UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00127
`Patent 7,334,720
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00127
`Patent 7,334,720
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Case CBM2015-00127
`Patent 7,334,720
`
`
`
`I. THE BOARD SHOULD NOT EXCLUDE EXHIBITS 1002 AND 1045 ........ 2
`II. THE BOARD SHOULD NOT EXCLUDE EXHIBITS 1003-04,
`1006-08, 1011-18, 1025-28, 1036-39, AND 1041-44 ....................................... 4
`III. THE BOARD SHOULD NOT EXCLUDE EXHIBIT 1019 ............................. 8
`IV. THE BOARD SHOULD NOT EXCLUDE EXHIBIT 1040 ........................... 12
`
`
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`
`
`In response to Patent Owner’s (“PO”) Motion to Exclude (“Mot.”, Pap. 24),
`
`Petitioner respectfully submits 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 here, without resorting to formal exclusion that
`
`might later be held reversible error. See, e.g., S.E.C. v. Guenthner, 395 F. Supp. 2d
`
`835, 842 n.3 (D. Neb. 2005); Builders Steel Co. v. Comm’r of Internal Revenue,
`
`179 F.2d 377, 379 (8th Cir. 1950) (vacating Tax Court decision for exclusion of
`
`competent, material evidence); Donnelly Garment Co. v. Nat’l Labor Relations
`
`Bd., 123 F.2d 215, 224 (8th Cir. 1941) (NLRB’s refusal to receive testimonial evi-
`
`dence was denial of due process). See also, e.g., Samuel H. Moss, Inc. v. F.T.C.,
`
`148 F.2d 378, 380 (2d Cir. 1945), cert. denied, 326 U.S. 734 (1945) (“Even in
`
`criminal trials to a jury it is better, nine times out of ten, to admit, than to exclude, .
`
`. . and in such proceedings as these the only conceivable interest that can suffer by
`
`admitting any evidence is the time lost, which is seldom as much as that inevitably
`
`lost by idle bickering about irrelevancy or incompetence.”). But even under strict
`
`application of the Rules of Evidence, cf. 77 Fed. Reg. 48,612, 48,616 (Aug. 14,
`
`2012) (“42.5(a) and (b) permit administrative patent judges wide latitude in admin-
`
`istering the proceedings to balance the ideal of precise rules against the need for
`
`flexibility to achieve reasonably fast, inexpensive, and fair proceedings”), Petition-
`
`er’s evidence here is entirely proper while PO’s objections—many of which have
`1
`
`
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`already been rejected by the Board in prior proceedings on the same and related
`
`patents—are baseless.
`
`I.
`
`The Board Should Not Exclude Exhibits 1002 and 1045
`
`Petitioner did not rely on Exs. 1002 and 1045 for “evidence of the content”
`
`of the ’720 patent (cf. Mot. 2), but rather to show that PO’s and inventor Patrick
`
`Racz’s own characterizations of the subject matter of the ’720 patent support Peti-
`
`tioner’s contention (and the Board’s previous determination) that the ’720 patent
`
`relates to a financial activity or transaction and is a covered business method pa-
`
`tent. See Pap. 2 at 27. PO’s and Mr. Racz’s characterizations of the ’720 patent in
`
`another proceeding are not found in the patent itself; thus, contrary to PO’s asser-
`
`tions, Exs. 1002 and 1045 are not cumulative of the ’720 patent, and FRE 1004 is
`
`inapplicable. Indeed, as PO admits, when confronting this same argument by PO,
`
`the Board declined to exclude the same Ex. 1002 in another proceeding on the
`
`same patent. While determining whether a patent is a CBM patent requires an ex-
`
`amination of the claims, the Board found “[Patent Owner’s] characterization of the
`
`’720 patent in prior proceedings is relevant to the credibility of its characterization
`
`of the ’720 patent in this proceeding.” Mot. 2 (citing CBM2015-00028, Pap 44 at
`
`25); see also CBM2015-00029, Pap. 43 at 27. The same reasoning applies here.
