`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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`PETITIONER APPLE INC.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
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`1 Case CBM2014-00107 has been consolidated with the instant proceeding.
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`CBM2014-00106
`Patent 8,033,458 B2
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`TABLE OF CONTENTS
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`The Board Should Not Exclude Exhibit 1002 ................................................. 2
`I.
`The Board Should Not Exclude Exs. 1005, 1008, 1022, or 1027-29 .............. 2
`II.
`III. The Board Should Not Exclude Exs. 1006-07, 1009, 1012, 1016-19,
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`Or 1020 ............................................................................................................ 3
`IV. The Board Should Not Exclude Exhibit 1021 ................................................. 5
`V.
`The Board Should Not Exclude Any Portions of Exhibit 1031 ...................... 8
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`CBM2014-00106
`Patent 8,033,458 B2
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`In response to Patent Owner’s (“PO”) Motion to Exclude (“Mot.”, Pap. 42),
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`Petitioner respectfully submits that the Board, sitting as a non-jury tribunal with
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`administrative expertise, is well-positioned to determine and assign appropriate
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`weight to the evidence presented here, without resorting to formal exclusion that
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`might later be held reversible error. See, e.g., S.E.C. v. Guenthner, 395 F. Supp. 2d
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`835, 842 n.3 (D. Neb. 2005); Builders Steel Co. v. Comm’r of Internal Revenue,
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`179 F.2d 377, 379 (8th Cir. 1950) (vacating Tax Court decision for exclusion of
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`competent, material evidence); Donnelly Garment Co. v. Nat’l Labor Relations
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`Bd., 123 F.2d 215, 224 (8th Cir. 1941) (NLRB’s refusal to receive testimonial evi-
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`dence was denial of due process). See also, e.g., Samuel H. Moss, Inc. v. F.T.C.,
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`148 F.2d 378, 380 (2d Cir. 1945), cert. denied, 326 U.S. 734 (1945) (“Even in
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`criminal trials to a jury it is better, nine times out of ten, to admit, than to exclude,
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`… and in such proceedings as these the only conceivable interest that can suffer by
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`admitting any evidence is the time lost, which is seldom as much as that inevitably
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`lost by idle bickering about irrelevancy or incompetence”). But even under strict
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`application of the Rules of Evidence, cf. 77 Fed. Reg. 48,612, 48,616 (Aug. 14,
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`2012) (“42.5(a) and (b) permit administrative patent judges wide latitude in admin-
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`istering the proceedings to balance the ideal of precise rules against the need for
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`flexibility to achieve reasonably fast, inexpensive, and fair proceedings”), Petition-
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`er’s evidence here is entirely proper while PO’s objections are baseless; indeed,
`1
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`CBM2014-00106
`Patent 8,033,458 B2
`they appear in various instances to be nothing but unauthorized sur-reply. See 77
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`Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A motion to exclude must explain why
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`the evidence is not admissible (e.g., relevance or hearsay) but may not be used to
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`challenge the sufficiency of the evidence to prove a particular fact.”).2
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`I.
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`The Board Should Not Exclude Exhibit 10023
`Petitioner did not rely on Ex. 1002 for “evidence of the content” of the ’458
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`patent (cf. Mot. 2), but rather to show that PO’s own characterization of the sub-
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`ject matter of the ’458 supports Petitioner’s contention—and the Board’s conclu-
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`sion—that the ’458 relates to a financial activity or transaction and is thus subject
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`to the Board’s review as a covered business method patent. See Pap. 2 at 14. PO’s
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`characterization of the ’458 in another proceeding is not found in the patent itself;
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`thus, Ex. 1002 is not cumulative of the ’458 and FRE 1004 is inapplicable. PO
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`disputed the financial nature of the ’458, see Pap. 6 at 3-9, and its highly relevant
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`admission to the contrary should not be excluded.
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`II.
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`The Board Should Not Exclude Exs. 1005, 1008, 1022, or 1027-29
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`2 All emphasis herein is added unless otherwise indicated.
