UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC. and GOOGLE INC.,
`Petitioners,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2015-000281
`Patent 7,334,720 B2
`________________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`1 CBM2015-00125 has been consolidated with this proceeding.
`
`
`
`
`
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC. and GOOGLE INC.,
`Petitioners,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2015-000281
`Patent 7,334,720 B2
`________________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`1 CBM2015-00125 has been consolidated with this proceeding.
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`The Board Should Exclude Exhibit 1202 .............................................. 1
`B.
`The Board Should Exclude Exhibits 1205, 1224, 1229-30, 1233, and
`1235-36 .................................................................................................. 2
`The Board Should Exclude Exhibits 1206-08, 1211, 1214-18, and
`1225-27 .................................................................................................. 2
`The Board Should Exclude Exhibits 1203, 1204, 1212, 1213, and
`1228 ....................................................................................................... 2
`The Board Should Exclude Exhibit 1219 .............................................. 3
`E.
`III. CONCLUSION ................................................................................................ 3
`
`
`D.
`
`C.
`
`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 33 at 2), but
`
`instead says nothing more than the patent itself in Ex. 1201 at 1:6-9 (“This
`
`invention … relates to a portable data carrier for storing and paying for data…”)
`
`and 1:51-53 (“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. The Board Should Exclude Exhibits 1205, 1224, 1229-30, 1233, and
`1235-36
`
`Petitioner concedes Ex. 1205 and 1236 were not relied on and it will not
`
`oppose exclusion. Pap. 33 at 4, n.2. Ex. 1224, 1229-30, 1233, and 1235 are not
`
`cited in any substantive way that would make them relevant. As Petitioner
`
`acknowledges, the exhibits merely were cited in “Materials Reviewed and Relied
`
`Upon” by Mr. Wechselberger. Pap. 33 at 3. These exhibits therefore are not
`
`relevant and not admissible. FRE 401, 402.
`
`C. The Board Should Exclude Exhibits 1206-08, 1211, 1214-18, and 1225-
`27
`
`Exhibits 1206-08, 1211, 1214-18, and 1225-27 were not alleged to be
`
`invalidating prior art and should be excluded. FRE 401, 402.
`
`D. The Board Should Exclude Exhibits 1203, 1204, 1212, 1213, and 1228
`Exhibits 1203, 1204, 1212, 1213, and 1228 were originally alleged to be
`
`invalidating prior art under 35 U.S.C. § 103 (Pap. 11 at 2-3), but CBM review in
`
`this case was instituted on claim 1 and 2 of the ‘720 Patent on 35 U.S.C. § 101
`
`grounds only. No other grounds were authorized. Pap. 11 at 18. These exhibits
`
`therefore should no longer be in evidence. FRE 401, 402.
`
`
`
`2
`
`
`
`
`
`E. The Board Should Exclude Exhibit 1219
`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
`
`and methods to the facts of the case” given that Mr. Wechselberger did not disclose
`
`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
`
`no basis to admit his expert testimony.2 Moreover, given that this proceeding was
`
`instituted on § 101 patent eligibility grounds only, Mr. Wechselberger’s testimony
`
`is inadmissible testimony on United States patent law. 37 CFR § 42.65(a).
`
`III. CONCLUSION
`Patent Owner respectfully requests that the Board exclude the exhibits.
`
`
`
`
`2 Patent Owner acknowledges that FRE 602 is inapplicable to expert witnesses
`
`(Pap. 33 at 9). However, Mr. Wechselberger never states that he is an expert in the
`
`types of methods and systems defined by the challenged claims.
`
`
`
`3
`
`
`
`
`
`Dated: December 10, 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
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S REPLY IN
`
`SUPPORT OF MOTION TO EXCLUDE EVIDENCE in CBM2015-00028 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
`Attorneys for Petitioner Apple Inc.
`
`
`
`Raymond Nimrod (raynimrod@ quinnemanuel.com)
`QE-SF-PTAB-Service@quinnemanuel.com
`Attorneys for Petitioner Google Inc.
`
` /
`
` 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: December 10, 2015
`
`
`
`5
`
`
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