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
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`1 Case CBM2014-00109 has been consolidated with the instant proceeding.
`
`
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`Petitioner
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2014-001081
`Patent 8,061,598
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`1 Case CBM2014-00109 has been consolidated with the instant proceeding.
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`TABLE OF CONTENTS
`
`
`I.
`
`Statement of Precise Relief Requested ............................................................ 1
`
`II.
`
`Patent Owner Smartflash Timely Objected to Petitioner’s Exhibits ............... 1
`
`III. Argument ......................................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Exhibit 1002 is Inadmissible Other Evidence of the Content of a
`Writing, Irrelevant, and Cumulative. .................................................... 2
`Exhibits 1003, 1004, 1005, 1019, 1022, 1028, and 1029 are Uncited
`and thus are Irrelevant. .......................................................................... 3
`Exhibits 1006, 1007, 1008, 1012, and 1020 are Not Alleged to be
`Invalidating Prior Art and thus are Irrelevant. ...................................... 4
`Exhibits 1016, 1017, and 1018, are not the Basis for any Invalidity
`Grounds for Which CBM2014-00108/109 was Initiated and thus are
`Irrelevant. .............................................................................................. 5
`Exhibit 1021 Lacks Foundation, is Unreliable, and Relies on
`Irrelevant Exhibits. ................................................................................ 5
`Certain Portions of Exhibit 1031 – (Deposition Testimony of Patent
`Owner’s Expert Dr. Katz) Should be Excluded as Eliciting Testimony
`Outside the Scope of this Proceeding and as Irrelevant ........................ 9
`Exhibits 1101-1120 and 1122-1129 are Cumulative and Subject to
`Exclusion for the Reasons Cited Above .............................................. 17
`Exhibit 1121 is Cumulative and Subject to Exclusion for the Reasons
`Cited Above for Exhibit 1021. ............................................................ 18
`IV. Conclusion ..................................................................................................... 19
`
`E.
`
`F.
`
`G.
`
`H.
`
`
`
`i
`
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`I.
`
`Statement of Precise Relief Requested
`
`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Patent Owner Smartflash LLC
`
`moves to exclude Exhibits 1002, 1003, 1004, 1005, 1006, 1007, 1008, 1012, 1016,
`
`1017, 1018, 1019, 1020, 1021, 1022, 1028, and 1029. To the extent that Exhibits
`
`1101 – 1120 and 1122 – 1129 from CBM2014-00109, which was consolidated
`
`with this action, are considered to be in the record in this action, Patent Owner
`
`moves to exclude them as duplicative of their corresponding exhibits from
`
`CBM2014-00108. Patent Owner also moves to exclude Exhibit 1121 and portions
`
`of Exhibit 1031.
`
`
`
`II. Patent Owner Smartflash Timely Objected to Petitioner’s Exhibits
`Patent Owner Smartflash LLC timely objected to CBM2014-00108 Exhibits
`
`1002, 1003, 1004, 1005, 1006, 1007, 1008, 1012, 1016, 1017, 1018, 1019, 1020,
`
`1021, 1022, 1028, and 1029, as well as CBM2014-00109 Exhibits 1101 – 1120,
`
`1122 – 1129 and 1121. Exhibit 2053. Patent Owner lodged objections to Exhibit
`
`1031 during the deposition of Dr. Jonathan Katz.
`
`
`
`III. Argument
`Pursuant to 37 C.F.R. § 42.64(c), the Federal Rules of Evidence apply in
`
`Covered Business Method Review proceedings.
`
`
`
`1
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`A. Exhibit 1002 is Inadmissible Other Evidence of the Content of a
`Writing, Irrelevant, and Cumulative.
`
`Patent Owner moves to exclude Exhibit 1002, (Plaintiff’s First Amended
`
`Complaint) on grounds that it is: inadmissible other evidence of the content of a
`
`writing under FRE 1004; inadmissible under FRE 402 because it fails the test for
`
`relevance set forth in FRE 401; and, even if relevant, is cumulative evidence under
`
`FRE 403.
