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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`GOOGLE INC., SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`SUMMIT 6 LLC
`Patent Owner
`____________________
`
`CASE: IPR2015-008061
`Patent No. 7,765,482 B2
`
`Title: Web-Based Media Submission Tool
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`PATENT OWNER’S MOTION FOR OBSERVATIONS ON THE CROSS
`EXAMINATION OF GARY L. FRAZIER
`
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`1 Samsung Electronics Co., Ltd., who filed a Petition in IPR2016-00029,
`has been joined as a petitioner in the instant proceeding.
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`
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`
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`Patent Owner submits the following Motion for Observations on Cross-
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`Examination of Dr. Gary L. Frazier, Petitioner’s reply declarant. The transcript of
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`Dr. Frazier’s deposition is filed under seal as Exhibit 2075, with a public, redacted
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`copy as Exhibit 2076, along with additional corresponding exhibits.
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`I.
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`OBSERVATIONS
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`A. Dr. Frazier did not perform any independent research on the relevant
`markets prior to making his opinions.
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`In Exhibit 2075, on 37:4–22, Dr. Frazier testified that his performance
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`1.
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`of Internet research to confirm his understanding of the relevant market in 1995 to
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`2004 was simply “background” and “did not form the basis of anything that I opine
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`on in my declaration – my opinions.” This testimony is relevant to ¶7 of Dr.
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`Frazier’s declaration. (Ex. 1018). The testimony is relevant because it impeaches
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`Dr. Frazier’s opinions regarding the uploading and hosting market from 1995
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`through 2004 as he stated that he relied on this research and document review “[i]n
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`forming my [his] opinions[.]”
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`B. Dr. Frazier ignores clear evidence of long-felt but unresolved need when
`forming conclusory opinions that Summit 6 did not provide sufficient
`data.
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`In Exhibit 2075, on 34:20–35:2, Dr. Frazier testified that he had “no
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`2.
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`facts that would dispute any of the characterizations found in [the] 2001 marketing
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`paper” contained in Exhibit 2015. Dr. Frazier then discussed Exhibit 2015 on
`1
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`24:15–34:16 and on 41:18–47:7 and testified that it would have been good to have
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`a survey that included a questionnaire of Rimfire’s customers, (27:3–9), and that the
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`market research report included its “methodology,” (Ex. 2015 at p. 5), which
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`included a comprehensive questionnaire and interviews with early adopters of image
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`technology, such as eBay (Ex. 2075 at 27:25–28:14). Dr. Frazier also testified that
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`“[b]ased on size,” eBay was the leading online marketplace for the sale of goods
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`and services” in 2001. (Ex. 2075 at 28:18–25). Dr. Frazier also confirmed that eBay
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`carried out a 4–6-month evaluation process to select Rimfire over other market
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`players to solve its need for imaging technology service provider. (Ex. 2075 at 30:3–
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`31:19). That testimony is relevant to Petitioner’s argument on page 16–17 of its
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`Reply and ¶¶19–21 of Dr. Frazier’s Declaration. The testimony is relevant because
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`despite claiming that Summit 6 provided no data or information to support a long-
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`felt need, neither the Petitioner, nor Dr. Frazier, referenced the market research
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`report, or the evidence of need and efforts to solve that need from the largest online
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`auction entity, eBay, at all.
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`3.
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`In Exhibit 2075, on 32:23–33:17, Dr. Frazier testified he “did not know
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`that” image uploads was eBay’s number one customer service problem at the time,
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`but Exhibit 2015 refreshed his recollection that the patented Rimfire technology
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`reduced eBay’s customer service cost. This testimony is relevant to the
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`2
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`identification of a long-felt need for an imaging solution in the online auction
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`industry on page 49 of the Patent Owner Response, Paper 28. This testimony is
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`relevant because it confirms that the patented technology solved the number one
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`customer support problem for the largest online auction industry player, eBay.
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`4.
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`In Exhibit 2075, on 40:24–41:17, Dr. Frazier testified that eBay started
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`its business in 1995 and as of October 12, 1999, eBay instructed its customers to
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`associate or upload their images using the steps described in Exhibit 2070, and
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`ultimately agreed eBay adopted the patented Rimfire technology at least as of 2001.
