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 REPLY IN SUPPORT OF MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.23
`
`
`
`June 27, 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 REPLY IN SUPPORT OF MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.23
`
`
`
`June 27, 2014
`
`
`
`
`
`
`
`Case No. IPR2013-00246
`US Patent No. 6,108,704
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ..................................................................................................... 1
`
`ARGUMENT ............................................................................................................. 2
`
`A.
`
`B.
`
`C.
`
`Petitioner Has Failed to Establish the Public Availability
`of WINS ...................................................................................... 2
`
`The Antonov Declaration is Innately Flawed and Should
`Be Excluded ................................................................................ 3
`
`Exhibits 1005 and 1020-21 Do Not Mention the WINS
`Manual......................................................................................... 4
`
`CONCLUSION .......................................................................................................... 5
`
`
`
`
`
`i
`
`
`
`Case No. IPR2013-00246
`US Patent No. 6,108,704
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d. 1374 (Fed. Cir. 2006) ............................................................................. 1
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) .............................................................................. 2
`
`ePlus, Inc. v. Lawson Software, Inc.,
`700 F.3d 509 (Fed. Cir. 2012) ................................................................................ 4
`
`Ex Parte Bailey,
`2013 Pat. App. LEXIS 2470 (Pat. App. Apr. 25, 2013) ......................................... 5
`
`In re Enhanced Sec. Research, LLC,
`739 F.3d 1347 (Fed. Cir. 2014) .............................................................................. 2
`
`In re Omeprazole Patent Litig. v. Apotex Corp.,
`536 F.3d 1361 (Fed. Cir. 2008) .............................................................................. 1
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`2014 U.S. App. LEXIS 9698 (Fed. Cir. May 27, 2014) ......................................... 3
`
`Suffolk Techs., LLC v. AOL Inc.,
`2014 U.S. App. LEXIS 9697 (Fed. Cir. May 27, 2014) ......................................... 2
`
`Sundance, Inc. v. Demonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) ..........................................................................1, 4
`
`Statutes
`
`35 U.S.C. § 311(b) ..................................................................................................... 4
`
`Rules
`
`Federal Rule of Evidence 401 .................................................................................... 4
`
`Federal Rule of Evidence 402 .................................................................................... 4
`
`Federal Rule of Evidence 403 .................................................................................... 4
`
`ii
`
`
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
`
`Federal Rule of Evidence 702 ................................................................................3, 4
`
`Federal Rule of Evidence 703 .................................................................................... 4
`
`Federal Rule of Evidence 705 .................................................................................... 4
`
`Regulations
`
`37 C.F.R. § 42.104(b)(2) ............................................................................................ 4
`
`37 C.F.R. § 42.65(a) ................................................................................................... 4
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012) ...................................................................... 3
`
`
`
`iii
`
`
`
`Case No. IPR2013-00246
`US Patent No. 6,108,704
`
`
`PATENT OWNER’S EXHIBIT LIST
`CASE IPR2013-00246
`
`
`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
`
`
`
`Case No. IPR2013-00246
`US Patent No. 6,108,704
`
`
`PATENT OWNER EXHIBIT #
`2023
`2024
`2025
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`2032
`2033
`
`2034
`
`2035
`2036
`
`2037
`
`2038
`
`2039
`
`2040
`2041
`2042
`
`
`2043
`
`2044
`
`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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`Case No. IPR2013-00246
`US Patent No. 6,108,704
`
`
`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
`
`vi
`
`
`
`INTRODUCTION
`
`
`
`Legal formalities exist precisely for cases like this. Often, public availability
`
`is viewed as a mere formality, a given. But, the Federal Circuit has established
`
`that it is the challenging party’s burden to present “a satisfactory showing that such
`
`document has been disseminated or otherwise made available.” Bruckelmyer v.
`
`Ground Heaters, Inc., 445 F.3d. 1374, 1378 (Fed. Cir. 2006); In re Omeprazole
`
`Patent Litig. v. Apotex Corp., 536 F.3d 1361, 1381 (Fed. Cir. 2008). The
`
`uncontested facts here show Petitioner has not met this burden, and WINS should
`
`be excluded.
