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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`___________________________
`
`Case CBM2014-001081
`Patent 8,061,598
`
`
`
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`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`1 Case CBM2014-00109 has been consolidated with the instant proceeding.
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`TABLE OF CONTENTS
`
`I. Petitioner’s Response to PO’s Statement of Facts ...................................................... 3
`II. Claim 26 Is Invalid in View of Stefik ............................................................................ 3
`A. Using a SIM Portion in Stefik Is Obvious ........................................................ 3
`III. Claim 26 Is Invalid in View of Ginter ........................................................................... 6
`A. Using a SIM Portion in Ginter Is Obvious ...................................................... 6
`IV. Mr. Wechselberger’s Opinions Are Entitled to Greater Weight than
`Dr. Katz’s ......................................................................................................................... 9
`
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`
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`-i-
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`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Boston Scientific Scimed, Inc. v. Cordis Corp.,
`554 F.3d 982 (Fed. Cir. 2009) ..............................................................................................9
`
`Extreme Networks, Inc. v. Enterasys Networks, Inc.,
`395 F. App’x 709 (Fed. Cir. 2010) .................................................................................9, 10
`
`Flex-Rest, LLC v. Steelcase, Inc.,
`455 F.3d 1351 (Fed. Cir. 2006) ..........................................................................................10
`
`SRI Int'l v. Matsushita Elec. Corp. of Am.,
`775 F.2d 1107 (Fed. Cir. 1985) ............................................................................................5
`
`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) ..........................................................................................10
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`-ii-
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`Exhibit
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 8,061,598
`
`Plaintiff’s First Amended Complaint
`
`File History for U.S. Patent No. 8,033,458
`
`File History for U.S. Patent No. 8,118,221
`
`File History for U.S. Patent No. 8,336,772
`
`U.S. Patent No. 4,999,806
`
`U.S. Patent No. 5,675,734
`
`U.S. Patent No. 4,878,245
`
`U.S. Patent No. 7,344,720
`
`U.S. Patent No. 7,942,317
`
`File History for U.S. Patent No. 8,061,598
`
`U.S. Patent No. 5,103,392
`
`U.S. Patent No. 5,530,235
`
`U.S. Patent No. 5,629,980
`
`U.S. Patent No. 5,915,019
`
`European Patent Application, Publication No. EP0809221A2
`
`PCT Application Publication No. WO99/43136
`
`JP Patent Application Publication No. H11-164058
`(translation)
`JP Patent Application Publication No. H10-269289
`(translation)
`
`-iii-
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`
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`
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`Eberhard von Faber, Robert Hammelrath, and Peter Heider,
`“The Secure Distribution of Digital Contents,” IEEE (1997)
`Declaration of Anthony J. Wechselberger In Support of
`Apple Inc.’s Petition for Covered Business Method Patent
`Review
`U.S. Patent No. 5,754,654
`
`U.S. Patent No. 8,033,458
`
`Declaration of Michael P. Duffey In Support of Apple Inc.’s
`Petition for Covered Business Method Patent Review
`Declaration of Flora D. Elias-Mique In Support of Apple
`Inc.’s Petition for Covered Business Method Patent Review
`U.S. Patent No. 8,118,221
`
`U.S. Patent No. 8,336,772
`
`File History for U.S. Patent No. 7,334,720
`
`File History for U.S. Patent No. 7,942,317
`
`Wechselberger Transcript Excerpts
`
`Katz Deposition Transcript
`
`Declaration of Michael P. Duffey
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`
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`-iv-
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`
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`Shorthand
`’458 patent
`’598 patent
`’235 Stefik
`’980 Stefik
`Pet.
`BRI
`Claims
`Decision
`PO
`Poggio
`POSITA
`Resp.
`Prelim. Resp.
