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
`____________
`
`
`REPLY TO PETITIONER’S OPPOSITION TO
`THE MOTION TO EXCLUDE
`
`
`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
`____________
`
`
`REPLY TO PETITIONER’S OPPOSITION TO
`THE MOTION TO EXCLUDE
`
`
`
`Case IPR2013-00302
`Patent No. 7,986,426
`
`Patent Owner MPHJ Technology Investments, LLC (“Patent Owner”) filed a
`
`motion to exclude portions of Dr. Melen’s deposition transcript submitted as Ex.
`
`2003. (Paper 40). Specifically, Patent Owner seeks to exclude 62 pages (Ex.
`
`2003, pp.178-240) of leading questions in which Petitioners asked whether its
`
`expert, Dr. Melen, agrees with “what is contained in the contents of this petition
`
`for inter partes review.” (Ex. 2003, p. 182, lines 8-12). Petitioner filed an
`
`opposition to this motion. (Paper 43). Through this paper, Patent Owner replies to
`
`Petitioner’s Opposition.
`
`I. PATENT OWNER DOES NOT IMPERMISSIBLY CHALLENGE THE
`SUFFICIENCY OF DR. MELEN’S TESTIMONY
`
`
`Petitioner alleges that Patent Owner’s motion to exclude is an attempt to
`
`reiterate or expand upon arguments raised in Patent Owner’s Response. Patent
`
`Owner’s motion concerns 62 pages of redirect testimony in which Petitioner
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`impermissibly led its witness, Dr. Melen, to agree with the anticipation arguments
`
`addressed in the petition. The Board deserves to understand the context which
`
`prompted Petitioner to improperly question its own witness, Dr. Melen, for a time
`
`that spans 62 out of 261 pages of deposition transcript. The insufficiency of Dr.
`
`Melen’s testimony evidence is automatically raised by merely reciting Dr. Melen’s
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`
`
`1
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`
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`cross examination testimony. The following is one among numerous examples
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`Case IPR2013-00302
`Patent No. 7,986,426
`
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`where Dr. Melen discredits his declaration:
`
`Q. Did you -- as specifically as you are able to, at the time you
`signed your name to the declaration that you've offered in this case,
`what software application of the XNS were you most convinced
`possessed the five modules of Claim 5?
`A.
`I did not analyze XNS on a module-by-module basis –
`Q. Okay.
`A.
`-- but XNS is based upon software and a collection of modules.
`Q. It actually says based on collection of software as well, right?
`A. Yes.
`Q. And collection of software is different than a collection of
`modules, isn't it?
`A.
`Right.
`
`(Ex. 2003, p. 110, line 13 – p. 111, line 6). Dr. Melen discredits himself, which is
`
`presumably why Petitioner attempted to rehabilitate him. The purpose of
`
`Petitioner’s leading questions cannot be explained without addressing Dr.
`
`Melen’s contradictory testimony.
`
`First, Petitioner asserts that Patent Owner has abused motion practice by
`
`challenging the sufficiency of the evidence. Thereafter, Petitioner disregards its
`
`own belief of proper motion practice and seeks to rehabilitate Dr. Melen through
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`filing its opposition brief. (Paper 43, p. 7). Specifically, without providing any
`
`
`
`2
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`
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`support, Petitioner testifies as to what Dr. Melen was or was not suggesting. (Id.).
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`Case IPR2013-00302
`Patent No. 7,986,426
`
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`If Petitioner truly believed that Patent Owner’s motion to exclude was an abuse of
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`motion practice, Petitioner would have limited its opposition brief to explaining
`
`why 62 pages worth of leading questions are admissible rather than attempting to
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`remedy Dr. Melen’s testimony through the elaborate, self-serving explanations
`
`offered in its opposition brief.
