`________________________
`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 MOTION TO EXCLUDE 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 B2
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`TABLE OF CONTENTS
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`
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`I.
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`Statement of Precise Relief Requested ............................................................ 1
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`II.
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`Patent Owner Smartflash Timely Objected to Petitioner’s Exhibits ............... 1
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`III. Argument ......................................................................................................... 1
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`A.
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`B.
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`C.
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`D.
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`Exhibit 1002 is Inadmissible Other Evidence of the Content of a
`Writing, Irrelevant, and Cumulative ..................................................... 2
`Exhibits 1005, 1008, 1022, 1027, 1028, and 1029 are Uncited and thus
`are Irrelevant .......................................................................................... 3
`Exhibits 1006, 1007, 1009, 1012, and 1020 are Not Alleged to be
`Invalidating Prior Art and thus are Irrelevant ....................................... 4
`Exhibits 1016, 1017, 1018, and 1019 are not the Basis for any
`Invalidity Grounds for Which CBM2014-00106/107 was Initiated and
`thus are Irrelevant .................................................................................. 4
`Exhibit 1021 Lacks Foundation, is Unreliable, and Relies on
`Irrelevant Exhibits ................................................................................. 5
`Certain Portions of Exhibit 1031 – (Deposition Testimony of Patent
`Owner’s Expert Dr. Katz) Should be Excluded as Eliciting Testimony
`Outside the Scope of this Proceeding and as Irrelevant ........................ 9
`Exhibits 1101-1120 and 1122-1129 are Cumulative and Subject to
`Exclusion for the Reasons Cited Above .............................................. 18
`Exhibit 1121 is Cumulative and Subject to Exclusion for the Reasons
`Cited Above for Exhibit 1021 ............................................................. 19
`IV. Conclusion ..................................................................................................... 20
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`E.
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`F.
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`G.
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`H.
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`i
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`Case CBM2014-00106
`Patent 8,033,458 B2
`I.
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`Statement of Precise Relief Requested
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Patent Owner Smartflash LLC
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`moves to exclude Exhibits 1002, 1005, 1006, 1007, 1008, 1009, 1012, 1016, 1017,
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`1018, 1019, 1020, 1021, 1022, 1027, 1028, and 1029. To the extent that Exhibits
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`1101 – 1120 and 1122 – 1129 from CBM2014-00107, which was consolidated
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`with this action, are considered to be in the record in this action, Patent Owner
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`moves to exclude them as duplicative of their corresponding exhibits from
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`CBM2014-00106. Patent Owner also moves to exclude Exhibit 1121 and portions
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`of Exhibit 1031.
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`II.
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`Patent Owner Smartflash Timely Objected to Petitioner’s Exhibits
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`Patent Owner Smartflash LLC timely objected to CBM2014-00106 Exhibits
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`1002, 1005, 1006, 1007, 1008, 1009, 1012, 1016, 1017, 1018, 1019, 1020, 1021,
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`1022, 1027, 1028, and 1029, as well as CBM2014-00107 Exhibits 1101 – 1120,
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`1122 – 1129 and 1121. Exhibit 2052. Patent Owner lodged objections to Exhibit
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`1031 during the deposition of Dr. Jonathan Katz.
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`
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`III. Argument
`Pursuant to 37 C.F.R. § 42.64(c), the Federal Rules of Evidence apply in
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`Covered Business Method Review proceedings.
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`Patent 8,033,458 B2
`A. Exhibit 1002 is Inadmissible Other Evidence of the Content of a
`Writing, Irrelevant, and Cumulative
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`Patent Owner moves to exclude Exhibit 1002, (Plaintiff’s First Amended
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`Complaint) on grounds that it is: inadmissible other evidence of the content of a
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`writing under FRE 1004; inadmissible under FRE 402 because it fails the test for
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`relevance set forth in FRE 401; and, even if relevant, is cumulative evidence under
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`FRE 403.
