CBM2016-00063
`CBM2016-00064
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`
`
`
`Petitioner
`
`
`
`v.
`
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`
`Patent Owners
`
`
`
`U.S. PATENT NO. 8,266,432
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`
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`CBM2016-00063 and CBM2016-00064
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`
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`PATENT OWNER MOTION FOR OBSERVATION REGARDING CROSS
`EXAMINATION OF REPLY WITNESS DR. SETH NIELSON
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`CBM2016-00064
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`
`
`
`Petitioner
`
`
`
`v.
`
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`
`Patent Owners
`
`
`
`U.S. PATENT NO. 8,266,432
`
`
`
`CBM2016-00063 and CBM2016-00064
`
`
`
`PATENT OWNER MOTION FOR OBSERVATION REGARDING CROSS
`EXAMINATION OF REPLY WITNESS DR. SETH NIELSON
`
`
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`EXHIBIT
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`Exhibit 2014 Deposition Transcript of Seth Nielson, Ph.D., March 28, 2017
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`CBM2016-00063
`CBM2016-00064
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`
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`CBM2016-00063
`CBM2016-00064
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`Pursuant to the Scheduling Order (Paper 15) in CBM2016-00063 and the
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`Scheduling Order (Paper 15) in CBM2016-00064, Patent Owner respectfully
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`submits the following observations regarding the March 28, 2017, cross-
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`examination testimony of Petitioner’s (“Petitioner”) Reply declarant, Dr. Seth
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`Nielson.
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`1. In Exhibit 2014, Deposition Transcript of Seth Nielson Ph.D., on page 16
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`line 13 to page 17, line 7, Dr. Nielson testified (with emphasis added):
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`Q. So then it would be my understanding that these CBMs involve two
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`CBMs, and patent owner filed Patent Owner’s Responses in both
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`CBMs, and as far as you can remember, you only considered one of
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`the responses; is that correct?
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`…
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`A. So the primary focus that I took in this document was to respond to
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`the report of Dr. Weaver, and I felt that I had sufficient analysis to do
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`so.
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`Q. Why did you focus on Dr. Weaver and not Patent Owner’s
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`Responses?
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`A. So I was -- so part of my answer to that is that I was asked to
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`evaluate Dr. Weaver's report, and so this is an opinion I was asked to
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`-- this is what I was asked to opine about, and that is also what I
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`understood this declaration to be focused on, is a rebuttal declaration
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`to that expert report primarily.
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`1
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`CBM2016-00063
`CBM2016-00064
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`This testimony is relevant to the arguments on pages 2-27, Appendix 1, and
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`Appendix 2 of the Patent Owner Response in CBM2016-00063 (Paper 22) and
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`pages 2-27, Appendix 1, and Appendix 2 of the Patent Owner Response in
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`CBM2016-00064 (Paper 22). The testimony is relevant as to whether a person of
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`ordinary skill in the art (“POSITA”) would reasonably conclude that the inventors
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`has possession of the invention claimed in the ‘432 patent in view of the claim
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`constructions, arguments, or mappings of claim features asserted in the Patent
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`Owner Response in CBM2016-00063 or the Patent Owner Response in CBM2016-
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`00064 (hereinafter, “Patent Owner’s Responses”).
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`
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`2. In Exhibit 2014, on page 17, line 20 to page 18, line 4, Dr. Nielson
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`testified (with emphasis added):
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`Q. … [T]he patent owner filed two Patent Owner’s Responses, one in
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`each CBM, and you considered one of them. Do you know which one
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`you considered? Did you consider the one from CBM2016 tack 0063
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`or the one from tack 0064?
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`A. Without looking at the one that is cited in paper 22, I'm not sure.
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`
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`This testimony is relevant to the arguments pages 10, and16-35 in both the
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`Petitioner’s Reply to Patent Owner’s Response in both CBM2016-00063 and
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`CBM2016-00064 (hereinafter, “Petitioner’s Replies”). The testimony is relevant
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`2
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`CBM2016-00063
`CBM2016-00064
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`
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`to the credibility of the Declaration of Seth Nielson (Exhibit 1054) (hereinafter,
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`“Nielson Declaration”), which is relied on by the Petitioner’s Replies.
