`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`BMW OF NORTH AMERICA, LLC,
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`Petitioner
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`v.
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`STRAGENT, LLC
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`Patent Owner
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`____________
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`Case No. IPR2017-00676
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`U.S. Patent No. 8,209,705
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`Title: SYSTEM, METHOD AND COMPUTER PROGRAM PRODUCT FOR
`SHARING INFORMATION IN A DISTRIBUTED FRAMEWORK
` ____________
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`PETITIONER’S MOTION TO EXCLUDE
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`IPR2017-00676
`Petitioner’s Motion to Exclude
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`TABLE OF CONTENTS
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`PRELIMINARY STATEMENT ..................................................................... 1
`I.
`II. AT LEAST PARAGRAPHS 16-28 AND 37-103 OF EXHIBIT 2001
`SHOULD BE EXCLUDED ............................................................................ 1
`A. Dr. Miller’s Opinions on Claim Constructions and Opinions on
`Patentability Resting upon the Improper Claim Constructions
`Should be Excluded ............................................................................... 3
`B. Dr. Miller’s Opinions on Obviousness Should be Excluded ................ 6
`III. CONCLUSION ................................................................................................ 8
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`ii
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`IPR2017-00676
`Petitioner’s Motion to Exclude
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`PRELIMINARY STATEMENT
`Pursuant to this Board’s Rules and the Federal Rules of Evidence (“FRE”),
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`I.
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`BMW moves to exclude at least paragraphs 16-28 and 37-103 of Stragent’s Exhibit
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`2001 (Declaration of Jeffrey A. Miller).
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`In accordance with the Trial Practice Guide, BMW (a) identifies where in
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`the record BMW’s original objections were made, (b) identifies where in the
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`record these exhibits were relied upon by Stragent, (c) addresses objections to
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`exhibits in numerical order, and (d) explains the objections. 77 Fed. Reg. 48,756,
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`48,767 (Aug. 14, 2012).
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`II. AT LEAST PARAGRAPHS 16-28 AND 37-103 OF EXHIBIT 2001
`SHOULD BE EXCLUDED
`Petitioner timely objected to Exhibit 2001 under FRE 702 and 37 C.F.R.
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`§ 42.65 as improper expert testimony, because “Dr. Miller’s opinions . . . are not
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`the product of reliable principles and methods reliably applied to the facts of the
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`case.” Paper 12 at 3. Stragent relies heavily on this objectionable testimony from
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`Dr. Miller at pages 16-22 and 26-57 of its patent owner response (citing to the
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`above-identified paragraphs of Ex. 2001).
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`Under FRE 702, an expert opinion must be the product of reliable principles
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`and methods, and the expert must reliably apply the principles and methods. See
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`Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 597 (1993) (“Rules of
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`1
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`Evidence—especially Rule 702—do assign to the trial judge the task of ensuring
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`IPR2017-00676
`Petitioner’s Motion to Exclude
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`that an expert’s testimony both rests on a reliable foundation and is relevant to the
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`task at hand.”). Moreover, the proponent of the expert testimony bears the burden
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`of establishing the reliability of the principles and methods applied by the expert.
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`Lewis v. CITGO Petroleum Corp., 561 F.3d 698, 705 (7th Cir. 2009) (“The
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`proponent of the expert bears the burden of demonstrating that the expert’s
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`testimony would satisfy the Daubert standard.”); Dart v. Kitchens Bros. Mfg. Co.,
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`253 F. App’x 395, 398 (5th Cir. 2007) (citing Moore v. Ashland Chem. Inc., 151
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`F.3d 269, 276 (5th Cir. 1998) (en banc)). 37 C.F.R. § 42.65(a) additionally requires
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`that “Expert testimony that does not disclose the underlying facts or data on which
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`the opinion is based is entitled to little or no weight.”
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`Here, paragraphs 16-28 and 37-103 of Exhibit 2001 are not the product of
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`reliable principles and methods because both Dr. Miller’s declaration (Ex. 2001)
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`and his deposition (Ex. 1025) show that Dr. Miller applied a wrong claim
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`construction standard, and misunderstood a key legal concept that impacts his
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`opinions on obviousness. Neither Dr. Miller nor Stragent has established by a
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`preponderance of evidence that Dr. Miller’s used a proper claim construction
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`standard, or a correct obviousness standard. Therefore, his opinions on claim
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`construction and opinions resting on the construed terms should be excluded or
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`given no weight under FRE 702 and 37 C.F.R. § 42.65(a).
