UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAP AMERICA, INC.
`Petitioner
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`v.
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`PI-NET INTERNATIONAL, INC.
`Patent Owner
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`Case CBM2013-00013
`Patent 8,037,158
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAP AMERICA, INC.
`Petitioner
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`v.
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`PI-NET INTERNATIONAL, INC.
`Patent Owner
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`Case CBM2013-00013
`Patent 8,037,158
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`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Petitioner SAP America, Inc. files this motion pursuant to 37 C.F.R. §
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`42.64(c), and according to the Scheduling Order (Paper 16). The Board should
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`exclude Patent Owner Pi-Net International, Inc.’s Exhibits 2014-2016, 2018, and
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`2019 because they are (1) unauthenticated, (2) hearsay, or (3) both. Additionally,
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`Exhibits 2014-2016, 2018, and 2019 are inadmissible under FRE 401. And
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`Exhibits 2014-2016, 2018, and 2019 lack foundation.
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`SAP timely objected to these exhibits on January 27, 2014 and February 12,
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`2014. Because these exhibits are fundamentally flawed and improper, the Board
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`should exclude them.
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`1. The Arunachalam Declaration’s Attempt to Authenticate Documents is
`not Proper under FRE 901
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`The Board should exclude Exhibits 2014-2016, 2018, and 2019 because they
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`are not authenticated. It is a fundamental tenant that all evidence must be genuine
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`before it can be weighed by the finder of fact. And Federal Rule of Evidence
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`901(a) provides that genuineness of evidence is established by authentication.
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`This rule asserts that to authenticate, “the proponent must produce evidence
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`sufficient to support a finding that the item is what the proponent claims it is.” Fed.
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`R. Evid. 901(a). A party need only make a prima facie showing of authenticity;
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`however, this hurdle has presented particular difficulty for electronically stored
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`information due to its manipulability and ubiquity as a communications medium. A
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`court will admit evidence if sufficient proof has been introduced that would enable
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`a reasonable juror to find authenticity or proper identification. United States v.
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`Tank, 200 F.3d 627, 630 (9th Cir. 2000). Each piece of evidence must be
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`authenticated in this manner, taking into consideration any unique characteristics.
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`Here, Pi-Net has failed to properly authenticate Exhibits 2014-2016, 2018,
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`and 2019. Pi-Net’s sole attempt to authenticate these exhibits is a single sentence
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`in Dr. Arunachalam’s February 5, 2014 declaration: “Each of the above-mentioned
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`exhibits is a true, authentic and correct copy of the corresponding original
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`document, as described above.” Paper 38, ¶3. But Dr. Arunachalam has no basis to
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`make such a statement.
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`A review of the exhibits Dr. Arunachalam attempts to authenticate highlights
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`the problem. All five exhibits are printouts of webpages. For example, Exhibits
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`2014 and 2016 are from www.webopedia.com. Exhibits 2015 and 2018 are from
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`Wikipedia, a website that anyone can alter at any time. And Exhibit 2019 is from
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`webtrends.about.com.
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`Like books, webpages may be authenticated under Rule 901(b)(1) by
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`testimony of someone with personal knowledge. But there is no indication Dr.
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`Arunachalam has any personal knowledge about these websites. Conversely,
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`webpage printouts without supporting personal knowledge testimony or an
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`affidavit have been deemed inadmissible. For example, in In re Homestore.com,
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`the court refused to accept a party’s attempt to authenticate website printouts
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`detailing financial information In re Homestore.com, Inc. Sec. Litig., 347 F. Supp.
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`2d 769, 783 (C.D. Cal. 2004). The court reasoned that authenticity could be
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`provided by a person with knowledge of the site, such as a site visitor or an
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`administrator. Because these documents were unsupported by testimony and were
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`not self-authenticating, they did not fulfill the requirements of Rule 901(a). Id.
