UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`QUALTRICS, LLC
`Petitioner
`
`v.
`
`OPINIONLAB, INC.
`Patent Owner
`
`_______________
`
`Case IPR2014-00366
`U.S. Patent 8,041,805
`
`_______________
`
`
`
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`PETITIONER QUALTRICS, LLC’S MOTION TO EXCLUDE EVIDENCE
`
`
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`FILED VIA PRPS
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`
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`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`QUALTRICS, LLC
`Petitioner
`
`v.
`
`OPINIONLAB, INC.
`Patent Owner
`
`_______________
`
`Case IPR2014-00366
`U.S. Patent 8,041,805
`
`_______________
`
`
`
`
`PETITIONER QUALTRICS, LLC’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`FILED VIA PRPS
`
`
`
`
`
`
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`Table of Contents
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`I.
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`Introduction ...................................................................................................... 1
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`II. Motion to Exclude and Authorization ............................................................. 1
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`III. Dr. Shamos’s Opinions Regarding Obviousness Should Be Excluded .......... 2
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`IV. Dr. Shamos’s Opinions Regarding Secondary Considerations Should
`Also Be Excluded ............................................................................................ 6
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`V.
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`Conclusion ..................................................................................................... 10
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`i
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`I.
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`INTRODUCTION
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`Petitioner Qualtrics, LLC moves to exclude the opinions of Patent Owner
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`OpinionLab, Inc.’s expert Dr. Shamos regarding obviousness and secondary
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`considerations. Dr. Shamos applied the wrong legal standard in determining the
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`level of ordinary skill and thus his determinations on obviousness are flawed and
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`inadmissible. Further, Dr. Shamos’s opinions on secondary considerations are also
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`flawed and inadmissible because they (a) go beyond his qualifications, (b) fail to
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`show the required nexus, and (c) ignore many other important factors relevant to
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`secondary considerations. Thus, Qualtrics moves to exclude:
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`• Dr. Shamos’s opinions regarding obviousness, including ¶¶ 26–32,
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`37–100 of his declaration (Ex. 2002 (“Shamos Decl.”)) and the
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`portions of his deposition testimony (Ex. 1028 (“Shamos Dep.”))
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`regarding obviousness.
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`• Dr. Shamos’s opinions regarding secondary considerations,
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`including ¶¶ 101–114 of his declaration and the portions of his
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`deposition testimony discussing secondary considerations.
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`II. MOTION TO EXCLUDE AND AUTHORIZATION
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`A “motion to exclude evidence” must be filed by each party to preserve any
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`objection. 37 C.F.R. § 42.64(c). The motion may be filed without prior
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`authorization from the Board. Id. The Scheduling Order governing this IPR
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`1
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`specifically authorizes each party to file a motion to exclude evidence by Due Date
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`4 or February 27, 2015. (Paper 16.)
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`III. DR. SHAMOS’S OPINIONS REGARDING OBVIOUSNESS SHOULD
`BE EXCLUDED
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`The Federal Rules of Evidence apply to PTAB Proceedings. 37 C.F.R. §
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`42.62(a). And expert testimony that is premised on an incorrect legal standard is
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`inadmissible under FRE 702. See, e.g., Hebert v. Lisle Corp., 99 F.3d 1109, 1117
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`(Fed. Cir. 1996) (“We encourage exercise of the trial court’s gatekeeper authority
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`when parties proffer, through purported experts, not only unproven science, but
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`markedly incorrect law. Incorrect statements of law are no more admissible
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`through ‘experts’ than are falsifiable scientific theories.”) (emphasis added).
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`
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`Dr. Shamos’s opinions regarding obviousness should be excluded because
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`he applied the wrong legal standard in determining the level of ordinary skill. To
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`do so, he considered only the ’805 Patent and failed to assess the prior art in the
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`field in making his determination. Indeed, Dr. Shamos conceded in his deposition
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`that he looked solely at the ’805 Patent specification and claims:
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`I look at the field of the invention as defined by the inventor. I look at
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`the specification to see what level of education and background would
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`be needed to understand the specification. And then I look at the
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`claims to see what one would need to know in order to implement the
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`invention as claimed. And . . . I’m able to formulate a level of skill
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`2
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`from that.
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`(Shamos Dep. at 70:1–9.)
