UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC.,
`
`Petitioner,
`
`v.
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`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00121
`Patent 8,794,516 B2
`____________
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`
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`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
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`
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`____________
`
`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 OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
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`
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`Pursuant to 37 C.F.R. § 42.64, Patent Owner hereby objects to the
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`admissibility of certain evidence submitted with Petitioner’s Petition, Paper 2,
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`(“Petition”). Patent Owner’s objections are based on the Federal Rules of
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`Evidence and the Board Rules and are set forth with particularity below.
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`Exhibits 1002, 1042, and 1046
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`Patent Owner objects to the admissibility of Exhibits 1002, 1042, and 1046
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`on grounds that they are cumulative evidence and irrelevant. The Petition cites to
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`Exhibits 1002 and 1042 for the sole purpose of showing Patent Owner’s
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`characterization of the ‘516 Patent as “generally cover[ing] a portable data carrier
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`for storing data and managing access to the data via payment information and/or
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`use status rules” and “also generally cover[ing] a computer network (i.e., a server
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`network) that serves data and manages access to data by, for example, validating
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`payment information.” Petition at 28 (citing Ex. 1002 ¶ 17 and Ex. 1042 ¶ 15).
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`The Petition cites to Exhibit 1046 for the sole purpose of showing the inventor’s
`
`trial testimony describing the inventions. Id. (citing Ex. 1046 at 4). Petitioner’s
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`expert, John P. J. Kelly, Exhibit 1019, (“Kelly Declaration”) does not cite to
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`Exhibits 1002, 1042, or 1046. Petitioner does not need to cite to Exhibits 1002,
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`1042, and 1046 to characterize what the ‘516 Patent relates to when Exhibit 1001,
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`the actual ‘516 Patent, is in evidence. Under FRE 1004, other evidence of the
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`content of a writing (here the ‘516 Patent) is admissible if the original is lost,
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`
`
`2
`
`
`
`cannot be obtained, has not been produced, or the writing is not closely related to a
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`controlling issue. None of those apply given that the ‘516 Patent is in evidence
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`and is the subject of the trial. Exhibits 1002, 1042, and 1046 are also objected to
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`under FRE 403 as cumulative of Exhibit 1001.
`
`Patent Owner’s characterization of the ‘516 Patent is not relevant to any of
`
`the issues here. Being irrelevant evidence, Exhibits 1002, 1042, and 1046 are not
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`admissible per FRE 402.
`
`Exhibits 1005, 1024, 1029, 1030, 1033, 1035
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`Neither the Petition, nor the Kelly Declaration (Ex. 1019), nor the PTAB’s
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`November 10, 2015 Decision – Institution of Covered Business Method Patent
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`Review 37 C.F.R. § 42.208 (“PTAB Decision”) cite Exhibits 1005, 1024, 1029,
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`1030, 1033, or 1035. As such, these exhibits do not appear to make a fact of
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`consequence in determining this action more or less probable than it would be
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`without them. As such, Exhibits 1005, 1024, 1029, 1030, 1033, and 1035 do not
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`pass the test for relevant evidence under FRE 401 and are thus not admissible per
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`FRE 402.
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`Exhibits 1003, 1004, 1006, 1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016,
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`1017, 1018, 1025, 1026, 1027, 1028, 1036, 1037, 1038, 1039, 1040, 1041, and
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`1045
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`3
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`
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`Neither the Petition nor the Kelly Declaration cite Exhibits 1003, 1004,
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`1006, 1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016, 1017, 1018, 1025, 1026,
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`1027, 1028, 1036, 1037, 1038, 1039, 1040, 1041, or 1045 as potentially
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`invalidating prior art, either alone or in combination with any other reference. The
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`PTAB Decision did not base any of its analysis on Exhibits 1003, 1004, 1006,
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`1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016, 1017, 1018, 1025, 1026, 1027,
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`1028, 1036, 1037, 1038, 1039, 1040, 1041, or 1045. Thus, these exhibits do not
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`appear to make a fact of consequence in determining this action more or less
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`probable than it would be without these exhibits. As such, Exhibits 1003, 1004,
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`1006, 1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016, 1017, 1018, 1025, 1026,
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`1027, 1028, 1036, 1037, 1038, 1039, 1040, 1041, and 1045 do not pass the test for
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`relevant evidence under FRE 401 and are thus not admissible per FRE 402.
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`Exhibit 1019
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`Patent Owner objects to Exhibit 1019, the Kelly Declaration, in its entirety
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`as the Kelly Declaration does not demonstrate that Mr. Kelly is an expert whose
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`testimony is relevant to the issue of patent eligibility under 35 U.S.C. § 101, a
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`purely legal issue and the only issue on which this CBM was instituted. Mr. Kelly
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`has not shown that his opinions are proper expert opinions upon which the PTAB
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`can rely as opposed to inadmissible lay opinions. FRE 701 and 702.
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`
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`4
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`
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`The Kelly Declaration is further objected to to the extent that any paragraph
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`relies upon an exhibit that is objected to herein for the reasons set forth in those
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`objections. Any paragraph in the Kelly Declaration that relies upon any exhibit not
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`relied upon by the PTAB to institute this proceeding is further objected to as not
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`being relevant and therefore being inadmissible under FRE 401 and 402.
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`Exhibit 1044
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`Exhibit 1044 is the April 8-9, 2015 Deposition Transcript of Jonathan Katz,
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`Patent Owner’s expert in CBM2014-00102/106/108/112. Patent Owner did not
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`proffer Dr. Katz as an expert in this case. As such, Patent Owner objects to Exhibit
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`1044 under FRE 401 on relevance grounds and it is not admissible per FRE 402.
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`Patent Owner further objects on grounds that it is hearsay under FRE 801 and thus
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` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
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`inadmissible under FRE 802.
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`
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`Dated: November 24, 2015
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`
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PATENT OWNER’S
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`OBJECTIONS TO ADMISSIBILITY OF EVIDENCE in CBM2015-00121 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
`
`
`
`
`
`
`
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`Dated: November 24, 2015
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`6
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