UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RICOH AMERICAS CORPORATION
`
`XEROX CORPORATION
`Petitioners
`
`V.
`
`MPHJ TECHNOLOGY INVESTMENTS LLC
`Patent Owner
`
`Case 1PR2013-00302
`Patent 7,986,426
`
`OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RICOH AMERICAS CORPORATION
`
`XEROX CORPORATION
`Petitioners
`
`V.
`
`MPHJ TECHNOLOGY INVESTMENTS LLC
`Patent Owner
`
`Case 1PR2013-00302
`Patent 7,986,426
`
`OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`Table of Contents
`
`Introduction
`
`. 1
`
`I. The Board should deny MPHJ’s Motion because it improperly challenges and
`
`mi s characterizes the substance of Dr. Melen’s testimony . ....................................... 4
`
`A.
`
`The Motion impermissibly challenges the sufficiency of Petitioners’
`
`evidence and advances arguments that address the ultimate issues at bar . ........... 4
`
`B.
`
`The Motion’s improper arguments present Dr. Melen’s cross-examination
`
`testimonyout of context . ....................................................................................... 6
`
`II. The Board should deny the Motion because it is suffers from incurable
`
`proceduraldeficiencies .............................................................................................. 8
`
`A.
`
`The Motion fails to identify the objections in the record in order and
`
`explain the objections because MPHJ finds it too "tedious" to satisfy this
`
`requirement. ........................................................................................................... 8
`
`B.
`
`The Motion fails to identify where in the record Petitioners have relied on
`
`the evidence that MPHJ seeks to exclude..............................................................9
`
`Conclusion.................................................................................................................9
`
`CertificationOf Service ..........................................................................................11
`
`-1-
`
`
`
`Introduction
`
`MPHJ filed a Motion to Exclude (Paper 40; "Motion") portions of the
`
`deposition testimony of Petitioners’ expert, Dr. Roger Douglas Melen, that were
`
`elicited during redirect examination. MPHJ alleges that portions of Dr. Melen’s
`
`testimony were elicited in response to leading questions, and are therefore
`
`inadmissible. MPHJ’s Motion is deficient and should be denied for at least the
`
`following reasons.
`
`First, the Motion impermissibly challenges the sufficiency of Petitioner’s
`
`evidence and advances arguments that address the ultimate issues at bar.
`
`Second,
`
`the Motion’s improper arguments present Dr. Melen’s cross-examination
`
`testimony out of context in a veiled attempt to discredit Dr. Melen. Third, the
`
`Motion fails to identify the objections in the record in order and explain the
`
`objections because MPHJ finds it too "tedious" to satisfy this requirement. Finally,
`
`the Motion fails to identify where in the record Petitioners have relied on the
`
`evidence that MPHJ seeks to exclude.
`
`These procedural and substantive shortcomings are not surprising. MPHJ
`
`has presented a motion that mirrors the Patent Owner’s Motion to Exclude in
`
`1PR2013-00127, 1 strongly suggesting that MPHJ has done little independent
`
`research. The motion to exclude in 1PR2013-00127 was dismissed. Given the
`
`I 1PR2013-00127 (Motion to Exclude), Paper 22.
`
`-1-
`
`
`
`striking similarities of the present Motion to the motion in 1PR2013-00127, the
`
`present Motion should be denied.
`
`In fact, the analysis section of MPHJ’s motion copies much of the motion in
`
`1PR2013-00127 word-for-word. For example, Section III of the motion in
`
`1PR2013-00127 states that "Petitioner’s counsel improperly tainted Dr. Herr’s
`
`deposition testimony on redirect by asking leading questions." Section IV of the
`
`present Motion begins with exactly the same sentence, except that Dr. Herr’s
`
`[expert in 1PR2013-00127] name is replaced with Dr. Melen’s name. The entire
`
`remainder of the paragraph providing the legal basis for MPHJ’s position is word-
`
`for-word the same as the remainder of the paragraph in the motion in IPR20 13-
`
`00127.
`
`Similarly, the Patent Owner in 1PR2013-00127 stated in footnote 3 that
`
`"[e]ven if the Board chooses not to outright exclude Dr. Herr’s deposition
`
`testimony, the leading nature of the questions, at a minimum, calls into the
`
`question the credibility of Dr. Herr’s testimony and the weight it therefore
`
`deserves." In the present motion, footnote 3 begins exactly the same way, except
`
`for replacing Dr. Herr’s name with Dr. Melen’s name and dropping the word
`
`"outright." The remainders of these footnotes, which cite to legal precedence and
`
`explain how to apply that legal precedence are exactly the same. The Board
`
`dismissed the Motion to Exclude in the 1PR2013-00127 matter finding that the
`
`-2-
`
`
`
`final written decision did not rely on the redirect examination sought to be
`
`excluded and therefore that the motion was moot.
`
`2 Given that MPI-IJ has not even
`
`identified where the testimony sought to be excluded is used, the Board should,
`
`likewise, deny the present Motion.
`
`2 1PR2013-00 127 (Final Written Decision), Paper 32 at 22-23.
