Paper No. _____
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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,
`
`v.
`
`RETURN MAIL, INC.
`Patent Owner.
`
`____________
`
`Case CBM2014-00116
`Patent 6,826,548
`____________
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`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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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.
`
`RETURN MAIL, INC.
`Patent Owner.
`
`____________
`
`Case CBM2014-00116
`Patent 6,826,548
`____________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`INTRODUCTION
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`ARGUMENT
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`A.
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`B.
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`C.
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`Exhibit 2013
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`Exhibit 2015
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`Exhibits 2016-2020
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`TABLE OF CONTENTS
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`1
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`8
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`I.
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`II.
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`D.
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`E.
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`F.
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`Exhibits 2021-2029
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`Exhibit 2030
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`Exhibit 2032
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`G.
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`Exhibits 2035-2052
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`III. CONCLUSION
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`9
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`12
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`14
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`i
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`TABLE OF AUTHORITIES
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`Cases
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`Alice Corporation Pty. Ltd. v. CLS Bank Int’l,
`134 S.Ct. 2347 (2014)
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`Application of Krimmel,
`292 F.2d 948 (Ct. Custom and Pat. App. 1961)
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`Beckson Marine, Inc. v. NFM, Inc.,
`292 F.3d 718 (Fed. Cir. 2002)
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`CLS Bank Int’l v. Alice Corp.,
`717 F.3d 1269 (Fed. Cir. 2013)
`(Rader, J., concurring-in-part and dissenting-in-part),
`aff’d, 134 S.Ct. 2347 (2014)
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`Fox v. Taylor Diving & Salvage Co.,
`694 F.2d 1349 (5th Cir. 1983)
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`Gulf States Utilities Co. v. Ecodyne Corp.,
`635 F.2d 517 (5th Cir. 1981)
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`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995)
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`Maytag Corp. v. Electrolux Home Products, Inc.,
`411 F.Supp.2d 1008 (N.D. Iowa 2006)
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`Melecosky v. McCarthy Bros. Co.,
`503 N.E.2d 355 (Ill. 1986)
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)
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`Schultz v. Butcher,
`24 F.3d 626 (4th Cir. 1994)
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`SmithKline Beecham Corp. v. Apotex Corp.,
`403 F.3d 1331 (Fed. Cir. 2005) (Gajarsa, J., concurring)
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`9
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`3
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`2, 7
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`12
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`3
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`3
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`2, 7
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`3
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`12
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`6
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`U.S. v. Blackstone,
`56 F.3d 1143 (9th Cir. 1995)
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`U.S. v. Fields,
`483 F.3d 313 (5th Cir. 2007)
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`PTAB Decisions
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`Fidelity National Information Services, Inc. v. Checkfree Corp.,
`CBM2013-00031, 2014 WL 7330475
`(PTAB, Dec. 22, 2014)
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`Interthinx, Inc. v. Corelogic Solutions, LLC,
`CBM2012-00007, 2014 WL 587149
`(PTAB, Jan. 30, 2014)
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`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`CBM2013-00002, 2014 WL 824373
`(PTAB, Feb. 24, 2014)
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`11
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`5
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`1, 12
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`1
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`5
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`1, 4
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` passim
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`Manukamed Ltd. v. Apimed Medical Honey, Ltd.,
`IPR2013-00234, 2013 WL 8595942
`(PTAB, Sept. 25, 2013)
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`Nichia Corporation v. Emcore Corporation,
`IPR2012-00005, 2014 WL 574596
`(PTAB, Feb. 11, 2014)
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`SAP America, Inc. v. Versata Development Group, Inc.,
`CBM2012-00001, 2013 WL 3167735
`(PTAB, June 11, 2013)
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`Smith & Nephew, Inc. v. Convatec Technologies, Inc.,
`IPR2013-00102
`(PTAB, Paper 87, May 29, 2014)
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`Statutes
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`35 U.S.C. § 101
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`iii
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`Regulations
`Regulations
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`37 C.F.R. § 42.20(c)
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`1, 4
`37 C.F.R. § 4220(0) ____________________________________________________________________________________________________________ 1, 4
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`37 C.F.R. § 42.64(c)
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`1, 4
`37 C.F.R. § 4264(0) ____________________________________________________________________________________________________________ 1, 4
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`iv
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`iv
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`I.
