`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE, INC.
`
`Petitioner
`
`v.
`
`SMARTFLASH LLC
`
`Patent Owner
`
`____________
`
`Case CBM2014-00106
`
`Patent 8,033,458
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................. ii
`
`I.
`
`II.
`
` OVERVIEW OF U.S. PATENT NO. 8,033,458 ............................................ 1
`
` THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ........................................................ 3
`
`
`III. THE CHALLENGED CLAIMS OF THE ‘458 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW ...... 9
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘458 PATENT SHOULD
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`VIOLATION OF 37 CFR 42.24(a)(iii) ......................................................... 12
`
`
`V.
`
` U.S. PATENT NOS. 5,530,235 AND 5,629,980 ARE NEITHER A SINGLE
`REFERENCE NOR AN OBVIOUS COMBINATION ................................ 14
`
`
`VI. COMBINATIONS OF “THE STEFIK PATENT” AND AT LEAST ONE
`OTHER REFERENCE ARE UNSUPPORTED AS PETITIONER HAS
`NOT PROVEN THAT “THE STEFIK PATENT” IS A SINGLE
`REFERENCE ................................................................................................ 16
`
`
`VII. WECHSELBERGER’S DECLARATION SHOULD NOT BE
`CONSIDERED .............................................................................................. 17
`
`
`VIII. CONCLUSION .............................................................................................. 20
`
`
`
`
`- i -
`
`
`
`
`
`
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit Number
`
`Exhibit Description
`
`2001
`
`2002
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, H5402-5443
`
`
`
`- ii -
`
`
`
`Patent Owner sets forth below, in its Preliminary Response, why no Covered
`
`Business Method (CBM) review should be instituted for the patent-at-issue.
`
`Arguments presented herein are presented without prejudice to presenting
`
`additional arguments in a later response should the PTAB institute a CBM review.
`
`
`
`I.
`
`OVERVIEW OF U.S. PATENT NO. 8,033,458
`
`Although the claims define the actual scope of coverage of the patent, as
`
`described in the first paragraph of the BACKGROUND OF THE INVENTION,
`
`the patent-at-issue, U.S. Patent No. 8,033,458 (hereinafter “the ‘458 patent”)
`
`generally describes “data storage and access systems ... [and] is particularly useful
`
`for managing stored audio and video data, but may also be applied to storage and
`
`access of text and software, including games, as well as other types of data.” Col.
`
`1, lines 20-28.
`
`Preferred embodiments described in the last full paragraph of col. 15
`
`illustrate this further: “FIG. 7 ... shows a variety of content access terminals for
`
`accessing data supply computer system 120 over internet 142. The terminals are
`
`provided with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as
`
`generally described with reference to FIG. 2 and as described in more detail below.
`
`In most embodiments of the terminal the SFC interface allows the smart Flash card
`
`data carrier to be inserted into and removed from the terminal, but in some
`
`
`
`- 1 -
`
`
`
`embodiments the data carrier may be integral with the terminal.” Exemplary
`
`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
`
`and mobile communications devices 152. Col. 16, lines 4-17.
`
`Referring to preferred embodiments, the ‘458 patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Col. 23, line 63 - col. 24, line 1. Users are able to purchase content
`
`from a variety of different content providers even if they do not know where the
`
`content providers are located or how the content is delivered. See id. The
`
`exemplary system is operated by a “content data supply ‘system owner,’” who may
`
`act as an intermediary between a user seeking to purchase content and content
`
`providers, such as record labels, movie studios, and software providers. See col.
`
`13, lines 60-67. When a user accesses the system, he or she is able to select
`
`content to purchase or rent from a variety of different content providers. See col. 4,
`
`line 64 - col. 5, line 8. If the user finds a content item to buy, his or her device will
`
`transmit stored “payment data” to a “payment validation system” to validate the
`
`payment data. See col. 8, lines 3-6. The payment validation system returns proof
`
`that the payment data has been validated, in the form of “payment validation data,”
`
`and the user is able to retrieve the purchased content from the content provider.
`
`See col. 8, lines 7-9.
