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
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`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
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`1 Case CBM2014-00107 has been consolidated with the instant proceeding.
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`Case CBM2014-00106
`Patent 8,033,458
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`Pursuant to 37 C.F.R. § 42.64, Patent Owner hereby objects to the admissibility of certain
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`evidence submitted with Petitioner’s petition (“the Petition”). Patent Owner’s objections are
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`based on the Federal Rules of Evidence and the Board Rules and are set forth with particularity
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`below.
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`Exhibit 1002 (Plaintiff’s First Amended Complaint)
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`Patent Owner objects to the admissibility of Exhibit 1002 on grounds that it is cumulative
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`evidence and irrelevant. The Petition cites to Exhibit 1002 for the sole purpose of showing
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`Patent Owner’s characterization of the ‘458 Patent as relating to “a portable data carrier for
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`storing data and managing access to the data via payment information and/or use status rules”
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`and covering a computer network that “serves data and manages access to data by, for example,
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`validating payment information.” Petition at 14 (citing Ex. 1002 ¶ 17). Petitioner’s expert,
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`Anthony J. Wechselberger’s Declaration, Exhibit 1021, (“Wechselberger Declaration”) does not
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`cite to Exhibit 1002. Petitioner does not need to cite to Exhibit 1002 to characterize what the
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`‘458 Patent relates to when Exhibit 1001, the actual ‘458 Patent, is in evidence. Under Fed. R.
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`Evid. 1004, other evidence of the content of a writing (here the ‘458 Patent) is admissible if the
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`original is lost, cannot be obtained, has not been produced, or the writing is not closely related to
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`a controlling issue. None of those apply given that the ‘458 Patent is in evidence and is the
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`subject of the trial. The PTAB should also exclude Exhibit 1002 under Fed. R. Evid. 403 as
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`cumulative of Exhibit 1001.
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`Moreover, Patent Owner’s characterization of the ‘458 Patent in its First Amended
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`Complaint is not relevant to any of the issues here. Being irrelevant evidence, Exhibit 1002 is
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`not admissible. Fed. R. Evid. 402.
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`2
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`Case CBM2014-00106
`Patent 8,033,458
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`Exhibit 1005 (File History for U.S. Patent No. 8,118,221)
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`Neither the Petition, nor the Wechselberger Declaration, nor the PTAB’s September 30,
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`2014 Decision – Institution of Covered Business Method Patent Review 37 C.F.R. § 42.208
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`(“PTAB Decision”) cites to Exhibit 1005. Exhibit 1005 does not appear to make a fact of
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`consequence in determining this action more or less probable than it would be without Exhibit
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`1005. As such, Exhibit 1005 does not pass the test for relevant evidence under Fed. R. Evid.
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`401. Being irrelevant evidence, Exhibit 1005 is not admissible. Fed. R. Evid. 402.
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`Exhibit 1006 (U.S. Patent No. 4,999,806)
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`Neither the Petition nor the Wechselberger Declaration cites to Exhibit 1006 as
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`potentially invalidating prior art, either alone or in combination with any other reference. The
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`PTAB Decision did not base any of its analysis on Exhibit 1006. Thus, Exhibit 1006 does not
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`appear to make a fact of consequence in determining this action more or less probable than it
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`would be without Exhibit 1006. As such, Exhibit 1006 does not pass the test for relevant
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`evidence under Fed. R. Evid. 401. Being irrelevant evidence, Exhibit 1006 is not admissible.
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`Fed. R. Evid. 402.
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`Exhibit 1007 (U.S. Patent No. 5,675,734)
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`Neither the Petition nor the Wechselberger Declaration cites to Exhibit 1007 as
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`potentially invalidating prior art, either alone or in combination with any other reference. The
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`PTAB Decision did not base any of its analysis on Exhibit 1007. Exhibit 1007 does not appear
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`to make a fact of consequence in determining this action more or less probable than it would be
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`3
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`Case CBM2014-00106
`Patent 8,033,458
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`without Exhibit 1007. As such, Exhibit 1007 does not pass the test for relevant evidence under
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`Fed. R. Evid. 401. Being irrelevant evidence, Exhibit 1007 is not admissible. Fed. R. Evid. 402.
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`Exhibit 1008 (File History for U.S. Patent No. 8,336,772)
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`Neither the Petition, nor the Wechselberger Declaration, nor the PTAB Decision cites to
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`Exhibit 1008. Exhibit 1008 does not appear to make a fact of consequence in determining this
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`action more or less probable than it would be without Exhibit 1008. As such, Exhibit 1008 does
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`not pass the test for relevant evidence under Fed. R. Evid. 401. Being irrelevant evidence,
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`Exhibit 1008 is not admissible. Fed. R. Evid. 402.