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`INTRODUCTION
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`Petitioner The United States Postal Service asks the Board to exclude thirty-six
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`of Patent Owner Return Mail, Inc.’s exhibits. As the movant, Petitioner has “the
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`burden of proof to establish that it is entitled to the requested relief.” Smith & Nephew,
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`Inc. v. Convatec Technologies, Inc., IPR2013-00102 at 55 (PTAB, Paper 87, May 29, 2014)
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`(citing 37 C.F.R. § 42.20(c)). Further, Petitioner “must identify the objections in the
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`record in order and must explain the objections.” 37 C.F.R. § 42.64(c). To a certain
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`extent, Petitioner fails to explain its objections as will be discussed below. In the
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`instances where it asserted more than just the objection itself, these assertions are
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`without merit. For example:
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` It is within the Board’s discretion to assign the appropriate weight to be
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`accorded evidence, and the Board is capable of evaluating a witness’s
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`testimony. Nichia Corporation v. Emcore Corporation, IPR2012-00005, 2014 WL
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`574596 at *32 (PTAB, Feb. 11, 2014).
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` There is a strong public policy in not excluding evidence. Id.
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` “[P]roceedings before the Board are not jury trials; in the absence of a jury, the
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`risk of unfair prejudice against which Rule 403 guards is diminished, if not
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`eliminated entirely.” Manukamed Ltd. v. Apimed Medical Honey, Ltd., IPR2013-
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`00234, 2013 WL 8595942 at *5 (PTAB, Sept. 25, 2013).
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`1
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` Courts have held that FRE 703 permits experts to base opinion testimony on
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`evidence that is inadmissible under the hearsay and authentication rules. FED.
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`R. EVID. 703; Melecosky v. McCarthy Bros. Co., 503 N.E.2d 355, 358 (Ill. 1986);
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`Fox v. Taylor Diving & Salvage Co., 694 F.2d 1349, 1356 (5th Cir. 1983).
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`The following discussion refutes each one of Petitioner’s objections and shows that it
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`has failed to meet its burden of proof. Therefore, Petitioner’s Motion to Exclude
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`should be denied in its entirety.
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`II. ARGUMENT
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`A. Exhibit 2013
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`Exhibit 2013 is entitled “21st Century Dictionary of Computer Terms,” and it
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`contains the definition of the term “decoder.” (Ex.2013 at 3). Patent Owner cites this
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`dictionary during the claim construction discussion of the terms “decode,”
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`“decoding,” “decoded information,” and “decoded data,” and more specifically, in
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`relation to an explanation regarding deciphering and encoded data. (PO Response at
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`18). This dictionary is also cited during a discussion explaining how the ‘548 patent
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`claims meet the transformation test. (Id. at 45). In each instance, several dictionaries
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`are cited. In fact, Exhibit 2014, a dictionary also cited in both instances for the
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`definition of “decoder,” did not draw any objections from Petitioner despite
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`providing a definition for the same term.
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`2
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`According to the Federal Circuit, “[b]ecause dictionaries, and especially
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`technical dictionaries, endeavor to collect the accepted meanings of terms used in
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`various fields of science and technology, those resources have been properly
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`recognized as among the many tools that can assist the court in determining the
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`meaning of particular terminology to those of skill in the art of the invention.” Phillips
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`v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005). Further, such evidence “may be
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`considered if the court deems it helpful in determining ‘the true meaning of language
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`used in the patent claims.’” Id. (citing Markman v. Westview Instruments, Inc., 52 F.3d 967,
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`980 (Fed. Cir. 1995)).
