UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Sipnet EU S.R.O.,
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`Petitioner
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`V.
`
`Straight Path IP Group, Inc.,
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`Patent Owner
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`PETITIONER’S RESPONSE TO PATENT OWNER’S OBSERVATION ON
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`CROSS—EXAMINATION OF PETITIONER’S DECLARANT VADIM
`
`ANTONOV
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`
`
`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
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`U.S. Patent No. 6,108,704
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S OBSERVATION ON
`
`CROSS—EXAMINATION OF PETITIONER’S DECLARANT VADIM
`
`ANTONOV
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`
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`INTRODUCTION
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`Pursuant to the Board’s authorization on June 4, 2014 and the Office Trial
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`Practice Guide, 77 Fed. Reg. 48767-68 (Aug. 14, 2012), Petitioner Sipnet EU
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`S.R.O. respectfully submits the following responses to the observations submitted
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`by the Patent Owner regarding the May 29, 2014 cross—examination of Petitioner’s
`
`declarant Vadim Antonov.
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`RESPONSES TO PATENT OWNER’S OBSERVATIONS
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`A.
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`Response to Observations 1, 2 and 3
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`In response to Patent Owner’s Observations 1, 2 and 3 and specifically that
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`“Mr. Antonov’s Anticipation Opinions Were Based On The Combination of
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`Multiple References”, “Mr. Antonov Rendered Anticipation Opinions Based On
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`Multiple Sources That Are Not Of Record In This Proceeding” and “Mr. Antonov
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`Relied on a Product To Form His Opinions,” Petitioner respectfully notes that in
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`Exhibit 2045, on Page 21, Lines 8-17; Page 28, Line 21 through Page 29, Line 3;
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`Page 30, Line 13, through Page 31, Line 6; Page 31, Lines 16-24 and Page 32, Line
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`23 through Page 33, Line 19, Mr. Antonov testified that:
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`Ex. 2045, Page 21, Lines 8-17
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`8
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`Q. Where in your declaration do you
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`9 demonstrate that each and every claim element is
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`10 rendered invalid by a piece of prior art?
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`Case No. IPR2013—00246
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`11
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`A. This is described in subsequent sections,
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`12 and basically every section discusses a specific
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`13 claim made. And in the patent, in the original
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`14 '704 patent, or in declaration of expert witness,
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`15 Mr. Mayer—Patel, if I remember the name correctly,
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`16 and other of those claims. So the entirety of that
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`17 document is basically the answer.
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`Ex. 2045, Page 28, Line 21 through Page 29, Line 3
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`21
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`A. Not only that. By "obvious," I mean
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`22 obvious at that specific time in history, because
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`23 obvious —— what was obvious —— what is obvious now
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`24 is not the same as what was obvious 20 years ago.
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`25
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`So I made an effort to understand and
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`0029
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`1
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`recall the state of the art at the time which is
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`2 relevant to discuss obviousness of this specific
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`3 patent.
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`Ex. 2045, Page 30, Line 13 through Page 31, Line 6
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`13
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`Q. Soto confirm --
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`14
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`A. Yes.
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`15
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`16
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`Q.
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`—— is that you do not provide an opinion
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`with respect to whether or not any of the claims
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`17
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`are obvious, is that correct?
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`A. I'm confused by legal usage of that term.
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`What I'm saying is that my declaration, all of it
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`depends on things being already known or
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`implemented by previous published documents or
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`products, and it didn't actually require any new
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`ideas or new things which would be not trivial.
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`For example, I consider substitution of
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`terms calling the same thing by different names to
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`0031
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`1
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`2
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`be trivial. And I find that a significant portion
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`of Mr. Mayer—Patel's declaration essentially
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`depends on making distinctions of —— by using terms
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`which mean exactly same thing. So terms means same
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`thing. He makes distinction saying that they're
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`different things, which I consider to be incorrect.
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`Ex. 2045, Page 31, Lines 16-24:
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`16
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`Q. You do not provide an opinion in your
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`17 declaration that any of the claims are rendered
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`18 obvious by the prior art, is that correct?
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`19
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`A. The foundation of my argument is that
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`20 everything is anticipated to the extent that
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`21 translation between prior existing art to what is
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`22 in the '704 patent is obvious and trivial. So
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`23 somebody skilled in this profession would
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`24 understand that they mean exactly same thing.
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`Ex. 2045, Page 32, Line 23 through Page 33, Line 19
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`Q. In your summary of opinions --
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`A. Uh—huh (affirmative).
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`Q.
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`—— you only identify an opinion that the
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`23
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`24
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`25
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`0033
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`1 claims at issue are anticipated.
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`2
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`3
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`A. Yes.
