`
`Filed on behalf of Pi-Net International, Inc.
`By: Tam Thanh Pham
`
` L. May Eaton
`
` Colby B. Springer
` LEWIS ROCA ROTHGERBER LLP
`
`
` 2440 W. El Camino Real, Sixth Floor
`
` Mountain View, CA 94040
`
` Tel: (650) 391-1380
`
` Fax: (650) 391-1395
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`Covered Business Method Patent Review of U.S. Patent No. 8,037,158
`_____________________
`
`SAP AMERICA, INC.
`
`Petitioner
`
`v.
`
`PI-NET INTERNATIONAL, INC.
`
`Patent Owner
`
`_____________________
`
`
`CASE CBM2013-00013
`
`Patent 8,037,158
`
`_____________________
`
`
`PATENT OWNER’S OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`
`
`(i)
`
`Table of Contents
`
`Introduction ........................................................................................................ 1
`
`(ii) Exhibits 2014–2016, 2018, and 2019 are Properly Authenticated ....... 1
`
`(iii) Exhibits 2014–2016, 2018, and 2019 are Not Hearsay ........................... 4
`
`(iv) Exhibits 2014–2016, 2018, and 2019 are Relevant ................................... 5
`
`(v) Conclusion .......................................................................................................... 6
`
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`
`
`Cases
`
`Table of Authorities
`
`(i)
`
`Loraine v. Markel American Insurance Co., 241 F.R.D. 534
`
`(D. Md. 2007) ..................................................................................... 1
`
`(ii) Premier Nutrition, Inc. v. Organic Food Bar, Inc., No.
`
`SACV-06-0827 AG (RNBx), 2008 WL. 1913163
`
`(C.D. Cal. Mar. 27, 2008) ................................................................. 1
`
`(iii) Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146
`
`(C.D. Cal. 2002) ................................................................................. 2
`
`(iv) U.S. v. Vidacak, 553 F.3d 344, 349 (4th Cir. 2009) .......................... 3
`
`(v) Alexander v. CareSource, 576 F.3d 551 (6th Cir. 2009)................... 3
`
`(vi) United States v. Tank, 200 F.3d 627 (9th Cir. 2000) ......................... 3
`
`(vii) Neev v. Abbott Med. Optics, Inc., CIV. 09-146 RBK,
`
`2012 WL 1066797 (D. Del. Mar. 26, 2012) ...................................... 4
`
`(viii) Eli Lilly and Co. v. Barr Labs., Inc., 251 F.3d 955 (Fed. Cir. 2001) 5
`
`(ix)
`
`(x)
`
`
`
`
`
`In re Wilson, 311 F.2d 266, 268–269 (CCPA 1962) ......................... 5
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`
`2014 WL 869413 (Patent Tr. & App. Bd. Feb. 14, 2014) ................. 6
`
`
`
`ii
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`
`Statutes
`
`(xi) FED. R. EVID. 901(A) ...................................................................................... 3
`
`(xii) FED. R. EVID. 801(C)(2) ..................................................................... 4
`
`(xiii) FED. R. EVID. 401(a) ................................................................................. 5, 6
`
`iii
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`
`
`
`
`I.
`
`Introduction
`
`Patent Owner Pi-Net International, Inc. (“Patent Owner”) opposes Petitioner
`
`SAP America Inc.’s (“Petitioner”) Motion to Exclude Evidence in this proceeding,
`
`and requests that the Board deny the motion it its entirety. As shown below, and
`
`contrary to Petitioner’s representations, the documentary evidence subject to
`
`Petitioner’s motion is admissible under the Federal Rules of Evidence and the
`
`Code of Federal Regulations.
`
`The Board should dismiss Petitioner’s Motion to Exclude Patent Owner’s
`
`Exhibits 2014–2016, 2018, and 2019 in its entirety, because each of the Exhibits is
`
`properly authenticated and non-hearsay. Additionally, Exhibits 2014–2016, 2018,
`
`and 2019 are admissible under FRE 401 and do not lack foundation.
`
`II. Exhibits 2014–2016, 2018, and 2019 are Properly Authenticated
`
` Printouts of electronic information have long been held to be admissible.
`
`See e.g., Loraine v. Markel American Insurance Co., 241 F.R.D. 534, 576–583 (D.
`
`Md. 2007). Exhibits 2014–2016, 2018, and 2019 are printouts of webpages. In
`
`determining whether printouts of Internet websites are sufficiently authenticated,
`
`courts will consider the “distinctive characteristics” of the website. See Premier
`
`Nutrition, Inc. v. Organic Food Bar, Inc., No. SACV-06-0827 AG (RNBx), 2008
`
`WL. 1913163, at *6 (C.D. Cal. Mar. 27, 2008) aff'd, 327 F. App'x 723 (9th Cir.
