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`Paper No.
`Filed: April 20, 2015
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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
`
`__________________
`
`Petitioner’s Opposition to RMI’s Motion to Exclude
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`

`

`Case CBM2014-00116
`Patent 6,826,548
`
`TABLE OF CONTENTS
`
`Relief Requested ............................................................................................................ 1
`
`I.
`
`II.
`
`RMI’s Motion to Exclude Should Be Denied ........................................................... 1
`A.
`Exhibits 1003, 1005, 1006, 1007, 1013, and 1014 ......................................... 1
`B.
`Exhibit 1008 – Dr. Joe Lubenow’s Declaration ............................................ 2
`C.
`Exhibit 1018 – United States Postal Service’s Redirection History ........... 5
`D.
`Exhibit 1019 – Move Update ........................................................................... 7
`E.
`Exhibit 1022 – Demonstrative Information Prepared by Dr. Lubenow .. 8
`F.
`Exhibit 1025 – Auxiliary Markings Newsletter is Admissible ..................... 9
`G.
`Exhibit 1026 – Postal Automated Redirection System .............................. 11
`H.
`Exhibit 1028 – Lubenow’s Supplemental Declaration .............................. 13
`III. Conclusion .................................................................................................................... 14
`
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`i
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`

`TABLE OF AUTHORITIES
`
`Case CBM2014-00116
`Patent 6,826,548
`
` Page(s)
`
`Cases
`
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .......................................................................................... 5
`
`Facebook, Inc., LinkedIn Corp., Twitter, Inc., v. Software Rights Archive, LLC,
`IPR2013-00481 (PTAB Jan. 29, 2015) (Paper 54) .......................................................... 4
`
`Intri-Plex Technologies, Inc. and MMI Holdings, LTD., v. Saint-Gobain
`Performance Plastics Rencol Limited,
`IPR2014-00309 (PTAB Mar. 23, 2014) (Paper 83) ........................................................ 9
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`Case CBM2012-0002 (PTAB Jan. 23, 2014) (Paper 66) ................................................ 1
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`CBM2012-00010 (PTAB Feb. 24, 2014) (Paper 59) .................................................. 5, 7
`
`Microsoft v. SurfCast,
`IPR2013-00292 (PTAB Oct. 14, 2014) (Paper 33) ....................................................... 14
`
`Yorkey v. Diab,
`601 F.3d 1279 (Fed. Cir. 2010) .......................................................................................... 4
`
`Statutes
`
`35 U.S.C. § 101 .................................................................................................................... 3, 11
`
`35 U.S.C. § 102 ........................................................................................................................... 3
`
`Other Authorities
`
`37 C.F.R. § 42.64 ............................................................................................................ 1, 7, 15
`
`37 C.F.R. § 42.23(b) ................................................................................................................ 14
`
`37 C.F.R. § 42.65 ...................................................................................................... 6, 8, 11, 13
`
`Fed. R. Evid. 104 ....................................................................................................................... 2
`
`Fed. R. Evid. 401 ................................................................................................................ 2, 11
`
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`Case CBM2014-00116
`Patent 6,826,548
`Fed. R. Evid. 402 ................................................................................................................ 2, 11
`
`Fed. R. Evid. 403 ................................................................................................................ 2, 11
`
`Fed. R. Evid. 601 ............................................................................................................ 2, 9, 11
`
`Fed. R. Evid. 602 ............................................................................................................ 2, 9, 11
`
`Fed. R. Evid. 603 ............................................................................................................ 2, 9, 11
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`Fed. R. Evid. 701 ............................................................................................................ 2, 9, 11
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`Fed. R. Evid. 702 ............................................................................................................ 2, 9, 11
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`Fed. R. Evid. 703 ............................................................................................................... passim
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`Fed. R. Evid. 801 ................................................................................................. 5, 7, 9, 10, 11
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`Fed. R. Evid. 802 ................................................................................................. 5, 7, 9, 10, 11
`
`Fed. R. Evid. 807 ...................................................................................................... 6, 7, 10, 12
`
`Fed. R. Evid. 901 ................................................................................................. 5, 7, 9, 10, 11
`
`Fed. R. Evid. 1001 ............................................................................................................ 10, 11
`
`Fed. R. Evid. 1002 .............................................................................................................. 9, 11
`
`
`
`
`iii
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`

`

`Case CBM2014-00116
`Patent 6,826,548
`
`I.
