`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`AVER INFORMATION INC., AND IPEVO, INC.
`Petitioner
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`Patent Owner
`
`_____________________
`CASE: IPR2017-02108
`U.S. PATENT NO. 8,508,751
`_____________________
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EXPERT EVIDENCE
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 3
`A. Madisetti’s Claim Construction Discussion Is Virtually
`Identical to the Petition. ........................................................................ 4
`1.
`“a series of frame images” (claims 1, 3, and 18) ........................ 4
`2.
`“a series of real-time images” (claim 18) ................................... 5
`3.
`“the output frame images” (claims 13 and 14) ........................... 5
`B. Madisetti’s Opinions on Obviousness Are Virtually Identical to
`those in the Petition with Little or No Explanation or Analysis. .......... 5
`1. Madisetti’s Overview of the Prior Art is Verbatim
`Identical ....................................................................................... 5
`C. Madisetti’s Opinions to Support Petitioner’s Opposition Are
`Also Not Credible .................................................................................. 8
`D. Dr. Madisetti Does Not Qualify as One of Ordinary Skill in the
`Art ........................................................................................................10
`III. CONCLUSION ..............................................................................................10
`
`
`
`
`
`
`
`
`
`
`
` i
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Blackberry Corp. v. Mobilemedia Ideas, LLC,
`IPR2013-00036 (PTAB 2014) .............................................................................. 8
`Corning Inc. v. DSM IP Assets B.V.,
`IPR2013-00049 (PTAB 2014) .............................................................................. 4
`Daubert v. Merrell Dow Pharm., Inc.,
`509 U.S. 579 (1993) .............................................................................................. 3
`Heart Failure Techs., LLC v. CardioKinetix, Inc.,
`IPR2013-00184 (PTAB 2013) ........................................................................1, 10
`InfoBionic, Inc. v. Braemar Manufacturing, LLC,
`IPR2015-01704 (PTAB 2016) .............................................................................. 4
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................2, 10
`Lewis v. CITGO Petroleum Corp.,
`561 F.3d 698 (7th Cir. 2009) ................................................................................ 3
`Sloan Valve Co. v. Zurn Ind., Inc.,
`Civ. No. 10-cv-00204 (N.D. Ill. Nov. 18, 2013) ................................................10
`ZTE Corp. v. Interdigital Tech. Corp.,
`IPR2014-00275 (PTAB 2014) .............................................................................. 8
`Rules
`Fed. R. Ev. 702 ........................................................................................................... 3
`Regulations
`37 C.F.R. § 42.64(c) ................................................................................................... 2
`37 C.F.R. § 42.65(a) ........................................................................................ 1, 5, 10
`
`
` ii
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`
`I.
`
`INTRODUCTION
`Patent Owner Pathway Innovations & Technologies, Inc. (“Patent Owner”)
`
`respectfully moves to exclude the First Declaration (Ex. 1020) and Second
`
`Declaration (Ex. 1025) of Dr. Vijay K. Madisetti, in their entireties, submitted by
`
`Petitioner in support of its Petition (Paper 3) and Opposition to Patent Owner’s
`
`Motion to Amend (Paper 17). Patent Owner further moves to bar Petitioners from
`
`using or citing to the above-noted Madisetti Declarations (“Madisetti Decs.”) at any
`
`hearing or oral argument in this proceeding.
`
`While the Board is generally reluctant to exclude evidence, the Madisetti
`
`Decs. are not credible and contain nothing more than “expertized” attorney argument
`
`and fail to provide the required articulated reasoning as to how his supposed opinions
`
`were reached. As clearly shown by a side-by-side visual comparison of the First
`
`Declaration with the Petition, Dr. Madisetti simply repeats virtually all the same
`
`conclusory arguments, word-for-word, of the Petition without any particularized
`
`reasoning or explanation. See Exhibit A; see also Ex. 2001. Accordingly, the First
`
`Declaration should be excluded as conclusory and unsupported. 37 C.F.R. § 42.65(a)
`
`(“Expert testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no weight.”). See Heart Failure Techs., LLC
`
`v. CardioKinetix, Inc., IPR2013-00184, Paper 12 (PTAB 2013) (noting that the
`
`petitioner must provide “some articulated reasoning with some rational
`
`1
`
`
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`underpinning to support the legal conclusion of obviousness.”) (citing KSR Int’l Co.