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`3 Exclusion of Exs.1102-29 in consolidated CBM2014-00107, which correspond to
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`Exs.1002-29 and to which PO objects for the same reasons (Mot. 18-20), should be
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`denied for the same reasons as for Exs.1002-29. Similarly Ex. 1101 (’458 patent),
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`to which PO objects only as duplicative of Ex. 1001, should not be excluded.
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`2
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`CBM2014-00106
`Patent 8,033,458 B2
`PO’s assertion that Exs. 1005, 1008, and 1027-1029 are not cited in the
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`Wechselberger Declaration (Mot. 3) is simply wrong4: all were cited as “Materials
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`Reviewed and Relied Upon,” see Ex. 1021, App. C, and properly filed with the Pe-
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`tition. See 37 C.F.R. § 42.6(c). (Indeed, Petitioner respectfully submits PO would
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`now be objecting if Petitioner had failed to provide these cited exhibits.) To the ex-
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`tent PO’s objection is based on imaginings that Petitioner will advance at oral hear-
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`ing arguments about these documents not presented in previous papers, this is
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`baseless—Petitioner intends to comply fully with the Board’s rules (e.g., Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)), and expects PO will
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`do the same with respect to PO’s many exhibits (e.g., Exs. 2006-08, 2013, and
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`2019-21) not substantively cited or relied upon in any of PO’s submitted papers.
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`III. The Board Should Not Exclude Exs. 1006-07, 1009, 1012, 1016-19, Or
`1020
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`Contrary to PO’s assertions, Exs. 1006-07, 1009, 1012, and 1020 (“Prior Art
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`Exhibits”) are relevant and important to the Board’s obviousness analysis because
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`they are evidence of the state of the art and knowledge of a person of ordinary skill
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`in the art (“POSITA”) at the claimed priority date. E.g., In re Taylor Made Golf
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`Co., 589 F. App’x 967, 971 (Fed. Cir. 2014) (“[T]he Supreme Court and this court
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`4 Ex. 1022, cited in a parallel proceeding (CBM2014-00104), was not relied on
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`here. While exclusion of Ex.1022 is unnecessary, Petitioner would not oppose it.
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`3
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`CBM2014-00106
`Patent 8,033,458 B2
`require that, as part of the obviousness analysis, the prior art must be viewed in the
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`context of what was generally known in the art at the time of the invention.”).
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`“The knowledge of [a POSITA] is part of the store of public knowledge that must
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`be consulted when considering whether a claimed invention would have been obvi-
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`ous.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). Both the Peti-
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`tion and Wechselberger Declaration describe the Prior Art Exhibits as evidence of
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`that knowledge. See Pap. 2 at 4-12 (Overview of Field of the Claimed Invention),
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`18-19; Ex. 1021 ¶¶ 28-46 (State of the Art). And the Federal Circuit has declared
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`that “perhaps the most reliable” evidence of the knowledge of a POSITA “is doc-
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`umentary evidence consisting of prior art in the area”—precisely the evidence pre-
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`sented in the Prior Art Exhibits. Randall, 733 F.3d at 1362-63.
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`That these Prior Art Exhibits do not form the basis for the instituted grounds
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`does not, as PO contends (Mot. 4), mean they are not relevant to obviousness. To
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`the contrary, the Supreme Court and Federal Circuit mandate that such evidence be
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`considered, Taylor Made, 589 F. App’x at 971, and the Federal Circuit has criti-
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`cized the Board for considering only references recited as the basis of invalidity.
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`Randall, 733 F.3d at 1362. The Prior Art Exhibits are unquestionably relevant and
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`required for a proper obviousness analysis; there is no basis to exclude them.
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`4
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`CBM2014-00106
`Patent 8,033,458 B2
`PO’s assertion that Exs. 1016-18 are irrelevant is similarly meritless.5 As
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`with the other Prior Art Exhibits, Exs. 1016-18 are relevant and important to the
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`Board’s obviousness analysis because they provide further evidence of the state of
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`the art and a POSITA’s knowledge. See Randall, 733 F.3d at 1363. While the
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`Board did not institute review based on grounds calling out Exs. 1016-18, they
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`nonetheless establish the state of the art and provide context for the obviousness
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`inquiry, see id., and the Petition and Wechselberger Declaration specifically rely
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`on them for this purpose in their “Overview of Field of the Invention” and “State
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`of the Art” discussions, respectively. See Pap. 2 at 7, 10-11; Ex. 1021 ¶¶ 34, 40-
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`41. Again, Exs. 1016-18 are relevant to obviousness, and should not be excluded.
