IPR2016-01404
`US. Patent No. 6,968,459
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`UNIFIED PATENTS, INC.
`Petitioner
`v.
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`INTELLECTUAL VENTURES II, LLC
`Patent Owner
`_________________________
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`U.S. Patent No. 6,968,459
`IPR2016-01404
`__________________________
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`PETITIONER’S REPLY TO PATENT OWNER’S
`OBSERVATIONS ON CROSS-EXAMINATION OF DR. PAUL FRANZON
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`US. Patent No. 6,968,459
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`UNIFIED PATENTS, INC.
`Petitioner
`v.
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`INTELLECTUAL VENTURES II, LLC
`Patent Owner
`_________________________
`
`U.S. Patent No. 6,968,459
`IPR2016-01404
`__________________________
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`PETITIONER’S REPLY TO PATENT OWNER’S
`OBSERVATIONS ON CROSS-EXAMINATION OF DR. PAUL FRANZON
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`IPR2016-01404
`US. Patent No. 6,968,459
`Patent Owner’s Observations (Paper 30) regarding the Cross-Examination of
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`Dr. Paul Franzon, filed September 18, 2017, should be dismissed because they are
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`overly argumentative, selectively cite the record to mischaracterize the record and
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`mislead the Board, and fail to identify where its arguments were previously
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`presented in the record.1 Petitioner responds to each of Patent Owner’s
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`Observations individually below.
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`I.
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`Response to Observation No. 1.
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`In Observation No. 1, Patent Owner makes false statements. For example,
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`Patent Owner’s claims that Dr. Franzon’s testimony “directly contradicts [his]
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`‘Supplemental’ Declaration” and
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`that Dr. Franzon has made “repeated
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`contradictions” are simply untrue, as explained below. The Observation should be
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`dismissed.
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`1 See Medtronic, Inc. v. NuVasive, Inc., IPR2013-00506, -00507, -00508,
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`Paper No. 37 at 2-3 (P.T.A.B., Oct. 15, 2014) (“An observation is not an
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`opportunity to raise new issues, to re-argue issues, or to pursue objections . . . In
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`considering whether a motion for observation . . . is improper, the entire motion . . .
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`may be dismissed or not considered if there is even one excessively long or
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`argumentative observation . . .”).
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`1
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`IPR2016-01404
`US. Patent No. 6,968,459
`Further, Patent Owner selectively cites and mischaracterizes the record to
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`support its false claims. For example, Patent Owner cites a portion of Dr.
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`Franzon’s deposition testimony in which he responded that “[the term password
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`string in Bensimon] is referring to either the write protection password or read-
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`write protection password.” EX-2008, 51:13-15. Patent Owner claims that this
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`portion of Dr. Franzon’s testimony “directly contradicts” his Supplemental
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`Declaration at ¶ 24. Patent Owner then cites to only the portion of the
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`Supplemental Declaration at ¶ 24 where Dr. Franzon declared that his
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`“understanding is that Bensimon does not disclose the type of ‘password string’ the
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`Password-Disable commend sends to the storage device using the disable
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`command.” Patent Owner’s fabrication is false. For example, Patent Owner fails to
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`mention that Dr. Franzon continued his explanation regarding the “password
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`string” during his second deposition and testified that: “To me [Bensimon] is not
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`saying whether [the password string is] the write protection password or read-write
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`password. To me it can be either.” EX-2008, 51:23-52:1 (emphasis added). Thus,
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`Dr. Franzon’s statement that “Bensimon does not disclose the type of password
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`string” in his Supplemental Declaration at ¶ 24 does not directly contradict his
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`second deposition testimony, in which he stated that “[Bensimon] is not saying
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`whether [the password string is] the write protection password or read-write
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`password.” EX-2008, 51:23-25. Despite claiming “repeated contradictions” in Dr.
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`2
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`IPR2016-01404
`US. Patent No. 6,968,459
`Franzon’s testimony, Patent Owner cannot cite even a single one. Therefore, Patent
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`Owner’s Observation No. 1 is improper and should be dismissed.
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`II.
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`Response to Observation No. 2
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`Patent Owner’s Observation No. 2 is improper and should be dismissed.
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`Patent Owner again makes false statements. For example, Patent Owner’s
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`assertions that Dr. Franzon “repeatedly refused to answer the question” and that he
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`has “shifting and inconsistent positions” are not true. Dr. Franzon, in fact,
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`repeatedly answered Patent Owner’s questions throughout the second deposition.
