Case No. IPR2013-00480
`Patent No. 5,832,494
`
`Paper No. ___________
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.,
`Petitioners
`v.
`
`SOFTWARE RIGHTS ARCHIVES, LLC
`Patent Owner
`
`
`
`Case No. IPR2013-00480
`Patent No. 5,832,494
`
`
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`868079
`
`
`Patent No. 5,832,494
`
`Paper No. ___________
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`FACEBOOK, INC., LINKEDIN CORP., and TWITTER, INC.,
`Petitioners
`v.
`
`SOFTWARE RIGHTS ARCHIVES, LLC
`Patent Owner
`
`
`
`Case No. IPR2013-00480
`Patent No. 5,832,494
`
`
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`868079
`
`
`
`TABLE OF CONTENTS
`
`Case No. IPR2013-00480
`Patent No. 5,832,494
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`Page
`
`I.
`
`II.
`
`INTRODUCTION .................................................................................... 1
`
`ARGUMENT ............................................................................................ 1
`
`A.
`
`Patent Owner’s Motion to Exclude is procedurally
`improper. ......................................................................................... 1
`
`B.
`
`Patent Owner’s Motion is meritless. .............................................. 3
`
`1.
`
`2.
`
`3.
`
`4.
`
`“Selecting a Node for Analysis” .......................................... 4
`
`“Generating Candidate Cluster Links” ................................. 6
`
`“Wherein the Number of Candidate Cluster Links
`are Limited” .......................................................................... 7
`
`“Selecting the Destination Node of a Path as the
`Selected Node to Analyze” .................................................. 8
`
`C.
`
`Patent Owner has suffered no prejudice. ...................................... 10
`
`CONCLUSION ....................................................................................... 11
`
`III.
`
`
`
`
`
`i
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`
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`
`
`TABLE OF AUTHORITIES
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`Case No. IPR2013-00480
`Patent No. 5,832,494
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`Page(s)
`
`Federal Regulations
`
`37 C.F.R. § 42.23(b) .................................................................................................. 2
`Decisions of the Patent Trial and Appeal Board
`
`Corning Inc. v. DSM IP Assets, IPR2013-00047, Paper 84 (Final
`Written Decision), at 7 n.3 (P.T.A.B. May 1, 2014) ............................................ 1
`Kyocera Corp. v. Softview LLC, IPR2013-00007, IPR2013-000256,
`Paper 51 (Final Written Decision), at 34 (P.T.A.B. Mar. 27, 2014) ............ 1, 3, 9
`Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-
`00002, Paper 66 (Final Written Decision), at 62 (P.T.A.B. Jan. 23,
`2014) ................................................................................................. 1, 2, 3, 5, 7, 8
`Vibrant Media v. Gen. Elec. Co., IPR2013-00172, Paper 50 (Final
`Written Decision), at 41-42 (P.T.A.B. Jul. 28, 2014) ....................................... 1, 3
`
`
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`868079
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`
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`Case No. IPR2013-00480
`Patent No. 5,832,494
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`
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`I.
`
`INTRODUCTION
`
`The Board should deny Patent Owner’s Motion to Exclude Evidence
`
`because it is meritless. All four allegedly “new” arguments are proper reply
`
`testimony under the Board’s rules—not new at all—and Patent Owner has not been
`
`prejudiced by them. In addition, the Board should deny Patent Owner’s Motion
`
`because it is procedurally improper.
`
`II. ARGUMENT
`A.
`Patent Owner’s Motion to Exclude is procedurally improper.
