UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
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`v.
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`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00177
`Patent 8,537,279 B2
`____________
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(C)
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00177
`Patent 8,537,279 B2
`____________
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(C)
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`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`Patent Owner hereby submits the following reply in support of its Motion to
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`Exclude Evidence (Paper 15).
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`I.
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`INTRODUCTION
`Patent Owner’s Motion to Exclude Evidence establishes that the challenged
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`evidence fails to meet the requirements as set forth in the Federal Rules of
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`Evidence. It is clear that “[t]he admissibility of evidence in an IPR proceeding
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`generally is governed by the Federal Rules of Evidence.” Universal Remote
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`Control, Inc. v. Universal Elecs., Inc., IPR2014-01146, Paper No. 36 (PTAB Dec.
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`10, 2015) (citing 37 C.F.R. § 42.62(a); Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48758)); see also 37 C.F.R. § 42.104(b)(5). Patent Owner has met the burden
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`of establishing inadmissibility of the challenged evidence under 37 C.F.R. §
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`42.20(c). Because Petitioner has failed to provide evidence that meets the
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`requirements of admissibility under the Federal Rules of Evidence, as
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`demonstrated in Patent Owner’s Motion to Exclude, the challenged evidence is
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`inadmissible and should be excluded.
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`II.
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`ARGUMENT
`A.
`Patent Owner Sufficiently Supported Its Motion.
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`Petitioner’s claims that Patent Owner’s motion contains bare assertions is
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`unavailing because Patent Owner followed the guidance provided by the PTAB for
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`1
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`
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`motions to exclude. In Flir Systems, Inc., v. Leak Surveys, Inc., the PTAB
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`provided an example of a how a motion to exclude might be succinctly presented:
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`In addressing the admissibility of Ex. 1005, a motion to exclude could
`state the following.
`Exhibit 1005
`1. Identity of the exhibit and portion thereof sought to be excluded: test
`data described in Exhibit 1005, Example 1.
`2. Objection: Hearsay: Fed. R. Evid. 802; 37 C.F.R. § 42.61(c).
`3. An objection was made in an Objection to Evidence, filed [state date
`filed]. See Ex. 2011, page x, lines y–z.
`4. Petitioner relies on the objected data on pages 5–6 of the Petition.
`5. The relied upon data is hearsay. Petitioner has not presented the
`testimony of any individual having first-hand of the testing described
`in Example 1.
`Nothing more is needed.
`If petitioner believes an exception to the hearsay rule applies, petitioner
`may address the exception in an opposition to which patent owner may
`a reply.
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`Case IPR2014-014-00411, Paper 113 at 6–7 (P.T.A.B. Sept. 3, 2015) (emphasis
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`added). Patent Owner followed the PTAB’s guidance and noting more was
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`needed.
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`B.
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`The Illustration In The Petition Is Inadmissible
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`Petitioner’s illustration is inadmissible as unfairly prejudicial because it is an
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`inaccurate representation of the prior art Fujinawa reference. Representations of
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`the prior art should be excluded when the danger of unfair prejudice outweighs the
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`probative value of the evidence. See Callaway Golf Co. v. Acushnet Co., 576 F.3d
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`2
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`1331, 1342 (Fed. Cir. 2009). Petitioner’s “schematic representation”
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`oversimplifies and misrepresents the Fujinawa reference by, for example, depicting
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`the lead members as smooth rods when the reference clearly discloses threaded
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`worms. (Ex. 1004 at Fig. 4.)
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`The Intri-Plex case is readily distinguishable. In Intri-Plex, the Board
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`denied a motion to exclude “annotated excerpts of Figures” from a particular
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`reference. 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). The Board found that
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`there was no danger of confusion and unfair prejudice because it was able to
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`“differentiate between the actual figures in [the reference] and counsel’s
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`demonstrative annotations thereto.” Id. at 18.
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`Unlike in Intri-Plex where counsel provided annotated versions of actual
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`figures of a reference, here the Petitioner provides a newly created “schematic
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`representation” of the purported prior art which it claims is “representative of the
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`well known features of microform imaging apparatuses.” (Paper 1 at 11; Ex. 1002
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`at ¶ 28). Given the nature of the challenged illustration in this case, its probative
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`value is substantially outweighed by the unfair prejudice and potential to mislead.
