UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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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
`and NETAPP, INC.
`
`
`Petitioners,
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`v.
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`CROSSROADS SYSTEMS, INC.
`
`Patent Owner.
`
`____________
`
`Case IPR2014-01209
`
`U.S. Patent No. 7,051,147
`
`____________
`
`REPLY IN SUPPORT OF
`PETITIONERS’ MOTION TO EXCLUDE
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`____________
`
`ORACLE CORPORATION
`and NETAPP, INC.
`
`
`Petitioners,
`
`v.
`
`CROSSROADS SYSTEMS, INC.
`
`Patent Owner.
`
`____________
`
`Case IPR2014-01209
`
`U.S. Patent No. 7,051,147
`
`____________
`
`REPLY IN SUPPORT OF
`PETITIONERS’ MOTION TO EXCLUDE
`
`
`
`
`
`
`
`I.
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`Exhibit 2311 (Chronology Table)
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`Patent Owner argues that Ex.2311 is “merely a summary demonstrative
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`exhibit.” Paper 63 at 2. However, Ex. 2311 includes assertions that are nowhere
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`contained in the Patent Owner Response. For instance, Patent Owner’s response
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`nowhere alleges that the “conception of access controls and virtual local storage”
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`occurred on March 22, 1997, as alleged in Ex. 2311. See Ex. 2311 at 1, Paper 29
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`at 21-22. As another example, the response does not lay out the chronology of
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`events considered to be most relevant to the conception and diligence. See id.
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`That chronology of events is set forth only in Exhibit 2311. For these reasons Ex.
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`2311 incorporates by reference assertions not contained in the Patent Owner’s
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`response, in contravention of 37 C.F.R. § 42.6(a)(3).
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`Patent Owner does not respond to Petitioners’ argument that Exhibit 2311
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`contains hearsay outside any recognized exception. Rule 1006 permits use of
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`summaries but does not exempt summaries from the hearsay rules. BP Amoco
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`Chem. Co. v. Flint Hills Res., LLC, 2009 U.S. Dist. LEXIS 131268, *4.
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`II. Exhibits 2300-2304, 2306-2310 and 2312-2323
`(Documents Offered to Show Prior Invention)
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`Patent Owner fails to identify any testimony of a person with personal
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`knowledge of Crossroad’s record-keeping practices in 1997, the year in which the
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`documents were created and initially stored as alleged business records. Even in
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`the case cited upon by Patent Owner the proponent offered the testimony of a
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`1
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`witness with first-hand knowledge of the business’ record keeping practices at the
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`time in question. BetterBags, Inc. v. Redi Bag USA LLC, C.A. No. H-09-3093,
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`2011 U.S. Dist. LEXIS 130525, at *21-23 (S.D. Tex. Nov. 10, 2011). The
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`testimony proffered by Crossroads cannot establish that Exhibits 2300-2304, 2306-
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`2310 or 2312-2323 are business records under Rule 803(6).
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`Patent Owner does not respond to Petitioner’s argument that Exhibits 2303
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`and 2323 are letters from patent counsel and thus cannot be said to be records of
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`business activity regularly conducted by Crossroads. Paper 63 at 5. Like
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`laboratory notebooks discussed in Alpert v. Slatin, letters from counsel concerning
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`a patent application cannot be said to be records of Crossroads’ regularly
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`conducted business activity. 305 F.2d 891, 895-96 (CCPA 1962).
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`With regard to Exhibits 2307 and 2308, Patent Owner does not contest that
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`the documents were prepared by the president of a company named Infinity
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`CommStor, LLC or that the record contains no evidence demonstrating the role of
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`Infinity CommStor or its relationship, if any, with Crossroads. See Paper 63 at 8.
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`Patent Owner merely responds that Petitioner did not sufficiently specify its
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`authenticity objection. Id. To the contrary, Petitioner specifically stated that “the
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`exhibits have not been properly authenticated (FRE 901).” Ex. 1236 at 6.
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`Patent Owner does not point to any citations in the Response to Exhibits
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`2312 or 2316- 2320. Paper 63 at 9. Rather, those citations are provided only in Ex.
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`2
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`2311. Accordingly, use of these exhibits would constitute an improper
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`incorporation by reference. See 37 C.F.R. § 42.6(a)(3).
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`With respect to Exhibits 2301, 2302, 2304, 2306 and 2310 (trial and
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`deposition transcripts from the Chaparral/Pathlight litigation) Patent Owner
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`identifies no evidence that any of the witnesses are actually unavailable, which is a
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`requirement of Rule 804. See Paper 63 at 10-13. The closest Patent Owner comes
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`is an assertion that Mr. Peterman could not remember certain facts. Paper 63 at 11.
