`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 B2
`______________________
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`PETITIONER APPLE INC.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
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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 B2
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`TABLE OF CONTENTS
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`The Board Should Not Exclude Exhibit 1002 ................................................. 2
`I.
`The Board Should Not Exclude Exs. 1003-05, 1019, 1022, or 1028-29 ........ 3
`II.
`III. The Board Should Not Exclude Exs. 1006-08, 1012, 1016-18, Or 1020 ........ 3
`IV. The Board Should Not Exclude Exhibit 1021 ................................................. 5
`V.
`The Board Should Not Exclude Any Portions of Exhibit 1031 ...................... 8
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`CBM2014-00108
`Patent 8,061,598 B2
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`In response to Patent Owner’s (“PO”) Motion to Exclude (“Mot.”, Pap. 40),
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`Petitioner respectfully submits that the Board, sitting as a non-jury tribunal with
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`administrative expertise, is well-positioned to determine and assign appropriate
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`weight to the evidence presented here, without resorting to formal exclusion that
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`might later be held reversible error. See, e.g., S.E.C. v. Guenthner, 395 F. Supp. 2d
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`835, 842 n.3 (D. Neb. 2005); Builders Steel Co. v. Comm’r of Internal Revenue,
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`179 F.2d 377, 379 (8th Cir. 1950) (vacating Tax Court decision for exclusion of
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`competent, material evidence); Donnelly Garment Co. v. Nat’l Labor Relations
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`Bd., 123 F.2d 215, 224 (8th Cir. 1941) (NLRB’s refusal to receive testimonial evi-
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`dence was denial of due process). See also, e.g., Samuel H. Moss, Inc. v. F.T.C.,
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`148 F.2d 378, 380 (2d Cir. 1945), cert. denied, 326 U.S. 734 (1945) (“Even in
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`criminal trials to a jury it is better, nine times out of ten, to admit, than to exclude,
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`… and in such proceedings as these the only conceivable interest that can suffer by
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`admitting any evidence is the time lost, which is seldom as much as that inevitably
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`lost by idle bickering about irrelevancy or incompetence”). But even under strict
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`application of the Rules of Evidence, cf. 77 Fed. Reg. 48,612, 48,616 (Aug. 14,
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`2012) (“42.5(a) and (b) permit administrative patent judges wide latitude in admin-
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`istering the proceedings to balance the ideal of precise rules against the need for
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`flexibility to achieve reasonably fast, inexpensive, and fair proceedings”), Petition-
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`er’s evidence here is entirely proper while PO’s objections are baseless; indeed,
`1
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`CBM2014-00108
`Patent 8,061,598 B2
`they appear in various instances to be nothing but unauthorized sur-reply. See 77
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`Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A motion to exclude must explain why
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`the evidence is not admissible (e.g., relevance or hearsay) but may not be used to
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`challenge the sufficiency of the evidence to prove a particular fact.”).2
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`I.
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`The Board Should Not Exclude Exhibit 10023
`Petitioner did not rely on Ex. 1002 for “evidence of the content” of the ’598
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`patent (cf. Mot. 2), but rather to show that PO’s own characterization of the sub-
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`ject matter of the ’598 patent supports Petitioner’s contention—and the Board’s
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`conclusion—that the ’598 patent relates to a financial activity or transaction and is
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`thus subject to the Board’s review as a covered business method patent. See Pap. 2
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`at 15-17. PO’s characterization of the ’598 in another proceeding is not found in
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`the patent itself; thus, Ex. 1002 is not cumulative of the ’598 patent and FRE 1004
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`is inapplicable. PO disputed the financial nature of the ’598 patent, see Pap. 6 at 3-
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`9, and its highly relevant admission to the contrary should not be excluded.
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`2 All emphasis herein is added unless otherwise indicated.
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`3 Exclusion of Exs. 1102-1129 in consolidated CBM2014-00109, which corre-
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`spond to Exs. 1002-1029 and to which PO objects for the same reasons (Mot. 17-
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`19), should be denied for the same reasons identified for Exs. 1002-1029. Similar-
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`ly Ex. 1101 (’598 patent), to which PO objects only as duplicative of Ex. 1001,
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`should not be excluded.
