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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
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`INTERNATIONAL BUSINESS MACHINES CORP.,
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`Petitioner
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`v.
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`INTELLECTUAL VENTURES II LLC
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`Patent Owner.
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`Case No. IPR2014-00587
`U.S. Patent 6,826,694
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`Filed: October 30, 2014
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`Filed on behalf of
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`Patent Owner Intellectual Ventures II LLC
`By: Brenton R. Babcock
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`Ted M. Cannon
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`2040 Main Street, Fourteenth Floor
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`Irvine, CA 92614
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`Tel.: (949) 760-0404
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`Fax: (949) 760-9502
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`Email:
`BoxPGL22@knobbe.com
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`LIMIT SCOPE OF CROSS-EXAMINATION OF
`DR. STEVEN M. BELLOVIN
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`
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`IPR2014-00587
`IBM v. Intellectual Ventures
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`I. THE BOARD CONSIDERED AND REJECTED IBM’S IDENTICAL
`MOTION IN A CO-PENDING IPR BETWEEN THE PARTIES
`On May 15, 2014, IBM raised the identical issue of whether to limit cross-
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`examination to the instituted grounds in a co-pending IPR between the same
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`parties, and the panel denied IBM’s motion. IBM v. Intellectual Ventures II LLC,
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`IPR2014-00180, Paper 13, at 2; Ex. 1026 at 23-24.
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`This IPR
`1. Motion to Limit Scope of Cross-
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`IPR2014-00180
`1. Motion to Limit Scope of Cross-
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`Examination
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`Examination
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`IBM seeks authorization from
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`the
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`IBM seeks authorization from
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`the
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`Board to file a motion to limit IV’s
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`Board to file a motion to limit IV’s
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`crossexamination of IBM’s declarant,
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`crossexamination of IBM’s declarant,
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`Dr. Steven M. Bellovin,
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`to
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`the
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`Dr. Çetin Kaya Koç,
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`to
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`the
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`instituted
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`ground
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`of
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`invalidity—
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`instituted grounds of
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`invalidity—
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`contained in the Board’s Decision re
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`contained in the Board’s Decision re
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`Institution of Inter Partes Review
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`Institution of Inter Partes Review
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`(Paper 13)—based on the combination
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`(Paper 10)—based on the combination
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`of Hughes and Abraham.
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`of Matsuzaki, Dworkin, Tenca, and the
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`
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`knowledge of one having ordinary skill
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`in the art.
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`- 1 -
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`IPR2014-01516
`IBM v. Intellectual Ventures
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`Alternatively, IBM requests the Board
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`Alternatively, IBM requests the Board
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`to provide guidance to the Parties on
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`to provide guidance to the Parties on
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`the
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`appropriate
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`scope of
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`cross-
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`the
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`appropriate
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`scope of
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`cross-
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`examination of Dr. Bellovin.
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`examination of Dr. Koç.
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`Status: Pending
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`At a minimum, while this previous decision is not binding, candor counsels that
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`Status: Denied
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`this panel be informed of the previous decision and its underlying rationale.
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`IBM’s motion actually cites to IPR2014-00180 for purported support, taking
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`out of context the Board’s comment that “the cross-examination in our proceedings
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`is typically limited to the grounds that we have instituted on.” Paper 22 at 3, citing
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`IPR2014-00180, Ex. 1026 at 23:15-20. But when read in context, the Panel was
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`not stating that the Board limits cross-examination beyond Rule 42.53(d)(5)(ii),
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`but rather that cross-examiners typically focus their questioning on the instituted
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`grounds. Indeed, in a well-reasoned decision, the Board denied IBM’s motion:
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`As to whether the patent owner can ask questions concerning
`grounds that are not instituted, I will caution that the cross-
`examination in our proceedings is typically limited to the grounds that
`we have instituted on. That’s all the guidance that we can provide at
`this time as to whether questions of credibility may become relevant
`based on those redundant grounds. Those need to be addressed at
`the time the question is made.
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`- 2 -
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`IPR2014-01516
`IBM v. Intellectual Ventures
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`In view, of course—the parties can, of course, deal with the
`objection and try to seek a compromise at that time. . . .
`So at this time, Motions 1 [to limit cross-examination] and 2
`are denied without prejudice, of course.
`IPR2014-00180, Ex. 1026 at 23:15-24:10 (emphasis added).
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`Thus, by ignoring the Board’s previous decision, IBM is merely trying to get
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`a second bite at the apple, seeking to create inconsistency in the Board’s precedent.
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`II. CROSS-EXAMINATION IS GENERALLY PERMITTED ON THE
`ENTIRE SCOPE OF DIRECT TESTIMONY
`By rule, cross-examination is “limited to the scope of the direct testimony.”
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`37 C.F.R. § 42.53(d)(5)(ii). No compelling reason exists here to further limit this
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`scope, and several general decisions of the Board have not done so. See Micron
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`Tech., Inc. v. Bd. of Trustees of the Univ. of Ill., IPR2013-00005, Paper 22 at 3;
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`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00128, Paper 34
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`at 5; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00266,
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`Paper 27, at 3-4 (different patent at issue than IPR2013-00128); Kyocera Corp. v.