`
`PO again argues that “[t]here is nothing about Patent Owner’s characteriza-
`
`tion of the ‘720 Patent in this proceeding … that is contradicted by Exhibits 1002
`
`
`
`2
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`and 1045 such that the credibility of Patent Owner’s characterization is at issue”
`
`(Mot. 3). But, as the Board found in another proceeding on this patent, “[Patent
`
`Owner]’s argument misses the point because the credibility of [Patent Owner]’s
`
`characterization is for [the Board] to decide, and [the Board has] to consider the
`
`document at issue in making that determination.” CBM2015-00028, Pap. 44 at 25-
`
`26; see also CBM2015-00029, Pap. 43 at 27. And, contrary to PO’s claim that its
`
`characterization of the ’720 patent is not at issue here (Mot. 3), PO disputes the fi-
`
`nancial nature of the ’720 patent, see Pap. 5 at 38-43; Pap. 17 at 60-65. Therefore,
`
`PO’s and Mr. Racz’s admissions, which contradict PO’s arguments here, should
`
`not be excluded. See CBM2015-00028, Pap. 44 at 26 (“Smartflash’s characteriza-
`
`tion of the ’720 patent in prior proceedings is relevant to Smartflash’s contention in
`
`this proceeding that the ’720 patent does not satisfy the ‘financial in nature’ re-
`
`quirement” for a CBM review.); see also CBM2015-00029, Pap. 43 at 27.
`
`Further, PO is wrong that Exs. 1002 and 1045 do not “appear to make a fact
`
`of consequence in determining this action” merely because the Kelly Declaration
`
`(Ex. 1019) and the Board’s Institution Decision (Pap. 7) do not cite them. Mot. 3-
`
`4. As PO admits, both Exs. 1002 and 1045 are cited in the Petition (Pap. 2) “as
`
`support for the ‘720 Patent being ‘financial in nature’ and thus CBM review eligi-
`
`ble.” Mot. 2 (citing Petition at 25-29). And, Ex. 1045 is also cited in Petitioner’s
`
`Reply (Pap. 21) to show that various elements of the challenged claims are not in-
`
`
`
`3
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`ventive. See Pap. 21 at 11, 13. Because Exs. 1002 and 1045 reflect facts of conse-
`
`quence in determining this action under FRE 401, they are relevant and should not
`
`be excluded.
`
`II.
`
`The Board Should Not Exclude Exhibits 1003-04, 1006-08, 1011-18,
`1025-28, 1036-39, and 1041-44
`
`Contrary to PO’s assertions, Exs. 1003-04, 1006-08, 1011-18, 1025-28,
`
`1036-39, and 1041-44 (“Prior Art Exhibits”) are relevant to the Board’s § 101
`
`analysis. As PO admits, when confronting the same argument from PO, the Board
`
`declined to exclude similar exhibits in another proceeding on the same patent be-
`
`cause these exhibits are “relevant to whether the limitations of the challenged
`
`claims were well-known, routine, and conventional, and thus, to our § 101 analy-
`
`sis.” Mot. 6 (citing CBM2015-00028, Pap. 44 at 27); see also, e.g., Alice Corp.
`
`Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2357, 2359 (2014); YYZ, LLC v.
`
`Hewlett-Packard Co., No. 13-136-SLR, 2015 WL 5886176, at *8 (D. Del. Oct. 8,
`
`2015) (“Although the § 101 inquiry is focused on the claim language, extrinsic ev-
`
`idence [, such as prior art,] may be helpful in terms of understanding the state of
`
`the art . . . , and whether the problem to which the patent was directed is solved us-
`
`ing computer technology in unconventional ways.”); CBM2015-00029, Pap. 43 at
`
`29; CBM2014-00190, Pap. 47 at 29; cf. Versata Dev. Grp., Inc. v. SAP Am., Inc.,
`
`793 F.3d 1306, 1334, 1336 (Fed. Cir. 2015) (affirming Board’s reliance on peti-
`
`tioner’s expert in determining that claimed steps were well-known, routine, and
`
`
`
`4
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`conventional and Board’s finding that “claims at issue do not recite any improve-
`
`ment in computer technology”)1. Nothing in this proceeding should change that
`
`outcome. Indeed, both the Petition and the Kelly Declaration rely on Prior Art Ex-
`
`hibits to show (1) the state of the art, (2) that the basic concept of controlling ac-
`
`cess based on payment and/or rules—to which the challenged claims are di-
`
`rected—was well-known in the prior art, and/or (3) that the elements disclosed by
`
`the challenged claims were well-known, routine, and conventional. See, e.g., Pap.