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`
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`3. In Exhibit 2014, on page 22, line 16 to page 23, line 1, Dr. Nielson
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`testified (with emphasis added):
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`Q. Does your declaration include any citations to any pages or tables
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`inside of this document -- inside of the patent owners' response?
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`…
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`A. Off the top of my head, I don't remember if I cited to any of the
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`appendices. Again, I – I focused primarily on Dr. Weaver's report and
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`rebutting it.
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`This testimony is relevant to the mapping of claim terms stated in
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`Appendices 1 and 2 of the Patent Owner’s Responses and on pages 22-27 and 31-
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`33 of the Petitioner’s Replies. The testimony is relevant as to whether a POSITA
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`would reasonably conclude that the inventors had possession of the claimed
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`invention in view of the mapping of claim terms presented in Appendices 1 and 2
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`of Patent Owner’s Responses.
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`3
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`CBM2016-00063
`CBM2016-00064
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`4. In Exhibit 2014, on page 28, line 18 to page 29, line 5, Dr. Nielson
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`testified:
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`Q. In the paragraph you read at page 11 of the patent owners'
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`response, do you know what is meant by a prior-filed co-pending
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`application?
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`…
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`A. I don't have a legal understanding of co-pending.
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`
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`This testimony is relevant to the arguments at pages 11-12 and 20 of Patent
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`Owner’s Responses. The testimony is relevant as to whether the application for
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`the ‘837 Patent qualifies as a prior-filed copending application upon which the
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`‘432 Patent is entitled to claim benefit of priority pursuant to 35 U.S.C. § 120 and
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`37 C.F.R. § 1.78 (a)(1) and (d).
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`
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`5. In Exhibit 2014, on page 40, lines 11-18, Dr. Nielson testified (with
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`emphasis added):
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`Q. So given that the disclosures of the '837 patent and the '432 patent
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`are the same, is there any question as to whether the inventors had
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`possession of the subject matter disclosed in the '432 patent when it
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`was filed?
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`…
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`A. So I have not done that analysis. I don't have an opinion on that.
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`4
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`CBM2016-00063
`CBM2016-00064
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`This testimony is relevant to the arguments at pages 11-12 and 20 of the
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`Patent Owner’s Responses. The testimony is relevant as to whether the application
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`for the ‘837 Patent provides written description support for the subject matter
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`claimed by the ‘432 Patent such that Patent Owner is entitled to claim benefit of
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`priority pursuant to 35 U.S.C. § 120 and 37 C.F.R. § 1.78 (a)(1) and (d).
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`
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`6. In Exhibit 2014, on page 56, line 17 to page 57, line 8, Dr. Nielson
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`testified (with emphasis added):
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`Q. But having not evaluated the '837 patent because you didn't believe
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`it was a parent, there's not any value to your report as to …
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`establishing that the inventors didn't have possession of the claimed
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`invention in the '432 patent, correct?
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`…
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`A. I believe most reports have a set of foundational principles, and if
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`one of those foundational principles is wrong, there's nothing I can do
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`about that, but I am not a lawyer and I am not making legal opinions.
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`Based on legal principles that have been provided, I have conducted a
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`technical analysis that I'm more than happy to discuss.
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`This testimony is relevant to the arguments on pages 11-12 and 20 of the
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`Patent Owner’s Responses, the arguments on pages 15-34 of the Petitioner’s
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`
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`5
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`CBM2016-00063
`CBM2016-00064
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`Replies, and the arguments on page 6, para. 13, pages 7-9, paras. 16-18, page 11,
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`para 26, page 14, para. 34, page 17, para. 41, and page 18, para. 45 of the Nielson
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`Declaration. The testimony is relevant to (1) whether the ‘837 Patent establishes
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`that the inventors had actual possession of the subject matter claimed in the ‘432
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`Patent and (2) whether a POSITA at the time of the invention would reasonably
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`conclude that the inventor had possession of the claimed invention in view of the
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`relevant art (e.g., the ‘837 Patent) that is presumed to be within the knowledge of
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`the POSITA.