`
`The Petition cites to Exhibit 1002 for the sole purpose of showing Patent
`
`Owner’s description of the subject matter of U.S. Patent 8,061,598 (“the ‘598
`
`Patent”) as “cover[ing] a portable data carrier for storing data and managing access
`
`to the data via payment information and/or use status rules” and “cover[ing] a
`
`computer network … that serves data and manages access to data by, for example,
`
`validating payment information.” Petition at 15 (citing Ex. 1002 ¶ 17). Petitioner
`
`does not need to cite to Exhibit 1002 to show the subject matter of the ‘598 Patent,
`
`however, because Exhibit 1001, the actual ‘598 Patent, is in evidence without
`
`objection. Under FRE 1004, other evidence of the content of a writing (here the
`
`‘598 Patent) is admissible if the original is lost, cannot be obtained, has not been
`
`produced, or the writing is not closely related to a controlling issue. None of those
`
`conditions apply here, given that the ‘598 Patent is in evidence and is the subject of
`
`the trial.
`
`
`
`2
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`Patent Owner’s description of the ‘598 Patent in Exhibit 1002 is not relevant
`
`to any of the issues here. Petitioner’s expert, Anthony J. Wechselberger’s
`
`Declaration, Exhibit 1021, (“first Wechselberger Declaration”) does not cite to
`
`Exhibit 1002. The Board’s September 30, 2014 Decision – Institution of Covered
`
`Business Method Patent Review 37 C.F.R. § 42.208 (“PTAB Decision”), Paper 8,
`
`does not cite to Exhibit 1002. Exhibit 1002 does not appear to make a fact of
`
`consequence in determining this action more or less probable than it would be
`
`without Exhibit 1002. As such, Exhibit 1002 does not pass the test for relevant
`
`evidence under FRE 401 and is not admissible per FRE 402.
`
`Even if Exhibit 1002 was found to be relevant, it should also be excluded
`
`under FRE 403 as cumulative of Exhibit 1001.
`
`B.
`
`Exhibits 1003, 1004, 1005, 1019, 1022, 1028, and 1029 are Uncited
`and thus are Irrelevant.
`
`Neither the Petition, nor the Wechselberger Declaration, nor the PTAB
`
`Decision cite to Exhibit 1003 (File History for U.S. Patent No. 8,033,458), Exhibit
`
`1004 (File History for U.S. Patent No. 8,118,221), Exhibit 1005 (File History for
`
`U.S. Patent No. 8,336,772), Exhibit 1019 (JP Patent Application Publication No.
`
`H10-269289 (translation), Exhibit 1022 (U.S. Patent No. 5,754,654), Exhibit 1028
`
`(File History for U.S. Patent No. 7,334,720), or Exhibit 1029 (File History for U.S.
`
`Patent No. 7,942,317)(“the Uncited Exhibits”). The Uncited Exhibits do not
`
`
`
`3
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`appear to make a fact of consequence in determining this action more or less
`
`probable than it would be without the Uncited Exhibits. As such, the Uncited
`
`Exhibits do not pass the test for relevant evidence under FRE 401 and are not
`
`admissible per FRE 402.
`
`C. Exhibits 1006, 1007, 1008, 1012, and 1020 are Not Alleged to be
`Invalidating Prior Art and thus are Irrelevant.
`
`Although cited, neither the Petition nor the Wechselberger Declaration assert
`
`that Exhibit 1006 (U.S. Patent No. 4,999,806), Exhibit 1007 (U.S. Patent No.
`
`5,675,734), Exhibit 1008 (U.S. Patent No. 4,878,245), Exhibit 1012 (U.S. Patent
`
`No. 5,103,392), or Exhibit 1020 (Eberhard von Faber, Robert Hammelrath, and
`
`Franz-Peter Heider, “The Secure Distribution of Digital Contents,” IEEE
`
`(1997))(“the Unasserted Exhibits”) are potentially invalidating prior art, either
`
`alone or in combination with any other reference. The PTAB Decision did not
`
`base any of its analysis on the Unasserted Exhibits. Thus, the Unasserted Exhibits
`
`do not appear to make a fact of consequence in determining this action more or less
`
`probable than it would be without the Unasserted Exhibits. As such, the
`
`Unasserted Exhibits do not pass the test for relevant evidence under FRE 401 and
`
`are not admissible per FRE 402.
