UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
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`v.
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`SMARTFLASH LLC,
`Patent Owner
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`CBM2014-00190
`U.S. Patent 7,334,720
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
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`v.
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`SMARTFLASH LLC,
`Patent Owner
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`CBM2014-00190
`U.S. Patent 7,334,720
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`TABLE OF CONTENTS
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`Case CBM2014-00190
`Attorney Docket No: 39843-0003CP1
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`INTRODUCTION ........................................................................................... 1
`I.
`Legal Standard ................................................................................................. 1
`II.
`III. Argument ......................................................................................................... 3
`A. Dr. Bloom’s Testimony, as being solicited in Exhibit 2056 at 179:1-20
`and Exhibit 2057 at 193:17-194:8 and 195:5-16, is Irrelevant ...................... 4
`B. Dr. Bloom’s Testimony, as being solicited in Exhibit 2057 at 193:17-
`194:8 and 195:5-16, Lacks Proper Foundation .............................................. 6
`C. Dr. Bloom’s Testimony, as being solicited in Exhibit 2056 at 179:1-20,
`and Exhibit 2057 at 193:17-194:8 and 195:5-16, is outside the Scope.......... 7
`IV. CONCLUSION ................................................................................................ 8
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`i
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`Case CBM2014-00190
`Attorney Docket No: 39843-0003CP1
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.64 and the Federal Rules of Evidence,
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`SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG ELECTRONICS
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`CO., LTD. (“Samsung”), moves to exclude portions of Exhibit 2056 and Exhibit
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`2057 (Deposition Transcripts of Dr. Jeffrey Bloom) as submitted by Patent Owner,
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`SMARTFLASH LLC (“Smartflash”) in connection with Patent Owner’s Response
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`in CBM2014-00190.
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`Smartflash failed to produce its own expert witness in this proceeding.
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`Instead, Smartflash deposed Samsung’s expert witness, Dr. Bloom. During the
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`deposition, Smartflash attempted to solicit testimony that would be inadmissible on
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`three grounds. First, Smartflash sought testimony from Dr. Bloom that is
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`irrelevant to the determination of patent claim validity, as mandated to the Board
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`by the Congress. Second, Smartflash failed to provide sufficient factual foundation
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`for the testimony being solicited. Third, Smartflash sought to solicit testimony
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`outside the scope as warranted by Samsung’s direct examination of Dr. Bloom.
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`This solicited testimony should be excluded from this proceeding as inadmissible
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`under the Federal Rules of Evidence.
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`II. Legal Standard
`The admissibility of expert testimony in IPRs and CBMs is governed by the
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`Federal Rules of Evidence. See 37 C.F.R. § 42.62 (“[T]he Federal Rules of
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`1
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`Case CBM2014-00190
`Attorney Docket No: 39843-0003CP1
`Evidence shall apply to [an IPR or CBM] proceeding.”). According to Rule 402,
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`“[i]rrelevant evidence is not admissible.” Evidence is only relevant if it has a
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`“tendency to make a fact more or less probable than it would be without the
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`evidence” and “the fact is of consequence in determining the action.” Rule 401.
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`According to Rule 702, an expert witness must be “qualified as an expert by
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`knowledge, skill, experience, training, or education,” and the testimony must “help
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`the trier of fact to understand the evidence or to determine a fact in issue.” In
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`addition, Rule 702 requires that the expert’s testimony be “based on sufficient facts
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`or data” and “the product of reliable principles and methods”; and the expert must
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`“reliably appl[y] the principles and methods to the facts of the case.” Id.
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`In Daubert, the Supreme Court held that scientific expert testimony is
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`admissible only if it is both relevant and reliable. See Daubert v. Merrell Dow
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`Pharms., Inc., 509 U.S. 579, 597 (1993); see also Kumho Tire Co. v. Carmichael,
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`526 U.S. 137, 141 (1999) (stating that in Daubert “this Court focused upon the
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`admissibility of scientific expert testimony. It pointed out that such testimony is
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`admissible only if it is both relevant and reliable.”). In Kumho, the Supreme Court
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`extended its holding in Daubert to apply “not only to testimony based on
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`‘scientific’ knowledge, but also to testimony based on ‘technical’ and ‘other
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`specialized’ knowledge.” 526 U.S. at 141.
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`2
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`Case CBM2014-00190
`Attorney Docket No: 39843-0003CP1
`In determining whether an expert’s testimony is admissible, the Board must
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`make the following determinations: (1) the expert is qualified to provide the
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`testimony; (2) the expert’s testimony is relevant; and (3) the expert’s testimony is
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`based on sufficient facts or data and is reliable. If any of these requirements is not
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`met, the expert’s proposed evidence and opinions should be excluded under Rule
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`702, Rule 402, and the Supreme Court’s holdings in Daubert and Kumho.
