Case IPR2013-00302
`Patent No. 7,986,426
`
`
`Filed on Behalf of MPHJ TECHNOLOGY INVESTMENTS, INC
`By: Scott A. Horstemeyer (scott.horstemeyer@thomashorstemeyer.com)
`THOMAS | HORSTEMEYER, LLP
`400 Interstate North Parkway, SE
`Suite 1500
`Atlanta, Georgia 30339
`Tel: (770) 933-9500
`Fax: (770) 951-0933
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`RICOH AMERICAS CORPORATION AND XEROX CORPORATION,
`
`Petitioners
`
`V.
`MPHJ TECHNOLOGY INVESTMENTS, LLC,
`
`Patent Owner
`____________
`
`Case IPR2013-00302
`Patent 7,986,426
`____________
`
`
`
`MPHJ’S MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`Patent No. 7,986,426
`
`
`Filed on Behalf of MPHJ TECHNOLOGY INVESTMENTS, INC
`By: Scott A. Horstemeyer (scott.horstemeyer@thomashorstemeyer.com)
`THOMAS | HORSTEMEYER, LLP
`400 Interstate North Parkway, SE
`Suite 1500
`Atlanta, Georgia 30339
`Tel: (770) 933-9500
`Fax: (770) 951-0933
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`RICOH AMERICAS CORPORATION AND XEROX CORPORATION,
`
`Petitioners
`
`V.
`MPHJ TECHNOLOGY INVESTMENTS, LLC,
`
`Patent Owner
`____________
`
`Case IPR2013-00302
`Patent 7,986,426
`____________
`
`
`
`MPHJ’S MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`I.
`
`INTRODUCTION
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`Case IPR2013-00302
`Patent No. 7,986,426
`
`
`MPHJ Technology Investments, LLC (“MPHJ”) files this motion pursuant
`
`to 37 C.F.R. § 42.64(c) as authorized by the Scheduling Order (Paper 9). MPHJ
`
`moves to exclude portions of the deposition testimony of Dr. Roger Douglas Melen
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`(Ex. 2003) offered in response to leading question posed by Petitioners’ counsel
`
`during his redirect examination. MPHJ also requests that the Patent Trial and
`
`Appeal Board (“Board”) prevent Petitioner from relying on such testimony in
`
`support of its Petition for Inter Partes Review of claims 1-11 of U.S. Patent No.
`
`7,986,426 (“the ’426 patent”).
`
`After Dr. Melen made several statements during his cross examination that
`
`undermined the positions taken in his declaration, Petitioners’ counsel attempted to
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`rehabilitate Dr. Melen’s cross examination testimony by posing at least forty
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`leading questions on redirect examination. Petitioners’ counsel’s objectionable
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`questioning style improperly suggested to Dr. Melen how he should reply to
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`counsel’s questions, which is exactly why leading questions are generally
`
`impermissible when questioning “friendly” witnesses and why the Court should
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`therefore exclude such tainted testimony.
`
`For these reasons, and for those discussed herein, MPHJ respectfully
`
`requests that the Board grant its Motion to Exclude Evidence under 37 C.F.R. §
`
`42.64(c).
`
`
`
`
`
`1
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`
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`II. FACTUAL BACKGROUND
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`Case IPR2013-00302
`Patent No. 7,986,426
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`Petitioner retained Dr. Roger Douglas Melen, Ph.D., as an expert witness “to
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`consider how a person having ordinary skill in the art ("PHOSITA") would have
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`understood the claims subject to inter partes review in light of the disclosure of the
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`’426 patent [as well as] . . . how a PHOSITA would have understood the XNS, GIS
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`150, and, Salgado references.” (Ex. 1008 at ¶ 8.) Dr. Melen was also asked “to
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`consider whether a PHOSITA would have understood” these references to
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`anticipate claims 1-11 of the ’426 patent. (Id.). Dr. Melen’s opinions were offered
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`in his Declaration which was submitted by Petitioner as Ex. 1008.