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`See, e.g,, EX-2008, 58:14-20 (“To me . . . someone of ordinary skill in the art
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`reading Bensimon, would [understand that] the host computer in Bensimon does
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`block access to the storage device.”).
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`Further, Patent Owner again selectively cites and mischaracterizes the record
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`to fit its own narrative. For example, to support its false claim that “Dr. Franzon
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`agrees that Bensimon does not explicitly disclose what happens when an error
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`condition is set,” Patent Owner cites merely the portion of Dr. Franzon’s
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`deposition transcript where he stated that “Bensimon doesn’t give further detail on
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`what happens to the error conditions set.” EX-2008, 51:9-11. Patent Owner,
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`however, fails to fully explain to the Board the context from which its selective
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`citations were pulled. Dr. Franzon had been explaining that: (1) “Bensimon does
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`explicitly disclose that write commands are not sent under the control of the
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`3
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`IPR2016-01404
`US. Patent No. 6,968,459
`computer under certain conditions,” EX-2008, 55:5-8, (2) “[the host computer of
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`Bensimon] is not sending the write command to the device if . . . the host systems
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`is password aware,” id., 55:20-22, and (3) “Bensimon does explicitly disclose that
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`the host system will block . . . off access to the storage device [when an error
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`condition is set],” id., 57:3-12. When further questioned regarding Bensimon’s
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`error condition, Dr. Franzon explained that “someone of ordinary skill in the art
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`reading Bensimon, would read that . . . the host computer in Bensimon does block
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`access to the storage device.” EX-2008, 58:14-59:4. Thus, Dr. Franzon does not, in
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`fact, agree that “Bensimon does not explicitly disclose what happens when an error
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`condition is set,” as Patent Owner would have the Board believe. Because Patent
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`Owner’s assertions are false, Observation No. 2 should be rejected.
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`Furthermore, Patent Owner’s assertion that Dr. Franzon’s second deposition
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`testimony “contradicts Dr. Franzon’s opinion at ¶ 30 of his Supplemental
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`Declaration that Bensimon teaches that ‘write commands’ are disabled when an
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`‘error condition’ is set” is also false. There is no contradiction between his
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`deposition testimony and his Supplemental Declaration. Just as Dr. Franzon
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`explained that in ¶ 30 of his Supplemental Declaration, Dr. Franzon made clear
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`again during his second deposition that Bensimon does teach that “write
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`commands” are disabled when an “error condition” is set. EX-2008, 55:5-8, 55:20-
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`22, and 57:3-12. Thus, Dr. Franzon’s testimony during his second deposition is
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`IPR2016-01404
`US. Patent No. 6,968,459
`thus consistent with the opinions in his Supplemental Declaration, and Patent
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`Owner’s assertions to the contrary are demonstrably false.
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`III.
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`Response to Observation No. 3
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`In Observation No. 3, Patent Owner again makes a number of false
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`statements. For example, Patent Owner’s contends that “Dr. Franzon repeatedly
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`refused to answer [certain questions]” during his second deposition. EX-2008,
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`19:19-25:25. This is simply false. Dr. Franzon never refused to answer any of
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`Patent Owner’s questions. Instead, when asked whether his opinions changed
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`between his Supplemental Declaration and his original Declaration, Dr. Franzon
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`explained that he would need to review his original report before he could provide
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`Patent Owner with a more complete answer beyond the already-given answer that
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`his Supplemental Declaration builds upon the opinions in his original declaration.
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`EX-2008, 20:5-6 and 15-16. Accordingly, Patent Owner’s Observation No. 3 is
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`improper and should be dismissed.
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`
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`Date: September 21, 2017
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`Respectfully submitted,
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`
` /James D. Stein/
`James D. Stein, Reg. No. 63,782
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`5
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`IPR2016-01404
`US. Patent No. 6,968,459
`CERTIFICATE OF SERVICE
`The undersigned certifies that the foregoing PETITIONER’S RESPONSE
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`TO PATENT OWNER’S OBSERVATIONS ON CROSS-EXAMINATION
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`was served on September 21, 2017, via email directed to counsel of record for the
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`Patent Owner at the following:
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`Lori A. Gordon
`Email: lgordon-PTAB@skgf. com
`Byron L. Pickard
`Email: bpickard-PTAB@skgf.com
`Steven W. Peters
`Email: speters-PTAB@skgf.com
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
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`
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`James R. Hietala
`Email: jhietala@intven.com
`Tim R. Seeley
`Email: tim@intven.com
`Intellectual Ventures
`3150 139th Avenue S.E.
`Bellevue, WA 98005
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`Dated: September 21, 2017
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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