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,
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`v.
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`SMARTFLASH LLC,
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`Patent Owner.
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`____________
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`Case CBM2015-00029
`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
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`____________
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`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00029
`Patent 7,334,720 B2
`____________
`
`
`
`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2015-00029
`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 1302
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`Patent Owner objects to the admissibility of Exhibit 1302 on grounds that it
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`is cumulative evidence and irrelevant. The Petition cites to Exhibit 1302 for the
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`sole purpose of showing Patent Owner’s characterization of the ‘720 Patent as
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`relating to “a portable data carrier for storing data and managing access to the data
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`via payment information and/or use status rules” and covering a computer network
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`that “serves data and manages access to data by, for example, validating payment
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`information.” Corrected Petition at 11 (citing Ex. 1302). Petitioner’s expert,
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`Anthony J. Wechselberger’s Declaration, Exhibit 1319, (“Wechselberger
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`Declaration”) does not cite to Exhibit 1302. Petitioner does not need to cite to
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`Exhibit 1302 to characterize what the ‘720 Patent relates to when Exhibit 1301, 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 CBM2015-00029
`Patent 7,334,720 B2
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`and is the subject of the trial. The PTAB should also exclude Exhibit 1302 under
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`FRE 403 as cumulative of Exhibit 1301.
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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 1302 is not admissible per FRE 402.
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`Exhibits 1305, 1324, 1329, 1330, 1333, 1335, 1336
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`Neither the Petition, nor the Wechselberger Declaration (Ex. 1319), nor the
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`PTAB’s May 28, 2015 Decision – Institution of Covered Business Method Patent
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`Review 37 C.F.R. § 42.208 (“PTAB Decision”) cite Exhibits 1305, 1324, 1329,
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`1330, 1333, 1335, or 1336. As such, these exhibits do not appear to make a fact of
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`consequence in determining this action more or less probable than it would be
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`without them. As such, Exhibits 1305, 1324, 1329, 1330, 1333, 1335, and 1336 do
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`not pass the test for relevant evidence under FRE 401 and are thus not admissible
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`per FRE 402.
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`Exhibits 1303, 1306, 1307, 1308, 1311, 1314, 1316, 1317, 1318, 1325, 1326, 1328
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`Neither the Petition nor the Wechselberger Declaration cite Exhibits 1303,
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`1306, 1307, 1308, 1311, 1314, 1316, 1317, 1318, 1325, 1326 or 1328 as
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`potentially invalidating prior art, either alone or in combination with any other
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`reference. The PTAB Decision did not base any of its analysis on Exhibits 1303,
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`1306, 1307, 1308, 1311, 1314, 1316, 1317, 1318, 1325, 1326 or 1328. Thus, these
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`3
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`Case CBM2015-00029
`Patent 7,334,720 B2
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`exhibits do not appear to make a fact of consequence in determining this action
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`more or less probable than it would be without these exhibits. As such, Exhibits
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`1303, 1306, 1307, 1308, 1311, 1314, 1316, 1317, 1318, 1325, 1326 and 1328 do
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`not pass the test for relevant evidence under FRE 401 and are thus not admissible
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`per FRE 402.
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`Exhibits 1304, 1312, 1313, 1315, 1327
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`The PTAB Decision did not adopt any of the proposed invalidity grounds
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`asserted based on Exhibits 1304, 1312, 1313, 1315, and 1327. 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 1304, 1312, 1313,
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`1315, and 1327 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 1319
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`Patent Owner objects to Exhibit 1319, 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 CBM2015-00029
`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
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`Case CBM2015-00029
`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 CBM2015-00029
`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 CBM2015-00029 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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`Dated: June 12, 2015
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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
`
`
`
`7
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