`
`2009). For example, printouts of webpages have been determined to be
`
`1
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`
`sufficiently authenticated when the printouts include dates and web addresses. See
`
`id. (finding printouts of webpages were authenticated when printouts included web
`
`addresses and dates); see also Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F.
`
`Supp. 2d 1146, 1153 (C.D. Cal. 2002) (finding computer printouts that included
`
`“circumstantial indicia of authenticity (such as the dates and web addresses)” were
`
`admissible, especially given declarations by a witness that the printouts were true
`
`and correct copies of what was posted online).
`
` Patent Owner’s Exhibits 2014–2016, 2018 are computer printouts of
`
`websites, each having circumstantial indicia of authenticity, including a web
`
`address and dates. Exhibit 2019 is also a computer printout of a website including
`
`the web address. As such, each of Exhibits –2016, 2018, and 2019 are sufficiently
`
`authenticated. See Ex. 2014–2016 and 2018 (showing respective access date
`
`stamps, modification dates, and web addresses); Ex. 2019 (showing web address).
`
`
`
`Additionally, Patent Owner’s Declaration Pursuant to 37 C.F.R. §
`
`42.64(b)(2) by Dr. Lakshmi Arunachalam authenticates and provides URL links to
`
`each of Exhibits 2014–2016, 2018, and 2019. See Paper 38, 2 (“Each of the above
`
`exhibits is a true, authentic and correct copy of the original documents referenced,
`
`above.”). Petitioner contends that Patent Owner’s Declaration Pursuant to 37
`
`C.F.R. § 42.64(b)(2) by Dr. Lakshmi Arunachalam fails to authenticate Exhibits
`
`2014–2016, 2018, and 2019 because it has allegedly not been shown that Dr.
`
`2
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`
`Arunachalam has any “personal knowledge” about these Exhibits. This argument,
`
`however, rests on a faulty legal premise. Patent Owner need only produce
`
`evidence “sufficient to support a finding” that the reference “is what the proponent
`
`claims it is.” See FED. R. EVID. 901(A). This burden is “not high” and requires
`
`only a “prima facie showing” that the evidence is what the proponent claims it to
`
`be. U.S. v. Vidacak, 553 F.3d 344, 349 (4th Cir. 2009).
`
`
`
`Additionally, Exhibits 2014–2016 and 2018 are also self-authenticating
`
`under FRE 902(7) because they contain authenticating trade inscriptions, such as
`
`copyright (©) and trademark (™, ®) symbols indicating the respective party’s
`
`ownership and control over the material of the Exhibits. See Ex. 2014 at 2; Ex.
`
`2015 at 4; Ex. 2016 at 3; Ex. 2018 at 7; see also Alexander v. CareSource, 576
`
`F.3d 551, 561 (6th Cir. 2009).
`
`
`
`Furthermore, Petitioner’s conclusory allegation that Exhibits 2014–2016,
`
`2018, and 2019 lack foundation is without merit. None of Exhibits 2014–2016,
`
`2018, and 2019 lack foundation. To give a document foundation, the document’s
`
`proponent need only make a showing of authenticity “sufficient to support a
`
`finding that the matter in question is what its proponent claims.” United States v.
`
`Tank, 200 F.3d 627, 630 (9th Cir. 2000) (quoting FED. R. EVID. 901(A)). As
`
`described above, Patent Owner has made a sufficient showing of authenticity of
`
`3
`
`
`
`
`these Exhibits, and accordingly, each of Exhibits 2014–2016, 2018, and 2019 is
`
`Case CBM2013-00013
`Patent 8,037,158
`
`supported by a proper foundation and sufficiently authenticated.
`
`III. Exhibits 2014–2016, 2018, and 2019 are Not Hearsay
`
`
`
`Petitioner next argues that Exhibits 2014–2016, 2018, and 2019 are
`
`inadmissible hearsay under FRE 801, because the Exhibits are allegedly out-of-
`
`court statements used to support Patent Owner’s positions. FRE 801 expressly
`
`requires, however, that a statement, in order to be considered hearsay, must be
`
`offered “to prove the truth of the matter asserted in the statement,” not simply
`
`offered in support of a position, as alleged by Petitioner. FED. R. EVID. 801(C)(2).
`
`
`
`Petitioner points to one submission in which these Exhibits were allegedly
`
`relied on for proving the truth of the matter asserted, Patent Owner’s Corrected
`
`Patent Owner Response to the Petition (Paper 36). Regarding each of the
`
`referenced statements concerning Exhibits 2014–2016, 2018, and 2019, the
`
`statements are offered as evidence of the manner in which a person of ordinary
`
`skill in the art would understand the teachings of each respective Exhibit.
