CBM2014-00106
`Patent 8,033,458 B2
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2014-001061
`Patent 8,033,458 B2
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION TO STRIKE PORTIONS OF THE DEPOSITION TRANSCRIPT
`OF ANTHONY WECHSELBERGER CONCERNING PETITIONER’S
`PRODUCTS AND FOR COSTS
`
`
`
`
`
`
`
`1 Case CBM2014-00107 has been consolidated with the instant proceeding.
`0
`
`
`
`
`Patent 8,033,458 B2
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2014-001061
`Patent 8,033,458 B2
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION TO STRIKE PORTIONS OF THE DEPOSITION TRANSCRIPT
`OF ANTHONY WECHSELBERGER CONCERNING PETITIONER’S
`PRODUCTS AND FOR COSTS
`
`
`
`
`
`
`
`1 Case CBM2014-00107 has been consolidated with the instant proceeding.
`0
`
`
`
`
`
`CBM2014-00106
`Patent 8,033,458 B2
`
`
`
`
`
`TABLE OF ABBREVIATIONS
`
`
`
`
`
`Description
`
`Abbreviation
`Patent Owner
`PO
`Mot. or Motion Petitioner’s Motion to Strike Portions of the Deposition Tran-
`script of Anthony Wechselberger Concerning Petitioner’s Prod-
`ucts and for Costs (Paper 20)
`Patent Owner’s Opposition to Petitioner’s Motion to Strike Por-
`tions of the Deposition Transcript of Anthony Wechselberger
`Concerning Petitioner’s Products and for Costs (Paper 22)
`Paper in CBM2014-00106
`
`Opp.
`
`Pap.
`
`
`**All emphasis added unless otherwise indicated
`
`
`
`1
`
`
`
`CBM2014-00106
`Patent 8,033,458 B2
`
`
`
`
`
`
`
`
`Petitioner hereby replies in support of its Motion to Strike (Pap. 20) (“Mot.”),
`
`and in response to Patent Owner’s (“PO”) Opposition (“Opp.”) (Pap. 22).
`
`I. STATEMENT/RESPONSE TO STATEMENT OF MATERIAL FACTS
`
`Petitioner’s Statement is in Motion at 1-7. As to PO’s Statement: 1. Admitted.
`
`II. THE TESTIMONY AT ISSUE WAS OUTSIDE THE PROPER SCOPE
`
` PO does not argue that Mr. Wechselberger’s testimony, in the declarations on
`
`which he was deposed, provided any opinions on the operation of Petitioner’s prod-
`
`ucts or on any purported secondary indicia of non-obviousness supposedly related to
`
`commercial success. These were nonetheless the admitted subjects of PO’s unabash-
`
`edly improper questioning, which should be stricken from the record, and for which
`
`costs should be awarded. Nor does PO offer the Board any excuse for seeking, with-
`
`out authorization, additional discovery 2 on supposed practicing of the patent and
`
`“commercial success”—a particularly glaring transgression when the Board had pre-
`
`viously denied such discovery, finding PO lacked any threshold evidence that such considera-
`
`tions are present in this case, see, e.g., Pap. 14 at 3; Pap. 19 at 3; Malico, Inc. v. Cooler Master
`
`USA Inc., No. 2013-1680, 2014 WL 6376903, at *7 (Fed. Cir. Nov. 17, 2014) (“evi-
`
`
`2 Contrary to PO’s claim (Opp. 6-7), “Routine Discovery” of a declarant is limited to
`
`the scope of his declaration. §§ 42.51(b)(1)(ii)(“Routine Discovery” includes “ Cross
`
`examination of affidavit testimony”), 42.53(d)(5)(ii)(“ For cross-examination testimo-
`
`ny, the scope of the examination is limited to the scope of the direct testimony.”).
`
`
`
`1
`
`
`
`CBM2014-00106
`Patent 8,033,458 B2
`
`dence of secondary considerations of nonobviousness must always, when present, be
`
`
`
`
`
`
`
`considered in the obviousness analysis”), and when this was called to PO’s attention
`
`during the deposition, but PO nonetheless continued its improper questioning. Ex.
`
`1030 356:23-357:11.3
`
`Instead, PO argues that any time any witness testifies at the PTAB about obvious-
`
`ness, he is subject to questioning at deposition—without authorization or any show-
`
`ing of nexus or other threshold evidence—on the supposed infringement of a peti-
`
`tioner’s products, including details of their operation. E.g., Opp. at 2-4 (“Mr. Wech-
`
`selberger provided his opinion on the obviousness of at least one challenged claim”).
`
`Indeed, PO goes further to argue a technical expert may be questioned and then criti-
`
`cized for suggesting another type of expert might more appropriately opine about the
`
`precise number of sales that triggers “commercial success,” when this was never
`
`raised in the deponent’s declaration. See Opp. 4-5 (“how many apps would have to be sold
`
`in your opinion…?”).4 Mr. Wechselberger opined about no purported secondary con-
`
`3 PO’s suggestion that its questions regarding the operation of Petitioner’s products
`
`and “commercial success” issues were proper because of Mr. Wechselberger’s back-
`
`ground statements about his areas of expertise (Opp. 5-6) is illogical, and simply un-
`
`derscores the baselessness of its position.
`
`4 See also Ex. 1030 371:20-373:16 (supposed inability to answer stemmed from incom-
`
`pleteness of questions).