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`The Petition cites to Exhibit 1002 for the sole purpose of showing Patent
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`Owner’s description of the subject matter of U.S. Patent 8,033,458 (“the ‘458
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`Patent”) as “cover[ing] a portable data carrier for storing data and managing access
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`to the data via payment information and/or use status rules” and “cover[ing] a
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`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
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`does not need to cite to Exhibit 1002 to show the subject matter of the ‘458 Patent,
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`however, because Exhibit 1001, the actual ‘458 Patent, is in evidence without
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`objection. Under FRE 1004, other evidence of the content of a writing (here the
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`‘458 Patent) is admissible if the original is lost, cannot be obtained, has not been
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`produced, or the writing is not closely related to a controlling issue. None of those
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`conditions apply here, given that the ‘458 Patent is in evidence and is the subject of
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`the trial.
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`Patent 8,033,458 B2
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`Patent Owner’s description of the ‘458 Patent in Exhibit 1002 is not relevant
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`to any of the issues here. Petitioner’s expert, Anthony J. Wechselberger’s
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`Declaration, Exhibit 1021, (“first Wechselberger Declaration”) does not cite
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`Exhibit 1002. The Board’s September 30, 2014 Decision – Institution of Covered
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`Business Method Patent Review 37 C.F.R. § 42.208 (“PTAB Decision”), Paper 8,
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`does not cite Exhibit 1002. Exhibit 1002 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
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`without Exhibit 1002. As such, Exhibit 1002 does not pass the test for relevant
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`evidence under FRE 401 and is not admissible per FRE 402.
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`Even if Exhibit 1002 was found to be relevant, it should also be excluded
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`under FRE 403 as cumulative of Exhibit 1001.
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`B.
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`Exhibits 1005, 1008, 1022, 1027, 1028, and 1029 are Uncited and
`thus are Irrelevant
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`Neither the Petition, nor the Wechselberger Declaration, nor the PTAB
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`Decision cite to Exhibit 1005 (File History for U.S. Patent No. 8,118,221), Exhibit
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`1008 (File History for U.S. Patent No. 8,336,772), Exhibit 1022 (U.S. Patent No.
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`5,754,654), Exhibit 1027 (File History for U.S. Patent No. 7,334,720), Exhibit
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`1028 (File History for U.S. Patent No. 7,942,317), or Exhibit 1029 (File History
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`for U.S. Patent No. 8,061,598)(“the Uncited Exhibits”). The Uncited Exhibits do
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`not appear to make a fact of consequence in determining this action more or less
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`probable than it would be without the Uncited Exhibits. As such, the Uncited
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`Exhibits do not pass the test for relevant evidence under FRE 401 and are not
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`admissible per FRE 402.
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`C. Exhibits 1006, 1007, 1009, 1012, and 1020 are Not Alleged to be
`Invalidating Prior Art and thus are Irrelevant
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`Although cited, neither the Petition nor the Wechselberger Declaration assert
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`that Exhibit 1006 (U.S. Patent No. 4,999,806), Exhibit 1007 (U.S. Patent No.
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`5,675,734), Exhibit 1009 (U.S. Patent No. 4,878,245), Exhibit 1012 (U.S. Patent
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`No. 5,103,392), or Exhibit 1020 (Eberhard von Faber, Robert Hammelrath, and
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`Franz-Peter Heider, “The Secure Distribution of Digital Contents,” IEEE
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`(1997))(“the Unasserted Exhibits”) are potentially invalidating prior art, either
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`alone or in combination with any other reference. The PTAB Decision did not
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`base any of its analysis on the Unasserted Exhibits. Thus, the Unasserted Exhibits
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`do not appear to make a fact of consequence in determining this action more or less
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`probable than it would be without the Unasserted Exhibits. As such, the
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`Unasserted Exhibits do not pass the test for relevant evidence under FRE 401 and
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`are not admissible per FRE 402.