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`This testimony is relevant to the establishment that the need was in fact “long-felt,”
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`as described on page 49 of the Patent Owner Response, Paper 28. This testimony is
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`also relevant because it contradicts Dr. Frazier’s opinion at ¶¶20 and 23, as well as
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`Petitioner’s Reply at page 16–17, alleging that Summit 6’s response and exhibits
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`failed to establish that the need was long-felt.
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`5.
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`In Exhibit 2075, on 28:18–25, Dr. Frazier testified that, with respect to
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`the Exhibit 2072, Moore Data Management Services’ President stated in a published
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`article, “This new technology can add real value to the service we offer our MLS
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`subscribers” and that the technology solved real estate agents’ previous need to
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`submit photos through the mail. This testimony is relevant to ¶¶20–22 of Dr.
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`Frazier’s Declaration. This testimony is relevant because Dr. Frazier does not
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`3
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`IPR2015-00806
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`address the direct evidence of a recognized need within the real estate industry by
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`the President of the largest MLS provider in North America. See also Ex. 2072 at
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`5-6; Ex. 2008.
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`C. Dr. Frazier failed to consider relevant licenses and a finding of
`infringement when forming conclusory opinions on commercial success.
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`In Exhibit 2075, on 17:15–18:22, Dr. Frazier testified that he “did not
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`6.
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`consider” the patent licenses that Summit 6 executed with, nor the consideration
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`paid by Facebook and RIM to license the Summit 6 patents. This testimony is
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`relevant to ¶¶10, 15, 17, and 25–31 of Dr. Frazier’s declaration (Ex. 1018). This
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`testimony is relevant because Dr. Frazier ignores these Summit 6 licenses in opining
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`that commercial success of the Summit 6 patents has not been shown, and further
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`that Dr. Frazier has no opinion regarding the impact of licensing of the patents on
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`the nonobviousness of the Summit 6 patents.
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`7.
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`In Exhibit 2075, on 18:10–22, Dr. Frazier testified that he did not
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`consider the jury verdict finding that Samsung infringed the ’482 patent and further
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`determined that the ’482 patent was valid. This testimony is relevant to ¶¶10, 15,
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`17, and 25–31 of Dr. Frazier’s declaration (Exhibit 1018). This testimony is
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`relevant because Frazier ignores this jury finding in opining that “Summit 6 has not
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`provided sufficient data and information to support a conclusion that the Rimfire
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`service achieved commercial success.” (Ex. 1018 at ¶25).
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`4
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`8.
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`In Exhibit 2075, on 18:24–19:6, Dr. Frazier testified that he did not
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`have sufficient context to apply the $8 million fee that eBay paid for Rimfire
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`technology. This testimony is relevant to ¶¶10, 15, 17, and 25–31 of Dr. Frazier’s
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`declaration (Exhibit 1018). This testimony is relevant because Frazier ignores this
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`commercial transaction and the substance therein in opining that Summit 6 has not
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`shown commercial success of its patents, and further that Dr. Frazier has no opinion
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`regarding the impact of licensing of the patents on the nonobviousness of the
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`Summit 6 patents.
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`D. Dr. Frazier admits that he ignored and confused relevant data regarding
`commercial success when opining that Summit 6 did not provide
`sufficient data to support a conclusion that the Rimfire service achieved
`commercial success.
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`In Exhibit 2075, on 66:9–71:9, Dr. Frazier testified regarding the
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`9.
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`missing data to support Summit 6’s total revenue figure of $44 million. When
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`discussing Exhibit 2044 and its data from eBay Data Warehouse, Dr. Frazier agreed
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`that page 9 of Exhibit 2044 “shows consistent revenue growth quarter over quarter.”
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`(See Ex. 2075 at 69:15–17). Dr. Frazier ultimately admitted that Summit 6 did
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`provide data in support of the $44 million figure and that he “should have” related
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`the supporting material to his ultimate opinion. (See id. at 70:24–71:9). This
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`testimony is relevant to Petitioner’s argument that the Rimfire service was
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`unsuccessful and Dr. Frazier’s opinion that Summit 6 failed to provide sufficient
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`5
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`data to support its commercial success. This testimony is relevant because Petitioner
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`and its expert failed to account for pertinent information in the record, and because
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`Dr. Frazier failed to consider this information after understanding that “the time that
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`product has been available on the market [and] growth in sales volume and revenue
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`over time” can be considered to determine if a product or service is successful. See
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`Ex. 1018 at ¶14.
