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 IPR2015-00630
`Patent No. 6,205,411 B1
`_______________________
`
`
`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-3632175
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`
`MAKO SURGICAL CORP.,
`Petitioner
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC.,
`Patent Owner
`
`______________________
`
`Case IPR2015-00630
`Patent No. 6,205,411 B1
`_______________________
`
`
`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-3632175
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PATENT OWNER’S MOTION IS IMPROPER ............................................ 1
`
`III. THERE IS NO BASIS FOR EXCLUDING THE EVIDENCE ..................... 2
`
`A.
`
`B.
`
`C.
`
`The Testimony Was Within the Scope of Cross-Examination. ............ 2
`
`The Testimony Added No New Arguments. ........................................ 4
`
`Patent Owner Had the Opportunity to Respond to the Evidence And
`Failed to Do So. ..................................................................................... 5
`
`IV. CONCLUSION ................................................................................................ 6
`
`
`
`sf-3632175
`
`ii
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`
`CASES
`
`Table of Authorities
`
`Page(s)
`
`Baxter Healthcare Corp. v. Millennium Biologix, LLC,
`IPR2013-00582, Paper No. 32 (Oct. 13, 2014),.....................................................................5, 6
`
`OTHER AUTHORITIES
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012)......................................................................................1, 2
`
`sf-3632175
`
`iii
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`PETITIONER’S EXHIBIT LIST
`
`
`Exhibit Description
`
`Exhibit #
`
`U.S. Patent No. 6,205,411 (“the ’411 patent”)
`
`Prosecution History of U.S. Patent No. 6,205,411
`
`Prosecution History of U.S. Patent No. 5,880,976
`
`Declaration of Robert D. Howe
`
`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 (“DiGioia”)
`
`Anthony M. DiGioia III et al., “An Integrated Approach to
`Medical Robotics and Computer Assisted Surgery in
`Orthopaedics,” Proc. 1st Int’l Symposium on Medical Robotics
`and Computer Assisted Surgery, pp. 106-111, 1995 (“DiGioia II”)
`
`E.Y.S. Chao et al., “Simulation and Animation of Musculoskeletal
`Joint System,” Transactactions of the ASME, Vol. 115, pp. 562-
`568, Nov. 1993 (“Chao”)
`
`R.V. O’Toole III et al., “Towards More Capable and Less Invasive
`Robotic Surgery in Orthopaedics,” Computer Vision, Virtual
`Reality and Robotics in Medicine Lecture Notes in Computer
`Science, Vol. 905, pp. 123-130, 1995 (“O’Toole”)
`
`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”)
`
`Deposition Transcript of Dr. Cleary
`
`Deposition Transcript of Dr. Jaramaz – Filed Under Seal
`
`Deposition Transcript of Dr. Jaramaz – Redacted
`
`sf-3632175
`
`iv
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`Exhibit Description
`
`Exhibit #
`
`Declaration of Eric R. Kischell
`
`Intentionally left blank
`
`Intentionally left blank
`
`U.S. Patent No. 5,880,976 (“the ’976 patent”)
`
`Intentionally left blank
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`Web page from Carnegie Mellon University for Branislav Jaramaz
`
`1018
`
`A.M. DiGioia et al., “HipNav: Pre-operative Planning and Intra-
`Operative Navigational Guidance for Acetabular Implant
`Placement in Total Hip Replacement Surgery,” Proc. of the CAOS
`Symposium, Nov. 1995
`
`CAOS Symposium Final Program, 18 November 30 - December 2,
`1995
`
`D.A. Simon et al., “Development and Validation of a Navigational
`Guidance System for Acetabular Implant Placement”
`
`1019
`
`1020
`
`1021
`
`*Petitioner’s Exhibits 1001 – 1021 were previously filed and are simply listed
`based on 37 C.F.R. § 42.63.
`
`sf-3632175
`
`v
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s motion seeks to exclude redirect testimony of Petitioner’s
`
`Expert, Dr. Robert Howe, from his October 21, 2015 deposition on the alleged
`
`grounds that “the scope of Dr. Howe’s redirect testimony exceeds that of his cross-
`
`examination” and “introduce[d], for the first time, concepts that could have been
`
`included in the Petition and/or Dr. Howe’s Declaration.” (Mot. at 1.) Patent
`
`Owner has raised no legitimate basis for excluding the redirect testimony and
`
`instead attempts to improperly challenge the sufficiency of Petitioner’s evidence.