`
`2 at 7-20 (Overview of Field of the Claimed Invention), 47-48, 56, 59-68 (citing
`
`Prior Art Exhibits); Ex. 1019 ¶¶ 23-73 (State of the Art), 75-77, 79-81, 83 (citing
`
`Prior Art Exhibits). And, there is no requirement that the Board’s Institution Deci-
`
`sion cite every piece of potentially relevant evidence in its Institution Decisions for
`
`the evidence to “make a fact of consequence in determining this action,” as PO
`
`contends. Mot. 5. Further, in its final written decisions in prior proceedings on the
`
`same and related patents, the Board cited prior art references in determining patent
`
`eligibility. CBM2015-00028, Pap. 44 at 19 (same) (relying on prior art to show
`
`concepts claimed in the ’720 patent were known); CBM2015-00029, Pap. 43 at 21
`
`(same); CBM2014-00190, Pap. 47 at 19-20 (same); CBM2015-00031, Pap. 45 at
`
`22; CBM2015-00032, Pap. 46 at 22-23 (same); CBM2015-00033, Pap. 40 at 22-23
`
`(same); CBM2015-00016, Pap. 56 at 13 (same); CBM2015-00017, Pap. 46 at 17-
`
`
`1 All emphasis herein added unless otherwise indicated.
`5
`
`
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`18 (same); CBM2014-00192, Pap. 45 at 13-14 (same); CBM2014-00193, Pap. 45
`
`at 17 (same); CBM2014-00194, Pap. 51 at 19 (same).
`
`PO also puts the cart before the horse in arguing that the Prior Art Exhibits
`
`are not relevant because “[w]hether the technical limitations of the challenged
`
`claim were well-known, routine, and conventional is only relevant after finding
`
`that a claim is directed to an abstract idea and ... [h]ere, the claims at issue are not
`
`directed to an abstract idea.” (Mot. 6-7). It would be nonsensical to exclude the
`
`Prior Art Exhibits before the Board determines whether it needs to perform the
`
`second step of the Mayo analysis, as PO urges. This is particularly so in light of the
`
`fact that the Board has already determined that a multitude of related claims—
`
`including claims in the same ’720 patent—are directed to an abstract idea.
`
`CBM2015-00028, Pap. 44 at 8-10; CBM2015-00029, Pap. 43 at 9-11; CBM2014-
`
`00190, Pap. 47 at 8-10; CBM2015-00031, Pap. 45 at 11-13; CBM2015-00032,
`
`Pap. 46 at 11-13; CBM2015-00033, Pap. 40 at 11-13; CBM2015-00016, Pap. 56 at
`
`8-9; CBM2015-00017, Pap. 46 at 7-9; CBM2014-00192, Pap. 45 at 7-9;
`
`CBM2014-00193, Pap. 45 at 8-9; CBM2014-00194, Pap. 51 at 8-9. The Prior Art
`
`Exhibits are unquestionably relevant to the § 101 analysis; there is no basis to ex-
`
`clude them.
`
`Moreover, in arguing that the Prior Art Exhibits should be excluded, PO im-
`
`properly raises for the first time a new substantive argument regarding the Federal
`
`
`
`6
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`Circuit’s recent decision in Enfish, LLC v. Microsoft Corp., No. 2015-1244, 2016
`
`WL 2756255 (Fed. Cir. May 12, 2016). See Mot. 6-7; Motorola Mobility LLC v.
