Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 72
`Date: September 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`____________
`
`Record of Oral Hearing
`Held: June 4, 2020
`____________
`
`
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 72
`Date: September 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`____________
`
`Record of Oral Hearing
`Held: June 4, 2020
`____________
`
`
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`NAVEEN MODI, ESQ.
`DANIEL ZEILBERGER, ESQ.
`Paul Hastings LLP
`875 15th Street NW Suite 10
`Washington, D.C. 20005
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`STEVEN W. HARTSELL, ESQ.
`Skiermont Derby LLP
`1601 Elm Street, Suite 4400
`Dallas, Texas 75201
`
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, June 4,
`2020, commencing at 9:01 a.m. EDT, by video/by telephone.
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE JEFFERSON: Good morning. This is a trial hearing for five
`Inter partes review cases combined. The first is IPR2019-00728 concerning
`U.S. Patent Number 6,851,115. The second two are IPR2019-00730 and
`IPR2019-00731 concerning U.S. Patent Number 7,069,560, and finally,
`IPR2019-00733, and 2019-00734 for U.S. Patent Number 7,036,128. The
`Petitioner is Google LLC, and the Patent Owner is IPA Technologies, Inc. I
`am Judge Jefferson, and with me on your screens should be Judges Barrett
`and Gerstenblith.
`Moving on, before we get started, I’m going to just give brief
`discussion of our hearing process here, so thank you for your flexibility in
`conducting this all by video hearing today. You know, this is a departure
`from our typical practice although for those of us with the experience, it has
`been working recently well with some patience from all the parties. Given
`that, we wanted to start off in by clarifying a few items.
`First, our primary concern is your right to be heard and present your
`case on the record as you see fit. If at any time during the proceeding you
`encounter technical difficulties that you feel undermines your ability to
`adequately represent your client, please let us know immediately. You
`should have been given contact information from team members with your
`connection information, and if there is a loss of connection or some other
`problem you can let them know through those means as well.
`Second, when not speaking please mute yourself. I know that’s an
`instruction we’ve all been given that’s worth repeating. Third, please
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`identify yourself each time you speak. This helps the court reporter prepare
`an accurate transcript, and because of the ways our radio technology help
`works, it gives a little time for us to make sure you’re the active window on
`our screens. Fourth, we have the entire record including demonstratives at
`our fingertips, but we are all fumbling with our devices to make sure that we
`get everything on the screen at the proper times, so when referring to
`demonstratives papers or exhibits, please do so clearly and explicitly by
`slide and/or tapes number, or page numbering.
`You might also pause a few seconds after identifying and to let
`everyone catch up with you. This, again, always helps us keep an accurate
`transcript to make sure we’re following along. Finally, our hearing in this
`case is not open to the public. We have denied public hearing requests due to
`confidential information that has been filed, at least temporarily, under seal.
`Nonetheless, I’m going to request if you are discussing sealed or
`confidential information, you try to note it during your presentation. It helps
`us with the transcript, and I think it also might sort of reinforce that we want
`to make sure that, you know, remind us to keep track that there’s no public
`parties listening in.
`So at this time with those instructions and concepts that are being laid
`out, we’ll turn to our normal practice which is having the parties identify
`themselves and who is joining them remotely by video and/or audio, and
`we’ll start with Petitioner, so I’m asking the Petitioner to make their
`appearances and obviously state your names for the record.
`MR. MODI: Good morning, Your Honors. This is Naveen Modi on
`behalf of Petitioner Google. With me, I have my colleague Daniel
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`Zeilberger. He is joining by video. Both Mr. Zeilberger and I will be
`presenting for Google today, and then on the phone we should have a few
`individuals on our end, Mr. Joe Palys and Mr. Arvind Jairam, again both
`from the law firm of Paul Hastings. I also understand that we have Mr.
`Mike Hendershot and Mr. Evan McLean from Jones Day, and we also have
`a client representative on the line from Google, Mr. Timur Engin. Thank
`you, Your Honors.
`JUDGE JEFFERSON: Thank you. And for the --
`MR. HARTSELL: Good morning, Your Honors.
`JUDGE JEFFERSON: -- for the Patent Owner, please, the same.
`Good morning.
