Case IPR2021-00831
`U.S. Patent No. 8,671,132
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`
`MICROSOFT CORPORATION
`Petitioner
`
`
`v.
`
`
`DAEDALUS BLUE, LLC
`Patent Owner
`
`_________________________
`
`
`Case IPR2021-00831
`
`U.S. Patent No. 8,671,132
`Title: SYSTEM, METHOD, AND APPARATUS FOR POLICY-BASED DATA
`MANAGEMENT
`Filing Date: 03/14/2003
`Issue Date: 03/11/2014
`
`_________________________
`
`
`DAEDALUS BLUE, LLC’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`U.S. Patent No. 8,671,132
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`
`MICROSOFT CORPORATION
`Petitioner
`
`
`v.
`
`
`DAEDALUS BLUE, LLC
`Patent Owner
`
`_________________________
`
`
`Case IPR2021-00831
`
`U.S. Patent No. 8,671,132
`Title: SYSTEM, METHOD, AND APPARATUS FOR POLICY-BASED DATA
`MANAGEMENT
`Filing Date: 03/14/2003
`Issue Date: 03/11/2014
`
`_________________________
`
`
`DAEDALUS BLUE, LLC’S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2021-00831
`U.S. Patent No. 8,671,132
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`Introduction ...................................................................................................... 1
`
`Page
`
`II.
`
`The Board should exclude Microsoft’s inadmissible evidence. ...................... 2
`
`III. Conclusion ....................................................................................................... 5
`
`i
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases
`
`Conoco Inc. v. Dep’t of Energy, 99 F.3d 387
`(Fed. Cir. 1996), as amended on reh’g in part (Jan. 2, 1997) ................ 1, 3, 5
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ....................................................................... 3
`
`Statutes
`
`35 U.S.C. § 24 ........................................................................................................1, 4
`
`Rules
`
`FED. R. EVID. 802 ....................................................................................................... 3
`
`FED. R. EVID. 803(17) ................................................................................................ 3
`
`FED. R. EVID. 807 .............................................................................................. 1, 3, 5
`
`Administrative Decisions
`
`Duke Mfg. Co. v. Low Temp Indus., Inc.,
`Case IPR2021-00414, Paper 59 (PTAB July 6, 2022) .................................... 4
`
`Ericsson Inc. v. Intellectual Ventures I LLC,
`Case IPR2014-00527, Paper 41 (PTAB May 18, 2015) ................................. 3
`
`Google Inc. v. Intellectual Ventures II LLC,
`Case IPR2014-00787, Paper 91 (PTAB July 24, 2020) .................................. 1
`
`Standard Innovation Corp. v. Lelo, Inc.,
`Case IPR2014-00148, Paper 42 (PTAB Apr. 23, 2015) ................................. 4
`
`
`All emphases in quotations are added unless otherwise noted.
`
`All citations to specific pages of exhibits follow the pagination added to those
`exhibits per 37 C.F.R. § 42.63(d)(2)(i).
`
`ii
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
`
`I.
`
`Introduction
`
`
`
`
`
`Microsoft’s opposition did not show that the challenged evidence about
`
`Tivoli’s purported public accessibility is admissible. To start, Microsoft’s opposition
`
`stretches FED. R. EVID. 807’s residual exception beyond its breaking point. That
`
`exception “is to be reserved for ‘exceptional cases,’ and is not ‘a broad license on
`
`trial judges to admit hearsay statements that do not fall within one of the other
`
`exceptions.’” Google Inc. v. Intellectual Ventures II LLC, Case IPR2014-00787,
`
`Paper 91, at 22 (PTAB July 24, 2020) (quoting Conoco Inc. v. Dep’t of Energy, 99
`
`F.3d 387, 392 (Fed. Cir. 1996), as amended on reh’g in part (Jan. 2, 1997)).
`
`Microsoft did not even try to show that this case is exceptional enough to
`
`trigger the residual exception. Nor did it show that its hearsay evidence is “more
`
`probative on the point for which it is offered than any other evidence that the
`
`proponent can obtain through reasonable efforts.” FED. R. EVID. 807(a)(2). Its
`
`opposition is silent as to what reasonable efforts (if any) Microsoft purportedly
`
`undertook. But Microsoft could have both (1) gathered whatever evidence it wanted
`
`before filing the petition; and (2) subpoenaed IBM after filing the petition. 35 U.S.C.
