Trials@uspto.gov Paper 19 571.272.7822 Entered: May 4, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD INTERNATIONAL BUSINESS MACHINES CORPORATION, Petitioner, v. INTELLECTUAL VENTURES I LLC, Patent Owner. Case IPR2014-01385 U.S. Patent No. 7,984,081 B1 Before JONI Y. CHANG, JENNIFER S. BISK, and BARBARA A. PARVIS, Administrative Patent Judges. PARVIS, Administrative Patent Judge. DECISION Granting Petitioner s Request to File Supplemental Evidence as Supplemental Information Granting Patent Owner s Request to Cross-Examine Third-Party Declarant 37 C.F.R. 42.51(b), 42.64(b)(2), 42.123(b) A conference call in the above proceeding was held on April 30, 2015 among respective counsel for International Business Machines Corporation ( Petitioner ) and Intellectual Ventures I LLC ( Patent Owner ) and Judges
Chang, Bisk, and Parvis. The purpose of the call was to discuss Petitioner s request to file its supplemental evidence that has been served on Patent Owner, as supplemental information under 37 C.F.R. 42.123(b). The supplemental evidence includes a Declaration of Mr. Richard Reader, Manufacturing and Distribution Senior Director at Oracle Corporation (a third party to this trial), and related exhibits containing screenshots of Oracle Corporation s computer system for software and document shipments ( Oracle Declaration ). Exs. 1038 1040. Upon further discussion, Patent Owner requested cross-examination of Mr. Reader regarding his Declaration. For the reasons stated below, Petitioner s request is granted. We also grant Patent Owner s request for cross-examination of Mr. Reader, as further limited below and, at this stage of the proceeding, only if Oracle Corporation agrees. 1. Background and the April 30, 2015 Call On February 11, 2015, we instituted the instant trial based on at least one asserted ground of unpatentability over Oracle 8i Application Developer s Guide XML, Release 3 (8.1.7) (Sept. 2000) (Exhibit 1008) ( Oracle Developer s Guide ). Paper 7, 21 22. As noted in the Decision to Institute (Paper 7, 19), the Oracle Developer s Guide includes a date of September 2000 on the first page and a copyright on the second page, as well as a part number (Part No. A86030-01) and the Oracle trademark. Ex. 1008. Based on the evidence submitted with the Petition, we determined Petitioner has made sufficient showing that Oracle Developer s Guide qualifies as a printed publication, for purposes of instituting a trial. Paper 7, 2
19. Subsequently, Patent Owner served Petitioner objections under 37 C.F.R. 42.64(b)(1), alleging Oracle Developer s Guide had not been shown to be a prior art printed publication or authenticated, and it is inadmissible hearsay. Ex. 1016, 7. Petitioner seeks to submit additional evidence demonstrating that one of the prior art references on which it is relying in the Petition is prior art. More specifically, the evidence that Petitioner seeks to submit relates to the date of first public availability of the Oracle Developer s Guide, which is one of the asserted prior art references in this proceeding. Petitioner obtained the evidence as a result of a subpoena that we previously authorized on March 27, 2015. Paper 15, 9. In particular, we authorized Petitioner, under 35 U.S.C. 24, to apply for a subpoena to compel discovery from Oracle Corporation limited in scope to the particular document request and deposition request submitted as Exhibit 1015. Id. During the call on April 30, 2015, Petitioner notified us that Oracle Corporation responded to Petitioner s subpoena by serving the Oracle Declaration. Petitioner served the Oracle Declaration (Exs. 1038-1040) on Patent Owner as supplemental evidence on April 23, 2015, prior to the due date set forth in our Order. Id. Petitioner now seeks authorization to file the Oracle Declaration (Exs. 1038-1040) as supplemental information under 37 C.F.R. 42.123(b). 1 In 1 In addition to the Declaration of Mr. Reader, and supporting documents (Exs. 1038-1040), Petitioner also seeks to submit its subpoena to Oracle Corporation (Ex. 1036), as well as its certificate of service (Ex. 1037). 3
