`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00859
`Patent 9,047,586 B2
`____________
`
`Record of Oral Hearing
`Held: April 26, 2018
`
`
`
`
`Before TREVOR M. JEFFERSON, DAVID C. MCKONE, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JOSEPH M. SCHAFFNER, ESQUIRE
`ALIZA CARRANO, ESQUIRE
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Wilmer Cutler Pickering Hale & Dorr, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 21090
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ALAN S. KELLMAN, ESQUIRE
`KEVIN MCNISH, ESQUIRE
`Desmarais, LLP
`230 Park Avenue
`New York, NY 10169
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, April 26, 2018,
`
`at the U.S. Patent and Trademark Office, Madison Building East, 600 Dulany
`Street, Alexandria, Virginia.
`
`
`
`2
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`
`P R O C E E D I N G S
`- - - - -
`
`THE USHER: All rise.
`JUDGE JEFFERSON: You can be seated. I feel like a fresh reserve
`brought in today. You guys have been going all day. Give me a second to get set
`up and we'll get started. Thank you for sticking with me. Good afternoon. We're
`here for oral argument in IPR2017-00859, the challenged patent is U.S. Patent No.
`9,047,586. Petitioner is FedEx, Patent Owner is Intellectual Ventures II, LLC. I'm
`Administrative Judge Jefferson and I'll be sitting with you for the rest of the
`afternoon. Judge McKone is in Detroit, and Judge Hudalla here. At this time,
`we'll have counsel introduce yourselves for the record.
`MR. SCHAFFNER: Good afternoon, and may it please the Board. I am Joe
`Schaffner on behalf of Petitioner FedEx Corporation. With me at counsel table is
`Aliza Carrano also for the Petitioner, and present for the hearing today is Chris
`Cherry, Chief IP counsel of Petitioner FedEx Corporation as well.
`JUDGE JEFFERSON: Thank you. And Patent Owner.
`MR. KELLMAN: Good afternoon, Your Honors. My name is Alan
`Kellman for Intellectual Ventures. With me at counsel table is Kevin McNish. We
`also have representatives from Intellectual Ventures here as well.
`JUDGE JEFFERSON: Thank you. As you know, the Supreme Court's SAS
`ruling came down. Obviously I think there will be some discussion of that in the
`coming weeks. In this instant proceeding the parties have been allocated 30
`minutes per side and Petitioner bears the burden and may reserve time for rebuttal,
`and Patent Owner can respond using the full 30 minutes of the time, and you can
`get started when you're ready.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`3
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`
`MR. SCHAFFNER: Thank you, Your Honor. I'd like to reserve ten minutes
`of my time for rebuttal, if you don't mind.
`JUDGE JEFFERSON: Okay.
`MR. SCHAFFNER: I'd like to start at slide 40. Looking at the sole
`independent claim in this case is relatively simple. It recites creating an electronic
`document having a plurality of tagged bar codes and then sending that document so
`that the bar codes can be decoded. Here the foundational standards of the
`American National Standards Institute discloses creating and decoding labeled
`documents with a plurality of tagged bar codes and a U.S. patent filed nine years
`before the challenged patent discloses representing bar codes in electronic
`documents. As we will discuss today, these straightforward teachings would
`suggest one of ordinary skill in the art to make electronic documents with a
`plurality of tagged bar codes and therefore the Board should find the instituted
`claims unpatentable.
`I'm turning now to slide 2. As the Board knows the Board has instituted a
`review of claims 7, 8, 12 and 13 of the 586 patent over the combination of the
`ANSI American National Standards and reference and the U.S. patent Ett. In this
`case, as with the sole independent claim, claim 7, the Patent Owner challenges
`only whether ANSI and Ett teach creating and sending an electronic document.
`The Patent Owner has not chosen to challenge any of the other limitations of claim
`7 specifically regarding the data tags, data items and identification features and so
`we can focus our talk today at least on those elements of claim 7. Patent Owner
`has also not separately argued the patentability of claims 8 and 12.