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`2. The Board should Strike Exhibits 2014-2016, 2018, and 2019 as Hearsay
`The Board should strike Exhibits 2014-2016, 2018, and 2019 because they
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`are hearsay and do not fall into a recognized exception.
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`The rule against admitting hearsay testimony is well-established. See Fed. R.
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`Evid. 801. Here, Pi-Net attempts to admit hearsay evidence, contrary to established
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`rules. In particular, Exhibits 2014-2016, 2018, and 2019 are all out-of-court
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`statements used by Pi-Net to support their positions.
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`In Pi-Net’s Corrected Patent Owner Response to the Petition (Paper 34), Pi-
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`Net cites to Exhibit 2016 to support their distinction between the terms “internet”
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`and “world wide web.” Paper 36, p. 26. Plainly, Pi-Net is using Exhibit 2016’s out-
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`of-court statement for the truth of the matter asserted—that “internet” and “world
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`wide web” are not the same in the context of the claims in question. And Pi-Net
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`improperly uses Exhibit 2014 improperly to support its construction of “Virtual
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`Information Store.” See Paper 36, pp.42-43. Again, Pi-Net relies explicitly on
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`www.webopedia.com for the definition of virtual. Using these exhibits violates
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`Rule 802’s prohibition against hearsay absent an exception. But no exception
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`under Rule 803 applies here.
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`Pi-Net also uses Exhibit 2015 improperly to support their construction of
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`“data structure.” See Paper 36, pp. 32-33. Pi-Net uses this Wikipedia entry to
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`suggest that “[a]n object is a data structure…” Id. at 33.
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`Similarly, Pi-Net uses Exhibit 2018 and 2019 improperly. In its Corrected
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`Response to the Petition, Pi-Net relies on these two exhibits, which are printouts of
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`webpages, for support for their construction of “Web Application”. See Paper 36,
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`pp.18-19. In fact, Pi-Net explicitly relies on Exhibit 2018’s statement that “A web
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`application is any application that uses a web browser as a client” to support their
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`construction. And Pi-Net uses a full paragraph on “What is a client?” from Exhibit
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`2019 in support of their construction.
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`Pi-Net’s reliance on these documents are improper. Wikipedia is not a
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`reliable source, as it is free to anyone to edit. This is particularly important as the
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`exceptions to hearsay are “proceed[] upon the theory that under appropriate
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`circumstances a hearsay statement may possess circumstantial guarantees of
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`trustworthiness….” See Fed. R. Evid. 803, Advisory Committee Notes. Here,
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`there are no hallmarks of trusthworthiness as there is no indication who drafted
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`those internet entries, or even if Pi-Net themselves drafted them.
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`3. The Board Should Strike Exhibits 2014-2016, 2018, and 2019 as
`Irrelevant
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`Exhibits 2014-2016, 2018, and 2019 are also irrelevant and should be
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`inadmissible for that reason as well.
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`As with authentication, relevance is a threshold question for admissibility.
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`See Fed. R. Evid. 104(a) (“The court must decide any preliminary question about
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`whether…evidence is admissible.”). The test for relevance is straightforward:
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`Evidence is relevant if it has any tendency to make a fact more or less probable
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`than it would be without the evidence. Fed. R. Evid. 401.
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`Here, Exhibits 2014-2016, 2018, and 2019 fail this simple test. These five
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`exhibits are used by Pi-Net to support their claim constructions. Yet none of these
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`exhibits tend to make Pi-Net’s construction more or less probable. This is because
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`these exhibits are from webpage entries that post-date the relevant time period
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`here—which is November 13, 1995. But Pi-Net does not submit these webpages as
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`of that date.
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`Instead, these five exhibits are from over fifteen years after the relevant date.
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`Exhibit 2014, for example, is a December 9, 2013 printout. There is no indication
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`as to when this entry was made. And more importantly, there is no indication
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`webopedia even existed in 1995. It is plainly irrelevant to claim construction to use
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`citations that do not inform what a person of ordinary still would understand at the
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`time of filing. See 35 U.S.C. § 112; see also Sandisk Corp. v. Memorex Prods., 415
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`F.3d 1278 (Fed. Cir. 2005) (“The court's claim construction ascribes claim terms
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`the meaning they would be given by persons of ordinary skill in the relevant art at
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`the time of the invention.”).
