Filing: June 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTEL CORP., CAVIUM, INC., WISTRON CORP., and DELL, INC.
`Petitioners,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`______________________
`
`Case IPR2017-013931
`U.S. Patent No. 7,673,072
`Title: FAST-PATH APPARATUS FOR TRANSMITTING DATA
`CORRESPONDING TO A TCP CONNECTION
`______________________
`
`PETITONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Cavium, Inc., which filed a Petition in Case IPR2017-01707, Wistron Corp.,
`
`which filed a Petition in Case IPR2018-00329, and Dell Inc., which filed a Petition
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`in Case IPR2018-00375, have been joined as petitioners in this proceeding.
`
`

`

`
`
`I. 
`
`II. 
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`
`TABLE OF CONTENTS
`
`BACKGROUND ............................................................................................. 1 
`
`ARGUMENT ................................................................................................... 2 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`Improperly Challenges Sufficiency, Rather Than
`PO
`Admissibility ......................................................................................... 2 
`
`Tanenbaum96 Is Admissible ................................................................. 4 
`
`The Majors Declaration is Admissible .................................................. 7 
`
`Petitioner Has Shown By a Preponderance of Evidence That
`Tanenbaum96 Was Publicly Available ............................................... 10 
`
`III.  CONCLUSION .............................................................................................. 15 
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`i
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Actifio, Inc. v. Delphix Corp.,
`Case IPR2015-0025, Paper 69 (Apr. 12, 2016) .................................................... 5
`Apple v. Virnetx, Inc.,
`Case IPR2016-00332, Paper 29 (June 22, 2017) ................................................ 11
`Apple v. Virnetx, Inc.,
`Case IPR2017-00337, Paper 31 (May 30, 2018) ................................................ 10
`Arista Networks v. Cisco Sys.,
`Case IPR2016-00303, Paper 53 (May 25, 2017) .................................................. 3
`eBay Inc. v. Global Equity Mgmt.,
`Case IPR2016-01828, Paper 61 (Apr. 18, 2018) .................................................. 8
`EMC Corp. v. PersonalWeb Techs., LLC,
`Case IPR2013-00086, Paper 66 (May 15, 2014) ............................................ 5, 13
`Ericsson Inc. v. Intellectual Ventures I LLC,
`Case IPR2014-00527, Paper 41 (May 18, 2015) ................................................ 14
`FLIR Sys., Inc. v. Leak Surveys, Inc.,
`Case IPR2014-00411, Paper 113 (Sept. 3, 2015) ................................................. 3
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ...................................................................... 11, 13
`Kaz USA, Inc. v. Exergen Corp.,
`Case IPR2016-01437, Paper 53 (Dec. 22, 2017) ................................................ 11
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) .......................................................................... 10
`Minerva Surgical v. Hologic, Inc.,
`Case IPR2016-00868, Paper 63 (Dec. 15, 2017) .................................... 12, 14, 15
`
`ii
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`

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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 11
`Rovalma, S.A. v. Bohler-Edelstahl GMBH & Co. KG,
`856 F.3d. 1019 (Fed. Cir. 2017) ........................................................................... 5
`Seabery North Am. v. Lincoln Global,
`Case IPR2016-00840, Paper 60 (Oct. 2, 2017) .................................................. 14
`Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) .......................................................................... 10
`TriVascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ............................................................................ 5
`United States v Turner,
`718 F.3d 226 (3d Cir. 2013) ................................................................................. 5
`Xactware Sols., Inc. v. Pictometry Int’l Corp.,
`Case IPR2016-00594, Paper 46 (Aug. 24, 2017) ................................................. 3
`Statutes and Regulations
`37 CFR § 1.98 .......................................................................................................... 13
`37 CFR § 42.64(b)(1) ................................................................................................. 2
`37 CFR § 42.64(b)(2) ................................................................................................. 2
`Fed. R. Evid. 701 ................................................................................................... 7, 8
`Fed. R. Evid. 702 ....................................................................................................... 8
`Fed. R. Evid. 803(6) ............................................................................................. 9, 14
`Fed R. Evid. 803(16) ................................................................................................ 14
`Fed. R. Evid. 807(a) ................................................................................................... 9
`Fed. R. Evid. 901(b)(1) .............................................................................................. 5
`Fed. R. Evid. 901(b)(4) .............................................................................................. 7
`Fed. R. Evid. 901(b)(8) .............................................................................................. 7
`iii
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`
`Other Authorities
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767 § II(K)
`(Aug. 14, 2012) ..................................................................................................... 3
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`iv
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`

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`Patent Owner’s (“PO”) Motion to Exclude (“Motion”) should be denied.
