`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2014-001021
`Patent 8,118,221 B2
`______________________
`
`PETITIONER APPLE INC.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
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`1 Case CBM2014-00103 has been consolidated with the instant proceeding.
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`CBM2014-00102
`Patent 8,118,221 B2
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`TABLE OF CONTENTS
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`
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`The Board Should Not Exclude Exhibit 1002 .......................................................... 2
`I.
`The Board Should Not Exclude Exs. 1003-04, 1010, 1019, or 1027-29 .............. 2
`II.
`III. The Board Should Not Exclude Exs. 1005- 07, 1012, 1017-18, Or 1020 ............ 3
`IV. The Board Should Not Exclude Exhibit 1021 .......................................................... 5
`V.
`The Board Should Not Exclude Any Portions of Exhibit 1031 ............................ 8
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`CBM2014-00102
`Patent 8,118,221 B2
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`In response to Patent Owner’s (“PO”) Motion to Exclude (“Mot.”, Pap. 42),
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`Petitioner respectfully submits that the Board, sitting as a non-jury tribunal with
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`administrative expertise, is well-positioned to determine and assign appropriate
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`weight to the evidence presented here, without resorting to formal exclusion that
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`might later be held reversible error. See, e.g., S.E.C. v. Guenthner, 395 F. Supp. 2d
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`835, 842 n.3 (D. Neb. 2005); Builders Steel Co. v. Comm’r of Internal Revenue,
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`179 F.2d 377, 379 (8th Cir. 1950) (vacating Tax Court decision for exclusion of
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`competent, material evidence); Donnelly Garment Co. v. Nat’l Labor Relations
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`Bd., 123 F.2d 215, 224 (8th Cir. 1941) (NLRB’s refusal to receive testimonial evi-
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`dence was denial of due process). See also, e.g., Samuel H. Moss, Inc. v. F.T.C.,
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`148 F.2d 378, 380 (2d Cir. 1945), cert. denied, 326 U.S. 734 (1945) (“Even in
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`criminal trials to a jury it is better, nine times out of ten, to admit, than to exclude,
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`… and in such proceedings as these the only conceivable interest that can suffer by
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`admitting any evidence is the time lost, which is seldom as much as that inevitably
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`lost by idle bickering about irrelevancy or incompetence”). But even under strict
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`application of the Rules of Evidence, cf. 77 Fed. Reg. 48,612, 48,616 (Aug. 14,
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`2012) (“42.5(a) and (b) permit administrative patent judges wide latitude in admin-
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`istering the proceedings to balance the ideal of precise rules against the need for
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`flexibility to achieve reasonably fast, inexpensive, and fair proceedings”), Petition-
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`er’s evidence here is entirely proper while PO’s objections are baseless; indeed,
`1
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`CBM2014-00102
`Patent 8,118,221 B2
`they appear in various instances to be nothing but unauthorized sur-reply. See 77
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`Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A motion to exclude must explain why
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`the evidence is not admissible (e.g., relevance or hearsay) but may not be used to
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`challenge the sufficiency of the evidence to prove a particular fact.”).2
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`I.
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`The Board Should Not Exclude Exhibit 10023
`Petitioner did not rely on Ex. 1002 for “evidence of the content” of the ’221
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`patent (cf. Mot. 2), but rather to show that PO’s own characterization of the sub-
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`ject matter of the ’221 patent supports Petitioner’s contention—and the Board’s
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`conclusion—that the ’221 patent relates to a financial activity or transaction and is
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`thus subject to the Board’s review as a covered business method patent. See Pap. 2
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`at 13-14. PO’s characterization of the ’221 in another proceeding is not found in
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`the patent itself; thus, Ex. 1002 is not cumulative of the ’221 patent and FRE 1004
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`is inapplicable. PO disputed the financial nature of the ’221 patent, see Pap. 6 at 3-
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`7, and its highly relevant admission to the contrary should not be excluded.
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`II.