`
`
`GLOSSARY OF ABBREVIATIONS
`
`Description
`United States Patent No. 8,033,458
`United States Patent No. 8,061,598
`United States Patent No. 5,530,235
`United States Patent No. 5,629,980
`Case CBM2014-00108 Petition, Paper 2
`Broadest Reasonable Interpretation
`Challenged Claims
`Case CBM2014-00108 Institution Decision, Paper 8
`Patent Owner
`EP Patent Application Publication No. 0809221A1
`Person of ordinary skill in the art
`Case CBM2014-00108 Patent Owner Response, Paper 23
`Case CBM2014-00108 Preliminary Response, Paper 6
`
`
`
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`-v-
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`
`
`PO does not dispute that the hardware and software components recited in the
`
`Claims were well-known in the prior art. Instead, PO’s Response takes a scattershot
`
`approach in criticizing the prior art for not disclosing a specific combination of
`
`known elements. PO’s arguments fail to rebut Petitioner’s evidence of invalidity.
`
`In addressing specific disclosures of the prior art, PO’s response argues only
`
`that the prior art does not render obvious a subscriber identity module (SIM) card.
`
`But that is not what is required by claim 26: while ’598 patent claim 29 does recite a
`
`“subscriber identity module (SIM) card device,” claim 26 recites a SIM portion. PO
`
`presented no evidence disputing that a common memory block containing only a
`
`single user identifier can be a SIM portion—in fact, Dr. Katz expressed no opinion
`
`about this issue. See Ex. 1031 at 152:7-156:12.
`
`Moreover, both Dr. Katz’s deposition testimony and the cited prior art itself
`
`confirm that the Board correctly concluded that combining the cited prior art with
`
`references disclosing a SIM card is “redundant.” Decision at 23. The cited prior art
`
`discloses using unique identifying information that a POSITA would understand
`
`served the same purpose as the identifier of a SIM card. See, e.g., Ex. 1021 at 63-65.
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`Indeed, the ’598 patent discloses that a SIM card is used for its “user identification
`
`means.” Ex. 1001 at 4:9-13. Petitioner’s expert Mr. Wechselberger confirmed that it
`
`would have been obvious to include a SIM portion in the cited prior art. By contrast,
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`in addition to not presenting evidence addressing the difference between a SIM card
`
`and a SIM portion or that a common memory block containing only a single user
`
`
`
`1
`
`
`
`identifier can be a SIM portion, PO also presents no evidence disputing that a
`
`POSITA would have found it obvious to conform the identifier disclosed in the cited
`
`prior art to the well-known SIM specification. See Ex. 1031 at 158:22-159:7, 160:5-
`
`161:22, 164:18-165:8; Ex. 1021 at 63-64.
`
`Dr. Katz fails to support PO’s arguments. In some cases, he contradicts PO’s
`
`positions. For example, PO’s Response tries to draw a patentable distinction between
`
`a SIM card and other identification means cited in the prior art, but Dr. Katz admits
`
`that a POSITA would have understood that it was known in the prior art that a SIM
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`card is used to identify a user or device, and expresses no opinion on whether a block
`
`of memory containing a single identification number could be a SIM portion. Ex.
`
`1031 at 42:7-14, 43:12-19, 152:7-156:12.
`
` Dr. Katz’s deposition testimony also demonstrates that his opinions should be
`
`given little or no weight. In addition to failing to meet his own definition of a
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`POSITA at the priority date of the ’598 patent, Dr. Katz repeatedly testified he is “not
`
`sure” what a POSITA would have understood regarding (1) concepts that were
`
`indisputably in the prior art, (2) specific passages of the cited prior art, and (3) specific
`
`passages of the ’598 patent. See, e.g., Ex. 1031 at 18:1-20, 23:2-15, 30:15-19, 31:3-17,
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`33:11-34:1, 36:19-37:11, and 38:2-10 (POSITA’s understanding of prior art concepts);
`
`70:1-73:9 and 126:1-128:11 (POSITA’s understanding of passages of the cited prior
`
`art); 86:4-87:22 and 152:7-156:12 (POSITA’s understanding of passages of the ’598
`
`patent). His deposition testimony contradicts itself and demonstrates confusion
`
`
`
`
`-2-
`
`
`
`about both claim language and what he stated in his own declaration. See, e.g., Ex.
