UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
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`v.
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`D’AGOSTINO, JOHN
`Patent Owner
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`________________
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`
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`Case IPR2014-00543
`Patent 8,036,988
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`________________
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO EXCLUDE EVIDENCE
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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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`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`D’AGOSTINO, JOHN
`Patent Owner
`
`________________
`
`
`
`Case IPR2014-00543
`Patent 8,036,988
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`________________
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO EXCLUDE EVIDENCE
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`Patent Owner’s Updated List of Exhibits
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`Exhibit 2001: File History for U.S. Patent No. 6,636,833 (Flitcroft)
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`Exhibit 2002: CRU Statement (Reexamination No. 90/012,517)
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`Exhibit 2003: Appeal Brief (Reexamination No. 90/012,517)
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`Exhibit 2004: U.S. Patent No. 5,621,201
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`Exhibit 2005: Excerpts from Oxford Dictionary, Eighth Edition
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`Exhibit 2006: Excerpts from Random House Webster’s College
`Dictionary
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`Exhibit 2007: Declaration of Edward L. Gussin
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`Exhibit 2008: Supplemental Declaration of Edward L. Gussin
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`Exhibit 2009: Service of Supplemental Declaration of Edward L.
`Gussin.
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`Case IPR2014-00543
`Docket No. 253.009
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`1. Introduction
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`
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`This opposition addresses Petitioner’s objections to the Declaration of
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`Patent Owner’s expert Mr. Edward L. Gussin. These objections appear to be
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`based on three errors by Petitioner: (1) its misinterpretation that an expert must
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`have personal experience in the field of the invention to be qualified to testify;
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`(2) that the Board’s preliminary claim constructions bar the Patent Owner from
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`submitting evidence on claim construction and patentability under those claim
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`constructions; and (3) that the Board is unable to weigh Mr. Gussin’s testimony
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`without prejudice or confusion and without being misled.
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`2. Argument
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`A. An individual is not required to have personal experience in the field of
`an invention to qualify as an expert.
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`The Federal Circuit instructs that an individual not skilled in the field of
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`an invention is qualified as an expert when his “testimony [establishes] an
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`adequate relationship between his experience and the claimed invention.”1
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`Indeed, Federal Rule of Evidence 702 provides: “A witness who is qualified as
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`an expert by knowledge, skill, experience, training or education may testify in
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`1 SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1373 (2010).
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`1
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`Case IPR2014-00543
`Docket No. 253.009
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`the form of an opinion or otherwise.”2 Moreover, “[u]nlike an ordinary
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`witness . . . an expert is permitted wide latitude to offer opinions, including those
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`that are not based on firsthand knowledge or observation.”3 An expert witness in
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`a patent case does not “need to be officially credentialed in the specific matter
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`under dispute.”4 “Rule 702 imposes no requirement that experts have personal
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`experience in an area to offer admissible testimony.”5 Furthermore, the Board
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`recognizes “there is no requirement for a perfect match between the expert’s
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`experience and the field of the patent.”6
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`
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`Here, U.S. Patent Number 8,036,988 (“the ‘988 patent”) is in the field of
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`secure credit card purchases, which intrinsically involves computer hardware
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`and software technology. Mr. Gussin testified that his education and extensive
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`experience as it relates to computer hardware and software technology qualifies
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`2 Fed. R. Evid. 702.
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` Daubert v. Merrell Dow Pharm. Inc., 509 U.S. 579, 592 (1993).
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` Massok v. Keller Indus. Inc., 147 Fed. Appx. 651, 656 (9th Cir. 2005).
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` 3
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` 4
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` 5
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` Asetek Danmark A/S v. CMI USA, Inc., 2014 WL 5590699 at *2 (N.D. Ca.
`Nov. 2, 2014) (quoting Abaxis Inc. v.Cepheid, 2012 WL 2979019 (N.D. Ca. July
`19, 2012)).
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` 6
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` IPR2013-00285, Paper 47, at 34-35 (PTAB Nov. 19, 2014) (citing SEB S.A.,
`594 F.3d at 1372-73).
