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 APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH, LLC’S EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting in
`
`a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits the
`
`following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”) Exhibits
`
`2006, 2007, 2008, 2013, 2014, 2015, 2016, 2017, 2018, 2019, 2020, 2021, 2025, 2026,
`
`2027, and 2029, and any reference thereto/reliance thereon, without limitation.
`
`Petitioner’s objections below apply the Federal Rules of Evidence (“F.R.E.”) as
`
`required by 37 C.F.R § 42.62.
`
`
`
`1 Case CBM2014-00107 has been consolidated with the instant proceeding.
`
`Apple Exhibit 1033
`Apple Inc. v. Smartflash LLC
`CBM2014-00106
`Page 00001
`
`
`______________________
`
`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 APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH, LLC’S EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting in
`
`a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits the
`
`following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”) Exhibits
`
`2006, 2007, 2008, 2013, 2014, 2015, 2016, 2017, 2018, 2019, 2020, 2021, 2025, 2026,
`
`2027, and 2029, and any reference thereto/reliance thereon, without limitation.
`
`Petitioner’s objections below apply the Federal Rules of Evidence (“F.R.E.”) as
`
`required by 37 C.F.R § 42.62.
`
`
`
`1 Case CBM2014-00107 has been consolidated with the instant proceeding.
`
`Apple Exhibit 1033
`Apple Inc. v. Smartflash LLC
`CBM2014-00106
`Page 00001
`
`
`
`CBM2014-00106
`Patent 8,033,458 B2
`
`
`
`
`
`
`These objections address evidentiary deficiencies in the new material submitted
`
`by Patent Owner on February 27, 2015.
`
`The following objections apply to Exhibits 2006, 2007, 2008, 2013, 2014, 2015,
`
`2016, 2017, 2018, 2019, 2020, 2021, 2025, 2026, 2027, and 2029 as they are actually
`
`presented by Patent Owner, in the context of Patent Owner’s February 27, 2015
`
`Patent Owner’s Response to Petition (Paper 23) and not in the context of any other
`
`substantive argument on the merits of the instituted grounds in this proceeding.
`
`Petitioner expressly objects to any other purported use of these Exhibits, including as
`
`substantive evidence in this proceeding, which would be untimely and improper under
`
`the applicable rules, and Petitioner expressly asserts, reserves and does not waive any
`
`other objections that would be applicable in such a context.
`
`I. Objections to Exhibits 2006, 2007, 2008, 2013, 2019, 2020, and 2021, And
`Any Reference to/Reliance Thereon
`
`Evidence objected to: Exhibits 2006 (“US Patent No. 4,531,020”), 2007 (“In-
`
`App Purchase Programming Guide – 2012”), 2008 (“In-App Purchase Programming
`
`Guide – 2013”), 2013 (“Receipt Validation Programming Guide (9/18/2013)”), 2019
`
`(“US Patent Publication No. 2003/0120541”), 2020 (“File History 10/028,013”), and
`
`2021 (“Wechselberger Deposition Notes”).
`
`Grounds for objection: F.R.E. 901 (“Authenticating or Identifying Evidence”);
`
`F.R.E. 1002 (“Requirement of the Original”); F.R.E. 1003 (“Admissibility of
`
`Duplicates”); F.R.E. 401 (“Test for Relevant Evidence”); F.R.E. 402 (“General
`
`
`
`2
`
`Page 00002
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`CBM2014-00106
`Patent 8,033,458 B2
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`Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding Relevant Evidence for
`
`
`
`
`
`Prejudice, Confusion, Waste of Time, or Other Reasons”); and 37 C.F.R. § 42.61
`
`(“Admissibility”).
`
`Apple objects to the use of Exhibits 2006, 2007, 2008, 2013, 2019, 2020, and
`
`2021, under F.R.E. 901, 1002, 1003, and 37 C.F.R. § 42.61 because Patent Owner fails
`
`to provide the authentication required for these documents.
`
`Apple further objects to the use of Exhibits 2006, 2007, 2008, 2013, 2019,
`
`2020, and 2021, under F.R.E. 401, 402, and 403, and 37 C.F.R. § 42.61 because
`
`neither Patent Owner’s Response nor the Declaration of Jonathan Katz, Ph.D. in
`
`support of Patent Owner’s Response to Petition substantively cites to any of these
`
`documents. Accordingly, these Exhibits do not appear to make any fact of
`
`consequence in determining this action more or less probable than it would be
`
`without them and are thus irrelevant and not admissible (F.R.E. 401, 402); permitting
`
`reference to/reliance on these documents in any future submissions of Patent Owner
`
`would also be impermissible, misleading, irrelevant, and unfairly prejudicial to
`
`Petitioner (F.R.E. 402, 403); and to the extent Patent Owner attempts to rely on or
`
`submit these aforementioned Exhibits in the future as evidence in support of new
`
`substantive positions, doing so would be untimely, in violation of the applicable rules
`
`governing this proceeding, and unfairly prejudicial to Apple (F.R.E. 403).