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`IV. The Board Should Not Exclude Exhibit 1021
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`Unable to identify any legitimate reason to exclude Exhibit 1021, PO objects
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`(1) under FRE 602 to the “sufficiency” of the opinions in the Wechselberger Dec-
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`laration, (2) without support, to Mr. Wechselberger’s qualifications as an expert,
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`and (3) to the inclusion of background state of the art information despite its man-
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`dated place in the obviousness analysis. PO is wrong on all counts.
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`First, there is no basis for PO’s objections to Mr. Wechselberger’s expert
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`testimony under FRE 602, as the rule plainly states it “does not apply to a wit-
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`5 Ex. 1019, cited in a parallel proceeding (CBM2014-00104), was not relied on
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`here. While exclusion of Ex. 1019 is unnecessary, Petitioner would not oppose it.
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`5
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`Patent 8,033,458 B2
`ness’s expert testimony under Rule 703.” Thus, PO’s FRE 602 objections to Ex.
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`1021, based on purported omission of the standard of evidence and the sufficiency
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`of the opinions, should be rejected for this reason alone. Further, PO’s purported
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`objections to Ex. 1021 for “not sufficiently stat[ing] the criteria used to assess”
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`whether, and “not address[ing] sufficiently” why, a POSITA would have been mo-
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`tivated to make specific combinations (Mot. 7) are improper challenges to the suf-
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`ficiency of the opinions presented rather than challenges to their admissibility. See
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`77 Fed. Reg. at 48,767 (Aug. 14, 2012) (“A motion to exclude must explain why
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`the evidence is not admissible (e.g., relevance or hearsay) but may not be used to
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`challenge the sufficiency of the evidence to prove a particular fact.”). In any event,
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`PO cites no authority for its proposition that to be admissible the Declaration must
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`state “whether he considered evidence tending to show that [a POSITA] would not
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`have made his proposed combination.” Mot. 7 (emph. original). And PO is simply
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`wrong in arguing Ex. 1021 does not sufficiently lay out the reasons a POSITA
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`would have been motivated to combine references: for each combination, Ex.
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`1021 specifically explains with supporting citations why a POSITA would have
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`been motivated to combine the prior art teachings. See, e.g., Ex. 1021 ¶ 50.
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`Despite the Board’s rejection of PO’s argument that the Wechselberger Dec-
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`laration should be disregarded for not reciting the evidentiary standard, PO rear-
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`gues it here for the third time. Mot. 6-7; Pap. 8 at 4 n.11; see Pap. 6 at 17; Pap. 23
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`6
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`CBM2014-00106
`Patent 8,033,458 B2
`at 5-8. But, as the Board properly found, the purported omission is not “evidence
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`that Mr. Wechselberger used incorrect criteria, failed to consider evidence, or is
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`not an expert in the appropriate field.” Pap. 8 at 4 n.11. Indeed, experts like Mr.
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`Wechselberger—who are, after all, technologists, not lawyers—are not required to
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`“recite or apply the ‘preponderance of the evidence’ standard expressly in order for
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`the expert testimony to be accorded weight. Rather, it is within [the Board’s] dis-
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`cretion to assign the appropriate weight to be accorded to evidence based on
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`whether the expert testimony discloses the underlying facts or data on which the
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`opinion is based.” See IPR2013-00172, Pap. 50 at 42.
