UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.,
`Petitioners
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`v.
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`INTELLECTUAL VENTURES II LLC
`Patent Owner
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`Case IPR2016-01404
`Patent 6,968,459
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`____________________
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`PATENT OWNER’S MOTION FOR OBSERVATIONS ON CROSS-
`EXAMINATION OF DR. PAUL FRANZON
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.,
`Petitioners
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`v.
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`INTELLECTUAL VENTURES II LLC
`Patent Owner
`____________________
`
`
`Case IPR2016-01404
`Patent 6,968,459
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`____________________
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`PATENT OWNER’S MOTION FOR OBSERVATIONS ON CROSS-
`EXAMINATION OF DR. PAUL FRANZON
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
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`IPR2016-01404
`U.S. Pat. No. 6,968,459
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`Observation No. 1 ...................................................................................................... 1
`Observation No. 2 ...................................................................................................... 1
`Observation No. 3 ...................................................................................................... 2
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`- i -
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`IPR2016-01404
`U.S. Pat. No. 6,968,459
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`EXHIBIT LIST
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`Description
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`Microsoft Dictionary
`Schneier, B., Applied Cryptography, 2d. Ed., Wiley, 1996
`Franzon Deposition Transcript (May 4, 2017)
`Declaration of David M. Goldschlag, Ph.D.
`Curriculum Vitae of Dr. Goldschlag
`Definition of “specific”, Merriam Webster’s Collegiate Dictionary,
`Eleventh Edition (2008)
`Conference Call Transcript (May 4, 2017)
`Second Franzon Deposition Transcript (September 13, 2017)
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`Exhibit #
`2001
`2002
`2003
`2004
`2005
`2006
`2007
`2008
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`- ii -
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`IPR2016-01404
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`U.S. Pat. No. 6,968,459
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`Patent Owner hereby submits observations on Patent Owner’s September 13,
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`2017 cross-examination of Petitioners’ expert, Dr. Paul Franzon, regarding his
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`August 30, 2017 Supplemental Declaration (Ex. 1012) in support of Petitioners’
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`Reply dated August 30, 2017 (Paper 23). Exhibit 2008 is a transcript of that
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`deposition and is used as the basis for the observations below.
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`Observation No. 1
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`In Exhibit 2008, page 51, line 9– 11, Dr. Franzon was asked “in Column 6,
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`Line 7 through 11, when Bensimon uses the term password string, which type of
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`class of password is Bensimon referring to?” Dr. Franzon response was that “is
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`referring to either the write protection password or read-write protection
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`password” Ex. 2008, 51:13-15. This relevant because it directly contradicts Dr.
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`Franzon’s “Supplemental” Declaration at ¶ 24, where he states “my understanding
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`is that Bensimon does not disclose the type of “password string” the Password-
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`Disable command sends to the storage device using the disable command.” Dr.
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`Franzon’s repeated contradictions are highly relevant to his credibility and the
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`weight that the Board should give to Dr. Franzon’s opinions.s.
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`Observation No. 2
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`In Exhibit 2008, page 57, lines 14-58, Dr. Franzon agrees that Bensimon does not
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`explicitly disclose what happens when an error condition is set, stating “Bensimon
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`doesn't give further detail on what happens to the error conditions set.” This
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`1
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`IPR2016-01404
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`U.S. Pat. No. 6,968,459
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`testimony is relevant to Petitioner’s anticipation ground because it contradicts Dr.
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`Franzon opinion at ¶ 30 of his “Supplemental” declaration that Bensimon teaches
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`that “write commands” are disabled when an “error condition” is set. When
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`pressed at deposition, faced with the lack of explicit teaching in Bensimon that
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`“write commands” must always be disabled after an “error condition” is set, Dr.
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`Franzon repeatedly refused to answer the question. See Exhibit 2008, p. 57:14-
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`71:4. Dr. Franzon’s shifting and inconsistent positions and refusal to answer
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`questions related to those opinions is relevant to weight that the Board should
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`assign to his opinions.
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`Observation No. 3
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`In Exhibit 2008, page 19, line 19– page 25, line 25, Dr. Franzon was asked
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`repeatedly “Do you know whether or not your opinions changed between your
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`supplemental report and your original report?,” and Dr. Franzon repeatedly refused
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`to answer this question other than to say that “My supplemental report builds on
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`top of the opinions in the original report.” This testimony is relevant to Dr.
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`Franzon’s credibility as an expert witness. Dr. Franzon’s refusal to answer this
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`question indicates that he was not properly prepared to discuss his opinions during
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`the deposition, thereby depriving Patent Owner a fair opportunity to cross-examine
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`Dr. Franzon, and thus the Board should assign little weight to Dr. Franzon’s
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`opinions in his Supplemental Declaration.
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`2
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`IPR2016-01404
`U.S. Pat. No. 6,968,459
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Lori A. Gordon/
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`Lori A. Gordon (Reg. No. 50,633)
`Lead Counsel for Patent Owner
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`Date: September 18, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`3
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`IPR2016-01404
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`U.S. Pat. No. 6,968,459
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`MOTION FOR OBSERVATION ON CROSS-EXAMINATION OF DR.
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`PAUL FRANZON and Exhibit 2008 were served electronically via e-mail on
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`September 18, 2017 in their entirety on the following:
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`Lionel Lavenue (Lead Counsel)
`James D. Stein (Back-up Counsel)
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`IV459-IPR@finnegan.com
`lionel.lavenue@finnegan.com
`james.stein@finnegan.com
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`Roshan Suresh Mansinghani (Back-up Counsel)
`Jonathan Stroud (Back-up Counsel)
`UNIFIED PATENTS INC.
`roshan@unifiedpatents.com
`jonathan@unifiedpatents.com
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`/Lori A. Gordon/
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`Lori A. Gordon (Reg. No. 50,633)
`Lead Counsel for Patent Owner
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`Date: September 18, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`8265817_1.docx
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