UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`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 CBM2015-00129
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`Patent 7,942,317 B2
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`____________
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`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00129
`
`Patent 7,942,317 B2
`
`____________
`
`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`
`
`
`
`
`
`
`
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`
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`Pursuant to 37 C.F.R. § 42.64, Patent Owner hereby objects to the
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`admissibility of certain evidence submitted with Petitioner’s Petition, Paper 3
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`(“Petition”). Patent Owner’s objections are based on the Federal Rules of
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`Evidence and the Board Rules and are set forth with particularity below.
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`
`
`Exhibit 1002
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`Patent Owner objects to Exhibit 1002, the Declaration of Dr. Justin Douglas
`
`Tygar (“Tygar Declaration”), in its entirety as the Tygar Declaration does not state
`
`the relative evidentiary weight (e.g., substantial evidence versus preponderance of
`
`the evidence) that Dr. Tygar used in arriving at his conclusions. The Board cannot
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`assess under FRE 702 whether Dr. Tygar’s opinion testimony is “the product of
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`reliable principles and methods” or if Dr. Tygar “reliably applied the principles and
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`methods to the facts of the case” given that Dr. Tygar did not disclose the standard
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`against which he measured the evidence in arriving at his opinions.
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`Additionally, the Tygar Declaration does not demonstrate that Dr. Tygar is
`
`an expert whose testimony is relevant to the issue of patent eligibility under 35
`
`U.S.C. § 101 the only issue on which this CBM was instituted. Institution
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`Decision, Paper 8 at 22. Dr. Tygar has not shown that his opinions are proper
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`expert opinions upon which the PTAB can rely as opposed to inadmissible lay
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`opinions. FRE 701 and 702.
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`
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`2
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`
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`The Tygar Declaration does not demonstrate that the methods used by Dr.
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`Tygar in formulating his opinions are reliable and repeatable as required by
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`Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 US 579 (1993) and/or FRE
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`702. The Tygar Declaration does not show how Dr. Tygar’s methods used in
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`formulating his opinion on § 101 patent eligibility are reliable and repeatable,
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`given that Dr. Tygar does not provide any analysis of any subject matter deemed to
`
`be § 101 eligible under his methodology. As such, the Tygar Declaration is
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`inadmissible.
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`The Tygar Declaration is further objected to to the extent that any paragraph
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`relies upon an exhibit that is objected to herein for the reasons set forth in those
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`objections. Any paragraph in the Tygar Declaration that relies upon any exhibit
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`not relied upon by the PTAB to institute this proceeding is further objected to as
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`not being relevant and therefore being inadmissible under FRE 401 and 402.
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`
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`Exhibits 1004, 1005, 1006, 1007, 1008, 1009, 1014, 1022, 1023, and 1024
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`Neither the Petition nor the Tygar Declaration cites Exhibits 1004, 1005,
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`1006, 1007, 1008, 1009, 1014, 1022, 1023, or 1024 as potentially invalidating prior
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`art, either alone or in combination with any other reference. The PTAB Decision
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`did not base any of its analysis on Exhibits 1004, 1005, 1006, 1007, 1008, 1009,
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`1014, 1022, 1023, or 1024. Thus, these exhibits do not appear to make a fact of
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`3
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`
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`consequence in determining this action more or less probable than it would be
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`without these exhibits. As such, Exhibits 1004, 1005, 1006, 1007, 1008, 1009,
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`1014, 1022, 1023, and 1024 do not pass the test for relevant evidence under FRE
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`401 and are thus not admissible per FRE 402.
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`Patent Owner further objects to Exhibits 1004, 1005, 1006, 1007, 1008,
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`1009, 1014, 1022, 1023, and 1024 on authenticity grounds under FRE 901.
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`Patent Owner further objects to Exhibits 1022, 1023, and 1024 on relevancy
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`grounds because their subject matter (land leases, libraries, and toll roads,
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`respectively) are not relevant to the technological solution to internet piracy set
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`forth in the ‘317 Patent. Failing the test for relevant evidence under FRE 401,
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`these Exhibits are not admissible per FRE 402.
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`
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`Exhibit 1015
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`Patent Owner objects to the admissibility of Exhibit 1015 on grounds that it
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`is cumulative evidence and irrelevant. The Petition cites to Exhibits 1015 for the
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`sole purpose of showing Patent Owner’s characterization of the ‘317 Patent as
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`“generally cover[ing] a portable data carrier for storing data and managing access
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`to the data via payment information and/or use status rules.” Petition at 6 (citing
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`Ex. 1015 ¶ 1). Petitioner’s expert, Dr. Tygar (Ex. 1002) does not cite to Exhibit
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`1015. Petitioner does not need to cite to Exhibit 1015 to characterize what the
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`4
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`
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`‘317 Patent relates to when Exhibit 1001, the actual ‘317 Patent, is in evidence.
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`Under FRE 1004, other evidence of the content of a writing (here the ‘317 Patent)
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`is admissible if the original is lost, cannot be obtained, has not been produced, or
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`the writing is not closely related to a controlling issue. None of those apply given
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`that the ‘317 Patent is in evidence and is the subject of the trial. Exhibit 1015 is
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`also objected to under FRE 403 as cumulative of Exhibit 1001.
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`Patent Owner’s characterization of the ‘317 Patent is not relevant to any of
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`the issues here. Being irrelevant evidence, Exhibit 1015 is not admissible per FRE
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` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`5
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`402.
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`Dated: December 8, 2015
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PATENT OWNER’S
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`OBJECTIONS TO ADMISSIBILITY OF EVIDENCE in CBM2015-00129 was
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`served today, by agreement of the parties by emailing a copy to counsel for the
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`Petitioner as follows:
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`QE-SF-PTAB-Service@quinnemanuel.com
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`Dated: December 8, 2015
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` /
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` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`6
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