UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`QUALTRICS LLC
`
`Petitioner
`
`v.
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`OPINIONLAB, INC.
`
`Patent Owner
`
`_________________
`
`Case IPR2014-00366
`
`Patent 8,041,805
`
`_________________
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`
`MOTION TO EXCLUDE
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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
`
`Patent 8,041,805
`
`_________________
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`
`MOTION TO EXCLUDE
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`
`
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`I.
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`INTRODUCTION
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`Patent Owner OpinionLab, Inc. submits this Opposition to Petitioner’s
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`Motion to Exclude pursuant to 37 C.F.R. § 42.64(c) seeking exclusion of certain
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`paragraphs of Exhibit 2002, the Declaration of Michael I. Shamos (the “Shamos
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`Declaration”).
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`Petitioner’s motion seeks to exclude Dr. Shamos’s entire opinion regarding
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`obviousness based on its allegation that he applied the wrong legal standard in
`
`defining the level of ordinary skill in the art. Petitioner’s motion should be denied
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`at least because, for purposes of his opinion regarding obviousness, Dr. Shamos
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`applied the same definition for the level of ordinary skill as Petitioner’s expert.
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`Petitioner provides no explanation as to how Dr. Shamos’s obviousness analysis
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`could possibly be impacted where he applied the same definition as Petitioner’s
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`expert. In addition, Petitioner relies almost entirely on its mischaracterizations of
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`Dr. Shamos’s deposition testimony. The entire argument boils down to the fact
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`that Petitioner disagrees with Dr. Shamos’s conclusions regarding obviousness.
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`That is not a proper basis for a motion to exclude.
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`Petitioner similarly seeks to exclude Dr. Shamos’s opinions on secondary
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`considerations based on mischaracterizations of his deposition testimony and its
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`disagreement with his conclusions. Petitioner alleges that Dr. Shamos does not
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`IPR2014-00366
`Patent No. 8,041,805
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`have the financial expertise required to offer opinions on secondary considerations,
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`but Dr. Shamos does not purport to rely on financial statements, market analysis,
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`or economic reports which would require such expertise. Dr. Shamos has ample
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`expertise to support the opinions he has offered. Petitioner’s remaining arguments
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`regarding the nexus to the claims, the sufficiency of Dr. Shamos’s investigation,
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`and consideration of additional factors all go to the weight of the evidence, and are
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`not a proper basis for exclusion.
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`Finally, Petitioner’s objections to the evidence presented in OpinionLab’s
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`Opposition were overly broad and undecipherable. Petitioner’s failure to provide
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`OpinionLab with required notice as to the scope of the objections warrants denial
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`of Petitioner’s motion on that basis alone.
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`II. LEGAL STANDARD
`“Admissibility of evidence is generally governed by the Federal Rules of
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`Evidence.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758 (Aug.
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`14, 2012). Rule 403 of the Federal Rules of Evidence explains that relevant
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`evidence may only be excluded “if its probative value is substantially outweighed
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`by a danger of one or more of the following: unfair prejudice, confusing the issues,
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`misleading the [Board], undue delay, wasting time, or needlessly presenting
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`cumulative evidence.”
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`IPR2014-00366
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`A motion to exclude evidence must explain why the cited evidence is not
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`admissible and must: (a) identify where in the record the objection originally was
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`made; (b) identify where in the record the evidence sought to be excluded was
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`relied upon by an opponent; (c) address objections to Exhibits in numerical order;
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`and (d) explain each objection. Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48756, 48767 (Aug. 14, 2012).
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`III. ARGUMENT
`A. Dr. Shamos’s Opinions Regarding Obviousness Are Legally
`Sound and Should Not Be Excluded
`
`Dr. Shamos applied the correct legal principles in determining that the ’805
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`Patent was not rendered obvious by Petitioner’s combination of references. This is
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`certainly true in light of Dr. Shamos’s definition of the level of ordinary skill in the
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`art. Regardless, Petitioner’s motion should be denied at least because, for purposes
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`of his opinion regarding obviousness, Dr. Shamos applied the same definition for
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`the level of ordinary skill as Petitioner’s expert, which Petitioner acknowledged in
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`the motion itself. See Motion at 5 n.1. Petitioner fails to explain how Dr.
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`Shamos’s obviousness analysis could possibly be impacted where he applied the
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`very same definition as Petitioner’s expert.
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`Although irrelevant to its motion to exclude in light of the above, Petitioner
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`alleges Dr. Shamos applied the wrong legal standard in determining the level of
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`ordinary skill because “he considered only the ’805 Patent and failed to assess the
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`prior art in the field.” See Motion at 2. Petitioner further incorrectly claims that
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`Dr. Shamos is limited to five factors for determining the level of ordinary skill, and
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`that he must include reference to the prior art cited in the Petition to satisfy those
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`five factors. See Motion at 3-4 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed.
