UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`____________
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`ORACLE CORPORATION,
`NETAPP, INC. and
`HUAWEI TECHNOLOGIES CO., LTD.
`
`Petitioners,
`
`v.
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`CROSSROADS SYSTEMS, INC.
`
`Patent Owner.
`
`____________
`
`Case IPR2014-01209
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`U.S. Patent No. 7,051,147
`
`____________
`
`OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`____________
`
`ORACLE CORPORATION,
`NETAPP, INC. and
`HUAWEI TECHNOLOGIES CO., LTD.
`
`Petitioners,
`
`v.
`
`CROSSROADS SYSTEMS, INC.
`
`Patent Owner.
`
`____________
`
`Case IPR2014-01209
`
`U.S. Patent No. 7,051,147
`
`____________
`
`OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
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`I.
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`INTRODUCTION
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` Patent Owner’s motion to exclude is directed primarily at the cross-
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`examination testimony of its own witnesses, Dr. Levy and Mr. Middleton. Patent
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`Owner characterizes its motion as a request to exclude based on lack of relevance,
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`though Patent Owner argues the merits of the evidence and disputes Petitioners’
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`interpretation of the testimony. Such arguments go to the weight of the evidence,
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`however, and not the admissibility of it. Because Patent Owner’s motion is an
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`improper attempt to challenge the merits of the evidence, it should be denied in its
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`entirety.
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`The balance of Patent Owner’s motion is directed to Patent Owner’s own
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`infringement contentions and related materials. It is noteworthy that as to this
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`evidence Patent Owner does not contest the premises for which Petitioners offer
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`this evidence, but complains that the argument is not supported by an expert
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`declaration. Here again, the Board is well-suited to determine for itself what
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`weight to accord the evidence advanced by Petitioner.
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`II.
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`TESTIMONY OF DR. LEVY
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`Patent Owner seeks to exclude answers to questions that included the phrase
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`“for routing purposes” on the basis that the questions were vague. Paper 60 at 1-3.
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`However, the deposition transcript reflects an exchange between the attorney and
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`Dr. Levy which clarified the meaning of the phrase. For instance, the witness
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`1
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`
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`explained that “[w]ell, if by ‘[for] routing purposes’ you mean to be sure that the
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`response to a command goes back to the correct host, then responding on this
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`correct interface would be responding to the correct host.” Ex. 1218 at 95:3-6. Dr.
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`Levy explained that, in the context of the asserted combination, the host interface
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`ID is sufficient to uniquely identify the host device:
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`Q. (BY MR. GARDELLA) But you would agree that the host
`interface ID is sufficient to ensure in this embodiment that
`transmissions are sent to the proper hosts?
`MR. HALL: Objection; form.
`A. Well, as in the CRD-5500 where there is a channel identifier,
`this interface ID does get the response sent back on the proper
`interface. And when there's only a single host present, that
`would be the host that is indicated.
`Id. at 95:13-22. The witness did not have any difficulty in responding to the
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`question.
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`In the end, the issues raised by Patent Owner related to the testimony of Dr.
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`Levy go to the weight of the evidence, and not the admissibility of it. The Board,
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`sitting as a nonjury tribunal with administrative expertise, is well-positioned to
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`determine and assign appropriate weight to the evidence presented. Gnosis S.P.A.
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`v. S. Ala. Med. Sci. Found., IPR2013-00118, slip op. at 43 (PTAB June 20, 2014)
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`(Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir.
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`1941) (“One who is capable of ruling accurately upon the admissibility of evidence
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`2
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`is equally capable of sifting it accurately after it has been received.”). Nelson Prods
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`v. BAL Seal Engineering, IPR2014-00572, Paper No. 55 at 25-6.
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`III.
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` TESTIMONY OF MR. MIDDLETON
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`Patent Owner objects to Mr. Middleton’s testimony to the effect that he
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`“knew of no technical obstacle that would have prevented development and testing
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`of the access control feature on a testbed during the critical period.” Paper 44 at 4.
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`Mr. Middleton testified on cross examination as follows:
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`Q. (BY MR. GARDELLA) So is it fair to conclude that you
`can't testify here today as to any specific technical reason which
`may have prevented the Crossroads' access control software
`from being tested on a testbed?
`A. That's correct.
`Ex. 1220 at 54:6-10. Patent Owner proffered Mr. Middleton as the witness with
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`knowledge of whether the access controls could have been tested on the Verrazano
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`bridge or router. Paper 29 at 31 (“Because Verrazano was the basic
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`hardware platform that would be used to support access controls, its development
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`was required before that feature could be added and the entire invention could
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`actually be reduced to practice.” (citing excerpts of inventor testimony from an
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`earlier trial and Ex. 2305, the declaration of Mr. Middleton)). Accordingly, Mr.
