Case CBM2015-00126
`Patent 8,118,221 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`GOOGLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`
`____________________________
`
`Case CBM2015-00126
`Patent 8,118,221 B2
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`____________________________
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE EVIDENCE
`
`01980-00035/8063787.4
`
`
`Patent 8,118,221 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`GOOGLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`
`____________________________
`
`Case CBM2015-00126
`Patent 8,118,221 B2
`
`____________________________
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE EVIDENCE
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`01980-00035/8063787.4
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`
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`B.
`C.
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`THE BOARD SHOULD NOT EXCLUDE EXHIBIT 1002 .......................... 2
`A.
`The Board May Consider Expert Declarations On Subject
`Matter Eligibility ................................................................................... 2
`Dr. Tygar’s Methodology Is Reliable ................................................... 3
`Dr. Tygar’s Declaration Is Not Required To Recite An
`Evidentiary Standard ............................................................................. 4
`THE BOARD SHOULD NOT EXCLUDE EXHIBITS 1004 TO
`1009, 1014, 1022, OR 1023 ............................................................................. 5
`III. THE BOARD SHOULD NOT EXCLUDE EXHIBIT 1015 .......................... 9
`IV. CONCLUSION .............................................................................................. 10
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`1
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`INTRODUCTION
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`Patent Owner’s Motion To Exclude (“Motion”, Paper 24) relies almost
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`entirely on arguments that the Board has already rejected in the context of
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`proceedings on the same patent and related patents. Patent Owner presents no
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`persuasive reason for the Board to deviate from its prior rulings on these same
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`issues. The Board may, in its discretion, assign the appropriate weight to the
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`evidence presented. Patent Owner’s Motion should be denied.
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`I.
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`
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`THE BOARD SHOULD NOT EXCLUDE EXHIBIT 1002
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`Patent Owner argues that Exhibit 1002, the declaration of Dr. Tygar, should
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`be excluded because (i) statutory subject matter eligibility is a question of law
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`(Mot. at 2); (ii) Patent Owner contends that Dr. Tygar applied an unreliable
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`methodology (Mot. at 2-6); and (iii) Dr. Tygar did not recite an “evidentiary
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`standard” in his declaration (Mot. at 6-8). None of these arguments justifies
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`excluding Exhibit 1002.
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`A. The Board May Consider Expert Declarations On Subject Matter
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`Eligibility
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`Patent Owner incorrectly contends that, because statutory subject matter
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`eligibility is a question of law, expert testimony on this issue is irrelevant. (Mot. at
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`1-2.) The Board has already rejected Patent Owner’s argument in related
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`proceedings. Apple Inc. v. Smartflash LLC, CBM2015-00028, Paper 44 at 30-31.
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`2
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`Patent 8,118,221 B2
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`Patent Owner presents no reason for the Board to rule differently here.
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`The question of subject matter eligibility may be informed by underlying
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`facts. See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
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`1336, 1340-41 (Fed. Cir. 2013) (patent eligibility determinations “may contain
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`underlying factual issues”); Versata Development Group, Inc. v. SAP Am., Inc.,
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`793 F.3d 1306, 1334 (Fed. Cir. 2015) (“The PTAB specifically examined this issue
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`and credited the testimony of SAP's expert over Versata’s expert to determine that
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`the additionally claimed steps of storing, retrieving, sorting, eliminating and
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`receiving were ‘well-known, routine, and conventional steps.’”). Patent Owner
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`does not dispute that Dr. Tygar is a person of skill in the art who is qualified to
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`testify on relevant underlying facts, including, for example, the state of the prior art
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`and the knowledge of a person of skill in the art. (See Exhibit 1002 at ¶¶ 19-25,
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`60-65.) As the Board has already held, such testimony is relevant, and Patent
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`Owner’s Motion should be denied.
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`B. Dr. Tygar’s Methodology Is Reliable
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`Dr. Tygar applied the methodology required under Section 101 law. E.g.,
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`Ex. 1002 ¶¶ 54-55. Patent Owner asserts that an expert must identify a “false
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`positive rate,” analyze abstract concepts not advanced by either party, and read
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`court decisions in order to offer opinions relevant to a Section 101 analysis. (Mot.
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`at 3-5.) Patent Owner cites no authority that supports these contentions, and the
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`3
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`Board rejected similar arguments advanced by Patent Owner
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`in related
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`proceedings. See Apple Inc. v. Smartflash LLC, CBM2015-00028, Paper No. 44 at
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`29 (Patent Owner’s argument that the expert’s methodology was flawed went to
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`the Board’s “discretion to determine the appropriate weight to be accorded” to the
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`expert testimony). Patent Owner’s arguments at best go to the weight the Board
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`should give to Dr. Tygar’s testimony.
