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` Filed: September 26, 2014
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`Filed on behalf of: Software Rights Archive, LLC Paper ____
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`
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`By: Martin M. Zoltick, Lead Counsel
`Nancy J. Linck, Back-up Counsel
`Soumya P. Panda, Back-up Counsel
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Telephone: 202-783-6040
`Facsimile: 202-783-6031
`E-mail: mzoltick@rfem.com
` nlinck@rfem.com
` spanda@rfem.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.
`Petitioners
`
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC
`Patent Owner
`_______________
`
`Case IPR2013-00480
`Patent 5,832,494
`_______________
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`TABLE OF CONTENTS
`
`Contents
`I.
`Introduction .................................................................................................... 1
`II. Legal Standard ............................................................................................... 1
`III. Fox Reply Declaration (Ex. 1028) ................................................................ 2
`IV. Identical Reply Declarations in Corresponding Inter Partes Review
`Proceedings ............................................................................................................ 9
`V. Conclusion ..................................................................................................... 9
`
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Corning Incorporated v. DSM IP Assets B.V.,
`IPR2013-00047 (PTAB May 1, 2014) ................................................................... 3
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`CBM2012-00002 (PTAB January 23, 2014) ......................................................... 1
`The Scotts Company LLC v. Encap, LLC ,
`IPR2013-00110 (PTAB June 24, 2014) ................................................................. 3
`Rules
`
`37 C.F.R. § 42.23(b) ..............................................................................................2, 3
`
`
`
`
`
`
`ii
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`
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`
`
`I.
`
`Introduction
`
`Patent Owner seeks to exclude evidence submitted in support of Petitioners’
`
`reply (Paper No. 40), filed on September 5, 2014. Particularly, Petitioner’s reply
`
`was accompanied with a 267 page reply declaration (Ex. 1028) that presents
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`evidence and/or arguments for the first time. Admission of this evidence unduly
`
`prejudices Patent Owner since the statute (35 U.S.C.) and rules (37 C.F.R. 42) do
`
`not permit Patent Owner to submit a reply rebutting this inadmissible evidence.1
`
`II. Legal Standard
`A motion to exclude evidence must explain why the cited evidence is not
`
`admissible. Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`
`CBM2012-00002, paper 66, at 61 (PTAB January 23, 2014) (citing 77 Fed. Reg.
`
`48765, 48767 (Aug. 14, 2012)). The motion to exclude evidence must also: (a)
`
`identify where in the record the objection originally was made; (b) identify where
`
`in the record the evidence sought to be excluded was relied upon by an opponent;
`
`(c) address objections to Exhibits in numerical order; and (d) explain each
`
`objection. Id.
`
`
`1 Patent Owner’s Motion to Exclude is in compliance with the Board’s order
`
`clarifying that a motion to exclude that seeks to strike a reply would be improper.
`
`IPR2013-00481, Paper 41, at FN 1 (September 12, 2014).
`
`
`
`1
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`
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`Furthermore, under 37 C.F.R. § 42.23(b), a “reply may only respond to
`
`arguments raised in the … patent owner response.” The accompanying comments
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`clarify that“[r]eply evidence … must be responsive and not merely new evidence
`
`that could have been presented earlier to support the movant’s motion.” 77 Fed.
`
`Reg. 48612, 48620 (Aug. 14, 2012). Additionally, indications of new evidence
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`include “evidence necessary to make out a prima facie case of patentability …, and
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`… evidence that could have been presented in a prior filing.” Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48767 (August 14, 2012).
`
`III. Fox Reply Declaration (Ex. 1028)
`In reply to Patent Owner’s response to the petition (Paper No. 31),
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`Petitioners submitted the reply declaration of Edward Fox, Ph.D. (Ex.
`
`1028)(hereinafter “Reply Dec.”). Patent Owner timely served on September 12,
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`2014 the following objections on Petitioners for Ex. 1028:2
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`Evidence Submitted by
`Petitioners
`Exhibit 1028 (Fox Reply
`Declaration)
`
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`Patent Owner’s Objections
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`Paragraphs 269, 272, 273, 275-276, 278-281, 285,
`286, 288, 290, 292, 293, 296-299 -- new
`
`2 Patent Owner is providing the objections made of record, but is not seeking
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`exclusion of each paragraph of the Reply Dec. to which an objection was made.
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`The particular paragraphs of the Reply Dec. that Patent Owner seeks to exclude are
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`stated in more detail below.
