Paper No. _____
`
`
`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`
`I.
`
`
`
`
`
`
`
`
`
`
`
`
`
`II.
`
`
`
`CBM2014-00116
`Patent 6,826,548
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`1
`
`3
`
`3
`
`4
`
`5
`
`5
`
`5
`
`TABLE OF CONTENTS
`
`ARGUMENT
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 1008 (Dr. Lubenow’s Declaration)
`
`Exhibit 1018 (USPS Redirection History) and
`Exhibit 1019 (Move Update)
`
`
`
`Exhibit 1022 (Dr. Lubenow’s Notes)
`
`
`
`Exhibit 1025 (Auxiliary Markings Newsletter)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 1026 (Postal Automated Redirection System)
`
`Exhibit 1028 (Dr. Lubenow’s Supplemental Declaration)
`
`CONCLUSION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`PTAB Proceedings
`
`Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Limited,
`IPR2014-00309 (PTAB Mar. 23, 2014) (Paper 83)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Regulations
`
`37 C.F.R. § 42.64
`
`Rules of Evidence
`
`Federal Rule of Evidence 802
`
`
`
`
`
`CBM2014-00116
`Patent 6,826,548
`
`
`
`
`
`
`
`3, 4
`
`3
`
`3, 4
`
`
`
`ii
`
`
`
`CBM2014-00116
`Patent 6,826,548
`
`I.
`
`ARGUMENT
`
`A. Exhibit 1008 (Dr. Lubenow’s Declaration)
`
`In its Motion to Exclude, Patent Owner showed that Dr. Lubenow is not
`
`
`
`
`qualified to testify about operations in CFS units—particularly as to whether optical
`
`scanners were used in the 1997 ACS process. (PO Motion at 5). Dr. Lubenow
`
`testified in his deposition that he did not know “the internal details of the CFS
`
`operation.” (Ex.1023 at 145). He also testified repeatedly that he could not answer
`
`questions related to optical scanners because he had never been inside a CFS unit. (Id.
`
`at 172-74). His testimony is clear, and he lacks knowledge about CFS operations.1
`
`
`
`Dr. Lubenow also misquotes 1997 ACS several times. (PO Motion at 5-6). In
`
`one example, his “quote” was completely inaccurate and related to irrelevant carrier-
`
`filed forms that have no updated addresses. (Id.). This was also raised in Patent
`
`Owner’s Response. (PO Resp. at 53-54, 73). This testimony related to carrier-filed
`
`forms is misleading.
`
`In response, Petitioner misquotes 1997 ACS, which includes the following
`
`statement: “Undeliverable Mailpieces Matched to Carrier-Filed Actions: The mailpiece
`
`is returned with manual nondelivery information attached, and no ACS notification
`
`is generated.” (Ex.1004 at 15) (emphasis added). In another section, it states
`
`“Undeliverable Mailpieces Matched to Carrier-Filed Actions: The mailpiece is
`
`
`1 There are no mischaracterizations or false suggestions—the testimony is clear.
`
`
`
`1
`
`
`
`CBM2014-00116
`Patent 6,826,548
`discarded, and an electronic ACS notification with Deliverability Code “K,” “G,” or
`
`“C,” is generated (see page 22, Deliverability Code).” (Id.). Deliverability Codes “K,”
`
`“G,” and “C” indicate “that the mailpiece was matched with a COA order but new
`
`address information is unknown.” (Id. at 23-24) (emphasis added). Petitioner leaves
`
`out the references to the deliverability codes and claims that this misquoted language
`
`shows that notifications providing updated addresses, which is incorrect.
`
`
`
`Patent Owner has pointed to specific instances where Dr. Lubenow merely
`
`“quoted” excerpts from 1997 ACS and then stated that a certain claim element was
`
`disclosed in his opinion. (PO Motion at 7-8). Petitioner’s response is insufficient in
`
`that it merely states that no explanation is necessary. Patent Owner maintains its
`
`objections as stated on pages 7-8.2
`
`
`
`Patent Owner also moved to exclude specific paragraphs of Dr. Lubenow’s
`
`declaration related to a provisional application and related reexamination proceedings.
`
`(PO Motion at 9-10). Patent Owner pointed out that he was not qualified to testify as
`
`an expert on patent applications or proceedings because he has no real experience in
`
`
`2 As for Petitioner’s argument that Dr. Lubenow’s declaration testimony related to
`
`claim constructions (¶¶ 70-83) is still relevant because the Board’s claim construction
`
`is not final, it should be noted that Petitioner made no claim construction arguments
`
`in its Reply.
`
`
`
`2
`
`
`
`CBM2014-00116
`Patent 6,826,548
`these matters. (Id.). He admitted that his knowledge was really just related to one of
`
`the two particular patents where he was named as an inventor. (Id. at 9).
`
`B. Exhibit 1018 (USPS Redirection History) and Exhibit 1019 (Move
`Update)
`
`Exhibits 1018 and 1019 are hearsay under FRE 802. Petitioner states that these
`
`
`
`
`exhibits are not hearsay, but provides no explanation to support these statements.