`
`
`
`4
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`D. Exhibits 1016, 1017, and 1018, are not the Basis for any Invalidity
`Grounds for Which CBM2014-00108/109 was Initiated and thus
`are Irrelevant.
`
`The PTAB Decision did not adopt any of the proposed invalidity grounds
`
`based on Exhibit 1016 (European Patent Application, Publication No.
`
`EP0809221A2 (“Poggio”)), Exhibit 1017 (PCT Application Publication No. WO
`
`99/43136 (“Rydbeck”)), or Exhibit 1018 (JP Publication No. H11-164058A
`
`(translation)(“Sato”)). Compare, PTAB Decision at 3-4 (chart showing grounds
`
`for challenging patentability including alleged prior art references Poggio,
`
`Rydbeck, and Sato), with PTAB Decision at 26 (granting covered business method
`
`review on grounds other than alleged prior art references Poggio, Rydbeck, or
`
`Sato). Thus, Exhibits 1016, 1017, and 1018 fail the test for relevant evidence
`
`because nothing in Exhibits 1016, 1017, and 1018 make a fact of consequence in
`
`determining this action more or less probable than it would be without Exhibits
`
`1016, 1017, and 1018. FRE 401(b). Being irrelevant evidence, Exhibits 1016,
`
`1017, and 1018 are not admissible. FRE 402.
`
`E.
`
`Exhibit 1021 Lacks Foundation, is Unreliable, and Relies on
`Irrelevant Exhibits.
`
`Federal Rule of Evidence 702 provides:
`
`RULE 702. TESTIMONY BY EXPERT WITNESSES
`A witness who is qualified as an expert by knowledge,
`skill, experience, training, or education may testify in the
`form of an opinion or otherwise if:
`
`
`
`5
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`(a) The expert’s scientific, technical, or other specialized
`knowledge will help the trier of fact to understand the
`evidence or to determine a fact in issue;
`(b) The testimony is based on sufficient facts or data;
`(c) The testimony is the product of reliable principles and
`methods; and
`(d) The expert has reliably applied the principles and
`methods to the facts of the case.
`
`FRE 702. Patent Owner moves to exclude to Exhibit 1021, the first Wechselberger
`
`Declaration, in its entirety as the first Wechselberger Declaration does not state the
`
`relative evidentiary weight (e.g., substantial evidence versus preponderance of the
`
`evidence) used in arriving at his conclusions. “A finding is supported by
`
`substantial evidence if a reasonable mind might accept the evidence to support the
`
`finding.” Q. I. Press Controls, B.V. v. Lee, 752 F.3d 1371, 1378-1379 (Fed. Cir.
`
`2014)(citing Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S. Ct. 206, 83 L.
`
`Ed. 126 (1938)). Proof by a “preponderance of the evidence” means “that it is
`
`more likely than not.” See, O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,
`
`449 Fed. Appx. 923, 928 (Fed. Cir. 2011). The Board cannot assess whether Mr.
`
`Wechselberger’s opinion testimony is “the product of reliable principles and
`
`methods” or if Mr. Wechselberger “reliably applied the principles and methods to
`
`the facts of the case” given that Mr. Wechselberger did not disclose the standard
`
`against which he measured the quantum of prior art reference evidence in arriving
`
`at his opinions. Specifically, when Mr. Wechselberger concludes “in my opinion,
`
`
`
`6
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`the challenged claims would have been in the possession of or obvious to one of
`
`ordinary skill in the art from the disclosures in one or more of certain prior art
`
`references” (Exhibit 1021 at ¶ 67) is he saying that he examined the prior art
`
`references and a reasonable mind would find sufficient evidence to support that
`
`one of ordinary skill in the art had possession of the claims / would find the claims
`
`obvious (substantial evidence); OR is he saying that he examined the prior art
`
`references and it is more likely than not that one of ordinary skill in the art had
`
`possession of the claims / would find the claims obvious (preponderance of the
`
`evidence). There is no basis for the Board to know, because the first
`
`Wechselberger Declaration is silent on the standard he used. As such the first
`
`Wechselberger Declaration should be excluded because it lacks foundation. FRE
`
`602.
