Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`Paper 40
`Entered: April 7, 2014
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VEEAM SOFTWARE CORPORATION
`Petitioner
`
`v.
`
`SYMANTEC CORPORATION
`Patent Owner
`____________
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
` Case IPR2013-00150 (Patent 7,093,086)1
`____________
`
`Before FRANCISCO C. PRATS, MEREDITH C. PETRAVICK, THOMAS L.
`GIANNETTI, and TRENTON A. WARD, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This paper addresses issues that are identical in the listed cases. The parties are
`not authorized to use this heading style for any subsequent papers.
`
`
`Tel: 571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`Paper 40
`Entered: April 7, 2014
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VEEAM SOFTWARE CORPORATION
`Petitioner
`
`v.
`
`SYMANTEC CORPORATION
`Patent Owner
`____________
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
` Case IPR2013-00150 (Patent 7,093,086)1
`____________
`
`Before FRANCISCO C. PRATS, MEREDITH C. PETRAVICK, THOMAS L.
`GIANNETTI, and TRENTON A. WARD, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This paper addresses issues that are identical in the listed cases. The parties are
`not authorized to use this heading style for any subsequent papers.
`
`
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
`Case IPR2013-00150 (Patent 7,093,086)
`
`
`
`At the request of counsel for Petitioner, via emails dated March 21 and
`
`April 1, 2014, the Board held a telephone conference in these cases on
`April 1, 2014. The participants were counsel for the parties, including attorneys
`Gordon and Richetti, and Administrative Patent Judges Petravick, Prats, Giannetti,
`and Ward.
`
`1. Joint Request to Waive Rules 37 C.F.R. § 42.53(d)(2) and (d)(4)
`
`Prior to the conference, the Board informed the parties that it has granted a
`joint request to waive the time limits set forth in the above rules relating to notices
`and scheduling for the depositions of Drs. Levy and Green.
`
`2. Request to Extend Date for Filing Observations on Cross-examination.
`
`Prior to the conference, the Board informed the parties that the due date for
`Petitioner to file motions for observations on cross-examination of Drs. Levy and
`Green is extended to Due Date 5 in the Scheduling Order. Furthermore, Patent
`Owner is authorized to file a response to such observations on or before Due
`Date 6.
`
`3. Motion to Compel
`
`In IPR2013-00150, Petitioner requested authorization to file a motion to
`compel production of certain documents (a deposition transcript and expert report)
`that Petitioner believes contain inconsistent relevant information on claim
`construction. See 37 C.F.R. § 42.51(b)(1)(iii). The documents sought by
`
`2
`
`
`
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
`Case IPR2013-00150 (Patent 7,093,086)
`
`
`
`Petitioner are subject to a protective order in a parallel district court litigation
`involving Patent Owner and a third party, Acronis. Patent Owner does not object
`to producing the documents, but states that Acronis has refused to grant
`permission. After discussing the matter, Petitioner agreed to limit its production
`request to the portion of the transcript (expected to be a few pages) discussing the
`construction of the term “capturing.” The Board observed that this approach
`should eliminate any confidentiality concerns on the part of Acronis and facilitate
`production of the requested information. The parties agreed to meet and confer on
`this issue to set a time for production.
`
`4. Motions to Strike
`
`Petitioner seeks authorization to file various motions to strike.
`
`A. Petitioner contends that Patent Owner’s replies on its motions to amend
`and the accompanying declarations of Drs. Green and Levy go beyond the proper
`scope permitted for replies under the Board’s rules and should be stricken. After
`further discussion, the Board took the matter under advisement. Having reviewed
`the materials objected to by Petitioner, the Board agrees with Petitioner as to the
`reply in IPR2013-00141, IPR2013-00142, and IPR2013-00150 for the following
`reasons:
`
`The scope of a reply is limited. A reply may only respond to arguments
`raised in a corresponding opposition. 37 C.F.R. § 42.23(b). A reply is not an
`opportunity to raise new issues or provide additional evidence that could
`reasonably have been provided in the motion. A reply that raises a new issue or
`
`3
`
`
`
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
`Case IPR2013-00150 (Patent 7,093,086)
`
`
`
`belatedly presents evidence will not be considered and may be returned. Office
`Trial Practice Guide, 77 Fed Reg. 48756, 48767 (August 14, 2012). The Board
`will not attempt to sort proper from improper portions of the reply. Id.
