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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`Case CBM2014-00192
`Patent 8,033,458
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`PETITIONER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
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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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`Case CBM2014-00192
`Patent 8,033,458
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`PETITIONER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(c)
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`TABLE OF CONTENTS
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`Case CBM2014-00192
`Attorney Docket No: 39843-0005CP1
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`INTRODUCTION ......................................................................................... 1
`I.
`II. ARGUMENT .................................................................................................. 1
`A. The Subject Deposition Excerpts Lack Proper Foundation ............. 1
`B. The Subject Deposition Excerpts Are Outside the Scope ................. 4
`C. The Subject Deposition Excerpts Are Irrelevant ............................... 5
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`i
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`Case CBM2014-00192
`Attorney Docket No: 39843-0005CP1
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`I.
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`INTRODUCTION
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`In opposing Samsung’s (Petitioner’s) Motion to Exclude, Smartflash (Patent
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`Owner) continues to allege that Dr. Bloom is biased because “similarity between
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`his employer’s products and the claims of the patent would provide Dr. Bloom
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`with a motivation to be biased against the claims being found to be statutory
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`subject matter under 35 U.S.C. § 101.” Paper 40 (citing Papers 22/23, at 6). Yet,
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`Smartflash has failed show that Dr. Bloom was aware of any similarity (even
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`assuming that such similarity exists) between his employer’s products and the
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`subject patent at the time that Dr. Bloom rendered his declaration, a necessary
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`condition for the alleged bias. See Paper 40. Thus, Smartflash has not established
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`the alleged bias. Id. According, the subject portions from the deposition transcript
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`should be excluded, as requested by Samsung.
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`II. ARGUMENT
`A. The Subject Deposition Excerpts Lack Proper Foundation
`In opposing Samsung’s motion (Papers 37/38), Smartflash concedes that Dr.
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`Bloom “has not been advanced as an expert with regard to subscription-based
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`business practice of a third-party company.” See Paper 40 at 3. Yet, Smartflash
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`insists that “Dr. Bloom is currently employed by such ‘third-party company’ and
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`its ‘subscription-based business practices’ are both within Dr. Bloom’s job
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`responsibilities and relevant to the patent claims.” Id.
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`1
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`Case CBM2014-00192
`Attorney Docket No: 39843-0005CP1
`The insistence is unfounded. Consistent with Smartflash’s concession (that
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`Dr. Bloom has not been advanced as not been advanced as an expert with regard to
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`subscription-based business practice of a third-party company), Dr. Bloom also
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`testified under oath he does not know potentially relevant details of his employer’s
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`business practice.
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`Q. Does SiriusXM have a lot of subscribers?
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`A. I don't know how many they have.
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`Q. More than a million?
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`A. I don't know.
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`Exhibit 2056: 174:19-22.1
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`While insisting that “all of the factual foundation necessary for Smartflash’s
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`cross examination inquiry into Dr. Bloom’s knowledge of [a third-pary company’s]
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`product is set forth in his direct testimony in his declaration,” Smartflash conflates
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`an “[i]nquiry into how the third-party company’s products handle condidtional
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`access” with the subscription-based business practice of the third party. Paper 40
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`1 Because of Dr. Bloom’s apparent lack of personal knowledge of such
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`subscription-based business practice of the third-party company, treating the
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`content of the subject deposition excerpts as lay witness opinion would be equally
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`improper.
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`2
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`Case CBM2014-00192
`Attorney Docket No: 39843-0005CP1
`at 3. Without more, Smartflash then asserts that it “is entitled to have the Board
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`consider Dr. Bloom’s responses to the inquiry and how any similarity between Dr.
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`Bloom’s employer’s products and the claims of the patent would provide Dr.
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`Bloom with a motivation to be biased against the claims being found to be
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`statutory subject matter under 35 U.S.C. § 101.” Id.
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`Smartflash’s analysis is flawed at least because Smartflash failed to provide
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`any foundation for the entire line of questioning, a line of questioning that the
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`PTAB previously struck down in its consideration of the list of excluded motions2.
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`Aside from Dr. Bloom’s apparent lack of knowledge about the subscription-based
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`business practice of a third party company, Dr. Bloom also testified under oath that
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`he did not consider his employer’s products in relationship to the patent claims at
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`issue.