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`Softview LLC, IPR2013-00007, Paper 18 at 4. For example, the panel in Micron
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`declined to limit cross-examination beyond the rule, explaining that portions of
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`expert testimony not related to the instituted grounds “may be relevant to the state
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`of the prior art or the credibility of the most pertinent portions of the testimony.”
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`IPR2013-00005, Paper 22 at 3. IV cited the Micron case during the October 16th
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`conference call (Ex. 1024 at 15), but IBM’s motion ignores it. Similarly, in IBS,
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`- 3 -
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`IPR2014-01516
`IBM v. Intellectual Ventures
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`the Board “decline[d] to further limit the cross-examination testimony beyond [the]
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`limitation” in the rule, although not all grounds were instituted. IPR2013-00128,
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`Paper 34 at 5. Kyocera likewise held that “Petitioner should make [declarant]
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`available for cross-examination on all direct testimony” despite instituting only on
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`some grounds. IPR2013-00007, Paper 18 at 4 (emphasis added); Paper 11 at 38.
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`IBM’s motion suggests that there are several different decisions that support
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`its position by citing to five IPRs; but these IPRs all relate to the same
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`consolidated proceeding. Paper 22 at 2-3 (citing ZTE Corp. v. Contenguard
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`Holdings, Inc., IPR2013-00136, Paper 27 at 3; IPR2013-00133, Paper 30 at 2-3;
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`IPR2013-00137, Paper 33 at 2-3; IPR2013-00138, Paper 34 at 2-3; IPR2013-
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`00139, Paper 32 at 2-3.). In particular, the parties in each of these IPRs agreed to
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`consolidate depositions. See id. This agreement to consolidate depositions,
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`presumably to avoid five days of cross-examination, was likely a factor considered
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`by the Board in further limiting the scope of cross-examination. No such
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`consolidation has been stipulated to in this proceeding. Thus, there is no reason to
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`further limit cross-examination beyond the limits of Rule 42.53(d)(5)(ii).
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`III. THE ENTIRE DECLARATION IS PART OF THE RECORD AND IS
`THEREFORE SUBJECT TO CROSS-EXAMINATION
`IBM mistakenly asserts that the declaration testimony and exhibits that IBM
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`seeks to circumscribe are not part of the record, referring to IV’s objections and
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`setting up IBM’s own straw man: “[I]f these paragraphs and exhibits are excluded,
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`- 4 -
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`IPR2014-01516
`IBM v. Intellectual Ventures
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`they are not part of the direct testimony. Because they are not part of the direct
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`testimony, IV cannot cross-examine Dr. Bellovin about them.” Paper 22 at 4
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`(emphasis added). Yet no part of the Bellovin declaration or IBM exhibits have
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`been excluded or expunged, nor has either party filed any motion to exclude. IBM
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`has not even suggested that the Bellovin Declaration should be replaced by some
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`form of a redacted declaration, or that certain exhibits should be expunged from
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`the record, in whole or in part. Indeed, IV’s routine evidentiary objections merely
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`preserve its right to potentially file a motion on Due Date 4 (April 29, 2015) to
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`exclude evidence if IBM attempts to misuse that evidence in some manner.
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`If the Board were to decide that certain portions of the Bellovin testimony
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`and certain exhibits are not part of the record in this IPR, the Board would first
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`need to identify that evidence and, presumably, expunge it. See 37 C.F.R. § 42.7.
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`However, doing so would likely prove quite challenging because it would be
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`difficult to pinpoint each and every paragraph of the declaration, and each and
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`every exhibit, that solely corresponds to the non-instituted grounds. Moreover,
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`such an order would set an incredibly burdensome precedent, making the Board
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`responsible for parsing through every declaration paragraph (149 paragraphs in this
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`case) and each exhibit to identify what evidence relates to which grounds,
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`including any paragraphs that may relate to multiple grounds.
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`Thus, IV requests that the Board not further limit Rule 42.53(d)(5)(ii).
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`- 5 -
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`IPR2014-01516
`IBM v. Intellectual Ventures
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`Dated: October 30, 2014
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`
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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`By:/Brenton R. Babcock/
`Brenton R. Babcock, Reg. No. 39,592
`Ted M. Cannon, Reg. No. 55,036
`Attorneys for Patent Owner
`Intellectual Ventures II LLC
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`- 6 -
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`IPR2014-00587
`IBM v. Intellectual Ventures
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of PATENT OWNER’S
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`
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`OPPOSITION TO PETITIONER’S MOTION TO LIMIT SCOPE OF
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`CROSS-EXAMINATION OF DR. STEVEN M. BELLOVIN is being served on
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`October 30, 2014, via electronic mail pursuant to 37 C.F.R. § 42.6(e) and with the
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`agreement of counsel for Petitioners as addressed below:
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`IBM_IPR_SERVICE@kirkland.com
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`Kenneth R. Adamo
`kenneth.adamo@kirkland.com
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`
`Eugene Goryunov
`Eugene.goryunov@kirkland.com
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
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`
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`Dated: October 30, 2014
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`19156977
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`/Brenton R. Babcock/
`Brenton R. Babcock, Reg. No. 39,592
`Ted M. Cannon, Reg. No. 55,036
`Attorneys for Patent Owner
`Intellectual Ventures II LLC
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`- 7 -
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