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`
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`7. In Exhibit 2014, on page 57, line 14 to page 58, line 22, Dr. Nielson
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`testified (with emphasis added):
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`A. … "I further understand that the fact that a parent application
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`could support a narrower scope of the invention for the same claim
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`term does not show that the parent application provides sufficient
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`support for the claims in the continuation application."
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`…
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`Q. … [H]ypothetically, are you saying that if a parent application
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`disclosed a steel rivet, that a person -- a POSITA would not consider
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`that disclosure to support the claim of a metal rivet?
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`…
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`A. Well, my understanding is that when you disclose a steel item, you
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`are disclosing a metal item.
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`6
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`CBM2016-00063
`CBM2016-00064
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`Q. But metal is more general, more broad than steel, correct?
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`A. So again, my understanding is that the general -- so the -- the steel
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`and the metal are disclosed, but not necessarily -- in other words,
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`whatever descriptions of the metal are used with the steel, right, all of
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`those are still disclosed, but things that are beyond, that are
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`additional, that are broader in terms of application or functionality,
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`are not.
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`
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`This testimony is relevant to the claim construction standard stated at pages
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`2-3 of the Patent Owner’s Responses, the arguments on page 10, para. 23, page 11,
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`para. 26, page 12, para. 28, page 14, paras. 34 and 36, page 17, para. 41, page 18,
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`paras. 44-45, page 20, and para. 49 to page 22, para. 52 of the Nielson Declaration,
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`and the arguments on pages 16, 19, 20, 21, and 30 of the Petitioner’s Replies.
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`The testimony is relevant to the “broadest reasonable interpretation” standard for
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`claim construction applied when evaluating whether a POSITA would reasonably
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`conclude that the inventor established possession of the claimed invention pursuant
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`to the written description requirement under 35 U.S.C. § 112, first paragraph.
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`
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`8. In Exhibit 2014, on page 65, line 3 to page 67, line 4, Dr. Nielson
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`testified (with emphasis added):
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`
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`7
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`CBM2016-00063
`CBM2016-00064
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`A. … [I]n the opinions I set forth, they're all based on these legal
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`principles as I've been given them. That's why they're included in the
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`report.
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`Q. But the legal principle is whether or not a POSITA would
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`reasonably conclude that the inventor had possession of the claimed
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`invention at the time the application was filed, correct? ...
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`But I don't see here anywhere where you've addressed what would be
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`reasonable, what a POSITA would consider, or as we've discussed,
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`that a POSITA has knowledge of the relevant art, and you don't even
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`discuss the relevant art. All I can tell is you took claim '432 -- '432
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`and '129 in a vacuum and determined whether or not one word was
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`broader than another, and said, and I quote at paragraph 26, "I
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`conclude that the user disclosed and claimed in the '432 patent is
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`broader than an individual as disclosed in the '129, and therefore,
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`does not provide written description support. …
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`So your conclusion at paragraph 26 only says that the term "user" is
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`broader than "individual" in the '129 patent, correct?
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`…
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`A. So 26 focuses on broader. That's what it says there.
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`This testimony is relevant to the arguments on pages 2-27, Appendix 1, and
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`Appendix 2 of the Patent Owner Responses, the arguments on pages 16-22 of the
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`Declaration of Alfred Weaver (Exhibit 2010), the arguments on pages 15-34 of the
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`Petitioner’s Replies, and the arguments on page 6, para. 13, pages 7-9, paras. 16-
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`8
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`CBM2016-00063
`CBM2016-00064
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`18, page 11, para 26, page 14, para. 34, page 17, para. 41, page 18, para. 45 of the
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`Nielson Declaration. The testimony is relevant to how a POSITA would interpret
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`the claim terms of the ‘432 Patent when evaluating whether the inventor
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`established possession of the claimed invention pursuant to the written description
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`requirement under 35 U.S.C. § 112, first paragraph.
