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` Filed: October 17, 2014
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`Filed on behalf of: Software Rights Archive, LLC Paper ____
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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
`_______________
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`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 REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`TABLE OF CONTENTS
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`Case IPR2013-00480
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`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`CROSS-EXAMINATION INADEQUATE ......................................... 1
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`II.
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`PATENT OWNER’S MOTION TO EXCLUDE IS
`PROCEDURALLY PROPER ............................................................... 2
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`III.
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`PATENT OWNER HAS MET REQUIRED BURDEN OF PROOF .. 3
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`IV. DR. FOX’S TESTIMONY PRESENTS NEW ARGUMENTS ........... 4
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`1.
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`2.
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`3.
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`4.
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`New argument on “selecting a node for analysis” (claim 1) .... 4
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`New argument on “generating candidate cluster links” ........... 4
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`New argument on “number of candidate cluster links are
`limited” (claim 5) ...................................................................... 5
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`New argument on “selecting the destination” (claim 14) ......... 5
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`i
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`TABLE OF AUTHORITIES
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`Case IPR2013-00480
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`Cases
`Scotts Co., LLC v. Encap LLC,
`IPR2013-00110 (PTAB June 24, 2014) ........................................................ 2, 3, 4
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`
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`Regulations
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`37 C.F.R. § 42.23(b) ......................................................................................... 2, 3, 5
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`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (August 14, 2012) .................................................................. 4
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`
`
`ii
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`
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`I.
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`Cross-Examination Inadequate
`Petitioners contend that Patent Owner had the opportunity to cross-examine
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`Case IPR2013-00480
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`Dr. Fox regarding his testimony in the Fox Reply Declaration (Ex. 1028)
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`(hereinafter “Reply Dec.”). However, Petitioners’ strategy of presenting expert
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`testimony that changes positions, or explains its reasoning for its position for the
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`first time on the reply brief, is highly prejudicial and clearly circumvents the rules
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`set up for Patent Owner to adequately cross-examine Petitioners’ declarant.
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`Primarily, as noted in Patent Owner’s Motion to Exclude (Paper 44),
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`Petitioners have changed their position regarding the claimed feature of “selecting
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`a node,” and presented for the first time, expert testimony regarding why similarity
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`values and other information constitute a candidate cluster link and otherwise
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`meets the elements of the claim. Paper 45 at 4-7. Now, after Patent Owner has
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`submitted its response with no further opportunity to submit additional evidence,
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`let alone expert testimony, Petitioners have, to their own benefit, submitted expert
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`testimony changing their positions and explaining their positions for the first time.
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`Patent Owner submits that cross examination of Dr. Fox is insufficient since Patent
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`Owner is merely limited to single paragraph observations without any recourse to
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`submit any rebuttal expert testimony.
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` Such tactics are highly prejudicial to Patent Owner and would encourage
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`future petitioners to follow the same tactics if Patent Owner is not granted the
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`requested relief. In other words, Petitioner’s tactics present the worst possible
`1
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`scenario where any petitioner can (i) file a petition with a complete absence of
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`Case IPR2013-00480
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`expert testimony on a particular position, and after filing of the patent owner
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`response, (ii) submit voluminous expert testimony with new positions and new
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`explanations that Patent Owner is unable to countervail with its own expert. If
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`exclusion or a Reply brief is not appropriate under the circumstances where new
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`arguments are presented, it would essentially create a procedural vehicle that
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`allows Petitioners to completely shield their experts from any expert scrutiny of
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`their opinions. Such tactics must be discouraged.1
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`II.
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`Patent Owner’s Motion to Exclude is Procedurally Proper
`The Petitioner’s contend that (i) “[t]he Board has repeatedly “denied
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`motions to exclude where the patent owner alleged that reply evidence or a reply
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`argument was ‘new,’” and (ii) the Board warned the Patent Owner not to file a
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`motion to exclude alleging new evidence. (Paper No. 45 at 2, 3). It is respectfully
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`submitted that Patent Owner is entitled to submit a motion to exclude the Reply
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`Dec. In a response to Petitioner’s email, the Board noted that “[a] motion to
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`exclude seeking to strike a reply for violating 37 C.F.R. § 42.23(b) … would be
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`improper.” IPR2013-00481, Paper 41, at 2 n.1 (PTAB Sept. 12, 2014)(emphasis
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`added). Consistent with the Board’s guidance, Patent Owner’s Motion to Exclude
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`does not request to strike any portion of Petitioners’ reply.
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`1 Due to these egregious violations, Patent Owner submits that it should be granted
`relief to submit its own reply declaration in response to Dr. Fox’s Reply Dec.
