UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
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`v.
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`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(C)
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
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`v.
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`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(C)
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`Patent Owner hereby submits the following reply in support of its Motion to
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`Exclude Evidence (Paper 17).
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`I.
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`INTRODUCTION
`Patent Owner’s Motion to Exclude Evidence establishes that the challenged
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`evidence fails to meet the requirements as set forth in the Federal Rules of
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`Evidence. It is clear that “[t]he admissibility of evidence in an IPR proceeding
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`generally is governed by the Federal Rules of Evidence.” Universal Remote
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`Control, Inc. v. Universal Elecs., Inc., IPR2014-01146, Paper No. 36 (PTAB Dec.
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`10, 2015) (citing 37 C.F.R. § 42.62(a); Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48758)); see also 37 C.F.R. § 42.104(b)(5). Patent Owner has met the burden
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`of establishing inadmissibility of the challenged evidence under 37 C.F.R. §
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`42.20(c). Because Petitioner has failed to provide evidence that meets the
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`requirements of admissibility under the Federal Rules of Evidence, as
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`demonstrated in Patent Owner’s Motion to Exclude, the challenged evidence is
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`inadmissible and should be excluded.
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`II.
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`
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`ARGUMENT
`A.
`Patent Owner Sufficiently Supported Its Motion
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`Petitioner’s claim that Patent Owner motion contains bare assertions is
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`unavailing because Patent Owner followed the guidance provided by the PTAB for
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`motions to exclude. For example, in Flir Systems, Inc., v. Leak Surveys, Inc., the
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`1
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`PTAB provided an example of a how a motion to exclude might be succinctly
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`presented:
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`In addressing the admissibility of Ex. 1005, a motion to exclude could
`state the following.
`Exhibit 1005
`1. Identity of the exhibit and portion thereof sought to be excluded: test
`data described in Exhibit 1005, Example 1.
`2. Objection: Hearsay: Fed. R. Evid. 802; 37 C.F.R. § 42.61(c).
`3. An objection was made in an Objection to Evidence, filed [state date
`filed]. See Ex. 2011, page x, lines y–z.
`4. Petitioner relies on the objected data on pages 5–6 of the Petition.
`5. The relied upon data is hearsay. Petitioner has not presented the
`testimony of any individual having first-hand of the testing described
`in Example 1.
`Nothing more is needed.
`If petitioner believes an exception to the hearsay rule applies, petitioner
`may address the exception in an opposition to which patent owner may
`a reply.
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`Case IPR2014-014-00411, Paper 113 at 6–7 (P.T.A.B. Sept. 3, 2015) (emphasis
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`added). Patent Owner followed the PTAB’s guidance and noting more was
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`needed.
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`B.
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`The Drawings And Figures In The Petition Are Inadmissible
`Because They Lack Foundation And Are Unduly Prejudicial
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`Petitioner’s illustration and annotated figure are inadmissible as unfairly
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`prejudicial because they are inaccurate representations of the prior art Fujinawa
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`reference. Representations of the prior art should be excluded when the danger of
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`unfair prejudice outweighs the probative value of the evidence. See Callaway Golf
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`2
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`Co. v. Acushnet Co., 576 F.3d 1331, 1342 (Fed. Cir. 2009). Petitioner’s
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`“schematic representation” oversimplifies and misrepresents the Fujinawa
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`reference by, for example, depicting the lead members as smooth rods when the
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`reference clearly discloses threaded worms. (Ex. 1004 at Fig. 4.) Petitioner’s
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`annotated figure depicts the device of Fujinawa in a way undisclosed in the prior
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`art. These two depictions are inaccurate and unfairly prejudicial.
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`The Intri-Plex case is readily distinguishable. In Intri-Plex, the Board
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`denied a motion to exclude “annotated excerpts of Figures” from a particular
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`reference. Intri-Plex Techs., Inc. v. Saint-Gobain Perf. Plastics Rencol Ltd.,
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`IPR2014-00309, Paper 83, at 17–18 (P.T.A.B. Mar. 23, 2014). The Board found
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`that there was no danger of confusion and unfair prejudice because it was able to
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`“differentiate between the actual figures in [the reference] and counsel’s
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`demonstrative annotations thereto.” Id. at 18.