`
`
`
`
`
`- 2 -
`
`
`
`
`
`II.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`
`FINANCIAL PRODUCT OR SERVICE
`
`Petitioner has cited claim 1 as being the “exemplary” basis for requesting
`
`that a covered business method review be instituted. Petition at 12. The Petition
`
`does not set forth any analysis to show why, if claim 1 is not a basis for review,
`
`any of the other challenged claims (i.e., claims 6-8, 10 and 11) would instead meet
`
`the statutory requirements for instituting a review. Furthermore, since claim 1
`
`does not, in fact, meet the requirements for instituting a review, the Petition should
`
`be denied.
`
`As set forth in 37 CFR 42.301(a), to be eligible for CBM review, claim 1
`
`must be found to be claiming “a method or corresponding apparatus for performing
`
`data processing or other operations used in the practice, administration, or
`
`management of a financial product or service.” In the publication of the Final
`
`Rules for “Transitional Program for Covered Business Method Patents -
`
`Definitions of Covered Business Method Patent and Technological Invention,” the
`
`PTO stated:
`
`The definition set forth in § 42.301(a) for covered business
`method patent adopts the definition for covered business method
`patent provided in section 18(d)(1) of the AIA. In administering the
`program, the Office will consider the legislative intent and history
`
`
`
`- 3 -
`
`
`
`behind the public law definition and the transitional program itself.
`For example, the legislative history explains that the definition of
`covered business method patent was drafted to encompass patents
`“claiming activities that are financial in nature, incidental to a
`financial activity or complementary to a financial activity.” 157
`CONG. REC. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`Schumer). This remark tends to support the notion that “financial
`product or service” should be interpreted broadly.
`
`
`Regardless of this explanation, it is improper for this tribunal to rely on the
`
`legislative history of the AIA to determine the specific issue before it, i.e., whether
`
`trial should be instituted on the present petition. The Supreme Court has “stated
`
`time and again that courts must presume that a legislature says in a statute what it
`
`means and means in a statute what it says. When the words of a statute are
`
`unambiguous, then, this first canon of construction is also the last: judicial inquiry
`
`is complete.” Connecticut Nat’l Bank v. Germain, 503 U.S. 249, 253–54 (1992).
`
`“[W]hen the language of the statute is plain, legislative history is irrelevant.”
`
`Zedner v. United States, 547 U.S. 489, 510–11 (2006) (Scalia, J., concurring-in-
`
`part). This long standing rule is based on the constitutional limitation that
`
`legislators cannot achieve through floor statements what “they were unable to
`
`achieve through the statutory text.” Exxon Mobil Corp. v. Allapattah Servs., Inc.,
`
`545 U.S. 546, 568 (2005). Because Section 18 is unambiguously limited to
`
`
`
`- 4 -
`
`
`
`“financial product[s] and service[s],” there is no reason to look to the statements of
`
`a single Senator to re-tool text that was approved by both houses of Congress and
`
`signed by the President.
`
`Moreover, the PTO’s synopsis of the legislative history is an improper
`
`oversimplification and does not address that “financial product or service” was
`
`intended to be interpreted narrowly. In fact, when the House of Representatives
`
`debated Congressman Schock’s Amendment to remove Section 18 in its entirety
`
`from the America Invents Act, several members of Congress discussed their
`
`understanding of that narrower interpretation. For example, Mr. Schock himself
`
`discussed at the beginning of his remarks that “Section 18 carves out a niche of
`
`business method patents covering technology used specifically in the financial
`
`industry and would create a special class of patents in the financial services field
`
`subject to their own distinctive post-grant administrative review.” (Exhibit 2001,
`
`Congressional Record - House, June 23, 2011, H4496.) (Emphasis added.)
