Case CBM2015-00029
`Patent 7,334,720 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`APPLE INC.,
`Petitioner
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`v.
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`SMARTFLASH LLC,
`Patent Owner
`______________________
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`Case CBM2015-00029
`Patent 7,334,720 B2
`______________________
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`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, GREGG I.
`ANDERSON, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
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`PETITIONER APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH LLC’S EXHIBITS
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`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
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`in a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits
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`the following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”)
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`Exhibits 2049, 2050, 2058, 2068, 2074, and 2075, and any reference
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`thereto/reliance thereon, without limitation. Petitioner’s objections below apply
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`the Federal Rules of Evidence (“F.R.E.”) as required by 37 C.F.R § 42.62.
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`These objections address evidentiary deficiencies in the new material served
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`by Patent Owner on July 29, 2015.
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`Patent 7,334,720 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`APPLE INC.,
`Petitioner
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`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00029
`Patent 7,334,720 B2
`______________________
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`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, GREGG I.
`ANDERSON, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
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`PETITIONER APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH LLC’S EXHIBITS
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`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
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`in a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits
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`the following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”)
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`Exhibits 2049, 2050, 2058, 2068, 2074, and 2075, and any reference
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`thereto/reliance thereon, without limitation. Petitioner’s objections below apply
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`the Federal Rules of Evidence (“F.R.E.”) as required by 37 C.F.R § 42.62.
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`These objections address evidentiary deficiencies in the new material served
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`by Patent Owner on July 29, 2015.
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`Case CBM2015-00029
`Patent 7,334,720 B2
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`The following objections apply to Exhibits 2049, 2050, 2058, 2068, 2074,
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`and 2075 as they are actually presented by Patent Owner, in the context of Patent
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`Owner’s July 29, 2015 Patent Owner’s Response (Paper 23) and not in the context
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`of any other substantive argument on the merits of the instituted grounds in this
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`proceeding. Petitioner expressly objects to any other purported use of these
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`Exhibits, including as substantive evidence in this proceeding, which would be
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`untimely and improper under the applicable rules, and Petitioner expressly asserts,
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`reserves and does not waive any other objections that would be applicable in such
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`a context.
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`I. Objections to Exhibits 2049, 2050, 2058, 2074, and 2075 And Any
`Reference to/Reliance Thereon
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`Evidence objected to: Exhibits 2049 (“Report and Recommendation (on
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`Defendants’ Motions for Summary Judgment of Invalidity Pursuant to 35 U.S.C. §
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`101)”), 2050 (“Order Adopting Report and Recommendation (on Defendants’
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`Motions for Summary Judgment of Invalidity Pursuant to 35 U.S.C. § 101)”), 2058
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`(“Memorandum Opinion and Order (on Defendants’ Motions for Stay Pending the
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`Outcome of CBMs)”), Exhibit 2074 (“Civil Docket Report from Smartflash LLC,
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`et al. v. Apple Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.)”), and 2075 (“Order
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`(on Defendants’ Renewed Motion for Judgment as a Matter of Law on the Issue of
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`§ 101 under Rule 50(b))”).
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`Case CBM2015-00029
`Patent 7,334,720 B2
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`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”); F.R.E.
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`402 (“General Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding
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`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons”);
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`and 37 C.F.R. § 42.61 (“Admissibility”).
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`Petitioner objects to the use of Exhibits 2049, 2050, 2058, 2074 and 2075
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`under F.R.E. 401, 402, and 403, and 37 C.F.R. § 42.61. Patent Owner’s Response
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`relies on Exhibits 2049, 2050, 2058, and 2075 to urge the Board to adopt the
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`District Court’s non-final findings and ruling on patent eligibility (on only one of
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`the claims instituted on § 101 grounds in this proceeding) instead of independently
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`determining the eligibility of the instituted claims. See, e.g., Paper 23 at 17-18, 21,
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`23-24, 29-31. However, the District Court’s non-final findings and ruling on
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`patent eligibility are not binding on the Board. See SAP Am., Inc. v. Versata Dev.
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`Grp., Inc., No. CBM2012-00001, Paper 36 at 19-20 (P.T.A.B. Jan. 9, 2013).
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`Further, the District Court’s Orders were based on claim constructions that differ
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`from the Board’s constructions in this proceeding and do not control here, see, e.g.,
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`CBM2015-00028, Paper 5 at 22 n.12; Paper 11 at 6, and the Board applies a
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`preponderance of the evidence standard. Cf. Rockstar Consortium US LP, Inc. v.
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`Samsung Elecs. Co., Ltd., Nos. 2:13-cv-894, 2:13-cv-900, 2014 WL 1998053, at
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`*3 (E.D. Tex. May 15, 2014) (Gilstrap, J.). In addition, the District Court’s denial
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`Case CBM2015-00029
`Patent 7,334,720 B2
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`of a stay in the litigation has no bearing on the patentability of the instituted
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`claims.
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`Further, the District Court’s finding that the “claims do not risk preempting
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`all future inventions,” on which Patent Owner’s Response relies (Paper 23 at 23),
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`is of no consequence to the § 101 inquiry because “the absence of complete
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`preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v.
