Filed on behalf of: Gold Standard Instruments, LLC Paper ____
`
`
`
`
` Date filed: March 2, 2016
`
`By:
`Joseph A. Hynds, Lead Counsel
`R. Elizabeth Brenner-Leifer, Back-up Counsel
`Steven Lieberman, Back-up Counsel
`Jason M. Nolan, Back-up Counsel
`Derek F. Dahlgren, Back-up Counsel
`C. Nichole Gifford, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: jhynds@rothwellfigg.com
` ebrenner@rothwellfigg.com
` slieberman@rothwellfigg.com
` jnolan@rothwellfigg.com
` ddahlgren@rothwellfigg.com
` ngifford@rothwellfigg.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`_______________
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
` Date filed: March 2, 2016
`
`By:
`Joseph A. Hynds, Lead Counsel
`R. Elizabeth Brenner-Leifer, Back-up Counsel
`Steven Lieberman, Back-up Counsel
`Jason M. Nolan, Back-up Counsel
`Derek F. Dahlgren, Back-up Counsel
`C. Nichole Gifford, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: jhynds@rothwellfigg.com
` ebrenner@rothwellfigg.com
` slieberman@rothwellfigg.com
` jnolan@rothwellfigg.com
` ddahlgren@rothwellfigg.com
` ngifford@rothwellfigg.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`_______________
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`I.
`
`Introduction
`
`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner Gold Standard Instruments,
`
`LLC (“Patent Owner”) moves to exclude Exhibits 1005, 1014 and 1037. Patent
`
`Owner further moves to strike Exhibits 1038, 2045 and 2046 at 154:12-155:2;
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`157:20-158:15; 161:21-163:5; 66:18-67:14; and 68:3-17. Finally, Patent Owner
`
`moves to strike the first full paragraph on page 10 in Petitioner’s Reply in Support
`
`of Petition for Inter Partes Review (Paper 57) that relies on Exhibits 1005, 1014,
`
`and 1037.
`
`II. Exhibit 1005
`
`Exhibit 1005 is Satish B. Alapati, “An investigation of phase transformation
`
`mechanisms for nickel-titanium rotary endodontic instruments,” Ph.D. thesis,
`
`2006. Patent Owner objected to Ex. 1005 in Patent Owner’s Objections to
`
`Petitioner’s Evidence (Paper 35) at page 3 on the two independently sufficient
`
`grounds that it is: (1) irrelevant to the grounds upon which trial has been instituted
`
`(FRE 401-403); and (2) is improper hearsay (FRE 801). Petitioner relies on Ex.
`
`1005 in its Petition (Paper 2) at pages 3-4 and 46 and in its Reply (Paper 57) at
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`page 10.
`
`2
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`
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`Exhibit 1005 is not prior art to U.S. Patent No. 8,727,773 (“the ’773
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`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`patent”). The Board correctly determined that the ’773 patent was entitled to at
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`least the filing date of its related PCT application (filed June 7, 2005). See
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`Institution Decision (Paper 29) at 13-4; see also Decision - Petitioner’s Request for
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`Rehearing (Paper 41) at 2-4. Since Ex. 1005 is not prior art, it is not relevant to
`
`any ground upon which trial has been instituted. Exhibit 1005 should be excluded
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`to prevent unnecessary prejudice to Patent Owner and to avoid confusion as to its
`
`status as non-prior art. For example, in its Institution Decision (Paper 29) at 5-6,
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`the Board incorrectly identified Ex. 1005 as prior art.
`
`Exhibit 1005 should also be excluded because it is hearsay, not subject to
`
`any exception. Petitioner improperly relied on Ex. 1005 in its Petition and again in
`
`its Reply for the truth of the matter asserted in the document. Petitioner has not
`
`cited to any hearsay exception, and none applies. Petitioner’s supplemental
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`evidence (a library card catalog record obtained from Ohio State University) does
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`not cure Patent Owner’s objection. Petitioner has not presented the testimony of
`
`any individual having first-hand knowledge of the statements and/or experiments
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`described in Ex. 1005.
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`III. Exhibit 1014
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`Exhibit 1014 is U.S. Patent Application Publication No. 2011/0271529 A1,
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`to Gao et al. Patent Owner objected to Ex. 1014 in Patent Owner’s Objections to
`
`3
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`
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`Petitioner’s Evidence (Paper 35) at page 4 on the ground that it is irrelevant to the
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`Case IPR2015-00632
`Patent 8,727,773 B2
`
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`grounds upon which trial has been instituted (FRE 401-403). Petitioner relies on
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`Ex. 1014 in its Petition (Paper 2) at pages 23-28 and in its Reply (Paper 57) at page
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`10.