`
`Similarly, Congressman Shuster expressly discussed his understanding of
`
`the narrow interpretation of the legislation. He stated:
`
`Mr. Chair, I would like to place in the record my understanding
`that the definition of ‘‘covered business method patent,’’ Section
`18(d)(1) of H.R. 1249, the America Invents Act, is intended to be
`narrowly construed to target only those business method patents that
`are unique to the financial services industry in the sense that they are
`
`
`
`- 5 -
`
`
`
`patents which only a financial services provider would use to
`furnish a financial product or service. The example that I have been
`given is a patent relating to electronic check scanning, which is the
`type of invention that only the financial services industry would
`utilize as a means of providing improved or more efficient banking
`services. In contrast, Section 18 would not encompass a patent that
`can be used in other industries, but which a financial services
`provider might also use. Lastly, it is also my understanding from
`discussions with the Committee that Section 18 is targeted only
`towards patents for non-technological inventions.
`
`
`
`Id. at H4497. (Emphasis added.) It was based on that understanding that
`
`Congressman Shuster then voted to keep Section 18 in the bill. (See id. at H4503.)
`
`
`
`Likewise, Congresswoman Waters discussed that Section 18 was directed to
`
`cost savings measures in the banking industry when she stated “too-big-to-fail
`
`banks ... are now coming to Congress in hopes that [Congress] will help them steal
`
`a specific type of innovation and legislatively take other financial services-related
`
`business method patents referenced in H.R. 1249, section 18. ... Financial
`
`services-related business method patents have saved financial services companies
`
`billions of dollars.” Id. at H4496. See also Exhibit 2002, 157 Cong. Rec. S5428
`
`(Rep. Pryor) (“It is of crucial importance to me that we clarify the intent of the
`
`[AIA § 18] process and implement it as narrowly as possible.”)
`
`
`
`- 6 -
`
`
`
`In contrast to the banking or other financial products or services patents,
`
`claim 1 recites:
`
`1. A portable data carrier, comprising:
`
`an interface for reading and writing data from and to the carrier;
`
`non-volatile data memory, coupled to the interface, for storing
`
`data on the carrier;
`
`non-volatile payment data memory, coupled to the interface, for
`
`providing payment data to an external device;
`
`a program store storing code implementable by a processor;
`
`a processor, coupled to the content data memory, the payment
`
`data memory, the interface and to the program store for implementing
`
`code in the program store; and
`
`a subscriber identity module (SIM) portion to identify a
`
`subscriber to a network operator wherein the code comprises code to
`
`output payment data from the payment data memory to the interface
`
`and code to provide external access to the data memory.
`
`Thus, the main thrust of claim 1 is not a financial products or services patent at all
`
`but rather an inventive portable data carrier. The portable data carrier of claim 1
`
`includes non-volatile data memory for storing data on the carrier and non-volatile
`
`payment data memory for providing payment data to an external device, as one
`
`
`
`- 7 -
`
`
`
`would use, for example, when loading software, music or a video onto a data
`
`carrier for later use and/or playback. The portable data carrier of claim 1 also
`
`includes a subscriber identity module (SIM) portion to identify a subscriber to a
`
`network operator. Further, rather than recite the “practice, administration, or
`
`management of a financial product or service,” claim 1 actually omits the specifics
`
`of how payment is made and focuses on technical features of the portable data
`
`carrier.
`
`At most, the claimed device is capable of storing a particular type of data
`
`termed “payment data.” According to Petitioner, this payment data is “data
`
`representing payment made for requested content data.” Under Petitioner’s
`
`analysis, any patent claim covering a device that can store information related to a
`
`payment (e.g. a currency counting machine that tracks bills associated with a
`
`payment) would be a claim directed towards a “financial product or service.” Even
`
`Senator Schumer would find this assertion to be excessive. See 157 Cong. Rec.
`
`S5428 (question by Senator Durbin: “[T]here are companies that possess class 705
`
`patents which have used the patents to manufacture and commercialize novel
`
`machinery to count, sort, and authenticate currency and paper instruments. Are
`
`these the types of patents that are the target of Section 18? Mr. SCHUMER. No.”)
`
`Claim 1, therefore, does not recite a “financial product or service” when that
`
`
`
`- 8 -
`
`
`
`phrase is properly construed, both under its plain meaning and in light of the
`
`legislative history showing Congress’ intent of the narrow meaning of that phrase.