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`
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`2
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`
`
`Evidence Submitted by
`Petitioners
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`
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`Patent Owner’s Objections
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`argument/new evidence (37 C.F.R. § 42.23(b);
`Office Patent Trial Practice Guide 77 Fed. Reg.
`48,756, 48,767) -- to the extent that these
`paragraphs include testimony that belatedly
`present new arguments for establishing a prima
`facie case. See also The Scotts Company LLC v.
`Encap, LLC , IPR2013-00110, paper 79, at 7,
`(PTAB June 24, 2014)(noting that declaration
`testimony that could have previously been
`submitted is not proper rebuttal testimony);
`Corning Incorporated v. DSM IP Assets B.V.,
`IPR2013-00047, Paper 84, at 18 (PTAB May 1,
`2014)(noting that new evidence, and arguments
`based thereon, that respond to more than
`arguments made in a response effectively restarts
`the case).
`
`Paragraphs 1-268 and 301-439 -- non-responsive
`argument (37 C.F.R. § 42.23 (b))-- to the extent
`that these paragraphs include testimony that is
`non-responsive to Patent Owner’s response
`(Paper No. 31)
`
`Paragraphs 1-268 and 301-439 -- lack of
`relevance (FRE 401) -- to the extent these
`paragraphs are irrelevant to Patent Owner’s
`response (Paper No. 31)
`
`Paragraphs 282, 290, 292, 293, 296, 298-300 --
`lack of relevance (FRE 401) -- to the extent these
`paragraphs are unused in Petitioner’s reply (Paper
`No. 40).
`
`Paragraphs 2-439 -- inadmissible expert witness
`testimony (FRE 702) -- to the extent these
`paragraphs tend not to help understand the
`evidence, is not based on sufficient facts or data,
`or is the product of reliable principles and
`3
`
`
`
`Evidence Submitted by
`Petitioners
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`methods.
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`
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`Patent Owner’s Objections
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`1.
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`New argument on “selecting a node for analysis” (claim 1)
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`Patent Owner requests the Board to exclude paragraphs 275 and 276 of the
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`Reply Dec. for presenting a new argument regarding recited feature of “selecting a
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`node for analysis,” as recited in claim 1 of the ‘494 Patent. In the Petition,
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`Petitioners only cite to the “user supplied query,” as described in Fox SMART (Ex.
`
`1005) at pages 36-38. (Petition at 18). The Petition further cites to ¶ 159 of the
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`Fox Decl. (Ex. 1009), which merely describes the “user supplied query” of pages
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`36-38 of Fox Smart. However, in the Reply Dec. at ¶¶ 275-276, there is no cite to
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`pages 36-38 of Fox SMART. Instead, Dr. Fox takes a completely new position on
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`Fox SMART with respect to the recited feature of “selecting a node for analysis”
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`by citing to Fox SMART at section 4.4.4 and page 44. In this regard, instead of
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`explaining why the “user supplied query” meets the claimed feature of “selecting a
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`node for analysis,” Dr. Fox is now contending that this claimed feature is taught by
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`the selection of a document “for addition to the cluster tree.” Ex. 1233 at ¶ 276.
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`Patent Owner is unduly prejudiced by Petitioner’s belatedly presented
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`arguments regarding “selecting a node for analysis.” Prior to filing the Petition,
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`Petitioners had the opportunity to analyze Fox SMART with respect to the claims
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`of the ‘494 patent. However, Petitioners elected to identify the “user supplied
`
`
`
`4
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`
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`query” feature of Fox SMART for teaching “selecting a node for analysis.” As
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`such, since Patent Owner could only respond to the arguments in the Petition and
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`have had no opportunity to brief these new arguments, Patent Owner is unduly
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`prejudiced by these new arguments and requests the Board to exclude them.
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`Additionally, paragraphs 275-276 do not refer explain or rebut any portion
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`of Patent Owner’s response (Paper 29) or Dr. Jacob’s declaration (Ex. 2113). As
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`such, paragraphs 275-276 are non-responsive and therefore, should be excluded for
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`these additional reasons.
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`2.
`
`New argument on “generating candidate cluster links”
`(claim 1)
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`Patent Owner requests the Board to exclude paragraph 279 of the Reply Dec.
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`for presenting a new argument regarding recited feature of “generating a candidate
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`cluster link,” as recited in claim 1 of the ‘494 Patent. In the Petition, Petitioners
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`merely cite and quote Fox Smart at 31, 32, 44, and 46 without any explanation.
