Paper No. ________
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`
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`XILINX, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`
`__________________
`
`Case IPR2013-00029
`Patent 5,632,545
`____________________
`
`
`
`PATENT OWNER INTELLECTUAL VENTURES’ MOTION TO EXCLUDE
`TESTIMONY OF A. BRUCE BUCKMAN, Ph.D.
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`
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`4826-3513-6790.1
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
`
` U.S. Patent No. 5,632,545
`
`
`
`TABLE OF CONTENTS
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`
`TABLE OF AUTHORITIES .................................................................................... ii 
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`I. 
`
`II. 
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`INTRODUCTION ........................................................................................... 1 
`
`PROCEDURAL HISTORY ............................................................................ 1 
`
`III.  DR. BUCKMAN’S OPINIONS SHOULD BE EXCLUDED
`BECAUSE HE IS NOT QUALIFIED TO TESTIFY AS TO VIDEO
`PROJECTION AND LIQUID CRYSTAL DISPLAYS, AND HIS
`OPINIONS ARE UNRELIABLE. .................................................................. 3 
`
`A.  Dr. Buckman Is Not Qualified To Offer Expert Testimony. ................ 4 
`
`B. 
`
`As Evidenced By His Ever-Changing Opinions About The
`Location Of The Video Controller In Lee, Dr. Buckman’s
`Opinions Are Unreliable And Should Be Excluded. ............................ 9 
`
`IV.  CONCLUSION AND RELIEF REQUESTED ............................................. 12 
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`4826-3513-6790.1
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`i
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`
`TABLE OF AUTHORITIES
`
`Cases
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`Ancho v. Pentek Corp.,
`157 F.3d 512 (7th Cir. 1998) ................................................................................ 4
`
`Daubert v. Merrell Dow Pharms, Inc.,
`509 U.S. 579 (1993) .......................................................................................... 2, 3
`
`Diviero v. Uniroyal Goodrich Tire Co.,
`919 F. Supp. 1352 (D. Ariz. 1996), aff’d, 114 F.3d 851
`(9th Cir. 1997) ....................................................................................................... 5
`
`Kumho Tire Co., Ltd. v. Carmichael,
`526 U.S. 137 (1999) .......................................................................................... 2, 3
`
`Mukhtar v. California State Univ., Hayward,
`299 F.3d 1053 (9th Cir. 2002) .............................................................................. 4
`
`Oglesby v. General Motors Corp.,
`190 F.3d 244 (4th Cir. 1990) ............................................................................ 4-5
`
`Shreve v. Sears, Roebuck & Co.,
`166 F. Supp. 2d 378 (D. Md. 2001) ...................................................................... 4
`
`Sundance, Inc. v. Demonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2009) ............................................................................ 9
`
`Other Authorities
`
`37 C.F.R. § 1.68 ......................................................................................................... 1
`
`37 C.F.R. § 42.62 ....................................................................................................... 1
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`37 C.F.R. § 42.64(b)(1) .............................................................................................. 2
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`37 C.F.R. § 42.64(b)(2) .............................................................................................. 2
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`37 C.F.R. § 42.64(c) ............................................................................................... 1, 3
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`Fed. R. Evid. 702 ......................................................................................... 1, 2, 3, 12
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`4826-3513-6790.1
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`ii
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
`
` U.S. Patent No. 5,632,545
`
`I.
`
`
`Petitioner Xilinx, Inc.’s proffered expert, A. Bruce Buckman, Ph.D., lacks
`
`INTRODUCTION
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`the “knowledge, skill, experience, training, or education” to offer opinions about
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`the pertinent art, namely, video projection and, more specifically, liquid crystal,
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`displays. Fed. R. Evid. 702; see 37 C.F.R. § 42.62 (applying Federal Rules of
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`Evidence to IPR proceedings). This is exemplified by the fact that Dr. Buckman
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`has now changed his opinion—on where the claimed “video controller” is disclosed
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`in the “Lee” prior art reference (U.S. Patent No. 5,287,131)—three times.