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`
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`Dr. Shamos deemed the prior art “irrelevant” and confirmed his belief that
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`the level of ordinary skill is determined by reference to the ’805 Patent alone:
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`Q: Did you consider the prior art that was referenced in the petitions?
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`. . .
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`A: I don’t recall having done so. . . . It’s difficult for me to imagine
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`how it would be relevant.
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`Q: And why would that not be relevant?
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`A: Because the person of ordinary skill in the art is determined by
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`reference to the patent.
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`(Id. at 70:10–25.)
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`
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`But since a person of ordinary skill is “presumed to know the relevant art,”
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`such relevant prior art must be considered to properly assess the skill level. See In
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`re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). To determine the skill level,
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`the Federal Circuit and Patent Office have emphasized five factors: “[1] type of
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`problems encountered in the art; [2] prior art solutions to those problems;
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`[3] rapidity with which innovations are made; [4] sophistication of the technology;
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`and [5] education level of active workers in the field.” Id.; MPEP § 2141.03;
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`accord. Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000); Custom
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`3
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`Accessories v. Jeffrey-Allan Industries, 807 F.2d 955, 962 (Fed. Cir. 1986).
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`
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`For example, in In re GPAC, the Federal Circuit confirmed that the level of
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`ordinary skill in the art is best determined by reference to the prior art of record.
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`57. F.3d at 1579. There, the level of ordinary skill in the art of asbestos removal
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`and contamination control was determined based on a book entitled Asbestos, the
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`primary prior art reference at issue. Id. The Federal Circuit approved this approach,
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`because the prior art “offers valuable insight” into the factors for determining the
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`level of ordinary skill. Id.
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`
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`The Federal Circuit noted that the Asbestos book “explains the hazards
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`associated with asbestos removal and discusses in detail the types of problems
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`encountered in the art as well as possible solutions.” Id. The book also explains
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`that an asbestos removal system “demands a technical sophistication . . .
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`commensurate with the hazardous nature of the work.” Id. The book also explains
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`that asbestos removal emphasizes “professional competence in ensuring regulatory
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`compliance.” Id. Thus, the Federal Circuit found the Asbestos book instructive on
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`at least four of the five factors used to determine the level of ordinary skill.
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`
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`In contrast, Dr. Shamos failed to consider any of the factors articulated by
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`the Federal Circuit and Patent Office since he admittedly did not consider any the
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`prior art in the field of the ’805 Patent at all. Because Mr. Shamos applied the
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`4
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`wrong legal standard, his obviousness opinions should be excluded.1 See, e.g.,
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`Huang v. Marklyn Group Inc., 2014 WL 3559367, *5-*6 (D. Colo. 2014) (granting
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`motion to exclude technical expert’s obviousness testimony where it was not
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`grounded in proper methodology and failed to apply proper level of ordinary skill
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`in the art); Am. Med. Sys., 712 F. Supp. 2d at 901 (holding patentee’s expert’s
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`opinions were “inadmissible because they are based on incorrect legal standards”);
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`Hebert v. Lisle Corp., 99 F.3d at 1117 (“Incorrect statements of law are no more
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`admissible through ‘experts’ than are falsifiable scientific theories.”).
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`
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`Qualtrics moves to exclude Dr. Shamos’s opinions regarding obviousness,
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`including ¶¶ 26–32, 37–100 of his declaration and the portions of his deposition
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`testimony regarding obviousness.
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`1 Dr. Shamos suggest that even if he adopted Qualtrics’s characterization of a
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`person of ordinary skill, it would not impact his obviousness analysis. (Shamos
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`Decl. at ¶ 32.) But Dr. Shamos’s opinions on whether a person of ordinary skill
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`would have found the claims obvious or been motivated to combine the references
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`necessarily depend on his characterization of what a person of ordinary skill would
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`have known and considered, which is materially different from Qualtrics’s.
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`Because Dr. Shamos applied the wrong legal standard and his opinions are from
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`that erroneous perspective, they should be excluded.
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`5
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`IV. DR. SHAMOS’S OPINIONS REGARDING SECONDARY
`CONSIDERATIONS SHOULD ALSO BE EXCLUDED
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`Dr. Shamos’s opinions regarding secondary considerations should also be
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`excluded. Dr. Shamos (a) is not a financial expert, nor did he conduct an adequate
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`investigation, (b) failed to show the required nexus between the claimed subject
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`matter of the ’805 Patent and any alleged secondary consideration, and (c) ignored
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`many other important factors relevant to the alleged secondary considerations.