`
`Intellectual Ventures I LLC, IPR2014-00501, Pap. 48 at 31 (“A motion to exclude
`
`is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply
`
`or supporting evidence is of appropriate scope.”). Even if this analysis were
`
`properly presented in this context, it is wrong, and ignores more analogous cases,
`
`such as In re TLI Communications LLC Patent Litigation, No. 2015-1372, 2016
`
`WL 2865693 (Fed. Cir. May 17, 2016) and Ultramercial, Inc. v. Hulu, LLC, 772
`
`F.3d 709 (Fed. Cir. 2014). Indeed, contrary to PO’s argument (Mot. 6-7), the chal-
`
`lenged claims here are not “directed to an improvement to computer functionality”
`
`like the “innovative,” “self-referential table for a computer database” claimed in
`
`Enfish. 2016 WL 2756255, at *1, *5. Rather, the challenged claims are like the
`
`claims held ineligible in TLI—another recent decision noticeably absent from PO’s
`
`Motion—and Ultramercial. In TLI, the Federal Circuit distinguished the Enfish
`
`claims based on the fact that the TLI claims, like the challenged claims here, “are
`
`directed to the use of conventional or generic technology in a nascent but well-
`
`known environment.” TLI, 2016 WL 2865693, at *3. Like the TLI claims, and
`
`like related claims already found patent ineligible, the challenged claims “perform[]
`
`generic computer functions such as storing, receiving, and extracting data” using
`
`“physical components” (e.g., interface, program store, processor, data carrier, cash
`
`
`
`7
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`input device) that “behave exactly as expected according to their ordinary use” and
`
`“merely provide a generic environment in which to carry out the abstract idea” of
`
`controlling access to content based on payment and/or rules. Id. at *3, *4, *7; see,
`
`e.g., Pap. 2 at 50-51, 56-68; Pap. 21 at 6-13; see also CBM2015-00028, Pap. 44 at
`
`10-20; CBM2015-00029, Pap. 43 at 11-21; CBM2014-00190, Pap. 47 at 10-20;
`
`CBM2015-00031, Pap. 45 at 13-23; CBM2015-00032, Pap. 46 at 13-23;
`
`CBM2015-00033, Pap. 40 at 13-23; CBM2015-00016, Pap. 56 at 9-17; CBM2015-
`
`00017, Pap. 46 at 9-18; CBM2014-00192, Pap. 45 at 9-18; CBM2014-00193, Pap.
`
`45 at 9-17; CBM2014-00194, Pap. 51 at 10-20; cf. Enfish, 2016 WL 2756255, at
`
`*6 (“[T]he self-referential table functions differently than conventional database
`
`structures.”). And, like other ’720 patent claims that the Board already determined
`
`are ineligible, the challenged claims here are like the claims at issue in Ultramer-
`
`cial, which “condition and control access based on viewing an advertisement.”
`
`CBM2015-00028, Pap. 44 at 17. “Similar to the claims in Ultramercial, the major-
`
`ity of limitations in [the challenged claims] comprise this abstract concept of con-
`
`ditioning and controlling access to data.” Id.; see also CBM2015-00029, Pap. 43
`
`at 19; CBM2014-00190, Pap. 47 at 17-18. Read together, Enfish, TLI, and Ultra-
`
`mercial further confirm that the challenged claims are ineligible.
`
`III. The Board Should Not Exclude Exhibit 1019
`
`PO does not dispute Dr. Kelly’s qualifications or competence, and instead
`
`
`
`8
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`seeks to exclude the Kelly Declaration based on three meritless arguments: (1) Dr.
`
`Kelly’s opinions are not legal opinions and § 101 is a “purely legal issue” (Mot. 7-
`
`9), (2) Dr. Kelly did not “test the method” he used “against known [§ 101] deci-
`
`sions” to determine a “false [positive/negative] rate” (Mot. 10-11), and (3) Dr.
`
`Kelly’s opinions “reflect an analysis that looks for an inventive concept over the
`
`prior art, rather than over the abstract idea itself” (Mot. 11 (emphases in origi-
`
`nal)).
`
`First, the Board has already rejected PO’s argument that expert opinions are
`
`not relevant to § 101 issues in other proceedings on the same patent, finding that an
`
`expert’s opinions on § 101 “relate to the underlying factual issues related to patent
`
`eligibility.” CBM2014-00190, Pap. 47 at 27; CBM2015-00028, Pap. 44 at 30-31;
`
`CBM2015-00029, Pap. 43 at 31-32; see also Accenture Global Servs., GmbH v.