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`The Board Should Not Exclude Exs. 1003-04, 1010, 1019, or 1027-29
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`2 All emphasis herein is added unless otherwise indicated.
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`3 Exclusion of Exs.1102-29 in consolidated CBM2014-00103, which correspond to
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`Exs.1002-29 and to which PO objects for the same reasons (Mot. 13-15), should be
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`denied for the same reasons as for Exs.1002-29. Similarly Ex. 1101 (’221 patent),
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`to which PO objects only as duplicative of Ex. 1001, should not be excluded.
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`2
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`CBM2014-00102
`Patent 8,118,221 B2
`PO’s assertion that Exs. 1003-04, 1019, and 1027-29 are not cited in the
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`Wechselberger Declaration (Mot. 3) is simply wrong4: all were cited as “Materials
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`Reviewed and Relied Upon,” see Ex. 1021, App. C, and properly filed with the Pe-
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`tition. See 37 C.F.R. § 42.6(c). (Indeed, Petitioner respectfully submits PO would
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`now be objecting if Petitioner had failed to provide these cited exhibits.) To the ex-
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`tent PO’s objection is based on imaginings that Petitioner will advance at oral hear-
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`ing arguments about these documents not presented in previous papers, this is
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`baseless–Petitioner intends to comply fully with the Board’s rules (e.g., Trial Prac-
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`tice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012)), and expects PO will do
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`the same with respect to PO’s many exhibits (e.g., Exs. 2006-08, 2013, 2015, and
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`2019-21) not substantively cited or relied upon in any of PO’s submitted papers.
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`III. The Board Should Not Exclude Exs. 1005- 07, 1012, 1017-18, Or 1020
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`Contrary to PO’s assertions, Exs. 1005-07, 1012, 1017, and 1020 (“Prior Art
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`Exhibits”) are relevant and important to the Board’s obviousness analysis because
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`they are evidence of the state of the art and knowledge of a person of ordinary skill
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`in the art (“POSITA”) at the claimed priority date. E.g., In re Taylor Made Golf
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`Co., 589 F. App’x 967, 971 (Fed. Cir. 2014) (“[T]he Supreme Court and this court
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`require that, as part of the obviousness analysis, the prior art must be viewed in the
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`4 Ex. 1010, cited in a parallel proceeding (CBM2014-00104), was not relied on
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`here. While exclusion of Ex.1010 is unnecessary, Petitioner would not oppose it.
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`3
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`CBM2014-00102
`Patent 8,118,221 B2
`context of what was generally known in the art at the time of the invention.”).
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`“The knowledge of [a POSITA] is part of the store of public knowledge that must
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`be consulted when considering whether a claimed invention would have been obvi-
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`ous.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). Both the Peti-
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`tion and the Wechselberger Declaration describe the Prior Art Exhibits as evidence
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`of that knowledge. See Pap. 2 at 4-11 (Overview of Field of the Claimed Inven-
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`tion), 17; Ex. 1021 ¶¶ 27-45 (State of the Art). And the Federal Circuit has de-
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`clared that “perhaps the most reliable” evidence of the knowledge of a POSITA “is
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`documentary evidence consisting of prior art in the area” – precisely the evidence
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`presented in the Prior Art Exhibits. Randall, 733 F.3d at 1362-63.
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`That these Exhibits do not form the basis for the instituted grounds does not,
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`as PO contends (Mot. 4), mean they are not relevant to obviousness. To the con-
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`trary, the Supreme Court and Federal Circuit mandate that such evidence be con-
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`sidered, Taylor Made, 589 F. App’x at 971, and the Federal Circuit has criticized
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`the Board for considering only references recited as the basis of invalidity. Ran-
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`dall, 733 F.3d at 1362. The Prior Art Exhibits are unquestionably relevant and re-
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`quired for a proper obviousness analysis; there is no basis to exclude them.
