CBM2014-00108
`Patent 8,061,598
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`APPLE INC.,
`Petitioner
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`v.
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`SMARTFLASH LLC,
`Patent Owner
`______________________
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`Case CBM2014-001081
`Patent 8,061,598
`______________________
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`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
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`
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`PETITIONER’S MOTION TO STRIKE PORTIONS OF THE
`DEPOSITION TRANSCRIPT OF ANTHONY WECHSELBERGER
`CONCERNING PETITIONER’S PRODUCTS AND FOR COSTS
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`Pursuant to 37 C.F.R. § 42.22, and as authorized in the Board’s December 12,
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`2014 Order (Paper 19), Petitioner Apple Inc. (“Petitioner”) hereby moves to strike the
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`portions of the deposition transcript of Anthony Wechselberger (Apple’s expert
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`witness) involving questioning by Patent Owner’s counsel outside the scope of Mr.
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`Wechselberger’s declaration—including, in particular, questions and answers about
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`the operation of Petitioner’s products and related secondary considerations—and
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`1 Case CBM2014-00109 has been consolidated with the instant proceeding.
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`Patent 8,061,598
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`APPLE INC.,
`Petitioner
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`v.
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`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2014-001081
`Patent 8,061,598
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
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`
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`PETITIONER’S MOTION TO STRIKE PORTIONS OF THE
`DEPOSITION TRANSCRIPT OF ANTHONY WECHSELBERGER
`CONCERNING PETITIONER’S PRODUCTS AND FOR COSTS
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`
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`Pursuant to 37 C.F.R. § 42.22, and as authorized in the Board’s December 12,
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`2014 Order (Paper 19), Petitioner Apple Inc. (“Petitioner”) hereby moves to strike the
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`portions of the deposition transcript of Anthony Wechselberger (Apple’s expert
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`witness) involving questioning by Patent Owner’s counsel outside the scope of Mr.
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`Wechselberger’s declaration—including, in particular, questions and answers about
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`the operation of Petitioner’s products and related secondary considerations—and
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`1 Case CBM2014-00109 has been consolidated with the instant proceeding.
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`CBM2014-00108
`Patent 8,061,598
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`seeks an award of the associated costs of the deposition and of this Motion.
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`Specifically with respect to the transcript, Petitioner seeks to strike the following
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`portions:
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` 12/11/2014 Wechselberger Dep. 358:1-378:4. See Ex. 1030.2
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`I. INTRODUCTION & RELIEF REQUESTED
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`The above Wechselberger transcript citations contain questions and answers
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`outside the scope of Mr. Wechselberger’s declaration and thus outside the scope of
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`proper deposition discovery in this matter—including questions and answers directed
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`to Petitioner’s products. Mr. Wechselberger’s declaration (i.e., his direct witness
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`2 Ex. 1030 contains excerpts from the Wechselberger transcript that, in addition to
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`the portions Petitioner seeks to strike on pages 358-378, also includes pages 334-357
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`so that the Board may consider, if it wishes, the context leading to the portions of the
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`deposition that Petitioner seeks to strike from the record, including the transcription
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`of the December 11 conference call with the Board. Pages 358:1-378:4—the portions
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`Petitioner seeks to strike—were originally prepared as a separate transcript marked as
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`“Redacted” based on potential concerns about confidentiality of the testimony that
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`was expected to be elicited. However, based on the testimony actually elicited,
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`Petitioner has determined that this portion of the transcript need not be filed under
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`seal.
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`CBM2014-00108
`Patent 8,061,598
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`testimony) that was submitted with the Petition in this proceeding 3 contained no
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`testimony whatsoever as to Petitioner’s products—much less as to the operation of
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`Petitioner’s products or any commercial success of the products. The Board’s rules
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`explicitly state that, “[f]or cross-examination testimony, the scope of the examination
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`is limited to the scope of the direct testimony.” 37 C.F.R. § 42.53(d)(5)(ii). The
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`questions and answers on cross-examination at Mr. Wechselberger’s deposition
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`directed to Petitioner’s products or related secondary considerations were outside the
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`scope of Mr. Wechselberger’s direct testimony and were therefore improper.
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`Accordingly, and as discussed further below, Petitioner respectfully requests that the
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`Board strike the above-identified portions of the Wechselberger transcript and award
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`the requested costs to Petitioner.
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`II. STATEMENT OF MATERIAL FACTS
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`1.
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`On November 7, 2014, a teleconference was held between the Board
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`and the parties. Patent Owner Smartflash LLC (“Patent Owner”) requested
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`3 Petitioner submitted a declaration from Mr. Wechselberger in each of proceedings
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`CBM2014-00102, -00106, -00108, and -00112, and his deposition that is the subject of
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`this Motion was taken for purposes of discovery for all of these proceedings
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`collectively. His declarations in the other proceedings also contained no testimony
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`regarding Petitioner’s products. Accordingly, Petitioner is concurrently filing a similar
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`Motion in each proceeding, as authorized by the Board in Paper 19.
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`3
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`CBM2014-00108
`Patent 8,061,598
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`authorization to file a motion for additional discovery on Petitioner’s products.
