Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 66
`Date Entered: July 26, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`
`Bradium Technologies, LLC
`Patent Owner.
`____________
`
`Case IPR2016-00449
`Patent 8,924,506 B2
`____________
`
`
`
`BRYAN F. MOORE, BRIAN J. McNAMARA, and MINN CHUNG,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION ON PATENT OWNER’S MOTION TO EXCLUDE
`37 C.F.R. § 42.64
`
`
`
`571-272-7822
`
`
`
`
`Paper 66
`Date Entered: July 26, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`
`Bradium Technologies, LLC
`Patent Owner.
`____________
`
`Case IPR2016-00449
`Patent 8,924,506 B2
`____________
`
`
`
`BRYAN F. MOORE, BRIAN J. McNAMARA, and MINN CHUNG,
`Administrative Patent Judges.
`
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION ON PATENT OWNER’S MOTION TO EXCLUDE
`37 C.F.R. § 42.64
`
`
`
`
`IPR2016-00449
`Patent 8,924,506 B2
`
`
`On March 24, 2017 Patent Owner filed a Motion to Exclude. Paper 44 (“PO
`Mot. to Exclude”). On March 31, 2017 Petitioner filed an Opposition to Patent
`Owner’s Motion to Exclude. Paper 46 (“Pet. Opp. to PO Mot. To Exclude”). On
`April 7, 2017, Patent Owner filed a public version and a confidential version of its
`Reply (Papers 55 and 56, respectively).
` In its Motion, Patent Owner moved to exclude the following evidence:
`Exhibit 1015 (a Linked In profile of inventor Isaac Levanon), Exhibit 1017
`(Declaration of co-inventor Yonatan Lavi (“Lavi Decl.”)), Exhibit 1020 (Fujitisu
`Stylistic Technical Reference Guide), Exhibit 1022 (NGA Office of GEOINT
`Sciences “The Universal Grid System”), Exhibit 1023 (Wayback Machine
`FXT1:3dx Texture Compression), Exhibit 1027 (Bing Maps Preview), Exhibit
`1028 (System Requirements Windows 8.1), Exhibit 1029 (Compaq home and
`office computing), Exhibit 1030 (Microsoft TerraServer: A Spatial Data
`Warehouse), Exhibit 1031 (Intel Atom Microprocessor Quick Reference Guide),
`and redirect testimony of Dr. William R. Michalson in Exhibit 2078 (Deposition
`Transcript of Dr. Michalson (“Michalson Tr.”)).
`Patent Owner’s Motion to Exclude is moot as to all objected-to Exhibits
`other than Exhibit 1017, as our Final Written Decision does not reference any of
`the Exhibits that are the subject of Patent Owner’s Motion to Exclude.
`Patent Owner moves to exclude Exhibit 1017, the Declaration of co-inventor
`Yonatan Lavi because Petitioner did not make Mr. Lavi available for cross-
`examination. PO Mot. to Exclude 2–7. Patent Owner states that on February 9,
`2017 shortly after receiving the Petitioner Reply on Feb. 6, 2017, Patent Owner
`requested Petitioner produce Mr. Lavi in the United States for deposition on March
`2, 2017. Id. at 2–3. Patent Owner states that it corresponded with Petitioner on
`February 13, 2017 and on February 14, 2017, served Notice of Deposition to occur
`
`
`
`2
`
`
`
`IPR2016-00449
`Patent 8,924,506 B2
`
`on March 2, 2017 at the offices of Patent Owner’s counsel. Id. at 3. Patent Owner
`states that on February 28, 2017 Petitioner notified Patent Owner that it would
`need to request the Board to submit a Letter of Request to the Israel Central
`Authority under the Hague Convention, a process that would extend the deposition
`past the hearing date of this proceeding. Id. Mr. Lavi did not appear for
`deposition.
`Petitioner responds that in related district court litigation, Patent Owner did
`not identify Mr. Lavi as a person with knowledge of facts relevant to the case in its
`initial disclosures under F .R. Civ. P. 26. Pet. Opp. to PO Mot. to Exclude 1–2.
`Petitioner also states that Patent Owner informed the district court judge that it has
`no relationship with Mr. Lavi, so Petitioner located co-inventor Lavi in Israel and
`obtained the declaration that is now the subject of Patent Owner’s Motion to
`Exclude. Id. at 2. Petitioner states that after it filed and served Mr. Lavi’s
`declaration, Patent Owner threatened retaliation against Mr. Lavi for breaching
`undisclosed confidential obligations to 3DVU (a company Mr. Levanon
`purportedly set up to exploit the technology), despite the fact that 3DVU has not
`existed for a number of years. As a result, Mr. Lavi ceased cooperating with
`Petitioner, resulting in the need to invoke Hague Convention provisions. Id. at 3.
`The circumstances in this case are far from clear. Mr. Lavi is a co-inventor.
`We are troubled by the allegation that Patent Owner informed the district court it
`has no relationship with Mr. Lavi, but that Patent Owner now asserts a
`confidentiality relationship exists. We cannot determine whether Mr. Lavi is under
`any obligation of confidentiality, the duration of any such obligation, to whom any
`such duty is owed, and the scope of that obligation, if any such obligation exists.
`
`
`
`3
`
`
`
`IPR2016-00449
`Patent 8,924,506 B2
`
`
`Nevertheless, we are able to reach a final decision on the relevant issues in
`this case based on other evidence. Thus, in view of Petitioner’s inability to make
`Mr. Lavi available for cross examination, we exclude Exhibit 1017.
`Patent Owner also moves that we exclude portions of Exhibit 1016, Reply
`Declaration of Dr. William R. Michalson (“Michalson Reply Decl.”) that reference
`the Lavi Declaration. We do not rely on Dr. Michalson’s testimony concerning
`Mr. Lavi’s declaration and find Patent Owner’s motion with respect to Exhibit
`1016 to be moot.
`
`ORDER
`In consideration of the above it is
`ORDERED that Patent Owner’s Motion to Exclude Exhibit 2017 is
`GRANTED; and
`FURTHER ORDERED that the remainder of Patent Owner’s Motion to
`Exclude is DISMISSED as moot.
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2016-00449
`Patent 8,924,506 B2
`
`
`PETITIONER:
`Chun M. Ng
`Patrick J. McKeever
`Matthew C. Bernstein
`Vinay Sathe
`Evan S. Day
`PERKINS COIE LLP
`CNg@perkinscoie.comBing
`PMcKeever@perkinscoie.com
`MBernstein@perkinscoie.com
`VSathe@perkinscoie.com
`EDay@perkinscoie.com
`
`PATENT OWNER:
`
`Chris Coulson
`Clifford Ulrich
`ANDREWS KURTH KENYON LLP
`ccoulson@kenyon.com
`culrich@kenyon.com
`
`
`
`
`
`5
`
`
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