`
`______________________
`
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING
`Petitioner
`
`v.
`
`E-IMAGEDATA CORP.
`Patent Owner
`
`______________________
`
`CASE NO. IPR2017-00177
`U.S. PATENT NO. 8,537,279
`______________________
`
`
`
`PETITIONER’S RESPONSE IN OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`ARGUMENT ................................................................................................... 2
`A. Drawings and Figures in the Petition Used to Illustrate
`Petitioner’s Invalidity Theories are Admissible .................................... 2
`B.
`Relevant and Admissible ....................................................................... 4
`C.
`Hearsay .................................................................................................. 5
`III. CONCLUSION ................................................................................................ 7
`
`Paragraph 69 of The Senn Declaration (Exhibit 1002) is
`
`Exhibit 1007 is Admissible Under FRE 901(b)(4) and Is Not
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-00177
`Patent No. 8,537,279
`
`Petitioner’s Updated List of Exhibits
`
`Ex. 1001: U.S. Patent No. 8,537,279 (“‘279 Patent”)
`
`Ex. 1002: Declaration of Anthony J. Senn
`
`Ex. 1003: Curriculum vitae of Anthony J. Senn
`
`Ex. 1004: U.S. Publication No. 2004/0012827 (“Fujinawa”)
`
`Ex. 1005: U.S. Patent No. 5,585,937 (“Kokubo”)
`
`Ex. 1006: U.S. Patent No. 5,061,955 (“Watanabe”)
`
`Ex. 1007: 5100 FICHE SCANSTATION, Field Service Manual
`
`Ex. 1011: Excerpt of Fundamentals of Machine Design textbook
`
`Ex. 1012: Deposition Transcript of Jonathan Ellis
`
`Ex. 1013: Excerpt of Illustrated Sourcebook of Mechanical Components textbook
`
`
`
`ii
`
`
`
`Case No. IPR2017-00177
`Patent No. 8,537,279
`
`I.
`
`INTRODUCTION
`
`Petitioner submits this Opposition to Patent Owner’s (“PO”) Motion to
`
`Exclude (Paper 15). It is PO’s burden to show that the evidence is inadmissible.
`
`37 C.F.R. § 42.20(c). Far from meeting this burden, PO’s motion makes bare
`
`assertions and references to the Federal Rules of Evidence (“FRE”) but fails to
`
`provide any explanation of how they apply or why the particular evidence is
`
`inadmissible.
`
`The Board has made its position clear: “There is a strong public policy for
`
`making all information filed in a non-jury, quasi-judicial administrative proceeding
`
`available to the public, especially in an inter partes review which determines the
`
`patentability of claims in an issued patent. It is better to have a complete record of
`
`the evidence submitted by the parties than to exclude particular pieces.” Nichia
`
`Corp. v. Emcore Corp., IPR2012-00005, Paper 68, at 59 (PTAB Feb. 11, 2014).
`
`The Board has further clarified that a motion to exclude is not the forum to
`
`challenge the sufficiency of evidence. Biomarin Pharm. Inc. v. Genzyme
`
`Therapeutic Prods. Ltd. P’ship, IPR2013-00537, Paper 79, at 24-25 (PTAB Feb.
`
`23, 2015). Against this backdrop, PO now moves to exclude annotated figures
`
`from the prior art, evidence that pertains to non-instituted grounds, and evidence
`
`that falls squarely within the bounds of admissibility under the FRE. As detailed
`
`below, PO’s motion should be denied in its entirety.
`
`
`
`1
`
`
`
`Case No. IPR2017-00177
`Patent No. 8,537,279
`
`II. ARGUMENT
`
`A. Drawings and Figures
`in the Petition Used to Illustrate
`Petitioner’s Invalidity Theories are Admissible
`
`PO seeks to exclude the illustration on page 11 of the petition. (Paper 15 at
`
`3). The illustration is also found on page 11 of Exhibit 1002. The illustration is a
`
`schematic representation of the prior art used by the Petitioner to represent the well
`
`known features of the prior art. (Paper 1 at 11, Ex. 1002 at ¶28, Ex. 1004 at Fig.
`
`4). The illustration helps frame Petitioner’s invalidity theories. Petitioner’s expert,
`
`Tony Senn, laid the foundation for the illustration as “a schematic representation of
`
`the Fujinawa microform
`
`imaging apparatus
`
`(e.g., Ex. 1004 at Fig.
`
`4)…representative of the well known features of microform imaging apparatuses.”
`
`(Ex. 1002 at ¶28). Mr. Senn is a mechanical engineer with over 25 years of
`
`experience in the field, including at least 10 years of design work on microform
`
`scanning equipment. (Ex. 1002 at ¶¶7-19). PO has not questioned Mr. Senn’s
`
`credentials as one of skill in the art or his ability to opine on the prior art.
`
`PO’s assertion that the illustration is an “inaccurate and unfair representation
`
`of the purported prior art” (Paper 15 at 3) goes to weight, not admissibility. As
`
`laid out in Corning Inc. v. DSMIP Assets B.V., the Board’s approach to considering
`
`the admissibility of evidence is “[s]imilar to a district court in a bench trial, the
`
`Board, sitting as a non-jury tribunal with administrative expertise, is well-
`
`positioned to determine and assign appropriate weight to evidence presented.”
