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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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`
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`XILINX, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`
`__________________
`
`Case IPR2013-00112
`Patent 5,779,334
`____________________
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`
`
`PATENT OWNER INTELLECTUAL VENTURES’ MOTION TO EXCLUDE
`TESTIMONY OF A. BRUCE BUCKMAN, Ph.D.
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`
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`4843-5654-9911.1
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`
`
`Patent Owner Motion to Exclude IPR2013-00112
`Testimony of A. Bruce Buckman, Ph.D.
` U.S. Patent No. 5,779,334
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
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`PROCEDURAL HISTORY ............................................................................ 1
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`III. DR. BUCKMAN’S OPINIONS SHOULD BE EXCLUDED. ....................... 2
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`A. Dr. Buckman Is Not Qualified To Offer Expert Testimony. ................ 2
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`B. Dr. Buckman’s Opinions Are Unreliable. ............................................. 5
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`1.
`
`2.
`
`3.
`
`Example A: The “Second Controller” in Miyashita .................. 5
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`Example B: The “Control Link” in Lee ..................................... 7
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`Example C: The “Video Controller” in Lee ............................10
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`IV. CONCLUSION AND RELIEF REQUESTED .............................................13
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`LIST OF EXHIBITS ................................................................................................14
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`
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`4843-5654-9911.1
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`i
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`
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`Patent Owner Motion to Exclude IPR2013-00112
`Testimony of A. Bruce Buckman, Ph.D.
` U.S. Patent No. 5,779,334
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Diviero v. Uniroyal Goodrich Tire Co.,
`919 F. Supp. 1352 (D. Ariz. 1996), aff’d, 114 F.3d 851
`(9th Cir. 1997) ....................................................................................................... 4
`
`Extreme Networks, Inc. v. Enterasys Networks, Inc.,
`395 F. App’x 709 (Fed. Cir. Sept. 30, 2010) ........................................................ 4
`
`Flex-Rest, LLC v. SteelCase, Inc.,
`455 F.3d 1351 (Fed. Cir. 2006) ............................................................................ 3
`
`Oglesby v. General Motors Corp.,
`190 F.3d 244 (4th Cir. 1990) ................................................................................ 4
`
`Shreve v. Sears Roebuck & Co.,
`166 F. Supp. 2d 378 (D. Md. 2001) ...................................................................... 4
`
`Sundance, Inc. v. Demonte Fab. Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) ............................................................................ 3
`
`
`
`Other Authorities
`
`37 C.F.R. § 1.68 ......................................................................................................... 2
`
`37 C.F.R. § 42.62 ....................................................................................................... 1
`
`37 C.F.R. § 42.64(b)(1) .......................................................................................... 1, 2
`
`37 C.F.R. § 42.64(c) ............................................................................................... 1, 2
`
`Fed. R. Evid. 702 ....................................................................................................... 1
`
`Fed. R. Evid. 702(c), (d) ............................................................................................ 5
`
`
`
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`4843-5654-9911.1
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`ii
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`I.
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`INTRODUCTION
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`
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`Petitioner Xilinx, Inc.’s proffered expert, A. Bruce Buckman, Ph.D., lacks
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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
`
`Evidence to IPR proceedings).
`
`
`
`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 1005, 1011, and 1012.
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`II.
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`PROCEDURAL HISTORY
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`On January 15, 2013, Xilinx filed its petition for inter partes review in this
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`proceeding. (Paper 2.) In support, Xilinx relied on Dr. Buckman’s declaration
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`(Ex. 1005). (See generally Paper 2.)
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`On June 27, 2013, the Board issued its Decision to institute inter partes
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`review. (Paper 14.)
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`On July 9, 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 Exhibit 1005
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`under, among other things, Federal Rule of Evidence 702 because “Dr. Buckman
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`4843-5654-9911.1
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`1
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`lacks 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 1.)
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`On October 21, 2013, Xilinx filed its Opposition to Motion to Amend the
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`Claims (Paper 31), 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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`1011). Paper 31 relies extensively on the Buckman Declaration (Exhibit 1011).
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`(See Paper 31 at 7, 10-13.)
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`On October 21, 2013, Xilinx also filed its Reply Brief in Support of Petition
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`for Inter Partes Review (Paper 30), and a Buckman Declaration directed to
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`Petitioner’s Reply (Exhibit 1012). Paper 30 relies extensively on the Buckman
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`Declaration (Exhibit 1012). (See Paper 30 at 2, 4-7, 9.)
