IPR2013-00479
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`Attorney Docket No. FABO-024/00US
`(309101-2060)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`PATENT TRIAL AND APPEAL BOARD
`____________________
`
`FACEBOOK, INC.,
`LINKEDIN CORP.,
`and
`TWITTER, INC.,
`Petitioners
`
`v.
`
`SOFTWARE RIGHTS ARCHIVES, LLC
`Patent Owner
`_______________________
`
`U. S. Patent No. 5,832,494
`
`Title: METHOD AND APPARATUS FOR INDEXING, SEARCHING
`AND DISPLAYING DATA
`
`_______________________
`
`Inter Partes Review No. 2013-00479
`
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
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`
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`871741.01
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`
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`Attorney Docket No. FABO-024/00US
`(309101-2060)
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`PATENT TRIAL AND APPEAL BOARD
`____________________
`
`FACEBOOK, INC.,
`LINKEDIN CORP.,
`and
`TWITTER, INC.,
`Petitioners
`
`v.
`
`SOFTWARE RIGHTS ARCHIVES, LLC
`Patent Owner
`_______________________
`
`U. S. Patent No. 5,832,494
`
`Title: METHOD AND APPARATUS FOR INDEXING, SEARCHING
`AND DISPLAYING DATA
`
`_______________________
`
`Inter Partes Review No. 2013-00479
`
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`871741.01
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`
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`Attorney Docket No. FABO-024/00US
`(309101-2060)
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`Table of Contents
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`IPR2013-00479
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`Page
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`INTRODUCTION .......................................................................................... 1
`I.
`PATENT OWNER’S MOTION IS PROCEDURALLY IMPROPER .......... 2
`II.
`III. PATENT OWNER’S MOTION SHOULD BE DENIED ON THE
`MERITS .......................................................................................................... 4
`A.
`Patent Owner Fails to Carry Its Burden of Proof ................................. 4
`B. Dr. Fox Properly Responded to the Claim Interpretations of
`Patent Owner and its Expert ................................................................. 5
`C. Dr. Fox Properly Responded to Dr. Jacobs On the Tapper
`Papers ................................................................................................... 7
`D. Dr. Fox Properly Cites Dr. Jacobs’ Book to Rebut Dr. Jacobs’
`Opinions ............................................................................................. 12
`Patent Owner Was Free to Depose Dr. Fox, But Chose Not To ........ 13
`E.
`IV. THE BOARD SHOULD DENY PATENT OWNER’S REQUEST
`FOR A “SUR-REPLY.” ............................................................................... 14
`CONCLUSION ............................................................................................. 14
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`V.
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`i
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`Attorney Docket No. FABO-024/00US
`(309101-2060)
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`TABLE OF AUTHORITIES
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`IPR2013-00479
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`
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`Page(s)
`
`Cases
`Corning Inc. v. DSM IP Assets,
`IPR2013-00047 ..................................................................................................... 3
`
`Kyocera Corp. v. Softview LLC,
`IPR2013-00007, IPR2013-000256 ..............................................................passim
`
`Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00002 (“Liberty Mutual I”) .......................................................passim
`
`Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003 (“Liberty Mutual II”) ........................................................... 3, 5
`
`Vibrant Media v. Gen. Elec. Co.,
`IPR2013-00172 ............................................................................................passim
`
`Statutes
`
`37 C.F.R. § 42.12 ....................................................................................................... 3
`
`37 C.F.R. § 42.20(c) ............................................................................................... 4, 5
`
`37 C.F.R. § 42.23(b) ........................................................................................ 3, 4, 12
`
`37 C.F.R. § 42.64(c) ................................................................................................... 3
`
`Other Authorities
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. at 48,767 .......................................................................................... 3
`
`
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`871741.01
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`ii
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`Attorney Docket No. FABO-024/00US
`(309101-2060)
`I.
`
`
`INTRODUCTION.