`MR. HARTSELL: Good morning, Your Honors. This is Steven
`Hartsell here today representing Patent Owner IPA Technologies. In the
`same room with me are my colleagues Jamie Olin and Sadif Abdullah, and I
`will be presenting today on behalf of Patent Owner.
`JUDGE JEFFERSON: Good morning. Thank you for that. At least
`you have someone in the room with you. I couldn’t help but -- I mean, we
`get these artificial things. So as I said, one of the things that we have in our
`trial order, each party has 90 minutes in total to present its argument in each
`case. Petitioner has the burden for showing unpatentability and will go first,
`and our Patent Owner will then proceed. Each party may reserve rebuttal
`time and should let us know at the beginning of their presentation, and
`repeat again for clarity of the transcript, please state where you are. It helps
`just to follow certainly your arguments, and we again have all your papers
`and exhibits with us.
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`
`And although we will have reviewed the written objection to motions
`when we were deliberating, if those impact any of the information that we’re
`talking about, I invite you to talk about them during the presentation as well.
`Importantly, this is not a marathon, and although we lack visual cues, we can
`only see the active (inaudible) coming from the parties in the room. We do
`plan to take a short five-minute break at the end of each parties’ name
`presentation. That’s our present plan. We will go off the record, but the
`parties should mute themselves. Your video will still be connected. The
`Judges might mute their video, but again, people could still hear you unless
`you mute yourself and we want to make sure that the parties aren’t hampered
`by that.
`I’m going to ask my fellow Judges if there is anything they have to
`add, and while I get their confirmations that they are okay to go, and our
`court reporter is -- I’m going to take that silence as making sure our court
`reporter has good connection, and we’re okay. We’re going to start our
`presentations. We’ll start with the Petitioner. Please let us know how much
`time you’d like to reserve. I will circle back and say I will be the primary
`timekeeper. I’m inviting all the parties to keep track of their time as well,
`and I will let you know how much time you have reserved and give you
`some verbal indication if you get close to those times.
`You know, I’m going to -- one of my colleagues has just pointed out I
`should probably verify that the court reporter is still listening just in case
`they’ve gotten disconnected from us. Is the court reporter okay with the
`audio and everything so far?
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`
`COURT REPORTER: Yes, sir, Your Honor. I’m just fine. Loud and
`
`--
`
`JUDGE JEFFERSON: Thank you.
`COURT REPORTER: -- loud and clear. Thank you.
`JUDGE JEFFERSON: Very good. So with that in mind -- by the
`way, the court reporter has your demonstratives as well and has some idea of
`where you’re going, so again that’s always helpful if you let us know where
`they are. It helps with keeping a clean transcript. With that, we’ll turn to the
`Petitioner, and you may begin your presentation when ready.
`MR. MODI: Thank you, Your Honors. Again, good morning. May it
`please the Board. Based on the petitions and supporting evidence, the Board
`instituted a trial in the proceedings at issue. The record now includes even
`more evidence than before, and that supports Petitioner’s positions. We
`request that the Board find the claims unpatentable; let me explain why. By
`the way, Judge Jefferson, I would like to save 10 to 15 minutes for rebuttal.
`JUDGE JEFFERSON: Okay.
`MR. MODI: So if we could, turn to slide 2. As the Board is aware,
`the proceedings at issue involve three patents. Slides 3 through 7 list the
`grounds at issue in each of the proceedings. Given the Board’s familiarity
`with the grounds, I’m going to go ahead jump to now slide 8, please. So if
`we now turn to slide 8, it lists some of the issues in dispute in these
`proceedings. The Board is aware, each of the grounds at issue in the five
`proceedings include the Martin reference. For the proceedings involving the
`115 and 560 Patent, IPA is still disputing whether the Martin reference
`qualifies as prior art. IPA, however, is not challenging this issue with
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`respect to the proceedings involving the 128 Patent, namely the 733 and 734
`IPR proceedings.
`IPA also has raised some arguments with respect to the merits of the
`grounds at issue. In terms of the argument today, I will address the issue of
`whether the Martin reference qualifies as prior art, and my colleague Mr.
