Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
`Attorney Docket No.: 84635-0009
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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 OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
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`Case CBM2013-00014
`Patent No. 6,625,582
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`U.S. Patent No. 6,625,582
`Attorney Docket No.: 84635-0009
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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 OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
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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
`Attorney Docket No.: 84635-0009
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner U.S. Bancorp hereby submits
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`the following objections to Exhibits 2015 and 2016 attached to Patent Owner
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`Retirement Capital Access Management Company LLC’s (“Patent Owner” or
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`“RCAMC”) Response. See CBM2013-00014, Paper 19 (and exhibits thereto).
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`Pursuant to 37 C.F.R. § 42.62, U.S. Bancorp’s objections below apply the Federal
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`Rules of Evidence (“F.R.E.”).
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` Objections to Exhibit 2015 and Any Reference to or Reliance Thereon I.
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`U.S. Bancorp hereby objects to Exhibit 2015, an excerpt from U.S.
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`Bancorp’s First Supplemental Responses to Plaintiff Benefit Funding Systems
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`LLC’s First Set of Interrogatories provided in the parallel district court litigation
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`between U.S. Bancorp and RCAMC (C.A. No. 12-803-LPS (D. Del.)). The
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`excerpt submitted as Exhibit 2015 contains U.S. Bancorp’s interrogatory
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`responses providing U.S. Bancorp’s contentions regarding why the accused
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`Checking Account Advance (“CAA”) service does not infringe the asserted
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`claims of U.S. Patent No. 6,625,582 (“the ‘582 patent”).
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`As explained in more detail below, the grounds for objection are as follows:
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`F.R.E. 402 (Relevance, i.e., “[i]rrelevant evidence is not admissible”), and F.R.E.
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`403 (Excluding Relevant Evidence for Prejudice, Confusion, Waste of Time, or
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`Other Reasons, i.e., “[t]he court may exclude relevant evidence if its probative
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`1
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
`Attorney Docket No.: 84635-0009
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`value is substantially outweighed by a danger of one or more of the following:
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`unfair prejudice, confusing the issues. . . .”).
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`U.S. Bancorp’s non-infringement contentions included in Exhibit 2015 are
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`not relevant to the Board’s Section 101 analysis of the ‘582 patent because
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`“patent infringement and invalidity are separate and distinct issues.” Commil
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`USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1371 (Fed. Cir. 2013). RCAMC
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`argues that because U.S. Bancorp has identified particular claim limitations that
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`the accused product does not practice, U.S. Bancorp is somehow precluded from
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`simultaneously asserting that the claims are invalid under Section 101. See Paper
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`19 (“Resp.”), at 26-29. However, that argument fails for two reasons.
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`First, the differing claim construction standards used by the PTO and district
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`courts further confirm that U.S. Bancorp’s non-infringement contentions are
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`irrelevant to the invalidity analysis. See MPEP § 2111.01 (“The USPTO uses a
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`different standard for construing claims than that used by district courts; during
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`examination the USPTO must give claims their broadest reasonable interpretation
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`in light of the specification.”). U.S. Bancorp’s non-infringement contentions
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`were provided in part under the district court’s narrower claim construction
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`standard, and are therefore not relevant to the Board’s analysis, which employs
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`the broader claim construction standard.
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`2
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
`Attorney Docket No.: 84635-0009
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`Second, the non-infringement contentions are submitted under the legal
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`fallacy that if a patent is not infringed it cannot be invalid at the same time. The
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`fact that the accused CAA service is not practicing each element of the abstract
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`idea claimed by the ‘582 patent does not mean that the ‘582 patent is not directed
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`to an abstract idea. For this reason, preliminary contentions submitted by U.S.
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`Bancorp regarding non-infringement have no relevance to invalidity under
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`Section 101.
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`RCAMC’s conflation of infringement and invalidity is an apparent attempt
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`to confuse the sole issue before the Board -- patent eligibility under Section 101 –
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`and to lob inflammatory accusations at U.S. Bancorp rather than address issues.
