UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`
`MAKO SURGICAL CORP.,
`Petitioner
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC.,
`Patent Owner
`
`______________________
`
`Case IPR2015-00629
`Patent No. 6,757,582 B2
`_______________________
`
`
`PETITIONER MAKO SURGICAL CORP.’S
`OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`sf-3632177
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`
`MAKO SURGICAL CORP.,
`Petitioner
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC.,
`Patent Owner
`
`______________________
`
`Case IPR2015-00629
`Patent No. 6,757,582 B2
`_______________________
`
`
`PETITIONER MAKO SURGICAL CORP.’S
`OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`sf-3632177
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00629
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PATENT OWNER’S MOTION IS IMPROPER ............................................ 2
`
`III. THERE IS NO BASIS FOR EXCLUDING THE EVIDENCE ..................... 3
`
`A.
`
`B.
`
`The Testimony Should Not Be Excluded Under Rule 403. .................. 3
`
`The Testimony Was Within the Scope of Issues Raised By the
`Declaration. ........................................................................................... 4
`
`IV. CONCLUSION ................................................................................................ 6
`
`
`
`i
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`sf-3632177
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`Opposition to Motion to Exclude Evidence
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`IPR2015-00629
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`CASES
`
`Table of Authorities
`
`Page(s)
`
`Apple Inc. v. Achates Reference Publishing, Inc.,
`IPR2013-00080, Paper No. 90 (June 2, 2014) ...........................................................................4
`
`Canon Inc. v. Intellectual Ventures II LLC,
`IPR2014-00631, Paper No. 50 (Aug. 19, 2015) ........................................................................6
`
`Corning Inc. v. DSM IP Assets B.V.,
`IPR2013-00043, Paper No. 31 (July 8, 2013) ............................................................................6
`
`Digital Ally, Inc. v. Utility Assocs., Inc.,
`IPR2014-00725, Paper No. 27 (July 27, 2015) ..........................................................................4
`
`Seaboard Lumber Co. v. United States,
`308 F.3d 1283 (Fed. Cir. 2002)..................................................................................................4
`
`Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem,
`IPR2013-00218, Paper No. 53 (Sept. 22, 2014) ........................................................................5
`
`Microsoft Corp. v. Proxyconn, Inc.
`IPR2012-00026, Paper No. 66 (Nov. 1, 2013) ..........................................................................5
`
`Motorola Mobility LLC v. Intellectual Ventures I LLC,
`IPR2014-00501, Paper No. 48 (Sept. 9, 2015) ..........................................................................2
`
`OTHER AUTHORITIES
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012)......................................................................................1, 2
`
`sf-3632177
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`ii
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`
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`Opposition to Motion to Exclude Evidence
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`IPR2015-00629
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`PETITIONER’S EXHIBIT LIST
`
`Exhibit Description
`
`U.S. Patent No. 6,757,582 (“the ’582 patent”)
`
`Exhibit #
`
`1001
`
`Defendant Blue Belt Technologies, Inc.’s Second Amended
`Answer to Plaintiffs’ Mako Surgical Corp. & All-Of-Innovation
`GmbH Complaint; Affirmative Defenses and Counterclaims,
`filed September 2, 2014, Case No. 0:14-cv-61263-DPG (S.D.
`Fla.)
`Assignment Search for U.S. Patent No. 6,757,582 at
`http://assignment.uspto.gov
`
`Declaration of Robert D. Howe
`
`Prosecution History of U.S. Patent No. 6,757,582
`
`Prosecution History of U.S. Application No. 10/876,204
`
`Defendant Blue Belt Technologies, Inc.’s Preliminary Disclosure
`of Asserted Claims and Infringement Contentions for U.S. Patent
`No. 6,757,582
`Russell H. Taylor et al., An Image-Directed Robotic System for
`Precise Orthopaedic Surgery, IEEE TRANSACTIONS ON ROBOTICS
`AND AUTOMATION, Vol. 10, No. 3, June 1994 (“Taylor”)
`
`U.S. Patent No. 5,408,409 (“Glassman”)
`
`U.S. Patent No. 6,205,411 (“DiGioia”)
`
`Scott L. Delp et al., An Interactive Graphics-Based Model of the
`Lower Extremity to Study Orthopaedic Surgical Procedures, Vol.
