`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`
`NUVASIVE, INC.
`Petitioner
`
`v.
`
`WARSAW ORTHOPEDIC, INC.
`Patent Owner
`
`_____________________________
`
`Case IPR2013-00208
`Patent No. 8,251,997
`_____________________________
`
`
`
`PATENT OWNER’S OBJECTIONS UNDER 37 C.F.R. § 42.64 TO
`EVIDENCE SUBMITTED IN SUPPORT OF PETITIONER’S REPLY
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`1
`
`
`
`
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner (“Warsaw”) submits the
`
`following objections to evidence cited in support of Petitioner’s (“NuVasive”)
`
`Reply in the above-captioned inter partes review. Petitioner filed its Reply on
`
`March 11, 2014. These objections are being served within five business days of
`
`receipt of NuVasive’s Reply and supporting evidence and, therefore, are timely.
`
`See 37 C.F.R. § 42.64(b)(1).
`
`
`
`Exhibit 1019. Patent Owner objects to this exhibit on the following grounds:
`
`Federal Rules of Evidence (“FRE”) 401–402 (relevance); FRE 403 (probative
`
`value outweighed by prejudice, confusing of issues, wasting time); FRE 802
`
`(hearsay); FRE 901 (authentication); 37 C.F.R. § 42.6(a)(3) (improper
`
`incorporation by reference); 37 C.F.R. § 42.22 (petition must include full statement
`
`of the reasons for the relief requested); 37 C.F.R. § 42.104 (petition must specify
`
`where each element of the claim is found in the prior art patents or printed
`
`publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug. 14, 2012) (discussing
`
`rules 42.22 and 42.104 and stating “[i]f corroborating evidence is necessary to
`
`show unpatentability of a challenged claim, the evidence must be included with the
`
`petition to meet the requirements of the rules”); 37 C.F.R. § 42.23 (reply may only
`
`respond to arguments raised in patent owner response); 77 Fed. Reg. 48612, 48620
`
`(Aug. 14, 2012) (reply evidence must be responsive and not merely new evidence
`
`that could have been presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012)
`
`
`
`2
`
`
`
`(improper submission of new evidence that could have been presented in petition);
`
`37 C.F.R. § 42.24 (reply limited to 15 pages); 37 C.F.R. § 42.53 (improper
`
`uncompelled testimony taken outside the United States); 35 U.S.C. § 311 (scope of
`
`inter partes review limited to patents and printed publications); 35 U.S.C. § 312
`
`(petition must include all evidence that supports the grounds for the challenge to
`
`each claim); Institution Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibits 1020–1026. Patent Owner objects to these exhibits on the
`
`following grounds: FRE 401–402 (relevance); FRE 403 (probative value
`
`outweighed by prejudice, confusing of issues, wasting time); FRE 802 (hearsay);
`
`FRE 901 (authentication); 37 C.F.R. § 42.22 (petition must include full statement
`
`of the reasons for the relief requested); 37 C.F.R. § 42.104 (petition must specify
`
`where each element of the claim is found in the prior art patents or printed
`
`publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug. 14, 2012) (discussing
`
`rules 42.22 and 42.104 and stating “[i]f corroborating evidence is necessary to
`
`show unpatentability of a challenged claim, the evidence must be included with the
`
`petition to meet the requirements of the rules”); 37 C.F.R. § 42.23 (reply may only
`
`respond to arguments raised in patent owner response); 77 Fed. Reg. 48612, 48620
`
`(Aug. 14, 2012) (reply evidence must be responsive and not merely new evidence
`
`that could have been presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012)
`
`(improper submission of new evidence that could have been presented in petition);
`
`
`
`3
`
`
`
`35 U.S.C. § 311 (scope of inter partes review limited to patents and printed
`
`publications); 35 U.S.C. § 312 (petition must include all evidence that supports the
`
`grounds for the challenge to each claim); Institution Decision, Paper 16 (outside
`
`scope of authorized grounds).
