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