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`On October 28, 2013, pursuant to 37 C.F.R. § 42.64(b)(1), patent owner
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`timely served and filed objections to Exhibits 1011 and 1012 under Daubert.
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`(Paper 32.).
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`Now, pursuant to 37 C.F.R. § 42.64(c), patent owner moves to exclude
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`Dr. Buckman’s opinions in Exhibits 1005, 1011, and 1012.
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`III. DR. BUCKMAN’S OPINIONS SHOULD BE EXCLUDED.
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`A. Dr. Buckman Is Not Qualified To Offer Expert Testimony.
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`
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`Xilinx recently asserted that Dr. Buckman’s “experience in electrical
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`engineering and his specialization in optics relate directly to the subject matter” at
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`4843-5654-9911.1
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`2
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`hand. (IPR2013-00029, Paper 42 at 5.1) To the contrary, as the title, Field of the
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`Invention, Summary of the Invention, and the claims demonstrate, the ’334 patent
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`relates to video projection systems, not optics broadly. Ex. 1001 at, respectively,
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`1:1 (Enhanced Video Projection System”); 1:9-11 (“present invention is in the
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`area of video projection display, and pertains more particularly to . . . Liquid
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`Crystal Displays”); 1:54-55 (“present invention [is] a video projection system”);
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`and 4:29 (claim 1: “A video projector system comprising . . . .”). And, it is
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`undisputed that Dr. Buckman has never built, taught, or written about video
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`projection systems. (See Paper 30 at 13-14 (Listing of Admitted Facts ¶¶ 1-4); Ex.
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`2011 (6/11/13 Buckman Dep. at 7:1-9:20).)
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`
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`It is not sufficient that the proposed expert has general expertise in a broad
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`area such as electrical engineering, where the pertinent art is―as here―much
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`narrower. See Sundance, Inc. v. Demonte Fab. Ltd., 550 F.3d 1356, 1364 (Fed.
`
`Cir. 2008) (witness not qualified in the pertinent art may not testify as an expert on
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`any underlying technical questions, such as the scope and content of prior art).
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`
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`For example, in Flex-Rest, LLC v. SteelCase, Inc., 455 F.3d 1351 (Fed. Cir.
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`2006), the Federal Circuit upheld the exclusion of an expert’s testimony on the
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`issue of obviousness because the pertinent art was keyboard design, and the
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`expert’s expertise was in ergonomics rather than keyboard design. Id. at 1360-61.
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`1 Bold emphasis in this motion is added, unless otherwise indicated.
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`4843-5654-9911.1
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`3
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`Moreover, “[g]eneral experience in a related field may not suffice when
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`experience and skill in specific product design are necessary to resolve patent
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`issues.” Extreme Networks, Inc. v. Enterasys Networks, Inc., 395 F. App’x 709,
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`715 (Fed. Cir. Sept. 30, 2010) (non-precedential) (computer system administrator
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`with computer science degree not qualified to testify about validity of patents
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`relating to computer switches, bridges or routers); see also Shreve v. Sears
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`Roebuck & Co., 166 F. Supp. 2d 378, 393 (D. Md. 2001) (excluding expert
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`testimony because, “while Dr. Shelley is an expert as to many things, he does not
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`qualify as an expert on the safe design and operation of snow throwers”); Oglesby
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`v. General Motors Corp., 190 F.3d 244, 250 (4th Cir. 1990) (testimony of engineer
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`with no specialized experience or expertise in evaluating automobile
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`manufacturing processes or the strength of plastic automobile components
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`excluded); Diviero v. Uniroyal Goodrich Tire Co., 919 F. Supp. 1352, 1356-57 (D.
`
`Ariz. 1996) (engineer with over 30 years of experience working with bias belted
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`tires not qualified to testify about steel belted tire because engineer lacked
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`background to gauge compatibility of steel and rubber interface in tire), aff’d, 114
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`F.3d 851 (9th Cir. 1997). Dr. Buckman has no expertise in the pertinent art—
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`video projection systems―and is therefore unqualified to testify.
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`4843-5654-9911.1
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`4
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`B.
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`Dr. Buckman’s Opinions Are Unreliable.
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`Daubert’s focus is on methodology, i.e., whether “the testimony is the
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`product of reliable principles and methods” and whether the “expert has reliably
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`applied the principles and methods to the facts of the case.” Fed. R. Evid.
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`702(c), (d).
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`
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`Here, almost every time Dr. Buckman is questioned, he changes his opinions
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`in some manner and states that these changes in his opinions are “corrections,”
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`without explaining: (a) the factual or scientific basis for his original opinion;
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`(b) what prompted him to change his opinion; or (c) the factual or scientific basis
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`for his belief that his currently held opinion is “correct.”
