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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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`LAM RESEARCH CORP.,
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`Petitioner
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`v.
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`DANIEL L. FLAMM,
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`Patent Owner
`___________
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`U.S. Patent No. 6,017,221
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`Issued: January 5, 2000
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`Named Inventor: Daniel L. Flamm
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`Title: PROCESS DEPENDING ON PLASMA DISCHARGES
`SUSTAINED BY INDUCTIVE COUPLING
`___________
`
`Case IPR2015-01767
`Patent 6,017,221
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`LAM RESEARCH CORP.'S MOTION TO EXCLUDE THE
`DECLARATION OF DANIEL L. FLAMM, Sc.D.
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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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`Case IPR2015-01767
`U.S. Patent No. 6,017,221
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`I.
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`INTRODUCTION
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`Pursuant to Rules 702 and 703 of the Federal Rules of Evidence as well as
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`Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 593 (1993), Lam
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`Research Corp. ("Lam") hereby moves to exclude the expert declaration of Dr.
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`Daniel L. Flamm, Ex. 2001, (the "Flamm Declaration") and arguments relying
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`thereon. As the sole owner of U.S. Patent No. 6,017,221 (the "'221 patent"), Dr.
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`Flamm is not an independent expert. Indeed, due to pending and threatened patent
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`litigation brought by Dr. Flamm against some of the largest semiconductor
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`manufacturers in the world, Dr. Flamm has a huge financial stake in the outcome
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`of this proceeding, calling into question the reliability of his expert declaration.
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`Due to the foreseeability of this challenge, Dr. Flamm and his attorneys
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`could have and should have relied upon an expert with no financial stake in the
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`outcome of this proceeding to address the issues in Dr. Flamm's expert declaration,
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`if any such expert were willing to so testify. Dr. Flamm and his attorneys should
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`therefore not be permitted to now claim prejudice because of their inability or
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`unwillingness to retain such an expert.
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`II. BACKGROUND.
`On February 24, 2016, the Board ordered an IPR with respect to claims 1
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`U.S. Patent No. 6,017,221
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`and 4-7 of the '221 patent based on a petition filed by Lam. Paper No. 10.1 On
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`May 17, 2016, Dr. Flamm filed a Patent Owner Response as well as the Flamm
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`Declaration. Paper No. 15; Flamm Declaration (Ex. 2001). In that declaration, Dr.
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`Flamm provides expert opinions regarding, among other things, the purported
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`non-obviousness of the '221 patent and the teachings of the prior art relied upon by
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`Lam. Flamm Declaration at 3-11.
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`Dr. Flamm is the owner of the '221 patent.2 While serving as an expert in
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`defending the '221 patent in this proceeding, Dr. Flamm is also seeking to monetize
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`the '221 patent in district court proceedings. Case Nos. 15-cv-01277-BLF; 16-cv-
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`01578-BLF; 16-cv-01579-BLF; 16-cv-01580-BLF; 16-cv-01581-BLF; 16-cv-
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`02252-BLF (N.D. Cal.) Indeed, the '221 patent is the subject of five pending
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`1 Citations to "Papers" refer to papers filed in IPR2015-01767.
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`2 In his deposition, Dr. Flamm confirmed his ownership of the patent at issue
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`in this proceeding: See Ex. 1021 [Flamm Depo.], 17:2-7.
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`2 Q Who is the inventor on this?
`3 A I am.
`4 Q Okay. Are you the only inventor?
`5 A I am the sole inventor.
`6 Q Are you the owner of the patent?
`7 A I am
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`U.S. Patent No. 6,017,221
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`lawsuits brought by Dr. Flamm as the named plaintiff against some of the largest
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`semiconductor manufacturing companies in the world.3 Id. Dr. Flamm's attorneys
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`have also sent out correspondence to numerous other companies seeking to license
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`the '221 patent. See, e.g., Ex. 1026 ¶ 29 (Lam's Second Amended Complaint in
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`Case No. 5:15-cv-01277-BLF alleging that "[a]t that time [September 2014],
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`attorneys representing Flamm began sending Lam's customers unsolicited letters
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`requesting that they take a license to the '849, '221, and '264 patents. On
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`information and belief, Flamm has since sent such letters to the vast majority of
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`Lam's key customers."); Ex. 1027 ¶ 29 (Flamm's Answer admitting that "Dr.
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`Flamm lacks knowledge and information sufficient to form a belief as to the
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`identity of all of Lam's customers, but admits the remaining allegations in this
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`paragraph.").