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`10.
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`In Exhibit 2075, on 80:17–81:21, Dr. Frazier testified that, according
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`to pages 4 and 6 of Exhibit 2044, as the penetration rate of eBay listings with
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`pictures increased from 8 percent in 2000 to 50 percent in 2002, the average revenue
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`per listing also increased. This testimony is relevant to Petitioner’s argument that
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`the Rimfire service was unsuccessful and Dr. Frazier’s opinion that Summit 6 failed
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`to provide sufficient data to support its commercial success. It is relevant because it
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`provides additional data and relevant metrics supporting the growth of eBay’s image
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`infrastructure and the impact that Rimfire had on creating an incremental revenue
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`stream for eBay, all of which Dr. Frazier failed to consider in his declaration.
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`11.
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`In Exhibit 2075, on 95:5–99:4, Dr. Frazier testifies that he was confused
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`about the calculations of market share provided in Figure 19 of Exhibit 2020
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`(Swiftsure Confidential Memorandum). Dr. Frazier confirmed that the $883 million
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`figure consitutes the total spend for newspaper classifieds ads in 2004, but
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`6
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`Admission only expects its addressable market of obtainable revenue to be $1.2
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`million. Admission’s market share thus equates to its percentage of the total $1.2
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`million. (See Ex. 2075 at 98:20–99:4). This testimony is relevant to Petitioner’s
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`argument that the Rimfire service was unsuccessful in its Reply on page 17, and ¶30
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`of Dr. Frazier’s declaration. It is relevant because Dr. Frazier misinterpreted the
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`figures used to form the basis of his opinion, rendering his opinion illusory.
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`12.
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`In Exhibit 2075, on 28:18–25, Dr. Frazier testified, “[b]ased on size,”
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`eBay was the “leading online marketplace for the sale of goods and services” in
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`2001. In addition, at 44:2–46:8, Dr. Frazier testified that based on the “Exclusivity”
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`clause of the Visual Content Services Agreement between iPIX and eBay, (Ex.
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`2033), outside manual configurations from users, eBay would not adopt another
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`image service into their website. This testimony is relevant to Petitioner’s argument
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`in its Reply (Paper 40 at p. 17) that Summit 6 failed to provide evidence to establish
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`market share, and Dr. Frazier’s opinion that Summit 6 did not provide evidence of
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`Rimfire’s market share in Exhibit 1018, ¶¶25–26. This testimony is relevant
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`because Rimfire was the exclusive image technology provider to eBay, whom Dr.
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`Frazier acknowledged was the leading online marketplace for the sale of goods and
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`services based on its size in the market.
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`7
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`13.
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`In Exhibit 2075, on 61:8–63:13 and 65:3–66:8 with reference to ¶24 of
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`Sarah Pate’s Declaration, (Ex. 2051), Dr. Frazier testified that, despite the fact that
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`the previous sentence from Ms. Pate’s declaration refers to the number of image
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`uploads growing from 1 million to 2 million, he could not discern what Sarah Pate
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`meant by pBay becoming the “largest image hosting and distributing site for eBay”
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`because he is “a conservative expert” and would have had to include “largest image
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`hosting and distributing site based on image uploads for eBay[.]” (Ex. 2075 62:7–
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`18). Dr. Frazier also testified that because Rimfire was the only revenue-producing
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`imaging technology used by eBay, the term “largest” would also have to equate to
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`revenue:
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`Q. And my point is that you mentioned you don’t know what she’s
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`talking about by ‘largest’; it could be by revenue. And my point is only
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`that it would have to be true for revenue since Rimfire was the only
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`revenue-producing imaging technology used by eBay; True?
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`A.
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`True.
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`Q. Okay.
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`A.
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`That’s my understanding.”
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`(Ex. 2075 at page 65:25—66:8). This testimony is relevant to ¶27 of Dr. Frazier’s
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`Declaration. It is relevant because, despite the additional support in Ex. 2013 and
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`8
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`Ex. 2014 at 7, Dr. Frazier’s only explanation for his opinion is that he is a
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`conservative expert, and because Dr. Frazier admits that the term “largest” would
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`also have to refer to revenue.