`Turning now to slide 10. As we discussed claim 7 recites creating an
`electronic document having a plurality of bar codes. One of the disputes in this
`case is whether the combination of ANSI and Ett teach creating an electronic
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`4
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`document. I think the written description here provides us guidance as to what an
`electronic document is as shown here which is a representation of column 4, line
`63 through column 5, line 6 of the patent. The patent explains that an electronic
`document is a document made in software that contains electronic representations
`of bar codes. At the outset I'd like to focus on how the 586 patent describes
`electronic documents. The patent admits that inserting bar codes into electronic
`documents is a well known practice. The specification explains that one can create
`electronic documents using ubiquitous software such as Microsoft Excel and Word
`and then through the use of bar codes fonts insert bar codes into these documents.
`JUDGE JEFFERSON: Counsel, is that background where the patent admits
`that this is known technology? Is that supported in the petition?
`MR. SCHAFFNER: Yes, absolutely. We cited that, Your Honor, at least at
`pages 5 and 34 through 35 of the petition. You can also see it at least at Mark
`Reboulet's declaration at paragraph 140. The patent acknowledges that these bar
`codes fonts are commonly available from a multitude of companies and therefore
`this patent is acknowledging that it's commonly known to insert bar codes into
`electronic documents because that would be the sole reason of having a bar code.
`Turning now to slide 11. We believe the prior art tells the same story,
`creating electronic documents with bar codes is not new. On the left hand ide of
`slide 11, we see the American National Standard discloses creating a labeled
`document with a plurality of bar codes. It's undisputed that this label is made on a
`computer, it's not hand drawn, it's not made on a typewriter, it does not exist as a
`picture of a physical label so one of ordinary skill in the art would recognize that
`that's made via electronic means, and turning to the right hand side of slide 11 we
`see that the Ett patent teaches a similar process wherein code modules or software
`generate bit maps containing representations of bars and spaces forming a bar code
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`5
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`pattern. Ett discloses that this produces a graphic image of the combined bar code
`and also discloses that this bar code can exist either as a new image document or
`can be incorporated into other image documents as well. Turning now to slide --
`JUDGE MCKONE: Before we leave that slide, counsel. There is some
`dispute from Patent Owner's side, where is precisely Petitioner pointing to in ANSI
`or Ett for the electronic document? Is it a combination of the references or is it
`ANSI discloses the electronic document and Ett is simply the production or
`software representation?
`MR. SCHAFFNER: Sure. We think both references actually teach this,
`Your Honor, but specifically we are relying on Ett primarily for the teaching of
`electronic document, a bit map in particular. A bit map is a computer file, it's a
`computer image format, and so we were relying primarily on that and we were
`relying primarily on ANSI for the disclosure of the plurality of bar codes.
`I think I was going to turn to slide 14. As we discussed, claim 7 of the
`patent also recites sending the electronic document for decoding of a plurality of
`bar codes, and it's our position that certain prior art also teaches this feature . Ett
`discloses transmitting its bit map image to a printer and Patent Owner has not
`disputed that sending an electronic label of a bar code representation to a printer
`would satisfy this claim limitation. At the same time ANSI also disclosed printing
`bar code labels and decoding them with scanners and decoders to turn the bar
`codes into meaningful information and likewise Ett also discloses sending these
`documents to a printer and then using a suitable scanner and well known decoding
`algorithms to decode the bar code pattern as well.
`So I'd like to turn now to slide 11 again. I think Patent Owner makes three
`principle arguments as to why the prior art does not teach all the claim limitations
`of claim 7. I think the first two simply attack the ANSI and Ett references
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`6
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`individually where the combination is actually asserted as the ground of
`unpatentability in this case. For instance, the Patent Owner alleges that Ett does
`not disclose a plurality of bar codes and that ANSI does not disclose an electronic
`document. Again, we actually dispute both of these teachings but just point out
`that that's the inverse of what we actually -- our main citation for this document we
`had relied on Ett primarily for the teaching of the electronic document, ANSI for
`the teaching of the electronic bar code.
`So I'd like to turn to slide 27 now. The last argument that the Patent Owner
`makes is that a bit map is not an electronic document. The Petitioner respectfully
`submits that it is. Again, we're turning to the 586 patent. The 586 patent teaches
`that an electronic document is simply a document that contains electronic
`representations of bar codes and it's our position that Ett discloses that. Ett
`discloses creating a bit map that has a representation of the bars and widths and
`marks of the spaces in a bar code representation as shown here from figure 3C of
`the Ett patent. That's the representation of a bar code pattern, the same as disclosed
`in the 586 patent.