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`2
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`Case IPR2014-00543
`Docket No. 253.009
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`him as an expert to offer opinions in this proceeding. Specifically, Mr. Gussin
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`testified that his relevant education and experience includes:
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` An M.S. degree in Electrical Engineering from the University of
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`Southern California.7
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` 39 years of experience as an electrical engineer developing computer
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`hardware and software systems with technology relating to the
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`technology of the ‘486 patent.8
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` Served as an expert on claim construction and patent validity in six
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`prior patent litigation cases relating to computer hardware and software
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`technology.9
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` An inventor on four U.S. patents related to computer hardware and
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`software technology.10
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`Mr. Gussin’s testimony reveals that his extensive experience and knowledge as a
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`degreed electrical engineer in computer hardware and software technology
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`7 Declaration of Edward L. Gussin, Ex. 2007 (“Gussin Dec.”), at ¶ 2;
`Supplement Declaration of Edward L. Gussin, Ex. 2008 (“Gussin Supp. Dec”),
`at ¶ 4.
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` Ex. 2007 at ¶ 4; Ex. 2008 at ¶¶ 6-7.
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` Ex. 2007 at App. A; Ex. 2008 at ¶¶ 10-15.
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` 8
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` 9
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`10 Ex. 2007 at App. A; Ex. 2008 at ¶ 16.
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`3
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`Case IPR2014-00543
`Docket No. 253.009
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`provides him with the necessary skill and knowledge relevant to the technology
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`of the ‘988 patent to competently serve as an expert on claim construction and
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`patentability in this proceeding.
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`
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`In its motion to exclude, Petitioner relies on Sundance, Inc. v. DeMonte
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`Fabricating Ltd.,11 but this case is remarkably different from the situation here.
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`In Sundance, the Federal Circuit held that the trial court erred when it allowed
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`an expert to testify in “the absence of any suggestion of relevant technical
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`expertise.”12 The unqualified expert in Sundance was a patent attorney that did
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`not provide any technical experience that was related to the field of the
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`invention, but rather relied upon his experience as a patent attorney.13
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`
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`In SEB S.A., a case similar to the one here, the Federal Circuit
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`distinguished and characterized the situation in Sundance as “unusual” and
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`“nowhere close” to a situation where an expert demonstrates relevant technical
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`experience.14 Specifically, in SEB S.A., the Federal Circuit held that even though
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`the expert was not skilled in the field of the invention, his “testimony established
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`11 Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008).
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`12 Id. at 1361 (emphasis added).
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`13 Id.
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`14 SEB S.A., 594 F.3d at 1373.
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`4
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`Case IPR2014-00543
`Docket No. 253.009
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`an adequate relationship between his experience and the claimed invention” to
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`qualify him as an expert in field of the invention.15
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`
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` Here, in stark contrast to Sundance, but in parallel to SEB S.A., Mr.
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`Gussin has sufficiently established relevant technical expertise as provided by
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`his electrical engineering education, his 39 years of experience in developing
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`computer hardware and software technology, and his prior patent litigation
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`experience serving as an expert in patent cases involving computer hardware
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`and software technology. Moreover, despite having an opportunity to depose
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`Mr. Gussin and explore his qualifications, Petitioner did not depose Mr. Gussin.
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`Finally, Petitioner’s argument speaks to the weight of the testimony – not to the
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`admissibly of the testimony. Accordingly, for these reasons the Board should
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`find that Mr. Gussin is a qualified expert in the field of the ‘988 patent.
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` B. The testimony of Mr. Gussin is admissible because it is relevant to the
`unsettled claim construction and patentability issues in this proceeding.
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`Evidence is relevant when it has any tendency to make a fact of
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`
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`consequence more or less probable, and is not otherwise prohibited.16 Here,
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`Petitioner asserts a strange notion that because the Board has made preliminary
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`claim constructions, Patent Owner should be barred from submitting testimony
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`15 Id.
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`16 Fed. R. Evid. 401 and 402.
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`5
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`Case IPR2014-00543
`Docket No. 253.009
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`evidence to support Patent Owner’s claim constructions and patentability under
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`those constructions. Nothing requires Mr. Gussin’s testimony to be consistent
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`with or constrained by the Board’s preliminary claim constructions. This is
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`especially true since Patent Owner is only able to submit testimony evidence
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`after the Board made its preliminary claim constructions.