`
`1031 at 168:20-169:1, 180:7-20 (Dr. Katz’s understanding of “comprising”); Ex. 1031
`
`at 152:7-156:12, 158:22-159:7, 161:17-22 (Dr. Katz’s opinion about the meaning of
`
`the term “SIM portion”).
`
`I.
`
`PETITIONER’S RESPONSE TO PO’S STATEMENT OF FACTS
`
`As to PO’s alleged facts (1) and (2), Petitioner admits that the phrase
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`“preponderance of the evidence” does not appear in the Wechselberger declarations.
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`Petitioner otherwise denies these allegations. As to PO’s alleged facts (3)-(5), Ex.2007
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`is dated September 19, 2012, entitled In-App Purchase Programming Guide, and
`
`includes an Exhibit label. Ex.2008 is dated September 18, 2013, entitled In-App
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`Purchase Programming Guide, and includes an Exhibit label. Ex.2013 is dated
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`September 18, 2013, entitled Receipt Validation Programming Guide, and includes an
`
`Exhibit label. Petitioner otherwise denies these allegations.
`
`II.
`
`CLAIM 26 IS INVALID IN VIEW OF STEFIK
`
`A. Using a SIM Portion in Stefik Is Obvious
`
`As the Board correctly concluded, use of a Subscriber Identification Module
`
`(SIM) portion is not a “novel and unobvious technological feature” of the ’598 patent;
`
`“the ’598 patent makes clear that the asserted novelty of the invention is not in any
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`specific improvement of software or hardware….” Decision at 10, 15-16, 20. The
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`’598 patent discloses using a SIM card for the well-known function of providing a
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`“user identification means.” Ex. 1001 at 4:9-13. Moreover, unlike ’598 patent claim
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`
`
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`-3-
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`
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`29 (where PO opted to recite a “subscriber identity module (SIM) card device”), ’598
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`patent claim 26 does not recite a SIM card; it recites a SIM portion. Cf. ’598 patent
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`claim 29. PO presents no evidence disputing that a common memory block
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`containing only a single user identifier can be a SIM portion. See Ex. 1031 at 158:22-
`
`159:7. Indeed, the Board is correct that combining Stefik with references disclosing a
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`SIM card is “redundant.” Decision at 23.
`
`A POSITA would have at least found it obvious to incorporate this well-
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`known SIM portion into Stefik’s DocuCard repository to provide a user identification
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`means. Stefik’s DocuCard repository is a portable card used to communicate with
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`other repositories. Ex. 1013 at 1:53-54, 5:1-4, 13:51-57. Stefik expressly discloses that
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`the DocuCard includes unique identifying information used by other repositories to
`
`locate where content is stored and to confirm that the repository is trustworthy. Ex.
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`1013 at 7:63-8:7; Ex. 1014 at 8:4-9, 9:27-30, 9:54-65; Ex. 1021 at 63-64. A POSITA
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`would have known that a SIM portion would have served the same purpose.
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`Moreover, PO presents no evidence disputing that a block of memory
`
`containing only a single user identifier can be a SIM portion, or that a POSITA would
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`have known how to conform Stefik’s unique identifying number to the well-known
`
`SIM specification. See Ex. 1031 at 158:22-159:7, 160:5-161:22, 164:18-165:8; Ex. 1021
`
`at 63-64. Mr. Wechselberger explained that a POSITA would have found it obvious
`
`to embed a SIM portion (which could be, e.g., either memory or a card) in a DocuCard
`
`repository for the well-known purpose of using the SIM portion to identify the
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`
`
`
`-4-
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`
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`DocuCard repository to a network operator. Ex. 1021 at 63-64; Ex. 2025 at 281:4-
`
`282:3, 286:3-9. This SIM portion is one way of including unique identifying
`
`information (e.g., a SIM PIN) in the DocuCard repository when it is manufactured.
