UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`SAMSUNG ELECTRONICS LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2014-001901
`
`Patent 7,334,720 B2
`
`____________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`1 CBM2015-00118 has been consolidated with this proceeding.
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`SAMSUNG ELECTRONICS LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2014-001901
`
`Patent 7,334,720 B2
`
`____________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`1 CBM2015-00118 has been consolidated with this proceeding.
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`The Subject Deposition Excerpts Have Proper Foundation.................. 1
`B.
`The Subject Deposition Excerpts Are Within the Scope of Proper
`Cross Examination ................................................................................ 4
`The Subject Deposition Excerpts Are Relevant .................................... 5
`C.
`III. CONCLUSION ................................................................................................ 7
`
`
`i
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`
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`
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`I.
`
`INTRODUCTION
`
`Patent Owner, Smartflash LLC (“Smartflash”) hereby opposes Petitioner’s
`
`Motion to Exclude Evidence (“Petitioner’s Motion”) (Papers 37/38). Petitioner
`
`moved to exclude three portions of its own expert’s deposition testimony that
`
`Patent Owner relied on in Patent Owner’s Response (Papers 22/23). The subject
`
`portions of Dr. Jeffrey Bloom’s deposition transcript, Exhibits 2056 and 2057,
`
`have a proper foundation, are within the scope of proper cross examination, and are
`
`relevant. The deposition excerpts thus are admissible. Petitioner’s Motion should
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`be denied.
`
`II. ARGUMENT
`Pursuant to 37 C.F.R. § 42.64(c), the Federal Rules of Evidence (“FRE”)
`
`apply in Covered Business Method Review proceedings.
`
`A. The Subject Deposition Excerpts Have Proper Foundation
`Petitioner’s Motion seeks to exclude Exhibit 2057 at 193:17-194:8 and
`
`195:5-16 for lacking proper foundation. Petitioner argues (i) that “Dr. Bloom has
`
`not been advanced as an expert with regard to subscription-based business practice
`
`of a third-party company” (Petitioner’s Motion at 6); and (ii) that Dr. Bloom’s
`
`testimony “should be excluded under Rules 702 and 701” “[b]ecause Smartflash
`
`sought to have Dr. Bloom opine on matters without laying proper factual support”
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`(id. at 7). Petitioner’s arguments lack merit for reasons set forth below.
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`
`
`1
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`
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`Petitioner’s Motion would have the Board ignore the issue of bias by
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`Petitioner’s expert, Dr. Bloom. In doing so, Petitioner wants it both ways –
`
`claiming that Dr. Bloom’s position at SiriusXM and purported expertise in
`
`conditional access is relevant to analyzing the claims at issue, while
`
`simultaneously shrouding any potential bias that arises from the fact that a
`
`SiriusXM product might read on the Smartflash patent claims with confidentiality
`
`objections and a motion to exclude Dr. Bloom’s testimony on the subject. More
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`specifically, Petitioner relies on Dr. Bloom’s qualifications as “Director of System
`
`Engineering and Software Development for Conditional Access and Identity
`
`Management Systems for SiriusXM radio,” and the fact that Dr. Bloom
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`“manage[s] systems that employ many of the industry standard techniques for
`
`calculating one-way hash functions, encrypting content with both symmetric and
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`asymmetric encryption, key management, key generation, zero-knowledge proof,
`
`authentication via digital signature, and other industry standard security
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`techniques” and “lead[s] a team of systems engineers, requirement analysts, and
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`software developers responsible for all conditional access (CA) security systems.”
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`Bloom Declaration, Exhibit 1003 at ¶ 5. Because on cross examination Smartflash
`
`sought to show how SiriusXM, and thus Dr. Bloom, could have an interest in
`
`invalidating the Smartflash patent claims if a SiriusXM product read on the claims,
`
`Petitioner now says “Dr. Bloom has not been advanced as an expert with regard to
`
`
`
`2
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`
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`
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`subscription-based business practice of a third-party company.” Petitioner’s
`
`Motion at 6. Of course Dr. Bloom “has not been advanced as an expert with
`
`regard to subscription-based business practice of a third-party company,” and
`
`Smartflash has never claimed otherwise. The fact is, however, that Dr. Bloom is
`
`currently employed by such “third-party company” and its “subscription-based
`
`business practices” are both within Dr. Bloom’s job responsibilities and relevant to
`
`the patent claims.
`
`All of the factual foundation necessary for Smartflash’s cross examination
`
`inquiry into Dr. Bloom’s knowledge of SiriusXM products is set forth in his direct
`
`testimony in his declaration, Exhibit 1003 ¶ 5. Dr. Bloom is a current SiriusXM
`
`employee. He is the “Director of System Engineering and Software Development
`
`for Conditional Access and Identity Management Systems” and “lead[s] a team of
`
`systems engineers, requirement analysts, and software developers responsible for
`
`all conditional access security systems.” Exhibit 1003 at ¶ 5. Inquiry into how
`
`SiriusXM products handle conditional access has a proper foundation. Smartflash
`
`is entitled to have the Board consider Dr. Bloom’s responses to the inquiry and
`
`how any similarity between Dr. Bloom’s employer’s products and the claims of the
`
`patent would provide Dr. Bloom with a motivation to be biased against the claims
`
`being found to be statutory subject matter under 35 U.S.C. § 101.