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`2
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`CBM2014-00108
`Patent 8,061,598 B2
`The Board Should Not Exclude Exs. 1003-05, 1019, 1022, or 1028-29
`II.
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`PO’s assertion that Exs. 1003-05, 1019, or 1028-29 are not cited in the
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`Wechselberger Declaration (Mot. 3) is simply wrong4: all were cited as “Materials
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`Reviewed and Relied Upon,” see Ex. 1021, App. C, and properly filed with the Pe-
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`tition. See 37 C.F.R. § 42.6(c). (Indeed, Petitioner respectfully submits PO would
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`now be objecting if Petitioner had failed to provide these cited exhibits.) To the ex-
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`tent PO’s objection is based on imaginings that Petitioner will advance at oral hear-
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`ing arguments about these documents not presented in previous papers, this is
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`baseless – Petitioner intends to comply fully with the Board’s rules (e.g., Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012)), and expects PO will
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`do the same with respect to PO’s many exhibits (e.g., Exs. 2006-08, 2013, and
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`2019-21) not substantively cited or relied upon in any of PO’s submitted papers.
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`III. The Board Should Not Exclude Exs. 1006-08, 1012, 1016-18, Or 1020
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`Contrary to PO’s assertions, Exs. 1006-08, 1012, and 1020 (“Prior Art Ex-
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`hibits”) are relevant and important to the Board’s obviousness analysis because
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`they are evidence of the state of the art and knowledge of a person of ordinary skill
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`in the art (“POSITA”) at the claimed priority date. E.g., In re Taylor Made Golf
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`Co., 589 F. App’x 967, 971 (Fed. Cir. 2014) (“[T]he Supreme Court and this court
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`4 Ex. 1022, cited in a parallel proceeding (CBM2014-00104), was not relied on
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`here. While exclusion of Ex. 1022 is unnecessary, Petitioner would not oppose it.
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`3
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`CBM2014-00108
`Patent 8,061,598 B2
`require that, as part of the obviousness analysis, the prior art must be viewed in the
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`context of what was generally known in the art at the time of the invention.”).
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`“The knowledge of [a POSITA] is part of the store of public knowledge that must
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`be consulted when considering whether a claimed invention would have been obvi-
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`ous.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). Both the Peti-
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`tion and the Wechselberger Declaration describe the Prior Art Exhibits as evidence
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`of that knowledge. See Pap. 2 at 5-12 (Overview of Field of the Claimed Inven-
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`tion), 20; Ex. 1021 ¶¶ 34-52 (State of the Art). And the Federal Circuit has de-
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`clared that “perhaps the most reliable” evidence of the knowledge of a POSITA “is
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`documentary evidence consisting of prior art in the area” – precisely the evidence
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`presented in the Prior Art Exhibits. Randall, 733 F.3d at 1362-63.
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`That these Exhibits do not form the basis for the instituted grounds does not,
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`as PO contends (Mot. 4), mean they are not relevant to obviousness. To the con-
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`trary, the Supreme Court and Federal Circuit mandate that such evidence be con-
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`sidered, Taylor Made, 589 F. App’x at 971, and the Federal Circuit has criticized
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`the Board for considering only references recited as the basis of invalidity. Ran-
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`dall, 733 F.3d at 1362. The Prior Art Exhibits are unquestionably relevant and re-
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`quired for a proper obviousness analysis; there is no basis to exclude them.
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`PO’s assertion that Exs. 1016-18 are irrelevant is similarly meritless. As
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`with the other Prior Art Exhibits, Exs. 1016-18 are relevant and important to the
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`4
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`CBM2014-00108
`Patent 8,061,598 B2
`Board’s obviousness analysis because they provide further evidence of the state of
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`the art and a POSITA’s knowledge . See Randall, 733 F.3d at 1363. While the
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`Board did not institute review based on grounds calling out Exs. 1016-18, they
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`nonetheless establish the state of the art and provide context for the obviousness
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`inquiry, see id., and the Petition and Wechselberger Declaration specifically rely
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`on Exs. 1016-18 for this purpose in their “Overview of Field of the Invention” and
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`“State of the Art” discussions, respectively. See Pap. 2 at 7-8, 10-11; Ex. 1021 ¶¶
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`40, 46-47. Again, Exs.1016-18 are relevant to the obviousness analysis, and
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`should not be excluded.
