Paper No. 66
`Filed: January 29, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2018-01605, IPR2018-01606, IPR2018-01607
`U.S. Patent No. 7,620,800 B2
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`––––––––––––––––––
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`
`Filed: January 29, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2018-01605, IPR2018-01606, IPR2018-01607
`U.S. Patent No. 7,620,800 B2
`
`––––––––––––––––––
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S MOTION TO EXCLUDE
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`
`
`
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`IPR2018-01605, -01606, -01607
`
`U.S. Patent No. 7,620,800 B2
`
`TABLE OF CONTENTS
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`
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`I.
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`Exhibit 2101 (Huppenthal Declaration) ...................................................... 1
`A. Huppenthal’s Refusal To Answer Obfuscates Petitioner’s Right to
`Cross-Examine. ..................................................................................... 1
`B. Mr. Huppenthal’s Declaration is Irrelevant .......................................... 2
`C. Mr. Huppenthal’s Declaration Is Hearsay Not Based On Personal
`Knowledge ............................................................................................. 3
`Exhibits 2065, 2075, and 2091....................................................................... 3
`II.
`III. Exhibits 2066-2074, 2076, 2078-2099, 2102-2104, 2106-2107, 2110, 2113-
`2134, 2140-2152, 2156, 2163, 2165, and 2170 .............................................. 4
`A.
`Petitioner’s Objections are Timely ........................................................ 4
`IV. Exhibits 2112 and 2170 .................................................................................. 5
`V.
`Patent Owner’s Response ............................................................................. 5
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800 B2
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`U.S. v. Reynolds,
`345 U.S. 1 (1953) .................................................................................................. 2
`Wi-LAN Inc. v. Sharp Elecs. Corp.,
`No. 1:15-cv-00379-LSP, 10, Dkt. 490 (D. Del. Feb. 15, 2019) ........................... 5
`Other Authorities
`37 C.F.R. § 42.64 ....................................................................................................... 4
`77 Fed. Reg. 48611, 48624 (Aug. 14, 2012) ............................................................. 5
`Exec. Order No. 13526, 75 F.R. 705 (2010) .............................................................. 2
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800 B2
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`I.
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`Exhibit 2101 (Huppenthal Declaration)
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`A. Huppenthal’s Refusal To Answer Obfuscates Petitioner’s Right to
`Cross-Examine.
`
`DirectStream claims that Petitioner “conducted a full cross-examination”
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`because Mr. Huppenthal’s declaration is “high-level, general testimony,” but
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`DirectStream does not get to choose Petitioner’s questions. Mr. Huppenthal
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`refused to answer legitimate, relevant, and proper questions. Thus, Petitioner’s
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`right to discovery was violated.
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`DirectStream claims that EX2101 “focuse[d] exclusively on the hardware
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`make-up” of the systems and did not “specifically discuss any applications any
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`customers ran.” Opp. 2. Not so. Mr. Huppenthal repeatedly references
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`“applications” running on SRC systems, see, e.g., EX2101, ¶80, and an entire
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`section is entitled “Applications,” EX2101, ¶¶77-79. DirectStream also claims that
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`questions relating to “applications that Department of Defense (‘DoD’) entities
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`ran” were outside the scope, Opp. 2, and not relevant, id., 4. Incorrect. By serving
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`a declaration addressing those topics and relying on it, DirectStream “opened the
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`door” to cross-examination.
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`DirectStream also argues that Mr. Huppenthal’s refusal to answer questions
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`were “based on his legal obligation to protect classified national security
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800 B2
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`information.”1 Opp. 2-3. It provides no support for such an obligation, and
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`national security privilege can be asserted solely by the United States. U.S. v.
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`Reynolds, 345 U.S. 1 (1953).
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`DirectStream further argues the “to cure any potential prejudice, Petitioner
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`was granted an additional one-hour deposition,” and that Petitioner “chose not to
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`reexamine this subject.” Opp. 3. But the Board’s order permitting an additional
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`hour of questions was specifically directed to other topics. See Paper 48, 7-8
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`(noting that the Panel does “not at this time compel Mr. Huppenthal to disclose
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`such [classified] information.”). And Petitioner was under no obligation to
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`regurgitate the same questions Mr. Huppenthal previously refused to answer.
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`B. Mr. Huppenthal’s Declaration is Irrelevant
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`DirectStream again contends that Petitioner failed to “explain why the
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`testimony is not relevant.” Opp. 4. To the contrary, Petitioner explained that
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`because Mr. Huppenthal admitted that he never mapped any of the production
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`systems discussed in his declaration to any of the challenged patents (EX1073,
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`106:7-112:24), see Mot. 4, statements in his declaration suggesting otherwise (and
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`1 Patent Owner cites “Exec. Order No. 13526, 75 F.R. 705 (2010),” however this
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`Order is inapplicable. It relates to the system by which information is formally
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`classified and declassified and not to the assertion of privilege by the public.
