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 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 CBM2015-00130
`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 OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`Case CBM2015-00130
`Patent 8,118,221
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`
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`I. THE BOARD SHOULD NOT EXCLUDE EXHIBITS 1002 AND 1043 ........ 2
`II. THE BOARD SHOULD NOT EXCLUDE EXHIBITS 1005-07, 1010,
`1012-20, 1023, 1031-35, AND 1038-42 ............................................................ 4
`III. THE BOARD SHOULD NOT EXCLUDE EXHIBIT 1021 ............................. 9
`IV. THE BOARD SHOULD NOT EXCLUDE EXHIBIT 1037 ........................... 13
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`Case CBM2015-00130
`Patent 8,118,221
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`In response to Patent Owner’s (“PO”) Motion to Exclude (“Mot.”, Pap. 26),
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`Petitioner respectfully submits that the Board, sitting as a non-jury tribunal with
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`administrative expertise, is well-positioned to determine and assign appropriate
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`weight to the evidence presented here, without resorting to formal exclusion that
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`might later be held reversible error. See, e.g., S.E.C. v. Guenthner, 395 F. Supp. 2d
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`835, 842 n.3 (D. Neb. 2005); Builders Steel Co. v. Comm’r of Internal Revenue,
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`179 F.2d 377, 379 (8th Cir. 1950) (vacating Tax Court decision for exclusion of
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`competent, material evidence); Donnelly Garment Co. v. Nat’l Labor Relations
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`Bd., 123 F.2d 215, 224 (8th Cir. 1941) (NLRB’s refusal to receive testimonial evi-
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`dence was denial of due process). See also, e.g., Samuel H. Moss, Inc. v. F.T.C.,
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`148 F.2d 378, 380 (2d Cir. 1945), cert. denied, 326 U.S. 734 (1945) (“Even in
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`criminal trials to a jury it is better, nine times out of ten, to admit, than to exclude, .
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`. . and in such proceedings as these the only conceivable interest that can suffer by
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`admitting any evidence is the time lost, which is seldom as much as that inevitably
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`lost by idle bickering about irrelevancy or incompetence.”). But even under strict
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`application of the Rules of Evidence, cf. 77 Fed. Reg. 48,612, 48,616 (Aug. 14,
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`2012) (“42.5(a) and (b) permit administrative patent judges wide latitude in admin-
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`istering the proceedings to balance the ideal of precise rules against the need for
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`flexibility to achieve reasonably fast, inexpensive, and fair proceedings”), Petition-
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`er’s evidence here is entirely proper while PO’s objections—many of which have
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`Patent 8,118,221
`already been rejected by the Board in prior proceedings on the same and related
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`patents—are baseless.
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`I.
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`The Board Should Not Exclude Exhibits 1002 and 1043
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`Petitioner did not rely on Exs. 1002 and 1043 for “evidence of the content”
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`of the ’221 patent (cf. Mot. 2), but rather to show that PO’s and inventor Patrick
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`Racz’s own characterizations of the subject matter of the ’221 patent support Peti-
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`tioner’s contention (and the Board’s previous determination) that the ’221 patent
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`relates to a financial activity or transaction and is a covered business method pa-
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`tent. See Pap. 2 at 24. PO’s and Mr. Racz’s characterizations of the ’221 patent in
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`another proceeding are not found in the patent itself; thus, contrary to PO’s asser-
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`tions, Exs. 1002 and 1043 are not cumulative of the ’221 patent, and FRE 1004 is
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`inapplicable. Indeed, as PO admits, when confronting this same argument by PO,
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`the Board declined to exclude the same Ex. 1002 in another proceeding on a relat-
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`ed patent. While determining whether a patent is a CBM patent requires an exami-
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`nation of the claims, the Board found “[Patent Owner’s] characterization of the []
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`patent in prior proceedings is relevant to the credibility of its characterization of
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`the [same] patent in this proceeding.” Mot. 2 (citing CBM2015-00016, Pap 56 at
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`24); see also CBM2014-00102, Pap. 52 at 36; CBM2015-00017, Pap. 46 at 22;
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`CBM2015-00028, Pap. 44 at 25; CBM2015-00029, Pap. 43 at 27; CBM2015-
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`00031, Pap 45 at 29; CBM2015-00032, Pap. 46 at 28-29; CBM2015-00033, Pap.
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`2
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`Patent 8,118,221
`40 at 29. The same reasoning applies here.
