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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`CBM2014-00199 (Patent 8,118,221)
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`PETITIONER’S REPLY TO PATENT OWNER’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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`CBM2014-00199 (Patent 8,118,221)
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`PETITIONER’S REPLY TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENTS ................................................................................................ 2
`A. Exhibit 1003 Is Admissible ............................................................................. 2
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`1. Exhibit 1003 Has Sufficient Foundation and Is Reliable ....................... 2
`2. Exhibit 1003 Paragraphs 104-112 Are Admissible Because They
`Provide Dr. Bloom’s Understanding of Legal Concepts and of Their
`Application to This CBM Review. ................................................................. 4
`III. CONCLUSION ................................................................................................ 5
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`i
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
`EXHIBIT LIST
`SAMSUNG-1001 U.S. Patent No. 8,118,221 to Racz et al. (“the ‘221 Patent” or
`“’221”)
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`SAMSUNG-1002 Excerpts from the Prosecution History of the ‘221 Patent (“the
`Prosecution History”)
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`SAMSUNG-1003 Declaration of Dr. Jeffrey Bloom re the ‘221 Patent (“Bloom”)
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`SAMSUNG-1004 RESERVED
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`SAMSUNG-1005 RESERVED
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`SAMSUNG-1006 RESERVED
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`SAMSUNG-1007 PCT Application No. PCT/GB00/04110 (“the ‘110 Appln.” Or
`“‘110”)
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`SAMSUNG-1008 United Kingdom Patent Application GB9925227.2 (“the ‘227.2
`Appln.” or “‘227.2”)
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`SAMSUNG-1009 Transitional Program for Covered Business Method Pa-tents—
`Definitions of Covered Business Method Patent and
`Technological Invention, 77 Fed. Reg. 157 (August14, 2012)
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`SAMSUNG-1010 A Guide to the Legislative History of the America Invents Act;
`Part II of II, 21 Fed. Cir. Bar J. No. 4
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`SAMSUNG-1011 Interim Guidance for Determining Subject Matter Eligibility for
`Process Claims in View of Bilski v. Kappos (July 27, 2010)
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`SAMSUNG-1012 Apple Inc. v. Sightsound Technologies, LLC, CBM2013-00019
`Paper No. 17 (entered October 8, 2013) at 11-13
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`SAMSUNG-1013 Volusion, Inc. v. Versata Software, Inc. and Versata Devel-
`opment Group, Inc., CBM2013-00017 Paper No. 8 (entered
`October 24, 2013)
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`ii
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
`SAMSUNG-1014 Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024
`Paper No. 16 (entered November 19, 2013)
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`SAMSUNG-1015 RESERVED
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`SAMSUNG-1016 RESERVED
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`SAMSUNG-1017 RESERVED
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`SAMSUNG-1018 RESERVED
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`SAMSUNG-1019 U.S. Patent No. 7,942,317 (“the ‘317 Patent” or “‘317”)
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`SAMSUNG-1020 U.S. Patent Application No. 12/014,558
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`SAMSUNG-1021 U.S. Patent No. 7,334,720 (“the ‘720 Patent” or “‘720”)
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`SAMSUNG-1022 U.S. Patent Application No. 12/943,872 (“the ‘872 Appln.” or
`“872”)
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`SAMSUNG-1023 U.S. Patent No. 5,915,019
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`SAMSUNG-1024 Affidavit in Support of Petitioner's Motion for Pro Hac Vice
`Admission of Ralph A. Phillips
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`SAMSUNG-1025 RESERVED
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`SAMSUNG-1026 RESERVED
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`SAMSUNG-1027 RESERVED
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`SAMSUNG-1028 RESERVED
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`SAMSUNG-1029 RESERVED
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`SAMSUNG-1030 RESERVED
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`SAMSUNG-1031 RESERVED
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`iii
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
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`SAMSUNG-1032 RESERVED
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`SAMSUNG-1033 RESERVED
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`SAMSUNG-1034 RESERVED
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`SAMSUNG-1035 RESERVED
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`SAMSUNG-1036 RESERVED
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`SAMSUNG-1037 RESERVED
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`SAMSUNG-1038 RESERVED
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`SAMSUNG-1039 RESERVED
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`SAMSUNG-1040 RESERVED
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`SAMSUNG-1041 RESERVED
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`SAMSUNG-1042 RESERVED
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`SAMSUNG-1043 Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
`1381 (Fed. Cir. 2015)
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`SAMSUNG-1044 RESERVED
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`SAMSUNG-1045 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120
`(2014)
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`SAMSUNG-1046 Markman v. Westview Instruments, Inc., 517 U.S.370 (1996)
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`SAMSUNG-1047 In re Am. Acad. Sci., 367 F.3d 1359, 1364 (Fed.Cir.2004)
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`SAMSUNG-1048 Microstrategy, Inc. v. Zillow, Inc, IPR2013-00034, Paper 42
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`SAMSUNG-1049 Apple Inc. v. Smartflash LLC, CBM2014-00102, Paper 8
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`SAMSUNG-1050 Vibrant Media v. General Electric Company, IPR2013-00172,
`Paper 50
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`iv
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
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`I.