`
`
`
`2
`
`
`
`Case No. IPR2017-00177
`Patent No. 8,537,279
`
`IPR2013–00053, Paper 66, at 19 (PTAB May 1, 2014); Symantec Corp. and Blue
`
`Coat Sys. LLC v. Finjan, Inc., IPR2015-01892, Paper 58, at 64 (Mar. 15, 2017)
`
`(same); Arctic Cat, Inc. v. Polaris Indus., Inc., IPR2014-01427, 2016 WL 498434,
`
`at *18 (Feb. 4, 2016) (noting whether or not particular expert testimony has a
`
`factual foundation goes to weight and not admissibility of the evidence).
`
`Here, the illustration is plainly presented in the Petition and by Petitioner’s
`
`expert as what it is—“a schematic representation” of the prior art and
`
`“representative of the well known features of microform imaging apparatuses.”
`
`(Paper 1 at 11; Ex. 1002 at ¶28). As such, there is simply no risk of Board
`
`confusion. Intri-Plex Techs., Inc. v. Saint-Gobain Perf. Plastics Rencol Ltd.,
`
`IPR2014-00309, Paper 83, at 17-18 (PTAB Mar. 23, 2014) (denying motion to
`
`exclude annotated figures because there was no danger that the Board would be
`
`confused). The Board is capable of analyzing the prior art figure from which the
`
`illustration is created (e.g., Figure 4 of Ex. 1004) and reaching its own conclusions.
`
`Accordingly, exclusion is improper, as the Board can ascribe the weight it deems
`
`appropriate. Apple Inc. v. DSS Tech. Management, Inc., IPR2015-00369, 2016
`
`WL 3382361, at *17 (PTAB June 17, 2016) (“a motion to exclude…is not an
`
`appropriate mechanism for challenging the sufficiency of evidence or the proper
`
`weight that should be afforded an argument.”).
`
`
`
`
`
`3
`
`
`
`Case No. IPR2017-00177
`Patent No. 8,537,279
`
`B.
`
`Paragraph 69 of The Senn Declaration (Exhibit 1002) is Relevant
`and Admissible
`
`PO seeks to exclude paragraph 69 of the Senn Declaration (Ex. 1002) “to the
`
`extent it relates to claims on which the Board did not institute review.”1 (Paper 15
`
`at 4). As a preliminary matter, the assertion that the paragraph relates to a claim on
`
`which the Board did not institute review is inaccurate as the Board instituted
`
`review on all claims requested. (Paper 6 at 20). To the extent this paragraph
`
`relates to non-instituted grounds, PO’s request is moot. Curt G. Joa, Inc. v.
`
`Fameccanica.Data S.p.A, IPR2016-00906, 2017 WL 4570515, at *15 (PTAB Oct.
`
`11, 2017) (“Patent Owner’s Motion to Exclude portions of Exhibit 1003 addressing
`
`non-instituted prior art references is dismissed as moot.”).
`
`As to substance, PO fails to articulate how the paragraph is “irrelevant” or
`
`“inadmissible.” To the contrary, the cited paragraph provides a detailed
`
`explanation of the disclosure of Watanabe, a reference relied upon by the Board
`
`
`1 PO’s motion asserts “at least” paragraph 69 is “irrelevant and inadmissible.”
`
`(Paper 4). To the extent PO is seeking to exclude additional portions of Exhibit
`
`1002, this argument is waived for failing to identify specific objectionable
`
`portions of the exhibit and failing to explain why they would be objectionable.
`
`EMC Corp. v. Personal Web Technologies, LLC, IPR2013-00085, Paper 73, at
`
`68-69 (PTAB May 15, 2014).
`
`
`
`4
`
`
`
`Case No. IPR2017-00177
`Patent No. 8,537,279
`
`when instituting review of claim 49. (Ex. 1002 at ¶69; Paper 6 at 20). Paragraph
`
`69 explains how Watanabe discloses a motor, a movable plate, a wire and a guide
`
`rail—elements that are directly relevant to the instituted grounds. (Ex. 1002 at
`
`¶69). PO’s argument ignores the Board’s basic preference for maintaining a
`
`complete record of evidence submitted. Nichia Corp. v. Emcore Corp., IPR2012-
`
`00005, Paper 68, at 59 (PTAB Feb. 11, 2014) (“It is better to have a complete
`
`record of the evidence submitted by the parties than to exclude particular pieces.”).