`
`
`
`III. THE CHALLENGED CLAIMS OF THE ‘458 PATENT ARE
`
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW
`
`
`
`As set forth in 37 CFR 42.301(a), even if claim 1 were considered to be
`
`claiming “a method or corresponding apparatus for performing data processing or
`
`other operations used in the practice, administration, or management of a financial
`
`product or service,” Petitioner must show that claim 1 does not meet the exception
`
`of being directed to a technological invention. Section 42.301(b) sets forth that a
`
`claim is directed to a technological invention (and therefore not the basis for
`
`instituting a CBM review) if “the claimed subject matter as a whole recites a
`
`technological feature that is novel and unobvious over the prior art; and solves a
`
`technical problem using a technical solution.”
`
`Claim 1, as a whole, recites at least one technological feature that is novel
`
`and unobvious over the prior art and solves a technical problem using a technical
`
`solution. At least one technological problem solved by claim 1 is the provision of
`
`a portable data carrier that allows a subscriber to be identified to a network
`
`operator. Moreover, it does so using a technical solution -- a portable data carrier
`
`that includes a subscriber identity module (SIM) portion to identify the subscriber
`
`
`
`- 9 -
`
`
`
`to the network operator. In fact, Petitioner admits the technological nature of the
`
`“portable data carrier” of claim 1 when it states on page 3 “Claim 1 involves no
`
`‘technology at all’ other than ‘a portable data carrier.’” Petition at 3. (Emphasis
`
`added.)
`
`While page 17 of the Petition alleges that “SIM cards were also well
`
`known,” Section III.A. of the Petition also does not allege, much less provide any
`
`evidence to prove, that subscriber identity modules (SIMs) to identify a subscriber
`
`to a network operator were known as part of a portable data carrier as claimed or as
`
`part of any of the applied references. In fact, the Petition does not allege that either
`
`of the Stefik patents anticipates such a limitation. Thus, as previously held in
`
`Epsilon Data Management, LLC et al. v. RPOST Comm. Ltd., CBM2014-00017,
`
`paper 21, page 8, any analysis in any other portion of the Petition (other than the
`
`portion relating to whether CBM review is proper) need not be considered in
`
`determining that the Petitioner has not met its burden of proving that the claim at
`
`issue is a covered business method patent. Id. (“In addition, although Patent
`
`Owner addresses the analysis in the Declaration of [Petitioner’s Declarant] (id. at
`
`19), which Petitioner submitted with the Petition, this analysis was not included in
`
`the relevant portion of the Petition (Pet. 2-6), and need not be considered in
`
`determining that the ... Patent[-at-issue] is a covered business method patent.”)
`
`
`
`- 10 -
`
`
`
`Furthermore, the Petition provides no evidence that either Sato or Rydbeck
`
`explicitly discloses the “subscriber identity module (SIM) portion to identify a
`
`subscriber to a network operator.” Instead, the Petition alleges that “Rydbeck’s
`
`disclosure of a cellular phone device necessarily, and thus inherently, discloses a
`
`device having a SIM component.” Petition at 50, footnote 18. (Emphasis added.)
`
`Similarly, the Petition alleges that “Sato’s disclosure of a mobile phone device
`
`necessarily, and thus inherently discloses a device having a SIM card storing
`
`identification data to identify a user of the device to a network operator.” Petition
`
`at 51, footnote 19. (Emphasis added.) Given that neither of those allegations are
`
`supported by a reference that shows that either of the asserted references inherently
`
`includes a “subscriber identity module (SIM) portion to identify a subscriber to a
`
`network operator,” the Petition has not met its burden of showing that the SIM
`
`portion was known or obvious in the claimed context. Thus, the Petition has not
`
`proven that claim 1 of the ‘458 patent is not directed to technological inventions
`
`exempt from CBM review.