`
`The redirect testimony was presented in response to arguments raised by Patent
`
`Owner during cross-examination and elaborates upon arguments introduced in Dr.
`
`Howe’s Declaration. In any event, the redirect testimony does not unfairly
`
`prejudice Patent Owner, as Patent Owner had the opportunity to respond to this
`
`testimony and failed to do so. Patent Owner’s motion to exclude should be denied.
`
`II.
`
`PATENT OWNER’S MOTION IS IMPROPER
`
`Though fashioned as a motion to exclude, Patent Owner’s motion is an
`
`improper attempt to challenge the sufficiency of Petitioner’s evidence. (Mot. at 5.)
`
`A motion to exclude is intended to “exclude evidence believed to be inadmissible.
`
`Admissibility of evidence is generally governed by the Federal Rules of
`
`Evidence.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758
`
`(Aug. 14, 2012). “A motion to exclude . . . may not be used to challenge the
`
`sf-3632175
`
`1
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`sufficiency of the evidence to prove a particular fact.” Id. at 48767. Contrary to
`
`this directive, Patent Owner’s motion impermissibly challenges the sufficiency of
`
`Dr. Howe’s declaration. (See, e.g., Mot. at 5 (“Paragraph 38 of Dr. Howe’s
`
`Declaration provides conclusory allegations insufficient to establish that it would
`
`have been obvious to modify DiGioia’s system.”).) Patent Owner’s motion to
`
`exclude fails to cite to any basis under the Federal Rules of Evidence that would
`
`render the redirect testimony of Dr. Howe inadmissible on an evidentiary basis.
`
`Patent Owner’s motion should therefore be denied as improper.
`
`III. THERE IS NO BASIS FOR EXCLUDING THE EVIDENCE
`
`A.
`
`The Testimony Was Within the Scope of Cross-Examination.
`
`After 87 pages of cross-examination, Dr. Howe was asked six questions on
`
`redirect examination. (Ex. 2006 at 86:23-91:3.) These questions explored topics
`
`that Patent Owner raised during cross-examination. Patent Owner admits that
`
`during cross-examination, Patent Owner asked questions concerning Dr. Howe’s
`
`opinions on obviousness, including whether “DiGioia explicitly describes
`
`outputting an implant location,” to which Dr. Howe responded that it is “an
`
`obvious extension.” (Mot. at 5-6; Ex. 2006 at 56:4-10.) Patent Owner also asked
`
`Dr. Howe questions exploring his opinion regarding the obviousness of
`
`determining an implant location:
`
`sf-3632175
`
`2
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`• Patent Owner asked Dr. Howe if he “offer[ed] the opinion that it would have
`
`been obvious to modify the system for the software to select the implant”
`
`location. (Ex. 2006 at 56:8-14.)
`
`• Patent Owner asked Dr. Howe if he agreed with the conclusion that “it
`
`would have been obvious to utilize feedback to determine an output optimal
`
`position[.]” (Id. at 57:12-16.)
`
`• Patent Owner asked “[i]s there anything on page 2 that you recall believing
`
`supporting your position that it would have been obvious to modify DeGioia
`
`II [sic] output implant location[.]” (Id. at 59:6-9.)
`
`The redirect testimony Patent Owner seeks to exclude consists of Dr. Howe’s
`
`clarifications of his answers to these and other cross-examination questions. He
`
`provided further details regarding why it would be simple to determine optimum
`
`implant location using “optimization techniques [that] were well known throughout
`
`engineering and computer science at the time frame that we’re concerned with.”
`
`(Id. at 87:18-89:8.) He further clarified the ease of calculating an optimum
`
`location and examples of the well-known optimization techniques he mentioned
`
`during cross-examination. (See, e.g., id. at 59:6-9.) Dr. Howe’s testimony on
`
`redirect was therefore well within the scope of cross-examination. Patent Owner’s
`
`motion to exclude should therefore be denied.
`
`sf-3632175
`
`3
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`B.
`
`The Testimony Added No New Arguments.