`Zeilberger will address the issues IPA has raised with respect to the merits of
`the grounds. So with that if we could please turn to slide 9. Turning now to
`of whether the Martin reference qualifies as prior art. By the way, I’ll
`mainly point to the record for the 115 Patent today, and the record for that
`proceeding which is the 728 IPR proceeding of course similar evidence
`exists for the 560 Patent in those proceedings, and it is all laid out in our
`papers.
`So if we look at the 115 Patent and the 560 Patent and compare it to
`the Martin reference, it is undisputed that large portions of those patents and
`the Martin reference are identical or almost identical, and you can actually
`see that on the slide 9. We have Patent Owner’s response quoted at the
`bottom where they agree that it’s almost identical or identical. So what is
`the relevant question for the Board in this proceeding with respect to the
`issue? So if we can, turn to slide 10, please. In slide 10, you can see right in
`the middle, the question for the Board here is: In determining whether a
`reference is the work of the named inventors, the inquiry focuses on whether
`the relevant content of the reference was solely the work of the inventors.
`So what does that mean here? It is whether the relevant content of the
`reference that is the Martin reference here is solely the work of the named
`inventors of the patents at issue. That is the 115 and 560 Patents. We
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`believe the answer is clearly no. The evidence shows that Dr. Moran made
`substantial contributions to the relevant portions of the Martin reference.
`Let’s take a look at that. If we could go to slide 11, please. So slide 11
`shows the overwhelming evidence that demonstrates that Dr. Moran made
`substantial contributions to the relevant content of the Martin reference. If
`we start at the top on slide 11, Martin itself, the Martin paper lists Dr. Moran
`as a coauthor, and we’ll discuss that and the importance of that.
`Dr. Moran’s testimony that he contributed to the key subject matter of
`Martin is very consistent with the evidence as I’ll discuss, and Petitioner
`relied on precisely that subject matter in its petitions. There are
`contemporaneous OAA as the Board knows this patent is about the Open
`Agent Architecture or OAA as the parties have referred to it. There are
`contemporaneous OAA-related articles identifying Dr. Moran as a
`contributor. In fact, two of them, exhibits 1174 and 70 lists Dr. Moran as the
`lead author, and then we also have exhibits 1171, 72, and 76, other papers
`and articles showing Dr. Moran’s involvement and collaboration.
`We also have another patent that’s directed to OAA that lists Dr.
`Moran as the inventor. We have Dr. Moran’s contemporaneous CV from
`2003 in SRI’s webpage from 1998. We have more here. We have the Rule
`132 declarations. I know IPA wants you to look at them differently, but
`we’ll discuss how we believe they support Petitioner. We also have Mr.
`Cheyer’s 2014 speech that corroborates Dr. Moran’s contributions. We have
`testimony from Mr. Martin himself where he, on cross-examination, had to
`admit that Dr. Moran made technical contributions to the OAA project. And
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`finally we have IPA’s inconsistent statements to the PTAB in other
`proceedings, and we think those are telling.
`On the other hand, what does IPA have? IPA, of course, still points to
`the evidence that it pointed to during institution, and the only other
`additional evidence that it has is the contradictory testimony of Mr. Martin
`and Mr. Cheyer that we will discuss today. So if I could dig into some of
`this evidence for the Board. So if you could, turn to slide 12 now. Let’s
`start with the declaration of Dr. Moran, and Dr. Moran gave a detailed
`declaration that’s exhibit 1007 in this proceeding where he detailed his
`(inaudible) on experience, and I think the Board has to look at this in context
`what happened here. Dr. Moran was with SRI since 1983. That’s when he
`joined SRI. He has a MS and PhD degree with a concentration in artificial
`intelligence and computational linguistics, and that’s all discussed in
`paragraphs 5 to 22 of Dr. Moran’s declaration.
`He discusses his deep involvement in the OAA project, how he was
`put in charge, how he made contributions, and then of course he discusses
`his contributions and involvement with the publication of the Martin paper,
`and that’s at paragraph 35 to 39 of exhibit 1007. And I’d like to look at
`some of this for the Board. So let’s look at slide 13, please. So if you look
`at slide 13, what does this slide show? So this is from Dr. Moran’s 2003
`CV, and it’s important that it’s from 2003, and how do we know that? We
`actually had the Internet Archive corroborate that for us, and you can see
`that in exhibit 1177.