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`Dr. Tygar is not a lawyer and did not provide a legal opinion. Rather, he
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`provided a factual opinion based on his analysis of the ’221 patent, informed by his
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`technical expertise and over 34 years of experience in the field (see, e.g., Ex. 1002
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`¶¶ 7-13). Dr. Tygar’s testimony is entitled to weight, especially in comparison to
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`Patent Owner’s bare attorney argument. See, e.g., Versata, 793 F.3d at 1334
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`(affirming Board’s reliance on expert testimony that computer-based limitations
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`were well-known); Corning Inc. v. DSM IP Assets B.V., IPR2013-00048, Paper
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`No. 15 at 22 (“[I]n the face of [petitioner’s] expert testimony. . . we are not
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`persuaded by this conclusory attorney argument.”). The same reasoning applies
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`here.
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`C. Dr. Tygar’s Declaration Is Not Required To Recite An
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`Evidentiary Standard
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`Patent Owner argues that Dr. Tygar’s declaration should be excluded
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`because Dr. Tygar did not recite an evidentiary standard. (Mot. at 7.) The Board
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`4
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`Patent 8,118,221 B2
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`has already rejected Patent Owner’s “evidentiary standard” argument in earlier
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`CBMs involving both related and unrelated patents. See, e.g., Apple Inc. v.
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`Smartflash LLC, CBM2014-00102, Pap. 52 at 6-7; Vibrant Media v. Gen. Elec.
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`Co., IPR2013-00172, Pap. 50 at 42. As these decisions hold, an expert is not
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`required to recite an evidentiary standard for his opinion to be admissible. The
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`Board should therefore deny Patent Owner’s Motion.
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`II. THE BOARD SHOULD NOT EXCLUDE EXHIBITS 1004 TO 1009,
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`1014, 1022, OR 1023
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`Patent Owner objects to exhibits offered to show the state of the art, arguing
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`that such evidence is not relevant to the issue of subject matter eligibility. (Mot. at
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`8-10.) Patent Owner acknowledges that the Board has rejected this argument in
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`related proceedings. (Mot. at 9 (citing CBM2015-00016, Paper 56 at 26).) Indeed,
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`Patent Owner concedes that the Board has already determined that the state of the
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`art is relevant to the second step of the Mayo test—which Patent Owner
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`characterizes as an inquiry into “[w]hether the technical limitations of the
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`challenged claim were well known, routine, and conventional.” (Mot. at 9.) It is
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`therefore undisputed that the challenged Exhibits are relevant to the governing the
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`second step of the Mayo standard.
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`Patent Owner argues that these Exhibits should nevertheless be excluded
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`because Patent Owner contends that the ’221 patent is not directed to an abstract
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`5
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`Patent 8,118,221 B2
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`idea and therefore satisfies the first Mayo step. (Mot. at 9.) According to Patent
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`Owner, the Board need not consider and should exclude evidence that is relevant to
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`the second Mayo step. (Id.) Patent Owner’s argument fails because the parties
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`dispute whether the ’221 patent satisfies the first step of the Mayo test. Indeed, the
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`Board has already held that other claims of the ’221 patent are directed to an
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`abstract idea. Samsung Elecs. Am. Inc. v. Smartflash LLC, CBM2014-00194,
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`Paper 51 at 8 (“We are persuaded that claim 32 is drawn to a patent-ineligible
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`abstract idea. Specifically, claim 32 is directed to performing the fundamental
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`economic practice of conditioning and controlling access to content based on
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`payment.”). Because both the first and the second step of the Mayo test are at issue
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`in these proceedings, the challenged Exhibits are relevant and admissible.
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`Patent Owner has also improperly shoehorned new substantive arguments
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`concerning Mayo step one into its Motion To Exclude. These arguments fail on
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`the merits. Patent Owner relies on the Federal Circuit’s recent decision in Enfish,
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`LLC v. Microsoft Corp., No. 2015-1244, 2016 WL 2756255 (Fed. Cir. May 12,
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`2016), but that decision does not support Patent Owner’s argument that the ’221
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`patent is not directed to an abstract idea. The Enfish claims were not focused “on
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`economic or other tasks for which a computer is used in its ordinary capacity.” Id.
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`at *5. In Enfish, the claims were “specifically directed to a self-referential table
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`for a computer database.” Id. at *6 (emphasis in original). The claimed self-
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`Patent 8,118,221 B2
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`referential table was “a specific type of data structure designed to improve the way
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`a computer stores and retrieves data in memory.” Id. at *8. The specification of
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`the patent emphasized that the self-referential table “functions differently than
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`conventional database structures.” Id. at *6. The Enfish patent performed this
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`different function using a specific claimed algorithm for accomplishing the
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`claimed “innovative logical model.” Id. at *1, *5. The claims were therefore
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`“directed to a specific implementation of a solution to a problem in the software
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`arts.” Id. at *8.
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`The ’221 patent, by contrast, is focused “on economic or other tasks for
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`which a computer is used in its ordinary capacity.” Id. at *5. The ’221 patent
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`claims do not contain anything analogous to the claimed specific self-referential
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`table in Enfish. Unlike Enfish, the ’221 patent claims no specific algorithm but
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`instead claims its alleged invention in purely functional terms. The ’221 patent
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`“recite[s] generalized steps to be performed on a computer using conventional
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`computer activity.” Id. at *7. The claims, considered in their entirety, are directed
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`to the application of controlling access to data using payment using conventional
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`computer components. The claims do not purport to improve how those
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`components operate but instead use a computer “merely as a tool” to carry out the
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`abstract idea. Id. at *5. The claims are therefore similar to those found
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`unpatentable in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), as
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`Patent 8,118,221 B2
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`the Board previously found in related proceedings. See Apple Inc. v. Smartflash
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`LLC, CBM2015-00032, Pap. 46 at 21; Apple Inc. v. Smartflash LLC, CBM2015-
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`00033, Pap. 40 at 20-21.
