UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
`
`PATENT OWNER’S OBJECTIONS UNDER 37 C.F.R. § 42.64(b)(1)
`TO EVIDENCE SUBMITTED WITH PETITION FOR INTER PARTES REVIEW
`
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
`
`PATENT OWNER’S OBJECTIONS UNDER 37 C.F.R. § 42.64(b)(1)
`TO EVIDENCE SUBMITTED WITH PETITION FOR INTER PARTES REVIEW
`
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Under 37 C.F.R. § 42.64(b)(1), Patent Owner e-ImageData Corp. objects to
`
`the admissibility of the evidence identified below that Petitioner submitted as
`
`exhibits to or referenced in its Petition for Inter Partes Review (Paper No. 2).
`
`1.
`
`Petition
`
`Patent Owner objects to the drawings and figures in the Petition under
`
`Fed. R. Evid. 401–403 and 901 as lacking authenticity, lacking foundation,
`
`assuming facts not in evidence, unfair representations, and unduly prejudicial. For
`
`example, the illustration on page 9 is an inaccurate and unfair representation of the
`
`purported prior art, is not authentic, and lacks foundation. The drawing on page 51
`
`is an inaccurate and unfair representation of the purported prior art, is not
`
`authentic, and lacks foundation, specifically with respect to the alleged location of
`
`first lead member. The drawing on page 51 is an inaccurate and unfair
`
`representation of the purported prior art, is not authentic, and lacks foundation,
`
`specifically with respect to the alleged location of first lead member and drive
`
`mechanism.
`
`2.
`
`Ex. 1002
`
`Under Fed. R. Evid. 702 and 703 and 37 C.F.R. § 42.65, Patent Owner
`
`objects to Exhibit 1002 (Senn Declaration). Mr. Senn’s statements and opinions
`
`are conclusory, do not attempt to take into account the level of skill in the art, and
`
`are based on neither sufficient facts and data nor reliable principles and methods.
`
`
`
`1
`
`
`
`For example, Exhibit 1002 does not provide sufficient explanation or rationale
`
`behind Mr. Senn’s assertions of obviousness or his stated motivations to combine.
`
`As another example, Exhibit 1002 does not explain how combinations of prior art
`
`would be implemented or achieved, nor how or whether such implementations
`
`would work.
`
`Patent Owner additionally objects to Exhibit 1002 as lacking foundation,
`
`assuming facts not in evidence, containing testimony on matters as to which the
`
`witness lacks personal knowledge, conclusory and containing testimony
`
`concerning documents for which authentication required by Fed. R. Evid. 901 is
`
`lacking. For example, paragraphs 23–39, 53, 57, and 99–107 are objected to as
`
`lacking foundation, conclusory, and not supported by underlying facts. For
`
`example, paragraph 99 states “a person of ordinary skill in the art would have
`
`been motivated to combine these references, and would have been readily able to
`
`combine them.” This statement is conclusory, lacks foundation, and is not
`
`supported by the underlying facts. Paragraph 100 states “[s]ince both Kokubo and
`
`Fujinawa are image readers, a person of skill in the art would have been motivated
`
`to combine the teachings of each. This statement is conclusory, lacks foundation,
`
`and is not supported by the underlying facts. Paragraph 102 states that the
`
`combination of Fujinawa and Kokubo would have been a “simple substitution.”
`
`This statement is conclusory, lacks foundation, and is not supported by the
`
`
`
`2
`
`
`
`underlying facts. Paragraph 104 states that “one of ordinary skill in the art would
`
`have known to simply substitute a second Kokubo-type drive mechanism and lead
`
`member.” This statement is conclusory, lacks foundation, and is not supported by
`
`the underlying facts. Paragraph 107 states “a person of skill in the art could and
`
`would have combined Fujinawa with Kokubo to result in the claimed invention.”
`
`This statement is conclusory, lacks foundation, and is not supported by the
`
`underlying facts.
`
`Patent Owner objects to the drawings and figures in Exhibit 1002 under Fed.
`
`R. Evid. 401–403, 602, 702, 703, and 901 as lacking authenticity, lacking
`
`foundation, lacking personal knowledge, assuming facts not in evidence, unfair
`
`representations, and unduly prejudicial. For example, the drawing on page 11 is an
`
`inaccurate and unfair representation of the prior art, is not authentic, and lacks
`
`foundation.