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`INTRODUCTION
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`At the onset of this proceeding (CBM2014-00199), Samsung Electronics
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`America, Inc. and Samsung Electronics., Ltd. (“Petitioner” or “Samsung”), filed
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`evidentiary exhibits, including, among others, an expert declaration from Dr.
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`Bloom (Exhibit 1003). Smartflash moves to exclude Exhibit 1003 in its entirety
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`for allegedly lacking foundation because Smartflash believes that a declaration
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`must include an express statement of an evidentiary standard, and because
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`Smartflash believes that such a statement is missing from the Exhibit. Paper 33 at
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`1-4. Smartflash’s contention is based on its flawed and unsupported interpretation
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`of 37 CFR § 42.65, which does not require a declarant to expressly state an
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`evidentiary basis on which expert opinions are based. Id. Despite Board’s
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`repeated dismissal of similar contentions in other matters1, Smartflash insists that
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`an expert declaration is required to expressly recite or apply the preponderance of
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`the evidence standard in order for the expert testimony to be accorded weight. Id.
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`Samsung respectfully asserts that Smartflash’s motion to exclude here should be
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`similarly denied.
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`1 See Vibrant Media v. General Electric Company, IPR2013-00172, Paper 50 at
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`42; Apple Inc. v. Smartflash LLC, CBM2014-00102, Paper 8 at 4.
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`1
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
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`II. ARGUMENTS
`A. Exhibit 1003 Is Admissible
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`1. Exhibit 1003 Has Sufficient Foundation and Is Reliable
`Smartflash seeks to exclude Exhibit 1003 in its entirety because Smartflash
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`observed no expressly stated evidentiary standard in Dr. Bloom’s Declaration. See
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`Paper 33 at 1-4 (citing 37 CFR § 42.65). Smartflash bases this contention on a
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`flawed and unsupported interpretation of 37 CFR § 42.65, which requires only that
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`a declarant “disclose the underlying facts or data on which the opinion is based”
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`and, notably, does not require a declarant to expressly state an evidentiary basis on
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`which the opinion is based. See Paper 33 at 1-4 (quoting 37 CFR § 42.65)
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`(emphasis added).
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`Indeed, a similar argument was earlier considered and rightly rejected by the
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`Board in Vibrant Media v. General Electric Company, IPR2013-00172.
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`Specifically, in the Vibrant Media case, a party, citing to 35 U.S.C. § 316(e) rather
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`than 37 CFR § 42.65, argued that 35 U.S.C. § 316(e) requires an expert declaration
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`to expressly recite or apply the preponderance of the evidence standard in order for
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`the expert testimony to be accorded weight. See Vibrant Media, Paper 50 at 42.
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`The Board considered and rejected that argument, concluding that 35 U.S.C. §
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`316(e) makes no such requirement: “[r]ather, it is within our discretion to assign
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`the appropriate weight to be accorded to evidence based on whether the expert
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
`testimony discloses the underlying facts or data on which the opinion is based.”