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`2
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`IPR2017-00676
`Petitioner’s Motion to Exclude
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`A. Dr. Miller’s Opinions on Claim Constructions and Opinions
`on Patentability Resting upon the Improper Claim
`Constructions Should be Excluded
`Paragraphs 16-28 of Ex. 2001, containing Dr. Miller’s opinions on claim
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`constructions, should be excluded because they are the product of an incorrect
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`claim construction standard. Dr. Miller should have applied the broadest
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`reasonable interpretation (“BRI”) to construe the claim terms. See 37 C.F.R.
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`§ 42.100(b). But he did not.
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`Dr. Miller’s declaration spends 13 paragraphs opining on four different
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`claim terms, yet it is completely silent regarding the claim construction standard
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`applied. Ex. 2001, ¶¶16-28. Later at his deposition, Dr. Miller’s testimony exposed
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`that he did not apply the proper standard, or at least did not apply it correctly. See
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`Ex. 1025, 29:2-30:231.
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`Dr. Miller was asked to identify the standard he used when construing the
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`terms in the declaration. Id., 27:2-4. At first, he answered, “construing the claim
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`terms is providing a definition of what the term is.” Id., 27:9-11. Dr. Miller then
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`said the standard is stated in his expert declaration, and when pressed to pinpoint,
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`he specifically cited paragraph 16 of the declaration. Id., 29:2-30:23 (“Q: So Dr.
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`Miller, it’s your belief that paragraph 16 in your declaration in the 676 IPR states
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`the standard for claim construction that you should adopt for construing the claim
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`1 A format of page:line is used for Ex. 1025 throughout.
`3
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`terms, correct? . . . THE WITNESS: Well, that’s the standard that I used for
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`IPR2017-00676
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`construing the claim terms in this Declaration.”). But paragraph 16 only states
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`Stragent’s instruction to Dr. Miller to construe certain terms and to accept the
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`Board’s construction of “real-time”—not a claim construction standard. Ex. 2001,
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`¶16. Dr. Miller conflates counsel’s instruction with the claim construction standard
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`he should have followed. Id.
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`Dr. Miller was likely not informed of and did not follow the process outlined
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`for construing claims in an IPR. This is confirmed by Dr. Miller’s response the
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`questions on the process he followed. When asked what steps he followed to
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`construe terms, Dr. Miller again cited paragraph 16 of his declaration as including
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`the steps. Ex. 1025, 30:25-31:14 (Q: . . . What were the steps you used to construe
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`the claim terms in these IPRs? THE WITNESS: Do you want me to read paragraph
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`16 again?). But paragraph 16 only states what terms Dr. Miller was asked to
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`construe, not how to construe them. Ex. 2001, ¶16. Counsel then raised the BRI
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`standard to Dr. Miller and asked if he has an understanding of the standard. Ex.
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`1025, 32:8-12. Dr. Miller stated that he understood BRI as “what those three words
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`mean.” Id. at 32:13-15. To Dr. Miller, “broadest” means general and “reasonable”
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`means it makes sense. Id. at 32:16-33:2. This suggests that Dr. Miller did not apply
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`the BRI standard, and even if he did, he did not apply it correctly. Perhaps
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`knowing that the claim construction could not be supported by a proper BRI
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`4
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`analysis, Stragent made no re-direct of Dr. Miller during the deposition to have
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`him explain why his constructions were proper under that process.
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`Indeed, claim constructions proposed by Dr. Miller are much narrower than
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`the broadest reasonable interpretation of the terms, further suggesting he could not
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`have correctly applied the BRI standard. As one example, Dr. Miller agreed that
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`element [1.7] — “in real-time, sharing the information utilizing at least one
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`message format corresponding to a second network protocol associated with a
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`second network which is different from the first network protocol,” —does not
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`recite “receiving” a first network message, or any “storage” to which a first
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`network message is “delivered.” See id., 50:4-8. Nevertheless, Dr. Miller construed
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`element [1.7] as “can only mean that the method has received a first message in
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`a ‘first network protocol associated with a first network’ (element 1.1), has then
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`delivered that ‘first network message’ to storage, where the ‘first network
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`message’ is . . . shared . . . .” Ex. 2001, ¶18 (emphases added). Dr. Miller admitted
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`that, while construing the term, he only considered one embodiment, but not the
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`“alternate embodiment” of sharing disclosed by the specification. Ex. 1025,
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`128:12-25 (“Q. Did you list this sentence between line 38 and 40 of Colum 7 in the
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`… Patent as one of the six parts that support your construction in your Declaration
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`between page 11 and 13? ... A. No, it doesn’t look like it.”). Dr. Miller’s overly-
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`5
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`narrow constructions cannot be the product of a proper application of the BRI
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`standard.