`
`Relief Requested
`
`Pursuant to 37 C.F.R. 42.64, Petitioner opposes RMI’s Motion to Exclude
`
`(Paper No. 25, “Motion”). First, although the Board has previously recognized a
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`motion to exclude is not an appropriate vehicle for challenging a reply, or a reply’s
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`supporting evidence, as exceeding the scope of a proper reply, Liberty Mutual Ins. Co. v.
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`Progressive Casualty Ins. Co., Case CBM2012-0002, slip op. at 62 (PTAB Jan. 23, 2014)
`
`(Paper 66), RMI’s Motion, nonetheless, attempts to challenge USPS’s Reply (Paper
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`22), and USPS’s expert supplemental declaration (Ex. 1028). Moreover, in an attempt
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`to circumvent the page limit requirements for its Response, RMI improperly adds
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`additional arguments to its Motion, which should have been in its Response. Lastly,
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`RMI does not satisfy its burden of proof that it is entitled to the relief requested.
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`Therefore, USPS respectfully requests the Board deny RMI’s Motion in its entirety.
`
`II. RMI’s Motion to Exclude Should Be Denied
`A. Exhibits 1003, 1005, 1006, 1007, 1013, and 1014
`RMI’s request to exclude Exhibits 1003, 1005, 1006, 1007, 1013, and 1014
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`should be denied as moot. The identified exhibits relate to the denied instituted
`
`grounds for “administrative necessity to ensure timely completion of the instituted
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`proceeding.” Institution Decision (Paper No. 11, “ID”) at 33. Therefore, the
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`identified exhibits are moot and RMI’s request should be denied.
`
`1
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`

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`Case CBM2014-00116
`Patent 6,826,548
`
`B. Exhibit 1008 – Dr. Joe Lubenow’s Declaration
`RMI objected to Exhibit 1008 under FRE 104, 401-403, 601-603, and 701-703.
`
`RMI’s request should be denied for at least the reasons explained below. First, RMI
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`improperly attempts to mislead the Board by mischaracterizing Dr. Lubenow’s
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`testimony. If the Board decides to entertain RMI’s improper and misleading argument
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`that Dr. Lubenow “admitted in his deposition that he does not know ‘the internal
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`details of the CFS operation,’” (Motion at 5), it should be noted the question that Dr.
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`Lubenow was asked:
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`Q: But would [fulfillment files] have been created in hard copy and then
`transferred to tape or some kind of disk, or were they actually created in
`electronic form to begin with, in 1997?
`A: I don’t know the internal details of the CFS operation.
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`Ex. 1023 at 145. Never did Dr. Lubenow state that he did not “know the internal
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`details of the CFS operation” as it relates to “what the prior art contained, including
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`the operation of CFS units with respect [to] the disclosures of the 1997 ACS,” as
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`falsely suggested by RMI. Motion at 5. Thus, RMI’s Motion should be denied for
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`improperly misleading and mischaracterizing Dr. Lubenow’s testimony.
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`Second, RMI tries to circumvent the page limits of its Response by arguing that
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`Dr. Lubenow’s testimony on the notifications generated by 1997 ACS reference does
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`not apply because “carrier-filed forms do not generate address change service
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`notifications.” Id at 6. This is another attempt by RMI to argue what it should have in
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`its Response. Although, an improper argument for a motion to exclude, if the Board
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`2
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`Case CBM2014-00116
`Patent 6,826,548
`should entertain RMI’s argument, it should be noted that 1997 ACS (Ex. 1004),
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`clearly states “Undeliverable Mailpieces Matched to Carrier-Filed Actions: The
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`mailpiece is discarded, and an electronic ACS notification is generated,” Ex. 1004
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`at 15 (emphasis added), as explained by Dr. Lubenow. Ex. 1008 ¶ 208. Therefore,
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`RMI’s request should be denied for improperly trying to circumvent the Response
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`page limit and adding arguments outside the scope of a proper motion to exclude.