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`III. ARGUMENT
`Judges are charged with a "gatekeeping" role to ensure the reliability of
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`3 The companies that Dr. Flamm is presently suing include Samsung
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`Electronics Co. Ltd. (and certain affiliated entities); Intel Corporation; Micron
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`Technology, Inc.; Global Foundries U.S. Inc.; and Maxim Integrated Products, Inc.
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`Ex. 1025 (Lam Research Corp. v. Flamm, No. 5:15-cv-01277-BLF ("Order
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`Staying Case") (N.D. Cal. Aug. 8, 2016), Doc. No. 145).
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`"expert" analysis. Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999)
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`("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.'")
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`(Quoting Daubert, 509 U.S. at 589); FURminator, Inc. v. Kim Laube & Co., 758 F.
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`Supp. 2d 797, 807 (E.D. Mo. 2010) ("The initial question of whether expert
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`testimony is sufficiently reliable is to be determined by the court, as part of its
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`gatekeeper function.") (citing Daubert, 509 U.S. at 593). Unreliable "expert"
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`analysis should be excluded under Federal Rule of Evidence 702. See, e.g.,
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`FURminator, 758 F. Supp. 2d at 808 (Excluding unreliable expert testimony, and
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`considering among other things "[w]hether the expert is being as careful as he
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`would be in his regular professional work outside his paid litigation consulting.")
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`Courts have excluded expert testimony because of underlying bias reflected
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`in an expert's analysis. Such biased testimony is inherently unhelpful to the finder
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`of fact, and should be excluded. For example, in Bowling v. Hasbro, Inc., No.
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`C.A. 05-229 S, 2008 WL 717741 (D.R.I. Mar. 17, 2008), a Court excluded biased
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`expert testimony as unreliable. In excluding the expert report, the Court held that
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`the expert's "report is marred by an obvious bias in favor of Bowling." Id. at *6.
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`In that case, the expert opined on the topic of damages. The expert offered
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`opinions that tended to arbitrarily inflate the damages that would be awarded to the
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`plaintiff. The court held that the report should be excluded because of this
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`plaintiff- looking bias. Id. at *7 ("[I]t is evident that Lapidus drafted a report
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`specifically intended to superficially justify a royalty rate that would maximize
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`damages awarded.")
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`Here, Dr. Flamm provided a declaration with "an obvious bias in favor" of
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`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
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`litigation consulting." As more fully set forth in Petitioner's Reply, Dr. Flamm's
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`declaration (and deposition defending his declaration) includes the following
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`examples of unreliable testimony that can be attributed to Dr. Flamm's underlying
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`bias:
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` Numerous instances of unsupported statements that are helpful to
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`Dr. Flamm's positions in this case. Ex. 2001 [Flamm Decl.], ¶¶ 8-
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`12, 14-22, 25-26, and 28. Such unsupported statements were
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`contradicted by evidence submitted by Lam's truly independent
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`expert.
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` Numerous instances of admissions in his deposition testimony
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`demonstrating Dr. Flamm's lack of qualification and the general
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`unreliability of his testimony, including:
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`o Admitting to lack of qualification & relevant knowledge.
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` Ex. 1021 [Flamm Depo.], 88:13-20.
`13 Q So, is a broadband transmission transformer
`14 the only type of balun?
`15 A I don't know. I mean, you know, we're
`16 getting into etymology of the language now. And I --
`17 I can tell you, I can only speak to what I do know.
`18 So, is there another type of balun? I'd have
`19 to think on it. I don't -- I can't answer that
`20 easily. I don't think so, but I'm not certain.
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` Id., 84:19-23.
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`19 THE WITNESS: Well, it -- because -- because
`20 by cur- -- current law, the sum of all currents into
`21 any node in electrical engineering -- and which is a
`22 subject in which I'm not trained, but I do have some
`23 knowledge -- must be zero
` Id., 39:16-19.
`16 Again, to my knowledge, I do not have a
`17 degree in electrical engineering, but I don't know
`18 whether I would have learned -- I might not have
`19 learned that aspect even if I had.
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` Id., 156:13-20.
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`13 I explained that I'm not familiar with that
`14 term, so I can't -- I just haven't seen it ever before
`15 in that full term. And I'm -- it's not a term that I
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`16 would have used, phase balance, for anything. And I
`17 don't think -- and this is a signal waveform, as far
`18 as I can see from the figure.
`19 And that's -- you know, I don't know how to
`20 comment further on it.