`
`See Ex. 1021 at 63-64; Ex. 1013 at 8:4-7; Ex. 1014 at Fig. 2, 7:51-65, 13:51-57. Thus,
`
`both Mr. Wechselberger’s and Dr. Katz’s testimony support the conclusion that it
`
`would have been obvious to include a SIM portion in a DocuCard repository.
`
`PO argues, without support, that Stefik might require a different “number of
`
`bits” than the number used by a SIM card. Not surprisingly, however, Stefik does not
`
`specify a number of bits that must be used for its unique identifier. See Exs. 1013,
`
`1014. Moreover, PO presents no evidence substantiating that Stefik’s unique
`
`identifier would be incompatible with even the specification of a SIM card (not
`
`claimed). See Ex. 1031 at 164:18-165:8. Thus, a POSITA would not have been
`
`deterred from using a SIM portion based on Stefik’s disclosure of unique identifying
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`information.
`
`To the extent PO contends the claim at issue requires a SIM card for a cell
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`phone in a wireless or cellular network, PO improperly interprets the claim. “It is
`
`settled law that when a patent claim does not contain a certain limitation and another
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`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 Am., 775 F.2d 1107, 1122
`
`(Fed. Cir. 1985). PO and Dr. Katz both did not take into account that ’598 patent
`
`claim 26 recites a SIM “portion,” while PO opted in claim 29 to instead recite a
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`
`
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`-5-
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`
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`“subscriber identity module (SIM) card device, wherein the SIM card device provides network
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`access to a mobile communications network….” See Ex. 1031 at 147:4-22; 150:17-151:9; ’598
`
`patent claim 29. Indeed, PO’s expert Dr. Katz expressed no opinion as to whether a
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`block of memory could satisfy the SIM portion recited in ’598 patent claim 26. See Ex.
`
`1031 at 158:22-159:7, 160:5-161:22. While claim 29 of the ’598 patent does require a
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`SIM card in a mobile communications network, claim 26 does not, but instead requires
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`only a SIM portion used “to identify a user of said portable data carrier to a network
`
`operator.” See Ex. 1001 claim 1.
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`III. CLAIM 26 IS INVALID IN VIEW OF GINTER
`
`A. Using a SIM Portion in Ginter Is Obvious
`
`As explained above, PO improperly interprets “SIM portion.” PO’s own
`
`expert admits that a POSITA would have understood that a SIM card’s memory
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`stored information that could uniquely identify either a device or a user. Ex. 1031 at
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`43:20-44:8. PO also presents no evidence disputing that a block of memory (e.g., the
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`RAM disclosed in Ginter) containing only a user identifier can be a SIM portion, or
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`addressing the difference between a SIM portion and a SIM card. See Ex. 1031 at 147:4-
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`22, 150:14-151:1, 158:22-159:7, 163:21-165:8; cf. Ex. 1015 at 229:12-17; Ex. 1021 at
`
`81-83. Ginter’s disclosure of memory used to uniquely identify an appliance itself
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`therefore already discloses, and at minimum renders obvious, a “SIM portion.”
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`Moreover, a POSITA would have found it obvious to include a SIM portion in
`
`the “Host” described by Ginter. As Dr. Katz admitted in his deposition, Ginter
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`
`
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`-6-
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`
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`discloses that one embodiment of an electronic appliance is a “Host” that includes an
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`“auxiliary terminal” that communicates “through the use of cellular, satellite, radio
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`frequency, or other communications means.” See Ex. 1021 at 81-82; see also Ex. 1015
`
`at 228:50-54 (host can be “another VDE electronic appliance”), 232:64-233:1 (host
`
`“may comprise an auxiliary terminal”), 233:40-42 (auxiliary terminal host “might take
`
`the form of a portable device”), 233:53-57 (portable auxiliary terminal host can
`
`communicate “through the use of cellular … communications means”); Ex. 1031 at
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`168:7-10, 168:14-16, 169:8-16, 170:2-15, 171:8-13, 171:19-172:1, 173:2-10, 175:3-5.
