UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`LAM RESEARCH CORP.,
`
`Petitioner
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`___________
`
`U.S. Patent No. 6,017,221
`
`Issued: January 5, 2000
`
`Named Inventor: Daniel L. Flamm
`
`Title: PROCESS DEPENDING ON PLASMA DISCHARGES
`SUSTAINED BY INDUCTIVE COUPLING
`___________
`
`Case IPR2015-01767
`Patent 6,017,221
`
`LAM RESEARCH CORP.'S REPLY TO FLAMM'S
`RESPONSE IN OPPOSITION TO THE MOTION TO
`EXCLUDE THE DECLARATION OF DANIEL L. FLAMM Sc.D.
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`LAM RESEARCH CORP.,
`
`Petitioner
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`___________
`
`U.S. Patent No. 6,017,221
`
`Issued: January 5, 2000
`
`Named Inventor: Daniel L. Flamm
`
`Title: PROCESS DEPENDING ON PLASMA DISCHARGES
`SUSTAINED BY INDUCTIVE COUPLING
`___________
`
`Case IPR2015-01767
`Patent 6,017,221
`
`LAM RESEARCH CORP.'S REPLY TO FLAMM'S
`RESPONSE IN OPPOSITION TO THE MOTION TO
`EXCLUDE THE DECLARATION OF DANIEL L. FLAMM Sc.D.
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01767
`U.S. Patent No. 6,017,221
`
`I.
`
`INTRODUCTION
`
`In response to Flamm's Opposition, Paper 30, Lam reaffirms its motion to
`
`exclude Exhibit 2001 on the grounds stated in the Motion to Exclude, Paper 27 (the
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`"Motion to Exclude").
`
`II. REPLY ARGUMENT
`A.
`Filing an Objection to Evidence
`The purpose of filing an objection to evidence is to allow for correction in
`
`the form of supplemental evidence. See 37 C.F.R. § 42.64(b)(1). However, in this
`
`case, the objection would have been pointless because Flamm could not correct
`
`Flamm's bias by filing supplemental evidence.
`
`As the sole owner of U.S. Patent No. 6,017,221 (the "'221 patent"), Flamm is
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`not an independent expert. Indeed, due to pending and threatened patent litigations
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`brought by Flamm against some of the largest semiconductor manufacturers in the
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`world, Flamm has a huge financial stake in the outcome of this proceeding, calling
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`into question the reliability of his expert declaration. Flamm could not overcome
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`this bias by filing supplemental evidence while maintaining these litigations and
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`pursuing parallel licensing efforts.
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`Moreover, the challenge based upon bias is readily foreseeable. Flamm and
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`his attorneys could have and should have relied upon an expert with no financial
`
`stake in the outcome of this proceeding to address the issues in Flamm's expert
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`Case IPR2015-01767
`U.S. Patent No. 6,017,221
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`declaration, if any such expert were willing to so testify.
`
`Judges are charged with a "gatekeeping" role to ensure the reliability of
`
`"expert" analysis. Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 147 (1999)
`
`("Federal Rule of Evidence 702 imposes a special obligation upon a trial judge to
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`'ensure that any and all scientific testimony ... is not only relevant, but reliable.'")
`
`(quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589 (1993));
`
`FURminator, Inc. v. Kim Laube & Co., 758 F. Supp. 2d 797, 807 (E.D. Mo. 2010)
`
`("The initial question of whether expert testimony is sufficiently reliable is to be
`
`determined by the court, as part of its gatekeeper function.") (citing Daubert, 509
`
`U.S. at 593). Unreliable "expert" analysis should be excluded under F.R.E. 702.
`
`See, e.g., FURminator, 758 F. Supp. 2d at 808 (Excluding unreliable expert
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`testimony, and considering, among other things, "[w]hether the expert is being as
`
`careful as he would be in his regular professional work outside his paid litigation
`
`consulting.").
`
`Here, Flamm provided a declaration with "an obvious bias in favor" of
`
`preserving his huge financial stake in the outcome of this proceeding. He was not
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`"as careful as he would be in his regular professional work outside his paid
`
`litigation consulting." As more fully set forth in Petitioner's Reply and the Motion
`
`to Exclude, Flamm's declaration includes many examples of unreliable testimony
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`Case IPR2015-01767
`U.S. Patent No. 6,017,221
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`that can be attributed to Flamm's underlying bias.
`
`Under 37 C.F.R § 42.5(b), the Board has the authority to waive or suspend
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`the requirement of part 42. When considering the evidence of bias and the fact that
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`Flamm's bias is not curable by filing supplemental evidence, it would be in the
`
`interest of justice to waive the requirement of 37 C.F.R. § 42.64(b)(1). For these
`
`reasons, Lam respectfully requests the Board to exercise its authority to waive this
`
`requirement to file an objection to evidence.
`
`B. Gate Keeper's Role of Excluding Unreliable Evidence Outweighs
`Public Availability of Unreliable Evidence.
