UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`MAKO SURGICAL CORP.,
`Petitioner,
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC.,
`Patent Owner.
`_____________________
`
`
`
`IPR2015-00629
`U.S. Patent No. 6,757,582
`_____________________
`
`PATENT OWNER’S REPLY TO 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
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`MAKO SURGICAL CORP.,
`Petitioner,
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC.,
`Patent Owner.
`_____________________
`
`
`
`IPR2015-00629
`U.S. Patent No. 6,757,582
`_____________________
`
`PATENT OWNER’S REPLY TO 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
`
`
`
`
`
`I.
`
`Introduction.
`
`Patent Owner Blue Belt Technologies, Inc. moved to exclude Dr. Cleary’s
`
`answers to the following Petitioner’s questions:
`
`• “In general in robot-assisted surgery, redundant systems for safety are
`
`important, aren’t they?” (Cleary Dep.1 at 65:22–24) (“Question 1”); and
`
`• “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)
`
`(“Question 2”).
`
`Motion to Exclude, Paper No. 17 (Mar. 9, 2016) (“Mot.”). In its Opposition, Paper
`
`No. 18 (Mar. 16, 2016) (“Opp.”), Petitioner All-of-Innovation GbmH asserts that
`
`Questions 1 and 2 are clear because Dr. Cleary did ask for clarification and that Dr.
`
`Cleary’s Declaration opened the door for the hypothetical concepts of Questions 1
`
`and 2. As described below, Petitioner is incorrect because a witness is not required
`
`to ask for clarification and the relevant portions of Dr. Cleary’s Declaration are
`
`limited to teachings of the alleged anticipatory reference, Taylor.2
`
`
` 1 Transcript of Deposition of Dr. Kevin Cleary, Ex. 1016.
`
` 2 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, Ex. 1008.
`
`
`
`
`
`
`
`II. Dr. Cleary’s Answers to Questions 1 and 2 Should Be Excluded under
`Fed. R. Evid. 403.
`
`
`
`Petitioner argues that Dr. Cleary “did not find [Questions 1 and 2] confusing
`
`or ambiguous” because he did not “ask Petitioner to clarify or rephrase the
`
`questions.” Opp. at 3. But Petitioner provides no basis for asserting that a
`
`question is only unclear if the witness explicitly notes the question’s shortcomings.
`
`Patent Owner objected to the form of Questions 1 and 2 and timely moved to
`
`exclude; nothing more is required to preserve the objection. 37 C.F.R.
`
`§ 42.53(f)(8).
`
`
`
`As Patent Owner explained and Petitioner does not dispute, Question 1
`
`provides no context in terms of timeframe, type of surgery, the type of system, and
`
`“importance.” See Mot. at 2. Yet, Petitioner conclusorily argues that “[t]here is
`
`nothing ambiguous in [Question 1] or the response.” Opp. at 3. Petitioner is
`
`incorrect because the answer to Question 1 may change depending on the context,
`
`rendering Question 1 ambiguous.
`
`
`
` Question 2 is unclear because it provides no context for “tracker”— e.g., for
`
`how, if at all, this term relates to the “tracker,” the “at least one first marker,” and
`
`the “at least one second marker” recited in independent claim 1 of U.S. Patent No.
`
`6,757,582, Ex. 1001. Mot. at 3. Dr. Cleary’s answer illustrated confusion as it
`
`referenced a “marker” instead of a “tracker.” See id. Petitioner responds that Dr.
`
`Cleary’s answer to Question 2 is “consistent with his use of ‘tracker’ as
`
`
`
`2
`
`
`
`
`
`demonstrated by his other responses during the deposition.” Opp. at 3 (citing
`
`Cleary Dep. at 28:7–15). But Petitioner does not explain how Dr. Cleary “use[d]”
`
`“tracker” in the cited portion of his deposition or how such a use would indicate
`
`that Question 2 was clear. Nor does the cited portion of Dr. Cleary’s deposition
`
`shed light on Dr. Cleary’s alleged “use of ‘tracker,’” as neither Petitioner nor Dr.
`
`Cleary use the term “tracker.” Cleary Dep. at 28:7–15.
`
`
`
`Accordingly, Dr. Cleary’s answers to Questions 1 and 2 should be excluded
`
`under Fed. R. Evid. 403 as confusing and ambiguous because Questions 1 and 2
`
`lack critical context.