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`Equally baseless is PO’s throw-away argument (Mot. 8) that Mr. Wechsel-
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`berger does not qualify as an expert. Tellingly, PO offers no evidence disputing
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`that Mr. Wechselberger is a qualified expert; and, in contrast to the qualifications
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`of the “expert” Smartflash proffered, Mr. Wechselberger’s CV and Declaration
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`prove that he qualifies as an expert under both parties’ proposed definitions of a
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`POSITA. For example, even a cursory review of Mr. Wechselberger’s CV reveals
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`that he “had a bachelor’s degree in electrical engineering” by 1999. Ex. 2029 ¶ 9;
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`Ex. 1021 at 43. And the Declaration details in several paragraphs his decades of
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`experience in relevant industries. Ex. 1021 ¶¶ 3-12. Indeed, at trial in the litiga-
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`tion, PO had no objection to Petitioner’s offer of Mr. Wechselberger as an expert
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`in the field of the alleged invention. Ex. 1034 62:12-18. As PO then acknowl-
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`7
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`Patent 8,033,458 B2
`edged, Mr. Wechselberger is a qualified expert and should not be excluded.
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`PO also seeks to exclude the portions of the Wechselberger Declaration that
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`cite prior art to describe the state of the art and provide context for his invalidity
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`opinions. As detailed in § III, supra, the Declaration’s description of the back-
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`ground and knowledge of a POSITA at the relevant time is important and relevant
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`to the question of obviousness. See, e.g., Randall, 733 F.3d at 1362. For the same
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`reasons the Prior Art Exhibits and Ex.1016-18 are relevant, expert descriptions and
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`analyses of those exhibits are relevant under FRE 401 and should not be excluded.
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`V.
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`The Board Should Not Exclude Any Portions of Exhibit 1031
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`PO complains about portions of Dr. Katz’s deposition testimony highlight-
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`ing that the opinions in his declaration (Ex. 2029) lack both support and credibility.
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`But many of these objections appear for the first time in PO’s motion, and are thus
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`waived: Rule 42.64(a) required counsel to object to each and every question it con-
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`sidered improper. See, e.g., CBM2014-00008, Pap. 48 (Aug. 12, 2014) (“Patent
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`Owner objected to many, but not all, … questions . . . , indicating its belief that at
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`least some of the questioning was proper.” (citing 42.64(a)). And even on the oc-
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`casions PO actually made them, its objections do not come close to establishing
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`inadmissibility of any evidence. PO simply seeks to throw out highly relevant tes-
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`timony that is unfavorable to PO, and its motion is at best an improper surreply
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`aimed at rehabilitating PO’s unqualified witness.
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`8
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`CBM2014-00106
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`Ex. 1031 36:10-37:11. While PO suggests it objected to this “line of ques-
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`tioning” based on relevance and scope (Mot. 9), the record reveals PO made no ob-
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`jection to the question and answer at 37:6-11 concerning whether a POSITA would
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`have understood that access to stored data could be restricted based on payment
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`validation; thus, any such objection was waived. See 37 C.F.R. § 42.64(a).
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`Moreover, both this exchange and the preceding one at 36:10-37:5 (to which
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`PO did object on “scope” and “relevance” grounds), concerning restricting access
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`based on whether or how much payment had been made, address concepts funda-
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`mental to the ’458 patent and Dr. Katz’s opinions. See, e.g., Ex. 1001 1:29-31,
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`2:7-11; Ex. 2029 ¶ 27. The prior art, like the ’458, focused on minimizing unau-
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`thorized content use to ensure content owners are paid. See, e.g., Ex. 1014 1:11-
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`24, 6:62-7:5; Ex. 1015 2:59-66, 3:21-32. The prior art addressed unauthorized use
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`by requiring that conditions, including fee conditions, be met before content is pro-
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`vided to a user. See, e.g., Ex. 1014 Fig. 18, 31:30-33, 32:19-26. Dr. Katz himself
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`confirmed, in testimony to which PO does not object, that a POSITA would have
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`“understood that payment validation could be made a condition of providing con-
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`tent that was electronically sold.” Ex.1031 27:4-9. Yet his Declaration draws a
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`distinction between “current purchase” and “post-usage” information and opines
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`this difference would, e.g., require a change in prior art Ginter’s principle of opera-
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`tion. Ex. 2029 ¶ 27. Dr. Katz’s inability to answer any questions about the fun-
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`9
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`CBM2014-00106
`Patent 8,033,458 B2
`damental concept of conditioning access based on payment is directly relevant to
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`his lack of understanding of the concepts underlying the ’458 patent and his base-
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`less criticisms of the prior art.
