IPR2020-00031
`Patent 10,043,188 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner,
`
`v.
`
`TYLER MILLER
`Patent Owner.
`____________
`
`
`Case IPR2020-00031
`Patent 10,043,188 B2
`_____________________________
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`
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`PATENT OWNER’S OPPOSITION TO
`MOTION TO ADMIT EVAN TALLEY PRO HAC VICE
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`Patent 10,043,188 B2
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner,
`
`v.
`
`TYLER MILLER
`Patent Owner.
`____________
`
`
`Case IPR2020-00031
`Patent 10,043,188 B2
`_____________________________
`
`
`
`PATENT OWNER’S OPPOSITION TO
`MOTION TO ADMIT EVAN TALLEY PRO HAC VICE
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`
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`IPR2020-00031
`Patent 10,043,188
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`Patent Owner opposes the pro hac vice admission of Evan Talley in this
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`proceeding for the reasons below.
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` MR. TALLEY IS LIKELY A FACT WITNESS ON A CONTESTED ISSUE
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`Patent Office Rule of Professional Conduct § 11.307 states, in pertinent part:
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`(a) A practitioner shall not act as advocate at a proceeding before a tribunal
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`in which the practitioner is likely to be a necessary witness unless: (1) The
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`testimony relates to an uncontested issue; (2) The testimony relates to the
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`nature and value of legal services rendered in the case; or (3)
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`Disqualification of the practitioner would work substantial hardship on the
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`client.
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`Miller’s investigation into Ex. 1004 found that every portion of the
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`document, save for the FRAME set, had been archived by the Internet Archive no
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`earlier than August 2019. (POPR at pp. 29-33; Ex. 2002 at ¶¶ 60-80).
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`After GAT claimed that it had uploaded the wrong document for Ex. 1002,
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`Miller raised this issue as it supported a Motion to Terminate the IPR. During the
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`meet and confer, Mr. Talley indicated that he was involved in the preparation of
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`the document, but he would not provide specific details.
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`He would subsequently suggest that Miller’s team did not understand how
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`the Internet Archive stored documents. (Ex. 2026). However, his “explanation”
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`was plainly contradicted by multiple pieces of evidence including a blog post by
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`Mark Graham, the director of the Internet Archive. (Ex. 2027). Miller responded
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`Patent Owner’s Opposition to Motion to Admit Evan Talley PHV
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`Page 1
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`IPR2020-00031
`Patent 10,043,188
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`to Mr. Talley’s assertion, specifically noting that his “evidence” reinforced
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`Miller’s position. (Ex. 2028 at 3).
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`If trial is instituted, then the provenance of Ex. 1004 will be a primary focus
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`of discovery, particularly who assembled Ex. 1004 and how. Based upon his
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`admitted involvement in the creation of Ex, 1004, Mr. Talley will be a fact witness,
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`particularly whether it is comprised of material that was archived by the Internet
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`Archive no earlier than August 2019. The predicates of 11.307 are all present.
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`Miller believes Ex. 1004 is not prior art; GAT continues to assert that it is. Thus,
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`his testimony directly relates to a contested issue and does not relate to the nature
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`and value of legal services. Further, GAT lists four other counsel in the IPR who
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`are presumably capable of representing it, thus there is no hardship to GAT.
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`Because Mr. Talley is a “likely witness,” he may not participate as an
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`advocate in this proceeding.
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` ADDITIONAL FACTORS
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`The provenance of Ex. 1004 raises an additional concern with respect to
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`Rule § 11.303 Candor toward the tribunal, which states, in pertinent part:
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` (a) A practitioner shall not knowingly: … (3) Offer evidence that the
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`practitioner knows to be false. If a practitioner, the practitioner’s client, or
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`a witness called by the practitioner, has offered material evidence and
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`the practitioner comes to know of its falsity, the practitioner shall take
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`reasonable remedial measures, including, if necessary, disclosure to the
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`Patent Owner’s Opposition to Motion to Admit Evan Talley PHV
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`Page 2
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`IPR2020-00031
`Patent 10,043,188
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`tribunal. A practitioner may refuse to offer evidence that the practitioner
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`reasonably believes is false. …
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`(c) The duties stated in paragraphs (a) and (b) of this section continue to the
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`conclusion of the proceeding, and apply even if compliance requires
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`disclosure of information otherwise protected by § 11.106.
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`GAT submitted testimony from Kingsley Klosson in conjunction with Ex.
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`1004. (Ex. 1014). It is Miller’s understanding that Mr. Talley was involved with
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`the presentation of Mr. Klosson’ s testimony. Mr. Klosson states as fact: “Ex.
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`1004 is a collection of screenshots of the Internet Archive (http://web.archive.org)
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`crawls or snapshots of the online POBITS user manual and technical reference,
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`taken on February 1, 2011 (link omitted).” (Ex. 1014, ¶ 11) (emphasis added).
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`This statement was not qualified with a disclaimer (e.g., I believe, I have been told)
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`etc., nor does Mr. Klosson allege that he was an employee of the Internet Archive.
