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 Owner
`______________________
`
`Case CBM2016-00063
`Patent 8,266,432
`______________________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION REGARDING CROSS EXAMINATION OF REPLY
`WITNESS DR. SETH NIELSON
`
`
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`United Services Automobile Association,
`Petitioner,
`v.
`
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner
`______________________
`
`Case CBM2016-00063
`Patent 8,266,432
`______________________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATION REGARDING CROSS EXAMINATION OF REPLY
`WITNESS DR. SETH NIELSON
`
`
`
`
`
`
`CBM2016-00063
`Patent 8,266,432
`
`
`
`Petitioner submits the following response to Patent Owner’s (“PO”) observa-
`
`tions regarding the March 28, 2017, cross-examination testimony of Petitioner’s
`
`Reply declarant, Dr. Seth Nielson.
`
`I. RESPONSE TO OBSERVATION 1
`
`
`
`PO’s Observation, with emphasis, mischaracterizes Dr. Nielson’s testimony
`
`and the positions outlined in Dr. Nielson’s Declaration, and omits relevant testi-
`
`mony. As made clear later in the deposition testimony, Patent Owner’s Responses
`
`were substantively identical, and Dr. Nielson considered the entirety of Patent
`
`Owner’s Responses and Dr. Weaver’s Declaration in forming his opinions. See,
`
`e.g., Ex. 2014, 146:3-152:6; USAA-1054, ¶¶ 4-5. Thus, Dr. Nielson’s analysis
`
`was properly focused on responding to the technical aspects of Patent Owner’s Re-
`
`sponses and Dr. Weaver’s Declaration. Contrary to PO’s contentions, the cited
`
`portion of Dr. Nielson’s testimony is not relevant to whether the specification of
`
`the ‘129 patent or the specification of the ‘676 patent describe the subject matter
`
`claimed in the ‘432 patent in sufficient detail that one skilled in the art can reasona-
`
`bly conclude that the inventor had possession of, as of the earliest filing date of the
`
`application relied on, the specific claimed subject matter in view of the claim con-
`
`structions, arguments, or mappings of claim features asserted in the PO’s Re-
`
`sponses.
`
`
`
`1
`
`
`
`CBM2016-00063
`Patent 8,266,432
`
`II. RESPONSE TO OBSERVATION 2
`
`
`
`Similar to Observation 1, PO’s Observation, with emphasis, mischaracter-
`
`izes Dr. Nielson’s testimony and the positions outlined in Dr. Nielson’s Declara-
`
`tion, and omits relevant testimony. As made clear later in the deposition testi-
`
`mony, Patent Owner’s Responses were substantively identical, and Dr. Nielson
`
`considered the entirety of Patent Owner’s Responses and Dr. Weaver’s Declaration
`
`in forming his opinions. See, e.g., Ex. 2014, 146:3-152:6; USAA 1054, ¶¶ 4-5.
`
`Thus, Dr. Nielson’s analysis was properly focused on responding to the technical
`
`aspects of Patent Owner’s Responses and Dr. Weaver’s Declaration. The cited
`
`portion of Dr. Nielson’s testimony is completely unrelated and irrelevant to the
`
`credibility of Dr. Nielson’s Declaration, in which it clearly sets forth that he con-
`
`sidered the technical issues set forth in PO’s Responses in each matter, as well as
`
`the opinions set forth in Dr. Weaver’s Declaration. See, USAA 1054, ¶¶ 4-5.
`
`III. RESPONSE TO OBSERVATION 3
`
`
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`PO’s Observation, with emphasis, is immaterial to any potential conclusions
`
`regarding what a person of ordinary skill in the art would reasonably conclude be-
`
`cause Dr. Nielson merely stated that he did not remember, in response to the ques-
`
`tion. Again, as made clear later in the deposition testimony and in Dr. Nielson’s
`
`Declaration, Dr. Nielson considered the entirety of Patent Owner’s Responses,
`
`
`
`2
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`
`
`CBM2016-00063
`Patent 8,266,432
`
`which includes Appendices 1 and 2, and Dr. Weaver’s Declaration in forming his
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`opinions. See, e.g., Ex. 2014, 146:3-152:6; USAA 1054, ¶¶ 4-5.