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` Id., 164:11-18. (Suggesting questioning attorney would
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`have better understanding of key concepts because of
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`electrical engineering background.).
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`11 MR. FLEMING: Q. For what purpose do you
`12 think there is a center tap ground on the right side
`13 of the transformer at the center of Figure 10C?
`14 A It's to stabilize the configuration, because
`15 when the signal is applied -- so it's kind of complex.
`16 You could -- since you're an electrical engineer, you
`17 could probably analyze it in more sophisticated terms.
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` Id., 175:3-8.
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`3 I don't know what virtual -- virtual means
`4 something that's not real in -- I think in the
`5 dictionary. So, you know, I know what it means, as I
`6 said earlier, with respect to an op amp, where it's a
`7 term of art. I don't know what it means in this
`8 context, and so I don't want to stick my neck out.
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`o Falsely suggesting baluns are limited to transmission line
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`transformers. [Cf., Ex. 1016 listing different balun
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`transformers, including transmission-line transformers; see
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`also, Wikpedia page for "Balun,"
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`https://en.wikipedia.org/wiki/Balun#Types_of_balun (last
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`visited September 4, 2016) (listing different "Types of
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`Baluns" including transmission line transformer)].
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` Ex. 1021 [Flamm Depo.], 40:20-21.
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`20 A Well, the -- it's a transmission line
`21 transformer, which is what a balun is.
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` Id., 56:12-57:2.
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`12 MR. FLEMING: Q. So then you would agree
`13 that the term balun is referring to devices that
`14 provide the function of being -- providing a balanced
`15 and unbalanced --
`16 A Well, they refer to a certain type of -- they
`17 refer to a certain subclass of such devices; namely,
`18 transmission line transformers.
`19 Q So, you don't believe that the term balun
`20 includes other types of transformers that can provide
`21 balanced versus unbalanced?
`22 A Balun refers to a transmission line
`23 transformer. Not all transformers -- in fact, a
`24 transmission line transformer isn't really a
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`25 transformer in the classical sense. It works
`1 differently. It has different principles of
`2 operation.
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` Id., 94:3-11.
`3 Q So, can a magnetic flux coupled transformer
`4 be used as a balun?
`5 A A magnetic flux?
`6 The -- the conventional transformer is not
`7 considered a balun, because balun is a term that
`8 refers generally to a transmission line transformer.
`9 Somebody might misuse that word, I suppose. I don't,
`10 you know, know. But I'm not -- I haven't surveyed it
`11 as often.
`o Contradicting and disclaiming the specification of the '221
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`patent.
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` Ex. 1021 [Flamm Depo.], 41:18-42:8.
`18 Q So then, it is a push-pull arrangement?
`19 A I didn't say that.
`20 Q Well, isn't that push-pull --
`21 A I explained what push-pull meant.
`22 Q Explain to me why this is not push-pull.
`23 A Well, it's not -- it's a -- it's a matching
`24 network of sorts. You can consider it that. It's not
`25 really a matching network because it may not match
`1 anything.
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`2 It's just a -- an impedance converting -- it
`3 does two things. It converts -- it can convert
`4 impedance. And I believe this was a 4:1 balun, so in
`5 which case, it would convert impedance by a ratio of
`6 4:1.
`7 And it allows to have an unbalanced
`8 transmission line driving a symmetrical -- or merging,
`9 if you prefer, to a symmetrical transmission line
`10 since we spoke of the -- the helical resonator or
`11 inductive structure inside there as being akin to a
`12 transmission line
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`Cf. '221 Patent, 15:65-16:31 ("FIG. 4 is a simplified
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`diagram of a resist stripper according to the present
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`invention. . . . In this embodiment, the wave adjustment
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`circuits rely upon open circuits (i.e., zero susceptance).
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`Power transfer can be occurred with a balanced feed such
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`as an inductively-coupled push-pull arrangement such
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`as coupled inductors. . . . In one embodiment, a ferrite or
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`powdered iron core "balun" (balanced-unbalanced)
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`toroidal transformer (i.e., broadband transmission
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`transformer, broadband transformer, etc.) 401 can be
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`used . . .").
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` Ex. 1021 [Flamm Depo.], 48:10-49:17.
`10 Q So, if we'd look at column 16, lines 18
`11 through 20.
`12 A (Witness complies.)
`13 Q Can you read that for me.
`14 A "Power transfer can be occurred with a
`15 balanced feed, such as an inductively-coupled
`16 push-pull arrangement, such as coupled inductors."
`17 Yes.