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`In sharp contrast, the physical evidence from the Internet Archive indicates
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`that Mr. Klosson’s testimony is indisputably false, and that with the exception of
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`the empty FRAME set, the content data in Ex. 1004 was archived by the Internet
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`Archive no earlier than August 2019. (POPR at pp. 29-33; Ex. 2002 at ¶¶ 60-80).
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`Again, when Miller raised concerns with Ex. 1004 in conjunction with the
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`Motion to Terminate, Mr. Talley asserted that Mr. Howell did not understand the
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`operation of the Internet Archive and even suggested pursuing sanctions against
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`Miller. (Ex. 2026). In a letter to lead counsel, the undersigned explained how Mr.
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`Patent Owner’s Opposition to Motion to Admit Evan Talley PHV
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`Page 3
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`IPR2020-00031
`Patent 10,043,188
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`Talley was misreading the very pages that he was citing. (Ex. 2028).
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`Unfortunately, the JPEG images in Mr. Talley’s document have very poor
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`resolution. Nevertheless, the crux of the argument is summarized below.
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`To the untrained lay observer, the pages of Ex. 1004 will mislead the reader
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`to believe that all of the content displayed was archived in February 2011. But, the
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`Internet Archive does not always archive all of the elements of any given web page
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`at one time, particularly when a FRAME set is involved. Mark Graham explains
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`this in detail, when he introduces the “Timestamps” feature of the “About this
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`Capture” button:
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`The Timestamps list includes the URLs and date and time difference
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`compared to the current page for the following page elements: images,
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`scripts, CSS and frames. Elements are presented in a descending order. If
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`you put your cursor over a list element on the page, it will be highlighted
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`and if you click on it you will be shown a playback of just that
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`element…. Each web page element has its own URL and Timestamp,
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`indicating the exact date and time it was archived. Page elements may have
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`similar Timestamps but they could also vary significantly for various
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`reasons which depend on the web crawling process. By using the new
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`Timestamps feature, users can easily learn the archive date and time for
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`each element of a page. …One of the ways a web archive could be
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`confusing is via anachronisms, displaying content from different dates and
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`times than the user expects. For example, when a archived page is played
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`back, it could include some images from the current web, making it look
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`Patent Owner’s Opposition to Motion to Admit Evan Talley PHV
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`Page 4
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`IPR2020-00031
`Patent 10,043,188
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`like the image came from the past when it did not.
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`The “Timestamps” feature allows a user to get detailed information above
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`capture anachronisms without being an expert in HTML source code. In his
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`“explanation,” Mr. Talley used the “About this Capture” button with reference to
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`the POBITS FRAME SET. The Wayback Machine subsequently displayed all of
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`the sub-elements on that page, just as Mr. Graham described. However, the time
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`difference for each element was “+8 Years 7 months.” (See inset below). Placing
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`the cursor on an element listed the
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`actual capture time (which is the
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`same date as OKC served invalidity contentions, but which did not include Ex.
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`1004). Miller explained this in the POPR, and provided additional specific
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`examples to counsel in Ex. 2028. Miller further requested physical evidence of
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`capture dates prior to August 2019. Id. at 3. None has been provided.
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`One example of the “other indexes” in the Archive records is attached as Ex.
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`2029. As it plainly indicates, the POBITS “Introduction” page (Ex. 1004, p. 1) has
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`only been archived 13 times by the Archive, the earliest being August 8, 2019.
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`Similar listings can be generated for the 80 content pages of Ex. 1004.
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`As such, Paragraph 11 of Klosson’s testimony contradicted by physical
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`evidence, and no corrective action has been undertaken by GAT.
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`For these reasons, Miller opposes the admission of Mr. Talley.
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`Patent Owner’s Opposition to Motion to Admit Evan Talley PHV
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`Page 5
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`Dated: February 28, 2020
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`IPR2020-00031
`Patent 10,043,188
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`Respectfully submitted,
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`
`By: /Richard D. Mc Leod/
`R. D. Mc Leod (Reg. No. 46,921)
`law@rickmcleod.com
`Mc Leod Law LLC
`PO Box 99
`Woodland WA 98674
`Telephone: (360) 841-5654
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`Patent Owner’s Opposition to Motion to Admit Evan Talley PHV
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`Page 6
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`IPR2020-00031
`Patent 10,043,188
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`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
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`The undersigned certifies that on February 28, 2020, a complete copy of
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`Patent Owner’s Opposition to GAT’s Motion to Admit Evan Talley Pro Hac Vice
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`and supporting exhibits were served via electronic mail as follows:
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`ipr-filings@dunlapcodding.com
`Jordan A. Sigale (Reg. No. 39,028)
`Douglas J. Sorocco (Reg. No. 43,145)
`Evan W. Talley
`Ann M. Robl (Reg. No. 71,541)
`Alyssa N. Grooms (Reg. No. 75,902)
`DUNLAP CODDING, P.C.
`P.O. Box 16370
`Oklahoma City, OK 73113
`Tel: (405) 607-8600
`Fax: (405) 607-8686
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`By: /Richard D. Mc Leod/
`R. D. Mc Leod (Reg. No. 46,921)
`law@rickmcleod.com
`Mc Leod Law LLC
`PO Box 99
`Woodland WA 98674
`Telephone: (360) 841-5654
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`CERTIFICATE OF SERVICE
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`Page 1
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