`
`III. Dr. Cleary’s Answers to Questions 1 and 2 Should Be Excluded as Outside
`the Scope under 37 C.F.R. § 42.53(d)(5)(ii).
`
`Petitioner argues that Questions 1 and 2 are within the scope of ¶¶ 40, 45,
`
`111, and 112 of Dr. Cleary’s Declaration, Ex. 2004. But these paragraphs are
`
`limited to Taylor’s system, which utilizes bone fixation. The cited portion of ¶ 40
`
`quotes page 273 of Taylor, describing specific alternative tracking systems. The
`
`cited portion of ¶ 45 specifically references systems, like Taylor’s, that utilize bone
`
`fixation. And the cited portions of ¶¶ 111–112 describe the implications of
`
`Taylor’s bone fixation system to a person of ordinary skill.
`
`Questions 1 and 2, on the other hand, relate to hypothetical concepts
`
`detached from Taylor’s system and bearing minimal relevance to the topics that
`
`Dr. Cleary was asked to opine on. For example, Question 1 is not related to
`
`
`
`3
`
`
`
`
`
`Taylor’s system, or even to systems that rely on bone fixation, but rather refers to
`
`“robot-assisted surgery” “[i]n general.” Question 2 similarly departs from Taylor’s
`
`explicit disclosure as it asks Dr. Cleary to comment on whether a “tracker” could
`
`be one way to detect motion of the bone. Accordingly, Dr. Cleary’s answers to
`
`Questions 1 and 2 should be excluded as outside the scope.
`
`IV. Patent Owner’s Motion to Exclude Is Proper.
`Petitioner asserts that Patent Owner’s Motion to Exclude is “essentially an
`
`improper sur-reply in which Patent Owner attempts to characterize its own expert’s
`
`testimony and reply to Petitioner’s arguments.” Opp. at 1, 2. Petitioner argues that
`
`the following statement is “not an evidentiary argument,” but rather an allegedly
`
`improper “interpretation of testimony”: “Dr. Cleary’s answer provides no
`
`indication whether he meant for his answer to be applied in that context.” Opp. at
`
`2 (citing Mot. at 2–3) (emphasis added). But Patent Owner’s evidentiary argument
`
`is rooted in a lack of context, and Patent Owner cited the specific context in which
`
`Petitioner cited Dr. Cleary’s answer to illustrate the ambiguity in Question 1.
`
`Indeed, evidentiary issues often turn on the purpose for which the evidence is
`
`proffered, particularly for objections under Rule 403, which calls for a balancing of
`
`the probative and harmful value of the proffered evidence. See 28 Charles Alan
`
`Wright et al., Fed. Prac. & Proc. Evid. § 5214 (2nd ed. 2012) (describing
`
`
`
`4
`
`
`
`
`
`“Introduction to the Balancing Test”); id., § 5063.1 (describing “Limited
`
`Admissibility—Purposes”).
`
`V. Conclusion.
`
`For the foregoing reasons and those set forth in the Motion to Exclude,
`
`Patent Owner respectfully requests that Dr. Cleary’s answers to Questions 1 and 2
`
`be excluded.
`
`
`
`Dated: March 23, 2016
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`By: /Brian M. Buroker/
`
`
`
`Brian M. Buroker (Reg. No. 39,125) (lead)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5306
`Telephone: 202.955.8500
`Facsimile: 202.467.0539
`bburoker@gibsondunn.com
`Attorney for Patent Owner Blue Belt
`Technologies, Inc.
`
`
`
`5
`
`
`
`
`
`
`
`CERFITICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy
`
`of this Reply to Opposition to Motion to Exclude Evidence by electronic mail on
`
`March 23, 2016 on the counsel of record of Petitioner:
`
`Matthew I. Kreeger, mkreeger@mofo.com
`
`Walter Wu, wwu@mofo.com
`
`
`
`Dated: March 23, 2016
`
`
`
`By: /Brian M. Buroker/
`
`
`
`Brian M. Buroker (Reg. No. 39,125)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5306
`Telephone: 202.955.8500
`Facsimile: 202.467.0539
`bburoker@gibsondunn.com
`
`
`1
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