`
`
`
`
`
`- 11 -
`
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘458 PATENT SHOULD
`
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`
`VIOLATION OF 37 CFR 42.24(a)(iii)
`
`The Petition under consideration (in CBM2014-00106) is one of two nearly
`
`80-page Petitions filed by Petitioner on the same day against the same patent (i.e.,
`
`the ‘458 patent). (The second Petition was filed in CBM2014-00107.) Both
`
`Petitions include a substantial amount of overlap and are at least directed to the
`
`issues of rejections in light of alleged prior art including the obviousness of claims
`
`in the ‘458 patent. However, instead of filing a single Petition addressing all the
`
`prior art issues within the page limits set by the PTAB, Petitioner seeks to
`
`circumvent the page limits of 37 CFR 42.24(a)(1)(iii) by filing two separate but
`
`overlapping Petitions.
`
`The PTAB has previously allowed the same Petitioner to file multiple CBMs
`
`against a single patent (see CBM2013-00019 and CBM2013-00020 for U.S. Patent
`
`No. 5,191,573, and CBM2013-00021 and CBM2013-00023 for U.S. Patent No.
`
`5,966,440). However, those cases are distinguishable at least in that one Petition
`
`for each patent (CBM2013-0020 and CBM2013-00023) raised prior art issues and
`
`the other Petition for each patent (CBM2013-0019 and CBM2013-00021) raised
`
`non-prior art issues.
`
`
`
`- 12 -
`
`
`
`If the Petitioner was unable to file its Petition within the page limits set forth
`
`by 37 CFR 42.24(a)(1), then the Petitioner was free to file a motion to waive the
`
`page limits. Section 42.24(a)(2) specifically sets forth that “Petitions to institute a
`
`trial must comply with the stated page limits but may be accompanied by a motion
`
`to waive the page limits. The Petitioner must show in the motion how a waiver of
`
`the page limits is in the interests of justice and must append a copy of the proposed
`
`petition exceeding the page limit to the motion. If the motion is not granted, the
`
`proposed petition exceeding the page limit may be expunged or returned.”
`
`However, the Petitioner here instead effectively sought to grant its own motion by
`
`filing two allegedly separate petitions, each within the 80-page limit and without
`
`showing “how a waiver of the page limits is in the interests of justice.” Clearly, if
`
`there is no requirement for the Petitioner to file its allegations of invalidity over
`
`alleged prior art in a single Petition meeting the page limits set forth by the PTAB,
`
`the requirements of Section 42.24(a)(2) are meaningless. Moreover, allowing
`
`more than one CBM request on the same issue for the same patent would invite an
`
`unending stream of Petitions filed by Petitioners in an effort to drown the Patent
`
`Owner’s patents in administrative proceedings before the PTAB. Thus,
`
`Petitioner’s two Petitions in CBM2014-00106 and -00107 should be treated as a
`
`single Petition beyond the page limits set forth by 37 CFR 42.24(a)(1) and each
`
`should be denied on that basis alone.
`
`
`
`- 13 -
`
`
`
`
`
`V. U.S. PATENT NOS. 5,530,235 AND 5,629,980 ARE NEITHER A SINGLE
`
`REFERENCE NOR AN OBVIOUS COMBINATION
`
`The Petition alleges at page 27 that “Because Stefik ’235 incorporates Stefik
`
`’980 [i.e., U.S. Patent No. 5,629,980 (hereinafter “the ‘980 patent”)] by reference,
`
`they should be considered a single reference.” However, Petitioner has not proven
`
`that the alleged incorporation by reference in the ‘235 patent is sufficient to
`
`support a finding that the ‘235 and ‘980 patents “should be considered a single
`
`reference.” The ‘235 patent states, at col. 2, lines 48-53, that “The currently
`
`preferred embodiment of a DocuCard is an instance of a repository, as defined in
`
`co-pending application entitled ‘System for Controlling the Distribution and Use of
`
`Digital Works,’ serial number not yet assigned, which is assigned to the assignee
`
`of the present invention and which is herein incorporated by reference.” However,
`
`such a reference does not meet the MPEP’s standard for incorporation by
`
`reference. MPEP 608.01(p) (Sixth Ed., Jan. 1995) set forth the procedure for
`
`incorporation by reference at the time the ‘235 patent was filed. As specified in
`
`the MPEP on page 600-55, left column, lines 11-13, “In addition to other
`
`requirements for an application, the referencing application should include an
`
`identification of the referenced patent, application, or publication.” The Petitioner
`
`has not established that a reference to “co-pending application entitled ‘System for
`
`
`
`- 14 -
`
`
`
`Controlling the Distribution and Use of Digital Works,’ serial number not yet
`
`assigned, which is assigned to the assignee of the present invention,” actually
`
`identifies the referenced application. For example, the application is not
`
`referenced by application serial number, filing date, inventors or attorney docket
`
`number.