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`PO again argues that “[t]here is nothing about Patent Owner’s characteriza-
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`tion of the ‘221 Patent in this proceeding … that is contradicted by Exhibits 1002
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`and 1043 such that the credibility of Patent Owner’s characterization is at issue”
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`(Mot. 3). But, as the Board found in other proceedings on related patents, “Patent
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`Owner’s argument misses the point because the credibility of Patent Owner’s char-
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`acterization is for the Board to weigh after deciding the threshold issue of admissi-
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`bility.” See, e.g., CBM2015-00016, Pap. 56 at 241; CBM2015-00017, Pap. 46 at
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`22; see also CBM2015-00028, Pap. 44 at 25-26; CBM2015-00029, Pap. 43 at 27;
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`CBM2015-00031, Pap. 45 at 29; CBM2015-00032, Pap. 46 at 29; CBM2015-
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`00033, Pap. 40 at 29. And, contrary to PO’s claim that its characterization of the
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`’221 patent is not at issue here (Mot. 3), PO disputes the financial nature of the
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`’221 patent, see Pap. 7 at 46-50; Pap. 19 at 71-75. Therefore, PO’s and Mr. Racz’s
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`admissions, which contradict PO’s arguments here, should not be excluded. See
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`CBM2015-00016, Pap. 56 at 24 (“Patent Owner’s characterization of the [] patent
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`in prior proceedings is relevant to Patent Owner’s contention in this proceeding
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`that the [same] patent does not satisfy the ‘financial in nature’ requirement” for a
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`CBM review.); CBM2015-00017, Pap. 46 at 22-23; CBM2015-00028, Pap. 44 at
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`26; CBM2015-00029, Pap. 43 at 27; CBM2015-00031, Pap. 45 at 29; CBM2015-
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`1 All emphasis herein is added unless otherwise indicated.
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`3
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`00032, Pap. 46 at 29; CBM2015-00033, Pap. 40 at 29.
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`Further, PO is wrong that Exs. 1002 and 1043 do not “appear to make a fact
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`of consequence in determining this action” merely because the Kelly Declaration
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`(Ex. 1021) and the Board’s Institution Decision (Pap. 9) do not cite them. Mot. 3-
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`4. As PO admits, both Exs. 1002 and 1043 are cited in the Petition (Pap. 2) “as
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`support for the ‘221 Patent being ‘financial in nature’ and thus CBM review eligi-
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`ble.” Mot. 2 (citing Petition at 23-26). And, Ex. 1043 is also cited in Petitioner’s
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`Reply (Pap. 23) to show that various elements of the challenged claims are not in-
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`ventive. See Pap. 23 at 10, 12. Because Exs. 1002 and 1043 reflect facts of conse-
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`quence in determining this action under FRE 401, they are relevant and should not
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`be excluded.
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`II.
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`The Board Should Not Exclude Exhibits 1005-07, 1010, 1012-20, 1023,
`1031-35, and 1038-42
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`Contrary to PO’s assertions, Exs. 1005-07, 1010, 1012-20, 1023, 1031-35,
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`and 1038-42 (“Prior Art Exhibits”) are relevant to the Board’s § 101 analysis. As
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`PO admits, when confronting the same argument from PO, the Board declined to
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`exclude similar exhibits in another proceeding on a related patent because “these
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`exhibits are relevant to the state of the art—whether the technical limitations of the
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`challenged claim were well-known, routine, and conventional—and thus, to our §
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`101 analysis.” Mot. 6 (citing CBM2015-00016, Pap. 56 at 26); see also, e.g., Alice
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`Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2357, 2359 (2014); YYZ, LLC v.
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`4
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`Patent 8,118,221
`Hewlett-Packard Co., No. 13-136-SLR, 2015 WL 5886176, at *8 (D. Del. Oct. 8,
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`2015) (“Although the § 101 inquiry is focused on the claim language, extrinsic ev-
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`idence [, such as prior art,] may be helpful in terms of understanding the state of
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`the art . . . , and whether the problem to which the patent was directed is solved us-
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`ing computer technology in unconventional ways.”); CBM2015-00017, Pap. 46 at
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`24; CBM2015-00028, Pap. 44 at 27; CBM2015-00029, Pap. 43 at 29; CBM2015-
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`00031, Pap. 45 at 31; CBM2015-00032, Pap. 46 at 30; CBM2015-00033, Pap. 40
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`at 31; CBM2014-00190, Pap. 47 at 29; CBM2014-00192, Pap. 45 at 26;
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`CBM2014-00193, Pap. 45 at 26; CBM2014-00194, Pap. 51 at 28; cf. Versata Dev.
