`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2014-001021
`Patent 8,118,221 B2
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH, LLC’S EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting in
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`a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits the
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`following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”) Exhibits
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`2006, 2007, 2008, 2013, 2015, 2019, 2020, 2021, 2025, and 2028, and any reference
`
`thereto/reliance thereon, without limitation. Petitioner’s objections below apply the
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`Federal Rules of Evidence (“F.R.E.”) as required by 37 C.F.R § 42.62.
`
`
`
`These objections address evidentiary deficiencies in the new material submitted
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`1 Case CBM2014-00103 has been consolidated with the instant proceeding.
`
`Apple Exhibit 1033
`Apple Inc. v. Smartflash LLC
`CBM2014-00102
`Page 00001
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`
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`by Patent Owner on February 27, 2015.
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`The following objections apply to Exhibits 2006, 2007, 2008, 2013, 2015, 2019,
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`2020, 2021, 2025, and 2028 as they are actually presented by Patent Owner, in the
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`context of Patent Owner’s February 27, 2015 Patent Owner’s Response to Petition
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`(Paper 26) and not in the context of any other substantive argument on the merits of
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`the instituted grounds in this proceeding. Petitioner expressly objects to any other
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`purported use of these Exhibits, including as substantive evidence in this proceeding,
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`which would be untimely and improper under the applicable rules, and Petitioner
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`expressly asserts, reserves and does not waive any other objections that would be
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`applicable in such a context.
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`I. Objections to Exhibits 2006, 2007, 2008, 2013, 2019, 2020, and 2021, And
`Any Reference to/Reliance Thereon
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`Evidence objected to: Exhibits 2006 (“US Patent No. 4,531,020”), 2007 (“In-
`
`App Purchase Programming Guide – 2012”), 2008 (“In-App Purchase Programming
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`Guide – 2013”), 2013 (“Receipt Validation Programming Guide (9/18/2013)”), 2015
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`(“App Store Sales Top 10 Billion in 2013”); 2019 (“US Patent Publication No.
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`2003/0120541”), 2020 (“File History 10/028,013”), and 2021 (“Wechselberger
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`Deposition Notes”).
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`Grounds for objection: F.R.E. 901 (“Authenticating or Identifying Evidence”);
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`F.R.E. 1002 (“Requirement of the Original”); F.R.E. 1003 (“Admissibility of
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`Duplicates”); F.R.E. 401 (“Test for Relevant Evidence”); F.R.E. 402 (“General
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`Page 00002
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`
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`Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding Relevant Evidence for
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`Prejudice, Confusion, Waste of Time, or Other Reasons”); and 37 C.F.R. § 42.61
`
`(“Admissibility”).
`
`Apple objects to the use of Exhibits 2006, 2007, 2008, 2013, 2015, 2019, 2020,
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`and 2021, under F.R.E. 901, 1002, 1003, and 37 C.F.R. § 42.61 because Patent Owner
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`fails to provide the authentication required for these documents.
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`Apple further objects to the use of Exhibits 2006, 2007, 2008, 2013, 2015,
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`2019, 2020, and 2021, under F.R.E. 401, 402, and 403, and 37 C.F.R. § 42.61 because
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`neither Patent Owner’s Response nor the Declaration of Jonathan Katz, Ph.D. in
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`support of Patent Owner’s Response to Petition substantively cites to any of these
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`documents. Accordingly, these Exhibits do not appear to make any fact of
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`consequence in determining this action more or less probable than it would be
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`without them and are thus irrelevant and not admissible (F.R.E. 401, 402); permitting
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`reference to/reliance on these documents in any future submissions of Patent Owner
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`would also be impermissible, misleading, irrelevant, and unfairly prejudicial to
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`Petitioner (F.R.E. 402, 403); and to the extent Patent Owner attempts to rely on or
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`submit these aforementioned Exhibits in the future as evidence in support of new
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`substantive positions, doing so would be untimely, in violation of the applicable rules
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`governing this proceeding, and unfairly prejudicial to Apple (F.R.E. 403).
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`II. Objections to Exhibit 2025, And Any Reference to/Reliance Thereon
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`Page 00003
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`Evidence objected to: Exhibits 2025 (“Wechselberger Deposition Transcript,
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`December 10, 2014 - December 11, 2014”).
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`Grounds for objection: 37 C.F.R. § 42.61 (“Admissibility”); 37 C.F.R. § 42.64
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`(“Objection; Motion to Exclude; Motion in Limine”); and 37 C.F.R. § 42.53(d)(5)(ii)
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`(“Scope and content”).
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`Exhibit 2025 appears to be the compiled transcript from the deposition of
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`Anthony Wechselberger, taken in this action on December 10 and 11, 2014. Apple
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`hereby expressly repeats and incorporates by reference all of its objections stated on
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`the record in that deposition, and affirmatively maintains all such objections.
