UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`QUALTRICS, LLC
`Petitioner
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`v.
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`OPINIONLAB, INC.
`Patent Owner
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`_______________
`
`Case IPR2014-00366
`U.S. Patent 8,041,805
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`_______________
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`PETITIONER QUALTRICS, LLC’S REPLY
`IN SUPPORT OF MOTION TO EXCLUDE EVIDENCE
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`
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`
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`FILED VIA PRPS
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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 REPLY
`IN SUPPORT OF MOTION TO EXCLUDE EVIDENCE
`
`
`
`
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`FILED VIA PRPS
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`
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`I.
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`Dr. Shamos’s Obviousness Options Should Be Excluded
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`A POSITA is a “legal construct” presumed to have available “all prior art
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`references in the field of invention.” In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
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`1998). Although Dr. Shamos testified that he “look[ed] at” the specification, he did
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`so only “to see what level of education and background would be needed to
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`understand it.” Shamos Dep. at 70:2–4. There is no evidence that he tried to
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`understand the prior art to see what a POSITA would have known, especially since
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`he deemed it “irrelevant” in determining the level of skill. Id. at 70:20–22.
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`Further, the ’805 Patent’s discussion of the prior art is bare bones. The
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`patent cites three references on the cover (and none of the prior art of record in this
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`IPR) and does not mention any of them in the specification. The background
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`section is only two paragraphs long. See ’805 Patent, 1:23–56. In a few sentences,
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`it describes alleged shortcomings of “prior techniques” but does not identify any
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`prior art or explain what the “techniques” entail. Nor does it offer insight into prior
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`art solutions, the rapidity of innovations, the sophistication of the technology, or
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`the skill and knowledge level of active workers in the field. Nor does it discuss
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`analogous prior art, which a POSITA is also presumed to know. See Pentec, Inc. v.
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`Graphic Controls Corp., 776 F.2d 309, 313 (Fed. Cir. 1985).
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`OpinionLab tries to sidestep the issue by claiming that Dr. Shamos applied
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`Qualtrics’s definition for the level of ordinary skill. But regardless of the level Dr.
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`Shamos allegedly applied, a POSITA must know all pertinent prior art and the
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`person’s opinions must be from that perspective. As a matter of law, Dr. Shamos
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`cannot properly apply Qualtrics’s level of skill where he did not consider the prior
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`art presumptively known. In Sloan Valve v. Zurn Industries., the court struck the
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`expert’s testimony on obviousness because he was not a POSITA and so was not
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`“qualified” to give obviousness opinions “based on the perspective of a POSITA.”
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`2013 WL 6068790, *7 (N.D. Ill. 2013). This is precisely the situation here.
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`For example, whether a POSITA would have found certain claims obvious
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`in view of the prior art or been motivated to combine prior art references depend
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`on what the POSITA would have known and considered, i.e., all pertinent prior art.
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`Dr. Shamos confirmed that he did not—and indeed could not—apply that test
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`because he did not consider all of the pertinent art. A bald statement that he applied
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`Qualtrics’s level of skill cannot cure these fundamental defects.
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`II. Dr. Shamos’s Secondary Considerations Opinions Should Be Excluded
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`Because Dr. Shamos is not a qualified financial or online survey expert, and
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`because he did not talk to anyone at OpinionLab or adequately investigate the facts
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`and circumstances of these secondary considerations, his opinions are based solely
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`on information from OpinionLab’s counsel. It presents attorney argument under
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`the guise of expert testimony and should be excluded. In AMO v. Alcon, the court
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`excluded the patentee’s expert from testifying on commercial success where the
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`2
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`expert did not disclose any basis supporting his opinion except for information
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`from patentee’s counsel. 2005 WL 782809 (D. Del. 2005). See also Rambus. v.
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`Hynix., 2008 WL 5411571, *13 (N.D. Cal. 2008) (“To 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. . . . Rambus may not put on its closing argument through Mr. Murphy as
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`‘expert testimony.’”). Again, that is the same situation here. Shamos is simply
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`parroting information supplied to him by counsel, not giving expert opinion.
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`Further, Dr. Shamos does not even attempt to make a showing of nexus for
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`the vast majority of OpinionLab’s alleged customers. Apart from a cursory
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`discussion of Bank of America, Dr. Shamos provides no evidence that any other
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`customer actually practices the ’805 Patent. This is important because
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`OpinionLab’s claim of commercial success and industry recognition is not based
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`on Bank of America alone, but on its entire list of alleged customers. To show
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`commercial success and industry recognition, Dr. Shamos must satisfy the nexus
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`requirement for every customer he relies on, which he utterly fails to do.