`
`§ 24. That Microsoft did not make the most of its earlier opportunities is no reason
`
`to bail it out now with the residual exception. And all of that aside, if inadmissible
`
`hearsay is the most probative evidence that Microsoft could come up with via
`
`reasonable efforts, that casts serious doubt on Tivoli’s supposed public accessibility.
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`1
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`As shown below, the other arguments in Microsoft’s opposition fare no better.
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`Thus, the Board should exclude (1) Tivoli’s purported created, updated, and
`
`copyright dates; (2) Ex. 1010 in its entirety; and (3) Ex. 1029 in its entirety.
`
`II. The Board should exclude Microsoft’s inadmissible evidence.
`
`Ex. 1006 (Tivoli): Despite Microsoft’s protests, its petition confirms that it
`
`offered the challenged statements about the dates Tivoli was purportedly created,
`
`updated, or copyrighted for their supposed truth: “Tivoli was published and publicly
`
`accessible at least by June 15, 2001 and no later than November 28, 2001. Tivoli
`
`was ‘created or updated on June 15, 2001’ with a 2000 copyright date. Tivoli, 2.”
`
`(Petition at 16; see also Paper 42 (“Motion to Exclude”) at 1-3; Paper 43
`
`(“Opposition”) at 1-2.) So does Microsoft’s opposition, which says that “the dates
`
`are being offered as evidence to support the material fact that Tivoli pre-dates the
`
`2002 critical date of the ’132 Patent.” (Opposition at 4.)
`
`Even Microsoft’s new theory that those dates are “circumstantial evidence of
`
`publication prior to the 2002 critical date for the ’132 Patent” still requires offering
`
`Tivoli’s stated dates for their supposed truth. (Opposition at 2.) Otherwise, those
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`stated dates would not be circumstantial evidence of any relevant date. Because
`
`Microsoft offered Tivoli’s stated dates for their supposed truth, the putative “PTAB
`
`doctrine” Microsoft raised—which consists of routine, non-binding decisions by
`
`different panels on different facts—is inapplicable here. (Id. at 1-2.) Whether as
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`2
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`direct evidence or circumstantial evidence, Microsoft offered Tivoli’s stated dates
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`for their supposed truth, so those dates are inadmissible hearsay. FED. R. EVID. 802.
`
`The two hearsay exceptions that Microsoft argued do not apply. (Opposition
`
`at 2-4.) Starting with FED. R. EVID. 803(17), Tivoli’s stated dates are neither “market
`
`quotations, lists, directories, or other compilations” nor “other kinds of publications,
`
`for example, newspaper market reports, telephone directories, and city directories.”
`
`Id., Notes of the Advisory Committee. And Microsoft failed to show a commitment
`
`to accuracy for the sake of fostering public reliance as to Tivoli’s stated dates. Id.
`
`Microsoft’s reliance on Ericsson Inc. v. Intellectual Ventures I LLC, Case
`
`IPR2014-00527, Paper 41 (PTAB May 18, 2015) is misplaced. (Opposition at 2.)
`
`The panel’s holding in Ericsson was limited to IEEE publications, and Tivoli is not
`
`an IEEE publication. Id. at 10-11. And Ericsson’s 2015 approach of taking official
`
`notice of reliability and reliance no longer flies after In re Magnum Oil Tools Int’l,
`
`Ltd., 829 F.3d 1364 (Fed. Cir. 2016); instead, Microsoft needed to submit evidence
`
`showing that the public relied on Tivoli’s stated dates. Id. at 1381. It didn’t do so.
`
`Turning to FED. R. EVID. 807’s residual exception, Microsoft did not even try
`
`to show that this is an exceptional case as required under Conoco, 99 F.3d at 392.
`
`(Opposition at 3-4.) Nor did Microsoft try to show that Tivoli’s stated dates are
`
`“more probative on the point for which it is offered than any other evidence that the
`
`proponent can obtain through reasonable efforts.” FED. R. EVID. 807(a)(2). And
`
`3
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`although Microsoft claims that it can’t be bothered with reasonable efforts “at this
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`date,” it could have gathered whatever evidence it wanted before filing its petition,
`
`and also could have subpoenaed IBM under 35 U.S.C. § 24. (Opposition at 3-4.)
