UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`
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`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO. LTD,
`
`Petitioner,
`
`v.
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`SMARTFLASH LLC,
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`Patent Owner.
`
`____________
`
`Case CBM2014-00199
`
`Patent 8,118,221 B2
`
`____________
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO. LTD,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2014-00199
`
`Patent 8,118,221 B2
`
`____________
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
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`
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`TABLE OF CONTENTS
`
`
`Statement of Precise Relief Requested ............................................................ 1
`I.
`Patent Owner Smartflash Timely Objected to Petitioner’s Exhibits ............... 1
`II.
`III. Argument ......................................................................................................... 1
`A.
`Exhibit 1003 Is Inadmissible ................................................................. 1
`1. Exhibit 1003 Lacks Foundation And Is Unreliable .............................. 1
`2. Exhibit 1003 Paragraphs 104-112 Constitute Inadmissible Expert
`Testimony On United States Patent Law And Patent Examination .......... 5
`IV. Conclusion ....................................................................................................... 5
`
`
`i
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`
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`I.
`
`Statement of Precise Relief Requested
`
`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Patent Owner Smartflash LLC
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`moves to exclude Exhibit 1003.
`
`II.
`
`Patent Owner Smartflash Timely Objected to Petitioner’s Exhibits
`
`Patent Owner Smartflash LLC timely objected to CBM2014-00199 Exhibit
`
`1003 by serving Patent Owner’s Objections to Admissibility of Evidence on April
`
`13, 2015. Exhibit 2098.
`
`III. Argument
`Pursuant to 37 C.F.R. § 42.64(c), the Federal Rules of Evidence (“FRE”)
`
`apply in Covered Business Method Review proceedings.
`
`A. Exhibit 1003 Is Inadmissible
`1. Exhibit 1003 Lacks Foundation And Is Unreliable
`Petitioner relies on Exhibit 1003 on pages 4, 6-8, 10, 12, 13, 15, 17-20, 22-
`
`29, 31, 33-39, and 41-52 of the Corrected Petition (Paper 4) and pages 2, 3, 5, 11,
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`and 15 of Petitioner’s Reply (Paper 28). Patent Owner moves to exclude Exhibit
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`1003, Declaration of Dr. Jeffrey A. Bloom (“Bloom Declaration”), on grounds that
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`it lacks foundation and is unreliable because it fails to meet the foundation and
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`reliability requirements of 37 CFR § 42.65(a) and FRE 702.
`
`37 CFR § 42.65(a) provides:
`
`§ 42.65 Expert testimony; tests and data.
` Expert testimony that does not disclose the
`(a)
`underlying facts or data on which the opinion is based
`
`
`
`1
`
`
`
`
`
`is entitled to little or no weight. Testimony on United
`States patent law or patent examination practice will not
`be admitted.
`
`37 CFR § 42.65(a) (emphasis added). FRE 702 provides:
`
`RULE 702. TESTIMONY BY EXPERT WITNESSES
`A witness who is qualified as an expert by knowledge,
`skill, experience, training, or education may testify in the
`form of an opinion or otherwise if:
`(a) The expert’s scientific, technical, or other specialized
`knowledge will help the trier of fact to understand the
`evidence or to determine a fact in issue;
`(b) The testimony is based on sufficient facts or data;
`(c) The testimony is the product of reliable principles and
`methods; and
`(d) The expert has reliably applied the principles and
`methods to the facts of the case.
`
`FRE 702.
`
`Patent Owner moves to exclude the Bloom Declaration because it does not
`
`disclose the underlying facts or data on which the opinions contained are based as
`
`required by 37 CFR § 42.65(a), given that it does not state the relative evidentiary
`
`weight (e.g., substantial evidence versus preponderance of the evidence) used by
`
`Dr. Bloom in arriving at his conclusions. “A finding is supported by substantial
`
`evidence if a reasonable mind might accept the evidence to support the finding.” Q.
`
`I. Press Controls, B.V. v. Lee, 752 F.3d 1371, 1378-1379 (Fed. Cir. 2014)(citing
`
`Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S. Ct. 206, 83 L. Ed. 126
`
`(1938)). Proof by a “preponderance of the evidence” means “that it is more likely
`
`
`
`2
`
`
`
`
`
`than not.” See, O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 449 Fed.
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`Appx. 923, 928 (Fed. Cir. 2011).