`
`v. Teleflex Inc. 550 U.S. 398, 418 (2007)).
`
`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner previously objected to the
`
`First Declaration in its Preliminary Response, and then again in its Response. Paper
`
`6 at 17-18; Paper 11 at 18-20. For ease of reference, Patent Owner submits a side-
`
`by-side comparison of the First Declaration and the Petition, attached hereto as
`
`Exhibit A.
`
`The Second Declaration of Dr. Madisetti is no better. In creating his Second
`
`Declaration, Dr. Madisetti testified that he followed a “very similar” process to that
`
`of the word-for-word First Declaration. Ex. 2006 at 26:18-23. Moreover, Dr.
`
`Madisetti was unable to answer questions regarding his Declarations without having
`
`those Declarations in front of him and reading from such, and is incredulously
`
`evasive when confronted with simple general questions involving, for example, the
`
`definition of capturing. See, e.g., Ex. 2006 at 7:10-12 (“Q. Okay. What does the word
`
`‘capturing’ mean to you? A. It means capturing. Q. Okay. Can you provide a
`
`definition of capturing that doesn’t use the word ‘capturing’? [objection lodged.]
`
`[A.] I’m quite comfortable with capturing. Q. So you can’t answer that question?
`
`[objection lodged.] [A.] No. I felt that capturing captures -- capturing is a good
`
`description of the term ‘capturing.’ So it captures a still image.”)
`
`Lastly, Dr. Madisetti does not qualify as one of ordinary skill in the art
`
`2
`
`
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`according to his own definition. For example, the record fails to establish that Dr.
`
`Madisetti has “at least one year of direct technical experience in capturing real-time
`
`video with zooming capability via a portable document camera.” Ex. 1020 at ¶ 15.
`
`II. ARGUMENT
`Only expert testimony from reliable sources is admissible to assist the trier of
`
`fact. Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 593 (1993). An expert
`
`opinion must be the product of reliable principles and methods, and the expert must
`
`reliably apply those principles and methods. See id.; Fed. R. Ev. 702. Importantly,
`
`the proponent of expert testimony bears the burden of establishing the reliability of
`
`the principles and methods applied by the expert. Lewis v. CITGO Petroleum Corp.,
`
`561 F.3d 698, 705 (7th Cir. 2009) (“The proponent of the expert bears the burden of
`
`demonstrating that the expert’s testimony would satisfy the Daubert standard.”)
`
`Here, the Madisetti Declarations contain little more than bare assertions that
`
`have little basis in reality. Moreover, Petitioners’ Petition is suffused with arguments
`
`parroted directly from Madisetti’s First Declaration, or vice versa. Additionally, the
`
`First Declaration and the Petition mirror informalities and errors that lead to the
`
`inevitable conclusion that large portions of the Petition were lifted directly from the
`
`First Declaration, or vice versa, and shared the same drafter. For example, the First
`
`Declaration refers to “this petition” even though the First Declaration purportedly
`
`predates the Petition. Compare Ex. 1020 at 38 with Paper 3 at 44. See also Exhibit
`
`3
`
`
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`A at 32. In another example, both the First Declaration and the Petition use “See
`
`Section…” without the use of italics. See Exhibit A at 44. Such expertized assertions
`
`fall far short of admissibility standards. See, e.g., InfoBionic, Inc. v. Braemar
`
`Manufacturing, LLC, IPR2015-01704, Paper 11 (PTAB 2016) (denying institution,
`
`because expert merely repeated the argument in the Petition about what a reference
`
`meant without explaining why the expert believed that meaning to be correct). Dr.
`
`Madisetti’s First Declaration is attorney argument masqueraded as expert opinion
`
`that fails to provide an objective basis and thus, should be excluded or, alternatively,
`
`be afforded little to no weight. See Corning Inc. v. DSM IP Assets B.V., IPR2013-
`
`00049, Paper 88, 21-22 (PTAB 2014) (affording “little weight” to an expert’s
`
`opinion that was verbatim repeated by the petition and provided no objective basis).
