Case CBM2015-00016
`Patent 8,033,458 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`APPLE INC.,
`Petitioner
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`v.
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`SMARTFLASH LLC,
`Patent Owner
`______________________
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`Case CBM2015-00016
`Patent 8,033,458 B2
`______________________
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`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
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`PETITIONER APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH LLC’S EXHIBITS
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`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
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`in a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits
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`the following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”)
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`Exhibits 2049, 2050, 2058, and 2073, and any reference thereto/reliance thereon,
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`without limitation. Petitioner’s objections below apply the Federal Rules of
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`Evidence (“F.R.E.”) as required by 37 C.F.R § 42.62.
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`These objections address evidentiary deficiencies in the new material
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`submitted by Patent Owner on June 24, 2015.
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`Patent 8,033,458 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`APPLE INC.,
`Petitioner
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`v.
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`SMARTFLASH LLC,
`Patent Owner
`______________________
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`Case CBM2015-00016
`Patent 8,033,458 B2
`______________________
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`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
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`PETITIONER APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH LLC’S EXHIBITS
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`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
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`in a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits
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`the following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”)
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`Exhibits 2049, 2050, 2058, and 2073, and any reference thereto/reliance thereon,
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`without limitation. Petitioner’s objections below apply the Federal Rules of
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`Evidence (“F.R.E.”) as required by 37 C.F.R § 42.62.
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`These objections address evidentiary deficiencies in the new material
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`submitted by Patent Owner on June 24, 2015.
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`Case CBM2015-00016
`Patent 8,033,458 B2
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`The following objections apply to Exhibits 2049, 2050, 2058, and 2073 as
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`they are actually presented by Patent Owner, in the context of Patent Owner’s June
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`24, 2015 Patent Owner’s Response (Paper 33) and not in the context of any other
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`substantive argument on the merits of the instituted grounds in this proceeding.
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`Petitioner expressly objects to any other purported use of these Exhibits, including
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`as substantive evidence in this proceeding, which would be untimely and improper
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`under the applicable rules, and Petitioner expressly asserts, reserves and does not
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`waive any other objections that would be applicable in such a context.
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`I. Objections to Exhibits 2049, 2050, and 2058, And Any Reference
`to/Reliance Thereon
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`Evidence objected to: Exhibits 2049 (“Report and Recommendation (on
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`Defendants’ 101 SJ Motions)”), 2050 (“Order Adopting Report and
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`Recommendation (on Defendants’ 101 SJ Motions)”), and 2058 (“Memorandum
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`Opinion and Order (on Defendants’ Motions for Stay Pending the Outcome of
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`CBMs)”).
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`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”); F.R.E.
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`402 (“General Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding
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`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons”);
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`and 37 C.F.R. § 42.61 (“Admissibility”).
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`Patent 8,033,458 B2
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`Apple objects to the use of Exhibits 2049, 2050, and 2058 under F.R.E. 401,
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`402, and 403, and 37 C.F.R. § 42.61. Patent Owner’s Response relies on Exhibits
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`2049, 2050, and 2058 to urge the Board to adopt the District Court’s non-final
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`findings and ruling on patent eligibility (on fewer than all claims instituted on §
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`101 grounds in this proceeding) instead of independently determining the
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`eligibility of the instituted claims. See, e.g., Paper 33 at 2, 12-13, 18-19, 22, 27-28.
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`However, the District Court’s non-final findings and ruling on patent eligibility are
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`not binding on the Board. See SAP Am., Inc. v. Versata Dev. Grp., Inc., No.
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`CBM2012-00001, Paper 36 at 19-20 (P.T.A.B. Jan. 9, 2013). Further, the District
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`Court’s Orders were based on claim constructions that differ from the Board’s
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`constructions in this proceeding and do not control here, see, e.g., Paper 9 at 20-21;
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`Paper 23 at 11-12, and the Board applies a preponderance of the evidence standard.
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`Cf. Rockstar Consortium US LP, Inc. v. Samsung Elecs. Co., Ltd., Nos. 2:13-cv-
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`894, 2:13-cv-900, 2014 WL 1998053, at *3 (E.D. Tex. May 15, 2014) (Gilstrap,
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`J.). In addition, the District Court’s denial of a stay in the litigation has no bearing
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`on the patentability of the instituted claims. Accordingly, these Exhibits do not
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`appear to make any fact of consequence in determining this action more or less
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`probable than it would be without them and are thus irrelevant and not admissible
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`(F.R.E. 401, 402); permitting reference to/reliance on these documents in any
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`future submissions of Patent Owner would also be impermissible, misleading,
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`Case CBM2015-00016
`Patent 8,033,458 B2
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`irrelevant, and unfairly prejudicial to Petitioner (F.R.E. 402, 403); and to the extent
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`Patent Owner attempts to rely on or submit these aforementioned Exhibits in the
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`future as evidence in support of new substantive positions, doing so would be
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`untimely, in violation of the applicable rules governing this proceeding, and
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`unfairly prejudicial to Apple (F.R.E. 403).
