IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner
`
`––––––––––
`
`Case IPR2014-00544
`(Patent 7,840,486)
`
`Title: System and Method for Performing Secure Credit Card Transactions
`
`––––––––––
`
`PETITIONER’S OBJECTIONS UNDER 37 C.F.R. § 42.64
`TO PATENT OWNER’S EVIDENCE SUBMITTED WITH
`PATENT OWNER’S RESPONSE
`
`
`
`
`MasterCard, Exh. 1021, p. 1
`
`
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner
`
`––––––––––
`
`Case IPR2014-00544
`(Patent 7,840,486)
`
`Title: System and Method for Performing Secure Credit Card Transactions
`
`––––––––––
`
`PETITIONER’S OBJECTIONS UNDER 37 C.F.R. § 42.64
`TO PATENT OWNER’S EVIDENCE SUBMITTED WITH
`PATENT OWNER’S RESPONSE
`
`
`
`
`MasterCard, Exh. 1021, p. 1
`
`
`
`Petitioner’s Objections Under 37 C.F.R. § 42.64
`
`Pursuant to 37 C.F.R. § 42.64, Petitioner MasterCard International Incorporated
`
`(“MasterCard”) submits the following objections to the evidence submitted with
`
`Patent Owner’s Response Under 37 C.F.R. § 42.120 (“Patent Owner’s Response”).
`
`MasterCard objects to the Declaration of Edward L Gussin (Exhibit 2007, hereafter
`
`“Gussin Declaration”) and all corresponding portions of Patent Owner’s Response
`
`that rely on the paragraphs of the Gussin Declaration, as follows:
`
` MasterCard objects, under Fed. R. Evid. 401, 402, 403, and 702
`
`(respectively, “Rules 401, 402, 403, and 702”), to the admission into
`
`evidence of the entire Gussin Declaration because Mr. Gussin is not
`
`someone of ordinary skill in the art and, consequently, his opinions are
`
`irrelevant (under Rule 401), inadmissible (under Rule 402), should be
`
`excluded as prejudicial, confusing and wasteful (under Rule 403), and
`
`unqualified (under Rule 702). Mr. Gussin himself states that he
`
`“generally agree[s] with Dr. Grimes’s definition of a person of ordinary
`
`skill in the art,” which according to Dr. Grimes is “a person having a B.S.
`
`degree in Electrical Engineering or Computer Science, or the equivalent
`
`experience, with at least three years of experience (or post-graduate
`
`work) in payment card payment technologies, including experience in
`
`existing, accepted remote payment card transaction practices in 1998-
`
`1999, such as methods of performing secure credit card purchases of
`
`
`
`- 1 -
`
`MasterCard, Exh. 1021, p. 2
`
`
`
`Petitioner’s Objections Under 37 C.F.R. § 42.64
`
`goods and services which reduces the risk of potential fraud and theft by
`
`eliminating unauthorized access to a consumer’s private credit card
`
`information.” Expert Declaration of Dr. Jack D. Grimes (Exhibit 1008),
`
`p. 10. Nowhere, however, in Mr. Gussin’s declaration (or appendices in
`
`support) is there any evidence to suggest that Mr. Gussin satisfies this
`
`requirement or has any experience whatsoever with payment card
`
`payment technologies or methods of performing secure credit card
`
`purchases. As a result, Mr. Gussin is not someone of ordinary skill in the
`
`art; he lacks sufficient bases for his opinions, which accordingly should
`
`be excluded.
`
` MasterCard objects, under Fed. R. Evid. 701, to the admission into
`
`evidence of the entire Gussin Declaration because as a lay witness he is
`
`not entitled to present opinion testimony.
`
` MasterCard objects, under Fed. R. Evid. 401, 402, and 403, to the
`
`admission into evidence of paragraphs 7 to 21, and 26 to 45 of the Gussin
`
`Declaration because such paragraphs present either (1) claim construction
`
`opinions offering constructions different from
`
`this Board’s prior
`
`conclusions; and/or (2) “[o]pinions about Cohen” and anticipation that
`
`are based on such different constructions. As a result, such paragraphs
`
`are irrelevant (under Rule 401), inadmissible (under Rule 402), and
`
`
`
`- 2 -
`
`MasterCard, Exh. 1021, p. 3
`
`
`
`Petitioner’s Objections Under 37 C.F.R. § 42.64
`
`should be excluded as prejudicial, confusing and wasteful (under Rule
`
`403).
`
`For the reasons set forth above, MasterCard objects to the Gussin
`
`Declaration and all corresponding portions of Patent Owner’s Response that rely
`
`on the Gussin Declaration.
`
`
`
`Respectfully submitted,
`BAKER BOTTS LLP
`/s/ Robert Scheinfeld__________
`Robert 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
`
`December 12, 2014
`
`
`
`Eliot 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
`
`
`
`
`- 3 -
`
`MasterCard, Exh. 1021, p. 4
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on the 12th day of December, 2014, a
`
`complete and entire copy of PETITIONER’S OBJECTIONS UNDER 37 C.F.R. §
`
`42.64 TO PATENT OWNER’S EVIDENCE SUBMITTED WITH PATENT
`
`OWNER’S RESPONSE were served via Federal Express, postage prepaid, and
`
`electronic mail to the Patent Owner’s attorneys of record at the following address:
`
`
`
`Stephen J. Lewellyn
`s.lewellyn@maxeyiplaw.com
`Brittany J. Maxey
`b.maxey@maxeyiplaw.com
`Maxey Law Offices, PLLC
`100 Second Avenue South
`Suite 401 North Tower
`St. Petersburg, Florida 33701
`
`
`
`Respectfully submitted,
`BAKER BOTTS LLP
`
`/s/ Robert Scheinfeld__________
`Robert 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 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
`
`
`
`
`
`
`MasterCard, Exh. 1021, p. 5
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