`
`Though Patent Owner claims Dr. Howe “introduce[d] a new obviousness
`
`rationale” via redirect, the redirect testimony that Patent Owner attempts to
`
`exclude does not raise any new issues that were not included in Dr. Howe’s
`
`declaration testimony. (Mot. at 7; Ex. 1004.) Dr. Howe’s declaration states:
`
`[t]he DiGioia system discloses that feedback from the simulator can
`
`aid the surgeon in determining optimal implant placement. [] It would
`
`have been obvious to one of skill in the art to utilize the feedback as
`
`suggested by DiGioia, re-run the simulation to determine optimal
`
`positioning of the component, and have the simulator output that
`
`position. In fact, this is suggested by Figure 3 in DiGioia, which
`
`depicts bi-directional communication between the pre-operative
`
`planner and the range of motion simulator.
`
`(Ex. 1004 ¶ 38.) Dr. Howe’s declaration further states “[p]articularly in light of the
`
`suggestion that a surgeon may want to modify the calculated range of motion, it
`
`would have been obvious to one of skill in the art to determine the ideal
`
`modification by taking into account pre-determined functional needs and the range
`
`of motion needed to meet those needs.” (Id. ¶ 41; see also id. ¶ 50.)
`
`Dr. Howe’s declaration states that it would have been obvious for the system
`
`to suggest an optimum implant location. (Id. ¶ 38.) His declaration also gives a
`
`sf-3632175
`
`4
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`few examples of optimization techniques that may be used. (Id.) During redirect
`
`examination, Dr. Howe does not raise any new issues; he simply elaborates upon
`
`the obviousness opinions offered in his declaration by providing additional
`
`examples of optimization techniques well known to those of ordinary skill in the
`
`art during the relevant time periods. (Ex. 2006 at 87:18-91:2.) Patent Owner’s
`
`motion to exclude is therefore unfounded.
`
`C.
`
`Patent Owner Had the Opportunity to Respond to the Evidence
`And Failed to Do So.
`
`Patent Owner was not unfairly prejudiced by Dr. Howe’s redirect testimony.
`
`Patent Owner claims that “Petitioner prevented [Patent Owner] from introducing
`
`new evidence, such as a declaration from its expert Dr. Cleary, to rebut Dr. Howe’s
`
`allegations.” (Mot. at 7.) However, the redirect testimony occurred on October
`
`21, 2015, nearly three weeks prior to the Patent Owner’s November 10, 2015
`
`response. (Ex. 2006; Paper No. 11.) Along with its November 10, 2015 response,
`
`Patent Owner included a supporting declaration from Dr. Cleary in which he
`
`offered his opinion on obviousness. (See Ex. 2003 at 28-44.) In this declaration,
`
`Dr. Cleary could have provided a rebuttal to Dr. Howe’s deposition testimony.
`
`(See id. ¶ 12.) Given this timeline, Patent Owner cannot reasonably claim it was
`
`unfairly prejudiced by Dr. Howe’s redirect testimony.
`
`Patent Owner relies on Baxter Healthcare Corp. v. Millennium Biologix,
`
`LLC, IPR2013-00582, Paper No. 32 (Oct. 13, 2014) to support its argument that
`
`sf-3632175
`
`5
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`the testimony should be excluded for “impermissibly rais[ing] new issues to this
`
`proceeding, bearing on the rational underpinning for Petitioner’s obviousness
`
`ground.” (Mot. at 4-5.) But Baxter Healthcare did not involve a motion to
`
`exclude testimony on redirect examination. There, the patent owner objected to
`
`the introduction of new issues and experimental evidence in the petitioner’s reply,
`
`well after the patent owner had filed its Response. Baxter Healthcare Corp.,
`
`IPR2013-00582, Paper No. 32 at 1. The Board found that adding new
`
`experimental evidence at such a late stage would impede the patent owner’s ability
`
`to respond. Id. at 5-7. As discussed above, that is not true here. Petitioner did not
`
`raise new issues, and Patent Owner had sufficient time to respond to Dr. Howe’s
`
`redirect statements, but failed to do so. Patent Owner’s motion to exclude Dr.
`
`Howe’s testimony should therefore be denied.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`deny Patent Owner’s Motion to Exclude Evidence.
`
`
`
`sf-3632175
`
`6
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`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-3632175
`
`7
`
`
`
`Opposition to Motion to Exclude Evidence
`
`IPR2015-00630
`
`
`
`
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`I hereby certify that the attached 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 Patent Owner 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
`patrick.mcelhinny@klgates.com
`mark.knedeisen@klgates.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-3632175
`
`8
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