`
`-3-
`
`
`
`The Board should deny MPHJ’s Motion because it improperly
`I. (cid:9)
`challenges and mischaracterizes the substance of Dr. Melen’s testimony.
`
`MPHJ improperly attempts to use the Motion as a backdoor to challenge the
`
`sufficiency of Petitioners’ evidence and to advance arguments that address the
`
`ultimate issues at bar. And even if these arguments were appropriate, the Motion
`
`presents Dr. Melen’s cross-examination testimony out of context in a veiled
`
`attempt to discredit Dr. Melen.
`
`The Motion impermissibly challenges the sufficiency of
`A. (cid:9)
`Petitioners’ evidence and advances arguments that address the ultimate
`issues at bar.
`
`"A motion to exclude ... may not be used to challenge the sufficiency of the
`
`evidence to prove a particular fact."’ Contrary to this directive, MIPHJ’s motion
`
`impermissibly challenges the sufficiency of Dr. Melen’s Declaration (Ex. 1008)
`
`and advances arguments that address the ultimate issues at bar - whether each of
`
`XNS (Ex. 1002) and Salgado (Ex. 1005) anticipates the claims of the ’426 Patent.
`
`4
`
`This disingenuous attempt by MPHJ to use the Motion as a backdoor to reiterate or
`
`expand upon arguments that should have been raised in its Patent Owner Response
`
`(POR) is an abuse of the Patent Office’s motions practice.
`
`Trial Practice Guide, 77 Fed. Reg. at 48767 (Aug. 12, 2012).
`
`Motion at 2-5, 12.
`
`a
`
`
`
`For instance, the Motion presents an exchange between Dr. Melen and
`
`counsel for MIPHJ during cross-examination that is directed to whether XNS
`
`discloses certain limitation of claim 6. The Motion argues that this testimony
`
`contradicts statements in Dr. Melen’ s Declaration. That is, the Motion
`
`impermissibly challenges the sufficiency of Dr. Melen’s Declaration to prove that
`
`XNS anticipates claim 6.6 Notably, MPHJ raised this same argument in its
`
`Substitute POR. 7
`
`Next, the Motion presents a comment that Dr. Melen made to counsel for
`
`MPHJ during cross-examination - this time directed to whether Salgado qualifies
`
`as an anticipatory reference. 8 Again, the Motion impermissibly argues that this
`
`testimony contradicts statements in Dr. Melen’ s Declaration -
`
`i.e., challenges the
`
`sufficiency of Dr. Melen’s Declaration to prove that Salgado anticipates the
`
`challenged claims. 9
`
`Motion 2-4.
`
`61d.at 5.
`
`’ MPHJ’s Substitute Patent Owner Response, Paper 30 at 9-11.
`
`8 Motion at 5-6.
`
`9 1d. at 6.
`
`-5-
`
`
`
`Finally, the Motion blatantly challenges the sufficiency of Dr. Melen’s
`
`testimony, stating: "the leading nature of the questions, at a minimum, calls into
`
`question the credibility of Dr. Melen’s testimony and the weight it therefore
`
`deserves." 0
`
`MPHJ’s attempt to use the Motion as a backdoor to advance arguments
`
`directed to the sufficiency of the evidence and in an attempt to discredit Dr. Melen
`
`is improper. The Board should not allow MPHJ to circumvent the Patent Office’s
`
`motions practice, and should deny the Motion.
`
`The Motion’s improper arguments present Dr. Melen’s cross-
`B. (cid:9)
`examination testimony out of context.
`
`Even if the substantive arguments advanced in the Motion were proper, they
`
`present Dr. Melen’s cross-examination testimony out of context to suggest: (1) that
`
`he was "unable to verify that the XNS reference taught ... the elements of claim
`
`6"; and (2) that he does not consider Salgado to be an anticipatory reference.’
`
`1
`
`Both suggestions are without merit.
`
`Regarding XNS, Dr. Melen testified during cross-examination that he
`
`interpreted a "module" - as recited in claim 6 - to merely be "a piece of software"
`
`(cid:176) Motion at 12, fn. 3.
`
`Motion at 5-6.
`
`S
`
`
`
`that achieved "very basic functions." 12 Not only does Dr. Melen consider those
`
`modules to be disclosed by XNS - "I believe that XNS-based systems had those""
`
`- he has first-hand knowledge, based on his personal experience in the industry,
`that XNS included those basic functions. 14 Thus, Dr. Melen was not suggesting
`
`that the XNS reference did not teach each element of the claims in question, but
`
`that in addition to the fact that the XNS reference taught each element, he was
`
`aware from firsthand industry experience that XNS-based systems taught the
`
`claims.
`
`And Dr. Melen’s cross-examination testimony quoted in the motion
`
`regarding Salgado was elicited in response to a line of questioning about how he
`
`prepared for the deposition. 15 During this exchange, he mentioned both XNS and
`
`Salgado simply because he reviewed both prior to being deposed, not because he
`
`believed Salgado fails to anticipate the claims. The redirect testimony addressing
`
`Salgado, which MPHJ seeks to exclude, was not elicited based on leading
`
`questions, but rather based on questions that would not confuse the witness with
`
`’ 2 MelenDepo., Ex. 2003 at 110:6, 113:14-15.