`
`Ex. 1010 (Purported IBM Redbooks Webpage Printout): Microsoft
`
`presented no evidence of authenticity and therefore failed to authenticate Ex. 1010.
`
`(Motion to Exclude at 3-4.) Microsoft’s argument that Ex. 1010 is authentic because
`
`it looks that way to Microsoft is circular, and also ignores the requirement to
`
`authenticate the contents of the website. Standard Innovation Corp. v. Lelo, Inc.,
`
`Case IPR2014-00148, Paper 42, at 10 (PTAB Apr. 23, 2015). (Opposition at 6-7.)
`
`Likewise, Ex. 1010 is irrelevant. (Motion to Exclude at 4-5.) Microsoft’s
`
`opposition failed to show how a 2021 website printout about Redbooks suggests
`
`Tivoli’s purported availability in 2002. (Opposition at 7.) The lone case Microsoft
`
`cited addressed claim construction, not public accessibility. Duke Mfg. Co. v. Low
`
`Temp Indus., Inc., Case IPR2021-00414, Paper 59, at 52 (PTAB July 6, 2022).
`
`Finally, while Microsoft claims that Ex. 1010 is not hearsay because it is
`
`“circumstantial evidence” of Tivoli’s supposed publication, Ex. 1010’s statements
`
`can’t serve as evidence of anything relevant without being offered for their supposed
`
`truth. (Motion to Exclude at 5-6; Opposition at 8.) So Ex. 1010 is inadmissible.
`
`Ex. 1029 (Purported IBM Redbooks Search Page Printout): Microsoft
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`offered Ex. 1029 for the supposed truth of its statements about the purported
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`4
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
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`searchability of the Redbook repository, making it inadmissible hearsay. (Motion
`
`to Exclude at 6.) Although Microsoft now claims that Ex. 1029 was offered as
`
`“circumstantial evidence,” it cannot rewrite its petitioner’s reply, which expressly
`
`offered those statements for their supposed truth. (Id.; Opposition at 8; see also
`
`Reply at 13.) Even as “circumstantial evidence,” Microsoft still offered those
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`statements for their supposed truth: “namely that Exhibit 1006 was publicly
`
`accessible prior to the 2002 critical date of the ’132 Patent.” (Opposition at 9.) And
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`its supplemental Internet Archive declaration (Ex. 1034) does not change any of that.
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`The residual exception of FED. R. EVID. 807 is inapplicable. Microsoft failed
`
`to show that this case is exceptional enough for the residual exception. Conoco, 99
`
`F.3d at 392. Nor did it show that Ex. 1029 is “more probative on the point for which
`
`it is offered than any other evidence that the proponent can obtain through reasonable
`
`efforts.” FED. R. EVID. 807(a)(2). Microsoft all but concedes that it could have tried
`
`to “track down someone with personal knowledge of IBM’s website features from
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`over 20 years ago.” (Opposition at 9.) It apparently chose not to try that approach,
`
`or any other reasonable efforts. In sum, Ex. 1029 is inadmissible hearsay.
`
`III. Conclusion
`
`The Board should exclude Microsoft’s inadmissible evidence.
`
`Dated: July 21, 2022
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`
`5
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`Case IPR2021-00831
`U.S. Patent No. 8,671,132
`
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`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. § 42.6(e), the undersigned certifies that on July 21, 2022,
`complete copies of the foregoing and all accompanying papers and exhibits were
`served by filing them in PTAB E2E and emailing them to Microsoft’s counsel at the
`following address(es):
`
`Don Daybell (Reg. No. 50,877)
`D2DPTABDocket@orrick.com
`Orrick, Herrington & Sutcliffe LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614-8255
`T: 949-567-6700; F: 949-567-6710
`
`Jared Bobrow (pro hac vice)
`PTABDocketJ3B3@orrick.com
`Orrick, Herrington & Sutcliffe LLP
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`T: 650-614-7400; F: 650-614-7401
`
`Microsoft-Daedalus_OHS_Only@orrick.com
`
`Dated: July 21, 2022
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kkm-ptab@mcnishpllc.com
`MCNISH PLLC
`254 Commercial Street, Suite 245
`Portland, ME 04101
`Telephone: (207) 800-3400
`Fax: (207) 800-3401
`
`Lead Counsel for Patent Owner
`Daedalus Blue, LLC
`
`
`
`
`
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