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`D. Exhibits 1016, 1017, 1018, and 1019 are not the Basis for any
`Invalidity Grounds for Which CBM2014-00106/107 was Initiated
`and thus are Irrelevant
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`The PTAB Decision did not adopt any of the proposed invalidity grounds
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`based on Exhibit 1016 (European Patent Application, Publication No.
`4
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`Patent 8,033,458 B2
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`EP0809221A2 (“Poggio”)), Exhibit 1017 (PCT Application Publication No. WO
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`99/43136 (“Rydbeck”)), Exhibit 1018 (JP Publication No. H11-164058A
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`(translation)(“Sato”)), or Exhibit 1019 (JP Patent Application Publication No. H10-
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`269289 (translation)(“Maari”)). Compare, PTAB Decision at 3-4 (chart showing
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`grounds for challenging patentability including alleged prior art references Poggio,
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`Rydbeck, Sato, and Maari), with PTAB Decision at 26 (instituting covered
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`business method patent review on grounds other than alleged prior art references
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`Poggio, Rydbeck, Sato, or Maari). Thus, Exhibits 1016, 1017, 1018, and 1019 fail
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`the test for relevant evidence because nothing in Exhibits 1016, 1017, 1018, and
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`1019 make a fact of consequence in determining this action more or less probable
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`than it would be without Exhibits 1016, 1017, 1018, and 1019. FRE 401(b).
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`Being irrelevant evidence, Exhibits 1016, 1017, 1018, and 1019 are not admissible.
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`FRE 402.
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`E.
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`Exhibit 1021 Lacks Foundation, is Unreliable, and Relies on
`Irrelevant Exhibits
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`Federal Rule of Evidence 702 provides:
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`RULE 702. TESTIMONY BY EXPERT WITNESSES
`A witness who is qualified as an expert by knowledge,
`skill, experience, training, or education may testify in the
`form of an opinion or otherwise if:
`(a) The expert’s scientific, technical, or other specialized
`knowledge will help the trier of fact to understand the
`evidence or to determine a fact in issue;
`(b) The testimony is based on sufficient facts or data;
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`(c) The testimony is the product of reliable principles and
`methods; and
`(d) The expert has reliably applied the principles and
`methods to the facts of the case.
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`FRE 702. Patent Owner moves to exclude to Exhibit 1021, the first Wechselberger
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`Declaration, in its entirety as the first Wechselberger Declaration does not state the
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`relative evidentiary weight (e.g., substantial evidence versus preponderance of the
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`evidence) used in arriving at his conclusions. “A finding is supported by
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`substantial evidence if a reasonable mind might accept the evidence to support the
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`finding.” Q. I. Press Controls, B.V. v. Lee, 752 F.3d 1371, 1378-1379 (Fed. Cir.
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`2014)(citing Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S. Ct. 206, 83 L.
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`Ed. 126 (1938)). Proof by a “preponderance of the evidence” means “that it is
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`more likely than not.” See, O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,
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`449 Fed. Appx. 923, 928 (Fed. Cir. 2011). The Board cannot assess whether Mr.
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`Wechselberger’s opinion testimony is “the product of reliable principles and
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`methods” or if Mr. Wechselberger “reliably applied the principles and methods to
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`the facts of the case” given that Mr. Wechselberger did not disclose the standard
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`against which he measured the quantum of prior art reference evidence in arriving
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`at his opinions. Specifically, when Mr. Wechselberger concludes “in my opinion,
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`the challenged claims would have been in the possession of or obvious to one of
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`ordinary skill in the art from the disclosures in one or more of certain prior art
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`references” (Exhibit 1021 at ¶ 65) is he saying that he examined the prior art
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`references and a reasonable mind would find sufficient evidence to support that
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`one of ordinary skill in the art had possession of the claims / would find the claims
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`obvious (substantial evidence); OR is he saying that he examined the prior art
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`references and it is more likely than not that one of ordinary skill in the art had
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`possession of the claims / would find the claims obvious (preponderance of the
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`evidence). There is no basis for the Board to know, because the first
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`Wechselberger Declaration is silent on the standard he used. As such the first
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`Wechselberger Declaration should be excluded because it lacks foundation. FRE
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`602.