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`Petitioner objects to Exhibit 2013 as irrelevant asserting that “decoder,” which
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`is defined by Exhibit 2013, is not the exact word used in the claims. Petitioner cites no
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`support for this objection. In fact, courts routinely refer to dictionary definitions of
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`words not exactly in the claims to analyze claim construction issues. Maytag Corp. v.
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`Electrolux Home Products, Inc., 411 F.Supp.2d 1008, 1046-47 (N.D. Iowa 2006)
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`(reviewing definitions for terms within proposed constructions).1 Further, even
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`Petitioner cites definitions of “detection” as support for its claim construction
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`argument for “detector.”
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`Exhibit 2013’s definition of “decoder” is relevant to the meaning of the terms
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`“decode,” “decoding,” “decoded information,” and “decoded data,” as well as the
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`transformation test, and Petitioner’s objection should be overruled.
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`1 See also Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 724 (Fed. Cir. 2002).
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`3
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`B. Exhibit 2015
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`Exhibit 2015 is the Declaration of Dr. Scott Nettles, and Petitioner objects to
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`¶¶ 37-95 of Dr. Nettles’ Declaration, which discusses Dr. Nettles’ opinions related to
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`whether the ‘548 patent claims are patent-eligible under § 101.
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`Petitioner’s first objection is that Dr. Nettles lacks sufficient knowledge
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`(personal or otherwise), but there is no explanation provided for this objection as
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`required by 37 C.F.R. § 42.64(c). Throughout ¶¶ 37-95 of Dr. Nettles’ Declaration,
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`each opinion expressed is explained and supported in detail. Thus, his testimony is
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`consistent with the requirements of Federal Rules of Evidence 702 and 703. Petitioner
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`has the burden of proof to establish that it is entitled to the required relief, and it
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`cannot meet its burden of proof here by simply making vague, unsupported
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`assertions. Smith & Nephew, IPR2013-00102 at 55 (citing 37 C.F.R. § 42.20(c)).
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`Petitioner also objects to Dr. Nettles’ testimony as directly opining on issues
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`that are ultimately determinations of law including issues of patent law and/or patent
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`examination practices. More specifically, Petitioner attacks Dr. Nettles’ testimony in
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`¶ 50 regarding whether there is a technological improvement in the claims-at-issue. In
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`this paragraph, Dr. Nettles states that there are two aspects of the ‘548 patent that are
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`key to seeing that there is a technological improvement, and this is how his testimony
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`was presented in Patent Owner’s Response at page 12. Petitioner’s allegation that Dr.
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`Nettles created his own “two-part test” is inaccurate and misleading.
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`4
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`Petitioner also objects to Dr. Nettles’ opinion that the ‘548 patent claims meet
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`the requirements for patent eligibility, incorrectly asserting that it goes to an ultimate
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`issue of law. Yet, the Board has routinely included expert testimony in its evaluation
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`of subject matter eligibility challenges. In SAP America, Inc. v. Versata Development
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`Group, Inc., the Board recognized that the parties’ experts disagreed as to whether
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`certain steps in the claims-at-issue were mere routine, conventional steps or
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`meaningful limitations. CBM2012-00001, 2013 WL 3167735 at *18 (PTAB, June 11,
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`2013). The Board also reviewed expert testimony related to technology available at the
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`time of the invention. Id. Further, the Board stated that it was crediting one expert’s
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`testimony over the other’s testimony. Id. at 19. This was a part of the Board’s § 101
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`analysis in that proceeding.