`
`In three of the four proceedings, Patent Owner has filed replies that go
`beyond the permissible scope. For IPR2013-00150, the Green Declaration in
`Support of Patent Owner’s Reply (IPR2013-00150 – Ex. 2019, “Green Reply
`Declaration”) is in effect a 50-page supplemental declaration. Appendix B of the
`Green Reply Declaration is a 39-page single-spaced claim chart purporting to
`provide 35 U.S.C. § 112 support for the claim amendments. The contents of
`Appendix B are in addition to the § 112 support information provided at pages 4-6
`in the Motion to Amend. Appendix C lists 191 references or documents that
`Dr. Green testifies he reviewed, and concludes that he did not discover “any art
`that anticipates or renders obvious Claims 32-34.” Green Reply Decl. at ¶ 65. The
`majority of the references included in Appendix C were not previously addressed
`by either party. The Levy Reply Declarations filed in IPR2013-00141 (Ex. 2014)
`and IPR2013-00142 (Ex. 2014) are similar in nature to the above Green Reply
`Declaration. These declarations are not limited to responding to arguments raised
`by Petitioner’s opposition. Instead, they raise new issues and provide additional
`evidence that could have been provided in the original motion to amend.
`Therefore, they do not meet the standard set forth above.
`
`This is not true, however, of the Levy Reply Declaration (Ex. 2011) in
`IPR2013-00143. That declaration appears to be more directed to arguments raised
`
`4
`
`
`
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
`Case IPR2013-00150 (Patent 7,093,086)
`
`
`
`in the opposition and does not include lengthy appendices raising new issues and
`presenting new evidence.
`
`We therefore conclude that the Green and Levy Reply Declarations in
`IPR2013-00141, IPR2013-00142, and IPR2013-00150 are not proper replies and
`should be expunged. Patent Owner will be given an opportunity to revise these
`replies and resubmit them within five business days.
`
`B. Petitioner contends that Patent Owner’s four motions to exclude
`evidence (one filed in each or the four proceedings) should be stricken for various
`reasons, including the fact that the motions are improper argument, and further that
`filing of the motions was not authorized by the Board. After further discussion, the
`Board took the request under advisement. Having reviewed the submissions, the
`Board denies the motions to exclude in the following respects:
`
`1. All four Patent Owner motions to exclude allege that Petitioner has
`“mischaracterized” expert testimony in the opposition to Patent Owner’s motions
`to amend. See, e.g., IPR2013-00141, Paper 33, 8-14. Patent Owner relies on
`Rule 403 of the Federal Rules of Evidence. Id. at 9. We are not convinced by
`Patent Owner’s arguments that this testimony should be excluded. At best, Patent
`Owner’s arguments go to the weight of that evidence, which the Board can
`determine from the transcripts provided. The reliance on Rule 403 is misplaced.
`The Board is capable of making this determination without being confused, misled,
`or prejudiced by this testimony. Accordingly, we deny each motion to strike this
`testimony.
`
`5
`
`
`
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
`Case IPR2013-00150 (Patent 7,093,086)
`
`
`
`2. In the motion to exclude filed IPR2013-00050, Patent Owner makes the
`
`additional argument that the Petitioner “improperly relies on hypotheticals.”
`Paper 39, 1-6. For the above reasons, we are not convinced that this is a sufficient
`basis to exclude the testimony.
`
`For the foregoing reasons, it is
`
`ORDERED that counsel for Petitioner and Patent Owner shall meet and
`confer promptly (within five business days) to set a date for production of the
`deposition transcript pages requested by Petitioner;
`
`FURTHER ORDERED that Patent Owner’s replies on its motions to amend
`in IPR2013-00141, 142, and 150, and the accompanying declarations of Drs. Levy
`and Green, are stricken and expunged from the record of these proceedings,
`without prejudice to Patent Owner filing, within five business days of entry of this
`order, substitutes that comply with the guidelines set forth above, namely, that the
`replies are limited to addressing points specifically raised by Patent Owner in its
`oppositions that were not previously addressed and not foreseeable to Patent
`Owner when it filed its motions to amend;
`
`FURTHER ORDERED that Patent Owner’s motions to exclude evidence are
`each denied with prejudice to the extent they are directed to supposedly
`“mischaracterized” expert testimony and allegedly improper reliance on
`hypotheticals. In responding to these motions, Petitioner need not address these
`arguments.
`
`FURTHER ORDERED that Petitioner’s outstanding requests for
`authorization to file motions to strike are dismissed as moot.
`
`6
`
`
`
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
`Case IPR2013-00150 (Patent 7,093,086)
`
`
`Lori A. Gordon
`Michael Q. Lee
`Byron L. Pickard
`STERNE, KESSLER, GOLDSTEIN
`& FOX PLLC
`lgordon-PTAB@skgf.com
`mlee-PTAB@skgf.com
`bpickard-ptab@skgf.com
`
`For PATENT OWNER:
`
`Joseph J. Richetti
`Lawrence G. Kurland
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`lgkurland@bryancave.com
`
`
`
`
`7
`
`
`
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