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`Cir. 1995)). However, GPAC’s 5-factor test is less rigid then Petitioner suggests.
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`Particularly, the Federal Circuit states that the Court “may” consider certain factors
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`and “[i]n a given case, every factor may not be present, and one or more factors
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`may predominate.” See GPAC, 57 F.3d at 1579. Indeed, in the GPAC case the
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`Federal Circuit never sought the extreme penalty of excluding expert testimony as
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`a whole but merely sought to examine whether the district court below applied an
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`appropriate skill level for determining obviousness. See id. at 1579-80.
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`The only support for Petitioner’s argument is its mischaracterization of Dr.
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`Shamos’s deposition testimony. Petitioner alleges that “Dr. Shamos deemed the
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`prior art ‘irrelevant’ and confirmed his belief that the level of ordinary skill is
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`determined by reference to the ’805 Patent alone.” Motion at 3. This is incorrect.
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`As Dr. Shamos testified, he considered the patent specification (see Shamos Dep.,
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`at 70:1-9) which, in this case, includes reference to many of the factors identified
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`in GPAC, including at least (1) “problems encountered in the art,” (2) “prior art
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`Patent Owner’s Opposition to
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`solutions to those problems,” and (3) “sophistication of the technology.”1 See
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`GPAC, 57 F.3d at 1579. In fact, in his declaration, Dr. Shamos specifically cites to
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`the patent specification to identify issues in the prior art, which the patented
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`invention sought to overcome. See, e.g., Shamos Decl., ¶¶ 42, 54.2
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`1 Furthermore, Dr. Shamos’s “education, experience, and training in academia and
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`industry” in conjunction with the patent, sufficiently allowed him to discern the
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`“educational level of active workers in the field.” See Shamos Decl., ¶ 31; see also
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`GPAC, 57 F.3d at 1579.
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`2 The case law Petitioner cites is inapposite and does not support its positions. In
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`both Huang and American Medical Systems, the court excluded the defendants’
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`expert opinion on obviousness where they failed to discuss and/or apply any legal
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`standard when discussing a motivation to combine certain prior art. See Huang v.
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`Marklyn Group Inc., No. 11-cv-01765, 2014 WL 3559367, at *5-6 (D. Colo. July
`
`18, 2014); Am. Med. Sys., Inc. v. Laser Peripherals, LLC, 712 F. Supp. 2d 885, 901
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`(D. Minn. 2010). Dr. Shamos’s thorough analysis and reasoned conclusions do not
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`bear any resemblance to the improper, conclusory opinions at issue in Huang.
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`Hebert is similarly inapposite to the situation here, especially where Dr. Shamos
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`adopted Petitioner’s own definition for purposes of his analysis. See Hebert v.
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`Lisle Corp., 99 F.3d 1109, 1115 (Fed. Cir. 1996) (overturning judgment based on
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`Even putting aside that Dr. Shamos applied Petitioner’s definition of the
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`level of ordinary skill for purposes of his analysis, which alone warrants denying
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`the motion, Petitioner’s arguments go to the weight of the evidence and are not a
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`proper basis for exclusion. Petitioner’s motion should be denied.
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`B. Dr. Shamos’s Opinions Regarding Secondary Considerations Are
`Well-Supported in His Declaration and Deposition Testimony and
`Should Not Be Excluded
`
`Petitioner’s arguments regarding exclusion of Dr. Shamos’s opinions on
`
`secondary considerations should also be rejected. First, Dr. Shamos’s financial
`
`knowledge is irrelevant to his opinions with respect to industry recognition and
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`commercial success. Petitioner has proffered no support for its generalization that
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`financial expertise is required for an expert opining on the type of documents
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`considered and analyzed by Dr. Shamos here. Second, Dr. Shamos analyzed and
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`investigated documents evidencing the secondary considerations on which he
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`opined, and provided detailed examples regarding the nexus between the described
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`products and the challenged claims. There should be no complaint regarding the
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`sufficiency of his analysis. Third, Petitioner seeks to exclude all evidence as to
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`secondary considerations, yet entirely ignores Dr. Shamos’s opinions with respect
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`to copying, and offers no basis on which to exclude those opinions.
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`inequitable conduct where patent law expert proffered an incorrect statement on
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`the disclosure requirements at the Patent Office).
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`In its motion, Petitioner advances an unduly high level of financial expertise
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`for an expert to opine on matters of industry recognition and commercial success.