`“Challenging evidence as being improper reply evidence through a motion
`
`to exclude is now disfavored. . . . A motion to exclude [on the basis of “new”
`
`evidence] may not be permitted in future cases.” Corning Inc. v. DSM IP Assets,
`
`IPR2013-00047, Paper 84 (Final Written Decision), at 7 n.3 (P.T.A.B. May 1,
`
`2014) (emphasis added). Accordingly, the Board has repeatedly denied motions to
`
`exclude where the patent owner alleged that reply evidence or a reply argument
`
`was “new,” on the ground that such motions are procedurally improper.1
`
`
`1 See, e.g., Vibrant Media v. Gen. Elec. Co., IPR2013-00172, Paper 50 (Final
`
`Written Decision), at 41-42 (P.T.A.B. Jul. 28, 2014) (denying a patent owner’s
`
`motion to exclude a declaration submitted in support of the petitioner’s reply);
`
`Kyocera Corp. v. Softview LLC, IPR2013-00007, IPR2013-000256, Paper 51
`
`
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`1
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`Patent No. 5,832,494
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`Indeed, the Board specifically warned Patent Owner against filing such a
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`motion in this case. While addressing another submission by Patent Owner, the
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`Board admonished that “[a] motion to exclude seeking to strike a reply for
`
`violating 37 C.F.R. § 42.23(b) . . . would be improper.” IPR2013-00481, Paper 41,
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`at 2 n.1 (P.T.A.B. Sept. 12, 2014). Patent Owner, however, then filed this Motion
`
`to Exclude under 37 C.F.R. § 42.23(b). See Mot. at 2. Patent Owner asserts that
`
`the Motion “is in compliance with the Board’s order,” (Mot. at 1 n.1), but does not
`
`explain how, and that assertion appears to be false. Thus, the Board should deny
`
`Patent Owner’s Motion as procedurally improper.2
`
`
`(Final Written Decision), at 34 (P.T.A.B. Mar. 27, 2014) (same); Liberty Mutual
`
`Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper 66 (Final Written
`
`Decision), at 62 (P.T.A.B. Jan. 23, 2014) (denying a patent owner’s motion to
`
`exclude publications and a declaration submitted in support of the petitioner’s
`
`reply).
`
`2 Patent Owner also requests that if the Board excludes any paragraphs in Dr. Fox’s
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`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 proceedings.
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`Mot. at 9. This request, too, is plainly improper. As explained above, there is no
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`basis to exclude any of the evidence challenged in the Motion. But even if there
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`2
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`Patent No. 5,832,494
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`Patent Owner’s Motion is meritless.
`
`B.
`As a preliminary matter, Patent Owner does not even attempt to satisfy its
`
`burden of demonstrating that the challenged evidence is unresponsive to arguments
`
`and evidence raised in Patent Owner’s response. See C.F.R. § 42.20(c); Vibrant
`
`Media, Paper 50, at 41-42. Patent Owner’s Motion ignores hundreds of pages of
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`arguments and opinions submitted in support of its own Response, to which Dr.
`
`Fox properly responded. For this reason alone, Patent Owner’s Motion must fail.
`
`See Vibrant Media, Paper 50, at 41-42.
`
`Moreover, Patent Owner could not have carried its burden of proof even if it
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`had tried because all four allegedly “new” arguments are proper reply testimony
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`under the Board’s rules. On reply, a petitioner is entitled to rebut assertions and
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`evidence raised in a patent owner’s response. Kyocera, Paper 51, at 34, 35. This
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`includes submitting evidence in support of a reply. See Corning, Paper 84, at 15
`
`(“The reader may wonder: Can evidence be submitted with a reply? The answer is
`
`‘yes.’” (citing Liberty Mutual, Paper 66, at 65)). It also includes submitting
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`rebuttal testimony that points to different portions of the prior art than those
`
`originally cited in the petition. See Liberty Mutual, Paper 66, at 68-69.
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`were, Patent Owner cites no rule authorizing the exclusion of evidence submitted
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`in other inter partes review proceedings based on a motion filed only in the present
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`case.
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`3
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`Patent No. 5,832,494
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`Here, each of the challenged portions of the Fox Reply Declaration responds
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`to issues raised in Patent Owner’s response, and is proper reply testimony.
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`Moreover, Patent Owner has not been prejudiced by these arguments in any way.
`
`1.
`
`“Selecting a Node for Analysis”
`
`In his declaration supporting the Petition, Dr. Fox applied the District
`
`Court’s construction of the claim element “selecting a node for analysis.” Ex.