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`Further, under Rule 611(b), the scope of cross-examination “should be
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`limited to the subject matter of the direct examination and matters affecting the
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`credibility of the witness.” If the expert’s testimony solicited in cross-examination
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`is outside the subject matter of the direct examination and does not have bearing on
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`the expert’s credibility, it should be excluded under Rule 611(b).
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`III. Argument
`Samsung objected to portions of Exhibits 2056 and 2057 in its Notice of
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`Objections served on June 8, 2015 as well as during the deposition on May 20,
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`2015. Smartflash relied on Exhibits 2056 and 2057 in its Response to Petition
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`(Papers 20 and 21), filed on June 1, 20151. For reasons detailed below, the
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`1Smartflash also relied on portions of Exhibit 2057 to which Samsung objected in
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`its Notice of Objections served on June 8, 2015 as well as during the deposition on
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`May 20, 2015. The Board ordered such portions of Exhibit 2057 under seal. See
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`Paper 27.
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`3
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`Case CBM2014-00190
`Attorney Docket No: 39843-0003CP1
`objected-to portions of Exhibits 2056 and 2057 should be excluded from this
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`proceeding as inadmissible under the Federal Rules of Evidence.
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`A. Dr. Bloom’s Cross-Examination Testimony Recorded in Exhibit
`2056 at 179:1-20 and in Exhibit 2057 at 193:17-194:8 and 195:5-
`16, Should be Excluded as Irrelevant
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`During cross-examination, Smartflash solicited testimony that is irrelevant to
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`the salient issue of patent validity and that does not have legitimate bearing on the
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`question of Dr. Bloom’s credibility. Such testimony should be excluded under
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`Rules 401 & 402.
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`In Exhibit 2056 at 179:1-20, Smartflash solicited testimony from Dr. Bloom
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`directed to whether a third-party company unrelated to the instant proceeding “has
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`a product that enables paid for and/or licensed content to be stored locally and
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`played back later in a disconnected fashion.” See Exhibit 2056 at 179:1-20 (cited
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`by Patent Owner’s Response at 5-6). However, any insinuation of infringement2
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`by a third-party company unrelated to the instant CBM proceeding is of no
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`consequence to the validity of the patent claims at issue.
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`2To the extent that Patent Owner requested discovery into alleged evidence of non-
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`infringement and existence of non-infringing alternatives, the Board refused to
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`authorize Patent Owner to file such motions to compel discovery. See generally,
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`Patent Owner List of Proposed Motions, Paper 12; Order-Conduct of the
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`Proceedings, Paper 13.
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`4
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`Case CBM2014-00190
`Attorney Docket No: 39843-0003CP1
`Citing Exhibit 2057, 193:17-194:8; 195:5-16, Smartflash asserted that
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`“similarity between his employer’s products and the claims of the patent would
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`provide Dr. Bloom with a bias against the claims.” Patent Owner’s Response at 6.
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`This argument is unsustainable, as it is unproven and illogical.
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`Substantively, while SiriusXM is Dr. Bloom’s employer, there is no
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`evidence that Dr. Bloom perceived similarities between his employer’s products
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`and the claims of the patent prior to his deposition. That is, whether alleged
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`similarities existed or not, an allegation of bias would require a showing that Dr.
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`Bloom did indeed perceive such similarities when rendering the opinions offered in
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`the instant case. Smartflash had the opportunity to question Dr. Bloom on this
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`point during his deposition, yet the record is without such evidence.
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`Logically, this argument is equally flawed. Without more, Smartflash seeks
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`to establish bias based on mere affiliation of an expert with an operating company.
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`Surely, for an expert to have bias, it is necessary for the expert to have knowledge
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`of the facts giving rise to the same. Mere employment is not enough, nor is
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`knowledge of the products offered by one’s employer. It is instead necessary to
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`perceive infringement for bias to exist, and for such perception to exist at the time
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`of an opinion’s rendering. On a record that is without a showing of either, this
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`argument is logically flawed.
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`5
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`Case CBM2014-00190
`Attorney Docket No: 39843-0003CP1
`Because Smartflash solicited a variety of opinions from Dr. Bloom that do
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`not tend to make any fact of consequence in this CBM proceeding, such testimony
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`should be excluded. See Rules 401 & 402.
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`B. Dr. Bloom’s Cross-Examination Testimony Recorded in Exhibit
`2057 at 193:17-194:8 and 195:5-16, Should be Excluded as
`Lacking Proper Foundation
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`During cross-examination, Smartflash solicited testimony from Dr. Bloom
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`lacking proper factual support; such testimony should be excluded under Rules 702
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`and 701.