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`Exhibit 1009 (U.S. Patent No. 4,878,245)
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`Neither the Petition nor the Wechselberger Declaration cites to Exhibit 1009 as
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`potentially invalidating prior art, either alone or in combination with any other reference. The
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`PTAB Decision did not base any of its analysis on Exhibit 1009. Thus, Exhibit 1009 does not
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`appear to make a fact of consequence in determining this action more or less probable than it
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`would be without Exhibit 1009. As such, Exhibit 1009 does not pass the test for relevant
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`evidence under Fed. R. Evid. 401. Being irrelevant evidence, Exhibit 1009 is not admissible.
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`Fed. R. Evid. 402.
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`Exhibit 1012 (U.S. Patent No. 5,103,392)
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`Neither the Petition nor the Wechselberger Declaration cites to Exhibit 1012 as
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`potentially invalidating prior art, either alone or in combination with any other reference. The
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`PTAB Decision did not base any of its analysis on Exhibit 1012. Thus, Exhibit 1012 does not
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`appear to make a fact of consequence in determining this action more or less probable than it
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`4
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`Case CBM2014-00106
`Patent 8,033,458
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`would be without Exhibit 1012. As such, Exhibit 1012 does not pass the test for relevant
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`evidence under Fed. R. Evid. 401. Being irrelevant evidence, Exhibit 1012 is not admissible.
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`Fed. R. Evid. 402.
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`Exhibit 1016 (European Patent Application, Publication No. EP0809221A2)
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`The PTAB Decision did not adopt any of the proposed invalidity grounds based on
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`Exhibit 1016. Thus, Exhibit 1016 does not appear to make a fact of consequence in determining
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`this action more or less probable than it would be without Exhibit 1016. As such, Exhibit 1016
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`does not pass the test for relevant evidence under Fed. R. Evid. 401. Being irrelevant evidence,
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`Exhibit 1016 is not admissible. Fed. R. Evid. 402.
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`Exhibit 1017 (PCT Application Publication No. WO 99/43136)
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`The PTAB Decision did not adopt any of the proposed invalidity grounds based on
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`Exhibit 1017. Thus, Exhibit 1017 does not appear to make a fact of consequence in determining
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`this action more or less probable than it would be without Exhibit 1017. As such, Exhibit 1017
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`does not pass the test for relevant evidence under Fed. R. Evid. 401. Being irrelevant evidence,
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`Exhibit 1017 is not admissible. Fed. R. Evid. 402.
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`Exhibit 1018 (JP Publication No. H11-164058A (translation)).
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`The PTAB Decision did not adopt any of the proposed invalidity grounds based on
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`Exhibit 1018. Thus, Exhibit 1018 does not appear to make a fact of consequence in determining
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`this action more or less probable than it would be without Exhibit 1018. As such, Exhibit 1018
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`Case CBM2014-00106
`Patent 8,033,458
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`does not pass the test for relevant evidence under Fed. R. Evid. 401. Being irrelevant evidence,
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`Exhibit 1018 is not admissible. Fed. R. Evid. 402.
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`Exhibit 1019 (JP Patent Application Publication No. H10-269289 (translation))
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`The PTAB Decision did not adopt any of the proposed invalidity grounds based on
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`Exhibit 1019. Thus, Exhibit 1019 does not appear to make a fact of consequence in determining
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`this action more or less probable than it would be without Exhibit 1019. As such, Exhibit 1019
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`does not pass the test for relevant evidence under Fed. R. Evid. 401. Being irrelevant evidence,
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`Exhibit 1019 is not admissible. Fed. R. Evid. 402.
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`Exhibit 1020 (Eberhard von Faber, Robert Hammelrath, and Franz-Peter Heider, “The
`Secure Distribution of Digital Contents,” IEEE (1997))
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`Neither the Petition nor the Wechselberger Declaration cites to Exhibit 1020 as
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`potentially invalidating prior art, either alone or in combination with any other reference. The
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`PTAB Decision did not base any of its analysis on Exhibit 1020. Thus, Exhibit 1020 does not
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`appear to make a fact of consequence in determining this action more or less probable than it
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`would be without Exhibit 1020. As such, Exhibit 1020 does not pass the test for relevant
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`evidence under Fed. R. Evid. 401. Being irrelevant evidence, Exhibit 1020 is not admissible.
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`Fed. R. Evid. 402.