response to our request during the call, Petitioner submitted for our consideration the evidence that Petitioner seeks authorization to file. Patent Owner opposes Petitioner s request on the basis that Patent Owner contends it is prejudiced by Petitioner serving supplemental evidence after the April 30, 2015 due date set forth in our Order. Paper 15, 9. In particular, Patent Owner contends that it needs sufficient time to formulate a strategy for responding, in its Patent Owner Response, to the full scope of the evidence. Patent Owner further opposes Petitioner s request because Patent Owner has not had an opportunity to cross-examine Mr. Reader. 2. Analysis of Petitioner s Request As the moving party, Petitioner bears the burden of providing that it is entitled to the requested relief. 37 C.F.R. 42.20(c). A party may file a motion to submit supplemental information if the request is made within one month of the date the trial was instituted and the supplemental information is relevant to a claim for which trial has been instituted. 37 C.F.R. 42.123(a). In this case, Petitioner s request is more than one month after the date that trial was instituted. Accordingly, we look to 37 C.F.R. 42.123(b), which requires a showing of why the supplemental information reasonably could not have been obtained earlier, as well as showing that consideration of the supplemental information would be in the interests-of-justice. Petitioner s request is limited to submitting supplemental information, which, in accordance with our prior Order (Paper 15, 9), has already been served on Patent Owner on April 23, 2015 as supplemental evidence to respond to Patent Owner s objection regarding the prior art status of the Oracle Developer s Guide. As indicated in our prior Order, we already 4
determined that Petitioner has shown sufficiently why the information is relevant and could not be obtained without the subpoena. Paper 15, 4 5. We, therefore, determine that Petitioner has shown sufficiently that the evidence is relevant and reasonably could not have been obtained earlier. Because Petitioner s evidence responds to an objection by Patent Owner regarding the public availability of a prior art reference, we further determine that Petitioner has shown sufficiently that submitting this evidence is in the interests-of-justice. We are not persuaded by Patent Owner s contention that it is prejudiced by filing this supplemental evidence after April 30, 2015. First, we note that Petitioner filed the evidence for our consideration on April 30, 2015. Additionally, as discussed in the Decision to Institute (Paper 7, 19), if, upon receiving the supplemental evidence, Patent Owner is still of the opinion that the Oracle Developer s Guide is inadmissible, Patent Owner may file a motion to exclude the Oracle Developer s Guide. See 37 C.F.R. 42.64(c). According to the Scheduling Order ( Sched. Order, Paper 17) in this proceeding, the due date for a Motion to exclude evidence is October 2, 2015. Furthermore, Petitioner previously agreed to an extension of the date for the Patent Owner response, which is now due June 11, 2015. Paper 15, 9. We also are not persuaded by Patent Owner s contention that the information cannot be submitted because Patent Owner has not conducted a cross-examination of the declarant, Mr. Reader. Our Order permitted Patent Owner to attend Petitioner s deposition and cross-examine the witness. Paper 15, 9. Petitioner, however, did not conduct an oral examination, but 5
instead accepted a written declaration. We further note that Patent Owner has not requested authorization to file a motion to compel discovery and Petitioner is satisfied with the discovery it received from Oracle Corporation. We, therefore, are not persuaded by Patent Owner s contention. 3. Analysis of Patent Owner s Request We treat Patent Owner s contention as a request to cross-examine Mr. Reader. We grant Patent Owner s request, but only regarding the subject matter of his direct testimony, which in this case appears to be extremely narrow (see Ex. 1038 (three page declaration of Mr. Reader)). Additionally, at this stage, we are providing an opportunity for Patent Owner to crossexamine Mr. Reader, but only if Oracle Corporation agrees. Patent Owner should ascertain whether Oracle Corporation agrees to Patent Owner s crossexamination of Mr. Reader within five business days of this Decision. If Oracle Corporation does not agree to Patent Owner s crossexamination, Patent Owner is given ten business days from the date of this Decision to file its motion for authorization to compel discovery pursuant to 37 C.F.R. 42.52(a). Petitioner is given four business days from the date of Patent Owner s motion to file an opposition. No reply is authorized at this time. Both papers are limited to seven pages. We encourage Patent Owner to place as little burden on Oracle Corporation as possible. We note that Mr. Reader s declaration is threepages in length with two one-page exhibits. See Exs. 1038 1040. We, therefore, urge Patent Owner to request a cross-examination of Mr. Reader that is limited to one-hour and is arranged in a manner other than an in- 6
