UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
` SAMSUNG ELECTRONICS LTD,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2014-00199
`
`Patent 8,116,221 B2
`
`____________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
` SAMSUNG ELECTRONICS LTD,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2014-00199
`
`Patent 8,116,221 B2
`
`____________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`Introduction .................................................................................................... .. 1
`
`
`Introduction ...................................................................................................... 1
`I.
`II. Argument ......................................................................................................... 1
`Argument ....................................................................................................... ..1
`A.
`Ex. 1003 Is Inadmissible ....................................................................... 1
`1. Ex. 1003 Does Not Meet Foundation or Reliability Requirements ...... 1
`1. Ex. 1003 Does Not Meet Foundation or Reliability Requirements .... ..1
`2. Ex. 1003 Paragraphs 104-112 Are Inadmissible Under § 42.65(a) ...... 3
`2. EX. 1003 Paragraphs 104-112 Are Inadmissible Under § 42.65(a) .... ..3
`III. Conclusion ....................................................................................................... 3
`
`
`Conclusion ..................................................................................................... ..3
`
`A.
`
`Ex. 1003 Is Inadmissible ..................................................................... ..1
`
`III.
`
`i
`
`
`
`
`
`
`I.
`
`Introduction
`Petitioner’s Reply to Patent Owner’s Motion to Exclude Evidence (“Pet.’s
`
`Rep.”), Pap. 37, does not provide valid reasons why exhibit 1003 should not be
`
`excluded pursuant to §§ 42.62 and 42.64(c).
`
`II. Argument
`A. Ex. 1003 Is Inadmissible
`1. Ex. 1003 Does Not Meet Foundation or Reliability Requirements
`As predicted, Petitioner relies on Vibrant Media v. General Electric
`
`Company, IPR2013-00172, Pap. 50 at 42 and Apple Inc. v. Smartflash LLC,
`
`CBM2014-00102, Pap. 8 at 4, to argue that an expert need not expressly set forth
`
`the evidentiary standard used in formulating opinions. Rather than addressing
`
`directly PO’s argument that for Bloom’s testimony to be given weight under 37
`
`CFR § 42.65(a) and to be admissible under FRE 7021 it must disclose the
`
`underlying facts or data on which the opinion is based, must be based on sufficient
`
`facts or data, must be the product of reliable principles and methods, and must
`
`show that the expert has reliably applied the principles and methods to the facts of
`
`the case (PO’s Mot. to Exclude, Pap. 30, at 1-4), Petitioner criticizes PO’s cross
`
`
`1 Petitioner’s claim that PO waived objection to Ex. 1003 under §§ 42.64(a), 42.65
`
`and FRE 702 (Pap. 37 at 4) rings hollow; PO objected to Ex. 1003 in its entirety
`
`under 37 CFR § 42.65, which, like FRE 702, addresses whether an opinion is
`
`based on sufficient facts or data such that it can be deemed reliable. Ex. 2098 at 2.
`
`
`
`1
`
`
`
`
`
`examination of Bloom. “Smartflash failed to question Dr. Bloom as to any reliable
`
`principles and methods that he used to render his opinion.” Pap. 37 at 4. Petitioner
`
`ignores that the proponent of expert testimony bears the burden of proving
`
`admissibility. FRE 702, Committee Notes on Rules – 2000 Amendment
`
`(admissibility of expert testimony governed by principles of Rule 104(a);
`
`proponent has burden of establishing pertinent admissibility requirements met by
`
`preponderance of the evidence). Petitioner also ignores that Bloom’s Declaration,
`
`by not disclosing the standard by which he examined evidence, fails to provide the
`
`Board assurances that his testimony meets the requisites of § 42.65(a) and FRE
`
`702.
`
`Petitioner further argues that Bloom’s attestation that statements set forth in
`
`his declaration are correct renders them “more likely true than not true based on
`
`evidence known to him” and thus “Dr. Bloom’s statements are self-revealing of his
`
`satisfaction of the preponderance of evidence standard.” Pap. 37 at 4. Petitioner
`
`confuses statements, such as stating the content of what a particular cited document
`
`says, with expert opinions. The question here is whether Bloom’s expert opinions
`
`are based on sufficient facts or data, the product of reliable principles and methods,
`
`and the result of reliably applying the principles and methods to the facts. Bloom’s
`
`Declaration is devoid of discussion of the evidentiary standard applied to the
`
`
`
`2
`
`
`
`
`
`underlying facts in arriving at his opinions. The Board cannot assess Bloom’s
`
`opinion testimony absent disclosure of the standard he used to weigh evidence.
`
`2. Ex. 1003 Paragraphs 104-112 Are Inadmissible Under § 42.65(a)
`Nothing in Pet.’s Rep. rebuts the fact that Ex. 1003 ¶¶ 104-112 constitute
`
`testimony on United States patent law/patent examination practice. PO did not
`
`“mischaracterize” ¶¶ 104-112 as testimony on United States patent law or patent
`
`examination practice. Pap. 37 at 5. Paragraphs 104-112 are in a section headed
`
`“Legal Principles” and relate to “claim construction,” “level of ordinary skill in the
`
`art,” anticipation,” and “obviousness.” § 42.65(a) is clear that “[t]estimony on
`
`United States patent law or patent examination practice will not be admitted.”
`
`Petitioner provides no authority for its position that such testimony is permissible
`
`“factual foundation” or for any exception to § 42.65(a)’s prohibition.
`
` /
`
` 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
`
`III. Conclusion
`Exhibit 1003 should be excluded.
`
`
`Dated: October 13, 2015
`
`
`
`3
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S REPLY IN
`
`SUPPORT OF MOTION TO EXCLUDE EVIDENCE in CBM2014-00199 was
`
`served, by agreement of the parties, October 13, 2015 by emailing copies to
`
`counsel for the Petitioners 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
`
`4
`
`
`
`Dated: October 13, 2015
`
`
`
`
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