UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`
`Smartflash - Exhibit 2100
`Apple v. Smartflash
`CBM2015-00016
`
`
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`
`Smartflash - Exhibit 2100
`Apple v. Smartflash
`CBM2015-00016
`
`
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`Pursuant to 37 C.F.R. § 42.64, Patent Owner hereby objects to the admissibility of certain
`
`evidence submitted with Petitioner’s petition (“the Corrected Petition”). Patent Owner’s
`
`objections are based on the Federal Rules of Evidence and the Board Rules and are set forth with
`
`particularity below.
`
`
`
`Exhibit 1202 (Plaintiff’s First Amended Complaint)
`
`Patent Owner objects to the admissibility of Exhibit 1202 on grounds that it is cumulative
`
`evidence and irrelevant. The Corrected Petition cites to Exhibit 1202 for the sole purpose of
`
`showing Patent Owner’s characterization of the ‘458 Patent as covering “a portable data carrier
`
`for storing data and managing access to the data via payment information and/or use status rules”
`
`and covering “a computer network …that serves data and manages access to data by, for
`
`example, validating payment information.” Corrected Petition at 12 (citing Ex. 1202 ¶ 17).
`
`Petitioner’s expert, Anthony J. Wechselberger’s Declaration, Exhibit 1220, (“Wechselberger
`
`Declaration”) does not cite to Exhibit 1202. Petitioner does not need to cite to Exhibit 1202 to
`
`characterize what the ‘458 Patent relates to when Exhibit 1201, the actual ‘458 Patent, is in
`
`evidence. Under Fed. R. Evid. 1004, other evidence of the content of a writing (here the ‘458
`
`Patent) is admissible if the original is lost, cannot be obtained, has not been produced, or the
`
`writing is not closely related to a controlling issue. None of those apply given that the ‘458
`
`Patent is in evidence and is the subject of the trial. The PTAB should also exclude Exhibit 1202
`
`under Fed. R. Evid. 403 as cumulative of Exhibit 1201.
`
`Moreover, Patent Owner’s characterization of the ‘458 Patent in its First Amended
`
`Complaint is not relevant to any of the issues here. Being irrelevant evidence, Exhibit 1202 is
`
`not admissible. Fed. R. Evid. 402.
`
`
`
`2
`
`
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`
`
`Exhibit 1208 (Russell Housley and Jan Dolphin, “Metering: A Pre-pay Technique,”
`Storage and Retrieval for Image and Video Databases V, Conference Volume 3022, 527
`(January 15, 1997))
`
`Neither the Corrected Petition, nor the Wechselberger Declaration, nor the PTAB’s April
`
`10, 2015 Decision – Institution of Covered Business Method Patent Review and Denying Motion
`
`for Joinder 37 C.F.R. § 42.208, 37 C.F.R. § 42.222(b) (“PTAB Decision”) cite to Exhibit 1208.
`
`Patent Owner objects to Exhibit 1208 on relevance grounds. Exhibit 1208 does not appear to
`
`make a fact of consequence in determining this action more or less probable than it would be
`
`without Exhibit 1208. As such, Exhibit 1208 does not pass the test for relevant evidence under
`
`Fed. R. Evid. 401. Being irrelevant evidence, Exhibit 1208 is not admissible. Fed. R. Evid. 402.
`
`
`
`Exhibit 1206 (U.S. Patent No. 4,999,806)(“Chernow”)
`
`Exhibit 1207 (U.S. Patent No. 5,675,734)(“Hair”)
`
`Exhibit 1209 (U.S. Patent No. 4,878,245)(“Bradley”)
`
`Exhibit 1211 (U.S. Patent No. 4,337,483)(“Guillou”)
`
`Exhibit 1212 (U.S. Patent No. 5,103,392)(“Mori”)
`
`Exhibit 1216 (European Patent Application, Publication No. EP0809221A2)(“Poggio”)
`
`Exhibit 1217 (PCT Application Publication No. WO 99/43136)(“Rydbeck”)
`
`Exhibit 1219 (Eberhard von Faber, Robert Hammelrath, and Franz-Peter Heider, “The
`Secure Distribution of Digital Contents,” IEEE (1997))(“von Faber”)
`
`Exhibit 1226 (U.S. Patent No. 7,725,375)(“Shepherd”)
`
`Exhibit 1227 (International Publication No. WO 95/34857)(“Smith”)
`
`Patent Owner objects to Exhibits 1206, 1207, 1209, 1211, 1212, 1216, 1217, 1219, 1226,
`
`and 1227 (“the Non-asserted Reference Exhibits”) on relevance grounds because the Petitioner
`
`
`
`3
`
`
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`did not assert these references as alleged invalidating prior art in its Corrected Petition in this
`
`case. Moreover, the PTAB Decision instituted covered business method review only on the
`
`ground that claims 1, 6, 8, and 10 are patent ineligible under 35 U.S.C. § 101 and that claim 11 is
`
`indefinite under 35 U.S.C. § 112, second paragraph, issues unrelated to the prior art. As such,
`
`the Non-asserted Reference Exhibits fail the test for relevant evidence because nothing in the
`
`Non-asserted Reference Exhibits makes a fact of consequence in determining this action more or
`
`less probable than it would be without the Non-asserted Reference Exhibits. Fed. R. Evid.
