Paper No. _____
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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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`THE UNITED STATES POSTAL SERVICE (USPS)
`AND THE UNITED STATES OF AMERICA,
`AS REPRESENTED BY THE POSTMASTER GENERAL
`Petitioner,
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`v.
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`RETURN MAIL, INC.
`Patent Owner.
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`____________
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`Case CBM2014-00116
`Patent 6,826,548
`____________
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`PATENT OWNER RETURN MAIL, INC.’S OBJECTIONS TO
`PETITIONER’S EVIDENCE
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`Page 1
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`RMI EXHIBIT 2053
`CBM2014-00116
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE UNITED STATES POSTAL SERVICE (USPS)
`AND THE UNITED STATES OF AMERICA,
`AS REPRESENTED BY THE POSTMASTER GENERAL
`Petitioner,
`
`v.
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`RETURN MAIL, INC.
`Patent Owner.
`
`____________
`
`Case CBM2014-00116
`Patent 6,826,548
`____________
`
`PATENT OWNER RETURN MAIL, INC.’S OBJECTIONS TO
`PETITIONER’S EVIDENCE
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`1
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`RMI EXHIBIT 2053
`CBM2014-00116
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
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`Patent Owner Return Mail, Inc. (“RMI”) hereby objects to the admissibility of
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`the evidence cited in support of the Petition (Paper 2). As set forth with particularity
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`below, RMI’s objections are based on the Federal Rules of Evidence, relevant case law
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`and the Board’s Rules governing the present covered business method patent review
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`of U.S. Patent No. 6,826,548 (“the ‘548 patent”).
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`Exhibit 1008
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`In accordance with Bd. R. 42.64, RMI objects to Exhibit 1008 (Declaration of
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`Joe Lubenow) on the following grounds. Generally, Patent Owner objects based on
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`FRE 104(a), 104(b), 401-403, 601-602, and 701-703 because Lubenow’s testimony is
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`largely based on information from counsel, adopts incorrect claim constructions, and
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`consists of conclusory statements that the elements of Claims 39-44 of the ‘548 patent
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`are contained in the prior art reference 1997 ACS (Exhibit 1004).
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`Patent Owner objects to Exhibit 1008 under FRE 401-403 as containing
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`irrelevant information that is not admissible. More specifically, ¶¶ 36-68 relate to
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`Petitioner’s impermissible broadening argument, which is not one of the grounds at
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`issue in this proceeding. Further, ¶¶ 70-83 relate to Petitioner’s proposed claim
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`constructions, which were not adopted by the Board. Also, the following paragraphs
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`relate to prior art and/or grounds not at issue in this proceeding: ¶¶ 84, 86-170, 237-
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`305.
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`RMI EXHIBIT 2053
`CBM2014-00116
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`Patent Owner objects to Exhibit 1008 under FRE 702 because it will not assist
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`the Board in understanding the evidence or determining facts at issue. Further, the
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`opinions in Exhibit 1008 are not based on sufficient facts or data. For example, many
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`of the citations to 1997 ACS (Exhibit 1004) are incorrect, incomplete, or taken out of
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`context. Further, there is no explanation provided as to how Lubenow reaches his
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`conclusions. His opinions are not the product of reliable principles or methods, and
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`he did not apply any reliable principles or methods to the facts. Additionally, many of
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`his opinions throughout the background sections and the discussion of 1997 ACS are
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`conclusory.
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`Patent Owner also objects to Exhibit 1008 under FRE 702 because Lubenow is
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`not qualified to act as an expert in this case. There is no indication that he has the
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`experience or qualifications to provide expert testimony on the grounds at issue in
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`this proceeding.
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`Patent Owner objects to Exhibit 1008 under FRE 703 because of Lubenow’s
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`reliance on Exhibits 1003, 1018, and 1019, which are inadmissible themselves, as
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`discussed below.