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`IV. The Board Should Not Exclude Exhibit 1021
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`Unable to identify any legitimate reason to exclude Exhibit 1021, PO objects
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`(1) under FRE 602 to the “sufficiency” of the opinions in the Wechselberger Dec-
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`laration, (2) without support, to Mr. Wechselberger’s qualifications as an expert,
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`and (3) to the inclusion of background state of the art information despite its man-
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`dated place in the obviousness analysis. PO is wrong on all counts.
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`First, there is no basis for PO’s objections to Mr. Wechselberger’s expert
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`testimony under FRE 602, as the rule plainly states it “does not apply to a wit-
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`ness’s expert testimony under Rule 703.” Thus, PO’s FRE 602 objections to the
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`Declaration, based on purported omission of the standard of evidence and on the
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`sufficiency of the opinions, should be rejected for this reason alone. Further, PO’s
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`5
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`CBM2014-00108
`Patent 8,061,598 B2
`purported objections to the Wechselberger Declaration for “not sufficiently
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`stat[ing] the criteria used to assess” whether, and “not address[ing] sufficiently”
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`why, a POSITA would have been motivated to make specific combinations (Mot.
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`7) are improper challenges to the sufficiency of the opinions presented rather than
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`challenges to their admissibility. See 77 Fed. Reg. at 48,767 (Aug. 14, 2012) (“A
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`motion to exclude must explain why the evidence is not admissible (e.g., relevance
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`or hearsay) but may not be used to challenge the sufficiency of the evidence to
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`prove a particular fact.”). And, in any event, PO cites no authority for its proposi-
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`tion that to be admissible the Wechselberger Declaration must state “whether he
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`considered evidence tending to show that [a POSITA] would not have made his
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`proposed combination.” Mot. 7 (emph. original). And PO is simply wrong in ar-
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`guing Ex. 1021 does not sufficiently lay out the reasons a POSITA would have
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`been motivated to combine references: for each combination, the Declaration spe-
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`cifically explains with supporting citations why a POSITA would have been moti-
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`vated to combine the prior art teachings. See, e.g., Ex. 1021 ¶ 56.
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`Despite the Board’s rejection of PO’s argument that the Wechselberger Dec-
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`laration should be disregarded for not reciting the evidentiary standard, PO rear-
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`gues it here for the third time. Mot. 6-7; Pap. 8 at 16 n.5; see Pap. 6 at 16-19; Pap.
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`23 at 4-7. But, as the Board properly found, the purported omission is not “evi-
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`dence that Mr. Wechselberger used incorrect criteria, failed to consider evidence,
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`6
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`CBM2014-00108
`Patent 8,061,598 B2
`or is not an expert in the appropriate field.” Pap. 8 at 16 n.5. Indeed, experts like
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`Mr. Wechselberger—who are, after all, technologists, not lawyers—are not re-
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`quired to “recite or apply the ‘preponderance of the evidence’ standard expressly in
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`order for the expert testimony to be accorded weight. Rather, it is within [the
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`Board’s] discretion to assign the appropriate weight to be accorded to evidence
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`based on whether the expert testimony discloses the underlying facts or data on
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`which the opinion is based.” See IPR2013-00172, Pap. 50 at 42.