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`IPR2013-00479
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`
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`The “Motion to Exclude Evidence” filed by the patent owner (Paper 44
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`(“Motion”)) is procedurally improper and should be rejected. The Board recently
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`advised the patent owner that a motion to exclude is an inappropriate vehicle to
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`argue that material submitted by a petitioner in a reply is allegedly “new.”1 The
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`patent owner, ignoring the Board’s guidance, brought the present motion anyway.
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`
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`The patent owner’s motion, even if it was procedurally proper, fails because
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`the evidence it seeks to exclude falls within the permissible scope of a reply. The
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`challenged evidence responds to arguments and opinions raised in the patent
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`owners’ Response and the extensive accompanying expert declaration from the
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`patent owner’s expert, Dr. Jacobs.
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`
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`The patent owner fixates on the length of the Petitioner’s reply papers, but
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`ignores that those papers responded to hundreds of pages of arguments and more
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`than 1,100 pages of evidence from Dr. Jacobs (including over 700 pages of
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`declaration evidence and over 400 pages of deposition testimony).2 The patent
`
`
`1 See IPR2013-00481, Paper 41, at 2 n.1 (P.T.A.B. Sept. 12, 2014).
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`2 See IPR2013-00478, Exs. 2113, 1032, 1033; IPR2013-00479, Exs. 2113, 1234,
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`1235; IPR2013-00480, Exs. 2113, 1029, 1030; IPR2013-00481, Exs. 2113, 1034,
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`1035. The Board has coordinated the proceedings in Inter Partes Review numbers
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`IPR2013-00478, -479, -480, and -481.
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`871741.01
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`1
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`Attorney Docket No. FABO-024/00US
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`IPR2013-00479
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`owner’s complaint about the length of Dr. Fox’s reply declaration also ignores the
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`fact that it consolidates all of his rebuttal testimony for all four of the related IPR
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`proceedings. Only a portion of Dr. Fox’s consolidated reply declaration
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`specifically relates to the present case, and only a smaller portion still is challenged
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`in the present Motion.
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`For these reasons, and as discussed more fully below, the patent owner’s
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`Motion should be denied in its entirety.
`
`II.
`
`
`PATENT OWNER’S MOTION IS PROCEDURALLY IMPROPER.
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`The patent owner’s Motion argues that the challenged evidence should be
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`excluded because it allegedly raises “new” arguments and/or arguments that could
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`have been presented with Petitioners’ original Petitions. (Motion, passim.) The
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`Board has repeatedly explained that a complaint about allegedly “new” material on
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`reply is not a proper basis for a motion to exclude evidence. Vibrant Media v. Gen.
`
`Elec. Co., IPR2013-00172, Paper 50 (Final Written Decision), at 41-42 (P.T.A.B.
`
`Jul. 28, 2014); Kyocera Corp. v. Softview LLC, IPR2013-00007, IPR2013-000256,
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`Paper 51 (Final Written Decision), at 34 (P.T.A.B. Mar. 27, 2014); Liberty Mutual
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`Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper 66 (Final Written
`
`Decision), at 62 (P.T.A.B. Jan. 23, 2014) (“Liberty Mutual I”); Liberty Mutual Ins.
`
`Co. v. Progressive Cas. Ins. Co., CBM2012-00003, Paper 78 (Final Written
`
`Decision), at 68-69 (P.T.A.B. Feb. 11, 2014) (“Liberty Mutual II”); Corning Inc. v.
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`DSM IP Assets, IPR2013-00047, Paper 84 (Final Written Decision), at 7 n.3
`2
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`Attorney Docket No. FABO-024/00US
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`IPR2013-00479
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`(P.T.A.B. May 1, 2014). A motion to exclude evidence should be directed to the
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`admissibility of evidence under the Federal Rules of Evidence or other law
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`governing the admissibility of evidence, and not issues relating to the timing of
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`that evidence. Vibrant Media, IPR2013-00172, Paper 50 at 41, citing 37 C.F.R. §
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`42.64(c) and Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767.3
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`
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`The Board in related case IPR2013-00481 accordingly cautioned the patent
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`owner prior to filing of the present Motion that “[a] motion to exclude seeking to
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`strike a reply for violating 37 C.F.R. § 42.23(b) . . . would be improper.”
