Paper 63
`Entered: October 9, 2014
`
`Trials@uspto.gov
`Tel: 571–272–7822
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`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 IPR2013–00246
`Patent 6,108,704
`______________
`
`Before KALYAN K. DESHPANDE, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`
`DESHPANDE, Administrative Patent Judge.
`
`ORDER
`Motion to Exclude
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`IPR2013-00246
`Patent 6,108,704
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`I. PATENT OWNER’S MOTION TO EXCLUDE
`On June 6, 2014, Patent Owner filed a motion to exclude the following:
`(1) The WINS1 reference;
`(2) Sections B, E, and F of the Declaration of Vadim Antonov (Ex. 1023);
`and
`(3) Several miscellaneous exhibits (Exs. 1005 and 1017-1021).
`Paper 45 (“Mot. to Exclude”). Petitioner filed an Opposition (Paper 48, “Opp.”).
`For the reasons discussed below, the motion is denied.
`The party moving to exclude evidence bears the burden of proof to establish
`that it is entitled to the relief requested—namely, that the material sought to be
`excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R.
`§§ 42.20(c), 42.62(a).
`The rules governing inter partes review set forth the proper procedure for
`objecting to, and moving to exclude, evidence when appropriate. When a party
`objects to evidence that was submitted during a preliminary proceeding, such an
`objection must be served within ten business days of the institution of trial. See 37
`C.F.R. § 42.64(b)(1). Once a trial has been instituted, an objection must be served
`within five business days. See id. The objection to the evidence must identify the
`grounds for the objection with sufficient particularity to allow correction in the
`form of supplemental evidence. Id. This process allows the party relying on the
`evidence to which an objection is served timely the opportunity to correct, by
`serving supplemental evidence within ten business days of the service of the
`objection. See 37 C.F.R. §§ 42.64(b)(1), 42.64(b)(2). If, upon receiving the
`supplemental evidence, the opposing party is still of the opinion that the evidence
`
`
`1 WINDOWS NT 3.5, TCP/IP USER GUIDE (1994) (Ex. 1004) (“WINS”).
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`is inadmissible, the opposing party may file a motion to exclude such evidence. 37
`C.F.R. § 42.64(c).
`A. The WINS Reference (Ex. 1004)
`Patent Owner argues that WINS should be excluded because Petitioner has
`failed to establish that WINS was publicly available. Mot. to Exclude 2-6. Patent
`Owner alleges that the witness on whom Petitioner relies, Mr. Yuri Kolesnikov
`(see Ex. 1017), could not confirm that WINS was publicly available. Petitioner
`contends that Petitioner has submitted declarations, including that of Mr. Yuri
`Kolesnikov, to corroborate the public availability of WINS. Opp. 5-6.
`We are not persuaded by Patent Owner that Petitioner has not established
`WINS was publicly available. Petitioner has provided declarations of Mr. Yuri
`Kolesnikov (Ex. 1017) and Ms. Leslie Ehrlich (Ex. 1018) to establish the public
`availability of WINS. Opp. 5–7. Mr. Kolesnikov testifies that he saw several
`Microsoft Windows NT 3.5 Server packages that included a print copy of WINS.
`Ex. 1017 ¶ 7. Mr. Kolesnikov further testifies that he purchased Windows NT 3.5
`Server, which included a CD version (Ex. 1019) of the WINS reference. Id. ¶¶ 8–
`10. Patent Owner argues that Mr. Kolesnikov could not confirm whether he had
`previously seen WINS. Mot. to Exclude 5. We are persuaded, however, that Mr.
`Kolesnikov had previously seen WINS and the CD version because
`Mr. Kolesnikov testifies he recalls seeing printed copies of WINS during
`installations he did for clients in 1994, and is certain that it was 1994 because he
`had switched jobs in 1995. Ex. 2043, 29:1–10, 32:21–22.
`Additionally, Ms. Ehrlich testifies that WINS and the CD version are
`substantially similar, noting differences in the glossaries and formatting only. Ex.
`1018 ¶ 6. Patent Owner argues that Petitioner has relied on Ms. Ehrlich’s
`testimony to establish WINS was publicly available and Ms. Ehrlich has no
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`personal knowledge of whether WINS was ever published or made publicly
`available. Mot. to Exclude 4–5. We are not persuaded by this argument because
`Petitioner only relies on Ms. Ehrlich’s testimony to establish that WINS and the
`CD version are substantially similar. Opp. 7 (citing Ex. 1018; Ex. 2044, 11:15–
`12:10, 16:14–24, 19:3–20:10, 21:8–22:24).
`Therefore, we conclude that Petitioner has established that WINS was
`publicly available based on Mr. Kolesnikov’s testimony that he had seen WINS
`and had possession of a CD version of WINS in 1994 and Ms. Ehrlich’s testimony
`that WINS and the CD version are substantially similar, with differences only in
`the glossaries and formatting. For the foregoing reasons, we deny Patent Owner’s
`motion to exclude WINS.