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`Patent Owner sought this discovery as purportedly relevant to showing secondary
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`considerations for the patent-at-issue—particularly, commercial success based on
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`Patent Owner’s allegation that these products read on (i.e., infringe) the challenged
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`claims. See Paper 14 at 3.
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`2.
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`In opposition to the requested authorization, Petitioner asserted, inter
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`alia, that Patent Owner’s request would necessarily result in a “trial within a trial” to
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`determine allegations of
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`infringement for purposes of addressing secondary
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`considerations based on Petitioner’s products. Petitioner also asserted that Patent
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`Owner has not made a threshold showing of nexus between the challenged claims and
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`alleged commercial success. Paper 14 at 3.
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`3.
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`The Board denied Patent Owner’s request for authorization to move for
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`additional discovery, explaining, inter alia, that “Patent Owner has not made a
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`threshold showing as to infringement or nexus with commercial success.” Paper 14 at
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`3.
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`4.
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`On December 10 and 11, 2014, Patent Owner deposed Petitioner’s
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`expert witness, Anthony Wechselberger, for this proceeding as well as for CBM2014-
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`00102, -00106, and -00112. During the deposition, on December 11, at Petitioner’s
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`request, a teleconference was held between the Board and the parties to address
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`Petitioner’s objections to the scope of the questioning of Mr. Wechselberger.
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`4
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`CBM2014-00108
`Patent 8,061,598
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`Petitioner requested that Patent Owner be ordered not to ask questions related to the
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`operation of Petitioner’s products because (1) such questions were clearly outside the
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`scope of the proceedings, (2) Mr. Wechselberger had not opined on the operation of
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`Petitioner’s products in his declaration, and (3) secondary considerations had not been
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`placed at issue in the proceeding. Paper 19 at 2.
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`5.
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`During the teleconference, Patent Owner argued that it should be
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`allowed to ask questions about the operation of Petitioner’s products and alleged that
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`(1) the challenged claims read on those products, (2) Mr. Wechselberger had
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`submitted expert reports on Petitioner’s products in the related, pending district court
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`litigation, and (3) the operation of Petitioner’s products is relevant to commercial
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`success. Paper 19 at 2.
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`6.
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`The Board did not immediately order Patent Owner to discontinue
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`asking Mr. Wechselberger questions about Petitioner’s products, but indicated during
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`the call and memorialized in a subsequent order (Paper 19) that Petitioner was
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`authorized to file a Motion to Strike (i.e., the instant Motion). The Board stated that
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`the Motion to Strike could point to the pertinent questions and answers in the
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`Wechselberger transcript relating to Petitioner’s products and explain why they are
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`outside the proper scope of this proceeding. The Board explained that it “is
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`extremely reluctant to broaden the scope of the instant proceedings significantly and
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`delay the trial schedule by permitting discovery into the operation of Petitioner’s
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`5
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`CBM2014-00108
`Patent 8,061,598
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`products.” The Board noted that discovery into Patent Owner’s allegations of
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`commercial success “would require a trial within a trial on the issue of infringement,
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`with associated evidence, arguments, and (potentially) declarations from Patent
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`Owner, and then the same from Petitioner in response.” The Board explained that
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`this would be “contrary to the goal of covered business method review to be an
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`efficient, streamlined alternative to
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`litigation, completed within one year of
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`institution.” The Board further explained that it had already “denied Patent Owner’s
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`request for authorization to file a Motion for Additional Discovery on Petitioner’s
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`products,” and that “Patent Owner now attempts to elicit information through
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`deposition that was denied to it as additional discovery.” Paper 19 at 3.
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`7.
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`The Board also stated that, if it is “persuaded that Patent Owner’s
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`counsel sought information outside the proper scope of this proceeding, sanctions
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`may include striking questions and answers that are not relevant, and ordering Patent
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`Owner to pay the costs associated with the deposition.” Paper 19 at 4.
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`III. DISCUSSION
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`The portions of the Wechselberger transcript reflecting Patent Owner’s
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`improper questioning concerning Petitioner’s products and related secondary
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`considerations should be stricken from the record. The Board’s rules are clear: “For
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`cross-examination testimony, the scope of the examination is limited to the scope of the
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`direct testimony.” 37 C.F.R. § 42.53(d)(5)(ii) (emphasis added).
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`CBM2014-00108
`Patent 8,061,598
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`The scope of Mr. Wechselberger’s direct testimony is confined to the subject
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`matter in his declaration, and Mr. Wechselberger clearly did not testify in his
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`declaration about Petitioner’s products or related secondary considerations. Indeed,
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`in attempting to justify its questioning during the December 11 conference call with
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`the Board, Patent Owner never suggested that these topics were within the scope of
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`Mr. Wechselberger’s direct testimony. Thus, cross-examination about Petitioner’s
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`products or related secondary considerations is indisputably not allowed under Rule
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`42.53(d)(5)(ii). The Board need look no further and should strike the portions of the
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`Wechselberger transcript identified above.