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`IPR2013-00481, Paper 41, at 2 n.1 (P.T.A.B. Sept. 12, 2014).4 Ignoring the
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`3 The patent owner also requests that if the Board excludes any paragraphs in Dr.
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`Fox’s reply declaration in this case, the Board should also “exclude the identical
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`paragraphs in the reply declarations submitted in” other Inter Partes Review cases.
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`(Motion at 14.) While there is no basis to exclude any of the evidence challenged
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`in the Motion, Petitioners note that this request is plainly improper. The patent
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`owner cites no rule authorizing the exclusion of evidence submitted in other Inter
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`Partes Review cases based on a motion filed only in the present case.
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`4 Prior to Patent Owner’s Motion, Petitioners also sent correspondence specifically
`
`advising Patent Owner that its planned motion was improper under the applicable
`
`authority and that Petitioners reserved the right to seek any relief that the Board
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`might deem appropriate under 37 C.F.R. § 42.12.
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`871741.01
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`3
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`IPR2013-00479
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`Board’s guidance, the patent owner has brought precisely the motion that the
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`Board cautioned the patent owner to avoid. (Motion at 2.) The Board should deny
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`the Motion in its entirety.
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`III. PATENT OWNER’S MOTION SHOULD BE DENIED ON THE MERITS.
`A.
`Patent Owner Fails to Carry Its Burden of Proof.
`The patent owner has also failed to carry its burden to exclude evidence. See
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`
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`37 C.F.R. § 42.20(c) (the moving party bears the burden of proof). The Petitioners
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`were entitled to submit evidence with their Reply that responds to the arguments
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`and evidence presented in patent owner’s Response. See 37 C.F.R. § 42.23(b);
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`Vibrant Media, IPR2013-00172, Paper 50, at 41. “[B]y standard procedure, the
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`Petitioner has the last word with regard to the petition and it would not be unusual
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`that one or more reply declarations may be necessitated by the arguments and
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`evidence presented with the Patent Owner Response.” Liberty Mutual I,
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`CBM2012-00002, Paper 38 at 2.
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`
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`The patent owner does not attempt to satisfy its burden of demonstrating that
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`the challenged evidence is not responsive to arguments and opinions raised in the
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`patent owner’s Response. Vibrant Media, IPR2013-00172, Paper 50, at 41. In
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`fact, the Motion ignores the hundreds of pages of arguments and opinions raised by
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`the patent owner’s expert, Dr. Jacobs, to which Petitioners and Dr. Fox properly
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`responded. Just like the moving parties in Vibrant Media and Liberty Mutual II,
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`the patent owner’s motion “does not contain any meaningful discussion of the
`4
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`871741.01
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`Attorney Docket No. FABO-024/00US
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`arguments that [the patent owner] has made in its Patent Owner Response, which
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`reasonably might or might not have triggered [Petitioners’] reliance on the
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`testimony [the patent owner] now seeks to exclude.” Vibrant Media, at 41-42,
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`citing 37 C.F.R. § 42.20(c). “Without such discussion, [the patent owner] has not
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`shown that [Dr. Fox’s reply declaration] exceeds the proper scope of reply
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`evidence.” Id. at 42. See also Liberty Mutual II, CBM2012-00003, Paper 78 at
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`67-68 (same reasoning). The patent owner’s Motion should be denied accordingly.
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`
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`Although the Motion did not attempt to carry its burden of showing that
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`Petitioner’s reply evidence exceeded the proper scope, the Petitioners will
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`nonetheless address below the challenged items of evidence and explain they
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`properly fell within the scope of reply evidence.
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`B. Dr. Fox Properly Responded to the Claim Interpretations of
`Patent Owner and its Expert.