`
`In addition, the first Wechselberger Declaration does not sufficiently state
`
`the criteria 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 first Wechselberger Declaration does not state
`
`whether he considered evidence tending to show that one of ordinary skill in the art
`
`would not have made his proposed combination. Moreover, the first
`
`Wechselberger Declaration treats the components of the prior art as if one could
`
`mix and match any and all combinations and does not address sufficiently why a
`
`
`
`7
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`person of ordinary skill in the art would be motivated to make specific
`
`combinations rendering the ‘598 Patent obvious. As such it should be excluded
`
`because it lacks foundation. FRE 602.
`
`Additionally, the first 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 state that he is an
`
`expert in the types of methods and systems defined by the challenged claims, nor
`
`does he provide proof that he is an expert. Mr. Wechselberger does not show that
`
`he is “a witness who is qualified as an expert by knowledge, skill, experience,
`
`training, or education” such that he “may testify in the form of an opinion.” FRE
`
`702. Thus, Mr. Wechselberger has not proven that his opinions are proper expert
`
`opinions upon which the PTAB can rely as opposed to inadmissible lay opinions.
`
`FRE 701 and 702.
`
`Certain specific paragraphs in the first Wechselberger Declaration should be
`
`excluded because they rely on exhibits that are irrelevant. Paragraphs 36, 37, 38,
`
`39, 41, 42, and 43 contain testimony about the Unasserted Exhibits. Paragraphs
`
`40, 46, 47, 62, 63, 64, 65, and 66 contain testimony about Exhibits 1016, 1017, and
`
`1018, all exhibits not relied upon by the PTAB to institute this proceeding. As
`
`such, Paragraphs 36, 37, 38, 39, 40, 41, 42, 43, 46, 47, 62, 63, 64, 65, and 66
`
`
`
`8
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`should be excluded as not being relevant under FRE 401, and therefore being
`
`inadmissible under FRE 402.
`
`F. Certain Portions of Exhibit 1031 – (Deposition Testimony of
`Patent Owner’s Expert Dr. Katz) Should be Excluded as Eliciting
`Testimony Outside the Scope of this Proceeding and as Irrelevant
`
`Patent Owner moves to exclude portions of Exhibit 1031 (Katz Deposition
`
`Transcript) on grounds that the questions asked were outside the scope of Dr.
`
`Katz’s declaration and thus outside the scope of this proceeding as not in
`
`compliance with 37 CFR 42.53(d)(5)(ii) (“For cross-examination testimony, the
`
`scope of the examination is limited to the scope of the direct testimony”) and/or
`
`irrelevant.
`
`Exhibit 1031 36:10-37:11 – This line of questioning asked Dr. Katz whether
`
`a person of ordinary skill in the art would have understood that access to stored
`
`data could be restricted based on whether or how much payment had been made or
`
`based on payment validation. Patent Owner objected based on relevance and
`
`scope. Petitioner cites the testimony to allege that “Dr. Katz repeatedly testified he
`
`is ‘not sure’ what a POSITA would have understood regarding” various subjects.
`
`Petitioner’s Reply To Patent Owner’s Response (“Petitioner’s Reply”), Paper 31,
`
`at 2. This testimony is not relevant because it relates to conditional access and
`
`none of the claims at issue relate to conditional access to stored data. Moreover,
`
`the question was asked in terms of “payment validation” and not “payment
`
`
`
`9
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`validation data.” Because the question went to claims and terms outside the scope
`
`of the proceeding as instituted, it was beyond the scope of Dr. Katz’s declaration.