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`
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`Because Dr. Buckman’s opinions are unreliable and would not help the
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`Board “understand the evidence or to determine a fact in issue,” Fed. R. Evid. 702,
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`patent owner Intellectual Ventures I LLC moves pursuant to 37 C.F.R. § 42.64(c) to
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`exclude Dr. Buckman’s opinions in Exhibits 1012 and 1013.
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`II.
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`PROCEDURAL HISTORY
`On October 19, 2012, Xilinx filed its petition for inter partes review in this
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`proceeding. (Paper 1.)
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`On March 12, 2013, the Board issued its Decision to institute inter partes
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`review. (Paper 11.)
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`On September 12, 2013, Xilinx filed its Opposition to Motion to Amend the
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`Claims (Paper 26), and a supporting “Declaration of A. Bruce Buckman, Ph.D.
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`Under 37 C.F.R. § 1.68 Directed to the Proposed Substitute Claims” (Exhibit
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`4826-3513-6790.1
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`1
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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
`
` U.S. Patent No. 5,632,545
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`1012). Paper 26 relies extensively on the Buckman Declaration (Exhibit 1012).
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`(See 9/12/13 Xilinx Opposition (Paper 26) at 5, 7-15.)
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`On September 12, 2013, Xilinx also filed its Reply Brief in Support of
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`Petition for Inter Partes Review of U.S. 5,632,545 (Paper 27), and a supporting
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`declaration entitled “Reply Report of Dr. A. Bruce Buckman” (Exhibit 1013).
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`Paper 27 relies extensively on the Buckman Declaration (Exhibit 1013). (See
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`9/12/13 Xilinx Reply Brief (Paper 27) at 4, 6, 8-15.)
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`On September 13, 2013, pursuant to 37 C.F.R. § 42.64(b)(1), patent owner
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`Intellectual Ventures I LLC timely served and filed objections to Exhibits 1012
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`and 1013 under, among other things, Federal Rule of Evidence 702 because “Dr.
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`Buckman lacks expertise in the relevant field and his testimony does not measure
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`up to the standards set by Daubert . . . Kumho Tire . . . and their progeny.” (Paper
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`28 at 1.)
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`On September 16, 2013, pursuant to 37 C.F.R. § 42.64(b)(2), Xilinx filed a
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`Notice of Supplemental Evidence (Paper 29), submitting a Supplemental
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`Declaration of Dr. A. Bruce Buckman (Exhibit 1021) in response to patent owner’s
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`September 13, 2013 objections to Exhibits 1012 and 1013.
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`On September 18, 2013, patent owner filed its Second Objection to
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`Evidence, noting that the versions of Exhibits 1012 and 1013 that were filed on
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`September 12, 2013 were missing a number of figures. (Paper 30.)
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`4826-3513-6790.1
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`2
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
`
` U.S. Patent No. 5,632,545
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`On September 23, 2013, Xilinx filed a Notice of Corrected Exhibits (Paper
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`31), submitting corrected versions of Exhibits 1012 and 1013 (also dated
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`September 23, 2013) with figures added, and no other changes.
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`Now, pursuant to 37 C.F.R. § 42.64(c), and based on the objections raised in
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`its September 13, 2013 objections (Paper 28), patent owner moves to exclude Dr.
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`Buckman’s opinions in Exhibit 1012 and 1013.
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`III. DR. BUCKMAN’S OPINIONS SHOULD BE EXCLUDED BECAUSE
`HE IS NOT QUALIFIED TO TESTIFY AS TO VIDEO PROJECTION
`AND LIQUID CRYSTAL DISPLAYS, AND HIS OPINIONS ARE
`UNRELIABLE.
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`Under Rule 702 of the Federal Rules of Evidence, expert testimony is
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`admissible only if: (a) “the testimony will help the trier of fact to understand the
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`evidence or to determine a fact in issue”; (b) “the testimony is based on sufficient
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`facts or data”; (c) “the testimony is the product of reliable principles and methods”;
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`and (d) “the expert has reliably applied the principles and methods to the facts of
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`the case.” Fed. R. Evid. 702. The rule “imposes a special obligation upon a [trier
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`of fact] to ‘ensure that any and all scientific testimony . . . is not only relevant, but
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`reliable.’” Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 147 (1999), quoting
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`Daubert v. Merrell Dow Pharms, Inc., 509 U.S. 579, 589 (1993). Therefore,
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`maintaining the standards set forth in Daubert is “vital to ensure accurate and
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`4826-3513-6790.1
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`unbiased decision-making by the trier of fact.” Mukhtar v. California State Univ.,
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`Hayward, 299 F.3d 1053, 1063 (9th Cir. 2002).
