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`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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`XILINX, INC.
`Petitioner
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`v.
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`INTELLECTUAL VENTURES I LLC
`Patent Owner
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`__________________
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`Case IPR2013-00112
`Patent 5,779,334
`____________________
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`PATENT OWNER INTELLECTUAL VENTURES’ REPLY IN SUPPORT OF
`MOTION TO EXCLUDE TESTIMONY OF A. BRUCE BUCKMAN, Ph.D.
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`4820-2913-3591.1
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`Patent Owner Reply in Support of Motion IPR2013-00112
`To Exclude A. Bruce Buckman, Ph.D. U.S. Patent No. 5,779,334
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES .................................................................................... ii
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. DR. BUCKMAN’S OPINIONS SHOULD BE EXCLUDED. ....................... 1
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`A. Dr. Buckman Is Not Qualified To Offer Expert Testimony. ................ 1
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`B. Dr. Buckman’s Opinions Are Unreliable. ............................................. 3
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`1.
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`2.
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`3.
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`Example A: The “Second Controller” in Miyashita .................. 3
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`Example B: The “Control Link” in Lee ..................................... 4
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`Example C: The “Video Controller” in Lee .............................. 5
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`III. CONCLUSION AND RELIEF REQUESTED ............................................... 5
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`4820-2913-3591.1
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`i
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`Patent Owner Reply in Support of Motion IPR2013-00112
`To Exclude A. Bruce Buckman, Ph.D. U.S. Patent No. 5,779,334
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`TABLE OF AUTHORITIES
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`Cases
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`Daubert v. Merrell Dow Pharms., Inc.,
`509 U.S. 579 (1993) .......................................................................................... 3, 5
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`Extreme Networks, Inc. v. Enterasys Networks, Inc.,
`395 F. App’x 709 (Fed. Cir. 2010) ....................................................................... 2
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`Flex-Rest, LLC v. SteelCase, Inc.,
`455 F.3d 1351 (Fed. Cir. 2006) ............................................................................ 2
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`McCullock v. H.B. Fuller Co.,
`61 F.3d 1038 (2d Cir. 1995) ................................................................................. 2
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`Shreve v. Sears Roebuck & Co.,
`166 F. Supp. 2d 378 (D. Md. 2001) ...................................................................... 2
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`4820-2913-3591.1
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`ii
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`
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`Patent Owner Reply in Support of Motion IPR2013-00112
`To Exclude A. Bruce Buckman, Ph.D. U.S. Patent No. 5,779,334
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`I.
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`INTRODUCTION
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`The Board has yet to issue detailed guidelines regarding the application of
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`Rule 702 and Daubert/Kumho Tire to expert testimony in IPR proceedings. Such
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`guidelines are important because, taking this case as an example, it is unfair for
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`IPR trials to be instituted and prosecuted against patent owners based on the
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`opinions of petitioner’s expert, which the expert later recants repeatedly, and
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`without any explanation of the factual or scientific basis for the change in his
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`opinions. (See, e.g., Paper 14 at 21-22 (Board relied on Buckman opinion that Lee
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`19 is video controller in instituting trial); Ex. 2010 at 38:8-14 (Buckman admission
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`that Lee 19 is not video controller).) In such an extreme―and extremely
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`unusual―case, the most appropriate remedy is exclusion.
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`II. DR. BUCKMAN’S OPINIONS SHOULD BE EXCLUDED.
`A. Dr. Buckman Is Not Qualified To Offer Expert Testimony.
`Xilinx does not dispute that the ’334 patent relates to video projection
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`systems, or that Dr. Buckman has never built, taught, or written about video
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`projection systems. (See Paper 42 at 3.) Instead, Xilinx argues that Dr.
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`Buckman’s experience with optics qualifies him as an expert because the ’334
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`patent uses “standard optical components.” (Paper 44 at 3.) But this is unavailing
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`because “[g]eneral experience in a related field may not suffice when experience
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`and skill in specific product design are necessary to resolve patent issues.”
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`4820-2913-3591.1
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`1
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`Patent Owner Reply in Support of Motion IPR2013-00112
`To Exclude A. Bruce Buckman, Ph.D. U.S. Patent No. 5,779,334
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`Extreme Networks, Inc. v. Enterasys Networks, Inc., 395 F. App’x 709, 715 (Fed.
