UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`MICROSOFT CORPORATION,
`
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`
`Patent Owner.
`_______________________
`IPR2018-01605, IPR2018-01606, IPR2018-01607
`Patent 7,620,800 B2
`_____________________
`
`
`PATENT OWNER DIRECTSTREAM, LLC’S
`RESPONSE TO PETITIONER’S MOTION TO EXCLUDE
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`MICROSOFT CORPORATION,
`
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`
`Patent Owner.
`_______________________
`IPR2018-01605, IPR2018-01606, IPR2018-01607
`Patent 7,620,800 B2
`_____________________
`
`
`PATENT OWNER DIRECTSTREAM, LLC’S
`RESPONSE TO PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`III.
`IV.
`
`INTRODUCTION ........................................................................................... 1
`EXHIBIT 2101 (HUPPENTHAL DECLARATION) ..................................... 2
`A. Huppenthal’s Inability to Disclose Irrelevant, Classified
`Information is Not Grounds to Strike Portions of His Declaration. ........... 2
`B. Petitioner’s Attempt to Exclude all of Mr. Huppenthal’s Testimony
`as Irrelevant is Overboard and Without Merit. .......................................... 4
`C. Petitioner’s Hearsay Objections to Huppenthal’s Testimony are
`Meritless. .................................................................................................... 6
`EXHIBITs 2065, 2075, and 2091 .................................................................... 7
`EXHIBITS 2066-2074, 2076, 2078-2099, 2102-2104, 2106-2107,
`2110, 2113-2134, 2140-2152, 2156, 2163, 2165, and 2170 ........................... 9
`A. Petitioner’s Blanket Objections to Exhibits Relied Upon by Patent
`Owner’s Experts and Witnesses are Improper. .......................................... 9
`B. Petitioner Failed to Preserve its Objections on Many Exhibits it
`Now Challenges. ....................................................................................... 12
`EXHIBIT 2170 .............................................................................................. 14
`V.
`EXHIBIT 2112 .............................................................................................. 15
`VI.
`VII. CONCLUSION .............................................................................................. 15
`VIII. CERTIFICATE OF SERVICE ...................................................................... 17
`IX. CERTIFICATE OF PAGE COUNT ............................................................. 18
`APPENDIX A ................................................................................................ 19
`X.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`CASES:
`
`Align Tech., Inc. v. ClearCorrect Operating, LLC,
`745 Fed. App’x 361 (Fed. Cir. 2018) .................................................................. 12
`
`
`
`Glendale Fed. Bank, FSB v. U.S.,
`39 Fed.Cl. 422 (Nov. 10, 1997) ............................................................................. 8
`
`
`Knauf Insulation, Inc. v. Rockwool Int’l A/S,
`No. 2018-1810, et al., 2019 WL 5152356 (Fed. Cir. Oct. 15, 2019) .................. 12
`
`
`Personal Web Techs., LLC v. Apple, Inc.,
`917 F.3d 1376 (Fed. Cir. 2019)............................................................................ 12
`
`
`West Interactive Corp. v. First Data Resources, Inc.,
`972 F.2d 1295 (Fed. Cir. 1992).............................................................................. 6
`
`
`Williams v. Illinois,
`567 U.S. 50 (2012) ............................................................................................... 15
`STATUTES:
`37 U.S.C. §798 ........................................................................................................... 3
`RULES:
`FED. R. EVID. 401 ..................................................................................................... 10
`
`FED. R. EVID. 402 ...................................................................................... 4, 5, 10, 11
`
`FED. R. EVID. 607 ..................................................................................................... 10
`
`FED. R. EVID. 613 ..................................................................................................... 10
`
`FED. R. EVID. 702 ..................................................................................................... 10
`
`FED. R. EVID. 703 ............................................................................................. passim
`
`FED. R. EVID. 801 ...................................................................................................6, 8
`
`
`
`ii
`
`
`
`FED. R. EVID. 803 ....................................................................................................... 6
`
`FED. R. EVID. 807 ....................................................................................................... 6
`
`FED. R. EVID. 901 .............................................................................................. 10, 16
`REGULATIONS:
`37 C.F.R. §42.64 ......................................................................................... 10, 11, 14
`
`37 C.F.R. §42.65 ........................................................................................... 1, 10, 14
`
`OTHER AUTHORITIES:
`
`Exec. Order No. 13526, 75 F.R. 705 (2010) .............................................................. 3
`
`
`
`
`iii
`
`
`
`
`
`I. INTRODUCTION
`Without exception, Petitioner’s objections to Patent Owner’s evidence are
`
`misplaced, ill-founded, or worse, an attempt to create false issues in order to hide
`
`relevant evidence from the Board. Petitioner continues to object to the declaration
`
`of Jon Huppenthal, a co-inventor and witness for the Patent Owner. Yet, Petitioner’s
`
`endless objections to Huppenthal’s declaration have never been genuine. Itis merely
`
`a false complaint it continues to assert, despite being granted a second deposition to
`
`cure any alleged prejudice, to eliminate testimony damaging to its case. This pattern
`
`repeats itself as Petitioner, with no basis, tries to eliminate key testimony from Patent
`
`Owner’s experts by arguing experts are not permitted to rely on critical (and
`
`damaging to Petitioner) evidence despite the plain language of FED. R. CIV. P. 703
`
`or 37 C.F.R. §42.65.
