`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC. and 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 CBM2015-001331
`Patent 8,336,772 B2
`________________________
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`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
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`1 The challenge to claims 9 and 21 based on 35 U.S.C. § 101 in CBM2015-00132
`has been consolidated with this proceeding.
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`The Board Should Exclude Exhibits 1002 and 1043 ............................ 1
`B.
`The Board Should Exclude Exhibits 1003-08, 1011-18, 1025-28,
`1036, 1038, 1040-42, 1044, and 1045 ................................................... 2
`The Board Should Exclude Exhibit 1019 .............................................. 3
`C.
`The Board Should Exclude Exhibit 1039 .............................................. 4
`D.
`III. CONCLUSION ................................................................................................ 4
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`i
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`I.
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`INTRODUCTION
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`Patent Owner understands 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 in this trial, without resorting to formal exclusion
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`that might later be held reversible error.” Liberty Mutual Insurance Co. v.
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`Progressive Casualty Insurance Co., CBM2012-00002, Paper 66, Final Written
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`Decision (PTAB January 23, 2014)(citing S.E.C. v. Guenthner, 395 F. Supp. 2d
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`835, 842 n.3 (D. Neb. 2005)). At the same time, the Federal Rules of Evidence
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`apply (37 CFR § 42.62(a)) and it is within the Board’s authority to manage the
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`record by ruling on the admissibility of evidence based on the trial as instituted so
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`that in the event of an appeal under 35 U.S.C. § 142, a proper record exists that can
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`be transmitted to the United States Court of Appeals for the Federal Circuit
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`pursuant to 35 U.S.C. § 143.
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`II. ARGUMENT
`A. The Board Should Exclude Exhibits 1002 and 1043
`Exhibits 1002 and 1043 do not contain contradictory admissions (Paper 25 at
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`3), but instead say nothing more than the ‘772 Patent itself in Ex. 1001 at 1:23-26
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`(“This invention … relates to a portable data carrier for storing and paying for
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`data…”) and 1:62-2:3 (“reading payment information,” “validating the payment
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`information”). Exhibits 1002 and 1043 therefore are inadmissible other evidence
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`of the content of a writing under FRE 1004 and cumulative under FRE 403.
`1
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`Moreover, as noted, the Board’s reasoning that a PO’s characterization of the
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`patent, or the PO’s credibility in doing so, is relevant to the analysis of whether a
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`patent qualifies CBM review under the AIA is contrary to Blue Calypso, LLC v.
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`Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. March 1, 2016)(“[AIA] directs us to
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`examine the claims when deciding whether a patent is a CBM patent”) and
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`therefore irrelevant under FRE 401, 402.
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`B. The Board Should Exclude Exhibits 1003-08, 1011-18, 1025-28, 1036,
`1038, 1040-42, 1044, and 1045
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`Exhibits 1003-08, 1011-18, 1025-28, 1036, 1038, 1040-42, 1044, and 1045
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`were not alleged to be invalidating prior art and should be excluded. Petitioner
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`asserts that the exhibits are relevant to show the state of the art and that the basic
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`concept of controlling access based on payment and/or rules and the claim
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`elements were well-known, routine, and conventional. Paper 27 at 5. But when
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`determining whether there is an “inventive concept” the relevant analysis is
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`whether there is an “inventive concept” over the abstract idea (if one is found) and
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`not whether there is an “inventive concept” over the prior art. Alice Corp. Pty.
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`Ltd. v. CLS Bank Intern., 134 S.Ct. 2347, 2355 (2014) (Mayo step-two analysis is
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`“a search for an ‘inventive concept’—i.e., an element or combination of elements
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`that is ‘sufficient to ensure that the patent in practice amounts to significantly more
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`than a patent upon the [abstract idea] itself’”)(emphasis added). Focusing the
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`§ 101 analysis on the prior art to show purported well-known, routine, and
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`2
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`conventional claim elements is precisely what the Federal Circuit criticized the
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`district court for in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,
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`Case no. 2015-1763 (Fed. Cir. June 27, 2016), Slip op. at 15 (“The district court’s
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`analysis in this case . . . looks similar to an obviousness analysis under 35 U.S.C. §
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`103 . . . The inventive concept inquiry requires more than recognizing that each
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`claim element, by itself, was known in the art. As is the case here, an inventive
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`concept can be found in the non-conventional and non-generic arrangement of
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`known, conventional pieces.”)(emphasis added). The exhibits are not relevant to a
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`§ 101 analysis and should be excluded under FRE 401 and 402.
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`C. The Board Should Exclude Exhibit 1019
`The Board cannot assess under FRE 702 whether Dr. Kelly’s opinion
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`testimony is “based on sufficient facts or data,” is “the product of reliable
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`principles and methods,” or if Dr. Kelly “reliably applied the principles and
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`methods to the facts of the case,” or assess under Daubert v. Merrell Dow
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`Pharmaceuticals, Inc., 113 S.Ct. 2786, 509 U.S. 579 (1993) whether the reasoning
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`or methodology underlying Dr. Kelly’s testimony is scientifically valid and
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`whether that reasoning or methodology properly can be applied to the facts in issue
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`given that Dr. Kelly i) disavowed being qualified to give a legal opinion; ii) could
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`not explain why his approach in formulating his opinions used a scientifically valid
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`reasoning or methodology; iii) did nothing to test his result; iv) could not define
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`3
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`what an abstract idea is; and v) undertook an analysis that looked for an inventive
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`concept over the prior art, rather than over the abstract idea itself. Exhibit 1019
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`therefore should be excluded.
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`D. The Board Should Exclude Exhibit 1039
`Exhibit 1039 (the April 8-9, 2015 Deposition Transcript of Jonathan Katz,
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`Patent Owner’s expert in CBM2014-00102/106/108/112, all of which were
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`instituted on §§ 102 and/or 103 grounds) is irrelevant. Petitioner’s argument
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`conflates what was known in the prior art by one of ordinary skill with what was
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`well-known, routine, and conventional. Those are not equivalent. Something can
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`be in the prior art for §§ 102 and/or 103 purposes but not be well-known, routine,
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`and conventional. Nor do well-known, routine, and conventional components
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`preclude an invention from having an “inventive concept.” Bascom, Case no.
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`2015-1763 (Fed. Cir. June 27, 2016), Slip op. at 15 (“inventive concept inquiry
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`requires more than recognizing that each claim element, by itself, was known in
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`the art. [A]n inventive concept can be found in the non-conventional and non-
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`generic arrangement of known, conventional pieces.”). Therefore Dr. Katz’s
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`“admissions” as to what was in the prior art are irrelevant and should be excluded
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`under FRE 401 and 402.
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`III. CONCLUSION
`Patent Owner respectfully requests that the Board exclude the exhibits.
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`4
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`Dated: July 5, 2016
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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 Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that PATENT OWNER’S REPLY IN
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`SUPPORT OF MOTION TO EXCLUDE EVIDENCE in CBM2015-00133 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(s) as follows:
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`Steven.Baughman@ropesgray.com
`James.Batchelder@ropesgray.com
`Megan.Raymond@ropesgray.com
`ApplePTABService-SmartFlash@ropesgray.com
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`QE-SF-PTAB-Service@quinnemanuel.com
`kevinsmith@quinnemanuel.com
`raynimrod@quinnemanuel.com
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`
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`Dated: July 5, 2016
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`/ Michael R. Casey /
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
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`6