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 OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`______________________
`
`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 OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`CBM2015-00121
`Patent 8,794,516
`
`
`
`I. THE BOARD SHOULD NOT EXCLUDE EXHIBITS 1002, 1042, AND
`1046 .................................................................................................................... 2
`II. THE BOARD SHOULD NOT EXCLUDE EXHIBITS 1003-04, 1006-08,
`1011-18, 1025-28, 1036-41, AND 1045 ............................................................ 4
`III. THE BOARD SHOULD NOT EXCLUDE EXHIBIT 1019 ........................... 10
`IV. THE BOARD SHOULD NOT EXCLUDE EXHIBIT 1044 ........................... 13
`
`
`
`
`
`CBM2015-00121
`Patent 8,794,516
`
`
`In response to Patent Owner’s (“PO”) Motion to Exclude (“Mot.”, Pap. 23),
`
`Petitioner respectfully submits that the Board, sitting as a non-jury tribunal with
`
`administrative expertise, is well-positioned to determine and assign appropriate
`
`weight to the evidence presented here, without resorting to formal exclusion that
`
`might later be held reversible error. See, e.g., S.E.C. v. Guenthner, 395 F. Supp. 2d
`
`835, 842 n.3 (D. Neb. 2005); Builders Steel Co. v. Comm’r of Internal Revenue,
`
`179 F.2d 377, 379 (8th Cir. 1950) (vacating Tax Court decision for exclusion of
`
`competent, material evidence); Donnelly Garment Co. v. Nat’l Labor Relations
`
`Bd., 123 F.2d 215, 224 (8th Cir. 1941) (NLRB’s refusal to receive testimonial evi-
`
`dence was denial of due process). See also, e.g., Samuel H. Moss, Inc. v. F.T.C.,
`
`148 F.2d 378, 380 (2d Cir. 1945), cert. denied, 326 U.S. 734 (1945) (“Even in
`
`criminal trials to a jury it is better, nine times out of ten, to admit, than to exclude, .
`
`. . and in such proceedings as these the only conceivable interest that can suffer by
`
`admitting any evidence is the time lost, which is seldom as much as that inevitably
`
`lost by idle bickering about irrelevancy or incompetence.”). But even under strict
`
`application of the Rules of Evidence, cf. 77 Fed. Reg. 48,612, 48,616 (Aug. 14,
`
`2012) (“42.5(a) and (b) permit administrative patent judges wide latitude in admin-
`
`istering the proceedings to balance the ideal of precise rules against the need for
`
`flexibility to achieve reasonably fast, inexpensive, and fair proceedings”), Petition-
`
`er’s evidence here is entirely proper while PO’s objections—many of which have
`1
`
`
`
`
`
`CBM2015-00121
`Patent 8,794,516
`already been rejected by the Board in prior proceedings on related patents—are
`
`baseless.
`
`I.
`
`The Board Should Not Exclude Exhibits 1002, 1042, and 1046
`
`Petitioner did not rely on Exs. 1002, 1042, and 1046 for “evidence of the
`
`content” of the ‘516 (cf. Mot. 2), but rather to show that PO’s and inventor Patrick
`
`Racz’s own characterizations of the subject matter of the ‘516 support Petitioner’s
`
`contention (and the Board’s previous determination) that the ‘516 relates to a fi-
`
`nancial activity or transaction and is a covered business method patent. See Pap. 2
`
`at 27-28. PO’s and Mr. Racz’s characterizations of the subject matter of the ‘516
`
`in another proceeding are not found in the patent itself; thus, contrary to PO’s as-
`
`sertions, Exs. 1002, 1042, and 1046 are not cumulative of the ‘516, and FRE 1004
`
`is inapplicable. Indeed, as PO admits, when confronting this same argument by
`
`PO, the Board declined to exclude the same Ex. 1002 in another proceeding on a
`
`related patent. While determining whether a patent is a CBM patent requires an ex-
`
`amination of the claims, the Board found “[Patent Owner’s] characterization of the
`
`. . . patent in prior proceedings is relevant to the credibility of its characterization
`
`of the . . . patent in this proceeding.” Mot. 3 (citing CBM2015-00016, Pap 56 at
`
`24); see also CBM2014-00102, Pap. 52 at 36; CBM2014-00106, Pap. 52 at 25;
`
`CBM2014-00108, Pap. 50 at 19; CBM2014-00112, Pap. 48 at 24; CBM2015-
`
`00017, Pap. 46 at 22; CBM2015-00028, Pap. 44 at 25; CBM2015-00029, Pap. 43
`
`
`
`2
`
`
`
`CBM2015-00121
`Patent 8,794,516
`at 27; CBM2015-00031, Pap 45 at 29; CBM2015-00032, Pap. 46 at 28-29;
`
`CBM2015-00033, Pap. 40 at 29. The same reasoning applies here.
