UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SMART MODULAR TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`JAMES B. GOODMAN,
`Patent Owner.
`
`Case IPR2105-01675
`Patent No. 6,243,315 B1
`
`Before BRIAN J. McNAMARA, PATRICK M. BOUCHER, AND
`GARTH D. BAER, Administrative Patent Judges
`
`RESPONSE BY PATENT OWNER TO PETITIONER’S OBJECTIONS
`TO PATENT OWNER’S ATTACHMENTS SUBMITTED WITH
`PATENT OWNER’S POST-INSTITUTION RESPONSE
`
`David Fink (Lead Counsel)
`Registration No. 25,972
`Fink & Johnson
`7519 Apache Plume
`Houston, TX 77071
`Tel.: 713-729-4991
`texascowboy6@gmail.com
`
`-1-
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SMART MODULAR TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`JAMES B. GOODMAN,
`Patent Owner.
`
`Case IPR2105-01675
`Patent No. 6,243,315 B1
`
`Before BRIAN J. McNAMARA, PATRICK M. BOUCHER, AND
`GARTH D. BAER, Administrative Patent Judges
`
`RESPONSE BY PATENT OWNER TO PETITIONER’S OBJECTIONS
`TO PATENT OWNER’S ATTACHMENTS SUBMITTED WITH
`PATENT OWNER’S POST-INSTITUTION RESPONSE
`
`David Fink (Lead Counsel)
`Registration No. 25,972
`Fink & Johnson
`7519 Apache Plume
`Houston, TX 77071
`Tel.: 713-729-4991
`texascowboy6@gmail.com
`
`-1-
`
`
`
`The Petitioner has submitted objections on March 11, 2016 to two exhibits to the Patent
`
`Owner’s Response filed March 3, 2016.
`
`INTRODUCTION
`
`The following is a brief summary of the objections; however, the Petitioner’s submission
`
`speaks for itself.
`
`Petitioner argues that the attachments as Exhibit fail to comply with the formal
`
`requirements of 37 C.F.R. § 42.63(a) (as to form); 37 C.F.R. § 42.63(d)(1), (2)(ii) (as to
`
`labeling); and 37 C.F.R. § 42.63(d)(2)(I) (as to sequential numbering). In addition, Petitioner
`
`cites to 37 C.F.R. § 42.64 to argue that the Exhibits are incomplete sections of a document or
`
`webpage.
`
`The last objection of the Petitioner is that the “Patent Owner’s characterization of the
`
`Exhibits” under F.R.E 701 and F.R.E. 702 are improper because the Patent Owner’s counsel is
`
`not identified as an expert in this case.
`
`ARGUMENT
`
`Initially, it is respectfully pointed out that Petitioner is exalting form over substance, and
`
`Petitioner has made no objection as to the content or evidentiary value of the Patent Owner’s
`
`Exhibits.
`
`The objections by the Petitioner fail to comply with 37 C.F.R. § 42.64(b)(1) which sets a
`
`deadline for objections to “within five business days of service of evidence to which the
`
`objection is directed.” Hence, the objections should be ignored as being untimely.
`
`-2-
`
`
`
`Nevertheless, the objections will be addressed in the following:
`
`1.
`
`37 C.F.R. § 42.63(a). Petitioner has not cited any case defining what constitutes
`
`“the form of an exhibit”. Moreover, Petitioner admits that the attachments are
`
`“exhibits:” by identifying the attachments as “Exhibits” in the Objections. Hence,
`
`this objection has no substance.
`
`2.
`
`37 C.F.R. § 42.63(d)(1). (2)(ii). Each of the Patent Owner’s Exhibits are labeled
`
`as to their origins on the documents themselves at the upper right hand corners.
`
`Hence, this objection has no substance.
`
`3.
`
`37 C.F.R. § 42.63(d)(2)(I). Each of the Patent Owner’s Exhibits are uniquely
`
`numbered sequentially in the upper right hand corner. It is respectfully noted that
`
`all of Petitioner’s exhibits fail to comply with this requirement. Thus, Petitioner
`
`has revealed that compliance is not actually important.
`
`Petitioner cites to F.R.E. 106 as to completeness of the Exhibits; however, F.R.E. 106
`
`requires any other part of the document “that in fairness ought to be considered at the same
`
`time”. Petitioner has failed to explain the need for the more than 3000 pages of JEDEC21-C to
`
`be submitted when a mere two pages show the information relevant to the Response. It is
`
`respectfully pointed out that the first page of the attachment identifies JEDEC21-C as having
`
`more than 3000 pages. Petitioner’s demand is illogical and intended to waste time and resources
`
`of the PTAB.
`
`Petitioner argues that F.R.E. 701 and F.R.E. 702 make the Patent Owner’s attorney
`
`incompetent to point to a reference to support arguments even though no expert opinion is being
`
`offered by the attorney about that reference. The argument by Petitioner has misapplied F.R.E.
`
`-3-
`
`
`
`701, and 702 because no expert opinion or testimony has been offered by the Patent Owner’s
`
`attorney. Even if an opinion were offered, the PTAB would determine whether or not the
`
`opinion has merit. Needless to say, the Petitioner’s expert is not likely to have all of his opinions
`
`accepted completely by the PTAB when it is contradicted by facts.
`
`CONCLUSION
`
`The objections made by the Petitioner are in violation of 37 C.F.R. § 42.64(b)(1), and
`
`should be ignored as untimely.
`
`In addition, Petitioner merely argues about the form of the exhibits, and nothing about
`
`the content or evidentiary merits.
`
`Hence, objections are without merit and should be ignored.
`
`March 15, 2016
`
`Respectfully submitted,
`
`/David Fink/
`
`David Fink (Lead Counsel)
`Registration No. 25,972
`Fink & Johnson
`7519 Apache Plume
`Houston, TX 77071
`Tel.: 713-729-4991
`texascowboy6@gmail.com
`
`-4-
`
`
`
`CERTIFICATE OF SERVICE IN COMPLIANCE WITH 37 C.F.R. § 42.6(E)(4)
`
`The undersigned certifies that a complete copy of this RESPONSE BY PATENT OWNER
`
`TO PETITIONER’S OBJECTIONS TO PATENT OWNER’S ATTACHMENTS SUBMITTED
`
`WITH PATENT OWNER’S POST-INSTITUTION RESPONSE was served via email on Counsel
`
`for Petitioner in this proceeding on March 15, 2016:
`
`Michael F. Heafey
`King & Spalding
`601 South California Avenue, Suite 100
`Palo Alto, CA 94304
`mheafey@kslaw.com
`
`Date: March 15, 2016
`
`/David Fink/
`David Fink (Lead Counsel)
`Registration No. 25,972
`Fink & Johnson
`7519 Apache Plume
`Houston, TX 77071
`Tel.: 713-729-4991
`texascowboy6@gmail.com
`
`-5-
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