By: Christopher Frerking (chris@ntknet.com)
`
`Reg. No. 42,557
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`Page No. __
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`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LAM RESEARCH CORP.,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner.
`
`CASE IPR2015-01767
`U.S. Patent No. 6,017,221
`
`
`
`PATENT OWNER’S RESPONSE IN OPPOSITION TO
`LAM RESEARCH CORP.’S MOTION TO EXCLUDE
`THE DECLARATION OF DANIEL L. FLAMM, Sc.D
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`Reg. No. 42,557
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`
`Page No. __
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`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LAM RESEARCH CORP.,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner.
`
`CASE IPR2015-01767
`U.S. Patent No. 6,017,221
`
`
`
`PATENT OWNER’S RESPONSE IN OPPOSITION TO
`LAM RESEARCH CORP.’S MOTION TO EXCLUDE
`THE DECLARATION OF DANIEL L. FLAMM, Sc.D
`
`
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`
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`Inter Partes Review of U.S. Patent No. 6,017,221
`IPR2015-01767
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`Lam’s motion to exclude Dr. Flamm’s Declaration must be denied because
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`Lam failed to timely object to it and, thereby, waived its objections. Even if the
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`Board were inclined to excuse Lam’s failure to timely object, Lam’s motion should
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`also be denied because Lam fails to establish any basis to exclude that testimony.
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`At best, Lam’s arguments are directed toward the weight that should be afforded to
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`Dr. Flamm’s Declaration rather than its admissibility.
`
`I.
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`LAM FAILED TO TIMELY OBJECT TO DR. FLAMM’S
`DECLARATION
`Lam has waived any objection to Dr. Flamm’s Declaration by failing to
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`timely object to it. As a consequence, Lam also failed to comply with the rules
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`applicable to motions to exclude evidence. For those reasons, Lam’s motion must
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`be denied.
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`The rules for objecting to evidence in proceedings before the Board are
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`clear:
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`Once a trial has been instituted, any objection must be
`filed within ten business days of service of evidence to
`which the objection is directed. The objection must
`identify the grounds for the objection with sufficient
`particularity
`to allow correction
`in
`the form of
`supplemental evidence.
`37 C.F.R. § 42.64(b)(1). The filing of a timely objection allows the proponent of
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`the evidence to cure the defect through the submission of supplemental evidence.
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`Id. § 42.64(b)(2).
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`1
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`Inter Partes Review of U.S. Patent No. 6,017,221
`IPR2015-01767
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`A party cannot seek to exclude evidence to which it has failed to timely
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`object:
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`A motion to exclude evidence must be filed to preserve
`any objection. The motion must identify the objections
`in the record in order and must explain the objections.
`Id. § 42.64(c); see also Office Patent Trial Guide, Fed. Reg. Vol. 77, No. 157 (Aug.
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`14, 2012) at 48767 (“A party wishing to challenge the admissibility of evidence
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`must object timely to the evidence at the point it is offered and then preserve the
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`objection by filing a motion to exclude the evidence. . . . A motion to exclude
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`evidence must: (a) Identify where in the record the objection originally was
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`made . . . .”); see also Google v. Jongerius Panoramic Tech., LLC, No. IPR2013-
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`00191, Paper 70 (available at 2014 Pat. App. LEXIS 9111, *88) (Aug. 12, 2014
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`P.T.A.B.) (denying motion to exclude evidence based on the absence of timely
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`objection).
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`Here, Dr. Flamm’s Declaration was submitted on May 16, 2016 as part of
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`the Patent Owner’s Response. (IPR2015-01767, Paper 15.) Lam never filed any
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`objection to Dr. Flamm’s Declaration and its instant motion fails to identify any
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`such objection in the record. Lam has, therefore, waived any objections to Dr.
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`Flamm’s Declaration and its motion to exclude that evidence must be denied.
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`2
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`Inter Partes Review of U.S. Patent No. 6,017,221
`IPR2015-01767
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`II. LAM IS IMPROPERLY SEEKING TO PREJUDICE DR. FLAMM’S
`CREDIBILITY BEFORE THE BOARD
`In light of Lam’s failure to even attempt to comply with the rules applicable
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`to motions to exclude evidence, it appears that the purpose of Lam’s motion is not
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`a serious attempt to exclude Dr. Flamm’s testimony, but rather is an attempt to pre-
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`emptively discredit Dr. Flamm in the eyes of the Board. Lam’s true motivation is
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`evidenced by the fact that Lam’s arguments go to the weight to be afforded to Dr.