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`Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 1336 (Fed. Cir. 2015) (affirming
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`Board’s reliance on petitioner’s expert in determining that claimed steps were well-
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`known, routine, and conventional and Board’s finding that “claims at issue do not
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`recite any improvement in computer technology”). Nothing in this proceeding
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`should change that outcome. Indeed, both the Petition and the Kelly Declaration
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`rely on Prior Art Exhibits to show (1) the state of the art, (2) that the basic concept
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`of controlling access based on payment and/or rules—to which the challenged
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`claims are directed—was well-known in the prior art, and/or (3) that the elements
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`disclosed by the challenged claims were well-known, routine, and conventional.
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`See, e.g., Pap. 2 at 6-19 (Overview of Field of the Claimed Invention), 44-45, 53,
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`55-70 (citing Prior Art Exhibits); Ex. 1021 ¶¶ 23-73 (State of the Art), 75-79, 81,
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`5
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`Patent 8,118,221
`83-84, 88, 90-91(citing Prior Art Exhibits). And, there is no requirement that the
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`Board’s Institution Decision cite every piece of potentially relevant evidence in its
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`Institution Decisions for the evidence to “make a fact of consequence in determin-
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`ing this action,” as PO contends. Mot. 5. Further, in its final written decisions in
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`prior proceedings on the same and related patents, the Board cited prior art refer-
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`ences in determining patent eligibility. CBM2014-00194, Pap. 51 at 19 (relying on
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`prior art to show concepts claimed in the ’221 patent were known); CBM2015-
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`00016, Pap. 56 at 13 (same); CBM2015-00017, Pap. 46 at 17-18 (same);
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`CBM2015-00028, Pap. 44 at 19 (same); CBM2015-00029, Pap. 43 at 21 (same);
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`CBM2015-00031, Pap. 45 at 22 (same); CBM2015-00032, Pap. 46 at 22-23
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`(same); CBM2015-00033, Pap. 40 at 22-23 (same); CBM2014-00190, Pap. 47 at
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`19-20 (same); CBM2014-00192, Pap. 45 at 13-14 (same); CBM2014-00193, Pap.
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`45 at 17 (same).
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`PO also puts the cart before the horse in arguing that the Prior Art Exhibits
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`are not relevant because “[w]hether the technical limitations of the challenged
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`claim were well-known, routine, and conventional is only relevant after finding
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`that a claim is directed to an abstract idea and ... [h]ere, the claims at issue are not
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`directed to an abstract idea.” (Mot. 6-7). It would be nonsensical to exclude the
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`Prior Art Exhibits before the Board determines whether it needs to perform the
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`second step of the Mayo analysis, as PO urges. This is particularly so in light of the
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`6
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`Patent 8,118,221
`fact that the Board has already determined that a multitude of related claims—
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`including claims in the same ’221 patent—are directed to an abstract idea.
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`CBM2014-00194, Pap. 51 at 8-9; CBM2015-00016, Pap. 56 at 8-9; CBM2015-
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`00017, Pap. 46 at 7-9; CBM2015-00028, Pap. 44 at 8-10; CBM2015-00029, Pap.
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`43 at 9-11; CBM2015-00031, Pap. 45 at 11-13; CBM2015-00032, Pap. 46 at 11-
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`13; CBM2015-00033, Pap. 40 at 11-13; CBM2014-00190, Pap. 47 at 8-10;
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`CBM2014-00192, Pap. 45 at 7-9; CBM2014-00193, Pap. 45 at 8-9. The Prior Art
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`Exhibits are unquestionably relevant to the § 101 analysis; there is no basis to ex-
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`clude them.
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`Moreover, in arguing that the Prior Art Exhibits should be excluded, PO im-
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`properly raises for the first time a new substantive argument regarding the Federal
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`Circuit’s recent decision in Enfish, LLC v. Microsoft Corp., No. 2015-1244, 2016
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`WL 2756255 (Fed. Cir. May 12, 2016). See Mot. 6-7; Motorola Mobility LLC v.