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`A similar issue exists with Exhibits 2015, 2016, 2018, and 2019. Exhibit
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`2015 was also printed out on December 9, 2013 without any indication that the
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`Wikipedia entry is from any relevant time period. Indeed, the entry references
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`articles, books, and webpages from the 2000s demonstrating that it is not from
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`1995. Exhibit 2016 states it was last updated “05-14-2013” and posted “06-24-
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`2010.” Exhibit 2018, like Exhibit 2015, is a January 20, 2014 printout of a
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`Wikipedia entry. That entry cites to references from as late as January 20, 2014—
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`the same day it was printed out. And Exhibit 2019 is dateless.
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`These exhibits are irrelevant and should be excluded. Internet postings
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`fifteen to eighteen years after the filing date of the patent at issue here are
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`irrelevant under FRE 401 as they do not tend to make a fact less or more probable.
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`They cannot speak to that fact at all.
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`4. Conclusion
`SAP timely objected to Pi-Net’s improper exhibits. Now SAP asks the
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`Board in its role as gatekeeper to prevent Pi-Net from relying on unauthenticated
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`or hearsay documents. These exhibits do not meet the threshold for admissibility
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`and should be prevented from entering the record.
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`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Michael Q. Lee/
`Michael Q. Lee
`Registration No. 35,239
`Attorney for Petitioner
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`Date: May 14, 2014
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that on this 14th day of May, 2014, "Petitioner’s
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`Motion to Exclude Evidence" was served electronically via e-mail upon the following
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`counsel for Patent Owner, PI- NET INTERNATIONAL, INC.:
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`Tam Thanh Pham, Reg. No. 50565
`LEWIS ROCA ROTHGERBER LLP
`2440 W. El Camino Real, Sixth Floor
`Mountain View, CA 94040
`Tel.: 650.391.1386
`Fax: 650.687.8492
`tpham@lrrlaw.com
`Pi-Net_PTAB@lrrlaw.com
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`Lauren May Eaton, Reg. No. 68214
`LEWIS ROCA ROTHGERBER LLP
`2440 W. El Camino Real, Sixth Floor
`Mountain View, CA 94040
`Tel.: 650.391.1395
`Fax: 650.687.8492
`Pi-Net_PTAB@lrrlaw.com
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`Colby B. Springer, pro hac vice
`LEWIS ROCA ROTHGERBER LLP
`2440 W. El Camino Real, Sixth Floor
`Mountain View, CA 94040
`Tel.: 650.391.1394
`cspringer@lrrlaw.com
`Pi-Net_PTAB@lrrlaw.com
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`Date: May 14, 2014
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
` (202) 371-2600
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`Bryan Boyle, Reg. No. 52644
`CARR & FERRELL LLP
`120 Constitution Drive
`Menlo Park, CA 94025
`Tel.: 650.812.3465
`Fax: 650.812.3444
`bboyle@carrferrell.com
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`Lawrence B. Goodwin, Reg. No. 29642
`LAWRENCE B. GOODWIN, P.C.
`525 East 86th Street, Suite 5H
`New York, NY 10028
`Tel.: 212.988.1076
`Fax: 646.619.4161
`LawrenceGoodwinPC@gmail.com
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`Gerald P. Dodson, Reg. No. 32787
`CARR&FERRELL LLP
`120 Constitution Drive
`Menlo Park, CA 94025
`Tel.: 650.812.3496
`Fax: 650.812.3444
`jdodson@carrferrell.com
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`STERNE, KESSLER, GOLDSTEIN &
`FOX P.L.L.C
`/Michael Q. Lee/
`Michael Q. Lee
`Attorney for Petitioner
`Registration No. 35,239
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