CBM2015-00130
`U.S. Patent No. 8,118,221
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00130
`Patent 8,118,221
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH LLC’S EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
`
`in a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits
`
`the following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”)
`
`Exhibits 2076 and 2105, and any reference thereto/reliance thereon, without
`
`limitation. Petitioner’s objections below apply the Federal Rules of Evidence
`
`(“F.R.E.”) as required by 37 C.F.R § 42.62.
`
`These objections address evidentiary deficiencies in the new material served
`
`by Patent Owner on February 17, 2016.
`
`
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`1
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`U.S. Patent No. 8,118,221
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00130
`Patent 8,118,221
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S OBJECTIONS TO PATENT OWNER
`SMARTFLASH LLC’S EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting
`
`in a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits
`
`the following objections to Patent Owner Smartflash, LLC’s (“Patent Owner”)
`
`Exhibits 2076 and 2105, and any reference thereto/reliance thereon, without
`
`limitation. Petitioner’s objections below apply the Federal Rules of Evidence
`
`(“F.R.E.”) as required by 37 C.F.R § 42.62.
`
`These objections address evidentiary deficiencies in the new material served
`
`by Patent Owner on February 17, 2016.
`
`
`
`1
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`CBM2015-00130
`U.S. Patent No. 8,118,221
`The following objections apply to Exhibits 2076 and 2105 as they are
`
`actually presented by Patent Owner, in the context of Patent Owner’s February 17,
`
`2016 Patent Owner’s Response (Paper 19) and not in the context of any other
`
`substantive argument on the merits of the instituted grounds in this proceeding.
`
`Petitioner expressly objects to any other purported use of these Exhibits, including
`
`as substantive evidence in this proceeding, which would be untimely and improper
`
`under the applicable rules, and Petitioner expressly asserts, reserves and does not
`
`waive any other objections that would be applicable in such a context.
`
`I. Objections to Exhibits 2076 and 2105 And Any Reference to/Reliance
`Thereon
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`Evidence objected to: Exhibits 2076 (“Deposition Transcript of Anthony J.
`
`Wechselberger dated July 22, 2015 taken in CBM2015-00028, -00029, -00031, -
`
`00032 and -00033”); 2105 (“Transcript of Deposition of Justin Douglas Tygar,
`
`Ph.D. dated January 19, 2016 taken in CBM2015-00126 and -00129”).
`
`Grounds for objection: F.R.E. 401 (“Test for Relevant Evidence”); F.R.E.
`
`402 (“General Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding
`
`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons”);
`
`and 37 C.F.R. § 42.61 (“Admissibility”).
`
`Petitioner objects to the use of Exhibits 2076 and 2105 under F.R.E. 401,
`
`402, and 403, and 37 C.F.R. § 42.61 as the cited testimony (see, e.g., Paper 19 at
`
`22-23, 49-51, 53-54, 59-61) is not relevant to the issues in the present proceeding.
`2
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`CBM2015-00130
`U.S. Patent No. 8,118,221
`Apple’s expert in this proceeding is Dr. John Kelly. Exhibit 2076, however,
`
`appears to be a transcript from the deposition of Anthony J. Wechselberger, who
`
`served as an expert for Apple in other CBM proceedings (i.e., CBM2015-00028, -
`
`00029, -00031, -00032, -00033), which challenge different patents—not the ’221
`
`Patent challenged here—and is cited in connection with arguments about
`
`preemption and/or non-infringing alternatives, neither of which is the proper
`
`inquiry under the Mayo test for patent eligibility. See Ariosa Diagnostics, Inc. v.
`
`Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
`
`Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (“[T]hat the claims do
`
`not preempt all price optimization or may be limited to price optimization in the e-
`
`commerce setting do not make them any less abstract.”); Ultramercial, Inc. v.
