Paper No. 60
`Filed: January 15, 2020
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case Nos. IPR2018-01605, -01606, -01607
`U.S. Patent No. 7,680,800
`
`––––––––––––––––––
`
`
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`Filed: January 15, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case Nos. IPR2018-01605, -01606, -01607
`U.S. Patent No. 7,680,800
`
`––––––––––––––––––
`
`
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`
`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,680,800
`
`TABLE OF CONTENTS
`
`Introduction .................................................................................................... 1
`I.
`Exhibit 2101 .................................................................................................... 1
`II.
`III. Exhibits 2065, 2075, and 2091....................................................................... 6
`IV. Exhibits 2066-2074, 2076, 2078-2099, 2102-2104, 2106-2107, 2110, 2113-
`2134, 2140-2152, 2156, 2163, 2165, and 2170 .............................................. 7
`Exhibit 2170 .................................................................................................... 8
`V.
`VI. Exhibit 2112 .................................................................................................... 8
`VII. Patent Owner Response ................................................................................ 9
`VIII. Conclusion ...................................................................................................... 9
`
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`i
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,680,800
`
`I.
`
`Introduction
`
`Pursuant to 37 C.F.R. §§ 42.62 and 42.64, Petitioner Microsoft Corporation
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`hereby move to exclude certain evidence propounded by the Patent Owner
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`DirectStream. Petitioner has timely objected to DirectStream’s evidence (Paper 37
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`and Paper 42) and said evidence does not comport with the Federal Rules of
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`Evidence (“FRE”) or the rules of the Board. The Board should grant this Motion
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`and exclude the evidence identified below from consideration.
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`II. Exhibit 2101
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`As authorized by the Board, Petitioner moves to exclude and/or strike
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`portions of Mr. Huppenthal’s declaration (Ex. 2101 ¶¶ 80, 82-86) due to his refusal
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`to answer questions concerning those portions of the declaration. See Order
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`Granting In Part Petitioner’s Motion to Compel and Strike, Paper No. 48 at 7-8
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`(“[I]f Mr. Huppenthal cannot be meaningfully cross-examined regarding topics
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`addressed in his declaration due to allegedly classified information, Petitioner may
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`seek to exclude those portions of his declaration by filing a motion to exclude at
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`the appropriate time.”). In particular, Mr. Huppenthal’s declaration asserts that
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`certain systems made by his company were “covered by” the patents at issue in
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`these proceedings, Ex. 2101, ¶80, and then describes the sale of systems to various
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`government agencies and contractors, including the Army, Navy, Air Force and
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`NSA, among others, Ex. 2101, ¶¶82-86. Patent Owner relies on this testimony for
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`1
`PETITIONER’S MOTION TO EXCLUDE
`
`
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,680,800
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`support of its argument that secondary considerations of non-obviousness apply.
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`See, e.g., Patent Owner Response, IPR2018-01605, -01606, -01607 at 116-117.
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`However, when Petitioner’s counsel sought to question Mr. Huppenthal
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`about those systems sold to the government and its contractors, Mr. Huppenthal
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`refused to answer in almost every case, asserting that “many of these are classified
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`programs.” Ex. 1073, (Huppenthal Tr.) 99:8-101:25. Moreover, when questioned
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`about those same systems by his own counsel on re-direct, Mr. Huppenthal
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`confirmed that at least some “aspects” of the “classified” systems were different
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`from systems sold commercially. Id. at 115:16-116:14.
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`Petitioner has a right to cross-examine Mr. Huppenthal sufficient to create a
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`full disclosure of the facts, see 5 U.S.C. § 556(d) (“A party is entitled to …
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`conduct such cross-examination as may be required for a full and true disclosure of
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`the facts.”); Bowman Transp., Inc. v. Arkansas-Best Freight Sys., Inc., 419 U.S.
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`281, 288 n.4 (1974) (“Indeed, the Due Process Clause forbids an agency to use
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`evidence in a way that forecloses an opportunity to offer a contrary presentation.”),
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`and Mr. Huppenthal’s assertion that his testimony is “classified” cannot overcome
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`that right. Indeed, the privilege against discovery into classified material can be
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`asserted solely by the United States. U.S. v. Reynolds, 345 U.S. 1 (1953). Neither
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`Mr. Huppenthal nor Patent Owner has any standing to assert such a privilege. Mr.