`
`A. Madisetti’s Claim Construction Discussion Is Virtually Identical
`to the Petition.
`“a series of frame images” (claims 1, 3, and 18)
`1.
`The First Declaration’s discussion of claim construction is virtually identical
`
`to the Petition. For example, paragraphs 24-26 of the First Declaration are virtually
`
`verbatim identical to the paragraphs in the Petition discussing “a series of frame
`
`images.” Compare Madisetti Dec. (Ex. 1020 at ¶¶ 24-26) with Petition (Paper 3 at
`
`8-9); see also Exhibit A at 1-2. After reiterating substantially verbatim the same text
`
`from the Petition, Madisetti concludes that a person of ordinary skill in the art
`
`(“POSITA”) would understand “a series of frame images” to be “a plurality of still
`
`4
`
`
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`images.” Madisetti Dec. at ¶ 26 (Ex. 1020 at 12). But Madisetti provides absolutely
`
`no factual basis or rationale for this conclusion. 37 C.F.R. § 42.65(a) (“Expert
`
`testimony that does not disclose the underlying facts or data on which the opinion is
`
`based is entitled to little or no weight.”).
`
`“a series of real-time images” (claim 18)
`2.
`Likewise, Madisetti concludes in one sentence that a POSITA would
`
`understand “a series of real-time images” to be “a plurality of real-time still images.”
`
`Madisetti Dec. at ¶27 (Ex. 1020 at 12). But again Madisetti provides no factual basis
`
`or data for this opinion.
`
`“the output frame images” (claims 13 and 14)
`3.
`Similarly, Madisetti’s discussion of the construction of “the output frame
`
`images” is virtually identical to that in the Petition. Compare Petition (Paper 3 at 12-
`
`13) with Madisetti Dec. (Ex. 1020 at ¶ 34); see also Exhibit A at 4.
`
`B. Madisetti’s Opinions on Obviousness Are Virtually Identical to
`those in the Petition with Little or No Explanation or Analysis.
`1. Madisetti’s Overview of the Prior Art is Verbatim Identical
`Madisetti’s discussion of Morichika, Krisbergh, Hara, Mitsui and Ishii is
`
`verbatim identical to the Petition. Compare Petition (Paper 3 at 13-19) with
`
`Madisetti Dec. (Ex. 1020 at ¶¶ 36-54); see also Exhibit A at 4-11.
`
`a) Morichika
`As shown by a side-by-side comparison, Madisetti’s entire discussion of
`
`5
`
`
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`Morichika (Ground 1 for invalidity) is virtually identical to the attorney argument in
`
`the Petition. With the exception of a few minor paragraphs (Ex. 1020 at ¶¶ 83, 85,
`
`102), Madisetti’s entire discussion of Morichika for over 24 pages is lifted virtually
`
`verbatim from the attorney argument in the Petition without further explanation or
`
`analysis. Compare Petition (Paper 3 at 20-44) with Madisetti Dec. (Ex. 1020 at
`
`¶¶ 55-115); see also Exhibit A at 11-32.
`
`Madisetti summarily concludes that it would have been obvious to a POSITA
`
`to modify “the Morichika device to use a video camera” and “modify the PC’s
`
`software accordingly.” Ex. 1020 at ¶ 56. Madisetti also opines in one sentence that
`
`a POSITA “would understand that the manipulations performed by the PC would
`
`not affect the resolution of the image that is projected by the projector.” Id. at ¶ 97.
`
`But again, Madisetti fails to provide any articulated basis or reasoning for these
`
`opinions as required.
`
`b) Krisbergh in View of Hara
`Again, with the exception of one minor sentence, Madisetti’s entire discussion
`
`spanning 12 pages that Krisbergh in view of Hara renders claims 8-10, 12, 14 and
`
`16 obvious is lifted verbatim from the Petition (Ground 2 for invalidity) without any
`
`explanation or analysis. Compare Petition (Paper 3 at 44-56) with Madisetti Dec.
`
`(Ex. 1020 at ¶¶ 116-41); see also Exhibit A at 32-44. A more blatant example of
`
`“expertizing” could scarcely be imagined.