`
`
`
`3
`
`
`
`
`
`B. The Subject Deposition Excerpts Are Within the Scope of Proper Cross
`Examination
`
`Petitioner argues that the testimony of its expert Dr. Bloom “is outside the
`
`scope of the direct examination, and Smartflash failed to demonstrate the
`
`testimony relates to matters affecting the credibility of Dr. Bloom. Such testimony
`
`is improper under Rule 611(b).” Petitioner’s Motion at 7. Because Patent Owner
`
`did, in fact, demonstrate how the testimony affects Dr. Bloom’s credibility,
`
`Petitioner’s argument is without merit and the testimony is admissible.
`
`The parties do not dispute that FRE 611(b) controls. See, Petitioner’s
`
`Motion at 7. FRE 611(b) provides:
`
`(b) Scope of Cross-Examination. Cross-examination
`
`should not go beyond the subject matter of the direct
`
`examination and matters affecting the witness’s
`
`credibility. The court may allow inquiry into additional
`
`matters as if on direct examination.
`
`FRE 611(b)(emphasis added). Here, cross examination of Dr. Bloom on the topic
`
`of his employer’s, SiriusXM’s, products and the potential that such products read
`
`on the Smartflash patents, is clearly a “matter affecting the witness’s credibility.”
`
`Patent Owner demonstrated as much when it noted that “similarity between his
`
`employer’s products and the claims of the patent would provide Dr. Bloom with a
`
`
`
`4
`
`
`
`
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`motivation to be biased against the claims being found to be statutory subject
`
`matter under 35 U.S.C. § 101.” Patent Owner’s Response, Papers 22/23, at 6.
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`Given that the subject testimony relates to Dr. Bloom’s bias, the testimony is
`
`on a “matter[] affecting the witness’s credibility” and thus within the proper scope
`
`of cross examination. FRE 611(b).
`
`
`C. The Subject Deposition Excerpts Are Relevant
`Petitioner argues that the three deposition portions it seeks to exclude are
`
`“irrelevant to the salient issue of patent validity,” “do[] not have legitimate bearing
`
`on the question of Dr. Bloom’s credibility,” and thus “should be excluded under
`
`Rules 401 & 402.” Petitioner’s Motion at 4. Petitioner’s argument is without
`
`merit, because the testimony bears on the thoroughness of Dr. Bloom’s work in
`
`rendering his patent validity opinions, as well as on Dr. Bloom’s credibility.
`
`Patent Owner’s inquiry into whether Dr. Bloom considered whether his
`
`employer SiriusXM’s products would read on the Smartflash patent claims reflects
`
`on the depth of Dr. Bloom’s investigation and patentability opinion. Petitioner’s
`
`assertion to the contrary notwithstanding, the subject testimony is not simply
`
`“directed to whether a third-party company unrelated to the instant proceeding ‘has
`
`a product that enables paid for and/or licensed content to be stored locally and
`
`played back later in a disconnected fashion.’” Petitioner’s Motion at 4. The
`
`
`
`5
`
`
`
`
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`testimony relates to the expert witness’s employer, where he is “the Director of
`
`System Engineering and Software Development for Conditional Access and
`
`Identity Management Systems and leads a team of systems engineers, requirement
`
`analysts, and software developers responsible for all conditional access security
`
`systems.” Exhibit 1003 at ¶ 5 (emphasis added). It is unfathomable that a person
`
`in such a position would not consider whether any of his company’s own products
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`read on the patent claims he is evaluating. If he did not consider that issue, how
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`thorough of a job did he do? Smartflash is entitled to have the Board take that fact
`
`into consideration in assigning weight to Dr. Bloom’s testimony.
`
`Moreover, as pointed out above, the testimony does have legitimate bearing
`
`on the question of Dr. Bloom’s credibility. Patent Owner demonstrated as much in
`
`its Patent Owner’s Response when it noted that “similarity between his employer’s
`
`products and the claims of the patent would provide Dr. Bloom with a motivation
`
`to be biased against the claims being found to be statutory subject matter under
`
`35 U.S.C. § 101.” Patent Owner’s Response, Papers 22/23, at 6 (emphasis added).
`
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`6
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`
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`III. CONCLUSION
`For these reasons, Patent Owner Smartflash, LLC respectfully requests that
`
`Petitioner’s Motion to Exclude Evidence be denied.
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`
`7
`
`
`
`
`Dated: October 5, 2015
`
`
`
`
`
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`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S
`
`OPPOSITION TO PETITIONER’S MOTION TO EXCLUDE EVIDENCE in
`
`CBM2014-00190 was served, by agreement of the parties, October 5, 2015 by
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`emailing copies to counsel for the Petitioners as follows:
`
`W. Karl Renner (renner@fr.com)
`Thomas Rozylowicz (rozylowicz@fr.com)
`CBM39843-0003CP1@fr.com
`
`J. Steven Baughman (steven.baughman@ropesgray.com)
`Ching-Lee Fukuda (ching-lee.fukuda@ropesgray.com)
`Megan Raymond (megan.raymond@ropesgray.com
`ApplePTABService-SmartFlash@ropesgray.com
`
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`8
`
`
`
`Dated: October 5, 2015
`
`
`
`
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