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`Huppenthal has therefore effectively made himself unavailable for questioning as
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`2
`PETITIONER’S MOTION TO EXCLUDE
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`
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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,680,800
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`to the details of the systems sold to the government and its contractors. His
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`testimony should therefore be excluded and/or struck, HTC Corp. v. NFC
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`Technology, LLC, IPR2014-01198, Paper 41, and Patent Owner should be
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`precluded from relying on it, Aristocrat Technologies, Inc. v. IGT, IPR2016-00252,
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`Paper 17.
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`Petitioner further moves to exclude Exhibit 2101 (Declaration of John
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`Huppenthal) in its entirety as not being relevant to any issue on which trial has
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`been instituted, and for lacking foundation, containing hearsay, and/or causing
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`undue prejudice. Dr. Huppenthal’s declaration provides an irrelevant narrative
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`discussion of his participation in reconfigurable computing. See Fed. R. Evid. 401-
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`03. Further, Dr. Huppenthal admits that he never considered any of the
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`information discussed in his declaration in relation to the claims of the 800 Patent
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`(Ex. 1073 (Huppenthal Dep. Tr.), 106:7-112:23). Additionally, Dr. Huppenthal’s
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`declaration contains only threadbare citations to the 800 Patent itself, citations
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`which are unexplained and undeveloped. Thus, Petitioner has had no fair
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`opportunity to respond to Dr. Huppenthal’s unstated and under developed
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`contentions (if any) regarding the 800 Patent. Therefore, Exhibit 2101 is
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`irrelevant.
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`Further, his testimony in at least paragraphs 27 and 80-86 contain statements
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`that are either based on hearsay or lack of personal knowledge. See Fed. R. Evid.
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`3
`PETITIONER’S MOTION TO EXCLUDE
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`
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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,680,800
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`401-03, 801, 802. For example, paragraph 27 purports to quote SRC founder
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`Seymour Cray’s predictions relating to the future of “HPC systems.” This quote
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`from Seymour Cray is an out of court statement being offered for the truth of the
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`matter asserted (i.e., that allegedly there was long term value in building “HPC
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`systems”), and does not fall under any hearsay exceptions. Paragraph 27 further
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`argues that the reason the NSA funded Cray Research was because “no one was
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`producing vector processors.” However, Dr. Huppenthal never establishes, nor
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`claims to have any special insight into the internal decision making and thought
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`processes of the NSA. Therefore, the NSA’s reasons for funding Cray Research
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`are outside of his personal knowledge, or at least are in the alternative hearsay.
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`As to paragraphs 80-86 of his declaration, Dr. Huppenthal declares that
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`specific functionalities “covered by” the 800 Patent were incorporated into “SRC-6
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`products and the SRC-7” prototype. However in cross-examination he admitted
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`that he never compared any SRC products to the claims of the 800 patents. See Ex.
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`1073 (Huppenthal Dep. Tr.), 106:7-112:23. Therefore, any statements mapping
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`specific functionalities to specific patents is outside of his personal knowledge.
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`Later, in paragraphs 81-86, Dr. Huppenthal testifies about the impressions and
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`internal thoughts of others, without establishing any basis for his supposed
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`knowledge. For example, he states that it “is still known at the highest levels
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`within Xilinx as to why SRC does not use Xilinx FPGAs.” Ex. 2101, ¶81.
