`________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
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`GOOGLE INC.,
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`Petitioner,
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`v.
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`SMARTFLASH LLC,
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`Patent Owner.
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`________________________
`Case CBM2015-00126
`Patent 8,118,221 B2
`________________________
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`TABLE OF CONTENTS
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`Statement of Precise Relief Requested ............................................................ 1
`I.
`Patent Owner Smartflash Timely Objected to Petitioner’s Exhibits ............... 1
`II.
`III. Argument ......................................................................................................... 1
`A.
`Exhibit 1002 Lacks Foundation, is Unreliable, and Relies on
`Irrelevant Exhibits ................................................................................. 1
`Exhibits 1004, 1005, 1006, 1007, 1008, 1009, 1014, 1022, 1023, and
`1024 are Not Alleged to be Invalidating Prior Art and thus are
`Irrelevant ............................................................................................... 8
`Exhibit 1015 is Irrelevant, Inadmissible Other Evidence of the
`Content of a Writing, and Cumulative ................................................ 11
`IV. Conclusion ..................................................................................................... 13
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`B.
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`C.
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`i
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`I.
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`Statement of Precise Relief Requested
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Patent Owner Smartflash LLC
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`moves to exclude Exhibits 1002, 1004, 1005, 1006, 1007, 1008, 1009, 1014, 1015
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`1022, 1023, and 1024.
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`II.
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`Patent Owner Smartflash Timely Objected to Petitioner’s Exhibits
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`Patent Owner Smartflash LLC timely objected to CBM2015-00126 Exhibits
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`1002, 1004, 1005, 1006, 1007, 1008, 1009, 1014, 1015 1022, 1023, and 1024 by
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`filing Patent Owner’s Objections to Admissibility of Evidence. Paper 10.
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`III. Argument
`Pursuant to 37 C.F.R. § 42.64(c), the Federal Rules of Evidence apply in
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`Covered Business Method Review (“CBM”) proceedings.
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`A. Exhibit 1002 Lacks Foundation, is Unreliable, and Relies on
`Irrelevant Exhibits
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`Patent Owner moves to exclude Exhibit 1002, Declaration of Dr. Justin
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`Douglas Tygar Regarding the ’221 Patent (“Tygar Declaration”), in its entirety as
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`the Tygar Declaration does not demonstrate that Dr. Tygar is an expert whose
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`testimony is relevant to the issue of patent eligibility under 35 U.S.C. § 101, the
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`only issue on which this CBM was instituted. Whether claims are directed to
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`statutory subject matter is “an issue of law.” Institution Decision, CBM2015-
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`00129, Paper 8, page 18. When asked if he intended any of his opinions in this
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`matter to be considered legal opinions, Dr. Tygar responded “absolutely not.”
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`1
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`Exhibit 2105, Tygar Deposition at 7:4-7. Thus, Dr. Tygar’s opinions on whether
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`claims of the ‘221 Patent are directed to statutory subject matter, a question of law,
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`are irrelevant, and his Declaration should be excluded.
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`Moreover, given that patent eligibility under § 101 is a purely legal issue,
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`opinions such as those rendered by Dr. Tygar on the ultimate question of patent
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`eligibility in ¶¶ 54-67 of his declaration constitute testimony on United States
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`patent law or patent examination practice. Such testimony is inadmissible under
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`37 C.F.R. § 42.65 (“testimony on United States patent law or patent examination
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`practice will not be admitted”).
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`Further, Dr. Tygar has not shown that his opinions are proper expert
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`opinions upon which the PTAB can rely. There is no assurance that Dr. Tygar’s
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`methodologies used to render his opinions in this case are reliable as required by
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`FRE 702. In Daubert v. Merrell Dow Pharmaceuticals, Inc., 113 S.Ct. 2786, 509
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`U.S. 579 (1993), the Supreme Court set forth standards for the admissibility of
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`expert testimony. The Supreme Court noted that:
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`Faced with a proffer of expert scientific testimony … the
`trial judge must determine at the outset, pursuant to Rule
`104(a), whether the expert is proposing to testify to (1)
`scientific knowledge that (2) will assist the trier of fact to
`understand or determine a fact in issue. This entails a
`preliminary assessment of whether the reasoning or
`methodology underlying the testimony is scientifically
`2
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`valid and of whether that reasoning or methodology
`properly can be applied to the facts in issue. We are
`confident that federal judges possess the capacity to
`undertake this review. Many factors will bear on the
`inquiry, and we do not presume to set out a definitive
`checklist or test. But some general observations are
`appropriate. Ordinarily, a key question to be answered
`in determining whether a theory or technique is
`scientific knowledge that will assist the trier of fact will
`be whether it can be (and has been) tested.
