`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`United Services Automobile Association,
`Petitioner
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`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner
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`Case CBM2016-00063
`Patent 8,266,432
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`EXHIBIT LIST
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`U.S. Patent No. 8,266,432 to Asghari-Kamrani et al. (“the ‘432
`Patent” or “‘432”)
`Excerpts from the Prosecution History of the ‘432 Patent (“the
`Prosecution History”)
`Declaration of Dr. Seth Nielson re the ‘432 Patent (“Nielson”)
`Curriculum Vitae of Dr. Seth Nielson
`U.S. Patent No. 7,356,837 (“the ‘837 Patent” or “‘837”)
`Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and
`Technological Invention, 77 Fed. Reg. 157 (August14, 2012)
`A Guide to the Legislative History of the America Invents Act;
`Part II of II, 21 Fed. Cir. Bar J. No. 4
`RESERVED
`PNC Bank v. Secure Axcess, LLC, CBM2014-00100 Paper 10
`(entered September 9, 2014)
`RESERVED
`RESERVED
`RESERVED
`U.S. Patent Application Serial No. 12/210,926 (“the ‘926
`Appln.” or “Child”)
`U.S. Patent Application Serial No. 11/239,046 (“the ‘046
`Appln.” or “Parent”)
`U.S. Patent No. 7,444,676 (“the ‘676 Patent” or “’676”)
`U.S. Patent Application Serial No. 09/940,635 (“the ‘635
`Appln.” or “Grandparent”)
`U.S. Patent Application Publication No. 2003/0046591 (“the
`‘591 Pub.” or “Grandparent Pub.”)
`RESERVED
`In re Zletz, 893 F.2d 319 (Fed. Cir. 1989)
`
`i
`
`USAA-1001
`
`USAA-1002
`
`USAA-1003
`USAA-1004
`USAA-1005
`USAA-1006
`
`USAA-1007
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`USAA-1008
`USAA-1009
`
`USAA-1010
`USAA-1011
`USAA-1012
`USAA-1013
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`USAA-1014
`
`USAA-1015
`USAA-1016
`
`USAA-1017
`
`USAA-1018
`USAA-1019
`
`
`
`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
`
`
`USAA-1020
`USAA-1021
`
`USAA-1022
`USAA-1023
`
`USAA-1024
`USAA-1025
`
`USAA-1026
`
`In re Hogan, 559 F.2d 595; 194 USPQ 527 (CCPA 1997)
`Advanced Display Sys., Inc. v. Kent State Univ. 212 F.3d 1272
`(Fed. Cir. 2000)
`RESERVED
`Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365, 1376 (Fed. Cir.
`2006).
`Reiffin v. Microsoft Corp. 214 F.3d 1342, 1346 (Fed. Cir. 2000)
`Informatica Corp. v. Protegrity Corp., CBM2015-00010, Paper
`13
`United Services Automobile Association v. NADER ASGHARI-
`KAMRANI and KAMRAN ASGHARI-KAMRANI, IPR2015-
`01842, Paper 13
`USAA-1027 United Services Automobile Association v. NADER ASGHARI-
`KAMRANI and KAMRAN ASGHARI-KAMRANI, IPR2015-
`01842, Paper 7
`PCT Application Publication WO2003021837 A1
`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262
`(Fed. Cir. 2010)
`Accenture Global Services, GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013)
`Excerpts from the Prosecution History of the ‘676 Patent (“the
`Prosecution History of the ‘676 Patent”)
`RESERVED
`RESERVED
`U.S. Patent Application Publication No.: US 2007/0022301 Al
`(“Nicholson”)
`U.S. Patent No. 5,740,361 (“Brown”)
`RESERVED
`In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004)
`VTech Comm. Inc. v. Shperix Inc., IPR2014-01431, Paper 50
`Oracle v. Clouding IP, IPR2013-00088, Paper 13
`
`USAA-1035
`USAA-1036
`USAA-1037
`USAA-1038
`USAA-1039
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`USAA-1028
`USAA-1029
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`USAA-1030
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`USAA-1031
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`USAA-1032
`USAA-1033
`USAA-1034
`
`ii
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`
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`USAA-1040
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`USAA-1041
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`USAA-1042
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`USAA-1043
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`USAA-1044
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`USAA-1045
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`USAA-1046
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`USAA-1047
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`USAA-1048
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`USAA-1049
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`USAA-1050
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`USAA-1051
`USAA-1052
`USAA-1053
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`
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`USAA-1054
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`Office Action for U.S. Patent Application Serial No.