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`Flamm’s Declaration rather than its admissibility.
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`At the threshold, it is worth noting a consideration ignored by Lam:
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`there is a strong public policy for making all information
`filed in an administrative proceeding available to the
`public, especially in a inter partes review, which
`determines the patentability of claims in an issued patent.
`It is better to have a complete record of the evidence
`submitted by the parties than to exclude particular pieces
`of evidence.
`Biomarin Pharmaceutical Inc. v. Genzyme Therapeutic Products Limited
`
`Partnership, No. IPR2013-00537, Paper 79 (available at 2015 Pat. App. LEXIS
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`2306, *37) (Feb. 23, 2015 P.T.A.B.) (denying motion to exclude expert declaration
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`based on expert’s purported lack of expertise in the subject area, finding objections
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`went “to the weight and sufficiency of the testimony, rather than its admissibility”).
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`Despite that strong public policy, Lam’s position is that the Board should
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`exclude Dr. Flamm’s Declaration because Dr. Flamm is unqualified to render an
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`3
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`Inter Partes Review of U.S. Patent No. 6,017,221
`IPR2015-01767
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`opinion here and because Dr. Flamm has an interest in the outcome of this
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`proceeding. Those arguments lack merit.
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`Lam’s assertion that Dr. Flamm is not qualified to testify about the field of
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`his own invention borders on farcical. Dr. Flamm received a Bachelor of Science
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`degree from MIT, with a major in mathematics and a minor in physics. (Flamm
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`Decl. at Appendix A.) Dr. Flamm went on to receive a Master of Science and a
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`Doctor of Science from MIT in the field of chemical engineering. (Id.) In the
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`forty-six years since Dr. Flamm received his doctorate degree, he has been a
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`leading researcher and educator in the field of semiconductor processing
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`technology. (Flamm Decl. ¶ 2, App. A.) He was recognized as a Distinguished
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`Member of Technical Staff at the world renowned AT&T Bell Laboratories, where
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`his work focused his work on:
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`Pioneering Research in plasma etching, plasma chemical
`vapor deposition, optoelectronics materials processing.
`Discovered/patented novel plasma chemistries and
`plasma sources, directional plasma CVD, fluorinated
`silicon nitride, oxygen enhanced diamond film deposition,
`laser induced fluorescence diagnostics, photochemical-
`distillation purification technology.
`(Id. at App. A.) Dr. Flamm went on to research and teach at the world renowned
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`University of California, Berkeley and Lawrence Livermore Laboratories. (Id.)
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`While there, Dr. Flamm:
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`Taught graduate seminars in plasma processing and
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`4
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`Inter Partes Review of U.S. Patent No. 6,017,221
`IPR2015-01767
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`display technology, conducted research in semiconductor
`processing such plasma sources for pattern definition and
`extreme UV lithography semiconductor technology . . . .
`(Id.) Following the decade Dr. Flamm spent at Cal, Dr. Flamm went on to found
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`the Microtechnology Analysis Group, where he served as a technical and scientific
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`consultant for domestic semiconductor device and equipment manufacturers,
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`including work performed for, inter alia, National Semiconductor, Applied
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`Materials, ASM America, and Lam Research Corporation. (Id.) Dr. Flamm then
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`attended law school and focused his professional efforts toward patent drafting and
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`prosecution. (Id.)
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`Put simply, Dr. Flamm is preeminently qualified to offer opinion testimony
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`on the semiconductor fabrication methods claimed in the ‘221 patent that was
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`issued to him.