`
`C. Exhibit 1007 is Admissible Under FRE 901(b)(4) and Is Not
`Hearsay
`
`PO seeks to exclude the entirety of exhibit 1007 as lacking authenticity and
`
`hearsay. PO makes its request despite failing to identify anything about the
`
`evidence that would indicate unreliability. SDI Tech., Inc. v. Bose Corp.,
`
`IPR2013-00350, 2015 WL 3749669, at *8-9 (November 7, 2014) (finding patent
`
`owner could point to no evidence that the evidence was unreliable). PO’s
`
`argument is premised on the mistaken assumption that it is Petitioner’s burden to
`
`show the admissibility of the evidence. (Paper 15 at 5) (“Petitioner has failed to
`
`provide any evidence [to show] that Ex. 1007 is indeed the item the Petitioner
`
`claims it is.”). In an inter partes review proceeding, however, it is the opponent
`
`who bears the burden of establishing inadmissibility of an exhibit. 37 C.F.R. §
`
`42.20(c); see also FLIR Systems, Inc. v. Leak Suveys, Inc., IPR2014-00411, Paper
`
`113, at 5 (PTAB Sept. 3, 2015) (“In a civil action in a U.S. district court the
`
`5
`
`
`
`Case No. IPR2017-00177
`Patent No. 8,537,279
`
`proponent bears the burden of establishing the admissibility of its evidence. In our
`
`proceedings it is the opponent who bears the burden of establishing inadmissibility
`
`of an exhibit.”).
`
`The standard for admissibility under the FRE is “slight.” States v. Turner,
`
`718 F.3d 226, 232 (3d Cir. 2013) (noting conclusive proof of a document’s
`
`authenticity is not required under FRE 901). A document may be authenticated by
`
`“the appearance, contents, substance, internal patterns, or other distinctive
`
`characteristics of the item, taken together with all the circumstances.” Fed. R.
`
`Evid. 901(b)(4). Here, page one of Exhibit 1007 makes clear the document is a
`
`“5100 Fiche Scanstation Field Service Manual.” (Ex. 1007 at 1). The title page
`
`further includes a part number and revision information for the manual. (Ex. 1007
`
`at 1). Copyright information is listed on page three of the exhibit. (Ex. 1007 at 3).
`
`The document goes on to provide detailed instructions for operating the 5100
`
`Scanstation and the SCANFICHE operating software. (Ex. 1007). PO fails to
`
`show how this is insufficient under Federal Rule 901(b)(4) or how this document is
`
`“not what Petitioner claims it is.” Actifio, Inc. v. Delphix Corp., IPR2015-00052,
`
`2016 WL 1393513, at *3 (Mar. 31, 2016) (“On this record, we accept Exhibit 1103
`
`for what it purports and is alleged to be: “a user manual for a NetApp product.”).
`
`Indeed, PO provides no evidence that calls into question the authenticity of Exhibit
`
`1007. (See generally, Paper 15).
`
`
`
`6
`
`
`
`Case No. IPR2017-00177
`Patent No. 8,537,279
`
`PO’s hearsay objections likewise fail as it has not identified specific portions
`
`of the evidence that are being offered for the truth of the matter asserted. “The
`
`burden should not be placed on the Petitioner or Board to sort through the entirety
`
`of each exhibit and determine which portion [PO] believes to be hearsay.” EMC
`
`Corp., IPR2013-00085, Paper 73, at 68-69 (finding PO failed to “identif[y], in its
`
`motion, the specific portions of the evidence and provide[] sufficient explanations
`
`as to why they constitute hearsay.”).
`
`Exhibit 1007 is used to provide background regarding the technology at
`
`issue. It is well established that “a prior art document…is offered simply as
`
`evidence of what it described, not for proving the truth of the matters addressed in
`
`the document.” EMC Corp., IPR2013-00085, Paper 73, at 66 (citing Joy Techs.,
`
`Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990), judgment aff’d, 959
`
`F.2d 226 (Fed. Cir. 1992)); Biomarin Pharm. Inc., v. Genzyme Therapeutic
`
`Products Ltd. P’ship, IPR2013-00537, Paper 79, at 25 (PTAB Feb. 23, 2015).
`
`Even if any portion of Exhibit 1007 were considered hearsay, it would fall under
`
`the residual exception to hearsay as PO has failed to articulate a single reason why
`
`Exhibit 1007 is suspect. SDI Techs., Inc., 2015 WL 3749669, at *6 (finding PO
`
`could not articulate any reason to suspect the date stamp was unreliable).
`
`III. CONCLUSION
`
`PO’s Motion to Exclude fails to show how any of the evidence provided by
`
`
`
`7
`
`
`
`Case No. IPR2017-00177
`Patent No. 8,537,279
`
`Petitioner is inadmissible and should be denied in its entirety.
`
`
`
`Dated January 12, 2018
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`/Jason A. Engel/
`Jason A. Engel
`Reg. No. 51,654
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 12, 2018, a true and correct copy of the
`
`foregoing was caused to be served electronically on the following counsel of
`
`record for Patent Owner at the following email addresses:
`
`
`
`Johanna M. Wilbert
`Joel A. Austin
`Michael T. Piery
`QUARLES & BRADY LLP
`411 East Wisconsin Avenue
`Suite 2350
`Milwaukee, Wisconsin 53202
`johanna.wilbert@quarles.com
`joel.austin@quarles.com
`michael.piery@quarles.com
`
`
`
`
`
`/Jason A. Engel/
`Jason A. Engel
`Reg. No. 51,654
`
`
`
`
`
`