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`Equally baseless is PO’s throw-away argument (Mot. 8) that Mr. Wechsel-
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`berger does not qualify as an expert. Tellingly, PO offers no evidence disputing
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`that Mr. Wechselberger is a qualified expert; and, in contrast to the qualifications
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`of the “expert” PO proffered, Mr. Wechselberger’s CV and Declaration prove that
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`Mr. Wechselberger qualifies as an expert under both parties’ proposed definitions
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`of a POSITA. For example, even a cursory review of Mr. Wechselberger’s CV re-
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`veals that he “had a bachelor’s degree in electrical engineering or its equivalent”
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`by 1999. Ex. 2030 ¶ 9; Ex. 1021 at 45. And the Wechselberger Declaration details
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`in several paragraphs Mr. Wechselberger’s decades of experience in relevant in-
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`dustries. Id. ¶¶ 3-12. Indeed, at trial in the litigation, PO had no objection to Peti-
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`tioner’s offer of Mr. Wechselberger as an expert in the field of the alleged inven-
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`tion. Ex. 1034 62:12-18. As PO then acknowledged, Mr. Wechselberger is a qual-
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`ified expert and should not be excluded.
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`7
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`CBM2014-00108
`Patent 8,061,598 B2
`PO also seeks to exclude the portions of the Wechselberger Declaration that
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`cite prior art to describe the state of the art and provide context for his invalidity
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`opinions. As detailed in § III, supra, the Declaration’s description of the back-
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`ground and knowledge of a POSITA at the relevant time is important and relevant
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`to the question of obviousness. See, e.g., Randall, 733 F.3d at 1362. For the same
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`reasons the Prior Art Exhibits and Ex.1018 are relevant, expert descriptions and
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`analyses of those exhibits are relevant under FRE 401 and should not be excluded.
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`V.
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`The Board Should Not Exclude Any Portions of Exhibit 1031
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`Finally, PO complains about portions of Dr. Katz’s deposition testimony
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`highlighting that the opinions in his declaration (Ex. 2030) lack both support and
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`credibility. But many of these objections appear for the first time in PO’s motion,
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`and are thus waived: Rule 42.64(a) required counsel to object to each and every
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`question it considered improper. See, e.g., CBM2014-00008, Pap. 48 (Aug. 12,
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`2014) (“Patent Owner objected to many, but not all, … questions . . . , indicating
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`its belief that at least some of the questioning was proper.” (citing 42.64(a)). And
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`even on the occasions PO actually made them, its objections do not come close to
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`establishing inadmissibility of any evidence. PO simply seeks to throw out highly
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`relevant testimony that is unfavorable to PO, and its motion is at best an improper
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`surreply aimed at rehabilitating PO’s unqualified witness.
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`Ex. 1031 36:10-37:11. While PO suggests it objected to this “line of ques-
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`8
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`CBM2014-00108
`Patent 8,061,598 B2
`tioning” based on relevance and scope (Mot. 9), the record reveals PO made no ob-
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`jection to the question and answer at 37:6-11 concerning whether a POSITA would
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`have understood that access to stored data could be restricted based on payment
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`validation; thus, any such objection was waived. See 37 C.F.R. § 42.64(a).
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`Moreover, both this exchange and the preceding one at 36:10-37:5 (to which
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`PO did object on “scope” and “relevance” grounds), concerning restricting access
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`based on whether or how much payment had been made, address concepts funda-
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`mental to the ’598 patent. See, e.g., Ex. 1001 1:29-31, 2:7-11. Despite PO’s con-
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`tention that “none of the claims at issue relate to conditional access to stored data”
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`(Mot. 9), claim 26 explicitly recites “a processor for controlling access to data.”
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`Ex. 1001 at 27:50. The prior art, like the ’598 patent, focused on controlling ac-
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`cess to data and minimizing unauthorized content use to ensure content owners are
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`paid. See, e.g., Ex. 1014 1:11-24, 6:62-7:5; Ex. 1015 2:59-66, 3:21-32. The prior
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`art discloses addressing unauthorized use by requiring that conditions, including
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`fee conditions, be met before content is provided to a user. See, e.g., Ex. 1014 Fig.
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`18, 31:30-33, 32:19-26. Dr. Katz’s inability at deposition to answer any questions
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`about this fundamental concept of conditioning access based on payment is directly
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`relevant—it shows he lacks an understanding of fundamental concepts underlying
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`the ’598 patent and its claims.
