Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`U.S. BANCORP
`Petitioner
`v.
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`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC
`Patent Owner
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`PETITIONER U.S. BANCORP’S MOTON TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
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`Case CBM2013-00014
`Patent No. 6,625,582
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`U.S. Patent No. 6,625,582
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`U.S. BANCORP
`Petitioner
`v.
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`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC
`Patent Owner
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`PETITIONER U.S. BANCORP’S MOTON TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
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`Case CBM2013-00014
`Patent No. 6,625,582
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
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`Petitioner U.S. Bancorp (“Petitioner” or “U.S. Bancorp”) respectfully moves
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`pursuant to 37 C.F.R. § 42.64(c) and the Scheduling Order (Paper 13) to exclude
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`Patent Owner Retirement Capital Access Management Company LLC’s
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`(“RCAMC”) Exhibit 2016. Exhibit 2016 is a New York Times article containing
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`hearsay discussions of proposals to regulate the service accused of infringement in
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`the underlying district court litigation. The article was submitted with RCAMC’s
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`Response (Paper 19) to U.S. Bancorp’s Petition. As set forth below, Exhibit 2016
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`is inadmissible for three separate reasons: (1) the exhibit is irrelevant to the issues
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`before the Board, (2) admitting the exhibit would confuse the issues and unduly
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`prejudice U.S. Bancorp, and (3) the exhibit contains impressible hearsay.1
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`First, proposed banking regulations are irrelevant to whether the challenged
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`claims of U.S. Patent No. 6,625,582 (“the ‘582 Patent,” Ex. 1003) are patent-
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`eligible. Exhibit 2016 is thus inadmissible under Federal Rule of Evidence 402.
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`Second, even if the exhibit is deemed to have some probative value, admitting
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`this exhibit will conflate issues, confuse the record, and distract the parties and the
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`Board from the Section 101 patentability issues set forth in the Petition, as the
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`exhibit makes no mention of the ‘582 Patent. To underscore its irrelevance,
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`U.S. Bancorp’s objections to this exhibit and several other exhibits were
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`previously set forth in U.S. Bancorp’s Objections to Evidence Pursuant to 37
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`C.F.R. § 42.64, filed on November 27, 2013 (Paper 20).
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
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`Exhibit 2016 appears to have only been submitted by RCAMC to incite biases
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`against U.S. Bancorp by highlighting the recent regulatory scrutiny given to banks
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`and lenders. Thus, this exhibit should also be excluded under Federal Rule of
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`Evidence 403.
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`Third, Exhibit 2016 should be excluded on hearsay grounds. The article
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`discusses proposed regulations, which based on conversations the author had with
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`“several people briefed on the matter,” could impose “more stringent
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`requirements” on loans such as the accused infringing service. See Exh. 2016.
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`Thus, the article is also inadmissible under Federal Rule of Evidence 802.
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` LEGAL STANDARDS I.
`Federal Rules of Evidence 402 and 403 govern the admissibility of evidence
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`in this proceeding based on relevancy grounds. 37 C.F.R. § 42.62. Under Rule
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`402, irrelevant evidence is not admissible. Rule 401 defines “relevant” evidence as
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`evidence that “has any tendency to make a fact more or less probable that it would
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`be without the evidence,” where “the fact is of consequence in determining the
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`action.” Fed. R. Evid. 401. Even if a piece of evidence is relevant, it may be
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`excluded if its probative value is substantially outweighed by the danger of unfair
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`prejudice, confusing the issues, undue delay, wasting time, or needlessly
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`presenting cumulative evidence. Fed. R. Evid. 403.
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
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`Hearsay is also inadmissible under Federal Rule of Evidence 802. Rule 801
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`defines hearsay as a statement not made “while testifying at the current trial or
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`hearing” and that “a party offers in evidence to prove the truth of the matter
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`asserted in the statement.” Fed. R. Evid. 801. More specifically, “newspaper
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`articles are ‘classic, inadmissible hearsay.’” Hicks v. Charles Pfizer & Co. Inc.,
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`466 F. Supp. 2d 799, 804 (E.D. Tex. 2005) (citing Roberts v. City of Shreveport,
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`397 F.3d 287, 295 (5th Cir. 2005)).
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` EXHIBIT 2016 SHOULD BE EXCLUDED AS IRRELEVANT, PREJUDICIAL, AND II.
`HEARSAY
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`Exhibit 2016 should be excluded under Federal Rules of Evidence 402, 403,
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`and 802. Any one of these rules is sufficient basis to exclude the exhibit from
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`these proceedings.
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`Exhibit 2016 is an article by Jessica Silver-Greenberg of The New York Times,
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`dated April 23, 2013, based on hearsay discussions with “several people briefed on
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`the matter,” discussing some potential new regulations imposing “more stringent
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`requirements” on loans, such as U.S. Bancorp’s Checking Account Advance
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`(“CAA”) service that is accused of infringement in the parallel district court
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`litigation. See C.A. No. 12-803-LPS (D. Del.). The article refers to these services
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`as “predatory” and generally portrays them in a negative light.