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`
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`The patent owner erroneously argues that it is “unduly prejudiced” because
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`Dr. Fox allegedly raised a new construction of the term “database.” (Motion at 4-
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`5.) This complaint is groundless because Dr. Fox’s statements about “database”
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`were made in direct response to Dr. Jacobs’ opinions. (Ex. 1233, ¶¶ 11-17, 200,
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`330-333 (citing and then responding to Dr. Jacobs’ opinions).) Dr. Fox noted, for
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`example, that Dr. Jacobs’ opinions assumed an erroneously narrow definition of
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`“database” that contradicts the express definition in the specifications, which
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`871741.01
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`Attorney Docket No. FABO-024/00US
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`broadly define “database” as “any device which will hold data.” (’352 col. 9:45-
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`50; ’494 col. 10:18-23; see also Ex. 1233, ¶ 15.)
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`The patent owner’s claim of “prejudice” is also fatally undermined by the
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`fact that the patent owner had clear notice of this issue long before it filed its
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`Response. During Dr. Fox’s deposition that took place several weeks prior to the
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`filing of Patent Owner’s Response, Dr. Fox repeatedly pointed to the portion of the
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`specification discussing “database” and discussed the meaning of that term in
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`response to multiple questions by the patent owner’s counsel. (Exs. 2016-2017,
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`Fox Tr. (April 26-27, 2014) at 251:9-252:12, 210:24-213:8, 219:2-21, 224:9-14,
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`226:3-9, 301:22-303:6.)
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`
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`The patent owner also complains about Paragraph 202 of Dr. Fox’s reply
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`declaration, but that paragraph again merely responds to arguments made by Dr.
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`Jacobs. Dr. Jacobs opined that claim 18 is valid over the prior art because the prior
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`art allegedly fails to disclose creating a first numerical representation. (Ex. 1233, ¶
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`202 (citing Jacobs ¶ 225).) Dr. Fox responded that “there is no step recited in
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`claim 18 regarding the creation of the first numerical representation.” (Id.) Thus,
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`Dr. Fox correctly observed that “Dr. Jacobs’ opinion is directed to an unclaimed
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`871741.01
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`6
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`limitation.” (Id.)5 He did not “provid[e] a claim interpretation for claim 18,” as
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`IPR2013-00479
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`the patent owner alleges in its Motion; he merely noted that Dr. Jacobs relied on a
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`limitation that this claim does not recite. (Motion at 4; Ex. 1233, ¶ 202.) And in
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`any event, Dr. Fox was responding to Dr. Jacobs. Dr. Fox’s response was clearly
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`permissible reply evidence.
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`C. Dr. Fox Properly Responded to Dr. Jacobs On the Tapper Papers.
`The patent owner next complains that although Dr. Fox did not opine on the
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`
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`Tapper Papers in his original declaration, his reply declaration responds to Dr.
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`Jacobs’ opinions on those papers. (Motion at 5-10.) This complaint is similarly
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`baseless. Petitioners are entitled to respond to Dr. Jacobs’ testimony on how a
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`person of ordinary skill in the art would understand the Tapper papers (see Ex.
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`1233, ¶¶ 100-186, 241-267), and to submit expert testimony in support of their
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`response.6 Dr. Jacobs’ testimony about the Tapper Papers did not exist at the time
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`Petitioners filed their original Petition.
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`5 Dr. Jacobs’ misdirected opinion might have resulted from the patent owner
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`copying and pasting arguments from its Response papers in the ’352 patent case
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`into its Response papers in this ’494 patent case. (See Paper 40 at 3.)
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`6 The patent owner’s Motion cites only to paragraphs 103-186 and 241-267 of Dr.
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`Fox’s reply declaration, conspicuously omitting paragraph 102, where Dr. Fox
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`871741.01
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`The patent owner’s argument is based on the mistaken assumption that Dr.
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`
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`Fox may not opine on the Tapper Papers unless he discussed them in his original
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`declaration. (Motion at 8.) The Board has made clear, however, that “the standard
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`for determining whether a Reply is appropriate is not whether an argument
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`contained therein or evidence submitted therewith ‘could have been’ submitted in
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`the original petition.” Liberty Mutual I, CBM2012-00002, Paper 38, at 2 (P.T.A.B.