`11/333,400, mailed July 6, 2010
`Terminal Disclaimer filed December 12, 2011, in U.S. Patent
`Application Serial No. 11/333,400 to Obviate a Provisional
`Double Patenting Rejection over U.S. Patent Application Serial
`No. 12/210,926
`Response to Office Action filed in U.S. Patent Application
`Serial No. 11/333,400 on November 17, 2011
`Response to Office Action filed in U.S. Patent Application
`Serial No. 11/333,400 on March 5, 2012
`Response to Office Action filed in U.S. Patent Application
`Serial No. 12/210,926 on November 17, 2011
`Response to Office Action filed in U.S. Patent Application
`Serial No. 12/210,926 on March 1, 2012
`February 8, 2016, letter from Michael T. Zoppo, Fish &
`Richardson, to Lei Mei and Reece Nienstadt, Mei & Mark LLP,
`re Continuity Priority Problems
`Non-Publication Request filed by Patent Owner for U.S. Patent
`Application Serial No. 11/333,400 on January 18, 2006
`Declaration of Jeffrey K. Hollingsworth in Support of
`Plaintiff’s Rebuttal Brief on Claim Construction in Asghari-
`Kamrani et al. v. USAA, Civ. Action No. 2:15-cv-00478-RGD-
`LRL
`Plaintiff’s Rebuttal Brief on Claim Construction in Asghari-
`Kamrani et al. v. USAA in Asghari-Kamrani et al. v. USAA,
`Civ. Action No. 2:15-cv-00478-RGD-LRL
`Declaration of Dr. Seth Nielson Regarding the Claim to the
`Benefit of the Filing Date of U.S. Patent Application Serial No.
`11/333,400
`U.S. Patent Application Serial No. 11/333,400 (the ‘400 App.)
`RESERVED
`Excerpts from the Prosecution History of U.S. Patent No.
`8,281,129 (“the ’129 Patent” or “the ‘129”)
`Declaration of Dr. Seth Nielson in support of Petitioner’s Reply
`
`iii
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`
`
`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
`
`Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997)
`Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d
`1561 (Fed. Cir. 1997)
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`1375 (Fed. Cir. 2015)
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
`(Fed. Cir. 2008)
`Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 66
`USPQ2d 1429 (Fed. Cir. 2003)
`Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
`1991)
`US Endodontics, LLC v. Gold Standard Instruments, LLC,
`PGR2015-00019
`Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed.
`Cir. 2010) (en banc)
`In re Wands, 858 F.2d 731 (Fed. Cir. 1988)
`Parties’ Joint Statement on Claim Construction in Asghari-
`Kamrani et al. v. USAA, Civ. Action No. 2:15-cv-00478-RGD-
`LRL
`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir.
`2014), cert. denied, 135 S. Ct. 719 (2014).
`X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358,
`(Fed. Cir. 2014)
`SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir.
`2015)
`Deposition Transcript of Alfred Weaver, Ph.D.
`Deposition Transcript of Kim Steve Jae Youn
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`USAA-1055
`USAA-1056
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`USAA-1057
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`USAA-1058
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`USAA-1059
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`USAA-1060
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`USAA-1061
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`USAA-1062
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`USAA-1063
`USAA-1064
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`USAA-1065
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`USAA-1066
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`USAA-1067
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`USAA-1068
`USAA-1069
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`
`
`iv
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. ARGUMENTS ................................................................................................ 1
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`A. Patent Owner’s Exhibit 2008 Should be Excluded ................................. 2
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`B. Patent Owner’s Exhibit 2010, Section VII, Paragraphs 41 to 61, Should
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`be Excluded .................................................................................................. 12
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`III. CONCLUSION .............................................................................................. 15
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`v
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.64 and the Federal Rules of Evidence, USAA
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`I.
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`(“Petitioner”), moves to exclude Exhibit 2008 in its entirety and portions of Exhibit
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`2010 as submitted by NADER ASGHARI-KAMRANI and KAMRAN
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`ASGHARI-KAMRANI, (“Patent Owner” or “PO”) in connection with Patent
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`Owner’s Response in CBM2016-00063.
