`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2015-00017
`Patent 8,061,598 B2
`
`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`
`Smartflash - Exhibit 2101
`Apple v. Smartflash
`CBM2015-00017
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`
`
`Case CBM2015-00017
`Patent 8,061,598 B2
`Pursuant to 37 C.F.R. § 42.64, Patent Owner hereby objects to the admissibility of certain
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`evidence submitted with Petitioner’s petition (“the Corrected Petition”). Patent Owner’s
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`objections are based on the Federal Rules of Evidence and the Board Rules and are set forth with
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`particularity below.
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`Exhibit 1202 (Plaintiff’s First Amended Complaint)
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`Patent Owner objects to the admissibility of Exhibit 1202 on grounds that it is cumulative
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`evidence and irrelevant. The Corrected Petition cites to Exhibit 1202 for the sole purpose of
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`showing Patent Owner’s characterization of the ‘598 Patent as covering “a portable data carrier
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`for storing data and managing access to the data via payment information and/or use status rules”
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`and covering “a computer network …that serves data and manages access to data by, for
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`example, validating payment information.” Corrected Petition at 13 (citing Ex. 1202 ¶ 17).
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`Petitioner’s expert, Anthony J. Wechselberger’s Declaration, Exhibit 1219, (“Wechselberger
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`Declaration”) does not cite to Exhibit 1202. Petitioner does not need to cite to Exhibit 1202 to
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`characterize what the ‘598 Patent relates to when Exhibit 1201, the actual ‘598 Patent, is in
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`evidence. Under Fed. R. Evid. 1004, other evidence of the content of a writing (here the ‘598
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`Patent) is admissible if the original is lost, cannot be obtained, has not been produced, or the
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`writing is not closely related to a controlling issue. None of those apply given that the ‘598
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`Patent is in evidence and is the subject of the trial. The PTAB should also exclude Exhibit 1202
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`under Fed. R. Evid. 403 as cumulative of Exhibit 1201.
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`Moreover, Patent Owner’s characterization of the ‘598 Patent in its First Amended
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`Complaint is not relevant to any of the issues here. Being irrelevant evidence, Exhibit 1202 is
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`not admissible. Fed. R. Evid. 402.
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`Case CBM2015-00017
`Patent 8,061,598 B2
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`Exhibit 1205 (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))
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`Neither the Corrected Petition, nor the Wechselberger Declaration, nor the PTAB’s April
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`10, 2015 Decision – Institution of Covered Business Method Patent Review and Denying Motion
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`for Joinder 37 C.F.R. § 42.208, 37 C.F.R. § 42.222(b) (“PTAB Decision”) cite to Exhibit 1205.
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`Patent Owner objects to Exhibit 1205 on relevance grounds. Exhibit 1205 does not appear to
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`make a fact of consequence in determining this action more or less probable than it would be
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`without Exhibit 1205. As such, Exhibit 1205 does not pass the test for relevant evidence under
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`Fed. R. Evid. 401. Being irrelevant evidence, the Exhibit 1205 is not admissible. Fed. R. Evid.
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`402.
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`3
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`Case CBM2015-00017
`Patent 8,061,598 B2
`Exhibit 1206 (U.S. Patent No. 4,999,806)(“Chernow”)
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`Exhibit 1207 (U.S. Patent No. 5,675,734)(“Hair”)
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`Exhibit 1208 (U.S. Patent No. 4,878,245)(“Bradley”)
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`Exhibit 1211 (U.S. Patent No. 5,103,392)(“Mori”)
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`Exhibit 1214 (U.S. Patent No. 5,915,019)(“Ginter”)
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`Exhibit 1215 (European Patent Application, Publication No. EP0809221A2)(“Poggio”)
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`Exhibit 1216 (PCT Application Publication No. WO 99/43136)(“Rydbeck”)
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`Exhibit 1217 (JP Publication No. H11-164058A (translation))(“Sato”)
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`Exhibit 1218 (Eberhard von Faber, Robert Hammelrath, and Franz-Peter Heider, “The
`Secure Distribution of Digital Contents,” IEEE (1997))(“von Faber”)
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`Exhibit 1225 (U.S. Patent No. 4,337,483)(“Guillou”)
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`Exhibit 1226 (U.S. Patent No. 7,725,375)(“Shepherd”)
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`Exhibit 1227 (International Publication No. WO 95/34857)(“Smith”)
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`Patent Owner objects to Exhibits 1206, 1207, 1208, 1211, 1214, 1215, 1216, 1217, 1218,
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`1225, 1226, and 1227 (“the Non-asserted Reference Exhibits”) on relevance grounds because the
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`Petitioner did not assert these references as alleged invalidating prior art in its Corrected Petition
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`in this case. Moreover, the PTAB Decision instituted covered business method review only on
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`the ground that claims 1, 2, 15, and 31 are patent ineligible under 35 U.S.C. § 101, a purely legal
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`issue. As such, the Non-asserted Reference Exhibits fail the test for relevant evidence because
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`nothing in the Non-asserted Reference Exhibits makes a fact of consequence in determining this
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`action more or less probable than it would be without the Non-asserted Reference Exhibits. Fed.