`
`1009 (“Fox Decl.”) ¶ 149. Under that construction, “selecting” required
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`“identifying, by an end user, a node.” Ex. 1003 at 21. Accordingly, Dr. Fox
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`explained in his original declaration how the “user supplied query” in Fox SMART
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`satisfied the claim element under the District Court’s construction. Fox Decl. ¶
`
`159. The Board, however, rejected the District Court’s construction and instead
`
`ruled that “an express construction of selecting a node for analysis is not
`
`necessary.” Inst. Dec. at 11. Thus, on reply, Dr. Fox explained how—in light of
`
`the Board’s decision not to require a user-initiated identification—the element
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`“selecting a node for analysis” is also disclosed by the clustering algorithm
`
`discussed on page 44 of Fox SMART, whereby documents are added one by one as
`
`leaves on a multilevel clustering tree. Fox Reply Decl. ¶¶ 275-76 (citing Fox
`
`SMART at 44).
`
`This could not have come as a surprise to Patent Owner, for three reasons.
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`First, the Petition relied on the exact same evidence to disclose the very next claim
`
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`4
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`element, “generating candidate cluster links for the selected node.” Pet. at 18
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`(citing Fox SMART at 44) (emphasis added). Indeed, the Board also relied on the
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`exact same evidence for teaching “generating candidate cluster links for a selected
`
`node.” See Inst. Dec. at 17 (emphasis added). Thus, Patent Owner was well aware
`
`that Petitioners relied upon the clustering algorithm to teach “a selected node.”
`
`Second, Patent Owner’s expert, Dr. Jacobs, referred to the same discussion
`
`of clustering in Fox SMART when he opined that Fox SMART did not anticipate
`
`the claim element. See Exhibit 2113 (Declaration of Paul S. Jacobs in Support of
`
`Patent Owner’s Response) (“Jacobs Dec.”) ¶ 163 (“One of ordinary skill would
`
`certainly know . . . that the query used on p. 41 [of Fox SMART] does not relate to
`
`the clustering discussed in the next section [i.e., Section 4.4 discussing the
`
`clustering tree].”). Thus, it is entirely proper for Dr. Fox to also comment on that
`
`portion of Fox SMART. Indeed, as the Board has explained, “it would be
`
`unreasonable to prohibit rebuttal testimony from referring to the same figures or
`
`portions of the reference discussed by [a patent owner’s] expert in support of [the]
`
`patent owner response.” Liberty Mutual, Paper 66, at 64.
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`Third, and perhaps most important, Dr. Fox testified about these same
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`disclosures in direct response to questions Patent Owner’s counsel asked him
`
`during cross examination, weeks before Patent Owner filed its Response. Patent
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`Owner’s counsel asked Dr. Fox where “in [page] 44” Fox SMART disclosed
`
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`5
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`Patent No. 5,832,494
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`selecting a node for analysis, and Dr. Fox responded that that page describes
`
`adding new documents to the cluster tree, which involves selecting a node for
`
`analysis. See Ex. 2017 at 436:23-437:1, 440:5-442:7. Patent Owner never
`
`objected to that testimony. Thus, Patent Owner cannot claim now that it had no
`
`opportunity to address these disclosures in its Response.
`
`In sum, Dr. Fox’s explanation is entirely proper reply testimony, and was
`
`also fully disclosed to Patent Owner before it filed its Response.3
`
`2.
`
`“Generating Candidate Cluster Links”
`
`In his declaration, Dr. Jacobs asserts that “nothing alleged in the Petition to
`
`be candidate cluster links can be generated candidate cluster links as claimed.”
`
`Jacobs Decl. ¶¶ 134, 140-41, 143. In particular, he asserts that “the algorithm
`
`[described in Fox SMART] uses ‘the overall similarity between documents’ only
`
`when splitting ‘overly large nodes.’” Jacobs Decl. ¶ 134 (citing Fox SMART at
`
`47, 49-52).