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`Middleton’s testimony that he was not aware of any technical hurdle to
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`implementing and testing of the access control feature on a testbed during the
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`critical period is relevant to whether Patent Owner has met its burden in proving
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`3
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`
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`diligence. Naber v. Cricchi, 567 F.2d 382, 385 (Cust. & Pat. App. 1977). Patent
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`Owner’s only other evidence (i.e., Ex. 2301 at 23-24, 27-29, 42-43) does not
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`address whether the access controls could have been tested or prototyped during
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`the critical period.
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`Patent Owner argues that it could not have tested access controls until
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`Verrazano was completed, citing to Mr. Middleton’s testimony that the access
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`controls could not have been have been simulated completely in software. Paper
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`60 at 7-8. That portion of the testimony is not relevant, however, because the
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`claims are not limited to a particular implementation and Mr. Middleton testified
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`that the access controls, , could have been tested on one of the five functioning
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`prototypes that were in operation during the critical period and not just a testbed:
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`Q. The bridge software which was under test on the
`approximately five Verrazano prototypes included certain
`functionality. Correct?
`A. Correct.
` Q. And that functionality could have included access control
`functionality if the software team had chosen to include that
`functionality in that build of the software.
`MR. HALL: Objection –
`Q. (BY MR. GARDELLA) Correct?
`MR. HALL: -- foundation.
`Q. (BY MR. GARDELLA) Is that fair to say?
`A. To the best of my knowledge, yes.
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`4
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`
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`Q. So some decision was made on the software team side to not
`build in access control functionality into the software that was
`being run on the five -- or
`approximately five Verrazano prototypes in 1997?
`MR. HALL: Objection; foundation.
`(BY MR. GARDELLA) Is that correct?
`MR. HALL: Same objection.
`A. It's pos- -- possible.
`Q. (BY MR. GARDELLA) Well, someone made that decision.
`Correct?
`MR. HALL: Objection; foundation.
`A. If there was a decision. Right
`Ex. 1220 at 63:17-64:16. It is of no moment that this implementation of the access
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`controls would have been in both software and hardware. Patent Owner could
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`have prototyped the access controls and chose not to do so.
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`Patent Owner’s final argument – that any delay to the launch of the
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`Verrazano product which would have been caused by incorporation of the access
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`controls would have occurred after the critical period (Paper 60 at 8) – ignores the
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`reality that time is fungible and resources are limited. If Patent Owner, a start-up
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`company at the time, had attempted to incorporate the access controls into the
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`Verazzano prototype, its much-needed revenue stream would have been further
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`delayed. Ex. 1220 at 70:16-72:22. A delay in development for business purposes
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`does not excuse a gap in diligence. Naber v. Cricchi, 166 F.2d 443, 447 (Cust. &
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`5
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`
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`Pat. App. 1948) overruled on other grounds by Weil v. Fritz, 572 F.2d 856 (Cust.
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`& Pat. App. 1978).
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`For the foregoing reasons the arguments raised as to the Mr. Middleton
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`testimony bear on the weight of the evidence, and not the admissibility of it.
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`IV.
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`PATENT OWNER’S INFRINGEMENT CONTENTIONS (EXS. 1009,
`1224-26) ARE ADMISSIBLE
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`Patent Owner next objects on the basis of relevance to the use of Patent
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`Owner’s own infringement contentions, Exs. 1009, 1224-26. Paper 60 at 8-11. The
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`Board has ruled previously, however, that a district court claim construction can
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`have a direct bearing on the broadest reasonable interpretation of a claim term. For
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`instance, in Ariosa Diagnostics v. Isis Innovation, the Board stated that
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`we find it incongruous to adopt a narrower construction in this
`proceeding, wherein the claims are construed using the broadest
`reasonable interpretation standard, than was adopted in
`[litigation], in which a narrower, Phillips construction standard
`applied.
`IPR2012-00022, Paper 166 at 24. In that case, when construing the claim terms,
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`the Board looked to the positions taken by the Patent Owner in district court:
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`As a guide to how one of ordinary skill in the art would have
`interpreted claim 1, we look to the Declaration of Dr. Mark Evans
`filed in Sequenom v. Aria Diagnostics et al., Case No. 3:12-cv-
`0189 (S.D. Cal. ) (Evans Declaration (Ex. 1033)).
`Id. at Paper 24 at 6.
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`
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`6
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`
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`Accordingly, the positions taken by Patent Owner on claim construction are
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`directly relevant to claim construction in this proceeding. The Board is well
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`positioned to determine how much weight to give the evidence in the context of
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`other evidence which bears on claim construction. See Donnelly, 123 F.2d at 224
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`(“One who is capable of ruling accurately upon the admissibility of evidence is
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`equally capable of sifting it accurately after it has been received.”).