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`Cir. 2010) (non-precedential).
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`In Flex-Rest, LLC v. SteelCase, Inc., 455 F.3d 1351 (Fed. Cir. 2006), the
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`Federal Circuit upheld the trial court’s exclusion of an expert regarding the design
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`of keyboard support systems, rejecting plaintiff’s argument that “the invention
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`applies ergonomic principles to keyboard design, and that [its expert] is qualified
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`in the ergonomics field.” Id. at 1356, 1360-61. As in Flex-Rest, id. at 1360, the
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`Board should reject Xilinx’s assertion that, because Dr. Buckman “is qualified in
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`the [optics] field,” he also is qualified to testify about video projection systems.
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`Xilinx argues that, in Shreve v. Sears Roebuck & Co., 166 F. Supp. 2d 378,
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`393 (D. Md. 2001), “the proposed expert in snowthrower safety had never actually
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`designed outdoor equipment[,]” including snowthrowers. (Paper 44 at 6.) But,
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`like the expert excluded in Shreve, Dr. Buckman has never constructed a video
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`projection system and has “no particular expertise concerning” such systems.
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`Shreve, 166 F. Supp. 2d at 394.
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`Finally, Xilinx’s case authority is inapposite. In McCullock v. H.B. Fuller
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`Co., 61 F.3d 1038 (2d Cir. 1995), the expert was qualified to testify because he
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`was a board-certified specialist treating ear, nose and throat conditions, and the
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`subject of his testimony related to plaintiff’s throat injury. Id. at 1043. Likewise,
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`in Effingo, a witness who taught “product design classes,” had “taken several
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`4820-2913-3591.1
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`Patent Owner Reply in Support of Motion IPR2013-00112
`To Exclude A. Bruce Buckman, Ph.D. U.S. Patent No. 5,779,334
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`classes relating to designing products that fit the human body” and had designed
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`“prosthetics” was permitted to testify regarding the design of headsets. (Paper 44
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`at 7-8, Attach. A at 2.) By contrast, Dr. Buckman has no expertise whatsoever
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`designing video projection systems.
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`Dr. Buckman’s Opinions Are Unreliable.
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`B.
`Xilinx incorrectly argues that IV did not timely object to the reliability of
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`Dr. Buckman’s testimony. (Paper 44 at 10.) IV objected that “Dr. Buckman lacks
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`expertise in the relevant field and his testimony does not measure up to the
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`standards set by Daubert . . . Kumho Tire . . . and their progeny.” (Paper 17 at
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`1; Paper 32 at 1.) Because Daubert and Kumho Tire set out the standard for
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`assessing the reliability of expert testimony, IV preserved its objection. See
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`Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589 (1993) (trier of fact must
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`ensure that expert testimony is “not only relevant, but reliable”).
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`Xilinx also fails to explain away the examples (see Paper 42 at 5-13), which
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`highlight why Dr. Buckman’s opinions are unreliable and should be excluded.
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`1. Example A: The “Second Controller” in Miyashita
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`Xilinx argues that, because his August declaration was filed in IPR2013-
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`00029, “IV’s example A does not challenge the reliability of anything that Dr.
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`Buckman said in this matter.” (Paper 44 at 11.) Xilinx cannot cabin its expert’s
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`inconsistent opinions in this fashion. Dr. Buckman identified the “second
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`4820-2913-3591.1
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`Patent Owner Reply in Support of Motion IPR2013-00112
`To Exclude A. Bruce Buckman, Ph.D. U.S. Patent No. 5,779,334
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`controller” in Miyashita Fig. 3 one way in his August declaration, Ex. 2017, and
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`then annotated that same figure a different way in his October declaration in this
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`proceeding, Ex. 2020. (Paper 42 at 5-7.) Xilinx notes that the proposed substitute
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`claims in IPR2013-00029 and in this proceeding are different (Paper 44 at 11), but
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`this shows that all Dr. Buckman is doing is using improper hindsight to identify
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`alleged features in the prior art. In other words, depending on what the proposed
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`substitute claims require, Dr. Buckman circles whatever box he wants in Miyashita
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`and calls it the “second controller,” irrespective of what he identified as the
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`“second controller” only weeks earlier, and irrespective of what Miyashita itself
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`discloses. The fluidity with which Dr. Buckman changes positions―without
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`explanation―is antithetical to Daubert’s requirement of “reliability.”