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`
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`First, PO’s argument which is directed to the sufficiency of Petitioner’s evidence
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`as prior art (i.e., whether Exhibit 1006 (“Tanenbaum96”) is publicly available) is
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`improper for a motion to exclude. Motions to exclude are reserved for challenges
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`to admissibility under the Federal Rules of Evidence (“FRE”). The FRE contain no
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`notion of public availability of prior art. Second, PO’s admissibility objections fail
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`as to both Tanenbaum96 and Exhibit 1011 (“Majors Declaration”). Both are
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`admissible under the FRE. Third, even if PO’s attempt to conflate admissibility
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`and evidence of public accessibility were appropriate, Tanenbaum96 was publicly
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`available prior to the critical date, as shown by abundant evidence including a
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`librarian declaration, testimony of both parties’ experts, and patents by both PO
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`and other inventors. Indeed, PO’s own expert used Tanenbaum96 to teach
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`university networking classes prior to the alleged first effective filing date.
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`I.
`
`BACKGROUND
`Petitioner relies upon Tanenbaum96 to demonstrate that the 880, 036, 241,
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`and 072 Patents are invalid. Petitioner submitted complete copies of the
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`Tanenbaum96 textbook, including its bibliographical information, which identifies
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`a copyright date of 1996, as well as Library of Congress CIP date of 1996.
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`Petitioner also submitted the Majors Declaration, from a librarian at Santa Clara
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`University Library (“Library”) attesting to the date that Tanenbaum96 was
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`1
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`obtained by the Library (August 9, 1996) and when it was cataloged (November 1,
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`1996) accompanied by a copy of the Library’s catalog record information. Further,
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`Petitioner included testimony from its expert relating to Tanenbaum96’s public
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`availability. This evidence established that Exhibit 1006 is a copy of Tanenbaum96
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`and that it was publicly available prior to the alleged first effective filing date,
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`October 1997.
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`Following institution, PO timely filed objections to Tanenbaum96 and the
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`Majors Declaration in the 072, 036, and 241 IPRs. However, for the 880 IPRs,
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`objections to these exhibits were filed weeks late without permission. See 37 CFR
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`§ 42.64(b)(1) (objections due within 10 days); see also IPR2017-01409, Paper 12
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`(filed 26 business days after institution); IPR2017-01410, Paper 12 (same). PO did
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`not preserve its objections in the 880 IPRs.2 Petitioner timely served supplemental
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`evidence regarding Tanenbaum96. See 37 CFR § 42.64(b)(2). This evidence
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`included five patents further corroborating that Tanenbaum96 is admissible and
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`was publicly available prior to the alleged first effective filing date.
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`II. ARGUMENT
`A.
`PO
`Improperly Challenges
`Admissibility
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`2 PO appears to contend, without support, that its objections following a later
`
`Sufficiency, Rather Than
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`joinder by Cavium put Petitioner “on notice” of these objections.
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`2
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`

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`PO’s Motion improperly challenges the sufficiency of Petitioner’s evidence
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`
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`to prove that Tanenbaum96 is prior art (i.e., whether it was publicly available), not
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`the admissibility of Tanenbaum96 under the FRE. The Trial Practice Guide makes
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`clear that motions to exclude are the proper vehicle for addressing evidentiary
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`challenges, but should not be used to challenge the sufficiency of such evidence.
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767 § II(K) (Aug. 14,
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`2012) (“A motion to exclude must explain why the evidence is not admissible
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`(e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the
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`evidence to prove a particular fact.”). Indeed, prior panels have emphasized that
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`motions to exclude challenging the sufficiency or weight of evidence, rather than
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`its admissibility, are improper. Arista Networks v. Cisco Sys., Case IPR2016-
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`00303, Paper 53 at 9 (May 25, 2017) (“A motion to exclude is the wrong vehicle to
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`challenge public availability, which is a substantive issue that goes to the
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`sufficiency of the evidence, not to admissibility at issue here.”); FLIR Sys., Inc. v.