`
`IV. RESPONSE TO OBSERVATION 4
`
`
`
`PO’s Observation is irrelevant to the technical analysis and conclusions that
`
`Dr. Nielson provided in his Declaration. Dr. Nielson is neither a patent attorney,
`
`nor an expert in patent law. His legal understanding of the term “co-pending” is
`
`irrelevant to his technical opinions and whether the application that issued as the
`
`‘837 patent was not actually co-pending with the application that issued as the ‘432
`
`patent, so as to not be entitled to claim the benefit of priority pursuant to 35 U.S.C.
`
`§ 120.
`
`V. RESPONSE TO OBSERVATION 5
`
`
`
`PO’s Observation is irrelevant to the technical analysis and conclusions that
`
`Dr. Nielson provided in his Declaration because Dr. Nielson merely stated that he
`
`had not done the analysis as to whether the ‘837 patent provides sufficient disclo-
`
`sure supporting each and every claim limitation of the ‘432 patent. Thus, contrary
`
`to PO’s contention, the cited portion of Dr. Nielson testimony is entirely irrelevant
`
`to whether the application that issued as the ‘837 patent provides written descrip-
`
`tion support for the limitations of the ‘432 patent’s claims. Moreover, PO’s Obser-
`
`vation mischaracterizes the legal requirement as “whether the inventors had pos-
`
`session of the subject matter disclosed in the ‘432 patent when it was filed,” rather
`
`
`
`3
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`
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`CBM2016-00063
`Patent 8,266,432
`
`than the subject matter claimed in the ‘432 patent at the time of the earliest date to
`
`which priority is claimed.
`
`VI. RESPONSE TO OBSERVATION 6
`
`
`
`PO’s Observation, with emphasis, mischaracterizes Dr. Nielson’s testimony
`
`and is irrelevant to the technical analysis and conclusions that Dr. Nielson provided
`
`in his Declaration. Dr. Nielson is neither a patent attorney, nor an expert in patent
`
`law. As he states in his testimony, Dr. Nielson’s technical analysis and conclu-
`
`sions based on that analysis use “a set of foundation principles,” and in particular,
`
`use “legal principles that have been provided.” Ex. 2014, 56:17-57:8. The cited
`
`portion of Dr. Nielson’s testimony is immaterial to any potential conclusions re-
`
`garding whether the ‘837 patent fails to provide supporting disclosure that estab-
`
`lishes the PO had actual possession of the subject matter claimed in the ‘432 Patent
`
`at the time of the earliest date to which priority is claimed and what a person of or-
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`dinary skill in the art would reasonably conclude because Dr. Nielson merely
`
`stated that he is not a lawyer and he is not making legal opinions, but rather has
`
`conducted a technical analysis based on provided legal principles. Id.
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`VII. RESPONSE TO OBSERVATION 7
`
`
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`PO’s Observation, with emphasis, mischaracterizes Dr. Nielson’s testimony
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`and is irrelevant to the technical analysis and conclusions that Dr. Nielson provided
`
`in his Declaration. Specifically, the hypothetical proposed in the question does not
`
`
`
`4
`
`
`
`CBM2016-00063
`Patent 8,266,432
`
`apply to the facts of the present case because disclosure of a steel rivet and disclo-
`
`sure of a metal rivet are not analogous to any disclosure or claim limitation in-
`
`volved in the present case. Rather, the rule is related to how a narrower scope of
`
`disclosure in an alleged parent application does not provide sufficient written sup-
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`port for the full scope of a claim that includes a broader recitation. Thus, contrary
`
`to PO’s contentions, the cited portion of Dr. Nielson’s testimony is irrelevant to the
`
`broadest reasonable interpretation standard for claim construction that Dr. Nielson
`
`properly applied in his analysis, and whether the written description requirement is
`
`satisfied by any of the alleged priority applications.