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`Intellectual Ventures I LLC, IPR2014-00501, Pap. 48 at 31 (“A motion to exclude
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`is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply
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`or supporting evidence is of appropriate scope.”). Even if this analysis were
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`properly presented in this context, it is wrong, and ignores more analogous cases,
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`such as In re TLI Communications LLC Patent Litigation, No. 2015-1372, 2016
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`WL 2865693 (Fed. Cir. May 17, 2016) and Ultramercial, Inc. v. Hulu, LLC, 772
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`F.3d 709 (Fed. Cir. 2014). Indeed, contrary to PO’s argument (Mot. 6-7), the chal-
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`7
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`Patent 8,118,221
`lenged claims here are not “directed to an improvement to computer functionality”
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`like the “innovative,” “self-referential table for a computer database” claimed in
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`Enfish. 2016 WL 2756255, at *1, *5. Rather, the challenged claims are like the
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`claims held ineligible in TLI—another recent decision noticeably absent from PO’s
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`Motion—and Ultramercial. In TLI, the Federal Circuit distinguished the Enfish
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`claims based on the fact that the TLI claims, like the challenged claims here, “are
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`directed to the use of conventional or generic technology in a nascent but well-
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`known environment.” TLI, 2016 WL 2865693, at *3. Like the TLI claims, and
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`like related claims already found patent ineligible, the challenged claims “perform[]
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`generic computer functions such as storing, receiving, and extracting data” using
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`“physical components” (e.g., interface, program store, processor, data carrier, elec-
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`tronic payment system) that “behave exactly as expected according to their ordi-
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`nary use” and “merely provide a generic environment in which to carry out the ab-
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`stract idea” of controlling access to content based on payment and/or rules. Id. at
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`*3, *4, *7; see, e.g., Pap. 2 at 48, 52-70; Pap. 23 at 6-12; see also CBM2015-00016,
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`Pap. 56 at 9-17; CBM2015-00017, Pap. 46 at 9-18; CBM2015-00028, Pap. 44 at
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`10-20; CBM2015-00029, Pap. 43 at 11-21; CBM2015-00031, Pap. 45 at 13-23;
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`CBM2015-00032, Pap. 46 at 13-23; CBM2015-00033, Pap. 40 at 13-23;
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`CBM2014-00190, Pap. 47 at 10-20; CBM2014-00192, Pap. 45 at 9-18; CBM2014-
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`00193, Pap. 45 at 9-17; CBM2014-00194, Pap. 51 at 10-20; cf. Enfish, 2016 WL
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`8
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`Patent 8,118,221
`2756255, at *6 (“[T]he self-referential table functions differently than conventional
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`database structures.”). And, like another ’221 patent claim that the Board already
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`determined are ineligible, the challenged claims here “are like the claims at issue in
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`Ultramercial,” which “condition and control access based on viewing an adver-
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`tisement.” CBM2014-00194, Pap. 51 at 17. “Similar to the claims in Ultramercial,
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`the majority of limitations in [the challenged claim] comprise this abstract concept
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`of conditioning and controlling access to data.” Id. Read together, Enfish, TLI,
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`and Ultramercial further confirm that the challenged claims are ineligible.
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`III. The Board Should Not Exclude Exhibit 1021
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`PO does not dispute Dr. Kelly’s qualifications or competence, and instead
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`seeks to exclude the Kelly Declaration based on three meritless arguments: (1) Dr.
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`Kelly’s opinions are not legal opinions and §§ 101 and 112 are “purely legal is-
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`sues” (Mot. 7-9), (2) Dr. Kelly did not “test the method” he used “against known
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`[§ 101] decisions” to determine a “false [positive/negative] rate” (Mot. 10-11), and
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`(3) Dr. Kelly’s opinions “reflect an analysis that looks for an inventive concept
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`over the prior art, rather than over the abstract idea itself” (Mot. 11-12 (emphases
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`in original)).
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`First, the Board has already rejected PO’s argument that expert opinions are
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`not relevant to § 101 issues in another proceeding on the same patent, finding that
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`an expert’s opinions on § 101 “relate to the underlying factual issues related to pa-
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`9
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`Patent 8,118,221
`tent eligibility.” CBM2014-00194, Pap. 51 at 26-27; see also Accenture Global
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`Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed. Cir.
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`2013) (“Patent eligibility under § 101 presents an issue of law . . . . [that] may con-
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`tain underlying factual issues.”); Arrhythmia Research Tech., Inc. v. Corazonix
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`Corp., 958 F.2d 1053, 1055-56 (Fed. Cir. 1992) (“[D]etermination of [statutory
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`subject matter] may require findings of underlying facts specific to the particular
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`subject matter and its mode of claiming.”); YYZ, 2015 WL 5886176, at *8;
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`CBM2015-00017, Pap. 46 at 14-15 (citing expert testimony in finding related
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`claims are not directed to an Internet-specific problem); CBM2015-00028, Pap. 44
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`at 16 (same); CBM2015-00029, Pap. 43 at 17-18 (same); CBM2015-00031, Pap.