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`Leak Surveys, Inc., Case IPR2014-00411, Paper 113 at 4 (Sept. 3, 2015) (“A
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`motion to exclude is not a vehicle for addressing the weight to be given
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`evidence.”); Xactware Sols., Inc. v. Pictometry Int’l Corp., Case IPR2016-00594,
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`Paper 46 (Aug. 24, 2017) (declining to exclude evidence where PO challenged
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`public accessibility rather than admissibility).
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`3
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`

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`At no point during the proceedings did PO challenge the public accessibility
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`
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`of Tanenbaum96 in its substantive filings—not in its preliminary or subsequent
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`Patent Owner Responses. Instead, PO merely lodged a generic objection, not tied
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`to the FRE. This unspecified objection is insufficient. PO has therefore waived
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`this argument and it is now too late to make it.
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`B.
`Tanenbaum96 Is Admissible
`PO contends that Tanenbaum96 “is irrelevant, as Petitioner has failed to
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`establish that Ex. 1006 is prior art.” Motion (“Mot.”) at 2. As an initial matter, PO
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`never objected to the relevance of Tanenbaum96. Paper No. 14 (“Obj.”) at 3. PO
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`has thus waived this objection and argument. Regardless, Tanenbaum96’s
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`teachings on the state of the art are plainly relevant to this proceeding, and PO has
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`not argued otherwise, focusing solely on the issue of public availability. Indeed,
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`the 072 Patent itself incorporates Tanenbaum96 by reference as a background
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`“college-level textbook” related to “layered protocol processing.” Ex. 1001 at
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`4:56-59. Also, Petitioner’s expert has explained the technical background using
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`Tanenbaum96. See, e.g., Ex. 1003, ¶¶ 34, 41, 42, 46. There can be no genuine
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`dispute that Tanenbaum96 is relevant.
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`To the extent Alacritech’s Motion attempts to conflate authenticity with
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`public accessibility, there is also no dispute that Tanenbaum96 is authentic.
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`Demonstrating authenticity is a low bar. Courts do “not require conclusive proof of
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`4
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`a document’s authenticity, but merely a prima facie showing of some competent
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`Case IPR2017-01406
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`evidence to support authentication.” See, e.g., United States v Turner, 718 F.3d
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`226, 232 (3d Cir. 2013); see also EMC Corp. v. PersonalWeb Techs., LLC, Case
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`IPR2013-00086, Paper 66 at 28 (May 15, 2014) (“Therefore, neither a declaration
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`from the author, nor evidence of someone actually viewing the document prior to
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`critical date, is required to support a finding that the document is what it claims to
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`be.”). Here, Exhibit 1006 is the entire Tanenbaum96 textbook, including
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`bibliographical information. Petitioner also submitted testimony of an individual
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`with knowledge (the Majors Declaration (Ex. 1011)) and the Horst Declaration
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`(Ex. 1003), which are sufficient to authenticate evidence under FRE 901(b)(1).
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`Further, PO’s own expert’s testimony establishes the authenticity and public
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`availability of Tanenbaum96.3 Specifically, Dr. Almeroth testified that he was
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`familiar with and had used Tanenbaum96 in teaching his university courses,
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`3 It is appropriate to rely on statements by PO’s expert. See, e.g., Rovalma, S.A. v.
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`Bohler-Edelstahl GMBH & Co. KG, 856 F.3d. 1019, 1028 (Fed. Cir. 2017) (“[A]
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`tribunal may use a party’s own submissions against it, even if the opposing party
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`bears the burden of persuasion.”); see also Actifio, Inc. v. Delphix Corp., Case
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`IPR2015-0025, Paper 69 at 13 (Apr. 12, 2016) (citing TriVascular, Inc. v. Samuels,
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`812 F.3d 1056, 1068 (Fed. Cir. 2016)).
