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 and IPR2018-01607
`U. S. Patent 7,620,800 B2
`__________________________
`
`PATENT OWNER DIRECTSTREAM, LLC’S OPPOSITION TO
`PETITIONER MICROSOFT’S MOTION TO COMPEL AND STRIKE
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`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`DIRECTSTREAM, LLC,
`Patent Owner.
`_______________________
`IPR2018-01605, IPR2018-01606 and IPR2018-01607
`U. S. Patent 7,620,800 B2
`__________________________
`
`PATENT OWNER DIRECTSTREAM, LLC’S OPPOSITION TO
`PETITIONER MICROSOFT’S MOTION TO COMPEL AND STRIKE
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`0
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`I. INTRODUCTION AND SUMMARY OF ARGUMENT
`Patent Owner opposes Petitioner’s Motion to Compel and Strike (“Motion”).
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`The Motion is premised upon flat mischaracterizations of the deposition—Patent
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`Owner’s counsel never instructed the witness not to answer solely on the basis of
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`“form” objections.1 The Motion fails because Microsoft does not demonstrate the
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`relevance of the testimony it seeks to compel, and because the proposed deposition
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`questions are far outside the scope of Mr. Huppenthal’s declaration testimony.
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`Microsoft has not met its burden and is not entitled to any relief on this Motion.
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`A. Huppenthal’s Declaration Testimony is Limited to Personal Knowledge
`Regarding Background Technology and Related Facts.
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`
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`Huppenthal’s declaration is limited to his personal knowledge and
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`background facts—providing a general technological context of the inventions
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`claimed in each of the challenged patents. See EX2101 (“Decl.”) ¶¶32-37, ¶¶48-69,
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`¶¶80-86. He provides no expert opinions. Id. ¶2. His declaration does not discuss
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`(i) any legal issues, (ii) the specification of the patents in any substantial manner,
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`(iii) the scope of any patent claims, (iv) the legal meaning of any claim terms, or (v)
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`any comparison of the patents or patent claims to any prior art references. EX1073
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`(“DepoTr.”) 7:4-10:24, 48:20-50:3, 106:14-22.
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`1 Compare Mot. at 1-3 with Depo.Tr. 57:21-60:4; 99:8-100:9; 116:20-117:9
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`(outside the scope objections); 100:23-24 (classified national security objections).
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`
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`1
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`
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`Microsoft’s cross examination must be limited to the scope of Huppenthal’s
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`declaration. See 37 C.F.R. §42.53(d)(5)(D)(ii). If Microsoft intends to take
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`discovery beyond the scope of the declaration, it must move for additional discovery
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`and meet its burden of proof under the “Garmin factors.” See 37 C.F.R.
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`§42.51(b)(2); Garmin Int’l, Inc. v. Cuozzo Speed Techs., LLC, IPR2012-00001,
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`Paper 26 at 6-16 (precedential). But, Microsoft has not done so.
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`B. Microsoft’s Questions Regarding the “Memory Interconnect Fabric” Are
`Outside the Scope of Huppenthal’s Declaration.
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`
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`The Huppenthal declaration provides technical background regarding the use
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`of a “crossbar switch” in the CRAY-3 computer and modifications to the crossbar
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`switch required to build the SRC-6 computer that underlies each of the patents
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`challenged. See Decl. ¶¶19, 30, 32-35. Microsoft questioned Huppenthal on the
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`crossbar switch, and Huppenthal answered all of these questions. See, e.g., Depo.Tr.
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`12:9-36:7, 51:20-57:7. Microsoft was not denied full and fair cross-examination
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`regarding Huppenthal’s testimony regarding the crossbar switch and related
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`hardware structures.
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`Microsoft, however, went outside the scope of Huppenthal’s declaration by
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`asking questions about the meaning of “memory interconnect fabric” as that phrase
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`is used in certain challenged patents. Depo.Tr. 57:21-59:11. Yet, the Huppenthal
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`declaration does not mention “memory interconnect fabric” and does not connect
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`the crossbar switch testimony to the “memory interconnect fabric” of the challenged
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`2
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`
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`patents. Tellingly, Petitioner’s counsel tacitly acknowledged that Huppenthal’s
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`declaration testimony does not relate to the patent claims or claim construction when
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`he stipulated during the deposition that “I won’t ask him about the claims.” Depo.Tr.
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`59:7-8.
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`Yet, Petitioner now moves to compel the same testimony on the basis that
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`ostensibly it is relevant to claim construction for a means-plus-function claim term
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`found only in the’152 and ’110 Patents. See Mot. at 1-2. Thus, this portion of the
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`Motion has no conceivable relevance outside IPR2018-01599 and -01600.