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`Further, RMI’s Motion should be denied because Dr. Lubenow’s testimony will assist
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`the Board and does not create a significant risk of confusing issues.
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`Next, RMI argues that Dr. Lubenow does not “apply any reliable principles or
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`method to the facts.” Motion at 7. However, throughout his testimony, Dr. Lubenow
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`describes how 1997 ACS anticipates the instituted claims of the ’548 patent, by
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`providing supporting evidence from the 1997 ACS reference to the limitations of
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`claims 39-44. The mappings do not require great depth of explanation given the
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`straightforwardness of the 1997 ACS reference as it applies to claims 39-44.
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`In addition, RMI requests exclusion of ¶¶ 36-68 on the basis the Board did not
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`institute RMI’s improperly broadening of its claims during reexamination. However,
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`the Board may simply not rely on this section in their determination that claims 39-44
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`are unpatentable under §§ 101 and 102 in its Final Decision to come. The same holds
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`true for other none instituted grounds remaining in Dr. Lubenow’s declaration.
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`Accordingly, the Board should deny RMI’s request as moot.
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`3
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`Case CBM2014-00116
`Patent 6,826,548
`RMI erroneously argues that ¶¶ 70-83 should be excluded because they relate
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`to “Petitioner’s proposed claim constructions, which were not adopted by the Board.”
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`Motion at 8. But it is well established that the Board’s claim construction is not final,
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`and “is reviewable in light of both parties’ subsequent briefings and oral argument.”
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`Facebook, Inc., LinkedIn Corp., Twitter, Inc., v. Software Rights Archive, LLC, IPR2013-
`
`00481 at 33 (PTAB Jan. 29, 2015) (Paper 54) (the construction of claim terms in a
`
`Decision to Institute is not final, and is reviewable in light of both parties’ subsequent
`
`briefings and oral arguments). Dr. Lubenow’s declarations (Ex. 1008 and 1028) have
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`been offered in support of USPS’s proposed claim constructions, an issue that
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`remains alive in this proceeding, and this testimony is therefore admissible and
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`relevant despite RMI’s erroneous objections. Therefore, RMI’s request should be
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`denied as Dr. Lubenow’s testimony is relevant.
`
`RMI argues that certain paragraphs should be excluded because there is
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`inadequate foundation as an expert. RMI makes no showing—because it cannot deny
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`Dr. Lubenow’s more than 35 years of relevant experience—that Dr. Lubenow is not a
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`qualified technical expert on the postal industry. Dr. Lubenow served as Vice
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`President of Postal Affairs for Metromail and Experian. He was twice elected—by
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`colleagues in the postal industry—as the industry chair of Mailers’ Technical Advisory
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`Committee (MTAC). Ex. 1023 ¶ 80. This objection properly goes to the weight to be
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`given to Dr. Lubenow’s testimony, and not its admissibility. “It is within our
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`discretion to assign the appropriate weight to the testimony offered by [a witness].”
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`4
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`Case CBM2014-00116
`Patent 6,826,548
`Facebook, IPR2013-00481 at 33 (Paper 54); see e.g., Yorkey v. Diab, 601 F.3d 1279, 1284
`
`(Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of
`
`evidence over another “unless no reasonable trier of fact could have done so”); In re
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`Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is
`
`entitled to weigh the declarations and conclude that the lack of factual corroboration
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`warrants discounting the opinions expressed in the declarations.”). When weighing
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`evidence, the Board is capable of determining whether the prior art references
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`anticipate the challenged claims without being confused, misled, or prejudiced by Dr.
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`Lubenow’s testimony. Thus, RMI’s request should be denied.
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`C. Exhibit 1018 – United States Postal Service’s Redirection History
`RMI objected to Exhibit 1018 under FRE 801-802 and 901. RMI’s request to
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`exclude this exhibit should be denied because RMI cannot add a new ground (FRE
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`801) for exclusion not expressed in its previously served objections. Even so, Ex.
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`1018 is not hearsay. RMI argues that “[i]t is merely cited by Dr. Lubenow in his
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`declaration (Ex. 1008) for information related to background information not relevant
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`to the specific grounds in this proceeding.” Motion at 12. But this is incorrect; Ex.