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`5
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`beginning in Fall 1997. May 3, 2018 Almeroth Dep. (“Ex. 1224”) at 30:2-32:10;
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`Case IPR2017-01406
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`see also May 4, 2018 Almeroth Dep. (“Ex. 1225”) at 374:14-18. Dr. Almeroth
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`testified that he recognized the webpage from his course in Fall 1997 and agreed
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`that the Tanenbaum96 reference at issue was the textbook on his course page. Ex.
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`1225 at 474:21-475:2 (“Q. Dr. Almeroth, do you recognize Ex. 21? A. It looks like
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`the front page for the first course at UCSB that I taught. Q. And the textbook was
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`the Tanenbaum ’96, right, that’s the basis for several of the grounds that we’ve
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`been talking about today and yesterday. Right? A. Yes. It was.”); see referenced
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`exhibit (Ex. 1234 (Almeroth Dep., Ex. 21)) (highlighting added):
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`
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`Dr. Almeroth confirmed that “[w]hatever it says on my web page about what the
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`title of that course was and what textbook I used I believe is accurate.” Ex. 1224 at
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`32:8-10. The web page shows Dr. Almeroth used Tanenbaum96 prior to Oct. 1997.
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`6
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`Ex. 1234 (Almeroth Dep., Ex. 21) at 3 (highlighting added).
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`Additionally, Tanenbaum96 is authentic under FRE 901(b)(4) because it
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`bears the unique identifiers of a book. Tanenbaum96 similarly qualifies as an
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`ancient document under FRE 901(b)(8). Tanenbaum96 was located in the Santa
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`Clara University Library, a place where, if authentic, it would likely be, and
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`Tanenbaum96 was at least twenty years old when it was offered into evidence,
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`based on the copyright date and the receipt and cataloging dates in Exhibit 1011.
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`C. The Majors Declaration is Admissible
`Petitioner’s Exhibit 1011, a signed, sworn declaration from Mr. Majors, a
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`university librarian, is also admissible. PO objects to the Majors Declaration as
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`being inadmissible lay witness opinion under FRE 701 and objects to the attached
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`Exhibit A (reflecting the Library record of Tanenbaum96) as unauthenticated
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`hearsay. Mot. at 7, 8. PO’s arguments miss the mark.
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`The Majors Declaration plainly shows that it is made on the declarant’s
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`personal knowledge and provides both support and analysis for the declarant’s
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`statements. The declaration states that the declarant is familiar with the Library’s
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`policies and procedures and how Library materials can be located and used. Ex.
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`1011.001. The declaration explains that the Library holds a copy of Tanenbaum96,
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`and provides the specific date that copy was received (Aug. 9, 1996), and when it
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`was cataloged (Nov. 1 1996). Id. The declaration specifically references these
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`7
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`dates in the “catalog record” which was attached to the declaration as Exhibit A
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`and states when Tanenbaum96 would have been available as a cataloged reference.
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`Id. The declaration was signed under penalty of perjury. Id. at .002.
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`PO’s main issue with the Majors Declaration appears to be that he did not
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`work at the Library in 1996—and thus his statements regarding when the reference
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`would have been available are “conclusory.” Mot. at 7. This is simply incorrect.
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`In his declaration, Mr. Major clearly established his personal knowledge of the
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`Library procedures dating back to at least 1992. Ex. 1011.001 (“library materials
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`have been indexed in the online catalog (from 1992 to the present)”), (“The SCU
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`Library catalog is searchable by subject, author, and title (since 1992) and by
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`keyword (since the mid-1990s).”). He then stated that based on these procedures,
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`Tanenbaum96 would have been available within a few weeks of Nov. 1, 1996 (the
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`cataloguing date)—and supported it with a Library record.
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`To the extent the declaration is considered opinion testimony by a lay
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`witness, the declaration satisfies the criteria of FRE 701. The declaration is based
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`on the witness’s perception, is helpful for determining facts at issue, and is not
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`based on specialized knowledge within the scope of Rule 702. To the extent PO
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`believed there were issues in Mr. Majors declaration, it could have chosen to
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`depose him and explored the basis for his understanding. PO did not do so, and
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`there is no reason to doubt the statements. See, e.g., eBay Inc. v. Global Equity
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`8
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`Mgmt., Case IPR2016-01828, Paper 61 (Apr. 18, 2018) (accepting statements in
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`declaration where Patent Owner did not offer any cross-examination testimony
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`suggesting that any of the testimony was inaccurate).
