`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2014-001061
`Patent 8,033,458 B2
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
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`
`
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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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`
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`The Board Should Exclude Exhibit 1002 .............................................. 1
`B.
`The Board Should Exclude Exhibits 1005, 1008, 1022, and 1027 -
`1029 ....................................................................................................... 2
`The Board Should Exclude Exhibits 1006, 1007, 1009, 1012, and
`1016- 1020 ............................................................................................. 2
`The Board Should Exclude Exhibit 1021 .............................................. 3
`D.
`The Board Should Exclude Requested Portions of Exhibit 1031 ......... 3
`E.
`The Board Should Exclude Exhibits 1101-1129 ................................... 5
`F.
`III. CONCLUSION ................................................................................................ 5
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`
`C.
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`i
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`Case CBM2014-00106
`Patent 8,033,458 B2
`I.
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`INTRODUCTION
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`Patent Owner understands 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 in this trial, without resorting to formal exclusion
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`that might later be held reversible error.” Liberty Mutual Insurance Co. v.
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`Progressive Casualty Insurance Co., CBM2012-00002, Paper 66, Final Written
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`Decision (PTAB January 23, 2014)(citing S.E.C. v. Guenthner, 395 F. Supp. 2d
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`835, 842 n.3 (D. Neb. 2005)). At the same time, the Federal Rules of Evidence
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`apply (37 CFR § 42.62(a)) and it is within the Board’s authority to manage the
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`record by ruling on the admissibility of evidence based on the trial as instituted so
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`that in the event of an appeal under 35 U.S.C. § 142, a proper record exists that can
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`be transmitted to the United States Court of Appeals for the Federal Circuit
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`pursuant to 35 U.S.C. § 143.
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`II. ARGUMENT
`A. The Board Should Exclude Exhibit 1002
`Ex. 1002 does not contain a “highly relevant admission” (Paper 46 at 2), but
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`instead says nothing more than the patent itself in Ex. 1001 at 1:20-23 (“This
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`invention … relates to a portable data carrier for storing and paying for data…”)
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`and 1:64-66 (“reading payment information,” “validating the payment
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`1
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`Case CBM2014-00106
`Patent 8,033,458 B2
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`information”). Ex. 1002 is inadmissible other evidence of the content of a writing
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`under FRE 1004, cumulative under FRE 403, and irrelevant under FRE 401, 402.
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`B. The Board Should Exclude Exhibits 1005, 1008, 1022, and 1027 - 1029
`Ex. 1005, 1008, 1022, and 1027-1029 are not substantively cited. They were
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`merely listed in “Materials Reviewed and Relied Upon” by Mr. Wechselberger.
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`Pap. 46 at 3. These are not relevant and not admissible. FRE 401, 402.
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`C. The Board Should Exclude Exhibits 1006, 1007, 1009, 1012, and 1016-
`1020
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`CBM review was instituted only under 35 U.S.C. § 103 on: the combination
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`of Stefik ’235 and Stefik ’980; and separately, Ginter. Pap. 8, at 26. Patent Owner
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`agrees 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” (Pap.
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`46 at 3-4 (citing In re Taylor Made Golf Co., 589 F. App’x 967, 971 (Fed. Cir.
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`2014))), but Petitioner cites none of these exhibits or their teachings for “what was
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`generally known in the art” to meet a claim limitation in invalidity allegations. In
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`contrast to Taylor Made, there is no missing limitation in Petitioner’s references
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`that Petitioner alleges is satisfied by a POSITA’s “general knowledge,” like “press
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`fitting” was in Taylor Made. Neither the Petition nor Mr. Wechselberger rely on
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`1006, 1007, 1009, 1012, or 1020 to fill in with “general knowledge” any aspect of
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`a claim limitation. Moreover, the Board did not accept Ex. 1016, 1017, 1018 or
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`1019 as invalidating prior art. They should not be in evidence. FRE 401, 402.
`2
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`Case CBM2014-00106
`Patent 8,033,458 B2
`D. The Board Should Exclude Exhibit 1021
`The Board cannot assess whether Mr. Wechselberger’s opinion testimony
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`meets FRE 702 given that he did not disclose the standard against which he
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`measured the quantum of prior art evidence (substantial evidence or preponderance
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`of the evidence) in arriving at his opinions. As such, there is no basis to admit his
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`expert testimony.2 Patent Owner’s lack of objection in the litigation to the “offer of
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`Mr. Wechselberger as an expert” (Pap. 46 at 7) is irrelevant. It is not an admission
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`that Mr. Wechselberger is an expert. Ex. 1034 is hearsay. FRE 801(c).
