`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
`______________________
`
`PETITIONER APPLE INC.’S REPLY IN SUPPORT OF ITS
`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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`I. DR. KATZ’S RECENT WORK DOES NOT MAKE UP FOR HIS
`LACK OF QUALIFICATION TO TESTIFY ABOUT THE PRIOR
`ART TIME PERIOD .......................................................................................... 1
`II. PO CAN CITE NO EVIDENCE TO SUPPORT ITS CONCOCTED
`EXCUSE THAT DIFFERING DEFINITIONS CAUSED DR. KATZ’S
`LACK OF KNOWLEDGE ................................................................................ 2
`III. PO CANNOT BLAME PETITIONER FOR DR. KATZ’S LACK OF
`KNOWLEDGE .................................................................................................. 3
`IV. PO’S EXPLANATIONS HIGHLIGHT THE FLAWS IN DR. KATZ’S
`ANALYSIS OF THE CLAIMED “SIM PORTION” ........................................ 4
`V. PO’S “SYNOPSIS” IS MERELY UNSUPPORTED, UNAUTHORIZED
`SUR-REPLY ...................................................................................................... 5
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`CBM2014-00108
`Patent 8,061,598 B2
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`As Patent Owner (“PO”) concedes, for admissibility F.R.E. 702 requires that
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`an “expert’s scientific, technical, or other specialized knowledge will help the trier
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`of fact to understand the evidence or to determine a fact in issue.”2 Opp. (Pap. 43)
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`at 2. Notwithstanding PO’s litany of baseless excuses, Dr. Katz’s testimony reveals
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`he cannot do so, and his Declaration should be excluded.
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`I.
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`Dr. Katz’s Recent Work Does Not Make Up For His Lack Of Qualifica-
`tion To Testify About The Prior Art Time Period
`Although Dr. Katz clearly did not meet his definition of a POSITA as of the
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`claimed October 25, 1999 priority date (see Opp. 3 (“even if he did not meet the
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`definition at the time…”),3 PO asserts his qualifications 16 years later—“at the
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`time Dr. Katz rendered his opinions” in 2015—enable him to testify as an expert
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`about what a POSITA would have understood in 1999. Id. 3-4. Even if, under
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`some circumstances, later work might suffice to provide the necessary foundation,4
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`2 Emphasis herein is added, and abbreviations are those in Petitioner’s Motion.
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`3 While Dr. Katz later contended without basis that he was a POSITA at the priori-
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`ty date (Ex. 1031184:3-6), PO does not dispute that in 1999 he lacked both the de-
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`gree and industry exposure required by Dr. Katz’s own definition. Ex. 2030 ¶ 9,
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`App’x A.
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`4 Cf. Opp. 3 (PO citing dissent in opinion subsequently vacated and decided in an
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`en banc opinion, Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed.
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`1
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`CBM2014-00108
`Patent 8,061,598 B2
`this is certainly not the case here: nothing in Dr. Katz’s declaration or testimony
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`provides a shred of evidentiary support for PO’s bald assertion that he has
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`knowledge about what a POSITA would have known in 1999, which confirms he
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`is in no position to “help the trier of fact.” Cf. F.R.E. 702.
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`II.
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`PO Can Cite No Evidence to Support its Concocted Excuse That Differ-
`ing Definitions Caused Dr. Katz’s Lack of Knowledge
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`Each question PO now criticizes as being “ambiguously broad” or “unrelat-
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`ed to the specific opinions [Dr. Katz] rendered” (Opp. 1) is, in fact, clear and rele-
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`vant to whether Dr. Katz (1) was qualified to analyze the validity of the instituted
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`claims and (2) reliably concluded they are valid. Tellingly, PO offers no evidence
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`to support its excuse that Dr. Katz was “not sure” about various aspects of the prior
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`art because of some purported confusion of terms that Dr. Katz failed to state at the
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`time—e.g., that “Petitioner never established whose definition of a POSITA Dr.
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`Katz was to use,” or that different interpretations of “person of ordinary skill”
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`would lead to different answers. Opp. 4-5. This attempt to concoct uncertainty
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`now, where Dr. Katz did not find it during deposition questioning by Petitioner, is
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`especially glaring given that Dr. Katz’s own Declaration defined his understanding
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`of a POSITA (Ex. 2030 ¶ 9), and stated that he is “qualified to opine on what [a
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`POSITA] would have understood at the time of the filing of the patent.” Id. ¶10.
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`Cir. 2011), that omits PO’s cited statements).
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`2
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`CBM2014-00108
`Patent 8,061,598 B2
`Indeed, Dr. Katz confirmed at the outset of his deposition that he understood the
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`meaning of counsel’s references to “what a person of ordinary skill in the art
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`would have understood.” Ex. 1031 10:15-11:3.