`
`II. Objections to Exhibit 2025, And Any Reference to/Reliance Thereon
`
`
`
`
`3
`
`Page 00003
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`CBM2014-00106
`Patent 8,033,458 B2
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`Evidence objected to: Exhibits 2025 (“Wechselberger Deposition Transcript,
`
`December 10, 2014 - December 11, 2014”).
`
`Grounds for objection: 37 C.F.R. § 42.61 (“Admissibility”); 37 C.F.R. § 42.64
`
`(“Objection; Motion to Exclude; Motion in Limine”); and 37 C.F.R. § 42.53(d)(5)(ii)
`
`(“Scope and content”).
`
`Exhibit 2025 appears to be the compiled transcript from the deposition of
`
`Anthony Wechselberger, taken in this action on December 10 and 11, 2014. Apple
`
`hereby expressly repeats and incorporates by reference all of its objections stated on
`
`the record in that deposition, and affirmatively maintains all such objections.
`
`Apple further objects to pp. 364-3842 of Exhibit 2025, which is the subject of
`
`Apple’s Motion to Strike Portions of the Deposition Transcript of Anthony
`
`Wechselberger Concerning Petitioner’s Products and For Costs. As further detailed
`
`in Apple’s Motion to Strike (Paper 20), this portion of the deposition transcript
`
`involved questioning by Patent Owner’s counsel that was outside the scope of Mr.
`
`Wechselberger’s declaration—including questions and answers about the operation of
`
`Apple’s products and related secondary considerations—in violation of 37 C.F.R. §
`
`42.53(d)(5)(ii). See also 37 C.F.R. § 42.61; 37 C.F.R. § 42.64.
`
`2 These page numbers refer to those found at the bottom of each page of Exhibit
`
`2025, as assigned by Smartflash. Pages 364-384 correspond to 358:1-378:4 in the
`
`original 12/11/2014 transcript of the deposition of Mr. Wechselberger.
`
`
`
`4
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`Page 00004
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`CBM2014-00106
`Patent 8,033,458 B2
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`42.53(d)(5)(ii).
`
`
`
`
`
`III. Objections to Exhibits 2014, 2015, 2016, 2017, 2018, 2026, and 2027, And
`Any Reference to/Reliance Thereon
`Evidence objected to: Exhibits 2014 (“iTunes Store Sets New Record with 25
`
`Billion Songs Sold”), 2015 (“App Store Sales Top $10 Billion in 2013”), 2016 (“App
`
`Store Tops 40 Billion Downloads with Almost Half in 2012”), 2017 (“Apple’s App
`
`Store Marks Historic 50 Billionth Download”), 2018 (“First Weekend iPhone Sales
`
`Top 10 Million, Set New Record”), 2026 (“In-App Purchase Programming Guide
`
`(10/22/2013)”), and 2027 (“Receipt Validation Programming Guide (11/18/2014)”).
`
`Grounds for objection: F.R.E. 901 (“Authenticating or Identifying Evidence”);
`
`F.R.E. 1002 (“Requirement of the Original”); F.R.E. 1003 (“Admissibility of
`
`Duplicates”); F.R.E. 401 (“Test for Relevant Evidence”); F.R.E. 402 (“General
`
`Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding Relevant Evidence for
`
`Prejudice, Confusion, Waste of Time, or Other Reasons”); and 37 C.F.R. § 42.61
`
`(“Admissibility”).
`
`
`
`Exhibit 2035, titled “Declaration of Emily E. Toohey In Support Of Patent
`
`Owner’s Response,” asserts in paragraphs 3 through 9 that Exhibits 2014, 2015, 2016,
`
`2017, 2018, 2026, and 2027 are “true and correct” copies of materials from Apple’s
`
`website. However, Exhibit 2035 provides no indication of the date on which any of
`
`these exhibits are purported to be “true and correct” copies and/or the specific
`
`source or location of these exhibits or and no evidence has been provided to
`
`
`
`5
`
`Page 00005
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`CBM2014-00106
`Patent 8,033,458 B2
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`authenticate these materials, in violation of, inter alia, F.R.E. 901. See also F.R.E. 901,
`
`
`
`
`
`1002, 1003, and 37 C.F.R. § 42.61.
`
`Apple further objects to the use of Exhibits 2014, 2015, 2016, 2017, 2018, 2026,
`
`and 2027, under F.R.E. 401, 402, and 403, and 37 C.F.R. § 42.61 because neither
`
`Patent Owner’s Response nor the Declaration of Jonathan Katz, Ph.D. in support of
`
`Patent Owner’s Response to Petition substantively cites to any of these documents.