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`Sept. 3, 2013) (emphasis added). It is therefore irrelevant that Dr. Fox did not
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`opine on the Tapper Papers with the original Petition. Id. (“the mere fact that
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`Petitioner did not rely on declarations of Ms. O’Neal and Mr. Andrews in the
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`initial petition does not mean automatically that Petitioner may not rely on
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`testimony of those declarants to support its Reply”).
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`The patent owner also contends that it “has not had the opportunity to brief
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`any portion of this new testimony.” (Motion at 6.) That is both incorrect and
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`irrelevant. The patent owner had “the right to cross-examine Petitioner’s reply
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`declarant[] and then, in appropriate circumstance, request authorization to file a
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`motion for observation on cross-examination.” Liberty Mutual I, CBM2012-
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`00002, Paper 38 at 2-3. The patent owner chose not to cross-examine Dr. Fox after
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`specifically identifies and cites Dr. Jacobs’ opinions to which Dr. Fox is
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`responding. See Ex. 1233, ¶ 102.
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`871741.01
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`IPR2013-00479
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`the submission of the Petitioners’ reply. The patent owner therefore voluntarily
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`waived its right to submit written observations about Dr. Fox’s reply evidence.
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`In any event, for each item of evidence challenged in the Motion, the record
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`confirms that it falls within the scope of proper reply evidence. As in Liberty
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`Mutual I, “each section” of Dr. Fox’s reply declaration regarding the Tapper
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`Papers “first directs our attention to the testimony of [Patent Owner]’s expert . . .
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`and then presents [his] rebuttal testimony.” Liberty Mutual I, CBM2012-00002,
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`Paper 66 at 68-69.
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`
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`For example, Dr. Jacobs opined that the Tapper Papers do not disclose
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`creating a “numerical representation” of objects in a “database,” based on his
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`interpretations of those terms and of the Tapper Papers, and further opined that the
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`Tapper Papers do not disclose or suggest the use of full-text retrieval databases.
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`Dr. Fox’s reply declaration responds to those interpretations and arguments,
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`including discussion of relevant portions of the Tapper Papers. (Ex. 1233, ¶¶ 100-
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`186, 241-267.) Such responsive testimony is entirely appropriate on reply. Liberty
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`Mutual I, CBM2012-00002, Paper 66 at 68-69; Vibrant Media, IPR2013-00172,
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`Paper 50 at 42-43; Kyocera, IPR2013-00007, IPR2013-000256, Paper 51, at 34-35.
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`
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`The patent owner also complains about testimony regarding “combining the
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`Tapper Papers” (Motion at 8-9), but does not identify the testimony it objects to.
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`Petitioners do not rely on Dr. Fox’s reply testimony for a prima facie case
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`871741.01
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`regarding the Tapper Papers. In any event, the patent owner does not dispute that
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`it would have been obvious to combine the relevant teachings of the Tapper
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`Papers. (See Paper 1 (Petition) at 36-37 (“To the extent either Tapper paper were
`
`deemed not to disclose a claim limitation, it was obvious to combine them”); Paper
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`18 (Inst. Dec.) at 19 (discussing obviousness to combine); Paper 31 (PO Resp.) at
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`34-44 (Patent Owner does not dispute combinability).)
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`
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`The patent owner also complains about Dr. Fox’s opinions on “creating a
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`first numerical representation” in paragraphs 107-122 of his reply declaration.
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`(Motion at 9.) But paragraphs 107-122 directly respond to Dr. Jacobs’ testimony.
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`(Ex. 1233 ¶¶ 107-122 (quoting and then responding to Dr. Jacobs’ opinions).) The
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`patent owner objects that paragraph 109 “provides an illustration of Table 2 of
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`Tapper 1982” (Motion at 9), but neglects to mention that it responds directly to Dr.