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`See, e.g., Response at 28. For these additional reasons, Exhibit 2015 should also
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`be excluded on the basis that reference to, or reliance on, this exhibit is confusing
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`and unduly prejudicial to U.S. Bancorp.
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` Objections to Exhibit 2016 and Any Reference to or Reliance Thereon II.
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`U.S. Bancorp hereby objects to Exhibit 2016, which purports to be an April
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`23, 2013 article by Jessica Silver-Greenberg entitled, “Regulators to Restrict Big
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`Banks’ Payday Lending” (“Greenberg Article”).
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`Grounds for objection: F.R.E. 402 (Relevance), F.R.E. 403 (Excluding
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`Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons),
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`F.R.E. 801, 802 (Impermissible Hearsay), and F.R.E. 901 (Authentication).
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`3
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`A. Exhibit 2016 is Irrelevant
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
`Attorney Docket No.: 84635-0009
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`The Greenberg Article is completely irrelevant to the Section 101 issue
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`before the Board, and is a blatant attempt to create prejudice against U.S.
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`Bancorp. In addition to arguing that U.S. Bancorp’s non-infringement
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`contentions preclude its Section 101 invalidity challenge, RCAMC further argues
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`that the non-infringing service is not merely hypothetical, but an actual service
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`offered by U.S. Bancorp “that is so important to U.S. Bancorp that it is willing to
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`risk subjecting itself to a ‘crack down’ on ‘big bank’ payday loans by the Office
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`of the Comptroller of the Currency and the Federal Deposit Insurance
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`Corporation.” Response at 28. RCAMC cites the Greenberg Article to
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`substantiate its claim that these federal agencies are “cracking down” on U.S.
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`Bancorp.
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`As discussed above, U.S. Bancorp’s non-infringement arguments are
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`irrelevant to whether the challenged claims are patent-eligible under Section 101.
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`Moreover, even if the commercial availability of the non-infringing service was
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`relevant, the service’s relative importance to U.S. Bancorp and any investigation
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`of the service by federal regulators is plainly irrelevant to the Section 101
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`analysis.
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`4
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`B.
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`Exhibit 2016 is Prejudicial
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
`Attorney Docket No.: 84635-0009
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`Even if the Board were to find that the Greenberg Article is somehow
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`relevant to the Section 101 issue, any minimal probative value is far outweighed
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`by the unfair prejudice against U.S. Bancorp. RCAMC’s citation to the
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`Greenberg Article is a transparent attempt to smear U.S. Bancorp by alleging that
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`its accused service is predatory and unethical. See Response at 28. The
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`Greenberg Article serves no purpose other than to portray U.S. Bancorp in a
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`negative light and is therefore both prejudicial and irrelevant to any issue in this
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`proceeding (F.R.E. 402; 37 C.F.R. § 42.61; F.R.E. 403).
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`C. Exhibit 2016 is Inadmissible Hearsay and has Not Been
`Authenticated
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`In addition, the assertions regarding the accused CAA service in the
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`Greenberg Article are out of court statements offered for the truth of the matter
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`asserted therein, and therefore constitute impermissible hearsay not subject to any
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`hearsay exceptions (F.R.E. 801, 802). Moreover, RCAMC fails to provide any
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`basis for concluding that the Greenberg Article is a true and correct copy as it
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`existed at the time of publication (F.R.E. 901).
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`5
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
`Attorney Docket No.: 84635-0009
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` Conclusion III.
`For at least these reasons, U.S. Bancorp objects to Exhibits 2015 and 2016
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`attached to RCAMC’s Response and the citations in the Response to Exhibits 2015
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`and 2016.
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`Dated: November 27, 2013
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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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`6
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`Case No. CBM2013-00014
`U.S. Patent No. 6,625,582
`Attorney Docket No.: 84635-0009
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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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`OBJECTIONS TO EVIDENCE PURSUANT TO 37 C.F.R. § 42.64 was served on
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`November 27, 2013 by email to counsel for patent owner at the following email
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`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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`7
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