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`
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`Here are three examples, which highlight why Dr. Buckman’s opinions are
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`unreliable (and should be excluded).
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`1. Example A: The “Second Controller” in Miyashita
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`
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`On August 7, 2013, Dr. Buckman executed a declaration which annotated
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`Miyashita Fig. 3 (shown below) and identified the “second controller” as a
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`combination of hardware components (60, 66, 88, 72, 86, 70, 68, 74, 78, 76, 80,
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`82, 84, 62, 64) connected to an “I/O PORT 93,” and separately identified the
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`“PROJECTION LAMP POWER CONTROLLER 72” as a “Lamp Control Circuit”
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`located within the “second controller.”
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`4843-5654-9911.1
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`5
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`(Ex. 2017 (8/7/13 Buckman Decl. at 29.)
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`However, just eleven weeks later, in his October 21, 2013 declaration in this
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`proceeding, Dr. Buckman opines that the “PROJECTION LAMP POWER
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`CONTROLLER 72” is the “second controller”/ “lamp controller.”
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`4843-5654-9911.1
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`6
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`(Ex. 1011 at 26.) When asked about this contradiction in his identification of the
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`“second controller” in Miyashita, Dr. Buckman testified that his August
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`declaration was “incorrect,” was not a position he “deemed ready to state,” and
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`“was never an opinion [he] actually had.” (Ex. 2018 at 77:23 to 80:10.) But,
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`setting aside the fact that the August declaration does reflect “an opinion he
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`actually had” (and attested to under oath), Dr. Buckman fails to explain why he
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`annotated Miyashita Fig. 3 the way he originally did in his August declaration,
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`what prompted him to change his opinion, or the factual or scientific basis for his
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`different annotation of the same figure in his October declaration.
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`2. Example B: The “Control Link” in Lee
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`In his August declaration, Dr. Buckman also opined that “Lee teaches a
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`control link” and identified that “control link” by annotating Lee Fig. 1 as follows:
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`7
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`(Ex. 2017 at 54.) But, in his October declaration, Dr. Buckman identified the same
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`features as “control lines” rather than a “control link”:
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`(Ex. 1011 at 21.)
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`At his November 12, 2013 deposition, Dr. Buckman first confirmed that Lee
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`teaches a “control link,” as he opined in his August declaration:
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`4843-5654-9911.1
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`8
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`(Ex. 2018 at 73:7-22.) But, then, when Dr. Buckman was shown the different
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`position he took in his October declaration, he recanted on the spot and testified
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`that Lee taught “control lines,” not a “control link,” and that his August declaration
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`reflected an “editing” error:
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`(Ex. 2018 at 74:23-75:14.) Other than make a cursory reference to an “editing”
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`error, Dr. Buckman fails to explain why he opined that Lee “teaches a control link”
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`in his August declaration, why he took a different position in his October
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`declaration, why he reaffirmed that Lee teaches a “control link” at his November
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`4843-5654-9911.1
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`deposition, and why he immediately recanted that testimony when shown his
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`conflicting opinion in his October declaration.
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`3. Example C: The “Video Controller” in Lee
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`Dr. Buckman has now offered five different opinions about the location of
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`the “video controller” in Lee. See the chronology below:
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`Date
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`’545 IPR (IPR2013-00029)
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`Oct. 18, 2012
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`Jan. 15, 2013
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`IPR Petition (Paper 2 at 27);
`Buckman Decl. ¶ 47 (Ex.
`2020):2 Xilinx and Buckman
`assert that Lee 19 is video
`controller.
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`
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`Jan. 23, 2013 Patent Owner Preliminary
`Resp. (Paper 8 at 21):
`Lee 19 not a video controller.
`Mar. 12, 2013 Board Decision Instituting
`Trial (Ex. 2002 at 19): Board
`relies on Buckman opinion
`that Lee 19 is video controller.
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`Apr. 22, 2013
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`’334 IPR (IPR2013-00112)
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`
`IPR Petition (Paper 2 at 24-25;
`Buckman Decl. at 29 (Ex.
`1005): Xilinx and Buckman
`assert that Lee 19 is video
`controller.
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`Patent Owner Preliminary
`Response (Paper 12 at 37-40):
`Lee 19 not a video controller.
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`2 Citations to papers originally filed in IPR2013-00029 refer to the “Paper”
`numbers from that proceeding; citations to exhibits originally filed in IPR2013-
`00029 refer to the “Ex.” numbers in this proceeding.