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`Ex. 1031 44:18-46:1. This testimony addresses a POSITA’s understanding
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`9
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`CBM2014-00108
`Patent 8,061,598 B2
`of SIM cards—known technology that Dr. Katz references throughout his declara-
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`tion to differentiate the claims—and is relevant to exposing the errors in Dr. Katz’s
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`unsupported opinions. PO characterizes this testimony as relating to “whether [a
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`POSITA] would have understood that SIM cards could be used for billing purpos-
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`es” (Mot. 10), and contends PO objected on relevance. PO objected, however, to
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`only two of the eight questions PO now seeks to exclude. In fact, PO raised no ob-
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`jection to the question and answer that match verbatim PO’s characterization of
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`this testimony. Ex. 1031 45:1-5. Any objection to these questions has been
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`waived. See 37 C.F.R. § 42.64(a). Further, PO’s arguments take an improperly
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`narrow view on the issue as whether a POSITA would have used a whole memory
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`card including a SIM portion as a repository in Stefik or in an electronic appliance
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`in Ginter. Mot 10-11. A POSITA’s understanding of a known SIM card and its
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`uses is relevant to establishing the state of the art surrounding the claimed element.
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`Taylor Made, 589 F. App’x at 971. Dr. Katz was unable to answer any questions
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`regarding a POSITA’s baseline knowledge of SIM card uses, and thus he is unable
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`to provide any support for his express Declaration opinions that it would not have
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`been obvious to use a SIM, or that a SIM would not be compatible with, prior art
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`devices. Ex. 2030 ¶¶ 13-17, 20-23.
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`Ex. 1031 70:1-73:9. PO complains of Dr. Katz’s testimony about disclo-
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`sures in Stefik ’235 (Ex. 1013), even though these are, again, directly addressed in
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`10
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`CBM2014-00108
`Patent 8,061,598 B2
`his declaration. See, e.g., Ex. 2030 at ¶ 16. And, almost all of PO’s current com-
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`plaints are waived: PO objected to only three of the fourteen questions it now seeks
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`to exclude, and did not even begin objecting until after the first nine questions. Ex.
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`1031 70:1-73:9.
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`Further, Petitioner’s questions are directly relevant to Dr. Katz’s erroneous
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`opinions regarding Stefik ’235. In his Declaration, Dr. Katz criticized the Petition
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`for not explaining how a memory card including a SIM portion “would be able to
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`perform the registration process described with respect to Figure 3 of Stefik ‘235”
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`to opine that the ’598 patent’s claim 26 is not obvious in view of Stefik ’235 and
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`Stefik ’980 (Ex. 1014). Ex. 2030 ¶¶ 16-17. Every one of Petitioner’s questions
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`here was directed to that same figure and description, see Ex. 1031 70:1-73:9,
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`which discloses “activat[ing] a credit account” before carrying out a repository
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`transaction. Ex. 1014 6:60-65. Petitioner’s questioning tested Dr. Katz’s opinions
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`regarding a POSITA’s understanding of that transaction, and Dr. Katz was unable
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`to provide any understanding to support his criticisms. PO’s attempt to rehabili-
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`tate him by downplaying his failure (claiming “[e]ven if Stefik ’235 does not ex-
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`clude the use of a credit card, that does not mean that it discloses it” (Mot. 11)),
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`cannot hide its relevance to Petitioner’s showing of obviousness.
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`11
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`CBM2014-00108
`Patent 8,061,598 B2
`Ex. 1031 110:7-111:4. PO objects to two questions in this passage,5 both
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`concerning alternate embodiments described in the ’598 patent, neither of which
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`should be excluded. PO moves to exclude the first question because of an alleged
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`issue in the wording “when does that payment data happen,” but ignores the con-
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`text in which the question was asked. Ex. 1031 at 109:14-110:6 (addressing when
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`verification of payment data happens in embodiments disclosed in the ’598 patent).
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`And in any event, Dr. Katz confirmed he was not sure of the order of verification
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`of payment data and receipt of content in the relevant passage of the ’598 patent in
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`response to a question to which PO raised no objection. Ex. 1031 110:13-16.