`
`On reply, Dr. Fox explains that these pairwise similarity values, which are
`
`generated each time a cluster is split, constitute candidate cluster links. See Fox
`
`Reply Decl. ¶¶ 277, 279. Dr. Fox also responds to Dr. Jacobs’ assertion that
`
`“Petitioners misunderstand the nuances of the Williamson-like heuristic clustering
`
`3 As discussed below, Patent Owner also had the opportunity to cross examine Dr.
`
`Fox again after he filed his Reply Declaration, but chose not to do so.
`
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`6
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`Patent No. 5,832,494
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`method described in Fox SMART” by pointing out that among the “nuances” of
`
`the clustering method is the fact that clustering a new large collection necessarily
`
`involves repeated splitting of nodes. Id. ¶ 279 n.3. Thus, Dr. Fox rebuts Dr.
`
`Jacobs’ assertion. Again, this is entirely proper. See Liberty Mutual, Paper 66, at
`
`66, 68-69; id. at 64 (“[I]t would be unreasonable to prohibit rebuttal testimony
`
`from referring to the same figures or portions of the reference discussed by [a
`
`patent owner’s] expert in support of [the] patent owner response.”).
`
`Moreover, Dr. Fox testified about this disclosure on cross examination as
`
`well, and clearly explained that each pairwise similarity value generated in a
`
`splitting operation constitutes a candidate cluster link. See Ex. 2017 at 438:17-
`
`439:16. 450:4-453:3, 518:13-529:1. Thus, this testimony, too, is not only proper
`
`on reply, but was fully disclosed to Patent Owner before it filed its Response.
`
`3.
`
`“Wherein the Number of Candidate Cluster Links are Limited”
`
`To support his contention that Fox SMART does not teach a “numerical
`
`limit” on cluster links, Dr. Jacobs refers to paragraphs 91-100 of his declaration.
`
`See Jacobs Decl. ¶ 182 (citing ¶¶ 91-100). In those paragraphs, he cites Table 2 on
`
`page 45 of Fox SMART, and examines two of the clustering parameters described
`
`in that table. Id. ¶ 91 (quoting Fox SMART at 45 and discussing the
`
`“concentration” and “definition” tests). However, Dr. Jacobs ignores another
`
`clustering parameter in Table 2—“DIVIDE”—which is described as “max no. of
`
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`7
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`Patent No. 5,832,494
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`kids before split is forced (e.g., 20).” See Fox SMART at 45; Jacobs Decl. ¶ 91-
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`100.
`
`On reply, Dr. Fox explains that the DIVIDE parameter ignored by Dr.
`
`Jacobs discloses a numerical limit on cluster links, and accordingly, that Dr. Jacobs
`
`is incorrect when he asserts that “[t]here is nothing in Fox SMART . . . that shows
`
`that ‘the number of candidate cluster links are limited.’” See Fox Reply Decl. ¶
`
`286; Jacobs Decl. ¶ 181. Again, this is proper reply testimony. See Liberty
`
`Mutual, Paper 66, at 64, 66, 68-69.
`
`Moreover, Dr. Fox testified about this disclosure as well on cross-
`
`examination. Patent Owner’s counsel directed Dr. Fox to page 45 of Fox SMART,
`
`and Dr. Fox testified that, according to the splitting operations disclosed in Fox
`
`SMART, clusters are split once they reach a certain numerical limit—in the
`
`hypothetical example Dr. Fox addressed, the numerical limit was “20.” See Ex.
`
`2017 at 453:4-21, 522:1-2. Indeed, Patent Owner’s counsel expressly
`
`acknowledged those numerical limits in his questions. See id. at 453:7-9. Thus,
`
`this testimony, too, is both proper on reply and also was disclosed to Patent Owner
`
`before it filed its Response.
`
`4.
`
`“Selecting the Destination Node of a Path as the Selected Node to
`Analyze”
`
`In his declaration, Dr. Jacobs admits that “[f]or the CACM collection, . . .