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`Petitioner moves to exclude Exhibit 2008 (Certificate of Correction) in its
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`entirety on grounds of prejudice, confusion, and waste of time (Rule 403),
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`foundation and personal knowledge (Rules 602 and 701), hearsay not subject to
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`any exceptions (Rule 801), lack of authorization, and relevancy (Rules 401 and
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`402). Petitioner further moves to exclude Section VII, paragraphs 41 to 61 of
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`Exhibit 2010 (Declaration of Alfred Weaver) on grounds of relevancy (Rules 401
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`and 402), reliability (Rule 702), and Daubert.
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`II. ARGUMENTS
`Petitioner objected to Exhibits 2008 and 2010 in its Notice of Objections
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`served on December 12, 2016, as well as during the deposition on February 10,
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`2017. PO relied on Exhibits 2008 and 2010 in its Response to Petition (Paper 22)
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`filed on December 5, 2016. For reasons detailed below, the objected-to portions of
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`Exhibits 2008 and 2010 should be excluded from this CBM proceeding as
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`inadmissible under the Federal Rules of Evidence.
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`1
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`A.
`Patent Owner’s Exhibit 2008 Should be Excluded
`Exhibit 2008 was served on the Petitioner on December 5, 2016, more than
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`two months after the Board had instituted the current CBM Review (CBMR).
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`To the extent that PO argues the entry to have been authorized, which it is
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`not,1 Petitioner moves to exclude Exhibit 2008 in its entirety under Rule 403, Rules
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`602/701, Rule 801, and Rules 401/402, as explained below.
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`1. Exhibit 2008 Should be Excluded as Unduly Prejudicial
`By adding the new chain of priority (i.e., the chain that includes US
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`Application No. 11/333,400, now Pat. No. 8,281,129) after the current CBM
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`proceeding has been instituted, the entry of this Exhibit 2008 creates a moving
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`target for the instant CBM proceeding, as illustrated by the change in priority date
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`described in more detail below, which is unduly prejudicial to the Petitioner, who
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`had incurred great expense in preparing the CBM Petition based on the original
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`priority chain. The Patent Owner, on the other hand, had ample notice of
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`amending its priority claim.2 This attempted entry of Exhibit 2008 would also
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`1 See Section II-A-5, below.
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`2 The prosecution record of the ‘432 Patent indicates that, on 12/12/2011, PO
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`terminally disclaimed Application No. 11/333,400 (the ‘400 application) to the
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`application for the ’432 Patent. Even if PO had no knowledge of its own ’400
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`application while filing for the ’432 Patent, the double-patenting rejection put the
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`2
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`
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`require additional fact finding by the Board who had already instituted the current
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`CBM proceeding, thereby leading to a slow-down that runs afoul of the
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`Congressional mandate for “speedy, and inexpensive resolution of a proceeding.”
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`37 C.F.R. § 42.1(b); § 42.5(a) and (b).
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`Further, the PTAB has found that PO’s attempts to amend priority ex post
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`facto are unfairly prejudicial to Petitioners, as such an endeavor exposes the
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`Petitioner to post-institution estoppel as well as being inefficient in accounting for
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`the tremendous efforts that the Petitioner and PTAB incur in taking a proceeding
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`through institution. See e.g., IPR 2015-00559, Paper 44 (denying PO’s motion for
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`Filing a Request for Certificate of Correction after institution on grounds of
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`prejudice). Accordingly, Exhibit 2008 should be excluded under Rule 403.
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`2. Exhibit 2008 Should be Excluded as Lacking Proper Foundation
`In denying PO’s first renewed petition and request for Certificate of
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`Correction, the Office noted that the statement of the delay period was
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`unsatisfactory:
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`PO on notice of the existence of both the ‘400 application and the potential
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`relationship to the application under examination. Yet, PO chose to file the
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`terminal disclaimer in the ’400 application without amending the priority statement
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`in the application for the ’432 Patent.