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`Dr. Shamos considered documents demonstrating OpinionLab’s extensive base of
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`clients, the use of OpinionLab’s “flag-ship” page-specific user feedback solution in
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`websites worldwide, a recent ranking stating that OpinionLab was one of the
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`fastest growing private companies in the United States, and multiple news articles
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`discussing and praising OpinionLab’s “flag-ship” solution. See, e.g., Shamos
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`Decl., ¶¶ 107, 113-114; Exs. 2005-2022. Dr. Shamos had no need to discern
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`financial statements or economic reports (as in Petitioner’s case law), and was not
`
`required to have a level of “financial expertise” sufficient to do so. See Motion at
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`6-7.3
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`Petitioner’s remaining arguments ignore Dr. Shamos’s detailed analysis of
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`OpinionLab’s products and presence in the industry. Dr. Shamos thoroughly
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`analyzed and provided reasoned opinions on close to 20 Exhibits attached to his
`
`
`3 None of Petitioner’s cases holds that financial expertise is required to opine on
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`industry recognition, as Dr. Shamos has done here. Dr. Shamos is also a former
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`founder and president of two software-related companies, which provides ample
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`additional experience and expertise to opine on such issues. See Shamos Decl., 10.
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`
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`declaration. See Shamos Decl., ¶¶ 102-120; Exs. 2005-2022. In particular, Dr.
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`Shamos provided a detailed, limitation by limitation analysis as to the manner in
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`which OpinionLab’s “flag-ship” page-specific user feedback solution embodies the
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`limitations of the challenged claims of the ’805 Patent. In doing so, Dr. Shamos
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`analyzed OpinionLab’s own website and the implementation of OpinionLab’s
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`solution on an exemplary customer website (Bank of America).4 See Shamos
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`Decl., ¶¶ 102-112. Dr. Shamos’s limitation by limitation analysis demonstrates the
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`requisite nexus.
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`Moreover, Petitioner’s arguments again go to the weight of the evidence,
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`and boil down to Petitioner’s disagreement with Dr. Shamos’s conclusions. None
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`4 In contrast, the cases cited by Petitioner are either irrelevant for these proceedings
`
`or the experts in those case failed to provide any detailed analysis of nexus, unlike
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`the limitation by limitation analysis at issue here. See, e.g., Medicines Co. v.
`
`Mylan Inc., No. 11-cv-1285, 2014 WL 1227214, at *4-6 (N.D. Ill. Mar. 25, 2014)
`
`(excluding expert testimony where expert did not “understand the nexus
`
`requirement” and failed to provide any limitation by limitation analysis of the
`
`claims versus commercial embodiments); Lutron Elecs. Co. v. Crestron Elecs.,
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`Inc., 970 F. Supp. 2d 1229, 1239-42 (D. Utah 2013) (excluding expert testimony
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`that both lacked a limitation by limitation analysis and was based on sales data,
`
`rather than documents such as Dr. Shamos analyzed here).
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`
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`of Petitioner’s rationale, including whether Dr. Shamos considered the additional
`
`factors identified by Petitioner, warrants the drastic sanction of exclusion. See
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`Motion at 9; see also Smith & Nephew, Inc. Petitioner, IPR2013-00097, 2014 WL
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`2466142, at *35 (P.T.A.B. May 29, 2014) (“Contending that the evidence is
`
`inadequate for a determination of nexus, however, is not sufficient to establish the
`
`impropriety of the evidence, much less the inadmissibility of the evidence under
`
`the Federal Rules of Evidence.” (citing Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48767 (Aug. 14, 2012))). Moreover, the Office Trial Practice Guide
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`explains that a motion to exclude “may not be used to challenge the sufficiency of
`
`the evidence to prove a particular fact.” 77 Fed. Reg. 48756, 48767 (Aug. 14,
`
`2012). The issues raised by Petitioner, which go to the weight of the evidence with
`
`respect to non-obviousness of the challenged claims, are not a proper basis for
`
`exclusion of Dr. Shamos’s expert opinions.5
`
`
`5 Although Petitioner broadly states that it “moves to exclude … Dr. Shamos’s
`
`opinions regarding secondary considerations, including ¶¶ 101-114,” (Motion at
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`10) Petitioner ignores Dr. Shamos’s opinions regarding Petitioner’s copying set
`
`forth in his declaration at ¶¶ 115-119. The examples of copying analyzed by Dr.
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`Shamos further identify exemplary former customer websites and demonstrate the
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`requisite nexus.
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`IPR2014-00366
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`
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`C.