`Turning now to slide 28. To the extent that there may have ever been a
`disagreement on this point, I think that Dr. Engels' testimony on this issue put it to
`rest. As we discussed in our reply, Dr. Engels has testified both before the Board
`and the District Court proceeding that a bit map is an electronic document, at least
`when it's stored. Again, he was asked if a bit map is an electronic document. He
`said it would be if it were saved to a file. He also said that a bit map, if saved to a
`file, would be synonymous or would say it would be a file and files and electronic
`documents are synonymous, and here there's no dispute that Ett discloses saving is
`different. I think one of the best examples for this is in column 7 of Ett, line 63
`going into column 8, line 1. There Ett discloses generating and electronically
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`7
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`adding its bar codes patterns to images in electronic bit map form so as when they
`are combined to inseparably combine the information together when the resulting
`image is stored. This part of the invention was actually important to Ett that they
`actually wrote a claim on it, there's claim 6 where it recites a similar process
`merging a bar code bit map into another existing image document so as to code the
`resulting image and any later stored copies of the image together. Ett discloses this
`in another place also in column 3 where he talks about electronically incorporating
`the combined bar code images into new and existing image documents. We had
`referenced that earlier today.
`So turning now to slide 18. I think our papers explained both in the petition
`and the reply many reasons why one of ordinary skill in the art would have
`combined the ANSI and Ett references. We just list a few of them here. We're not
`going to go through all of them today. I think just one straightforward reason is
`that it's undisputed in this case that those of ordinary skill in the art would have
`looked to ANSI for relevant bar coding standards. We see that and the Patent
`Owner acknowledges that at page 50 of its Patent Owner response, and so it's
`undisputed that those of ordinary skill in the art would look to ANSI for relevant
`bar coding standards.
`Another reason to combine these references is because ANSI also discloses
`the data tagging feature. It describes many examples through Section 7.5 through
`7.13 where it describes many different types of examples of data tags and data
`identifiers, application identifiers, going through different types of data items and
`so one of ordinary skill in the art with an Ett type of system would have looked to
`ANSI for relevant information about data tags as well, and so there are many
`different reasons why one of ordinary skill in the art would have combined these
`references. Again, the ANSI compliant labels were actually printed prior to 2001
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`8
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`and so those of ordinary skill in the art would have recognized that computerized
`systems like those in Ett would be used to generate the ANSI compliant labels
`because they were in fact generated that way, and so we think that we sufficiently
`provided a good rationale to combine these documents on our papers.
`Turning now to slide 19. I think the Patent Owner devotes the bulk of its
`response to whether one of ordinary skill in the art would have combined the ANSI
`and Ett references. As we explained in our reply, we think that most of the
`distinctions that the Patent Owner comes to draw here either attempt to entail some
`sort of physical integration test that the law simply doesn't require or otherwise
`relies on limitations that are not recited in claim 7, and so we believe that we've
`adequately addressed all of those positions in our papers but we can take the time
`to address a few of them here today.
`JUDGE JEFFERSON: Well, let's address the main one. The first one is
`what do the claims require? I mean, are there exhibits either in the spec or in the
`claims to a type of bar code and is the requirement then that Ett teach printing a 2D
`image of the ones that he wanted to combine it to?
`MR. SCHAFFNER: Sure. Your Honor, I think that's actually a great
`question and I'd like to turn to slide 19 where we currently to in part answer that
`question. So one of the questions is whether ANSI is limited to 2D bar codes or
`whether Ett is limited to a 1D bar code, and I think for the purposes of this
`proceeding it's actually patentably relevant because the claim 7 simply requires
`creating an electronic document with a plurality of bar codes. There's no limitation
`placed on the type of bar code there is and actually in the specification at column 4,
`lines 35 through 38, the patent acknowledges that the bar codes contemplated by
`the 586 patent include common and standardized, and also propriety 1D and 2D
`formats including code 39, code 128 interleaved 2 of 5, or PDF 417. The Ett
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`9
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`patent in particular describes code 39, code 128 interleaved 2 of 5 symbologies.
`The ANSI standard also describes code 39 and code 128 symbologies and actually
`has two examples, Section 7.5 and 7.6 of the ANSI reference. Both of those
`symbologies are the code 39 and code 128 symbologies and also describes many
`different types of 2D symbologies in PDF 417 format.
