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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.
`____________
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`Case IPR2017-00177
`Patent 8,537,279 B2
`____________
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`PATENT OWNER’S OBJECTIONS UNDER 37 C.F.R. § 42.64(b)(1)
`TO EVIDENCE SUBMITTED WITH PETITION FOR INTER PARTES REVIEW
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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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`Under 37 C.F.R. § 42.64(b)(1), Patent Owner e-ImageData Corp. objects to
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`the admissibility of the evidence identified below that Petitioner submitted as
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`exhibits to or referenced in its Petition for Inter Partes Review (Paper No. 1).
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`1.
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`Petition
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`Patent Owner objects to the drawings and figures in the Petition under
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`Fed. R. Evid. 401–403 and 901 as lacking authenticity, lacking foundation,
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`assuming facts not in evidence, unfair representations, and unduly prejudicial. For
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`example, the illustration on page 11 is an inaccurate and unfair representation of
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`the purported prior art, is not authentic, and lacks foundation.
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`2.
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`Ex. 1002
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`Under Fed. R. Evid. 702 and 703 and 37 C.F.R. § 42.65, Patent Owner
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`objects to Exhibit 1002 (Senn Declaration). Mr. Senn’s statements and opinions
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`are conclusory, do not attempt to take into account the level of skill in the art, and
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`are based on neither sufficient facts and data nor reliable principles and methods.
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`For example, Exhibit 1002 does not provide a sufficient explanation or rationale
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`behind Mr. Senn’s assertions of obviousness or his stated motivations to combine.
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`As another example, Exhibit 1002 does not explain how combinations of prior art
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`would be implemented or achieved, nor how or whether such implementations
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`would work.
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`1
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`Patent Owner additionally objects to Exhibit 1002 as lacking foundation,
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`assuming facts not in evidence, containing testimony on matters as to which the
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`witness lacks personal knowledge, conclusory and containing testimony
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`concerning documents for which authentication required by Fed. R. Evid. 901 is
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`lacking. For example, paragraphs 9, 28, 36, 49, 52, 69–79 are objected to as
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`lacking foundation, conclusory, and not supported by underlying facts. For
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`example, paragraph 70 states “a person of ordinary skill in the art would have been
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`motivated to combine these references, and would have been readily able to
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`combine them.” This statement is conclusory, lacks foundation, and is not
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`supported by the underlying facts. Paragraph 71 states “[s]ince both Kokubo and
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`Fujinawa are image readers, a person of skill in the art would have been motivated
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`to combine the teachings of each.” This statement is conclusory, lacks foundation,
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`and is not supported by the underlying facts. Paragraph 73 states that the
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`combination of Fujinawa and Kokubo would have been a “simple substitution.”
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`This statement is conclusory, lacks foundation, and is not supported by the
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`underlying facts. Paragraph 74 states that “a person of skill in the art could and
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`would have combined Fujinawa with Kokubo . . . .” This statement is conclusory,
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`lacks foundation, and is not supported by the underlying facts. Paragraph 77 states
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`“Watanabe discloses an alternative mechanism using a rod, belt, and pulley(s).”
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`This statement is conclusory, lacks foundation, and is not supported by the
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`2
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`underlying facts. Paragraph 79 states “a person of skill in the art could and would
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`have combined Fujinawa with Watanabe as discussed above.” This statement is
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`conclusory, lacks foundation, and is not supported by the underlying facts.
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` Patent Owner objects to the drawings and figures in Exhibit 1002 under
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`Fed. R. Evid. 401–403, 602, 702, 703, and 901 as lacking authenticity, lacking
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`foundation, lacking personal knowledge, assuming facts not in evidence, unfair
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`representations, and unduly prejudicial. For example, the drawings on pages 11
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`and 26 are inaccurate and unfair representations of the prior art, not authentic, and
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`lack foundation.
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`Patent Owner objects to Exhibit 1002 under Fed. R. Evid. 401 and 402 to the
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`extent it relates to issues on which the Board did not institute review in its May 8,
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`2017 Decision (Paper 6). Specifically, at least paragraph 69 relates solely to
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`issuess on which the Board did not institute review. Patent Owner further objects
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`to Exhibit 1002 under Fed. R. Evid. 401 and 402 to the extent it cites or relies upon
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`references, exhibits, or grounds not expressly adopted by the Board.
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`3.
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`Ex. 1007
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`Patent Owner objects to Exhibit 1007 under Fed. R. Evid. 401 and 402 as
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`irrelevant to the issues in this proceeding.
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`Patent Owner additionally objects to Exhibit 1007 under Fed. R. Evid. 901
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`as lacking authenticity. Patent Owner objects to Exhibit 1007 under Fed. R. Evid.
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`3
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`802 as inadmissible hearsay. Patent Owner also objects to Exhibit 1007 because it
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`is not a printed publication. Specifically, there is no evidence that this document
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`was publicly available.
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`Patent Owner has made these objections within 10 business days from the
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`Respectfully submitted,
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`/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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`May 8, 2017 institution of trial.
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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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`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 OBJECTIONS UNDER 37 C.F.R. § 42.64(b)(1)
`TO EVIDENCE SUBMITTED WITH PETITION FOR INTER PARTES REVIEW
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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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`I hereby certify on this 22nd day of May 2017, that a true and correct copy
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`of the PATENT OWNER’S OBJECTIONS UNDER 37 C.F.R. § 42.64(b)(1) TO EVIDENCE
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`SUBMITTED WITH PETITION FOR INTER PARTES REVIEW was sent in its entirety via
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`electronic mail 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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