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`4
`PETITIONER’S MOTION TO EXCLUDE
`
`
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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,680,800
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`However, Dr. Huppenthal never established any basis for his knowledge into what
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`is “known at the highest levels” of Xilinx. Indeed, other than using Xilinx
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`hardware, Dr. Huppenthal never claims to have any special relationship with
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`Xilinx which would provide this type of knowledge. And, several other
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`paragraphs are similar—i.e., where he testifies about the thoughts and impressions
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`of a purchaser of SRC products without establishing any basis for his alleged
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`knowledge. See Ex. 2101, ¶¶ 82 (“the customers wanted to take advantage of the
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`MAP processor and our high level language programming environment”); 83
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`(“The Army, Air Force, Lockheed Martin and General Electric were particularly
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`interested in the size, weight and power (SWaP) advantages that the MAP
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`processor provided”); 84 (“The Navy and NSA selected the systems to take
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`advantage of the MAP processors higher bit manipulation capability”); 85 (“Their
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`interest was in the higher performance that a MAP processor gave them”); 86 (“All
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`of these customers chose the systems because of the increased performance of the
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`MAP processor.”). Finally, to the extent that Dr. Huppenthal is testifying that
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`these statements were actually communicated to him, then each would be hearsay
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`and should be excluded on that basis as well.
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`Petitioner timely objected to this exhibit. See Paper 37 at 2 (“Petitioner also
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`objects to Exhibit 2101 as not being relevant to any issue on which trial has been
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`instituted, lacking foundation, for containing hearsay, and/or causing undue
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`5
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,680,800
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`prejudice.”); see also Paper 42 at 4 (Objecting to and moving to strike ¶¶ 80, 82-
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`86).
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`III. Exhibits 2065, 2075, and 2091
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`Petitioner moves to exclude Exhibits 2065, 2075, and 2091 as not being
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`relevant to any issue on which trial has been instituted, for containing hearsay,
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`and/or causing undue prejudice. These exhibits are transcripts of deposition
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`testimony from Petitioner’s experts (Dr. Stone (Ex. 2065); Dr. Trimberger (Ex.
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`2075); Dr. Hauck (Ex. 2091)) in different inter partes review proceedings
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`(IPR2018-01594 (Ex. 2065); IPR2018-01599, -01600 (Ex. 2075); IPR2018-01604
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`(Ex. 2091)). The testimony presented in these Exhibits are therefore “out of court”
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`statements that relate to the patents and state of the art at issue in those proceedings
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`rather than the 800 patent proceeding.
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`Further, these Exhibits are highly prejudicial as they present themselves with
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`the indicia of expert testimony while being totally devoid from the necessary
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`context of the matters from which they originate. In an IPR proceeding the
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`purpose of a deposition is to provide opposing counsel with an opportunity to
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`cross-examine a witness who has previously entered direct testimony. See 37
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`C.F.R. § 42.51(b) (“A party is not entitled to discovery except. . . [as] [c]ross
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`examination of affidavit testimony prepared for the proceeding”). However, in this
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`case, Patent Owner has effectively entered the cross-examination of Petitioner’s
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`6
`PETITIONER’S MOTION TO EXCLUDE
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`
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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,680,800
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`experts, without their corresponding direct testimony, thus removing the deposition
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`from its necessary context. Therefore, Exhibits 2065, 2075, and 2091 are not
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`relevant to any issue on which trial has been instituted, contain hearsay, and are
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`highly prejudicial.
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`Petitioner timely objected to these exhibits. See Paper 37 at 2 (“Petitioner
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`objects to Exhibits 2065, 2075, and 2091 as not being relevant to any issue on
`
`which trial has been instituted, for containing hearsay, and/or causing undue
`
`prejudice. See Fed. R. Evid. 401-03, 801, 802.”)
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`IV. Exhibits 2066-2074, 2076, 2078-2099, 2102-2104, 2106-2107, 2110, 2113-
`2134, 2140-2152, 2156, 2163, 2165, and 2170
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`Petitioner moves to exclude Exhibits 2066-2074, 2076, 2078-2099, 2102-
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`2104, 2106-2107, 2110, 2113-2134, 2140-2152, 2156, 2163-2165, and 2170 as not
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`being relevant to any issues on which trial has been instituted, lacking foundation,
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`and/or causing undue prejudice. Exhibits 2066-2068, 2076, 2078-2099, 2106-
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`2107, 2128, 2140, 2156, 2163, 2165, and 2170 are irrelevant because they were
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`not discussed or cited anywhere in DirectStream’s Response, nor its Sur-Reply.