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`Apple further objects to pp. 364-3842 of Exhibit 2025, which is the subject of
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`Apple’s Motion to Strike Portions of the Deposition Transcript of Anthony
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`Wechselberger Concerning Petitioner’s Products and For Costs. As further detailed
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`in Apple’s Motion to Strike (Paper 21), this portion of the deposition transcript
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`involved questioning by Patent Owner’s counsel that was outside the scope of Mr.
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`Wechselberger’s declaration—including questions and answers about the operation of
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`Apple’s products and related secondary considerations—in violation of 37 C.F.R. §
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`42.53(d)(5)(ii). See also 37 C.F.R. § 42.61; 37 C.F.R. § 42.64.
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`2 These page numbers refer to those found at the bottom of each page of Exhibit
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`2025, as assigned by Smartflash. Pages 364-384 correspond to 358:1-378:4 in the
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`original 12/11/2014 transcript of the deposition of Mr. Wechselberger.
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`Page 00004
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`III. Objections to Exhibit 2028, And Any Reference to/Reliance Thereon
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`Evidence objected to: Exhibit 2028 (“Katz Declaration 102”).
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`Grounds for objection: F.R.E. 702 (“Testimony by Expert Witnesses”); F.R.E.
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`401 (“Test for Relevant Evidence”); F.R.E. 402 (“General Admissibility of Relevant
`
`Evidence”); F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion,
`
`Waste of Time, or Other Reasons”).
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`Apple objects to the use of Exhibit 2028 under F.R.E. 702. Exhibit 2028 is the
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`Declaration of Jonathan Katz Ph.D. in support of Patent Owner’s Response to
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`Petition. Exhibit 2028 purports to provide expert testimony in this matter, but fails to
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`establish that Dr. Katz was a person of ordinary skill at the relevant time. Because he
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`was not a person of ordinary skill at the relevant time period, his testimony would not
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`help the trier of fact under F.R.E. 702. Dr. Katz provides the following definition of
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`one of ordinary skill in the art:
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`I believe that one of ordinary skill in the art would have had a bachelor’s degree
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`in electrical engineering or its equivalent, or at least 5 years of experience in
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`manufacturing or engineering, with significant exposure to the digital content
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`distribution and/or ecommerce industries. See Ex. 2028 at ¶ 9.
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`Dr. Katz also states that he would “qualify as an expert in the area of data storage and
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`access systems such that I am qualified to opine on what those of ordinary skill in
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`the art would have understood at the time of the filing of the patent and what
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`Page 00005
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`he/she would or would not have been motivated to do.” See Ex. 2028 at ¶ 10
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`(emphasis added). Yet, according to his CV (Appendix A of Ex. 2028), as of
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`Smartflash’s claimed priority date of October 25, 1999, Dr. Katz’s only degrees were
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`in Chemistry and Mathematics—not “electrical engineering or its equivalent.” Nor
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`does his CV indicate that he had the alternative “at least 5 years of experience in
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`manufacturing or engineering, with significant exposure to the digital content
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`distribution and/or ecommerce industries” by Smartflash’s claimed priority date of
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`October 25, 1999. Therefore, even under his own formulation of one of skill in the
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`art, Dr. Katz would not have been one of skill in the art as of Smartflash’s claimed
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`priority date of October 25, 1999. Dr. Katz also fails to meet the definition of the
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`level of ordinary skill set forth by Apple as of the claimed priority date. Accordingly,
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`Exhibit 2028 is irrelevant and inadmissible (F.R.E. 401, 402). Further, permitting
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`reference to or reliance on testimony of Dr. Katz in the Response or other
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`submissions of Patent Owner would also be impermissible, misleading, irrelevant, and
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`unfairly prejudicial to Petitioner (F.R.E. 402, 403).
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`Page 00006
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`Respectfully submitted,
`
`
`
`
`
`
`
`March 6, 2015
`
`
`
`
`
`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Reg. No. 47,414
`ROPES & GRAY LLP
`One Metro Center, 700 12th St. – Ste. 900
`Washington, DC 20005-3948
`P: 202-508-4606 / F: 202-383-8371
`steven.baughman@ropesgray.com
`
`
`
`
`Ching-Lee Fukuda (Backup Counsel)
`Reg. No. 44,334
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036
`P: 212-596-9336 /F: 212-596-9000
`ching-lee.fukuda@ropesgray.com
`
`Mailing address for all PTAB correspondence: ROPES & GRAY LLP
`IPRM – Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600
`
`Attorneys for Petitioner Apple Inc.
`
`
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`Page 00007
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing PETITIONER APPLE
`
`INC.’S OBJECTIONS TO PATENT OWNER SMARTFLASH, LLC’S EXHIBITS
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`was served on March 6, 2015 to the following Counsel for Patent Owner via e-mail,
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`pursuant to the parties’ agreement concerning service:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Facsimile: (703) 894-6430
`mcasey@dbjg.com
`jsd@dbjg.com
`docket@dbjg.com
`
`Attorneys for Patent Owner Smartflash LLC
`
`
`
`
` /s/ Megan Raymond
`Megan Raymond
`
`ROPES & GRAY LLP
`
`
`
`Page 00008
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`