`
`
`
`2
`
`
`
`CBM2014-00106
`Patent 8,033,458 B2
`
`siderations; PO has offered no threshold evidence that any are present to begin with;
`
`
`
`
`
`
`
`and its questioning—an admitted fishing expedition in search of such threshold evi-
`
`dence (e.g., Opp. at 5 (“a number of Patent Owner’s questions were related to the
`
`nexus”; “Patent Owner’s period for discovery is not yet over, so Patent Owner also
`
`can prove nexus through other witnesses”)5—was wholly improper. Endorsing it
`
`would render Rule 42.53(d)(ii) meaningless, improperly expand any PTAB proceeding
`
`involving obviousness into a trial-within-a-trial on supposed infringement by petition-
`
`ers with commercial products, and thwart Congress’ goal in the AIA to provide, in
`
`PTAB proceedings, a timely, efficient, and inexpensive alternative to litigation for re-
`
`solving disputes about the validity of a challenged patent. See, e.g., 147 Cong. Rec.
`
`1363-1364 (daily ed. Mar. 8, 2011). PO’s open flouting of the rules and guidance of
`
`the Board should not be permitted, and the transcript of this improper, out-of-scope
`
`questioning6 should be stricken from the record.
`
`5 Tellingly, that discovery period is now closed, and PO has offered no evidence or
`
`arguments of secondary indicia in its Preliminary Response (Pap. 6), Response (Pap.
`
`23), or accompanying testimony (see, e.g., Ex. 2029)—further confirming that, in addi-
`
`tion to being outside the scope of Mr. Wechselberger’s testimony , secondary indicia
`
`are not even presented here. Malico, 2014 WL 6376903, at *7.
`
`6 PO’s feigned confusion aside (Opp. 7), no “guess[ing]” is required about what testi-
`
`mony should be struck: the entirety of the testimony cited in the Motion (Ex. 1030
`
`
`
`3
`
`
`
`CBM2014-00106
`Patent 8,033,458 B2
`
`III.
`
`
`
`
`
`
`
`SANCTIONS, INCLUDING STRIKING OF THE TESTIMONY AND MONE-
`TARY SANCTIONS, ARE APPROPRIATE
`
`PO’s primary argument that it should not be subject to monetary sanctions for
`
`its misconduct appears to be that the costs it has imposed on Petitioner to address
`
`PO’s clearly improper behavior is smaller than the PTAB’s filing fees across petitions
`
`not even at issue here. Opp. at 9. PO further argues that even the fact of this Motion
`
`to Strike, authorized by the Board, should excuse PO from any consequences for its
`
`misconduct. Id. While breathtaking in their boldness, PO’s arguments are meritless:
`
`PO’s violation of the Board’s Rules is certainly not excused by Petitioner’s compli-
`
`ance.7 PO improperly questioned a witness outside the scope of his declaration; Peti-
`
`tioner requested a call with the Board to halt this improper behavior, and PO was
`
`358:1-378:4; see Mot. at 2) is associated with PO’s improper questioning into the oper-
`
`ation of Petitioner’s products and what PO asserts are purported secondary considera-
`
`tions of commercial success, and its attempts to have the witness opine on those is-
`
`sues. That Petitioner objected numerous times to PO’s improper questioning before
`
`calling the Board (cf. Opp. at 7-8) does not mean PO’s questions were appropriate;
`
`nor does it change the Board’s authorization to file a motion addressed to any im-
`
`proper questioning after the December 11 Board call. Pap. 19 at 3-4.
`
`7 PO’s suggestion that it should be excused because the Motion did not attach a final
`
`accounting for the fees and costs from PO’s misconduct (Opp. 8-9) is nonsensical, as
`
`they have continued (including with the completion and filing of this brief).
`
`
`
`4
`
`
`
`CBM2014-00106
`Patent 8,033,458 B2
`
`warned that questioning outside the scope would subject PO to a motion to strike and
`
`
`
`
`
`
`
`for fees and costs. E.g., Ex. 1030 351:4-8 (“In addition, if we’re persuaded that the line
`
`of questioning is outside the scope of the proceeding, we will strike all the questions
`
`and answers that weren’t relevant from the transcript so that they don’t remain in the
`
`proceeding.”), 349:15-20 (“I’m not telling you what to do but I’m telling you that if
`
`you proceed down this path and petitioner files a motion for costs, and the panel
`
`hears that and is persuaded, you may have to pay the attorney’s fees and all the other
`
`costs associated with the deposition today.”); Pap. 19 at 3 (“[W]e authorize Petitioner
`
`to file a Motion to Strike”), 4 (“[S]anctions may include striking the questions and an-
`
`swers that are not relevant, and ordering Patent Owner to pay the costs associated
`
`with the deposition.”). And PO chose to continue this improper conduct despite that
`
`warning. See Ex. 1030 356:23-357:11 (“So we just had a conference call with the Pa-
`
`tent Trial and Appeal Board, and the Patent Trial and Appeal Board has indicated that
`
`patent owner is to proceed at its own risk in asking questions that may relate to the
`
`commercial success of Apple’s product as it relates to the claims at issue. Patent
`
`owner is going forward . . .”). Petitioner’s Motion to strike and for fees and costs, au-
`
`thorized by the Board and amply supported by the facts, should be granted.
`
`Respectfully submitted,
`
`
`
`
`
`
`
`March 12, 2015
`
`By:/J. Steven Baughman/
`Counsel for Petitioner Apple Inc.
`
`
`
`
`
`5
`
`
`
`CBM2014-00106
`Patent 8,033,458 B2
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of PETITIONER’S REPLY IN
`
`SUPPORT OF ITS MOTION TO STRIKE PORTIONS OF THE DEPOSITION
`
`TRANSCRIPT OF ANTHONY WECHSELBERGER CONCERNING PETI-
`
`TIONER’S PRODUCTS AND FOR COSTS was served on March 12, 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
`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 F. Raymond
`
`
`
`ROPES & GRAY LLP
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