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`PO’s assertion that Ex. 1018 is irrelevant is similarly meritless. As with the
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`other Prior Art Exhibits, Ex. 1018 is relevant and important to the Board’s obvi-
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`ousness analysis because it provides further evidence of the state of the art and a
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`4
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`CBM2014-00102
`Patent 8,118,221 B2
`POSITA’s knowledge . See Randall, 733 F.3d at 1363. While the Board did not
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`
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`institute review based on grounds calling out Ex. 1018, it nonetheless establishes
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`the state of the art and provides context for the obviousness inquiry, see id., and the
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`Petition and Wechselberger Declaration specifically rely on Ex. 1018 for this pur-
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`pose in their “Overview of Field of the Invention” and “State of the Art” discus-
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`sions, respectively. See Pap. 2 at 10-11; Ex. 1021 ¶ 40. Again, Ex. 1018 is rele-
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`vant to the obviousness analysis, and should not be excluded.
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`IV. The Board Should Not Exclude Exhibit 1021
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`Unable to identify any legitimate reason to exclude Exhibit 1021, PO objects
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`(1) under FRE 602 to the “sufficiency” of the opinions in the Wechselberger Dec-
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`laration, (2) without support, to Mr. Wechselberger’s qualifications as an expert,
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`and (3) to the inclusion of background state of the art information despite its man-
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`dated place in the obviousness analysis. PO is wrong on all counts.
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`First, there is no basis for PO’s objections to Mr. Wechselberger’s expert
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`testimony under FRE 602, as the rule plainly states it “does not apply to a wit-
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`ness’s expert testimony under Rule 703.” Thus, PO’s FRE 602 objections to the
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`Declaration, based on purported omission of the standard of evidence and on the
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`sufficiency of the opinions, should be rejected for this reason alone. Further, PO’s
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`purported objections to the Wechselberger Declaration for “not sufficiently
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`stat[ing] the criteria used to assess” whether, and “not address[ing] sufficiently”
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`5
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`CBM2014-00102
`Patent 8,118,221 B2
`why, a POSITA would have been motivated to make specific combinations (Mot.
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`7) are improper challenges to the sufficiency of the opinions presented rather than
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`challenges to their admissibility. See 77 Fed. Reg. at 48,767 (Aug. 14, 2012) (“A
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`motion to exclude must explain why the evidence is not admissible (e.g., relevance
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`or hearsay) but may not be used to challenge the sufficiency of the evidence to
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`prove a particular fact.”). And, in any event, PO cites no authority for its proposi-
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`tion that to be admissible the Wechselberger Declaration must state “whether he
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`considered evidence tending to show that [a POSITA] would not have made his
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`proposed combination.” Mot. 7 (emph. original). And PO is simply wrong in ar-
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`guing Ex. 1021 does not sufficiently lay out the reasons a POSITA would have
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`been motivated to combine references: for each combination, the Declaration spe-
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`cifically explains with supporting citations why a POSITA would have been moti-
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`vated to combine the prior art teachings. See, e.g., Ex. 1021 ¶¶ 49, 59-62, 64, 66.
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`Despite the Board’s rejection of PO’s argument that the Wechselberger Dec-
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`laration should be disregarded for not reciting the evidentiary standard, PO rear-
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`gues it here for the third time. Mot. at 6; Pap. 8 at 4 n.8; see Pap. 6 at 15-16; Pap.
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`26 at 4-7. But, as the Board properly found, the purported omission is not “evi-
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`dence that Mr. Wechselberger used incorrect criteria, failed to consider evidence,
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`or is not an expert in the appropriate field.” Pap. 8 at 4 n.8. Indeed, experts like
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`Mr. Wechselberger—who are, after all, technologists, not lawyers—are not re-
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`6
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`CBM2014-00102
`Patent 8,118,221 B2
`quired to “recite or apply the ‘preponderance of the evidence’ standard expressly in
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`order for the expert testimony to be accorded weight. Rather, it is within [the
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`Board’s] discretion to assign the appropriate weight to be accorded to evidence
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`based on whether the expert testimony discloses the underlying facts or data on
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`which the opinion is based.” See IPR2013-00172, Pap. 50 at 42.