`
`VIII. RESPONSE TO OBSERVATION 8
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`
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`PO’s observation is misleading and mischaracterizes Dr. Nielson’s testi-
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`mony and Dr. Nielson’s Declaration. PO’s observation, with emphasis, is improp-
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`erly directed to attorney argument embedded in a question that was objected to for
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`form, badgering, compound, and asked and answered, and not to Dr. Nielson’s ac-
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`tual testimony. Ex. 2014, 66:6-67:4. Dr. Nielson’s testimony merely indicates that
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`the opinions he provided are based on legal principles given to him, but the cited
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`portion of testimony is irrelevant to Dr. Nielson’s actual technical analysis. Fur-
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`ther, the portion of Dr. Nielson’s declaration being referred to here is rebutting the
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`opinion of Dr. Weaver that the disclosed “individual” in the ‘129 patent provides
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`
`
`5
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`
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`CBM2016-00063
`Patent 8,266,432
`
`sufficient supporting disclosure for the claimed “user” in the ‘432 patent. Dr. Niel-
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`son’s Declaration provides a full analysis in rebuttal (see USAA-1054, ¶¶ 23-26,
`
`Ex. 2014, 74:19-75:10), and additionally provides technical analysis with respect
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`to the specific limitations of the claims in the ‘432 patent, concluding that the ‘129
`
`patent does not provide sufficient written description supporting those specific lim-
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`itations. See USAA-1054, Section V. ¶¶ 46-68. Thus, Dr. Nielson’s testimony
`
`that his opinions are based on legal principles given to him is irrelevant how a per-
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`son of ordinary skill in the art would interpret the claim terms of the ‘432 patent in
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`concluding that the applicant failed to provide sufficient written description sup-
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`port to establish possession of the claimed subject matter at the time of the earliest
`
`date to which priority is claimed.
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`IX. RESPONSE TO OBSERVATION 9
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`
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`PO’s Observation is irrelevant to the technical analysis and conclusions that
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`Dr. Nielson provided in his Declaration because Dr. Nielson previously stated that
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`he had not done the analysis as to whether the ‘837 patent provides sufficient dis-
`
`closure supporting each and every claim limitation of the ‘432 patent. See Obser-
`
`vation 5; Ex. 2014, 40:11-18. In fact, Dr. Nielson’s testimony only acknowledges
`
`that certain terms in the ‘837 patent are not broader than certain terms in the ‘432
`
`patent, but is not directed to the actual claim limitations of the ‘432 patent. Thus,
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`contrary to PO’s contention, the cited portion of Dr. Nielson testimony is entirely
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`
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`6
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`CBM2016-00063
`Patent 8,266,432
`
`irrelevant to whether the application that issued as the ‘837 patent provides written
`
`description support for the limitations of the ‘432 patent’s claims. In fact, Dr.
`
`Nielson testified to the exact opposite, stating that based on his understanding of
`
`the legal principles, the '837 patent is not a single parent application whose original
`
`disclosure supports the '432 patent. Ex. 2014, 38:1-12.
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`X. RESPONSE TO OBSERVATION 10
`
`
`
`PO’s Observation mischaracterizes Dr. Nielson’s testimony through exclu-
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`sion of additional testimony explaining his quoted answer. In particular, Dr. Niel-
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`son explains the following with respect to the “individual” disclosed in the ‘129
`
`patent failing to provide written description support for the claimed “user” in the
`
`‘432 patent:
`
`I'm saying that to be an individual in this patent, they have to have estab-
`
`lished a trusted relationship with a trusted-authenticator (Ex. 2014,
`
`72:18-21) … So to the extent the individual can be a person or business
`
`consuming goods or services, that doesn't change the fact that the indi-
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`vidual is constrained to have a trusted relationship with a trusted-authen-
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`ticator (Id., 73:16-20) … Somebody of skill in the art looking at the '129
`
`patent is not going to reasonably conclude that that describes the user
`
`who does not have to have that trusted relationship. (Id., 75:7-10)
`
`
`
`7
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`
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`CBM2016-00063
`Patent 8,266,432
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`Thus, Dr. Nielson’s testimony, in its proper full context, explains one exam-
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`ple reason why, contrary to Dr. Weaver’s contentions, the “individual” dis-
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`closed in the ‘129 patent fails to provide written description support for the
`
`claimed “user” in the ‘432 patent.
`
`XI. RESPONSE TO OBSERVATION 11
`
`
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`PO’s Observation mischaracterizes Dr. Nielson’s testimony by ex-
`
`cluding the relevant context for the so-called “overlapping embodiments.”
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`In particular, just prior to the cited portion of testimony, Dr. Nielson testified
`
`that “as I've said in my report, there are definitely overlapping embodi-
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`ments….I've never suggested that the user's bank is excluded from being a
`
`central-entity.” Ex. 2014, 95:11-14. Additionally, Dr. Nielson’s testimony
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`clarifies that a POSITA would not reasonably conclude that the '432 patent
`
`involves a trust relationship between the user and the central-entity. Ex.