`
`This “Host” electronic appliance can be any type of electronic device, including a
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`portable personal digital assistant or phone communicating over a wireless or cellular
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`connection. See Ex. 1021 at 59-60, 81-83; see also Ex. 1015 at 34:1-6, 60:19-30, 109:2-5,
`
`233:53-57; see also Ex. 1031 at 171:8-172:10, 173:2-10, 175:3-5. It can be used, for
`
`example, instead of a traditional cash register to consummate a transaction over a
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`cellular connection. See Ex. 1015 at 233:40-234:2; Ex. 1031 at 168:7-10, 169:8-16,
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`170:2-15, 171:8-13.
`
`Using a SIM portion in this embodiment for the non-inventive purpose of
`
`identifying a device would have been well-known to a POSITA. See Decision at 15-
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`16, 20; Ex. 1001 at 4:9-13. Ginter’s “Host” electronic appliance contains information
`
`used to uniquely identify the appliance. See Ex. 1021 at 59-60, 81-83; see also Ex. 1015
`
`at 34:1-6, 60:19-30, 109:2-5, 233:53-57; see also Ex. 1031 171:8-172:10, 173:2-10, 175:3-
`
`5. This electronic appliance contains information used to uniquely identify the
`
`
`
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`-7-
`
`
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`appliance. See Ex. 1021 at 82-83; Ex. 1015 at 229:13-18, 289:10-26. Thus, a POSITA
`
`would have found it obvious to use a SIM portion in a “Host” electronic appliance
`
`communicating over a cellular network to serve a well-known purpose—uniquely
`
`identifying the electronic appliance to a network operator. See, e.g., Ex. 1021 at 81-83;
`
`Ex. 1015 at 229:13-18, 289:10-26; see also Decision at 19. Indeed, the Board concluded
`
`that combining Ginter with additional references disclosing use of a cell phone and
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`SIM card was “redundant.” Decision at 23.
`
`PO’s arguments regarding whether Ginter discloses or renders obvious a SIM
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`portion are contradicted by the express disclosure of Ginter. First, Ginter does not
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`limit its disclosure to transmitting information via “wired networks.” Cf. Resp. at 15.
`
`To the contrary, Dr. Katz admits that Ginter explicitly discloses allowing an electronic
`
`appliance to use “any of the connections … normally used within an electronic
`
`appliance,” including broadcast reception and wireless cellular connections; a “cable”
`
`is only one of several ways the appliance can connect to a network. See Ex. 1031 at
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`171:14-172:10, 173:2-10, 175:3-5; see also Ex. 1015 at 60:35-46, 233:53-57. Indeed, Dr.
`
`Katz admitted that an electronic appliance can be a pager or phone, and that pagers
`
`and phones both communicated wirelessly in the prior art. Ex. 1031 at 170:2-4,
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`170:10-12, 173:2-10.
`
`Second, PO is incorrect when stating that Ginter does not describe “cellular
`
`communication by the electronic appliance or PEA, but rather communication by an
`
`‘auxiliary terminal’ to see if the appliance is trustworthy.” See Resp. at 14. Ginter
`
`
`
`
`-8-
`
`
`
`discloses that using a cellular connection optimizes efficiency “by allowing clerks and
`
`other personnel to consummate transactions at points other than traditional cash register
`
`locations”—not just to see if an appliance is trustworthy. Ex. 1015 at 233:53-234:2.