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`3
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`The petition states, “the entire delay between the date the benefit claim was
`due under pre-AIA 37 C.F.R. 1.78(a)(2)(ii) and the benefit claims [was] filed
`was unintentional.” As a result of the format of the petition and other facts,
`the extent to which the statement of delay is intended to apply to the third
`priority claim in the ADS in unclear. Ex. 2005 at 4. (emphasis added)
`
`The Office also stated that:
`
`A petition under 37 C.F.R. §§ 1.78(c) and 1.78(e) must include a statement
`that the entire delay between the date each of the claims was due under 37
`C.F.R. §§ 1.78(a)(4) or 1.78(d)(3) and the date each of the claims was filed
`was unintentional. Id. (emphasis added)
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`In other words, PO’s original statement regarding unintentional delay was
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`deficient because it only alluded to a delay between the date the benefit claim was
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`due and the time the benefit claim was filed while the rule requires the delay to be
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`between the date each benefit claim was due and the date each claim was filed.
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`See Ex. 2005 at 4.
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`
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`Moreover, PO’s current counsel is not privy to privileged communications
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`between PO and its previous law firms when its previous law firms were
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`prosecuting the application that led to the ‘432 Patent and the ‘400 application in
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`the new priority chain purported to be newly discovered. In particular, the Office
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`noted that three previous law firms were involved in the prosecution of the
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`applications. Ex. 2005 at 4-5. No foundation has been laid regarding the personal
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`knowledge of PO’s current counsel over what had transpired between PO and any
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`4
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`
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`of its previous law firms during prosecution of the application that led to the ‘432
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`Patent and the ‘400 application. This period includes the gap between each
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`priority claim for the ‘432 Patent’s application that was filed on September 15,
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`2008 and the purported discovery of the new priority chain on July 6, 2016, when
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`PO’s counsel was preparing Patent Owner’s Responses in the instant CBM
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`proceeding.
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`PO’s counsel conceded that he had done no investigation regarding the time
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`period for which the entire delay was alleged to be unintentional before filing the
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`first petition to accept an unintentionally delayed priority claim:
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`Q: …At the very beginning of this paragraph you make a statement that the
`entire delay between the date the benefit claim was due under Paragraph
`pre-AIA 37 C.F.R. 1.78(a)(2) and the date the benefit claim as filed was
`unintentional …did you conduct any investigation into the truth of this
`statement before signing this document?
`A: No.
`Ex. 1069 (Deposition Transcript of Steve Jae Youn Kim) at 155:16-156:11
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`Further, in response to the Office’s indication of the prior law firms’
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`involvement in the prosecution of the application, PO’s counsel purportedly
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`attempted to investigate. Nevertheless, PO’s counsel admitted that the
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`investigation was ineffective because it included questioning only individual prior
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`attorneys regarding the unintentional delay rather than the prior law firms, as
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`5
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`required by the Petition Decision. Further, one of those prior attorneys refused to
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`sign a declaration regarding the unintentional delay while another of the prior
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`attorneys would sign only an unsworn statement:
`
`Q: …Now, did you contact the MaxValue IPfirm as part of your
`investigation of unintentional delay?
`A: I think I didn't. I'm sorry, I don't think I did.
`…
`Q: …Did you contact the Weiss & Moy firm?
`A: No.
`Q Okay. You contacted Ms. Cao; is that
` correct?
`A Yes.
`…
`Q Did you speak -- when you conducted
` your investigation did you speak only with
` Veronica at the Weiss & Moy firm concerning this
` investigation of unintentional delay?
`A No.
`Q Okay. With whom else did you speak?
`A I think there was a secretary who
` forwarded my call to Veronica.
`Q Okay.
` Can you name anyone else?
`A No.
`Q Okay.
`
`6
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`Ex. 1069 (Deposition Transcript of Steve Jae Youn Kim) at 231:8 to 232:15
`…
`Q: …Did you speak to anyone at the Fortkort & Houston firm?
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`A: No, other than Mike.
`
`Q: Okay. Mike Fortkort?
`
`A: Right.
`…
`Q: …Did you confront Mr. Fortkort with the fact that he entered an
`appearance in both the '129 and '432 patents the same day?
`A: No, I didn't confront him.
`Q: Okay. Did you confront him with the fact that he was prosecuting both
`applications at the same time and held a combined interview with the
`examiner?
`A: No, I didn't.