`
`The testimony should thus be excluded under FRE 402 and 37 CFR 42.53(d)(5)(ii).
`
`Exhibit 1031 44:18 – 46:1 – This testimony relates to whether in the prior art
`
`time period a person of ordinary skill in the art would have understood that SIM
`
`cards could be used for billing purposes. Patent Owner objected on relevance
`
`grounds. Petitioner cites the testimony in a list of things that Dr. Katz purportedly
`
`admits he is not sure of, including “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.” Petitioner’s Reply at 12. This testimony is not relevant. Claim 26 of the
`
`‘598 Patent recites “A portable data carrier, comprising: ... a subscriber identity
`
`module (SIM) portion storing identification data to identify a user of said portable
`
`carrier to a network operator.” The issue in this proceeding is not whether SIM
`
`cards were or could be used for billing, but rather, 1) whether one skilled in the art
`
`“would have been motivated and found it obvious to employ a memory card for a
`
`mobile or cellular device that included a SIM portion that identifies a subscriber to
`
`a network operator, such as a mobile phone, as a repository in Stefik’s content
`
`distribution and access network” (PTAB Decision at 15 (emphasis added)); and 2)
`
`whether one skilled in the art “would have considered it at a minimum obvious for
`
`the portable data carrier (e.g. electronic appliance) to communicate with Ginter’s
`
`
`
`10
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`network using a cellular connection and therefore to include a subscriber identity
`
`module (SIM) portion (id. at 20). As such, any testimony about what a person
`
`skilled in the art would know about SIM cards in the prior art period being used for
`
`billing is outside the scope of this proceeding and Dr. Katz’s declaration and
`
`therefore is irrelevant. This testimony should be excluded under FRE 401 and 402.
`
`Exhibit 1031 70:1 – 73:9 – This testimony relates to whether the Stefik ‘235
`
`reference would exclude the use of a credit card and whether the credit card
`
`number could be payment data. Petitioner cites it to allege that Dr. Katz was “not
`
`sure” what a POSITA would have understood about passages of the cited prior art.
`
`Petitioner’s Reply at 2. Patent Owner objected on grounds of relevance and
`
`incomplete hypothetical. Even if Stefik ‘235 does not exclude the use of a credit
`
`card, that does not mean that it discloses it, which is the relevant issue. Further,
`
`with respect to Figure 3 transaction, the hypothetical is incomplete as to how a
`
`credit card would be used if it were used in a Figure 3 transaction, even assuming
`
`that it could be used. The testimony should thus be excluded under FRE 402.
`
`Exhibit 1031 110:7 – 111:4 – This testimony relates to Petitioner’s question
`
`about “when does payment data happen vis-à-vis the receipt of content?” and Dr.
`
`Katz’s “understanding of what the differences are between the two embodiments
`
`described in the ‘221 Patent, Column 23, Lines 1 through 7.” Patent Owner
`
`objected to the prior on form and the latter on scope grounds. Petitioner cites the
`
`
`
`11
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`testimony in a litany of items about which Dr. Katz purportedly “was ‘not sure’”.
`
`Petitioner’s Reply at 12. But the first question is nonsensical because “payment
`
`data” does not “happen.” The second question about the differences between two
`
`embodiments in the ‘221 Patent has not been linked to any relevant issue on which
`
`Dr. Katz provided his opinion in his Declaration. Thus, cross-examination on
`
`those differences was not within the scope of his direct testimony, and this
`
`testimony should thus be excluded under 37 CFR 42.53(d)(5)(ii).
`
`Exhibit 1031 124:10 – 128:11 – This testimony relates to whether certain
`
`things would be an example of, or constitute, “prepurchase processing.” Patent
`
`Owner objected on scope grounds. Petitioner cites the testimony to allege that Dr.
`
`Katz was “not sure” what a POSITA would have understood about passages of the
`
`cited prior art. Petitioner’s Reply at 2. The problem, however, was with the
`
`questions, not Dr. Katz’s answers. Counsel for Petitioner never established a
`
`definition of what he meant by “prepurchase processing” and never asked for Dr.