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`MR. MORLOCK: Objection, asked and
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`4 answered.
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`5
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`6
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`MR. HOFFMAN:
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`Q. You do not --
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`7
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`8
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`Excuse me, Counsel.
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`And do you not provide an opinion that the
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`9 claims at issue are obvious.
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`10
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`MR. MORLOCK: Objection, asked and
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`11
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`answered.
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`12
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`13
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`14
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`MR. HOFFMAN:
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`Q. You can answer the question.
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`A. Okay. Again, what I claimed, that
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`15 everything was anticipated, and that terminological
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`16 difference is that —— the fact that its only
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`17 terminological difference is, on its own, obvious.
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`18 So a practitioner in the art would know that those
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`19 different terms mean the same thing.
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`The above testimony is relevant to (1) Exhibit 1023, the Antonov
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`Declaration; and (2) Paper No. 33, the Petitioner’s Reply. The above testimony is
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`relevant because it explains that the Antonov Declaration was provided from the
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`perspective of a technical expert (not a patent lawyer) who based his conclusions
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`from the point of view of a person skilled in the art.
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`B.
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`Response to Observation 4
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`U.S. Patent No. 6,108,704
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`In response to Patent Owner’s Observation 4 and specifically that “Mr.
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`Antonov Stated That NetBIOS Does Not Disclose Dynamic Addressing,”
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`Petitioner respectfully notes that in Exhibit 2045, on Page 134, Line 12 through
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`Page 135, Line 5, Mr. Antonov testified that:
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`Ex. 2045, Page 134, Line 12 through Page 135, Line 5
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`12
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`Q. But the document itself, the NetBIOS
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`13 document itself, doesn't specifically disclose the
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`14 idea of dynamic addresses.
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`15
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`A. No, it doesn't. And, again, the fact that
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`16 it doesn't, it means precisely that it will work
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`17 with —— is that it is designed to work with any
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`18 method, that NetBIOS —— operation of NetBIOS is not
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`19 affected in any way by network of address
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`20 assignment.
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`21
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`22
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`Q. Does WINS disclose dynamic addressing?
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`A. I know that with WINS software, as it is
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`23 implemented, works with dynamic addresses. I am
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`24 sure —— with dynamically assigned addresses. I do
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`25 not recall if this is explicitly mentioned in the
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`0135
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`1 document attached as an exhibit. But We need to
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`2 understand that, as a document, WINS document
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`3 attached to exhibit is essentially a user manual.
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`4 It doesn't go into detail about what is exactly
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`5
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`inside. The actual software works.
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`The above testimony is relevant to (1) Exhibit 1023, the Antonov
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`Declaration; and (2) Paper No. 33, the Petitioner’s Reply. The above testimony
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`regarding NetBIOS is relevant because it clearly demonstrates Mr. Antonov’s
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`candid and unbiased perspective.
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`C.
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`Response to Observation 5
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`In response to Patent Owner’s Observation 5 and specifically that “Mr.
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`Antonov Testified That He Did Not Provide An Obviousness Opinion,” Petitioner
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`respectfully notes that in Exhibit 2045, on Page 32, Lines 8-20, Mr. Antonov
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`testified that:
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`Ex. 2045, Page 32, Lines 8-20
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`8
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`Q. So your declaration with respect to your
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`9 opinions in this matter are limited —— let me start
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`10 again.
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`11
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`Your declaration —— your opinions in this
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`12 declaration are limited to an opinion that the
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`13 claims at issue are anticipated by the prior art,
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`14 is that correct?
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`15
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`A. Yes, that is correct. But —— yeah, that
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`16 is substantially correct, plus I wanted to state
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`17 that the differences between anticipated art and
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`18 what is described in patent are mostly in —— are
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`19 terminological and not substantial, and that is
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`20 obvious.
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`The above testimony is relevant to (1) Exhibit 1023, the Antonov
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`Declaration; and (2) Paper No. 33, the Petitioner’s Reply. The above testimony is
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`relevant because it clearly demonstrates that, contrary to Patent Owner’s
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`observation, Mr. Antonov testified that he did consider obviousness in forming his
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`opinion.
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`D.
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`Response to Observation 6
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`In response to Patent Owner’s Observation 6 and specifically that “Mr.
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`Antonov Testified That A Response To A Query In NetBIOS Indicates Only A
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`“Willingness” To Accept Communication Rather Than Availability For
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`Communication,” Petitioner respectfiilly notes that in Exhibit 2045, on Page 63,
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`Line 2 through Page 64, Line 7, Mr. Antonov testified that:
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`Ex. 2045, Page 63, Line 2 through Page 64, Line 7
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`2
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`Q. Well, what about an idea of it being sort
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`3
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`of relatively current?