`Q: Did you confront him with the fact that a nonpublication request was
`filed on the '129 patent?
`A: No, I didn't.
`Q: Okay. Did you confront him with the fact that a terminal disclaimer was
`filed in the '432 patent disclaiming any term that would exceed the '129
`patent?
`A: I think I didn't.
`Q: Did you confront him with the fact that a terminal disclaimer was filed
`in the '129 patent disclaiming any term that would exceed that of the '432
`patent?
`A: Maybe not.
`
`7
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`Ex. 1069 (Deposition Transcript of Steve Jae Youn Kim) at 232 line 16 to
`234 line 12
`Q:…And, in fact, Bijan never signed a declaration, correct?
`A: He signed a statement which is equivalent to, substantially equivalent to
`the declaration.
`Q: But a statement is not under oath, sir; isn't that correct?
`A: Yes, it is correct.
`…
`Q:…Now, I notice that Ms. Cao's declaration is unsigned; isn't that right?
`A: Yes.
`Q: Okay. Does there exist a signed declaration?
`A: No.
`Q: Okay, and why does there not exist a signed declaration?
`A: Because she didn't sign it.
`Ex. 1069 (Deposition Transcript of Steve Jae Youn Kim) at 225:10-226:12
`
`To the extent that PO’s counsel merely offered a conclusory assessment in
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`stating that “[t]he instant renewed petition corrects the deficiencies identified in the
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`prior decision” (Ex. 2006 at 1), such a statement cannot be relied upon in order to
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`satisfy the showings required under AIA 37 CFR §1.78(a)(2)(ii).
`
`Because Exhibit 2008 was issued in response to PO’s conclusory statement
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`without foundation, it should thus be treated as lacking foundation. Hence, it
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`should be excluded under Rules 602 and 701.
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`3. Exhibit 2008 Should be Excluded as Hearsay
`
`8
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`
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`In dismissing PO’s Petition to Accept an Unintentionally Delayed Benefit
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`Claim (filed on August 8, 2016), the Office recognized that at least one prosecuting
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`firm knew of both the instant application and the ‘400 application purported to be
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`newly discovered by PO’s counsel. See Exhibit 2005. The Office stated:
`
`the entire delay…was not unintentional if Law Firm 1, Law Firm 2, or Law
`Firm 3 made the choice not to file any of the claims at any point when
`handling prosecution of the application. At least one of the prior law firms
`was aware of the existence of both the instant application and Application
`No. 11/333,400. Specifically, a power of attorney to Law Firm 3 was filed
`on the same date in the instant application and in Application No.
`11/333,400. Exhibit 2005 at 4-5.
`
`In submitting the renewed Petition on August 30, 2016, PO did not even address,
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`among others, the above question. As this question goes to the heart of the
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`inexplicable delay of about eight years in amending the priority claim and yet the
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`issuing officer is not available for deposition or oral hearing, the Certificate of
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`Correction—offered for the truth of the statement regarding priority as Exhibit
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`2008—falls under hearsay without exceptions. Hence, it should be excluded.
`
`4. Exhibit 2008 Should be Excluded as Irrelevant
`In filing Exhibit 2008, PO essentially seeks a new chain of priority (i.e., the
`
`chain that includes US Application No. 11/333,400, now Pat. No. 8,281,129) in
`
`addition to the original priority chain (i.e., the chain that includes US Application
`
`9
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`
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`No. 11/239,046, now Pat. No. 7,444,676). In its request and petition for this
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`Certificate of Correction, PO stated: “The priority date of Aug. 29, 2001 for the
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`U.S. patent No. 8,266,432 remains unchanged.” Paper 8 at 3, lines 6-7 (emphasis
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`added).
`
`That statement is erroneous. PO stated, in the first paragraph of the
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`specification, a claim to the ‘432 patent as a continuation of the ‘046 app. (which
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`issued as the ‘676 patent) and also a continuation of the ‘635 app. (which issued as
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`the ‘837 patent). Ex. 1001 1:6-14. Because the ‘635 app. was not copending (i.e.,
`
`it had already issued as the ‘837 patent), the claim to priority of the ‘837 patent
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`was facially defective. “[T]o establish copendency throughout the entire chain of
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`prior applications,” MPEP 211.01(b) requires the Applicant to “identify all of the
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`prior applications and indicate the relationship (i.e., continuation, divisional, or
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`continuation-in-part) between each nonprovisional application [to the first filed
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`application.]”). Here, PO merely asserted that the ‘432 Patent is a continuation of
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`the ‘837 Patent without identifying any intervening prior application(s) or
`
`indicating relationship to the intervening prior application(s). Id. see also Ex.