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`Exhibit 1021 (Declaration of Anthony J. Wechselberger In Support of Apple Inc.’s Petition
`for Covered Business Method Patent Review)
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`Patent Owner objects to Exhibit 1021, the first Wechselberger Declaration, in its entirety
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`as the first Wechselberger Declaration does not state the relative evidentiary weight (e.g.,
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`6
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`Case CBM2014-00106
`Patent 8,033,458
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`substantial evidence versus preponderance of the evidence) used in arriving at his conclusions.
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`In addition, the first Wechselberger Declaration does not sufficiently state the criteria used to
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`assess whether one of ordinary skill in the art at the time of the invention would have been
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`motivated to modify a reference or combine two references. For example, the first
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`Wechselberger Declaration does not state whether he considered evidence tending to show that
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`one of ordinary skill in the art would not have made his proposed combination. Moreover, the
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`first Wechselberger Declaration treats the components of the prior art as if one could mix and
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`match any and all combinations and does not address sufficiently why a person of ordinary skill
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`in the art would be motivated to make specific combinations rendering the ‘458 Patent obvious.
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`As such it lacks foundation. Fed. R. Evid. 602.
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`Additionally, the first Wechselberger Declaration does not prove that Mr. Wechselberger
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`is an expert whose testimony is relevant to the issue of what is taught and/or suggested by the
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`cited references. While Mr. Wechselberger may opine that he was “one of ordinary skill in the
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`art,” he does not, however, state that he is an expert in the types of methods and systems defined
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`by the challenged claims nor does he provide proof that he is an expert. Thus, Mr.
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`Wechselberger has not proven that his opinions are proper expert opinions upon which the PTAB
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`can rely as opposed to inadmissible lay opinions. FRE 701 and 702.
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`The first Wechselberger Declaration is further objected to to the extent that any
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`paragraph relies upon an exhibit that is objected to herein for the reasons set forth in those
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`objections. Any paragraph in the first Wechselberger Declaration that relies upon any exhibit
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`not relied upon by the PTAB to institute this proceeding is further objected to (under Fed. R.
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`Evid. 401) as not being relevant and therefore being inadmissible (under Fed. R. Evid. 402).
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`Case CBM2014-00106
`Patent 8,033,458
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`Exhibit 1022 (U.S. Patent No. 5,754,654)
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`Neither the Petition, nor the Wechselberger Declaration, nor the PTAB Decision cites to
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`Exhibit 1022. In fact, Wechselberger Declaration does not even list Exhibit 1022 in its list of
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`“Materials Reviewed and Relied Upon.” Wechselberger Declaration, Exhibit 1021, Appendix C
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`p. 49. Exhibit 1022 does not appear to make a fact of consequence in determining this action
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`more or less probable than it would be without Exhibit 1022. As such, Exhibit 1022 does not
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`pass the test for relevant evidence under Fed. R. Evid. 401. Being irrelevant evidence, Exhibit
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`1022 is not admissible. Fed. R. Evid. 402.
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`Exhibit 1027 (File History for U.S. Patent No. 7,334,720)
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`Neither the Petition, nor the Wechselberger Declaration, nor the PTAB Decision cites to
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`Exhibit 1027. Exhibit 1027 does not appear to make a fact of consequence in determining this
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`action more or less probable than it would be without Exhibit 1027. As such, Exhibit 1027 does
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`not pass the test for relevant evidence under Fed. R. Evid. 401. Being irrelevant evidence,
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`Exhibit 1027 is not admissible. Fed. R. Evid. 402.
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`Exhibit 1028 (File History for U.S. Patent No. 7,942,317)
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`Neither the Petition, nor the Wechselberger Declaration, nor the PTAB Decision cites to
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`Exhibit 1028. Exhibit 1028 does not appear to make a fact of consequence in determining this
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`action more or less probable than it would be without Exhibit 1028. As such, Exhibit 1028 does
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`not pass the test for relevant evidence under Fed. R. Evid. 401. Being irrelevant evidence,
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`Exhibit 1028 is not admissible. Fed. R. Evid. 402.
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`Case CBM2014-00106
`Patent 8,033,458
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`Exhibit 1029 (File History for U.S. Patent No. 8,061,598)
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`Neither the Petition nor the Wechselberger Declaration cites to Exhibit 1029 as
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`potentially invalidating prior art, either alone or in combination with any other reference. The
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`PTAB Decision did not base any of its analysis on Exhibit 1029. Thus, Exhibit 1029 does not
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`appear to make a fact of consequence in determining this action more or less probable than it
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`would be without Exhibit 1029. As such, Exhibit 1029 does not pass the test for relevant
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`evidence under Fed. R. Evid. 401. Being irrelevant evidence, Exhibit 1029 is not admissible.
