UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2014-001121
`Patent 7,942,317 B2
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`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
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`1 Case CBM2014-00113 has been consolidated with the instant proceeding.
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`
`
`
`
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2014-001121
`Patent 7,942,317 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`1 Case CBM2014-00113 has been consolidated with the instant proceeding.
`
`
`
`
`
`
`Case CBM2014-00112
`Patent 7,942,317 B2
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`
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`TABLE OF CONTENTS
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`
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`The Board Should Exclude Exhibit 1002 .............................................. 1
`B.
`The Board Should Exclude Exhibits 1004 - 1005, 1009, 1019, ........... 2
`And 1027 - 1029 .............................................................................................. 2
`C.
`The Board Should Exclude Exhibits 1006, 1007, 1012, 1017, and
`1020 ....................................................................................................... 2
`The Board Should Exclude Exhibit 1016 and 1018 .............................. 3
`D.
`The Board Should Exclude Exhibit 1021 .............................................. 3
`E.
`The Board Should Exclude Requested Portions of Exhibit 1031 ......... 4
`F.
`The Board Should Exclude Exhibits 1101-1129 ................................... 5
`G.
`III. CONCLUSION ................................................................................................ 5
`
`
`i
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`Case CBM2014-00112
`Patent 7,942,317 B2
`I.
`
`INTRODUCTION
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`Patent Owner understands 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 in this trial, without resorting to formal exclusion
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`that might later be held reversible error.” Liberty Mutual Insurance Co. v.
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`Progressive Casualty Insurance Co., CBM2012-00002, Paper 66, Final Written
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`Decision (PTAB January 23, 2014)(citing S.E.C. v. Guenthner, 395 F. Supp. 2d
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`835, 842 n.3 (D. Neb. 2005)). At the same time, the Federal Rules of Evidence
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`apply (37 CFR § 42.62(a)) and it is within the Board’s authority to manage the
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`record by ruling on the admissibility of evidence based on the trial as instituted so
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`that in the event of an appeal under 35 U.S.C. § 142, a proper record exists that can
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`be transmitted to the United States Court of Appeals for the Federal Circuit
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`pursuant to 35 U.S.C. § 143.
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`II. ARGUMENT
`A. The Board Should Exclude Exhibit 1002
`Ex. 1002 does not contain a “highly relevant admission” (Paper 42 at 2), but
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`instead says nothing more than the patent itself in Ex. 1001 at 1:20-23 (“This
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`invention … relates to a portable data carrier for storing and paying for data…”)
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`and 1:64-66 (“reading payment information,” “validating the payment
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`1
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`Case CBM2014-00112
`Patent 7,942,317 B2
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`information”). Ex. 1002 is inadmissible other evidence of the content of a writing
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`under FRE 1004, cumulative under FRE 403, and irrelevant under FRE 401, 402.
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`B. The Board Should Exclude Exhibits 1004 - 1005, 1009, 1019,
` And 1027 - 1029
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`Ex. 1004 - 1005, 1009, 1019, and 1027 – 1029 are not cited in any
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`substantive way. The exhibits were merely listed in “Materials Reviewed and
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`Relied Upon” by Mr. Wechselberger. Pap. 42 at 3. These exhibits are not relevant
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`and not admissible. FRE 401, 402.
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`C. The Board Should Exclude Exhibits 1006, 1007, 1012, 1017, and 1020
`CBM review in this case was instituted on 35 U.S.C. § 103 grounds based
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`on: the combination of Stefik ’235 and Stefik ’980; and separately, Ginter. All
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`other grounds were denied. Pap. 7, at 22. Patent Owner does not dispute that “as
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`part of the obviousness analysis, the prior art must be viewed in the context of
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`what was generally known in the art at the time of the invention” (Pap. 42 at 3-4
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`(citing In re Taylor Made Golf Co., 589 F. App’x 967, 971 (Fed. Cir. 2014))), but
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`none of these exhibits or their teachings are cited in Petitioner’s invalidity
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`allegations for “what was generally known in the art” to meet a claim limitation.
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`In contrast to Taylor Made, there is no missing claim limitation in Petitioner’s
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`references that Petitioner alleges is satisfied by general knowledge possessed by
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`one skilled in the art, like “press fitting” was in Taylor Made. Here, neither the
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`Petition nor the Wechselberger declaration rely on Ex. 1006, 1007, 1012, 1017, or
`2
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`Case CBM2014-00112
`Patent 7,942,317 B2
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`1020 to fill in with “general knowledge” any aspect of a claim limitation. They
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`should not be in evidence. FRE 401, 402.
