UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`
`_____________________
`
`Case IPR2014-00199
`Patent 6,771,970
`_____________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER'S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`
`_____________________
`
`Case IPR2014-00199
`Patent 6,771,970
`_____________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER'S
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`Pursuant to the Scheduling Order (Paper No. 19) Petitioner Wavemarket
`
`d/b/a Location Labs timely opposes Patent Owner's Motion to Exclude Evidence
`
`filed December 30, 2014 ("Motion"). The Patent Owner has moved to exclude the
`
`entire Declaration of Petitioner's rebuttal witness, Dr. Craig Rosenberg (Exhibit
`
`1020). For at least the reasons explained in detail below, Patent Owner's request to
`
`exclude this evidence is entirely without merit.
`
`The Board instituted trial of claim 18 of the '970 Patent in its Decision of
`
`May 9, 2014 (Paper No. 18, "Decision"). The Board found that Petitioner had
`
`adequately shown that the Elliot reference (Exhibit 1003) discloses each and every
`
`element of claim 18, including the recited "map database" and "map engine for
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`manipulating said map database." Decision, pp. 16-17. In doing so, the Board did
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`not feel it necessary to construe the well-known terms "database" or "engine."
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`Decision, p. 7. On August 11, 2014 the Patent Owner filed its Response to the
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`petition ("Response"). The only defense offered in the Response is that Elliot fails
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`to disclose a "map database" or "map engine for manipulating said map database."
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`Given the breadth of the claim language on its face, the key to the Patent Owner's
`
`strategy is to import limitations into the claims from cherry-picked dictionary
`
`definitions introduced through its expert's testimony. On November 10, 2014,
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`Petitioner filed its Reply to the Patent Owner's Response ("Reply"). As part of its
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`Reply, Petitioner introduced the testimony of Dr. Craig Rosenberg ("Roseberg
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`Case IPR2014-00199
`Patent 6,771,970
`Decl."; Exhibit 1020) as a rebuttal witness. In his role as a rebuttal witness, Dr.
`
`Rosenberg's testimony addresses those points raised in the Patent Owner's
`
`Response and in the Patent Owner's expert witness declaration. The Rosenberg
`
`Decl. is helpful to the finder of fact for at least the reasons that it includes an
`
`explanation of how Elliot does in fact disclose the claimed "map database" and
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`"map engine for manipulating said map database," and further includes an
`
`explanation of how the Patent Owner's expert overlooks the teachings of Elliot and
`
`misinterprets the plain language of the claims.
`
`I.
`
`GENERAL PRINCIPLES
`
`As the movant, the Patent Owner bears the burden of demonstrating that it is
`
`entitled to the drastic measure of excluding the entire Rosenberg Decl. 37 C.F.R. §
`
`42.20(c).
`
`The Board has made it clear that policy considerations favor inclusion and
`
`consideration of evidence that is available to the public during these proceedings:
`
`There is a strong public policy for making all information filed
`in a non-jury, quasi-judicial administrative proceeding available
`to the public, especially in an inter partes review which
`determines the patentability of claim in an issued patent. It is
`within the Board’s discretion to assign the appropriate weight to
`be accorded to evidence.
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-
`00002, Paper No. 66, p. 60.
`
`- 3 -
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`
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`Case IPR2014-00199
`Patent 6,771,970
`Moreover, these proceedings are heard by a panel of administrative patent
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`judges possessing considerable substantive and procedural expertise who are
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`capable of attributing appropriate weight to all of the evidence of record:
`
`We also agree with [patentee] that “the Board, sitting as a non-
`jury tribunal with administrative expertise, is well-positioned to
`determine and assign appropriate weight to the evidence
`presented in this trial, without resorting to formal exclusion that
`might later be held reversible error.” Opp. 1 (citing e.g., S.E.C.
`v. Guenthner, 395 F. Supp. 2d 835, 842 n.3 (D. Neb. 2005)).
`Id. at p. 70.