`
`Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014) (rejecting claims as patent
`
`ineligible despite (vacated) prior opinion stating there were “myriad ways to
`
`accomplish th[e] abstract concept that do not infringe the[] claims,” (722 F.3d
`
`1335, 1353 (Fed. Cir. 2013) (vacated))); Bancorp Servs., LLC v. Sun Life
`
`Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012) (“Sun Life’s
`
`alternative assertion of noninfringement does not detract from its affirmative
`
`defense of invalidity under § 101.”); Apple Inc. v. Smartflash LLC, CBM2015-
`
`00015, Pap. 28 at 2 (“[E]vidence of non-infringement and non-infringing
`
`
`
`3
`
`
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`CBM2015-00130
`U.S. Patent No. 8,118,221
`alternatives … is not inconsistent with Apple’s assertion ... that the challenged
`
`claims are unpatentable.”); Paper 19 at 49.
`
`Exhibit 2105 appears to be a transcript from the deposition of Dr. Justin D.
`
`Tygar, who is not an expert for Apple in this proceeding, and appears instead to
`
`have served as an expert for Google Inc.—who is not a party to this proceeding—
`
`in other CBM proceedings (i.e., CBM2015-00126, -00129)—and is cited in
`
`connection with arguments about preemption and noninfringing alternatives—
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`neither of which is the proper inquiry (see supra p. 3; Paper 19 at 49-51, 53-54, 59-
`
`61)—and about patent eligibility of system claims (see Alice Corp. Pty. Ltd. v. CLS
`
`Bank Int’l, 134 S. Ct. 2347, 2360 (2014) (“[T]he system claims are no different
`
`from the method claims in substance . . . . This Court has long warned … against
`
`interpreting § 101 in ways that make patent eligibility depend simply on the
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`draftsman’s art.”) (internal quotations omitted); Paper 19 at 22-23). And, Patent
`
`Owner cites portions of Exhibit 2105 that discuss a different patent—not the ’221
`
`Patent challenged here. See, e.g., Paper 19 at 22-23. Additionally, admission of
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`that evidence would be doubly improper because Apple is not a party to
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`CBM2015-00126 and CBM2015-00129 and was not given the opportunity to
`
`attend the deposition of Dr. Justin D. Tygar. Moreover, for these reasons, Apple
`
`further reserves the right to raise additional objections not already stated on the
`
`
`
`4
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`CBM2015-00130
`U.S. Patent No. 8,118,221
`record in that deposition, including objections to form and relevance in connection
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`with the questions in the cited portions of the transcript.
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`Apple hereby expressly repeats and reserves all of the objections stated on
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`the record in these depositions (Exhibits 2076 and 2105) as well as the deposition
`
`of Dr. John Kelly (Exhibit 2108), and affirmatively maintains all such objections.
`
`Accordingly, these Exhibits do not appear to make any fact of consequence
`
`in determining this action more or less probable than it would be without them and
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`are thus irrelevant and not admissible (F.R.E. 401, 402); permitting reference
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`to/reliance on these documents in any future submissions of Patent Owner would
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`also be impermissible, misleading, irrelevant, and unfairly prejudicial to Petitioner
`
`(F.R.E. 402, 403).
`
`Respectfully submitted,
`
`
`
`
`
`
`
`February 24, 2016
`
`
`
`
`Ching-Lee Fukuda (Backup Counsel)
`Reg. No. 44,334
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036
`P: 212-596-9336 /F: 212-596-9000
`ching-lee.fukuda@ropesgray.com
`
`By: /J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Reg. No. 47,414
`Megan F. Raymond
`Reg. No. 72,997
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue NW
`Washington, DC 20006
`P: 202-508-4606 / F: 202-383-8371
`steven.baughman@ropesgray.com
`megan.raymond@ropesgray.com
`Mailing address for all PTAB correspondence: ROPES & GRAY LLP
`IPRM–Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600
`
`Attorneys for Petitioner Apple Inc.
`
`
`
`5
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`CBM2015-00130
`U.S. Patent No. 8,118,221
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONER APPLE
`
`INC.’S OBJECTIONS TO PATENT OWNER SMARTFLASH LLC’S EXHIBITS
`
`was served on February 24, 2016, to the following Counsel for Patent Owner via e-
`
`mail, pursuant 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
`
`6
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