IN THE 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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`––––––––––
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner
`
`––––––––––
`
`Case IPR2014-00543
`(Patent 8,036,988)
`
`Title: System and Method for Performing Secure Credit Card Transactions
`
`
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`––––––––––
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`
`
`
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`PETITIONER’S MOTION TO EXCLUDE
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`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner
`
`––––––––––
`
`Case IPR2014-00543
`(Patent 8,036,988)
`
`Title: System and Method for Performing Secure Credit Card Transactions
`
`
`
`––––––––––
`
`
`
`
`
`PETITIONER’S MOTION TO EXCLUDE
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`Petitioner’s Motion to Exclude
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`Table of Contents
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`Page
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`Introduction .................................................................................................. 1
`
`
`Statement of Law ......................................................................................... 1
`
`
`Patent Owner’s Proffered Expert Testimony Should be Excluded Because
`Mr. Gussin Is Not Qualified as an Expert In the Pertinent Art .................... 3
`
`
`Level of Ordinary Skill in the Art ................................................................ 3
`
` Patent Owner’s Expert Does Not Qualify as a Person of Ordinary Skill in
`the Art, and Therefore His Testimony Should Be Excluded ....................... 4
`
`
`Patent Owner’s Expert Testimony Should Be Excluded As It Relies on
`Incorrect Claim Constructions ..................................................................... 5
`
`
`Conclusion .................................................................................................... 6
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`I.
`
`II.
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`III.
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`A.
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`B.
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`IV.
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`V.
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`
`
`
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`i
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`
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`Petitioner’s Motion to Exclude
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`PETITIONER’S UPDATED LIST OF EXHIBITS
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`Description
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`
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`Exhibit No.
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`Exhibit 1001 U.S. Patent No. 8,036,988
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`Exhibit 1002 File History for U.S. Patent No. 8,036,988
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`Exhibit 1003 File History for U.S. Reexamination No. 90/012,517
`
`Exhibit 1004 U.S. Patent No. 6,422,462 (“Cohen”)
`
`Exhibit 1005 U.S. Patent No. 6,636,833 (“Flitcroft”)
`
`Exhibit 1006 U.S. Patent No. 5,826,243 (“Musmanno”)
`
`Exhibit 1007 Complaint in D’Agostino v. MasterCard, Inc. et al. (13-cv-0738)
`
`Exhibit 1008 Declaration of Jack D. Grimes, Ph.D.
`
`Exhibit 1009 Excerpts from Random House Webster’s Unabridged Dictionary,
`Second Edition
`
`Exhibit 1010 U.S. Patent No. 6,064,987 (“Walker”)
`
`Exhibit 1011 U.S. Patent No. 5,283,829 (“Anderson”)
`
`Exhibit 1012
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`ISO 8583 Financial Transaction Card Originated Messages –
`Interchange Message Specifications (1992) (“ISO 8583”)
`
`Exhibit 1013 File History for U.S. Patent No. 7,840,486
`
`Exhibit 1014 Patent Trial and Appeal Board’s (“PTAB”) 3/7/14 CBM Decision
`for U.S. Patent No. 8,036,988
`
`Exhibit 1015 Patent Owner’s 12/24/13 Preliminary Response to Petitioner’s
`Request for CBM Patent Review of the ‘988 Patent
`
`
`
`
`ii
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`
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`Petitioner’s Motion to Exclude
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`Exhibit 1016 U.S. Provisional App. No. 60/079,884 (“’884 Provisional)
`
`Exhibit 1017 U.S. Provisional App. No. 60/099,614 (“’614 Provisional)
`
`Exhibit 1018 U.S. Provisional App. No. 60/098,175 (“’175 Provisional)
`
`Exhibit 1019 U.S. Provisional App. No. 60/092,500 (“’500 Provisional)
`
`Exhibit 1020 Statement Regarding Prior or Concurrent Proceedings (37 C.F.R. §
`1.565)
`
`Exhibit 1021 Examiners “Statement of Reasons for Patentability and/or
`Confirmation”
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`Exhibit 1022 Patent Owner’s 09/11/14 E-mail to Petitioner
`
`Exhibit 1023 Petitioner’s 09/11/14 E-mail to Patent Owner
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`Exhibit 1024 U.S. Census Bureau, “Statistics of U.S. Businesses Employment
`and Payroll Summary: 2012”
`
`Exhibit 1025 Petitioner’s Objections Under 37 C.F.R. § 42.64 to Patent Owner’s
`Evidence Submitted with Patent Owner’s Response
`
`Exhibit 1026 Declaration of Edward L. Gussin Served By Patent Owner under
`37 C.F.R. § 42.64(b)(2)
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`
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`
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`
`
`iii
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`
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`Petitioner’s Motion to Exclude
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`I.
`
`Introduction
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`Pursuant to 37 C.F.R. § 42.64(c), Petitioner MasterCard International
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`Incorporated (“MasterCard”) submits this Motion to Exclude Evidence submitted
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`by Patent Owner John D’Agostino (“Patent Owner”). MasterCard moves to
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`exclude the declaration of Patent Owner’s proffered expert, Edward L. Gussin,
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`under Federal Rule of Evidence 702 because he is not qualified as an expert on the
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`subject matter of U.S. Patent 8,036,988 (the “Challenged Patent”).