`
`
`
`The Board’s role as a gatekeeper of expert testimony also exists precisely for
`
`cases like this. Indeed, the Federal Circuit in Sundance v. Demonte announced that
`
`courts of first instance are charged with a gatekeeping role, “the objective of which
`
`is to ensure that expert testimony admitted into evidence is both reliable and
`
`relevant.” Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1360 (Fed.
`
`Cir. 2008). Here, Mr. Antonov applied the wrong legal framework, relied on
`
`evidence outside the scope of this proceeding, and offered opinions unsupported by
`
`any facts and evidence. Thus, his Declaration does not meet the standards for the
`
`admission of expert testimony under the Federal Rules, and should be excluded.
`
`
`
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`
`
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
`
`
`ARGUMENT
`
`A.
`
`Petitioner Has Failed to Establish the Public Availability of WINS
`
`Petitioner relies upon Yuri Kolesnikov’s Declaration, the Yuri Guide, and
`
`various Internet articles to establish public availability of the WINS Manual. It
`
`remains undisputed, however, that (1) Mr. Kolesnikov could not confirm that he
`
`had ever previously seen the WINS Manual, (2) the Yuri Guide differs from the
`
`WINS Manual, and (3) the Internet articles do not verify the distribution of the
`
`WINS Manual. Thus, none of the evidence that Petitioner offers establishes the
`
`public availability of the WINS Manual.
`
`
`
` And Petitioner fails to set forth a single case in which the type of indirect
`
`evidence it relies upon is sufficient to establish dissemination. Indeed, the lack of
`
`any direct evidence from Microsoft, the source of WINS, differentiates this case
`
`from Petitioner’s cited cases. See In re Enhanced Sec. Research, LLC, 739 F.3d
`
`1347, 1354-55 (Fed. Cir. 2014) (declaration by the CEO of the company who
`
`created the document); Suffolk Techs., LLC v. AOL Inc., 2014 U.S. App. LEXIS
`
`9697, *12-15 (Fed. Cir. May 27, 2014) (uncontested evidence that the reference
`
`was posted on the “easily locate[d]” Internet site); Constant v. Advanced Micro-
`
`Devices, Inc., 848 F.2d 1560, 1568-69 (Fed. Cir. 1988) (“extensive uncontroverted
`
`evidence of business practice” by company responsible for distributing reference).
`
`In sum, Petitioner cannot meet its burden to establish public availability.
`
`2
`
`
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`Thus, it is proper for the Board to exclude the WINS Manual from this case. See
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012).
`
`B.
`
`The Antonov Declaration is Innately Flawed and Should Be Excluded
`
`
`
`Petitioner offered the Antonov Declaration for the ultimate conclusion on
`
`patentability. Yet, Petitioner does not deny that Mr. Antonov is confused as to the
`
`applicable law, and that he did not apply that law correctly. Nor does Petitioner
`
`deny that Mr. Antonov relied upon references not of record, including a product, to
`
`form his opinions. These facts alone demonstrate that the Antonov Declaration is
`
`innately flawed. Federal Rule of Evidence 702 requires expert testimony to be
`
`grounded in “sufficient facts and data” and to be “the product of reliable principles
`
`and methods.” Mr. Antonov’s declaration fails this test.
`
`
`
`Indeed, the Federal Circuit has mandated that documentary evidence must
`
`form the basis for expert opinion, not the general knowledge that Mr. Antonov
`
`relies upon:
`
`[T]he Board cannot accept general conclusions about what is ‘basic
`
`knowledge’ or ‘common sense’ as a replacement for documentary
`
`evidence.
`
`K/S HIMPP v. Hear-Wear Techs., LLC, 2014 U.S. App. LEXIS 9698, *11 (Fed.
`
`Cir. May 27, 2014). But, that is exactly what the Petitioner asks the Board to do by
`
`submitting the Antonov Declaration as relevant reliable expert testimony. Mr.
`
`3
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`Antonov admitted at deposition that he relied on “things being already known or
`
`implemented by previous published documents or products” and multiple
`
`references (including the WINS product, RFC 793, and RFC 7681) to form his
`
`anticipation opinion. Ex. 2045, Antonov Dep. Tr. at 30:19-23; 24:14-25; 35:14-25;
`
`84:15-21. And even if his anticipation opinions were reclassified as obviousness
`
`opinions, they are still faulty. It remains undisputed that sections VIII-X of the
`
`Antonov Declaration are either unsupported by the required references or have no
`
`citation to evidence.