`
`Accordingly, these Exhibits do not appear to make any fact of consequence in
`
`determining this action more or less probable than it would be without them and are
`
`thus irrelevant and not admissible (F.R.E. 401, 402); permitting reference to/reliance
`
`on these documents in any future submissions of Patent Owner would also be
`
`impermissible, misleading, irrelevant, and unfairly prejudicial to Petitioner (F.R.E. 402,
`
`403); and to the extent Patent Owner attempts to rely on or submit these
`
`aforementioned Exhibits in the future as evidence in support of new substantive
`
`positions, doing so would be untimely, in violation of the applicable rules governing
`
`this proceeding, and unfairly prejudicial to Apple (F.R.E. 403).
`
`IV. Objections to Exhibit 2029, And Any Reference to/Reliance Thereon
`
`Evidence objected to: Exhibit 2029 (“Katz Declaration 106”).
`
`Grounds for objection: F.R.E. 702 (“Testimony by Expert Witnesses”); F.R.E.
`
`401 (“Test for Relevant Evidence”); F.R.E. 402 (“General Admissibility of Relevant
`
`
`
`6
`
`Page 00006
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`
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`CBM2014-00106
`Patent 8,033,458 B2
`
`Evidence”); F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion,
`
`
`
`
`
`Waste of Time, or Other Reasons”).
`
`Apple objects to the use of Exhibit 2029 under F.R.E. 702. Exhibit 2029 is the
`
`Declaration of Jonathan Katz Ph.D. in support of Patent Owner’s Response to
`
`Petition. Exhibit 2029 purports to provide expert testimony in this matter, but fails to
`
`establish that Dr. Katz was a person of ordinary skill at the relevant time. Because he
`
`was not a person of ordinary skill at the relevant time period, his testimony would not
`
`help the trier of fact under F.R.E. 702. Dr. Katz provides the following definition of
`
`one of ordinary skill in the art:
`
`I believe that one of ordinary skill in the art would have had a bachelor’s degree
`
`in electrical engineering or its equivalent, or at least 5 years of experience in
`
`manufacturing or engineering, with significant exposure to the digital content
`
`distribution and/or ecommerce industries. See Ex. 2029 at ¶ 9.
`
`Dr. Katz also states that he would “qualify as an expert in the area of data storage and
`
`access systems such that I am qualified to opine on what those of ordinary skill in
`
`the art would have understood at the time of the filing of the patent and what
`
`he/she would or would not have been motivated to do.” See Ex. 2029 at ¶ 10
`
`(emphasis added). Yet, according to his CV (Appendix A of Ex. 2029), as of
`
`Smartflash’s claimed priority date of October 25, 1999, Dr. Katz’s only degrees were
`
`in Chemistry and Mathematics—not “electrical engineering or its equivalent.” Nor
`
`
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`7
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`Page 00007
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`CBM2014-00106
`Patent 8,033,458 B2
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`does his CV indicate that he had the alternative “at least 5 years of experience in
`
`
`
`
`
`manufacturing or engineering, with significant exposure to the digital content
`
`distribution and/or ecommerce industries” by Smartflash’s claimed priority date of
`
`October 25, 1999. Therefore, even under his own formulation of one of skill in the
`
`art, Dr. Katz would not have been one of skill in the art as of Smartflash’s claimed
`
`priority date of October 25, 1999. Dr. Katz also fails to meet the definition of the
`
`level of ordinary skill set forth by Apple as of the claimed priority date. Accordingly,
`
`Exhibit 2029 is irrelevant and inadmissible (F.R.E. 401, 402). Further, permitting
`
`reference to or reliance on testimony of Dr. Katz in the Response or other
`
`submissions of Patent Owner would also be impermissible, misleading, irrelevant, and
`
`unfairly prejudicial to Petitioner (F.R.E. 402, 403).
`
`Respectfully submitted,
`
`
`
`
`
`
`
`March 6, 2015
`
`
`
`
`
`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Reg. No. 47,414
`ROPES & GRAY LLP
`One Metro Center, 700 12th St. – Ste. 900
`Washington, DC 20005-3948
`P: 202-508-4606 / F: 202-383-8371
`steven.baughman@ropesgray.com
`
`
`
`
`Ching-Lee Fukuda (Backup Counsel)
`Reg. No. 44,334
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036
`P: 212-596-9336 /F: 212-596-9000
`ching-lee.fukuda@ropesgray.com
`
`Mailing address for all PTAB correspondence: ROPES & GRAY LLP
`IPRM – Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600
`
`Attorneys for Petitioner Apple Inc.
`
`
`
`8
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`Page 00008
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`CBM2014-00106
`Patent 8,033,458 B2
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing PETITIONER APPLE
`
`INC.’S OBJECTIONS TO PATENT OWNER SMARTFLASH, LLC’S EXHIBITS
`
`was served on March 6, 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 Raymond
`
`ROPES & GRAY LLP
`
`
`
`9
`
`Page 00009
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`
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