`
`Exhibit 1027. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401-402 (relevance).
`
`Exhibit 1028. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401-402 (relevance).
`
`Exhibit 1029. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 702 (unreliable testimony); FRE 802
`
`(hearsay); FRE 901 (authentication); 37 C.F.R. § 42.6(a)(3) (improper
`
`incorporation by reference); 37 C.F.R. § 42.22 (petition must include full statement
`
`of the reasons for the relief requested); 37 C.F.R. § 42.104 (petition must specify
`
`where each element of the claim is found in the prior art patents or printed
`
`publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug. 14, 2012) (discussing
`
`rules 42.22 and 42.104 and stating “[i]f corroborating evidence is necessary to
`
`show unpatentability of a challenged claim, the evidence must be included with the
`
`petition to meet the requirements of the rules”); 37 C.F.R. § 42.23 (reply may only
`
`respond to arguments raised in patent owner response); 77 Fed. Reg. 48612, 48620
`
`
`
`4
`
`
`
`(Aug. 14, 2012) (reply evidence must be responsive and not merely new evidence
`
`that could have been presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012)
`
`(improper submission of new evidence that could have been presented in petition);
`
`37 C.F.R. § 42.24 (reply limited to 15 pages); 35 U.S.C. § 311 (scope of inter
`
`partes review limited to patents and printed publications); 35 U.S.C. § 312
`
`(petition must include all evidence that supports the grounds for the challenge to
`
`each claim); Institution Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1030. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 702 (unreliable testimony); FRE 802
`
`(hearsay); FRE 901 (authentication); 37 C.F.R. § 42.6(a)(3) (improper
`
`incorporation by reference); 37 C.F.R. § 42.22 (petition must include full statement
`
`of the reasons for the relief requested); 37 C.F.R. § 42.104 (petition must specify
`
`where each element of the claim is found in the prior art patents or printed
`
`publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug. 14, 2012) (discussing
`
`rules 42.22 and 42.104 and stating “[i]f corroborating evidence is necessary to
`
`show unpatentability of a challenged claim, the evidence must be included with the
`
`petition to meet the requirements of the rules”); 37 C.F.R. § 42.23 (reply may only
`
`respond to arguments raised in patent owner response); 77 Fed. Reg. 48612, 48620
`
`(Aug. 14, 2012) (reply evidence must be responsive and not merely new evidence
`
`
`
`5
`
`
`
`that could have been presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012)
`
`(improper submission of new evidence that could have been presented in petition);
`
`37 C.F.R. § 42.24 (reply limited to 15 pages); 35 U.S.C. § 311 (scope of inter
`
`partes review limited to patents and printed publications); 35 U.S.C. § 312
`
`(petition must include all evidence that supports the grounds for the challenge to
`
`each claim); Institution Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1031. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 702 (unreliable testimony); FRE 802
`
`(hearsay); FRE 901 (authentication); 37 C.F.R. § 42.6(a)(3) (improper
`
`incorporation by reference); 37 C.F.R. § 42.22 (petition must include full statement
`
`of the reasons for the relief requested); 37 C.F.R. § 42.104 (petition must specify
`
`where each element of the claim is found in the prior art patents or printed
`
`publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug. 14, 2012) (discussing
`
`rules 42.22 and 42.104 and stating “[i]f corroborating evidence is necessary to
`
`show unpatentability of a challenged claim, the evidence must be included with the
`
`petition to meet the requirements of the rules”); 37 C.F.R. § 42.23 (reply may only
`
`respond to arguments raised in patent owner response); 77 Fed. Reg. 48612, 48620
`
`(Aug. 14, 2012) (reply evidence must be responsive and not merely new evidence
`
`that could have been presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012)
`
`
`
`6
`
`
`
`(improper submission of new evidence that could have been presented in petition);
`