`
`
`
`Therefore, it is proper for the Board to exclude the Antonov Declaration in
`
`its entirety as in violation of 37 C.F.R. § 42.65(a) and FRE 401-403, 702-703, and
`
`705. See Sundance, 550 F.3d at 1360, 1364; ePlus, Inc. v. Lawson Software, Inc.,
`
`700 F.3d 509, 522-23 (Fed. Cir. 2012).
`
`C. Exhibits 1005 and 1020-21 Do Not Mention the WINS Manual
`
`
`
`Petitioner does not dispute that Exhibits 1005 and 1020-21 do not discuss
`
`the WINS Manual. These exhibits, which comprise a Wikipedia page and two
`
`
`1 A petition must state “the patents or printed publications relied upon for each
`
`ground.” 37 C.F.R. § 42.104(b)(2). Products may not serve as a basis of an IPR.
`
`35 U.S.C. § 311(b). The WINS product, RFC 793, and 768 were not offered in the
`
`petition. Thus, unpatentability opinions based on these references are irrelevant.
`
`4
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`
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`Case No. IPR2013-00246
`US Patent No. 6,108,704
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`articles, only discuss a WINS product and do not identify the documentation that
`
`accompanied the product in 1994. As Patent Owner previously explained, this is
`
`significant because there were multiple NT 3.5 Server guides published in the
`
`relevant time period. Paper No. 30 at 56; Ex. 2035, NT Resource Kit. Any of
`
`these guides could have been included, or not, with the WINS product. As there is
`
`no connection between Exhibits 1005 and 1020-21 to the WINS Manual, they
`
`should be excluded as unreliable and irrelevant. Indeed, the Board has previously
`
`commented on the unreliability of such evidence. For example, in Ex Parte Bailey,
`
`the Board stated that “Wikipedia has limited probative value in view of its dubious
`
`reliability.” 2013 Pat. App. LEXIS 2470, *3 (Pat. App. Apr. 25, 2013).
`
`CONCLUSION
`
`The Rules of Evidence and the Board’s gatekeeping role exist to keep
`
`irrelevant and unreliable information out of the record. The application of the
`
`Rules and exercise of this function would be appropriate here to exclude the
`
`disputed evidence. This would bring the record in line with Federal Circuit
`
`precedent and streamline the record in advance of the hearing.2
`
`
`
`
`2 To preserve it objections, Patent Owner also notes that Petitioner’s Replies to
`
`Patent Owner’s Motions for Observation (Paper Nos. 49-51) were untimely. Per
`
`the Board’s June 4 authorization, the Replies were due June 14, 2014.
`
`5
`
`
`
`Respectfully Submitted,
`
`
`
`/Alicia Meros Carney/
`Alan M. Fisch (pro hac vice)
`Alicia Meros Carney (Reg. No. 44,937)
`Patrick J. Lee (Reg. No. 61,746)
`
`Fisch Sigler LLP
`5335 Wisconsin Avenue
`Suite 830
`Washington, D.C. 20015
`Telephone: 202-362-3500
`Fax: 202-362-3501
`Email: Alan.Fisch@fischllp.com
`Email: Alicia.Carney@fishllp.com
`Email: Patrick.Lee@fischllp.com
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`Date: June 27, 2014
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S REPLY IN
`SUPPORT OF MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.23 was
`served, by agreement of the parties, by electronic mail on counsel for the Petitioner
`on June 27, 2014 as follows:
`
`
`Pavel I. Pogodin
`Transpacific Law Group
`pavel@transpacificlaw.com
`
`Sanjay Prasad
`Prasad IP, PC
`sanjay@prasadip.com
`
`
`/Alicia Meros Carney/
`Alan M. Fisch (pro hac vice)
`Alicia Meros Carney (Reg. No. 44,937)
`Patrick J. Lee (Reg. No. 61,746)
`
`Fisch Sigler LLP
`5335 Wisconsin Avenue NW
`Suite 830
`Washington, DC 20015
`Telephone: 202-362-3500
`Fax: 202-362-3501
`Email: Alan.Fisch@fischllp.com
`Email: Alicia.Carney@fishllp.com
`Email: Patrick.Lee@fischllp.com
`
`Attorneys for Patent Owner
`
`
`
`
`Dated: June 27, 2014
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