UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`MAKO SURGICAL CORP.,
`Petitioner,
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC. and
`CARNEGIE MELLON UNIVERSITY,
`Exclusive Licensee and Patent Owner.
`_____________________
`
`IPR2015-00630
`U.S. Patent No. 6,205,411 B1
`_____________________
`
`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. and
`CARNEGIE MELLON UNIVERSITY,
`Exclusive Licensee and Patent Owner.
`_____________________
`
`IPR2015-00630
`U.S. Patent No. 6,205,411 B1
`_____________________
`
`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
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION. .......................................................................................... 1
`
`PO PROPERLY SEEKS TO EXCLUDE DR. HOWE’S REDIRECT
`TESTIMONY UNDER 37 C.F.R. § 42.53(D)(5)(II). ..................................... 2
`
`III. DR. HOWE’S REDIRECT TESTIMONY WAS OUTSIDE THE
`SCOPE OF HIS CROSS-EXAMINATION. ................................................... 3
`
`IV. DR. HOWE’S NEW OBVIOUSNESS RATIONALE PREJUDICES
`PO. ................................................................................................................... 5
`
`V.
`
`CONCLUSION AND RELIEF REQUESTED ............................................... 5
`
`
`
`i
`
`
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Baxter Healthcare Corp. v. Millennium Biologix, LLC,
`IPR2013-00582, Paper 32 (Oct. 13, 2014) ........................................................... 1
`
`Sony Corp. v. Yissum Research Development Company of the Hebrew
`Univ. of Jerusalem,
`IPR2013-00218, Paper 53 (Sep. 22, 2014) ........................................................... 2
`
`Regulations
`
`37 C.F.R. § 42.53(d)(5)(ii) ......................................................................................... 1
`
`Trial Practice Guide, 77 Fed. Reg. 48756 ............................................................. 2, 5
`
`
`
`
`
`ii
`
`
`
`
`
`GLOSSARY OF ABBREVIATIONS
`
`Shorthand
`Howe Dep.
`PO
`
`Pet’r
`Mot.
`Opp.
`
`DiGioia
`
`Howe Decl.
`
`Description
`Deposition Transcript of Dr. Howe, Ex. 2006.
`Patent Owner Carnegie Mellon University and
`Exclusive Licensee Blue Belt Technologies, Inc.
`Petitioner Mako Surgical Corp.
`Motion to Exclude, Paper 33 (Mar. 9, 2016).
`Opposition to Motion to Motion to Exclude, Paper 34
`(Mar. 16, 2016).
`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,
`Ex. 1005.
`Declaration of Robert D. Howe, Ex. 1004.
`
`iii
`
`
`
`
`
`
`
`
`
`I.
`
`Introduction.
`
`During cross-examination, PO asked Pet’r’s expert, Dr. Howe, to confirm
`
`what his declaration opinions were and what evidence, if any, he was relying on
`
`for those opinions. But on redirect, Pet’r prompted Dr. Howe to explain “why you
`
`believe it would have been obvious for the system to suggest an optimum implant
`
`location?” Howe Dep. at 87:11–13. In the resulting testimony, Dr. Howe
`
`commented on various topics—e.g., a “high quality objective function,” id. at
`
`87:25–88:1, a “brute force” optimization technique, id. at 89:19, and a “gradient
`
`descent” optimization technique, id. at 89:24–25—which he later admitted were
`
`not present in his declaration:
`
`Q. Sir, that explanation you’ve just provided to Mr. Kreeger
`was not contained in the declaration you submitted in this IPR
`petition, right?
`A. That’s right.
`
`Id. at 91:6–9. This testimony was a clear attempt to expand his opinions after the
`
`fact and was not necessitated by the questions Dr. Howe was asked on cross-
`
`examination, nor did it clarify any of his previous answers. The Board should thus
`
`exclude Dr. Howe’s redirect testimony under 37 C.F.R. § 42.53(d)(5)(ii) and not
`
`permit Pet’r to overhaul its original obviousness rationale via redirect testimony.
`
`
`
`1
`
`
`
`
`
`II. PO Properly Seeks to Exclude Dr. Howe’s Redirect Testimony under 37
`C.F.R. § 42.53(d)(5)(ii).
`
`
`
`Pet’r incorrectly asserts that the Motion is improper because it is based on
`
`the Board’s rules instead of the Federal Rules of Evidence (“FRE”). Opp. at 1–2.
`
`The Board has consistently considered motions to exclude based on the scope of
`
`arguments or testimony even without mentioning the FRE. Baxter Healthcare
`
`Corp. v. Millennium Biologix, LLC, IPR2013-00582, Paper 32 at 6–7 (Oct. 13,
`
`2014); Sony Corp. v. Yissum Research Development Company of the Hebrew Univ.
`
`of Jerusalem, IPR2013-00218, Paper 53 at 44–47 (Sep. 22, 2014). The Trial
`
`Practice Guide, which Pet’r relies on, does not indicate otherwise, as it merely
`
`states that “[a]dmissibility of evidence is generally governed by the Federal Rules
`
`of Evidence.” Trial Practice Guide, 77 Fed. Reg. 48756, 48758 (emphasis added).