`So if you look at Dr. Moran’s CV, he discusses his facts on
`(inaudible) and experience in the relevant technologies. For example, if you
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
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`look at slide 13 at the top, Dr. Moran’s CV talks about the OAA
`Architecture, and he says, well, it was inspired by my experience on the
`Shop Talk project below which is also reproduced here for the Board’s
`benefit. And in turn, the Shop Talk project was inspired by the CCWS
`project. Why do I harp on this? Because if you look at the CCWS project
`and the Shop Talk project, you will see they relate to the technologies that
`underline the OAA project and what went there. They were basically the
`genesis for the OAA project.
`So if we can, turn to slide 14 now; let’s go back with that backdrop
`and look at Dr. Moran’s declaration.
`JUDGE JEFFERSON: Before you move on, Counselor, let me ask
`you a couple of questions, and this is more in a general sense. This is Judge
`Jefferson. The extended CV and the papers is evidence that came in after
`the petition, that I don’t recall Dr. Moran talking about his contemporaneous
`CV in his declaration or the other papers related to OAA. I’m not saying
`that they are late. I’m saying if they are relevant to whether he contributed
`conceived of information that ends up in the Martin reference, why wasn’t
`that presented in the petition?
`MR. MODI: That’s a good question, Your Honor. I think two
`responses to that: So if you look at Dr. Moran’s CV, it’s definitely in the
`record. It was exhibit 1008, and what we did was --
`JUDGE JEFFERSON: But not the contemporaneous CV, right? You
`mean, I do recognize you’re pointing us to a CV now that is part of 2000 --
`I’m not going to give the date because I’m not sure of the date, but an older
`CV that would have been around the time of the patenting, so go ahead --
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
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`
`MR. MODI: Absolutely, Your Honor, and I was actually going to
`address that the reason I mentioned 1008 was, I would like you to compare
`1000 -- my point here is very simple, Your Honor. What IPA did here in
`response to the petition, and we believe the petition did more than enough in
`terms of satisfying its burden and the whole burden-shifting framework that
`the Board talked about in its institution decision. We stand by our petition
`and we believe we did enough.
`We think under the law when IPA in its response challenged that,
`look, there is no cooperation here. They went as far as saying Dr. Moran
`made no technical contributions. So when you’re faced with that, the law
`not only permits under Genzyme and under Dynamic Drinkware, it almost
`expects you to come forward with evidence during the trial. That’s why we
`have the trial phase, Your Honor.
`And my point -- the reason I went back to the 1008 exhibit was, if you
`compare the 1008 CV version, Your Honor, to exhibit 2000 -- the extended
`CV, which is exhibit 2020 which was introduced during Dr. Moran’s cross-
`examination, and then we had the Internet Archive also verify that in that
`exhibit 1177. The whole reason for that is to show the consistency in the
`evidence, that Dr. Moran’s not saying this just today, right, after the fact.
`It’s been consistent. The evidence has been consistent throughout, so that’s
`the point, Your Honor.
`So if we could, then turn to slide 14. I believe that’s where we were.
`So if we look at slide 14, we have one of the paragraphs reproduced from
`Dr. Moran’s declaration, and that is at paragraph 39 of exhibit 1007. And if
`you look at this paragraph, Dr. Moran details the sections of the Martin
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
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`reference to which he contributed. He identifies the sections of the Martin
`reference by section number. Why is that important? Because those are
`precisely the sections that we’ve relied on for invalidity in these cases. So if
`you could, go to slide 15, please. You’ll see on slide 15 what we did here is
`on the left-hand side there is a table. On the
`left-hand side, we showed you the sections of the Martin reference to which
`Dr. Moran contributed, and now on the right, you have the section title of the
`Martin reference.
`So, for example, section 2.5 relates to the Open Agent Architecture.
`Section 3 goes into the OAA system structure. Section 4 goes to the
`mechanisms of cooperation such as the ICL and the facilitator. Those are
`precisely the concepts that are claimed in the patents at issue. So if you can,
`now turn to slide 16. Slide 16 and the next two slides show that the petitions
`relied on the sections that the Martin reference to which Dr. Moran
`contributed to establish invalidity. So slide 16, you can see identify the
`pages of the petition that correspond to Claim 61 of the 115 Patent which is
`at issue in the 728 proceeding.