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`Daubert v. Merrell Dow Pharmaceuticals, Inc., 113 S.Ct. 2786, 2796, 509 U.S.
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`579, 592-93 (1993) (emphasis added).
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`Dr. Tygar did not employ any scientifically valid reasoning or methodology
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`in reaching his opinions. In fact, when asked given what his methodology was,
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`what his “false-positive rate would be for analyzing patents under 101,” Dr. Tygar
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`responded that “to measure false-positive, one has to have ground truth, and I am
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`not aware of any generally accepted ground truth of -- [f]or these sorts of
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`questions. Courts can differ in their opinion.” Exhibit 2105, Tygar Deposition at
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`15:5-13. He further testified that “to define false-negative as to define false-
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`positive, one needs ground truth, and I'm not aware of any generally accepted
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`ground truth for 101 questions.” Id. at 16:23-17:1. This is an admission that Dr.
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`Tygar does not know, or cannot apply, the standards for evaluating patent
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`3
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`eligibility under § 101. Dr. Tygar’s testimony did not employ any scientific
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`reasoning or methodology, but simply put Dr. Tygar in the position of a tribunal
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`making the same legal assessment.
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`Dr. Tygar also did nothing to test the method he used in arriving at his
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`opinions in this case to ensure that his method was repeatable and reliable. For
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`example, Dr. Tygar did not test his method against known decisions finding
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`subject matter either eligible or ineligible under § 101. Dr. Tygar did not read any
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`Supreme Court opinions in formulating his opinions for this case. Exhibit 2105,
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`Tygar Deposition at 12:3-18. Nor did he look at any Federal Circuit Court of
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`Appeals decisions. Id. at 12:19-22. In preparing his declaration in this case, Dr.
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`Tygar did not look at any patent decisions that found that a computer-implemented
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`invention was not an abstract idea. Id. at 41:4-8. Nor did Dr. Tygar look at any
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`guidelines on statutory subject matter issued by the U.S. Patent and Trademark
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`Office. Id. at 41:9-13.
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`Dr. Tygar did not apply his methodology to any other (i.e., non-Smartflash)
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`patents as a test of his methodology. Id. at 12:23-13:5. Importantly, Dr. Tygar did
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`not review any patent that was the subject of a § 101 decision by the Federal
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`Circuit and use it to test his method. He did not “read a patent that had a [Federal
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`Circuit] decision without reading the decision, determine for [him]self whether or
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`not [he] thought that the patent … was an abstract idea or was statutory subject
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`4
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`matter for some other reason, and then cross-check[] it with what the Federal
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`Circuit said about the same case.” Id. at 14:15-22. More specifically, Dr. Tygar
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`“did not apply [his] method … to DDR Holdings.” Id. at 14:23-15:4.
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`In describing his methodology, Dr. Tygar states that he looked at claim 3 of
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`the ‘221 Patent and concluded that it was directed to the abstract idea of
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`controlling access based on payment. Id. at 65:25-67:9. But Dr. Tygar did not
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`consider any other possible abstract ideas. Id. at 67:10-11. Dr. Tygar did not
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`consider whether the abstract idea of claim 3 “could have been controlling access
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`to a data item stored by a data supplier.” Id. at 35:2-8.
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`Dr. Tygar acknowledged on cross examination a potentially different
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`“starting point for an abstract idea, but that's not where I started. I started here and
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`then, having found it was directed to an abstract idea, applied part 2.” Id. at 67:13-
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`17. Dr. Tygar admitted, however, “You know, it's possible that if I started at
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`another place, I may or may not have reached a conclusion.” Id. at 67:18-20. Dr.
