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 MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(C)
`
`
`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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`____________
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`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 MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. § 42.64(C)
`
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
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`Pursuant to 37 C.F.R. § 42.64(c) and the Scheduling Order (Paper No. 7),
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`Patent Owner timely submits this Motion to Exclude Evidence. Patent Owner
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`moves to exclude certain figures in the Petition for Inter Partes Review (Paper No.
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`2) (“Petition”), portions of Exhibit 1002, and Exhibits 1006, 1007, 1008, 1009.
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`The Board should grant Patent Owner’s Motion to Exclude for the reasons set forth
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`below.
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`I.
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`STATEMENT OF FACTS
`The Board instituted inter partes review of claims 1–3, 5–7, 20–28, 31, 41,
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`43, 44, 53, and 63 as allegedly unpatentable under 35 U.S.C. § 103 (a) over
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`Fujinawa (Ex. 1004) and Kokubo (Ex. 1005) on April 25, 2017. (Institution
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`Decision, Paper No. 6, p. 23.) Patent Owner timely served Petitioner with
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`objections to the admissibility of certain figures in the Petition and Exhibits 1002,
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`1006, 1007, 1008, 1009, and 1010 on May 9, 2017. (Paper No. 8.) Petitioner did
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`not respond to the objections by filing supplemental evidence within the time
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`period allowed by the rules.
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`II.
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`IDENTIFICATION OF WHERE EVIDENCE WAS RELIED UPON
`The following is a listing of where in the record the evidence sought to be
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`excluded was relied on by the Petitioner:
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`1
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`
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`A. Petition
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`Petitioner relied on the illustration on page 9 of the Petition on pages 9 and 10
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`of the Petition. Petitioner relied on the modified figure on page 51 of the Petition
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`on pages 50 and 51 of the Petition.
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`B. Exhibit 1002
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`Petitioner relied on the objected to portions of Exhibit 1002 (Senn Declaration)
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`throughout its Petition. Specifically, Petitioner referenced paragraphs 28, 61, 66–
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`71, 78, 85–98, and 108–117 on pages 41, 42, 44, 46, and 49–81 of the Petition.
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`C. Exhibit 1006
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`Petitioner relied on this exhibit in the Petition at pages 10–14. Petitioner also
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`relied on this exhibit in Exhibit 1002 (Senn Declaration) at paragraphs 29–37.
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`D. Exhibit 1007
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`Petitioner relied on this exhibit in the Petition at pages 10–14. Petitioner also
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`relied on this exhibit in Exhibit 1002 (Senn Declaration) at paragraphs 29–37.
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`E. Exhibit 1008
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`Petitioner relied on this exhibit in the Petition at pages 5–6, and 58–61.
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`Petitioner also relied on this exhibit in Exhibit 1002 (Senn Declaration) at
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`paragraphs 37, 86, 87, 89–91, 95, 97, 98.
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`2
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`F. Exhibit 1009
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`Petitioner relied on this exhibit in the Petition at pages 5–6, and 54–64.
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`Petitioner also relied on this exhibit in Exhibit 1002 (Senn Declaration) at
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`paragraphs 37, 86, 88, 91–98.
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`G. Exhibit 1010
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`Petitioner relied on this exhibit in the Petition at pages 6, 55, and 61.
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`III. ARGUMENT
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`Each of the above identified challenged exhibits are addressed in turn, in
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`numerical order, beginning with the inadmissible portions of the Petition itself.
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`A. Certain Drawings And Figures In The Petition Are Inadmissible
`Because They Lack Foundation And Are Unduly Prejudicial
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`Patent Owner timely objected to the drawings and figures in the Petition
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`under Fed. R. Evid. 401–403 and 901 as lacking authenticity, lacking foundation,
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`assuming facts not in evidence, unfair representations, and unduly prejudicial.
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`(Paper No. 8 at 1.) Federal Rules of Evidence 401 and 402 provide the framework
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`for determining if evidence is inadmissible due to relevance: evidence is relevant if
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`it has a “tendency to make a fact more or less probable than it would be without the
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`evidence,” Fed. R. Evid. 401, and “[i]rrelevant evidence is not admissible.” Fed.
