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`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
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`v.
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`JOHN D’AGOSTINO
`Patent Owner
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`––––––––––
`
`Case IPR2014-00543
`(Patent 8,036,988)
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`Title: System and Method for Performing Secure Credit Card Transactions
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`––––––––––
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
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`Petitioner’s Reply in Support of its Motion to Exclude
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`Table of Contents
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`Page
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`Introduction .................................................................................................. 1
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`Mr. Gussin’s Proffered Expert Testimony Should be Excluded
`Because He Is Not Qualified as an Expert In the Pertinent Art ................... 2
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`Mr. Gussin’s Proffered Expert Testimony Should Be Excluded As It
`Relies on Incorrect Claim Constructions ..................................................... 4
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`Conclusion .................................................................................................... 5
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`I.
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`II.
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`III.
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`IV.
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`i
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`Petitioner’s Reply in Support of its Motion to Exclude
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`I.
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`Introduction
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`Petitioner MasterCard International Incorporated (“MasterCard”) submits
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`this Reply in support of its Motion to Exclude Evidence submitted by Patent
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`Owner John D’Agostino (“Patent Owner”). In its Opposition, Patent Owner argues
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`that the declaration of its proffered expert, Edward L. Gussin, is admissible
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`because there is an “adequate relationship between his experience and the claimed
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`invention.” Opposition, pp. 1, 5. Patent Owner, however, fails to explain in
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`particular how Mr. Gussin’s general experience in computer hardware and
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`software technology is related in any way to credit card controls or to performing
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`secure credit card transactions, the technical fields underlying U.S. Patent
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`8,036,988 (the ‘988 Patent). Further, even if Mr. Gussin’s testimony is admissible,
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`it should be entitled to little or no weight given the fact that his technical
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`experience is unrelated to the technology at issue.
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`In addition, Patent Owner argues that the Board’s claim constructions in its
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`Decisions to Institute are only preliminary and that, as a result, Mr. Gussin’s
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`testimony need not be consistent with the Board’s constructions. Patent Owner,
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`however, just repeats the same claim construction arguments without citing any
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`authority supporting its contention that it should have another chance to present the
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`same claim construction arguments.
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`
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`1
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`
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`Petitioner’s Reply in Support of its Motion to Exclude
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`II. Mr. Gussin’s Proffered Expert Testimony Should be Excluded
`Because He Is Not Qualified as an Expert In the Pertinent Art
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`Contrary to Patent Owner’s suggestion, the proffered expert in Sundance
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`was not simply a patent attorney, but also was a mechanical engineer with
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`practicing experience. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
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`1356, 1361 (Fed. Cir. 2008); see also Brief of Appellant DeMonte Fabricating Ltd.,
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`2007 WL 4739102, at *7 (Dec. 21, 2007). Despite having technical expertise, the
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`Federal Circuit found that the proffered expert’s testimony was inadmissible
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`because his expertise was not sufficiently related to the specific mechanical field of
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`the claimed invention, i.e., “the field of tarps or covers.” Id. at 1361-62.
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`Similarly, Mr. Gussin may have technical expertise as an engineer but this
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`proffered expertise is not in any way related to the specific field of the claimed
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`invention.
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`Patent Owner argues that Mr. Gussin’s expert testimony is admissible under
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`Federal Rule of Evidence 702 because his “testimony [establishes] an adequate
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`relationship between his experience and the claimed invention.” SEB S.A. v.
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`Montgomery Ward & Co., Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010). But Patent
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`Owner fails to explain how Mr. Gussin’s experience is related to the claimed
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`invention. In particular, Patent Owner admits that the ‘988 Patent is in the field of
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`“secure credit card purchases” and it does not dispute that Mr. Gussin has no
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`expertise in secure credit card purchases. (In fact, Mr. Gussin has no experience
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`2
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`Petitioner’s Reply in Support of its Motion to Exclude
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`whatsoever with the payment industry, with card payment technologies, or with
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`remote payment card transaction practices.) Instead, Patent Owner only contends
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`that Mr. Gussin has general experience in the field of “computer hardware and
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`software technology.” This fails to meet the requirements of FRE 702, however,
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`because none of Mr. Gussin’s computer-related experience is related to what he
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`himself admits is the pertinent field of technology underlying the claimed
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`invention – secure credit card purchases.
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`Unlike the expert in SEB, Mr. Gussin has not provided any evidence to
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`demonstrate how his experience is relevant to the claimed invention. See SEB, 594
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`F.3d at 1373. In SEB, the Federal Circuit admitted the testimony of the expert
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`because he explained that the claimed invention “involves the selection of
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`particular ... polymer material that have certain characteristics and furthermore that
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`[m]ost of the areas [he has] worked in ... have used polymers in one form or
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`another.” Id. (internal quotations omitted). Having testified that he had “sufficient
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`relevant technical expertise” to the claimed invention, the Federal Circuit permitted
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`the expert’s testimony under FRE 702. Id.
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`Here, on the other hand, Mr. Gussin has failed to establish a relationship
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`between his experience and the claimed invention. In fact, Mr. Gussin has not
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`presented any evidence that his general experience in computer hardware and
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`software technology is adequately related to the field of secure credit card
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`
`
`3
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`Petitioner’s Reply in Support of its Motion to Exclude
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`purchases to support the admission of his testimony under FRE 702.1 Instead,
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`Patent Owner simply states that secure credit card purchases “intrinsically
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`involves” computer hardware and software. See Opposition, p. 2. This conclusory
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`statement falls well short of the required testimony under FRE 702 to establish the
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`adequate relationship between a proffered expert’s experience and the claimed
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`invention. See SEB, 594 F.3d at 1373.
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`III. Mr. Gussin’s Proffered Expert Testimony Should Be Excluded As
`It Relies on Incorrect Claim Constructions
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`Patent Owner repeats its claims construction arguments suggesting, in effect,
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`that it should have a second bite at the apple. See Patent Owner Preliminary
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`Response (Paper 7). The Board, however, already rejected the Patent Owner’s
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`proposed claim constructions. See Decision Instituting Inter Partes Review (Paper
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`8). Yet, in spite of the Board’s informed decision, Mr. Gussin offers opinions
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`based on constructions this Board has already rejected. See Gussin Dec. at ¶¶ 33 to
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`57. And it does so without citing any authority to support its view that it is entitled
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`to resubmit arguments previously rejected. Accordingly, the Board should sustain
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`Petition’s objections under FRE 401-403 and prohibit the admission of those
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`1 Even if Mr. Gussin’s testimony were admissible, it should be entitled to little
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`weight given the fact that Mr. Gussin’s technical experience is unrelated to the
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`technology of the claimed invention.
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`4
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`Petitioner’s Reply in Support of its Motion to Exclude
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`portions of Mr. Gussin’s declaration relying on previously rejected constructions..
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`See Liquid Dynamics Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1224, n. 2 (Fed.
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`Cir. 2006) (affirming exclusion of expert testimony based on incorrect claim
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`construction as irrelevant).
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`IV. 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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`
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`April 27, 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
`
`
`
`
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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
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on the 27th day of April, 2015, a complete and
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`entire copy of PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO
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`EXCLUDE was served via electronic mail to the Patent Owner’s attorneys of
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`record at the following address:
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`
`
`
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`
`
`
`
`
`
`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
`
`
`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
`
`
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`
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