`18 Q So then Figure 4 is depicting such an
`19 arrangement?
`20 A I don't like this sentence. As I -- I -- I
`21 would not have -- I -- I'm -- what is the question?
`22 Q I asked you: Is Figure 4 depicting this
`23 arrangement of a push-pull arrangement?
`24 A "Can be occurred."
`25 I would not -- you know, retrospectively, I
`1 don't like that sentence because I don't -- it -- it
`2 doesn't convey a whole lot, except that there is power
`3 transfer.
`4 And it says the word "balanced feed" there.
`5 And it is a balanced feed, although it's imbalanced on
`6 the input.
`7 And it says "coupled inductors." So I'm --
`8 so I think the coupled inductors refers to the balun
`9 itself, actually, rather than the structure that's
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`10 driving the plasma, reading this carefully.
`11 So the -- so I think the -- the push-pull
`12 refers to the balun, although I wouldn't necessarily
`13 have chosen that language. It was probably the
`14 attorney's language and --
`15 Q So is this wrong?
`16 A It's just not a -- it's not a -- it's not a
`17 appropriate term of art for describing that.
`
` Id., 54:10-14, 19-20
`
`7 The drafter in this paragraph, for whatever
`8 reason -- and that was not me -- put in the term
`9 push-pull.
`10 If I had drafted it, I probably -- you know,
`11 I -- 20/20 hindsight, but I -- I would have -- I might
`12 have -- you know, especially since I've become an
`13 attorney and so on since, I might have done it a
`14 little differently.
`19 It's -- I don't think it's overtly wrong. It's just
`20 not the term I would have chosen.
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`Because of unreliability of the Flamm Declaration due to Dr. Flamm's huge
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`financial stake in the outcome of this proceeding, the Flamm Declaration and any
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`arguments relying upon it should be excluded.
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`Any prejudice that could be attributable to the Board excluding the Flamm
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`Declaration is of Dr. Flamm's and his attorneys' own making. Due to the
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`foreseeability of this challenge, Dr. Flamm and his attorneys could have and
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`should have relied upon an expert with no financial stake in the outcome of this
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`proceeding to address the issues in Dr. Flamm's declaration, if any such expert
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`were willing to so testify. Dr. Flamm and his attorneys elected not to do so, and
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`they should not be permitted to now claim prejudice because of their inability or
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`unwillingness to retain such an expert.
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`Finally, it is important to note that not all declarations submitted by a party-
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`witness with a financial interest in the outcome of a proceeding are objectionable.
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`Fact declarations, for instance, are often submitted by party-witnesses with a
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`significant financial stake in the outcome of a proceeding because such party-
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`witnesses are often the only individuals with personal knowledge of the facts.
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`However, fact declarations are different than expert declarations, because expert
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`declarations set forth the declarant's expert opinions rather than the declarant's
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`personal knowledge of the facts. A different set of rules apply. See, e.g., Fed. R.
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`Evid. 702 and 703. Moreover, a party submitting an expert declaration has the
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`ability to select an independent expert, whereas a party submitting a fact
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`declaration must submit the declaration of whoever has personal knowledge of
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`those facts.
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`Granting Lam's motion to exclude the Flamm Declaration would therefore
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`set a very narrow precedent: an expert declaration should be excluded if the
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`witness submitting the expert declaration has a significant financial interest in the
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`outcome of the proceeding and there is an obvious bias in his or her testimony that
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`would favor such a financial interest. Fact declarations would not be implicated
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`(and indeed are not appropriately challenged under Daubert or Federal Rules of
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`Evidence 702 and 703). Declarations by experts who are paid an hourly rate that is
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`not contingent upon the outcome of the proceeding would also not be implicated
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`because such experts do not have a significant financial interest in the outcome of
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`the proceeding.
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`IV. 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.
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`Dated: September 6, 2016
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`Respectfully submitted,
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`
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`By:
`
`/s/ Michael Fleming
`Michael Fleming
`Michael Fleming (Reg. No. 67,933)
`Samuel K. Lu (Reg. No. 40,707)
`Morgan Chu (pro hac vice)
`Talin Gordnia (pro hac vice)
`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;
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`mchu@irell.com; tgordnia@irell.com
`Attorneys for Petitioner Lam Research Corp.
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`CERTIFICATE OF SERVICE
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`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 6th day
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`of September, 2016, the same day as the filing of the above-identified documents
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`in the United States Patent and Trademark Office/Patent Trial and Appeal Board:
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`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
`
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