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`4843-5654-9911.1
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`10
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`June 26, 2013 Patent Owner Response (Paper
`22 at 40-41): Lee 19 not a
`video controller.
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`June 27, 2013
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`Aug. 7, 2013
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`Sept. 12, 2013 Buckman Reply Report ¶ 35
`(Ex. 2016): Lee 20 is video
`controller.
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`Oct. 21, 2013
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`Nov. 12, 2013
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`Board Decision Instituting Trial
`(Paper 14 at 21-22): Board
`relies on Buckman opinion that
`Lee 19 is video controller.
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`Buckman Deposition at 38:8-14
`(Ex. 2010): Lee 19 is not video
`controller, Lee 20, 21 are video
`controller.
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`Buckman Reply Declaration
`¶ 27 (Ex. 1012): Lee 20, 21 are
`video controller.
`
`Buckman Deposition at 45:15-
`25 (Ex. 2018): Lee 20 by itself
`and Lee 20, 21 together are
`video controllers.
`
`
`Buckman Opinion #1 (10/18/12; 1/15/13): “An example of a video
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`controller is shown in Lee Fig. 2 at item 19.” (Ex. 2020 ¶ 47; Ex. 1005 at 29.).
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`The Board relied on this now admittedly incorrect opinion—expressed in two
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`separate Buckman declarations―in instituting trial in IPR2013-00029 and in this
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`proceeding. (See Ex. 2002 at 18-19; Paper 14 at 21-22.)
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`
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`Buckman Opinion #2 (8/7/13): The Lee video controller is shown at
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`“Items 20 and 21”:
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`4843-5654-9911.1
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`11
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`(Ex. 2010 at 38:8-14.) Xilinx asserts that Dr. Buckman “corrected an opinion in
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`response to IV’s valid criticisms” (IPR2013-00029, Paper 42 at 2), but even after
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`this correction, Dr. Buckman proceeded to advance still other (i.e., different)
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`opinions about the location of the video controller in Lee.
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`
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`Buckman Opinion #3 (9/12/13): “Circuit 20 in Lee is one example of a
`
`video controller.” (Ex. 2016 ¶ 35.)
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`
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`Buckman Opinion #4 (10/21/13) (reprise of #2): “Circuits 20 and 21 in
`
`Lee are one example of a video controller . . . .” (Ex. 1012 ¶ 27.)
`
`
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`Buckman Opinion #5 (11/12/13): “Circuit 20 by itself” and “Circuits 20
`
`and 21 [together]” are examples of a video controller. (Ex. 2018 at 45:15-25.)
`
`
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`On his four prior opinions, Dr. Buckman now rationalizes: “I did not state
`
`that either instance was the one and only . . . way to look at a video controller.”
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`(Ex. 2018 at 45:23-25.) But this is still a new opinion, and what Xilinx previously
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`admitted are patent owner’s “valid criticisms” are made even stronger because
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`Dr. Buckman applies no reliable principles and methods at all; he simply changes
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`4843-5654-9911.1
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`12
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`his testimony repeatedly without explaining the reason for the change, or the basis
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`for his latest opinion.
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`IV. CONCLUSION AND RELIEF REQUESTED
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`
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`Dr. Buckman is not qualified to offer expert testimony with respect to video
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`projection systems because his opinions are unreliable. His declarations (Exhibits
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`1005, 1011, and 1012) should be excluded.
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`Dated: December 18, 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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`4843-5654-9911.1
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`13
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`Exhibit 1001
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`Exhibit 1005
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`Exhibit 1011
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`Exhibit 1012
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`Exhibit 2002
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`LIST OF EXHIBITS
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`U.S. Patent No. 5,779,334
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`Declaration of A. Bruce Buckman, Ph.D. Under 37 C.F.R.
`§ 1.68
`
`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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`Decision re Institution of Inter Partes Review, in IPR2013-
`00029 (filed in this proceeding on Apr. 22, 2013)
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`Exhibit 2010
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`Transcript of Aug. 7, 2013 Deposition of A. Bruce Buckman
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`Exhibit 2011
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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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`Exhibit 2016
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`Sept. 12, 2013 Reply Report of Dr. A. Bruce Buckman (Ex.
`1013 in IPR2013-00029)
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`Exhibit 2017
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`Exhibit 2018
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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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`Exhibit 2020
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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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`4843-5654-9911.1
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`14
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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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`Dated: December 18, 2013
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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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`4843-5654-9911.1
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`1
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