`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC. and GOOGLE INC.,
`Petitioners,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2015-000291
`Patent 7,334,720 B2
`________________________
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`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
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`1 CBM2015-00125 has been consolidated with this proceeding.
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`The Board Should Exclude Exhibit 1302 .............................................. 1
`B.
`The Board Should Exclude Exhibits 1305, 1324, 1329-30, 1333, and
`1335-36 .................................................................................................. 2
`The Board Should Exclude Exhibits 1303, 1306-08, 1311, 1314,
`1316-18, 1325, 1326 and 1328 .............................................................. 2
`The Board Should Exclude Exhibits 1304, 1312, 1313, 1315, and
`1327 ....................................................................................................... 2
`The Board Should Exclude Exhibit 1319 .............................................. 3
`E.
`III. CONCLUSION ................................................................................................ 3
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`D.
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`C.
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`i
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`I.
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`INTRODUCTION
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`Patent Owner understands that “the Board, sitting as a non-jury tribunal with
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`administrative expertise, is well-positioned to determine and assign appropriate
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`weight to the evidence presented in this trial, without resorting to formal exclusion
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`that might later be held reversible error.” Liberty Mutual Insurance Co. v.
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`Progressive Casualty Insurance Co., CBM2012-00002, Paper 66, Final Written
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`Decision (PTAB January 23, 2014)(citing S.E.C. v. Guenthner, 395 F. Supp. 2d
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`835, 842 n.3 (D. Neb. 2005)). At the same time, the Federal Rules of Evidence
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`apply (37 CFR § 42.62(a)) and it is within the Board’s authority to manage the
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`record by ruling on the admissibility of evidence based on the trial as instituted so
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`that in the event of an appeal under 35 U.S.C. § 142, a proper record exists that can
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`be transmitted to the United States Court of Appeals for the Federal Circuit
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`pursuant to 35 U.S.C. § 143.
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`II. ARGUMENT
`A. The Board Should Exclude Exhibit 1302
`Ex. 1302 does not contain a “highly relevant admission” (Paper 32 at 2), but
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`instead says nothing more than the patent itself in Ex. 1301 at 1:6-9 (“This
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`invention … relates to a portable data carrier for storing and paying for data…”)
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`and 1:51-53 (“reading payment information,” “validating the payment
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`information”). Ex. 1302 therefore is inadmissible other evidence of the content of
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`1
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`a writing under FRE 1004, cumulative under FRE 403, and irrelevant under FRE
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`401, 402.
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`B. The Board Should Exclude Exhibits 1305, 1324, 1329-30, 1333, and
`1335-36
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`Petitioner concedes Ex. 1305 and 1336 were not relied on and it will not
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`oppose exclusion. Pap. 32 at 4, n.2. Ex. 1324, 1329-30, 1333, and 1335 are not
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`cited in any substantive way that would make them relevant. As Petitioner
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`acknowledges, the exhibits merely were cited in “Materials Reviewed and Relied
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`Upon” by Mr. Wechselberger. Pap. 32 at 3. These exhibits therefore are not
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`relevant and not admissible. FRE 401, 402.
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`C. The Board Should Exclude Exhibits 1303, 1306-08, 1311, 1314, 1316-18,
`1325, 1326 and 13282
`Exhibits 1303, 1306-08, 1311, 1314, 1316-18, 1325, 1326 and 1328 were
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`not alleged to be invalidating prior art and should be excluded. FRE 401, 402.
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`D. The Board Should Exclude Exhibits 1304, 1312, 1313, 1315, and 1327
`Exhibits 1304, 1312, 1313, 1315, and 1327 were originally alleged to be
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`invalidating prior art under 35 U.S.C. § 103 (Pap. 11 at 2-3), but CBM review in
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`2 Patent Owner’s Motion characterizes Exhibit 1328 as an “Uncited Exhibit.” As
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`Petitioner’s Opposition notes (Pap. 32 at 3), it is cited by Mr. Wechselberger. It is
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`not, however, alleged to be invalidating prior art and thus falls into the “Unasserted
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`Exhibit” category.
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`2
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`this case was instituted on claims 3 and 5 of the ‘720 Patent on 35 U.S.C. § 101
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`grounds only. No other grounds were authorized. Pap. 11 at 19. These exhibits
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`therefore should no longer be in evidence. FRE 401, 402.
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`E. The Board Should Exclude Exhibit 1319
`The Board cannot assess under FRE 702 whether Mr. Wechselberger’s
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`opinion testimony is “based on sufficient facts or data,” is “the product of reliable
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`principles and methods,” or if Mr. Wechselberger “reliably applied the principles
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`and methods to the facts of the case” given that Mr. Wechselberger did not disclose
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`the standard (substantial evidence or preponderance of the evidence) against which
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`he measured the quantum of evidence in arriving at his opinions. As such, there is
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`no basis to admit his expert testimony.3 Moreover, given that this proceeding was
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`instituted on § 101 patent eligibility grounds only, Mr. Wechselberger’s testimony
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`is inadmissible testimony on United States patent law. 37 CFR § 42.65(a).
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`III. CONCLUSION
`Patent Owner respectfully requests that the Board exclude the exhibits.
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`3 Patent Owner acknowledges that FRE 602 is inapplicable to expert witnesses
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`(Pap. 32 at 9). However, Mr. Wechselberger never states that he is an expert in the
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`types of methods and systems defined by the challenged claims.
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`3
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`Dated: December 10, 2015
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`/ 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
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that PATENT OWNER’S REPLY IN
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`SUPPORT OF MOTION TO EXCLUDE 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
`Attorneys for Petitioner Apple Inc.
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`Raymond Nimrod (raynimrod@ quinnemanuel.com)
`QE-SF-PTAB-Service@quinnemanuel.com
`Attorneys for Petitioner Google Inc.
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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 Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
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`Dated: December 10, 2015
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`5
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