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`It is noteworthy that Patent Owner does not contest that the accused
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`Overland 9500D actually operated in the manner described in Ex. 1226. Patent
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`Owner offers no separate account as to how the accused Overland system operated
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`(and thus the claim interpretation being advocated by Patent Owner in district
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`court). Rather, Patent Owner merely complains that Petitioner did not offer an
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`expert declaration on the topic. Paper 60 at 10. An expert declaration, however,
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`is not required. The Board is able to determine whether the Overland system
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`operates in the manner proposed by Petitioner (and not contested by Patent
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`Owner).
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`Patent Owner also objects that Petitioner did not raise this issue until its
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`Reply. However, this evidence was responsive to the position taken by Patent
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`Owner in its Response contending that a host channel identifier is insufficient to
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`identify a host device. Paper 29 at 47-50.
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`7
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`V.
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`THE OBJECTION TO THE TRANSLATION CERTIFICATE OF
`HIRAI (EX. 1008) WAS CURED VIA SUPPLEMENTAL EVIDENCE
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`Patent Owner lastly objects to the Hirai reference on the basis that the
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`translation certificate was not initially made under the penalty of perjury. In
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`response to Patent Owner’s objection, however, Petitioners served new exhibit,
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`which had the required sworn declaration. See Ex. 1239 (transmission of
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`supplemental evidence). That supplemental evidence is submitted herewith as Ex.
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`1238.
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`The Board has explained that submission of supplemental evidence is the
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`proper procedure to address an objection to a certificate a translation. In Metrics,
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`Inc. v. Senju Pharm., the Board found that a party may cure an objection to the
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`certificate of translation by serving supplemental evidence containing the sworn
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`declaration.
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`We do not consider Hara in our analysis, because it is not
`identified with particularity as providing a basis for
`unpatentability in any ground. See supra n.3. In any event,
`based on the record developed thus far, we determine that
`Patent Owner’s request for relief is premature. Within ten (10)
`business days of the institution of trial, Patent Owner may serve
`on Petitioner an objection to Exhibit 1002. 37 C.F.R. §
`42.64(b)(1). Petitioner may respond to the objection by timely
`serving supplemental evidence (for example, an affidavit
`attesting to the accuracy of the translation). Id. § 42.64(b)(2).
`
`
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`
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`8
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`
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`Should a disagreement persist regarding the admissibility of
`Exhibit 1002, Patent Owner may raise its objections in a timely-
`filed motion to exclude evidence, which we shall resolve in our
`Final Written Decision.
`IPR2014-01041, Paper 19 at 19-20. Petitioners have followed this procedure and
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`Patent Owner’s objection to the admissibility of Ex. 1008 is thus rendered moot.
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`In the alternative Petitioner requests that the Board exercise its discretion to
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`waive the rules to permit entry of Ex. 1238, served herewith. See Norman Int’l. v.
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`Andrew J. Test. Trust, IPR2014-00283, Paper 52 at 14 (“Considering the totality of
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`the circumstances, we concluded, as discussed during the oral hearing, that it
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`would be appropriate, in this instance, to waive our rules to the extent we would
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`allow Petitioner, within five days from the date of the oral argument, “to submit an
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`affidavit attesting to the accuracy of the translation that was previously submitted”
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`(Tr. 8:2–3), with the proviso that the affidavit “meet the requirement[s] of our
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`rules,” specifically “[42 C.F.R. §§] 42.63, 42.2, and also 1.68” (id. at 8:2–5); see
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`also Nestle v. Steuben Foods, IPR2014-01235, Paper No. 26 at 2. The interests of
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`justice militate in favor of the Board exercising such discretion because Patent
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`Owner has not pointed to any alleged inaccuracy in the translation, Patent Owner
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`was able to cross-examine Petitioners’ expert on Ex. 1008 and the translation of
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`Ex. 1238, Patent Owner had the opportunity to depose the translator but chose not
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`to do so, and both the parties and Board have expended substantial resources in
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`9
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`completing this trial through oral hearing. In addition, in light of the Patent
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`Owner’s failure to identify any prejudice from admission of Ex. 1238, the Board
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`should consider waiving the rules and permitting entry of the exhibit if it decides
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`that service of the exhibit as supplemental evidence was not sufficient to address
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`Patent Owner’s objection.
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`VI.
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`CONCLUSION
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`For the reasons discussed above, all of the above-identified evidence should
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`be admissible and accorded appropriate weight.
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`Dated: October 6, 2015
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`
` /Greg H. Gardella/
`Greg H. Gardella (Reg. No. 46,045)
`Counsel for Petitioners
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`10
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of the
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE on the counsel
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`of record for the Patent Owner by filing this document through the Patent Review
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`Processing System as well as delivering a copy via electronic mail to the following
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`crossroadsipr@sprinklelaw.com
`CrossroadsIPR@blankrome.com
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`
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`addresses:
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`
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`/Greg H. Gardella/
`Greg H. Gardella (Reg. No. 46,045)
`Counsel for Petitioners
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`
`
`Dated: October 6, 2015
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