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`In addition, the first Wechselberger Declaration does not sufficiently state
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`the criteria used to assess whether one of ordinary skill in the art at the time of the
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`invention would have been motivated to modify a reference or combine two
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`references. For example, the first Wechselberger Declaration does not state
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`whether he considered evidence tending to show that one of ordinary skill in the art
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`would not have made his proposed combination. Moreover, the first
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`Wechselberger Declaration treats the components of the prior art as if one could
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`mix and match any and all combinations and does not address sufficiently why a
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`person of ordinary skill in the art would be motivated to make specific
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`combinations rendering the ‘458 Patent obvious. As such it should be excluded
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`because it lacks foundation. FRE 602.
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`Additionally, the first 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
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`taught and/or suggested by the cited references. While Mr. Wechselberger may
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`opine that he was “one of ordinary skill in the art,” he does not state that he is an
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`expert in the types of methods and systems defined by the challenged claims, nor
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`does he provide proof that he is an expert. Mr. Wechselberger does not show that
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`he is “a witness who is qualified as an expert by knowledge, skill, experience,
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`training, or education” such that he “may testify in the form of an opinion.” FRE
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`702. Thus, Mr. Wechselberger has not proven that his opinions are proper expert
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`opinions upon which the PTAB can rely as opposed to inadmissible lay opinions.
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`FRE 701 and 702.
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`Certain specific paragraphs in the first Wechselberger Declaration should be
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`excluded because they rely on exhibits that are irrelevant. Paragraphs 30, 31, 32,
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`35, 36, and 37 contain testimony about the Unasserted Exhibits. Paragraphs 34,
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`40, 41, 56, 59, 60, 63, and 64 contain testimony about Exhibits 1016, 1017, 1018,
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`and 1019, all exhibits not relied upon by the PTAB to institute this proceeding. As
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`such, Paragraphs 30, 31, 32, 34, 35, 36, 37, 40, 41, 56, 59, 60, 63, and 64 should be
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`excluded as not being relevant under FRE 401, and therefore being inadmissible
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`under FRE 402.
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`F. Certain Portions of Exhibit 1031 – (Deposition Testimony of
`Patent Owner’s Expert Dr. Katz) Should be Excluded as Eliciting
`Testimony Outside the Scope of this Proceeding and as Irrelevant
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`Patent Owner moves to exclude portions of Exhibit 1031 (Katz Deposition
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`Transcript) on grounds that the questions asked were outside the scope of Dr.
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`Katz’s declaration and thus outside the scope of this proceeding as not in
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`compliance with 37 CFR 42.53(d)(5)(ii) (“For cross-examination testimony, the
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`scope of the examination is limited to the scope of the direct testimony”) and/or
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`irrelevant.
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`Exhibit 1031 36:10-37:11 – This line of questioning asked Dr. Katz whether
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`a person of ordinary skill in the art would have understood that access to stored
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`data could be restricted based on whether or how much payment had been made or
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`based on payment validation. Patent Owner objected based on relevance and
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`scope. Petitioner cites the testimony to allege that “Dr. Katz repeatedly testified he
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`is ‘not sure’ what a POSITA would have understood regarding” various subjects.
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`Petitioner’s Reply To Patent Owner’s Response (“Petitioner’s Reply”), Paper 33,
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`at 3. This testimony is not relevant because it relates to conditional access and
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`none of the claims at issue relate to conditional access to stored data. Moreover,
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`the question was asked in terms of “payment validation” and not “payment
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`validation data.” Because the question went to claims and terms outside the scope
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`of the proceeding as instituted, it was beyond the scope of Dr. Katz’s declaration.
