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 REPLY EXHIBITS
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`Page 1
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`RMI EXHIBIT 2054
`CBM2014-00116
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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.
`
`____________
`
`Case CBM2014-00116
`Patent 6,826,548
`____________
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`PATENT OWNER RETURN MAIL, INC.’S OBJECTIONS TO
`PETITIONER’S REPLY EXHIBITS
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`1
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`Page 1
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`RMI EXHIBIT 2054
`CBM2014-00116
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`PATENT OWNER’S OBJECTIONS TO
`PETITIONER’S REPLY EXHIBITS
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`Patent Owner Return Mail, Inc. hereby objects to the admissibility of the
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`exhibits cited in support of Petitioner’s Reply (Paper 22).1 As set forth with
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`particularity below, Patent Owner’s objections are based on the Federal Rules of
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`Evidence, relevant case law and the Board’s Rules governing the present covered
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`business method patent review of U.S. Patent No. 6,826,548 (“the ‘548 patent”).
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`EXHIBIT 1025
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`Patent Owner objects to Exhibit 1025 (Auxiliary Markings Newsletter) because
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`it is inadmissible hearsay under FRE 802. Further, it is not the best evidence under
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`FRE 1002 and FRE 1004, and it is inadmissible under FRE 601-603 and 701-703
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`regarding the article cited by Petitioner and authored by Michael M. Ludeman.
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`EXHIBIT 1026
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`Patent Owner objects to Exhibit 1026 because it is inadmissible hearsay under
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`FRE 802. Further, it is not the best evidence under FRE 1002 and FRE 1004, and it is
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`inadmissible under FRE 601-603 and 701-703 regarding the article cited by Petitioner
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`and authored by Randall Root and Edward J. Kuebert. Additionally, Patent Owner
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`objects to this copy of the article because it has hand-written comments and
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`underlining, which are inadmissible under FRE 401-403.
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`1 To the extent Patent Owner has already objected to any of the exhibits cited by
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`Petitioner, Patent Owner maintains those objections.
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`2
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`Page 2
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`RMI EXHIBIT 2054
`CBM2014-00116
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`EXHIBIT 1028
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`In accordance with Bd. R. 42.64, Patent Owner objects to Exhibit 1028
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`(Supplemental Declaration of Joe Lubenow) on the following grounds. Generally,
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`Patent Owner objects based on FRE 104(a), 104(b), 401-403, 601-602, 701-703, and
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`802 because Lubenow’s opinions are not based on sufficient facts or data, lack
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`explanations, and will not assist the Board. Further, Lubenow expresses opinions
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`beyond the proper scope of a reply declaration and suggests irrelevant and incorrect
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`constructions for terms.
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`Patent Owner objects to Exhibit 1028 under FRE 104(a), 601-603, and 702
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`because Lubenow is not qualified to act as an expert in this case. There is no
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`indication that he has the experience or qualifications to prove expert testimony on
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`the grounds at issue in this proceeding.
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`Patent Owner objects to Exhibit 1028 under FRE 104, 601-602, and 702-703
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`because there is an inadequate foundation for his testimony as an expert in this
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`proceeding. Throughout each section in which Lubenow provides opinion testimony,
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`he expresses opinions or states conclusions, which are not supported. Many of his
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`statements have no support, and to the extent there are any references cited, they
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`cited materials do not support Lubenow’s opinions or conclusions. This applies to
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`each section of Lubenow’s Reply Declaration. Further, Lubenow continually fails to
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`provide explanations as to how the citations support his opinions or conclusions. In
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`fact, many of Lubenow’s opinions are not based on any facts or bases.
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`3
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`Page 3
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`RMI EXHIBIT 2054
`CBM2014-00116
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`Patent Owner also objects to Exhibit 1028 under FRE 401-403 because
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`Lubenow’s testimony regarding ZIP codes in Paragraph 14 is irrelevant. Additionally,
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`Patent Owner objects to Lubenow’s reliance on inadmissible materials in Paragraph
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`34. More specifically, Lubenow relies on Exhibits 1018 and 1025, which are not
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`admissible.
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`Additionally, Patent Owner objects to Paragraphs 11-21 and 26 of Exhibit 1028
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`because they include testimony that belatedly presents new arguments for establishing
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`a prima facie case. This violates 37 C.F.R. § 42.23(b), and it is further supported by The
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`Scott Company LLC v. Encap, LLC, IPR2013-00110, Paper 79, at 7.
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`These objections are being timely served within five business days of filing and
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`service of Petitioner’s Reply and its attached exhibits.
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`Dated: February 24, 2015
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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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`4
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`Page 4
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`RMI EXHIBIT 2054
`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 Reply Evidence was served on February 24, 2015, by
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`FEDERAL EXPRESS standard overnight shipping to the following attorneys of
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`record for Petitioner as well as by electronic service at the e-mail address listed below.
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`Lionel Lavenue
`Erika H. Arner
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190
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`Elizabeth D. Ferrill
`Joshua L. Goldberg
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001
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`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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`5
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`Page 5
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`RMI EXHIBIT 2054
`CBM2014-00116
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