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`First, Dr. Shamos is not a financial expert qualified to analyze commercial
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`success or industry recognition. Dr. Shamos has a background in computer science,
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`and does not claim to have any experience or expertise with financial analysis or
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`the online survey industry. Nor did he conduct an investigation into whether the
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`OpinionLab products achieved commercial success or industry recognition. Dr.
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`Shamos testified that he “never talked to anybody at OpinionLab.” (Shamos Dep.
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`315:23–316:2.) He admitted he did not know OpinionLab’s revenue, its
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`competitors in the consumer feedback space, or its annual growth rate for the last
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`several years. (Shamos Dep. at 317:25–318:1; 319:23–320:12; 321:1–8.)
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`
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`Without this basic information—or the necessary financial expertise—Dr.
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`Shamos is not qualified to offer expert testimony that the relevant OpinionLab
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`products achieved commercial success and industry recognition. See, e.g., AMO, v.
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`Alcon, 2005 WL 782809 (D. Del. 2005) (granting motion to exclude patentee’s
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`expert witness from testifying as to commercial success where he lacked expertise
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`6
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`in the financial aspects of patentee’s products); XpertUniverse v. Cisco Sys., 2013
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`WL 865974, *3-*4 (D. Del. 2013) (striking patentee’s technical expert’s testimony
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`on secondary considerations, holding “most of Dr. Nourbakhsh's opinions about
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`secondary considerations of non-obviousness go beyond his computer science and
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`call center expertise and are therefore not reliable.”).
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`
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`Second, Dr. Shamos fails to show the required nexus between the claimed
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`subject matter of the ’805 Patent and any alleged related commercial success or
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`industry recognition. “[E]vidence of commercial success alone is not sufficient to
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`demonstrate nonobviousness of a claimed invention.” In re DBC, 545 F.3d 1373,
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`1384 (Fed. Cir. 2008). Rather, “the proponent must offer proof ‘that the sales were
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`a direct result of the unique characteristics of the claimed invention . . . . ’” Id.
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`(emphasis added). Likewise, “[i]ndustry praise must also be linked to the patented
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`invention.” Geo M. Martin v. All. Mach, 618 F.3d 1294, 1305 (Fed. Cir. 2010).
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`
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`To meet this requirement, Dr. Shamos must show that the claimed subject
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`matter of the ’805 Patent was responsible for OpinionLab’s alleged commercial
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`success and industry recognition. But he never talked to anybody at OpinionLab,
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`or conduct any independent research or analysis, to find out what drove demand
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`for the products and which customers, if any, practice the claimed subject matter of
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`the ’805 Patent. (Shamos Dep. at 315:23–316:2.) Nor did he investigate which of
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`OpinionLab customers, if any, actually practice the claimed features of the ’805
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`7
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`U.S. Patent No. 8,041,805
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`Patent. For example, he did not review the websites of alleged customers Bank of
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`America, Wal-Mart, Ford, Dell, IBM, or other customers to determine whether
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`they practice the ’805 Patent. (Id. at 291:10–292:20.). Nor did Dr. Shamos conduct
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`any formal or informal interviews or surveys regarding the specific claimed
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`features of the ’805 Patent to determine which features, if any, drove sales. (See
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`Shamos Dep. at 313:18–24 (“No, [I did not conduct any surveys].”); 314:21–24
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`“No, [OpinionLab] did not provide me with [any surveys].”).)
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`
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`Because Dr. Shamos fails to support the legally required nexus, his opinions
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`should be excluded. See, e.g., Medicines Company v. Mylan Inc., 2014 WL
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`1227214, *4–*6 (N.D. Ill. 2014) (granting motion to strike expert testimony on the
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`issue of commercial success since the expert applied an incorrect legal
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`methodology and failed to show a nexus for the alleged commercial success);
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`Lutron Electronics Co., Inc. v. Crestron Electronics, Inc., WL 4881570, *8–*10
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`(D. Utah 2013) (refusing to permit two technical experts to testify as to the nexus
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`of the alleged commercial success where the experts did not undertake any analysis
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`to show it was the features of the asserted patent that drove sales).
