the
`
`presentation in the declaration. Even evidence has to be explained,
`
`not to mention that it would be improper for any argument to be
`
`developed and presented, not in the motion itself, but in the
`
`declaration of an expert. Having in the motion the substantive
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`equivalent of merely a pointer, conclusion, or a citation, without the
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`arguments and the explanation of the evidence, circumvents the
`
`applicable page-limit… Arguments contained only in a declaration,
`
`and not presented specifically in a motion referencing the declaration,
`
`may not be considered by the Board.
`
`IPR2013-00136, Paper No. 32 at 2-3 (November 5, 2013).
`
`Here, Petitioner regularly references the Antonov Declaration for the
`
`entirety of certain arguments in its Reply. As a first example, Petitioner’s Section
`
`E is two short sentences stating, “NetBIOS RFC 1001 clearly states: ‘An
`
`application, representing a resource, registers one or more names that it wishes to
`
`use’ (Ex. 1003, p.378). Mr. Antonov’s Declaration, Exhibit 1023, Section VIII
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`explains this in detail.” Paper No. 33, Reply at 11. The Antonov Declaration then
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`uses six pages for this argument. As a second example, Petitioner incorporates
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`Section IX of the Antonov Declaration into the Reply, Section F, which states
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`“network protocol address received by following connection to the computer
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`network” is not new. Paper No. 33, Reply at 12. No other explanation is
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`provided.6 Finally, there are sections of the Antonov Declaration (Section XII and
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`Paragraphs 62-66 and 70 of Section XI) that are not even cited by Petitioner in its
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`6 See also Paper No. 33, Reply at 7, 10.
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`12
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`Reply. As ZTE v. Contentguard held, arguments contained only in a declaration
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`may not be considered by the Board.
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`Fourth, the Yuri Guide and evidence relating to the Yuri Guide should be
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`excluded because the Yuri Guide is not prior art of record.7 The Board instituted
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`inter partes review solely on the basis of NetBIOS (Ex. 1001) and WINS (Ex.
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`1004), and noted that “the trial is limited to the grounds identified above.” Paper
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`No. 11, Decision to Institute at 20-21. The Yuri Guide was not included in the
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`original Petition or in any filing until the Reply. Although Petitioner claims the
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`Yuri Guide bears some relationship to WINS, the parties agree that the Yuri Guide
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`(Ex. 1019) is not the WINS reference (Ex. 1004). See Ex. 2044, Ehrlich Dep. at
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`23:19-24:2. As detailed above, the Yuri Guide has over 10,000 differences from
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`Exhibit 1004. See id. Thus, the Yuri Guide itself should be excluded as outside
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`the scope of this proceeding.
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`7 Exhibits 1005 and 1017-1021 were each timely objected to as being in violation
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`of 37 C.F.R. § 42.123(b) as an improper late submission of supplemental
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`information and as being irrelevant, prejudicial, and confusing under FRE 401,
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`402, and 403. See Exhibit 2046; Exhibit 2047 at 2-5. Patent Owner now moves to
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`exclude this evidence.
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`13
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`And because the Yuri Guide is not the same as WINS, the declarations
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`presented by Sipnet should also be excluded as outside the scope. The two
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`declarations Petitioner submitted regarding the Yuri Guide — Ex. 1018, the
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`Ehrlich Declaration and Ex. 1017, the Kolesnikov Declaration8 — do not discuss
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`the alleged prior art of record. Ms. Ehrlich testified that the Yuri Guide and WINS
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`were different publications. See Ex. 2044, Ehrlich Dep. at 9:8-16. And Mr.
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`Kolesnikov testified that he did not know if he had ever seen the WINS manual
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`(Ex. 1004) before his deposition. See Ex. 2043, Kolesnikov Dep. at 24:2-13;
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`25:1-16.
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`Finally, Exhibits 1005 and 1020-21 should be excluded because they are
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`irrelevant and unreliable. Exhibit 1005 is a Wikipedia page, and Exhibits 1020-21
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`are articles. None of these exhibits mention, much less establish, the public release
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`of the WINS manual (Ex. 1004).
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`8 Mr. Kolesnikov has known the CEO of Stalker Software (the company who
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`Patent Owner believes is the real party-in-interest of this proceeding) since 1999.
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`Ex. 2043, Kolesnikov Dep. at 37:6-13; see also Paper No. 30, Patent Owner’s
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`Response, at 13 and Ex. 2031, CommuniGate – Yuri Kolesnikov.
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`14
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`grant its Motion to Exclude Exhibits 1004-05, Exhibits 1017-21, Sections B, E,
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`and F of Paper No. 33, and Exhibit 1023.
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`15
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`Respectfully Submitted,
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`/ Patrick J. Lee /
`Patrick J. Lee (Reg. No. 61,746)
`Alan M. Fisch
`Alicia M. Carney (Reg. No. 44,397)
`Michelle M. Chatelain (Reg. No. 71,435)
`Fisch 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: alan.fisch.@fischllp.com
`Email: alicia.carney@fishllp.com
`Email: michelle.chatelain@fischllp.com
`
`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`Date: June 6, 2014
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`16
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PATENT OWNER’S MOTION
`TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c) was served, by agreement
`of the parties, by electronic mail on counsel for the Petitioner on June 6, 2014 as
`follows:
`
`
`Paul C. Haughey
`Michael T. Morlock
`Kilpatrick Townsend & Stockton, LLP
`phaughey@kilpatricktownsend.com
`mmorlock@kilpatricktownsend.com
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`
`
`/ Patrick J. Lee /
`Patrick J. Lee (Reg. No. 61,746)
`Alan M. Fisch
`Alicia M. Carney (Reg. No. 44,397)
`Michelle M. Chatelain (Reg. No. 71,435)
`Fisch 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: alan.fisch@fischllp.com
`Email: alicia.carney@fischllp.com
`Email: michelle.chatelain@fischllp.com
`Attorneys for Patent Owner
`
`
`
`Dated: June 6, 2014
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