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`Ex. 1031 44:18-46:1. This testimony addressing a POSITA’s understanding
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`of SIM cards—known technology that Dr. Katz references throughout his declara-
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`tion to differentiate the claims—is relevant to exposing the errors in Dr. Katz’s un-
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`supported opinions. PO characterizes this testimony as relating to “whether [a
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`POSITA] would have understood that SIM cards could be used for billing purpos-
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`es” (Mot. 10), and contends PO objected on relevance. But PO objected to only
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`two of the eight questions PO now seeks to exclude, and raised no objection to the
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`question and answer that match verbatim PO’s characterization of this testimony.
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`Ex. 1031 45:1-5. Any objection to these exchanges has been waived. See 37
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`C.F.R. § 42.64(a). Further, PO’s arguments attempt to improperly narrow the is-
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`sues here. Mot. 10-11. A POSITA’s understanding of a known SIM card and its
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`uses is relevant to establishing the state of the art surrounding the claimed element
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`about which Dr. Katz opines. Taylor Made, 589 F. App’x at 971. Particularly, for
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`claim 1, which combines payment components (e.g., “payment data memory”)
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`with SIM components (e.g. a “SIM portion”), a POSITA’s understanding of using
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`SIM cards for payment and billing is relevant. Dr. Katz was unable to answer any
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`questions regarding a POSITA’s baseline knowledge of SIM card uses, and thus is
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`10
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`CBM2014-00106
`Patent 8,033,458 B2
`unable to provide any support for his declaration opinions that it would not have
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`been obvious to use a SIM, or that a SIM would not be compatible with prior art
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`devices. Ex. 2029 ¶¶ 15-19, 22-25.
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`Ex. 1031 70:1-73:9. PO complains of Dr. Katz’s testimony about disclo-
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`sures in Stefik ’235 (Ex. 1013), even though these are, again, directly addressed in
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`his declaration. See, e.g., Ex. 2029 ¶ 18. And, almost all of PO’s current com-
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`plaints are waived: PO objected to only three of the fourteen questions it now seeks
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`to exclude, and did not even begin objecting until after the first nine questions. Ex.
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`1031 70:1-73:9.
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`Further, Petitioner’s questions are directly relevant to Dr. Katz’s erroneous
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`opinions regarding Stefik ’235. In his Declaration, Dr. Katz criticized the Petition
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`for not explaining how a memory card including a SIM portion “would be able to
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`perform the registration process described with respect to Figure 3 of Stefik ‘235”
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`to opine that the ’458 patent’s claim 1 is not obvious in view of Stefik ’235 and
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`Stefik ’980 (Ex. 1014). Ex. 2029 ¶¶ 18-19. Every one of Petitioner’s questions
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`here was directed to that same figure and description, see Ex. 1031 70:1-73:9,
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`which discloses “activat[ing] a credit account” before carrying out a repository
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`transaction. Ex. 1014 6:60-65. Petitioner’s questioning tested Dr. Katz’s opinions
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`regarding a POSITA’s understanding of that transaction, and Dr. Katz was unable
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`to provide any understanding to support his criticisms. PO’s attempt to rehabili-
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`11
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`tate him by downplaying his failure (claiming “[e]ven if Stefik ’235 does not ex-
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`clude the use of a credit card, that does not mean that it discloses it” (Mot. 11)),
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`cannot hide its relevance to Petitioner’s showing of obviousness.
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`Ex. 1031 110:7-111:4. PO objects to two questions in this passage,6 both
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`concerning alternate embodiments described in the ’458 patent, neither of which
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`should be excluded. PO moves to exclude the first question because of an alleged
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`issue in the wording “when does that payment data happen,” but ignores the con-
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`text in which the question was asked. Ex. 1013 109:14-110:6 (addressing when
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`verification of payment data happens in embodiments disclosed in the ’458 patent).