`
`The remainder of Petitioner’s “objections” are sloppy, nonsensical, and/or
`
`dim such as objecting to self-authenticating exhibits, objecting to business record
`
`affidavits, objecting to statements in witness declarations that it failed to pursue in
`
`cross-examination, and objecting to publications written by its own experts covering
`
`the precise issues at dispute in this case. Petitioner’s objections are not serious; the
`
`objections are the typical, predictable attempt to obfuscate the truth and burden the
`
`Board and Patent Owner by having to wade through scores of objections that should
`
`
`
`1
`
`
`
`never be made. As shown below and as set forth in Appendix A, attached hereto,
`
`each of Petitioner’s objections to Patent Owner’s exhibits should be overruled.
`
`II. EXHIBIT 2101 (HUPPENTHAL DECLARATION)
`A. Huppenthal’s Inability to Disclose Irrelevant, Classified Information is
`Not Grounds to Strike Portions of His Declaration.
`The Huppenthal declaration provides high-level, general testimony regarding
`
`customers who purchased SRC-6 computers as well as the specific hardware features
`
`of interest to those customers. EX2101 (“Decl.”) ¶¶80-87. His declaration focuses
`
`exclusively on the hardware make-up of the reconfigurable systems developed to
`
`achieve high-performance computing. His testimony does not specifically discuss
`
`any applications any customers ran on the SRC-6. Petitioner conducted a full cross-
`
`examination on this testimony (including testimony on non-classified applications),
`
`and the witness was permitted to answer all questions relevant to the patents and
`
`these proceedings. EX1073 (“Depo.Tr.”) 100:11-103:5, 104:5-106:22.
`
`Petitioner wandered outside the scope of the declaration by asking irrelevant
`
`questions about classified applications that Department of Defense (“DoD”) entities
`
`ran on the SRC-6 computer. Depo.Tr., 101:10-15, 16-18, 19, 102:3-103:13. Indeed,
`
`when asked about systems sold to customers, Huppenthal provided answers about
`
`the features and functionality of those systems, including descriptions of
`
`applications that were not classified. Huppenthal only refused to answer portions of
`
`questions based on his legal obligation to protect classified national security
`
`
`
`2
`
`
`
`information. See 37 U.S.C. §798; see also Exec. Order No. 13526, 75 F.R. 705
`
`(2010). Petitioner’s argument that its inability to obtain irrelevant, classified
`
`information is a naked attempt to prejudice Patent Owner by limiting Huppenthal’s
`
`relevant testimony. Petitioner failed to provide any contrary testimony of the
`
`effectiveness of the SRC-6 computer and the various patented features at issue, and
`
`instead, seeks to exclude damaging, relevant testimony it cannot refute based on its
`
`ill-founded objections.
`
`Moreover, to cure any potential prejudice, Petitioner was granted an
`
`additional one-hour deposition of Huppenthal, but tellingly, it chose not to re-
`
`examine this subject despite using this “classified information” issue as the basis for
`
`obtaining an additional deposition. See Paper 48 at 8-9. Petitioner made no attempt
`
`at the second deposition to “meaningfully cross-examine” the witnesses to test
`
`whether it could elicit additional information on these applications that would not
`
`divulge classified features or further ask about the non-classified applications
`
`already discussed previously. And, Petitioner did not use any of the deposition
`
`testimony or even bother to include the second deposition transcript as an exhibit in
`
`this case. Clearly, the testimony was not important to Petitioner other than an excuse
`
`for more cross-examination and the preservation of the issue upon which it bases its
`
`current objection.
`
`
`
`3
`
`
`
`By choosing not to pursue the subject any further, Petitioner’s continued
`
`objections are waived and without merit. The objection is meant simply to prejudice
`
`Patent Owner and discredit Huppenthal. Regardless, Petitioner never addresses why
`
`such questions regarding classified DoD applications are relevant to any issue in
`
`these cases, including countering any secondary indicia of non-obviousness on the
`
`system hardware make-up (not applications) the patent claims teach or to show how
`
`such testimony is within the declaration scope. FED. R. EVID. 402. Its objection to
`
`EX2101 should be overruled.
`
`B.