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`PO also moves to exclude a second question regarding differences between
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`two ’598 patent embodiments (Ex. 1001 23:2-7)—one in which payment is veri-
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`fied “concurrently with the content and access download process” and one in
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`which payment data is verified “at some later stage”—based on the untenable posi-
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`tion that these differences are not linked to any relevant issue on which Dr. Katz
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`opined. Mot. 12. As explained above, ensuring payment for content (e.g., control-
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`ling access to content based on payment) is fundamental to the ’598 patent, and
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`claim 26 of the ’598 patent recites “a processor for controlling access to data.”
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`The ’598 patent discloses an embodiment in which payment is validated before
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`5 Any attempt to exclude other questions and answers in this passage (e.g., Ex.
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`1031 110:10-16) would fail as a result of waiver, in addition to the reasons below.
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`12
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`CBM2014-00108
`Patent 8,061,598 B2
`content is provided and an embodiment in which payment validation takes place at
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`a later time, with no explanation of differences between those embodiments or how
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`a system implementer would change from one to another. Ex. 1001 23:2-7. No
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`further explanation was needed, as the differences between those embodiments
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`were well understood by a POSITA. Dr. Katz’s inability to discuss any differences
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`between these embodiments shows he cannot support any contrary conclusion.
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`Ex. 1031 124:10-128:11. PO’s objections to this examination regarding
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`“prepurchase processing”—a term used by Dr. Katz himself in related proceed-
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`ings—also have no merit. As an initial matter, PO objects to a series of questions
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`and again asserts that it objected to them on scope grounds (Mot. 13), when PO ac-
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`tually objected to only half of the six questions. Ex. 1031 126:1-127:9. PO did not
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`object to the remaining three questions on whether “prepayments,” “realtime elec-
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`tronic debits from bank accounts,” and “VDE node currency token deposit ac-
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`counts” disclosed in Ginter are examples of “prepurchase processing,” id. 127:10-
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`128:11, and any such objection is waived. See 37 C.F.R. 42.64(a).
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`PO’s argument for exclusion of this testimony undermines Dr. Katz’s credi-
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`bility almost as much as the testimony itself does. See Pap. 37 at 4-9 (citing Dr.
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`Katz’s testimony to support Motion to Exclude his opinions). PO criticizes Peti-
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`tioner for “never establish[ing] a definition of what he meant by ‘prepurchase pro-
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`cessing’ and never ask[ing] for Dr. Katz’s understanding of that term” (Mot. 12).
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`13
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`CBM2014-00108
`Patent 8,061,598 B2
`But as PO points out, Dr. Katz testified he did not know what the term “prepur-
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`chase processing” meant (Mot. 12; see also Ex. 1031 190:11-20), even though Dr.
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`Katz himself used that very term in his declarations. That Dr. Katz expresses con-
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`fusion about the terms he himself has used to characterize alleged distinctions from
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`the prior art—distinctions on which he argues patentability is based—is directly
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`relevant to his lack of credibility. Though the term “prepurchase processing” does
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`not appear in Dr. Katz’s declaration in this proceeding, Dr. Katz submitted pur-
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`ported expert opinions through declaration and deposition testimony in three other
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`proceedings on related patents where he used this term repeatedly. See CBM2014-
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`00102, Ex. 2028 ¶¶ 36, 37; CBM2014-00106, Ex. 2029 ¶ 27; CBM2014-00112,
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`Ex. 2031 ¶¶ 29, 30. Dr. Katz’s confusion about the contents of his own opinions is
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`certainly relevant to his credibility here, and the term “prepurchase processing”
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`that he claims not to understand repeatedly appears in his declaration in each of the
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`three related proceedings. In any event, the Board is capable of according proper
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`weight to this testimony. In a desperate attempt to exclude testimony that shows
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`that the opinions of Dr. Katz are wholly unreliable, PO’s Motion incredibly criti-
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`cizes Petitioner for not defining the very term used by PO’s own expert to charac-
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`terize supposedly patentable differences.