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`In Interthinx, Inc. v. Corelogic Solutions, LLC, the Board, in its § 101 analysis,
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`reviewed expert testimony regarding the meaning of the claims-at-issue, how long that
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`technology had been around, common methods in the industry, well-known
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`techniques in the marketplace, and what could be developed manually. CBM2012-
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`00007, 2014 WL 587149 at *5-6 (PTAB, Jan. 30, 2014). In Fidelity National Information
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`Services, Inc. v. Checkfree Corp., the Board, in its § 101 analysis, evaluated expert
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`statements related to the procedures carried out by the claims-at-issue, the context in
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`which those claims were executed, field of use, the concepts recited in the claims,
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`limitations in the claims, and whether the machine-or-transformation test was met.
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`CBM2013-00031, 2014 WL 7330475 at *5-7 (PTAB, Dec. 22, 2014).
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`5
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`Additionally, cases have long recognized the appropriateness of expert
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`testimony to establish scientific or technical mechanisms relating to the invention, e.g.
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`SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1363 (Fed. Cir. 2005) (Gajarsa,
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`J., concurring), and the usefulness of technical improvements under 35 U.S.C. § 101.
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`See e.g. Application of Krimmel, 292 F.2d 948, 951-52 (Ct. Custom and Pat. App. 1961).2
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`
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`In Dr. Nettles’ declaration, he reviews in detail the content of the claims-at-
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`issue. Dr. Nettles properly testified under FRE 702 because he is assisting in technical
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`matters, and his testimony on how processes work and its advantages is technical. He
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`testified that in his opinion the ‘548 patent claims were an improvement in the field of
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`return mail processing. (Ex.2015 at ¶¶ 43-69). He reviewed the state of the art at the
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`time of the invention and evaluated what was included in the field of processing
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`returned mail items. In fact, his entire discussion regarding a technological
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`improvement is extremely detailed in explaining the facts that he is relying upon for
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`his opinions. Dr. Nettles also goes into great detail in explaining the facts that form
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`the basis of his analysis and conclusions when he reaches the opinions that the ‘548
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`patent claims meet the “machine-or-transformation test” (¶¶ 70-81), that the ‘548
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`patent claims cannot be performed in the human mind (¶¶ 82-84), and that the ‘548
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`2 Expert testimony was also considered in CLS Bank Int’l v. Alice Corp., 717 F.3d 1269,
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`1293 (Fed. Cir. 2013) (Rader, J., concurring-in-part and dissenting-in-part), aff’d, 134
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`S.Ct. 2347 (2014).
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`6
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`patent claims do not preempt the field (¶¶ 85-94). These are exactly the same types of
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`opinions previously considered by the Board in its subject matter eligibility analyses
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`discussed above. Petitioner’s objection that Dr. Nettles cannot provide opinions
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`related to subject matter eligibility have no merit, and it should be overruled.
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`Petitioner also objects because Dr. Nettles cites Exhibit 2020 in ¶ 66, and
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`Petitioner claims this is hearsay. Yet, there are several problems with Petitioner’s
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`objection. Exhibit 2020 is a document published by Petitioner, a governmental entity,
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`and produced by Petitioner to Patent Owner in the related litigation. Thus, it is not
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`hearsay according to FRE 801(d)(2) given that it is an opposing party’s statement.
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`Further, even if it was considered hearsay, it would fall under the public records
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`exception given that it sets out the Petitioner’s activities and there has been no
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`showing by Petitioner that there is any lack of trustworthiness as to the source of
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`information or other circumstances. FRE 803(8). Likewise, Exhibit 2020 falls under
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`the residual exception of FRE 807 given that it meets each of the requirements of that
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`rule.3 Additionally, courts have held that FRE 703 permits experts to base opinion
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`testimony on evidence that is inadmissible under the hearsay and authentication rules.
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`FRE 703; Melecosky, 503 N.E.2d at 358; Fox, 694 F.2d at 1356.
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`3 Exhibit 2020 has equivalent circumstantial guarantees of trustworthiness, it is
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`offered as evidence of a material fact, it is probative, and it serves the interests of
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`justice. FRE 807.
