UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`
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`SAMSUNG ELECTRONICS LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
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`Petitioner,
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`v.
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`SMARTFLASH LLC,
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`Patent Owner.
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`____________
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`Case CBM2014-001901
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`Patent 7,334,720 B2
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`____________
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`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
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`
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`                                                            
`1 CBM2015-00118 has been consolidated with this proceeding.
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` 
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`Introduction .................................................................................................... .. 1
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`A.
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`Ex. 1003 Is Inadmissible ..................................................................... ..1
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`Introduction ...................................................................................................... 1
`I.
`II. Argument ......................................................................................................... 1
`Argument ....................................................................................................... ..1
`A.
`Ex. 1003 Is Inadmissible ....................................................................... 1
`1. Ex. 1003 Does Not Meet Foundation or Reliability Requirements ...... 1
`1. Ex. 1003 Does Not Meet Foundation or Reliability Requirements .... ..1
`2. Ex. 1003 ¶¶ 23-112 And Ex. 1004-1006 Are Not Relevant ................. 3
`2. Ex. 1003 1111 23-112 And Ex. 1004-1006 Are Not Relevant ............... ..3
`3. Ex. 1003 ¶¶ 23-26 and 113-128 Are Inadmissible ................................ 3
`3. Ex. 1003 1111 23-26 and 113-128 Are Inadmissible .............................. ..3
`4. Ex. 1003 Paragraphs 129-137 Are Inadmissible Under § 42.65(a) ...... 4
`4. EX. 1003 Paragraphs 129-137 Are Inadmissible Under § 42.65(a) .... ..4
`5. Ex. 1003 ¶¶ 102-107, 122, 123, 124, 125, and 128 Are Inadmissible .. 4
`5. Ex. 1003 1111 102-107, 122, 123, 124, 125, and 128 Are Inadmissible..4
`B.
`Exhs. 1004 to 1006 Are Irrelevant And Inadmissible ........................... 5
`C.
`Ex. 1028 Is Irrelevant And Inadmissible ............................................... 5
`III. Conclusion ....................................................................................................... 5
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`Conclusion ..................................................................................................... ..5
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`B.
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`C.
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`III.
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`Exhs. 1004 to 1006 Are Irrelevant And Inadmissible ......................... ..5
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`Ex. 1028 Is Irrelevant And Inadmissible ............................................. ..5
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`i
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` 
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`I.
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`Introduction
`Petitioner’s Reply to Patent Owner’s Motion to Exclude Evidence (“Pet.’s
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`Rep.”), Pap. 39, does not provide valid reasons why exhibits 1003, 1004, 1005,
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`1006, and 1028 should not be excluded pursuant to §§ 42.62 and 42.64(c).
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`II. Argument
`A. Ex. 1003 Is Inadmissible
`1. Ex. 1003 Does Not Meet Foundation or Reliability Requirements
`As predicted, Petitioner relies on Vibrant Media v. General Electric
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`Company, IPR2013-00172, Pap. 50 at 42 and Apple Inc. v. Smartflash LLC,
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`CBM2014-00102, Pap. 8 at 4, to argue that an expert need not expressly set forth
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`the evidentiary standard used in formulating opinions. Rather than addressing
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`directly PO’s argument that for Bloom’s testimony to be given weight under 37
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`CFR § 42.65(a) and to be admissible under FRE 7022 it must disclose the
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`underlying facts or data on which the opinion is based, must be based on sufficient
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`facts or data, must be the product of reliable principles and methods, and must
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`show that the expert has reliably applied the principles and methods to the facts of
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`the case (PO’s Mot. to Exclude, Pap. 33, at 1-4), Petitioner criticizes PO’s cross
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`                                                            
`2 Petitioner’s claim that PO waived objection to Ex. 1003 under §§ 42.64(a), 42.65
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`and FRE 702 (Pap. 39 at 5) rings hollow; PO objected to Ex. 1003 in its entirety
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`under 37 CFR § 42.65, which, like FRE 702, addresses whether an opinion is
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`based on sufficient facts or data such that it can be deemed reliable. Ex. 2094 at 2.
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`1
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`

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` 
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`examination of Bloom. “Smartflash failed to question Dr. Bloom as to any reliable
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`principles and methods that he used to render his opinion.” Pap. 39 at 5. Petitioner
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`ignores that the proponent of expert testimony bears the burden of proving
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`admissibility. FRE 702, Committee Notes on Rules – 2000 Amendment
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`(admissibility of expert testimony governed by principles of Rule 104(a);
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`proponent has burden of establishing pertinent admissibility requirements met by
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`preponderance of the evidence). Petitioner also ignores that Bloom’s Declaration,
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`by not disclosing the standard by which he examined evidence, fails to provide
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`assurances that his testimony meets the requisites of § 42.65(a) and FRE 702.
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`Petitioner further argues that Bloom’s attestation that statements set forth in
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`his declaration are correct renders them “more likely true than not true based on
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`evidence known to him” and thus “Dr. Bloom’s statements are self-revealing of his
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`satisfaction of the preponderance of evidence standard.” Pap. 39 at 5. Petitioner
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`confuses statements, such as stating the content of what a particular cited document
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`says, with expert opinions. The question here is whether Bloom’s expert opinions
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`are based on sufficient facts or data, the product of reliable principles and methods,
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`and the result of reliably applying the principles and methods to the facts. Bloom’s
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`Declaration is devoid of discussion of the evidentiary standard applied to the
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`underlying facts in arriving at his opinions. The Board cannot assess Bloom’s
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`opinion testimony absent disclosure of the standard he used to weigh evidence.