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`II. Objections to Exhibit 2073, And Any Reference to/Reliance Thereon
`Evidence objected to: Exhibits 2073 (“Apple’s Preliminary Claim
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`Constructions and Extrinsic Evidence”).
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`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”); F.R.E.
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`402 (“General Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding
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`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons”);
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`37 C.F.R. § 42.61 (“Admissibility”); F.R.E. 901 (“Authenticating or Identifying
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`Evidence”); F.R.E. 1002 (“Requirement of the Original”); and F.R.E. 1003
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`(“Admissibility of Duplicates”).
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`Apple objects to the use of Exhibit 2073 under F.R.E. 901, 1002, 1003, and
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`37 C.F.R. § 42.61 because Patent Owner fails to provide the authentication
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`required for the document. Although Exhibit 2070 (“Declaration of Emily E.
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`Toohey in Support of Patent Owner’s Response”) claims that “Exhibit 2073 is a
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`true and correct copy of Apple’s Preliminary Claim Constructions and Extrinsic
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`Evidence filed in Smartflash, LLC, et al. v. Apple Inc., et al., Case No. 6:13-CV-
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`Patent 8,033,458 B2
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`447 (E.D. Tex.) that [was] downloaded from PACER on June 19, 2015” (Exhibit
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`2070 ¶ 7), Exhibit 2073 does not include the District Court’s stamped header or
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`otherwise indicate that it was “filed” such that it can be “downloaded from
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`PACER.”
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`Apple further objects to the use of Exhibit 2073 under F.R.E. 401, 402, and
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`403, and 37 C.F.R. § 42.61 because Patent Owner’s Response does not
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`substantively cite to this Exhibit. Apple further objects to the use of Exhibit 2073
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`under F.R.E. 401, 402, and 403, and 37 C.F.R. § 42.61 to the extent Patent Owner
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`intended to rely on Exhibit 2073 to support its argument that Apple’s contention
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`that claim 11 is indefinite “contradicts Apple’s claim construction position in
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`District Court in which Apple offered a single definition for ‘use rule’ and ‘use
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`rule data.’” Paper 33 at 3; see also id. at 28-29. That Apple may have proposed
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`the same definition in litigation for the terms “use rule” and “use rule data”—
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`which was ultimately rejected by the District Court—under a different standard,
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`see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004);
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`MPEP § 2111, has no relevance to this proceeding. Indeed, as noted in its Petition,
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`Apple expressly reserved the right to argue different claim constructions in
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`litigation because the standard for claim construction at the PTO is different than
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`that used in litigation. Paper 9 at 20. Accordingly, this Exhibit does not appear to
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`make any fact of consequence in determining this action more or less probable than
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`Patent 8,033,458 B2
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`it would be without it and is thus irrelevant and not admissible (F.R.E. 401, 402);
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`permitting reference to/reliance on this document in any future submissions of
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`Patent Owner would also be impermissible, misleading, irrelevant, and unfairly
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`prejudicial to Petitioner (F.R.E. 402, 403); and to the extent Patent Owner attempts
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`to rely on or submit this aforementioned Exhibit in the future as evidence in
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`support of new substantive positions, doing so would be untimely, in violation of
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`the applicable rules governing this proceeding, and unfairly prejudicial to Apple
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`(F.R.E. 403).
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`Respectfully submitted,
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`July 1, 2015
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`Ching-Lee Fukuda (Backup Counsel)
`Reg. No. 44,334
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036
`P: 212-596-9336 /F: 212-596-9000
`ching-lee.fukuda@ropesgray.com
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`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Reg. No. 47,414
`Megan F. Raymond
`Reg. No. 72,997
`ROPES & GRAY LLP
`One Metro Center,
`700 12th St., Ste. 900
`Washington, DC 20005-3948
`P: 202-508-4606 / F: 202-383-8371
`steven.baughman@ropesgray.com
`megan.raymond@ropesgray.com
`Mailing address for all PTAB correspondence: ROPES & GRAY LLP
`IPRM – Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-
`3600
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`Attorneys for Petitioner Apple Inc.
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`Case CBM2015-00016
`Patent 8,033,458 B2
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of PETITIONER APPLE
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`INC.’S OBJECTIONS TO PATENT OWNER SMARTFLASH LLC’S EXHIBITS
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`was served on July 1, 2015, to the following Counsel for Patent Owner via e-mail,
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`pursuant to the parties’ agreement concerning service:
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`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`mcasey@dbjg.com
`jsd@dbjg.com
`docket@dbjg.com
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`Attorneys for Patent Owner Smartflash LLC
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`s/ Sharon Lee
`Sharon Lee
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`ROPES & GRAY LLP
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