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`7
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`Petitioner also claims that Dr. Nettles’ quote from Exhibit 2020 is misleading,
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`but this is incorrect—the quote is accurate. Dr. Nettles included an ellipsis indicating
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`a sentence was omitted, and it was omitted because it was unnecessary to the point
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`that Dr. Nettles was making. Thus, there is nothing misleading about the quote.
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`Thus, Petitioner’s objections to Exhibit 2015 should be overruled.
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`C. Exhibits 2016-20204
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`Petitioner objects to Exhibits 2016-2020 as irrelevant. These exhibits are mainly
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`discussed in the Response section explaining that the ‘548 patent claims are a
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`technological improvement. Exhibit 2016 explains how the Petitioner described the
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`state of the technology for return mail processing before the ‘548 patent. (PO
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`Response at 35). Exhibits 2017-2020 were used in the same discussion to explain the
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`evolution of technology by discussing 1997 ACS, Planet ACS, and OneCode ACS.
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`(Id. at 36-37). Thus, these exhibits are relevant because they have a tendency to make
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`certain facts more or less probable than they would be without this evidence, and
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`these facts are of consequence in determining several issues in this proceeding—
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`namely whether the ‘548 patent is a CBM patent under the AIA and whether the ‘548
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`patent claims recite patent-eligible subject matter.
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`4 Although Petitioner lists Exhibit 2031 in its heading with these exhibits, there is no
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`reference or discussion regarding Exhibit 2031.
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`8
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`In light of this showing of relevance, and the fact that Petitioner’s argument
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`contains nothing more than assertions of irrelevance, Petitioner’s objections to these
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`exhibits should be overruled.
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`D. Exhibits 2021-2029
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`Petitioner objects to Exhibits 2021-2029 as irrelevant. All of these exhibits are
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`referred to during the discussion showing that the ‘548 patent claims do not preempt
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`the field of technology at issue in this proceeding.5 (PO Response at 48-51).
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`According to the Supreme Court, the driving principle behind § 101 is whether the
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`patent claims will preempt a particular field. Alice Corporation Pty. Ltd. v. CLS Bank
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`Int’l, 134 S.Ct. 2347, 2354 (2014). The alleged abstract idea is that the claims were
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`“directed to the processing of returned mail items.” (Decision, Paper 11, at 20).
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`
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`As part of Patent Owner’s argument, Patent Owner shows that Petitioner and
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`other entities have not been preempted from getting a number of patents relating to
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`the “processing of returned mail items” since the allowance after reexamination of the
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`‘548 patent. (PO Response at 48-51). Further, the discussion citing these exhibits
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`explained that in addition to other approaches to the processing of return mail items
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`5 Petitioner’s assertion that these exhibits all relate to the argument on a technological
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`improvement is incorrect. Exhibit 2021 does, in addition to being referred to under
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`preemption, get discussed in relation to optical scanners, technological improvement,
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`and whether the claims can be practiced in the human mind.
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`9
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`existing, there are also other potential inventions related to the processing of returned
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`mail items that are unrelated to the ‘548 patent.
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`Thus, Exhibits 2021-2029 are relevant to the § 101 issue in this case, and
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`Petitioner’s objection should be overruled.
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`E. Exhibit 2030
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`Exhibit 2030 is a USPS publication containing an article entitled “PARS
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`
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`excellence: New processing system deployment complete,” which is dated August 23,
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`2005. In this article, Petitioner explains that the installation of scanning equipment at
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`87 CFS units around the country is the first phase of PARS deployment. (Ex.2030 at
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`1). The article goes on to state that these are scanners for the “newly-designed”
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`Change of Address cards, and that these scanners are “replacing mechanized terminals
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`previously used to manually enter information.” (Id.). Thus, this article shows that
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`scanners were newly deployed to CFS units to accommodate “newly-designed”
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`Change of Address forms in 2005.
