`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., and GOOGLE, INC.
`Petitioners,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2015-000321,2
`Patent 8,336,772 B2
`________________________
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
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`
`
`1The challenge to claim 14 based on 35 U.S.C. § 101 in CBM2015- 00059 has
`been consolidated with this proceeding.
`2 The challenge to claims 14, 21, and 22 based on 35 U.S.C. § 101 in CBM2015-
`00132 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 ....................................................................................................... 2
`The Board Should Exclude Exhibits 1303, 1304, 1306-08, 1311, 1314,
`1316, 1318 and 1325-28 ........................................................................ 2
`The Board Should Exclude Exhibits 1312, 1313, 1315, 1317, and
`1336 ....................................................................................................... 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.
`
`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 1:23-26 (“This
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`invention … relates to a portable data carrier for storing and paying for data…”)
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`and 1:62-2:3 (“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
`Petitioner concedes Ex. 1305 was not relied on and it will not oppose
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`exclusion. Pap. 32 at 4, n.3. Ex. 1324, 1329-30, 1333, and 1335 are not cited in
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`any substantive way that would make them relevant. As Petitioner acknowledges,
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`the exhibits merely were cited in “Materials Reviewed and Relied Upon” by Mr.
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`Wechselberger. Pap. 32 at 3. These exhibits therefore are not relevant and not
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`admissible. FRE 401, 402.
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`C. The Board Should Exclude Exhibits 1303, 1304, 1306-08, 1311, 1314,
`1316, 1318 and 1325-28
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`Exhibits 1303, 1304, 1306-08, 1311, 1314, 1316, 1318 and 1325-28 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 1312, 1313, 1315, 1317, and 1336
`Exhibits 1312, 1313, 1315, 1317, and 1336 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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`this case was instituted on claims 14, 19, and 22 of the ‘772 Patent on 35 U.S.C.
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`§ 101 grounds only. No other grounds were authorized. Pap. 11 at 18. These
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`exhibits therefore should no longer be in evidence. FRE 401, 402.
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`2
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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
`
`/ 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 CBM2015-00032 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(s) 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.
`
`Walter Renner
`Thomas Rozylowicz
`axf@fr.com
`CBM39843-0008CP3@fr.com
`Attorneys for Petitioners Samsung Electronics Co., Ltd. and Samsung Electronics
`America, Inc.
`
`Raymond Nomrod (raynimrod@ quinnemanuel.com)
`QE-SF-PTAB-Service@quinnemanuel.com
`Attorneys for Petitioner Google Inc.
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`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
`
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`5
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