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`Lam’s assertion that Dr. Flamm’s Declaration should be excluded because
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`he is the owner of the ‘221 patent is similarly misguided. There is no dispute that
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`Dr. Flamm is, in fact, the owner of the ‘221 patent. There is no secret about that,
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`and there no reason to exclude his testimony entirely because of it. None of the
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`cases cited by Lam mandate the exclusion of Dr. Flamm’s Declaration because of
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`his interest in the ‘221 patent and, in fact, the Board has previously rejected
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`challenges even to the weight to be afforded to an expert opinion based on the
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`witness’s interest in the outcome of the matter:
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`5
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`Inter Partes Review of U.S. Patent No. 6,017,221
`IPR2015-01767
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`We are not persuaded by Patent Owner’s argument that
`Mr. Link’s testimony should be given little or no weight
`simply because he is an employee of Petitioner and
`therefore may be biased. . . . The Federal Rules expressly
`permit expert testimony by a party’s employee (Fed. R.
`Civ. P. 26(a)(2)(B)), and we are not persuaded that, his
`status as an employee, alone, renders unreliable Mr.
`Link’s testimony.
`Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., No IPR2013-00290,
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`Paper 45 (available at 2014 Pat. App. LEXIS 8271, *54) (Oct. 23, 2014 P.T.A.B.).
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`Dr. Flamm’s interest in the outcome of this matter does not require the exclusion of
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`his testimony.
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`Ultimately, it appears that, through this motion, Lam seeks to punish Dr.
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`Flamm for lacking the resources to pay an expert witness $450 per hour to prepare
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`174 paragraphs of declaration testimony spanning some 97 pages, as Lam has done
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`in this proceeding.1 (IPR2015-01767 at Exs. 1007 and 1022.) Dr. Flamm is an
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`individual inventor who believes that some of the largest semiconductor
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`manufacturers in the world are infringing the ‘221 patent. There is no question that
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`Dr. Flamm is an expert in the field. Punishing him for his inability to pay
`
`1 In the nine petitions for inter partes review that Lam has commenced against
`three semiconductor processing patents owned by Dr. Flamm, Lam has submitted
`more than 1,400 paragraphs of declaration testimony from Dr. Cecchi, spanning
`more than 700 pages. See IPR2015-01759 at Ex. 1009; IPR2015-01764 at Exs.
`1006 and 1015; IPR2015-01766 at Ex. 1008; IPR2015-01767 Exs. 1007 and 1022;
`IPR2015-01768 Exs. 1010 and 1018; IPR2016-00466 at Ex. 1005; IPR2016-00468
`at Ex. 1008; IPR2016-00469 at Ex. 1014; IPR 2016-00470 at Ex. 1009. Neither
`Lam nor Dr. Cecchi disclose the total amount paid to Dr. Cecchi for that testimony.
`6
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`Inter Partes Review of U.S. Patent No. 6,017,221
`IPR2015-01767
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`“independent” experts for their testimony to defend the patents issued to him
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`against attacks from corporations with essentially unlimited resources would be
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`fundamentally unfair. Lam had a full opportunity to depose Dr. Flamm regarding
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`his declaration and to submit a declaration in response, which it did. (IPR2015-
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`01767 at Ex. 1022.) The Board should consider Dr. Flamm’s testimony and should
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`weigh it against the testimony for which Dr. Cecchi was handsomely paid by Lam.
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`III. Conclusion
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`For the foregoing reasons, Lam’s motion to exclude Dr. Flamm’s
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`Declaration should be denied.
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`
`
`
`
`Date: September 19, 2016
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`
`
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`
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`Respectfully Submitted,
`
`By: /Christopher Frerking, reg. no. 42,557/
` Christopher Frerking, reg. no. 42,557
`
`174 Rumford Street
`Concord, New Hampshire 03301
`Telephone: (603) 706-3127
`Email: chris@ntknet.com
`
`Counsel for Daniel L. Flamm
`
`
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`7
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`Inter Partes Review of U.S. Patent No. 6,017,221
`IPR2015-01767
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing Patent Owner’s
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`
`
`Opposition to Lam Research Corp.’s Motion to Exclude the Declaration of
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`Daniel L. Flamm, Sc.D. was served by electronic mail on this day, September 19,
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`2016, on the following individuals:
`
`Michael Fleming
`(mfleming@irell.com)
`Samuel K. Lu
`(slu@irell.com)
`Kamran Vakili
`(kvakili@irell.com)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`
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`/s/ Beata Ichou
`Beata Ichou
`
`
`
`8
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