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`MPHJ deposed Dr. Melen on February 5, 2014. (MPHJ 2003 at 1.) During
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`cross examination, counsel for MPHJ asked Dr. Melen a series of questions
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`concerning, among other things, claim 6 of the ’426 patent. (Id. at 69:20-171:9.)
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`Specifically, counsel for MPHJ asked Dr. Melen to explain precisely which
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`features, if any, of the XNS reference described each element of claim 6 of the
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`’426 patent:
`
`Q. And what -- what in the XNS manual was the most convincing
`description you could find of one server module that had all four of
`those, as you described it, basic algorithms [of claim 6]?
`
`DR. VARUGHESE: Objection to the form of the question.
`
`BY MR. HILL:
`Q. You can answer if you understand the question.
`2
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`Case IPR2013-00302
`Patent No. 7,986,426
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`A. I did not look in detail to the XNS map -- manual for the answers
`to those questions but my industry experience as to what the
`capability of the XNS system are.
`
`Q. You -- you're relying on your industry experience as to the
`capability of the XNS system in practical application is?
`
`A. It -- and -- and, in specific, the ability to maintain a list and to
`maintain input and output process mod -- modules and -- such as
`described in Claim 6.
`
`Q. When you say you relied on your industry experience, what do you
`mean by your industry experience with XNS?
`
`A. I -- I've seen Xerox doc -- document systems running XNS in the
`early '9- --'90s.
`
`Q. Okay. And did you look in the XNS manual to see whether or not
`all of these four functions that are recited in Claim 6 were described
`as being formed -- being performed in a single server module?
`
`A. No.
`
`Q. Okay. Was that because of a comfort level that you felt having
`actually worked with the XNS system?
`
`A. Right.
`
`
`
`
`3
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`Case IPR2013-00302
`Patent No. 7,986,426
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`Q. Okay. And based on your experience working with the XNS
`system -- and what years did you work with the XNS system, by the
`way?
`
`A. I evaluate -- evaluated it and saw it demonstrate -- demonstrated
`roughly 1992, '3, some -- something like that.
`
`Q. Okay. You understand the reference that we're -- the reference
`that's -- that's at issue in the proceedings before the Patent Office is
`the 1985 dated manual, correct?
`
`A. That -- that -- that's the – the description of -- of the XNS, yes.
`
`Q. Did you have experience working with the XNS prior to 1992?
`
`A. No.
`
`Q. Okay. So you don't know one way or the other as to whether or
`not, in 1985, there was a single server module in XNS that performed
`the four functions of Claim 6; is that correct?
`
`DR. VARUGHESE: Objection to the form of the question and
`mischaracterizes the witness' testimony.
`
`THE WITNESS: I don't know.
`
`BY MR. HILL:
`Q. You don't know?
`
`A. Right.
`
`
`
`
`4
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`
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`(Id. at 113:18-116:7 – emphasis added) As evidenced above, Dr. Melen was
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`Case IPR2013-00302
`Patent No. 7,986,426
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`unable to verify that the XNS reference taught or suggested the each and every one
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`of the elements of claim 6. Moreover, Dr. Melen admitted that the basis of his
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`opinion of anticipation depends on other Xerox document systems running XNS. 1
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`Id.
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`Dr. Melen’s deposition testimony thus directly contradicted his declaration,
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`in which he stated:
`
`XNS was published in April 1985, more than 11 years before the
`earliest priority date of the '426 patent. XNS demonstrates that
`integrated office systems and document management was a mature
`technology at the time of the invention described in the '426 patent.
`Based on these teachings, it is my opinion that a PHOSITA would
`understand XNS to teach, either expressly or implicitly, every
`limitation of claims 1-11 of the '426 patent.
`
`(Ex. 1008 at ¶ 47.)