`
`Specifically, in the Corrected Response to the Petition, Patent Owner cites to the
`
`web pages provided in Exhibits 2014–2016, 2018, and 2019 for purposes of claim
`
`construction. See Paper 36, 18–20, 24–26, 32–33, 42–44. It is well established
`
`that evidence proffered to show effect on a person of ordinary skill in the art is not
`
`hearsay. Neev v. Abbott Med. Optics, Inc., CIV. 09-146 RBK, 2012 WL 1066797
`
`4
`
`
`
`
`(D. Del. Mar. 26, 2012) (“Statements in a reference offered for their effect on one
`
`of ordinary skill in the art are not hearsay.”)(citing Abbott Labs v. Diamedix Corp.,
`
`Case CBM2013-00013
`Patent 8,037,158
`
`969 F. Supp. 1064, 1066 n.1 (N.D. Ill. 1997)).
`
`IV. Exhibits 2014–2016, 2018, and 2019 are Relevant
`
`
`
`Petitioner’s allegations that Exhibits 2014–2016, 2018, and 2019 are
`
`irrelevant lacks merit. FRE 401 provides that evidence is relevant if “it has any
`
`tendency to make a fact more or less probable than it would be without the
`
`evidence.” FED. R. EVID. 401(a). Exhibits 2014–2016, 2018, and 2019 are offered
`
`for purposes of claim construction and establishing the effect of the respective
`
`Exhibits on a person of ordinary skill in the art, as described above.
`
`
`
`Petitioner contends that Exhibits 2014–2016, 2018, and 2019 are irrelevant
`
`because they are allegedly from “webpage entries that post-date the relevant time
`
`period.” It is well settled, however, that references having publication dates after
`
`the critical date may be cited to show the state of the art at or around the time of
`
`the invention. Eli Lilly and Co. v. Barr Labs., Inc., 251 F.3d 955, 969–70 (Fed.
`
`Cir. 2001); see also In re Wilson, 311 F.2d 266, 268–269 (CCPA 1962).
`
`Moreover, the Board has recognized “that there is a strong public policy for
`
`making all information filed in an administrative proceeding available to the
`
`public, especially in a covered business method patent review, which determines
`
`the patentability of claims in an issued patent. It is better to have a complete
`
`5
`
`
`
`
`record of the evidence submitted by the parties than to exclude particular pieces of
`
`Case CBM2013-00013
`Patent 8,037,158
`
`evidence.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., 2014 WL
`
`869413 at *21 (Patent Tr. & App. Bd.), (declining to grant a motion to exclude
`
`evidence as irrelevant for allegedly having a publication date after the critical
`
`date). Accordingly, Exhibits 2014–2016, 2018, and 2019 meet the FRE 401
`
`standard for relevance. See FED. R. EVID. 401(a).
`
`V. Conclusion
`
`For at least the foregoing reasons, Petitioner’s Motion to Exclude should be
`
`denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: May 28, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Q
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`LEWIS ROCA ROTHGERBER LLP
`
`______
`/Tam Thanh Pham/
`Tam Thanh Pham (50,565)
`L. May Eaton (68,214)
`Colby B. Springer (pro hac vice)
`Attorneys for Patent Owner
`2440 W. El Camino Real, Sixth Floor
`Mountain View, CA 94040
`650.391.1380
`
`
`
`
`6
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`
`
`CERTIFICATION OF SERVICE
`
`
`The undersigned hereby certifies that the above-captioned:
`
`
`PATENT OWNER’S OPPOSITION TO MOTION TO EXCLUDE
`EVIDENCE
`
`
`
`
`
`
`
`Respectfully submitted,
`LEWIS ROCA ROTHGERBER LLP
`
`
`
`
`
`
`in Case CBM2013-00013 were served in its entirety on May 28, 2014, upon the
`following parties via email:
`
`Lori A. Gordon and Michael Q. Lee
`
`
`
`SAP America, Inc
`STERNE, KESSLER, GOLDSTEIN
`
`
`
`Attn: Samir N. Pandya
`& FOX P.L.L.C.
`
`
`
`
`
`
`Sr. IP Counsel
`
`1100 New York Avenue, NW
`
`
`SAP Global Litigation Group
`Washington, DC 20005
`
`
`3999 West Chester Pike
`lgordon-PTAB@skgf.com
`
`
`Newtown Square, PA 19073
`mlee-PTAB@skgf.com
`
`
`610.661.9767
`
`
`Attorneys for Petitioner
`
`
`Samir.pandya@sap.com
`Petitioner’s correspondence address Of record at the USPTO PTAB
`
`
`
`
`
`
`
`Date: May 28, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`______
`/Tam Thanh Pham/
`Tam Thanh Pham (50,565)
`Attorney for Patent Owner
`2440 W. El Camino Real, Sixth Floor
`Mountain View, CA 94040
`650.391.1380
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