`37 C.F.R. § 42.24 (reply limited to 15 pages); 35 U.S.C. § 311 (scope of inter
`
`partes review limited to patents and printed publications); 35 U.S.C. § 312
`
`(petition must include all evidence that supports the grounds for the challenge to
`
`each claim); Institution Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1032. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 702 (unreliable testimony); FRE 802
`
`(hearsay); FRE 901 (authentication); 37 C.F.R. § 42.6(a)(3) (improper
`
`incorporation by reference); 37 C.F.R. § 42.22 (petition must include full statement
`
`of the reasons for the relief requested); 37 C.F.R. § 42.104 (petition must specify
`
`where each element of the claim is found in the prior art patents or printed
`
`publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug. 14, 2012) (discussing
`
`rules 42.22 and 42.104 and stating “[i]f corroborating evidence is necessary to
`
`show unpatentability of a challenged claim, the evidence must be included with the
`
`petition to meet the requirements of the rules”); 37 C.F.R. § 42.23 (reply may only
`
`respond to arguments raised in patent owner response); 77 Fed. Reg. 48612, 48620
`
`(Aug. 14, 2012) (reply evidence must be responsive and not merely new evidence
`
`that could have been presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012)
`
`(improper submission of new evidence that could have been presented in petition);
`
`
`
`7
`
`
`
`37 C.F.R. § 42.24 (reply limited to 15 pages); 35 U.S.C. § 312 (petition must
`
`include all evidence that supports the grounds for the challenge to each claim).
`
`Exhibit 1033. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); 37 C.F.R. § 42.22 (petition must include full
`
`statement of the reasons for the relief requested); 37 C.F.R. § 42.104 (petition must
`
`specify where each element of the claim is found in the prior art patents or printed
`
`publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug. 14, 2012) (discussing
`
`rules 42.22 and 42.104 and stating “[i]f corroborating evidence is necessary to
`
`show unpatentability of a challenged claim, the evidence must be included with the
`
`petition to meet the requirements of the rules”); 37 C.F.R. § 42.23 (reply may only
`
`respond to arguments raised in patent owner response); 77 Fed. Reg. 48612, 48620
`
`(Aug. 14, 2012) (reply evidence must be responsive and not merely new evidence
`
`that could have been presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012)
`
`(improper submission of new evidence that could have been presented in petition);
`
`35 U.S.C. § 312 (petition must include all evidence that supports the grounds for
`
`the challenge to each claim); Institution Decision, Paper 16 (outside scope of
`
`authorized grounds).
`
`Exhibit 1034. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`
`
`8
`
`
`
`confusing of issues, wasting time); FRE 802 (hearsay); 37 C.F.R. § 42.22 (petition
`
`must include full statement of the reasons for the relief requested); 37 C.F.R. §
`
`42.104 (petition must specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug.
`
`14, 2012) (discussing rules 42.22 and 42.104 and stating “[i]f corroborating
`
`evidence is necessary to show unpatentability of a challenged claim, the evidence
`
`must be included with the petition to meet the requirements of the rules”); 37
`
`C.F.R. § 42.23 (reply may only respond to arguments raised in patent owner
`
`response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply evidence must be
`
`responsive and not merely new evidence that could have been presented earlier);
`
`77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper submission of new evidence
`
`that could have been presented in petition); 35 U.S.C. § 312 (petition must include
`
`all evidence that supports the grounds for the challenge to each claim); Institution
`
`Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1035. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 802 (hearsay); 37 C.F.R. § 42.22 (petition
`
`must include full statement of the reasons for the relief requested); 37 C.F.R. §
`
`42.104 (petition must specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug.