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`A. Ah, now we're talking. Relatively current
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`means that you want to be able to tell that a party
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`was willing to accept your communication, and
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`here's acknowledge to be within some predefined
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`time period, relatively current.
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`So you want to know, for example, that
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`within the last five minutes it was willing to
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`accept communications. That is the common practice
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`in the field, is to achieve that effect by having
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`either —— the party accepting communication to send
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`you periodic updates, saying I am willing, I am
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`willing, I am willing, and if you don't hear those
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`updates, let's say, that party is no longer
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`willing. Or to periodically ask that party are you
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`still willing, are you still willing, are you still
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`willing.
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`20
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`21
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`That time period between those periodical
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`updates is essentially your time guarantee of
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`10
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`22 freshness of that data. In ‘704, there is a
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`23 mention of timeout in claim 3, and timestamps,
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`24 which I take to mean using time since previous
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`25 status update to indicate the current on—line
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`0064
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`1
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`status.
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`2
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`In NetBIOS we have exactly same mechanism,
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`3
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`specified in a lot more detail, including which
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`4 messages to exchange and what format of messages is
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`5 used, to do essentially the same thing, to
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`6 periodically check if the other side is still
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`7 registered or on—line, which is the same.
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`The above testimony is relevant to (1) Exhibit 1023, the Antonov
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`Declaration; and (2) Paper No. 33, the Petitioner’s Reply. The above testimony is
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`relevant because it clearly demonstrates that Mr. Antonov testified that NetBIOS
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`and the ‘704 Patent disclose the same mechanism to indicate availability for
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`communication.
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`E.
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`Response to Observation 7
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`In response to Patent Owner’s Observation 7 and specifically that “Mr.
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`Antonov Did Not Render His Own Opinion on Claim Construction,” Petitioner
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`ll
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`respectfully notes that in Exhibit 2045, on Page 65, Lines 13-23, Mr. Antonov
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`testified that:
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`Ex. 2045, Page 65, Lines 13-23
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`13
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`Q. Right. And, then, but there has to be a
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`14 separate —— in C, a separate determination of
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`15 positive on—line status, correct?
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`16
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`A. Again, positive on—line status, you cannot
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`17 guarantee that the other party is —— will accept
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`18 your communication for the reasons we already
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`19 discussed. So positive determination of on—line
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`20 status, I take that to mean positive determination
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`21 of willingness —— of declared willingness of the
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`22 other party to accept the communication, not as a
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`23 guarantee that it will accept communications.
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`The above testimony is relevant to (1) Exhibit 1023, the Antonov
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`Declaration; and (2) Paper No. 33, the Petitioner’s Reply. The above testimony
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`directly contradicts Patent Owner’s observation and is relevant because it
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`demonstrates that Mr. Antonov clearly expressed his opinion on the meaning of the
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`term “on—line.”
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`B.
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`Response to Observation 8
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`12
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`In response to Patent Owner’s Observation 8 and specifically that “Mr.
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`Antonov’s Testimony Offered a New Characterization of the Patent,” Petitioner
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`respectfully notes that in Exhibit 2045, on Page 47, Line 19 through Page 49, Line
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`7, Mr. Antonov testified that:
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`EX. 2045, Page 47, Line 19 through Page 49, Line 7
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`19
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`A. Okay. Let me orient myself to what the
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`20 first process means here. Ah, the first process
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`21 here means the name server.
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`22
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`Is it correct? Is my understanding
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`23 correct?
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`24 Q. Are you saying the first process here,
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`25 your equivalent —— you're saying the first process
`
`0048
`
`1
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`is named by the name server?
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`2 Is that what you're saying?
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`3
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`A. Yeah, what I'm saying is that first
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`4 process in this claim is the same as network server
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`5
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`in technical language of NetBIOS documents,
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`6 technical. First process is legal language because
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`7 that doesn't provide specific technical term.
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`13
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`8 Technical documents will refer to specific things
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`9 by their function. Like name server keeps track of
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`10
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`names.
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`11
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`12
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`13
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`14
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`15
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`So I prefer to use technical language,
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`obviously. So first process is a name server, and
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`second process is general server process which
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`could be used to establish communication to, like,
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`a party which can be called or a party which can be
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`16
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`connected to.
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`17
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`18
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`19
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`Q. All right. Let's just make sure I
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`understand your opinions. The first process
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`referred to in claim 2 you’re saying is a server,
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`20
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`correct?
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`21
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`22
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`A. Okay. A server is any persistent process
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`which is used to answer questions or to accept
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`23
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`connections. And client is —— in technical terms,
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`24
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`client is a party which initiates connections or
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`25
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`send the questions up to the server.