`
`PO again argues that “[t]here is nothing about Patent Owner’s characteriza-
`
`tion of the ‘516 in this proceeding … that is contradicted by Exhibits 1002, 1042,
`
`and 1046 such that the credibility of Patent Owner’s characterization is at issue”
`
`(Mot. 3-4). But, as the Board found in other proceedings on related patents, “Patent
`
`Owner’s argument misses the point because the credibility of Patent Owner’s char-
`
`acterization is for the Board to weigh after deciding the threshold issue of admissi-
`
`bility.” See, e.g., CBM2015-00016, Pap. 56 at 241; CBM2015-00017, Pap. 46 at
`
`22; see also CBM2015-00028, Pap. 44 at 25-26; CBM2015-00029, Pap. 43 at 27;
`
`CBM2015-00031, Pap. 45 at 29; CBM2015-00032, Pap. 46 at 29; CBM2015-
`
`00033, Pap. 40 at 29. And, contrary to PO’s claim that its characterization of the
`
`‘516 is not at issue here (Mot. 3-4), PO disputes the financial nature of the ‘516,
`
`see Pap. 6 at 43-48; Pap. 17 at 70-74. Therefore, PO’s and Mr. Racz’s admissions,
`
`which contradict PO’s arguments here, should not be excluded. See CBM2015-
`
`00016, Pap. 56 at 24 (“Patent Owner’s characterization of the . . . patent in prior
`
`proceedings is relevant to Patent Owner’s contention in this proceeding that the . . .
`
`patent does not satisfy the ‘financial in nature’ requirement” for a CBM review.);
`
`CBM2015-00017, Pap. 46 at 22-23; CBM2015-00028, Pap. 44 at 26; CBM2015-
`
`1 All emphasis herein is added unless otherwise indicated.
`
`
`
`3
`
`
`
`CBM2015-00121
`Patent 8,794,516
`00029, Pap. 43 at 27; CBM2015-00031, Pap. 45 at 29; CBM2015-00032, Pap. 46
`
`at 29; CBM2015-00033, Pap. 40 at 29.
`
`Further, PO is wrong that Exs. 1002, 1042, and 1046 do not “appear to make
`
`a fact of consequence in determining this action” merely because the Kelly Decla-
`
`ration (Ex. 1019) and the Board’s Institution Decision (Pap. 8) do not cite them.
`
`Mot. 4. As PO admits, Exs. 1002, 1042, and 1046 are cited in the Petition (Pap. 2)
`
`“as support for the ‘516 Patent being ‘financial in nature’ and thus CBM review
`
`eligible.” Mot. 2 (citing Petition at 25-30). And, Ex. 1046 is also cited in Petition-
`
`er’s Reply (Pap. 21) to show that various elements of the challenged claims are not
`
`inventive. See Pap. 21 at 11, 13. Because Exs. 1002, 1042, and 1046 reflect facts
`
`of consequence in determining this action under FRE 401, they are relevant and
`
`should not be excluded.
`
`II.
`
`The Board Should Not Exclude Exhibits 1003-04, 1006-08, 1011-18,
`1025-28, 1036-41, and 1045
`
`Contrary to PO’s assertions, Exs. 1003-04, 1006-08, 1011-18, 1025-28,
`
`1036-41, and 1045 (“Prior Art Exhibits”) are relevant to the Board’s § 101 analy-
`
`sis. As PO admits, when confronting the same argument from PO, the Board de-
`
`clined to exclude similar exhibits in another proceeding on a related patent because
`
`“these exhibits are relevant to the state of the art—whether the technical limitations
`
`of the challenged claim were well-known, routine, and conventional—and thus, to
`
`our § 101 analysis.” Mot. 6 (citing CBM2015-00016, Pap. 56 at 26); see also, e.g.,
`
`
`
`4
`
`
`
`CBM2015-00121
`Patent 8,794,516
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2357, 2359 (2014); YYZ,
`
`LLC v. Hewlett-Packard Co., No. 13-136-SLR, 2015 WL 5886176, at *8 (D. Del.
