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
`________________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`GOOGLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`________________________
`Case CBM2015-00126
`Patent 8,118,221 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 Exhibit 1002 .............................................. 1
`B.
`The Board Should Exclude Exhibits 1004 - 1009, 1014, 1022, and
`1023 ....................................................................................................... 2
`The Board Should Exclude Exhibit 1015 .............................................. 3
`C.
`III. CONCLUSION ................................................................................................ 4
`
`
`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
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`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
`
`apply (37 CFR § 42.62(a)) and it is within the Board’s authority to manage the
`
`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
`
`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 Exhibit 1002
`The Board cannot assess under FRE 702 whether Dr. Tygar’s opinion
`
`testimony is “based on sufficient facts or data,” is “the product of reliable
`
`principles and methods,” or if Dr. Tygar “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. Tygar’s testimony is scientifically valid and
`1
`
`
`
`
`
`
`
`whether that reasoning or methodology properly can be applied to the facts in issue
`
`given that Dr. Tygar 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) did not consider
`
`any other possible abstract ideas and v) acknowledged on cross examination a
`
`potentially different “starting point for an abstract idea” and that “it’s possible that
`
`if I started at another place, I may or may not have reached a conclusion;” and vi)
`
`does not disclose the underlying facts on which his opinions are based.
`
`B. The Board Should Exclude Exhibits 1004 - 1009, 1014, 1022, and 1023
`Exhibits 1004 - 1009, 1014, 1022, and 1023 were not alleged to be
`
`invalidating prior art and should be excluded. Petitioner asserts that the exhibits
`
`are “offered to show the state of the art.” Paper 25 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
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`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
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`‘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
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`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 1015
`Exhibit 1015 is not relevant. The Board’s reasoning in other cases 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. Petitioner argues that
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`“Blue Calypso did not … concern the admissibility or relevance of a patentee’s
`
`characterization of its patent claims and did not hold that the patentee’s
`
`characterization of the patent claims is irrelevant.” Paper 25 at 10. Petitioner
`
`misses the point. The Blue Calypso Court did not need to recite all the things that
`
`
`
`3
`
`
`
`
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`are irrelevant to a determination of whether a patent is CBM eligible, it only
`
`needed to set forth what is relevant – the claims. The characterization of the patent
`
`in a district court complaint is not relevant and therefore inadmissible under FRE
`
`401 and 402. Moreover, Exhibit 1015 says nothing more than the ‘221 Patent
`
`itself in Ex. 1001 at 1:20-23 (“This invention … relates to a portable data carrier
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`for storing and paying for data…”) and 1:59-67 (“reading payment information,”
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`“validating the payment information”). Exhibit 1015 therefore is inadmissible
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`other evidence of the content of a writing under FRE 1004 and cumulative under
`
`FRE 403.
`
`III. CONCLUSION
`Patent Owner respectfully requests that the Board exclude the exhibits.
`
`Dated: July 5, 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
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S REPLY IN
`
`SUPPORT OF MOTION TO EXCLUDE EVIDENCE in CBM2015-00126 was
`
`served today, by agreement of the parties, by emailing a copy to counsel for the
`
`Petitioner(s) as follows:
`
`QE-SF-PTAB-Service@quinnemanuel.com
`raynimrod@ quinnemanuel.com
`kevinsmith@ quinnemanuel.com
`
`
`
`Dated: July 5, 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
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