`
`Rule 702 of the Federal Rules of Evidence (FRE) governs admissibility of
`
`expert testimony in these proceedings. 37 C.F.R. § 42.62(a). Pursuant to Rule
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`702, a witness who is qualified as an expert by knowledge, skill, experience
`
`training or education may testify in the form of an opinion.
`
`Finally, challenges to the credibility of a witness and weight of the evidence
`
`raised are not appropriate in a motion to exclude. 77 Fed. Reg. 48,612, 48,633
`
`(Aug. 14, 2012); and 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012).
`
`II.
`
`DR. ROSENBERG IS QUALIFIED TO OFFER EXPERT
`TESTIMONY IN THIS TRIAL UNDER RULE 702
`
`FRE 702 reads:
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`- 4 -
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`Case IPR2014-00199
`Patent 6,771,970
`A witness who is qualified as an expert by knowledge, skill,
`experience, training, or education may testify in the form of an
`opinion or otherwise if:
`technical, or other specialized
`(a)
`the expert’s scientific,
`knowledge will help the trier of fact to understand the evidence
`or to determine a fact in issue;
`(b) the testimony is based on sufficient facts or data;
`(c) the testimony is the product of reliable principles and
`methods; and
`(d) the expert has reliably applied the principles and methods to
`the facts of the case.
`(Emphasis added).
`
`The Patent Owner argues that Dr. Roseberg does not qualify as a person of
`
`ordinary skill in the art, but does not address the correct legal issue of whether Dr.
`
`Rosenberg's testimony should be considered pursuant to FRE 702. See, Liberty
`
`Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2013-00004, Paper No. 53,
`
`p. 60 ("Liberty has not shown that Rule 702 of the Federal Rules of Evidence
`
`requires the witness to have particular experience with the specific subject matter
`
`of the . . . patent or requires the relevant experience of the witness to have been
`
`acquired during the January 1996 time-frame."); Id. at p. 59 ("It is only the
`
`'hypothetical' person of ordinary skill in the art who possesses ordinary skill . . .
`
`[t]he qualifications of [the expert], as summarized in his curriculum vitae . . .
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`- 5 -
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`Case IPR2014-00199
`Patent 6,771,970
`qualify him to give expert testimony . . .). The Patent Owner's motion fails for this
`
`reason alone.
`
`The Patent Owner falsely alleges on page 3 of its Motion that Dr. Roseberg
`
`"admits" that he does not hold a degree in computer science, electrical engineering
`
`or any comparable degree. Aside from this assertion being false, it fails to explain
`
`why Dr. Rosenberg's testimony is precluded by FRE 702. Dr. Rosenberg's
`
`educational background is more that adequate to provide a foundation for
`
`understanding, applying and explaining any technical principle at issue in this trial.
`
`Dr. Rosenberg possesses a Ph.D., successfully completed a core engineering
`
`curriculum of study, and studied more advanced subjects such as computer
`
`programming, CAD/CAM, artificial intelligence and computer networks.
`
`Supplemental Declaration of Dr. Craig Rosenberg, Exhibit 2021. One need only
`
`look to Dr. Rosenberg's actual work and experience in the field to prove that his
`
`educational background is more than sufficient. See, Exhibit 1020, ¶¶4-9. There
`
`is no requirement imposed by the FRE that an expert's qualifications perfectly
`
`match the field of the patent at issue. SEB S.A. v. Montgomery Ward & Co., 594
`
`F.3d 1360, 1373 (Fed. Cir. 2010). In addition, FRE 702 states that an expert can
`
`be qualified to offer opinion testimony "by knowledge, skill, experience, training,
`
`or education." Thus, FRE 702 recognizes that it is the overall qualifications of an
`
`individual that should be examined. The Patent Owner arguments concerning Dr.
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`- 6 -
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`Case IPR2014-00199
`Patent 6,771,970
`Rosenberg's educational background as being different form the definitions of a
`
`person of ordinary skill in the art are misplaced and unavailing.
`
`The Patent Owner makes the even more outlandish argument that Dr.