`
`Oct. 8, 2015) (“Although the § 101 inquiry is focused on the claim language, ex-
`
`trinsic evidence [, such as prior art,] may be helpful in terms of understanding the
`
`state of the art . . . , and whether the problem to which the patent was directed is
`
`solved using computer technology in unconventional ways.”); CBM2015-00017,
`
`Pap. 46 at 24; CBM2015-00028, Pap. 44 at 27; CBM2015-00029, Pap. 43 at 29;
`
`CBM2015-00031, Pap. 45 at 31; CBM2015-00032, Pap. 46 at 30; CBM2015-
`
`00033, Pap. 40 at 31; CBM2014-00190, Pap. 47 at 29; CBM2014-00192, Pap. 45
`
`at 26; CBM2014-00193, Pap. 45 at 26; CBM2014-00194, Pap. 51 at 28; cf. Versa-
`
`ta Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 1336 (Fed. Cir. 2015)
`
`(affirming Board’s reliance on petitioner’s expert in determining that claimed steps
`
`were well-known, routine, and conventional and Board’s finding that “claims at
`
`issue do not recite any improvement in computer technology”). Nothing in this
`
`proceeding should change that outcome. Indeed, both the Petition and the Kelly
`
`Declaration rely on Prior Art Exhibits to show (1) the state of the art, (2) that the
`
`basic concept of controlling access based on payment and/or rules—to which the
`
`challenged claims are directed—was well-known in the prior art, and/or (3) that the
`
`elements disclosed by the challenged claims were well-known, routine, and con-
`
`ventional. See, e.g., Pap. 2 at 5-18 (Overview of Field of the Claimed Invention),
`
`
`
`5
`
`
`
`CBM2015-00121
`Patent 8,794,516
`46-47, 50, 54, 56-71 (citing Prior Art Exhibits); Ex. 1019 ¶¶ 23-73 (State of the
`
`Art), 75-78, 82-83, 86-90 (citing Prior Art Exhibits). And, there is no requirement
`
`that the Board’s Institution Decision cite every piece of potentially relevant evi-
`
`dence in its Institution Decisions for the evidence to “make a fact of consequence
`
`in determining this action,” as PO contends. Mot. 6. Further, in its final written
`
`decisions in prior proceedings on related patents, the Board cited prior art refer-
`
`ences in determining patent eligibility. CBM2015-00016, Pap. 56 at 13 (relying on
`
`prior art to show concepts claimed in related patent were known); CBM2015-
`
`00017, Pap. 46 at 17-18 (same); CBM2015-00028, Pap. 44 at 19 (same);
`
`CBM2015-00029, Pap. 43 at 21 (same); CBM2015-00031, Pap. 45 at 22 (same);
`
`CBM2015-00032, Pap. 46 at 22-23 (same); CBM2015-00033, Pap. 40 at 22-23
`
`(same); CBM2014-00190, Pap. 47 at 19-20 (same); CBM2014-00192, Pap. 45 at
`
`13-14 (same); CBM2014-00193, Pap. 45 at 17 (same); CBM2014-00194, Pap. 51
`
`at 19 (same).