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`The testimony should thus be excluded under FRE 402 and 37 CFR 42.53(d)(5)(ii).
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`Exhibit 1031 44:18 – 46:1 – This testimony relates to whether in the prior art
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`time period a person of ordinary skill in the art would have understood that SIM
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`cards could be used for billing purposes. Patent Owner objected on relevance
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`grounds. Petitioner cites the testimony in a list of things that Dr. Katz purportedly
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`admits he is not sure of, including “whether SIM cards were used for billing in the
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`prior art, or if a POSITA would have understood that SIM cards could be used for
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`billing.” Petitioner’s Reply at 22. This testimony is not relevant. Claim 1 of the
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`‘458 Patent recites “A portable data carrier, comprising: ... a subscriber identity
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`module (SIM) portion to identify a subscriber to a network operator.” The issue in
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`this proceeding is not whether SIM cards were or could be used for billing, but
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`rather, 1) whether one skilled in the art “would have been motivated and found it
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`obvious to employ a memory card for a mobile or cellular device that included a
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`SIM portion that identifies a subscriber to a network operator, such as a mobile
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`phone, as a repository in Stefik’s content distribution and access network” (PTAB
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`Decision at 16 (emphasis added)); and 2) whether one skilled in the art “would
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`have considered it at a minimum obvious for the portable data carrier (e.g.
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`electronic appliance) to communicate with Ginter’s network using a cellular
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`connection and therefore to include a subscriber identity module (SIM) portion (id.
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`at 22). As such, any testimony about what a person skilled in the art would know
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`about SIM cards in the prior art period being used for billing is outside the scope of
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`this proceeding and Dr. Katz’s declaration and therefore is irrelevant. This
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`testimony should be excluded under FRE 401 and 402.
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`Exhibit 1031 70:1 – 73:9 – This testimony relates to whether the Stefik ‘235
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`reference would exclude the use of a credit card and whether the credit card
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`number could be payment data. Petitioner cites it to allege that Dr. Katz was “not
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`sure” what a POSITA would have understood about passages of the cited prior art.
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`Petitioner’s Reply at 3. Patent Owner objected on grounds of relevance and
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`incomplete hypothetical. Even if Stefik ‘235 does not exclude the use of a credit
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`card, that does not mean that it discloses it, which is the relevant issue. Further,
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`with respect to Figure 3 transaction, the hypothetical is incomplete as to how a
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`credit card would be used if it were used in a Figure 3 transaction, even assuming
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`that it could be used. The testimony should thus be excluded under FRE 402.
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`Exhibit 1031 110:7 – 111:4 – This testimony relates to Petitioner’s question
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`about “when does payment data happen vis-à-vis the receipt of content?” and Dr.
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`Katz’s “understanding of what the differences are between the two embodiments
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`described in the ‘221 Patent, Column 23, Lines 1 through 7.” Patent Owner
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`objected to the prior on form and the latter on scope grounds. Petitioner cites the
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`testimony in a litany of items about which Dr. Katz purportedly “was ‘not sure’”.
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`Petitioner’s Reply at 22. But the first question is nonsensical because “payment
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`data” does not “happen.” The second question, about the differences between two
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`embodiments in the ‘221 Patent has not been linked to any relevant issue on which
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`Dr. Katz provided his opinion in his Declaration. Thus, cross-examination on
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`those differences was not within the scope of his direct testimony, and this
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`testimony should thus be excluded under 37 CFR 42.53(d)(5)(ii).