`
`As set forth in In re Fouche, 169 USPQ 429 (CCPA 1971), when the issue
`
`arises as to whether an incorporation by reference is proper, the test is “whether the
`
`original referring language was adequate to effect an incorporation by reference” --
`
`a test which is resolved by determining whether the application allegedly
`
`incorporated by reference is distinguished “from all others.” Id. at 431. Petitioner,
`
`which bears the burden of proof on the issue, has not proven that the application is
`
`distinguished from all others (e.g., by a declaration from Stefik describing that the
`
`‘980 patent is the only such application). Thus, the alleged incorporation by
`
`reference is not proper, and the ‘235 and ‘980 patents should not be considered a
`
`single reference.
`
`
`
`Just as the ‘235 and ‘980 patents are not “a single reference,” there is no
`
`evidence that one of ordinary skill in the art would have combined the ‘235 patent
`
`with the ‘980 patent as the alleged motivation to combine is based on an unproven
`
`premise that the alleged reference to the ‘980 patent actually uniquely identifies the
`
`‘980 patent. Thus, the Petition not only has not proven that the ‘235 and ‘980
`
`
`
`- 15 -
`
`
`
`patents are a “single reference,” it also incorrectly assumes that one of ordinary
`
`skill in the art would know which other application was being referenced in its
`
`citations to DocuCards and repositories in the ‘235 patent. Similarly, any
`
`reference in the ‘980 patent, such as col. 16, lines 56-58, to a “card” pre-dates the
`
`‘235 patent and could not reference the ‘235 patent, or any other subsequently filed
`
`application. Thus, Petitioner has not proven that one of ordinary skill in the art
`
`would have been motivated to combine the ‘235 and ‘980 patents as alleged.
`
`
`
`VI. COMBINATIONS OF “THE STEFIK PATENT” AND AT LEAST ONE
`
`OTHER REFERENCE ARE UNSUPPORTED AS PETITIONER HAS
`
`NOT PROVEN THAT “THE STEFIK PATENT” IS A SINGLE
`
`REFERENCE
`
`Page 31 of the Petition alleges that “the challenged claims would have been
`
`obvious based on the Stefik patent in combination with one or more of additional
`
`references, in the combinations described below” [i.e., Stefik in combination with
`
`(1) Sato, (2) Poggio, (3) Poggio and Sato, and (4) Poggio and Rydbeck].
`
`However, such an allegation is premised on the unproven assumption that “the
`
`Stefik patent” is a single reference. As described in Section V. above, Petitioner
`
`has not proven that the ‘235 and ‘980 patents are a “single reference.” As such, the
`
`Petition has not provided sufficient evidence that one of ordinary skill in the art
`
`
`
`- 16 -
`
`
`
`would have combined the ‘235 and ‘980 patents with (1) Sato, (2) Poggio, (3)
`
`Poggio and Sato, and (4) Poggio and Rydbeck.