`
`Petitioner’s Attempt to Exclude all of Mr. Huppenthal’s Testimony as
`Irrelevant is Overboard and Without Merit.
`Petitioner attempts to exclude the entirety of the Huppenthal declaration as
`
`irrelevant is misplaced and overbroad. Indeed, Petitioner cannot and does not
`
`explain why the testimony is not relevant or meet its burden meriting exclusion
`
`under FED. R. EVID. 402.
`
`Instead, Petitioner supports itself by making specious “objections” to
`
`Huppenthal’s direct testimony and mischaracterizing its nature to support its blanket
`
`exclusion attempt. Paper 60, 3-6. But these complaints are not serious and, at worst,
`
`only go to the weight of the testimony, if that at all. They are instead wishful cross-
`
`examination sound bites Petitioner wished it had, failed to get, or even failed to
`
`bother trying to ask when presented with Mr. Huppenthal for deposition two times.
`
`And, Petitioner made no attempt to counter Huppenthal’s assertions during cross-
`4
`
`
`
`
`
`examination with any impeachment evidence—probably because none exists. Nor
`
`try to counter in Reply. Instead, Petitioner improperly requests the Board to exclude
`
`the entire declaration.
`
`Huppenthal’s declaration is limited to his personal knowledge and
`
`background facts—providing a general technological context of the inventions
`
`claimed in each of the challenged patents. See, e.g., Decl., ¶¶32-37, ¶¶48-69, ¶¶80-
`
`86. This highly relevant technical background provides the Board a backdrop of the
`
`problems in the state of art of high-performance computing systems and the various
`
`solutions SRC undertook to overcome them using reconfigurable hardware and
`
`development—information it must know and consider when reaching its decision in
`
`this case. More importantly, Huppenthal’s testimony provides the historical and
`
`technical understanding of the development of the SRC patent portfolio, which
`
`addresses the problems faced in HPC reconfigurable computing as they arose and
`
`the limitations and capabilities of FPGAs at the relevant times. Decl., ¶¶11-31; Decl.
`
`Ex. 8 (citing EX2109).
`
`Moreover, Patent Owner’s experts corroborate their opinions, including their
`
`facts and data cited in their declarations, with Huppenthal’s real-world testimony on
`
`this development—using this testimony, in part, to explain what a POSITA would
`
`consider in evaluating the state of the art. EX2112¶¶40, 106-118; EX2166¶¶27-29.
`
`Petitioner instead tries to claim the entirety of the testimony is irrelevant without any
`
`
`
`5
`
`
`
`coherent explanation required by FED. R. EVID. 402. In reality, Petitioner needs Mr.
`
`Huppenthal’s testimony excluded because it is devasting to Petitioner’s false
`
`characterization of the state of the art, which it desperately wants to hide from the
`
`Board.
`
`C.
`
`Petitioner’s Hearsay Objections to Huppenthal’s Testimony are
`Meritless.
`Petitioner’s objections to Decl., ¶¶27, 80-86, as hearsay lack any basis. This
`
`testimony is not hearsay—it is not offered for the truth of the matter asserted. Rather,
`
`this testimony is shows what Huppenthal believed to be true at the time, based upon
`
`personal knowledge of market conditions and customers’ preferences, and Petitioner
`
`made no attempt in cross examination to counter these assertions. Compare FED.
`
`R. EVID. 801(c)(2) with FED. R. EVID. 801(d)(2)(B); see also West Interactive Corp.
`
`v. First Data Resources, Inc., 972 F.2d 1295, 1299-1300 (Fed. Cir. 1992). The
`
`testimony is also admissible under FED. R. EVID. 803(1), (3) and 807. And, the
`
`testimony is nevertheless further corroborated by contemporaneous records and
`
`witnesses, with first-hand testimony, which provides equal trustworthiness of Mr.
`
`Huppenthal’s testimony of customer preferences, including DoD and other
`
`customers of the SRC-6 computer. See e.g., EX2166¶¶24-30; EX2167; EX2168;
`
`FED. R. EVID. 807.
`
`
`
`6
`
`
`
`III. EXHIBITS 2065, 2075, and 2091
`The depositions of Petitioner’s experts, Dr. Stone (EX2065), Dr. Trimberger
`
`(EX2075), and Dr. Hauck (EX2091) (collectively, “Petitioner’s Experts”), are
`
`admissible evidence in this case despite Petitioner’s complaints of relevancy,
`
`hearsay, and prejudice. Petitioner’s objections should be overruled.