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`And in any event, Dr. Katz confirmed he was not sure of the order of verification
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`of payment data and receipt of content in the relevant passage of the ’458 patent in
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`response to a question to which PO raised no objection. Ex. 1031 110:13-16.
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`PO also moves to exclude a second question regarding differences between
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`two ’458 patent embodiments (Ex. 1001 23:2-7)—one in which payment is veri-
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`fied “concurrently with the content access and download process” and one in
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`which payment data is verified “at some later stage”—based on the untenable posi-
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`tion that these differences are not linked to any relevant issue on which Dr. Katz
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`opined. Mot. 12. But, as explained above, ensuring payment for content is funda-
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`6 Any attempt to exclude other questions and answers in this passage (e.g., 110:10-
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`16) would fail as a result of waiver, in addition to the reasons below.
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`12
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`mental to the ’458 patent. The claims of the ’458 patent recite “payment data
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`memory” and “code to output payment data from the payment data memory”
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`(claim 1), and Dr. Katz draws a purported distinction from the prior art based on
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`the sequence of payment and usage. Ex. 2029 ¶ 27. The ’458 patent discloses an
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`embodiment in which payment is validated before content is provided and an em-
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`bodiment in which payment validation takes place at a later time, with no explana-
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`tion of differences between those embodiments or how a system implementer
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`would change from one to another. Ex. 1001 23:2-7. No further explanation was
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`needed, as the distinctions Dr. Katz attempts to use in his Declaration to distin-
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`guish the prior art were well understood by a POSITA. Dr. Katz’s inability to dis-
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`cuss any differences between these embodiments shows he cannot support any
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`contrary conclusion.
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`Ex. 1031 114:3-116:13. Petitioner moves to exclude testimony regarding a
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`POSITA’s ability to implement alternate ’458 patent embodiments (Ex. 1001 23:2-
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`7)—testimony that again squarely addresses the fundamental concept of paying for
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`content. PO claims this questioning is limited to enablement to argue such ques-
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`tions are outside the scope of this proceeding. Mot. 12; Ex. 1031 116:3-7. But
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`these questions are not so limited: as discussed above, the ’458 provided no expla-
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`nation of how a system would need to be altered from validating payment at one
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`time to validating payment at a different time, underscoring that a POSITA already
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`13
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`CBM2014-00106
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`knew how to implement systems in which payment was collected both before and
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`after providing content, but Dr. Katz had not even considered whether the ’458
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`provided any discussion of how a system would need to be changed from one ar-
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`rangement to another. Ex. 1031 115:20-116:7. That Dr. Katz had not even con-
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`sidered differences between these embodiments, let alone formed an opinion re-
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`garding a POSITA’s ability to implement them, reveals the weakness of his opin-
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`ions about what a POSITA would have understood from the prior art, and this tes-
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`timony should not be excluded.
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`Ex. 1031 124:10-128:11. PO’s objections to this examination regarding
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`“prepurchase processing”—a term used in the Katz Declaration—also have no
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`merit. As an initial matter, PO objected to only half of the six questions it now
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`seeks to exclude on scope grounds (Mot. 13). Ex. 1031 126:1-127:9. PO did not
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`object to the remaining three questions on whether “prepayments,” “realtime elec-
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`tronic debits from bank accounts,” and “VDE node currency token deposit ac-
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`counts” disclosed in Ginter are examples of “prepurchase processing,” id. 127:10-
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`128:11, and any such objection is waived. See 37 C.F.R. 42.64(a).
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`PO’s argument for exclusion of this testimony undermines Dr. Katz’s credi-
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`bility almost as much as the testimony itself does. See Pap. 39 at 4-10 (citing Dr.
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`Katz’s testimony to support Motion to Exclude his opinions). PO criticizes Peti-
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`tioner for “never establish[ing] a definition of what he meant by ‘prepurchase pro-
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`14
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`CBM2014-00106
`Patent 8,033,458 B2
`cessing’ and never ask[ing] for Dr. Katz’s understanding of that term” (Mot. 13).
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`
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`But as PO points out, Dr. Katz testified he did not know what the term “prepur-
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`chase processing” meant (Mot. 13; see also Ex. 1031 190:11-19), even though Dr.