`
`
`
`9
`
`
`
`14, 2012) (discussing rules 42.22 and 42.104 and stating “[i]f corroborating
`
`evidence is necessary to show unpatentability of a challenged claim, the evidence
`
`must be included with the petition to meet the requirements of the rules”); 37
`
`C.F.R. § 42.23 (reply may only respond to arguments raised in patent owner
`
`response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply evidence must be
`
`responsive and not merely new evidence that could have been presented earlier);
`
`77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper submission of new evidence
`
`that could have been presented in petition); 35 U.S.C. § 312 (petition must include
`
`all evidence that supports the grounds for the challenge to each claim); Institution
`
`Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1036. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 802 (hearsay); FRE 901 (authentication);
`
`37 C.F.R. § 42.6(a)(3) (improper incorporation by reference); 37 C.F.R. § 42.22
`
`(petition must include full statement of the reasons for the relief requested); 37
`
`C.F.R. § 42.104 (petition must specify where each element of the claim is found in
`
`the prior art patents or printed publications relied upon); 77 Fed. Reg. 48680,
`
`48697 (Aug. 14, 2012) (discussing rules 42.22 and 42.104 and stating “[i]f
`
`corroborating evidence is necessary to show unpatentability of a challenged claim,
`
`the evidence must be included with the petition to meet the requirements of the
`
`
`
`10
`
`
`
`rules”); 37 C.F.R. § 42.23 (reply may only respond to arguments raised in patent
`
`owner response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply evidence must
`
`be responsive and not merely new evidence that could have been presented earlier);
`
`77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper submission of new evidence
`
`that could have been presented in petition); 37 C.F.R. § 42.24 (reply limited to 15
`
`pages); 37 C.F.R. § 42.53 (improper uncompelled testimony taken outside the
`
`United States); 35 U.S.C. § 311 (scope of inter partes review limited to patents and
`
`printed publications); 35 U.S.C. § 312 (petition must include all evidence that
`
`supports the grounds for the challenge to each claim); Institution Decision, Paper
`
`16 (outside scope of authorized grounds).
`
`Exhibit 1037. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 802 (hearsay); FRE 901 (authentication);
`
`37 C.F.R. § 42.6(a)(3) (improper incorporation by reference); 37 C.F.R. § 42.22
`
`(petition must include full statement of the reasons for the relief requested); 37
`
`C.F.R. § 42.104 (petition must specify where each element of the claim is found in
`
`the prior art patents or printed publications relied upon); 77 Fed. Reg. 48680,
`
`48697 (Aug. 14, 2012) (discussing rules 42.22 and 42.104 and stating “[i]f
`
`corroborating evidence is necessary to show unpatentability of a challenged claim,
`
`the evidence must be included with the petition to meet the requirements of the
`
`
`
`11
`
`
`
`rules”); 37 C.F.R. § 42.23 (reply may only respond to arguments raised in patent
`
`owner response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply evidence must
`
`be responsive and not merely new evidence that could have been presented earlier);
`
`77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper submission of new evidence
`
`that could have been presented in petition); 37 C.F.R. § 42.24 (reply limited to 15
`
`pages); 37 C.F.R. § 42.53 (improper uncompelled testimony taken outside the
`
`United States); 35 U.S.C. § 311 (scope of inter partes review limited to patents and
`
`printed publications); 35 U.S.C. § 312 (petition must include all evidence that
`
`supports the grounds for the challenge to each claim); Institution Decision, Paper
`
`16 (outside scope of authorized grounds).
`
`Exhibit 1038. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 802 (hearsay); 37 C.F.R. § 42.22 (petition
`
`must include full statement of the reasons for the relief requested); 37 C.F.R. §
`
`42.104 (petition must specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug.
`
`14, 2012) (discussing rules 42.22 and 42.104 and stating “[i]f corroborating
`
`evidence is necessary to show unpatentability of a challenged claim, the evidence
`
`must be included with the petition to meet the requirements of the rules”); 37
`
`C.F.R. § 42.23 (reply may only respond to arguments raised in patent owner
`
`
`
`12
`
`
`
`response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply evidence must be
`
`responsive and not merely new evidence that could have been presented earlier);
`
`77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper submission of new evidence
`
`that could have been presented in petition); 35 U.S.C. § 312 (petition must include
`
`all evidence that supports the grounds for the challenge to each claim); Institution
`
`Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1039. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 802 (hearsay); 37 C.F.R. § 42.22 (petition
`
`must include full statement of the reasons for the relief requested); 37 C.F.R. §
`
`42.104 (petition must specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug.
