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 REPLY IN SUPPORT OF
`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 REPLY IN SUPPORT OF
`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
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`The Board Should Exclude Exhibit 1002 .............................................. 1
`B.
`The Board Should Exclude Exhibits 1003-05, 1019, 1022, and 1028-
`29 ........................................................................................................... 2
`The Board Should Exclude Exhibits 1006-08, 1012, 1016-18, and
`1020 ....................................................................................................... 2
`The Board Should Exclude Exhibit 1021 .............................................. 3
`D.
`The Board Should Exclude Requested Portions of Exhibit 1031 ......... 3
`E.
`The Board Should Exclude Exhibits 1101-1129 ................................... 5
`F.
`III. CONCLUSION ................................................................................................ 5
`
`
`C.
`
`i
`
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`I.
`
`INTRODUCTION
`
`Patent Owner understands that “the Board, sitting as a non-jury tribunal with
`
`administrative expertise, is well-positioned to determine and assign appropriate
`
`weight to the evidence presented in this trial, without resorting to formal exclusion
`
`that might later be held reversible error.” Liberty Mutual Insurance Co. v.
`
`Progressive Casualty Insurance Co., CBM2012-00002, Paper 66, Final Written
`
`Decision (PTAB January 23, 2014)(citing S.E.C. v. Guenthner, 395 F. Supp. 2d
`
`835, 842 n.3 (D. Neb. 2005)). At the same time, the Federal Rules of Evidence
`
`apply (37 CFR § 42.62(a)) and it is within the Board’s authority to manage the
`
`record by ruling on the admissibility of evidence based on the trial as instituted so
`
`that in the event of an appeal under 35 U.S.C. § 142, a proper record exists that can
`
`be transmitted to the United States Court of Appeals for the Federal Circuit
`
`pursuant to 35 U.S.C. § 143.
`
`II. ARGUMENT
`A. The Board Should Exclude Exhibit 1002
`Ex. 1002 does not contain a “highly relevant admission” (Paper 44 at 2), but
`
`instead says nothing more than the patent itself in Ex. 1001 at 1:20-23 (“This
`
`invention … relates to a portable data carrier for storing and paying for data…”)
`
`and 1:64-66 (“reading payment information,” “validating the payment
`
`
`
`1
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`information”). Ex. 1002 is inadmissible other evidence of the content of a writing
`
`under FRE 1004, cumulative under FRE 403, and irrelevant under FRE 401, 402.
`
`B. The Board Should Exclude Exhibits 1003-05, 1019, 1022, and 1028-29
`Ex. 1003-05, 1019, 1022, and 1028-29 are not substantively cited. They
`
`were merely listed in “Materials Reviewed and Relied Upon” by Mr.
`
`Wechselberger. Pap. 44 at 3. These are not relevant and not admissible. FRE 401,
`
`402.
`
`C. The Board Should Exclude Exhibits 1006-08, 1012, 1016-18, and 1020
`CBM review was instituted only under 35 U.S.C. § 103 on: the combination
`
`of Stefik ’235 and Stefik ’980; and separately, Ginter. Pap. 8, at 24. Patent Owner
`
`agrees that “as part of the obviousness analysis, the prior art must be viewed in the
`
`context of what was generally known in the art at the time of the invention” (Pap.
`
`44 at 3-4 (citing In re Taylor Made Golf Co., 589 F. App’x 967, 971 (Fed. Cir.
`
`2014))), but Petitioner cites none of these exhibits or their teachings for “what was
`
`generally known in the art” to meet a claim limitation in invalidity allegations. In
`
`contrast to Taylor Made, there is no missing limitation in Petitioner’s references
`
`that Petitioner alleges is satisfied by a POSITA’s “general knowledge,” like “press
`
`fitting” was in Taylor Made. Neither the Petition nor Mr. Wechselberger rely on
`
`1006, 1007, 1008, 1012, or 1020 to fill in with “general knowledge” any aspect of
`
`
`
`2
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`a claim limitation. Moreover, the Board did not accept Ex. 1016, 1017, or 1018 as
`
`invalidating prior art. They should not be in evidence. FRE 401, 402.
`
`D. The Board Should Exclude Exhibit 1021
`The Board cannot assess whether Mr. Wechselberger’s opinion testimony
`
`meets FRE 702 given that he did not disclose the standard against which he
`
`measured the quantum of prior art evidence (substantial evidence or preponderance
`
`of the evidence) in arriving at his opinions. As such, there is no basis to admit his
`
`expert testimony.2 Patent Owner’s lack of objection in the litigation to the “offer of
`
`Mr. Wechselberger as an expert” (Pap. 44 at 7) is irrelevant. It is not an admission
`
`that Mr. Wechselberger is an expert. Ex. 1034 is hearsay. FRE 801(c).
