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,
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`Petitioner
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`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
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`Patent Owners
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`U.S. PATENT NO. 8,266,432
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`CBM2016-00063 and CBM2016-00064
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`PATENT OWNER’S RESPONSE TO PETITIONER’ MOTION FOR
`OBSERVATION REGARDING CROSS EXAMINATION OF REPLY
`WITNESS DR. SETH NIELSON
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED SERVICES AUTOMOBILE ASSOCIATION,
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`Petitioner
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`v.
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`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`
`Patent Owners
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`
`
`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’S RESPONSE TO PETITIONER’ MOTION FOR
`OBSERVATION REGARDING CROSS EXAMINATION OF REPLY
`WITNESS DR. SETH NIELSON
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`Patent Owner (“PO”) submits the following response to Petitioner’s Motion
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`for Observations regarding the March 28, 2017, cross-examination testimony of
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`Dr. Seth Nielson (paper 33).
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`I. Petitioner’s Motion for Observation was not Expressly Authorized.
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`The PTAB rules state (with emphasis added):
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`The party taking the cross examination files the observations. The
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`opposing party may file a response to an observation. The opposing
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`party may not file observations without express prior authorization.
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`(Fed. Reg. vol. 66, no. 155, p. 48768.)
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`Pursuant to the above rule, the PO took the cross examination of Dr. Nielson
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`and filed observations on April 7, 2017 (paper 31). Thus, the Petitioner was
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`permitted under the Scheduling Order to file a response to PO’s observations by
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`April 24, 2017. However, the Petitioner also filed a Motion for Observations on
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`April 10, 2017 (paper 33) without obtaining express prior authorization.
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`Accordingly, the Board should not enter the Petitioner’s observation (paper 33). If
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`such paper were entered in error, PO respectfully requests that the Petitioner’s
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`observation (paper 33) be expunged.
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` 2
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`II. Response to Petitioner’s Observation 1.
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`Petitioner’s Observation 1 attempts to cure Dr. Neilson’s testimony that he
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`was unaware that PO filed two different PO Responses and the commensurate fact
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`that Petitioner’s Counsel failed to make Dr. Neilson aware of both papers. As
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`evident later in Dr. Neilson’s deposition, Petitioner’s counsel also did not make Dr.
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`Neilson aware of U.S. Patent No. 7,356,837 (exhibit 1005), the grandparent of the
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`U.S. Patent No. 8,266,432 (“the ‘432 Patent”) when considering the knowledge
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`possessed by a person of ordinary skill in the art (“POSITA”) at the time of the
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`invention. (See, e.g., exhibit 2014, page 40, lines 11-18, and page 56, line 17 to
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`page 57, line 8.) These facts are relevant to the foundation and credibility of Dr.
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`Nielson’s analysis as to what a POSITA would reasonably conclude regarding
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`written description support for the claims of the ‘432 Patent at the time of the
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`invention.
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` III. Response to Petitioner’s Observation 3.
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`Petitioner’s Observation 3 attempts to cure Dr. Neilson’s testimony that he
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`did not consider the disclosure of the ‘837 Patent as being within the presumed
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`knowledge of a POSITA when analyzing whether the application for U.S. Patent
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`No. 8,281,129 (“the ‘129 patent, exhibit 2004) provides written description support
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`for the terms recited in the ‘432 patent. (See, e.g., exhibit 2014, page 40, lines 11-
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`18, and page 56, line 17 to page 57, line 8.) Instead, as established later in the
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` 3
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`deposition, Dr. Nielson’s Declaration only considered the terminology of the ‘432
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`Patent and the ‘129 Patent in a vacuum and determined whether or not some words
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`were broader than another. (See, e.g., exhibit 2014, page 65, line 3 to page 67.)
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`These facts are relevant to the foundation and credibility of Dr. Nielson’s analysis
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`regarding written description support for the claims of the ‘432 Patent in the ‘129
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`Patent.
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`IV. Response to Petitioner’s Observations 4 and 5.
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`Petitioner’s Observations 4 and 5 are directed to whether a POSITA would
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`conclude that the “individual” disclosed in the ‘129 patent requires a “trusted
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`relationship” that affects whether the “individual” provides written description
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`support for the “user” claimed in the ‘432 patent. However, Dr. Neilson’s later
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`testimony in the deposition expressly conceded that the “user” recited in the ‘432
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`Patent is disclosed as having a trusted relationship. (See, e.g., exhibit 2014, on
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`page 95, line 15 to page 96, line 6.)
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`V. Response to Petitioner’s Observation 6.
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`Petitioner’s Observation 6 is directed to whether a POSITA would conclude
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`that the “dynamic key” disclosed in the ‘129 Patent provides written description
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`support for the claimed “dynamic code” in the ‘432 Patent. On page 105, line 9 to
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`page 106, line 9, of Exhibit 2014 Dr. Nielson testified that the ‘129 Patent
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` 4
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`discloses each of the elements of the claimed “dynamic code” in the 432 Patent, as
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`construed by the Board. (See Exhibit. 2010, p. 17, para. 40.)
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`
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`Date: April 24, 2017
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`Respectfully submitted,
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` /Steven L Ashburn/
`Steven L. Ashburn
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`Reg. No. 56,636
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`Attorney for Patent Owner
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` 5
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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
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`24, 2017, a complete and entire copy of this Patent Owner’s Response to
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`Petitioner’ Motion for Observation Regarding Cross Examination of Reply
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`Witness Dr. Seth Nielson was provided via electronic mail to the Petitioner’s
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`counsel of record at the following email addresses:
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`W. Karl Renner, Lead Counsel
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`CBM36137-0007CP1@fr.com
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`CBM36137-0007CP2@fr.com
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`Thomas Rozylowicz, First Back-up Counsel
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`PTABInbound@fr.com
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`Timothy Riffe, Back-up Counsel
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`riffe@fr.com
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`Date: April 24, 2017
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`Respectfully submitted,
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`/Steven L Ashburn/
`Steven L. Ashburn
`MH2 TECHNOLOGY LAW GROUP
`LLP
`1951 Kidwell Drive
`Suite 550
`Tysons Corner, VA 22182
`Phone: (703) 917-0000 x138
`Facsimile: (703) 997-4905
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` 6
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