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`The precedents cited by Patent Owner are inapposite, as they involve cases in
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`which the unavailability of the declarant was demonstrated. See Lloyd v. American
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`Export Lines, Inc., 580 F.2d 1179, 1184 (3d Cir. 1978); Horne v. Owens-Corning
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`Fiberglas Corp., 4 F.3d 276, 282-283 (4th Cir. 1993). Moreover, the patent at
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`issue in this IPR did not even exist at the time the earlier testimony was taken. It
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`therefore could not be said that the previous litigant had a “like motive to cross-
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`examine about the same matters as the present party would have,” as suggested by
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`Lloyd v. American Export Lines, Inc., 580 F.2d 1179, 1187 (3d Cir. 1978)
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`(emphasis added). In the Chaparral/Pathlight litigation the patent was different,
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`the claimed subject matter was different, and the proof required to demonstrate
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`conception and diligence was thus necessarily different. The prior testimony was
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`not concerning the “same matter” as required by Lloyd.
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`3
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`
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`Turning to Exhibit 2313, Patent Owner’s Response fails to provide any page
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`citations to Exhibit 2313. Paper 63 at 14. Ex. 2313 should be excluded because
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`use of this exhibit now would be improper incorporation by reference.
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`III. Exhibit 2050 (Schedule of License Agreements)
`Patent Owner does not identify any testimony attesting to the accuracy of the
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`information set forth in the last two columns of Exhibit 2050. Accordingly, Exhibit
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`2050 cannot be admitted as a summary under FRE 1006 or otherwise. BP Amoco
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`Chem. Co. v. Flint Hills Res., LLC, 2009 U.S. Dist. LEXIS 131268, *4 (After
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`meeting the threshold “voluminous and inconvenient" requirement, the proponent
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`of a summary must establish that there is a proper foundation as to the
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`admissibility of the material that is summarized. Additionally, the proponent
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`must demonstrate that the summary is accurate.) (internal citations omitted,
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`emphasis added).
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`IV. Exhibits 2044-45 (Sales Information) and Ex. 2043 (Bianchi
`Declaration) ¶6
`Patent Owner does not dispute that Mr. Bianchi admitted that neither
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`Exhibit 2044 nor Exhibit 2045 were prepared in the ordinary course of
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`Crossroads’ business. Ex. 1221 at 163:24-164:10. Patent Owner also does not
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`contest that, although these exhibits are presented as evidence of a sales trend
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`which allegedly suggests that customers preferred routers (which allegedly had the
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`claimed “access controls”) to bridges (which lacked them), Mr. Bianchi admitted
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`4
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`that he did not even consider the effect of competitive products or any of the other
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`factors that Crossroads believed could have impacted bridge and router sales,
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`including OEM endorsement, product reliability, interoperability, customer
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`service, technical support, brand awareness, ability to meet delivery schedules, or
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`strength of distribution channel. Paper 63 at 15, Ex. 1221 at 127:9-129:16. Patent
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`Owner similarly fails to address how Mr. Bianchi is an expert competent to testify
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`concerning market demand for the products in question. Paper 63 at 15.
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`V. Exhibits 2035-36 (Awards)
`Patent Owner’s opposition to the motion to exclude does not even address
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`Exhibits 2035-36 and, for that reason, fails to provide any explanation of what
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`relevance or nexus these exhibits might have to the claimed subject matter.
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`Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387 (Fed. Cir.) (in
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`order to be of probative value, there must be a factually and legally sufficient
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`connection between the objective evidence of nonobviousness and the claimed
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`invention). Patent Owner also does not dispute that the Patent Owner’s Response
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`fails to discuss or even cite these exhibits. Use of these exhibits now would be
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`improper incorporation by reference. See 37 C.F.R. § 42.6(a)(3).
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`Dated: October 13, 2015
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`5
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`
`/Greg H. Gardella/
`Greg H. Gardella (Reg. No. 46,045)
`Counsel for Petitioners
`
`
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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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`REPLY IN SUPPORT OF PETITIONERS’ MOTION TO EXCLUDE on the
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`counsel of record for the Patent Owner by filing this document through the Patent
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`Review Processing System as well as delivering a copy via electronic mail to the
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`following addresses:
`
`Steven Sprinkle
`John Adair
`Scott Crocker
`SPRINKLE IP LAW GROUP
`crossroadsipr@sprinklelaw.com
`
`Russell Wong
`James H. Hall
`Keith Rutherford
`BLANK ROME LLP
`CrossroadsIPR@blankrome.com
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`
`
`
`/Greg H. Gardella/
`Greg H. Gardella (Reg. No. 46,045)
`Counsel for Petitioners
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`
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`Dated: October 13, 2015
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