`
`Moreover, even if PO were correct that cellular communications are disclosed only in
`
`a different embodiment in Ginter, it still would have been obvious to a POSITA that
`
`the combined teachings of two embodiments within the same reference disclose an
`
`electronic appliance communicating over a cellular connection. See Boston Scientific
`
`Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (“Combining two
`
`embodiments disclosed adjacent to each other in a prior art patent does not require a
`
`leap of inventiveness.”).2
`
`IV. MR. WECHSELBERGER’S OPINIONS ARE ENTITLED TO
`GREATER WEIGHT THAN DR. KATZ’S
`
`Dr. Katz’s unsupported opinions, to the extent they are given any weight at all,
`
`should be given far less weight than Mr. Wechselberger’s. Dr. Katz’s degrees in
`
`chemistry and mathematics at the time of the invention did not qualify him as a
`
`POSITA under either party’s definition. See Ex. 2030 App’x A; Extreme Networks, Inc.
`
`v. Enterasys Networks, Inc., 395 F. App’x 709, 715 (Fed. Cir. 2010) (opinion from expert
`
`who was not a POSITA was properly excluded). PO cannot reasonably dispute that,
`
`2 PO’s final argument about the “number of bits required” is unsupported for the
`
`same reason the argument is unsupported for Stefik. Ginter does not specify any
`
`required “number of bits.”
`
`
`
`
`-9-
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`
`
`at the priority date, Dr. Katz met neither Petitioner’s nor even Dr. Katz’s own
`
`definition of a POSITA—a person with “a bachelor’s degree in electrical engineering
`
`or its equivalent, or at least 5 years of experience in manufacturing or engineering, with
`
`significant exposure to the digital content distribution and/or e-commerce industries.” See Ex. 2030
`
`¶ 9 (emphasis added); Pet. at 5 n.3. Dr. Katz testified at deposition that, at the
`
`priority date, he had, at most, just over one year of classes relating to computer
`
`science and a few months’ experience as a security consultant. See Ex. 1031 at 183:20-
`
`185:17; Ex. 2030 App’x A; Extreme Networks, 395 F. App’x at 715 (“General
`
`experience in a related field may not suffice when experience and skill in [the specific
`
`art] are necessary to resolve patent issues.” citing Flex-Rest, LLC v. Steelcase, Inc., 455
`
`F.3d 1351, 1360-61 (Fed. Cir. 2006)); Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
`
`1356, 1364 (Fed. Cir. 2008) (invalidity opinions from a witness who is not an expert in
`
`the relevant art are inadmissible). This undisputed lack of experience belies Dr.
`
`Katz’s conclusory contention during redirect examination that he was a POSITA. See
`
`id.3
`
`
`3 Indeed, this inconsistency is but one example of testimony PO elicited on redirect
`
`examination that contradicts Dr. Katz’s earlier statements at deposition and in his
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`declaration. See, e.g., Ex. 1031 at 138:7-17, 140:19-141:4, 178:8-179:1 (whether Dr.
`
`Katz believes a prior art reference discloses payment validation data); Ex. 1031 at
`
`168:20-169:1, 180:7-20 (Dr. Katz’s understanding of “comprising”); Ex. 1031 at
`
`
`
`
`-10-
`
`
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`Dr. Katz’s lack of relevant expertise is further confirmed by his repeated
`
`admissions at deposition that he was “not sure” about various technologies that are
`
`indisputably in the relevant prior art, and that he does not know what a POSITA
`
`would have understood about that technology. For example, despite opining that a
`
`POSITA would have “significant exposure to the digital content distribution and/or
`
`e-commerce industries” (Ex. 2030 ¶ 9), Dr. Katz admitted that he is:
`
` Not sure whether, in the prior art time period, digital content was bought and
`
`sold over the Internet, or if a POSITA would have understood that digital
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`content could be bought and sold over a network or the Internet (Ex. 1031 at
`
`13:16-14:3, 16:2-5);
`
` Not sure whether a POSITA would have known how to implement electronic
`
`payment or electronic sales of digital content (id. at 21:12-16, 23:2-15);
`
` Not sure whether debit, debit transactions, or debit processing were in the
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`prior art or if, even today, debit cards are used to pay for goods electronically
`
`(id. at 31:14-17, 18:1-7, 18:15-20, 30:15-19, 32:5-14, 33:5-10);
`
` Not sure whether a POSITA would have understood the differences between
`
`debit and credit, or what activating a credit account was (id. at 21:8-11, 31:3-13);
`
`
`19:11-14, 192:5-9, 195:19-22 (POSITA’s understanding of “credit server”). Dr. Katz’s
`
`repeated willingness to flip positions in his sworn testimony underscores how little
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`weight it can be accorded.