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`Katz himself used that very term in his declaration to draw purported differences
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`between the claims and disclosures in Ginter. Ex. 2029 ¶ 27 (“[T]o change from
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`post-usage tracking to pre-purchase processing would change the principle upon
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`which Ginter works, which I understand indicates nonobviousness.”). Ginter dis-
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`closes different payment methods, including the prepayment, real-time debit, and
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`credit about which Dr. Katz was asked. A POSITA would have been fully capable
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`of using those payment methods to confirm payment either before or after provid-
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`ing content to a user, despite Dr. Katz’s unsupported opinion that this would fun-
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`damentally change Ginter’s principle of operation. In a desperate attempt to ex-
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`clude testimony that shows that Declaration opinion is wholly unreliable, PO in-
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`credibly criticizes Petitioner for not defining the very term used by PO’s own ex-
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`pert to characterize the supposedly patentable difference.
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`Ex. 1031 149:4-151:9. Dr. Katz’s interpretation of “SIM portion” and dif-
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`ferences in claim terms used in the ’598 and ’458 patents, to which PO objects un-
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`der the guise of challenging admissibility, is clearly relevant testimony that high-
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`lights the flaws in Dr. Katz’s analysis of the “SIM portion” recited in claim 1.
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`First, PO moves to exclude on relevance and scope grounds despite objecting to
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`15
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`CBM2014-00106
`Patent 8,033,458 B2
`only two of the thirteen questions covered by this citation at the deposition; objec-
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`
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`tions to the remaining questions have been waived. See 37 C.F.R. 42.64(a). PO
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`then alleges this testimony relates only to the ’598, accusing Petitioner of not indi-
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`cating why it is relevant to the ’458. Mot. 13-14. This ignores that (1) the same
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`exact recitation of “SIM portion” appears in both ’458 claim 1 and ’598 claim 26
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`and (2) Dr. Katz confirmed in a preceding question that he did not consider any
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`differences between the same “SIM portion” recited in ’458 claim 1 as in ’598
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`claim 26 and the “SIM card device” in ’598 claim 29 (Ex. 1031 147:14-18).
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`PO goes on to spend almost a page arguing, in an improper surreply, what a
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`“SIM portion” is and why differences in claim terms do not matter; these are ar-
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`guments that the Board should reject as both unauthorized and meritless. Though
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`PO alleges that the difference between a “SIM portion” and a “SIM card” “simply
`
`does not exist” (Mot. 14), the “SIM card device” recited in claim 29 of the ’598 pa-
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`tent cannot be read into claim 1 of the ’458 patent, which recites only a “SIM por-
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`tion.” “It is settled law that when a patent claim does not contain a certain limita-
`
`tion and another claim does, that limitation cannot be read into the former claim in
`
`determining either validity or infringement.” SRI Int'l v. Matsushita Elec. Corp. of
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`Am., 775 F.2d 1107, 1122 (Fed. Cir. 1985). PO’s argument that a “SIM portion”
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`refers back to a portion of the portable data carrier and “can be a SIM card or some
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`other discrete part of the portable data carrier that acts as a SIM” (Mot. 14) is a be-
`
`
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`16
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`CBM2014-00106
`Patent 8,033,458 B2
`lated attempt to improperly construe that term and differentiate it from the prior
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`
`
`
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`art. PO’s own characterization of the issue, however, highlights the flaws in the
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`approach PO and Dr. Katz have taken. Petitioner has shown that both Ginter and
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`Stefik disclosed devices that include the recited “SIM portion”—Stefik discloses
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`this element in the repository identifiers (see Ex. 1013 13:51-57) and Ginter dis-
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`closes it in appliance identifiers (see Ex. 1015 229:13-18). See Pap. 2 at 49; see
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`also CBM2014-00107, Pap. 2 at 57-60. And Petitioner has also shown that, not-
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`withstanding these explicit prior art disclosures, a POSITA would also have found
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`it obvious to incorporate a SIM card, or a SIM portion, in Ginter or Stefik. See
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`Pap. 2 at 49; see also CBM2014-00107, Pap. 2 at 57-60. As PO indicates, PO’s
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`arguments and Dr. Katz’s declaration are directed to only the question of “whether
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`the prior art showed motivation to employ whole memory cards to satisfy the claim
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`element.” Mot. 14 (emph. original). Dr. Katz’s opinions fail to address the fact
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`that the prior art devices themselves, with the device identifiers in Stefik and
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`Ginter, meet the claimed “SIM portion” without requiring incorporation of a SIM
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`card. Dr. Katz’s confirmation that he had not even considered the difference be-
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`tween a “SIM card” and a “SIM portion” is certainly relevant—it highlights the
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`flaws in his opinions regarding the obviousness of the claims and their actual limi-
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`tations, and his inability to rebut Petitioner’s showing of invalidity.