`
`Specifically, Petitioner’s expert testimony is highly relevant expert testimony
`
`about the state of the art during the time periods relevant across all related, co-
`
`pending IPR cases and demonstrate the failures by the Petitioner’s experts to
`
`appreciate the state of the art—not just in the -01605 matter. EX2075, 129:24-
`
`130:20; EX2112¶¶8, 145-146, 247-252 (discussing review of all deposition
`
`transcripts, similar failures, in general, of Petitioner’s experts regarding a POSITA,
`
`Stone’s hindsight methodology, Stone’s failure to apply his own methodology from
`
`prior texts he authored, Stone’s failure to appreciate the real state of the art, etc.);
`
`Response, 18-28. The state of the art at the relevant time period is at issue in this
`
`case, as well as all other co-pending cases—an issue that Patent Owner and
`
`Petitioner contest, and an issue where the Board must make factual findings.
`
`Additionally, Petitioner’s experts’ deposition statements and exhibits were relied
`
`upon by Patent Owner’s expert in this case, see, e.g., EX2112¶¶8, 145-146, 247-252,
`
`making EX2085 admissible under FED. R. EVID. 703. Petitioner’s experts’ testimony
`
`is not irrelevant because they were designated as an expert in a case other than -
`
`
`
`7
`
`
`
`1605, but rather, Petitioner seeks to portray this testimony as irrelevant because the
`
`testimony is damaging—something the Petitioner wants the Board to ignore here
`
`and elsewhere.
`
`Moreover, regardless of the Petitioner’s complaints regarding the relevancy
`
`of this information, EX2065, EX2075, and EX2091 are admissible and not subject
`
`to hearsay objections. Stone, Trimberger, and Hauck are paid trial experts for
`
`Petitioner—their statements can be used by Patent Owner in this case as admissions.
`
`FED. R. EVID. 801(d)(2)(A-D); 804(b)(1), (3); see also Glendale Fed. Bank, FSB v.
`
`U.S., 39 Fed.Cl. 422, 424-425 (Nov. 10, 1997).
`
`Finally, Petitioner suffers no prejudice by the admission of EX2065, EX2075,
`
`and EX2091 in this case. The testimony given by Petitioner’s experts are not specific
`
`to a particular case. They each provide general testimony on a highly contested
`
`issues across all cases. To the extent any rehabilitation is necessary, in the mind of
`
`the Petitioner, such rehabilitation was available through Petitioner’s direct
`
`examination of each expert and its briefing following the depositions or
`
`clarifications in its Reply—all of which were not done. Petitioner has suffered no
`
`prejudice related to EX2065, EX2075, and EX2091 other than the impact it has had
`
`on diminishing Petitioner’s arguments across all cases.
`
`
`
`8
`
`
`
`IV. EXHIBITS 2066-2074, 2076, 2078-2099, 2102-2104, 2106-2107, 2110, 2113-
`2134, 2140-2152, 2156, 2163, 2165, and 2170
`Petitioner’s Blanket Objections to Exhibits Relied Upon by Patent
`Owner’s Experts and Witnesses are Improper.
`To further avoid the field of endeavor the patent teaches and problems in the
`
`A.
`
`art at the time, Petitioner attempts to side-step the actual state of the art by objecting
`
`under various evidentiary basis to essentially all exhibits introduced by Patent
`
`Owner showing contemporaneous technical features in the state of the art, including
`
`material authored by its own experts. As noted in its Reply, Petitioner criticizes
`
`Patent Owner and its experts and fact witnesses for including relevant, corroborating
`
`evidence to support their testimony or evidence of secondary indicia of non-
`
`obviousness, such as relevant facts and data demonstrating the true state of art of
`
`high-performance computing, parallelism, and FPGA technology at the time. And,
`
`further criticizes Patent Owner for citing such evidence in the Response or discounts
`
`its significance. See Reply, 1; Pet. Mot. to Exclude, 7-8.
`
`It is evident Petitioner spent little, if any time, actually understanding Patent
`
`Owner’s evidence, the citation, or Patent Owner’s witnesses’ properly including
`
`these facts and data to corroborate their testimony. Contrast Patent Owner’s
`
`evidence with the conclusory evidence Petitioner’s experts provide on the state of
`
`the art. See Response, passim.
`
`
`
`9
`
`
`
`For example, the evidence relied upon by Patent Owner, including several of
`
`the specific Exhibits objected to in this Section were: 1) authenticated by Patent
`
`Owner’s experts and witnesses, 2) used as impeachment evidence against
`
`Petitioner’s experts during deposition or authenticated by Petitioner’s own experts,
`
`or 3) are relevant and corroborated each of Patent Owner’s experts’ or witnesses’
`
`underlying personal knowledge, methodology, opinions, or facts and data relied
`
`upon as required under 37 C.F.R. §42.65 and FED. R. EVID. 401, 402, 607, 613, 702,
`
`703, 901. See e.g., EX2101¶2, Ex. B (proving up as business records EX2105 -
`
`EX2110)1; EX2163 (proving up authenticity of EX2164 and EX2165)2;
`
`EX2166¶¶15-16 (noting that EX2169 and EX2170 used to form his opinions);
`
`EX2112¶¶5-9, 141-146 (noting that EX2113 - EX2157 and various depositions,
`
`
`1Petitioner objects to EX2111, which is self-authenticating under FED. R. EVID.