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`Further, Patent Owner objects to ¶ 3 of Exhibit 1008 under FRE 104, 401-403,
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`601-602, and 701-703. Patent Owner objects to ¶¶ 4-8 of Exhibit 1008 under FRE
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`104, 601-602, and 702-703 because there is an inadequate foundation for his
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`testimony as an expert in this proceeding. Patent Owner objects to ¶¶ 27-30 of
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`Exhibit 1008 under FRE 104, 401-403, 601-602, and 701-703 because they include
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`RMI EXHIBIT 2053
`CBM2014-00116
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`opinions that rely on claim constructions that are contrary to the claim constructions
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`adopted by the Board. Patent Owner objects to ¶¶ 32-35 of Exhibit 1008 under FRE
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`104, 401-403, 601-602, and 701-703. Based on the Board’s decision, any opinions
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`within these paragraphs are irrelevant. Further, these opinions rely on claim
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`constructions contradicted by the Board’s claim construction adoption, and they
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`include opinions that Lubenow is not qualified to testify about as an expert. Patent
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`Owner objects to ¶¶ 36-68 of Exhibit 1008 under FRE 104, 401-403, 601-602, and
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`701-703. Based on the Board’s decision, any opinions within these paragraphs are
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`irrelevant. Further, these opinions rely on claim constructions contradicted by the
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`Board’s claim construction adoption, and they include opinions that Lubenow is not
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`qualified to testify about as an expert. Patent Owner objects to ¶ 69 of Exhibit 1008,
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`regarding person of ordinary skill in the art, under FRE 104, 401-403, 601-602, and
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`701-703. Lubenow’s opinion on this topic is not based on any facts or bases, and
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`there is no explanation as to how he arrived at this opinion. Patent Owner objects to
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`¶¶ 70-83 of Exhibit 1008 under FRE 104, 401-403, 601-602, and 701-703. As stated
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`above, Lubenow’s opinions on claim construction are irrelevant and contradicted by
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`the Board’s claim construction.
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`Exhibit 1018
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`Patent Owner objects to Exhibit 1018 (United States Postal Service’s
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`Redirection History) because it is inadmissible hearsay under FRE 802, and it is not
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`authenticated under FRE 901. Further, it is irrelevant under FRE 401-403.
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`RMI EXHIBIT 2053
`CBM2014-00116
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`Exhibit 1019
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`Patent Owner objects to Exhibit 1019 (Move Update, April 1997) because it is
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`inadmissible hearsay under FRE 802, and it is not authenticated under FRE 901.
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`Further, it is irrelevant under FRE 401-403.
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`Exhibits 1003, 1005, 1006, 1007, 1013, and 1014
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`Patent Owner objects to the following exhibits as irrelevant under FRE 402
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`because they relate to grounds not at issue in this proceeding: Exhibits 1003, 1005,
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`1006, 1007, 1013, and 1014.
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`These objections are being timely served within ten business days of initiation
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`of this CBM proceeding and the granting, in part, of the Petition (Paper 2), to which
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`the evidence objected to above was attached.
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`Dated: October 30, 2014
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`Respectfully submitted,
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`/Douglas H. Elliott/
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`Douglas H. Elliott (Reg. No. 32,982)
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`THE ELLIOTT LAW FIRM, PLLC
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`6750 West Loop South, Suite 920
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`Bellaire, Texas 77401
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`(832) 485-3508
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`(832) 485-3511 fax
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` delliott@elliottiplaw.com
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` Attorney for Patent Owner
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`Page 5
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`RMI EXHIBIT 2053
`CBM2014-00116
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing Patent Owner Return Mail, Inc.’s
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`Objections to Petitioner’s Evidence was served on October 30, 2014, by FEDERAL
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`EXPRESS standard overnight shipping to the following attorneys of record for
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`Petitioner as well as by electronic service at the e-mail address listed below.
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`
`Lionel Lavenue
`Erika Arner
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190
`USPS-RMI-CBM@finnegan.com
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`/Douglas H. Elliott/
`Douglas H. Elliott
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`Registration No. 32,982
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` Attorney for Patent Owner
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`Page 6
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`RMI EXHIBIT 2053
`CBM2014-00116
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