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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 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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`Pursuant to 37 C.F.R. § 42.64(c) and the Scheduling Order (Paper No. 7),
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`Patent Owner timely submits this Motion to Exclude Evidence. Patent Owner
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`moves to exclude certain figures in the Petition for Inter Partes Review (Paper No.
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`1) (“Petition”), portions of Exhibit 1002, and Exhibit 1007. The Board should
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`grant Patent Owner’s Motion to Exclude for the reasons set forth below.
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`I.
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`STATEMENT OF FACTS
`The Board instituted inter partes review of (1) claims 44 and 49 as allegedly
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`unpatentable under 35 U.S.C. § 103 (a) over Fujinawa and Kokubo, and (2) claim
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`49 as allegedly unpatentable under 35 U.S.C. § 103 (a) over Fujinawa and
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`Watanabe. (Institution Decision, Paper No. 6, p. 20.) Patent Owner timely served
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`Petitioner with objections to the admissibility of certain figures in the Petition,
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`portions of Exhibit 1002, and Exhibit 1007 on May 22, 2017. (Paper No. 8.)
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`Petitioner did not respond to the objections by filing supplemental evidence within
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`the time period allowed by the rules.
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`II.
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`IDENTIFICATION OF WHERE EVIDENCE WAS RELIED UPON
`The following is a listing of where in the record the evidence sought to be
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`excluded was relied on by the Petitioner:
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`A. Petition
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`Petitioner relied on the illustration on page 11 of the Petition on pages 11 and
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`12 of the Petition.
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`1
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`B. Exhibit 1002
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`Petitioner relied on the objected to portions of Exhibit 1002 (Senn Declaration)
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`in its Petition. Specifically, Petitioner referenced paragraph 28 of Exhibit 1002 on
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`page 11 of the Petition. Petitioner referenced paragraph 69 on pages 39 and 40 of
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`the Petition.
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`C. Exhibit 1007
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`Petitioner relied on this exhibit in the Petition at pages 12–16. Petitioner also
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`relied on this exhibit in Exhibit 1002 (Senn Declaration) at paragraphs 30–32 and
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`34–36.
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`III. ARGUMENT
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`Each of the above identified challenged exhibits are addressed in turn, in
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`numerical order, beginning with the inadmissible portions of the Petition itself.
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`A. The Drawings And Figures In The Petition Are Inadmissible
`Because They Lack Foundation And Are Unduly Prejudicial
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`Patent Owner timely objected to the drawings and figures in the Petition
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`under 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.
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`(Paper No. 8 at 1.) Federal Rules of Evidence 401 and 402 provide the framework
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`for determining if evidence is inadmissible due to relevance: evidence is relevant if
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`it has a “tendency to make a fact more or less probable than it would be without the
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`evidence,” Fed. R. Evid. 401, and “[i]rrelevant evidence is not admissible.” Fed.
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`2
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`R. Evid. 402. However, under Federal Rule of Evidence 403, the Board “may
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`exclude relevant evidence if its probative value is substantially outweighed by a
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`danger of one or more of the following: unfair prejudice, confusing the issues,
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`misleading the jury . . . .” Additionally, the Petitioner must authenticate the
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`evidence on which it relies, “[t]o satisfy the requirement of authenticating or
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`identifying an item of evidence, the proponent must produce evidence sufficient to
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`support a finding that the item is what the proponent claims it is.” Fed. R. Evid.
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`901.
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`Here, the unsupported illustration should be excluded as irrelevant and
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`highly prejudicial. Specifically, the illustration on page 11 of the Petition is an
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`inaccurate and unfair representation of the purported prior art. This inadmissible
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`illustration is also provided in the Senn Declaration (See Ex. 1002, ¶ 28.) The
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`Petitioner fails to authenticate how this illustration is a “well-known prior art
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`process” by producing evidence sufficient to support that contention in either the
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`Petition or the Senn Declaration (Ex. 1002). Rather, the only support for this
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`position is the statement that this illustration “is a schematic representation of the
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`Fujinawa microform imaging apparatus (e.g., Ex. 1004 at Fig. 4).” (Ex. 1002, ¶
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`28.) This illustration when it is nothing more than a one-sided interpretation and
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`representation of a figure disclosed in Fujinawa. Accordingly, this illustration
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`should be excluded.
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`3
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`B.
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`The Figure Of Ex. 1002 Is Inadmissible Because It Lacks
`Foundation And Is Unduly Prejudicial
`The drawings and figures in Ex. 1002 were timely objected to under Fed. R.
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`Evid. 401–403, 602, 702, 703, and 901 as lacking authenticity, lacking foundation,
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`lacking personal knowledge, assuming facts not in evidence, unfair
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`representations, and unduly prejudicial. As previously discussed with relation to
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`the Petition, the illustration in paragraph 28, which also appears on page 11 of the
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`Petition, is nothing more than a one-sided interpretation and representation of a
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`figure disclosed in Fujinawa, and should be excluded as unduly prejudicial.
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`C.
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`Portions Of Ex. 1002 Are Inadmissible Because They Relate To
`Claims On Which The Board Did Not Institute Review
`Patent Owner timely objected to Ex. 1002 under Fed. R. Evid. 401 and 402
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`to the extent it relates to claims on which the Board did not institute review in its
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`May 8, 2017 Decision (Paper 6). (Paper No. 8 at 3.) Specifically, at least
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`paragraph 69 relates solely to claims on which the Board did not institute review,
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`and is thus irrelevant and inadmissible.
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`D. Ex. 1007 Is Inadmissible Because It Lacks Authenticity And Is
`Hearsay
`Patent Owner also timely objected to Ex. 1007 under Fed. R. Evid. 901 as
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`lacking authenticity and under Fed. R. Evid. 802 as inadmissible hearsay. (Paper
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`No. 8 at 3.)
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`4
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`Exhibit 1007 is a Field Service Manual for a Fiche Scanstation. Exhibit
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`1007 is not self-authenticating and Petitioner has failed to provide any evidence
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`sufficient to support a finding that Ex. 1007 is indeed the item the Petitioner claims
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`it is, as required under Fed. R. Evid. 901. Accordingly, this exhibit should be
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`excluded as lacking authenticity.
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`Exhibit 1007 should also be excluded as hearsay. The admissibility of
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`hearsay is governed by Federal Rules of Evidence 802–807. Hearsay is defined in
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`Rule 801 as “a statement that: (1) the declarant does not make while testifying at
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`the current trial or hearing; and (2) a party offers in evidence to prove the truth of
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`the matter asserted in the statement.” Fed. R. Evid. 801(c). Hearsay is not
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`admissible absent an exception. Fed. R. Evid. 802. Exhibit 1007 is hearsay
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`because it contains statements made outside of this proceeding that Petitioner is
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`offering to prove the truth of the matter asserted. Petitioner failed to provide any
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`additional evidence or declarations showing how this hearsay document is not
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`hearsay, or how it qualifies under any of the enumerated exceptions. Fed. R. Evid.
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`802.
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`IV. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the
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`identified illustrations in the Petition, portions of Exhibit 1002, and Exhibit 1007
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`be excluded, and any conclusions drawn therefrom deemed unsupported.
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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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`6
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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.
`____________
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`Case IPR2017-00177
`Patent 8,537,279 B2
`____________
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`CERTIFICATE OF SERVICE
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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 December, 2017, that a true and correct
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`copy of the PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. §
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`42.64(C) was sent in its entirety via electronic mail to:
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`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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