UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2015-00018
`Patent 7,942,317 B2
`
`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`
`Smartflash - Exhibit 2102
`Apple v. Smartflash
`CBM2015-00018
`
`
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2015-00018
`Patent 7,942,317 B2
`
`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`
`Smartflash - Exhibit 2102
`Apple v. Smartflash
`CBM2015-00018
`
`
`
`Case CBM2015-00018
`Patent 7,942,317 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 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 Petition cites to Exhibit 1202 for the sole purpose of showing
`
`Patent Owner’s characterization of the ‘317 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.” Petition at 13 (citing Ex. 1202 ¶ 17). Petitioner’s expert,
`
`Anthony J. Wechselberger’s Declaration, Exhibit 1217, (“Wechselberger Declaration”) does not
`
`cite to Exhibit 1202. Petitioner does not need to cite to Exhibit 1202 to characterize what the
`
`‘317 Patent relates to when Exhibit 1201, the actual ‘317 Patent, is in evidence. Under Fed. R.
`
`Evid. 1004, other evidence of the content of a writing (here the ‘317 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 ‘317 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 ‘317 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 CBM2015-00018
`Patent 7,942,317 B2
`
`
`Exhibit 1203 (U.S. Patent No. 5,940,805)(“Kopp”)
`
`Exhibit 1204 (U.S. Patent No. 4,999,806)(“Chernow”)
`
`Exhibit 1205 (U.S. Patent No. 5,675,734)(“Hair”)
`
`Exhibit 1206 (U.S. Patent No. 4,337,483)(“Guillou”)
`
`Exhibit 1209 (U.S. Patent No. 5,103,392)(“Mori”)
`
`Exhibit 1210 (U.S. Patent No. 5,530,235)(“Stefik ‘235”)
`
`Exhibit 1211 (U.S. Patent No. 5,629,980)(“Stefik ‘980”)
`
`Exhibit 1212 (U.S. Patent No. 5,915,019)(“Ginter”)
`
`Exhibit 1213 (European Patent Application, Publication No. EP0809221A2)(“Poggio”)
`
`Exhibit 1214 (PCT Application Publication No. WO 99/43136)(“Rydbeck”)
`
`Exhibit 1215 (JP Publication No. H11-164058A (translation))(“Sato”)
`
`Exhibit 1216 (Eberhard von Faber, Robert Hammelrath, and Franz-Peter Heider, “The
`Secure Distribution of Digital Contents,” IEEE (1997))(“von Faber”)
`
`Exhibit 1219 (U.S. Patent No. 4,878,245)(“Bradley”)
`
`Exhibit 1221 (U.S. Patent No. 5,925,127)(“Ahmad”)
`
`Patent Owner objects to Exhibits 1203, 1204, 1205, 1206, 1209, 1210, 1211, 1212, 1213,
`
`1214, 1215, 1216, 1219, and 1221 (“the Non-asserted Reference Exhibits”) on relevance grounds
`
`because the Petitioner did not assert these references as alleged invalidating prior art in its
`
`Petition in this case. Moreover, the PTAB’s April 10, 2015 Decision – Institution of Covered
`
`Business Method Patent Review 37 C.F.R. § 42.208 (“PTAB Decision”) instituted covered
`
`business method review only on the ground that claim 18 is patent ineligible under 35 U.S.C. §
`
`101, a purely legal issue. 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
`
`
`
`3
`
`
`
`Case CBM2015-00018
`Patent 7,942,317 B2
`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 1217 (Declaration of Anthony J. Wechselberger In Support of Apple Inc.’s Petition
`for Covered Business Method Patent Review)
`
`Patent Owner objects to Exhibit 1217, 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. As such, paragraphs 27-59 (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.
`
`Furthermore, paragraphs 60-89 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.
`
`In addition, the Patent Owner objects to Exhibit 1217 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
`
`
`
`4
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`
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`Case CBM2015-00018
`Patent 7,942,317 B2
`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
`
`
`
`
`
`5
`
`Evid. 402).
`
`
`
`Dated: April 24, 2015
`
`
`
`
`
`
`
`
`
`Case CBM2015-00018
`Patent 7,942,317 B2
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S OBJECTIONS TO
`
`ADMISSIBILITY OF EVIDENCE in CBM2015-00018 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
`
`6
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