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`RCAMC uses Exhibit 2016 to assert that U.S. Bancorp’s non-infringement
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`contention is not based on a “mere theoretical non-infringing alternative,” but “an
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
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`actual service offered by U.S. Bancorp – one that is so important to U.S. Bancorp
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`that it is willing to risk subjecting itself to a ‘crack down’ on ‘big bank’ payday
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`loans by the Office of the Comptroller of the Currency and the Federal Deposit
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`Insurance Corporation.” Resp. at 28. RCAMC cites to the article to substantiate
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`its claim that these federal agencies are “crack[ing] down” on U.S. Bancorp. Id.
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`The commercial availability of an accused infringing service has no bearing
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`on whether the challenged claims recite patent-eligible subject matter. Indeed, the
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`Federal Circuit has found that a defendant’s “alternative assertion of non-
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`infringement does not detract from its affirmative defense of invalidity under §
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`101.” See Bancorp Services, L.L.C. v. SunLife Assurance Co. of Canada, 687 F.3d
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`1266, 1280 (Fed. Cir. 2012). See also Commil USA, LLC v. Cisco Sys., Inc., 720
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`F.3d 1361, 1371 (Fed. Cir. 2013) (“[P]atent infringement and invalidity are
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`separate and distinct issues.”). Because the exhibit is wholly irrelevant to the
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`patent-eligibility determination before the Board, it should be excluded as
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`irrelevant under Rule 402.
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`RCAMC’s reliance on Exhibit 2016 is a thinly-veiled attempt to incite bias
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`against U.S. Bancorp, based on an article that is irrelevant to the Board’s Section
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`101 analysis. Even if the commercial availability of the accused CAA service was
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`somehow relevant, issues such as the service’s alleged importance to U.S. Bancorp
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`and potential new regulations on the service are plainly irrelevant to the Section
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
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`101 analysis. Thus, even if the Board finds Exhibit 2016 admissible under Rule
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`402, its minimal probative value is far outweighed by the unfair prejudice against
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`U.S. Bancorp due to the highly negative nature of the article, rendering the article
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`inadmissible under Rule 403.
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`Exhibit 2016 should also be excluded because it is inadmissible hearsay.2 The
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`article is a statement made outside of the current proceeding and is offered by
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`RCAMC to prove the truth of the matter asserted in the article, that is, that the
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`Office of the Comptroller of the Currency and the Federal Deposit Insurance
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`Corporation decided to “crack down” on “big bank” payday loans. See Resp. at
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`28. Even if such matters were relevant, a newspaper article authored by a third-
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`party based on other hearsay statements allegedly made by “people briefed on the
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`matter” is not the proper vehicle to introduce such evidence. See Stollings v. Ryobi
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`Technologies, Inc., 725 F.3d 753, 761 (7th Cir. 2013) (finding newspaper article
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`2 In its Objections filed on November 27, 2013, U.S. Bancorp objected to Exhibit
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`2016 on hearsay grounds and because Exhibit 2016 was not properly authenticated
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`under FRE 901. See Paper No. 20, at 5. In response, RCAMC submitted a
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`declaration by its counsel attesting that Exhibit 2016 is a true and correct copy of
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`the article as it was published. See Paper No. 22. While, the declaration submitted
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`by RCAMC’s counsel may address the authentication objection, it does nothing to
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`cure the hearsay objection.
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
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`was inadmissible hearsay when offered as proof of the article’s contents). In
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`addition, none of the hearsay exceptions articulated in FRE 803 applies to Exhibit
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`2016. Exhibit 2016 therefore should be excluded as hearsay.
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` CONCLUSION III.
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`For the reasons set forth above, U.S. Bancorp respectfully requests that the
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`Board exclude Exhibits 2015 and 2016.
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`Dated: February 24, 2014
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`Respectfully submitted,
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`By: /Anthony H. Son/
`Anthony H. Son (Lead Counsel)
`Reg. No. 46,133
`Brian H. Pandya (Back-up Counsel)
`Reg. No. 60,991
`Ryan M. Corbett (Back-up Counsel)
`Reg. No. 63,724
`WILEY REIN LLP
`1776 K Street, N.W.
`Washington, D.C. 20006
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`Attorneys for Petitioner U.S. Bancorp
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing PETITIONER U.S. BANCORP’S
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`MOTON TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c) was
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`served on February 24, 2014 by email to counsel for patent owner at the following
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`email addresses:
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`Casey Griffith (casey.griffith@kk-llp.com)
`Shital Desai (sita.desai@kk-llp.com)
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`/Ryan M. Corbett/
`Anthony H. Son (Lead Counsel)
`Reg. No. 46,133
`Brian H. Pandya (Back-up Counsel)
`Reg. No. 60,991
`Ryan M. Corbett (Back-up Counsel)
`Reg. No. 63,724
`WILEY REIN LLP
`1776 K Street, N.W.
`Washington, D.C. 20006
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`Attorneys for Petitioner U.S. Bancorp
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