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`
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`9. In Exhibit 2014, on page 68, line 3, to page 69, line 3, Dr. Nielson
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`testified (with emphasis added):
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`Q. Does the term "user" in the '837 patent -- is that broader than the
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`term "user" in the '432 patent?
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`…
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`A. Given that they're from the same specification and figures, I would
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`imagine not.
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`Q. Let's continue that train then. Is the term "central-entity" in the
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`'432 patent broader than the term "central-entity" in the '837 patent?
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`…
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`A. Again, to the extent that the specifications between the '432 and the
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`'837 are identical, I would imagine that the breadth of the term for the
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`same name is identical.
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`Q. Just to belabor the point, would the term "external-entity" in the
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`'432 patent be broader than the term "external-entity" in the '837
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`patent?
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`
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`…
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`9
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`CBM2016-00063
`CBM2016-00064
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`A. I would say the same answer, which is to the extent they have the
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`same specification and the same term names, they -- have the same
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`scope.
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`This testimony is relevant to the arguments on pages 11-12 and 20 of the
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`Patent Owner’s Responses, the arguments on pages 15-34 of the Petitioner’s
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`Replies, and the arguments on page 6, para. 13, pages 7-9, paras. 16-18, page 11,
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`para 26, page 14, para. 34, page 17, para. 41, and page 18, para. 45 of the Nielson
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`Declaration. The testimony is relevant to (1) whether the ‘837 Patent establishes
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`that the inventors had actual possession of the claimed invention in the ‘432 Patent
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`in a single prior-filed parent application and (2) whether a person having ordinary
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`skill in the art (“POSITA”) at the time of the invention would reasonably conclude
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`that the inventor had possession of the claimed invention in view of the relevant art
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`(e.g., the ‘837 Patent) presumed to be within the knowledge of a POSITA.
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`
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`
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`10. In Exhibit 2014, on page 74, lines 2-10, Dr. Nielson testified:
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`A. I believe that the individual consumes goods and services, yes.
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`Q. And the board defines user as a person or business consuming
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`goods or services, correct?
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`…
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`A. That is the board's construction, but that doesn't answer the
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`question about written description.
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`10
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`CBM2016-00063
`CBM2016-00064
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`
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`This testimony is relevant to the arguments at pages 3 and 13-14 of the
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`Patent Owner’s Responses, page 18 of the Weaver Declaration, and the arguments
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`at page 10, para. 22 to page 11, para. 26 of the Nielson Declaration. The testimony
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`is relevant to whether the “individual” disclosed in the ‘129 Patent provides written
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`description support for the claimed “user” in the ‘432 Patent.
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`
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`11. In Exhibit 2014, on page 95, line 15 to page 96, line 6, Dr. Nielson
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`testified (with emphasis added):
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`Q. But would one of ordinary skill in the art reasonably conclude
`
`based on those overlapping embodiments that there was support for a
`
`trusted relationship implicit or otherwise in the '432 patent?
`
`A. Well, no. The '432 patent doesn't require there to be a trusted
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`relationship.
`
`Q. I didn't say require. I said that there just exists.
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`A. No, no, that's what I'm saying, is you don't have to have a trusted
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`relationship for the central-entity to function as a central-entity.
`
`Q. Could you have a trusted relationship –
`
`A. Yes.
`
`Q. -- in '432?
`
`A. Yes, you could.
`
`Q. In some embodiments in the '432, can there be a trusted
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`relationship?
`
`
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`11
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`CBM2016-00063
`CBM2016-00064
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`A. Yes, I've said there are overlapping embodiments.
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`This testimony is relevant to the arguments on pages 13 -17 of the Patent
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`Owner’s Responses, page 18, para. 42 to page 20, para. 48 of the Weaver
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`Declaration, pages 20-21 of Petitioner’s Replies, and page 9, para. 22 to page 17,
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`para. 41 of the Nielson Declaration. The testimony is relevant to whether the
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`claimed “user,” “central-entity” and “external-entity” of the ‘432 Patent encompass
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`the “trusted-relationship” of the “individual,” “trusted-authenticator,” and
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`“business” in the ‘129 Patent.
