UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC.,
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`Petitioner,
`
`v.
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`SMARTFLASH LLC,
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`Patent Owner.
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`____________
`
`Case CBM2015-00028
`Patent 7,334,720 B2
`____________
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`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
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`
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00028
`Patent 7,334,720 B2
`____________
`
`
`
`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2015-00028
`Patent 7,334,720 B2
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`Pursuant to 37 C.F.R. § 42.64, Patent Owner hereby objects to the
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`admissibility of certain evidence submitted with Petitioner’s Corrected Petition,
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`Paper 5, (“Corrected Petition”). Patent Owner’s objections are based on the
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`Federal Rules of Evidence and the Board Rules and are set forth with particularity
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`below.
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`Exhibit 1202
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`Patent Owner objects to the admissibility of Exhibit 1202 on grounds that it
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`is cumulative evidence and irrelevant. The Corrected Petition cites to Exhibit 1202
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`for the sole purpose of showing Patent Owner’s characterization of the ‘720 Patent
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`as relating to “a portable data carrier for storing data and managing access to the
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`data via payment information and/or use status rules” and covering a computer
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`network that “serves data and manages access to data by, for example, validating
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`payment information.” Corrected Petition at 11 (citing Ex. 1202). Petitioner’s
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`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
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`Exhibit 1202 to characterize what the ‘720 Patent relates to when Exhibit 1201, the
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`actual ‘720 Patent, is in evidence. Under FRE 1004, other evidence of the content
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`of a writing (here the ‘720 Patent) is admissible if the original is lost, cannot be
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`obtained, has not been produced, or the writing is not closely related to a
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`controlling issue. None of those apply given that the ‘720 Patent is in evidence
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`2
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`Case CBM2015-00028
`Patent 7,334,720 B2
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`and is the subject of the trial. The PTAB should also exclude Exhibit 1202 under
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`FRE 403 as cumulative of Exhibit 1201.
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`Moreover, Patent Owner’s characterization of the ‘720 Patent in its First
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`Amended Complaint is not relevant to any of the issues here. Being irrelevant
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`evidence, Exhibit 1202 is not admissible per FRE 402.
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`Exhibits 1205, 1224, 1229, 1230, 1233, 1235, 1236
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`Neither the Corrected Petition, nor the Wechselberger Declaration (Ex.
`
`1219), nor the PTAB’s May 28, 2015 Decision – Institution of Covered Business
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`Method Patent Review 37 C.F.R. § 42.208 (“PTAB Decision”) cite Exhibits 1205,
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`1224, 1229, 1230, 1233, 1235, or 1236. As such, these exhibits do not appear to
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`make a fact of consequence in determining this action more or less probable than it
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`would be without them. As such, Exhibits 1205, 1224, 1229, 1230, 1233, 1235,
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`and 1236 do not pass the test for relevant evidence under FRE 401 and are thus not
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`admissible per FRE 402.
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`Exhibits 1206, 1207, 1208, 1211, 1214, 1215, 1216, 1217, 1218, 1225, 1226, 1227
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`Neither the Corrected Petition nor the Wechselberger Declaration cite
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`Exhibits 1206, 1207, 1208, 1211, 1214, 1215, 1216, 1217, 1218, 1225, 1226 or
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`1227 as potentially invalidating prior art, either alone or in combination with any
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`other reference. The PTAB Decision did not base any of its analysis on Exhibits
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`1206, 1207, 1208, 1211, 1214, 1215, 1216, 1217, 1218, 1225, 1226 or 1227. Thus,
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`3
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`Case CBM2015-00028
`Patent 7,334,720 B2
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`these exhibits do not appear to make a fact of consequence in determining this
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`action more or less probable than it would be without these exhibits. As such,
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`Exhibits 1206, 1207, 1208, 1211, 1214, 1215, 1216, 1217, 1218, 1225, 1226 and
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`1227 do not pass the test for relevant evidence under FRE 401 and are thus not
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`admissible per FRE 402.
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`Exhibits 1203, 1204, 1212, 1213, 1228
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`The PTAB Decision did not adopt any of the proposed invalidity grounds
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`asserted based on Exhibits 1203, 1204, 1212, 1213, and 1228. Thus, these exhibits
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`do not appear to make a fact of consequence in determining this action more or
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`less probable than it would be without them. As such, Exhibits 1203, 1204, 1212,
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`1213, and 1228 do not pass the test for relevant evidence under FRE 401 and are
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`thus not admissible per FRE 402.
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`Exhibit 1219
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`Patent Owner objects to Exhibit 1219, the Wechselberger Declaration, in its
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`entirety as the Wechselberger Declaration does not state the relative evidentiary
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`weight (e.g., substantial evidence versus preponderance of the evidence) used in
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`arriving at his conclusions. The Board cannot assess under FRE 702 whether Mr.
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`Wechselberger’s opinion testimony is “the product of reliable principles and
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`methods” or if Mr. Wechselberger “reliably applied the principles and methods to
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`4
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`Case CBM2015-00028
`Patent 7,334,720 B2
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`the facts of the case” given that Mr. Wechselberger did not disclose the standard
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`against which he measured the evidence in arriving at his opinions.
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`Additionally, the Wechselberger Declaration does not prove that Mr.
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`Wechselberger is an expert whose testimony is relevant to the issue of what is
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`taught and/or suggested by the cited references. While Mr. Wechselberger may
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`opine that he was “one of ordinary skill in the art,” he does not, however, state that
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`he is an expert in the types of methods and systems defined by the challenged
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`claims nor does he provide proof that he is an expert. Thus, Mr. Wechselberger
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`has not proven that his opinions are proper expert opinions upon which the PTAB
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`can rely as opposed to inadmissible lay opinions. FRE 701 and 702.
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`The Wechselberger Declaration is further objected to to the extent that any
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`paragraph relies upon an exhibit that is objected to herein for the reasons set forth
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`in those objections. 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
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`objected to as not being relevant and therefore being inadmissible under FRE 401
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`and 402.
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`5
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` /
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` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
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`6
`
`Case CBM2015-00028
`Patent 7,334,720 B2
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`
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`Dated: June 12, 2015
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`
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`Case CBM2015-00028
`Patent 7,334,720 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
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`OBJECTIONS TO ADMISSIBILITY OF EVIDENCE in CBM2015-00028 was
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`served today, by agreement of the parties by emailing a copy to counsel for the
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`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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`
`
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`
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`Dated: June 12, 2015
`
` /
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` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`7
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