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`A. Dr. Buckman Is Not Qualified To Offer Expert Testimony.
`“The fact that a proposed witness is an expert in one area, does not ipso
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`
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`facto qualify him to testify as an expert in all related areas.” Shreve v. Sears,
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`Roebuck & Co., 166 F. Supp. 2d 378, 391 (D. Md. 2001) (citing cases).
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`[S]pecifically, an expert who is a mechanical engineer is
`not necessarily qualified to testify as an expert on any
`issue within the vast field of mechanical engineering.
`Unless he is to testify only to general engineering
`principles that any mechanical engineer would know, the
`engineer must possess “some special skill, knowledge or
`experience,” Ancho [v. Pentek Corp.], 157 F.3d [512,]
`517 [7th Cir. 1998], concerning the particular issue
`before the court.
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`Id. at 392 (emphasis added).
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`Likewise, in this proceeding, even though Dr. Buckman has experience as a
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`professor of electrical engineering, he does not possess any “special skill,
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`knowledge or experience” concerning the pertinent art at issue in this proceeding:
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`video projection and liquid crystal displays. Id. at 393 (excluding expert testimony
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`because, “while Dr. Shelley is an expert as to many things, he does not qualify as
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`an expert on the safe design and operation of snow throwers”); Oglesby v. General
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`4826-3513-6790.1
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`4
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`Motors Corp., 190 F.3d 244, 250 (4th Cir. 1990) (testimony of engineer with no
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`specialized experience or expertise in evaluating automobile manufacturing
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`processes or the strength of plastic automobile components excluded); Diviero v.
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`Uniroyal Goodrich Tire Co., 919 F. Supp. 1352, 1356-57 (D. Ariz. 1996) (engineer
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`with over 30 years of experience working with bias belted tires not qualified to
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`testify that steel belted tire was unreasonably dangerous because two tires were
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`significantly different and engineer lacked background to gauge compatibility of
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`steel and rubber interface in tire), aff’d, 114 F.3d 851 (9th Cir. 1997).
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`Dr. Buckman’s training and experience is in the “field of optics,” not in the
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`field of video projection or liquid crystal displays.
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`Dr. Buckman did not use video projection as an example of the kinds
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`of image processing that he taught.
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`Dr. Buckman has never published any papers on liquid crystal
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`displays.
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`Dr. Buckman has never constructed a video projection system or a
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`liquid crystal display.
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`Dr. Buckman has never been a member of the Society for Information
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`Display.
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`Prior to this proceeding, Dr. Buckman has never testified in a legal
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`proceeding regarding liquid crystal displays.
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`4826-3513-6790.1
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`5
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`Ex. 2017 (Listing of Admitted Facts ¶¶ 1-4); Ex. 2004 (6/11/13 Buckman Dep. at
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`9:7-10).
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`Moreover, Dr. Buckman does not even know the standard reference works in
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`the fields of video projection or liquid crystal display. At his deposition, he
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`testified that there were two standard reference works supposedly in these fields:
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`Ex. 2004 (6/11/13 Buckman Dep. at 9:21-10:12 (highlighting added)). But, Xilinx
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`has now admitted that Dr. Buckman was simply wrong: neither Born and Wolf nor
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`4826-3513-6790.1
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`6
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`Goodman are “standard reference work[s] specifically directed at video or liquid
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`crystal displays.” Ex. 2017 (Listing of Admitted Facts ¶¶ 5-6).
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`Finally, in an attempt to address Dr. Buckman’s lack of qualifications related
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`to video projection and liquid crystal displays, Xilinx recently had Dr. Buckman
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`file a “supplemental” declaration regarding his qualifications. Ex. 1021 (9/16/13
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`Buckman Supp. Decl. ¶ 4 (at 3) (“[T]o eliminate any doubt, I have been asked to
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`provide the following elaboration on my experience and expertise as it pertains to
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`the subject matter of the ’334 [sic, should say “’545”] patent.”) (emphasis added)).