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`In Exhibit 2057, at 193:17-194:8 and 195:5-16, Smartflash attempted to
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`solicit testimonies from Dr. Bloom as to whether “the SiriusXM Internet Radio
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`product that allows off-line playback [is] a subscription-based product.”
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`Smartflash further asserted that “when Dr. Bloom was questioned about the
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`SiriusXM Internet Radio product and how it uses conditions, Dr. Bloom refused to
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`testify about its operation alleging the information was confidential.” Patent
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`Owner’s Response at 6. Yet, Dr. Bloom has not been advanced as an expert with
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`regard to subscription-based business practice of a third-party company3. Treating
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`the content of this portion as lay witness opinion is equally improper because no
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`3See e.g., Bloom Declaration (Petitioner’s Exhibit 1003) ¶5, Dr. Bloom is
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`“currently Director of System Engineering and Software Development for
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`Conditional Access and Identity Management Systems for SiriusXM radio.”
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`6
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`Case CBM2014-00190
`Attorney Docket No: 39843-0003CP1
`foundation has been laid with regard to Dr. Bloom’s personal knowledge of such
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`subscription-based business practice.
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`Because Smartflash sought to have Dr. Bloom opine on matters without
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`laying proper factual support, such testimony should thus be excluded under Rules
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`702 and 701.
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`C. Dr. Bloom’s Cross-Examination Testimony Recorded in Exhibit
`2056 at 179:1-20 and in Exhibit 2057 at 193:17-194:8 and 195:5-
`16, Should be Excluded as Outside the Scope
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`During cross-examination, Smartflash solicited testimony from Dr. Bloom
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`that is outside the scope of the direct examination, and Smartflash failed to
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`demonstrate the testimony relates to matters affecting the credibility of Dr. Bloom.
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`Such testimony is improper under Rule 611(b).
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`In Exhibit 2056 at 179:1-20, and in Exhibit 2057 at 193:17-194:8 and 195:5-
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`16, Smartflash attempted to have Dr. Bloom testify as to whether a third-party
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`company unrelated to the instant proceeding “has a product that enables paid for
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`and/or licensed content to be stored locally and played back later in a disconnected
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`fashion.” See Exhibit 2056 at 179:1-20, and Exhibit 2057 at 193:17-194:8 and
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`195:5-16 (cited by Patent Owner’s Response at 5-6). Smartflash further asserted
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`that “similarity between his employer’s products and the claims of the patent
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`would provide Dr. Bloom with a motivation to be biased against the claims being
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`found to be statutory subject matter under 35 U.S.C. § 101.” Patent Owner’s
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`7
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`Case CBM2014-00190
`Attorney Docket No: 39843-0003CP1
`Response at 6. However, Samsung, during its direct examination of Dr. Bloom,
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`never opened to door to such questions. To the extent that Smartflash asserted that
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`a third-party company unrelated to the instant CBM proceeding may have an
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`infringing product, such an insinuation of infringement, even if true,4 would only
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`suggest that the third-party company possibly has “a motivation to be biased.” Id.
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`Smartflash has not demonstrated that such a possible motivation of the third-party
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`company should be imputed to Dr. Bloom. Therefore, Dr. Bloom’s testimony, as
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`sought by Smartflash, does not relate to matters that affect the credibility—
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`including any motivation to be biased—of Dr. Bloom.
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`Because Smartflash solicited testimony from Dr. Bloom is both outside the
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`scope of the direct examination, and has no legitimate bearing on the issue of Dr.
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`Bloom’s credibility, such testimony should be excluded. See Rule 611(b).
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner requests that the evidence discussed
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`above be excluded.
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`4 To the extent that Patent Owner requested discovery into alleged evidence of
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`non-infringement and existence of non-infringing alternatives, the Board refused to
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`authorize Patent Owner to file such motions to compel discovery. See generally,
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`Patent Owner List of Proposed Motions, Paper 12; Order-Conduct of the
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`Proceedings, Paper 13.
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`8
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`Case CBM2014-00190
`Attorney Docket No: 39843-0003CP1
`Respectfully submitted,
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`/Thomas A. Rozylowicz/
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`Thomas A. Rozylowicz
`Reg. No. 50,620
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`9
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` 9/21/2015
`Date:
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on September 21, 2015, a complete and entire copy of this Petitioner’s Motion
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`to Exlcude was provided via email to the Patent Owner by serving the
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`correspondence email addresses of record as follows:
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`Michael R. Casey
`J. Scott Davidson
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
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`Email: mcasey@dbjg.com
`jsd@dbjg.com
` docket@dbjg.com
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`/Jessica K. Detko/
`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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