`
`6
`
`
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`c) Krisbergh in View of Hara and Mitsui
`Likewise, Madisetti’s entire discussion that Krisbergh in view of Hara and
`
`Mitsui renders claims 13 and 16 obvious (Ground 3 for invalidity) is lifted verbatim
`
`from the Petition with no analysis or factual underpinning. Compare Petition (Paper
`
`3 at 56-59) with Madisetti Dec. (Ex. 1020 at ¶¶ 142-47); see also Exhibit A at 44-
`
`47. Further, Madisetti concludes in one sentence that it would have been obvious for
`
`a POSITA “to incorporate Hara’s technique for reducing the volume of transmitted
`
`data,” but provides no explanation or factual basis for this opinion. Madisetti Dec.
`
`(Ex. 1020 at ¶145). Madisetti concludes in one sentence that it would have been
`
`obvious for a POSITA “to combine the image rotation feature of Mitsui into the
`
`videophone disclosed in Krisbergh,” but Madisetti provides no articulated reasoning
`
`for this opinion. Id. Worse, Madisetti provides no basis for his opinion that a
`
`POSITA seeking to use a PC to perform digital zoom over real-time video would
`
`even look to videophone references such as Hara and Mitsui.
`
`Ishii
`d)
`Further still, Madisetti’s entire discussion spanning 14 pages that Ishii renders
`
`claims 1-5, 8, and 16 obvious is lifted verbatim from the Petition (Ground 4 for
`
`invalidity) with no explanation or analysis. Compare Petition (Paper 3 at 59-72) with
`
`Madisetti Dec. (Ex. 1020 at ¶¶152-87); see also Exhibit A at 48-60. Madisetti opines
`
`that it would have been obvious for a POSITA to employ Ishii to render the ‘751
`
`7
`
`
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`patent obvious, but Madisetti provides no articulated reasoning for his opinion. Ex.
`
`1020 at ¶ 153. Certainly, Ishii’s sparse acknowledgement that “digital video cameras
`
`are widely used in the ordinary household” does not provide any particularized
`
`direction on how to accomplish digital zoom over real-time video using a PC as
`
`taught by the ‘751 patent.
`
`C. Madisetti’s Opinions to Support Petitioner’s Opposition Are Also
`Not Credible
`With all due respect, Dr. Madisetti is a paid oath taker. Ex. 2006 at 22:22-23.
`
`On at least two separate occasions, the Board has found his opinions to be
`
`unsubstantiated. See, e.g., ZTE Corp. v. Interdigital Tech. Corp., IPR2014-00275,
`
`Paper 11 at 13 (PTAB 2014) (“Likewise, Dr. Madisetti, does not provide sufficient
`
`and persuasive evidence demonstrating that a person of ordinary skill in the art
`
`would have understood ….”); Blackberry Corp. v. Mobilemedia Ideas, LLC,
`
`IPR2013-00036, Paper 65 at 18 (PTAB 2014) (“We do not credit the testimony of
`
`Dr. Madisetti, that one skilled in the art at the time of the invention of the ‘048 patent
`
`would understand ….”). Yet, when recently asked if the Board has ever found his
`
`testimony to not be credible, Dr. Madisetti evasively replied: “I don’t recall.” Ex.
`
`2006 at 24:1-15. In his recent deposition, Dr. Madisetti was unable to answer
`
`questions about his Second Declaration without reading from his declaration. See
`
`Ex. 2006 at 15:22, 29:18-20, 30:6-7; 33:14-16, and 42:8-12. Moreover, Dr. Madisetti
`
`8
`
`
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`followed the same process in creating both his declarations. Ex. 2006 at 26:18-23.
`
`Dr. Madisetti is also prone to taking contradictory positions. In his ITC
`
`deposition regarding Petitioner’s same invalidity position as raised in this
`
`proceeding, Dr. Madisetti stated that Morichika’s camera 4c “provides a video
`
`image.” Ex. 2005 at 81:19-23 (“the camera outputs frame images, and it provides an
`
`– a set of – it provides a video image comprising a plurality of frame images.”). Yet,
`
`in his first declaration, Dr. Madisetti avoided addressing whether Morichika’s
`
`camera 4c was a video or still camera. See generally Ex. 1020. Now, Dr. Madisetti
`
`takes the position that Morichika “is not explicit one way or the other as to whether
`
`the camera is a digital video camera or a digital still camera.” Ex 1025 at ¶ 50. Dr.