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`Petitioners further cite to Fox Decl. (Ex. 1009) at ¶¶’s 160-161. However,
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`paragraph 279 of the Reply Dec. also cites to Fox Smart at 49-50, and includes
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`testimony not included in Fox Decl. at ¶¶’s 160-161. For example, Dr. Fox
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`testifies, for the first time, that (i) “[e]ach pairwise similarity value is a candidate
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`cluster link,” and (ii) “‘candidate clusters’ also comprise candidate cluster links.”
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`5
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`This testimony is not included in the Fox Decl. Instead, after reviewing
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`Patent Owner’s response and Dr. Jacob’s Declaration , it appears that Petitioner’s
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`expert realized the deficiencies of both the Petition and Fox Decl. and subsequently
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`added the testimony in ¶ 279. Thus, the Board should exclude these arguments
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`since the Petitioners could have submitted a declaration with these arguments when
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`filing the Petition. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48767.
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`Additionally, since paragraph ¶ 279 does not explain or rebut any portion of Patent
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`Owner’s response (Paper 29) or Dr. Jacob’s declaration (Ex. 2113), this testimony
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`is non-responsive and therefore, should be excluded for these additional reasons.
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`3.
`
`New argument on “wherein the number of candidate cluster
`links are limited” (claim 5)
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`Patent Owner requests the Board to exclude paragraph 286 of the Reply Dec.
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`for presenting a new argument regarding the recited feature of “wherein the
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`number of candidate cluster links are limited,” as recited in claim 5. The Petition
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`only cites and quotes Fox SMART at 49, 51, and 53, and cites to Fox Decl. at ¶
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`165. (Petition at 20). Fox Decl. at ¶ 165 describes the teachings of Fox SMART at
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`53-54, but provides no explanation regarding how Fox SMART teaches the
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`claimed feature of “wherein the number of cluster links are limited.” Instead, in
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`the Reply Dec. at 286, Dr. Fox for the first time for claim 5 cites to Fox SMART at
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`45 and testifies that “Fox SMART also teaches a numerical limit on the candidate
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`
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`6
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`
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`links, where, “in a splitting operation, the number of candidate links for each node
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`will be limited by the maximum number of nodes allowed in the cluster being
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`split.”
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`Again, after reading Patent Owner’s response and Dr. Jacob’s declaration, it
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`appears that Petitioner’s expert realized the deficiencies of the Petition and Fox
`
`Decl. and subsequently added the testimony in paragraph 286 of the Reply Dec.
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`However, as indicated above, since Patent Owner could only respond to the
`
`arguments in the Petition and have had no opportunity to brief these new
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`arguments, Patent Owner is unduly prejudiced by these new arguments and
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`requests the Board to exclude them. Additionally, since paragraph 286 does not
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`explain or rebut any portion of Patent Owner’s response or Dr. Jacob’s declaration,
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`this testimony is non-responsive and therefore, should be excluded for these
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`additional reasons.
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`4.
`
`New argument on “selecting the destination node of a path
`as the selected node to analyze” (claim 14)
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`Patent Owner requests the Board to exclude paragraph 290 of the Reply Dec.
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`for presenting a new argument regarding recited feature of “selecting the
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`destination node of a path as the selected noted to analyze,” as recited in claim 14
`
`of the ‘494 Patent. In the Petition, the Petitioners cite to a “feedback query Q”
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`feature as described in Fox Thesis at 237, and also cite to ¶ 159 of the Fox Decl.
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`(Petition at 12, 15). Fox Decl. at ¶ 159 merely describes the “feedback query Q”
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`7
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`
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`feature. However, in paragraph 90 of the Reply Dec., Dr. Fox cites to Fox Thesis
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`at 170-171 instead of 237, and testifies that “Fox Thesis discloses selecting nodes
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`for analysis, to construct the bc and cc subvectors for that node.” Thus, Dr. Fox
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`takes a completely new position on Fox Thesis with respect to the recited feature
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`of “selecting the destination node of a path as the selected noted to analyze,” as
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`recited in claim 14 of the ‘494 Patent.
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`Again, since Patent Owner could only respond to the arguments in the
`
`Petition and have had no opportunity to brief these new arguments, Patent Owner
`
`is unduly prejudiced by these new arguments and requests the Board to exclude
`
`them. Additionally, since paragraph ¶ 290 of the Reply Dec. does not explain or
`
`rebut any portion of Patent Owner’s response (Paper 29) or Dr. Jacob’s declaration
`
`(Ex. 2113), this testimony is non-responsive and therefore, should be excluded for
`
`these additional reasons.