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`Ex. 1031 149:4-151:9. Dr. Katz’s interpretation of “SIM portion” and dif-
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`ferences in claim terms used in the ’598 and ’458 patents, to which PO objects un-
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`14
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`CBM2014-00108
`Patent 8,061,598 B2
`der the guise of challenging admissibility, is clearly relevant testimony that high-
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`lights the flaws in Dr. Katz’s analysis of the “SIM portion” recited in claim 26.
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`First, PO moves to exclude on relevance and scope grounds despite objecting to
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`only two of the thirteen questions covered by this citation at the deposition; objec-
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`tions to the remaining questions have been waived. See 37 C.F.R. 42.64(a). PO
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`spends almost a page arguing, in an improper surreply, what a “SIM portion” is
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`and why differences in claim terms do not matter; these are arguments that the
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`Board should reject as both unauthorized and meritless. Though PO alleges that
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`the difference between a “SIM portion” and a “SIM card” “simply does not exist”
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`(Mot. 13), the “SIM card device” recited in claim 29 cannot be read into claim 26,
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`which recites only a “SIM portion.” “It is settled law that when a patent claim
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`does not contain a certain limitation and another claim does, that limitation cannot
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`be read into the former claim in determining either validity or infringement.” SRI
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`Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1122 (Fed. Cir. 1985). PO’s
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`argument that a “SIM portion” refers back to a portion of the portable data carrier
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`and “can be a SIM card or some other discrete part of the portable data carrier that
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`acts as a SIM” is a belated attempt to improperly construe that term and differenti-
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`ate it from the prior art. PO’s own characterization of the issue, however, high-
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`lights the flaws in the approach PO and Dr. Katz have taken. Petitioner has shown
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`that both Ginter and Stefik disclosed devices that include the recited “SIM por-
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`15
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`CBM2014-00108
`Patent 8,061,598 B2
`tion,”—Stefik discloses this element in the repository identifiers (see Ex. 1014
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`
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`13:51-57) and Ginter discloses it in appliance identifiers (see Ex. 1015 229:13-18).
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`See Pap. 2 at 65-66; see also CBM2014-00109, Pap. 2 at 71-74. And Petitioner
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`has also shown that, notwithstanding these explicit prior art disclosures, a POSITA
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`would also have found it obvious to incorporate a SIM card, or a SIM portion, in
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`Ginter or Stefik. See Pap. 2 at 65-66; see also CBM2014-00109, Pap. 2 at 71-74.
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`As PO indicates, PO’s arguments and Dr. Katz’s declaration are directed to only
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`the question of “whether the prior art showed motivation to employ whole memory
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`cards to satisfy the claim element.” Mot. 13-14 (emph. in original). Dr. Katz’s
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`opinions fail to address the fact that the prior art devices themselves, with the de-
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`vice identifiers in Stefik and Ginter, meet the claimed “SIM portion” without re-
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`quiring incorporation of a SIM card. Dr. Katz’s confirmation that he had not even
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`considered the difference between a “SIM card” and a “SIM portion” is certainly
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`relevant—it highlights the flaws in his opinions regarding the obviousness of the
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`claims and their actual limitations, and his inability to rebut Petitioner’s showing
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`of invalidity.
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`Ex. 1031 152:7-156:12, 158:2-159:7, and 159:8-161:22. This portion of
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`testimony further exploring whether components taught by the prior art would
`
`meet the “SIM portion” recited in claim 26 is highly relevant and should not be ex-
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`cluded: Dr. Katz has no rebuttal to Petitioner’s showing that—contrary to Dr.