`
`PO also puts the cart before the horse in arguing that the Prior Art Exhibits
`
`are not relevant because “[w]hether the technical limitations of the challenged
`
`claim were well-known, routine, and conventional is only relevant after finding
`
`that a claim is directed to an abstract idea and ... [h]ere, the claims at issue are not
`
`directed to an abstract idea.” (Mot. 6-7). It would be nonsensical to exclude the
`
`Prior Art Exhibits before the Board determines whether it needs to perform the
`
`
`
`6
`
`
`
`CBM2015-00121
`Patent 8,794,516
`second step of the Mayo analysis, as PO urges. This is particularly so in light of the
`
`fact that the Board has already determined that a multitude of related claims are di-
`
`rected to an abstract idea. See CBM2015-00016, Pap. 56 at 8-9; CBM2015-00017,
`
`Pap. 46 at 7-9; CBM2015-00028, Pap. 44 at 8-10; CBM2015-00029, Pap. 43 at 9-
`
`11; CBM2015-00031, Pap. 45 at 11-13; CBM2015-00032, Pap. 46 at 11-13;
`
`CBM2015-00033, Pap. 40 at 11-13; CBM2014-00190, Pap. 47 at 8-10; CBM2014-
`
`00192, Pap. 45 at 7-9; CBM2014-00193, Pap. 45 at 8-9; CBM2014-00194, Pap. 51
`
`at 8-9. The Prior Art Exhibits are unquestionably relevant to the § 101 analysis;
`
`there is no basis to exclude them.
`
`Moreover, in arguing that the Prior Art Exhibits should be excluded, PO im-
`
`properly raises for the first time a new substantive argument regarding the Federal
`
`Circuit’s recent decision in Enfish, LLC v. Microsoft Corp., No. 2015-1244, 2016
`
`WL 2756255 (Fed. Cir. May 12, 2016). See Mot. 7; Motorola Mobility LLC v. In-
`
`tellectual Ventures I LLC, IPR2014-00501, Pap. 48 at 31 (“A motion to exclude is
`
`neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply or
`
`supporting evidence is of appropriate scope.”). Even if this analysis were properly
`
`presented in this context, it is wrong, and ignores more analogous cases, such as In
`
`re TLI Communications LLC Patent Litigation, No. 2015-1372, 2016 WL 2865693
`
`(Fed. Cir. May 17, 2016) and Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed.
`
`Cir. 2014). Indeed, contrary to PO’s argument (Mot. 7), the challenged claims
`
`
`
`7
`
`
`
`CBM2015-00121
`Patent 8,794,516
`here are not “directed to an improvement to computer functionality” like the “in-
`
`novative,” “self-referential table for a computer database” claimed in Enfish. 2016
`
`WL 2756255, at *1, *5. Rather, the challenged claims are like the claims held in-
`
`eligible in TLI—another recent decision noticeably absent from PO’s Motion—and
`
`Ultramercial. In TLI, the Federal Circuit distinguished the Enfish claims based on
`
`the fact that the TLI claims, like the challenged claims here, “are directed to the use
`
`of conventional or generic technology in a nascent but well-known environment.”
`
`TLI, 2016 WL 2865693, at *3. Like the TLI claims, and like related claims already
`
`found patent ineligible, the challenged claims “perform[] generic computer func-
`
`tions such as storing, receiving, and extracting data” using “physical components”
`
`(e.g., wireless interface, non-volatile memory, processor, display) that “behave ex-
`
`actly as expected according to their ordinary use” and “merely provide a generic
`
`environment in which to carry out the abstract idea” of controlling access to con-
`
`tent based on payment and/or rules. Id. at *3, *4, *7; see, e.g., Pap. 2 at 49-50, 53-
`
`73; Pap. 21 at 6-13; see also CBM2015-00016, Pap. 56 at 9-17; CBM2015-00017,
`
`Pap. 46 at 9-18; CBM2015-00028, Pap. 44 at 10-20; CBM2015-00029, Pap. 43 at
`
`11-21; CBM2015-00031, Pap. 45 at 13-23; CBM2015-00032, Pap. 46 at 13-23;
`
`CBM2015-00033, Pap. 40 at 13-23; CBM2014-00190, Pap. 47 at 10-20;
`
`CBM2014-00192, Pap. 45 at 9-18; CBM2014-00193, Pap. 45 at 9-17; CBM2014-
`
`00194, Pap. 51 at 10-20; cf. Enfish, 2016 WL 2756255, at *6 (“[T]he self-
`
`
`
`8
`
`
`
`CBM2015-00121
`Patent 8,794,516
`referential table functions differently than conventional database structures.”); cf.
