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
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`
`EXCLUDE UNDER 37 C.F.R. 42.64(c)
`
`
`
`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
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`
`EXCLUDE UNDER 37 C.F.R. 42.64(c)
`
`
`
`Case No. IPR2013—00246
`
`U.S. Patent No. 6,108,704
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................... ..3
`
`ARGUMENT .......................................................................................................... ..4
`
`A. WINS Should Not Be Excluded ................................................................ ..4
`
`B. The Antonov Declaration Should Not Be Excluded .................................. ..8
`
`C. Petitioner’s Other Evidence Relating To Contentions Should Not Be
`Excluded .................................................................................................. .. 10
`
`D. Exhibits 1005 and 1020-1021 Should Not Be Excluded ......................... .. 13
`
`CONCLUSION ..................................................................................................... .. 14
`
`
`
`Case No. IPR2013—00246
`
`U.S. Patent No. 6,108,704
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`INTRODUCTION
`
`Patent Owner premises its motion to exclude on faulty legal arguments and
`
`incomplete and/or inaccurate characterizations of the evidence in the record.
`
`Patent Owner apparently concedes that WINS (Ex. 1004) has been properly
`
`authenticated and is not hearsay, and instead argues for exclusion of WINS
`
`because it “cannot be considered prior art.” Patent Owner’s exclusion arguments
`
`are faulty. First of all, WINS on its face states “For Distribution Only With a
`
`New PC” and lists the 1994 date, which is before the critical date. Moreover,
`
`Patent Owner has failed to challenge the authenticity of WINS or produce any
`
`evidence whatsoever tending to show that the 1994 date printed on WINS is not
`
`the date of its first public availability. On the other hand, Petitioner has produced
`
`multiple exhibits and testimony all corroborating the fact the WINS was publicly
`
`available in 1994 and, is therefore valid prior art.
`
`Patent Owner’s attack on various sections in Antonov Declaration is also
`
`without merit because Mr. Antonov’s testimony is not limited to anticipation and
`
`because the Motion to Exclude is not a proper vehicle for challenging the scope
`
`of the evidence submitted with the Reply. Finally, the remaining Patent Owner’s
`
`exclusion requests should likewise be rejected. Patent Owner’s motion to
`
`exclude should therefore be denied in its entirety.
`
`
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
`
`ARGUMENT
`
`A. WINS Should Not Be Excluded
`
`WINS clearly meets the Federal Circuit’s requirements for a printed
`
`publication to qualify as prior art. In In re Hall, 781 F .2d 897 (Fed. Cir. 1986)
`
`the Federal Circuit concluded that “a single cataloged thesis in one university
`
`library” constitutes “sufficient accessibility to those interested in the art
`
`exercising reasonable diligence.” Id. at 900. Thereafter, Constant V. Advanced
`
`Micro—Devices, Inc. explained that “[a]ccessibility goes to the issue of whether
`
`interested members of the relevant public could obtain the information if they
`
`wanted to.” Constant v. Advanced Micro—Devices, Inc., 848 F.2d 1560, 1569
`
`(Fed. Cir. 1988). Therefore, “[i]f accessibility is proved, there is no requirement
`
`to show that particular members of the public actually received the information.”
`
`Id.
`
`WINS on its face carries a 1994 copyright date and conspicuously states
`
`“For Distribution Only With a New PC”. This itself is evidence of WINS’ public
`
`availability before the critical date. In fact, the Board has a long practice of
`
`admitting publications, such as WINS, in other proceedings and relying solely on
`
`their copyright or posting date as the date of publication. See, e.g., Ex parte
`
`
`
`Case No. IPR2013—00246
`
`U.S. Patent No. 6,108,704
`
`Broyles, Appeal 2009—010197, 2012 WL 359584, at * 2-4 (BPAI Jan. 30, 2012)
`
`(affirming examiner’s reliance on copyright date as date of publication); Ex parte
`
`Molander, Appeal 2008-2589, 2009 WL 726751, at *5 (BPAI Mar. 17, 2009)
`
`(affirming examiner’s admission of and reliance on prior art reference as being
`
`publically available on the date imbedded in reference’s URL).
`
`Second, Patent Owner has failed to introduce any evidence that calls into
`
`question the public availability date of WINS, as printed on WINS itself, as well
`
`as the numerous corroborating declarations and exhibits produced by Petitioner.
`
`Thus, the fact that WINS on its face carries the evidence of the 1994 publication
`
`date, which has not been contradicted by any contrary evidence of the Patent
`
`Owner, compels the conclusion that WINS should not be excluded for this reason
`
`alone.
`
`Third, to the extent that Patent Owner argues that such evidence is not
`
`sufficient to establish the public availability of WINS before the critical date,
`
`sufficiency of the evidence is not a ground for a motion to exclude, see 77 Fed.