`
`1002 at 676 (copy as filed). Hence, at the time of filing the petition for this
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`CBMR, the earliest possible priority date for the ‘432 patent was October 5, 2004,
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`the date of a provisional application to which the ‘676 patent claimed priority.
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`Accordingly, the priority date for the ‘432 patent would be changed by the newly
`
`10
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`
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`entered chain of priority, another reason exhibit 2008 is unduly prejudicial. Yet, if
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
`
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`the challenged claims are indeed supported by the original priority chain back to
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`2001, as contended by PO, this new priority chain from Exhibit 2008 would not
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`have any tendency to make the fact of priority date more or less probable than it
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`would be without Exhibit 2008.
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`Thus, because Exhibit 2008 does not tend to make any fact of priority date
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`more or less probable in this CBM proceeding, as admitted by PO, Exhibit 2008
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`should be excluded. See Rules 401 & 402.
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`5. Entry of Exhibit 2008 was unauthorized
`To the extent that PO argues that this filing was authorized by the Board,
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`Petitioner disputes that the entry was authorized.
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`In its Decision on the Motion to File a Request for a Certificate of
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`Correction on August 4, 2016, the Board stated:
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`FURTHER ORDERED that when a decision is rendered on any request for
`certificate of correction and petition filed by Patent Owner, Patent Owner
`shall file a copy of the document as an exhibit in the instant proceedings.
`Paper 10 at 9 (emphases added).
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`Pursuant to this order, PO had already filed: (i) Exhibit 2005 on August 24,
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`2016 (Decision to Dismiss Petition under 37 C.F.R. 1.78(c) and 1.78(e) to Request
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`a Certificate of Correction and to Accept an Unintentionally Delayed Benefit
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`Claim); and (ii) Exhibit 2006 on September 23, 2006 (Decision to Grant a
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`Renewed Petition under 37 C.F.R. 1.78(c) and 1.78(e) to Request a Certificate of
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`Correction and to Accept an Unintentionally Delayed Benefit Claim). Both
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`Exhibits 2005 and 2006 were issued by the Office of Petitions at the Patent and
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`Trademark Office.
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`Exhibit 2008 purports to be a Certificate of Correction issued by the Director
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`of the Patent and Trademark Office. Exhibit 2008 is not a decision rendered on
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`any request and petition filed by the PO, as stated by the Board’s Decision on
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`August 4, 2016. See Paper 10. The decisions rendered on the requests and
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`petitions filed by the PO had been entered as PO’s Exhibits 2005 and 2006. In
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`fact, the Board’s Decision on August 4, 2016 does not authorize the filing of any
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`Certificate of Correction. See Paper 10. Thus, Petitioner respectfully asserts that
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`the entry sought by PO for Exhibit 2008 was unauthorized, and hence improper.
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`B.
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`Patent Owner’s Exhibit 2010, Section VII, Paragraphs 41 to 61,
`Should be Excluded
`1.
`Legal Standard
`The admissibility of expert testimony in IPRs and CBMs is governed by the
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`Federal Rules of Evidence. See 37 C.F.R. § 42.62 (“[T]he Federal Rules of
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`Evidence shall apply to [an IPR or CBM] proceeding.”). According to Rule 402,
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`“[i]rrelevant evidence is not admissible.” Evidence is only relevant if it has a
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`“tendency to make a fact more or less probable than it would be without the
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`evidence” and “the fact is of consequence in determining the action.” Rule 401.
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`According to Rule 702, an expert witness must be “qualified as an expert by
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`knowledge, skill, experience, training, or education,” and the testimony must “help
`
`the trier of fact to understand the evidence or to determine a fact in issue.” In
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`addition, Rule 702 requires that the expert’s testimony be “based on sufficient facts
`
`or data” and “the product of reliable principles and methods”; and the expert must
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`“reliably appl[y] the principles and methods to the facts of the case.” Id.