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`1018 is cited in USPS’s Reply brief.
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`Even if Ex. 1018 was hearsay, which it is not, it “serves a non-hearsay purpose
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`for which it can be admitted—namely to show what one with ordinary skill in the art
`
`would have known” about the state of technology and the methods of relaying
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`mailing address data. Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`
`5
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`Case CBM2014-00116
`Patent 6,826,548
`CBM2012-00010 at 37 (PTAB Feb. 24, 2014) (Paper 59). Further, Ex. 1018 is
`
`admissible under FRE 807, because Ex. 1018 is more probative than any other
`
`evidence on the same subject, and admitting it will best serve the interests of justice in
`
`this case. See Fed. R. Evid. 807.
`
`Besides being admissible under FRE 807, Ex. 1018 is relied on by Dr.
`
`Lubenow in forming his opinions. See Ex. 1008; see also Ex. 1028. FRE 703 expressly
`
`authorizes where experts in the particular field would reasonably rely on those kinds
`
`of facts or data in forming an opinion on the subject, they need not be admissible for
`
`the opinion to be admitted. RMI has made no claims of prejudice here—because
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`there is none—and Ex. 1018 is relevant to the issue of providing an objective indicia
`
`of background for what a person of ordinary skill in the art would have known about
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`the history of “Redirection.” FRE 703 (if the facts or data would otherwise be
`
`inadmissible, the proponent of the opinion may disclose them to the jury only if their
`
`probative value in helping the jury evaluate the opinion substantially outweighs their
`
`prejudicial effect).
`
`Further, 37 C.F.R. § 42.65 requires experts to “disclose the underlying facts or
`
`data on which the opinion is based” or the opinion will be given little or no weight.
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`Dr. Lubenow relies on Ex. 1018, see Ex. 1008 and Ex. 1028, as the basis that, for
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`example, that “initial testing of the Address Change Service (ACS) system to provide
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`electronic transmission of address correction notification to mailers began in 1982,”
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`thus Dr. Lubenow is disclosing the underlying facts, which supports his opinions. Ex.
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`6
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`

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`Case CBM2014-00116
`Patent 6,826,548
`1008 ¶ 14 (citing Ex. 1018 at 3). Thus, the Board should deny RMI’s request for
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`exclusion.
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`D. Exhibit 1019 – Move Update
`RMI objected to Exhibit 1019 under FRE 801-802 and 901. RMI’s request to
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`exclude this exhibit in part because RMI cannot add a new ground (FRE 801) for
`
`exclusion not expressed in its previously served objections. 37 C.F.R. § 42.64 Even so,
`
`Ex. 1019 is not hearsay. Further, RMI argues that “[i]t is merely cited by Dr. Lubenow
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`in his declaration (Ex. 1008) for information related to background information not
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`relevant to the specific grounds in this proceeding.” Motion at 12. But this is
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`incorrect, Ex. 1019 is not hearsay and even if it was hearsay, which it is not, Ex. 1019
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`“serves a non-hearsay purpose for which it can be admitted—namely to show what
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`one with ordinary skill in the art would have known” with respect to the state of
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`technology and the methods of relaying mailing address data. Liberty (Paper 59) at 37.
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`Further, Ex. 1019 is admissible under FRE 807. Ex. 1019 is more probative
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`than any other evidence on the same subject, and admitting it will best serve the
`
`interests of justice in this case. See FRE 807.
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`Besides being admissible under FRE 807, Ex. 1019 is relied on by Dr.
`
`Lubenow in forming his opinions. See Ex. 1008; see also Ex. 1028. FRE 703 expressly
`
`authorizes where experts in the particular field would reasonably rely on those kinds
`
`of facts or data in forming an opinion on the subject, they need not be admissible for
`
`the opinion to be admitted. RMI has made no claims of prejudice here—because
`
`7
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`

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`Case CBM2014-00116
`Patent 6,826,548
`there is none—and Ex. 1019 provides an objective indicia of background for what a
`
`person of ordinary skill in the art would have known about the history of
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`“Redirection.” FRE 703 (if the facts or data would otherwise be inadmissible, the
`
`proponent of the opinion may disclose them to the jury only if their probative value
`
`in helping the jury evaluate the opinion substantially outweighs their prejudicial
`
`effect).