`So if you look at this chart, it shows you the pages of the petition and
`the corresponding sections of the Martin reference that which Dr. Moran
`contributed. So the petition contrary to IPA’s assertions, the petition did lay
`all of this out for the Board, and if you turn to slide 17, it shows the pages of
`the petition that correspond to Claim 22 of the 560 Patent which is at issue in
`the 730 proceeding. Finally, if we go to slide 18, it identifies pages of the
`petition that correspond to Claim 47 of the 560 Patent whch is at issue in the
`731 proceeding. So IPA simply cannot claim that Google or the Petitioner
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`did not meet its burden to show what was required under the case law and
`establish the Martin reference as prior art and show how those references
`were relied upon in the petitions.
`Let’s talk about corroboration. There is overwhelming evidence --
`JUDGE JEFFERSON: Before you move to corroboration, let’s linger
`on paragraph 39 for a second in the --
`MR. MODI: Sure, Your Honor.
`JUDGE JEFFERSON: Dr. Moran, I believe -- and I’m trying to make
`it bigger so I can see it. It says that he contributed the conception of
`distributed technologies that are at the core of the OAA paper. How are we
`supposed to assess whether that contribution indicates that the work that is
`claimed in the patent is therefore not from a common inventive entity? That
`is, in that in a sense, is this paragraph saying that Dr. Moran is an inventor of
`the technology that is -- or of the claims that are at issue in the challenge
`patents?
`MR. MODI: Your Honor, that’s a good question. I think all we are
`saying is that in all we are required to show under the case law are, what
`were Dr. Moran’s contributions to the subject matter of the Martin reference,
`and then of course we tied that up in the petition and showed how those
`sections of the references correspond to the claims. And if you look at
`paragraph 39, Dr. Moran showed that -- and to be clear by the way, and let
`me just back up, Dr. Moran is not claiming he is the sole inventor,
`contributor of the OAA project. All he’s saying is he was one of the key
`contributors, Your Honors, and if you look at paragraph 39, he comes in and
`he specifically identifies as, Judge Jefferson, you pointed out, the specific
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`sections of the OAA system to which he contributed, right, and he helped
`out with the conception of that subject matter.
`So then when you take that testimony and then you look at the
`petition, the petition relied on those sections of the Martin paper to show
`invalidity, and we believe that more than under the case law that meet the
`Petitioner’s burden. I hope that answers your question, Your Honor. So if --
`JUDGE JEFFERSON: I understand.
`MR. MODI: Thank you, Your Honor.
`JUDGE BARRETT: Counsel, I do have a follow-up before you move
`on. This is Judge Barrett. Is there any elaboration beyond paragraph 39
`because I’m a little apprehensive of a lay witness saying I contributed to
`conception when that’s really a legal term? If we have to make fact findings
`in our final written decision, do you put any meat on the bone, something
`where we can make fact findings?
`MR. MODI: Absolutely, Your Honor, we do, and I think if you look
`
`at
`Dr. Moran’s declaration, as you can see it’s a 21-page declaration, in
`paragraph 39, he comes in, and that’s obviously the ultimate paragraph,
`right, in his declaration, but if you look at all of the other paragraphs before
`that, Dr. Moran goes into painstaking detail as to how the OAA system came
`about, how the OAA paper was generally the Martin paper that we’ve been
`calling, how it was generated, why the concepts that, in his experience of his
`education, why it helped him contribute to those sections of the Martin
`paper.
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`
`So, Your Honor, if you go back to Katz, and I know Your Honor is
`familiar with the Katz case, this is in our view at least it satisfies Katz if not
`more. If you remember in Katz, there was an inventor declaration, and that
`was it, and the Federal Circuit said that was more than enough to satisfy the
`burden there because, and the key was, that the declarant there provided the
`facts surrounding their contributions, and that’s precisely what we have here.
`And we didn’t stop here, Your Honors, we have other evidence, and then
`that’s what I was going to go to next to show, and I think that will also
`address your question, Judge Barrett, in terms of other evidence that
`supports what Dr. Moran is saying.
`JUDGE BARRETT: All right, thank you.
