Trials@uspto.gov
`571-272-7822
`
`Paper No. 35
`Entered: March 2, 2016
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00369
`Case IPR2015-003731
`Patent 6,128,290
`____________
`
`Before JAMESON LEE, MATTHEW R. CLEMENTS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This order addresses issues that are the same in all cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`571-272-7822
`
`Paper No. 35
`Entered: March 2, 2016
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00369
`Case IPR2015-003731
`Patent 6,128,290
`____________
`
`Before JAMESON LEE, MATTHEW R. CLEMENTS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This order addresses issues that are the same in all cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`
`IPR2015-00369 and IPR2015-00373
`Patent 6,128,290
`
`
`On February 26, 2016, Patent Owner requested a conference call to
`seek the Board’s authorization to file three exhibits that, according to Patent
`Owner, were inadvertently not filed with Patent Owner’s Motion for
`Observation of Cross-Examination of Petitioner’s witness, Dr. Hu (Paper
`292):
`
`Declaration of the inventor, Philip P. Carvey, as provided
`1.
`in Apple Inc.’s Responsive Claim Construction Brief in DSS
`Technology Management, Inc. v. Lenovo (United States), Inc.,
`No. 6:13-cv-00919-JDL (E.D. Tex.);
`2.
`Declaration of Dr. Hu as provided in Apple Inc.’s
`Responsive Claim Construction Brief in DSS Technology
`Management, Inc. v. Lenovo (United States), Inc., No. 6:13-cv-
`00919-JDL (E.D. Tex.); and
`3.
`International Standard, ISO/IEC 3309, Fifth edition,
`1993-12-15 (reaffirmed 1999).
`Patent Owner also sought to discuss a vehicle for responding to Petitioner’s
`Response to Patent Owner’s Motion for Observation.
`On February 29, 2016, a conference call was held between counsel for
`Petitioner, counsel for Patent Owner, and Judges Lee, Clements, and
`Boudreau. We address each of Patent Owner’s requests in turn.
`
`
`
`2 Citations are to IPR2015-00369. Similar papers were filed in IPR2015-
`00373.
`
` 2
`
`
`
`
`
`
`
`
`IPR2015-00369 and IPR2015-00373
`Patent 6,128,290
`
`
`Authorization to File Documents as Exhibits
`Patent Owner contends that Dr. Hu’s cross-examination testimony is
`inconsistent with the above-identified documents and they are, therefore,
`properly part of its Motion for Observation.
`Declarations
`Petitioner stated that the Declaration of Mr. Carvey is already in the
`record as pages 36–38 of Exhibit 1007, the Declaration of Dr. Hu is already
`in the record as pages 40–56 of Exhibit 1007. Patent Owner does not
`dispute that the Declarations of Mr. Carvey and of Dr. Hu are already in the
`record at those pages of Exhibit 1007. Because both declarations are already
`in the record, we do not authorize Patent Owner to file those documents
`again as new exhibits.
`The time has passed for having Patent Owner correct its Motion for
`Observation to refer to these materials by exhibit number and page number,
`but the panel is now aware of where these documents are in the record. The
`panel understands the references in Observations #6 and #7 to Apple’s
`Responsive Claim Construction Brief in the district court litigation to refer
`to Exhibit 1007. The Board advised both parties, though, that for future
`cases, a Motion for Observation is most helpful to a panel when the cross-
`examination testimony is related to a precisely identified portion of an
`exhibit. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,769
`(August 14, 2012).
`ISO Standard
`With respect to the ISO standard, Patent Owner contends that Dr. Hu
`asked to see it during her deposition and testified that it was something she
`
` 3
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`
`IPR2015-00369 and IPR2015-00373
`Patent 6,128,290
`
`considered in her analysis. Petitioner countered that the ISO standard
`document was shown at Dr. Hu’s exhibit, but was not marked as a
`deposition exhibit. It is undisputed that Dr. Hu did not address the ISO
`standard in her direct testimony. Moreover, as Petitioner pointed out, the
`ISO standard is not cited in any of Patent Owner’s observations in its Motion
`for Observation. Patent Owner argued that the ISO standard should,
`nevertheless, be filed as an exhibit because it supports the testimony of
`Patent Owner’s expert. We do not agree. The time for filing exhibits in
`support of Patent Owner’s expert was at the time of Patent Owner’s
`Response. Under these circumstances, we do not authorize Patent Owner to
`file the ISO standard as an exhibit.
`
`
`Patent Owner’s Request to File a
`Reply to Petitioner’s Response to
`Patent Owner’s Motion for Observation
`Patent Owner sought authorization to file a Reply to Petitioner’s
`Response (Paper 31) because, according to Patent Owner, Petitioner’s
`Response was improper attorney testimony. Patent Owner identified, for
`example, the language in Petitioner’s Response to Observation No. 2 stating,
`“Dr. Hu’s testimony regarding Mr. Dezmelyk’s lack of understanding was in
`the context of point-to-multipoint systems. Dr. Hu’s testimony is therefore
`consistent.” Paper 31, 2. The panel found the identified language no more
`argumentative than the language of the Observation itself. As a result, we
`do not authorize Patent Owner to file a Reply to Petitioner’s Response to
`Patent Owner’s Motion for Observation.
`
` 4
`
`
`
`
`
`
`
`
`IPR2015-00369 and IPR2015-00373
`Patent 6,128,290
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s request to file three documents as exhibits
`is denied; and
`FURTHER ORDERED that Petitioner’s request to file a Reply to
`Petitioner’s Response to Patent Owner’s Motion for Observation is denied.
`
` 5
`
`
`
`
`
`
`
`
`IPR2015-00369 and IPR2015-00373
`Patent 6,128,290
`
`For PETITIONER:
`
`David K.S. Cornwell
`Mark W. Rygiel
`Jason A. Fitzsimmons
`Robert Green Sterne
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`davidc-PTAB@skgf.com
`mrygiel-PTAB@skgf.com
`jfitzsimmons-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`
`
`For PATENT OWNER:
`
`Andriy Lytvyn
`Anton J. Hopen
`Nicholas Pfeifer
`SMITH HOPEN, P.A.
`andriy.lytvyn@smithhopen.com
`anton.hopen@smithhopen.com
`nicholas.pfeifer@smithhopen.com
`
`
` 6
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`
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