`37, No. 8, Aug. 1990 (“Delp”)
`Catherina Burghart et al., Robot Controlled Osteotomy in
`Craniofacial Surgery, 1st International Workshop on Haptic
`Devices in Medical Applications Proceedings, Paris – France,
`pp. 12-22, June 23, 1999 (“Burghart”)
`Jocelyn Troccaz et al., The Use of Localizers, Robots and
`Synergistic Devices in CAS, LECTURE NOTES IN COMPUTER
`SCIENCE (Troccaz et al. eds., 1997) (“Troccaz”)
`
`sf-3632177
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`iii
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00629
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`Exhibit Description
`A.M. DiGioia et al., “HipNav: Pre-operative Planning and
`Intraoperative Navigational Guidance for Acetabular Implant
`Placement in Total Hip Replacement Surgery,” 2nd CAOS
`Symposium, 1996 (“HipNav”)
`Kevin Cleary et al., “Image-Guided Interventions: Technology
`Review and Clinical Applications,” Annual Reviews of
`Biomedical Engineering (2010)
`
`Transcript of Deposition of Dr. Kevin Cleary (January 12, 2016)
`
`THE AMERICAN HERITAGE COLLEGE DICTIONARY (3rd ed. 2000)
`
`RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY (1997)
`
`THE NEW OXFORD AMERICAN DICTIONARY (2001)
`
`Exhibit #
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`*Petitioner’s Exhibits 1001 – 1019 were previously filed and are simply listed
`based on 37 C.F.R. § 42.63.
`
`sf-3632177
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`iv
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`
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`Opposition to Motion to Exclude Evidence
`
`IPR2015-00629
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`I.
`
`INTRODUCTION
`
`Petitioners submit this Opposition to Patent Owner’s Motion to Exclude.
`
`Patent Owner’s expert, Dr. Cleary, provided answers that are devastating to Patent
`
`Owner’s argument that “tracking” may not occur where bone fixation is present.
`
`Patent Owner attempts to explain away these answers through a motion to exclude.
`
`However, a motion to exclude is not a sur-reply, and the alleged bases for
`
`excluding the testimony – that the questions and answers were “confusing,”
`
`“ambiguous,” and exceeded the proper scope of cross-examination – are baseless.
`
`(Mot. at 1.)
`
`The two questions and answers Patent Owner’s Motion to Exclude seeks to
`
`exclude are:
`
`Question 1: “In general in robot-assisted surgery, redundant systems for
`
`safety are important, aren’t they?” (Ex. 1016 at 65:22-24.)
`
`Answer 1: “Yeah, I think so. . . . You know, I – thinking off the top of my
`
`head, I think in the general idea it’s a good idea to have redundant safety checks
`
`with robot systems. Sure. I wouldn’t trust them on me without that.” (Id. at
`
`65:25-66:11.)
`
`Question 2: “And using a tracker could be one way to ensure that the bone –
`
`that you would detect any motion of the bone, wouldn’t it?” (Id. at 66:21-23.)
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`sf-3632177
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`1
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`Opposition to Motion to Exclude Evidence
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`IPR2015-00629
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`Answer 2: “Yeah, I think if you . . . If you physically screwed a marker into
`
`the bone and were tracking that to see if that marker moved, then that would be one
`
`way to determine that.” (Id. at 66:24-67:6.)
`
`Patent Owner wishes to explain away its expert’s answers because they
`
`undercut Patent Owner’s arguments that bone fixation and tracking are mutually
`
`exclusive. However, Patent Owner has raised no legitimate basis for excluding the
`
`testimony.
`
`II.