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`The proper construction of the ‘988 patent claims and the patentability of
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`those claims are at issue. Mr. Gussin’s discussion of the proper claim
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`construction and the patentability of the ‘988 patent claims speaks to these
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`unsettled issues and to the testimony of Petitioner’s expert Dr. Grimes on the
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`same. Particularly, Petitioner asserted claim constructions and non-patentability
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`of the ‘988 patent claims in its Petition and relied upon the Declaration of Dr.
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`Grimes to support those assertions.17 Mr. Gussin’s testimony is made in reply to
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`Petitioner’s assertions and Dr. Grimes’ testimony.18 Accordingly, for these
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`reasons the Board should find that Mr. Gussin’s testimony is relevant to the
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`issues in this proceeding.
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`17 See Petition at pp. 13-36.
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`18 See Ex. 2007, Gussin Dec at ¶¶ 7-27, ¶¶ 33-57.
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`6
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`Case IPR2014-00543
`Docket No. 253.009
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`C. Petitioner has not established that admission Mr. Gussin’s testimony
`would cause unfair prejudice or confuse or mislead the Board.
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`Petitioner has failed to identify any specific portions of Mr. Gussin’s
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`testimony that it believes to run afoul of Federal Rule of Evidence 403. Instead,
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`Petitioner summarily concludes that Mr. Gussin’s testimony should be excluded
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`under this rule. Further, Petitioner has not explained why the Board would be
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`unable to weigh Mr. Gussin’s testimony without prejudice or confusion and
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`without being misled. For these reasons, the Board should find that admitting
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`Mr. Gussin’s testimony would not violate Rule 403.
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`3. Conclusion
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` In summary, Mr. Gussin has established that his education, his 39 years
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`of experience in developing computer hardware and software technology, and
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`his prior patent litigation experience serving as an expert in cases involving
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`computer hardware and software technology is relevant to the technology of the
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`‘988 patent and thus qualifies him as an expert witness in this proceeding.
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`Petitioner cannot rely on Mr. Gussin not having personal experience in credit
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`card processing as the basis for excluding Mr. Gussin’s testimony. Further,
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`Petitioner has failed to demonstrate that Mr. Gussin’s testimony should be
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`excluded under Rules 401, 402, or 403. For these reasons, Patent Owner
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`respectfully requests this Board to deny Petitioner’s motion to exclude.
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`7
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`Case IPR2014-00543
`Docket No. 253.009
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`Respectfully Submitted,
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`
`
`By: /s/ Stephen Lewellyn
`Stephen J. Lewellyn (Reg. No. 51,942)
`Brittany J. Maxey (Reg. No. 57,621)
`Maxey Law Offices, PLLC
`100 Second Avenue South
`Suite 401 North Tower
`St. Petersburg, Florida 33701
`Telephone: 727-230-4949
`Facsimile: 727-230-4827
`s.lewellyn@maxeyiplaw.com
`b.maxey@maxeyiplaw.com
`Agent and Attorney for Patent Owner,
`John D’Agostino
`
`
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`April 16, 2015
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`8
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`CERTIFICATE OF SERVICE
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`Under 37 C.F.R. §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on April 16, 2015, a complete and entire copy of this Patent Owner’s
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`Opposition To Petitioner’s Motion To Exclude Evidence and accompanying
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`exhibits were provided via email to the Petitioner by serving the correspondence
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`email addresses of record as follows:
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`Robert Scheinfeld, Lead Counsel
`Baker Botts LLP
`30 Rockefeller Plaza, 44th Floor
`New York, New York 10112-4498
`Service Email: robert.scheinfeld@bakerbotts.com
`
`Eliot William, Back-up Counsel
`Baker Botts LLP
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`Service Email: eliot.williams@bakerbotts.com
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`Respectfully submitted,
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`
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`/s/Stephen Lewellyn
`Stephen J. Lewellyn
`Reg. No. 51,942
`Agent for Patent Owner
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