`MR. MODI: Okay. So if we can, go to slide 19, please. So starting
`with slide 19, we believe the record here includes more than overwhelming
`evidence to support the corroboration and the work of Dr. Moran. So
`starting with the Martin reference itself, as the Board is aware, Dr. Moran is
`listed as a coauthor. I know that’s not dispositive, but it certainly is a
`starting factor, right, and the case law including Katz, EmeraChem, they all
`say the Board looks at the authorship and the surrounding facts, and we’ve
`been talking about the surrounding facts.
`So then let’s go to slide 20. What does IPA do? They say, well, Dr.
`Moran is biased, not so. If you look at slide 20, Dr. Moran testified under
`oath that he left SRI on good terms. There was no axe to grind here. Let’s
`turn to slide 21. In fact, the reason Dr. Moran testified here is he felt it was
`his moral obligation to testify, and if we look at the testimony on slide 21, he
`said: I was requested to provide factual data, and as a scientist and working
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`about the correctness of the literature and the attributions, that’s important to
`me.
`
`We have more evidence here, Your Honors. So if you go to slide 22,
`we have other OAA-related papers that corroborate Dr. Moran’s testimony,
`and this is an important paper, Your Honors. This is exhibit 1174. And
`what does this show us and tell us? Well, this shows if you look at slide 22,
`it says it lists Dr. Moran as the lead author and the other author is Mr.
`Cheyer, one of the named inventors of the patents at issue here, and the
`paper notes that the OAA grew out of two interrelated research projects, and
`the key here is those projects are the ones that we talked about. Those are
`the ones that Dr. Moran was involved in, the CCWS project and the Shop
`Talk project.
`And if you look at slide 22 in the highlighted part, you’ll see there’s a
`reference to number 6 and there’s a reference to number 5; 6 is right in the
`middle after our work grew out of two interrelated research projects and then
`it references 6 and then at the bottom it says, the second project focused on a
`practical role for natural language in accessing databases, and that’s
`reference 5. So let’s look at those references.
`So if you go to slide 23, you’ll see those are precisely the references
`that go to the Shop Talk project and the CCWS project. How do you know
`that? So number 5, you can tie that to exhibit 1177 at 13, you’ll see that is a
`paper directed to Shop Talk, and then that the reference number 6 is CCWS
`and if you go back and look at exhibit 1177 at 14, you’ll see that’s a paper
`that relates to CCWS. And what’s important here is that Mr. Cheyer and
`Mr. Martin are not even listed. So for IPA to come in and say that Dr.
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`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 and IPR2019-00731 (Patent 7,069,560 B1)
`IPR2019-00733 and IPR2019-00734 (Patent 7,036,128 B1)
`
`Moran made no contributions, we believe defies logic. This project, the
`genesis of the OAA project, was from the work that Dr. Moran did for years.
`So if we go to slide 24, what’s interesting here, Your Honors, is that
`when we asked Mr. Cheyer -- and as you recall, IPA wanted Mr. Cheyer and
`Mr. Martin to testify, and we were certainly fine with them testifying. We
`actually think their testimony helps us, not them, and I’ll explain why. And
`here it’s interesting where you look at Mr. Cheyer’s testimony. When he
`was asked about this article, and even though the article names him --
`remember 1174 names Mr. Cheyer and
`Dr. Moran. We asked Mr. Cheyer, well, do you agree that this work
`originated out of these two projects? And you can see his testimony here.
`Sadly he disagreed with his own article. So if you look at slide 24, he said:
`I would not agree in the characterization of Open Agent Architecture grew
`out of these works.
`And what does IPA do with evidence that’s either unfavorable or
`contradictory? It does two things. It either ignores it. We have yet to hear a
`response to this testimony from IPA. In their papers, they’re silent, or what
`they do is they ask you to exclude the relevant evidence. Oh, we don’t think
`you should do either; the Board should look at the evidence and evaluate it.
`So if you go to slide 25, in addition to the exhibit 1174 that we looked
`at, there are other OAA-related papers that also corroborate Dr. Moran’s
`testimony, and you can see those here. These include exhibit 1170 which
`lists Dr. Moran as the lead author. You have exhibit 1171, and you have
`exhibit 1172. If you review these papers, even in a cursory fashion, you will
`see they are directed to OAA and discuss topics like the facilitator that are
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`IPR2019-00728 (Patent 6,851,115 B1)
`IP
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