`
`Further, 37 C.F.R. § 42.65 requires experts to “disclose the underlying facts or
`
`data on which the opinion is based” or the opinion will be given little or no weight.
`
`Dr. Lubenow relies on Ex. 1019, see Ex. 1008 and 1028, as the basis that, for example,
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`that ACS system was “designed to reduce the volume of manual (hard copy) address
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`correction notifications handled by both the Postal Service and mailers to centralize
`
`and automate the provision of address correction information to mailers,” thus, Dr.
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`Lubenow discloses the underlying basis, which supports his opinion. Ex. 1008 ¶ 15
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`(citing Ex. 1019 at 3). Therefore, the Board should deny RMI’s request for exclusion.
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`E. Exhibit 1022 – Demonstrative Information Prepared by Dr.
`Lubenow
`
`RMI has moved to exclude Exhibit 1022. RMI’s request should be denied as
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`improper and even if the objection is proper, which it is not, the evidence is
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`admissible under FRE. RMI refers to its objections made “at the time” but has not
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`specified where in the record they made their objection and on what grounds. RMI
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`alleges that the exhibit “introduced new opinions not expressed in the declaration”
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`8
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`Case CBM2014-00116
`Patent 6,826,548
`were “an improper attempt to supplement Dr. Lubenow’s opinions” they “violated
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`the best evidence rule and are hearsay.” Motion at 10. RMI’s request should be denied
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`for at least the following reasons. Ex. 1022 contains demonstrative annotations of the
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`Instituted Reference, claim constructions (Board and Petitioner), excerpts of the ’548
`
`patent, and citations to Dr. Lubenow’s declaration. The excerpts in Ex. 1022 were
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`merely a reorganization of existing material already in the record (much of which RMI
`
`has not challenged), and the annotations were created at the direction of Dr. Lubenow
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`to facilitate his oral cross-examination by RMI. See, Intri-Plex Technologies, Inc. and MMI
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`Holdings, LTD., v. Saint-Gobain Performance Plastics Rencol Limited, IPR2014-00309 at 18
`
`(PTAB Mar. 23, 2014) (Paper 83) (“[t]he excerpts and annotations are demonstrative
`
`in nature and may been useful in focusing Dr. McCarthy’s attention to specific
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`features in Wing and, thus, facilitated oral examination of the witness. We discern
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`little danger of unfair prejudice”); see also e.g., Ex. 1022 at 35-75. Petitioner provided a
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`copy of Ex. 1022 to RMI at the beginning of the deposition. Thus, the Board should
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`deny RMI’s request for exclusion.
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`Exhibit 1025 – Auxiliary Markings Newsletter is Admissible
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`F.
`RMI has moved to exclude Exhibit 1025 under FRE 601-603, 701-703, 801-
`
`802, 901, and 1001-1002. RMI’s request to exclude this exhibit should be denied
`
`because RMI cannot add new grounds (FRE 801, 901, and 1001) for exclusion not
`
`expressed in its previously served objections. Further, Ex. 1025 is not hearsay and in
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`9
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`Case CBM2014-00116
`Patent 6,826,548
`its objections served provides no explanation as to how Ex. 1025 is hearsay, not the
`
`best evidence, or is inadmissible.
`
`RMI has now moved to exclude Ex. 1025 “because it is inadmissible hearsay
`
`under [FRE] 801-802.” Motion at 13. RMI’s request should be denied because Ex.
`
`1025 is not hearsay. Auxiliary Markings Newsletter is a publication, which identifies
`
`the date, April 2006, the Volume and Issue No. (Vol. III, No. 2, Issue No. 10). The
`
`testimony in Ex. 1025 is more probative than any other evidence on the same subject.
`
`Admitting it will best serve the interests of justice in this case. See Fed. R. Evid. 807.