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`Finally, Dr. Shamos’s failure to consider many other important factors
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`relevant to secondary considerations goes directly to admissibility. By not
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`considering whether these other factors were partly or wholly responsible for the
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`alleged considerations, Dr. Shamos’s methodology is unreliable. Fed. R. Evid. 702.
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`3
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`III. Qualtrics’s Objections Are Proper and Timely
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`Qualtrics’s motion to exclude Dr. Shamos’s testimony and opinions is
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`proper and based on the following objections made in the record:
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`Evidence To Exclude Where the Objection Was Made
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`Obviousness opinions,
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`Qualtrics “objects to the Shamos declaration to the extent
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`including Shamos
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`that Dr. Shamos provides . . . testimony that relies on an
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`Decl. ¶¶ 26–32, 37–
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`incorrect statement of the law, including, for example, ¶¶
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`100. Relied upon by
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`[26–32; 39–40; 41–50; 51–52; 56–59; 60–63; 65–69; 70–
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`OpinionLab in ’805
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`73; 77–81; 82–83; 86–100].” Petitioner’s Objections to
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`Response at 14–44.
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`Evidence Submitted by Patent Owner (Ex. 2025) at 2.
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`Secondary
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`Qualtrics objects to the Shamos declaration “in its entirety
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`considerations
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`on the ground that Mr. Shamos does not have the requisite
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`opinions, including
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`experience and expertise to offer an expert opinion in this
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`Shamos Decl. ¶¶ 101–
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`proceeding.” Petitioner’s Objections at 1. “Petitioner
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`114. Relied upon by
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`further objects to the Shamos declaration to the extent that
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`OpinionLab in ’805
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`Dr. Shamos provides unsupported factual testimony . . .
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`Response at 44–53.
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`including, for example, ¶¶ [101, 103–14].” Id. at 2.
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`“Petitioner further objects to the Shamos Declaration to
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`the extent that Dr. Shamos lacks personal knowledge of
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`the facts asserted and he purports to rely on information
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`that is not reasonably relied on by experts in the field,
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`including, for example, ¶¶ [101–114].” Id.
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`Qualtrics stated the same objections that are the basis of this motion and
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`identified exemplary paragraphs in Dr. Shamos’s declaration—including almost all
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`4
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`IPR2014-00366
`U.S. Patent No. 8,041,805
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`the paragraphs it now seeks to exclude. OpinionLab complains that Qualtrics did
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`not provide the specific reasons and evidence behind the objections. But
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`Qualtrics’s objections were sufficient to put OpinionLab on notice, and the specific
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`reasons and evidence were confirmed by Dr. Shamos’s admissions during his
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`deposition on December 10–11, 2014 (and so could not have been included in
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`Qualtrics’s November 7 objections). Qualtrics discusses those admissions at length
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`in its motion to exclude. See, e.g., Opening Br. (Paper No. 36) at 2–3, 6–8.
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`Moreover, OpinionLab waived its right to supplement the evidence by not timely
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`responding to Qualtrics’s objections to the declaration since Dr. Shamos’s
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`deposition testimony on these same topics remained the same.
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`Qualtrics also seeks to exclude the corresponding portions of Dr. Shamos’s
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`deposition testimony discussing obviousness and secondary considerations.
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`OpinionLab suggests that Qualtrics should have objected to this testimony through
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`a speaking objection during the deposition. But Qualtrics already provided
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`OpinionLab with the required notice by objecting to the same opinions and
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`testimony in Dr. Shamos’s declaration. There was no need for Qualtrics to object a
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`second time during the deposition itself. Nor does the Office Patent Trial Practice
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`Guide require a deposing attorney to move to strike to preserve objections. See 77
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`Fed. Reg. 48756, 48772–3 (Aug. 14, 2012).
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`Dated: March 20, 2015
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`
`
`
`/s/ Robert Steinberg
`By:
`Latham & Watkins LLP, Counsel for Petitioner
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`5
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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
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`service, I certify that on March 20, 2015, a copy of:
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`PETITIONER QUALTRICS, LLC’S REPLY IN SUPPORT OF
`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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`
`
`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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