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`Equally baseless is PO’s throw-away argument (Mot. 7-8) that Mr. Wech-
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`selberger does not qualify as an expert. Tellingly, PO offers no evidence disputing
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`that Mr. Wechselberger is a qualified expert; and, in contrast to the qualifications
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`of the “expert” PO proffered, Mr. Wechselberger’s CV and Declaration prove that
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`Mr. Wechselberger qualifies as an expert under both parties’ proposed definitions
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`of a POSITA. For example, even a cursory review of Mr. Wechselberger’s CV re-
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`veals that he “had a bachelor’s degree in electrical engineering or its equivalent”
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`by 1999. Ex. 2028 ¶ 9; Ex. 1021 at 49. And the Wechselberger Declaration details
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`in several paragraphs Mr. Wechselberger’s decades of experience in relevant in-
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`dustries. Id. ¶¶ 3-12. Indeed, at trial in the litigation, PO had no objection to Peti-
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`tioner’s offer of Mr. Wechselberger as an expert in the field of the alleged inven-
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`tion. Ex. 1034 62:12-18. As PO then acknowledged, Mr. Wechselberger is a qual-
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`ified expert and should not be excluded.
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`PO also seeks to exclude the portions of the Wechselberger Declaration that
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`cite prior art to describe the state of the art and provide context for his invalidity
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`7
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`CBM2014-00102
`Patent 8,118,221 B2
`opinions. As detailed in § III, supra, the Declaration’s description of the back-
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`ground and knowledge of a POSITA at the relevant time is important and relevant
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`to the question of obviousness. See, e.g., Randall, 733 F.3d at 1362. For the same
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`reasons the Prior Art Exhibits and Ex.1018 are relevant, expert descriptions and
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`analyses of those exhibits are relevant under FRE 401 and should not be excluded.
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`V.
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`The Board Should Not Exclude Any Portions of Exhibit 1031
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`Finally, PO complains about portions of Dr. Katz’s deposition testimony
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`highlighting that the opinions in his declaration (Ex. 2028) lack both support and
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`credibility. Many of these objections appear for the first time in PO’s motion, and
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`are thus waived: Rule 42.64(a) required counsel to object to each and every ques-
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`tion it considered improper. See, e.g., CBM2014-00008, Paper 48 (Aug. 12, 2014)
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`(“Patent Owner objected to many, but not all, … questions . . . , indicating its be-
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`lief that at least some of the questioning was proper.” (citing 42.64(a)). And even
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`on the occasions PO actually made them, its objections do not come close to estab-
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`lishing inadmissibility of any evidence. PO simply seeks to throw out highly rele-
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`vant testimony that is unfavorable to PO, and its motion is at best an improper sur-
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`reply aimed at rehabilitating PO’s unqualified witness.
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`Ex. 1031 36:10-37:11. While PO suggests it objected to this “line of ques-
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`tioning” based on relevance and scope (Mot. 9), the record reveals PO made no ob-
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`jection to the question and answer at 37:6-11 concerning whether a POSITA would
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`8
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`CBM2014-00102
`Patent 8,118,221 B2
`have understood that access to stored data could be restricted based on payment
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`validation; thus, any such objection was waived. See 37 C.F.R. § 42.64(a).
