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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,
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`v.
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`DIRECTSTREAM, LLC,
`Patent Owner.
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`––––––––––––––––––
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`IPR2018-01605, -01606, -01607
`U.S. Patent No. 7,620,800
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`PETITIONER MICROSOFT’S MOTION TO COMPEL AND STRIKE
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`Petitioner Microsoft Corp. (“Petitioner”) submits this Motion to Compel and
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`Strike as authorized by the Board’s email of October 11, 2019.
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`I. MR. HUPPENTHAL SHOULD BE COMPELLED TO ANSWER
`ADDITIONAL QUESTIONS
`During the October 8, 2019 cross-examination of Patent Owner’s declarant
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`Jon Huppenthal, Mr. Huppenthal was instructed, based on form objections only,
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`not to answer several questions about statements in his direct testimony. For
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`example, in his declaration Mr. Huppenthal, who is a named inventor of the 152
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`patent, describes the development of a “crossbar switch” for a basic system his
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`company was developing, IPR2018-01594, Ex. 2084 at 18-24,1 and later describes
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`modifications to that basic system that led to the 152 patent, see id., at 32-33.
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`The crossbar switch described in Mr. Huppenthal’s declaration bears striking
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`resemblance to a “memory interconnect fabric” disclosed in the 152 patent.
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`Compare Ex. 2084 at 19 with Ex. 1001 at Figure 1. Petitioner’s counsel therefore
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`sought to question Mr. Huppenthal about that “memory interconnect fabric” and
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`relate it to the discussion in Mr. Huppenthal declaration, Huppenthal Tr. (Ex.
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`1073) at 57:21-59:11, testimony that could be relevant to a means-plus-function
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`1 Mr. Huppenthal has submitted substantially the same declaration in each of the
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`captioned proceedings, albeit with different exhibit numbers. We cite here to
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`IPR2018-01594, Ex. 2084, as that was the document placed before him.
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`1
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`claim construction issue raised in Patent Owner’s response. See Patent Owner
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`Response, IPR2018-01599, Paper No. 37 at 48-53. However, Mr. Huppenthal was
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`instructed not to answer any such questions, based solely on the objection that such
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`questions were “outside the scope.” See Huppenthal Tr. (Ex. 1073) at 57:21-59:11;
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`see also id., 99:25-100:10. Counsel further indicated he would not permit the
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`witness to answer any questions about the patents. See id., at 59:2-6.
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`Mr. Huppenthal’s declaration also states: “With the exception of some of the
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`technology described in patent 6,076,152, none of this new technology existed in
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`the prototype system delivered to ORNL.” Ex. 2084 at 56 (emphasis added).
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`When counsel asked Mr. Huppenthal what “technology” was referred to in this
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`quote, Mr. Huppenthal was again instructed not to answer based solely on a form
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`objection. See Huppenthal Tr. (Ex. 1073) at 99:8-100:9.
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`These instructions were clearly improper. “Counsel may instruct a witness
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`not to answer only when necessary to preserve a privilege, to enforce a limitation
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`ordered by the Board, or to present a motion to terminate or limited testimony.”
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`Office Patent Trial Guide, 77 Fed. Reg. at 47,772-72; see also Dynamic
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`Drinkware, LLC v. National Graphics, Inc., Case IPR2013-00131, PTAB (April
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`29, 2014)(holding that noting an objection on the record is the proper method of
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`defending irrelevant questioning during a cross-examination.) Counsel’s
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`questioning related directly to statements about his patents in Mr. Huppenthal’s
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`2
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`declaration. Moreover, Mr. Huppenthal is an inventor on all of the patents at issue
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`in these proceedings, and his declaration expressly relates his direct testimony to
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`each one. See, e.g., Ex. 2084 at ¶¶49, 62, 77, 79. The questions were clearly
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`proper cross-examination, and the instructions not to answer improper. Mr.
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`Huppenthal should therefore be compelled to answer counsel’s questions about his
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`direct testimony, including how it relates to the patents at issue.
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`Moreover, Patent Owner should be compelled to produce Mr. Huppenthal at
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`the offices of Petitioner’s counsel for such continued questioning. The rule against
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`instructing a witness not to answer based on form objections is by now so -settled
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`as to be beyond argument. There was simply no excuse for the violations of the
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`rules that occurred here, and the burden of remedying them should be placed
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`squarely on Patent Owner. Cf. Office Trial Practice Guide, 77 Fed. Reg. 48756,
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`48772. Accordingly, Petitioner respectfully seeks an order compelling Mr.
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`Huppenthal to appear at the offices of Petitioner’s counsel in Washington DC for
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`additional questioning related to his direct testimony.2
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`II. TESTIMONY REGARDING “CLASSIFIED” SYSTEMS SHOULD BE
`STRUCK, OR PRECLUDED
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`2 Petitioner’s Reply related to the 152 patent is due November 18. To the extent
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`the Board orders additional testimony from Mr. Huppenthal, Petitioner respectfully
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`request that it be required to occur before November 13, 2019.
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`3
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`Petitioner also moves to strike portions of Mr. Huppenthal’s declaration (Ex.
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`2084 ¶¶ 80, 82-86) due to his refusal to answer questions concerning those portions
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`of the declaration. In particular, his declaration asserts that certain systems made
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`by his company were “covered by” the patents at issue in these proceedings, Ex.
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`2084 at ¶80, and then describes the sale of systems to various government agencies
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`and contractors, including the Army, Navy, Air Force and NSA, among others, Ex.
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`2084 at ¶¶ 82-86. Patent Owner relies on this testimony for support of its
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`argument that secondary considerations of non-obviousness apply. See, e.g.,
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`Patent Owner Response, IPR2018-01594 at 63.
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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.” Huppenthal Tr. at 97:8-100:1 (Rough). 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 113:12-114:9.
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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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`4
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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 have any standing to assert such a privilege.
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`Mr. Huppenthal has therefore effectively made himself unavailable for questioning
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`as to the details of the systems sold to the government and its contractors. His
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`testimony should therefore be struck, HTC Corp. v. NFC Technology, LLC,
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`IPR2014-01198, Paper 41, or Patent Owner precluded from relying on it,
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`Aristocrat Technologies, Inc. v. IGT, IPR2016-00252, Paper 17.
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`In the alternative, should the Board conclude that a remedy is appropriate
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`but an order striking or precluding reliance is not, Petitioner respectfully requests
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`an order compelling Mr. Huppenthal to answer. The questions were proper cross-
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`examination, as they relate directly to testimony in Mr. Huppenthal’s declaration
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`and no valid privilege supports his refusal to testify. Petitioner is therefore entitled
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`to some remedy for the improper interference with it cross-examination.
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`5
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`Dated: October 18, 2019
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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 NW
`Washington, DC 20005
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`Attorney for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 18, 2019, 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)
`Christopher Evans, Shore Chan DePumpo LLP (cevans@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: October 18, 2019
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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
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`Attorney for Petitioner
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`7
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