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`Because Dr. Miller did not apply the correct claim construction standard, his
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`opinions on claim construction (Ex. 2001, ¶¶16-28) rely on an unreliable principle
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`or method, and thus should be excluded or afforded no weight under FRE 702 and
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`37 C.F.R. § 42.65(a). See 37 C.F.R. 42.65(a); see also 77 Fed. Reg. 157, 48524
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`(citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).
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`Dr. Miller’s opinions in paragraphs 37-103 of Ex. 2001 rest upon his
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`constructions that are not product of a proper claim construction standard reliably
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`applied to the facts in the case. For example, Dr. Miller’s main argument against
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`Ground 1 and Ground 2—that Staiger does not disclose element [1.7] —relies on
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`his overly-narrow construction discussed above. See Ex. 2001, ¶¶43-48, 59.
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`Therefore, paragraphs 37-103 of Dr. Miller’s declaration are also improper and
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`should be excluded or given no weight under FRE 702 and 37 C.F.R. § 42.65(a).
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`B. Dr. Miller’s Opinions on Obviousness Should be Excluded
`Dr. Miller opined on the obviousness grounds—Grounds 2 and 5. Ex. 2001,
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`¶¶57-70, 97-103. Both Grounds 2 and 5 rely on the combination of a primary
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`reference with secondary references Millsap and Wong. Id. at ¶¶57, 97. Paragraphs
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`57-70 and 97-103 of Ex. 2001 should be excluded for the additional reason that
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`they are the product of an improper obviousness theory.
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`6
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`Dr. Miller incorrectly based his obviousness analysis on his understanding
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`IPR2017-00676
`Petitioner’s Motion to Exclude
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`that a secondary reference, like Wong, must be enabling to render a claim obvious.
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`Ex. 2001, ¶67; see also id. at ¶102; Ex. 1025, 89:3-24. It is well-settled law that “a
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`non-enabling reference may qualify as prior art for the purpose of determining
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`obviousness under 35 U.S.C. 103,” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d
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`1569, 1578 (Fed. Cir. 1991); see also Amgen Inc. v. Hoechst Marion Roussel, Inc.,
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`314 F.3d 1313, 1357 (Fed. Cir. 2003). However, Dr. Miller alleged that the
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`obviousness grounds (Grounds 2 and 5) fail because “Wong is not an enabling
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`disclosure.” Ex. 2001, ¶67; see also id. at ¶102.
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`During his deposition, Dr. Miller was asked to explain what an “enabling
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`reference” is. Ex. 1025, 88:2-3. Dr. Miller said his “understanding is that it has to
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`provide enough information to be able to reproduce whatever is being claimed.” Id.,
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`88:4-6. Dr. Miller then confirmed that his “opinion that the combination of Staiger,
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`Millsap and Wong does not render the Limitations 1.9 and 1.10 obvious rel[ies] on
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`[his] statement that Wong is not an enabling reference.” Id., 90:3-24 (“Wong’s
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`reference is just a discussion of looking to the future. But no way of actually
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`explaining how we get there”). Drawing analogy to a publication stating “that
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`we’re going to colonize Mars and have people living on it,” Dr. Miller appeared to
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`believe that unless it “states any way of getting [to Mars],” the disclosure of living
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`on Mars cannot be relied on to render a similar concept obvious. Id., 90:13-24.
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`7
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`That contradicts with the law on obviousness. Symbol Techs., 935 F.2d at 1578;
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`Amgen, 314 F.3d at 1357.
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`Because Dr. Miller’s opinions on the obvious grounds premise on a legally
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`incorrect assumption that Wong has to be enabling, his opinions in paragraphs 57-
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`70 and 97-103 of Ex. 2001 should be excluded or given no weight under FRE 702
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`and 37 C.F.R. 42.65. See 37 C.F.R. 42.65; see also 77 Fed. Reg. 157, 48524.
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`III. CONCLUSION
`The Board should exclude at least paragraphs 16-28 and 37-103 of Exhibit
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`2001.
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`Dated: February 9, 2018
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`Respectfully submitted,
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`By: /Lionel M. Lavenue/
`Lionel M. Lavenue, Reg. No. 46,859
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`8
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`IPR2017-00676
`Petitioner’s Motion to Exclude
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing
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`PETITIONER’S MOTION TO EXCLUDE was served on February 9, 2018, via
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`e-mail directed to counsel of record for the Patent Owner at the following:
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`Thomas H. Kramer
`tkramer@oeblegal.com
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`Thomas F. Meagher
`tmeagher@meagheremanuel.com
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`George Pazuniak
`gp@del-iplaw.com
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`Dated: February 9, 2018
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`By: /Lisa C. Hines/
`Lisa C. Hines
`Litigation Clerk
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`9
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