`
`also Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, No. 15-1763,
`
`2016 WL 3514158, at *1, *6-8 (Fed. Cir. June 27, 2016) (on appeal of granted mo-
`
`tion to dismiss with no underlying factual record, holding claims failed Mayo step
`
`2 because “[o]n this limited record” and “construed in favor of the nonmovant” the
`
`patent-in-suit is directed to technical solution to solve a computer-rooted problem
`
`and “‘improve[s] the performance of the computer system itself’” by “claiming a
`
`technology-based solution … that overcomes existing problems with other Internet
`
`filtering systems”). And, like other related patent claims that the Board already de-
`
`termined are ineligible, the challenged claims here “are like the claims at issue in
`
`Ultramercial,” which “condition and control access based on viewing an adver-
`
`tisement.” See, e.g., CBM2015-00016, Pap. 56 at 17. “Similar to the claims in Ul-
`
`tramercial, the majority of limitations in the challenged claims comprise this ab-
`
`stract concept of conditioning and controlling access to data.” Id.; see also
`
`CBM2015-00017, Pap. 46 at 16; CBM2015-00028, Pap. 44 at 17; CBM2015-
`
`00029, Pap. 43 at 19; CBM2015-00031, Pap. 45 at 20-21; CBM2015-00032, Pap.
`
`46 at 21; CBM2015-00033, Pap. 40 at 20-21; CBM2014-00190, Pap. 47 at 17-18;
`
`CBM2014-00192, Pap. 45 at 17-18; CBM2014-00193, Pap. 45 at 15-16;
`
`CBM2014-00194, Pap. 51 at 17. Read together, Enfish, TLI, and Ultramercial fur-
`
`ther confirm that the challenged claims are ineligible.
`
`
`
`9
`
`
`
`CBM2015-00121
`Patent 8,794,516
`III. The Board Should Not Exclude Exhibit 1019
`
`PO does not dispute Dr. Kelly’s qualifications or competence, and instead
`
`seeks to exclude the Kelly Declaration based on three meritless arguments: (1) his
`
`opinions are not legal opinions and §§ 101 and 112 are “purely legal issues” (Mot.
`
`8-9), (2) he did not “test the method” he used “against known [§ 101] decisions” to
`
`determine a “false [positive/negative] rate” (Mot. 10-11), and (3) his opinions “re-
`
`flect an analysis that looks for an inventive concept over the prior art, rather than
`
`over the abstract idea itself” (Mot. 12 (emph. orig.)).
`
`First, the Board has already rejected PO’s argument that expert opinions are
`
`not relevant to § 101 issues in other proceedings on related patents, finding that an
`
`expert’s opinions on § 101 “relate to the underlying factual issues related to patent
`
`eligibility.” CBM2015-00016, Pap. 56 at 28; CBM2015-00017, Pap. 46 at 26;
`
`CBM2015-00028, Pap. 44 at 30-31; CBM2015-00029, Pap. 43 at 31-32;
`
`CBM2015-00031, Pap. 45 at 33-34; CBM2015-00032, Pap. 46 at 32-33;
`
`CBM2015-00033, Pap. 40 at 33-34; CBM2014-00190, Pap. 47 at 26-27;
`
`CBM2014-00192, Pap. 45 at 24; CBM2014-00193, Pap. 45 at 24; CBM2014-
`
`00194, Pap. 51 at 26-27; see also Accenture Global Servs., GmbH v. Guidewire
`
`Software, Inc., 728 F.3d 1336, 1340-41 (Fed. Cir. 2013) (“Patent eligibility under §
`
`101 presents an issue of law . . . . [that] may contain underlying factual issues.”);
`
`Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1055-56
`
`
`
`10
`
`
`
`CBM2015-00121
`Patent 8,794,516
`(Fed. Cir. 1992) (“[D]etermination of [statutory subject matter] may require find-
`
`ings of underlying facts specific to the particular subject matter and its mode of
`
`claiming.”); YYZ, 2015 WL 5886176, at *8; CBM2015-00017, Pap. 46 at 14-15
`
`(citing expert testimony in finding related claims are not directed to an Internet-
`
`specific problem); CBM2015-00028, Pap. 44 at 16 (same); CBM2015-00029, Pap.
`
`43 at 17-18 (same); CBM2015-00031, Pap. 45 at 19 (same); CBM2015-00032,
`
`Pap. 46 at 19-20 (same); CBM2015-00033, Pap. 40 at 19-20 (same); CBM2014-
`
`00190, Pap. 47 at 11-12 (citing expert testimony in finding related claims have no
`
`inventive concept); CBM2014-00192, Pap. 45 at 9 (same); CBM2014-00193, Pap.