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`2
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`2. Ex. 1003 ¶¶ 23-112 And Ex. 1004-1006 Are Not Relevant
`There can be no dispute that ¶¶ 23-112 of the Bloom Declaration are
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`directed to patentability under § 103 and discussions of the Gruse and Stefik
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`references, Exhs. 1004 to 1006. There also can be no dispute that Petitioner
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`proffered the Gruse and Stefik references as grounds for § 103 invalidity. Corr.
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`Pet., Pap. 4 at 3. Given that the institution decision did not adopt any § 103
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`grounds (Pap. 9 at 18), ¶¶ 23-112 and Exhs. 1004-1006 are not relevant to the
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`proceeding as instituted. While Petitioner now claims that the paragraphs and
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`exhibits are “relevant to the § 101 inquiry of patent eligibility” (Pap. 39 at 6-7, 11),
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`that is not why they were proffered. Petitioner’s § 101 arguments are in § V(A) of
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`the Corrected Petition. § V(A) does not rely on those paragraphs or exhibits.
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`Similarly, Bloom addresses § 101 subject matter ineligibility in § V of his
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`Declaration. Not once in § V does Bloom cite ¶¶ 23-112 or Exhibits 1004 to 1006.
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`Petitioner’s argument that ¶¶ 23-112 and Exhs. 1004-1006 are relevant to the § 101
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`issue is belied by the failure to rely on them in the § 101 sections of the Corrected
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`Petition or Bloom Declaration.
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`3. Ex. 1003 ¶¶ 23-26 and 113-128 Are Inadmissible
`Nothing in Pet.’s Rep. establishes Bloom’s qualifications to testify on the
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`legal issue of § 101 subject matter. While Petitioner cites Ex. 1003 ¶¶ 5-22 as
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`support for Bloom’s “relevant, timely, and substantial industry experience with
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`digital rights management” (Pap. 39 at 7) and criticizes PO for purportedly “not
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`3
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`question[ing] the strength and depth of Bloom’s industry experience with digital
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`right (sic) management” (id. at n. 4), there is nothing in the Bloom Declaration that
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`qualifies Bloom to give expert opinions on legal issues. Notably, when PO cross-
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`examined Bloom on his current position and whether any SiriusXM product would
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`read on the claims, PO was met with confidentiality objections and a motion to
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`exclude Bloom’s testimony on the subject. See Pap. 37/38.
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`4. Ex. 1003 Paragraphs 129-137 Are Inadmissible Under § 42.65(a)
`Nothing in Pet.’s Rep. rebuts the fact that Ex. 1003 ¶¶ 129-137 constitute
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`testimony on United States patent law/patent examination practice. PO did not
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`“mischaracterize” ¶¶ 129-137 as testimony on United States patent law or patent
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`examination practice. Pap. 39 at 8. Paragraphs 129-137 are in a section headed
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`“Legal Principles” and relate to “claim construction,” “level of ordinary skill in the
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`art,” anticipation,” and “obviousness.” § 42.65(a) is clear that “[t]estimony on
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`United States patent law or patent examination practice will not be admitted.”
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`Petitioner provides no authority for its position that such testimony is permissible
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`“factual foundation” or for any exception to § 42.65(a)’s prohibition.
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`5. Ex. 1003 ¶¶ 102-107, 122, 123, 124, 125, and 128 Are Inadmissible
`Pet.’s Rep. does not address PO’s argument that ¶¶ 122, 123, 124, 125, and
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`128 are irrelevant and inadmissible. Pap. 39 at 9-11. Petitioner attempts to
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`overcome PO’s hearsay objections by filing Ex. 1043, “supplemental evidence”
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`served on PO in response to PO’s objections. Petitioner ignores the deficiencies in
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`4
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`Ex. 1043 under § 42.63 “Form of Evidence” that render it inadmissible on its face.
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`Ex. 1043 is a 3-part, 511-page aggregation of newspaper and periodical articles. It
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`does not meet § 42.63, which requires that “evidence consists of … documents… .
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`All evidence must be filed in the form of an exhibit. Each party’s exhibits must be
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`numbered sequentially… . An exhibit must conform with the requirements for
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`papers in § 42.6… .” § 42.6(c) in turn requires that “[e]ach exhibit must be filed
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`with the first document in which it is cited… .” Here, the individual documents
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`(i.e. “evidence”) were not filed in the form of exhibits, not numbered sequentially,
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`and not filed with the first document in which each is cited, the Bloom Declaration.
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`There is no authenticating declaration establishing authenticity of documents
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`comprising Ex. 1043. While competent evidence meeting § 42.63 might overcome
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`hearsay objections, Ex. 1043 does not.
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`B.
`Exhs. 1004 to 1006 Are Irrelevant And Inadmissible
`Exhs. 1004 to 1006 are irrelevant and inadmissible for the reasons set forth
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`in § II(A)(2), above.
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`C. Ex. 1028 Is Irrelevant And Inadmissible
`Petitioner has not shown that the description of the planned establishment of
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`credit facilities into retail establishments is relevant to the technological solution
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`for digital rights management embodied in the ‘720 Patent.
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`III. Conclusion
`Exhibits 1003, 1004, 1005, 1006, and 1028 should be excluded.
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` 
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`5
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`
` /
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` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
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`6
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`Dated: October 13, 2015
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PATENT OWNER’S REPLY IN
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`SUPPORT OF MOTION TO EXCLUDE EVIDENCE in CBM2014-00190 was
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`served, by agreement of the parties, October 13, 2015 by emailing copies to
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`counsel for the Petitioners as follows:
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`W. Karl Renner (renner@fr.com)
`Thomas Rozylowicz (rozylowicz@fr.com)
`CBM39843-0003CP1@fr.com
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`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
`
`
` /
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` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`7
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`
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`Dated: October 13, 2015
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