`
`401(b). Being irrelevant evidence, the Non-asserted Reference Exhibits are not admissible. Fed.
`
`R. Evid. 402.
`
`
`
`Exhibit 1203 (U.S. Patent No. 5,925,127)(“Ahmad”)
`
`Exhibit 1205 (U.S. Patent No. 5,940,805)(“Kopp”)
`
`Exhibit 1213 (U.S. Patent No. 5,530,235)(“Stefik ‘235”)
`
`Exhibit 1214 (U.S. Patent No. 5,629,980)(“Stefik ‘980”)
`
`Exhibit 1215 (U.S. Patent No. 5,915,019)(“Ginter”)
`
`Exhibit 1218 (JP Publication No. H11-164058A (translation))(“Sato”)
`
`Patent Owner objects to Exhibits 1203, 1205, 1213, 1214, 1215, and 1218 (“the Alleged
`
`Prior Art Exhibits”) on relevance grounds because the PTAB Decision did not adopt any of the
`
`proposed invalidity grounds based on the Alleged Prior Art Exhibits. The Alleged Prior Art
`
`Exhibits therefore fail the test for relevant evidence because nothing in the Alleged Prior Art
`
`Exhibits makes a fact of consequence in determining this action more or less probable than it
`
`would be without the Alleged Prior Art Exhibits. Fed. R. Evid. 401(b). Being irrelevant
`
`evidence, the Alleged Prior Art Exhibits are not admissible. Fed. R. Evid. 402.
`
`
`
`4
`
`
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`
`
`Exhibit 1220 (Declaration of Anthony J. Wechselberger In Support of Apple Inc.’s Petition
`for Covered Business Method Patent Review)
`
`Patent Owner objects to Exhibit 1220, the Wechselberger Declaration, in its entirety
`
`under Fed. R. Evid. 401 because the trial as instituted is limited to patentability under 35 U.S.C.
`
`§ 101 and indefiniteness under 35 U.S.C. § 112, second paragraph. As such, paragraphs 24-71
`
`(and any other portion of the Wechselberger Declaration that is directed to patentability under 35
`
`U.S.C. §§ 102/103) are not relevant to the instituted proceeding. Fed. R. Evid. 401. Being
`
`irrelevant evidence, those paragraphs are not admissible. Fed. R. Evid. 402.
`
`Paragraphs 24-26 and 72-75 are objected to because they deal with the issue of
`
`indefiniteness and the Wechselberger Declaration does not prove that Mr. Wechselberger is an
`
`expert whose testimony is relevant to the issue. While Mr. Wechselberger may opine that he was
`
`“one of ordinary skill in the art,” he does not, however, state that he is an expert in the types of
`
`methods and systems defined by the challenged claims nor does he provide proof that he is an
`
`expert. Thus, Mr. Wechselberger has not proven that his opinions are proper expert opinions
`
`upon which the PTAB can rely as opposed to inadmissible lay opinions. Fed. R. Evid. 701 and
`
`702. Thus, those portions of the Wechselberger Declaration are objected to under Fed. R. Evid.
`
`602 as lacking foundation.
`
`Paragraphs 76-105 are objected to because they deal with the strictly legal issue of
`
`statutory subject matter for which Mr. Wechselberger is not an expert. Thus, those portions of
`
`the Wechselberger Declaration are objected to under Fed. R. Evid. 401 as not relevant, under
`
`Fed. R. Evid. 602 as lacking foundation, and under Fed. R. Evid. 701 and 702 as providing legal
`
`opinions on which the lay witness is not competent to testify. Being irrelevant evidence, those
`
`paragraphs are not admissible. Fed. R. Evid. 402.
`
`
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`5
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`
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`In addition, Patent Owner objects to Exhibit 1220 under 37 CFR § 42.65 in its entirety as
`
`it does not set forth the relative evidentiary weight (e.g., substantial evidence versus
`
`preponderance of the evidence) Mr. Wechselberger used in arriving at his conclusions.
`
`The Wechselberger Declaration is further objected to in all instances where any
`
`paragraph relies upon an exhibit that specifically is objected to herein for the reasons set forth in
`
`those specific objections. Further, any paragraph in the Wechselberger Declaration that relies
`
`upon any exhibit not relied upon by the PTAB to institute this proceeding is further objected to
`
`(under Fed. R. Evid. 401) as not being relevant and therefore being inadmissible (under Fed. R.
`
` 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
`
`
`
`
`
`6
`
`Evid. 402).
`
`
`
`Dated: April 24, 2015
`
`
`
`
`
`
`
`
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S OBJECTIONS TO
`
`ADMISSIBILITY OF EVIDENCE in CBM2015-00016 was served today, April 24, 2015, 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
`
` /
`
` 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: April 24, 2015
`
`7
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