`
`45 at 9 (same); CBM2014-00194, Pap. 51 at 10-11 (same); cf. Versata, 793 F.3d at
`
`1334 (affirming Board’s reliance on petitioner’s expert over patent owner’s expert
`
`in determining claimed steps were well-known, routine, and conventional). And
`
`there is no dispute that Dr. Kelly is competent to opine on the factual issues. Cf.
`
`Mot. 8-12. Because Dr. Kelly’s opinions relate to factual issues underlying § 101,
`
`37 C.F.R. § 42.65 is inapplicable, and his opinions should not be excluded.2
`
`Second, there is no support for PO’s argument—indeed, PO cites none—that
`
`
`2 PO also seeks to exclude ¶ 112 of the Kelly Declaration, which reflects Dr.
`
`Kelly’s factual opinions underlying the § 112 inquiry. Because the Board did not
`
`institute review on that ground, and although exclusion of ¶ 112 is unnecessary,
`
`Petitioner would not oppose it.
`
`
`
`11
`
`
`
`CBM2015-00121
`Patent 8,794,516
`experts, such as Dr. Kelly—who is an engineer, not an attorney—are required to
`
`review legal opinions on § 101 or compare the challenged claims to claims ad-
`
`dressed in such legal opinions to determine a false positive or negative rate. Dr.
`
`Kelly analyzed the facts and information relevant to the two-step analysis required
`
`by Mayo. See, e.g., Pap. 21 at 12, 20.
`
`Third, PO misapprehends the law in arguing that the Kelly Declaration
`
`should be excluded because Dr. Kelly looks for an inventive concept over the prior
`
`art, rather than over the abstract idea itself. The relevant inquiry is not, as PO sug-
`
`gests, whether a claim’s “additional features” are inventive over the abstract idea,
`
`but rather whether they provide an inventive concept despite that the claim is di-
`
`rected to an abstract idea. The required determination is whether the elements left
`
`after removing the abstract idea (i.e., “additional features”) amount to an “in-
`
`ventive concept,” such that they “‘transform the nature of the claim’ into a patent-
`
`eligible application.” Alice, 134 S. Ct. at 2355, 2357; see also Mayo Collaborative
`
`Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1304 (2012) (distinguishing §
`
`101 inquiry from §§ 102 and 103). As stated above, Dr. Kelly performed the cor-
`
`rect analysis required by Mayo. See, e.g., Pap. 21 at 12, 20.
`
`Finally, PO misses the mark in seeking to exclude the portions of the Kelly
`
`Declaration that “rel[y] upon an exhibit that is objected to herein for the reasons set
`
`forth in those objections.” Mot. 12. The only exhibits that are both cited in the
`
`
`
`12
`
`
`
`CBM2015-00121
`Patent 8,794,516
`Kelly Declaration and objected to by PO are the Prior Art Exhibits discussed in §
`
`II, supra. However, as detailed in § II, the Kelly Declaration’s description of the
`
`art at the relevant time is clearly relevant to the § 101 inquiry. For the same rea-
`
`sons the Prior Art Exhibits are relevant, expert analyses of those exhibits are rele-
`
`vant under FRE 401 and should not be excluded. See, e.g., CBM2015-00016, Pap.
`
`56 at 27-28 (“Because this review is under § 101, analyses of the state of the prior
`
`art … is relevant to the second prong of the Alice and Mayo inquiry.”). Dr. Kelly’s
`
`unrebutted conclusions regarding what would be considered well-known, routine,
`
`and conventional (see, e.g., Ex. 1019 §§ VI and VII) are entitled to weight.
`
`IV. The Board Should Not Exclude Exhibit 1044
`
`Contrary to PO’s argument (Mot. 13), the sworn admissions of its expert in
`
`prior proceedings regarding what was well-known at the time of the challenged pa-
`
`tent are relevant to the § 101 inquiry. PO does not dispute that Dr. Katz would
`
`have qualified as a person of ordinary skill in the art (“POSITA”) in the relevant
`
`time period, and, indeed, proffered Dr. Katz as an expert with the knowledge of a
`
`POSITA in prior proceedings on related patents. Therefore, Dr. Katz’s testimony,
`
`which provides further evidence that a POSITA would have understood various el-
`
`ements of the challenged claims to be well-known, routine, and conventional in the
`
`relevant time period, is highly relevant and should not be excluded under FRE 401.