`
`Next, during cross examination, counsel for MPHJ asked Dr. Melen how he
`
`prepared for the deposition, other than having discussions with counsel. (MPHJ
`
`
`1 “A claim is anticipated only if each and every element as set forth in the claim is
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`found, either expressly or inherently described, in a single prior art reference.”
`
`Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d
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`1051, 1053 (Fed. Cir. 1987)
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`
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`5
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`
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`2003 175:3-5.) Dr. Melen replied: “I read, specifically, Salgado and, in particular,
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`Case IPR2013-00302
`Patent No. 7,986,426
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`XNS, because I believe Salgado -- gad -- -gado gets a lot of his strength from the
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`inclusion of XNS with Salgado -- -gado.” (Id. at 175:8-11.) Dr. Melen’s evaluation
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`of Salgado as an anticipatory reference stems from the teachings of XNS. (Id.; see,
`
`e.g., id. at 140:4-12.) This testimony directly contradicts the statutory rules for
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`anticipation found in 35 U.S.C. § 102 as well as Dr. Melen’s declaration in which
`
`he stated:
`
`I have been advised and understand that a claimed invention is
`"anticipated" only if each and every elements as set forth in the claim
`is found, either expressly or inherently described, in a single prior art
`reference.
`
`(Ex. 1008 at ¶ 19.)
`During redirect examination, Petitioner’s counsel attempted to rehabilitate
`
`Dr. Melen’s testimony by asking him to read portions of the Petition into the
`
`record. Following those readings, Petitioner’s counsel repeatedly asked Dr. Melen
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`one or more leading questions suggesting that he agree with Petitioners that the
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`claims were anticipated. For example, with respect to claim 6, Petitioners’ counsel
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`encouraged Dr. Melen to agree that the preamble of claim 6 as well as the four
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`elements of claim six (referred to as [6.1] through [6.4]) were taught in the XNS
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`reference.
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`
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`6
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`
`
`Q. Can you turn to the bottom of Page 20 [of the Petition]? There's a
`heading there.
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`Case IPR2013-00302
`Patent No. 7,986,426
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`
`A. Yes.
`Q. Can you read that, please?
`A. Claim 6 is anticipated by XNS.
`Q. Do you understand Claim 6 refers to Claim 6 of the '426 patent?
`A. Yes.
`Q. Do you agree with that statement?
`A. Yes.
`Q. Starting at the box right under, can you read?
`A. A computer data management system according to Claim 5,
`wherein the server module includes: [6.1] enable virtual copy
`operation means for initiating, cancelling and resetting said computer
`data management system.
`
`. . .
`Q. And is it your understanding that that statement describes
`disclosures in the XNS reference with or without the view of GIS 150
`where the limitation that was designated as [6.1] is also found?
`
`MR. HILL: Objection: leading.
`THE WITNESS: Yes.
`BY DR. VARUGHESE:
`Q. Okay. So turning your attention back to Page 21 towards the top,
`the box that begins with [6.2].Can you read that into the record,
`please?
`
`
`
`7
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`Case IPR2013-00302
`Patent No. 7,986,426
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`A. [6.2] maintain list of available module means for maintaining a
`registry containing a list of said input, output, and process modules
`that can be used in said computer data management systems, said list
`being read on start-up, and maintaining another copy of said list in a
`module's object accessible by said input, output, client, process and
`server modules.
`
`. . .
`Q. Turning your attention back to Page 21, an element of the Claim 26
`– of Claim 6 of the '426 patent that's designated as [6.2]. Do you
`understand the statement that you just read to be disclosures in the
`XNS reference where Element [6.2] is also found?
`
`A. Yes.
`MR. HILL: Objection: leading.
`BY DR. VARUGHESE:
`Q. Okay. Going back to Page 21, can you read the box beginning with
`[6.3]?
`
`A. [6.2] maintain --
`Q. I'm sorry. [6.3].