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`2. Example B: The “Control Link” in Lee
`Xilinx argues that Dr. Buckman’s changing opinions regarding the “control
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`link” in Lee are immaterial because “there is no meaningful distinction between
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`‘link’ and ‘line’ in the context of Lee.” (Paper 44 at 13.) Aside from being
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`attorney argument, this contradicts Dr. Buckman’s testimony distinguishing the
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`two terms. (Ex. 2018 at 74:23-75:14.)
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`That testimony also highlights why exclusion is the most appropriate
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`remedy. Dr. Buckman first confirmed that Lee teaches a “control link,” as stated
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`in his August declaration. (Id. at 73:7-22.) But then, when shown the different
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`4820-2913-3591.1
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`Patent Owner Reply in Support of Motion IPR2013-00112
`To Exclude A. Bruce Buckman, Ph.D. U.S. Patent No. 5,779,334
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`position he took in his October declaration, Dr. Buckman recanted on the spot and
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`testified that Lee taught “control lines,” not a “control link,” and that his August
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`declaration was wrong. (Id. at 74:23-75:14.) Dr. Buckman’s willingness to
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`confirm―and then immediately recant―his testimony shows that his opinions are
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`not the product of a reliable methodology or any methodology at all. See Rule
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`702; Daubert.
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`3. Example C: The “Video Controller” in Lee
`Contrary to Xilinx’s assertion, Dr. Buckman’s changing of positions on the
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`“video controller” in Lee is not an example of “shaky but admissible evidence.”
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`(Paper 44 at 15 (citing Daubert).) The fact that Dr. Buckman has offered five
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`different opinions on this topic—including one which he admits is
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`wrong―highlights that none of his opinions are reliable.
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`III. CONCLUSION AND RELIEF REQUESTED
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`For the reasons stated, Exhibits 1005, 1011 and 1012 should be excluded.
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`Dated: January 8, 2014
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`4820-2913-3591.1
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`Respectfully submitted,
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`/George E. Quillin/
`George E. Quillin
`Registration No. 32,792
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`Foley & Lardner LLP
`Counsel for Patent Owner
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`5
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`Patent Owner Reply in Support of Motion IPR2013-00112
`To Exclude A. Bruce Buckman, Ph.D. U.S. Patent No. 5,779,334
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`LIST OF EXHIBITS
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`Exhibit 1005
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`Exhibit 1011
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`Exhibit 1012
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`Exhibit 2010
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`Exhibit 2011
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`Exhibit 2016
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`Exhibit 2017
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`Exhibit 2018
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`Exhibit 2020
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`Declaration of A. Bruce Buckman, Ph.D. Under 37 C.F.R.
`§ 1.68
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`Declaration of A. Bruce Buckman, Ph.D. Under 37 C.F.R.
`§ 1.68 Directed to the Proposed Substitute Claims
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`Declaration of A. Bruce Buckman, Ph.D. Under 37 C.F.R.
`§ 1.68 Directed to Petitioner’s Reply
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`Transcript of Aug. 7, 2013 Deposition of A. Bruce Buckman
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`Transcript of June 11, 2013 Deposition of A. Bruce Buckman
`in IPR2013-00029 (filed in this proceeding on Aug. 27,
`2013)
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`Sept. 12, 2013 Reply Report of Dr. A. Bruce Buckman (Ex.
`1013 in IPR2013-00029)
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`Aug. 7, 2013 Declaration of A. Bruce Buckman, Ph.D. Under
`37 C.F.R. § 1.68 Directed to the Proposed Substitute Claims in
`IPR2013-00029 (filed in this proceeding on Nov. 27, 2013)
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`Transcript of Nov. 12, 2013 Deposition of A. Bruce Buckman
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`Oct. 18, 2012 Declaration of A. Bruce Buckman Under 37
`C.F.R. § 1.68 (Ex. 1006 in IPR2013-00029)
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`4820-2913-3591.1
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`6
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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’ Reply In Support of Motion to Exclude Testimony of A.
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`Bruce Buckman, Ph.D., is being served on counsel of record by filing this
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`document 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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`Dated: January 8, 2014
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`David L. McCombs, Esq.
`Haynes and Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
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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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`4820-2913-3591.1
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