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`Exhibit 1014 is not prior art to the ’773 patent. As noted above, the Board
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`correctly determined that the ’773 patent was entitled to at least the filing date of
`
`its related PCT application (filed June 7, 2005). Since Ex. 1014 is not prior art, it
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`is not relevant to any ground upon which trial has been instituted and should be
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`excluded.
`
`IV. Exhibit 1037
`
`Exhibit 1037 is U.S. Patent No. 6,149,501 to Farzin-Nia et al. Patent Owner
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`objected to Ex. 1037 in Patent Owner’s Second Set of Objections to Evidence
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`(Paper 59) at page 2 on the ground that it is improper hearsay (FRE 801).
`
`Petitioner relies on Ex. 1037 in its Reply (Paper 57) at page 10.
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`Exhibit 1037 is hearsay, not subject to any exception. Petitioner relied on
`
`Ex. 1037 in its Reply for the truth of the matter asserted in the document.
`
`Petitioner has not cited to a hearsay exception, and none applies. Petitioner has not
`
`served Patent Owner with supplemental evidence in order to cure Patent Owner’s
`
`objection. Petitioner has not presented the testimony of any individual having
`
`first-hand knowledge of the statements in Ex. 1037.
`
`4
`
`
`
`V. Exhibit 1038
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`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Exhibit 1038 is Deposition Transcript of Neill H. Luebke, D.D.S., M.S.,
`
`dated December 9, 2015 (Public/Redacted Version). During Dr. Luebke’s cross
`
`examination deposition, Patent Owner objected to certain questions that counsel
`
`for Petitioner asked because the questions were outside the scope of Dr. Luebke’s
`
`direct declaration testimony and violated 37 C.F.R. § 42.53(d)(ii). Accordingly,
`
`Patent Owner moves to exclude those portions of Dr. Luebke’s deposition
`
`transcript.
`
`Dr. Luebke’s Declaration (Ex. 2027, Declaration of Neill H. Luebke, D.D.S.,
`
`M.S.) is narrowly focused and simply provides a brief background on endodontics,
`
`an overview of his development and subsequent commercialization of the
`
`invention described in the ʼ773 patent, and the proper interpretation of the
`
`“wherein” clause of claims 1 and 13 of the ʼ773 patent, including a discussion of a
`
`declaration submitted during the prosecution of a related patent application in
`
`which Dr. Luebke discussed testing that he performed on files. To be clear, Dr.
`
`Luebke did not opine about the prior art or about specific references asserted by
`
`Petitioner in this proceeding. Notwithstanding the narrow scope of Dr. Luebke’s
`
`Declaration and the fact it does not discuss the various references at issue in this
`
`proceeding, including Kuhn (Ex. 1019) and Matsutani (Ex. 1023), counsel for
`
`Petitioner repeatedly asked Dr. Luebke questions about the prior art and specific
`
`5
`
`
`
`references such as Kuhn and Matsutani. Counsel for Patent Owner believed that
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`this line of questioning was improper and in violation of 37 C.F.R. § 42.53(d)(ii).
`
`During Dr. Luebke’s deposition, counsel for Patent Owner contacted the Board
`
`seeking a limiting instruction preventing Petitioner from asking questions outside
`
`the scope of Dr. Luebke’s declaration, such as questions concerning references
`
`cited by Petitioner as prior art. Ex. 1038 at 31:10- 42:20. The Board declined to
`
`provide such an instruction at that time, but instructed that Patent Owner could
`
`make objections and move to exclude such testimony:
`
`Well, at this point I don’t want to instruct either party what to ask the
`
`witness. That’s not really the intent, not really – it does not seem to
`
`be an appropriate instruction at this time. I’ve heard from both sides.
`
`And I am not going to determine at this point whether it’s outside the
`
`scope or not. What I’m going to do is instruct that the witness should
`
`answer the question. Mr. Dahlgren, you are free to raise an objection
`
`as I said. And ultimately if you want to perfect that objection by
`
`filing a motion to exclude, the rules provide for that. But at this time
`
`– and, again I am not determining whether it is outside the scope –
`
`whether it is or is not impermissible scope at this point. But I’m
`
`going to instruct that the witness should answer the question.
`
`6
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`Ex. 1038 at 42:3-20. The deposition continued and counsel for Patent Owner made
`
`numerous objections based on questions being outside the scope and improper
`
`under 37 C.F.R. § 42.53(d)(ii). Specific objections to Petitioner’s questioning of
`
`Dr. Luebke are identified below.