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`Tygar’s admission that if he started with a different abstract idea for his analysis he
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`may not have reached a conclusion that claim 3 is directed to patent ineligible
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`subject matter should give the Board pause. It shows that how the witness defined
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`the abstract idea, an arbitrary step in the process, can change the outcome.
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`Arguably, if Dr. Tygar had defined the abstract idea as merely “controlling access
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`to a data item stored by a data supplier,” then the claim elements relating to
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`5
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`payment data and payment validation data could amount to “significantly more.”
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`For example, Dr. Tygar testified that one could “implement a data access terminal
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`that retrieves data from a data supplier and provides the retrieved data to the data
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`carrier that does not read payment data from the data carrier and forward the
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`payment data to a payment validation system” as required by claim 3 if one
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`“ma[d]e the material available for free,” to be downloaded. Id. at 36:24-37:6
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`(emphasis added). In that situation, one could construct a data access terminal
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`where material could be downloaded without payment, but still “could control the
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`access using some other method, such as password protection.” Id. at 37:7-14.
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`Adding “code to read payment data,” “code to receive payment data,” and “code
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`responsive to payment data” such as required by claim 3 would be significantly
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`more if the abstract idea was defined differently.
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`Further, the Tygar Declaration does not disclose the underlying facts on
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`which Dr. Tygar’s opinions are based and is, therefore, entitled to no weight.
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`37 CFR § 42.65 (“Expert testimony that does not disclose the underlying facts or
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`data on which the opinion is based is entitled to little or no weight.”). More
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`specifically, the Tygar Declaration does not state the evidentiary weight standard
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`(e.g., substantial evidence versus preponderance of the evidence) that Dr. Tygar
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`used in arriving at his conclusions. Given that there is no evidence that Dr. Tygar
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`even knows how much weight need be relied upon to show that a claim is non-
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`6
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`statutory (Exhibit 2105, Tygar Deposition at 195:13-196:13; 202:21-204:18), the
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`PTAB should afford no weight to the testimony and exclude it. To do otherwise
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`would be to accept his opinions without knowing “the underlying facts ... on which
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`the opinion is based” (i.e., how much evidence he thinks supports any of his
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`opinions discussed therein).
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`Similarly, the Board cannot assess under FRE 702 whether Dr. Tygar’s
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`opinion testimony is “the product of reliable principles and methods” or if Dr.
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`Tygar “reliably applied the principles and methods to the facts of the case” given
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`that Dr. Tygar did not disclose the standard against which he measured the
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`evidence in arriving at his opinions. For example, when Dr. Tygar “considered
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`each of the documents cited” in his declaration (Tygar Declaration at ¶ 6) and
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`opined that “[i]t is my opinion that claim 3 of the ’221 patent is directed to the
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`abstract idea of controlling access based on payment” (id. at ¶ 56) and “[i]t is my
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`opinion that claim 3 does not add anything of significance to the underlying
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`abstract idea of controlling access based on payment” (id. at ¶ 59) are those
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`opinions based on less than a preponderance of the evidence, or more? Without
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`Dr. Tygar having disclosed what evidentiary standard he used in forming his
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`opinions, and given that there is no evidence that he even knew what evidentiary
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`standard he was supposed to be using, the PTAB cannot rely on his opinions.
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`7
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`Paragraphs of the Tygar Declaration should be excluded to the extent that
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`any paragraph relies upon an exhibit that is objected to herein for the reasons set
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`forth in those objections. Any paragraph in the Tygar Declaration that relies upon
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`any exhibit not relied upon by the PTAB to institute this proceeding is further
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`objected to as not being relevant and therefore being inadmissible under FRE 401
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`and 402.
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`B. Exhibits 1004, 1005, 1006, 1007, 1008, 1009, 1014, 1022, 1023, and 1024
`are Not Alleged to be Invalidating Prior Art and thus are Irrelevant
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`Petitioner cites Exhibits 1004 (PCT Publication No. WO 99/07121)
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`(“Fetik”), 1005 (U.S. Patent No. 5,790,423)(“Lau”), 1006 (SOFTBOOK PRESS—
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`Secure Information Delivery to a Distributed Workforce, CIO Magazine, Aug. 1,
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`1999), 1007 (Kevin Maney, Electronic Books to Hit the Shelves, New Straits
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`Times (Computimes), Aug. 24, 1998 ), 1008 (Liquid Audio, Music on the Net—A
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`Topographic Tour of the Online Music World (1997)), 1009 (Liquid Audio Indie
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`1000 Program, http://www.liquidaudio.com (archived Feb. 11, 1998)), 1014 (A.M.