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`
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`Petitioner objects to this exhibit claiming that it is irrelevant. However, it
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`directly contradicts allegations made by Petitioner that there may have been scanners
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`in the CFS units in 1997. (PO Response at 59-60) (responding to allegations by
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`Petitioner’s declarant, Lubenow). Thus, Petitioner made this assertion, and Exhibit
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`2030 is relevant because it shows that assertion is wrong.
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`Petitioner also asserts that Exhibit 2030 is misleading because it “only states
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`that the installation of scanners, as of August 2005, was completed…” (Motion at 7).
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`10
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`Yet, Petitioner ignores the other statements in the article that this was a “new
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`processing system” and that these scanners were for the “newly-designed” Change of
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`Address cards. These statements in Exhibit 2030 are consistent with the other
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`evidence cited by Patent Owner. (PO Response at 59-62). There is nothing confusing
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`or misleading about the statements made in Exhibit 2030.
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`Further, FRE 403 states that “evidence may be excluded if its probative value is
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`substantially outweighed by the danger of unfair prejudice.” One of the purposes of
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`FRE 403 is to prevent evidence from “inducing decision on a purely emotional basis.”
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`U.S. v. Fields, 483 F.3d 313, 354 (5th Cir. 2007) (citing FRE 403 Advisory Committee
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`Notes). Exclusion
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`is only warranted when the danger of unfair prejudice
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`“substantially” outweighs the probative value of the evidence. Id. Thus, the scope of
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`FRE 403 is narrow, and its application must be cautious and sparing. Id. “Its major
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`function is limited to excluding matter of scant or cumulative probative force, dragged
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`in by the heels for the sake of its prejudicial effect.”6 Id.
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`In Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., the Board
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`addressed a motion to exclude evidence based on FRE 403, and it noted that “there is
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`a strong public policy for making all information filed in an administrative proceeding
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`available to the public…which determines the patentability of claims in an issued
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`patent. It is better to have a complete record of the evidence submitted by the parties
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`than to exclude particular pieces of evidence.” CBM2013-00002, 2014 WL 824373 at
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`6 See also U.S. v. Blackstone, 56 F.3d 1143, 1146 (9th Cir. 1995).
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`11
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`*22 (PTAB, Feb. 24, 2014). Further, in Manukamed, 2013 WL 8595942 at *5, the
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`Board noted that
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`[P]roceedings before the Board are not jury trials; in the absence of a
`jury, the risk of unfair prejudice against which Rule 403 guards is
`diminished, if not eliminated entirely.” See, e.g., Schultz v. Butcher, 24
`F.3d 626, 632 (4th Cir. 1994) (‘in the context of a bench trial, evidence
`should not be excluded under 403 on the ground that it is unfairly
`prejudicial’); see also Gulf States Utilities Co. v. Ecodyne Corp., 635 F.2d
`517, 519 (5th Cir. 1981).
`Thus, Exhibit 2030 is relevant because it directly contradicts assertions made by
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`Petitioner through its declarant, Lubenow, and there is nothing confusing or
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`misleading about the statements made in Exhibit 2030. Therefore, Petitioner’s
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`objections to Exhibit 2030 should be overruled.
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`F.
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`Exhibit 2032
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`In a footnote on page 49 of its Response, Patent Owner discusses earlier
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`positions by Petitioner, and its counsel, related to patent-eligibility of claims similar to
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`the ‘548 patent claims. These statements were made in furtherance of Petitioner’s
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`effort to get its own patent related to change of address technology, and Patent
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`Owner addressed this earlier position within its argument on preemption of the field.
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`In the Response, Patent Owner explained that Petitioner, represented by the
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`same counsel as in this proceeding, overcame a § 101 rejection by adding language
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`regarding a “computer program product, stored on a non-transitory computer-
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`12
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`readable medium that, when executed by a computer, provides an electronic change
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`of address service.” (PO Response at 49). Patent Owner also pointed out that this
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`amendment was made at the suggestion of the examiner. (Id.).