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`Q. In preparing your report, did you consider whether [a third-party
` company]'s system that enables limited use of paid for and/or
` licensed content is covered by any of the claims for which you
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`A. No, I didn't consider that.
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`2 See Paper 13 (dismissing Smartflash’s contention that “an accused infringer who
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`pleads in the alternative that the challenged claims are unpatentable under § 101, a
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`question of law, is taking an inconsistent position with its non-infringement
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`position.”).
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`3
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`Case CBM2014-00192
`Attorney Docket No: 39843-0005CP1
`Q. Is there a reason that you didn't?
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`A. It didn't occur to me.
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`Exhibit 2056,174:23-175:5.
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`In other words, Dr. Bloom did not perceive any alleged similarity between a
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`third-party company’s product and the patent claims at issue. Therefore, even if a
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`third-party company’s products are relevant to the patent claims at issue, an inquiry
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`to which Smartflash never established a foundation, Smartflash failed to impute
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`knowledge of the alleged infringement to Dr. Bloom at the time of his rendering of
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`his declaration, a necessary condition for the alleged bias to exist.
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`The Subject Deposition Excerpts Are Outside the Scope
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`B.
`During deposition and over Samsung’s objection3, Smartflash solicited
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`testimony from Dr. Bloom that is outside the scope of the direct examination, and
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`Smartflash failed to demonstrate the testimony relates to matters affecting the
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`credibility of Dr. Bloom. In opposing Samsung’s motion under FRE 611(b) (Paper
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`37/38), Smartflash still fails to demonstrate that any possible motivation of the
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`third-party company could be imputed to Dr. Bloom, as discussed in IIA.
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`3 Contrast with Apple Inc. v Smartflash LLC CBM2014-00106/00107 Paper 9 at
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`28-30 (discussing that “many of the questions and answers that Patent Owner now
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`seeks to exclude [for exceeding the scope of the direct testimony] were not
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`objected to during the deposition….”).
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`4
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`Case CBM2014-00192
`Attorney Docket No: 39843-0005CP1
`C. The Subject Deposition Excerpts Are Irrelevant
`Smartflash’s opposition does not buttress the unsustainable bias argument,
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`either substantively or logically. As if recognizing the flaw in its position,
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`Smartflash then asserts that its “inquiry into whether Dr. Bloom considered
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`whether his [employer’s] products would read on the Smartflash patent claims
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`reflects on the depth of Dr. Bloom’s investigation and patentability opinion.”
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`Paper 40 at 5. Based on Dr. Bloom’s leadership role in managing a team of
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`systems engineers and without providing any additional foundation, Smartflash
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`then professes that “[i]t is unfathomable that a person in such a position would not
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`consider whether any of his company’s own products read on the patent claims he
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`is evaluating.” Paper 40 at 6. To belittle the rest of Dr. Bloom’s opinion,
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`Smartflash asks the Board to “take that fact into consideration in assigning weight
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`to Dr. Bloom’s testimony.” Id. This line of reasoning is fatally flawed because
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`Smartflash fails to impute knowledge of the alleged relevance by a third-party
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`company to Dr. Bloom at the time of his rendering of his declaration, a necessary
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`condition for the alleged bias to exist. Without the allged bisis, any insinuation of
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`infringement4 by a third-party company unrelated to the instant CBM proceeding is
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`of no consequence to the validity of the patent claims at issue.
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`4 See generally, Patent Owner List of Proposed Motions, Paper 12; Order-Conduct
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`of the Proceedings, Paper 13.
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`5
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`Case CBM2014-00192
`Attorney Docket No: 39843-0005CP1
`Respectfully submitted,
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`/Thomas A. Rozylowicz/
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`Thomas A. Rozylowicz
`Reg. No. 50,620
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`6
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` 10/19/2015
`Date:
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`Case CBM2014-00192
`Attorney Docket No: 39843-0005CP1
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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 October 19, 2015, a complete and entire copy of this Petitioner’s Reply in
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`Support of Motion to Exclude Evidence Under 37 C.F.R. § 42.64(c) was provided
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`via email to the Patent Owner by serving the correspondence email addresses of
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`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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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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