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`14.
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`In Exhibit 2075, on 72:15–73:17, Dr. Frazier testified that, based on the
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`market research report in Exhibit 2015, eBay achieved several benefits from its use
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`of Rimfire, including “providing a better user experience”, “[i]mproved eBay’s core
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`economics[,]” “[g]enerated a new incremental recvenue stream[,]” and “[r]educed
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`customer support costs[.]” (See id. at 70:15-17). This testimony is relevant to
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`Petitioner’s argument that the Rimfire service was unsuccessful. It also impeaches
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`his testimony that Rimfire’s success was due to iPIX’s creative “marketing” rather
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`than the merits of the underlying technical solution. It is also relevant because it
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`provides additional information that Dr. Frazier did not consider in his declaration.
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`E. Dr. Frazier ignores market research and direct statements from eBay
`representatives that Rimfire’s commercial success was solely attributable
`to the patented technology, not Patent Owner’s marketing strategy.
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`15.
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`In Exhibit 2075, on 102:5–107:21, Dr. Frazier testifies regarding the
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`his alternative theory of the commercial success of Rimfire Service. When
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`referencing the market research report in Exhibit 2015, Dr. Frazier confirmed that
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`Exhibit 2015 outlined the 4–6 month evaluation and purchase process for eBay’s
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`image uploading service, including the fact that eBay conducted “thorough
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`9
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`diligence” in making its selection, evaluated proposals from many vendors, and
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`determined that “iPIX had the best technology for their needs,” felt the iPIX Rimfire
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`technology was user-friendly, characterized the Rimfire picture submission feature
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`as “the killer app for eBay,” included a statement from the director of eBay services,
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`but did not mention iPIX’s marketing efforts at any point. Nonetheless, Dr. Frazier
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`maintained his original opinion that it was “just as likely” based on iPIX’s
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`credibility, Mr. Lewis’ presenting capabilities, offering free picture uploads, and
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`segmentation targeting. (See id. at 102:23–105:7). This testimony is relevant to
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`Petitioner’s argument that any commercial success resulted from other factors,
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`mainly marketing. (Paper 40 at pp. 20–21). This testimony is relevant because
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`Petitioner solely pinpoints Summit 6’s marketing efforts when creating pBay to
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`entice eBay, not the subsequent commercial success achieved by both Summit 6 and
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`eBay, and fails to account for the independent market research and direct statements
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`from eBay itself that guided its decision to utilize the Rimfire service.
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`/ / /
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` /Peter J. Ayers/
`Peter J. Ayers, Reg. No. 38,374
`Email: peter@leehayes.com
`John Shumaker, No. 52,223
`Email: jshumaker@leehayes.com
`LEE & HAYES, PLLC
`11501 Alterra Parkway, Suite 450
`Austin, TX 78758
`Phone: (512) 605-0252
`Facsimile: (512) 605-0269
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`Attorneys for Patent Owner
`Summit 6 LLC
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`11
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`Dated: April 6, 2016
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`CERTIFICATE OF SERVICE
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
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`I hereby certify that on this 6th day of April, 2016, the foregoing PATENT
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`OWNER’S MOTION FOR OBSERVATIONS ON THE CROSS
`EXAMINATION OF GARY L. FRAZIER was served on lead and back-up
`counsel for Google Inc. by sending the same by electronic means to the address
`provided by Petitioner:
`
`John Alemanni, Reg. No. 47,384
`Lead Counsel
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`
`Winston-Salem, NC 27101-2400
`JAlemanni@kilpatricktownsend.com
`
`Michael Morlock, Reg. No. 62,245
`Back-up Counsel
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`MMorlock@kilpatricktownsend.com
`
`Brian K. Erickson, Reg. No. 48,895
`DLA Piper LLP(US)
`401 Congress Avenue, Ste. 2500
`Austin, TX 787011-3799
`Samsung_Summit-IPR@dlapiper.com
`
`James M. Heintz, Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Ste. 300
`Reston, VA 20190
`Samsung_Summit-IPR@dlapiper.com
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`
`
` /Peter J. Ayers/
`Peter J. Ayers, Reg. No. 38,374
`Attorney for Patent Owner
`Summit 6 LLC
`
`12
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