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`16
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`
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`CBM2014-00108
`Patent 8,061,598 B2
`Katz’s Declaration opinion (Ex. 2030 ¶¶ 13-17, 20-23)—the prior art discloses this
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`element. PO’s arguments to exclude this testimony further highlight the problem
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`with PO’s position: neither PO nor its expert has any credible position regarding
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`whether disclosures in the prior art satisfy the “SIM portion” actually claimed. In-
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`stead, Dr. Katz’s declaration was directed only to “whether the prior art showed
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`motivation to employ whole memory cards to satisfy the claim element, not what
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`other things undisclosed in the Petition might satisfy the claim element.” Mot. 16
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`(emph. in original). The Petition, however, pointed to specific disclosures in the
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`prior art as disclosing this element and alleged that incorporating a memory card
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`with a SIM portion would have been obvious. Pap. 2 at 65 (“Stefik discloses a
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`portion of its system (e.g., unique number assigned to a repository, such as a
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`DocuCard; repository identifier) that identifies a user device (e.g., is unique for
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`each repository) to a network operator (e.g., another repository or a server; master
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`repository; authorization repository).”) (citing Ex. 1014 13:51-57); see also
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`CBM2014-00109, Pap. 2 at 73 (“Ginter discloses a portion of the portable data car-
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`rier storing information uniquely identifying a subscriber to identify the subscriber
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`to a network operator (e.g., external object repository).”) (citing Ex. 1015 229:13-
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`18). These disclosures are not “other things undisclosed in the Petition” (Mot. 16)
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`as PO suggests, but rather are the disclosures that Petitioner cited in establishing
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`that this limitation is taught by the prior art. Petitioner’s questions regarding mem-
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`17
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`CBM2014-00108
`Patent 8,061,598 B2
`ories storing unique identifiers test Dr. Katz’s allegations that the incorporation of
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`
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`a “SIM portion” in the claimed devices would not have been obvious—a test he
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`failed in his testimony. The fact that Dr. Katz had not even considered and is not
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`sure whether these prior art memories could be a “SIM portion” as recited in the
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`claim 1, about which he opined (Ex. 2030 ¶¶ 13-17, 20-23), are certainly not be-
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`yond the scope of this proceeding (Cf. Mot. 16-17). Rather, this testimony shows
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`that Dr. Katz’s conclusions of nonobviousness (Ex. 2030 ¶¶ 18, 24) are wholly un-
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`supported, and that he failed to analyze the prior art to determine if this limitation
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`is disclosed.
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`Ex. 1031 163:21-165:8. PO’s objection to this testimony addressing wheth-
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`er a POSITA would have known how to align the identifier disclosed in Stefik (see
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`Ex. 1014 13:51-57) with the requirements of the public SIM specification, for ex-
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`ample with the specified byte format of a SIM (Ex. 1031 164:18-165:2), addresses
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`alleged issues that Dr. Katz himself raised regarding obviousness of the claimed
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`“SIM portion” in view of Stefik. Dr. Katz’s declaration refers to fabricated differ-
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`ences between Stefik’s identifiers and a SIM in the hopes of differentiating them
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`from claim 26. In particular, Dr. Katz opined that the Petition and Mr. Wechsel-
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`berger’s declaration did not show that Stefik’s unique number “has characteristics
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`that would make it compatible with the SIM portion of a mobile phone, for exam-
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`ple, whether the number of bits required… is greater than the number of bits that a
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`18
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`CBM2014-00108
`Patent 8,061,598 B2
`SIM portion would utilize….” Ex. 2030 ¶ 15. Now, PO inexplicably argues that
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`whether a POSITA “would have known to align the unique number assigned to the
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`repository as referenced in Stefik’980 patent Column 13 with the specified byte
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`format of a SIM card”—the basis on which PO’s expert argued that the SIM por-
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`tion would not be obvious in view of Stefik—is completely irrelevant to this pro-
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`ceeding. Mot. 17. To the contrary, this testimony is directly relevant to showing
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`that the purported distinction drawn in Dr. Katz’s Declaration is meritless, as he is
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`unable to point to any reason a POSITA would not be able to make routine changes
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`to the data structure of Stefik’s unique identifier to conform that identifier to the
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`requirements of the well-known SIM specification.
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`May 26, 2015
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`Respectfully submitted,
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`By /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`
`19
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`CBM2014-00108
`Patent 8,061,598 B2
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PETITIONER
`
`APPLE INC.’S OPPOSITION TO PATENT OWNER’S MOTION TO EX-
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`CLUDE was served on May 26, 2015, to the following Counsel for Patent Owner
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`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
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