`
`
`
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`-11-
`
`
`
` Not sure whether a POSITA would have known how to implement systems
`
`where payment is made before or after content is received, or what a
`
`“prepayment” was (id. at 33:11-15, 33:16-19, 86:16-21, 89:7-11, 89:18-21);
`
` Not sure whether a POSITA would have a reason for validating payment after
`
`payment was made (id. at 26:16-20);
`
` Not sure whether the concept of “try and buy” software existed in the prior art
`
`(id. at 38:2-5);
`
` Not sure whether SIM cards were used for billing in the prior art, or if a
`
`POSITA would have understood that SIM cards could be used for billing (id. at
`
`44:9-14, 44:18-45:11, 45:20-46:1).
`
`Dr. Katz also testified repeatedly that he was “not sure” how a POSITA would
`
`interpret several passages of the cited prior art and several passages of the challenged
`
`patents. For example, Dr. Katz testified that, after spending 20 hours formulating his
`
`opinions (see Ex. 1031 at 11:13-12:2), he is:
`
` Not sure whether payment happens before or after receipt of content in the
`
`embodiments described in the ’221 patent (1031 at 107:18-21, 109:8-22, 110:7-
`
`111:4);
`
` Not sure and has not formulated an opinion about whether the ’221 patent
`
`discloses alternative embodiments in which payment can be made before or
`
`after content is received (id. at 86:4-12);
`
`
`
`
`-12-
`
`
`
` Not sure whether Stefik ‘235 Figure 3 involves accessing a desired document
`
`and payment of fees for that desired document or digital work (id. at 60:1-4,
`
`63:15-17, 73:14-17; Ex. 1013 Fig. 3);
`
` Not sure what role a credit account would have in Stefik ‘235 Fig. 3 as that
`
`term is used in describing Fig. 3 (Ex. 1031 at 70:8-11, 74:21-75:7; cf. Ex. 1013 at
`
`6:60-65; see also Ex. 1031 at 61:8-62:13, 65:5-10);
`
` Not sure whether in Stefik ‘235 the credit card number used in connection with
`
`the transaction in Figure 3 could be “payment data” (Ex. 1031 at 71:12-17,
`
`73:2-9);
`
` Not sure whether credit and financial records referenced in Ginter can include
`
`“payment data” (id. at 131:6-8, 132:2-16);
`
` Not sure whether anything in Ginter would preclude payment occurring before
`
`access to a VDE object is granted (id. at 94:4-13);
`
` Not sure and did not consider whether a POSITA would have understood that
`
`the “prepayments,” “credits,” “debits,” and “currency token deposit accounts”
`
`referred to in Ginter could be used to pay for a VDE object (id. at 119:5-21,
`
`120:13-18, 120:19-121:6, 121:22-122:9).
`
`Dr. Katz’s statement on redirect by PO that he “wasn’t sure” because he “felt
`
`that the majority of the questions [he] was asked were outside the scope of [his]
`
`declaration” confirms that Dr. Katz’s opinions should be given little weight. See Ex.