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`Id. (emphasis added)(citing 37 C.F.R. § 42.64(a)); see also Apple Inc. v. Smartflash
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`LLC, CBM2014-000102, Paper 8 at 4 (considering and dismissing a similar
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`challenge by Smartflash to an expert’s declaration, the challenge being based on
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`the absence of the phrase “preponderance of the evidence” within that declaration,
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`and concluding that “Patent Owner identifies purported omissions from the
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`Declaration, but offers no evidence that [the expert] used incorrect criteria, failed
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`to consider evidence, or is not an expert in the appropriate field”).
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`Consistent with the requirements of 37 CFR §§ 42.64(a) and 42.65, Dr.
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`Bloom’s testimony discloses underlying facts and data on which his opinions were
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`based. For example, Dr. Bloom’s declaration extensively referenced prior art
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`disclosures, and it also noted Dr. Bloom’s relevant and timely industry experience
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`with digital right management. See Bloom at ¶¶ 5-22, ¶¶ 29-103.
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`Further reinforcing this inappropriate objection, Smartflash asserts that the
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`Board ignored FRE 702 under which the admissibility of expert testimony requires
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`not only that “the testimony is based on sufficient facts or data” (FRE 702(b)), but
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`also that “the testimony is the product of reliable principles and methods” (FRE
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`702(c)) and that “the expert has reliably applied the principles and methods to the
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`facts of the case” (FRE 702(d)). Paper 33 at 3. Smartflash had ample opportunity
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`to cross-examine Dr. Bloom during the two-day deposition on opinions expressed
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`3
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
`in his Declaration. Yet, Smartflash failed to question Dr. Bloom as to any reliable
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`principles and methods that he used to render his opinion. Nor did Smartflash
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`question Dr. Bloom regarding his reliable application of the principles and
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`methods to the facts. Indeed, in the earlier served Notice of Objection, Smartflash
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`did not even rely on FRE 702 to object to Dr. Bloom’s Declaration in its entirety.
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`Exhibit 2098. In other words, Smartflash has waived its objection to Exhibit 1003
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`in its entirety for any alleged failure to meet all of 37 CFR §§ 42.64(a), 42.65 and
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`FRE 702.
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`To the extent that Smartflash conflates evidentiary weight with the
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`principles and methods of FRE 702, Samsung respectfully notes that, by attesting
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`to statements set forth in his declaration, Dr. Bloom has indicated that those
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`statements are correct, and, therefore, that those statements are more likely true
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`than not true based on evidence known to him. See Bloom at ¶ 113 (“I hereby
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`declare that all statements made herein of my own knowledge are true and that all
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`statements made on information and belief are believed to be true”). From this, Dr.
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`Bloom’s statements are self-revealing of his satisfaction of the preponderance of
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`evidence standard.
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`Accordingly, Samsung respectfully submits that Dr. Bloom’s declaration is
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`proper under FRE 702.
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`2. Exhibit 1003 Paragraphs 104-112 Are Admissible Because They
`Provide Dr. Bloom’s Understanding of Legal Concepts and of Their
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`4
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
`Application to This CBM Review.
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`Attempting to conjure an additional way to excluding Exhibit 1003,
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`Smarflash mischaracterizes Paragraphs 104-112 of the Bloom Declaration as
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`testimony on United States patent law or patent examination practice. See Paper
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`30 at 5. Such mischaracterization blatantly ignores Dr. Bloom’s statement in the
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`leading paragraph of this section:
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`I am not a lawyer. However, counsel has advised me of legal concepts that
`are relevant to CBM review proceedings and to the opinions that I offer in
`this declaration. My understanding of these concepts and of their
`applications to this CBM review is indicated below:
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`Exhibit 1003 at ¶ 104.
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`Thus, as noted above, Dr. Bloom is simply producing the factual foundations
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`for this proceeding.
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`III. CONCLUSION
`For the foregoing reasons, Petitioner requests that the evidence discussed
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`above are admissible.
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`Respectfully submitted,
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`/Thomas A. Rozylowicz/
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`Thomas A. Rozylowicz
`Reg. No. 50,620
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` 10/5/2015
`Date:
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
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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 5, 2015, a complete and entire copy of this Petitioner’s Reply to
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`Patent Owner Motion to Exclude was provided via email to the Patent Owner by
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`serving the 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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`/Christine Rogers/
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`Christine Rogers
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(650) 839-5092
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`6
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