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`R. Evid. 402. However, under Fed. R. Evid. 403, the Board “may exclude relevant
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`evidence if its probative value is substantially outweighed by a danger of one or
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`more of the following: unfair prejudice, confusing the issues, misleading the jury
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`3
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`….” Additionally, the Petitioner must authenticate the evidence on which it relies,
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`“[t]o satisfy the requirement of authenticating or identifying an item of evidence,
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`the proponent must produce evidence sufficient to support a finding that the item is
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`what the proponent claims it is.” Fed. R. Evid. 901.
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`
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`Here, the unsupported drawings and purported annotated figures should be
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`excluded as irrelevant and highly prejudicial. The illustration on page 9 of the
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`Petition is an inaccurate and unfair representation of the purported prior art. This
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`inadmissible illustration is also provided in the Senn Declaration (See Ex. 1002, ¶
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`28.) The Petitioner fails to authenticate how this illustration is a “well-known prior
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`art process” by producing evidence sufficient to support that contention in either
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`the Petition or the Senn Declaration (Ex. 1002). Rather, the only support for this
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`position is the statement that this illustration “is a schematic representation of the
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`Fujinawa microform imaging apparatus (e.g., Ex. 1004 at Fig. 4).” (Ex. 1002, ¶
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`28.) This illustration is nothing more than a one-sided interpretation and
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`representation of a figure disclosed in Fujinawa. Accordingly, this illustration
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`should be excluded. Similarly, the drawing on page 51 of the Petition is a
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`modified versions of the figure in Fujinawa, and includes Petitioner’s contentions
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`and characterizations of the figure. This annotated and modified figure is not
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`evidence of the disclosure of Fujinawa.
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`4
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`B.
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`The Drawings And Figures Of Ex. 1002 Are Inadmissible Because
`They Lack Foundation And Are Unduly Prejudicial
`The drawings and figures in Ex. 1002 were timely objected to under Fed. R.
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`
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`Evid. 401–403, 602, 702, 703, and 901 as lacking authenticity, lacking foundation,
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`lacking personal knowledge, assuming facts not in evidence, unfair
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`representations, and unduly prejudicial. As previously discussed with relation to
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`the Petition, the illustration in paragraph 28, which also appears on page 9 of the
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`Petition, is nothing more than a one-sided interpretation and representation of a
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`figure disclosed in Fujinawa, and should be excluded as unduly prejudicial.
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`Similarly, to the extent the other drawings in Ex. 1002 are modified and/or
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`annotated drawings present in the prior art, Petitioner has failed to authenticate
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`these drawings, and they should also be excluded as unduly prejudicial.
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`C.
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`Portions Of Ex. 1002 Are Inadmissible Because They Relate To
`Claims On Which The Board Did Not Institute Review
`Patent Owner timely objected to Ex. 1002 under Fed. R. Evid. 401 and 402
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`
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`to the extent it relates to claims on which the Board did not institute review in its
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`April 25, 2017 Decision (Paper 6). (Paper No. 8 at 3.) Specifically, at least
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`paragraphs 61, 66–71, 78, 85–98, and 108–117 relate solely to claims on which the
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`Board did not institute review, and are thus irrelevant and inadmissible.
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`
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`5
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`
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`D. Exhibits 1006, 1007, 1008, 1009, And 1010 Are Inadmissible
`Because They Relate To Claims On Which The Board Did Not
`Institute Review
`Patent Owner timely objected to Exhibits 1006, 1007, 1008, 1009, and 1010
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`
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`under Fed. R. Evid. 401 and 402 because they relate solely to claims on which the
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`Board did not institute review in its April 25, 2017 Decision (Paper 6). (Paper No.
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`8 at 4–5.) Accordingly, these exhibits are irrelevant and inadmissible.
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`E.
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`Exhibits 1007 Is Also Inadmissible Because It Lacks Authenticity
`And Is Not A Printed Publication
`Patent Owner timely objected to Ex. 1007 under Fed. R. Evid. 901 as
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`
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`lacking authenticity and under Fed. R. Evid. 802 as inadmissible hearsay. (Paper
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`No. 8 at 4.)