`
`Reg. 48767. This provides an additional reason for refusing to exclude WINS.
`
`Fourth, Petitioner has produced a declaration of Yuri Kolesnikov, a
`
`computer industry veteran who testified that in the fall of 1994 he observed
`
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`multiple server packages that included a printed copy of the Windows TCP/IP
`
`Guide, which is exactly identical to WINS with exactly the same copyright
`
`notice. The Federal Circuit’s reasoning and conclusions in two recent cases is
`
`instructive on this point. In In re Enhanced Security Research, LLC, No. 13-
`
`1114 (Fed. Cir. Jan. 13, 2014), under similar factual circumstances, Federal
`
`Circuit held that even “relatively obscure documents qualify as prior art so long
`
`as the public has a means of accessing them.” Id. at 13 (citing In re Hall, 781
`
`F.2d 897, 899 (Fed. Cir. 1986)), and proceeded to conclude that the subject
`
`reference qualified as a prior art. The same conclusion was reached by the
`
`Federal Circuit in Suffolk Technologies, LLC v. Aol Inc. 13-1392 (Fed. Cir. May
`
`27, 2014). In the present case, the public availability of WINS before the critical
`
`date is established by the 1994 date on WINS itself, as well as corroborating
`
`declarations and exhibits produced by Petitioner. Therefore, there is substantial
`
`evidence that WINS qualifies as a prior art and the request to exclude this
`
`reference should be denied.
`
`Finally, Patent Owner’s contention that the Yuri Guide is substantially
`
`different from WINS and, therefore, fails to support the public availability of
`
`WINS is also without merit. Patent Owner’s repeated assertion that there are
`
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`over 10,000 differences between WINS and Yuri Guide is highly misleading.
`
`The relationship between WINS and the Yuri Guide and the process of
`
`comparing the two documents is clearly set forth in the Declaration of Leslie
`
`Ehrlich, and a visual inspection of the two documents in conjunction with Ms.
`
`Ehrlich’s Declaration and deposition testimony readily explain the differences:
`
`they arose from technical optical character recognition (OCR) errors that
`
`occurred during the scanning and OCR processing of the Yuri Guide, the
`
`presence of the metadata in the CD—ROM version, as well as the absence of the
`
`page numbers in the CD—ROM. Ex. 1018, Ehrlich Declaration and Ex. 2044,
`
`Ehrlich Dep. at 11:15-12:10, 16:14-24, 19:3—20:10, 21:8—22:24. On the other
`
`hand, Patent Owner has failed to point to any differences whatsoever that are
`
`material to the Petitioner’s invalidity arguments or to assert that any disclosure
`
`relied upon by the Petitioner in its invalidity position is missing from the Yuri
`
`Guide. Thus, for purposes of this proceeding, the Yuri Guide is substantially
`
`identical to WINS and, therefore, clearly establishes the public availability of
`
`WINS before the critical date. Ex. 1004, WINS.
`
`For the foregoing reasons, Patent Owner’s request to exclude WINS should
`
`be denied.
`
`
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`B.
`
`The Antonov Declaration Should Not Be Excluded
`
`Patent Owner’s attack on the Antonov Declaration rests on two flawed
`
`premises. First, that Antonov, whose declaration was provided as that of a
`
`technical expert, is not permitted to employ his technical knowledge in testifying
`
`as to technical matters in this proceeding. Second, that AntonoV’s technical
`
`testimony and accompanying conclusions would foreclose any ability by Patent
`
`Owner to challenge such testimony or conclusions.
`
`Patent Owner attempts to argue for the exclusion of AntonoV’s Declaration
`
`on the ground that AntonoV’s prior experience with WINS product is not part of
`
`the record. Petitioner notes that according to Patent Owner’s argument, the
`
`Declaration of Patent Owner’s own expert must also be excluded, as it states (Ex.
`
`1023 1] 12):
`
`12. My opinions are also based upon my education, training,
`
`research, knowledge, and experience in this technical field.
`
`Clearly, Patent Owner’s expert’s “education, training, research,
`
`knowledge, and experience in this technical field” are not part of the record in
`
`this proceeding just as with the prior experience of any expert.
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`This argument of course lacks any plausible merit. Antonov is a technical
`
`and not a legal expert who was retained for his technical knowledge of the state
`
`of the art. It is well known that the Patent and Trademark Office determines the
`
`scope of claims in patent applications not solely on the basis of the claim
`
`language, but upon giving claims their broadest reasonable construction “in light
`
`of the specification as it would be interpreted by one of ordinary skill in the art.”
`
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827,
`
`1830] (Fed. Cir. 2004). Therefore, Antonov’s prior technical experience in the
`
`field is critical to his ability to determine the scope of the claim language “as it
`
`would be interpreted by one of ordinary skill in the art.”