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`Unlike in Intri-Plex where counsel provided annotated versions of actual
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`figures of a reference, here the Petitioner provides a newly created “schematic
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`representation” of the purported prior art and a figure annotated in a manner not
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`disclosed in the prior art. (Paper 1 at 9, 52; Ex. 1002 at ¶ 28). Unlike in Intri-Plex,
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`there is the real possibility that the Board may rely on the created illustration and
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`figure instead of the actual teachings of the cited references. IPR2014-00309,
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`Paper 83, at 18. Accordingly the challenged illustration should be excluded.
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`3
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`C. Exhibits 1007, 1008, and 1009 are Inadmissible
`Petitioner erroneously argues that the title page and copyright information is
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`sufficient to self-authenticate Ex. 1007. However, the title of the device and other
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`publicly available information about the 5100 Fiche Scanstation is insufficient to
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`self authenticate the document. U.S. v. Mitts, 396 Fed. App’x. 296, 302 (6th Cir.
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`2010) (public information not distinctive under FRE 901(b)(4)). Likewise, the
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`copyright information is not probative of the admissibility of the document. See,
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`e.g., Stryker Corp. v. Karl Storz Endoscopy-Am., Inc., IPR2015-00677, Paper 15 at
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`18–19 (P.T.A.B. Sept. 2, 2015); see also TRW Automotive v. Magna Elec. Inc.,
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`IPR2014-01347, Paper 25 at 6 (P.T.A.B. Jan. 6, 2016). Thus, without more,
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`Petitioner has failed to produce evidence sufficient to support a finding that the
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`item is what the proponent claims it is, and Exhibit 1007 should be excluded.
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`Petitioner has not shown that Exhibit 1008 is a self-authenticating periodical.
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`Petitioner has not provided any evidence showing that Exhibit 1008 is indeed a
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`report published in a periodical called “Library Technology Reports.” Instead,
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`Petitioner cites only to the Exhibit itself and the ISBN listed. This is information is
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`insufficient to show that Exhibit 1008 is self-authenticating under Fed. R. Evid.
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`902(6). See TRW Auto. U.S. LLC, v. Magna Elecs. Inc., IPR2014-01348, Paper 25
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`at 5–11 (P.T.A.B. Jan. 15, 2016) (holding that an exhibit was not self-
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`4
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`authenticating even though the exhibit included publication information and the
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`ISBN).
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`Exhibit 1009 is not authenticated under Fed. R. Evid. 902(11). Under Rule
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`902(11), a document can only be authenticated as a business record if, among other
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`things, it was created at or near the time of the events recorded. Rambus, Inc. v.
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`Infineon Techs. AG, 348 F. Supp. 2d 698, 704 (E.D. Va. 2004) (“The second
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`requirement of Rule 902(11) is that the record ‘was made at or near the time of the
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`occurrence of the matters set forth by, or from information transmitted by, a person
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`with knowledge of those matters.’”). Mr. Barboni’s declaration describes only the
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`timeframe when the document was published and distributed. (Ex. 1010 ¶ 7.) Mr.
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`Barboni fails to identify the date the document was created or state that the
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`document was created at or near the time of the occurrence of the matters set forth
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`therein. Accordingly, Mr. Barboni’s declaration does not authenticate Exhibit
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`1009 under Rule 902(11).
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`III. CONCLUSION
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`For at least the foregoing reasons, Patent Owner respectfully requests that
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`evidence identified in its motion to exclude be excluded, and any conclusions
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`drawn therefrom deemed unsupported.
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`5
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`Respectfully submitted,
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`
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`/Michael T. Piery/
`Michael T. Piery
`Reg. No. 71,915
`Attorney for Patent Owner
`michael.piery@quarles.com
`QUARLES & BRADY, LLP
`411 East Wisconsin Avenue
`Milwaukee, WI 53202-4497
`Tel: (414) 277-5367
`Fax: (414) 271-3552
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
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`CERTIFICATE OF SERVICE
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`
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`I hereby certify on this 19th day of January, 2018, that a true and correct
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`copy of the PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
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`EVIDENCE UNDER 37 C.F.R. § 42.64(C) was sent in its entirety via electronic mail
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`to: Jason.Engel.PTAB@klgates.com.
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`Respectfully submitted,
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`/Michael T. Piery/
`Michael T. Piery
`Reg. No. 71,915
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