`
`II. DR. MELEN’S CROSS EXAMINTION TESTIMONY CITED IN THE
`MOTION TO EXCLUDE WAS NOT TAKEN OUT OF CONTEXT
`
`
`As stated in the motion to exclude, Dr. Melen believes that Salgado “gets a
`
`lot of his strength from the inclusion of XNS with Salgado.” (Paper 40, p. 6). It
`
`goes without saying that this alone is highly suggestive that Dr. Melen confuses the
`
`rules of anticipation with obviousness (and this proceeding is strictly based on
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`anticipation). Petitioner uses its opposition to the motion to exclude to speculate
`
`that Dr. Melen mentioned both XNS and Salgado “simply because he reviewed
`
`both prior to being deposed, not because he believed Salgado fails to anticipate the
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`claims.” (Paper 43, p. 7). However, the citations in the motion to exclude are not
`
`taken out of context – Dr. Melen has confused obviousness with anticipation, as
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`demonstrated in other instance of his deposition transcript:
`
`Q.
`
`Column 86 --
`
`
`
`3
`
`
`
`Case IPR2013-00302
`Patent No. 7,986,426
`
`
`A. Um-hum.
`Q.
`-- Lines 22 through 27. (Whereupon, the witness reviews the
`material provided.)
`THE WITNESS: I would respond to that by saying that since Salgado
`-- Salgado supports XNS and XNS supports the Kurzweil scan --
`scanning equipment, that that would contain a module for doing that.
`BY MR. HILL:
`And where is that module described in Salgado?
`Q.
`A.
`In its description of its support of XNS. XNS includes the
`Kurzweil system, and it's a third-party device.
`Q.
`So in order to -- and that's from -- you're taking that from the
`XNS manual --
`A. Yes.
`Q. -- that we were looking at before and you're combining that --
`A.
`Right.
`Q.
`-- that knowledge with what you're seeing here?
`A.
`That's right.
`DR. VARUGHESE: Objection to the form of the question.
`(Ex. 2003, p. 147, line 6 - p. 148, line 9 – emphasis added). Patent Owner invites
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`the Board to review Dr. Melen’s deposition transcript to verify that the citations of
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`Dr. Melen that appear in the motion to exclude are not taken out of context.
`
`III. PATENT OWNER’S MOTION TO AMEND DOES NOT SUFFER
`FROM INCURABLE DEFICIENCIES
`
`
`Patent Owner has identified pages 178 to 240 of Dr. Melen’s deposition
`
`transcript (Ex. 2003) as containing 40 sequential objections. Accordingly, Patent
`
`
`
`4
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`
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`Owner has met its burden to identify the objections in the record. (37 C.F.R. §
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`Case IPR2013-00302
`Patent No. 7,986,426
`
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`42.64(c)). However, Petitioner complains that the motion to exclude is deficient
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`because Patent Owner allegedly has the burden to provide specific citations to each
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`of the 40 leading questions that sequentially appear in Dr. Melen’s redirect
`
`testimony. This is merely a desperate attempt to distract the Board from the
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`improper line of questioning recurring throughout the redirect examination
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`testimony. It would be unfair to require the Patent Owner to make 40 citations to
`
`the 40 consecutive leading questions, when they are in sequence. In short, Patent
`
`Owner submits that it has adequately complied with the rule.
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`Finally, Petitioner believes that the motion to exclude should be denied
`
`because Petitioner has not cited to the answers to its leading questions. Petitioner
`
`has requested oral argument and accordingly, may attempt to rely on any portion of
`
`Dr. Melen’s deposition transcript. Therefore, the fact that Petitioner has yet to cite
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`to pages 178 to 240 of Ex. 2003 is irrelevant.
`
`
`Respectfully submitted,
`
`Thomas | Horstemeyer LLP
` / Scott A. Horstemeyer /
`
`
`Scott Horstemeyer (Reg No. 43,183)
`Lead Counsel for Patent Owner
`
` Date: August 4, 2014
`
`
`
`5
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`
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`CERTIFICATE OF SERVICE
`
`Case IPR2013-00302
`Patent No. 7,986,426
`
`
`
`The undersigned herby certifies that a copy of the foregoing Reply to
`
`Petitioner’s Opposition to the Motion to Exclude Evidence was served on counsel
`
`of record on August 4, 2014 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
`
`
`
` August 4, 2014
`
`
`Date
`
`
`
`
`
`
`
`
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