UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC.
`Petitioner
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`v.
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`NUVASIVE, INC.
`Patent Owner
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`Case IPR2013-00506
`Patent 8,361,156
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`PATENT OWNER’S
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`MOTION TO EXCLUDE EVIDENCE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC.
`Petitioner
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`v.
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`NUVASIVE, INC.
`Patent Owner
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`Case IPR2013-00506
`Patent 8,361,156
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`PATENT OWNER’S
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`MOTION TO EXCLUDE EVIDENCE
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`Pursuant to 37 C.F.R. § 42.62, and the Scheduling Order (Paper 10), NuVasive
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`Inc. (“Patent Owner”), respectfully submits this Motion to Exclude certain evidence
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`relied upon by Petitioner Medtronic, Inc. (“Petitioner”) to date, or which Petitioner
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`may attempt to rely on it in its upcoming motions or at oral argument.
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`1. ARGUMENT
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`a) Ex. 1116 in IPR2013-00506 and 508; Ex. 1014 in IPR2013-00507
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`(Declaration of Loic Josse and Appendices) Should be Excluded.
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`Exhibit 1116 in IPR2013-00506 and 508 (1014 in IPR2013-00507) should be
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`excluded under Fed. R. Evid. 901 for failure to authenticate, and Fed. R. Evid. 401-
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`403 for its prejudicial value. “To satisfy the requirement of authenticating or
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`identifying an item of evidence, the proponent must produce evidence sufficient to
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`support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901.
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`Although this requirement typically sets a low bar, when the evidence clearly is not
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`the document claimed or represented, and when the proponent refuses to produce
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`the actual document, Rule 901 requires exclusion. Siegal v. Am. Honda Motor Co.,
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`921 F.2d 15, 17 (1st Cir. 1990) (excluding evidence that had been intentionally
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`altered under FRE 901, stating that once altered, the evidence “was neither authentic,
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`i.e., what appellant represented it to be, see Fed. R. Evid. 901(a), nor relevant, i.e.,
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`probative of its condition at the time of the accident, see Fed. R. Evid. 401–402”);
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`see also Khan v. Obama, 655 F.3d 20, 30 (D.C. Cir. 2011) (finding that it is not
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`possible to assess reliability of heavily redacted documents, but exclusion was not
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`proper in that case because that court also had access to the unredacted documents).
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`Appendices A-C to Ex. 1116 (Ex. 1014 in IPR2013-00507), the Declaration
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`of Loic Josse, are heavily redacted. For example, the entirety of Appendix A
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`(reproduced below), shows that Petitioner has concealed from Patent Owner and the
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`Board every label and dimension on the drawing save a single dimension that
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`Petitioner has left unredacted to serve its own purposes. The fact that Petitioner
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`considers its dimensions to be confidential, meriting protection, undermines
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`Petitioner’s argument that proper implant dimensioning was well-known and
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`obvious. To the contrary, Petitioner’s refusal to produce unredacted versions of
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`these documents highlights that even small changes in the dimensions of implants
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`makes a significant difference in the use of the implant. Otherwise, there would be
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`no reason to redact these documents, especially if as Petitioner maintains, the
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`dimensions of implants are all known by those of skill in the art.
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`Ex. 1116, Appendix A
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`Similarly, Appendix B conceals the vast majority of the text contained therein.
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`Ex. 1116, Appendix B
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`In Appendix C, substantial information is also concealed, including hiding the
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`entirety of the “Result” section, preventing the Patent Owner from commenting on
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`and preventing the Board from understanding the actual results of this experimental,
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`confidential and non-public implant.
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`Ex. 1116, Appendix C
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`Patent Owner first requested that Petitioner produce unredacted versions of
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`these appendices as routine discovery on September 8, 2014, just three days after
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`Petitioner’s reply included them. (See Ex. 2040 at p. 1, 3). On September 9, 2014,
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`Patent Owner again requested unredacted version of these appendices to no avail.