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`45 at 19 (same); CBM2015-00032, Pap. 46 at 19-20 (same); CBM2015-00033,
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`Pap. 40 at 19-20 (same); CBM2014-00190, Pap. 47 at 11-12 (citing expert testi-
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`mony in finding related claims have no inventive concept); CBM2014-00192, Pap.
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`45 at 9 (same); CBM2014-00193, Pap. 45 at 9 (same); CBM2014-00194, Pap. 51
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`at 10-11 (same); cf. Versata, 793 F.3d at 1334 (affirming Board’s reliance on peti-
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`tioner’s expert over patent owner’s expert in determining claimed steps were well-
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`known, routine, and conventional). And there is no dispute that Dr. Kelly is com-
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`petent to opine on the factual issues. Cf. Mot. 7-12. Similarly, Dr. Kelly’s testi-
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`mony related to § 112 should not be excluded “[b]ecause this testimony is related
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`to how one skilled in the art would understand certain claim limitations”
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`10
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`(CBM2015-00016, Pap. 56 at 28), which is unquestionably relevant to § 112 de-
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`terminations. See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124
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`(2014) (“[W]e hold that a patent is invalid for indefiniteness if its claims … fail to
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`inform, with reasonable certainty, those skilled in the art about the scope of the in-
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`vention.”); see also CBM2015-00016, Pap. 56 at 22 (relying on expert testimony in
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`determining related patent claim indefinite under 35 U.S.C. § 112). Because Dr.
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`Kelly’s opinions relate to the factual issues that underlie the §§ 101 and 112 inquir-
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`ies, 37 C.F.R. § 42.65 is inapplicable, and Dr. Kelly’s opinions should not be ex-
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`cluded.
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`Second, there is no support for PO’s argument—indeed, PO cites none—that
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`experts, such as Dr. Kelly—who is an engineer, not an attorney—are required to
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`review legal opinions on § 101 or compare the challenged claims to claims ad-
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`dressed in such legal opinions to determine a false positive or negative rate. Dr.
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`Kelly analyzed the facts and information relevant to the two-step analysis required
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`by Mayo. See, e.g., Pap. 23 at 11, 21.
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`Third, PO misapprehends the law in arguing that the Kelly Declaration
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`should be excluded because Dr. Kelly looks for an inventive concept over the prior
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`art, rather than over the abstract idea itself. The relevant inquiry is not, as PO sug-
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`gests, whether a claim’s “additional features” are inventive over the abstract idea,
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`but rather whether they provide an inventive concept despite that the claim is di-
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`11
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`rected to an abstract idea. The required determination is whether the elements left
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`after removing the abstract idea (i.e., “additional features”) amount to an “in-
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`ventive concept,” such that they “‘transform the nature of the claim’ into a patent-
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`eligible application.” Alice, 134 S. Ct. at 2355, 2357; see also Mayo Collaborative
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`Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1304 (2012) (distinguishing §
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`101 inquiry from §§ 102 and 103). As stated above, Dr. Kelly performed the cor-
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`rect analysis required by Mayo. See, e.g., Pap. 23 at 11, 21.
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`Finally, PO misses the mark in seeking to exclude the portions of the Kelly
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`Declaration that “rel[y] upon an exhibit that is objected to herein for the reasons set
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`forth in those objections.” Mot. 12. The only exhibits that are both cited in the
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`Kelly Declaration and objected to by PO are the Prior Art Exhibits discussed in §
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`II, supra. However, as detailed in § II, the Kelly Declaration’s description of the
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`art at the relevant time is clearly relevant to the § 101 inquiry. For the same rea-
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`sons the Prior Art Exhibits are relevant, expert analyses of those exhibits are rele-
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`vant under FRE 401 and should not be excluded. See CBM2015-00016, Pap. 56 at
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`27-28 (“Because this review is under § 101, analyses of the state of the prior art …
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`is relevant to the second prong of the Alice and Mayo inquiry.”); CBM2014-00194,
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`Pap. 51 at 26-27. Dr. Kelly’s unrebutted conclusions regarding what would be
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`considered well-known, routine, and conventional (see, e.g., Ex. 1021 §§ VI and
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`VII) are entitled to weight.