person deposition. We note that consistent with the Federal Rules of Civil Procedure and Federal Rules of Evidence, parties may obtain discovery in various ways, including deposition by remote means such as taking a deposition by telephone. See Fed. R. Civ. Pro. 30(b)(4); see also Fed. R. Civ. Pro. 31 (Depositions by Written Questions). Patent Owner should attach to its motion an exhibit with the narrow request that Patent Owner proposes be attached to its subpoena, including written questions if Patent Owner determines that it would like to pursue this alternative instead of an oral cross-examination of Mr. Reader. We caution Patent Owner that a request that is not tailored narrowly will not be granted, in part because thus far Patent Owner has not provided persuasive evidence showing a reason to doubt the date on the Oracle Developer s Guide. Our intent is to allow Patent Owner an opportunity to request the crossexamination of Mr. Reader on his Declaration. We will not grant a request that could lead to an unnecessary fishing expedition. In addition to the guidance above, Patent Owner also should consider the factors discussed in our Order of March 4, 2015 authorizing Petitioner to file a motion for authorization to compel testimony. See generally Paper 10. In the event that Patent Owner submits an overly broad request that we deny, we will consider Mr. Reader s Declaration and supporting evidence without crossexamination. 4. Conclusion For the foregoing reasons, we determine that Petitioner has satisfied its burden and is authorized to file the Oracle Declaration (Exs. 1038-1040) as supplemental information under 37 C.F.R. 42.123(b). We also permit 7
Petitioner to submit the subpoena and certificate of service. Because Petitioner has already submitted this evidence for our consideration as Exhibits 1036 through 1040, Petitioner need not resubmit this evidence. Exhibits 1036 through 1040 hereby are part of the record in the proceeding. We, additionally, grant Patent Owner s request to cross-examine Mr. Reader, but only regarding the subject matter of his direct testimony and only if Oracle Corporation agrees. Patent Owner should ascertain whether Oracle Corporation agrees to Patent Owner s cross-examination of Mr. Reader within five business days of this Decision. If Oracle Corporation does not agree to Patent Owner s crossexamination, Patent Owner is given ten business days from the date of this Decision to file its motion for authorization to compel discovery pursuant to 37 C.F.R. 42.52(a). Petitioner is given four business days from the date of Patent Owner s motion to file an opposition. No reply is authorized at this time. Both papers are limited to seven pages. ORDER For the reasons given, it is ORDERED that Petitioner is authorized under 37 C.F.R. 42.123(b) to file supplemental information Exhibits 1036 through 1040, previously submitted for our consideration, and Exhibits 1036 through 1040 are considered to be in the record as supplemental information in this proceeding without any further action by Petitioner; FURTHER ORDERED that Patent Owner should ascertain if Oracle Corporation agrees to Patent Owner s cross-examination of Mr. Reader, 8
limited to subject matter of his direct testimony within five business days of this Decision; and FURTHER ORDERED that if Oracle Corporation does not agree to Patent Owner s cross-examination, Patent Owner is given ten business days from the date of this Decision to file its motion for authorization to compel Mr. Reader s testimony pursuant to 37 C.F.R. 42.52(a), Petitioner is given four business days from the date of Patent Owner s motion to file an opposition, no reply is authorized, and both papers are limited to seven pages. 9
For PETITIONER: Kenneth R. Adamo Eugene Goryunov KIRKLAND & ELLIS LLP kenneth.adamo@kirkland.com eugene.goryunov@kirkland.com For PATENT OWNER: Brenton R. Babcock Ted M. Cannon KNOBBE, MARTENS, OLSON & BEAR, LLP 2brb@knobbe.com 2tmc@knobbe.com Don Coulman Tim R Seeley INTELLECTUAL VENTURES dcoulman@intven.com tims@intven.com 10