`
`5. Oral Argument and Cross Examination Insufficient to
`Address New Arguments
`
`As explained above, the Reply Dec. is replete with new arguments and
`
`evidence. Although Patent Owner acknowledges the opportunity to address these
`
`issues during oral hearing, Patent Owner clearly cannot address all the violations
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`committed in the 267 page Reply Dec. Additionally, Patent Owner submits that
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`cross-examination of Dr. Fox would not be possible due to the difficulty of
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`preparing for a cross examination, and having Patent Owner’s expert analyze the
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`
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`8
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`
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`complex 267 page Reply Dec., within such a short period of time. Accordingly,
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`the failure to strike at least the portions of the Reply Dec. discussed above would
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`encourage future Petitioners to file equally egregious reply declarations in an
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`attempt to unduly prejudice Patent Owner during oral argument and Patent
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`Owner’s ability to conduct a proper cross examination.
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`IV.
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`Identical Reply Declarations in Corresponding Inter Partes Review
`Proceedings
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`Petitioners filed identical reply declarations in IPR2013-00478 (Ex. 1030)
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`IPR2013-00479 (Ex. 1233), and IPR2013-00481 (Ex. 1032). Should the Board
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`decide to exclude any paragraph in the present Reply Dec. (Ex. 1028), Patent
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`Owner requests the Board to exclude the identical paragraphs in the reply
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`declarations submitted in the corresponding inter partes review proceedings.
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`V. Conclusion
`For at least the foregoing reasons, Patent Owner, respectfully requests that
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`the Board grant this Motion to Exclude, or grant Patent Owner to file a sur-reply to
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`address the new arguments/evidence discussed above.
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`9
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`Respectfully submitted,
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`Date: September 26, 2014
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`By:
`
`/s/ Soumya P. Panda
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`Martin M. Zoltick, Reg. No. 35,745
`Nancy J. Linck, Reg. No. 31,920
`Soumya P. Panda, Reg. No. 60,447
`ROTHWELL, FIGG, ERNST &
`MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`
`Attorneys for Patent Owner
`Software Rights Archive, LLC
`
`10
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 26th day of September, 2014, a true and correct
`
`Case IPR2013-00480
`
`
`
`
`
`copy of the foregoing PATENT OWNER’S MOTION TO EXCLUDE
`
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64was served by electronic mail,
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`upon the following lead, backup and pro hac vice counsel of record for Petitioners
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`Facebook, Inc., LinkedIn Corp. and Twitter, Inc.:
`
`Heidi L. Keefe – Lead Counsel for all Petitioners
`Cooley LLP
`1299 Pennsylvania Ave., N.W., Suite 700
`Washington, DC 20004
`Ph: 650-843-5001
`Fx: 650-849-7400
`E-mails: hkeefe@cooley.com
`
`Mark R. Weinstein – Backup Counsel for Facebook, Inc.
`Cooley LLP
`1299 Pennsylvania Ave., N.W., Suite 700
`Washington, DC 20004
`Ph: 650-843-5007
`Fx: 650-849-7400
`E-mail: mweinstein@cooley.com
`
`David Silbert – Backup Counsel for LinkedIn Corp. and Twitter, Inc.
`Keker & Van Nest LLP
`633 Battery Street
`San Francisco, CA 94111
`Ph: 415-391-5400
`Fx: 415-397-7188
`E-mail: djs@kvn.com
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`Case IPR2013-00480
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`Asim M. Bhansali – Pro Hac Vice Counsel for LinkedIn Corp. and Twitter, Inc.
`Keker & Van Nest LLP
`633 Battery Street
`San Francisco, CA 94111
`Ph: 415-391-5400
`Fx: 415-397-7188
`E-mail: abhansali@kvn.com
`
`Sharif E. Jacobs – Pro Hac Vice Counsel for LinkedIn Corp. and Twitter, Inc.
`Keker & Van Nest LLP
`633 Battery Street
`San Francisco, CA 94111
`Ph: 415-391-5400
`Fx: 415-397-7188
`E-mail: sjacob@kvn.com
`
`David J. Silbert – Pro Hac Vice Counsel for LinkedIn Corp. and Twitter, Inc.
`Keker & Van Nest LLP
`633 Battery Street
`San Francisco, CA 94111
`Ph: 415-391-5400
`Fx: 415-397-7188
`E-mail: dsilbert@kvn.com
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`/s/ Erik van Leeuwen
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
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