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`Unlike in Intri-Plex, there is the real possibility that the Board may rely on the
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`newly created illustration instead of the actual teachings of the cited references.
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`3
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`
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`IPR2014-00309, Paper 83, at 18. Accordingly the challenged illustration should be
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`excluded.
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`C.
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`Paragraph 69 Of Ex. 1002 Is Inadmissible Because It Relates To
`Issues On Which The Board Did Not Institute Review
`The disclosure of paragraph 69 does not relate to issues for which the Board
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`instituted review. The Federal Circuit has recognized that “[a]rt can legitimately
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`serve to document the knowledge that skilled artisans would bring to bear in
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`reading the prior art identified as producing obviousness.” Ariosa Diagnostics v.
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`Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015) (citing Randall Mfg. v.
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`Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013)). However, art serving to document
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`the knowledge of the skilled artisan must be invoked in such a manner. Id.
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`(“Ariosa’s Petitions and opening declarations invoked [the challenged exhibit] in
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`that way.”); see also SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679,
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`Paper No. 58 at 49 (PTAB Sept. 25, 2015) (granting exclusion of challenged
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`exhibits as irrelevant because they were not relied on with any particularity even
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`though the proponent of the challenged exhibits asserted that “they provide useful
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`background regarding the knowledge of one of ordinary skill in the art . . . .”).
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`
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`Here, Petitioner claims that the challenged paragraph of Exhibit 1002 is
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`“directly relevant to the instituted grounds.” (Paper 18 at 5). However, the
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`challenged evidence was not invoked in such a manner, but instead was asserted as
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`relating solely to issues on which the Board did not institute review. Thus, such
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`4
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`evidence is inadmissible as irrelevant under Federal Rules of Evidence 401 and
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`402.
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`D. Exhibit 1007 Is Inadmissible
`Petitioner erroneously argues that the title page and copyright information is
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`sufficient to self-authenticate Exhibit 1007. (Paper 18 at 6). However, the title of
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`the device and other publicly available information about the 5100 Fiche
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`Scanstation is insufficient to self authenticate the document. U.S. v. Mitts, 396
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`Fed. Appx. 296, 302 (6th Cir. 2010) (public information not distinctive under FRE
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`901(b)(4)). Likewise, the copyright information is not probative of the
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`admissibility of the document. See, e.g., Stryker Corp. v. Karl Storz Endoscopy-
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`Am., Inc., IPR2015-00677, Paper 15 at 18–19 (P.T.A.B. Sept. 2, 2015); see also
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`TRW Automotive v. Magna Elec. Inc., IPR2014-01347, Paper 25 at 6 (P.T.A.B.
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`Jan. 6, 2016). Thus, without more, Petitioner has failed to produce evidence
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`sufficient to support a finding that the item is what the proponent claims it is, and
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`Exhibit 1007 should be excluded.
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`III. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the
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`identified illustration in the Petition, as well as portions of Exhibit 1002 and
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`Exhibit 1007 be excluded, and any conclusions drawn therefrom deemed
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`unsupported.
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`5
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`Respectfully submitted,
`
`
`
`
`
`/Michael T. Piery/
`Michael T. Piery
`Reg. No. 71,915
`Attorney for Patent Owner
`michael.piery@quarles.com
`QUARLES & BRADY, LLP
`411 East Wisconsin Avenue
`Milwaukee, WI 53202-4497
`Tel: (414) 277-5367
`Fax: (414) 271-3552
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`6
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00177
`Patent 8,537,279 B2
`____________
`
`CERTIFICATE OF SERVICE
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
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`I hereby certify on this 19th day of January, 2018, that a true and correct
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`copy of the PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
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`EVIDENCE UNDER 37 C.F.R. § 42.64(C) was sent in its entirety via electronic mail
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`to: Jason.Engel.PTAB@klgates.com.
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`Respectfully submitted,
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`/Michael T. Piery/
`Michael T. Piery
`Reg. No. 71,915
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