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`0049
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`1 So in layman terms, if you take phone
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`14
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`2 calls, you're a server. If you initiate them,
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`3 you're a client. Soto eliminate confusion, the
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`4 first process in this claim means server, and
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`5
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`second process means another server which is
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`6 subject —— which registers itself is the first
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`7 server.
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`The above testimony is relevant to (1) Exhibit 1023, the Antonov
`
`Declaration; and (2) Paper No. 33, the Petitioner’s Reply. This testimony
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`contradicts Patent Owner’s observation set forth above and shows that Mr.
`
`Antonov’s testimony further explained his declaration and the relevant technology
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`in response to counsel’s questions.
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`B.
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`Response to Observation 9
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`In response to Patent Owner’s Observation 9 and specifically that “Mr.
`
`Antonov’s Testimony Demonstrates a Connection Between Petitioner’s Expert and
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`Stalker Software,” Petitioner respectfully notes that in Exhibit 2045, on Page 173,
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`Line 12 through Page 174, Line 23, Mr. Antonov testified that:
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`Ex. 2045, Page 173, Line 12, through, Page 174, Line 23
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`12
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`13
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`Q. How do you know Mr. Butenko?
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`MR. MORLOCK: Objection, outside the scope
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`14 of direct.
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`15
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`15
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`THE WITNESS: We studied in the same
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`16 university on different departments. And I was at
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`17 Department of Computer Science. He was at
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`18 Department of Physics. And we met because we were
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`19 both active in systems programming community. And
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`20 we kept in contact since then.
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`21
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`22
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`23
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`MR. HOFFMAN:
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`Q. So you're friends with him today?
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`MR. MORLOCK: Objection, outside the scope
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`24 of direct.
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`25
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`THE WITNESS: You could say that we're
`
`0174
`
`1
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`friends. I would say acquaintances.
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`2
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`3
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`4
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`MR. HOFFMAN:
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`Q. So are you familiar with Stalker Software?
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`MR. MORLOCK: Objection, outside the scope
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`5 of direct.
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`6
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`THE WITNESS: I know that he founded that
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`7 company, and I know, roughly, what as a company is
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`8 doing. I didn't use Stalker Software products. I
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`16
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`9 do not know details of what's in them. And we
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`10 never discussed our —— talked about current
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`11 operations of the company, and —— and we never did
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`12 any business together.
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`13
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`14
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`MR. HOFFMAN:
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`Q. Have you had any discussions with
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`15 Mr. Butenko about this matter?
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`16
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`MR. MORLOCK: Objection, outside the scope
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`17 of direct.
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`18
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`THE WITNESS: No, we didn't. And I --
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`19 I've heard that he's involved in some kind of
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`20 patent litigation. I didn't know what this is
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`21 about and why it was there. I only learned about
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`22 involvement of Stalker Software when I was reading
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`23 the documents related to this case.
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`The above testimony is relevant to ( 1) Paper 30, Pages 8-16; and (2) Paper
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`33, Pages 1-4. This testimony contradicts Patent Owner’s observation regarding a
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`“relationship” between Petitioner and Stalker Software and it is relevant to
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`demonstrate that Mr. Antonov’s testimony showed nothing more than his mere
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`knowledge of Stalker Software and a friendship with stalker’s CEO.
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`17
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`Dated: June 20, 2014
`
`/Pavel I. P0g0din/
`
`Respectfully Submitted,
`
`Pavel I. Pogodin
`Registration No. 48,205
`Transpacific Law Group
`530 Lytton Avenue, 2nd Floor
`Palo Alto, CA 94301
`pave1@transpacific1aw.com
`Te1.: 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
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`18
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`
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PETITIONER’S RESPONSE TO
`PATENT OWNER’S OBSERVATION ON CROSS—EXAMINATION OF
`
`PETITIONER’S DECLARANT VADIM ANTONOV 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. P0g0dz'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
`
`
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`Case No. IPR2013—00246
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`U.S. Patent No. 6,108,704
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`Dated: June 20, 2014
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`Respectfully submitted,
`
` San Francisco, CA 94111
`
`Telephone: (415) 576-0200
`Facsimile: (415) 576-0300
`
`
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`Case No. IPR2013-00246
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`U.S. Patent No. 6,108,704
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of
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`PETITIONER’S LIST OF ISSUES FOR ORAL ARGUMENT
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`PURSUANT TO 37 C.F.R. §42.70
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
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`EXCLUDE UNDER 37 C.F.R. 42.64(c)
`
`PETITIONER’S RESPONSE TO PATENT OVW\1ER’S OBSERVATION
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`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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