`
`901(5) as a Dep’t of Commerce publication, and relied upon by Mr. Huppenthal.
`
`See EX2101¶87 (corroborating testimony).
`
`2Curiously, Petitioner objects to EX2163, a business record prove-up affidavit
`
`attesting to the authenticity to various CRAY computer documents relied upon by
`
`various Patent Owner witnesses and experts, without any explanation. Patent Owner
`
`notes any objection is waived as the witness was not even cross-examined.
`
`
`
`10
`
`
`
`EX2075 - EX2090, EX2091 - EX2100,3 and underlying exhibits used to form
`
`opinions).
`
`Moreover, Patent Owner provided additional timely supplemental testimony
`
`under 37 C.F.R. §42.64(B)(2) from Dr. Homayoun indicating that the exhibits
`
`attached to his declaration and the materials provided during these proceedings were
`
`of the type relevant to his opinions and the type of information an expert would
`
`reasonably rely upon to evaluate the patents-at-issue. See EX2179¶¶5-8 (discussing,
`
`in part, EX2113 - EX2157); see also FED. R. EVID. 703.
`
`More importantly, the state of the art is critical to show what a POSITA at the
`
`time would understand, be motivated to do with the prior art, or demonstrate the
`
`secondary indicia of non-obviousness—which Petitioner failed to provide. See
`
`Response, 17-28. Thus, these materials are relevant under FED. R. EVID. 402 to show
`
`that Petitioner did not meet its burden of proof.
`
`
`3Petitioner waived any authenticity objections to Exhibits 2079, 2081, 2083, 2085-
`
`2087, 2090, 2092-2098 as no timely objection was made during the underlying
`
`deposition introducing the exhibits. See 37. C.F.R. §42.64(a). Moreover, these
`
`exhibits were used to impeach Petitioner’s experts and are proper admissible
`
`impeachment evidence, including exhibits previously authored by the Petitioner
`
`expert. See FED. R. EVID. 607, 613.
`
`
`
`11
`
`
`
`Finally, to demonstrate the relevancy of each objected to exhibit, Patent
`
`Owner provides as Appendix A, a listing of each exhibit and how it was cited in
`
`Patent Owner’s Response or Sur-Reply, used by its witnesses to formulate their
`
`opinions, or used to impeach Petitioner’s experts during these proceedings.
`
`Petitioner’s objections are without merit and of the type the Board frowns
`
`upon as no analytical attempt was made to actually form a proper evidentiary
`
`objection.4 It will be reversible error if the Board does choose to ignore or strike all
`
`these exhibits. See, e.g., Knauf Insulation, Inc. v. Rockwool Int’l A/S, No. 2018-
`
`1810, et al., 2019 WL 5152356, at *4 (Fed. Cir. Oct. 15, 2019) (vacating Board
`
`invalidity ruling based on improper interpretation of prior art reference at the time
`
`of invention); Personal Web Techs., LLC v. Apple, Inc., 917 F.3d 1376, 1382-83
`
`(Fed. Cir. 2019) (same); Align Tech., Inc. v. ClearCorrect Operating, LLC, 745 Fed.
`
`App’x 361, 364-65 (Fed. Cir. 2018) (same).
`
`B.
`
`Petitioner Failed to Preserve its Objections on Many Exhibits it Now
`Challenges.
`Many of the documents Petitioner objects to were first introduced in the
`
`deposition of Hauck (EX2091) or Trimberger (EX2075) or Stone (EX2065) as
`
`
`4Https://www.uspto.gov/sites/default/files/documents/Boardside_Chat_Motions_to_
`
`Exclude_and_Motions_to_Strike_20180607.pdf (last visited January 19, 2020)
`
`(Slide 22 discussing the “do’s” and “don’t’s” on motions to exclude).
`
`
`
`12
`
`
`
`impeachment evidence and detailed objections were not lodged per 37 C.F.R.