`
`Petitioner has cited, and likely will cite again, Vibrant Media v. General
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`Electric Company, IPR2013-00172, Paper 50 at 42, for the proposition that an
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`expert need not expressly set forth the evidentiary standard used in formulating
`
`opinions. See, Petitioner’s Reply to Patent Owner’s Response, Paper 28, at 1-3. In
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`particular, Petitioner will likely rely on the Board’s conclusion in Vibrant Media
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`that “it is within [the Board’s] discretion to assign the appropriate weight to be
`
`accorded to evidence based on whether the expert testimony discloses the
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`underlying facts or data on which the opinion is based.” Petitioner’s Reply, Paper
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`28 at 2 (citing Vibrant Media, Paper 50 at 42). The Board’s conclusion in Vibrant
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`Media, however, ignores that under FRE 702, the admissibility of expert testimony
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`requires a finding not only that “the testimony is based on sufficient facts or data”
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`(FRE 702(b)), but also that “the testimony is the product of reliable principles and
`
`methods” (FRE 702(c)) and that “the expert has reliably applied the principles and
`
`methods to the facts of the case” (FRE 702(d)).
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`Here, the Board cannot assess under FRE 702 whether Dr. Bloom’s opinion
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`testimony is “based on sufficient facts or data,” is “the product of reliable
`
`principles and methods,” or if Dr. Bloom “reliably applied the principles and
`
`methods to the facts of the case” given that Dr. Bloom did not disclose the standard
`
`
`
`3
`
`
`
`
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`against which he measured the quantum of evidence in arriving at his opinions.
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`Specifically, when Dr. Bloom opines that:
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`[S]everal prior art references show that the claims of the
`’221 Patent altogether fail to recite a novel and
`unobvious technological feature, just as they fail to recite
`a technical problem solved by a technical solution.
`
`Exhibit 1003 at ¶ 23, is he saying that he examined the prior art and a reasonable
`
`mind would find sufficient evidence to support that the ‘221 Patent claims fail to
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`recite a novel and unobvious technological feature and fail to recite a technical
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`problem solved by a technical solution (substantial evidence); OR is he saying that
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`he examined the evidence and it is more likely than not that the ‘221 Patent claims
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`fail to recite a novel and unobvious technological feature and fail to recite a
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`technical problem solved by a technical solution (preponderance of the evidence).
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`There is no basis for the Board to know, because the Bloom Declaration is silent
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`on the standard he used. As such, the Bloom Declaration should be excluded
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`because it fails to meet the requirements of 37 CFR § 42.65(a) and FRE 702.
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`To the extent that Exhibit 1003 is not excluded in its entirety as requested
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`above, Patent owner moves to exclude the following paragraphs for the following
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`reasons:
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`
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`4
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`
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`2. Exhibit 1003 Paragraphs 104-112 Constitute Inadmissible Expert
`Testimony On United States Patent Law And Patent Examination
`
`Paragraphs 104-112 of the Bloom Declaration are titled “Legal Principles”
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`and relate to patent law “legal concepts.” Exhibit 1003, ¶ 104. 37 CFR § 42.65(a)
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`provides:
`
`§ 42.65 Expert testimony; tests and data.
`(a)
` Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is
`entitled to little or no weight. Testimony on United
`States patent law or patent examination practice will
`not be admitted.
`
`37 CFR § 42.65(a) (emphasis added). Given that Paragraphs 104-112 of the
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`Bloom Declaration deal exclusively with United States patent law and/or patent
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`examination practice those paragraphs should not be admitted.
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`IV. Conclusion
`For these reasons, Patent Owner Smartflash, LLC respectfully requests that
`
` /
`
` 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
`
`the Board exclude Exhibit 1003.
`
`
`Dated: September 21, 2015
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`
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`5
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`
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PATENT OWNER’S MOTION
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`TO EXCLUDE EVIDENCE, PATENT OWNER’S LIST OF EXHIBITS and
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`Exhibit 2098 in CBM2014-00199 was served, by agreement of the parties,
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`September 21, 2015 by emailing copies to counsel for the Petitioner as follows:
`
`W. Karl Renner (renner@fr.com)
`Thomas Rozylowicz (rozylowicz@fr.com)
`CBM39843-0007CP2@fr.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
`
`6
`
`
`
`Dated: September 21, 2015
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