`
`
`
`Pet’r further quotes the Motion out of context in asserting that the Motion
`
`“impermissibly challenges the sufficiency of Dr. Howe’s declaration.” Opp. at 2.
`
`There was no need for PO to make such an argument in the Motion—PO addressed
`
`the sufficiency of Dr. Howe’s declaration in detail in the patent owner response.
`
`Paper 11 at 28–32 (Nov. 10, 2015). The Motion, on the other hand, describes ¶ 38
`
`of the Howe Decl. to illustrate that PO’s questions on cross-examination were
`
`limited to this testimony, while Pet’r’s questions exceeded the scope of both the
`
`cross-examination and the direct testimony. Mot. at 5–7.
`
`
`
`2
`
`
`
`
`
`III. Dr. Howe’s Redirect Testimony was Outside the Scope of his Cross-
`Examination.
`
`Pet’r incorrectly contends that Dr. Howe’s redirect testimony “consists of
`
`Dr. Howe’s clarifications of his answers” to the following four questions during his
`
`cross examination. Opp. at 3.
`
`• Question 1: “Q. Okay. And so do you agree that this disclosure in ‘96 by
`
`DeGioia [sic] does not describe a system in which the software selects the
`
`implant location?” (Howe Dep. at 56:4–10);
`
`• Question 2: “Q. And you offer the opinion that it would have been obvious to
`
`modify this system for the software to select the implant; is that correct?” (id. at
`
`56:11–14);
`
`• Question 3: “Q. Okay. And so you agreed with that conclusion that it would
`
`have been obvious to utilize feedback to determine an output optimal position?”
`
`(id. at 57:12–16); and
`
`• Question 4: “Q. So you mentioned page 2 of the article. Is 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).
`
`
`
`Question 1 asks Dr. Howe to confirm that DiGioia does not explicitly
`
`disclose “a system in which the software selects the implant location,” which he
`
`confirms by answering: “The software does not select the implant location. That’s
`
`3
`
`
`
`
`
`an obvious extension, but it’s not explicitly stated here.” Id. at 56:8–10. PO did
`
`not ask Dr. Howe why he believes this, and the redirect testimony does not explain
`
`what Dr. Howe meant by “an obvious extension.” Questions 2 and 3 are similarly
`
`straightforward questions asking Dr. Howe to confirm the opinions he expressed in
`
`his Declaration, which Dr. Howe does, answering simply “Yes”—which needs no
`
`clarification. Id. at 56:14, 57:16. Again, PO did not ask Dr. Howe why he
`
`believed the opinions he expressed in his Declaration.
`
`Finally, Question 4 asks whether anything on page 2 of DiGioia supports Dr.
`
`Howe’s position. In response, Dr. Howe quotes a sentence from DiGioia—
`
`answering the question—and adds, unsolicited: “Again, this suggestion that
`
`optimality is obtained suggests using well-known optimization techniques.” Id. at
`
`59:15–17. Dr. Howe’s redirect testimony does not clarify what he meant by
`
`“optimization techniques,” nor does it relate to the quoted sentence, or any other
`
`portion, of DiGioia. Rather, Pet’r asked him why he believed it would have been
`
`obvious for a system to “suggest an optimum location.” Howe Dep. at 87:11–13.
`
`Thus, Dr. Howe’s redirect testimony goes well beyond Questions 1–4; it
`
`simply does not clarify Dr. Howe’s answers to these questions. Accordingly, Dr.
`
`Howe’s redirect should be excluded as outside the scope of the cross-examination.
`
`
`
`
`
`
`
`4
`
`
`
`
`
`IV. Dr. Howe’s New Obviousness Rationale Prejudices PO.
`
`Pet’r’s decision to introduce a new obviousness rationale prejudices PO
`
`because PO was unable to submit a declaration from its expert, Dr. Cleary, to
`
`respond to Dr. Howe’s allegations. Mot. at 7–8. Pet’r responds that because Dr.
`
`Howe’s deposition occurred before PO submitted its Patent Owner Response, PO
`
`could have asked Dr. Cleary to rebut Dr. Howe. Opp. at 5. But a patent owner
`
`response is a response to the petition. See Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48766 (“For IPR, PGR, and CBM, the patent owner will be provided an
`
`opportunity to respond to the petition once trial is instituted.”) Because the
`
`substance of Dr. Howe’s redirect testimony was not in his original declaration,
`
`asking Dr. Cleary to rebut Dr. Howe’s testimony would have been outside the
`
`scope of a proper patent owner response. And Dr. Howe’s new rationale also
`
`forces PO to expend further resources to rebut that rationale. See Mot. at 7.
`
`V. Conclusion and Relief Requested
`For the forgoing reasons as well as those provided in the Motion, PO
`
`respectfully requests that the Board exclude Dr. Howe’s redirect testimony.
`
`Dated: March 28, 2016
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`By: /Brian M. Buroker/
`
`
`
`Brian M. Buroker (Reg. No. 39,125) (lead)
`Attorney for Exclusive Licensee 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 28, 2016 on the counsel of record of the Petitioner:
`
`Matthew I. Kreeger, mkreeger@mofo.com
`
`Walter Wu, wwu@mofo.com
`
`
`
`Dated: March 28, 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
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