CBM2015-00131
`U.S. Patent No. 8,061,598
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00131
`Patent 8,061,598
`______________________
`
`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
`
`
`U.S. Patent No. 8,061,598
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00131
`Patent 8,061,598
`______________________
`
`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
`
`
`
`CBM2015-00131
`U.S. Patent No. 8,061,598
`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 18) 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
`
`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”);
`
`37 C.F.R. § 42.61 (“Admissibility”); 37 C.F.R. § 42.6 (“Filing of documents,
`
`including exhibits; service”); F.R.E. 901 (“Authenticating or Identifying
`
`Evidence”); F.R.E. 1002 (“Requirement of the Original”); and F.R.E. 1003
`
`(“Admissibility of Duplicates”).
`
`
`
`2
`
`
`
`CBM2015-00131
`U.S. Patent No. 8,061,598
`Petitioner objects to the use of Exhibit 2076 under F.R.E. 901, 1002, 1003,
`
`37 C.F.R. § 42.6 and 37 C.F.R. § 42.61 because Patent Owner failed to file or
`
`serve Exhibit 2076 and fails to provide the authentication required for the
`
`document. Although Patent Owner’s Response appears to rely on an Exhibit 2076
`
`(see Paper 18 at 39), which it labels “Wechselberger Transcript,” Patent Owner
`
`failed to file or serve an Exhibit 2076, include an Exhibit 2076 in its Exhibit List,
`
`or provide any authenticating evidence.
`
`Petitioner further objects to the use of Exhibits 20761 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 18
`
`at 19-20, 39) is not relevant to the issues in the present proceeding. Apple’s expert
`
`in this proceeding is Dr. John Kelly. Exhibit 2076, however, appears to intend to
`
`refer to 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 ’598 Patent
`
`1 For the purposes of these objections and based on the exhibit filed by Patent
`
`Owner as “Exhibit 2076” in other related proceedings (see, e.g., CBM2015-00130,
`
`Exhibit 2076), Petitioner assumes that Patent Owner’s citation to Exhibit 2076 in
`
`its Patent Owner Response is intended to refer to the deposition transcript of
`
`Anthony J. Wechselberger, dated July 22, 2015 and taken in CBM2015-00028, -
`
`00029, -00031, -00032 and -00033.
`
`
`
`3
`
`
`
`CBM2015-00131
`U.S. Patent No. 8,061,598
`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 alternatives … is not inconsistent with
`
`Apple’s assertion ... that the challenged claims are unpatentable.”); Paper 18 at 39.
`
`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), which again challenge
`
`
`
`4
`
`
`
`CBM2015-00131
`U.S. Patent No. 8,061,598
`different patents than the ’598 Patent challenged here —and is cited in connection
`
`with arguments 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
`
`draftsman’s art.”) (internal quotations omitted); Paper 18 at 19-20). Additionally,
`
`admission of that evidence would be doubly improper because Apple is not a party
`
`to 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
`
`record in that deposition, including objections to form and relevance in connection
`
`with the questions in the cited portions of the transcript.
`
`Apple hereby expressly repeats and reserves all of the objections stated on
`
`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
`
`are thus irrelevant and not admissible (F.R.E. 401, 402); permitting reference
`
`to/reliance on these documents in any future submissions of Patent Owner would
`
`
`
`5
`
`
`
`CBM2015-00131
`U.S. Patent No. 8,061,598
`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.
`
`
`
`6
`
`
`
`
`
`CBM2015-00131
`U.S. Patent No. 8,061,598
`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
`
`7
`
`
`
`
`
`
`
`
`
`
`
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