`So I think it's pretty indisputable in this case that claim 7 does not require
`any particular type of bar code and so tapping the prior art references as teaching
`particular types of bar codes is simply a non-starter I think in Petitioner's opinion,
`but taking the argument on its face I think it's simply not tenable that ANSI is
`related only to two dimensional bar codes. As we've explained ANSI describes
`several examples of bar code labels that have one dimensional bar codes. Any
`example I think in Section 7.5 through 7.13 all include at least one linear bar code
`in them. But more than that ANSI also discloses two different types of label
`documents here solely with 1D bar codes. Again, the one on the bottom, this is
`from Section 7.5 that's encoded in code 128, and the top one is encoded in code 39
`and our expert explained that at least at paragraph 119 and 118 of his declaration.
`I think Patent Owner makes a similar argument that ANSI teaches away
`from 1D bar codes. Again, for the same reason we don't think that it does, at least
`because it describes bar code documents having solely 1D bar codes in them. It
`doesn't discredit them. It doesn't discourage using them. In fact, as the Patent
`Owner itself pointed out at page 5 of its Patent Owner response, Patent Owner cites
`to the portion of ANSI where it says that this ANSI standard is not a replacement
`for the 1D standard but is instead intended to be used with it. So this is not a
`teaching away. This is not discouraging. This is not discrediting the use of these
`symbologies at all. This is in fact saying that it's perfectly amenable to be used
`with it.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`10
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`
`JUDGE JEFFERSON: Well counsel, without paraphrasing your argument,
`look it up and tell me about that in a second.
`MR. SCHAFFNER: Sure.
`JUDGE JEFFERSON: Isn't part of the argument not really teaching away so
`much as a person of ordinary skill in the art at the time of the invention would not
`have turned to ANSI and then combined it with that because of the differences in
`the scope of say 2D or something that's designed to go toward 2D with 1D being
`the known art and Ett which it's teaching say, serial bit map representation being
`output in the form of a 1D bar code?
`MR. SCHAFFNER: Well, I think that's a good question, Your Honor. I
`think the answer is that there is no disparate teaching, is that ANSI is disclosing
`and is using both 1D and 2D symbologies and Ett describes its horizontal
`modulation scheme as a 1D symbology, and so we don't think that there would be
`any reason to be discouraged from, for example, turning to an ANSI standard that
`recites using both 1D and 2D symbologies.
`I think a similar argument to that is located here on slide 21. I think there
`was an allegation that Ett is an orthogonal 1D bar code which is I think similar to,
`Judge Jefferson, your question you just raised. Again, we point out that the claim
`is not limited to particular types of bar codes whether they're orthogonal or
`nonorthogonal, and so to some extent the distinction between nonorthogonal and
`orthogonal bar codes is a bit irrelevant.
`We also would like to point out that the Petitioner did not rely on anything
`about Ett's bar code really for the specifics of any patent claim. We relied on the
`ANSI standard for its recitation of the plurality of bar codes and so looking to the
`specifics of that bar code is also just a bit of a misnomer because we relied on
`ANSI for that teaching.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`11
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`
`But in any event turning to Ett, Ett discloses a particular type of bar code
`where it encodes data both in a horizontal and vertical direction. Ett describes its
`horizontal modulation scheme can employ any of the known 1D symbologies in
`the art shown here in figure, 8 for example, the code 39, code 128 which were both
`used in the ANSI standard interleaved 2 of 5 in the UPC bar code, interleaved 2 of
`5 again comes right from the patent, the standard Codabar. Some of these
`symbologies had existed since the 70s and Ett discloses that its, at least at column
`7, lines 20 through 28, that its bar code works with all.
`JUDGE MCKONE: Are you on slide 21 right now?
`MR. SCHAFFNER: I was on slide 21, Your Honor.
`JUDGE MCKONE: Thank you.