`
`§42.64(a) and are therefore waived. Patent Owner contends any specific objections
`
`now should be overruled:
`o EX2092 – see EX2091, 218:3-6 (no objection);
`o EX2095 – see EX2091, 237:3-23 (no objection);
`o EX2096 – see EX2091, 264:15-265:16 (objection to relevance only, not
`
`authentication);
`o EX2098 – see EX2091, 297:10-14 (no objection);
`o EX2077 – see EX2075, 101:15-21 (Trimberger authenticates his book
`
`himself, and no objection to the document);
`o EX2079 – see EX2075, 107:16-108:9 (no objection);
`o EX2081 – see EX2075, 112:25-113:20 (no objection to the document);
`o EX2083 – see EX2075, 145:25-148:3 (objection to relevance only, not
`
`authentication);
`o EX2085 – see EX2075, 228:16-229:14 (no objection);
`o EX2090 – see EX2075, 259:24-260:11 (objection based on relevance
`
`only);
`o EX2066 – see EX2065, 85:22-86:12 (no objection);
`o EX2067 – see EX2065, 104:10-105:11 (objection based on relevance
`
`only);
`
`
`
`13
`
`
`
`o EX2068 – see EX2065, 105:5-106:13 (objection based on relevance
`
`only);
`o EX2069 – see EX2065, 133:6-14 (no objection);
`o EX2070 – see EX2065, 169:10-19 (no objection);
`o EX2071 – see EX2065, 171:12-173:8 (no objection to document, only
`
`question as irrelevant);
`o EX2072 – see EX2065, 181:17-182:18 (no objection to document, only
`
`question as irrelevant);
`o EX2073 – see EX2065, 183:18-185:9 (no objection to document, only
`
`question as irrelevant); and
`o EX2074 – see EX2065, 186:4-187:3 (no objection).
`V. EXHIBIT 2170
`Petitioner’s objection to EX2170 is without merit and baseless. EX2170 is a
`
`document attached to the declaration of Patent Owner expert’s, Dr. Tarek El-
`
`Ghazawi, declaration, EX2166. Dr. El-Ghazawi was provided, relied upon, and
`
`analyzed EX2170 and provided opinions on the document, including attaching it to
`
`his declaration as supporting facts and data. See 37 C.F.R. §42.65; FED. R. EVID.
`
`703; see also EX2166¶¶15, 40-43. The document is a part of his declaration and
`
`any “cumulative” nature is due to Petitioner’s failure to appreciate that Patent
`
`
`
`14
`
`
`
`Owner’s witnesses attached all relevant facts and data to their declarations. The
`
`objection should be overruled.
`
`VI. EXHIBIT 2112
`Petitioner’s objection to EX2112, the declaration of Patent Owner’s expert,
`
`Dr. Houman Homayoun, at ¶¶41, 145, 180, 181, and 247, where Dr. Homayoun
`
`references EX2101, the declaration on John Huppenthal, and EX2065, the
`
`deposition of Petitioner expert, Dr. Stone. As discussed above, Petitioner’s
`
`objections to EX2101 and EX2065 are improper and should be overruled. However,
`
`Petitioner’s objection to EX2112¶¶41, 145, 180, 181, and 247 is further off base as
`
`Dr. Homayoun is permitted to base his opinions on materials regardless of whether
`
`such materials are otherwise admissible if relied upon to form his opinions. FED. R.
`
`EVID. 703; Williams v. Illinois, 567 U.S. 50, 78-79 (2012); see also EX2112¶8;
`
`EX2179¶¶5-8. And here, the portions Petitioner attempts to exclude from Dr.
`
`Homayoun are relevant criticisms of Dr. Stone, his methodology and hindsight
`
`reasoning used across all his declarations. EX2112¶¶142-146. As such, this
`
`objection should be overruled.
`
`VII. CONCLUSION
`For the reasons set forth herein, the Board should overrule all objections
`
`asserted by the Petitioner.
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`
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`15
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`
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`Respectfully submitted,
`
`
`
`
`/Alfonso Chan/
`Alfonso Chan, Reg. No. 45,964
`achan@shorechan.com
`Joseph F. DePumpo, Reg. No. 38,124
`jdepumpo@shorechan.com
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 330
`Dallas, Texas 75202
`Tel: (214) 593-9110
`Fax: (214) 593-9111
`
`Sean Hsu, Reg. No. 69,477
`shsu@jvllp.com
`Rajkumar Vinnakota*
`kvinnakota@jvllp.com
`G. Donald Puckett*
`dpuckett@jvllp.com
`JANIK VINNAKOTA LLP
`8111 Lyndon B. Johnson Frwy., #790
`Dallas, Texas 75251
`Tel: (214) 390-9999
`Fax: (214) 888-0219
`* Admitted Pro Hac Vice
`
`Attorneys for Patent Owner
`DirectStream, LLC
`
`
`Dated: January 22, 2020
`
`
`
`
`
`
`
`
`
`16
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`
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`VIII. CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§42.6(e)(4) and 42.25(b), the undersigned certifies that
`
`on January 22, 2020, a complete copy of the foregoing document was filed
`
`electronically through the Patent Trial and Appeal Board’s PTABE2E System and
`
`provided, via electronic service, to the Petitioner by serving the correspondence
`
`address of record as follows:
`
`Joseph A. Micallef
`jmicallef@sidley.com
`Scott M. Border
`sborder@sidley.com
`SIDLEY AUSTIN LLP
`1501 K. Street N.W.