`
`14, 2012) (discussing rules 42.22 and 42.104 and stating “[i]f corroborating
`
`evidence is necessary to show unpatentability of a challenged claim, the evidence
`
`must be included with the petition to meet the requirements of the rules”); 37
`
`C.F.R. § 42.23 (reply may only respond to arguments raised in patent owner
`
`response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply evidence must be
`
`responsive and not merely new evidence that could have been presented earlier);
`
`77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper submission of new evidence
`
`that could have been presented in petition); 35 U.S.C. § 312 (petition must include
`
`
`
`13
`
`
`
`all evidence that supports the grounds for the challenge to each claim); Institution
`
`Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1040. Patent Owner objects to this exhibit on the following grounds:
`
`37 C.F.R. § 42.22 (petition must include full statement of the reasons for the relief
`
`requested); 37 C.F.R. § 42.104 (petition must specify where each element of the
`
`claim is found in the prior art patents or printed publications relied upon); 77 Fed.
`
`Reg. 48680, 48697 (Aug. 14, 2012) (discussing rules 42.22 and 42.104 and stating
`
`“[i]f corroborating evidence is necessary to show unpatentability of a challenged
`
`claim, the evidence must be included with the petition to meet the requirements of
`
`the rules”); 37 C.F.R. § 42.23 (reply may only respond to arguments raised in
`
`patent owner response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply
`
`evidence must be responsive and not merely new evidence that could have been
`
`presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper
`
`submission of new evidence that could have been presented in petition); 37 C.F.R.
`
`§ 42.104 (b)(5) (failure to state relevance of document); 35 U.S.C. § 312 (petition
`
`must include all evidence that supports the grounds for the challenge to each claim);
`
`Institution Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1041. Patent Owner objects to this exhibit on the following grounds:
`
`37 C.F.R. § 42.22 (petition must include full statement of the reasons for the relief
`
`requested); 37 C.F.R. § 42.104 (petition must specify where each element of the
`
`
`
`14
`
`
`
`claim is found in the prior art patents or printed publications relied upon); 77 Fed.
`
`Reg. 48680, 48697 (Aug. 14, 2012) (discussing rules 42.22 and 42.104 and stating
`
`“[i]f corroborating evidence is necessary to show unpatentability of a challenged
`
`claim, the evidence must be included with the petition to meet the requirements of
`
`the rules”); 37 C.F.R. § 42.23 (reply may only respond to arguments raised in
`
`patent owner response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply
`
`evidence must be responsive and not merely new evidence that could have been
`
`presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper
`
`submission of new evidence that could have been presented in petition); 37 C.F.R.
`
`§ 42.104 (b)(5) (failure to state relevance of document); 35 U.S.C. § 312 (petition
`
`must include all evidence that supports the grounds for the challenge to each claim);
`
`Institution Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1042. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); 37 C.F.R. § 42.22 (petition must include full
`
`statement of the reasons for the relief requested); 37 C.F.R. § 42.104 (petition must
`
`specify where each element of the claim is found in the prior art patents or printed
`
`publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug. 14, 2012) (discussing
`
`rules 42.22 and 42.104 and stating “[i]f corroborating evidence is necessary to
`
`show unpatentability of a challenged claim, the evidence must be included with the
`
`
`
`15
`
`
`
`petition to meet the requirements of the rules”); 37 C.F.R. § 42.23 (reply may only
`
`respond to arguments raised in patent owner response); 77 Fed. Reg. 48612, 48620
`
`(Aug. 14, 2012) (reply evidence must be responsive and not merely new evidence
`
`that could have been presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012)
`
`(improper submission of new evidence that could have been presented in petition);
`
`37 C.F.R. § 42.24 (reply limited to 15 pages); 35 U.S.C. § 311 (scope of inter
`
`partes review limited to patents and printed publications); 35 U.S.C. § 312
`
`(petition must include all evidence that supports the grounds for the challenge to
`
`each claim); Institution Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1043. Patent Owner objects to this exhibit on the following grounds:
`
`37 C.F.R. § 42.22 (petition must include full statement of the reasons for the relief
`
`requested); 37 C.F.R. § 42.104 (petition must specify where each element of the
`
`claim is found in the prior art patents or printed publications relied upon); 77 Fed.