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`Turing, On Computable Numbers, with an Application to the
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`Entscheidungsproblem, Proceedings of the London Mathematical Society, Vol.
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`42:2, pp. 230-265 (Nov. 12, 1936)), 1022 (Roger A. Cunningham et al., The Law
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`of Property (2d ed. 1993) (excerpted)), 1023 (Michael H. Harris, History of
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`Libraries in the Western World (4th ed. 1999) (excerpted), and 1024 (David
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`Broderick, The First Toll Roads—Ireland’s Turnpike Roads 1729-1858 (2002)
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`8
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`(excerpted)). Although cited, neither the Petition nor the Tygar Declaration assert
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`that any of these Exhibits (“the Unasserted Exhibits”) are potentially invalidating
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`prior art, either alone or in combination with any other reference. The PTAB
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`Decision did not base any of its analysis on the Unasserted Exhibits. Thus, the
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`Unasserted Exhibits do not appear to make a fact of consequence in determining
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`this action more or less probable than it would be without the Unasserted Exhibits.
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`As such, the Unasserted Exhibits do not pass the test for relevant evidence under
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`FRE 401 and are not admissible per FRE 402.
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`In a related CBM on a patent in the same family, CBM2015-00016, the
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`Board declined to exclude similarly unasserted exhibits, finding “these exhibits are
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`relevant to the state of the art—whether the technical limitations of the challenged
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`claim were well-known, routine, and conventional—and thus, to our § 101
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`analysis.” CBM2015-00016, Paper 56 at 26. Whether the technical limitations of
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`the challenged claim were well known, routine, and conventional is only relevant
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`after finding that a claim is directed to an abstract idea and the analysis moves to
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`the second step of whether the claims contain an “inventive concept.” Mayo
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`Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1294
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`(2012). Here, the claims at issue are not directed to an abstract idea. Patent
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`Owner’s Response, Paper 21 at 22-25. The Federal Circuit recently “[found] it
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`relevant to ask whether the claims are directed to an improvement to computer
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`9
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`functionality versus being directed to an abstract idea, even at the first step of the
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`[Mayo/]Alice analysis. Enfish, LLC v. Microsoft Corp., 2016 WL 2756255, at *4
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`(Fed. Cir. May 12, 2016) (citing Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S.Ct.
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`2347 (2014)). In Enfish, the Federal Circuit concluded that the claims were
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`directed to an improvement to computer functionality and that “the claims are
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`directed to a specific implementation of a solution to a problem in the software
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`arts. Accordingly, we find the claims at issue are not directed to an abstract idea.”
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`Id. at *8. Like the claims in Enfish, the Smartflash claims are “directed to an
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`improvement to computer functionality” and a “specific solution to a problem” in
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`computer networks – the problem of data piracy. Patent Owner’s Response, Paper
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`21 at 2, 21, 22-36. As such, there is no need to reach the second step of
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`Mayo/Alice to determine if there is an “inventive concept,” so the Board’s previous
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`rationale is moot. Moreover, in determining whether there is an “inventive
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`concept” the relevant analysis is whether there is an “inventive concept” over the
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`abstract idea (if one is found) and not whether there is an “inventive concept” over
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`the prior art. The question of whether there is an “inventive concept” over the
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`prior art is a question of patentability under 35 U.S.C. §§ 102 and 103, and not
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`subject matter eligibility under 35 U.S.C. § 101.
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`Exhibits 1004, 1005, 1006, 1007, 1008, 1009, 1014, 1022, 1023, and 1024
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`are not relevant and should be excluded.
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`10
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`C. Exhibit 1015 is Irrelevant, Inadmissible Other Evidence of the
`Content of a Writing, and Cumulative
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`Patent Owner moves to exclude Exhibit 1015 (Plaintiffs’ Original Complaint
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`for Patent Infringement, Smartflash LLC v. Apple Inc., No. 6:13-cv-447, Dkt. 1
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`(E.D. Tex. May 29, 2013)) on grounds that it is: inadmissible under FRE 402
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`because it fails the test for relevance set forth in FRE 401; inadmissible other
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`evidence of the content of a writing under FRE 1004; and, even if relevant, is
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`unnecessary cumulative evidence under FRE 403.
