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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`Case CBM2016-00064
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`PATENT OWNER’S EVIDENTIARY OBJECTIONS
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`UNDER 37 C.F.R. § 42.64(b)
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`Mail Stop: PATENT BOARD
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`Patent Trial and Appeal Board
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`United States Patent and Trademark Office
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`UNITED SERVICES AUTOMOBILE ASSOCIATION,
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`Petitioner
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`
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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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`Case CBM2016-00064
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`
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`PATENT OWNER’S EVIDENTIARY OBJECTIONS
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`UNDER 37 C.F.R. § 42.64(b)
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`Mail Stop: PATENT BOARD
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`Patent Trial and Appeal Board
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`United States Patent and Trademark Office
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`1
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`Pursuant to 37 C.F.R. § 42.64(b), Patent Owner hereby objects as follows to
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`¶¶ 27-115 of Exhibit 1003, and ¶¶ 27-35 of Exhibit 1050 under Fed. R. Evid.
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`701/702/703. In particular, Exhibits 1003 and 1050 include opinions that are not
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`admissible under FRE 701, 702, or 703, or Daubert v. Merrell Dow Pharms., Inc.,
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`509 U.S. 579 (1993).
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`I.
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`Person of Ordinary Skill in the Art
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`Mr. Nielson’s definition of one of ordinary skill in the art is legally
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`incorrect.
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`35 U.S.C. 103(a) (pre-AIA) states:
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`(a) A patent may not be obtained though the invention is not identically
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`disclosed or described as set forth in section 102, if the differences between
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`the subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention
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`was made to a person having ordinary skill in the art to which said subject
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`matter pertains. (emphasis added).
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`Mr. Nielson states: “I believe that a person having ordinary skill in the art at
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`the effective filing date of the ‘432 Patent (“PHOSITA”) would have had a
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`Bachelor of Science Degree in Electrical Engineering, Computer Engineering, or
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`Computer Science with related work experience.” Ex. 1003 at ¶ 26; Ex. 1050 at ¶
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`26.
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`2
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`Since the pre-AIA 35 U.S.C. 103(a) applies to the ‘432 patent, the
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`PHOSITA must have been defined at the time the invention was made. It is
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`undisputable that the claimed invention of the ‘432 patent was made prior to
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`August 29, 2001 because the disclosure of the ’926 application (the ‘432 patent) is
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`identical to that of the ‘635 application (the ‘837 patent). Further, he admits that “I
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`have applied a date of September 15, 2008, as the date of invention in my
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`obviousness analyses.” Ex. 1003 at ¶ 118.
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`Here, Mr. Nielson’s definition of a PHOSITA is legally defective, and his
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`application of September 15, 2008 as the date of invention of the ‘432 patent is a
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`critical error of fact and law, and therefore his testimony on the obviousness of the
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`claims of the ‘432 patent as presented in Exhibit 1003 should be excluded.
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`Further, his testimony in ¶¶ 27-35 of Exhibit 1050 should be excluded.
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`Further, he states that “I have been informed that a patent claim is invalid as
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`anticipated … if each and every element … and that the single reference enables
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`the claimed invention to a PHOSITA.” Ex. 1003 at ¶ 116.
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`Since he also analyzed the anticipation rejection based on the incorrect
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`definition of PHOSITA, his testimony on the anticipation of the claims of the ‘432
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`patent as presented in Exhibit 1003 should be excluded.
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`3
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`Finally, Mr. Nielson failed to prove that he qualifies as a PHOSITA. He
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`states that “I received a B.S. in Computer Science in 2000.” Id. at ¶ 2. By his own
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`definition, a PHOSITA would have had a Bachelor of Science Degree in Computer
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`Science with related work experience. He failed to show that he had any related
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`work experience prior to September 15, 2001, although he received a B.S. in
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`Computer Science in 2000, and he stated that he worked as a software engineer at
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`Metrowerks (formerly Lineo, Inc.) from 2001 through 2003. See Id. at ¶ 7. It was
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`not specified when, after or before September 15, 2001, he started to work at
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`Metrowerks, and moreover his work in 2001 at Metrowerks was not related to the
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`authentication technology of the Internet users as claimed in the ‘432 patent. Thus,
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`he failed to sufficiently show that he qualifies as a PHOSITA.
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`For the foregoing reasons, his testimony in ¶¶ 27-115 of Exhibit 1003 and ¶¶
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`¶¶ 27-35 of Exhibit 1050 should be excluded.
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`II. Discussion of Priority Application
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`The test for determining compliance with the written description
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`requirement is whether the original disclosure of the prior-filed application
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`reasonably would have conveyed to a person having ordinary skill in the art that
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`the inventor had possession of the claimed subject matter at the time of the prior-
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`filed application’s filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
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`4
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`1336, 1351 (Fed. Cir. 2010) (en banc); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
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`1563-64 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
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`Mr. Nielson states: “Counsel has advised me that, for this claim of priority to
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`be proper, the specification of the ‘676 Patent must support the ‘432 Patent’s
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`claims.” Ex. 1003 at ¶ 37. In paragraphs 37-64, he consistently compared the
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`specification of the ‘676 patent with the claims of the ‘432 patent.
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`Mr. Nielson’s analysis on the priority date of the ‘432 patent was based on
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`this incorrect legal standard, and therefore it is submitted that his testimony in ¶¶
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`37-64 should be excluded.
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`III. CONCLUSION
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`Accordingly, Mr. Nielson’s testimony in ¶¶ 27-115 of Exhibit 1003 and ¶¶
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`27-35 of Exhibit 1050 should be excluded as inadmissible opinions of a non-expert
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`in the pertinent field.
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`Respectfully submitted,
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` /Jae Youn Kim /
`Jae Youn Kim
`Reg. No. 69,215
`Lead Counsel for Petitioner
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`Harold L. Novick
`Reg. No. 26,011
`Back-up Counsel for Petitioner
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`Sang Ho Lee
`Reg. No. 69,723
`Back-up Counsel for Petitioner
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`October 3, 2016
`NOVICK, KIM & LEE, PLLC
`3251 Old Lee Highway Suite 404
`Fairfax, VA 22030
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`Tel: 1-703-745-5495
`Fax: 1-703-563-9748
`skim@nkllaw.com;
`hnovick@nkllaw.com;
`slee@nkllaw.com
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §42.6(e)(1), this is to certify that I caused to be served
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`a copy of the foregoing “PATENT OWNER’S EVIDENTIARY OBJECTIONS
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`UNDER 37 C.F.R. § 42.64(b)” via electronic mail on October 3, 2016 to the
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`Petitioner’s counsel of record at the following email addresses:
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`W. Karl Renner, Lead Counsel
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`Thomas Rozylowicz, Back-up Counsel
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`CBM36137-0007CP2@fr.com
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`PTABInbound@fr.com
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`Respectfully submitted,
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`__/Jae Youn Kim/_______
`Jae Youn Kim
`NOVICK, KIM & LEE, PLLC
`3251 Old Lee Highway Suite 404
`Fairfax, VA 22030
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`Tel: 1-703-745-5495
`Fax: 1-703-563-9748
`skim@nkllaw.com
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`1
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`Date: October 3, 2016
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