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`Exhibit 2032 shows that Petitioner’s position in prosecuting its own patent
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`regarding the type and sufficiency of machine to implement the patent is inconsistent
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`with Petitioner’s arguments in this proceeding regarding “conventional” or “generic”
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`technology. Thus, in one proceeding before the PTO, Petitioner takes one position,
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`and in this proceeding, Petitioner takes a different position on the same issue. This is
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`relevant to the patent-eligibility argument despite Petitioner’s objection because they
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`were made almost a year after the ‘548 patent issued from reexamination, and it is
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`relevant to the scope of the field for purposes of the preemption discussion.
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`Petitioner also objects that the exhibit is confusing and misleading under FRE
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`403 asserting that Patent Owner misrepresents Petitioner’s law firm’s position.
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`(Motion at 8). Petitioner asserts that Patent Owner left out the fact that Petitioner
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`only accepted the examiner’s position solely to advance prosecution. Yet, Patent
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`Owner pointed out properly that the amendment was made at the examiner’s
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`suggestion. (PO Response at 49, n 22). Regardless, that suggestion by the examiner
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`does not change the fact that Petitioner specifically stated that “Applicant submits
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`that claim 143 and its dependent claims…meet the requirements of § 101 and request
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`the withdrawal of the § 101 rejection.” (Ex.2032 at 40).
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`13
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`Thus, Exhibit 2032 is relevant, and it is not confusing or misleading.
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`Petitioner’s objections should be overruled.
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`G. Exhibits 2035-2052
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`Within Patent Owner’s argument regarding patent-eligibility, specifically the
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`issue of preemption, Patent Owner points out many patents that have issued since
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`‘548 patent including Exhibits 2035-2052, and all of these patents relate to the
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`processing of returned mail. The relevancy of these patents to the issue of preemption
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`and patent-eligibility is clearly explained in the Response—they show that there has
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`been no preemption because other approaches to the processing of returned mail
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`exist. (PO Response at 50).
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`Petitioner’s unsupported assertion that Patent Owner is trying to circumvent
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`the page limits is without support or merit. Further, there are many other patents cited
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`by Patent Owner that likewise support its lack of preemption argument. The
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`probative value of Exhibits 2035-2052 is not outweighed by the danger of confusing
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`the issue and wasting time. The exhibits themselves are proper evidence, and they are
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`relevant. There is no danger, especially in this administrative proceeding, that the
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`Board will be confused by this evidence, and it is not a waste of time.
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`Thus, Petitioner’s objections to Exhibits 2035-2052 should be overruled.
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner’s Motion to Exclude Evidence should be
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`denied in its entirety.
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`14
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`Dated: April 20, 2015
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`Respectfully submitted,
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`/Eric M. Adams/
`Eric M. Adams (Reg. No. 56,290)
`eric@elliottiplaw.com
`Douglas H. Elliott (Reg. No. 32,982)
`delliott@elliottiplaw.com
`THE ELLIOTT LAW FIRM, PLLC
`6750 West Loop South, Suite 920
`Bellaire, Texas 77401
`(832) 485-3508
`(832) 485-3511 fax
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`Attorneys for Patent Owner
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`15
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`The undersigned certifies that the foregoing Patent Owner Return Mail, Inc.’s
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`Opposition to Petitioner’s Motion to Exclude Evidence was served on April 20, 2015,
`by FEDERAL EXPRESS standard overnight shipping to the following attorneys of
`record for Petitioner as well as by electronic service at the e-mail address listed below.
`
`Lionel Lavenue
`Erika Arner
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190
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`Elizabeth Ferrill
`Joshua Goldberg
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001
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`USPS-RMI-CBM@finnegan.com
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`CERTIFICATE OF SERVICE
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`/Eric M. Adams/
`Eric M. Adams
`Registration No. 56,290
`Attorney for Patent Owner
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`16
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