`Washington, DC 20005
`
`Jason P. Greenhut
`jgreenhut@sidley.com
`SIDLEY AUSTIN LLP
`1 South Dearborn
`Chicago, IL 60603
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Alfonso Chan/
`Alfonso Chan
`Reg. No. 45,964
`Tel: (214) 593-9110
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`17
`
`
`
`IX. CERTIFICATE OF PAGE COUNT
`
`Pursuant to 37 C.F.R. §42.24, the undersigned certifies that the foregoing
`
`Patent Owner DirectStream, LLC’s Response to Petitioner’s Motion to Exclude
`
`contains less than 15 pages, excluding the Table of Contents, Table of Authorities,
`
`Certificate of Service, Certificate of Page Count, and Appendix A.
`
`
`
`Dated: January 22, 2020
`
`
`
`
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`
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`/Alfonso Chan/
`Alfonso Chan
`Reg. No. 45,964
`Tel: (214) 593-9110
`
`
`
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`18
`
`
`
`FRE 703
`Expert
`Reliance in
`Report
`(EX2166 - El
`Ghazawi;
`EX2112 -
`Homayoun)
`
`Cited in
`PO Expert
`Report to
`Form
`Opinions
`
`Ex.
`Cited
`in PO
`Resp.
`(PN 36)
`
`Depo
`Witness Ex.
`
`Exhibit in
`Stone I
`Depo
`(EX2065)
`
`Exhibit in
`Stone II
`Depo
`(EX2063)
`
`Depo
`in PO
`Resp.
`(PN
`36)
`
`PO
`(PN
`59)
`
`PO
`Resp.
`to Pet.
`Mot.
`to Ex.
`
`Depo Tr
`Homayoun ¶8
`
`Homayoun
`¶¶145, 247
`
`18, 19,
`20, 22,
`25, 26,
`27, 30,
`108,
`109,
`115,
`118,
`119 Depo Tr
`
`85:23-
`91:20
`
`Stone I
`Stone I
`Stone I
`
`Motion to
`Exclude
`(PN 60)
`
`605
`
` Descrip
`
`IPE
`1605
`Ex.
`No.
`
`2065
`
`Deposition
`
` Section III
`
`GooS
`
`2066
`
`ection IV Homayoun ¶8
`2067 PSection IV Homayoun ¶8
`2068 ESection IV Homayoun ¶8
`
`19
`
`
`
`FRE 703
`Expert
`Reliance in
`Report
`(EX2166 - El
`Ghazawi;
`EX2112 -
`Homayoun)
`
`Cited in
`PO Expert
`Report to
`Form
`Opinions
`
`Ex.
`Cited
`in PO
`Resp.
`(PN 36)
`
`Depo
`Witness Ex.
`
`Exhibit in
`Stone I
`Depo
`(EX2065)
`
`Exhibit in
`Stone II
`Depo
`(EX2063)
`
`Depo
`in PO
`Resp.
`(PN
`36)
`
`PO
`(PN
`59)
`
`PO
`Resp.
`to Pet.
`Mot.
`to Ex.
`
`Motion to
`Exclude
`(PN 60)
`
`605
`
` Descrip
`
`Stone
`
`
`
`IPE
`1605
`Ex.
`No.
`
`2069
`
`133:9-
`137:22
`[questions
`without
`Exhibit
`starting at
`121:8]
`169:7-
`170:21
`
`171:12-
`182:19-
`183:21-
`185:25
`
`30
`
`Stone I
`
`Stone I
`Stone I
`Stone I
`
`Stone I
`
`21
`
`19S
`
`ection IV Homayoun ¶8
`
`2070
`ection IV Homayoun ¶8
`2071 ASection IV Homayoun ¶8
`2072 OSection IV Homayoun ¶8
`2073
`
`QuaS
`
`ection IV Homayoun ¶8
`
`FPGS
`
`20
`
`
`
`Motion to
`Exclude
`(PN 60)
`
`605
`
` Descrip
`
`ReconfigS
`
`ection IV Homayoun ¶8
`Depo Tr
`Homayoun ¶8
`
`ection III
`
`DepS
`
`FRE 703
`Expert
`Reliance in
`Report
`(EX2166 - El
`Ghazawi;
`EX2112 -
`Homayoun)
`
`Cited in
`PO Expert
`Report to
`Form
`Opinions
`
`Ex.
`Cited
`in PO
`Resp.
`(PN 36)
`
`Depo
`Witness Ex.
`
`Exhibit in
`Stone I
`Depo
`(EX2065)
`
`Exhibit in
`Stone II
`Depo
`(EX2063)
`
`Depo
`in PO
`Resp.
`(PN
`36)
`
`PO
`(PN
`59)
`
`PO
`Resp.