`
`Reg. 48680, 48697 (Aug. 14, 2012) (discussing rules 42.22 and 42.104 and stating
`
`“[i]f corroborating evidence is necessary to show unpatentability of a challenged
`
`claim, the evidence must be included with the petition to meet the requirements of
`
`the rules”); 37 C.F.R. § 42.23 (reply may only respond to arguments raised in
`
`patent owner response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply
`
`evidence must be responsive and not merely new evidence that could have been
`
`presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper
`
`
`
`16
`
`
`
`submission of new evidence that could have been presented in petition); 37 C.F.R.
`
`§ 42.104 (b)(5) (failure to state relevance of document); 35 U.S.C. § 312 (petition
`
`must include all evidence that supports the grounds for the challenge to each claim);
`
`Institution Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1044. Patent Owner objects to this exhibit on the following grounds:
`
`37 C.F.R. § 42.22 (petition must include full statement of the reasons for the relief
`
`requested); 37 C.F.R. § 42.104 (petition must specify where each element of the
`
`claim is found in the prior art patents or printed publications relied upon); 77 Fed.
`
`Reg. 48680, 48697 (Aug. 14, 2012) (discussing rules 42.22 and 42.104 and stating
`
`“[i]f corroborating evidence is necessary to show unpatentability of a challenged
`
`claim, the evidence must be included with the petition to meet the requirements of
`
`the rules”); 37 C.F.R. § 42.23 (reply may only respond to arguments raised in
`
`patent owner response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply
`
`evidence must be responsive and not merely new evidence that could have been
`
`presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper
`
`submission of new evidence that could have been presented in petition); 37 C.F.R.
`
`§ 42.104 (b)(5) (failure to state relevance of document); 35 U.S.C. § 312 (petition
`
`must include all evidence that supports the grounds for the challenge to each claim);
`
`Institution Decision, Paper 16 (outside scope of authorized grounds).
`
`
`
`17
`
`
`
`Exhibit 1045. Patent Owner objects to this exhibit on the following grounds:
`
`37 C.F.R. § 42.22 (petition must include full statement of the reasons for the relief
`
`requested); 37 C.F.R. § 42.104 (petition must specify where each element of the
`
`claim is found in the prior art patents or printed publications relied upon); 77 Fed.
`
`Reg. 48680, 48697 (Aug. 14, 2012) (discussing rules 42.22 and 42.104 and stating
`
`“[i]f corroborating evidence is necessary to show unpatentability of a challenged
`
`claim, the evidence must be included with the petition to meet the requirements of
`
`the rules”); 37 C.F.R. § 42.23 (reply may only respond to arguments raised in
`
`patent owner response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply
`
`evidence must be responsive and not merely new evidence that could have been
`
`presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper
`
`submission of new evidence that could have been presented in petition); 37 C.F.R.
`
`§ 42.104 (b)(5) (failure to state relevance of document); 35 U.S.C. § 312 (petition
`
`must include all evidence that supports the grounds for the challenge to each claim);
`
`Institution Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1046. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 802 (hearsay); 37 C.F.R. § 42.22 (petition
`
`must include full statement of the reasons for the relief requested); 37 C.F.R. §
`
`42.104 (petition must specify where each element of the claim is found in the prior
`
`
`
`18
`
`
`
`art patents or printed publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug.
