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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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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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`____________
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`Case CBM2015-00133
`Patent 8,336,772 B2
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`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 2,
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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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`Exhibits 1002 and 1043
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`Patent Owner objects to the admissibility of Exhibits 1002 and 1043 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 ‘772 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
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`(citing Ex. 1002 ¶ 17). The Petition cites to Exhibit 1043 for the sole purpose of
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`showing the inventor’s trial testimony describing the inventions. Id. (citing Ex.
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`1043 at 4). Petitioner’s expert, John P. J. Kelly, Exhibit 1019, (“Kelly
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`Declaration”) does not cite to Exhibits 1002 or 1043. Petitioner does not need to
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`cite to Exhibits 1002 and 1043 to characterize what the ‘772 Patent relates to when
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`Exhibit 1001, the actual ‘772 Patent, is in evidence. Under FRE 1004, other
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`evidence of the content of a writing (here the ‘772 Patent) is admissible if the
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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 ‘772
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`Patent is in evidence and is the subject of the trial. Exhibits 1002 and 1043 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 ‘772 Patent is not relevant to any of
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`the issues here. Being irrelevant evidence, Exhibits 1002 and 1043 are not
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`admissible per FRE 402.
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`Exhibits 1024, 1029, 1030, 1033, and 1035
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`Neither the Petition, nor the Kelly Declaration (Ex. 1019), nor the PTAB’s
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`November 16, 2015 Decision – Institution of Covered Business Method Patent
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`Review 37 C.F.R. § 42.208, Paper 7 (“PTAB Decision”) cites Exhibits 1024, 1029,
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`1030, 1033, or 1035. As such, these exhibits do not appear to make a fact of
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`consequence in determining this action more or less probable than it would be
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`without them. As such, Exhibits 1024, 1029, 1030, 1033, and 1035 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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`Exhibits 1003, 1004, 1005, 1006, 1007, 1008, 1011, 1012, 1013, 1014, 1015,
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`1016, 1017, 1018, 1025, 1026, 1027, 1028, 1036, 1038, 1040, 1041, 1042, 1044,
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`and 1045
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`Neither the Petition nor the Kelly Declaration cites Exhibits 1003, 1004,
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`1005, 1006, 1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016, 1017, 1018, 1025,
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`1026, 1027, 1028, 1036, 1038, 1040, 1041, 1042, 1044, or 1045 as potentially
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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, 1005,
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`1006, 1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016, 1017, 1018, 1025, 1026,
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`1027, 1028, 1036, 1038, 1040, 1041, 1042, 1044, or 1045. 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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`1005, 1006, 1007, 1008, 1011, 1012, 1013, 1014, 1015, 1016, 1017, 1018, 1025,
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`1026, 1027, 1028, 1036, 1038, 1040, 1041, 1042, 1044, and 1045 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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`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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`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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`Exhibit 1037
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`Patent Owner objects to the admissibility of Exhibit 1037 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 1037 on grounds that its purported
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`authentication does not meet the requisites of FRE 901.
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`Exhibit 1039
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`Exhibit 1039 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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`1039 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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` /
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` Michael R. Casey /
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`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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`inadmissible under FRE 802.
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`Dated: December 1, 2015
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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 CBM2015-00133 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 as follows:
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`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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`Dated: December 1, 2015
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` /
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` Michael R. Casey /
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`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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