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`Fed. R. Evid. 402.
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`Exhibits 1101-1120 and 1122-1129
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`Exhibits 1101-1129 were filed in CBM2014-00107. CBM2014-00106 was consolidated
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`with CBM2014-00107 (PTAB Decision at 24), the PTAB ordered that all further filings in the
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`consolidated proceedings be made only in CBM2014-00106 and the CBM2014-00107 be
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`terminated (PTAB Decision at 26). Exhibits 1101-1120 and 1122-1129 from CBM2014-00107
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`are identical to Exhibits 1001-1020 and 1022-1029 submitted in CBM2014-00106. The PTAB
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`Decision recognized this duplication of exhibits and referred to the exhibits filed in CBM2014-
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`00106. PTAB Decision at 2, n. 1. Without waiving the objections asserted above, Patent Owner
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`objects to Exhibits 1101-1120 and 1122-1129 under Fed. R. Evid. 403 as needless cumulative
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`evidence duplicative of Exhibits 1001-1020 and 1022-1029. In the event that the PTAB does not
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`exclude Exhibits 1101-1120 and 1122- 1129 in their entirety as needless cumulative evidence,
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`Patent Owner reasserts each objection set forth above for Exhibits 1001-1020 and 1022-1029 to
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`the corresponding exhibit in Exhibits 1101-1120 and 1122- 1129 as if set forth fully herein.
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`Case CBM2014-00106
`Patent 8,033,458
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`Exhibit 1121 (Declaration of Anthony J. Wechselberger In Support of Apple Inc.’s Petition
`for Covered Business Method Patent Review)
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`Patent Owner objects to Exhibit 1121, the second Wechselberger Declaration, in its
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`entirety as the second Wechselberger Declaration does not state the relative evidentiary weight
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`(e.g., substantial evidence versus preponderance of the evidence) used in arriving at his
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`conclusions. In addition, the second Wechselberger Declaration does not sufficiently state the
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`criteria used to assess whether one of ordinary skill in the art at the time of the invention would
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`have been motivated to modify a reference or combine two references. For example, the second
`
`Wechselberger Declaration does not state whether he considered evidence tending to show that
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`one of ordinary skill in the art would not have made his proposed combination. Moreover, the
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`second Wechselberger Declaration treats the components of the prior art as if one could mix and
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`match any and all combinations and does not address sufficiently why a person of ordinary skill
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`in the art would be motivated to make specific combinations rendering the ‘458 Patent obvious.
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`As such it lacks foundation. Fed. R. Evid. 602.
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`Additionally, the second Wechselberger Declaration does not prove that Mr.
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`Wechselberger is an expert whose testimony is relevant to the issue of what is taught and/or
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`suggested by the cited references. While Mr. Wechselberger may opine that he was “one of
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`ordinary skill in the art,” he does not, however, state that he is an expert in the types of methods
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`and systems defined by the challenged claims nor does he provide proof that he is an expert.
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`Thus, Mr. Wechselberger has not proven that his opinions are proper expert opinions upon which
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`the PTAB can rely as opposed to inadmissible lay opinions. FRE 701 and 702.
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`The second Wechselberger Declaration is further objected to to the extent that any
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`paragraph relies upon an exhibit that is objected to herein for the reasons set forth in those
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`objections. Any paragraph in the second Wechselberger Declaration that relies upon any exhibit
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`Case CBM2014-00106
`Patent 8,033,458
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`having a corresponding exhibit in CBM2014-00106 that was not relied upon by the PTAB to
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`institute this proceeding is further objected to (under Fed. R. Evid. 401) as not being relevant and
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`therefore being inadmissible (under Fed. R. Evid. 402).
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` /
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` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
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`Dated: October 15, 2014
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`Case CBM2014-00106
`Patent 8,033,458
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PATENT OWNER’S OBJECTIONS TO
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`ADMISSIBILITY OF EVIDENCE in CBM2014-00106 was served today, by agreement of the
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`parties by emailing a copy to counsel for the Petitioner as follows:
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`J. Steven Baughman (steven.baughman@ropesgray.com)
`Ching-Lee Fukuda (ching-lee.fukuda@ropesgray.com)
`ApplePTABService-SmartFlash@ropesgray.com
`Ropes & Gray LLP
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` /
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` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
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`
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`Dated: October 15, 2014
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