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`Petitioner’s Motion to Exclude Should be Denied for its Failure to
`Follow the Requirements of 37 C.F.R. § 42.64
`
`Finally, the objections Petitioner served on Patent Owner are deficient, as
`
`they fail to provide proper notice of the scope of the objections, the paragraphs of
`
`the declaration at issue, and whether evidentiary supplementation was necessary.
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`Prior to filing any motion to exclude, the moving party “must identify the grounds
`
`for the objection with sufficient particularity to allow correction in the form of
`
`supplemental evidence.”6 37 CFR 42.64(b)(1). Instead of fulfilling its obligations
`
`and providing OpinionLab requisite notice, Petitioner’s objections to evidence are
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`fraught with inadequacies:
`
` First, Petitioner broadly objected to Dr. Shamos’s declaration to the
`
`extent that it “relies on an incorrect statement of the law.” Exhibit
`
`2025 (Petitioner’s Objections to Evidence Submitted by Patent
`
`Owner), at 2. Within this objection, Petitioner omitted 11 of the
`
`paragraphs it now seeks to exclude from the Shamos Declaration.
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`Compare Exhibit 2025, at 2 with Motion at 1. The objection suggests
`
`
`6 Petitioner further seeks to exclude Dr. Shamos’s deposition testimony. However,
`
`Petitioner alone sought to examine Dr. Shamos on these topics. Petitioner fails to
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`point to any objection (or motion to strike) made during Dr. Shamos’s deposition
`
`to exclude such testimony.
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`IPR2014-00366
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`
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`nothing with respect to the level of ordinary skill in the art, one of the
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`two primary bases for Petitioner’s motion to exclude.
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` Second, Petitioner broadly objects to the declaration “in its entirety on
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`the ground that [Dr.] Shamos does not have the requisite experience
`
`and expertise to offer an expert opinion in this proceeding.” See
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`Exhibit 2025 at 1. The objection does not cite to any paragraphs of
`
`the declaration specific to secondary considerations, nor does it
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`explain why Dr. Shamos allegedly lacks sufficient expertise to opine
`
`on secondary considerations. See id.
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` Third, Petitioner omitted any objection to nexus, the adequacy of Dr.
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`Shamos’s investigation, or consideration of additional factors. See id.
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`at 1-2.7
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`Petitioner’s failure to put Patent Owner on notice is further exemplified by
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`Petitioner’s complete omission of its own objections to evidence as exhibits to this
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`motion, as was required. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
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`48767 (Aug. 14, 2012) (stating that Petitioner must “[i]dentify where in the record
`
`the objection originally was made”).
`
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`7 Petitioner’s objections contain additional errors not discussed herein, as they are
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`not relevant to the bases of Petitioner’s motion.
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`IPR2014-00366
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`Petitioner was required to identify the grounds for its various objections with
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`sufficient particularity to allow correction in the form of supplemental evidence.
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`37 C.F.R. 42.64(b)(1). Petitioner failed to do so and should not now be permitted
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`to capitalize on its non-disclosure to obtain exclusion of evidence, let alone obtain
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`the drastic exclusion of Dr. Shamos’s entire expert opinion.
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that
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`Petitioner’s Motion to Exclude be denied.
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`Dated: March 13, 2015
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`Respectfully submitted,
`
`By: /s/ Christopher W. Kennerly
`Christopher W. Kennerly
`Registration #: 40,675
`chriskennerly@paulhastings.com
`Paul Hastings LLP
`1117 S. California Avenue
`Palo Alto, California 94304
`Phone: 1.650.320.1800
`Fax: 1.650.320.1900
`
`Counsel for Patent Owner
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`IPR2014-00366
`Patent No. 8,041,805
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`Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 13th day of March,
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`2015, a copy of:
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`EXCLUDE
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`was served by electronic mail on Petitioner’s lead and back-up counsel, at the
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`following email addresses:
`
`Robert Steinberg (bob.steinberg@lw.com)
`Neil A. Rubin (neil.rubin@lw.com)
`Jonathan Jackson (jonathan.jackson@lw.com)
`Philip Wang (philip.wang@lw.com)
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`
`
`
`
`
`
`
`By: /s/ Christopher W. Kennerly
`Christopher W. Kennerly
`Registration #: 40,675
`chriskennerly@paulhastings.com
`Paul Hastings LLP
`1117 S. California Avenue
`Palo Alto, California 94304
`Phone: 1.650.320.1800
`Fax: 1.650.320.1900
`
`Counsel for Patent Owner
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`IPR2014-00366
`Patent No. 8,041,805
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`Patent Owner’s Opposition to
`Petitioner’s Motion
`to Exclude -COS
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