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`For the first time in its Motion, PO makes specific objections to Exhibit A as
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`hearsay and not authenticated. PO never objected to the Majors Declaration or
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`Exhibit A as unauthenticated. Obj. at 5-6. Therefore this argument is waived. To
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`the extent it is considered, Exhibit A has been authenticated. The Majors
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`Declaration identifies Exhibit A as the “catalog record.” Ex. 1011.001. This is
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`sufficient authentication by a person with knowledge establishing Exhibit A is
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`what it appears to be.
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`To the extent Exhibit A is hearsay, Exhibit A falls into hearsay exceptions,
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`including at least Rule 803(6) (records of regularly conducted activity, as
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`established by the Majors Declaration and the description of the policies and
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`procedures of the Library) and (16) (ancient document, because Exhibit A states on
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`its face that it was created on Aug. 6, 1996, more than 20 years ago and was
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`retrieved from the Library catalog system). Exhibit A also qualifies under the
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`residual hearsay exception under Rule 807(a) (provided by a University Library,
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`offered to show public availability, more probative on public availability than other
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`evidence that can be reasonably obtained, and is in the interests of justice).
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`Excluding this evidence “would not comport with ‘an administrative proceeding
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`9
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`designed and intended to afford expedited and efficient relief.’” Apple v. Virnetx,
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`Inc., Case IPR2017-00337, Paper 31 at 56 (May 30, 2018) (citations omitted).
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`D.
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`Petitioner Has Shown By a Preponderance of Evidence That
`Tanenbaum96 Was Publicly Available
` While PO’s arguments regarding public availability are not appropriate for a
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`motion to exclude, Petitioner has nevertheless shown by a preponderance of
`
`evidence that Tanenbaum96 was publicly available as of October 1997. Whether a
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`reference qualifies as a “printed publication” involves a case-by-case inquiry into
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`the facts and circumstances surrounding its disclosure to the public. In re
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`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “A given reference is
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`‘publicly accessible’ upon a satisfactory showing that such document has been
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`disseminated or otherwise made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art exercising reasonable diligence, can
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`locate it.” Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014).
`
`The evidence provided by Petitioner, as well as the testimony of PO’s own
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`expert, are sufficient to demonstrate that Tanenbaum96 was publicly available
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`prior to the alleged first effective filing date of October 1997. As set forth above,
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`the dates provided on Tanenbaum96, in conjunction with the Majors Declaration,
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`establish that Tanenbaum96 was published, cataloged and available in libraries by
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`the critical date. The Majors Declaration identifies a receipt date and cataloging
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`date, which is well before the alleged first effective filing date, supported by a
`10
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`library catalog record showing the catalog date. Ex. 1011. This evidence
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`establishes the public availability of Tanenbaum96 not just in the library collection
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`itself, but from the publisher of Tanenbaum96 from whom the library acquired the
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`book. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1295–96 (Fed. Cir. 2011)
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`(“competent evidence of general library practice may be relied upon to establish an
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`approximate time when a thesis became available”).
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`PO suggests that the Majors Declaration is insufficient because it states that
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`Tanenbaum96 “would have been available” instead of stating it “was actually
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`available before the critical date.” Mot. at 7. But that is not required.4 See. e.g.,
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`Kaz USA, Inc. v. Exergen Corp., Case IPR2016-01437, Paper 53 at 13 (Dec. 22,
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`2017) (relying on declaration stating that reference “would have been available to
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`the public at the [l]ibrary”). Indeed, the Federal Circuit has held that a declaration
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`that states that a dissertation “most probably was available” is sufficient to show
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`pubic accessibility. See, e.g., In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). Nor
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`did Petitioner cross-examine Mr. Majors. See. e.g., Apple v. Virnetx, Inc.,
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`4 The case law PO relies on misses the point. Mot. at 7. Mr. Majors stated that the
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`reference “would have been available”—not that there was a “possibility” it was
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`available. Further, as discussed below, the Declaration shows it was publicly
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`available from the publisher because it was acquired by the library.
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`Case IPR2016-00332, Paper 29 at 50 (June 22, 2017) (stating that Patent Owner
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`had not provided any cross-examination testimony of declarant to the contrary).