`
`E. The Board Should Exclude Requested Portions of Exhibit 1031
`Unlike CBM2014-00008, Pap. 48 (Aug. 12, 2014) relied on by Petitioner
`
`(Pap. 44 at 8), where the Patent Owner sought “the extreme remedy of striking 114
`
`pages of the deposition,” (CBM2014-00008, Pap. 48 at 4), Patent Owner seeks to
`
`exclude discrete portions. A fair reading of the record demonstrates that Patent
`
`Owner’s objections were made and preserved at the deposition. Ex. 1031 36:10-
`
`37:11 – Petitioner does not rebut that this testimony is irrelevant given that it
`
`2 Patent Owner acknowledges that FRE 602 is inapplicable to expert witnesses
`
`(Pap. 44 at 5). However, Mr. Wechselberger never states that he is an expert in the
`
`types of methods and systems defined by the challenged claims.
`
`
`
`3
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`relates to claims (conditional access to stored data) and terms (“payment
`
`validation” not “payment validation data”) outside the scope of the proceeding as
`
`instituted. Ex. 1031 44:18 – 46:1 – Petitioner does not rebut that this testimony is
`
`irrelevant given that the issue in this proceeding is not whether SIM cards were or
`
`could be used for billing, but rather whether one skilled in the art i) 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 and ii) would have considered it at a minimum obvious for the
`
`portable data carrier (e.g. electronic appliance) to communicate with Ginter’s
`
`network using a cellular connection and therefore to include a subscriber identity
`
`module (SIM) portion. Ex. 1031 70:1 – 73:9 –Petitioner does not rebut that this
`
`testimony is irrelevant given that the issue is whether Stefik ‘235 discloses use of a
`
`credit card, not whether “there is anything that would exclude the use a credit card”
`
`as asked. Ex. 1031 110:7 – 111:4 – Petitioner does not rebut that “when payment
`
`data happens” is nonsensical and that the differences between two embodiments in
`
`the ‘221 Patent are irrelevant here. Ex. 1031 124:10 – 128:11 – Petitioner does not
`
`rebut that this testimony is outside the scope given that Petitioner’s counsel never
`
`established what he meant by “pre-purchase processing” and never framed the
`
`question in terms of Dr. Katz’s definition or prior use of the term. Exhibit 1031
`
`
`
`4
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`149:4 – 151:9 – Petitioner does not rebut that this testimony is irrelevant and
`
`outside the scope given that it relates to comparisons between the language of
`
`Claims 26 and 29 of the ‘598 Patent and “the difference between a SIM portion
`
`and a SIM card,” an issue that does not exist. Exhibit 1031 152:7 – 156:12, 158:22
`
`– 159:7 and 159:8 – 161:22 – Petitioner does not rebut that this testimony is
`
`outside the scope given that 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. Exhibit 1031
`
`163:21 – 165:8 – Petitioner does not rebut that this testimony is outside the scope
`
`given that 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.
`
`F. The Board Should Exclude Exhibits 1101-1129
`Given the consolidation with CBM2014-00108, duplicative exhibits from
`
`CBM2014-00109 should be excluded.
`
`III. CONCLUSION
`Patent Owner respectfully requests that the Board exclude the exhibits.
`
`
`
`
`
`
`
`5
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`Dated: June 2, 2015
`
`
`
`
`
`
`
`/ Michael R. Casey /
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist
`
`Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`
`
`
`6
`
`
`
`Case CBM2014-00108
`Patent 8,061,598
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S REPLY IN
`
`SUPPORT OF MOTION TO EXCLUDE EVIDENCE in CBM2014-00108 was
`
`served today, by agreement of the parties by emailing a copy to counsel for the
`
`Petitioner as follows:
`
`
`
`J. Steven Baughman (steven.baughman@ropesgray.com)
`Ching-Lee Fukuda (ching-lee.fukuda@ropesgray.com)
`Megan Raymond (megan.raymond@ropesgray.com
`ApplePTABService-SmartFlash@ropesgray.com
`Ropes & Gray LLP
`
`
`
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist
`
`Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`Dated: June 2, 2015
`
`
`
`
`
`
`
`7
`
`
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