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`Moreover, both this exchange and the preceding one at 36:10-37:5 (to which
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`PO did object on “scope” and “relevance” grounds), concerning restricting access
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`based on whether or how much payment had been made, address concepts funda-
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`mental to the ’221 patent and Dr. Katz’s opinions. See, e.g., Ex. 1001 1:29-31,
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`2:7-11; Ex. 2028 ¶¶ 22-25, 36-40. Claim 1 recites “code responsive to the payment
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`validation data to retrieve data from the data supplier and to write the retrieved da-
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`ta into the data carrier,” Ex. 1001 25:59-61, and the prior art disclosed minimizing
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`unauthorized content use to ensure content owners are paid. See, e.g., Ex. 1014
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`1:11-24, 6:62-7:5; Ex. 1015 2:59-66, 3:21-32. The prior art discloses requiring
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`that conditions, including fee conditions, be met before content is provided to a us-
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`er. See, e.g., Ex. 1014 Fig. 18, 31:30-33, 32:19-26. Dr. Katz himself confirmed, in
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`testimony PO does not object to, that a POSITA would have “understood that
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`payment validation could be made a condition of providing content that was elec-
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`tronically sold.” Ex.1031 27:4-9. But Dr. Katz inexplicably says otherwise in his
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`declaration, opining without basis that claims directed to this exact concept are not
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`obvious from the prior art. E.g., Ex. 2028 ¶¶ 25, 40. Dr. Katz’s inability at deposi-
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`tion to support his opinions about the prior art conditioning access on payment is
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`directly relevant to disproving his false conclusions.
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`9
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`CBM2014-00102
`Patent 8,118,221 B2
`Ex. 1031 70:1-73:9. PO complains of Dr. Katz’s testimony about disclo-
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`sures in Stefik ’235 (Ex. 1013), even though these are directly addressed in his
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`declaration. See, e.g., Ex. 2028 ¶¶ 23-24. And once more, almost all of PO’s cur-
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`rent complaints are waived: while PO argues objections based on relevance, scope,
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`and an “incomplete” hypothetical (Mot. 9-10), PO objected to only three of the
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`fourteen questions on which it now moves, and did not even begin objecting until
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`after the first nine questions it hopes to exclude. Ex. 1031 70:1-73:9.
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`Further, Petitioner’s questions are directly relevant to Dr. Katz’s erroneous
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`opinions regarding Stefik ’235. In his Declaration, Dr. Katz criticized Stefik
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`’235’s Fig. 3 to opine that’221 claim 1 is not obvious in view of Stefik ’235 and
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`Stefik ’980 (Ex. 1014). Ex. 2028 ¶¶ 23-24. Each of Petitioner’s questions here
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`was directed to that same figure, see Ex. 1031 70:1-73:9, which discloses “acti-
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`vat[ing] a credit account” before assigning fees and carrying out a repository trans-
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`action. Ex. 1014 6:60-7:3. Petitioner’s questioning tested Dr. Katz’s opinions on a
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`POSITA’s understanding of using that credit account to pay for a transaction, and
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`Dr. Katz was unable to support any of his criticisms. PO’s attempt to rehabilitate
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`him by downplaying his failure (claiming “[e]ven if Stefik ’235 does not exclude
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`the use of a credit card, that does not mean that it discloses it” (Mot. 10)), cannot
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`hide its relevance to Petitioner’s showing of obviousness.
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`10
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`CBM2014-00102
`Patent 8,118,221 B2
`Ex. 1031 110:7-111:4. PO objects to two questions in this passage,5 both
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`concerning alternate embodiments described in the ’221 patent, neither of which
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`should be excluded. PO moves to exclude the first question because of an alleged
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`issue in the wording “when does that payment data happen,” but ignores the con-
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`text in which the question was asked. Ex. 1031 109:14-110:6 (addressing when
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`verification of payment data happens in embodiments disclosed in the ’221). And
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`in any event, Dr. Katz confirmed he was not sure of the order of verification of
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`payment data and receipt of content in the relevant passage of the ’221 patent in
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`response to a question to which PO raised no objection. Ex. 1031 110:13-16.