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`U.S. Patent No. 7,620,800 B2
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`any other statements unrelated to those patents or issues of patentability) are
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`simply not relevant. Mot. 3.
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`C. Mr. Huppenthal’s Declaration Is Hearsay Not Based On Personal
`Knowledge
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`DirectStream summarily asserts that “Huppenthal’s declaration is limited to
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`his personal knowledge and background facts,” Opp. 5, but advances no arguments
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`to refute Petitioner’s showing otherwise. Mot. 3-4. For example, DirectStream
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`claims that ¶¶27, and 80-86 of the Declaration are not hearsay, Opp. 6, but offers
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`no evidence for this contention; indeed, Mr. Huppenthal’s declaration shows at
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`least some statements were communications to him and not his impression. E.g.,
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`EX2101, ¶27 (“Seymour said to me…”); ¶39 (“Seymour Cray was asked about his
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`thoughts on MPP he replied….”). DirectStream claims that each statement was
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`“corroborated by contemporaneous records and witnesses.” Opp. 6. But, none of
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`the cited evidence corroborates the statements, nor are they contemporaneous.
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`E.g., EX2166 (2019); EX2167 (2008); EX2168 (2007).
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`II. Exhibits 2065, 2075, and 2091
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`DirectStream argues that Exhibits 2065, 2075, and 2091 are relevant because
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`they pertain to the state of the art. Opp. 7. However, these exhibits relate to the
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`state of the art in other proceedings, not here. DirectStream further argues that
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`“Stone, Trimberger, and Hauck are paid trial experts” and therefore these exhibits
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`are not Hearsay. Opp. 8. However, DirectStream again glosses over the
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800 B2
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`distinctions between proceedings—neither, Dr. Hauck nor Dr. Trimberger, are paid
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`experts with respect to this proceeding. Finally, DirectStream claims that “[t]he
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`testimony given by Petitioner’s experts are not specific to a particular case.” Opp.
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`8. That is incorrect—see, e.g., “I have been asked to provide my opinion about the
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`state of the art of the technology described in the U.S. Patent No.7,421,524.”
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`EX2091, 8(29:21-25).
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`III. Exhibits 2066-2074, 2076, 2078-2099, 2102-2104, 2106-2107, 2110, 2113-
`2134, 2140-2152, 2156, 2163, 2165, and 2170
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`DirectStream inexplicitly complains, at length, that Petitioner objects to
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`evidence that was authenticated or self-authenticating. Opp. 1, 10-11. However,
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`Petitioner never moved to exclude this evidence based on authentication. Mot. 7-8.
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`Moreover, DirectStream’s Opposition includes a 16-page table purportedly
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`showing the relevancy of these exhibits. Opp. 12. The table is a violation of the
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`page limit requirements, and should be disregarded, but is also irrelevant as it fails
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`to explain how any of the unexplained citations make the exhibits relevant.
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`A.
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`Petitioner’s Objections are Timely
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`DirectStream claims that Petitioner’s objections were not timely because the
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`exhibits were first introduced during the depositions of “Hauck (EX2091) or
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`Trimberger (EX2075) or Stone (EX2065).” Opp. 12. But these depositions related
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`to other proceedings, and were not part of this record until they were filed here.
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`Moreover, 37 C.F.R. § 42.64 states that “objection[s] to the admissibility of
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`IPR2018-01605, -01606, -01607
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`deposition evidence must be made during the deposition,” and the Federal
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`Register makes clear that “deposition evidence” refers to deposition testimony, not
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`documentary evidence. See 77 Fed. Reg. 48611, 48624 (Aug. 14, 2012).
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`IV. Exhibits 2112 and 2170
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`DirectStream argues that portions of Dr. Homayoun’s declaration is relevant
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`because he relied on certain exhibits when forming his opinions. However, Rule
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`703 was never intended to “create a ‘backdoor’ to allow the admission into
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`evidence of otherwise inadmissible declarations and other materials.” Wi-LAN Inc.
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`v. Sharp Elecs. Corp., No. 1:15-cv-00379-LSP, 10, Dkt. 490, (D. Del. Feb. 15,
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`2019).
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`DirectStream also argues that Exhibit 2170 is not cumulative of Exhibit
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`1007 because it was attached to Dr. Tarek El-Ghazawi, declaration, EX2166. Opp.
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`14. However, again, Rule 703 does not create a backdoor.
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`V.
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`Patent Owner’s Response
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`DirectStream does not oppose Petitioner’s motion to exclude sections of the
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`Patent Owner Response. Mot. 9. Therefore, to the extent sections reference the
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`aforementioned exhibits, they should be excluded.
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`Dated: January 29, 2020
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`Respectfully Submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800 B2
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`jmicallef@sidley.com
`(202) 736-8492
`Attorney for Petitioner
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`IPR2018-01605, -01606, -01607
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`U.S. Patent No. 7,620,800 B2
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 29, 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 29, 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
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`PETITIONER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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