`2
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`Case IPR2013-00480
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`Instead, based on an objection under 37 C.F.R. § 42.23(b), Patent Owner
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`requests the Board to strike specific portions of the testimony in the Reply Dec. A
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`motion to exclude for striking expert testimony under 37 C.F.R. § 42.23(b) is
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`proper. See Scotts Co., LLC v. Encap LLC, IPR2013-00110, Paper 79, at 7 (PTAB
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`June 24, 2014). For example, in Scotts Co., LLC v. Encap LLC, the Petitioner
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`submitted a motion to exclude expert testimony based on an objection under 37
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`C.F.R. § 42.23(b). Scotts Co., LLC, IPR2013-00110, Paper 52, at 8 and 12. The
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`Board granted the motion to exclude in-part noting that (i) “it is clear that the
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`majority of the … [expert testimony] is in support of … [Patent Owner’s] Motion
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`to Amend rather than in rebuttal to … [Petitioner’s] Opposition,” and (ii) the
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`expert testimony included material that “could have been submitted with … [Patent
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`Owner’s] Motion to Amend,” and is therefore, improper Scotts Co., LLC,
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`IPR2013-00110, Paper 79, at 7.
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`III. Patent Owner Has Met Required Burden of Proof
`Petitioners contend that Patent Owner did not meet its burden of proof
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`because Patent Owner did not discuss arguments presented in the Patent Owner
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`Response. While some paragraphs of the Reply Dec. cite to Dr. Jacob’s Expert
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`Declaration, Patent Owner’s Motion to Exclude identified portions of the Reply
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`Dec. that (i) show a change in Petitioners’ arguments and (ii) could have been
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`submitted with the Petition (Paper 1). This expert testimony is precisely the type
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`of expert testimony the Board excluded in Scott LLC. See Scotts Co., LLC,
`3
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`IPR2013-00110, Paper 79, at 7; see also Office Patent Trial Practice Guide, 77
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`Case IPR2013-00480
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`Fed. Reg. 48756, 48767 (August 14, 2012)(noting that evidence for establishing
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`prima facie case and evidence that could have been previously presented is
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`improper).
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`IV. Dr. Fox’s Testimony Presents New Arguments
`1.
`New argument on “selecting a node for analysis” (claim 1)
`Petitioners contend that the testimony in paragraphs 275 and 276 is “in light
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`of the Board’s decision not to require a user-initiated identification.” Paper 45 at
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`4. However, Patent Owner notes that paragraphs 275 and 276 of the Reply Dec. do
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`not cite to the Board’s Institution Decision (Paper 17). In fact, paragraphs 275 and
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`276 do not cite to Patent Owner’s Response (Paper 31), Dr. Jacob’s declaration
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`(Ex. 2113), or the deposition testimony of Dr. Jacobs (Exs. 1029 and 1030). Thus,
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`Dr. Fox’s testimony regarding the claimed feature of “selecting a node for
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`analysis” is a new argument that is entirely non-responsive. Accordingly, this
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`testimony should be excluded.
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`2.
`New argument on “generating candidate cluster links”
`As discussed in Patent Owner’s motion to exclude, the testimony in
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`paragraph 279 of the Reply Dec. was not included in the Petition (Paper 2) or Dr.
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`Fox’s original declaration (Ex. 1009). Petitioners contend that this testimony is
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`responsive to Dr. Jacob’s declaration (Ex. 2113) at ¶¶’s 134, 140-41, and 143.
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`Patent Owner acknowledges that paragraph 277 cites to Dr. Jacob’s declaration.
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`However, paragraph 279 is devoid of any explanation regarding which portion of
`4
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`Dr. Jacob’s declaration that Dr. Fox is rebutting. Furthermore, Petitioners contend
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`Case IPR2013-00480
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`that this testimony is proper because Dr. Fox testified about this disclosure on
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`cross examination. Even assuming arguendo that Dr. Fox made similar statements
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`during cross examination, Dr. Fox’s rebuttal testimony must be responsive to the
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`Patent Owner Response instead of supplementing cross-examination testimony.
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`See 37 C.F.R. § 42.23(b). Accordingly, paragraph 279 of the Reply Dec. should be
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`excluded.
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`3.
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`New argument on “number of candidate cluster links are limited”
`(claim 5)
`Petitioners contend that Dr. Fox’s testimony at paragraph 286 is in response
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`to Dr. Jacob’s declaration (Ex. 2113) at ¶¶’s 91-100. However, Dr. Fox’s
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`testimony at paragraph 286 does not cite to any portion of the Patent Owner
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`Response or Dr. Jacob’s declaration. That is, this testimony presents a new
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`argument that is entirely non-responsive.
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`4.
`New argument on “selecting the destination” (claim 14)
`Petitioners contend that paragraph 290 is responsive to ¶ 205 of Dr. Jacob’s
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`declaration. Although paragraph 289 of cited to Dr. Jacob’s declaration, paragraph
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`290 is devoid any discussion of any particular portion of the Patent Owner
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`response or Dr. Jacob’s declaration that Dr. Fox is rebutting. As such, this
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`testimony is non response and should be excluded.
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`5
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`Date: October 17, 2014
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`
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`By:
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`Case IPR2013-00480
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`Respectfully submitted,
`/Soumya P. Panda/
`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
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 17th day of October, 2014, a true and correct
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`Case IPR2013-00480
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`copy of the foregoing PATENT OWNER’S REPLY TO PETITIONER’S
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`was served by electronic mail, upon the following lead, backup and pro hac vice
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`counsel of record for Petitioners Facebook, Inc., LinkedIn Corp. and Twitter, Inc.:
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`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
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`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
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`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
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`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
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`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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