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`Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Moreover, “questions on
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`preemption are inherent in and resolved by the § 101 analysis” and “[w]here a
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`patent’s claims are deemed only to disclose patent ineligible subject matter under
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`the Mayo framework, … preemption concerns are fully addressed and made moot.”
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`Id. Thus, preemption is not a separate test for patent eligibility. Id.
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`Petitioner further objects to Exhibits 2049 and 2074 under F.R.E. 401, 402,
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`and 403, and 37 C.F.R. § 42.61 because neither the District Court’s
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`acknowledgment that the parties identified noninfringing alternatives (see Paper 23
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`at 24) nor Petitioner’s contention in the parallel litigation that it does not infringe
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`the instituted claims (see id.) is relevant to the patentability of the challenged
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`Case CBM2015-00029
`Patent 7,334,720 B2
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`claims.1 See Ariosa, 788 F.3d at 1379; Ultramercial, Inc. v. Hulu LLC, 772 F.3d
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`709, 715-16 (Fed. Cir. 2014); see also Paper 22 at 3.
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`Accordingly, for the reasons stated above, these Exhibits do not appear to
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`make any fact of consequence in determining this action more or less probable than
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`it would be without them and are thus irrelevant and not admissible (F.R.E. 401,
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`402); permitting reference to/reliance on these documents in any future
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`submissions of Patent Owner would also be impermissible, misleading, irrelevant,
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`and unfairly prejudicial to Petitioner (F.R.E. 402, 403).
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`II. Objections to Exhibit 2068, And Any Reference to/Reliance Thereon
`Evidence objected to: Exhibit 2068 (“Transcript of the Deposition of
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`Anthony J. Wechselberger, dated May 28, 2015”).
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`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”); F.R.E.
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`402 (“General Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding
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`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons”);
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`37 C.F.R. § 42.61 (“Admissibility”); F.R.E. 901 (“Authenticating or Identifying
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`1
`Patent Owner makes no showing that the specific document in Exhibit 2074
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`to which Patent Owner refers (see Paper 23 at 24 (citing Dkt. #271)) addresses
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`non-infringement of the same patent or same claims. Exhibit 2074 is irrelevant to
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`the instant proceeding for this additional reason.
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`Case CBM2015-00029
`Patent 7,334,720 B2
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`Evidence”); F.R.E. 1002 (“Requirement of the Original”); and F.R.E. 1003
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`(“Admissibility of Duplicates”).
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`Petitioner objects to the use of Exhibit 2068 under F.R.E. 901, 1002, 1003,
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`and 37 C.F.R. § 42.61 because Patent Owner fails to provide the authentication
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`required for the documents. Although Exhibit 2078 (“Declaration of Emily E.
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`Toohey in Support of Patent Owner’s Response”) claims that “Exhibit 2068 is a
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`true and correct copy of the Transcript of the Deposition of Anthony J.
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`Wechselberger taken in this matter” (Exhibit 2078 ¶ 6), Exhibit 2068 appears to be
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`a transcript from the deposition of Anthony J. Wechselberger taken in other CBM
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`proceedings (i.e., CBM2015-00015, -00016, -00017, -00018).2
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`Petitioner further objects to the use of Exhibit 2068 under F.R.E. 401, 402,
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`and 403, and 37 C.F.R. § 42.61. As previously stated, Exhibit 2068 appears to be a
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`transcript from the deposition of Anthony J. Wechselberger taken in other CBM
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`proceedings (i.e., CBM2015-00015, -00016, -00017, -00018), which challenge
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`different patents—not the ’720 Patent challenged here. Petitioner further objects to
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`the use of Exhibit 2068 under F.R.E. 401, 402, and 403, and 37 C.F.R. § 42.61 to
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`Petitioner hereby expressly repeats and incorporates by reference all of its
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`objections stated on the record in that deposition, and affirmatively maintains all
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`such objections.
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`Case CBM2015-00029
`Patent 7,334,720 B2
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`the extent Patent Owner’s Response relies on Exhibit 2068 to support its argument
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`that the claims here are patent eligible because they do not result in preemption.
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`See, e.g., Paper 23 at 25. As explained above, preemption is not a separate inquiry
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`under the Mayo framework test for patent eligibility. See Ariosa, 788 F.3d at 1379.
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`Accordingly, this Exhibit does not appear to make any fact of consequence in
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`determining this action more or less probable than it would be without it and is
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`thus irrelevant and not admissible (F.R.E. 401, 402); permitting reference
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`to/reliance on this document in any future submissions of Patent Owner would also
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`be impermissible, misleading, irrelevant, and unfairly prejudicial to Petitioner
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`(F.R.E. 402, 403).
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`Respectfully submitted,
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`August 5, 2015
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`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
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`By:/Megan Raymond/
`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
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`Case CBM2015-00029
`Patent 7,334,720 B2
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`Attorneys for Petitioner Apple Inc.
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`Case CBM2015-00029
`Patent 7,334,720 B2
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of PETITIONER APPLE
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`INC.’S OBJECTIONS TO PATENT OWNER SMARTFLASH LLC’S EXHIBITS
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`was served on August 5, 2015, to the following Counsel for Patent Owner via e-
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`mail, pursuant to the parties’ agreement concerning service:
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`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
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`Attorneys for Patent Owner Smartflash LLC
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`s/ Sharon Lee
`Sharon Lee
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`ROPES & GRAY LLP
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