`
`2014, 97:21-98:3. Thus, the cited portion of Dr. Nielson’s testimony is not
`
`relevant to whether the claimed “user,” “central-entity” and “external-entity”
`
`of the ‘432 Patent encompass the “trusted-relationship” of the “individual,”
`
`“trusted-authenticator,” and “business” in the ‘129 Patent because the cited
`
`portion of testimony only discusses the lack of a required trusted relationship
`
`between the “user” and the “central-entity” of the ‘432 patent.
`
`
`
`8
`
`
`
`CBM2016-00063
`Patent 8,266,432
`
`XII. RESPONSE TO OBSERVATION 12
`
`
`
`PO’s Observation, with emphasis, is immaterial to any potential con-
`
`clusions regarding what a person of ordinary skill in the art would reasona-
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`bly conclude because Dr. Nielson merely testifies to what is disclosed in the
`
`‘432 patent and in the ‘129 patent, not what is claimed in the ‘432 patent.
`
`Properly construed, as explicitly defined by PO in the ‘432 patent specifica-
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`tion and through claim differentiation, the claimed “dynamic code” is “any
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`dynamic, non-predictable and time dependent alphanumeric code, secret
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`code, PIN or other code…”, i.e., including non-alphanumeric codes. Thus,
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`Dr. Nielson’s testimony is correct in that the ‘432 patent and the ‘129 patent
`
`disclose alphanumeric codes, but the full scope of the claimed “dynamic
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`code” includes non-alphanumeric codes, and the ‘129 patent only discloses
`
`the “dynamic key” as alphanumeric, entirely lacking any disclosure of non-
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`alphanumeric codes. See Ex. 2014, 105:2-8, 106:10-19, 107:1-6. Therefore,
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`the cited portion of Dr. Nielson’s testimony is irrelevant to whether a person
`
`of ordinary skill in the art would reasonably conclude that the “dynamic
`
`key” disclosed in the ‘129 patent only as being alphanumeric provides writ-
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`ten description support for the “dynamic code,” as claimed in the ‘432 patent
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`to include non-alphanumeric codes.
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`
`
`9
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`
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`CBM2016-00063
`Patent 8,266,432
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`XIII. RESPONSE TO OBSERVATION 13
`
`
`
`PO’s Observation is wholly misleading and mischaracterizes Dr. Nielson’s
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`testimony. The cited portion of Dr. Nielson’s testimony is directed to the RPFI of
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`the ‘676 patent and how the RPFI is processing data and performing operations be-
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`tween receiving information from the Receiver and communicating information
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`with the DID Operator. See, e.g., Ex. 2014, 141:12-142:2. That testimony is irrel-
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`evant to anything concerning the “trusted authenticator” in the ‘129 patent, the
`
`“DID Operator” in the ‘676 patent, and the claimed “central-entity” of the ‘432 pa-
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`tent and whether they include more than one computer because Dr. Nielson’s testi-
`
`mony is only directed to the “RPFI” of the ‘676 patent.
`
`
`
`
`
`Respectfully submitted,
`
`/Thomas A. Rozylowicz/
`
`
`
`Thomas A. Rozylowicz,
`Reg. No. 50,620
`W. Karl Renner,
`Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
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` 4/24/2017
`Dated:
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`(Control No. CBM2016-00063)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on April 24,
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`2017, a complete and entire copy of this Petitioner’s Response to Patent Owner’s
`
`Motion for Observation Regarding Cross Examination of Reply Witness Dr. Seth
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`Nielson was provided via email to the Patent Owner by serving the correspondence
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`email addresses of record as follows:
`
`Jae Youn Kim
`Harold L. Novick
`Sang Ho Lee
`Novick, Kim & Lee, PLLC
`1604 Spring Hill Rd. Suite 320
`Vienna, VA 22182
`
`Steven L. Ashburn
`Timothy M. Hsieh
`MH2 Technology Law Group, LLP
`1951 Kidwell Drive, Suite 550
`Tysons Corner, VA 22182
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`Email: skim@nkllaw.com
`Email: hnovick@nkllaw.com
`Email: slee@nkllaw.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`
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