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`In Daubert, the Supreme Court held that scientific expert testimony is
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`admissible only if it is both relevant and reliable. See Daubert v. Merrell Dow
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`Pharms., Inc., 509 U.S. 579, 597 (1993); see also Kumho Tire Co. v. Carmichael,
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`526 U.S. 137, 141 (1999) (stating that in Daubert “this Court focused upon the
`
`admissibility of scientific expert testimony. It pointed out that such testimony is
`
`admissible only if it is both relevant and reliable.”). In Kumho, the Supreme Court
`
`extended its holding in Daubert to apply “not only to testimony based on
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`‘scientific’ knowledge, but also to testimony based on ‘technical’ and ‘other
`
`specialized’ knowledge.” 526 U.S. at 141.
`
`In determining whether an expert’s testimony is admissible, the Board must
`
`make the following determinations: (1) the expert is qualified to provide the
`
`testimony; (2) the expert’s testimony is relevant; and (3) the expert’s testimony is
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`Attorney Docket No: 36137-0007CP2
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`based on sufficient facts or data and is reliable. If any of these requirements is not
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`met, the expert’s proposed evidence and opinions should be excluded under Rule
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`702, Rule 402, and the Supreme Court’s holdings in Daubert and Kumho.
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`2. Portions of Exhibit 2010 Should be Excluded as Irrelevant
`This portion solely discusses the ‘400 application, which issued as the ‘129
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`patent. This ‘400 application is included in the new priority chain from the
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`purported Certificate of Correction in Exhibit 2008. If the challenged claims are
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`indeed supported by the original priority chain, as contended by the Patent Owner,
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`this portion of Exhibit 2010 would not have any tendency to make the fact of
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`priority date more or less probable than it would be without this portion of Exhibit
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`2010 for the same reasons as stated above. Accordingly, section VII, paragraphs
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`41 to 61 of Exhibit 2010 should be excluded under Rules 401 and 402.
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`3. Portions of Exhibit 2010 Should be Excluded as Unreliable
`Paragraphs 41 to 61 purport to discuss support for the claims of the ‘432
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`Patent from the ‘400 application, which issued as the ‘129 patent. To claim benefit
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`of priority, each and every claim element of the ‘432 Patent must be supported by
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`the ‘400 application. See MPEP §2163(II)(A)(3)(b) (“[t]o comply with the written
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`description requirement…or to be entitled to an earlier priority date…under 35
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`U.S.C.…120,…each claim limitation must be expressly, implicitly, or inherently
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`supported in the originally filed disclosure.”)(emphasis added). However, at
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`deposition, Dr. Weaver conceded that he did not analyze the support from the ‘400
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`application for each and every claim element of the ‘432 Patent.
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`Q: You agree with me you did not analyze each and every limitation recited
`in the claims of the '432 patent in paragraphs 42 through 53, correct?
`
`A: That's correct.
`
`Ex. 1068 at 115:3-6
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`As such, Dr. Weaver’s testimony would be neither “based on sufficient facts
`
`or data” nor “the product of reliable principles and methods.” Accordingly, section
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`VII, paragraphs 41 to 61 of Exhibit 2010 should be excluded under Rule 702.
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`4. Portions of Exhibit 2010 Should be Excluded under Daubert and
`Kumbo
`In Daubert and its progeny, expert testimony can only be admitted if it is
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`both relevant and reliable. That is not the case here. As discussed above,
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`paragraphs 41 to 61 of Exhibit 2010 are neither relevant nor reliable. Accordingly,
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`this portion of Exhibit 2010 should be excluded.
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`III. CONCLUSION
`For the foregoing reasons, Petitioner requests that the evidence discussed
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`above be excluded.
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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`Respectfully submitted,
`
`
`
`
`
`
` /Thomas A. Rozylowicz/
`
`Thomas A. Rozylowicz
`Reg. No. 50,620
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
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` 4/10/2017
`Date:
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`Case CBM2016-00064
`Attorney Docket No: 36137-0007CP2
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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 10,
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`2017, a complete and entire copy of this Petitioner’s Motion to Exclude and its
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`exhibit were provided via email to the Petitioner by serving the correspondence
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`email address 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
`
`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.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
`
`
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