`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`
`
`
`
`
`
`
`
`CBM2014-00193
`U.S. Patent 8,061,598
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Case CBM2014-00193
`Attorney Docket No: 39843-0006CP1
`
`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
`
`
`
`
`i
`
`
`
`Case CBM2014-00193
`Attorney Docket No: 39843-0006CP1
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.64 and the Federal Rules of Evidence,
`
`SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG ELECTRONICS
`
`CO., LTD. (“Samsung”), moves to exclude portions of Exhibit 2056 and Exhibit
`
`2057 (Deposition Transcripts of Dr. Jeffrey Bloom) as submitted by Patent Owner,
`
`SMARTFLASH LLC (“Smartflash”) in connection with Patent Owner’s Response
`
`in CBM2014-00193.
`
`Smartflash failed to produce its own expert witness in this proceeding.
`
`Instead, Smartflash deposed Samsung’s expert witness, Dr. Bloom. During the
`
`deposition, Smartflash attempted to solicit testimony that would be inadmissible on
`
`three grounds. First, Smartflash sought testimony from Dr. Bloom that is
`
`irrelevant to the determination of patent claim validity, as mandated to the Board
`
`by the Congress. Second, Smartflash failed to provide sufficient factual foundation
`
`for the testimony being solicited. Third, Smartflash sought to solicit testimony
`
`outside the scope as warranted by Samsung’s direct examination of Dr. Bloom.
`
`This solicited testimony should be excluded from this proceeding as inadmissible
`
`under the Federal Rules of Evidence.
`
`II. Legal Standard
`The admissibility of expert testimony in IPRs and CBMs is governed by the
`
`Federal Rules of Evidence. See 37 C.F.R. § 42.62 (“[T]he Federal Rules of
`
`1
`
`
`
`Case CBM2014-00193
`Attorney Docket No: 39843-0006CP1
`Evidence shall apply to [an IPR or CBM] proceeding.”). According to Rule 402,
`
`“[i]rrelevant evidence is not admissible.” Evidence is only relevant if it has a
`
`“tendency to make a fact more or less probable than it would be without the
`
`evidence” and “the fact is of consequence in determining the action.” Rule 401.
`
`According to Rule 702, an expert witness must be “qualified as an expert by
`
`knowledge, skill, experience, training, or education,” and the testimony must “help
`
`the trier of fact to understand the evidence or to determine a fact in issue.” In
`
`addition, Rule 702 requires that the expert’s testimony be “based on sufficient facts
`
`or data” and “the product of reliable principles and methods”; and the expert must
`
`“reliably appl[y] the principles and methods to the facts of the case.” Id.
`
`In Daubert, the Supreme Court held that scientific expert testimony is
`
`admissible only if it is both relevant and reliable. See Daubert v. Merrell Dow
`
`Pharms., Inc., 509 U.S. 579, 597 (1993); see also Kumho Tire Co. v. Carmichael,
`
`526 U.S. 137, 141 (1999) (stating that in Daubert “this Court focused upon the
`
`admissibility of scientific expert testimony. It pointed out that such testimony is
`
`admissible only if it is both relevant and reliable.”). In Kumho, the Supreme Court
`
`extended its holding in Daubert to apply “not only to testimony based on
`
`‘scientific’ knowledge, but also to testimony based on ‘technical’ and ‘other
`
`specialized’ knowledge.” 526 U.S. at 141.
`
`2
`
`
`
`Case CBM2014-00193
`Attorney Docket No: 39843-0006CP1
`In determining whether an expert’s testimony is admissible, the Board must
`
`make the following determinations: (1) the expert is qualified to provide the
`
`testimony; (2) the expert’s testimony is relevant; and (3) the expert’s testimony is
`
`based on sufficient facts or data and is reliable. If any of these requirements is not
`
`met, the expert’s proposed evidence and opinions should be excluded under Rule
`
`702, Rule 402, and the Supreme Court’s holdings in Daubert and Kumho.
