CBM2015-00121
`U.S. Patent No. 8,794,516
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00121
`Patent 8,794,516
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, and GREGG I.
`ANDERSON, Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH LLC’S EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
`
`in a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits
`
`the following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”)
`
`Exhibit 2105, and any reference thereto/reliance thereon, without limitation.
`
`Petitioner’s objections below apply the Federal Rules of Evidence (“F.R.E.”) as
`
`required by 37 C.F.R § 42.62.
`
`
`
`These objections address evidentiary deficiencies in the new material served
`
`by Patent Owner on February 22, 2016.
`
`
`
`1
`
`
`U.S. Patent No. 8,794,516
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00121
`Patent 8,794,516
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, and GREGG I.
`ANDERSON, Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH LLC’S EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
`
`in a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits
`
`the following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”)
`
`Exhibit 2105, and any reference thereto/reliance thereon, without limitation.
`
`Petitioner’s objections below apply the Federal Rules of Evidence (“F.R.E.”) as
`
`required by 37 C.F.R § 42.62.
`
`
`
`These objections address evidentiary deficiencies in the new material served
`
`by Patent Owner on February 22, 2016.
`
`
`
`1
`
`
`
`CBM2015-00121
`U.S. Patent No. 8,794,516
`The following objections apply to Exhibit 2105 as it is actually presented by
`
`Patent Owner, in the context of Patent Owner’s February 22, 2016 Patent Owner’s
`
`Response (Paper 17) and not in the context of any other substantive argument on
`
`the merits of the instituted grounds in this proceeding. Petitioner expressly objects
`
`to any other purported use of this Exhibit, including as substantive evidence in this
`
`proceeding, which would be untimely and improper under the applicable rules, and
`
`Petitioner expressly asserts, reserves and does not waive any other objections that
`
`would be applicable in such a context.
`
`I. Objections to Exhibit 2105 And Any Reference to/Reliance Thereon
`
`Evidence objected to: Exhibit 2105 (“Transcript of Deposition of Justin
`
`Douglas Tygar, Ph.D. dated January 19, 2016 taken in CBM2015-00126 and -
`
`00129”).
`
`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”); F.R.E.
`
`402 (“General Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding
`
`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons”);
`
`and 37 C.F.R. § 42.61 (“Admissibility”).
`
`Petitioner objects to the use of Exhibit 2105 under F.R.E. 401, 402, and 403,
`
`and 37 C.F.R. § 42.61 as the cited testimony (see, e.g., Paper 17 at 23-24) is not
`
`relevant to the issues in the present proceeding. Apple’s expert in this proceeding
`
`is Dr. John Kelly. Exhibit 2105, however, appears to be a transcript from the
`
`
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`2
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`
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`CBM2015-00121
`U.S. Patent No. 8,794,516
`deposition of Dr. Justin D. Tygar, who is not an expert for Apple in this
`
`proceeding, and appears instead to have served as an expert for Google Inc.—who
`
`is not a party to this proceeding—in other CBM proceedings (i.e., CBM2015-
`
`00126, -00129), which challenge different patents than the ’516 Patent challenged
`
`here—and is cited in connection with arguments about patent eligibility of system
`
`claims. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2360 (2014)
`
`(“[T]he system claims are no different from the method claims in substance . . . .
`
`This Court has long warned … against interpreting § 101 in ways that make patent
`
`eligibility depend simply on the draftsman’s art.”) (internal quotations omitted);
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`Paper 17 at 23-24. Additionally, admission of that evidence would be doubly
`
`improper because Apple is not a party to CBM2015-00126 and CBM2015-00129
`
`and was not given the opportunity to attend the deposition of Dr. Justin D. Tygar.
`
`Moreover, for these reasons, Apple further reserves the right to raise additional
`
`objections not already stated on the record in that deposition, including objections
`
`to form and relevance in connection with the questions in the cited portions of the
`
`transcript.
`
`Apple hereby expressly repeats and reserves all of the objections stated on
`
`the record in that deposition (Exhibit 2105) as well as the deposition of Dr. John
`
`Kelly (Exhibit 2108), and affirmatively maintains all such objections.
`
`
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`3
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`CBM2015-00121
`U.S. Patent No. 8,794,516
`Accordingly, this Exhibit does not appear to make any fact of consequence
`
`in determining this action more or less probable than it would be without them and
`
`are thus irrelevant and not admissible (F.R.E. 401, 402); permitting reference
`
`to/reliance on this document in any future submissions of Patent Owner would also
`
`be impermissible, misleading, irrelevant, and unfairly prejudicial to Petitioner
`
`(F.R.E. 402, 403).
`
`Respectfully submitted,
`
`
`
`
`
`
`
`February 29, 2016
`
`
`
`
`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
`
`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Reg. No. 47,414
`Megan F. Raymond
`Reg. No. 72,997
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue NW
`Washington, DC 20006
`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
`
`Attorneys for Petitioner Apple Inc.
`
`
`
`4
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`
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`
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`CBM2015-00121
`U.S. Patent No. 8,794,516
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONER APPLE
`
`INC.’S OBJECTIONS TO PATENT OWNER SMARTFLASH LLC’S EXHIBITS
`
`was served on February 29, 2016, to the following Counsel for Patent Owner via e-
`
`mail, pursuant to the parties’ agreement concerning service:
`
`Michael R. Casey
`Wayne M. Helge
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`mcasey@dbjg.com
`whelge@davidsonberquist.com
`SmartFlash-CBM@dbjg.com
`
`Attorneys for Patent Owner
`Smartflash, LLC
`
` /s/ Sharon Lee
`Sharon Lee
`
`ROPES & GRAY LLP
`
`5
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