`
`Patent Owner objects to Exhibit 1002 under Fed. R. Evid. 401 and 402 to the
`
`extent it relates to claims on which the Board did not institute review in its April
`
`25, 2017 Decision (Paper 6). Specifically, at least paragraphs 61, 66–71, 78, 85–
`
`98, and 108–117 relate solely to claims on which the Board did not institute
`
`review. Patent Owner further objects to Exhibit 1002 under Fed. R. Evid. 401 and
`
`402 to the extent it cites or relies upon references, exhibits, or grounds not
`
`expressly adopted by the Board.
`
`
`
`3
`
`
`
`3.
`
`Ex. 1006
`
`Patent Owner objects to Exhibit 1006 under Fed. R. Evid. 401 and 402
`
`because it relates solely to claims on which the Board did not institute review.
`
`4.
`
`Ex. 1007
`
`Patent Owner objects to Exhibit 1007 under Fed. R. Evid. 401 and 402
`
`because it relates solely to claims on which the Board did not institute review.
`
`Patent Owner additionally objects to Exhibit 1007 under Fed. R. Evid. 901
`
`as lacking authenticity. Patent Owner objects to Exhibit 1007 under Fed. R. Evid.
`
`802 as inadmissible hearsay. Patent Owner also objects to Exhibit 1007 because it
`
`is not a printed publication. Specifically, there is no evidence that this document
`
`was publicly available.
`
`5.
`
`Ex. 1008
`
`Patent Owner objects to Exhibit 1008 under Fed. R. Evid. 401 and 402
`
`because it relates solely to claims on which the Board did not institute review.
`
`Patent Owner additionally objects to Exhibit 1008 under Fed. R. Evid. 901
`
`as lacking authenticity. Patent Owner objects to Exhibit 1008 under Fed. R. Evid.
`
`802 as inadmissible hearsay. Patent Owner also objects to Exhibit 1008 because it
`
`is not a printed publication. Specifically, there is no evidence that this document
`
`was publicly available.
`
`
`
`4
`
`
`
`6.
`
`Ex. 1009
`
`Patent Owner objects to Exhibit 1009 under Fed. R. Evid. 401 and 402
`
`because it relates solely to claims on which the Board did not institute review.
`
`Patent Owner additionally objects to Exhibit 1009 under Fed. R. Evid. 901
`
`as lacking authenticity. Patent Owner objects to Exhibit 1009 under Fed. R. Evid.
`
`802 as inadmissible hearsay. Patent Owner also objects to Exhibit 1009 because it
`
`is not a printed publication for the reasons discussed in Patent Owner’s Preliminary
`
`Response (Paper No. 5).
`
`7.
`
`Ex. 1010
`
`Patent Owner objects to Exhibit 1010 under Fed. R. Evid. 401 and 402
`
`because it relates solely to claims on which the Board did not institute review.
`
`Patent Owner additionally objects to Exhibit 1002 as lacking foundation,
`
`assuming facts not in evidence, containing testimony on matters as to which the
`
`witness lacks personal knowledge, conclusory and containing testimony
`
`concerning documents for which authentication required by Fed. R. Evid. 901 is
`
`lacking. For example, paragraph 6 includes statements to which the witness lacks
`
`personal knowledge, including to whom the document was published, whether the
`
`document had been marked confidential by anyone, and ICT’s policies regarding
`
`copyright dates.
`
`
`
`
`
`5
`
`
`
`Patent Owner has made these objections within 10 business days from the
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`/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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`April 25, 2017 institution of trial.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
`
`PATENT OWNER’S OBJECTIONS UNDER 37 C.F.R. § 42.64(b)(1)
`TO EVIDENCE SUBMITTED WITH PETITION FOR INTER PARTES REVIEW
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`I hereby certify on this 9th day of May 2017, that a true and correct copy of
`
`the PATENT OWNER’S OBJECTIONS UNDER 37 C.F.R. § 42.64(b)(1) TO EVIDENCE
`
`SUBMITTED WITH PETITION FOR INTER PARTES REVIEW was sent in its entirety via
`
`electronic mail to Jason.Engel.PTAB@klgates.com.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Michael T. Piery/
`Michael T. Piery
`Reg. No. 71,915
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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