`
`Secondly, any specific conclusions contained in Antonov’s Declaration
`
`regarding invalidity of the claims clearly set forth the basis for such conclusions.,
`
`Patent Owner therefore can challenge any specific conclusions or the basis
`
`therefor on a case—by—case basis rather than unjustifiably attempt to exclude the
`
`entire Antonov Declaration because expert’s prior experience is “not part of the
`
`record”.
`
`With respect to Patent Owner’s argument that specific paragraphs of
`
`Antonov’s Declaration are not supported by required references or do not include
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`necessary citations or claim charts, Petitioner submits that this is not a ground for
`
`exclusion of the Antonov’s Declaration. The deficiencies alleged by the Patent
`
`Owner at best may reflect on the weight accorded any specific expert
`
`conclusions, and can be substantively addressed by Patent Owner on a case—by—
`
`case basis. 77 Fed. Reg. 48767.
`
`Therefore, for all the foregoing reasons, the Antonov Declaration should
`
`not be excluded.
`
`Petitioner’s Other Evidence Relating to Contentions Should Not
`C.
`Be Excluded
`
`Patent Owner proceeds to request exclusion of Section IX—X of Antonov’s
`
`Declaration (Ex. 1023) on a ground that they relate to anticipation of the claims
`
`33-37. This request must be again denied. Section IX of Antonov’s Declaration
`
`is entitled “Dynamic Process Addresses: Not a Limitation” and makes no
`
`reference to anticipation at all. Thus, Petitioner is at a loss as to the reasons for
`
`Patent Owner’s request, which appears to be entirely lacking any merit with
`
`respect to this Section.
`
`Section X is entitled “Dynamic Addressing of Processing Units” and
`
`contains much explanation of the underlying technical concepts as well as the
`
`teachings of the ‘704 patent related thereto. The term anticipation appears in
`
`10
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`only a couple of places within this large section and appears to have been used by
`
`Mr. Antonov loosely to refer to a teaching of a specific feature. The mere
`
`presence of a loosely used term is not a ground to exclude an otherwise relevant
`
`section containing extensive technical explanation.
`
`Patent Owner selectively provides Mr. Antonov’s deposition testimony in
`
`support of its position. However, Mr. Antonov, in the remainder of the very
`
`same deposition answer provided by Patent Owner, went on to state that he was
`
`somewhat confused by the legalese:
`
`[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. But —— yeah, that is substantially correct, plus I
`
`wanted to state that the differences between anticipated art and what is
`
`described in patent are mostly in — are terminological and not substantial,
`
`and that is obvious.
`
`So maybe I'm confusing the legal issue of obvious.
`
`Ex. 2045, Antonov Dep. At 32:11-22. Thus, for the the foregoing reasons,
`
`Section IX—X of Antonov’s Declaration should not be excluded.
`
`11
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`Patent Owner’s next argument that Sections VIII—X of the Antonov
`
`Declaration should be excluded because they allegedly present new arguments or
`
`exceed the scope of the Petitioner’s arguments in the Reply should also be
`
`rejected. It is well known to practitioners before this Board that a “motion to
`
`exclude evidence is not intended as the vehicle for use by a party to raise the
`
`issue of a reply exceeding the proper scope of a reply, or reply evidence
`
`exceeding the proper scope of reply evidence, in the sense of going beyond what
`
`reasonably can be deemed as responding to an opposition,” see IPR2013—00346,
`
`Paper No. 19 at 3 (January 2, 2014). Here, Patent Owner attempts to make the
`
`exact use of the Motion to Exclude that has been expressly prohibited by the
`
`Board. For this reason, Patent Owner’s request to exclude Sections VIII—X of the
`
`Antonov’s Declaration should also be rejected.
`
`Finally, Patent Owner’s request to exclude the Yuri Guide should also be
`
`denied. Patent Owner bases this request on the same faulty notion that the Yuri
`
`Guide has over 10,000 differences from WINS. However, as explained above,
`
`theYuri Guide is in all relevant aspects, the same as WINS. Differences arise
`
`from OCR errors, CD—ROM metadata and page numbering. Thus, the Yuri
`
`Guide is clearly relevant at least to establishing the public availability of WINS.
`
`12
`
`
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
`
`For this reason, the Yuri Guide is not outside the scope of this proceeding and
`
`should not be excluded.
`
`D.
`
`Exhibits 1005 and 1020-21 Should Not Be Excluded
`
`With respect to Exhibits 1005 and 1020-21, Patent Owner has failed to
`
`provide any specific arguments that would support the exclusion of those
`
`exhibits. Patent Owner simply states that the aforesaid exhibits should be
`
`excluded because they are irrelevant and unreliable.