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`PO also moves to exclude a second question on differences between two
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`’221 embodiments (Ex. 1001 23:2-7)—one in which payment is verified “concur-
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`rently with the content and access download process” and one in which payment
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`data is verified “at some later stage”—by taking the position that these differences
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`are not linked to any relevant issue. Mot. 10. But Dr. Katz opined that Claim 1,
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`which explicitly recites “code responsive to the payment validation data to retrieve
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`data from the data supplier and to write the retrieved data into the data carrier,” is
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`not obvious in view of the prior art, Ex. 2028 ¶¶ 25, 40, and in attempting to differ-
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`entiate the prior art, Dr. Katz drew distinctions based on the sequence of payment
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`5 Any attempt to exclude other questions and answers in this passage (e.g., 110:10-
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`16) would fail as a result of waiver, in addition to the reasons below.
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`11
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`CBM2014-00102
`Patent 8,118,221 B2
`and usage. Id. ¶¶ 37 (“Because of this post-usage versus pre-purchase distinction,
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`
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`it also would not have been obvious to use pre-purchase processing.”), 44. Yet the
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`’221 discloses an embodiment in which payment is validated before content is pro-
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`vided and one in which payment validation takes place at a later time, with no ex-
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`planation of differences between them or how a system implementer would change
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`from one to another. Ex. 1001 23:2-7. No further explanation was needed, as they
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`were well within the understanding of a POSITA. Dr. Katz’s inability to even dis-
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`cuss differences between the embodiments undercuts his conclusion that a change
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`from one to the other fundamentally alters a system’s whole principle of operation.
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`Ex. 1031 114:3-116:13. Petitioner moves to exclude testimony regarding a
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`POSITA’s ability to implement alternate ’221 embodiments (Ex. 1001 23:2-7)—
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`testimony that again squarely addresses the fundamental concept of paying for con-
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`tent and the sequence explicitly recited in claim 1: validating payment data before
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`providing content. PO claims this questioning is limited to enablement to argue
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`such questions are outside the scope of this proceeding, citing Dr. Katz’s answer
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`that he has not considered this. Mot. 11; Ex. 1031 116:3-7. But these questions
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`are not so limited: the ’221 provided no explanation of how a system would need
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`to be altered from validating payment at one time to validating payment at a differ-
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`ent time, underscoring that a POSITA already knew how to implement systems in
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`which payment was collected both before and after providing content; but Dr. Katz
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`12
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`CBM2014-00102
`Patent 8,118,221 B2
`had not even considered whether the ’221 provided any discussion of how a system
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`would need to be changed from one arrangement to another. Ex. 1031 115:20-
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`116:7. That Dr. Katz has not even bothered to consider differences between these
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`embodiments, let alone form an opinion regarding a POSITA’s ability to imple-
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`ment them, reveals the weakness of his opinions about what a POSITA would have
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`understood from the prior art, and this testimony certainly should not be excluded.
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`Ex. 1031 124:10-128:11. PO’s objections to this examination regarding
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`“prepurchase processing”—a term used in the Katz declaration—also have no mer-
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`it. As an initial matter, PO objected to only half of the six questions it now seeks
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`to exclude on scope grounds (Mot. 11). Ex. 1031 126:1-127:9. PO did not object
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`to the remaining three questions on whether “prepayments,” “realtime electronic
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`debits from bank accounts,” and “VDE node currency token deposit accounts” dis-
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`closed in Ginter are examples of “prepurchase processing,” id. 127:10-128:11, and
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`any such objection is waived. See 37 C.F.R. 42.64(a).
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`PO’s argument for exclusion of this testimony undermines Dr. Katz’s credi-
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`bility almost as much as the testimony itself does. See Pap. 39 at 4-11 (citing Dr.
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`Katz’s testimony to support Motion to Exclude his opinions). PO criticizes Peti-
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`tioner for “never establish[ing] a definition of what he meant by ‘prepurchase pro-
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`cessing’ and never ask[ing] for Dr. Katz’s understanding of that term” (Mot. 12).
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`But as PO points out, Dr. Katz testified he did not know what the term “prepur-
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`13
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`CBM2014-00102
`Patent 8,118,221 B2
`chase processing” meant (Mot. 12; see also Ex. 1031190:11-19), even though Dr.