`
`the document that is the ‘subject’ of a co-citation relationship, i.e., a document that
`
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`Case No. IPR2013-00480
`Patent No. 5,832,494
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`has a co-citation relationship with some other document, can indeed be viewed as
`
`the destination node of a path.” Jacobs Decl. ¶ 205. Dr. Jacobs opines, however,
`
`that this teaching in Fox Thesis is insufficient because “Fox Thesis does not
`
`discuss selecting the subject of a co-citation relationship . . . to retrieve and
`
`determine other relationships.” Id.
`
`In his reply declaration, Dr. Fox rebuts this statement by pointing to pages
`
`170 to 171 of Fox Thesis, which describe a process for selecting a document and
`
`determining “other relationships”—namely, “linkage, bibliographic coupling, and
`
`co-citation measures”—between “that document and any other document.” Fox
`
`Reply Decl. ¶ 290 (quoting Exhibit 1008 (Fox Thesis) at 170-71). Thus, Dr. Fox
`
`directs the Board to the portions of Fox Thesis that Dr. Jacobs failed to mention
`
`and that disprove his contention. This, again, is proper reply evidence. See
`
`Kyocera, Paper 51, at 34, 35 (holding that the petitioner was entitled to respond to
`
`the patent owner’s assertions concerning prior-art references); Liberty Mutual,
`
`Paper 66, at 68-69 (holding that the petitioner was entitled to point to different
`
`portions of the prior art than those cited in the petition in order to address issues
`
`raised in the patent owner’s response).
`
`In sum, each of the challenged portions of Dr. Fox’s reply declaration
`
`properly responds to Dr. Jacobs’s assertions. Accordingly, even if Patent Owner’s
`
`
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`9
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`Case No. IPR2013-00480
`Patent No. 5,832,494
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`Motion were procedurally proper (which it is not), there is no basis to exclude any
`
`portion of Dr. Fox’s declaration.
`
`Patent Owner has suffered no prejudice.
`
`C.
`The Board should also deny Patent Owner’s Motion because Patent Owner
`
`has suffered no prejudice. As set forth above, most of Dr. Fox’s allegedly “new”
`
`testimony was presented on cross examination—and in response to Patent Owner’s
`
`own questions—before Patent Owner filed its Response. Moreover, Patent Owner
`
`chose to waive further cross examination of Dr. Fox (presumably because it had
`
`already questioned him about these matters). Having done so, Patent Owner
`
`should not be heard to complain that it was prevented from challenging his
`
`opinions. Patent Owner’s claim that cross examination would be impossible “due
`
`to the difficulty of preparing for cross-examination” (Mot. at 8) is baseless. Its
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`Motion addresses only four discrete pieces of testimony, and Dr. Fox’s entire reply
`
`declaration addressing proceeding IPR2013-00480 spans a mere fifteen pages.4
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`Finally, to the extent the Board has any questions about these issues, Patent Owner
`
`
`4 For the Board’s convenience, Petitioners filed a single Fox Reply Declaration in
`
`all four related proceedings (IPR2013-00478, IPR2013-00479, IPR2013-00480,
`
`and IPR2013-00481). Thus, Dr. Fox’s 267-page reply declaration responds to all
`
`four of Dr. Jacobs’ declarations, which together total 733 pages.
`
`
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`10
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`
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`may respond to them at the October 30 hearing. (See Paper 46 at 2, allotting 90
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`Case No. IPR2013-00480
`Patent No. 5,832,494
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`minutes of oral argument to each side).
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`III. CONCLUSION
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`For the foregoing reasons, the Board should deny Patent Owner’s Motion to
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`Exclude.
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`
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`DATED: October 10, 2014
`
`Respectfully submitted,
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Registration No. 40,673
`Counsel for Petitioners
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`11
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`Case No. IPR2013-00480
`Patent No. 5,832,494
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTIION TO
`
`EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64 together with all
`
`exhibits and other papers filed therewith was served by electronic mail on October
`
`10, 2014 directed to the attorneys of record at the following addresses:
`
`Attorneys for Patent Owner
`Software Rights Archive, LLC
`
`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
`Registration No. 40,673
`Counsel for Petitioners
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
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