`
`14, 2012) (discussing rules 42.22 and 42.104 and stating “[i]f corroborating
`
`evidence is necessary to show unpatentability of a challenged claim, the evidence
`
`must be included with the petition to meet the requirements of the rules”); 37
`
`C.F.R. § 42.23 (reply may only respond to arguments raised in patent owner
`
`response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply evidence must be
`
`responsive and not merely new evidence that could have been presented earlier);
`
`77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper submission of new evidence
`
`that could have been presented in petition); 37 C.F.R. § 42.104 (b)(5) (failure to
`
`state relevance of document); 35 U.S.C. § 312 (petition must include all evidence
`
`that supports the grounds for the challenge to each claim); Institution Decision,
`
`Paper 16 (outside scope of authorized grounds).
`
`Exhibit 1047. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 802 (hearsay); 37 C.F.R. § 42.22 (petition
`
`must include full statement of the reasons for the relief requested); 37 C.F.R. §
`
`42.104 (petition must specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon); 77 Fed. Reg. 48680, 48697 (Aug.
`
`14, 2012) (discussing rules 42.22 and 42.104 and stating “[i]f corroborating
`
`evidence is necessary to show unpatentability of a challenged claim, the evidence
`
`
`
`19
`
`
`
`must be included with the petition to meet the requirements of the rules”); 37
`
`C.F.R. § 42.23 (reply may only respond to arguments raised in patent owner
`
`response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply evidence must be
`
`responsive and not merely new evidence that could have been presented earlier);
`
`77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper submission of new evidence
`
`that could have been presented in petition); 35 U.S.C. § 312 (petition must include
`
`all evidence that supports the grounds for the challenge to each claim); Institution
`
`Decision, Paper 16 (outside scope of authorized grounds).
`
`Exhibits 1048–1067. Patent Owner objects to these exhibits on the
`
`following grounds: FRE 401–402 (relevance); FRE 403 (probative value
`
`outweighed by prejudice, confusing of issues, wasting time); FRE 802 (hearsay);
`
`37 C.F.R. § 42.22 (petition must include full statement of the reasons for the relief
`
`requested); 37 C.F.R. § 42.104 (petition must specify where each element of the
`
`claim is found in the prior art patents or printed publications relied upon); 77 Fed.
`
`Reg. 48680, 48697 (Aug. 14, 2012) (discussing rules 42.22 and 42.104 and stating
`
`“[i]f corroborating evidence is necessary to show unpatentability of a challenged
`
`claim, the evidence must be included with the petition to meet the requirements of
`
`the rules”); 37 C.F.R. § 42.23 (reply may only respond to arguments raised in
`
`patent owner response); 77 Fed. Reg. 48612, 48620 (Aug. 14, 2012) (reply
`
`evidence must be responsive and not merely new evidence that could have been
`
`
`
`20
`
`
`
`presented earlier); 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012) (improper
`
`submission of new evidence that could have been presented in petition); 35 U.S.C.
`
`§ 312 (petition must include all evidence that supports the grounds for the
`
`challenge to each claim); Institution Decision, Paper 16 (outside scope of
`
`authorized grounds).
`
`Exhibit 1068. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 802 (hearsay); 37 C.F.R. § 42.23 (reply
`
`may only respond to arguments raised in patent owner response); 77 Fed. Reg.
`
`48612, 48620 (Aug. 14, 2012) (reply evidence must be responsive and not merely
`
`new evidence that could have been presented earlier); 77 Fed. Reg. 48756, 48767
`
`(Aug. 14, 2012) (improper submission of new evidence that could have been
`
`presented in petition); 35 U.S.C. § 312 (petition must include all evidence that
`
`supports the grounds for the challenge to each claim).
`
`Exhibit 1069. Patent Owner objects to this exhibit on the following grounds:
`
`FRE 401–402 (relevance); FRE 403 (probative value outweighed by prejudice,
`
`confusing of issues, wasting time); FRE 802 (hearsay); 37 C.F.R. § 42.23 (reply
`
`may only respond to arguments raised in patent owner respo
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