`
`Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed. Cir. 2013) (“Patent eligi-
`
`bility under § 101 presents an issue of law . . . . [that] may contain underlying fac-
`
`tual issues.”); Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053,
`
`1055-56 (Fed. Cir. 1992) (“[D]etermination of [statutory subject matter] may re-
`
`quire findings of underlying facts specific to the particular subject matter and its
`
`mode of claiming.”); YYZ, 2015 WL 5886176, at *8; CBM2015-00017, Pap. 46 at
`
`14-15 (citing expert testimony in finding related claims are not directed to an In-
`
`ternet-specific problem); CBM2015-00028, Pap. 44 at 16 (same); CBM2015-
`
`
`
`9
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`00029, Pap. 43 at 17-18 (same); CBM2015-00031, Pap. 45 at 19 (same);
`
`CBM2015-00032, Pap. 46 at 19-20 (same); CBM2015-00033, Pap. 40 at 19-20
`
`(same); CBM2014-00190, Pap. 47 at 11-12 (citing expert testimony in finding re-
`
`lated claims have no inventive concept); CBM2014-00192, Pap. 45 at 9 (same);
`
`CBM2014-00193, Pap. 45 at 9 (same); CBM2014-00194, Pap. 51 at 10-11 (same);
`
`cf. Versata, 793 F.3d at 1334 (affirming Board’s reliance on petitioner’s expert
`
`over patent owner’s expert in determining claimed steps were well-known, routine,
`
`and conventional). And there is no dispute that Dr. Kelly is competent to opine on
`
`the factual issues. Cf. Mot. 7-12. Because Dr. Kelly’s opinions relate to the factu-
`
`al issues that underlie the § 101 inquiry, 37 C.F.R. § 42.65 is inapplicable, and Dr.
`
`Kelly’s opinions should not be excluded.
`
`Second, there is no support for PO’s argument—indeed, PO cites none—that
`
`experts, such as Dr. Kelly—who is an engineer, not an attorney—are required to
`
`review legal opinions on § 101 or compare the challenged claims to claims ad-
`
`dressed in such legal opinions to determine a false positive or negative rate. Dr.
`
`Kelly analyzed the facts and information relevant to the two-step analysis required
`
`by Mayo. See, e.g., Pap. 21 at 12, 20-21.
`
`Third, PO misapprehends the law in arguing that the Kelly Declaration
`
`should be excluded because Dr. Kelly looks for an inventive concept over the prior
`
`art, rather than over the abstract idea itself. The relevant inquiry is not, as PO sug-
`
`
`
`10
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`gests, whether a claim’s “additional features” are inventive over the abstract idea,
`
`but rather whether they provide an inventive concept despite that the claim is di-
`
`rected to an abstract idea. The required determination is whether the elements left
`
`after removing the abstract idea (i.e., “additional features”) amount to an “in-
`
`ventive concept,” such that they “‘transform the nature of the claim’ into a patent-
`
`eligible application.” Alice, 134 S. Ct. at 2355, 2357; see also Mayo Collaborative
`
`Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1304 (2012) (distinguishing §
`
`101 inquiry from §§ 102 and 103). As stated above, Dr. Kelly performed the cor-
`
`rect analysis required by Mayo. See, e.g., Pap. 21 at 12, 20-21.
`
`Finally, PO misses the mark in seeking to exclude the portions of the Kelly
`
`Declaration that “rel[y] upon an exhibit that is objected to herein for the reasons set
`
`forth in those objections.” Mot. 12. The only exhibits that are both cited in the
`
`Kelly Declaration and objected to by PO are the Prior Art Exhibits discussed in §
`
`II, supra. However, as detailed in § II, the Kelly Declaration’s description of the
`
`art at the relevant time is clearly relevant to the § 101 inquiry. For the same rea-
`
`sons the Prior Art Exhibits are relevant, expert analyses of those exhibits are rele-
`
`vant under FRE 401 and should not be excluded. See CBM2015-00028, Pap. 44 at
`
`30 (“Because this review is under § 101, analysis of the state of the prior art … is
`
`relevant to the second prong of the Alice and Mayo inquiry.”); CBM2015-00029,
`
`Pap. 43 at 31; CBM2014-00190, Pap. 47 at 27. Dr. Kelly’s unrebutted conclusions
`
`
`
`11
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`regarding what would be considered well-known, routine, and conventional (see,
`
`e.g., Ex. 1019 §§ VI and VII) are entitled to weight.
`
`IV. The Board Should Not Exclude Exhibit 1040
`
`Contrary to PO’s argument (Mot. 12), the sworn admissions of its expert in
`
`prior proceedings regarding what was well-known at the time of the challenged pa-
`
`tents are relevant to the § 101 inquiry. PO does not dispute that Dr. Katz would
`
`have qualified as a person of ordinary skill in the art in the relevant time period,
`
`and, indeed, proffered Dr. Katz as an expert with the knowledge of a person of or-
`
`dinary skill in the art in prior proceedings on related patents. Therefore, Dr. Katz’s
`
`testimony, which provides further evidence that a person of ordinary skill in the art
`
`would have understood various elements of the challenged claims to be well-
`
`known, routine, and conventional in the relevant time period, is highly relevant and
`
`should not be excluded under FRE 401.