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`Against the backdrop of Dr. Katz’s own testimony, PO cites no evidence to
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`support its claim that Dr. Katz’s answers depended on differences in the definitions
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`of a POSITA that he and Mr. Wechselberger proposed. Opp. 4-5. For example, PO
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`points out that Dr. Katz had no problem testifying that a POSITA would know
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`what a merchant server was. Opp. 5; Ex. 1031 19:3-10 (Dr. Katz answering that a
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`POSITA would have understood a merchant server to be “a computer server that
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`was selling items, acting as a merchant”). But in trying to excuse Dr. Katz’s inabil-
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`ity to answer whether a POSITA would have understood that digital content could
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`be bought and sold over a network or the internet—e.g., sold by a “merchant serv-
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`er”—PO speculates, without any support in Dr. Katz’s testimony or otherwise, that
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`Dr. Katz’s POSITA would have understood it could be, but that the answer “is not
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`clear for Petitioner’s POSITA.” Opp. 5.
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`III. PO Cannot Blame Petitioner For Dr. Katz’s Lack of Knowledge
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`PO’s present position that Dr. Katz’s multitude of “not sure” answers “re-
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`flects the quality of the question, not the qualification of the witness” (Opp. 6) is
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`also belied by the fact that PO’s counsel objected to almost none of these questions
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`about which it now complains. Cf. Rule 42.64(a). Out of eight substantive ques-
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`3
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`CBM2014-00108
`Patent 8,061,598 B2
`tions cited by PO, PO objected to only two and only for “scope”—and Dr. Katz did
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`not indicate any confusion about any of these questions during deposition. Ex.
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`1031 13:16-14:3, 21:12-16, 23:2-15, 164:18-165:8. And throughout his deposition,
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`Dr. Katz asked for clarification when he needed it. See, e.g., Ex. 1031 15:21-16:1,
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`22:7-23:6, 25:19-26:3, 36:10-18, 50:21-51:6, 56:14-57:1,71:21-72:14, 76:6-12,
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`89:22-90:8, 105:18-106:4, 135:4-16, 160:5-161:22, 164:2-17. PO’s newly minted
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`excuses (e.g., Opp. 5) are baseless.
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`IV. PO’s Explanations Highlight The Flaws In Dr. Katz’s Analysis Of The
`Claimed “SIM Portion”
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`Dr. Katz did not properly analyze the disclosures in the prior art regarding a
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`“SIM portion,” and instead erroneously limited his analysis only to “whether the
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`prior art showed motivation to employ whole memory cards to satisfy the claim el-
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`ement.” Opp. 7 (italics original). But neither Petitioner’s invalidity showing nor
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`any construction advanced in this proceeding would lead to such a narrow reading
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`of “SIM portion.” PO argues that “[w]hat internal structures the SIM portion could
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`be comprised of” is beyond the scope of the proceeding. Opp. 8. But the structure
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`that makes up a “SIM portion” and, therefore, whether that limitation is disclosed
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`or rendered obvious by the prior art, is certainly an issue in this trial, and PO’s ar-
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`guments regarding the scope of Dr. Katz’s declaration and his deposition testimony
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`confirm he has not considered anything more than “whether the prior art showed
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`motivation to employ whole memory cards to satisfy the claim element.” Opp. 7
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`4
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`CBM2014-00108
`Patent 8,061,598 B2
`(italics original). PO’s further contention that questions regarding the unique
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`number assigned to a repository in Stefik are irrelevant (Opp. 8-9) is similarly mis-
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`placed—these questions tested Dr. Katz’s own assertions in identifying supposed
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`deficiencies in the prior art. Cf. Ex 2030 ¶ 15.
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`V.
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`PO’s “Synopsis” is Merely Unsupported, Unauthorized Sur-Reply
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`Finally, PO’s lengthy bulleted “synopsis” (Opp. 9-13) does not address Dr.
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`Katz’s inability to satisfy F.R.E. 702: instead, it consists of over three pages of un-
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`authorized sur-reply on “patentability.” Opp. 13. The opinions PO purports to
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`summarize were tested at deposition, revealing Dr. Katz’s lack of knowledge and
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`inability to defend his opinions. These can be of no help to the Board, and should
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`be excluded.
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`Respectfully submitted, by /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
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`June 2, 2015
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`5
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`CBM2014-00108
`Patent 8,061,598 B2
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PETITIONER
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`APPLE INC.’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE UNDER
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`37 C.F.R. § 42.64(c) was served on June 2, 2015, to the following Counsel for Pa-
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`tent Owner via e-mail, pursuant to the parties’ agreement concerning service:
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`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`mcasey@dbjg.com
`jsd@dbjg.com
`docket@dbjg.com
`
`Attorneys for Patent Owner Smartflash LLC
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`/s/ Megan Raymond
`Megan F. Raymond
`
`ROPES & GRAY LLP
`
`6
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`
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