`
`1031 at 194:11-195:3. Dr. Katz agrees in his declaration that “the scope and content
`
`
`
`
`-13-
`
`
`
`of the prior art” and “the level of ordinary skill in the art” are relevant considerations
`
`for obviousness. Ex. 2030 ¶ 7. His declaration also states that he is qualified to opine
`
`on a POSITA’s understanding and motivations. Ex. 2030 ¶ 10. Contrary to Dr.
`
`Katz’s belief that questions were “outside the scope” of this declaration, each of these
`
`questions is relevant to these assertions in Dr. Katz’s declaration, as well as to specific
`
`claim limitations he disputes are disclosed or rendered obvious by prior art, including
`
`“payment data,” “payment validation data,” and “subscriber identity module (SIM)
`
`portion.” This demonstrates that Dr. Katz (a) does not know this information and is
`
`therefore not a qualified expert; and/or (b) did not properly consider the scope and
`
`content of the prior art or a POSITA’s understanding of the prior art. Thus, his
`
`opinions are entitled to little if any weight.
`
`By contrast, Mr. Wechselberger is a highly-qualified expert who by the priority
`
`date in 1999 already had Bachelor’s and Master’s degrees in Electrical Engineering and
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`well over a decade of expertise in relevant technologies. See Ex. 1021 App’x A (CV);
`
`id. ¶¶ 2, 12. Indeed, PO offers no evidence disputing that Mr. Wechselberger is a
`
`qualified expert. See Decision at 16 n.5. Instead, PO’s Response is reduced to
`
`recycling the argument from its Preliminary Response that omitting the “standard of
`
`evidence” from an expert declaration affects that expert’s credibility, which the Board
`
`already properly rejected in its Decision. See Prelim. Resp. at 16-17; Decision at 16
`
`n.5. The Board correctly concluded that this purported omission is not “evidence
`
`that Mr. Wechselberger used incorrect criteria, failed to consider evidence, or is not an
`
`
`
`
`-14-
`
`
`
`expert in the appropriate field.” Decision at 16 n.5. Experts are not required to
`
`“recite or apply the ‘preponderance of the evidence’ standard expressly in order for
`
`the expert testimony to be accorded weight.” See IPR2013-00172, Paper No. 50 at 42.
`
`Mr. Wechselberger cited specific evidence showing “how much evidence he thinks
`
`shows [each] of his opinions discussed therein”—and this evidence amply supports
`
`his conclusions. Cf. Resp. at 7.
`
`
`
`
`
` April 17, 2015
`
`Respectfully submitted,
`
`By: /J. Steven Baughman/
`
`J. Steven Baughman (lead counsel) 47,414 Ching-Lee Fukuda (backup counsel) 44,334
`Ropes & Gray LLP
`Megan F. Raymond, 72,997
`1211 Avenue of the Americas
`Ropes & Gray LLP
`One Metro Center, 700 12th St. – Ste. 900
`New York, NY 10036
`Washington, D.C. 20005-3948
`P: 212-596-9336/ F:212-596-9000
`P: 202-508-4606/ F: 202-383-8371
`Ching-Lee.Fukuda@ropesgray.com
`
`Steven.Baughman@ropesgray.com
`Megan.Raymond@ropesgray.com
`Mailing address for all correspondence: ROPES & GRAY LLP, IPRM – Floor 43,
`Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600
`
`
`
`
`-15-
`
`
`
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`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PETITIONER’S
`
`REPLY TO PATENT OWNER’S RESPONSE and accompanying exhibits were
`
`served on April 17, 2015, to the following Counsel for Patent Owner via e-mail,
`
`pursuant to the parties’ agreement concerning service:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`mcasey@dbjg.com
`jsd@dbjg.com
`docket@dbjg.com
`
`Attorneys for Patent Owner Smartflash LLC
`
`
`
`
`
`
`
`
`
`
`
`
`/Brian D. Matty/_____
`Brian D. Matty
`
`
`
`ROPES & GRAY LLP
`
`1
`
`
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