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`Notably, the Federal Circuit distinguished Enfish in TLI Communications
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`LLC v. AV Automotive, L.L.C., No. 2015-1372, 2016 WL 2865693 (Fed. Cir. May
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`17, 2016), which, like the ’221 patent, involved claims that were “directed to the
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`use of conventional or generic technology.” Id. at *3. The ’221 patent implements
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`on computers the fundamental economic concept of controlling access based on
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`payment. As in TLI, the “recited physical components” of the ’221 patent “merely
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`provide a generic environment in which to carry out [an] abstract idea.” See id. at
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`*3. The hardware components “behave exactly as expected according to their
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`ordinary use” and are “merely . . . conduit[s] for the abstract idea.” Id. at *4. And
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`like the claims in TLI, the ’221 patent calls for performing “generic computer
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`functions such as storing, receiving, and extracting data” using conventional
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`hardware. Id.
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`Enfish, especially when read together with TLI, does not support deviating
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`from the Board’s prior holdings that Patent Owner’s patents are directed to an
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`abstract idea.
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`Patent 8,118,221 B2
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`III. THE BOARD SHOULD NOT EXCLUDE EXHIBIT 1015
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`Patent Owner moves to exclude Exhibit 1015, which is a copy of Patent
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`Owner’s district court complaint asserting infringement of the ’221 patent. As
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`Patent Owner acknowledges, the Board has already denied a motion to exclude a
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`similar exhibit—a copy of Patent Owner’s district court complaint asserting
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`infringement against Apple Inc.—in a proceeding concerning a related patent.
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`(Mot. at 11 (citing Apple Inc. v. Smartflash LLC, CBM2015-00016, Paper 56 at
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`24); see also Apple Inc. v. Smartflash LLC, CBM2014-00106, Pap. 52 at 25.)
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`There, the Board correctly overruled Patent Owner’s objection, holding that the
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`exhibit was admissible:
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`not for the truth of the matter asserted (i.e., the content of the ’458
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`patent), but as evidence of how Patent Owner has characterized the
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`’458 patent. . . . Patent Owner’s characterization of the ’458 patent in
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`prior proceedings is relevant to Patent Owner’s contention in this
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`proceeding that the ’458 patent does not satisfy the “financial in
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`nature” requirement for a covered business method patent review.”
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`(CBM2015-00016, Paper 56 at 24.)
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`The Board’s previous decisions are not contrary to Blue Calypso, LLC v.
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`Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016). Patent Owner argues that
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`Blue Calypso holds that the Board should look solely to the patent claims when
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`9
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`Patent 8,118,221 B2
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`deciding whether a patent is a CBM patent. (Mot. at 12.) Blue Calypso did not,
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`however, concern the admissibility or relevance of a patentee’s characterization of
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`its patent claims and did not hold that the patentee’s characterization of the patent
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`claims is irrelevant. Patent Owner’s argument, at best, goes to the weight the
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`Board should give to the Patent Owner’s characterization of its invention in prior
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`proceedings.
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`Contrary to Patent Owner’s argument, Exhibit 1015 is not cumulative of the
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`’221 patent itself and is not offered to prove the content of the ’221 patent. Patent
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`Owner’s characterization of the ’221 patent in another proceedings is not found in
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`the patent itself. Federal Rule of Evidence 1004 is therefore inapplicable.
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`Patent Owner also argues that Exhibit 1015 is not relevant because it was not
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`cited by Dr. Tygar or by the Board in its institution decision. Exhibit 1015 is,
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`however, cited in the Petition. (Paper 2 at 7.) Patent Owner’s argument therefore
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`fails to show that Exhibit 1015 is irrelevant.
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`IV. CONCLUSION
`For the foregoing reasons, the Board should deny the Patent Owner’s
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`Motion To Exclude Evidence.
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`Dated: June 27, 2016
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`Respectfully submitted,
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`/Andrew M. Holmes/
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`Andrew M. Holmes (Reg. No. 64,718)
`Charles K. Verhoeven
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`
`Melissa J. Baily
`Kevin A. Smith
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Telephone: 415-875-6000
`Fax: 415-875-6700
`
`Raymond N. Nimrod (Reg. No. 31,987)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Telephone: 202-849-7100
`Fax: 212-849-7100
`
`Counsel for Petitioner Google Inc.
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`Case CBM2015-00126
`Patent 8,118,221 B2
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 27, 2016 I served the foregoing by email to:
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`SmartFlash-CBM@dbjg.com
`Michael R. Casey (mcasey@dbjg.com)
`J. Scott Davidson (jsd@dbjg.com)
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`Date: June 27, 2016
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`
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`/Andrew Holmes/
`Andrew Holmes
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`01980-00035/8063787.4
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`12
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