`
`Further, PO’s hearsay argument is inapplicable. The cited portions of Ex.
`
`1040 are not hearsay at least because they are party admissions under FRE
`
`801(d)(2)(C)2 and 801(d)(2)(D).3 There is no dispute that Dr. Katz was retained by
`
`2 FRE 801(d)(2)(C) provides that a statement is not hearsay where it “is offered
`
`against an opposing party and . . . was made by a person whom the party author-
`
`ized to make a statement on the subject.” See, e.g., Samaritan Health Ctr. v. Sim-
`
`plicity Health Care Plan, 459 F. Supp. 2d 786, 799 (E.D. Wis. 2006) (“[B]ecause
`
`
`
`12
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`PO in a prior proceeding involving the same parties to provide expert opinion on
`
`the patentability of related patents, including related questions regarding prior art
`
`and one of ordinary skill, or that he was authorized by PO to provide his sworn
`
`declaration and deposition testimony on PO’s behalf.4 PO unquestionably had the
`
`opportunity and motive at the deposition to cross-examine Dr. Katz, its own expert
`
`providing sworn testimony on its behalf, on those topics. Further, PO has been on
`
`First Health proffers its opponent’s expert report against that opponent, the report
`
`can be considered an admission by a party-opponent, which falls outside the hear-
`
`say definition. Fed.R.Evid. 801(d).”).
`
`3 FRE 801(d)(2)(D) provides that a statement is not hearsay where it “was made by
`
`the party’s agent or employee on a matter within the scope of that relationship and
`
`while it existed.”
`
`4 In addition, the Board may consider, as an analogous situation, that the Federal
`
`Rules of Civil Procedure would allow for Dr. Katz’s prior testimony to be admissi-
`
`ble in a court proceeding under Rule 32, which provides for the admission of all or
`
`part of a deposition taken in a prior matter where the parties and subject matter of
`
`the instant matter are the same as involved in the prior matter, as is true here. See
`
`FRCP 32(a)(1), 32(a)(4)(B), and 32(a)(8); see also, e.g., Hub v. Sun Valley Co.,
`
`682 F.2d 776, 778 (9th Cir. 1982) (Rule 32(a)(8) requirements should be “con-
`
`strued liberally.”).
`
`
`
`13
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`notice since the filing of the Petition that Petitioner intended to rely on the admis-
`
`sions of Dr. Katz, but chose not to seek deposition or otherwise take discovery of
`
`Dr. Katz in this proceeding. And, even if Dr. Katz’s admissions were hearsay
`
`(they are not), they are subject to the residual hearsay exception under FRE 807.5
`
`Although other evidence demonstrates that the challenged claims are not inventive,
`
`Dr. Katz’s admissions are highly probative, given that PO—who hired and prof-
`
`fered Dr. Katz as an expert on these subjects—cannot credibly deny them. And, as
`
`noted above, Dr. Katz’s sworn testimony is certainly sufficiently trustworthy and
`
`its admission would serve the interests of justice.
`
`For the foregoing reasons, PO’s most recent attempts to exclude this rele-
`
`vant, admissible evidence should again be rejected.
`
`
`June 27, 2016
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`By /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`
`
`5 FRE 807 provides that hearsay may be admitted even where it is not specifically
`
`covered by a hearsay exception where it is sufficiently trustworthy, is offered as
`
`evidence of material fact, is more probative on that point than other evidence that
`
`can be obtained through reasonable efforts, and where admitting it will best serve
`
`the purposes of the FRE and the interests of justice.
`
`
`
`14
`
`
`
`Case CBM2015-00127
`Patent 7,334,720
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PETITIONER
`
`APPLE INC.’S OPPOSITION TO PATENT OWNER’S MOTION TO EX-
`
`CLUDE was served on June 27, 2016, to the following counsel via e-mail, pursu-
`
`ant to the parties’ agreement concerning service:
`
`Michael R. Casey
`Wayne M. Helge
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Facsimile: (571) 765-7200
`mcasey@dbjg.com
`whelge@davidsonberquist.com
`SmartFlash-CBM@dbjg.com
`
`Attorneys for Patent Owner Smartflash LLC
`
`
`
`
`
`
`
`/s/ Sharon Lee
`Sharon Lee
`
`
`
`ROPES & GRAY LLP
`
`15
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