`
`Further, PO’s hearsay argument is inapplicable. The cited portions of Ex.
`
`
`
`13
`
`
`
`CBM2015-00121
`Patent 8,794,516
`1044 are not hearsay at least because they are party admissions under FRE
`
`801(d)(2)(C)3 and 801(d)(2)(D).4 There is no dispute that Dr. Katz was retained by
`
`PO in a prior proceeding involving the same parties to provide expert opinion on
`
`the patentability of related patents, including related questions regarding prior art
`
`and one of ordinary skill, or that he was authorized by PO to provide his sworn
`
`declaration and deposition testimony on PO’s behalf.5 PO unquestionably had the
`
`3 Under FRE 801(d)(2)(C), a statement is not hearsay where it “is offered against
`
`an opposing party and . . . was made by a person whom the party authorized to
`
`make a statement on the subject.” See, e.g., Samaritan Health Ctr. v. Simplicity
`
`Health Care Plan, 459 F. Supp. 2d 786, 799 (E.D. Wis. 2006) (“[B]ecause First
`
`Health proffers its opponent’s expert report against that opponent, the report can be
`
`considered an admission by a party-opponent . . . .”).
`
`4 Under FRE 801(d)(2)(D), a statement is not hearsay where it “was made by the
`
`party’s agent . . . within the scope of that relationship and while it existed.”
`
`5 In addition, the Board may consider, as an analogous situation, that the Federal
`
`Rules of Civil Procedure would allow for Dr. Katz’s prior testimony to be admissi-
`
`ble in a court proceeding under Rule 32, which provides for the admission of a
`
`deposition taken in a prior matter where the parties and subject matter of the in-
`
`stant matter are the same as involved in the prior matter, as is true here. See FRCP
`
`32(a)(1), 32(a)(4)(B), 32(a)(8); see also, e.g., Hub v. Sun Valley Co., 682 F.2d 776,
`
`
`
`14
`
`
`
`CBM2015-00121
`Patent 8,794,516
`opportunity and motive at the deposition to cross-examine Dr. Katz, its own expert
`
`providing sworn testimony on its behalf, on those topics. Further, PO has been on
`
`notice since the filing of the Petition that Petitioner intended to rely on Dr. Katz’s
`
`admissions, but chose not to seek deposition or otherwise take discovery of Dr.
`
`Katz in this proceeding. And, even if Dr. Katz’s admissions were hearsay (they are
`
`not), they are subject to FRE 807’s residual hearsay exception.6 Although other
`
`evidence demonstrates that the challenged claims are not inventive, Dr. Katz’s ad-
`
`missions are highly probative, given that PO—who hired and proffered Dr. Katz as
`
`an expert on these subjects—cannot credibly deny them. And, as noted above, Dr.
`
`Katz’s sworn testimony is certainly sufficiently trustworthy and its admission
`
`would serve the interests of justice. For the foregoing reasons, PO’s most recent
`
`attempts to exclude this relevant, admissible evidence should again be rejected.
`
`
`
`July 5, 2016
`
`
`
`
`778 (9th Cir. 1982) (Rule 32(a)(8) requirements should be “construed liberally.”).
`
`Respectfully submitted,
`By /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`
`6 FRE 807 provides that hearsay may be admitted even where not specifically cov-
`
`ered by a hearsay exception where it is sufficiently trustworthy, offered as evi-
`
`dence of material fact, more probative on that point than other evidence that can be
`
`obtained through reasonable efforts, and where admitting it will best serve the pur-
`
`poses of the FRE and the interests of justice.
`
`
`
`15
`
`
`
`CBM2015-00121
`Patent 8,794,516
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PETITIONER
`
`APPLE INC.’S OPPOSITION TO PATENT OWNER’S MOTION TO EX-
`
`CLUDE was served on July 5, 2016, to the following counsel 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
`
`16
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