`
`Rosenberg lacks adequate work experience to qualify as an expert pursuant to the
`
`FRE. Motion, p. 4. Dr. Rosenberg's experience includes: (i) 19 years as a
`
`technical consultant in areas including software engineering and design,
`
`programming, and user interface design, applied to domains including mobile
`
`devices (Rosenberg Decl., ¶5); (ii) a technical consultant for Boeing in areas
`
`including systems architecture and mapping software, networking,
`
`communications, and mobile computing (Rosenberg Decl., ¶6); (iii) systems
`
`engineering and software development for the Department of Homeland Security
`
`(Rosenberg Decl., ¶6); systems engineering and software development involving
`
`moving maps with intelligent overlays for the U.S. Army Future Combat Systems
`
`(Rosenberg Decl., ¶6); over 4 years serving as the founder and CEO of a Seattle
`
`technology company (WhereWuz) focusing on location tracking applications for
`
`GPS enabled smartphones (Rosenberg Decl., ¶8, and Exhibit 1020, p. 23); and
`
`over twenty two publications relating to computer software applications
`
`(Rosenberg Decl., ¶8). Dr. Rosenberg's experience is more than adequate to
`
`establish his technical expertise. There can be no serious doubt that Dr.
`
`Rosenberg's testimony is the result of "the same level of intellectual rigor that
`
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`Case IPR2014-00199
`Patent 6,771,970
`characterizes the practice of an expert in the relevant field." Kuhmo Tire Co. v.
`
`Carmichael, 526 U.S. 137 152 (1999).
`
`The Patent Owner's sole citation to Sundance Inc. v. DeMonte Fabricating
`
`Ltd.1 on page 4 of its Motion fails to support its position. Sundance involved a
`
`review of the District Court's admission of the testimony, before a jury, of a patent
`
`law expert (patent attorney) on issues of noninfringement and invalidity. The
`
`Federal Circuit found that the District Court abused its discretion by allowing the
`
`jury to hear the testimony because "[a]llowing a patent law expert without any
`
`technical expertise to testify on the issues of infringement and validity amounts to
`
`nothing more than advocacy from the witness stand." Id. at 1364-65 (emphasis
`
`added). Unlike the facts in Sundance, there is no jury of laypeople to protect, and
`
`Dr. Rosenberg indeed possesses a great deal of technical expertise in the field.
`
`III. DR. ROSENBERG'S OPINIONS REST UPON THE BEDROCK OF
`THE CLAIM LANGUAGE, SPECIFICATION AND REFERENCE
`DISCLOSURE
`
`The Patent Owner alleges, without justification or cited authority, that the
`
`opinions of Dr. Roseberg should be excluded because they are conclusory and/or
`
`not the result of an application of "the principles and methods to the facts of this
`
`1 550 F.3d 1356 (Fed. Cir. 2008).
`
`- 8 -
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`
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`Case IPR2014-00199
`Patent 6,771,970
`case." Motion, p. 5. First, the Board has consistently noted that the issue of
`
`whether a witness's testimony includes the underlying facts or data goes to the
`
`weight of the evidence, not its admissibility. See, e.g., Corning Inc. v. DSM IP
`
`Assets B.V., IPR2013-00048, Paper No. 94, p. 74 (citing 37 C.F.R. § 42.65(a)).
`
`Second, Dr. Rosenberg's rebuttal testimony is well-reasoned and supported by the
`
`explicit language of the specification and claim 18 of the '970 Patent, as well as the
`
`disclosure of the Elliot reference (Exhibit 1003).