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`Moreover, Microsoft’s only support for its assertion that the testimony is relevant to
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`claim construction is one sentence of attorney speculation that the crossbar switch
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`described in the declaration “bears striking resemblance” to the memory
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`interconnect fabric disclosed in the patents. Mot. at 1. During the deposition,
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`Microsoft made no attempt to ask questions that might lay an evidentiary foundation
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`for this assertion, but instead merely asked: “And so what is a memory interconnect
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`fabric?” Depo.Tr. 57:21.
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`Even if there were some connection between the two, the proposed testimony
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`is irrelevant to claim construction for the ’152 and ’110 Patents. Neither patent uses
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`the term “crossbar switch” in the specification or claims. And, claim construction
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`of a means-plus-function claim term is limited to the corresponding structure
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`disclosed in the patent specification. See, e.g., IPCom GmbH & Co. v. HTC Corp.,
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`
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`3
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`
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`861 F.3d 1362, 1371 (Fed. Cir. 2017). Inventor testimony regarding claim
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`construction typically is irrelevant to any claim construction; and, it is particularly
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`irrelevant to a means-plus-function claim construction when the testimony relates to
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`matters outside the patent specification. See, e.g., Solomon v. Kimberly-Clark Corp.,
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`216 F.3d 1372, 1379 (Fed. Cir. 2000). Additionally, even the “memory interconnect
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`fabric” itself is not directly related to the “means coupling” claim term. See, e.g.,
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`IPR2018-01599, Paper 37 at 48-53; 51 (yellow lines corresponding to the proposed
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`claim construction structure for “means coupling” does not touch the “memory
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`interconnect fabric” of Figure 1).
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`D. Microsoft’s Questions Regarding Classified National Security
`Applications of the SRC-6 are Irrelevant and Outside the Scope of
`Huppenthal’s Declaration.
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`
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`The Huppenthal declaration provided high-level, general testimony regarding
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`the customers who purchased SRC-6 computers and the features of interest to those
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`customers. Decl. ¶¶80-87. His declaration did not touch upon the applications any
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`customers ran on the SRC-6. Microsoft conducted a full cross-examination on this
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`testimony, and the witness was permitted to answer all questions. Depo.Tr. 100:11-
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`103:5, 104:5-106:22.
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`Microsoft wandered outside the scope of the declaration by asking questions
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`regarding the classified applications that Department of Defense (“DoD”) ran on the
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`SRC-6. Depo.Tr. 101:10-15, 16-18, 19, 102:3-103:13. Microsoft’s Motion does not
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`
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`4
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`
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`address why such questions regarding DoD applications are relevant to any issue in
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`these cases or show such testimony is within the declaration scope. Mot. at 4.
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`Indeed, when asked about systems sold to customers, Huppenthal provided
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`answers about the features and functionality of those systems. Huppenthal only
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`refused to answer portions of questions based on his legal obligation not to disclose
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`classified national security information. See 37 U.S.C. §798; see also Exec. Order
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`No. 13526, 75 F.R. 705 (2010). Microsoft is wrong to assert Huppenthal “refused
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`to answer in almost every case.” The transcript demonstrates the opposite.
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`
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`II. CONCLUSION
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`Microsoft received a full and fair opportunity to cross-examine Huppenthal
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`regarding his declaration. Microsoft’s Motion seeks to take irrelevant discovery
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`outside the scope of his declaration without abiding by 37 C.F.R. §42.51(b)(2).
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`Microsoft has not met its burden of proof on this Motion, and it is not entitled to any
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`relief. Alternatively, Patent Owner seeks a protective order from the Board pursuant
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`to 37 C.F.R. §42.54 to preclude the discovery Microsoft requests in this Motion. A
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`protective order is appropriate here given the national security concerns regarding
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`the classified information and the irrelevance of the information Microsoft seeks.
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`5
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`
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`Date: October 25, 2019
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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
`Christopher Evans*
`cevans@shorechan.com
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 330
`Dallas, TX 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 Fwy #790
`Dallas, TX 75251
`Telephone: (214) 390-9999
`Fax: (214) 888-0219
`* Admitted Pro Hac Vice
`
`Attorneys for Patent Owner
`DirectStream, LLC
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`6
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies that
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`on October 25, 2019, a complete copy of the foregoing document was filed
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`electronically through the Patent Trial and Appeal Board’s PTABE2E System and
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`provided, via electronic service, to the Petitioner by serving the correspondence
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`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
`Phone: 214-593-9118
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`
`
`
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`7
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`Dated: October 25, 2019
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