`
`PATENT OWNER’S MOTION IS IMPROPER
`
`Though fashioned as a motion to exclude, Patent Owner’s motion is
`
`essentially an improper sur-reply in which Patent Owner attempts to recharacterize
`
`its own expert’s testimony and reply to Petitioner’s arguments. See Motorola
`
`Mobility LLC v. Intellectual Ventures I LLC, IPR2014-00501, Paper No. 48 at 31
`
`(Sept. 9, 2015) (“A motion to exclude is neither a substantive sur-reply, nor a
`
`proper vehicle for arguing whether a reply or supporting evidence is of appropriate
`
`scope.”) For example, stating that “Dr. Cleary’s answer provides no indication
`
`whether he meant for his answer to be applied in that context” is not an evidentiary
`
`argument. (Mot. at 2-3.) Arguments regarding interpretation of testimony are not
`
`properly the subject of a motion to exclude. (See id.)
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`sf-3632177
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`2
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`Opposition to Motion to Exclude Evidence
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`IPR2015-00629
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`III. THERE IS NO BASIS FOR EXCLUDING THE EVIDENCE
`
`Patent Owner raises no legitimate basis for excluding the answers given by
`
`its expert during cross-examination.
`
`A. The Testimony Should Not Be Excluded Under Rule 403.
`
`Patent Owner claims that two questions Petitioner asked Dr. Cleary during
`
`cross-examination were “confusing and ambiguous” and should therefore be
`
`excluded under Fed. R. Evid. 403. (Mot. at 1.) However, the witness did not find
`
`the questions confusing or ambiguous. Dr. Cleary did not ask Petitioner to clarify
`
`or rephrase the questions. (See Ex. 1016 at 65:22-66:11, 66:21-67:6.) Dr. Cleary
`
`directly responded to the simple questions that were asked. (See id.) For example,
`
`Question 1 asked whether “redundant safety systems in robot-assisted surgery”
`
`were important, and Dr. Cleary responded that “I think in the general idea it’s a
`
`good idea have redundant safety checks with robot systems.” (Id. at 65:22-66:11.)
`
`There is nothing ambiguous in this question or the response. Similarly, the use of
`
`the word “marker” in Dr. Cleary’s response to Question 2 does not suggest
`
`confusion. It is rather consistent with his use of “tracker” as demonstrated by his
`
`other responses during the deposition. (See, e.g., id. at 28:7-15.)
`
`Any “confus[ion]” or “ambigu[ity]” in Petitioner’s questions or Dr. Cleary’s
`
`answers could have been resolved by Patent Owner during redirect examination.
`
`Patent Owner performed a redirect examination of Dr. Cleary and could have
`
`sf-3632177
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`3
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`Opposition to Motion to Exclude Evidence
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`IPR2015-00629
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`resolved any lingering ambiguities. (See Ex. 1016 at 70-72.) Patent Owner chose
`
`not to address these answers. (Id.) As Patent Owner had the opportunity to clarify
`
`Dr. Cleary’s responses and chose not to, Patent Owner will not be unfairly
`
`prejudiced by the Board’s consideration of this evidence. See Apple Inc. v.
`
`Achates Reference Publishing, Inc., IPR2013-00080, Paper No. 90 at 50 (June 2,
`
`2014) (stating that moving party “could have dealt with testimony it believed
`
`inadmissible with redirect examination of the witness, but did not do so” and
`
`refusing to exclude testimony.)
`
`Finally, Rule 403 “concerns are of lesser import in a bench trial” because the
`
`Board is well equipped to review the transcript for any potential confusion, balance
`
`the evidence, and give the answers the weight that they deserve, rendering
`
`exclusion unnecessary. See Seaboard Lumber Co. v. United States, 308 F.3d 1283,
`
`1302 (Fed. Cir. 2002); Digital Ally, Inc. v. Utility Assocs., Inc., IPR2014-00725,
`
`Paper No. 27 at 31 (July 27, 2015) (refusing to exclude cross-examination
`
`testimony where the Board can give the cited testimony “the appropriate weight
`
`when placed in the context of Petitioner’s questions”).
`
`B.
`
`The Testimony Was Within the Scope of Issues Raised By the
`Declaration.