`
`Katz’s understanding of that term. See Exhibit 1031 190:11-19 where Dr. Katz
`
`indicated that he did not know what Petitioner’s counsel meant by “preusage
`
`processing” and “prepurchase processing.” As such, Dr. Katz was unable to
`
`answer the questions as presented. The testimony should be excluded as not being
`
`limited to the scope of the direct testimony. 37 CFR § 42.53(d)(5)(ii).
`
`
`
`12
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`Exhibit 1031 149:4 – 151:9 – This testimony relates to comparisons between
`
`the claim language of Claim 29 and Claim 26 of the ‘598 Patent, in particular the
`
`reference to “a subscriber identity module (SIM) card device.” Patent Owner
`
`objected on grounds of relevance and scope. Petitioner cites the testimony to
`
`allege that Dr. Katz “did not take into account that ‘598 Patent claim 26 recites a
`
`SIM ‘portion,’ while … Claim 29 instead … recite[s] a ‘subscriber identity module
`
`(SIM) card device’ (Petitioner’s Reply at 5-6), and to allege that Patent Owner
`
`presented no evidence addressing the difference between a SIM portion and a SIM
`
`card (id. at 6). Petitioner criticizes Dr. Katz over an issue – “the difference
`
`between a SIM portion and a SIM card” – that simply does not exist. Claim 26 of
`
`the ‘598 Patent claims “A portable data carrier, comprising, … a subscriber
`
`identity module (SIM) portion to identify a subscriber to a network operator.” The
`
`“SIM portion” refers back to the portable data carrier; i.e., it is a portion of the
`
`portable data carrier. The SIM portion of the portable data carrier can be a SIM
`
`card or some other discrete part of the portable data carrier that acts as a SIM in the
`
`portable data carrier. The Petition alleges that “a POSITA would have been
`
`motivated to employ a memory card for a mobile or cellular device that included a
`
`SIM portion that identifies a subscriber to a network operator… .” Petition at 65,
`
`n. 17 (emphasis added). Dr. Katz’ declaration, therefore, was directed to whether
`
`the prior art showed motivation to employ whole memory cards to satisfy the claim
`
`
`
`13
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`element, and not differences between a SIM portion and a SIM card. As such, the
`
`deposition testimony is outside the scope of Dr. Katz’s declaration and should be
`
`excluded under 37 CFR § 42.53(d)(5)(ii). The testimony is also irrelevant and
`
`should be excluded under FRE 402.
`
`Exhibit 1031 152:7 – 156:12, 158:22 – 159:7 and 159:8 – 161:22 – The
`
`testimony at 152:7 – 156:12 follows from a question “is a memory address a
`
`portion of a subscriber identity module.” Patent Owner objected on grounds of
`
`scope. Petitioner cites this testimony as support for the position that “Dr. Katz
`
`expressed no opinion about” whether “a common memory block containing only a
`
`single user identifier can be a SIM portion” (Petitioner’s Reply at 1, 2), then to
`
`purportedly show Dr. Katz testifying that he is not sure about a “POSITA’s
`
`understanding of passages of the ‘598 Patent” (id. at 2), and finally to show Dr.