`
`Contrary to Patent Owner’s argument, electronic data and Intemet—based
`
`documents are not necessarily inherently untrustworthy or inadmissible.
`
`Electronic publications distributed across the Internet are the modem—day
`
`libraries relied upon by persons skilled in the art. In fact, the Board has a long
`
`practice of admitting such publications in other proceedings and relying on their
`
`copyright or posting date as the date of publication. See, e.g., Ex parte Broyles,
`
`Appeal 2009—010197, 2012 WL 359584, at * 2-4 (BPAI Jan. 30, 2012) (affirming
`
`examiner’s reliance on copyright date as date of publication); Ex parte Molander,
`
`Appeal 2008-2589, 2009 WL 726751, at *5 (BPAI Mar. 17, 2009) (affirming
`
`examiner’s admission of and reliance on prior art reference as being publically
`
`13
`
`
`
`Case No. IPR2013—00246
`
`U.S. Patent No. 6,108,704
`
`available on the date imbedded in reference’s URL). Therefore, Exhibits 1005
`
`and 1020-21 should not be excluded.
`
`CONCLUSION
`
`For these reasons, Patent Owner’s Motion to Exclude should be denied in
`
`its entirety.
`
`Dated: June 20, 2014
`
`fl’avel I. Pogodin/
`
`Respectfully Submitted,
`
`Pavel I. Pogodin
`Registration No. 48,205
`Transpacific Law Group
`530 Lytton Avenue, 2nd Floor
`Palo Alto, CA 94301
`pavel@transpacificlaw.com
`Tel.: 650-469-3750
`
`Fax: 650-472-8961
`
`Sanjay Prasad
`Registration No. 36,247
`Prasad IP, PC
`
`1768 Miramonte Avenue, #4845
`
`Mountain View, CA 94040
`sanjay@prasadip.com
`Tel: 650-918-7647
`
`14
`
`
`
`Case No. IPR2013—00246
`
`U.S. Patent No. 6,108,704
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PETITIONER’S OPPOSITION
`TO PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. 42.64(c)
`was served, by agreement of the parties, by electronic mail on counsel for the
`Patent Owner on June 20, 2014 as follows:
`
`Patrick J. Lee
`
`Alan M. Fisch
`
`Fisch Hoffman Sigler LLP
`Patrick.Lee@fischllp.com
`Alan.Fisch@fischllp.com
`
`Dated: June 20, 2014
`
`/Pavel I. Pogodz'n/
`
`Pavel I. Pogodin
`Registration No. 48,205
`Transpacific Law Group
`530 Lytton Avenue, 2nd Floor
`Palo Alto, CA 94301
`pavel@transpacificlaw.com
`Tel.: 650-469-3750
`
`Fax: 650-472-8961
`
`Sanjay Prasad
`Registration No. 36,247
`Prasad IP, PC
`
`1768 Miramonte Avenue, #4845
`
`Mountain View, CA 94040
`sanjay@prasadip.com
`Tel: 650-918-7647
`
`Attorneys for Petitioner
`
`15
`
`
`
`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
`
`Dated: June 20, 2014
`
`Respectfully submitted,
`
` San Francisco, CA 94111
`
`Telephone: (415) 576-0200
`Facsimile: (415) 576-0300
`
`
`
`Case No. IPR2013-00246
`
`U.S. Patent No. 6,108,704
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of
`
`PETITIONER’S LIST OF ISSUES FOR ORAL ARGUMENT
`
`PURSUANT TO 37 C.F.R. §42.70
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`
`EXCLUDE UNDER 37 C.F.R. 42.64(c)
`
`PETITIONER’S RESPONSE TO PATENT OVW\1ER’S OBSERVATION
`
`ON CROSS—EXAMINATION OF PETITIONER’S DECLARANT
`
`LESLIE EHRLICH
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S OBSERVATION
`
`ON CROSS—EXAMINATION OF PETITIONER’S DECLARANT
`
`YURI KOLESNIKOV
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S OBSERVATION
`
`ON CROSS—EXAMINATION OF PETITIONER’S DECLARANT
`
`VADIM ANTONOV
`
`
`
`Case No. IPR20l3-00246
`
`U.S. Patent No. 6,108,704
`
`have been served, by agreement of the parties, by electronic mail on counsel for
`
`Patent Owner on June 20, 2014 as follows:
`
`Patrick J. Lee
`
`Fisch Hoffman Sigler LLP
`Patricl<.lee@fischllp.com
`
` Dated:
`June 20, 2014 Paul C. Haughey
`
`Registration No. 31,836
`Kilpatrick Townsend & Stockton LLP
`Two Embarcadero Center, Eighth Floor
`San Francisco, CA 94111
`
`Telephone: 415-576-0200
`Fax: 415-576-0300
`
`Email: phaughey @killpatricktownsend.com
`Counsel for Petitioner
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