`
`Madisetti’s testimony is useless in this regard.
`
`Dr. Madisetti testimony is often incredulous and evasive. For example, in the
`
`Parties’ related ITC proceeding, Dr. Madisetti refused to admit that Morichika’s
`
`video adapter 25 generates a video signal (as opposed to Morichika explicitly
`
`teaching the camera 4c generating a video signal). See Ex. 2005 at 75:7-86:6. In his
`
`recent deposition regarding his second declaration, Dr. Madisetti refused to provide
`
`a meaningful definition of video stream. Ex. 2006 at 14:21-15:13 (“Q. What does a
`
`video stream mean to you? A. It means a video stream.…If a student came to you
`
`and asked you what a video stream is, would you answer “a video stream?” A.
`
`Yes.”).
`
`9
`
`
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`D. Dr. Madisetti is Not Qualified to Give Opinions as One of
`Ordinary Skill in the Art
`Lastly, by his own definition, Dr. Madisetti lacks the industry experience to
`
`qualify as one of ordinary skill in the art. Dr. Madisetti defined one of ordinary skill
`
`in the art around the time of the ‘751 patent to have, among other things, “at least
`
`one year of direct technical experience in capturing real-time video with zooming
`
`capability via a portable document camera.” Ex. 1025 at ¶ 15. Yet, Dr. Madisetti
`
`(nor any document submitted by Petitioner) does not address how Dr. Madisetti
`
`meets this technical experience requirement. Nowhere in Dr. Madisetti’s CV does it
`
`show that he worked with video zooming in portable document cameras, let alone
`
`portable document cameras in general. By his own definition, Dr. Madisetti is not
`
`one of ordinary skill in the art and thus, his obviousness testimony as to what is
`
`“understood” by, “considered” by, “known” to, or “disclosed” to a person of
`
`ordinary skill in the art is not reliable and should be excluded. See, e.g., Sloan Valve
`
`Co. v. Zurn Ind., Inc., Civ. No. 10-cv-00204 (N.D. Ill. Nov. 18, 2013) (“The majority
`
`of [expert’s] opinions regarding obviousness are based on the perspective of a
`
`POSITA. Because he is not a POSITA, he is not qualified to give these opinions.”)
`
`III. CONCLUSION
`In summary, Dr. Madisetti’s opinions and discussion of invalidity are not
`
`admissible and should be excluded from this proceeding.
`
`10
`
`
`
`
`
`
`Dated: November 20, 2018
`
`
`
`
`Case No. IPR2017-02108
`Patent No. 8,508,751
`
`Respectfully submitted,
`
`Pathway Innovations and Technologies, Inc.
`By counsel:
`/s/Trevor Q. Coddington, Ph.D.
`TREVOR Q. CODDINGTON, PH.D.
`PTO REG. NO. 46,633
`DONNY K. SAMPORNA
`PTO REG. NO. 76,604
`SAN DIEGO IP LAW GROUP LLP
`12526 High Bluff Drive, Suite 300
`San Diego, California 92130
`Telephone: (858) 792-3446
`Facsimile: (858) 408-4422
`Email: uspto@sandiegoiplaw.com
`
`11
`
`
`
`
`
`
`
`and any supporting exhibits was served on November 20, 2018, by filing this
`document through the Patent Review Processing System as well as delivering a
`copy via email directed to the attorneys of record for Petitioners:
`K&L Gates LLP
`Jackson Ho
`Jackson.ho@klgates.com
`
`Benjamin Weed
`Benjamin.weed.ptab@klgates.com
`
`Kevin McCormick
`Kevin.mccormick@klgates.com
`
`
`
`
`
`Respectfully submitted,
`/s/ Trevor Q. Coddington, Ph.D.
`Trevor Q. Coddington, Ph.D.
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S MOTION TO EXCLUDE EXPERT EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