`
`
`
`VII. WECHSELBERGER’S DECLARATION SHOULD NOT BE
`
`CONSIDERED
`
`
`
`Petitioner has filed and cited to the Declaration of Anthony Wechselberger
`
`in Support of Apple Inc.’s Petition For Covered Business Method Patent Review of
`
`United States Patent No. 8,033,458 Pursuant to 35 U.S.C. § 321, 37 C.F.R. §
`
`42.304 (Exhibit 1021) (hereinafter “the Wechselberger Declaration”). However,
`
`the Wechselberger Declaration is improper as it does not disclose the underlying
`
`facts on which the opinion is based. For example, the Wechselberger Declaration
`
`does not state the relative evidentiary weight (e.g., substantial evidence versus
`
`preponderance of the evidence) that Mr. Wechselberger used in arriving at his
`
`conclusions. As specified in 37 CFR 42.65, “Expert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based is entitled to
`
`little or no weight.” Similarly, the Wechselberger Declaration does not state the
`
`criteria that he used to assess whether one of ordinary skill in the art at the time of
`
`the invention would have been motivated to modify a reference or combine two
`
`references. For example, the Wechselberger Declaration does not state whether he
`
`considered evidence tending to show that one of ordinary skill in the art would not
`
`
`
`- 17 -
`
`
`
`have made his proposed combination. Thus, the Wechselberger Declaration is
`
`entitled to little or no weight and, as a result, cannot support a finding that it is
`
`more likely than not that at least one of the challenged claims is unpatentable.
`
`
`
`In addition, the Wechselberger Declaration does not prove that Mr.
`
`Wechselberger is an expert whose testimony is relevant to the issue of what is
`
`taught and/or suggested by the cited references. While Mr. Wechselberger may
`
`opine that he was “one of ordinary skill in the art,” he does not, however, state that
`
`he is an expert in the types of methods and systems defined by the challenged
`
`claims. Instead, Mr. Wechselberger references jobs held without tying those jobs
`
`to evidence that supports that the jobs provided him insight into being able to
`
`testify about what one of ordinary skill in the art would have known and/or been
`
`motivated to do.
`
`
`
`For example, paragraph 3 of the Wechselberger Declaration states that since
`
`1999, in the capacity of President of Entropy Management Solutions (“EMS”), he
`
`has “perform[ed] consulting services related to technology and business
`
`development, content management, distribution and merchandizing, systems
`
`engineering and product design in the areas of industrial and consumer broadband
`
`and multimedia technologies and associated commercial systems.” Thus, such a
`
`paragraph does not provide evidence indicating that those “consulting services” are
`
`
`
`- 18 -
`
`
`
`of a technical nature that allows him to offer an opinion on what would have been
`
`obvious to one of ordinary skill in the art.
`
`Nor does paragraph 4 show that Wechselberger is an expert in the claimed
`
`field. In paragraph 4, Wechselberger alleges that he has “held various design,
`
`leadership and executive positions in, for example, engineering, operations, sales
`
`and marketing, and product management at leading companies in those fields, such
`
`as TV/COM International, Inc. (TV/COM) and Oak Communications, Inc.” Such
`
`an allegation does not disclose which of the positions related to design versus
`
`leadership versus executive functions. Similarly, although paragraph 4 states
`
`“Over many years I have published and/or presented a number of articles and
`
`papers related to content/information creation, transmission/distribution and
`
`reception/consumption in various media sectors, including cable, satellite,
`
`broadcast/wireless, Internet and digital cinema,” that paragraph does not state what
`
`his contribution was to the papers (e.g., presenter versus author). Thus, Mr.
`
`Wechselberger has not proven that his opinions are proper expert opinions upon
`
`which the PTAB can rely as opposed to inadmissible lay opinion.
`
`
`
`
`
`
`
`
`
`- 19 -
`
`
`
`VIII. CONCLUSION
`
`
`
`The Petition does not set forth a basis upon which to institute a CBM review,
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`
`
`and Petitioner’s Petition should be denied.
`
`
`Dated: July 11, 2014
`
`
`
`
`
`
`
`- 20 -
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that this PATENT OWNER’S
`
`PRELIMINARY RESPONSE (including Patent Owner’s List of Exhibits) and
`
`Exhibits 2001-2002 in CBM2014-00106 were served, by agreement of the parties,
`
`July 11, 2014 by emailing copies to counsel for the Petitioner as follows:
`
`Steven.Baughman@ropesgray.com
`Ching-Lee.Fukuda@ropesgray.com
`ApplePTABService-SmartFlash@ropesgray.com
`
`
`
`
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`Dated: July 11, 2014
`
`
`
`
`
`- 21 -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