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`Jacobs’ testimony about that same table. (Ex. 1233, ¶¶ 108-109.)7 “[I]t would be
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`unreasonable to prohibit rebuttal testimony from referring to the same figures or
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`7 Dr. Jacobs testified that Tapper 1982, including Table 2 and its surrounding
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`context on pages 146-157, does not disclose “numerically represented cases” or
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`“cases in any disclosed database.” (See Ex. 1233, ¶ 108.) In response, Dr. Fox
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`pointed out that Table 2 expressly describes how “the cases in the British database”
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`have “numbers allocated to the cases.” (Ex. 1233, ¶¶ 108-109.)
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`portions of the reference discussed by [Patent Owner]’s expert in support of its
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`patent owner response.” Liberty Mutual I, CBM2012-00002, Paper 66 at 64.
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`
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`Similarly, the patent owner complains that paragraph 114 cites to several
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`pages that the original Petition did not cite. (Motion at 9.) But paragraphs 113 and
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`114 respond to opinions raised in Dr. Jacobs’ deposition. (Ex. 1233 ¶¶ 113-114,
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`citing Jacobs Tr. 313:7-316:23, 339:3-342:6.) Dr. Jacobs’ testimony did not exist
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`at the time of the original Petition, and Dr. Fox’s reply declaration properly
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`responds to Dr. Jacobs’ opinions on what a person of skill in the art would
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`understand from the Tapper Papers. “[T]he mere fact that the Rebuttal Declaration
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`cites to evidence that was not discussed specifically in the Petition is insufficient to
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`establish the impropriety of such evidence, much less inadmissibility under the
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`Federal Rules of Evidence.” Vibrant Media, IPR2013-00172, Paper 50 at 41.
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`
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`The patent owner further asserts that Petitioners, in their original Petition for
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`’494 patent claim 18, “only quote and cite to” various pages from the Tapper
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`Papers “without any analysis regarding the relevancy of these cited portions in the
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`Tapper papers.” (Motion at 9.) This assertion is incorrect. The Petition set forth
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`extensive textual discussion and italicized analyses explaining how the cited
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`passages are relevant to the claims and also underlined particularly noteworthy
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`disclosures. (Paper 1 at 26-37.) In any event, after the patent owner elected to
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`submit extensive expert testimony discussing the Tapper Papers, the Petitioners
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`871741.01
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`were permitted to submit testimony in response. 37 C.F.R. § 42.23(b); Vibrant
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`Media, IPR2013-00172, Paper 50 at 41; Liberty Mutual I, CBM2012-00002, Paper
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`66 at 64; Kyocera, IPR2013-00007, IPR2013-000256, Paper 51 at 34-35.
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`D. Dr. Fox Properly Cites Dr. Jacobs’ Book to Rebut Dr. Jacobs’
`Opinions.
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`
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`Patent Owner moves to exclude a copy of a book edited by its expert, Dr.
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`Jacobs, and various paragraphs of Dr. Fox’s reply declaration that discuss Dr.
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`Jacobs’ book. (Motion at 10-13.) This challenge is similarly baseless. The
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`Petitioners and Dr. Fox discussed Dr. Jacobs’ book because the book directly
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`undermines Dr. Jacobs’ opinions on the knowledge of a person of ordinary skill in
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`the art and how such a person would have understood the prior art.
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`
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`The Petitioners did not rely on Dr. Jacobs’ book or Dr. Fox’s testimony
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`about that book as a new ground of invalidity, as new invalidating reference, or as
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`part of their prima facie case of obviousness. See Kyocera, IPR2013-00007,
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`IPR2013-000256, Paper 51 at 34-35 (denying motion to exclude: “The additional
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`references . . . were not presented as new challenges to the claims, but to support
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`that tapping a touch screen was well known in the art.”). The Petitioners had no
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`reason to cite that book until after the patent owner submitted testimony from Dr.
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`Jacobs that contradicted his own earlier work.