`
`Katz’s purported “confusion about… the meaning of the term ‘SIM portion’” (id at
`
`3.). The remaining testimony (158:9-161:22) relates to whether “a block of
`
`memory” would meet the ‘598 Patent Claim 26 requirement of “a subscriber
`
`identity module (SIM) portion” and whether “a single block of memory storing
`
`only a single user identification number” could satisfy limitation of Claim 26 of the
`
`‘598 Patent “a subscriber identity module (SIM) portion storing identification data
`
`to identify a user of said portable data carrier to a network operator.” Patent
`
`Owner objected to the scope. Petitioner cites the testimony to claim that Patent
`
`
`
`14
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`Owner “present[ed] 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” (Petitioner Reply at 2, 4), to allege that Dr. Katz contradicted
`
`himself “about the meaning of the term ‘SIM portion’” (id. at 2-3), to claim that
`
`Patent Owner “present[ed] no evidence disputing that a common memory block
`
`containing only a single user identifier can be a SIM portion” (id. at 4, 6); and to
`
`claim that Patent Owner “present[ed] no evidence… addressing the difference
`
`between a SIM portion and a SIM card” (id. at 6). Petitioner interjects confusion
`
`trying to parse “a subscriber identity module (SIM) portion” by introducing the
`
`concept of “a portion of a subscriber identity module.” Claim 26 of the ‘598
`
`Patent claims “[a] portable data carrier, comprising, … a subscriber identity
`
`module (SIM) portion…”. The claimed portable data carrier is comprised of,
`
`among other things, a SIM portion. What internal structures the SIM portion could
`
`be comprised of, be it “a memory address,” “a block of memory,” or “a single
`
`block of memory storing only a single user identification number” as asked in the
`
`deposition is beyond the scope of the positions taken in the Petition, and further is
`
`neither the subject of the claim nor the subject of this proceeding. The Petition
`
`alleges that “a POSITA would have been motivated to employ a memory card for a
`
`mobile or cellular device that included a SIM portion that identifies a subscriber to
`
`a network operator… .” Petition at 65, n. 17 (emphasis added). Dr. Katz’
`
`
`
`15
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`declaration, therefore, was directed to whether the prior art showed motivation to
`
`employ whole memory cards to satisfy the claim element, not what other things
`
`undisclosed in the Petition might satisfy the claim element. As such, the
`
`deposition testimony was outside the scope of Dr. Katz’ declaration and should be
`
`excluded under 37 CFR § 42.53(d)(5)(ii).
`
`Exhibit 1031 163:21 – 165:8 – This testimony relates to whether a person of
`
`ordinary skill in the art would have known how to align the unique number
`
`assigned to the repository as referenced in Stefik ‘980 patent column 13 with the
`
`specified byte format of a SIM card. Patent Owner objected to the scope.
`
`Petitioner cites the testimony to assert that Patent Owner “present[ed] 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” (Petitioner’s
`
`Reply at 2, 4), to assert that “a POSITA would have known how to conform
`
`Stefik’s unique identifying number to the well-known SIM specification” (id. at 5),
`
`and to assert that Patent Owner “present[ed] no evidence … addressing the
`
`difference between a SIM portion and a SIM card” (id. at 6). Claim 26 of the ‘598
`
`Patent claims “[a] portable data carrier, comprising, … a subscriber identity
`
`module (SIM) portion…”. The claimed portable data carrier is comprised of,
`
`among other things, a SIM portion. The SIM portion of the portable data carrier
`
`can be a SIM card or some other discrete part of the portable data carrier that acts
`
`
`
`16
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`as a SIM in the portable data carrier. But “whether a person skilled in the art
`
`would have known to align the unique number assigned to the repository as
`
`referenced in Stefik ‘980 patent Column 13 with the specified byte format of a
`
`SIM card” is nothing but another attempt by Petitioner to parse “a subscriber
`
`identity module (SIM) portion” into previously undisclosed elements The
`
`composition of the SIM portion, including whether the unique number assigned to
`
`the repository as referenced in Stefik ‘980 could be aligned to the specified byte
`
`format of a SIM card, was not alleged in the Petition and is not the subject of this
`
`proceeding. As such, the testimony is outside the scope of Dr. Katz’s declaration
`
`and should be excluded under 37 CFR § 42.53(d)(5)(ii).
