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 B2
`________________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`________________________
`Case CBM2015-00121
`Patent 8,794,516 B2
`________________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`The Board Should Exclude Exhibits 1002, 1042 and 1046 .................. 1
`B.
`The Board Should Exclude Exhibits 1003-04, 1006-08, 1011-18,
`1025-28, 1036-41, and 1045 ................................................................. 2
`The Board Should Exclude Exhibit 1019 .............................................. 3
`C.
`The Board Should Exclude Exhibit 1044 .............................................. 4
`D.
`III. CONCLUSION ................................................................................................ 5
`
`
`i
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner understands 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 in this trial, without resorting to formal exclusion
`
`that might later be held reversible error.” Liberty Mutual Insurance Co. v.
`
`Progressive Casualty Insurance Co., CBM2012-00002, Paper 66, Final Written
`
`Decision (PTAB January 23, 2014)(citing S.E.C. v. Guenthner, 395 F. Supp. 2d
`
`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
`
`pursuant to 35 U.S.C. § 143.
`
`II. ARGUMENT
`A. The Board Should Exclude Exhibits 1002, 1042 and 1046
`Exhibits 1002, 1042, and 1046 do not contain contradictory admissions
`
`(Paper 27 at 3), but instead say nothing more than the ‘516 Patent itself in Ex. 1001
`
`at 1:23-26 (“This invention … relates to a portable data carrier for storing and
`
`paying for data…”) and 1:62-2:3 (“reading payment information,” “validating the
`
`payment information”). Exhibits 1002, 1042, and 1046 therefore are inadmissible
`
`other evidence of the content of a writing under FRE 1004 and cumulative under
`1
`
`
`
`
`
`
`
`FRE 403. Moreover, as noted, the Board’s reasoning that a PO’s characterization
`
`of the patent, or the PO’s credibility in doing so, is relevant to the analysis of
`
`whether a patent qualifies CBM review under the AIA is contrary to Blue Calypso,
`
`LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. March 1, 2016)(“[AIA]
`
`directs us to examine the claims when deciding whether a patent is a CBM patent”)
`
`and therefore irrelevant under FRE 401, 402.
`
`B.
`
`The Board Should Exclude Exhibits 1003-04, 1006-08, 1011-18,
`1025-28, 1036-41, and 1045
`
`Exhibits 1003-04, 1006-08, 1011-18, 1025-28, 1036-41, and 1045 were not
`
`alleged to be invalidating prior art and should be excluded. Petitioner asserts that
`
`the exhibits are relevant to show the state of the art and that the basic concept of
`
`controlling access based on payment and/or rules and the claim elements were
`
`well-known, routine, and conventional. Paper 27 at 5. But when determining
`
`whether there is an “inventive concept” the relevant analysis is whether there is an
`
`“inventive concept” over the abstract idea (if one is found) and not whether there
`
`is an “inventive concept” over the prior art. Alice Corp. Pty. Ltd. v. CLS Bank
`
`Intern., 134 S.Ct. 2347, 2355 (2014) (Mayo step-two analysis is “a search for an
`
`‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient
`
`to ensure that the patent in practice amounts to significantly more than a patent
`
`upon the [abstract idea] itself’”)(emphasis added). Focusing the § 101 analysis on
`
`the prior art to show purported well-known, routine, and conventional claim
`
`
`
`2
`
`
`
`
`
`elements is precisely what the Federal Circuit criticized the district court for in
`
`Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, Case no. 2015-1763
`
`(Fed. Cir. June 27, 2016), Slip op. at 15 (“The district court’s analysis in this
`
`case . . . looks similar to an obviousness analysis under 35 U.S.C. § 103 . . . The
`
`inventive concept inquiry requires more than recognizing that each claim element,
`
`by itself, was known in the art. As is the case here, an inventive concept can be
`
`found in the non-conventional and non-generic arrangement of known,
`
`conventional pieces.”)(emphasis added). The exhibits are not relevant to a § 101
`
`analysis and should be excluded under FRE 401 and 402.
`
`C. The Board Should Exclude Exhibit 1019
`The Board cannot assess under FRE 702 whether Dr. Kelly’s opinion
`
`testimony is “based on sufficient facts or data,” is “the product of reliable
`
`principles and methods,” or if Dr. Kelly “reliably applied the principles and
`
`methods to the facts of the case,” or assess under Daubert v. Merrell Dow
`
`Pharmaceuticals, Inc., 113 S.Ct. 2786, 509 U.S. 579 (1993) whether the reasoning
`
`or methodology underlying Dr. Kelly’s testimony is scientifically valid and
`
`whether that reasoning or methodology properly can be applied to the facts in issue
`
`given that Dr. Kelly i) disavowed being qualified to give a legal opinion; ii) could
`
`not explain why his approach in formulating his opinions used a scientifically valid
`
`reasoning or methodology; iii) did nothing to test his result; iv) could not define
`
`
`
`3
`
`
`
`
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`what an abstract idea is; and v) undertook an analysis that looked for an inventive
`
`concept over the prior art, rather than over the abstract idea itself. Exhibit 1019
`
`therefore should be excluded.
`
`D. The Board Should Exclude Exhibit 1044
`Exhibit 1044 (the April 8-9, 2015 Deposition Transcript of Jonathan Katz,
`
`Patent Owner’s expert in CBM2014-00102/106/108/112, all of which were
`
`instituted on §§ 102 and/or 103 grounds) is irrelevant. Petitioner’s argument
`
`conflates what was known in the prior art by one of ordinary skill with what was
`
`well-known, routine, and conventional. Those are not equivalent. Something can
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`be in the prior art for §§ 102 and/or 103 purposes but not be well-known, routine,
`
`and conventional. Nor do well-known, routine, and conventional components
`
`preclude an invention from having an “inventive concept.” Bascom, Case no.
`
`2015-1763 (Fed. Cir. June 27, 2016), Slip op. at 15 (“inventive concept inquiry
`
`requires more than recognizing that each claim element, by itself, was known in
`
`the art. [A]n inventive concept can be found in the non-conventional and non-
`
`generic arrangement of known, conventional pieces.”). Therefore Dr. Katz’s
`
`“admissions” as to what was in the prior art are irrelevant and should be excluded
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`under FRE 401 and 402.
`
`
`
`
`
`
`
`4
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`
`
`
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`
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`III. CONCLUSION
`Patent Owner respectfully requests that the Board exclude the exhibits.
`
`Dated: July 11, 2016
`
`
`
`
`
`/ 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
`
`
`
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S REPLY IN
`
`SUPPORT OF MOTION TO EXCLUDE EVIDENCE in CBM2015-00121 was
`
`served today, by agreement of the parties, by emailing a copy to counsel for the
`
`Petitioner(s) as follows:
`
`Steven.Baughman@ropesgray.com
`James.Batchelder@ropesgray.com
`Megan.Raymond@ropesgray.com
`ApplePTABService-SmartFlash@ropesgray.com
`
`
`
`Dated: July 11, 2016
`
`/ 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
`
`
`
`
`6
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