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`There is no suggestion that Tanenbaum96 was not available.
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`Equally importantly, the Majors Declaration shows that the Tanenbaum96
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`was publicly available from the publisher no later than November 1, 1996.
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`Tanenbaum96 is not a thesis, which might only have been available from the
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`library itself. Tanenbaum96 shows on its face that it was a published book, and the
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`Majors Declaration shows that the Library acquired the book by ordering it on
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`August 9, 1996, and received the book on November 1, 1996. Whether or not the
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`book was on the library’s shelves for checkout by November 1, 1996 or a few
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`weeks later, the book was available to the public no later than November 1, 1996,
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`when received by the library, establishing it was prior art at that time.
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`In addition, both Petitioner’s expert and PO’s expert have established the
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`public accessibility of Tanenbaum96. Petitioner’s expert, Dr. Horst, an undisputed
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`POSA at the time of the relevant patents, testified that Tanenbaum96 was “widely
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`cited and relied upon” and was a “well-known resource to a POSA.” Ex. 1003, ¶
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`26, Section (IX)(A) n.6. Similarly, Dr. Almeroth testified that he used
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`Tanenbaum96 as a textbook for his course in 1997 where his first class occurred on
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`September 25, 1997 (prior to the October 14, 1997 alleged first effective filing
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`date). See, e.g., Minerva Surgical v. Hologic, Inc., Case IPR2016-00868, Paper 63
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`12
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`at 54 (Dec. 15, 2017) (finding a reference to be publicly available where Patent
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`Owner’s own expert testified that he had used the reference prior to the critical
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`date). This establishes that the book was available to the relevant public, including
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`students of networking, no later than September 25, 1997. The PTAB has found
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`that testimony by those with knowledge of a reference (like Mr. Majors, Dr. Horst,
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`and Dr. Almeroth here) is sufficient to establish public availability. See EMC,
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`IPR2013-00086, Paper 66 at 29 (“Although Messrs. Sussell and Sadofsky
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`personally did not post or review the particular version of Kantor . . . prior to the
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`critical date, they have sufficient personal knowledge and working experience to
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`provide competent testimony to establish the publication and authentication of
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`Kantor.”); see also id. at 23 (“It is well settled that it is not necessary for the
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`witnesses to have reviewed the reference personally prior to the critical date in
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`order to establish publication.”) (citing In re Hall, 781 F.2d at 899).
`
`Furthermore, the 072 Patent and file history corroborate that Tanenbaum96
`
`was publicly available to those of skill in the art prior to the alleged first effective
`
`filing date. PO admitted that Tanenbaum96 was published in 1996 in an IDS it
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`submitted for the 072 Patent and refers to it as a “college-level textbook” in the
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`background section of the 072 patent. Ex. 1002.270; see, e.g., 37 CFR § 1.98
`
`(requires patent applicant to identify “date . . . of publication” in IDS); Ex. 1001 at
`
`4:57-60 (“[C]ollege-level textbooks devoted primarily to this subject are available,
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`such as Computer Networks, Third Edition (1996) by Andrew S. Tanenbaum,
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`which is incorporated by reference.”); see also Ex. 1258; Ex. 1259; Ex. 1260. This
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`comports with PO’s own expert’s use of the textbook to teach a college-level class
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`in 1997, prior to the alleged first effective filing date.
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`PO suggests that because these documents are dated after the alleged date
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`they cannot be used to show public availability. Mot. at 5-6. But there is no
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`requirement that the evidence used to show availability must be before the critical
`
`date, only that the prior art reference itself is before the date. See, e.g., Minerva,
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`IPR2016-00868, Paper 63 at 54 (relying on May 2008 publication (Ex. 1021) to
`
`show reference was publicly available by November 1999).