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`Katz himself used that very term multiple times in his declaration to draw purport-
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`ed differences between the claims and disclosures in Ginter. Ex. 2028 ¶¶ 36 (“[T]o
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`change from post-usage tracking to pre-purchase processing would change the
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`principle upon which Ginter works, which I understand indicates nonobvious-
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`ness.”), 37. Ginter discloses different payment methods, including the prepayment,
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`real-time debit, and credit about which Dr. Katz was asked. A POSITA would
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`have been fully capable of using those payment methods to confirm payment either
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`before or after providing content to a user, despite Dr. Katz’s unsupported opinion
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`that this would fundamentally change Ginter’s principle of operation. In a desper-
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`ate attempt to exclude testimony that shows this Declaration opinion is wholly un-
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`reliable, PO’s Motion incredibly criticizes Petitioner for not defining the very term
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`used by PO’s own expert to characterize the supposedly patentable difference.
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`Ex. 1031 145:6-146:8. Petitioner’s complaints about testimony on Poggio’s
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`timestamp ignore the necessary consideration of a POSITA’s understanding of that
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`disclosure. See Taylor Made, 589 F. App’x at 971. First, objections beyond the
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`single question and answer at 145:17-20 have been waived, as PO made no other
`
`objection during this deposition excerpt. And Petitioner’s relevance arguments
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`(Mot. 12) ignore the context of the question (Poggio’s 1997 disclosures) and a
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`POSITA’s knowledge. Claim 2 recites “code to transmit at least a portion of the
`
`
`
`14
`
`
`
`CBM2014-00102
`Patent 8,118,221 B2
`payment validation data to the data supplier,” which Petitioner has shown is dis-
`
`
`
`
`
`closed by Poggio’s discussion of receiving a successful payment indication and re-
`
`cording an entry, including timestamp, in a database for each transaction. See Ex.
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`1016 7:20-39, 10:11-15, 10:35-37. But Dr. Katz criticizes Poggio as insufficient to
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`show how the indication is transmitted to the database. Ex. 2028 ¶ 31. Petitioner’s
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`questions on a POSITA’s understanding of the timestamp—e.g., whether it is a
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`“portion of the payment validation data”—are directly relevant to testing Dr.
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`Katz’s opinions on the disclosure he and PO dismiss.6
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`
`
`
`
`Respectfully submitted,
`By /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`
`May 26, 2015
`
`
`
`
`6 PO objects to Ex. 1031 152:7-156:12 as addressing claims of a different patent.
`
`
`
`While instituted claims of the ’221 do not recite a SIM portion or SIM card, Dr.
`
`Katz offered his “expert” opinions through Declarations and deposition testimony
`
`on closely interrelated subject matter in proceedings on three related patents (see
`
`CBM2014-00102, -00106, -00108), and his lack of knowledge regarding the con-
`
`tents of the common patent specifications and prior art there are certainly relevant
`
`to the credibility of his opinions here. Petitioner respectfully submits the Board is
`
`capable of assigning appropriate weight to all the challenged testimony in view of
`
`PO’s reliance on Dr. Katz here, and formal exclusion is unnecessary and improper.
`
`
`
`
`
`15
`
`
`
`CBM2014-00102
`Patent 8,118,221 B2
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PETITIONER
`
`APPLE INC.’S OPPOSITION TO PATENT OWNER’S MOTION TO EX-
`
`CLUDE was served on May 26, 2015, to the following Counsel for Patent Owner
`
`via e-mail, pursuant to the parties’ agreement concerning service:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`mcasey@dbjg.com
`jsd@dbjg.com
`docket@dbjg.com
`
`Attorneys for Patent Owner Smartflash LLC
`
`
`
`
`
`
`
`
`/s/ Megan Raymond
`Megan F. Raymond
`
`ROPES & GRAY LLP
`
`16
`
`
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