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`Petitioner responded that the unredacted documents are not routine discovery—a
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`position that Petitioner still maintains. In an attempt to address Petitioner’s
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`concerns, Patent Owner offered to “use of the default protective order in the IPR
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`proceedings” (Ex. 2040 at p. 3), yet Petitioner still refused to produce unredacted
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`versions even under these circumstances.1 Patent Owner formally objected to
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`Petitioner’s refusal to produce unredacted version on September 12, 2014. (See Ex.
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`2039.)
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`The issue with these redacted documents arises because Mr. Josse references
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`them extensively in his declaration filed in support of Petitioner’s Reply, Ex. 1116
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`at ¶¶2-3. During cross-examination, Mr. Josse admitted that he did not add black
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`redaction boxes to the engineering drawings as they appear in Appendix A and
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`testified that the document existed without black boxes when he created them and at
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`least in 2013. Ex. 2038, 55:13-25. Appendix A is not an authentic version of the
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`1 Petitioner has repeatedly blocked Patent Owner’s efforts to use unredacted
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`drawings in these IPR proceedings. For example, as discussed in the Patent Owner
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`Response (IPR2013-00507, paper 17, p. 24-25 fn 5), Petitioner also refused to
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`produce the engineering drawings (filed as Ex. 2023 in these IPR proceedings) in
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`unredacted form.
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`engineering drawings that Mr. Josse created. Appendices B and C are similarly not
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`authentic versions of the documents that Mr. Josse discusses in his declaration.
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`The Rules require that “Unless previously served or otherwise by agreement
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`of the parties, any exhibit cited in a paper or in testimony must be served with the
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`citing paper or testimony.” 37 CFR 42.51(b)(1)(i). As this same Board explained
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`orally to these same parties2 in a related proceeding during a conference call on
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`January 31, 2014, routine discovery requires production of those documents actually
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`discussed in a declaration. See IPR2013-00208, Paper 33, Order at 4.3 Indeed,
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`Petitioner’s attempt to skirt the routine discovery rule by filing documents that redact
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`more than 90% of the information contained in the original documents is improper.4
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`2 Warsaw Orthopedic, Inc., a party in IPR2013-00208, is a patent holding company
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`owned by Petitioner Medtronic, Inc. in this proceeding. Thus, Warsaw and
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`Medtronic are effectively the same party.
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`3 In response to this telephone conference in IPR2013-00208, the offending
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`declaration Ex. 2028 was expunged and replaced on April 18, 2014 by a replacement
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`declaration that made no reference to the unserved and unfiled document.
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`4 It should be noted that Petitioner had previously produced some but not all of the
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`redacted documents in unredacted form in a related litigation under the protection of
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`Moreover, Petitioner’s refusal
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`to produce unredacted documents
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`is
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`substantially more prejudicial to Patent Owner than probative to this matter, and
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`should be excluded under Rule 403. Petitioner’s selective redaction allows it to
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`disclose only that information that may be helpful to its Petition while preventing
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`full analysis and cross-examination of those portions which may be harmful. Thus,
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`Petitioner’s inequitable attempt to use the unredacted portions as a sword while
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`simultaneously shielding that information which may be harmful with redactions is
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`impermissible and should not be allowed.
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`2. CONCLUSION
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`For at least the foregoing reasons, Patent Owner requests these exhibits be
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`excluded from the record.
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`Respectfully submitted,
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`/Stuart A. Nelson/
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`Stuart A. Nelson
`Reg. No. 63,947
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`Date: 10/6/2014
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`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`a Court ordered protective order in that other proceeding, but that Court’s protective
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`order prevents use of the documents in any other proceeding.
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`9
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.6(e)(4)(iii), the undersigned
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`certifies that on October 6, 2014, a complete and entire copy of this Patent
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`Owner’s Motion to Exclude Evidence was provided via email to the Petitioner by
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`serving the email correspondence address of record as follows:
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`Jeff E. Schwartz
`Seth A. Kramer
`Fox Rothschild LLP
`1030 15th Street, NW
`Washington, DC 20005
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`Email: jeschwartz@foxrothschild.com
`Email: skramer@foxrothschild.com
`Email: ipdocket@foxrothschild.com
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` /Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
` (858) 678-5667
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`10
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