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`The definition of a person of ordinary skill in the field of the Challenged
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`Patent is not in dispute. Mr. Gussin agrees with the definition of a person of
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`ordinary skill proposed by MasterCard’s expert, Dr. Jack Grimes. However, there
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`is no evidence that Mr. Gussin himself has the qualifications that he admits are
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`required for a person of ordinary skill in the art. It is well-settled that, to be
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`qualified as an expert, one must at least be a person of ordinary skill. See
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`Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008).
`
`Mr. Gussin is not. Accordingly, Mr. Gussin’s declaration (Patent Owner Exhibit
`
`2007) should be excluded and any conclusions drawn therefrom deemed
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`unsupported.
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`II.
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`Statement of Law
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`Under the rules governing inter partes review, “[e]xcept as otherwise
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`provided in this subpart, the Federal Rules of Evidence shall apply to a
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`
`
`1
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`
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`Petitioner’s Motion to Exclude
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`proceeding.” 37 C.F.R. §42.62(a). Federal Rule of Evidence 702 permits the
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`admission of expert testimony from a qualified expert if “the expert’s scientific,
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`technical, or other specialized knowledge will help the trier of fact to understand
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`the evidence or to determine a fact in issue,” and if the testimony is based upon
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`sufficient data and reliable methods. Rule 702 further requires that an expert be
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`qualified “by knowledge, skill, experience, training, or education” in the relevant
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`field. Fed. R. Evid. 702. Expert testimony must be based on a reliable foundation
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`and be relevant to the task at hand. Daubert v. Merrell Dow Pharm, Inc., 509 US
`
`579, 597 (1993).
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`In a patent case, a person who is not skilled in the field of the invention
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`cannot qualify as an expert in that field under the Federal Rules of Evidence.
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`Sundance, Inc., 550 F.3d at 1363 (“Testimony proffered by a witness lacking the
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`relevant technical expertise fails the standard of admissibility under Fed. R. Evid.
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`702.”); see also In re Deters, 515 F.2d 1152, 1155 (CCPA 1975) (rejecting
`
`testimony of expert who was not a person of ordinary skill in the art). Patent
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`validity is “exclusively determined from the perspective of ordinary skill in the
`
`art.” Sundance, 550 F.3d at 1361. Furthermore, admitting the testimony of a
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`person not skilled in the art on the issue of patent validity “serves only to cause
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`mischief… .” Id. at 1362. Accordingly, the opinion of a person who is not skilled
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`in the field of the invention is inadmissible. Id.
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`
`
`2
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`
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`Petitioner’s Motion to Exclude
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`III. Patent Owner’s Proffered Expert Testimony Should be Excluded
`Because Mr. Gussin Is Not Qualified as an Expert In the Pertinent Art
`A. Level of Ordinary Skill in the Art
`Petitioner’s expert, Dr. Grimes, has provided a precise definition of the level
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`of ordinary skill in the art. He stated: “In my opinion, the level of ordinary skill in
`
`the art of the ’988 patent is a person having a B.S. degree in Electrical Engineering
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`or Computer Science, or the equivalent experience, with at least three years of
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`experience (or post-graduate work) in payment card payment technologies,
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`including experience in existing, accepted remote payment card transaction
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`practices in 1998-1999, such as methods of performing secure credit card
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`purchases of goods and services which reduces the risk of potential fraud and theft
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`by eliminating unauthorized access
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`to a consumer’s private credit card
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`information.” Declaration of Dr. Jack D. Grimes, Ph.D., Exhibit 1008 (“Grimes
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`Dec.”), at ¶ 19 (emphasis added).
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`Patent Owner’s expert, Mr. Gussin, reviewed, agreed with, and adopted the
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`level of ordinary skill suggested by Dr. Grimes. In particular, Mr. Gussin stated:
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`“Based on my experience as a professional engineer leading the development of
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`signal and data processing systems and my education, I generally agree with Dr.
`
`Grimes’ definition of a person of ordinary skill in the art.” Declaration of Edward
`
`L. Gussin, Exhibit 2007 (“Gussin Dec.”), at ¶¶ 29-30.
`
`
`
`3
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`
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`Petitioner’s Motion to Exclude
`
`B.
`
`Patent Owner’s Expert Does Not Qualify as a Person of
`Ordinary Skill in the Art, and Therefore His Testimony
`Should Be Excluded
`
`There is no evidence in the record that Mr. Gussin’s expertise is sufficient to
`
`allow him to testify as an expert in this trial. His experience falls short of the
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`requirements for a person of skill in the field that he himself adopted. For
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`example, Mr. Gussin has no experience whatsoever with the payment industry,
`
`with card payment technologies, or with remote payment card transaction practices
`
`– much less the three years of experience that he agreed was required of a person
`
`of ordinary skill in the art.
`
`MasterCard timely objected to these deficiencies.