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`D. The Board Should Exclude Exhibit 1016 and 1018
`Petitioner asserts that Ex. 1016 and 1018, references for which the Board did
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`not adopt Petitioner’s proposed invalidity grounds, are “evidence of the state of the
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`art and a POSITA’s knowledge” (Pap.42 at 5) like Ex. 1006, 1007, 1012, 1017,
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`and 1020, discussed above. The Board did not accept Ex. 1016 or 1018 as
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`invalidating prior art. They are irrelevant and inadmissible like Ex. 1006, 1007,
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`1012, 1017, and 1020.
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`E. The Board Should Exclude Exhibit 1021
`The Board cannot assess whether Mr. Wechselberger’s opinion testimony
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`under FRE 702 is “the product of reliable principles and methods” or if Mr.
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`Wechselberger “reliably applied the principles and methods to the facts of the
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`case” given that Mr. Wechselberger did not disclose the standard against which he
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`measured the quantum of prior art evidence (substantial evidence or preponderance
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`of the evidence) in arriving at his opinions. As such, there is no basis to admit his
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`expert testimony.2 Patent Owner’s lack of objection in the litigation to the “offer of
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`2 Patent Owner acknowledges that FRE 602 is inapplicable to expert witnesses
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`(Pap. 42 at 5). However, Mr. Wechselberger never states that he is an expert in the
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`types of methods and systems defined by the challenged claims.
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`
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`3
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`Case CBM2014-00112
`Patent 7,942,317 B2
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`Mr. Wechselberger as an expert” (Pap. 42 at 7) is irrelevant. It is not an admission
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`that Mr. Wechselberger is an expert. The supporting proof, Ex. 1034, is hearsay.
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`FRE 801(c).
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`F. The Board Should Exclude Requested Portions of Exhibit 1031
`The Board should exclude portions of Ex. 1031 in instances where the scope
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`of the Katz deposition examination exceeded the scope of the direct testimony (37
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`CFR 42.53(d)(5)(ii)) and where the testimony was irrelevant. Unlike CBM2014-
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`00008, Pap. 48 (Aug. 12, 2014) relied on by Petitioner (Pap. 42 at 8), where the
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`Patent Owner sought “the extreme remedy of striking 114 pages of the deposition,”
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`(CBM2014-00008, Pap. 48 at 4), here Patent Owner seeks to exclude discrete
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`portions. A fair reading of the record demonstrates that Patent Owner’s objections
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`were made and preserved at the deposition.
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`Ex. 1031 36:10-37:11 – Petitioner does not rebut that this testimony is
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`irrelevant given that it relates to claims (conditional access to stored data) and
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`terms (“payment validation” not “payment validation data”) outside the scope of
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`the proceeding as instituted.
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`Ex. 1031 70:1 – 73:9 –Petitioner does not rebut that this testimony is
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`irrelevant given that the issue is whether Stefik ‘235 discloses use of a credit card,
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`not whether “there is anything that would exclude the use a credit card” as asked.
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`4
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`Case CBM2014-00112
`Patent 7,942,317 B2
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`Ex. 1031 110:7 – 111:4 – Petitioner does not rebut that “when payment data
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`happens” is nonsensical and that the differences between two embodiments in the
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`‘221 Patent are irrelevant here.
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`Ex. 1031 114:3 – 116:13 – Petitioner does not rebut that this testimony about
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`‘221 Patent alternative embodiments is outside the scope of direct given that it
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`relates to enablement and that Dr. Katz testified it was not part of his declaration.
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`Ex. 1031 124:10 – 128:11 – Petitioner does not rebut that this testimony is
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`outside the scope given that Petitioner’s counsel never established what he meant
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`by “pre-purchase processing” and never framed the question in terms of Dr. Katz’s
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`definition or prior use of the term.
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`Ex. 1031 145:6 – 146:8 and Ex. 1031 152:7 – 156:12 – Petitioner admits that
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`this testimony does not relate to limitations in the instituted claims of the ‘317
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`Patent. Pap. 42 at 15, n. 6.
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`G. The Board Should Exclude Exhibits 1101-1129
`Given the consolidation with CBM2014-00112, duplicative exhibits from
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`CBM2014-00113 should be excluded.
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`III. CONCLUSION
`Patent Owner respectfully requests that the Board exclude the exhibits.
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`5
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`Case CBM2014-00112
`Patent 7,942,317 B2
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`Dated: June 2, 2015
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`
`
`/ 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
`
`
`
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`
`
`6
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`Case CBM2014-00112
`Patent 7,942,317 B2
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S REPLY IN
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`SUPPORT OF MOTION TO EXCLUDE EVIDENCE in CBM2014-00112 was
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`served today, by agreement of the parties by emailing a copy to counsel for the
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`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
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`
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`
`
`
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`7
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`
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