`Patent 7,942,317 B2
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`CBM2015-00018
`Patent 7,942,317 B2
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH LLC’S EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
`
`in a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits
`
`the following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”)
`
`Exhibits 2049, 2050, and 2058, and any reference thereto/reliance thereon, without
`
`limitation. Petitioner’s objections below apply the Federal Rules of Evidence
`
`(“F.R.E.”) as required by 37 C.F.R § 42.62.
`
`These objections address evidentiary deficiencies in the new material
`
`submitted by Patent Owner on June 24, 2015.
`
`
`
`Case CBM2015-00018
`Patent 7,942,317 B2
`
`
`
`
`
`
`
`The following objections apply to Exhibits 2049, 2050, and 2058 as they are
`
`actually presented by Patent Owner, in the context of Patent Owner’s June 24,
`
`2015 Patent Owner’s Response (Paper 25) and not in the context of any other
`
`substantive argument on the merits of the instituted grounds in this proceeding.
`
`Petitioner expressly objects to any other purported use of these Exhibits, including
`
`as substantive evidence in this proceeding, which would be untimely and improper
`
`under the applicable rules, and Petitioner expressly asserts, reserves and does not
`
`waive any other objections that would be applicable in such a context.
`
`I. Objections to Exhibits 2049, 2050, and 2058, And Any Reference
`to/Reliance Thereon
`
`Evidence objected to: Exhibits 2049 (“Report and Recommendation (on
`
`Defendants’ 101 SJ Motions)”), 2050 (“Order Adopting Report and
`
`Recommendation (on Defendants’ 101 SJ Motions)”), and 2058 (“Memorandum
`
`Opinion and Order (on Defendants’ Motions for Stay Pending the Outcome of
`
`CBMs)”).
`
`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”); F.R.E.
`
`402 (“General Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding
`
`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons”);
`
`and 37 C.F.R. § 42.61 (“Admissibility”).
`
`
`
`2
`
`
`
`Case CBM2015-00018
`Patent 7,942,317 B2
`
`
`
`
`
`
`
`Apple objects to the use of Exhibits 2049, 2050, and 2058 under F.R.E. 401,
`
`402, and 403, and 37 C.F.R. § 42.61. Patent Owner’s Response relies on Exhibits
`
`2049, 2050, and 2058 to urge the Board to adopt the District Court’s non-final
`
`findings and ruling on patent eligibility instead of independently determining the
`
`eligibility of the instituted claims. See, e.g., Paper 25 at 2, 16-17. However, the
`
`District Court’s non-final findings and ruling on patent eligibility are not binding
`
`on the Board. See SAP Am., Inc. v. Versata Dev. Grp., Inc., No. CBM2012-00001,
`
`Paper 36 at 19-20 (P.T.A.B. Jan. 9, 2013). Further, the District Court’s Orders
`
`were based on claim constructions that differ from the Board’s constructions in this
`
`proceeding and do not control here, see, e.g., Paper 1 at 21 n.6; Paper 15 at 4, and
`
`the Board applies a preponderance of the evidence standard. Cf. Rockstar
`
`Consortium US LP, Inc. v. Samsung Elecs. Co., Ltd., Nos. 2:13-cv-894, 2:13-cv-
`
`900, 2014 WL 1998053, at *3 (E.D. Tex. May 15, 2014) (Gilstrap, J.). In addition,
`
`the District Court’s denial of a stay in the litigation has no bearing on the
`
`patentability of the instituted claims. Accordingly, these Exhibits do not appear to
`
`make any fact of consequence in determining this action more or less probable than
`
`it would be without them and are thus irrelevant and not admissible (F.R.E. 401,
`
`402); permitting reference to/reliance on these documents in any future
`
`submissions of Patent Owner would also be impermissible, misleading, irrelevant,
`
`and unfairly prejudicial to Petitioner (F.R.E. 402, 403); and to the extent Patent
`
`
`
`3
`
`
`
`Case CBM2015-00018
`Patent 7,942,317 B2
`
`Owner attempts to rely on or submit these aforementioned Exhibits in the future as
`
`
`
`
`
`
`evidence in support of new substantive positions, doing so would be untimely, in
`
`violation of the applicable rules governing this proceeding, and unfairly prejudicial
`
`to Apple (F.R.E. 403).
`
`Respectfully submitted,
`
`
`
`
`
`
`
`July 1, 2015
`
`
`
`
`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
`
`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
`
`Attorneys for Petitioner Apple Inc.
`
`
`
`4
`
`
`
`
`
`
`
`
`
`Case CBM2015-00018
`Patent 7,942,317 B2
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of PETITIONER APPLE
`
`INC.’S OBJECTIONS TO PATENT OWNER SMARTFLASH LLC’S EXHIBITS
`
`was served on July 1, 2015, to the following Counsel for Patent Owner via e-mail,
`
`pursuant to the parties’ agreement concerning service:
`
`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
`
`Attorneys for Patent Owner Smartflash LLC
`
`
`
`
`
`
`s/ Sharon Lee
`Sharon Lee
`
`
`
`
`
`ROPES & GRAY LLP