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`
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`Third, Dr. Shamos also ignores many other important factors relevant to
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`secondary considerations, rendering his analysis fatally flawed. For example, he
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`did not consider how other factors may have contributed or were responsible for
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`the alleged commercial success and industry recognition, including:
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`8
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`IPR2014-00366
`U.S. Patent No. 8,041,805
`• OpinionLab’s other bundled products and services unrelated to the
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`’805 Patent, such as its mobile, in store, and product feedback
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`solutions, and its implementation design, data collection, analysis,
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`and reporting services provided to customers. (See Shamos Dep. at
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`298:16–299:6 (“I don’t know what the range of products and
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`services that’s provided by OpinionLab is.”).)
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`• OpinionLab’s trademarks, including its [+] feedback symbol. (See
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`Shamos Dep. at 307:19–309:2. (acknowledging that the [+] symbol
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`is a “contributing factor” to OpinionLab’s success).)
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`• Other economic and commercial factors such as OpinionLab’s
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`marketing and sales efforts, market share factors, and trends in the
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`online survey market. (See Shamos Dep. at 317:25–321:22.)
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`By failing to account for any of these factors, Dr. Shamos has no basis to assert
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`that any alleged secondary consideration is directly attributable to the claimed
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`subject matter of the ’805 Patent.
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`
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`Instead, Dr. Shamos’s opinions on secondary considerations merely serve as
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`a mouthpiece for OpinionLab’s counsel and present attorney argument under the
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`guise of “expert testimony.” Nor did Dr. Shamos conducted any rigorous analysis
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`whatsoever of the alleged secondary considerations here. Such opinions should be
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`excluded. See e.g., Advanced Medical Optics, v. Alcon, 2005 WL 782809 (D. Del.
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`9
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`2005) (granting motion to exclude patentee’s expert witness from testifying as to
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`commercial success where the expert did not disclose any basis supporting his
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`opinion except for information provided by patentee’s counsel); Rambus Inc. v.
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`Hynix Semiconductor Inc., 2008 WL 5411571, *13 (N.D. Cal. 2008) (granting
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`accused infringer's motion in limine to preclude patentee's technical expert from
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`opining on secondary considerations, holding “[t]o give expert testimony, Mr.
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`Murphy must use his expertise to rigorously analyze an issue and present his
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`opinion. He has not done that in connection with most of his opinions on secondary
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`considerations. Rambus may not put on its closing argument through Mr. Murphy
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`as ‘expert testimony.’”).
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`
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`Qualtrics moves to exclude Dr. Shamos’s opinions regarding secondary
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`considerations, including ¶¶ 101–114 of his declaration and the portions of his
`
`deposition testimony discussing secondary considerations.
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`V. CONCLUSION
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`For the reasons above, Qualtrics respectfully requests that Dr. Shamos’s
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`opinions on obviousness and secondary considerations be excluded.
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`
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`Dated: February 27, 2015
`
`
`/s/ Robert Steinberg
`By:
`Latham & Watkins LLP, Counsel for Petitioner
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`10
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`CERTIFICATE OF SERVICE
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`Under 37 C.F.R. § 42.6(e) and the parties’ agreement to electronic service
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`on August 21, 2014, I certify that on February 27, 2015, a copy of:
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`PETITIONER QUALTRICS, LLC’S MOTION TO EXCLUDE EVIDENCE
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`was served by e-mail on Patent Owner’s lead and backup counsel, as follows:
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`Christopher W. Kennerly
`chriskennerly@paulhastings.com
`Paul Hastings LLP
`1117 S. California Ave.
`Palo Alto, CA 94304
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`
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`Naveen Modi
`naveenmodi@paulhastings.com
`Timothy P. Cremen
`timothycremen@paulhastings.com
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
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` By: /s/ Robert Steinberg
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` Robert Steinberg
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` Reg. No. 33144
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` Neil A. Rubin
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` Reg. No. 67030
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` Jonathan M. Jackson (admitted pro hac vice)
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` Philip X. Wang (admitted pro hac vice)
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` Latham & Watkins LLP
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` 355 South Grand Avenue
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` Los Angeles, CA 90071-1560
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` 213.485.1234
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` 213.891.8763 (Fax)
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` Counsel for Petitioner
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