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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`APPLE 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 CBM2015-00130
`Patent 8,061,598 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
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00130
`Patent 8,061,598 B2
`____________
`
`
`
`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
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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 1,
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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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`
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`Exhibits 1002 and 1038
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`Patent Owner objects to the admissibility of Exhibits 1002 and 1038 on
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`grounds that they are cumulative evidence and irrelevant. The Petition cites to
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`Exhibits 1002 for the sole purpose of showing Patent Owner’s characterization of
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`the ‘598 Patent as “generally cover[ing] a portable data carrier for storing data and
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`managing access to the data via payment information and/or use status rules” and
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`“also generally cover[ing] a computer network … that serves data and manages
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`access to data by, for example, validating payment information.” Petition at 26-27
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`(citing Ex. 1002 ¶ 17). The Petition cites to Exhibit 1038 for the sole purpose of
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`showing the inventor’s trial testimony describing the inventions. Id. at 27 (citing
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`Ex. 1038 at 59:12-15). Petitioner’s expert, John P. J. Kelly, Exhibit 1019, (“Kelly
`
`Declaration”) does not cite to Exhibits 1002 or 1038. Petitioner does not need to
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`cite to Exhibits 1002 and 1038 to characterize what the ‘598 Patent relates to when
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`Exhibit 1001, the actual ‘598 Patent, is in evidence. Under FRE 1004, other
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`evidence of the content of a writing (here the ‘598 Patent) is admissible if the
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`2
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`
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`original is lost, cannot be obtained, has not been produced, or the writing is not
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`closely related to a controlling issue. None of those apply given that the ‘598
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`Patent is in evidence and is the subject of the trial. Exhibits 1002 and 1038 are
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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 ‘598 Patent is not relevant to any of
`
`the issues here. Being irrelevant evidence, Exhibits 1002 and 1038 are not
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`admissible per FRE 402.
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`
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`Exhibit 1005
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`Patent Owner objects to the admissibility of Exhibit 1005 on grounds that it
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`is hearsay under FRE 801 and thus inadmissible under FRE 802. Patent Owner
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`also objects to the admissibility of Exhibit 1005 on grounds that its purported
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`authentication does not meet the requisites of FRE 901.
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`
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`Exhibits 1003, 1004, 1006, 1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016,
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`1017, 1018, 1025, 1026, 1027, 1028, 1029, 1031, 1032, 1033, 1034, 1035, 1036,
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`and 1037
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`Neither the Petition nor the Kelly Declaration cites Exhibits 1003, 1004,
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`1006, 1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016, 1017, 1018, 1025, 1026,
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`1027, 1028, 1029, 1031, 1032, 1033, 1034, 1035, 1036, or 1037 as potentially
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`
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`3
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`
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`invalidating prior art, either alone or in combination with any other reference. The
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`PTAB Decision did not base any of its analysis on Exhibits 1003, 1004, 1006,
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`1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016, 1017, 1018, 1025, 1026, 1027,
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`1028, 1029, 1031, 1032, 1033, 1034, 1035, 1036, or 1037. Thus, these exhibits do
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`not appear to make a fact of consequence in determining this action more or less
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`probable than it would be without these exhibits. As such, Exhibits 1003, 1004,
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`1006, 1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016, 1017, 1018, 1025, 1026,
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`1027, 1028, 1029, 1031, 1032, 1033, 1034, 1035, 1036, and 1037 do not pass the
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`test for relevant evidence under FRE 401 and are thus not admissible per FRE 402.
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`
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`Exhibit 1019
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`Patent Owner objects to Exhibit 1019, the Kelly Declaration, in its entirety
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`as the Kelly Declaration does not demonstrate that Dr. Kelly is an expert whose
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`testimony is relevant to the issue of patent eligibility under 35 U.S.C. § 101, the
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`only issue on which this CBM was instituted. Dr. Kelly has not shown that his
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`opinions are proper expert opinions upon which the PTAB can rely as opposed to
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`inadmissible lay opinions. FRE 701 and 702.
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`The Kelly Declaration does not demonstrate that the methods used by Dr.
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`Kelly 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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`
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`4
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`
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`702. The Kelly Declaration does not show how Dr. Kelly’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. Kelly does not provide any analysis of any subject matter deemed to
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`be § 101 eligible under his methodology. As such, the Kelly Declaration is
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`inadmissible.
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`The Kelly 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 Kelly Declaration that relies upon any exhibit not
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`relied upon by the PTAB to institute this proceeding is further objected to as not
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`being relevant and therefore being inadmissible under FRE 401 and 402.
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`
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`Exhibit 1030
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`Exhibit 1030 is the April 8-9, 2015 Deposition Transcript of Jonathan Katz,
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`Patent Owner’s expert in CBM2014-00102/106/108/112. Patent Owner did not
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`proffer Dr. Katz as an expert in this case. As such, Patent Owner objects to Exhibit
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`1030 under FRE 401 on relevance grounds and it is not admissible per FRE 402.
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`Patent Owner further objects on grounds that it is hearsay under FRE 801 and thus
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`inadmissible under FRE 802.
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`5
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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
`
`
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`Dated: December 1, 2015
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`
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`6
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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 CBM2015-00131 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:
`
`
`
`J. Steven Baughman (steven.baughman@ropesgray.com)
`Ching-Lee Fukuda (ching-lee.fukuda@ropesgray.com)
`Megan Raymond (megan.raymond@ropesgray.com
`ApplePTABService-SmartFlash@ropesgray.com
`
`
`
`
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`
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`Dated: December 1, 2015
`
` /
`
` 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
`
`
`
`7
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