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`For example, the patent owner relied on testimony from Dr. Jacobs that it
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`was not obvious to persons of ordinary skill in the art to use indirect relationships
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`871741.01
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`Attorney Docket No. FABO-024/00US
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`IPR2013-00479
`
`
`for searching. But Dr. Jacobs’ book confirms the opposite: that using indirect
`
`relationships for searching was already known in the art. (Ex. 1030, ¶¶ 400-408
`
`(citing and discussing papers from Dr. Jacobs’ book).) Dr. Fox’s declaration at
`
`paragraphs 398-404, 406, 407, and 409 responds to Dr. Jacobs’ opinions, with
`
`paragraph 398 identifying the applicable paragraphs from Dr. Jacobs’ declaration.
`
`(See Ex. 1233, ¶ 398 et seq.) Similarly, paragraph 95 cites Dr. Jacobs’ book
`
`merely to further illustrate what was known to persons of skill in the art, not as a
`
`new basis of invalidity. Kyocera, IPR2013-00007, IPR2013-000256, Paper 51 at
`
`34-35.
`
`Patent Owner Was Free to Depose Dr. Fox, But Chose Not To.
`
`E.
`The patent owner argues that it did not have enough time to review Dr.
`
`
`
`Fox’s declaration to prepare for a deposition. (Motion at 12.) But this argument is
`
`similarly baseless. The Petitioners served their reply papers on September 5, 2014,
`
`a full three weeks before patent owner filed the present Motion and nearly two
`
`months before the oral argument scheduled for October 30, 2014. The patent
`
`owner had ample time to review Dr. Fox’s declaration. The patent owner simply
`
`made the tactical decision to seek to strike the reply evidence as being “new”
`
`instead of cross-examining Dr. Fox.
`
`871741.01
`
`13
`
`
`
`Attorney Docket No. FABO-024/00US
`(309101-2060)
`IV. THE BOARD SHOULD DENY PATENT OWNER’S REQUEST FOR A “SUR-
`REPLY.”
`
`IPR2013-00479
`
`
`
`
`
`The patent owner alternatively requests that it be granted a “sur-reply”
`
`filing. (Motion at 14.) The Board should deny this request. “[B]y standard
`
`procedure, the Petitioner has the last word with regard to the petition.” Liberty
`
`Mutual I, CBM2012-00002, Paper 38 at 2. As explained above, the patent owner’s
`
`Motion does not even attempt to demonstrate that any of Petitioners’ reply
`
`evidence was not properly responsive to the hundreds of pages of expert opinions
`
`raised in Patent Owner’s Response. To grant the patent owner a sur-reply filing
`
`would encourage every patent owner to forego cross-examining reply declarants,
`
`and instead file baseless motions to exclude as a tactical means to obtain the last
`
`word through a sur-reply brief.
`
`V. CONCLUSION.
`
`For the foregoing reasons, the patent owner’s Motion should be denied in its
`
`entirety.
`
`Dated: October 10, 2014.
`
`
`
`
`
`Respectfully submitted,
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`COOLEY LLP
`ATTN: Heidi L. Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`871741.01
`
`14
`
`
`
`Attorney Docket No. FABO-024/00US
`(309101-2060)
`
`CERTIFICATE OF SERVICE
`
`IPR2013-00479
`
`
`
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6(e), that a complete copy of the
`
`attached PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION
`TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64 is being served
`via electronic mail on the 10TH day of October, 2014, the same day as the filing of
`the above-identified document in the United States Patent and Trademark
`Office/Patent Trial and Appeal Board, upon the counsel of record for the patent
`owner as follows:
`
`Martin M. Zoltick
`Nancy J. Linck
`Soumya P. Panda
`Rothwell, Figg, Ernst & Manbeck PC
`607 14th Street, NW, Suite 800
`Washington DC 20005
`Service Email: SRA-IPR@rfem.com
`
`
`
` /
`
` Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`COOLEY LLP
`ATTN: Heidi L. Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`871741.01
`
`15
`
`
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