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`Patent Owner nevertheless argued that it should be allowed to elicit testimony
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`from Mr. Wechselberger at the deposition about Petitioner’s products because Patent
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`Owner believes such testimony may be relevant to commercial success as part of a
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`secondary considerations argument. See Paper 19 at 2. Patent Owner pointed to—
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`and Petitioner is aware of—no exception to the rule limiting the scope of cross-
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`examination simply because a party believes a particular line of questioning may be
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`relevant to other issues that were not the subject of the deponent’s direct testimony.
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`Nor has Patent Owner suggested any reason that—contrary to the prior November
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`13 Order (Paper 14)—it should be allowed, without seeking the Board’s permission,
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`to embark on an unjustified “trial within a trial” on alleged infringement. See Paper 19
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`at 3; id. (noting that allowing the sought-after discovery would frustrate the Board’s
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`CBM2014-00108
`Patent 8,061,598
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`purpose of being “an efficient, streamlined alternative to litigation, completed within
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`one year of institution”); Paper 14 at 3 (“We denied Patent Owner’s request for
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`authorization to file a motion for additional discovery given that Patent Owner has
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`not made a threshold showing as to infringement or nexus with commercial
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`success.”); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006)
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`(“Evidence of commercial success, or other secondary considerations, is only
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`significant if there is a nexus between the claimed invention and the commercial
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`success.”).
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`Indeed, this questioning in the Wechselberger transcript is particularly
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`inappropriate as the Board has already explicitly denied Patent Owner’s request to file
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`a motion for additional discovery on the very type of evidence at issue in this Motion.
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`See Paper 14 at 3; Paper 19 at 3. Patent Owner’s attempt to evade this order and
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`demand the additional discovery anyway is an abuse of the discovery process. See
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`Paper 19 at 2-3; 37 C.F.R. § 42.12(a) (“The Board may impose a sanction against a
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`party for misconduct, including: (1) Failure to comply with an applicable rule or order
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`in the proceeding; . . . (5) Abuse of discovery; . . . (7) Any other improper use of the
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`proceeding, including actions that . . . cause . . . an unnecessary increase in the cost of
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`the proceeding.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
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`(App’x D) (Aug. 14, 2012) (“[P]arty may move to terminate or limit the testimony on
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`the ground that it is being conducted in bad faith . . . .”). Accordingly, not only
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`CBM2014-00108
`Patent 8,061,598
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`should the subject questions and answers from the Wechselberger transcript be
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`stricken from the record, but—as the Board warned Patent Owner was a possibility
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`during the December 11 conference call (and memorialized in Paper 19) if it chose to
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`proceed—Patent Owner should also be ordered to pay the costs associated with the
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`improper questioning in the deposition, which Petitioner respectfully submits should
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`include the costs associated with this Motion to address the improper questioning. See
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`Paper 19 at 3-4 (“As we explained during the call, if we are persuaded that Patent
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`Owner’s counsel sought information outside the proper scope of this proceeding,
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`sanctions may include striking the questions and answers that are not relevant, and
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`ordering Patent Owner to pay the costs associated with the deposition.”); 37 C.F.R.
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`§ 42.12(b) (“Sanctions include entry of one or more of the following: . . . (4) An order
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`precluding a party from requesting, obtaining, or opposing discovery; (5) An order
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`excluding evidence; (6) An order providing for compensatory expenses, including
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`attorney fees . . . .”).4
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board strike
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`the above-identified portions of the Wechselberger transcript relating to questions
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`and answers on Petitioner’s products and order Patent Owner to pay the costs
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`4 Should the Board so order, the parties can provide an accounting.
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`9
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`CBM2014-00108
`Patent 8,061,598
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`associated with the above-listed portions of the deposition and costs associated with
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`this Motion.
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`Respectfully submitted,
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`January 12, 2015
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`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Reg. No. 47,414
`ROPES & GRAY LLP
`One Metro Center, 700 12th St. – Ste. 900
`Washington, DC 20005-3948
`P: 202-508-4606 / F: 202-383-8371
`steven.baughman@ropesgray.com
`
`
`Ching-Lee Fukuda (Backup Counsel)
`Reg. No. 44,334
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036
`P: 212-596-9336 /F: 212-596-9000
`ching-lee.fukuda@ropesgray.com
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`Mailing address for all PTAB correspondence: ROPES & GRAY LLP
`IPRM – Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600
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`Attorneys for Petitioner Apple Inc.
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`CBM2014-00108
`Patent 8,061,598
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of PETITIONER’S MOTION
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`TO STRIKE PORTIONS OF THE DEPOSITION TRANSCRIPT OF
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`ANTHONY WECHSELBERGER CONCERNING PETITIONER’S PRODUCTS
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`and accompanying exhibit were served on January 12, 2015, to the following Counsel
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`for Patent Owner via e-mail, pursuant to the parties’ agreement concerning service:
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`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Facsimile: (703) 894-6430
`mcasey@dbjg.com
`jsd@dbjg.com
`docket@dbjg.com
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`Attorneys for Patent Owner Smartflash LLC
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`s/Darrell W. Stark
`Darrell W. Stark
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`ROPES & GRAY LLP
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