`A. Oh, [6.3] -- I maybe misheard you. [6.3] maintain currently active
`modules means for maintaining said input, output, and process
`modules currently being used by [sic] a current computer data
`management system copy operation in the project [sic] object, and
`saving the currently active modules in a process template file; and.
`
`. . .
`
`
`
`8
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`
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`Case IPR2013-00302
`Patent No. 7,986,426
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`Q. Do you understand that to be a statement describing where in XNS,
`according to the portions that you just read marked as [10.2a-b] and
`[10.3], where those disclosures also disclose Element [6.3] of Claim 6
`of the '426 patent?
`
`A. Yes.
`MR. HILL: Objection: leading.
`BY DR. VARUGHESE:
`Q. Okay. On Page 21, if you can read the next box starting with [6.4]?
`
`A. [6.4] maintain complete document information means for
`maintaining information regarding a current file being copied, and
`saving the information in a document template file.
`
`. . .
`Q. . . . Do you agree that the contents of Section [10.4], which you
`just read, are disclosures in the XNS reference that also disclose
`Element [6.4] of Claim 6 of the '426 patent?
`
`MR. HILL: Objection: leading.
`THE WITNESS: Yes.
`(MPHJ 2003 at 224:16-234:25.) MPHJ’s counsel timely objected to the leading
`
`questions. (Id.) Further, Petitioners’ counsel never attempted to cure the leading
`
`9
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`questions. (Id.)
`
`
`
`
`
`
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`III. LEGAL STANDARD
`
`Case IPR2013-00302
`Patent No. 7,986,426
`
`
`“Leading questions should not be used on direct examination except as
`
`necessary to develop the witness’s testimony.” FED. R. EVID. 611(c).2 “The rule
`
`continues the traditional view that the suggestive powers of the leading question
`
`are as a general proposition undesirable.” Id. at Advisory Committee Notes. The
`
`Board has wide discretion to exclude evidence elicited from leading questions. See
`
`id.
`
`37 C.F.R. § 42.64(c) permits a party to file a motion to exclude evidence
`
`without prior board authorization. “An objection to the admissibility of deposition
`
`evidence must be made during the deposition. Evidence to cure the objection must
`
`be provided during the deposition, unless the parties to the deposition stipulate
`
`otherwise on the deposition record.” 37 C.F.R. § 42.64(a).
`
`
`
`
`
`
`
`
`2 The Federal Rules of Evidence apply to inter parties review proceedings, unless
`otherwise provided in the regulations governing inter partes reviews. 37 C.F.R. §
`42.62(a).
`
`
`
`10
`
`
`
`IV. THE BOARD SHOULD EXCLUDE DR. MELEN’S TESTIMONY
`OFFERED IN RESPONSE TO LEADING QUESTIONS
`
`Case IPR2013-00302
`Patent No. 7,986,426
`
`
`Petitioners’ counsel improperly tainted Dr. Melen’s testimony on redirect by
`
`asking leading questions. Leading questions are generally impermissible “to guard
`
`against the risk of improper suggestion inherent in examining friendly witnesses
`
`through the use of leading questions.” Ellis v. Chicago, 667 F.2d 606, 612 (7th
`
`Cir. 1981). The Board has the discretion to exclude deposition testimony obtained
`
`through leading questions. See, e.g., Oberlin v. Marlin Am. Corp., 596 F.2d 1322,
`
`1328-29 (7th Cir. 1979) (excluding use of leading questions and responses thereto
`
`given at deposition despite other party’s failure to raise objection at the time of the
`
`deposition because the testimony “was in effect [the] attorney’s testimony on
`
`ultimate issues in the case”); Bixby v. KBR, Inc., No. 3:09-CV-632—PK, 2012 WL
`
`4754942, at *4 (D. Or. Oct. 4, 2012) (same); Morales-Arcadio v. Shannon Produce
`
`Farms, Inc., No. 605-cv-062, 2007 WL 2106188, at *11 (S.D. Ga. July 18, 2007)
`
`(ignoring deposition responses to leading questions when ruling on motion for
`
`summary judgment).