`
`Objection Cites (page:line)
`154:19, 155:1, 69:17-18
`158:7, 158:11, 158:18, 69:17-18
`162:3, 162:18, 163:3, 69:17-18
`66:21
`67:10
`
`Objection
`scope
`scope
`scope
`scope
`form
`
`Petitioner relies on these objectionable portions of Ex. 1038 in its Reply (Paper 57)
`
`Testimony to be Stricken
`154:12-155:2
`157:20-158:15
`161:21-163:5
`66:18-67:14 & 68:3-17
`66:18-67:14
`
`at page 3 (154:12-155:2 and 157:20-158:15), page 8 (161:21-163:5), and page 16
`
`(66:18-67:14).
`
`Patent Owner’s motion to exclude should be granted. Exhibit 1038 at
`
`154:12-155:2; 157:20-158:15; 161:21-163:5; and 66:18-67:14 contain questions
`
`that are outside the scope of Dr. Luebke’s direct declaration testimony (Ex. 2027,
`
`Declaration of Neill H. Luebke, D.D.S., M.S.) and in violation of 37 C.F.R.
`
`§ 42.53(d)(ii). Nowhere in Ex. 2027 does Dr. Luebke discuss Kuhn (Ex. 1019),
`
`Matsutani (Ex. 1023) or prior art discussing thermal treatments of endodontic
`
`instruments. And Petitioner did not use these exhibits to impeach Dr. Luebke.
`
`Because Dr. Luebke did not submit testimony on those exhibits or related subject
`
`matter that would make them a proper subject for questioning, and because
`
`7
`
`
`
`Petitioner was not impeaching Dr. Luebke, Petitioner’s above-cited questioning
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`was improper under 37 C.F.R. § 42.53(d)(ii) and should be excluded.
`
`VI. Exhibit 2045
`
`Exhibit 2045 is Deposition Transcript of Neill H. Luebke, D.D.S., M.S.,
`
`dated December 9, 2015 (Public/Redacted Version). Exhibit 2045 is identical to
`
`Ex. 1038 and Patent Owner’s arguments for excluding portions of Ex. 1038 at
`
`154:12-155:2; 157:20-158:15; 161:21-163:5; and 66:18-67:14 are hereby
`
`incorporated by reference.
`
`VII. Exhibit 2046
`
`Exhibit 2045 is Deposition Transcript of Neill H. Luebke, D.D.S., M.S.,
`
`dated December 9, 2015 (Confidential/Unredacted Version). But for the
`
`redactions, Ex. 2046 is identical to Exs. 1038 and 2045, and Patent Owner’s
`
`arguments for excluding portions of Ex. 1038 at 154:12-155:2; 157:20-158:15;
`
`161:21-163:5; and 66:18-67:14 are hereby incorporated by reference.
`
`VIII. Petitioner’s Reply in Support of Petition for IPR (Paper 57)
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`Patent Owner moved to exclude Exhibits 1005, 1014, and 1037 for the
`
`reasons identified above. Those arguments are hereby incorporated by reference.
`
`Petitioner relies on Exhibits 1005, 1014, and 1037 at page 10, first full paragraph.
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`Patent Owner moves to strike that paragraph of the Reply (Paper 57) that relies on
`
`inadmissible evidence.
`
`8
`
`
`
`IX. Conclusion
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`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Based on the foregoing, the Board should exclude Exhibits 1005, 1014, and
`
`1037; and the Board should strike from the record Exhibits 1038, 2045 and 2046 at
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`154:12-155:2; 157:20-158:15; 161:21-163:5; 66:18-67:14; 68:3-17 and the first
`
`full paragraph on page 10 of Petitioner’s Reply (Paper 57).
`
`
`
`
`
`
`
`
`
`
`/ C. Nichole Gifford /
`By:
`
`Date: March 2, 2016
`C. Nichole Gifford, Reg. No. 44,122
`
`
`
`
`
`ROTHWELL, FIGG, ERNST &
`
`
`
`
`
`
` MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`
`Counsel for Patent Owner
`Gold Standard Instruments, LLC
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 2nd day of March 2016, a true and correct copy
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`of the foregoing PATENT OWNER’S MOTION TO EXCLUDE was served, via
`
`electronic mail upon the following counsel for Petitioner US Endodontics, LLC:
`
`
`
`Jeffrey S. Ginsberg, Esq.
`Abhishek Bapna, Esq.
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036-6710
`Phone: 212-336-2630
`Facsimile: 212-336-1270
`Emails: jginsberg@pbwt.com
`abapna@pbwt.com
`
`
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
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