`
` See Petitioner’s
`
`Objections Under 37 C.F.R. § 42.64, Exhibit 1025, at pp. 1-2. In response, Mr.
`
`Gussin prepared a supplemental declaration providing additional detail regarding
`
`his technical qualifications. See Declaration of Edward L. Gussin in Reply to
`
`Petitioner’s Objections to Declaration Filed with Patent Owner’s Response,
`
`Exhibit 1026 (“Gussin Supp. Dec.”). However, Mr. Gussin’s supplemental
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`declaration still failed to provide any evidence to suggest that Mr. Gussin satisfies
`
`the requirements for a person of skill in the art. For example, Mr. Gussin again
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`does not indicate he has any experience whatsoever with payment card payment
`
`technologies or remote payment card transaction practices, falling well short of the
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`requirements for a person of skill that he adopted.
`
`
`
`4
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`
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`Petitioner’s Motion to Exclude
`
`Given the opportunity to amend his declaration, Mr. Gussin was unable to
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`set forth any additional relevant experience that he is qualified “by knowledge,
`
`skill, experience, training, or education” in the relevant field. As a result, Mr.
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`Gussin cannot hold himself out as a person skilled in the field of the Challenged
`
`Patent and cannot be properly qualified as an expert in the field. Patent Owner has
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`failed to provide sufficient bases for this Board to find that Mr. Gussin’s opinions
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`are reliable and relevant, and would serve any purpose other than to clutter the
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`record of this trial with unreliable and irrelevant testimony. Accordingly, Mr.
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`Gussin’s opinions are inadmissible under Fed. R. Evid. 702, and his declaration
`
`should be excluded. Sundance, 550 F.3d at 1361-2 (“… it is an abuse of discretion
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`to permit a witness to testify as an expert on the issue[] of … invalidity unless that
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`witness is qualified as an expert in the pertinent art.”).
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`IV. Patent Owner’s Expert Testimony Should Be Excluded As It Relies on
`Incorrect Claim Constructions
`
`Mr. Gussin’s declaration also proposes and relies on claim constructions that
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`are inconsistent with the Board’s claim constructions. Compare Gussin Dec. at ¶¶
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`7 to 27 with Decision Instituting Inter Partes Review at pp. 6-10. Mr. Gussin goes
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`on to rely on these incorrect claim constructions to offer opinions regarding the
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`prior art and the validity of the Challenged Patent. See Gussin Dec. at ¶¶ 33 to 57.
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`The Federal Rules of Evidence prohibit the admission of these portions of Mr.
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`Gussin’s declaration: these paragraphs are inadmissible as irrelevant under Rules
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`
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`5
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`
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`Petitioner’s Motion to Exclude
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`401 and 402 and should also be excluded under Rule 403. See Liquid Dynamics
`
`Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1224, n. 2 (Fed.Cir. 2006) (affirming
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`exclusion of expert testimony based on incorrect claim construction as irrelevant).
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`V. Conclusion
`For the foregoing reasons, MasterCard respectfully requests that Mr.
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`Gussin’s declaration be excluded from evidence, and any conclusions in Patent
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`Owner’s Response that rely on his declaration should be deemed unsupported.
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`Respectfully submitted,
`BAKER BOTTS LLP
`/Robert C. Scheinfeld/
`Robert C. Scheinfeld
`Reg. No. 31,300
`30 Rockefeller Plaza, 44th Floor
`New York, New York 10112-4498
`Phone: (212) 408-2512
`Facsimile: (212) 408-2501
`robert.scheinfeld@bakerbotts.com
`
`ATTORNEYS FOR PETITIONER
`MASTERCARD INTERNATIONAL
`INCORPORATED
`
`April 6, 2015
`
`
`
`Eliot D. Williams
`Reg. No. 50,822
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7511
`Facsimile: (650) 739-7611
`eliot.williams@bakerbotts.com
`
`
`
`
`6
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on the 6th day of April, 2015, a complete and
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`entire copy of PETITIONER’S MOTION TO EXCLUDE and EXHIBITS 1025-
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`1026 were served via electronic mail to the Patent Owner’s attorneys of record at
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`the following address:
`
`
`
`Stephen J. Lewellyn
`Brittany J. Maxey
`Maxey Law Offices, PLLC
`100 Second Avenue South
`Suite 401 North Tower
`St. Petersburg, Florida 33701
`s.lewellyn@maxeyiplaw.com
`b.maxey@maxeyiplaw.com
`
`
`
`
`
`
`
`Respectfully submitted,
`BAKER BOTTS LLP
`
`/Robert C. Scheinfeld/
`Robert C. Scheinfeld
`Reg. No. 31,300
`30 Rockefeller Plaza, 44th Floor
`New York, New York 10112-4498
`Phone: (212) 408-2512
`Facsimile: (212) 408-2501
`robert.scheinfeld@bakerbotts.com
`
`ATTORNEYS FOR PETITIONER
`MASTERCARD INTERNATIONAL
`INCORPORATED
`
`
`
`
`
`Eliot D. Williams
`Reg. No. 50,822
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7511
`Facsimile: (650) 739-7611
`eliot.williams@bakerbotts.com
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