`
`G. Exhibits 1101-1120 and 1122-1129 are Cumulative and Subject to
`Exclusion for the Reasons Cited Above
`
`Exhibits 1101-1129 were filed in CBM2014-00109. CBM2014-00108 was
`
`consolidated with CBM2014-00109 (PTAB Decision at 24), the PTAB ordered
`
`that all further filings in the consolidated proceedings be made only in CBM2014-
`
`00108 and the CBM2014-00109 be terminated (PTAB Decision at 25). Exhibits
`
`1101-1120 and 1122-1129 in CBM2014-00109 are identical to Exhibits 1001-1020
`
`and 1022-1029 submitted in CBM2014-00108. The PTAB Decision referred only
`
`to the exhibits filed in CBM2014-00108. PTAB Decision at 3, n. 2. To the extent
`
`still in the record, Patent Owner moves to exclude to Exhibits 1101-1120 and
`
`
`
`17
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`1122-1129 under FRE 403 as needless cumulative evidence duplicative of Exhibits
`
`1001-1020 and 1022-1029. In the event that the PTAB does not exclude Exhibits
`
`1101-1120 and 1122- 1129 in their entirety as needless cumulative evidence,
`
`Patent Owner moves to exclude Exhibits 1103, 1104, 1105, 1106, 1107, 1108,
`
`1112, 1116, 1117, 1118, 1119, 1120, 1121, 1122, 1128, and 1129 for the reasons
`
`set forth above for their corresponding Exhibits 1003, 1004, 1005, 1006, 1007,
`
`1008, 1012, 1016, 1017, 1018, 1019, 1020, 1021, 1022, 1028, and 1029.
`
`H. Exhibit 1121 is Cumulative and Subject to Exclusion for the
`Reasons Cited Above for Exhibit 1021.
`
`Exhibit 1121, the second Wechselberger Declaration, was filed in
`
`CBM2014-00109 and should be excluded for the same substantive reasons set
`
`forth above for Exhibit 1021: it does not state the relative evidentiary weight (e.g.,
`
`substantial evidence versus preponderance of the evidence) used in arriving at his
`
`conclusions; it does not sufficiently state the criteria 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; it treats the components of the prior
`
`art as if one could mix and match any and all combinations and does not address
`
`sufficiently why a person of ordinary skill in the art would be motivated to make
`
`specific combinations rendering the ‘598 Patent obvious; and it does not prove that
`
`
`
`18
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`Mr. Wechselberger is an expert whose testimony is relevant to the issue of what is
`
`taught and/or suggested by the cited references.
`
`In addition, certain specific paragraphs in the second Wechselberger
`
`Declaration should be excluded because they rely on exhibits that are irrelevant.
`
`Paragraphs 36, 37, 38, 39, 41, 42, and 43 contain testimony about the Unasserted
`
`Exhibits, as those are identified in CBM2014-00109. Paragraphs 40, 47, 48, 64,
`
`66, and 70 contain testimony about Exhibits 1116, 1117, and 1118, all prior art
`
`references not relied upon by the PTAB to institute this proceeding. As such,
`
`Paragraphs 36, 37, 38, 39, 40, 41, 42, 43, 47, 48, 64, 66, and 70 should be excluded
`
`as not being relevant under FRE 401, and therefore being inadmissible under FRE
`
`402.
`
`IV. Conclusion
`For these reasons, Patent Owner Smartflash, LLC respectfully requests that
`
`the Board exclude Exhibit 1002 as inadmissible other evidence of the content of a
`
`writing, irrelevant and cumulative; Exhibits 1003, 1004, 1005, 1006, 1007, 1008,
`
`1012, 1016, 1017, 1018, 1019, 1020, 1021, 1022, 1028, and 1029 as irrelevant,
`
`Exhibits 1021 and 1121 in their entirety as lacking foundation, unreliable, and
`
`relying on irrelevant exhibits; Exhibit 1021,¶¶ 36, 37, 38, 39, 40, 41, 42, 43, 46,
`
`47, 62, 63, 64, 65, and 66 as irrelevant; Exhibit 1121 ¶¶ 36, 37, 38, 39, 40, 41, 42,
`
`43, 47, 48, 64, 66, and 70 as irrelevant; Exhibits 1101 – 1120 and 1122 – 1129
`
`
`
`19
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`(filed in CBM2014-00109, which was consolidated with this action) as cumulative;
`
`and portions of Exhibit 1031 as outside the scope and irrelevant.
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist
`
`Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (5
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