`to Pet.
`Mot.
`to Ex.
`
`21, 24,
`26,
`113,
`114,
`120,
`123,
`124
`
`Stone I
`
`186:6-
`201:12
`
`118-119 Depo Tr
`
`Trimberger
`
`Trimberger
`
`Trimberger
`
`Trimberger
`
`ArtiS
`
`ection IV Homayoun ¶8
`
`ection IV Homayoun ¶8
`
`ection IV Homayoun ¶8
`
`ection IV Homayoun ¶8
`
`ArtS
`
`ArtS
`
`ArtS
`
`IPE
`1605
`Ex.
`No.
`
`2074
`
`2075
`
`2076
`
`2078
`
`2079
`
`2080
`
`21
`
`
`
`FRE 703
`Expert
`Reliance in
`Report
`(EX2166 - El
`Ghazawi;
`EX2112 -
`Homayoun)
`
`Cited in
`PO Expert
`Report to
`Form
`Opinions
`
`Ex.
`Cited
`in PO
`Resp.
`(PN 36)
`
`Depo
`Witness Ex.
`
`Exhibit in
`Stone I
`Depo
`(EX2065)
`
`Exhibit in
`Stone II
`Depo
`(EX2063)
`
`Depo
`in PO
`Resp.
`(PN
`36)
`
`PO
`(PN
`59)
`
`PO
`Resp.
`to Pet.
`Mot.
`to Ex.
`
`Motion to
`Exclude
`(PN 60)
`
`605
`
` Descrip
`
`BooS
`
`ection IV Homayoun ¶8
`
`ArtS
`
`ection IV Homayoun ¶8
`
`BooS
`
`Trimberger
`
`Trimberger
`
`Trimberger
`Trimberger
`
`Trimberger
`
`Trimberger
`Trimberger
`Trimberger
`
`Trimberger
`
`Trimberger
`
`Depo Tr
`
`IPE
`1605
`Ex.
`No.
`
`2081
`
`2082
`
`2083
`ection IV Homayoun ¶8
`2084 USection IV Homayoun ¶8
`2085
`
`ArtS
`
`ection IV Homayoun ¶8
`
`ArtS
`
`2086
`ection IV Homayoun ¶8
`2087 ASection IV Homayoun ¶8
`2088 BSection IV Homayoun ¶8
`2089
`
`BooS
`
`ection IV Homayoun ¶8
`
`ection IV Homayoun ¶8
`ection III,
`Depo Tr
`IV
`Homayoun ¶8
`
`DepS
`
`2090
`
`2091
`
`ChaS
`
`22
`
`
`
`FRE 703
`Expert
`Reliance in
`Report
`(EX2166 - El
`Ghazawi;
`EX2112 -
`Homayoun)
`
`Cited in
`PO Expert
`Report to
`Form
`Opinions
`
`Ex.
`Cited
`in PO
`Resp.
`(PN 36)
`
`Depo
`Witness Ex.
`
`Exhibit in
`Stone I
`Depo
`(EX2065)
`
`Exhibit in
`Stone II
`Depo
`(EX2063)
`
`Depo
`in PO
`Resp.
`(PN
`36)
`
`PO
`(PN
`59)
`
`PO
`Resp.
`to Pet.
`Mot.
`to Ex.
`
`Motion to
`Exclude
`(PN 60)
`
`605
`
` Descrip
`
`ANT-S
`
`ection IV Homayoun ¶8
`
`ArtS
`
`BusS
`
`IPE
`1605
`Ex.
`No.
`
`2092
`
`2099
`
`2101
`
`Hauck
`
`Hauck
`Hauck
`
`Hauck
`Hauck
`Hauck
`
`Hauck
`
`Homayoun
`¶¶41, 180,
`181
`
`8-19,
`29, 35,
`51, 74,
`118-120
`
`2093
`ection IV Homayoun ¶8
`2094 ASection IV Homayoun ¶8
`2095
`ection IV Homayoun ¶8
`2096 USection IV Homayoun ¶8
`2097 PSection IV Homayoun ¶8
`2098
`
`06/S
`
`ection IV Homayoun ¶8
`Probably a
`typo by
`MSFT
`duping over
`from 601
`
`Exhib
`
`DeclS
`
`ection II
`
`Declaration
`Homayoun ¶8
`
`23
`
`
`
`FRE 703
`Expert
`Reliance in
`Report
`(EX2166 - El
`Ghazawi;
`EX2112 -
`Homayoun)
`
`Huppenthal
`Homayoun ¶8
`Huppenthal
`Homayoun ¶8
`Huppenthal
`Homayoun ¶8
`Huppenthal
`Business
`Record
`Homayoun ¶8
`Huppenthal
`Business
`Record
`Homayoun ¶8
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