`
`Further, under Rule 611(b), the scope of cross-examination “should be
`
`limited to the subject matter of the direct examination and matters affecting the
`
`credibility of the witness.” If the expert’s testimony solicited in cross-examination
`
`is outside the subject matter of the direct examination and does not have bearing on
`
`the expert’s credibility, it should be excluded under Rule 611(b).
`
`III. Argument
`Samsung objected to portions of Exhibits 2056 and 2057 in its Notice of
`
`Objections served on June 8, 2015 as well as during the deposition on May 20,
`
`2015. Smartflash relied on Exhibits 2056 and 2057 in its Response to Petition
`
`(Papers 20 and 21), filed on June 1, 20151. For reasons detailed below, the
`
`
`1Smartflash also relied on portions of Exhibit 2057 to which Samsung objected in
`
`its Notice of Objections served on June 8, 2015 as well as during the deposition on
`
`May 20, 2015. The Board ordered such portions of Exhibit 2057 under seal. See
`
`Paper 25.
`
`3
`
`
`
`Case CBM2014-00193
`Attorney Docket No: 39843-0006CP1
`objected-to portions of Exhibits 2056 and 2057 should be excluded from this
`
`proceeding as inadmissible under the Federal Rules of Evidence.
`
`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
`
`During cross-examination, Smartflash solicited testimony that is irrelevant to
`
`the salient issue of patent validity and that does not have legitimate bearing on the
`
`question of Dr. Bloom’s credibility. Such testimony should be excluded under
`
`Rules 401 & 402.
`
`In Exhibit 2056 at 179:1-20, Smartflash solicited testimony from Dr. Bloom
`
`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.” See Exhibit 2056 at 179:1-20 (cited
`
`by Patent Owner’s Response at 5-6). However, any insinuation of infringement2
`
`by a third-party company unrelated to the instant CBM proceeding is of no
`
`consequence to the validity of the patent claims at issue.
`
`
`2To the extent that Patent Owner requested discovery into alleged evidence of non-
`
`infringement and existence of non-infringing alternatives, the Board refused to
`
`authorize Patent Owner to file such motions to compel discovery. See generally,
`
`Patent Owner List of Proposed Motions, Paper 12; Order-Conduct of the
`
`Proceedings, Paper 13.
`
`4
`
`
`
`Case CBM2014-00193
`Attorney Docket No: 39843-0006CP1
`Citing Exhibit 2057, 193:17-194:8; 195:5-16, Smartflash asserted that
`
`“similarity between his employer’s products and the claims of the patent would
`
`provide Dr. Bloom with a bias against the claims.” Patent Owner’s Response at 6.
`
`This argument is unsustainable, as it is unproven and illogical.
`
`Substantively, while SiriusXM is Dr. Bloom’s employer, there is no
`
`evidence that Dr. Bloom perceived similarities between his employer’s products
`
`and the claims of the patent prior to his deposition. That is, whether alleged
`
`similarities existed or not, an allegation of bias would require a showing that Dr.
`
`Bloom did indeed perceive such similarities when rendering the opinions offered in
`
`the instant case. Smartflash had the opportunity to question Dr. Bloom on this
`
`point during his deposition, yet the record is without such evidence.
`
`Logically, this argument is equally flawed. Without more, Smartflash seeks
`
`to establish bias based on mere affiliation of an expert with an operating company.
`
`Surely, for an expert to have bias, it is necessary for the expert to have knowledge
`
`of the facts giving rise to the same. Mere employment is not enough, nor is
`
`knowledge of the products offered by one’s employer. It is instead necessary to
`
`perceive infringement for bias to exist, and for such perception to exist at the time
`
`of an opinion’s rendering. On a record that is without a showing of either, this
`
`argument is logically flawed.
`
`5
`
`
`
`Case CBM2014-00193
`Attorney Docket No: 39843-0006CP1
`Because Smartflash solicited a variety of opinions from Dr. Bloom that do
`
`not tend to make any fact of consequence in this CBM proceeding, such testimony
`
`should be excluded. See Rules 401 & 402.
`
`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
`
`During cross-examination, Smartflash solicited testimony from Dr. Bloom
`
`lacking proper factual support; such testimony should be excluded under Rules 702
`
`and 701.