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`Exhibit 1007 is a Field Service Manual for a device called Fiche Scanstation.
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`Exhibit 1007 is not self-authenticating and Petitioner has failed to provide any
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`evidence sufficient to support a finding that Ex. 1007 is indeed the item the
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`Petitioner claims it is, as required under Fed. R. Evid. 901. Accordingly, this
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`exhibit should be excluded as lacking authenticity.
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`Exhibit 1007 should also be excluded as hearsay. The admissibility of
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`hearsay is governed by Federal Rules of Evidence 802–807. Hearsay is defined in
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`Rule 801 as “a statement that: (1) the declarant does not make while testifying at
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`the current trial or hearing; and (2) a party offers in evidence to prove the truth of
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`the matter asserted in the statement.” Fed. R. Evid. 801(c). Hearsay is not
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`6
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`admissible absent an exception. Fed. R. Evid. 802. Exhibit 1007 is hearsay
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`because it contains statements made outside of this proceeding that Petitioner is
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`offering to prove the truth of the matter asserted. Petitioner failed to provide any
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`additional evidence or declarations showing how this hearsay document is not
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`hearsay, or how it qualifies under any of the enumerated exceptions. Fed. R. Evid.
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`802.
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`F.
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`Exhibits 1008 Is Also Inadmissible Because It Lacks Authenticity
`And Is Hearsay
`Patent Owner timely objected to Ex. 1008 under Fed. R. Evid. 901 as
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`lacking authenticity and under Fed. R. Evid. 802 as inadmissible hearsay. (Paper
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`No. 8 at 4.)
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`Exhibit 1008 is a report on the UC-1 Universal Film Carrier. Exhibit 1008 is
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`not self-authenticating and Petitioner has failed to provide any evidence sufficient
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`to support a finding that Ex. 1008 is indeed the item the Petitioner claims it is, as
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`required under Fed. R. Evid. 901. Accordingly, this exhibit should be excluded as
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`lacking authenticity.
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`Exhibit 1008 should also be excluded as hearsay. Exhibit 1008 is hearsay
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`because it contains statements made outside of this proceeding that Petitioner is
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`offering to prove the truth of the matter asserted. Petitioner failed to provide any
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`additional evidence or declarations showing how this hearsay document is not
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`7
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`hearsay, or how it qualifies under any of the enumerated exceptions. Fed. R. Evid.
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`802.
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`G. Exhibits 1009 Is Also Inadmissible Because It Lacks Authenticity
`And Is Hearsay
`Patent Owner timely objected to Ex. 1009 under Fed. R. Evid. 901 as
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`lacking authenticity and under Fed. R. Evid. 802 as inadmissible hearsay. (Paper
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`No. 8 at 5.)
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`Exhibit 1009 is a parts manual for a motorized carrier. Exhibit 1009 is not
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`self-authenticating and Petitioner has failed to provide any evidence sufficient to
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`support a finding that Ex. 1009 is indeed the item the Petitioner claims it is, as
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`required under Fed. R. Evid. 901. Accordingly, this exhibit should be excluded as
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`lacking authenticity.
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`Exhibit 1009 should also be excluded as hearsay. Exhibit 1009 is hearsay
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`because it contains statements made outside of this proceeding that Petitioner is
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`offering to prove the truth of the matter asserted. Petitioner failed to provide any
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`additional evidence or declarations showing how this hearsay document is not
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`hearsay, or how it qualifies under any of the enumerated exceptions. Fed. R. Evid.
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`802.
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`8
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`IV. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the
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`identified illustrations in the Petition, portions of Exhibit 1002, as well as Exhibits
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`1006, 1007, 1008, 1009, and 1010 be excluded, and any conclusions drawn
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`therefrom deemed unsupported.
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`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
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`9
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`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
`____________
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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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`I hereby certify on this 22nd day of December, 2017, that a true and correct
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`copy of the PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE UNDER 37 C.F.R. §
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`42.64(C) was sent in its entirety via electronic mail to:
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`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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