`MR. SCHAFFNER: And I'll go to the next slide, slide 22 now. We'd also
`just like to point out that I don't know if there's actually any meaningful dispute in
`this case, that Ett's bar code also has two dimensional features. As the Patent
`Owner acknowledged on page 9 of its Patent Owner response, a two dimensional
`bar code must be examined both vertically and horizontally to read the entire
`message. We think that that definition is an okay one because it comes right out of
`ANSI from Section 3.1. That's how ANSI defines a two dimensional bar code, and
`when sked at his deposition whether a 1D scanner would read all of that bar code
`Dr. Engels admitted that it would only read the horizontally encoded data and not
`the vertically encoded data. So in other words, one would have to read the Ett bar
`code shown here in figure 3C both horizontally and vertically to read the entire
`message. That means that Ett's bar code is a two dimensional bar code for the
`purposes of ANSI and therefore would have been even more motivated to look to
`the ANSI 2D symbology standard.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`12
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`
`I think one of the last points I wanted to discuss today was whether Ett prints
`human readables. Again, I think this is part and parcel of a lot of the other
`arguments that have been made in the Patent Owner response and just to point out
`that claim 7 does not recite printing human readables and so we feel that it's a bit --
`it doesn't really pertain to the obviousness analysis to bring that up. But, in any
`event, we also point to ANSI which plainly disclosed printing human readables and
`almost every one of the bar code examples that it gives that prints a human
`readable. We also point to figure 8 of Ett where it discloses a UPC bar code with
`human readables there and as we pointed out in our reply, printing human
`readables along with a UPC bar code had been common since at least the 1970s.
`So I'd like to turn now and finish my opening on slide 29. Patent Owner
`concludes by challenging whether the American National Standard on 2D bar
`codes was publicly available by 2001. I'd just like to remind the Board that the
`evidentiary standard here is preponderance of the evidence and so all the Petitioner
`needs to show is that it's more likely than not that an American National Standard
`was available to the public by 2001 after it published in 1996 and we respectfully
`submit that we've supplied more than enough evidence showing that ANSI was
`available and therefore meeting that standard.
`The ANSI reference is an American National Standard published from the
`pre-eminent standards organization in the United States, one that's existed for
`almost 100 years. The purpose of ANSI is to publish standards that those in the
`industry of science is used. We also submitted declarations from two individuals
`attesting to the availability of ANSI. These individuals worked at ANSI in the
`relevant time period. They in fact helped author the document in question and one
`of those individuals, Steven Halliday, is a named representative listed on the face
`of ANSI at ANSI V. These witnesses have personal knowledge about ANSI
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`13
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`publication processes generally by virtue of their time working there, as well as the
`availability of this document in particular because they helped draft it. ANSI was
`not kept confidential and it was interested to anyone who wanted it and could
`purchase a copy and, again, as has been undisputed in this case those of ordinary
`skill in the art would know to look to ANSI documents for relevant bar code
`standards.
`JUDGE MCKONE: I totally understand what you're saying but if you were
`in our shoes right now and we were to believe you that this is a printed publication,
`you have the burden of showing us that. So could you tell us what your best
`admissible evidence is on that point?
`MR. SCHAFFNER: We think the declarations of Steven Halliday and Mark
`Reboulet really put this issue to rest. Those were people who worked at ANSI.
`They have knowledge, again, of ANSI's publication procedures as a general matter
`and also this document in particular, and as we pointed out in our reply there are
`also a number of other reasons that indicate that this document was available. It
`was cited in U.S. patents, it was cited in U.S. patent applications submitted to this
`Office, and so we think that there's enough evidence in this case to show that this
`was available to the public.
`JUDGE MCKONE: You've given us a list though. Let's start with the
`declarations as that's one of the arguments made by Patent Owner is that the folks
`that gave those declarations didn't have personal knowledge of the accessibility
`angle. Could you go ahead and focus on that and tell us why you think there's
`enough there?
`MR. SCHAFFNER: Sure. I think that the questions that were posed to
`them and their answers were much narrower than Patent Owner would actually cite
`them for. So, for example, they were asked questions like did you actually witness
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`14
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`the ANSI employee emblazon the logo on to the ANSI document and they
`answered no. But that's not the relevant test for whether they can attest to what
`that logo means. They know what that logo means by virtue of the fact of them
`working at ANSI and they can attest to the fact that it is in fact emblazoned on the
`cover page of that. So they know what logo means by virtue of the fact that they
`worked there and they know that what it means is that the standard was approved,
`and so the fact that they didn't watch someone put that logo on to the document
`does not in any way delete from the fact or diminish the fact that they can testify
`what that logo means, why it's there, and why that's a public standard.
`JUDGE MCKONE: I guess the tension there for us is, you know, if you're
`basically going at it like this is the ANSI business practice versus I was part of
`ANSI and I actually was part of the process of the disseminating this to the
`relevant public. I mean could you address that tension there?
`MR. SCHAFFNER: Well I actually don't think there's any tension, Your
`Honor. I actually think that they're both harmonious because both of them are true.