`
`Patent Owner argues that Question 1 is outside the scope as “Dr. Cleary’s
`
`Declaration makes no mention of robot-assisted surgery ‘in general’ or ‘redundant
`
`systems for safety.’” (Mot. at 2.) Patent Owner argues that Question 2 is outside
`
`sf-3632177
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`4
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`Opposition to Motion to Exclude Evidence
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`IPR2015-00629
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`the scope because Dr. Cleary’s declaration does not “describe whether a ‘tracker’
`
`could be used in Taylor’s system.” (Id. at 3.) These are specious arguments. Dr.
`
`Cleary’s direct testimony states: “A person of ordinary skill in the art would have
`
`recognized that tracking would be unnecessary in a system using bone fixation to
`
`secure the workpiece.” (Ex. 2004 ¶ 45.) Dr. Cleary also argued that the prior art
`
`“teaches away from using image-based tracking of the workpiece” in a system
`
`using bone fixation “because fixation provides the mechanism for maintaining the
`
`spatial relationship between the robot and the bone,” and any “extra safety” gained
`
`by the redundant safety measures “is not worth the tradeoffs in the operating
`
`room.” (Id. ¶¶ 40, 111-112.) The cross-examination testimony is fully within the
`
`scope of this direct testimony. As Dr. Cleary raised these issues in his declaration,
`
`Petitioner was entitled to fully explore them during cross-examination. Sony Corp.
`
`v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00218,
`
`Paper No. 53 at 46 (Sept. 22, 2014) (denying motion to exclude responses to
`
`questions challenging positions taken in declaration); see also Microsoft Corp. v.
`
`Proxyconn, Inc., IPR2012-00026, Paper No. 66 at 3 (Nov. 1, 2013) (refusing to
`
`exclude testimony and holding that an opinion need not be expressly stated in an
`
`expert’s declaration to be within the scope of proper cross-examination if an expert
`
`offers opinions on necessarily related topics).
`
`sf-3632177
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`5
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`Opposition to Motion to Exclude Evidence
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`IPR2015-00629
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`Though cross-examination must generally stay within the scope of the direct
`
`testimony, “[t]he Board generally allows some leeway as to questions seemingly
`
`out of the scope of the direct testimony on cross examination.” Corning Inc. v.
`
`DSM IP Assets B.V., IPR2013-00043, Paper No. 31 at 2 (July 8, 2013). Only
`
`questions “that are clearly outside the scope” of the declaration are not permitted.
`
`Id. (emphasis added.) Under either measure, the questions and answers at issue
`
`were well within the scope of matters put at issue in Dr. Cleary’s declaration. See
`
`Canon Inc. v. Intellectual Ventures II LLC, IPR2014-00631, Paper No. 50 at 45-47
`
`(Aug. 19, 2015) (refusing to exclude cross-examination testimony because the
`
`expert’s direct testimony put the subject at issue.)
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`deny Patent Owner’s Motion to Exclude Evidence.
`
`Dated: March 16, 2016
`
`
`Respectfully submitted,
`
`By: /s/ Matthew I. Kreeger
`Matthew I. Kreeger
`Registration No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`Tel: (415) 268-6467
`Fax: (415) 268-7522
`Attorney for Petitioner Mako Surgical
`Corp.
`
`
`
`sf-3632177
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`6
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`
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`Opposition to Motion to Exclude Evidence
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`IPR2015-00629
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`
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`
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`I hereby certify that the above captioned Petitioner Mako Surgical Corp.’s
`
`Opposition to Motion to Exclude Evidence was served as of the below date via
`
`electronic mail by agreement on the Petitioner at the following correspondence
`
`address:
`
`
`
`Brian M. Buroker
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5306
`bburoker@gibsondunn.com
`srosenberg@gibsondunn.com
`gstark@slwip.com
`
`
`
`
`Dated: March 16, 2016
`
`
`
`/s/ Matthew I. Kreeger
`Matthew I. Kreeger
`Registration No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`(415) 268-7000
`
`Attorney for Petitioner Mako Surgical
`Corp.
`
`sf-3632177
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