`
`Further, Petitioner’s statements that Exhibits 1018 and 1019 are being used for a non-
`
`hearsay purpose have no support.
`
`C. Exhibit 1022 (Dr. Lubenow’s Notes)
`
`During Dr. Lubenow’s deposition, Petitioner attached “his notes” to the
`
`
`
`
`deposition. At that time, Patent Owner specifically objected to the notes because (1)
`
`they included new opinions not previously expressed (37 C.F.R. § 42.64), (2) they
`
`were an improper attempt to supplement Dr. Lubenow’s opinions (37 C.F.R. § 42.64),
`
`(3) they are hearsay, and (4) they violate the best evidence rule. (Ex.1023 at 169-171).
`
`These objections were the basis for moving to exclude Exhibit 1022.
`
`
`
`Petitioner’s response is essentially that the Board should admit these “notes”
`
`simply because Dr. Lubenow wrote them. Yet, there is no support for simply allowing
`
`experts to prepare “notes” and just file them at a party’s convenience.
`
`
`
`Further, Petitioner’s reference to Intri-Plex Technologies, Inc. and MMI Holdings,
`
`Ltd. v. Saint-Gobain Performance Plastics Rencol Limited, IPR2014-00309 (PTAB Mar. 23,
`
`2014) (Paper 83) does not apply to this situation. In Intri-Plex, an attorney wrote on
`
`
`
`3
`
`
`
`CBM2014-00116
`Patent 6,826,548
`existing exhibits for the purpose of focusing the opposing declarant during a
`
`deposition. Intri-Plex, IPR2014-00309 at 18. Here, Exhibit 1022 consists of “notes”
`
`prepared by Petitioner’s counsel allegedly at Dr. Lubenow’s direction. (Ex.1023 at 11).
`
`These “notes” were completely unnecessary. Further, Patent Owner’s counsel asked
`
`Dr. Lubenow to focus on the actual documents rather than these “notes.” (Id. at 105).
`
`
`
`If these “notes” are admitted, then it will open the door for parties in the future
`
`to have their declarants prepare all manner of materials and submit them whenever
`
`convenient without any regard to the PTAB’s regulations on providing and
`
`supplementing opinions. Further, Petitioner makes no effort to respond to the
`
`hearsay objection or the objection based on the best evidence rule.
`
`
`
`D. Exhibit 1025 (Auxiliary Markings Newsletter)
`
`Exhibit 1025 is hearsay under FRE 802. Petitioner states that it is not hearsay,
`
`but provides no explanation to support this statement. Petitioner merely points out
`
`that it was published in 2006. Also, Petitioner’s reference to this newsletter as
`
`“testimony” is misleading. Further, Petitioner’s statement that Exhibit 1025 is being
`
`used for a non-hearsay purpose has no support. There is no showing that admitting
`
`this document is in the interest of justice. This newsletter is cited in Dr. Lubenow’s
`
`Supp. Declaration for an argument about “decoding,” but the newsletter does not
`
`support those statements.
`
`
`
`
`
`
`
`4
`
`
`
`CBM2014-00116
`Patent 6,826,548
`E. Exhibit 1026 (Postal Automated Redirection System)
`
`Petitioner states that the purpose of this exhibit is to show that undeliverable-
`
`
`
`
`as-addressed mail is sent from the delivery unit to the CFS unit and then back to the
`
`delivery unit. There is no explanation as to why Exhibit 1004 (1997 ACS) cannot
`
`provide information on these postal procedures, and there is no showing that Exhibit
`
`1026 is not hearsay and should be admitted.
`
`F.
`
`Exhibit 1028 (Dr. Lubenow’s Supplemental Declaration)
`
`Patent Owner moves to exclude Exhibit 1028 because it presents new
`
`
`
`
`arguments. Petitioner makes arguments related to its Reply rather than Exhibit 1028.
`
`Any issues with Petitioner’s Reply will be addressed at oral argument. Thus,
`
`Petitioner’s assertions related to its Reply are not applicable.
`
`II. CONCLUSION
`
`
`
`Based on the reasons provided above, Patent Owner requests that the Board
`
`grant Patent Owner’s Motion to Exclude.
`
`
`Dated: April 27, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`/Eric M. Adams/
`Eric M. Adams (Reg. No. 56,290)
`eric@elliottiplaw.com
`THE ELLIOTT LAW FIRM, PLLC
`6750 West Loop South, Suite 920
`Bellaire, Texas 77401
`(832) 485-3508
`(832) 485-3511 fax
`
`Attorneys for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`CBM2014-00116
`Patent 6,826,548
`
`The undersigned certifies that the foregoing Patent Owner Return Mail, Inc.’s
`
`Reply in support of its Motion to Exclude Evidence was served on April 27, 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
`
`Elizabeth Ferrill
`Joshua Goldberg
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001
`
`USPS-RMI-CBM@finnegan.com
`
`
`
`
`
`
`
`
`
`/Eric M. Adams/
`Eric M. Adams
`Registration No. 56,290
`Attorney for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