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`Exhibits 2069, 2102-2104, 2110, 2113-2127, 2129-2134, and 2141-2152 are
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`irrelevant because they were not substantively discussed and were only cited
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`superficially in DirectStream’s Response and Sur-Reply. Patent Owner does not
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`sufficiently develop any contentions related to these exhibits. Thus, Petitioner has
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`7
`PETITIONER’S MOTION TO EXCLUDE
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`
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,680,800
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`had no fair opportunity to respond to Patent Owner’s unstated contentions (if any)
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`regarding the same. See FRE 401-403.
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`Petitioner timely objected to these exhibits. See Paper 37 at 1 (“Petitioner
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`objects to Exhibits 2066-2074, 2076, 2078-2100, 2102-2104, 2106-2107, 2110-
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`2111, 2113-2134, 2140-2152, 2156, 2163-2165, and 2170 as not being relevant to
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`any issue on which trial has been instituted, lacking authentication, lacking
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`foundation, for containing hearsay, and/or causing undue prejudice.”).
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`V. Exhibit 2170
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`Petitioner further moves to exclude Exhibit 2170 as being cumulative of
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`other exhibits in evidence. Exhibit 2170 appears to be a duplication of Exhibit
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`1007, filed by Petitioner. This is made clear by the presence of an exhibit stamp
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`that reads “Petitioner Microsoft Corporation – Ex. 1007” on the second page of
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`Exhibit 2170. Therefore, this evidence is cumulative of evidence already in the
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`record. See Fed. R. Evid. 401-03.
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`Petitioner timely objected to these exhibits. See Paper 37 at 2 (“Petitioner
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`objects to Exhibit 2170 as being cumulative of other exhibits in evidence.”).
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`VI. Exhibit 2112
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`Petitioner also moves to exclude paragraphs 41, 145, 153, 180, 181, and 247,
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`in Exhibit 2112 (Declaration of Houman Homayoun), which rely on Exhibit 2101.
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`8
`PETITIONER’S MOTION TO EXCLUDE
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`
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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,680,800
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`Petitioner timely objected to these portions of these exhibits. See Paper 37 at
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`3 (“Petitioner also objects to any paragraphs in Exhibits 2112 and 2166 to the
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`extent they rely on the aforementioned objected to exhibits.”)
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`VII. Patent Owner Response
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`Petitioner also moves to exclude any passages from the Patent Owner’s
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`Response which rely on any of Exhibits 2065, 2069, 2101, 2102-2104, 2110, 2113-
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`2127, 2129-2134, 2141-2152, paragraphs 41, 145, 153, 180, 181, 247 of Exhibit
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`2112, such as those found on pages 8-15, 18-22, 25-27, 29, 30, 35, 47, 51, 53, 54,
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`73-75, 86, 108, 109, 111, 114, 115, 116, 118, and 119-120.
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`Petitioner timely objected to these passages. See Paper 37 at 3 (“Petitioner
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`also objects to any paragraphs in Patent Owner’s Response to the extent they rely
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`on the aforementioned objected to exhibits.”)
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`VIII. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant this Motion and exclude the evidence identified above.
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`
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`Dated: January 15, 2020
`
`Respectfully Submitted,
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No.39,772
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`9
`PETITIONER’S MOTION TO EXCLUDE
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`
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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,680,800
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`jmicallef@sidley.com
`(202) 736-8492
`Attorney for Petitioner
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`10
`PETITIONER’S MOTION TO EXCLUDE
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`
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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,680,800
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 15, 2020, a copy of the foregoing document
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`has been served via email on the following:
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`Alfonso Chan, Shore Chan DePumpo LLP (achan@shorechan.com)
`Joseph DePumpo, Shore Chan DePumpo LLP (jdepumpo@shorechan.com)
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`Sean Hsu, Janik Vinnakota LLP (shsu@jvllp.com)
`G. Donald Puckett, Janik Vinnakota LLP (dpuckett@jvllp.com)
`Rajkumar Vinnakota, Janik Vinnakota LLP (kvinnakota@jvllp.com)
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`Dated: January 15, 2020
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`Respectfully Submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, DC 20005
`(202) 736-8492
`Attorney for Petitioner
`
`11
`PETITIONER’S MOTION TO EXCLUDE
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