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`Ex. 1031 152:7-156:12, 158:2-159:7, and 159:8-161:22. This portion of
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`17
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`CBM2014-00106
`Patent 8,033,458 B2
`testimony further exploring whether components taught by the prior art would
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`
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`meet the “SIM portion” recited in claim 1 is highly relevant and should not be ex-
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`cluded: Dr. Katz has no rebuttal to Petitioner’s showing that—contrary to his Dec-
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`laration opinion (Ex. 2029 ¶¶ 16-19, 22-25)—the prior art discloses this element.
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`PO’s repeated suggestion that this testimony regarding the claim differentiation re-
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`quired by claim 26 of the ’598 patent is somehow irrelevant again ignores that (1)
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`the same “SIM portion” is recited in challenged claim 1 of the ’458 patent, and (2)
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`Dr. Katz confirmed he has not assessed any difference in the claim terms used in
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`these two patents. See Ex. 1001 cl. 1; Ex. 1031 147:14-18.
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`PO’s arguments to exclude this testimony further highlight the problem with
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`PO’s position: neither PO nor its expert has any credible position regarding wheth-
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`er disclosures in the prior art satisfy the “SIM portion” actually claimed. Instead,
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`Dr. Katz’s Declaration was directed only to “whether the prior art showed motiva-
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`tion to employ whole memory cards to satisfy the claim element, not what other
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`things undisclosed in the Petition might satisfy the claim element.” Mot. 17
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`(emph. original). The Petition, however, pointed to specific disclosures in the prior
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`art as disclosing this element and alleged that incorporating a memory card with a
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`SIM portion would have been obvious. Pap. 2 at 49 (“Stefik discloses a portion of
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`its system (e.g., unique number assigned to a repository, such as a DocuCard; re-
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`pository identifier) that identifies a subscriber device (e.g., is unique for each re-
`
`
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`18
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`CBM2014-00106
`Patent 8,033,458 B2
`pository) to a network operator (e.g., another repository or a server; master reposi-
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`tory; authorization repository).”) (citing Ex. 1014 13:51-57); see also CBM2014-
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`00107, Pap. 2 at 59 (“Ginter discloses a portion of the portable data carrier storing
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`information uniquely identifying a subscriber to identify the subscriber to a net-
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`work operator (e.g., external object repository).”) (citing Ex. 1015 229:13-18).
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`These disclosures are not “other things undisclosed in the Petition” (Mot. 17) as
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`PO suggests, but rather are the disclosures that Petitioner cited in establishing that
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`this limitation is taught by the prior art. Petitioner’s questions regarding memories
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`storing unique identifiers test Dr. Katz’s allegations that the incorporation of a
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`“SIM portion” in the claimed devices would not have been obvious—a test he
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`failed in his testimony. The fact that Dr. Katz had not even considered and is not
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`sure whether these prior art memories could be a “SIM portion” as claimed, and
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`about which he opined (Ex. 2029 ¶¶ 15-19, 22-25), are certainly not beyond the
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`scope of this proceeding (Cf. Mot. 16-17). Rather, this testimony shows that Dr.
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`Katz’s nonobviousness conclusions (e.g., Ex. 2029 ¶¶ 20, 28) are wholly unsup-
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`ported, and that he failed to properly analyze the prior art to determine if this limi-
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`tation is disclosed.
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