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`E. The Board Should Exclude Requested Portions of Exhibit 1031
`Unlike CBM2014-00008, Pap. 48 (Aug. 12, 2014) relied on by Petitioner
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`(Pap. 46 at 8), where the Patent Owner sought “the extreme remedy of striking 114
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`pages of the deposition,” (CBM2014-00008, Pap. 48 at 4), Patent Owner seeks to
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`exclude discrete portions. A fair reading of the record demonstrates that Patent
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`Owner’s objections were made and preserved at the deposition. Ex. 1031 36:10-
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`37:11 – Petitioner does not rebut that this testimony is irrelevant given that it
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`relates to claims (conditional access to stored data) and terms (“payment
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`validation” not “payment validation data”) outside the scope of the proceeding as
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`2 Patent Owner acknowledges that FRE 602 is inapplicable to expert witnesses
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`(Pap. 46 at 5-6). However, Mr. Wechselberger never states that he is an expert in
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`the types of methods and systems defined by the challenged claims.
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`3
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`Case CBM2014-00106
`Patent 8,033,458 B2
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`instituted. Ex. 1031 44:18 – 46:1 – Petitioner does not rebut that this testimony is
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`irrelevant given that the issue in this proceeding is not whether SIM cards were or
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`could be used for billing, but rather whether one skilled in the art i) would have
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`been motivated and found it obvious to employ a memory card for a mobile or
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`cellular device that included a SIM portion that identifies a subscriber to a network
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`operator, such as a mobile phone, as a repository in Stefik’s content distribution
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`and access network and ii) would have considered it at a minimum obvious for the
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`portable data carrier (e.g. electronic appliance) to communicate with Ginter’s
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`network using a cellular connection and therefore to include a subscriber identity
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`module (SIM) portion. Ex. 1031 70:1 – 73:9 –Petitioner does not rebut that this
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`testimony is irrelevant given that the issue is whether Stefik ‘235 discloses use of a
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`credit card, not whether “there is anything that would exclude the use a credit card”
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`as asked. Ex. 1031 110:7 – 111:4 – Petitioner does not rebut that “when payment
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`data happens” is nonsensical and that the differences between two embodiments in
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`the ‘221 Patent are irrelevant here. Ex. 1031 114:3 – 116:13 – Petitioner does not
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`rebut that this testimony about ‘221 Patent alternative embodiments is outside the
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`scope of direct given that it relates to enablement and that Dr. Katz testified it was
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`not part of his declaration. Ex. 1031 124:10 – 128:11 – Petitioner does not rebut
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`that this testimony is outside the scope given that Petitioner’s counsel never
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`established what he meant by “pre-purchase processing” and never framed the
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`4
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`Case CBM2014-00106
`Patent 8,033,458 B2
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`question in terms of Dr. Katz’s definition or prior use of the term. Exhibit 1031
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`149:4 – 151:9 – Petitioner does not rebut that this testimony is irrelevant and
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`outside the scope given that it relates to comparisons between the language of
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`Claims 26 and 29 of the ‘598 Patent and “the difference between a SIM portion
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`and a SIM card,” an issue that does not exist. Exhibit 1031 152:7 – 156:12, 158:22
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`– 159:7 and 159:8 – 161:22 – Petitioner does not rebut that this testimony is
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`outside the scope given that it relates to Claim 26 of the ‘598 Patent and that what
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`internal structures the SIM portion could be comprised of, be it “a memory
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`address,” “a block of memory,” or “a single block of memory storing only a single
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`user identification number” as asked in the deposition is beyond the scope of the
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`positions taken in the Petition. Exhibit 1031 163:21 – 165:8 – Petitioner does not
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`rebut that this testimony is outside the scope given that whether the unique number
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`assigned to the repository as referenced in Stefik ‘980 could be aligned to the
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`specified byte format of a SIM card, was not alleged in the Petition.
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`F. The Board Should Exclude Exhibits 1101-1129
`Given the consolidation with CBM2014-00106, duplicative exhibits from
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`CBM2014-00107 should be excluded.
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`III. CONCLUSION
`Patent Owner respectfully requests that the Board exclude the exhibits.
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`Case CBM2014-00106
`Patent 8,033,458 B2
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`Dated: June 2, 2015
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`
`/ Michael R. Casey /
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist
`
`Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
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`6
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`Case CBM2014-00106
`Patent 8,033,458 B2
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S REPLY IN
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`SUPPORT OF MOTION TO EXCLUDE EVIDENCE in CBM2014-00106 was
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`served today, by agreement of the parties by emailing a copy to counsel for the
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`Petitioner as follows:
`
`
`
`J. Steven Baughman (steven.baughman@ropesgray.com)
`Ching-Lee Fukuda (ching-lee.fukuda@ropesgray.com)
`Megan Raymond (megan.raymond@ropesgray.com
`ApplePTABService-SmartFlash@ropesgray.com
`Ropes & Gray LLP
`
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist
`
`Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`Dated: June 2, 2015
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`7