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`12
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`IV. The Board Should Not Exclude Exhibit 1037
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`Contrary to PO’s argument (Mot. 12), the sworn admissions of its expert in
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`prior proceedings regarding what was well-known at the time of the challenged pa-
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`tents are relevant to the § 101 inquiry. PO does not dispute that Dr. Katz would
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`have qualified as a person of ordinary skill in the art in the relevant time period,
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`and, indeed, proffered Dr. Katz as an expert with the knowledge of a person of or-
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`dinary skill in the art in prior proceedings on the same and related patents. There-
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`fore, Dr. Katz’s testimony, which provides further evidence that a person of ordi-
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`nary skill in the art would have understood various elements of the challenged
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`claims to be well-known, routine, and conventional in the relevant time period, is
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`highly relevant and should not be excluded under FRE 401.
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`Further, PO’s hearsay argument is inapplicable. The cited portions of Ex.
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`1037 are not hearsay at least because they are party admissions under FRE
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`801(d)(2)(C)2 and 801(d)(2)(D).3 There is no dispute that Dr. Katz was retained by
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`2 FRE 801(d)(2)(C) provides that a statement is not hearsay where it “is offered
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`against an opposing party and . . . was made by a person whom the party author-
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`ized to make a statement on the subject.” See, e.g., Samaritan Health Ctr. v. Sim-
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`plicity Health Care Plan, 459 F. Supp. 2d 786, 799 (E.D. Wis. 2006) (“[B]ecause
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`First Health proffers its opponent’s expert report against that opponent, the report
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`13
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`Case CBM2015-00130
`Patent 8,118,221
`PO in a prior proceeding involving the same parties to provide expert opinion on
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`the patentability of the same ‘221 patent, including related questions regarding pri-
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`or art and one of ordinary skill, or that he was authorized by PO to provide his
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`sworn declaration and deposition testimony on PO’s behalf.4 PO unquestionably
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`had the opportunity and motive at the deposition to cross-examine Dr. Katz, its
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`own expert providing sworn testimony on its behalf, on those topics. Further, PO
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`has been on notice since the filing of the Petition that Petitioner intended to rely on
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`can be considered an admission by a party-opponent, which falls outside the hear-
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`say definition. Fed.R.Evid. 801(d).”).
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`3 FRE 801(d)(2)(D) provides that a statement is not hearsay where it “was made by
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`the party’s agent or employee on a matter within the scope of that relationship and
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`while it existed.”
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`4 In addition, the Board may consider, as an analogous situation, that the Federal
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`Rules of Civil Procedure would allow for Dr. Katz’s prior testimony to be admissi-
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`ble in a court proceeding under Rule 32, which provides for the admission of all or
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`part of a deposition taken in a prior matter where the parties and subject matter of
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`the instant matter are the same as involved in the prior matter, as is true here. See
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`FRCP 32(a)(1), 32(a)(4)(B), and 32(a)(8); see also, e.g., Hub v. Sun Valley Co.,
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`682 F.2d 776, 778 (9th Cir. 1982) (Rule 32(a)(8) requirements should be “con-
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`strued liberally.”).
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`Case CBM2015-00130
`Patent 8,118,221
`the admissions of Dr. Katz, but chose not to seek deposition or otherwise take dis-
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`covery of Dr. Katz in this proceeding. And, even if Dr. Katz’s admissions were
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`hearsay (they are not), they are subject to the residual hearsay exception under
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`FRE 807.5 Although other evidence demonstrates that the challenged claims are
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`not inventive, Dr. Katz’s admissions are highly probative, given that PO—who
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`hired and proffered Dr. Katz as an expert on these subjects—cannot credibly deny
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`them. And, as noted above, Dr. Katz’s sworn testimony is certainly sufficiently
`
`trustworthy and its admission would serve the interests of justice.
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`For the foregoing reasons, PO’s most recent attempts to exclude this rele-
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`vant, admissible evidence should again be rejected.
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`
`June 27, 2016
`
`
`
`
`
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`
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`
`
`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
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`evidence of material fact, is more probative on that point than other evidence that
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`can be obtained through reasonable efforts, and where admitting it will best serve
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`the purposes of the FRE and the interests of justice.
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`15
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`Case CBM2015-00130
`Patent 8,118,221
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`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-
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`CLUDE was served on June 27, 2016, to the following counsel via e-mail, pursu-
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`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
`
`16
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