`
`Because of the unreliability of the Flamm Declaration due to Flamm's huge
`
`financial stake in the outcome of this proceeding, the Flamm Declaration and any
`
`arguments relying upon it should be excluded because such biased testimony is not
`
`helpful to the trier of fact. As pointed out above, Judges are charged with a
`
`"gatekeeping" role to ensure the reliability of "expert" analysis. Moreover, the
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`Federal Rules of Evidence provide for this gatekeeping role. See Federal Rules of
`
`Evidence 702.
`
`Flamm argues that the Board is precluded from following the Federal Rules
`
`of Evidence solely because an IPR is an administrative proceeding. Clearly, this is
`
`not the case because 37 C.F.R. § 42.62 specifically provides that the Federal Rules
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`of Evidence shall apply to IPR proceedings. Federal Rule of Evidence 702
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`- 3 -
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`Case IPR2015-01767
`U.S. Patent No. 6,017,221
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`establishes the need to ensure the reliability of "expert" analysis and this need far
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`outweighs the need to make available to the public unreliable and misleading
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`information that is prejudicial.
`
`Any prejudice that could be attributable to the Board excluding the Flamm
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`Declaration is of Flamm's and his attorneys' own making. Due to the foreseeability
`
`of this challenge, Flamm and his attorneys could have and should have relied upon
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`an expert with no financial stake in the outcome of this proceeding to address the
`
`issues in Flamm's declaration, if any such expert were willing to so testify. Flamm
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`and his attorneys elected not to do so. Flamm and his attorneys should therefore
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`not be permitted to now claim prejudice because of their inability or unwillingness
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`to retain such an expert.
`
`Flamm Does Not Dispute Bias Due to the Huge Financial Stake
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`C.
`Flamm argues that because of Flamm's experience and education, Flamm is
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`qualified to offer opinion testimony. The issue is not Flamm's qualifications. The
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`issue is Flamm's bias. Flamm does not dispute that he is the owner of the '221
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`patent. Flamm does not dispute that he is seeking to monetize the '221 patent by
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`pursuing five pending lawsuits in district court proceedings as well as to seeking
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`licensing agreements with numerous companies.
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`Moreover, Flamm does not dispute the examples of unreliable testimony
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`listed in the Motion to Exclude. Nor does he dispute his declaration is biased in
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`Case IPR2015-01767
`U.S. Patent No. 6,017,221
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`favor of preserving his huge financial stake in the outcome of this proceeding.
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`Finally, Flamm does not dispute that he was not "as careful as he would be in his
`
`regular professional work outside his paid litigation consulting."
`
`Flamm also asserts that he and his lawyers lacked the resources to hire an
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`independent expert. However, the facts belie this assertion. Flamm has filed five
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`different lawsuits in two different judicial districts against five different
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`semiconductor manufacturers. See Notice of Related Matters, Paper No. 31. To
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`do so, he retained three law firms and at least five lawyers have entered
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`appearances in those cases. In this matter, Flamm is represented by three lawyers
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`from two law firms, including a firm not involved in the district court litigations.
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`If Flamm could hire a total of four law firms and six lawyers to represent his
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`interests in the ‘221 patent, he certainly could also have hired an independent
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`expert, if any expert were willing to provide the same testimony as Flamm.
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`III. CONCLUSION
`For the foregoing reasons, Lam's Motion To Exclude the Declaration of
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`Daniel L. Flamm, Sc.D. should be granted.
`
`
`
`Dated: September 26, 2016. Respectfully submitted,
`/s/ Michael Fleming
`By:
`Michael Fleming
`Michael Fleming (Reg. No. 67,933)
`Samuel K. Lu (Reg. No. 40,707)
`Morgan Chu (pro hac vice)
`Attorneys for Petitioner Lam Research Corp.
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`Case IPR2015-01767
`U.S. Patent No. 6,017,221
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`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. sections 42.6 and 42.105, that a
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`complete copy of the foregoing document is being served, pursuant to the parties'
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`service agreement, via electronic mail (e-mail) upon the following , on the 26th
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`day of September, 2016, the same day as the filing of the above-identified
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`documents in the United States Patent and Trademark Office/Patent Trial and
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`Appeal Board:
`
`Christopher Frerking
`Registration No. 42,557
`174 Rumford Street
`Concord, New Hampshire 03301
`chris@ntknet.com
`
`George Summerfield
`STADHEIM & GREAR, LTD.
`400 N. Michigan Avenue, Suite 2200
`Chicago, IL 60611
`Summerfield@StadheimGrear.com
`
`
`
` /Susan M. Langworthy/
` Susan M. Langworthy
`
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Tel.: (310) 277-1010 | Fax: (310) 203-7199
`mfleming@irell.com; slu@irell.com;
`mchu@irell.com; tgordnia@irell.com
`
`
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`- 6 -
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