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`But, this is unavailing. The supplemental declaration only highlights Dr.
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`Buckman’s lack of qualifications, when viewed in the context of the entire record.
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`For example, Dr. Buckman describes his experience with respect to liquid
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`crystal displays and video controllers, as follows:
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`4826-3513-6790.1
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`7
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`Ex. 1021 (9/16/13 Buckman Supp. Decl. ¶¶ 11-12 (highlighting, emphasis added)).
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`Viewed in isolation, this testimony might seem to bolster Dr. Buckman’s
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`qualifications: liquid crystal display is a type of spatial light modulator (SLM),
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`and video controllers are a form of SLM controller, with which Dr. Buckman is
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`very familiar. But, one month later, Xilinx now admits that: Dr. Buckman “has
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`never written about video projection systems in his publications”; “Dr. Buckman
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`does not equate spatial light modulators with a liquid crystal display”; and Dr.
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`Buckman has never put “liquid crystal material on electrodes illustrated in” a
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`figure in his textbook. Ex. 2017 (Listing of Admitted Facts ¶¶ 2, 7-8 (emphasis
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`added)).
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`4826-3513-6790.1
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`8
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`
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`More importantly, as explained in Section III.B. below, further evidence that
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`Dr. Buckman is not qualified to offer expert opinions in this proceeding is the fact
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`that Dr. Buckman repeatedly changes his opinion as to where a basic claim
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`element (video controller) is located in the Lee prior art reference. See Sundance,
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`Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2009) (expert not
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`qualified to testify on patent validity because he lacked experience and training in
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`pertinent art).
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`B. As Evidenced By His Ever-Changing Opinions About The
`Location Of The Video Controller In Lee, Dr. Buckman’s
`Opinions Are Unreliable And Should Be Excluded.
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`
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`Dr. Buckman has now changed his opinion as to the location of the video
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`controller in the Lee reference three times.
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`Buckman Opinion #1: In his October 18, 2012 declaration, Dr. Buckman
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`asserted that: “An example of a video controller is shown in Lee Fig. 2 at item 19
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`[depicting the ‘light shutter controlling circuit 19’].”
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`4826-3513-6790.1
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`9
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`Ex. 1006 (10/18/12 Buckman Decl. ¶ 47 (highlighting added)).
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`Buckman Opinion #2: In his August 7, 2013 deposition in IPR2013-
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`00112, Dr. Buckman testified that item 19 in Lee Fig. 2 was not a video controller,
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`as stated in his prior declaration, and that the actual video controller was located at
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`items 20 and 21 in Lee Fig. 2:
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`Ex. 2019 (8/7/13 Buckman Dep. at 38:8-14 (highlighting added).)
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`Buckman Opinion #3: A month later, in his September 12, 2013 Reply
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`Declaration (corrected version filed September 23, 2013) in this proceeding,
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`Dr. Buckman changed his mind again, this time declaring that: “Circuit 20 in Lee
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`is one example of a video controller.” Ex. 1013 (9/23/13 Reply Declaration
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`(corrected version) ¶ 35 (highlighting added)).
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`Buckman Opinion #4: Five weeks later, in his October 21, 2013
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`declaration in IPR2013-00112, Dr. Buckman contradicted the position he took in
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`his September 12, 2013 Reply Declaration in this proceeding (without
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`explanation), and asserted again that: “Circuits 20 and 21 in Lee are one example
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`4826-3513-6790.1
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`10
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`of a video controller . . . .” Ex. 2018 (10/21/13 Buckman Decl. ¶ 27 (highlighting
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`added)).
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`Thus, the undisputed record shows that Dr. Buckman has now made sworn
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`statements attesting to the fact that the video controller in Lee is located at item 19,
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`items 20 and 21, or just item 20, and that his opinion changes from month to month
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`(and from proceeding to proceeding). Moreover, Dr. Buckman himself cannot
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`provide details as to the basis for changing his opinions on the video controller
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`issue, other than to note that he was previously “mistake[n],” and to acknowledge
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`that the issue was the subject of privileged communications with his counsel. See
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`Ex. 2016 (10/8/13 Buckman Dep. at 6:19-7:22, 8:1-11:20).