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`Exhibit 1031 114:3 – 116:13 – This testimony generally relates to whether
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`there was anything that would have hindered a POSITA from implementing two
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`alternative embodiments described in the ‘221 patent and whether the ‘221 Patent
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`explains how the system would need to change to switch from one embodiment to
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`the other. Patent owner objected to the scope of the questions. Petitioner cites the
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`testimony to claim that “Dr. Katz’s own testimony supports a finding that a
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`POSITA would not have been hindered from implementing either of the two
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`embodiments… and that the ‘458 Patent itself does not explain any changes
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`needed to switch the system between those two embodiments.” Petitioner’s Reply
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`at 12-13. The subject testimony should be excluded because it goes to the issue of
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`enablement, which is not an issue in this proceeding as instituted. Such questions
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`were outside the scope of this proceeding, and Dr. Katz had not been asked to
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`formulate an opinion on those subjects for his declaration. As Dr. Katz noted this
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`subject “was not something that [he] thought about before. It wasn’t part of [his]
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`declaration.” Exhibit 1031 at 116:3-4. The testimony should be excluded as not
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`being limited to the scope of the direct testimony. 37 CFR § 42.53(d)(5)(ii).
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`Exhibit 1031 124:10 – 128:11 – This testimony relates to whether certain
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`things would be an example of, or constitute, “prepurchase processing.” Patent
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`Owner objected on scope grounds. Petitioner cites the testimony to allege that “Dr.
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`Katz was … ‘not sure’ whether various payment-related disclosures in Ginter
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`would qualify as pre-purchase processing.” Petitioner’s Reply at 12. The problem,
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`however, was with the questions, not Dr. Katz’s answers. Counsel for Petitioner
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`never established a definition of what he meant by “prepurchase processing” and
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`never asked for Dr. Katz’s understanding of that term. See Exhibit 1031 190:11-19
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`where Dr. Katz indicated that he did not know what Petitioner’s counsel meant by
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`“preusage processing” and “prepurchase processing.” As such, Dr. Katz was
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`unable to answer the questions as presented. The testimony should be excluded as
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`not being limited to the scope of the direct testimony. 37 CFR § 42.53(d)(5)(ii).
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`Exhibit 1031 149:4 – 151:9 – This testimony relates to comparisons between
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`the claim language of Claim 29 and Claim 26 of the ‘598 Patent, in particular the
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`reference to “a subscriber identity module (SIM) card device” in claim 29. Patent
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`Owner objected on grounds of relevance and scope. Petitioner cites the testimony
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`to allege that Dr. Katz did not take into account differences in the claim language
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`in claim 1 of the ‘458 Patent (Petitioner’s Reply at 11), and to allege that Patent
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`Owner presented no evidence addressing the difference between a SIM portion and
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`a SIM card (id. at 16). First, the Katz deposition testimony on its face relates to the
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`‘598 Patent and Petitioner does not indicate why it is relevant to the ‘458 Patent
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`that is the subject of this proceeding. Claim 1 of the ‘458 Patent, the only claim at
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`issue here, does not have the “a subscriber identity module (SIM) card device”
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`limitation that is the subject the testimony. Second, Petitioner criticizes Dr. Katz
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`over an issue – “the difference between a SIM portion and a SIM card” – that
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`simply does not exist. Claim 1 of the ‘458 Patent claims “A portable data carrier,
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`comprising, … a subscriber identity module (SIM) portion to identify a subscriber
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`to a network operator.” The “SIM portion” refers back to the portable data carrier;
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`i.e., it is a portion of the portable data carrier. The SIM portion of the portable data
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`carrier can be a SIM card or some other discrete part of the portable data carrier
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`that acts as a SIM in the portable data carrier. The Petition alleges that “a POSITA
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`would have been motivated to employ a memory card for a mobile or cellular
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`device that included a SIM portion that identifies a subscriber to a network
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`operator… .” Petition at 49, n. 17 (emphasis added). Dr. Katz’ declaration,
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`therefore, was directed to whether the prior art showed motivation to employ
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`whole memory cards to satisfy the claim element, and not differences between a
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`SIM portion and a SIM card. As such, the deposition testimony is outside the
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`scope of Dr. Katz’s declaration and should be excluded under 37 CFR §
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`42.53(d)(5)(ii). The testimony is also irrelevant and should be excluded under
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`FRE 402.