`So, for example, Mark Reboulet worked at ANSI I think since 1993 and was aware
`of the general practices and so he could testify as to the scope of the way that
`ANSI publishes documents generally. But more than that, he's actually personally
`knowledgeable about that document because he helped work on it and actually get
`it to submission before ANSI published it.
`Same thing with Steve Halliday. Steve Halliday declared in his declaration
`that he was quite familiar with the ANSI publication procedures and he, again, is
`also a named representative on that particular document, and as we explained I
`think in our --
`JUDGE MCKONE: Okay. Let me stop you there counsel. I mean, you
`know, we usually have these types of issues there's been a declaration from a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`15
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`librarian saying hey, this got to proceed on such and such a date, it's been shelved,
`whatever. You're kind of the other edge of the equation there saying hey, we sent
`this thing out or we at least had it printed or something. Could you address -- I
`mean is that enough for us to find public accessibility?
`MR. SCHAFFNER: Well I think the standard for public accessibility is just
`whether those of ordinary skill in the art interested in the document can find it and,
`again, there is no dispute in this case that those of ordinary skill in the art would
`look to ANSI for publication standards.
`In fact -- I'm on slide 30 -- on page 15 of the Patent Owner response they say
`that a person of ordinary skill in the art who wanted to learn about information
`about how to encode 2D bar codes would look to ANSI, that's the ANSI 2D
`standard and so one cannot look to a standard that isn't available and that doesn't
`exist, and so I think for here we're not just saying that it was printed. I think there's
`no dispute that this is an American National Standard. I think there is no dispute.
`Our declarants testified and there's no countervailing evidence that anyone would
`have trouble finding this document. People know to look to ANSI for bar coding
`standards.
`JUDGE JEFFERSON: Before you move on and we're into what you wanted
`to use for reserved time, could you address the supporting evidence you refer to. I
`believe there were patents, maybe a catalogue that Patent Owner is challenging in
`Motions to Exclude. What's your best argument about why those should be both
`admissible and relevant?
`MR. SCHAFFNER: For which documents, Your Honor?
`JUDGE JEFFERSON: Let's start with patents.
`MR. SCHAFFNER: Okay. The U.S. patents?
`JUDGE JEFFERSON: Yes.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`16
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`
`MR. SCHAFFNER: We think the U.S. patents are admissible for a number
`of reasons. First of all we think that they're per se admissible for a number of
`reasons at least under 42.61(b). We also think that there is, again, motions to
`exclude are about admissibility of evidence and so them even alleging that this has
`something to do with a new argument, even if it's true, again, as we've pointed to in
`our reply or actually in the Opposition to Motion to Exclude, motions to exclude
`are not a vehicle for alleging that an argument is new and so it's from (phonetic)
`admissibility of evidence, and so if they don't raise an evidentiary objection to the
`evidence, then there's no reason to exclude it.
`JUDGE MCKONE: Didn't you miss the deadline though for supplemental
`evidence?
`MR. SCHAFFNER: Not for the second round, Your Honor, no I believe so.
`JUDGE MCKONE: But for certain other documents, that's what their
`allegations was?
`MR. SCHAFFNER: Well, we also used some of the documents also in our
`reply for substantive reasons and those were responsive to some of the arguments
`that the Patent Owner made in its Patent Owner response. So, for example, as we
`said in our petition, we said that those of ordinary skill in the art could and did
`receive ANSI and they came back in the Patent Owner response and said you don't
`have any evidence of that, and so in our reply we found a few U.S. patents and
`patent applications, and other evidence for example, from the Library of Congress,
`showing that this document was in fact disseminated because people discussed it in
`U.S. patents and the records from the Library of Congress showed that it was in
`fact published in 1996 from the American National Standards.
`JUDGE MCKONE: I think I understand your position. Thank you.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`17
`
`

`

`Case IPR2017-00859
`Patent 9,047,586 B2
`
`
`JUDGE JEFFERSON: The rest of your time will be reserved. Counsel, you
`may begin.
`MR. KELLMAN: Good afternoon, Your Honors.
`JUDGE JEFFERSON: Good afternoon.
`MR. KELLMAN: Alan Kellman for Intellectual Ventures. May it please
`the Board. I'd like to start where Judge Jefferson started with the last argument in
`the beginning of the argument which is what pieces of ANSI and