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`R. Evid. 401(b). Being irrelevant evidence, the Non-asserted Reference Exhibits are not
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`admissible. Fed. R. Evid. 402.
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`Case CBM2015-00017
`Patent 8,061,598 B2
`Exhibit 1203 (U.S. Patent No. 5,925,127)(“Ahmad”)
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`Exhibit 1204 (U.S. Patent No. 5,940,805)(“Kopp”)
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`Exhibit 1212 (U.S. Patent No. 5,530,235)(“Stefik ‘235”)
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`Exhibit 1213 (U.S. Patent No. 5,629,980)(“Stefik ‘980”)
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`Patent Owner objects to Exhibits 1203, 1204, 1212, and 1213 (“the Alleged Prior Art
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`Exhibits”) on relevance grounds because the PTAB Decision did not adopt any of the proposed
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`invalidity grounds based on the Alleged Prior Art Exhibits. The Alleged Prior Art Exhibits
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`therefore fail the test for relevant evidence because nothing in the Alleged Prior Art Exhibits
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`makes a fact of consequence in determining this action more or less probable than it would be
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`without the Alleged Prior Art Exhibits. Fed. R. Evid. 401(b). Being irrelevant evidence, the
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`Alleged Prior Art Exhibits are not admissible. Fed. R. Evid. 402.
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`
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`Exhibit 1219 (Declaration of Anthony J. Wechselberger In Support of Apple Inc.’s Petition
`for Covered Business Method Patent Review)
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`Patent Owner objects to Exhibit 1219, the Wechselberger Declaration, in its entirety
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`under Fed. R. Evid. 401 because the trial as instituted is limited to patentability under 35 U.S.C.
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`§ 101. As such, paragraphs 30-68 (and any other portion of the Wechselberger Declaration that
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`is directed to patentability under 35 U.S.C. §§ 102/103) are not relevant to the instituted
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`proceeding. Fed. R. Evid. 401. Being irrelevant evidence, those paragraphs are not admissible.
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`Fed. R. Evid. 402.
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`Furthermore, paragraphs 69-98 are objected to because they deal with the strictly legal
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`issue of statutory subject matter for which Mr. Wechselberger is not an expert. Thus, those
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`portions of the Wechselberger Declaration are objected to under Fed. R. Evid. 401 as not
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`relevant, under Fed. R. Evid. 602 as lacking foundation, and under Fed. R. Evid. 701 and 702 as
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`Patent 8,061,598 B2
`providing legal opinions on which the lay witness is not competent to testify. Being irrelevant
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`evidence, those paragraphs are not admissible. Fed. R. Evid. 402.
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`In addition, the Patent Owner objects to Exhibit 1219 under 37 CFR § 42.65 in its
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`entirety as it does not set forth the relative evidentiary weight (e.g., substantial evidence versus
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`preponderance of the evidence) Mr. Wechselberger used in arriving at his conclusions.
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`The Wechselberger Declaration is further objected to in all instances where any
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`paragraph relies upon an exhibit that specifically is objected to herein for the reasons set forth in
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`those specific objections. Further, any paragraph in the Wechselberger Declaration that relies
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`upon any exhibit not relied upon by the PTAB to institute this proceeding is further objected to
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`(under Fed. R. Evid. 401) as not being relevant and therefore being inadmissible (under Fed. R.
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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
`
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`6
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`Evid. 402).
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`Dated: April 24, 2015
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`Case CBM2015-00017
`Patent 8,061,598 B2
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PATENT OWNER’S OBJECTIONS TO
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`ADMISSIBILITY OF EVIDENCE in CBM2015-00017 was served today, April 24, 2015, by
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`agreement of the parties by emailing a copy to counsel for the Petitioner as follows:
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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 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
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`7