`
`’3 1d. at 113:15-16.
`
`14 1d. at 114-116.
`
`Id. at 175:3-5.
`
`15
`
`-7-
`
`
`
`respect to the different documents. That is, the questions on redirect made clear
`
`that responses were sought based on his review of the references individually
`
`(either XNS or Salgado), and not on his industry experience.
`
`Thus, not only are the substantive arguments advanced in the Motion
`
`improper, they inaccurately characterize Dr. Melen’s cross-examination testimony.
`
`Both of these reasons warrant denial of the Motion.
`
`The Board should deny the Motion because it is suffers from incurable
`II. (cid:9)
`procedural deficiencies.
`
`The Board should deny the Motion because it fails to identify the objections
`
`in the record in order and explain the objections. Furthermore, the Motion fails to
`
`identify where in the record Petitioners have relied on the evidence that MPHJ
`
`seeks to exclude. These procedural deficiencies are addressed below.
`
`The Motion fails to identify the objections in the record in order
`A. (cid:9)
`and explain the objections because MPHJ finds it too "tedious" to
`satisfy this requirement.
`
`A motion to exclude evidence "must identify the objections in the record in
`
`order and must explain the objections." 6 Disregarding this requirement, the
`
`Motion alleges that "Petitioner’s counsel asked Dr. Melen at least forty leading
`
`questions on redirect," but complains that it would be too "tedious" to provide a
`
`16 (cid:9)
`
`C.F.R. 42.64(c).
`
`
`
`citation to each. 17 Instead, the Motion vaguely seeks to exclude "portions" of Dr.
`
`Melen’s testimony, and points the Board to about 60 pages of the deposition
`
`transcript that it expects the Board to parse to find MPHJ’s objections.
`
`18 In
`
`essence, MPHJ improperly shifts its burden to satisfy 37 C.F.R. 42.20(c) on the
`
`Board. Since the Motion acknowledges that it does not satisfy this rule, the Board
`
`should deny the Motion.
`
`The Motion fails to identify where in the record Petitioners have
`B. (cid:9)
`relied on the evidence that MPHJ seeks to exclude.
`
`"A motion to exclude evidence must. . . [i]dentify where in the record the
`
`evidence sought to be excluded was relied on by an opponent." 9 In yet another
`
`example of MPHJ disregarding the PTO’s rules and requirements, the Motion does
`
`not attempt to identify where or whether Petitioners’ relied on the evidence MPHJ
`
`seeks to exclude. Thus, the Board should deny the Motion.
`
`Conclusion
`
`MPHJ’s Motion to Exclude: (1) impermissibly challenges the sufficiency of
`
`Petitioner’s evidence and advances arguments directed to the ultimate issues in this
`
`trial; (2) presents Dr. Melen’s cross-examination testimony out of context in a
`
`17 Motion at 11.
`
`18 Motion at 1,11-12.
`
`19 Practice Trial Guide, 77 Fed. Reg. at 48767 (Aug. 12, 2012).
`
`S
`
`
`
`veiled attempt to discredit Dr. Melen; (3) fails to identify the objections in the
`
`record in order and explain the objections; and (4) fails to identify where in the
`
`record Petitioners have relied on the evidence that MPHJ seeks to exclude. Thus,
`
`the Board should deny MIPHJ’s Motion to Exclude.
`
`Date: (cid:9)
`
`____ / 14 Respectfully submitted,
`STERNE, KESSLER, GOLDSTEN & Fox P.L.L.C.
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-260
`
`Michael D. Specht
`Attorney for Petitioners
`
`-10-
`
`
`
`Certification Of Service
`
`The undersigned hereby certifies that the foregoing Petitioners’ "Opposition
`
`to Patent Owner’s Motion to Exclude Evidence" was served electronically via e-
`
`mail on July 28, 2014, in its entirety on Attorneys for Patent Owner - MPHJ
`
`Technology Investments LLC:
`
`Scott A. Horstemeyer (Lead Counsel)
`scott.horstemeyer@thomashorstemeyer.com
`N. Andrew Cram (Backup Counsel)
`andrew. crain@thomashorstemeyer.com
`Vivek Ganti (Backup Counsel)
`vivek. ganti(thomashorsterneyer. corn
`Thomas I Horsterneyer, LLP
`400 Interstate North Parkway SE,
`Suite 1500
`Atlanta, GA 30339
`
`Steven G. Hill (admitted pro hac vice)
`sgh(hkw-law.com
`Hill, Kertscher & Wharton, LLP
`3350 Riverwood Parkway, Suite 800
`Atlanta, Georgia 30339
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Michael D. Specht
`Attorney for Petitioners
`Registration No. 54,463
`
`-7/zi3~ I %f
`
`Date: (cid:9)
`1100 New York Avenue, N. W.
`Washington, D.C.20005-3934
`(202) 371-2600
`1 883698 2.DOCX
`
`
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