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`Petitioner cites to Exhibit 1015 as support for the ‘221 Patent being
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`“financial in nature” and thus CBM review eligible. Petition at 6-7. Specifically,
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`the Petition cites Exhibits 1015 for the sole purpose of showing Patent Owner’s
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`characterization of the ‘221 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.” Petition at 7 (citing Ex. 1015 ¶ 1).
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`Patent Owner’s description of the ‘221 Patent in Exhibit 1015 is not relevant
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`to any of the issues here.
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`In related CBM2015-00016, the Board declined to exclude the same or
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`similar exhibit because “[Patent Owner’s] characterization of the … patent in prior
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`proceedings is relevant to the credibility of its characterization of the … patent in
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`this proceeding.” CBM2015-00016, Paper 56 at 24. The Board’s reasoning that a
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`Patent Owner’s characterization of the patent, or the Patent Owner’s credibility in
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`11
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`doing so, is relevant to the analysis of whether a patent qualifies for CBM review
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`under § 18(a) of the Leahy-Smith America Invents Act (“AIA”) is contrary to
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`Federal Circuit authority. As noted by the Federal Circuit, Ҥ 18(d)(1) [of the
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`AIA] directs us to examine the claims when deciding whether a patent is a CBM
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`patent.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir.
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`March 1, 2016) (emphasis original). The claims are delineated in the ‘221 Patent,
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`which is in evidence as Exhibit 1001. That is all the Board needs for its analysis.
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`Moreover, there are no credibility issues here that render Exhibit 1015 relevant.
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`There is nothing about Patent Owner’s characterization of the ‘221 Patent in this
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`proceeding – that claims 1 and 3 “do not recite a ‘financial product or service’” in
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`the way Congress intended (Patent Owner’s Preliminary Response, Paper 7 at 30-
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`35) – that is contradicted by Exhibit 1015 such that the credibility of Patent
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`Owner’s characterization is at issue. As such Exhibit 1015 is irrelevant and
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`inadmissible.
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`Further, Petitioner’s expert Dr. Tygar does not cite to Exhibit 1015 in the
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`Tygar Declaration, Exhibit 1002. The Board’s November 16, 2015 Decision –
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`Institution of Covered Business Method Patent Review 37 C.F.R. § 42.208 (“PTAB
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`Decision”), Paper 8, does not cite Exhibit 1015. Exhibit 1015 therefore does 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 Exhibit 1015. As such, Exhibit 1015 does not
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`12
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`pass the test for relevant evidence under FRE 401 and is not admissible per FRE
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`402.
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`Petitioner does not need to cite to Exhibit 1015 to characterize the ‘221
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`Patent when Exhibit 1001, the actual ‘221 Patent, is in evidence. Under FRE 1004,
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`other evidence of the content of a writing (here the ‘221 Patent) is admissible if the
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`original is lost, cannot be obtained, has not been produced, or the writing is not
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`closely related to a controlling issue. None of those conditions apply here, given
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`that the ‘221 Patent is in evidence and is the subject of the trial.
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`Even if Exhibit 1015 was found to be relevant, it should also be excluded
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`under FRE 403 as cumulative of the ‘221 Patent, Exhibit 1001.
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`IV. Conclusion
`For these reasons, Patent Owner Smartflash, LLC respectfully requests that
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`the Board exclude Exhibits 1002, 1004, 1005, 1006, 1007, 1008, 1009, 1014, 1015
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`1022, 1023, and 1024.
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`Dated: June 13, 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
`
`
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`13
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PATENT OWNER’S MOTION
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`TO EXCLUDE EVIDENCE in CBM2015-00126 was served today, by agreement
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`of the parties by emailing a copy to counsel for the Petitioner as follows:
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`
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`QE-SF-PTAB-Service@quinnemanuel.com
`raynimrod@ quinnemanuel.com
`kevinsmith@ quinnemanuel.com
`
` /
`
` 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
`
`
`
`
`
`Dated: June 13, 2016
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`14