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`Because Dr. Buckman’s ever-shifting opinions in this case are unreliable,
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`Exhibits 1012 and 1013 should be excluded in their entirety. After all, Dr.
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`Buckman’s latest firmly-held opinion on a technical issue (such as the location of
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`the video controller in Lee) is no more reliable than any of his prior firmly-held
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`opinions on the same issue, which were all made under oath. See Paper 11
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`(3/12/13 Decision Instituting Inter Partes Review at 18-19 (In instituting this
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`proceeding, the Board expressly relied on Buckman’s (now) admittedly wrong
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`sworn assertion that item 19 in Lee was the video controller)). Exclusion under
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`Federal Rule of Evidence 702 is required because Dr. Buckman’s opinions would
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`4826-3513-6790.1
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`11
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`not assist the Board in reaching a decision or resolving any fact issue in this
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`proceeding.
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`IV. CONCLUSION AND RELIEF REQUESTED
`Because Dr. Buckman is not qualified to offer expert opinions with respect
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`to the pertinent art (i.e., video projection and liquid crystal displays), and because
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`his opinions are unreliable, Dr. Buckman’s declarations (Exhibits 1012 and 1013)
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`should be excluded from this proceeding.
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`Dated: November 4, 2013
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`Respectfully submitted,
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`/George E. Quillin /
`George E. Quillin
`Registration No. 32,792
`Counsel for Patent Owner
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`4826-3513-6790.1
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`12
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`

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`Patent Owner Motion to Exclude Testimony IPR2013-00029
`of A. Bruce Buckman, Ph.D.
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` U.S. Patent No. 5,632,545
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`LIST OF EXHIBITS
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`Exhibit 1006
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`Exhibit 1012
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`Exhibit 1013
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`Exhibit 1021
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`Exhibit 2004
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`Exhibit 2016
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`Exhibit 2017
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`Exhibit 2018
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`Exhibit 2019
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`Declaration of A. Bruce Buckman, Ph.D. Under 37 C.F.R. §
`1.68 (filed Oct. 19, 2012)
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`Declaration of A. Bruce Buckman, Ph.D. Under 37 C.F.R. §
`1.68 Directed to the Proposed Substitute Claims (filed Sept. 12,
`2013; corrected version filed Sept. 23, 2013)
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`Reply Report of Dr. A. Bruce Buckman (filed Sept. 12, 2013;
`corrected version filed Sept. 23, 2013)
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`Supplemental Declaration of A. Bruce Buckman, Ph.D. (filed
`Sept. 16, 2013)
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`Transcript of June 11, 2013 Deposition of A. Bruce Buckman
`(filed June 26, 2013)
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`Transcript of October 8, 2013 Deposition of A. Bruce Buckman
`(filed October 15, 2013)
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`Listing of Admitted Facts (Submitted by Xilinx in IPR2013-
`00112 as part of Paper 30 (Xilinx Reply Brief in Support of
`Petition)) (filed November 4, 2013)
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`Declaration of A. Bruce Buckman, Ph.D. (Submitted by Xilinx
`in IPR2013-00112 as Exhibit 1012) (filed November 4, 2013)
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`Transcript of August 7, 2013 Deposition of A, Bruce Buckman
`(Submitted by Patent Owner in IPR2013-00112 as Substitute
`Exhibit 2010) (filed November 4, 2013)
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`4826-3513-6790.1
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`13
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Patent Owner
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`Intellectual Ventures’ Motion to Exclude Testimony of A. Bruce Buckman, Ph.D.,
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`along with a List of Exhibits are being served on counsel of record by filing these
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`documents through the Patent Review Processing System as well as delivering a
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`copy via commercial overnight courier directed to the counsel of record for the
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`Petitioner at the following address:
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`Respectfully submitted,
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`/George E. Quillin /
`George E. Quillin
`Registration No. 32,792
`Counsel for Patent Owner
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`4826-3513-6790.1
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`David L. McCombs, Esq.
`Haynes and Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
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`Dated: November 4, 2013