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`
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`12. In Exhibit 2014, on page 105, line 9 to page 106, line 9, Dr. Nielson
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`testified (with emphasis added):
`
`Q. Do both the '432 patent and the '129 patent disclose at least some
`
`embodiments in which the SecureCode is alphanumeric?
`
`A. Certainly.
`
`Q. Do both the '432 patent and the '129 patent describe the
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`SecureCode as dynamic?
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`A. The '432 patent says it more explicitly, but the name in the '129
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`patent is dynamic key.
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`Q. Uh-huh.
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`A. So I would -- I would say that both are dynamic.
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`
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`12
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`CBM2016-00063
`CBM2016-00064
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`Q. Is the SecureCode disclosed in the '432 patent and the '129 patent
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`both time dependent?
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`A. The '432 patent says that it is time dependent, and the '129 patent
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`says that it may be time dependent.
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`Q. Is the SecureCode in the '432 patent and the '129 patent both
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`described as being nonpredictable?
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`A. So I'm not seeing the words in the '129 patent where I'm looking
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`right now, but I do believe it is nonpredictable as well. I'm not -- I'm
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`just not finding the words here though.
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`This testimony is relevant to the arguments on pages 19-20 of the Patent
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`Owner’s Responses, pages 22-23, para. 53 of the Weaver Declaration, pages 19-20
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`of the Petitioner’s Replies, and page 17, para. 42 to page 18, para. 45 of the
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`Nielson Declaration. The testimony is relevant to whether a POSITA would
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`reasonably conclude that the “dynamic key” disclosed in the ‘129 Patent provides
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`written description support for the “dynamic code” recited in the ‘432 Patent.
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`
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`13. In Exhibit 2014, on page 140, lines 7-22, Dr. Nielson testified (with
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`emphasis added):
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`Q. … So if you have an RPFI and you know from figure 8 that he's
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`communicating with the receiver via computer, and if you know the
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`RPFI is communicating with the D.I.D. operator via computer, would
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`
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`13
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`CBM2016-00063
`CBM2016-00064
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`
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`you assume there could be one or two computers that do the
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`communicating as an expert? …
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`A. Well, especially in this situation where like I said, there's
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`processing that happens in between.
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`…
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`A. This isn't a pass-through. This isn't a router. So depending on how
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`the RPFI wanted to process that data, depending on how they chose to
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`implement that would also have some indication of how they'd want
`
`their computer systems configured.
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`This testimony is relevant to the arguments on pages 5 and 22 of the Patent
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`Owner’s Responses, page 13, paras. 32-33 and page 28, para. 69 of the Weaver
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`Declaration, pages 34-35 of the Petitioner’s Replies, and page 27, para. 62 and
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`page 48, para. 103 of Exhibit 2014. The testimony is relevant to whether a
`
`POSITA would reasonably conclude that implementations of the “trusted
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`authenticator” in the ‘129 Patent and “DID Operator” in the ‘676 Patent provide
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`written description support for the claimed “central-entity” of the ‘432 Patent
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`including more than one “computer.”
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`Date: April 7, 2017
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`Respectfully submitted,
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`
` /Jae Youn Kim/
`Jae Youn Kim, Reg. No. 69,215
`
`Attorney for Patent Owner
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`14
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`CBM2016-00063
`CBM2016-00064
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on April 7,
`
`2017, a complete and entire copy of this PATENT OWNER MOTION FOR
`
`OBSERVATION REGARDING CROSS EXAMINATION OF REPLY WITNESS,
`
`with Exhibit 2014, Deposition Transcript of Seth Nielson, Ph.D., March 28, 2017,
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`was provided via electronic mail to the Petitioner’s counsel of record at the following
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`email addresses:
`
`W. Karl Renner, Lead Counsel
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`CBM36137-0007CP1@fr.com
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`
`
`Thomas Rozylowicz, First Back-up Counsel
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`PTABInbound@fr.com
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`
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`Timothy Riffe, Back-up Counsel
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`riffe@fr.com
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`
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`Respectfully submitted,
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`__/Jae Youn Kim/_____
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`15
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`Date: _April 7, 2017__
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