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`Exhibit 1031 152:7 – 156:12, 158:22 – 159:7 and 159:8 – 161:22 – The
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`testimony at 152:7 – 156:12 follows from a question “is a memory address a
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`portion of a subscriber identity module.” Patent Owner objected on grounds of
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`scope. Petitioner cites this testimony as support for the position that “Dr. Katz
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`expressed no opinion about” whether “a common memory block containing only a
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`single user identifier can be a SIM portion” (Petitioner’s Reply at 1-2), then to
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`purportedly show Dr. Katz testifying that he is not sure about a “POSITA’s
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`understanding of passages of the ‘458 Patent” (id. at 3), and finally to show Dr.
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`Katz’s purported “confusion about… the meaning of the term ‘SIM portion’” (id.).
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`The remaining testimony (158:9-161:22) relates to whether “a block of memory”
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`would meet the ‘598 Patent Claim 26 requirement of “a subscriber identity module
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`(SIM) portion” and whether “a single block of memory storing only a single user
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`identification number” could satisfy limitation of Claim 26 of the ‘598 Patent “a
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`subscriber identity module (SIM) portion storing identification data to identify a
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`user of said portable data carrier to a network operator.” Patent Owner objected to
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`the scope. Petitioner cites the testimony to claim that Patent Owner “present[ed]
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`no evidence disputing that a POSITA would have found it obvious to conform the
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`identifier disclosed in the cited prior art to the well-known SIM specification”
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`(Petitioner Reply at 2), to allege that Dr. Katz contradicted himself “about the
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`meaning of the term ‘SIM portion’” (id. at 3), to claim that Patent Owner
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`“present[ed] no evidence disputing that a common memory block containing only a
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`single user identifier can be a SIM portion” (id. at 9, 10, 11); and to claim that
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`Patent Owner “present[ed] no evidence… addressing the difference between a SIM
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`portion and a SIM card” (id. at 16). First, the testimony on its face relates to Claim
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`26 of the ‘598 Patent and Petitioner does not indicate why it is relevant to Claim 1
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`of the ‘458 Patent, the subject of this proceeding. Second, Petitioner interjects
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`confusion trying to parse “a subscriber identity module (SIM) portion” by
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`introducing the concept of “a portion of a subscriber identity module.” Claim 1 of
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`the ‘458 Patent claims “[a] portable data carrier, comprising, … a subscriber
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`identity module (SIM) portion…”. The claimed portable data carrier is comprised
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`of, among other things, a SIM portion. What internal structures the SIM portion
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`could be comprised of, be it “a memory address,” “a block of memory,” or “a
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`single block of memory storing only a single user identification number” as asked
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`in the deposition is beyond the scope of the positions taken in the Petition, and
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`further is neither the subject of the claim nor the subject of this proceeding. The
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`Petition alleges that “a POSITA would have been motivated to employ a memory
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`card for a mobile or cellular device that included a SIM portion that identifies a
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`subscriber to a network operator… .” Petition at 49, n. 17 (emphasis added). Dr.
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`Katz’ declaration, therefore, was directed to whether the prior art showed
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`motivation to employ whole memory cards to satisfy the claim element, not what
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`other things undisclosed in the Petition might satisfy the claim element. As such,
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`the deposition testimony was outside the scope of Dr. Katz’ declaration and should
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`be excluded under 37 CFR § 42.53(d)(5)(ii).
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`Exhibit 1031 163:21 – 165:8 – This testimony relates to whether a person of
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`ordinary skill in the art would have known how to align the unique number
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`assigned to the repository as referenced in Stefik ‘980 patent column 13 with the
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`specified byte format of a SIM card. Patent Owner objected to the scope.