`
`Besides being admissible under FRE 807, Ex. 1025 is relied on by Dr. Lubenow in
`
`forming his opinions. See Ex.1008; see also Ex. 1028. FRE 703 expressly authorizes
`
`where experts in the particular field would reasonably rely on those kinds of facts or
`
`data in forming an opinion on the subject, they need not be admissible for the
`
`opinion to be admitted. RMI has made no claims of prejudice here—because there is
`
`none—and Ex. 1025 is central to the issue of providing an objective indicia of
`
`background for what a person of ordinary skill in the art would have known about the
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`history of scanners and there use in the relevant timeframe. FRE 703 (if the facts or
`
`data would otherwise be inadmissible, the proponent of the opinion may disclose
`
`them to the jury only if their probative value in helping the jury evaluate the opinion
`
`substantially outweighs their prejudicial effect). Dr. Lubenow relies on Ex. 1025 in
`
`support of his thirty plus years of experience with the postal system and mail
`
`redirection. See Ex. 1028.
`
`10
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`

`Case CBM2014-00116
`Patent 6,826,548
`Further, 37 C.F.R. § 42.65 requires experts to “disclose the underlying facts or
`
`data on which the opinion is based” or the opinion will be given little or no weight.
`
`Dr. Lubenow relies on Ex. 1025, see Ex. 1028, as the basis, for example, that “CFS
`
`unit scanned the address side of the letters during this period [1997],” thus, Dr.
`
`Lubenow discloses the underlying facts on which the opinion is based. Ex. 1028 ¶ 34
`
`(citing Ex. 1025 at 2-3). Therefore, the Board should deny RMI’s request for
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`exclusion.
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`G. Exhibit 1026 – Postal Automated Redirection System
`RMI has moved to exclude Exhibit 1026 under FRE 401-403, 601-603, 701-
`
`703, 801-802, 901, and 1001-1002. RMI’s request to exclude this exhibit should be
`
`denied because RMI cannot add a new ground (FRE 801 and 1001) for exclusion not
`
`expressed in its previously served objections. Further, Ex. 1026 is not hearsay and in
`
`its objections RMI provides no explanation as to how Ex. 1026 is hearsay, not the
`
`best evidence, or is inadmissible.
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`The notations in the margins of Ex. 1026 are demonstrative in nature and are
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`not relied upon by USPS or Dr. Lubenow. The patentability rest on the principals of
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`35 U.S.C. § 101 and the actual teachings of 1997 ACS, which is already in the record
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`as Ex. 1004. And further, there is no indication that RMI was confused or any danger
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`that RMI will be confused by the notations in the future. Thus, the exhibit should not
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`be excluded. Motion at 14.
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`11
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`Case CBM2014-00116
`Patent 6,826,548
`Even if it was hearsay, which it is not, it is being offered not for the truth of the
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`matter asserted. The testimony in Ex. 1026 is more probative than any other evidence
`
`on the same subject. Ex. 1026 (cited during the reexamination, see Ex. 1009 at 515)
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`supports Dr. Lubenow’s testimony—during deposition—that “[Undeliverable-as-
`
`Addressed] mail is sent from the Delivery Unit to the CFS Unit and then back to the
`
`Delivery Unit.” Ex. 1028 at 20 (citing Ex. 1026 at 6). Admitting it will best serve the
`
`interests of justice in this case. See FRE 807. Besides being admissible under FRE 807,
`
`Ex. 1026 is relied on by Dr. Lubenow in forming his opinions. FRE 703 expressly
`
`authorizes if experts in the particular field would reasonably rely on those kinds of
`
`facts or data in forming an opinion on the subject, they need not be admissible for the
`
`opinion to be admitted. RMI has made no claims of prejudice here—because there is
`
`none—and Ex. 1026 is central to the issue of providing an objective indicia of
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`background for what a person of ordinary skill in the art would have known that
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`“sent” mail means go “back” from the Delivery Unit to a post office facility, in this
`
`case the CFS Unit. FRE 703 (if the facts or data would otherwise be inadmissible, the
`
`proponent of the opinion may disclose them to the jury only if their probative value
`
`in helping the jury evaluate the opinion substantially outweighs their prejudicial
`
`effect); see also Ex. 1028 ¶ 26.
`
`Further, 37 C.F.R. § 42.65 requires experts to “disclose the underlying facts or
`
`data on which the opinion is based” or the opinion will be given little or no weight.