`
`PO additionally objected that the dates on Tanenbaum96 (e.g., copyright and
`
`CIP dates) are hearsay. However, the Board can consider these dates as
`
`circumstantial evidence of public availability. Seabery North Am. v. Lincoln
`
`Global, Case IPR2016-00840, Paper 60 at 6 (Oct. 2, 2017) (finding dates on thesis
`
`to be “circumstantial evidence of publication”). The PTAB has permitted copyright
`
`dates to be admissible under the residual exception to the hearsay rule. See
`
`Ericsson Inc. v. Intellectual Ventures I LLC, Case IPR2014-00527, Paper 41 at 11
`
`(May 18, 2015). Similarly, Tanenbaum96’s copyright date falls under the ancient
`
`documents exception as admissible hearsay or the business record exception. FRE
`
`803(16), 803(6). Tanenbaum96’s copyright date is an additional factor the Board
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`may consider in assessing Tanenbaum96’s public availability. See, e.g., Minerva,
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`IPR2016-00868, Paper 63 at 54 (finding copyright date is “consistent with the
`
`other evidence of record”). Here, the copyright date is consistent with and
`
`corroborated by other evidence including the Majors Declaration and the testimony
`
`of both PO’s and Petitioner’s experts.
`
`PO also suggests that because the Library of Congress CIP date is 1996,
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`Tanenabaum96 “was not published at that time.”5 Mot. at 4. PO cites nothing for
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`this allegation. Indeed, as discussed above, Alacritech admitted in IDSs that
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`Tanenbaum96 was published in 1996 and Petitioner submitted, as supplemental
`
`evidence, patents by different inventors stating that Tanenbaum96 was published in
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`1996. Ex. 1257 at 4:7-11 (Tanenbaum96 was “published by Prentice-Hall, PTR in
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`1996”); Ex. 1261. This comports with and corroborates both the copyright date, as
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`well as the testimony of Mr. Majors, Dr. Horst, and Dr. Almeroth.
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`III. CONCLUSION
`For the foregoing reasons, Alacritech’s Motion should be denied.
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`
`5 Indeed, the fact that Tanenbaum96 obtained a CIP date is further circumstantial
`
`evidence of public availability. Ex. 2501.002 (“[T]he CIP [p]rogram is limited to
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`publishers with an established history of producing works that are widely acquired
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`by the nation’s libraries.”) (emphasis added).
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`Dated: June 22, 2018
`
`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`
`
`
`Respectfully submitted,
`
`/s/ Garland T. Stephens
`Garland T. Stephens, Reg. No. 37,242
`Justin L. Constant, Reg. No. 66,883
`Weil, Gotshal & Manges LLP
`700 Louisiana, Suite 1700
`Houston, TX 77002
`Tel: (713) 546-5000
`Fax: (713) 224-9511
`garland.stephens@weil.com
`justin.constant@weil.com
`Anne M. Cappella, Reg. No. 43,217
`Adrian Percer, Reg. No. 46,986
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3000
`Fax: (650) 802-3100
`anne.cappella@weil.com
`adrian.percer@weil.com
`William S. Ansley, Reg. No. 67,828
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W, Suite 600
`Washington, DC 20036
`Tel: (202) 682-7000
`Fax: (202) 857-0940
`sutton.ansley@weil.com
`
`
`
`Attorneys for Petitioner Intel Corporation
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 22, 2018, a copy of PETITONER’S
`
`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE was served
`
`by filing this document through the PTAB’s E2E Filing System as well as
`
`delivering a copy via electronic mail upon the following:
`
`James M. Glass
`Registration No. 46,729
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`Tel.: (212) 849-7000
`Email: jimglass@quinnemanuel.com
`Joseph M. Paunovich
`Registration No. 59,033
`Quinn Emanuel Urquhart & Sullivan LLP
`865 S. Figueroa Street, 10th Fl.
`Los Angeles, CA 90017
`Tel.: (213) 443-3000
`Email: joepaunovich@quinnemanuel.com
`Brian E. Mack
`Registration No. 57,189
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California Street, 22nd Fl.
`San Francisco, CA 94111
`Tel.: (415) 875-6600
`Email: brianmack@quinnemanuel.com
`
`
`
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
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`
`Mark Lauer
`Registration No. 36,578
`Silicon Edge Law Group LLP
`7901 Stoneridge Dr., Ste. 528
`Pleasanton, CA 94588
`Tel.: (925) 621-2121
`Email: mark@siliconedgelaw.com
`
`Dated: June 22, 2018
`
`/s/ Garland T. Stephens
`Garland T. Stephens
`Reg. No. 37,242
`
`
`
`
`
`
`
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