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`Petitioner cites the testimony to assert that Patent Owner “present[ed] no evidence
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`disputing that a POSITA would have found it obvious to conform the identifier
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`disclosed in the cited prior art to the well-known SIM specification” (Petitioner’s
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`Reply at 2, 10, 11), and to assert that Patent Owner “present[ed] no evidence …
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`addressing the difference between a SIM portion and a SIM card” (id. at 16).
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`Claim 1 of the ‘458 Patent claims “[a] portable data carrier, comprising, … a
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`subscriber identity module (SIM) portion…”. The claimed portable data carrier is
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`comprised of, among other things, a SIM portion. The SIM portion of the portable
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`data carrier can be a SIM card or some other discrete part of the portable data
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`carrier that acts as a SIM in the portable data carrier. But “whether a person skilled
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`in the art would have known to align the unique number assigned to the repository
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`as referenced in Stefik ‘980 patent Column 13 with the specified byte format of a
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`SIM card” is nothing but another attempt by Petitioner to parse “a subscriber
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`identity module (SIM) portion” into previously undisclosed elements The
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`composition of the SIM portion, including whether the unique number assigned to
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`the repository as referenced in Stefik ‘980 could be aligned to the specified byte
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`format of a SIM card, was not alleged in the Petition and is not the subject of this
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`proceeding. As such, the testimony is outside the scope of Dr. Katz’s declaration
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`and should be excluded under 37 CFR § 42.53(d)(5)(ii).
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`G. Exhibits 1101-1120 and 1122-1129 are Cumulative and Subject to
`Exclusion for the Reasons Cited Above
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`Exhibits 1101-1129 were filed in CBM2014-00107. CBM2014-00106 was
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`consolidated with CBM2014-00107 (PTAB Decision at 25), the PTAB ordered
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`that all further filings in the consolidated proceedings be made only in CBM2014-
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`00106 and the CBM2014-00107 be terminated (PTAB Decision at 26). Exhibits
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`1101-1120 and 1122-1129 in CBM2014-00107 are identical to Exhibits 1001-1020
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`and 1022-1029 submitted in CBM2014-00106. The PTAB Decision recognized
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`this commonality of exhibits. PTAB Decision at 2, n. 1. To the extent still in the
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`record, Patent Owner moves to exclude to Exhibits 1101-1120 and 1122-1129
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`under FRE 403 as needless cumulative evidence duplicative of Exhibits 1001-1020
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`and 1022-1029. In the event that the PTAB does not exclude Exhibits 1101-1120
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`and 1122- 1129 in their entirety as needless cumulative evidence, Patent Owner
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`moves to exclude Exhibits 1102, 1105, 1106, 1107, 1108, 1109, 1112, 1116, 1117,
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`1118, 1119, 1120, 1121, 1122, 1127, 1128, and 1129 for the reasons set forth
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`above for their corresponding Exhibits 1002, 1005, 1006, 1007, 1008, 1009, 1012,
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`1016, 1017, 1018, 1019, 1020, 1021, 1022, 1027, 1028, and 1029.
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`H. Exhibit 1121 is Cumulative and Subject to Exclusion for the
`Reasons Cited Above for Exhibit 1021
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`Exhibit 1121, the second Wechselberger Declaration, was filed in
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`CBM2014-00107 and should be excluded for the same substantive reasons set
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`forth above for Exhibit 1021: it does not state the relative evidentiary weight (e.g.,
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`substantial evidence versus preponderance of the evidence) used in arriving at his
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`conclusions; it does not sufficiently state the criteria used to assess whether one of
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`ordinary skill in the art at the time of the invention would have been motivated to
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`modify a reference or combine two references; it treats the components of the prior
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`art as if one could mix and match any and all combinations and does not address
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`sufficiently why a person of ordinary skill in the art would be motivated to make
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`specific combinations rendering the ‘458 Patent obvious; and it does not prove that
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`Mr. Wechselberger is an expert whose testimony is relevant to the issue of what is
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`taught and/or sug