`
`Dr. Lubenow relies on Ex. 1026, see Ex. 1028, as the basis, for example, that “UAA
`
`12
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`Case CBM2014-00116
`Patent 6,826,548
`mail is sent from the Delivery Unit to the CFS Unit and then back to the Delivery
`
`Unit,” thus Dr. Lubenow discloses the underlying facts on which the opinion is based.
`
`Ex. 1028 ¶ 26 (citing Ex. 1026 at 6). Thus, the Board should deny RMI’s request.
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`In addition, RMI improperly argues that Ex. 1026 is “trying to use this
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`document in conjunction with 1997 ACS in its anticipation argument, by tying prior
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`art to other materials.” Motion at 13. This is incorrect, Dr. Lubenow supports his
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`definition that a person of ordinary skill in the art in 1997 would understand that
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`“‘undeliverable mail items is merely mail returned after mailing.” As Dr. Lubenow
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`explains, “the commonly understood definition of UAA mail in 1997, (Ex. 1027 at
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`129), clearly encompasses such ‘undeliverable mail items.’” Reply at 11. Thus, the
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`Board should deny RMI’s request for adding improper arguments to its Motion.
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`H. Exhibit 1028 – Lubenow’s Supplemental Declaration
`RMI argues that certain paragraphs should be excluded because there is
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`inadequate foundation as an expert. RMI makes no showing—because it cannot deny
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`Dr. Lubenow’s 35 plus years of relevant experience—that Dr. Lubenow is not a
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`qualified technical expert in the postal industry. In addition, RMI seeks to exclude
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`¶¶ 11-21 and 26 because they “present new arguments.” Motion at 11. A motion to
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`exclude is not a mechanism to argue that a reply contains new arguments or relies on
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`evidence necessary to make a prima facie case. Microsoft v. SurfCast, IPR2013-00292 at 53
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`(PTAB Oct. 14, 2014) (Paper 33). RMI’s argument is therefore improper. Id.
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`(“Whether a reply contains arguments or evidence that are outside the scope of a
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`13
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`

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`Case CBM2014-00116
`Patent 6,826,548
`proper reply under 37 C.F.R. § 42.23(b) is left to our determination). Even so, Dr.
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`Lubenow’s supplemental declaration appropriately responded to new arguments
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`presented in RMI’s response and Dr. Nettles declaration. Thus, RMI’s Motion should
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`be denied.
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`III. Conclusion
`Based on the reasons provided above, Petitioner requests that the Board deny
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`RMI’s Motion.
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`Dated: April 20, 2015
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`Respectfully submitted,
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`By: /Lionel M. Lavenue/
`Lionel M. Lavenue (Lead Counsel)
`Reg. No. 46,859
`Erika H. Arner (Back-up Counsel)
`Reg. No. 57,540
`Finnegan, Henderson,
`Farabow, Garrett & Dunner, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`Phone: 571.203.2750
`Fax: 202.408.4400
`E-mail: USPS-RMI-CBM@finnegan.com
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`Elizbeth D. Ferrill (Back-up Counsel)
`Reg. No. 58,415
`Joshua L. Goldberg (Back-up Counsel)
`Reg. No. 59,369
`Finnegan, Henderson,
`Farabow, Garrett & Dunner, LLP
`901 New York Avenue, N.W.
`Washington, DC 20001-4413
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`CERTIFICATE OF SERVICE
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`Case CBM2014-00116
`Patent 6,826,548
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`The undersigned certifies that the foregoing Petitioner’s Opposition to RMI’s
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`Motion to Exclude was served on April 20, 2015 to the following attorneys of
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`record for Petitioner as well as by electronic service at the e-mail
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`address listed below:
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`Douglas H. Elliott
`doug@elliotiplaw.com
`Eric M. Adams
`eric@elliottiplaw.com
`Renea Mattox
`renea@elliottiplaw.com
`Sarah Kelly
`sarah@elliottiplaw.com
`THE ELLIOTT LAW FIRM, PLLC
`6750 West Loop South, Suite 995
`Bellaire, Texas 77401
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`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`15
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