`
`The Patent Owner incorrectly alleges that Dr. Rosenberg's declaration
`
`should be excluded from evidence because of "his failure to identify definitions for
`
`the disputed claim terms." Motion, p. 6. With regard to the Patent Owner's
`
`contention that the Elliot reference fails to disclose the "map database" recited in
`
`claim 18, Dr. Rosenberg methodically explains how the facts alleged in the
`
`Petition demonstrate that Elliot does in fact explicitly disclose the claimed "map
`
`database." In doing so, Dr. Rosenberg points to facts alleged in the Petition
`
`(Rosenberg Decl., ¶13), then turns to an analysis of Elliot to demonstrate how the
`
`"web server with its associated files" described by Elliot expressly satisfies the
`
`claimed "map database" (Rosenberg Decl., ¶¶14-17). Given that Dr. Rosenberg
`
`determines that Elliot explcitly discloses the claimed "map database," and that
`
`there is nothing inconsistent between how the term "database" is used in claim 18
`
`of the '970 Patent and the Elliot reference, Dr. Rosenberg concludes that Elliot
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`Case IPR2014-00199
`Patent 6,771,970
`does in fact disclose a "map database." Rosenberg Decl., ¶18. Under these
`
`circumstances, there is no real claim construction issue that need be resolved to
`
`determine that Elliot in fact discloses a "map database"; the claim calls for a map
`
`database and Elliot discloses a map database, period. The Patent Owner seeks to
`
`synthesize a claim construction issue from thin air for the purposes of reading
`
`limitations into the claims from extrinsic dictionary definitions.
`
`With respect to the recited "map engine for manipulating said map
`
`database," Dr. Rosenberg explains that the term "engine" is a common term in the
`
`art, looks to how the term is used on the face of the claim (i.e., "for manipulating
`
`said map database"), then looks to the specification of the '970 Patent to understand
`
`the above-quoted claim limitation. Rosenberg Decl., ¶¶27-28. Dr. Rosenberg
`
`explains that the specification of the '970 Patent describes an engine as accessing
`
`and/or obtaining a map from a map database, and based on this analysis, one of
`
`ordinary skill in the art would interpret an element of component that accesses
`
`and/or obtains a map from a database as satisfying the claimed "a map engine for
`
`manipulating said map database." Rosenberg Decl., ¶29. Dr. Rosenberg then
`
`proceeds to explain how the Patent Owner's interpretation of "engine" seeks to
`
`introduce limitations into the claim that find no basis in the claim language itself or
`
`on the specification of the '970 Patent (Rosenberg Decl., ¶30), and how the Web
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`- 10 -
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`Case IPR2014-00199
`Patent 6,771,970
`server (34) of Elliot satisfies the claimed "map engine for manipulating said map
`
`database" (Rosenberg Decl., ¶¶31-34).
`
`Therefore, the claims by the Patent Owner that the opinions expressed by
`
`Dr. Rosenberg are conclusory, or do not reliably apply the principles and methods
`
`to the facts of the case, are entirely without merit.
`
`IV. CONCLUSION
`
`The declaration of Dr. Craig Rosenberg, Exhibit 1020, proffered by the
`
`Petitioner in its Reply is admissible under the FRE. The Patent Owner's Motion to
`
`Exclude is entirely devoid of any legitimate basis to exclude this evidence from the
`
`public record, and should be denied.
`
`Dated: January 13, 2014
`
`Respectfully submitted,
`Dentons US LLP
`
`By:
`
`/Scott W. Cummings /
`
`Mark L. Hogge, Reg. No. 31,622
`Email: mark.hogge@dentons.com
`
`Scott W. Cummings, Reg. No. 41, 567
`Email: scott.cummings@dentons.com
`
`Attorneys for Petitioner
`
`- 11 -
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`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the foregoing PETITIONER’S
`OPPOSITION TO PATENT OWNER'S MOTION TO EXCLUDE EVIDENCE
`was served by electronic mail, in its entirety, on the following Attorneys of record
`in IPR2014-00199.
`
`Thomas Engellenner
`
`Reza Mollaaghababa
`
`Pepper Hamilton LLP
`
`125 High Street
`
`Andy Chan
`
`Pepper Hamilton LLP
`
`333 Twin Dolphin Dr.
`
`Suite 400
`
`19th Floor, High Street Tower
`
`Redwood City, CA 94065
`
`Boston, MA 02110
`
`chana@pepperlaw.com
`
`engellennert@pepperlaw.com
`
`mollaaghababar@pepperlaw.com
`
`Dated: January 13, 2014
`
`By: /Nona Durham/
`Nona Durham
`
`
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