`
`In Exhibit 2057, at 193:17-194:8 and 195:5-16, Smartflash attempted to
`
`solicit testimonies from Dr. Bloom as to whether “the SiriusXM Internet Radio
`
`product that allows off-line playback [is] a subscription-based product.”
`
`Smartflash further asserted that “when Dr. Bloom was questioned about the
`
`SiriusXM Internet Radio product and how it uses conditions, Dr. Bloom refused to
`
`testify about its operation alleging the information was confidential.” Patent
`
`Owner’s Response at 6. Yet, Dr. Bloom has not been advanced as an expert with
`
`regard to subscription-based business practice of a third-party company3. Treating
`
`the content of this portion as lay witness opinion is equally improper because no
`
`
`3See e.g., Bloom Declaration (Petitioner’s Exhibit 1003) ¶5, Dr. Bloom is
`
`“currently Director of System Engineering and Software Development for
`
`Conditional Access and Identity Management Systems for SiriusXM radio.”
`
`6
`
`
`
`Case CBM2014-00193
`Attorney Docket No: 39843-0006CP1
`foundation has been laid with regard to Dr. Bloom’s personal knowledge of such
`
`subscription-based business practice.
`
`Because Smartflash sought to have Dr. Bloom opine on matters without
`
`laying proper factual support, such testimony should thus be excluded under Rules
`
`702 and 701.
`
`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
`
`During cross-examination, Smartflash solicited testimony from Dr. Bloom
`
`that 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).
`
`In Exhibit 2056 at 179:1-20, and in Exhibit 2057 at 193:17-194:8 and 195:5-
`
`16, Smartflash attempted to have Dr. Bloom testify as 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.” See Exhibit 2056 at 179:1-20, and Exhibit 2057 at 193:17-194:8 and
`
`195:5-16 (cited by Patent Owner’s Response at 5-6). Smartflash further asserted
`
`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
`
`7
`
`
`
`Case CBM2014-00193
`Attorney Docket No: 39843-0006CP1
`Response at 6. However, Samsung, during its direct examination of Dr. Bloom,
`
`never opened to door to such questions. To the extent that Smartflash asserted that
`
`a third-party company unrelated to the instant CBM proceeding may have an
`
`infringing product, such an insinuation of infringement, even if true,4 would only
`
`suggest that the third-party company possibly has “a motivation to be biased.” Id.
`
`Smartflash has not demonstrated that such a possible motivation of the third-party
`
`company should be imputed to Dr. Bloom. Therefore, Dr. Bloom’s testimony, as
`
`sought by Smartflash, does not relate to matters that affect the credibility—
`
`including any motivation to be biased—of Dr. Bloom.
`
`Because Smartflash solicited testimony from Dr. Bloom is both outside the
`
`scope of the direct examination, and has no legitimate bearing on the issue of Dr.
`
`Bloom’s credibility, such testimony should be excluded. See Rule 611(b).
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner requests that the evidence discussed
`
`above be excluded.
`
`
`4 To the extent that Patent Owner requested discovery into alleged evidence of
`
`non-infringement and existence of non-infringing alternatives, the Board refused to
`
`authorize Patent Owner to file such motions to compel discovery. See generally,
`
`Patent Owner List of Proposed Motions, Paper 12; Order-Conduct of the
`
`Proceedings, Paper 13.
`
`8
`
`
`
`Case CBM2014-00193
`Attorney Docket No: 39843-0006CP1
`Respectfully submitted,
`
`/Thomas A. Rozylowicz/
`
`Thomas A. Rozylowicz
`Reg. No. 50,620
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`
`
`
`
` 9/21/2015
`Date:
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
`
`that on September 21, 2015, a complete and entire copy of this Petitioner’s Motion
`
`to Exlcude was provided via email to the Patent Owner by serving the
`
`correspondence email addresses of record as follows:
`
`Michael R. Casey
`J. Scott Davidson
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`
`Email: mcasey@dbjg.com
`jsd@dbjg.com
` docket@dbjg.com
`
`/Jessica K. Detko/
`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
`
`
`
`