`B. The Declaration of Mr.Vadim Antonov (Ex. 1023), Sections B, E, and F
`of Paper 33 (Petitioner’s Reply to Patent Owner’s Response), and
`Several Miscellaneous Exhibits (Exs. 1005 and 1017-1021)
`Patent Owner’s Motion to Exclude seeks to exclude the Declaration of Mr.
`Vadim Antonov (Ex. 1023), sections B, E, and F of Paper 33 (Petitioner’s Reply to
`Patent Owner’s Response), and several miscellaneous exhibits (Exs. 1005 and
`1017-1021). Mot. to Exclude 6-14. We are not persuaded by Patent Owner’s
`motion for the following reasons.
`Patent Owner argues that Mr. Antonov’s declaration should be excluded
`because Mr. Antonov “based his opinions on software products and multiple
`technical documents not of record.” Mot. to Exclude 7. We are not persuaded by
`this argument that the declaration should be excluded. This argument goes towards
`the weight of the evidence rather than its admissibility. It is within the Board’s
`discretion to assign the appropriate weight to be accorded to evidence. See, e.g., In
`re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
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`Board is entitled to weigh the declarations and conclude that the lack of factual
`corroboration warrants discounting the opinions expressed in the declarations.”).
`Patent Owner further argues that sections B, E, and F of Paper 33
`(Petitioner’s Reply to Patent Owner’s Response) should be excluded because
`Petitioner’s Reply references Mr. Antonov’s declaration in entirety for certain
`arguments. Mot. to Exclude 12-13. Patent Owner argues, for example, that
`section E states “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 explains this in detail.” Mot. to
`Exclude 12 (quoting Paper 33, 11). Patent Owner additionally argues that section
`F of Paper 33 similarly incorporates section IX of the Antonov declaration and
`there are sections of the Antonov declaration not relied upon in Paper 33. Mot. to
`Exclude 12–13. Patent Owner does not provide any explanation as to why section
`B should be excluded. We are not persuaded by this argument because Patent
`Owner fails to explain why these portions of Paper 33 should be excluded. A
`motion to exclude must explain why the evidence is not admissible (e.g., relevance
`or hearsay) but may not be used to challenge the sufficiency of the evidence to
`prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48765,
`48767 (Aug. 14, 2012). We are unable to discern from Patent Owner’s argument a
`sufficient explanation to why sections B, E, and F of Paper 33 should be excluded.
`Patent Owner also argues that Exhibits 1017 and 1018, the declarations of
`Mr. Kolesnikov and Ms. Ehrlich, respectively, should be excluded. Mot. to
`Exclude 14. Patent Owner generally alleges that these declarations do not discuss
`the prior art of record. Id. As discussed above, however, Petitioner relies on these
`declarations to establish that WINS was publicly available, not to discuss the prior
`art. Furthermore, Patent Owner does not provide sufficient explanation as to why
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`these declarations should be excluded. Accordingly, we are not persuaded that
`Exhibits 1017 and 1018 should be excluded as outside the scope of this
`proceeding.
`Patent Owner additionally argues that Exhibit 1019, the CD version of
`WINS (Ex. 1004), is not the same as WINS and therefore should be excluded as
`“outside the scope.” Mot. to Exclude 14. We are not persuaded by this argument.
`As discussed above, Ms. Ehrlich testifies that the only differences between WINS
`and the CD version are in the glossaries and due to formatting. Ex. 1018 ¶ 6. For
`the reasons discussed above with respect to Ms. Ehrlich’s testimony, we are not
`persuaded that Exhibit 1019 should be excluded.
`Patent Owner also argues that Exhibits 1005, 1020, and 1021 should be
`excluded because they are irrelevant and unreliable. Mot. to Exclude 14.
`Petitioner submitted Exhibits 1005, 1020, and 1021 as supplemental evidence to
`establish WINS as publicly available. Paper 33, 13–15. We, however, did not rely
`on this evidence in determining that WINS was publicly available. As discussed
`above, we relied on the testimony of Mr. Kolesnikov and Ms. Ehrlich in
`determining that Petitioner established WINS was publicly available. Accordingly,
`Patent Owner’s motion to exclude Exhibits 1005, 1020, and 1021 is denied.
`
`
`ORDER
`In view of the foregoing, it is, therefore,
`ORDERED that Patent Owner’s Motion to Exclude is denied.
`
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`IPR2013-00246
`Patent 6,108,704
`
`For PETITIONER:
`
`Pavel I. Pogodin
`TRANSPACIFIC LAW GROUP
`pavel@transpacificlaw.com
`
`Sanjay Prasad
`PRASAD IP, PC
`sanjay@prasadip.com
`
`For PATENT OWNER:
`
`Alicia M. Carney
`Patrick J. Lee
`Alan M. Fisch
`FISCH SIGLER LLP
`alicia.carney@fischllp.com
`patrick.lee@fischllp.com
`alan.fisch@fischllp.com
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