`
`Here, Petitioners’ counsel asked Dr. Melen at least forty leading questions
`
`on redirect beginning on page 178 and ending on page 241 of the deposition
`
`transcript. (MPHJ 2003 at 178:6-241:21.) Providing a citation to each leading
`
`question would be tedious because Petitioners’ counsel repeatedly asked Dr. Melen
`
`
`
`11
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`
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`to read long excerpts from the Petition into the record. Petitioners’ counsel then
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`Case IPR2013-00302
`Patent No. 7,986,426
`
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`asked Dr. Melen whether he agreed. Each of these questions suggested desired
`
`responses from Dr. Melen. Many of these responses directly contradict answers
`
`Dr. Melen gave earlier the same day in response to questions by MPHJ’s counsel
`
`as described in the Factual Background above. These types of exchanges are
`
`exactly the type of tainted, leading question testimony that FED. R. EVID. 611(c) is
`
`designed to prevent. Accordingly, the Board should exclude those portions of Dr.
`
`Melen’s testimony offered in response to as a result of Petitioners’ counsel’s
`
`leading questions. The Board should also disregard any reliance upon such
`
`testimony by Petitioner.3
`
`
`
`
`3 Even if the Board chooses not to exclude Dr. Melen’s deposition testimony, the
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`leading nature of the questions, at a minimum, calls into question the credibility of
`
`Dr. Melen’s testimony and the weight it therefore deserves. See Skinmedica, Inc.
`
`v. Histogen, Inc., 727 F.3d 1187, 1209-10 (Fed. Cir. 2013) (holding that expert’s
`
`testimony “deserves no weight” in view of, among other things, his “conclusory
`
`affirmations elicited by leading questions”); see also J.C. Equip. Corp. v. England,
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`360 F.3d 1311, 1315 (Fed. Cir. 2004) (finding witness testimony not credible
`
`because it was, among other things, elicited “often in response to leading questions
`
`asked by his attorney”).
`
`
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`12
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`
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`V. CONCLUSION
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`Case IPR2013-00302
`Patent No. 7,986,426
`
`
`For the foregoing reasons, MPHJ respectfully requests that the Board grant
`
`its Motion to Exclude Evidence under 37 C.F.R. § 42.64(c).
`
`
`Respectfully submitted,
`Thomas | Horstemeyer LLP
`
`
` / Scott A. Horstemeyer /
`
`
`
`Scott Horstemeyer
`Lead Counsel
`Attorney for Patent Owner
`Registration No. 34,183
`
` July 14, 2014
`
`
`Date
`
`
`
`13
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`CERTIFICATE OF SERVICE
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`Case IPR2013-00302
`Patent No. 7,986,426
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`
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`The undersigned herby certifies that a copy of the foregoing Motion to
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`Exclude Evidence under 37 C.F.R. § 42.64(c) was served on counsel of record on
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`July 14, 20104 and that this document was filed through the Patent Review
`
`Processing System and served electronically via email.
`
`Michael D. Specht
`Jason D. Eisenberg
`H. Keeto Sabharwal (pro hac vice admittance)(Paper 19)
`Dennies Varughese
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`202.371.2600 (reception)
`202.371.2540 (facsimile)
`Mspecht-PTAB@skgf.com
`Jeisenbe-PTAB@skgf.com
`keetos-PTAB@skgf.com
`dvarughe-PTAB@skgf.com
`rbemben-PTAB@skgf.com
`
`Respectfully submitted,
`Thomas | Horstemeyer LLP
`
`
` / Scott A. Horstemeyer /
`
`
`
`Scott Horstemeyer
`Lead Counsel
`Attorney for Patent Owner
`Registration No. 34,183
`
`
`
` July, 14, 2014
`
`
`Date
`
`
`
`
`
`
`
`
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