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 REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`________________________
`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 REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`The Board Should Exclude Exhibit 1202 .............................................. 1
`B.
`Petitioner Does Not Oppose Exclusion of Exhibit 1208....................... 2
`C.
`The Board Should Exclude Exhibits 1206, 1207, 1209, 1211, 1212,
`1216, 1217, 1219, 1226, and 1227 ........................................................ 2
`The Board Should Exclude Exhibits 1203, 1205, 1213, 1214, 1215,
`and 1218 ................................................................................................ 2
`The Board Should Exclude Exhibit 1220 .............................................. 2
`E.
`III. CONCLUSION ................................................................................................ 3
`
`
`D.
`
`i
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner understands that “the Board, sitting as a non-jury tribunal with
`
`administrative expertise, is well-positioned to determine and assign appropriate
`
`weight to the evidence presented in this trial, without resorting to formal exclusion
`
`that might later be held reversible error.” Liberty Mutual Insurance Co. v.
`
`Progressive Casualty Insurance Co., CBM2012-00002, Paper 66, Final Written
`
`Decision (PTAB January 23, 2014)(citing S.E.C. v. Guenthner, 395 F. Supp. 2d
`
`835, 842 n.3 (D. Neb. 2005)). At the same time, the Federal Rules of Evidence
`
`apply (37 CFR § 42.62(a)) and it is within the Board’s authority to manage the
`
`record by ruling on the admissibility of evidence based on the trial as instituted so
`
`that in the event of an appeal under 35 U.S.C. § 142, a proper record exists that can
`
`be transmitted to the United States Court of Appeals for the Federal Circuit
`
`pursuant to 35 U.S.C. § 143.
`
`II. ARGUMENT
`A. The Board Should Exclude Exhibit 1202
`Ex. 1202 does not contain a “highly relevant admission” (Paper 43 at 2), but
`
`instead says nothing more than the patent itself in Ex. 1201 at 1:20-23 (“This
`
`invention … relates to a portable data carrier for storing and paying for data…”)
`
`and 1:64-66 (“reading payment information,” “validating the payment
`
`information”). Ex. 1202 therefore is inadmissible other evidence of the content of
`
`
`
`1
`
`
`
`
`
`a writing under FRE 1004, cumulative under FRE 403, and irrelevant under FRE
`
`401, 402.
`
`B. Petitioner Does Not Oppose Exclusion of Exhibit 1208
`Petitioner concedes that Ex. 1208 was not relied on and does not oppose its
`
`exclusion. Paper 43 at 3, n.1.
`
`C. The Board Should Exclude Exhibits 1206, 1207, 1209, 1211, 1212, 1216,
`1217, 1219, 1226, and 1227
`
`Ex. 1206, 1207, 1209, 1211, 1212, 1216, 1217, 1219, 1226, and 1227 are not
`
`alleged to be invalidating prior art. These exhibits are not relevant and not
`
`admissible. FRE 401, 402.
`
`D. The Board Should Exclude Exhibits 1203, 1205, 1213, 1214, 1215, and
`1218
`
`Exhibits 1203, 1205, 1213, 1214, 1215, and 1218 were originally alleged to
`
`be invalidating prior art under 35 U.S.C. § 103 (Paper 23 at 3), but CBM review in
`
`this case was instituted on claims 1, 6, 8, and 10 of the ‘458 Patent on 35 U.S.C. §
`
`101 grounds and on claim 11 on 35 U.S.C. § 112 grounds only. No other grounds
`
`were authorized. Paper 23 at 26. These exhibits therefore should no longer be in
`
`evidence. FRE 401, 402.
`
`E. The Board Should Exclude Exhibit 1220
`The Board cannot assess under FRE 702 whether Mr. Wechselberger’s
`
`opinion testimony is “based on sufficient facts or data,” is “the product of reliable
`
`principles and methods,” or if Mr. Wechselberger “reliably applied the principles
`2
`
`
`
`
`
`
`
`and methods to the facts of the case” given that Mr. Wechselberger did not disclose
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`the standard (substantial evidence or preponderance of the evidence) against which
`
`he measured the quantum of evidence in arriving at his opinions. As such, there is
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`no basis to admit his expert testimony.1
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`III. CONCLUSION
`Patent Owner respectfully requests that the Board exclude the exhibits.
`
`Dated: October 22, 2015
`
`
`
`
`
`
`
`
`
`/ 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
`
`
`
`1 Patent Owner acknowledges that FRE 602 is inapplicable to expert witnesses
`
`(Pap. 43 at 8). However, Mr. Wechselberger never states that he is an expert in the
`
`types of methods and systems defined by the challenged claims.
`
`
`
`3
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S REPLY IN
`
`SUPPORT OF MOTION TO EXCLUDE EVIDENCE in CBM2015-00016 was
`
`served today, 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
`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: October 22, 2015
`
`
`
`
`
`
`
`4
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