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`Paper No. 31
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________________
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`Sony Corporation
`Petitioner
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`v.
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`FUJIFILM Corporation
`Patent Owner
`___________________
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`Case IPR2018-00876
`U.S. Patent No. 6,462,905
`___________________
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`MOTION TO EXCLUDE
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`I.
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`INTRODUCTION
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`Patent Owner moves to exclude Exhibit 1034, (ECMA 319) under the
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`Federal Rules of Evidence. Exhibit 1034 was submitted for the first time along
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`with Petitioner’s Reply, but was not cited in the Petition or Petitioner’s Reply. 37
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`C.F.R. § 42.6(a)(3). Exhibit 1034 is not prior art and is irrelevant, prejudicial, and
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`outside the proper scope of this proceeding. Patent Owner timely objected to this
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`exhibit (Paper 27).
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`II. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
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`A.
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`Federal Rules of Evidence
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`The Federal Rules of Evidence (FRE) apply to inter partes reviews.
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`37 C.F.R. § 42.62. FRE 401 and 402 provide that only relevant evidence is
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`admissible. FRE 403 allows exclusion for evidence whose probative value is
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`substantially outweighed by a danger of “unfair prejudice” or “confusing the
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`issues.”
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`B.
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`Exhibit 1034 is Irrelevant, Prejudicial, and Untimely
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`As an initial matter, Petitioner does not cite Exhibit 1034 in its Petition or in
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`Petitioner’s Reply; the document is relied upon only by Petitioner’s expert in his
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`written testimony. It should be excluded from the record on that basis alone. See
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`37 C.F.R. § 42.22 (“each petition …. must include … a detailed explanation of the
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`significance of the evidence...”); § 42.6(a)(3) (“Arguments must not be
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`incorporated by reference from one document into another document.”).
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`Exhibit 1034 is a document entitled ECMA Standard 319, titled Data
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`Interchange on 12,7 mm 384-Track Magnetic Tape Cartridges – Ultrium 1 Format.
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`Mr. von Alten first cited to Exhibit 1034 in his “Reply Declaration” submitted with
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`Petitioner’s Reply. Mr. von Alten relied on this exhibit to allegedly show that
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`“ECMA-319, the standard that the LTO consortium prepared in the late 1990s and
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`published in 2001” illustrated clearance between the braking member and the inner
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`surface of the hub. Ex. 1033 ⁋ 16, n4. In addition, Mr. von Alten relied on Exhibit
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`1034 to show that the LTO consortium allegedly “absolutely recognized that the
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`mating components that connect the braking member to the cartridge shell would
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`have clearances.” Ex. 1033 ⁋ 24.
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`However, as Mr. von Alten admits, Exhibit 1034 was “published in 2001,”
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`and thus, postdates U.S. Patent No. 6,462,905 (“’905 Patent”). The ’905 Patent
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`has a priority date of November 8, 1999 and Exhibit 1034 was not published until
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`June 2001. Thus, Exhibit 1034 is not prior art to the ’905 Patent.
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`Further, Mr. von Alten appears to rely on Exhibit 1034 to show that since
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`Exhibit 1034 allegedly discloses clearances, the prior art on which Petitioner relies
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`does as well. However, Petitioner has not provided any support for a relationship
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`between the disclosure of Exhibit 1034 and the prior art, and any alleged clearance
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`shown in Exhibit 1034 does not show or imply clearance in the prior art.
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`III. CONCLUSION
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`Because Exhibit 1034 cannot support Petitioner’s grounds submitted in the
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`Petition, Exhibit 1034 is irrelevant under FRE 401-402. Further, since Exhibit
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`1034 is not prior art, and Petitioner is using it to imply that certain features existed
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`in the prior art, Exhibit 1034 is unduly prejudicial under FRE 403.
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`May 21, 2019
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`Respectfully,
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`/Eliot D. Williams/
`Eliot D. Williams
`Reg. No. 50,822
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7511
`Facsimile: (650) 739-7611
`eliot.williams@bakerbotts.com
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the 21st day
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`of May 2019, a complete and entire copy of this Motion to Exclude was filed with
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`the PTAB through its E2E system and served via email on attorneys of record for
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`Sony at the following address:
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`Richard F. Giunta
`RGiunta-PTAB@wolfgreenfield.com
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`Michael N. Rader
`MRader-PTAB@wolfgreenfield.com
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`Randy J. Pritzker
`RPritzker-PTAB@wolfgreenfield.com
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`Nathan Speed
`Nathan.Speed@WolfGreenfield.com
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`Respectfully submitted,
`BAKER BOTTS LLP
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`May 21, 2019
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`/Eliot D. Williams/
`Eliot D. Williams
`Reg. No. 50,822
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7511
`Facsimile: (650) 739-7611
`eliot.williams@bakerbotts.com
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`FUJIFILM CORPORATION
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