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
`
`
`
`
`
`
`PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(C)
`
`
`
`
`

`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`PAGE
`1
`
`I.
`I.
`
`EXHIBIT 2006 IS INADMISSIBLE UNDER FRE 802 ................................ 1
`EXHIBIT 2006 IS INADMISSIBLE UNDER FRE 802 .............................. ..1
`
`II.
`II.
`
`EXHIBIT 2026, ¶ 51 IS INADMISSIBLE UNDER FRE 802 ....................... 3
`EXHIBIT 2026, ‘H 51 IS INADMISSIBLE UNDER FRE 802 ..................... ..3
`
`III. EXHIBIT 2027, ¶¶ 37-40, 42, 43, AND 45, ARE INADMISSIBLE
`III.
`EXHIBIT 2027, ‘M 37-40, 42, 43, AND 45, ARE INADMISSIBLE
`UNDER FRE 802 ............................................................................................ 4
`UNDER FRE 802 .......................................................................................... ..4
`
`IV. EXHIBIT 2028, ¶¶ 33, 40, 48, AND 49, ARE INADMISSIBLE
`IV.
`EXHIBIT 2028, ‘H 33, 40, 48, AND 49, ARE INADMISSIBLE
`UNDER FRE 802 ............................................................................................ 5
`UNDER FRE 802 .......................................................................................... ..5
`
`V.
`V.
`
`EXHIBIT 2040 IS INADMISSIBLE UNDER FRE 802 ................................ 7
`EXHIBIT 2040 IS INADMISSIBLE UNDER FRE 802 .............................. ..7
`
`VI. EXHIBIT 2043 IS INADMISSIBLE UNDER FRE 802 ................................ 7
`VI.
`EXHIBIT 2043 IS INADMISSIBLE UNDER FRE 802 .............................. ..7
`
`VII. EXHIBIT 2044 IS INADMISSIBLE UNDER FRE 401-403 AND 802 ........ 8
`VII. EXHIBIT 2044 IS INADMISSIBLE UNDER FRE 401-403 AND 802 ...... ..8
`
`VIII. EXHIBIT 2050 IS INADMISSIBLE UNDER FRE 401-403 AND 901 ...... 10
`VIII. EXHIBIT 2050 IS INADMISSIBLE UNDER FRE 401-403 AND 901 .... .. 10
`
`IX. EXHIBITS 2051 AND 2052 ARE INADMISSIBLE UNDER FRE
`IX.
`EXHIBITS 2051 AND 2052 ARE INADMISSIBLE UNDER FRE
`401-403 .......................................................................................................... 11
`401-403 ........................................................................................................ .. 1 1
`
`X.
`X.
`
`PORTIONS OF EXHIBITS 1038 AND 1040 ARE INADMISSIBLE
`PORTIONS OF EXHIBITS 1038 AND 1040 ARE INADMISSIBLE
`UNDER FRE 401-403 AND 703 .................................................................. 13
`UNDER FRE 401-403 AND 703 ................................................................ .. 13
`
`
`
`
`
`i
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`

`
`TABLE OF AUTHORITIES
`
`PAGE
`
`Cases
`
`Corning, Inc. v. DSM IP Assets B.V.,
`Case IPR2013-00052, Paper 88 (P.T.A.B. May 1, 2014) ...................... 9, 11, 12
`
`Kirk v. Raymark Indus., Inc.,
`61 F.3d 147 (3d Cir. 1995) ................................................................................. 2
`
`SK Innovation Co., Ltd. v. Celgard, LLC,
`Case IPR2014-00679, Paper 58 (P.T.A.B. Sept. 25, 2015) .................... 9, 10, 12
`
`Triboro Quilt Mfg. Corp. v. Luve LLC,
`2014 WL 158606 (S.D.N.Y. Mar. 18, 2014) .............................................. 2, 3, 6
`
`Statutes
`
`37 C.F.R. § 42.62 ..................................................................................................... 1
`
`37 C.F.R. § 42.64(c) ................................................................................................. 1
`
`FRE 401 ..........................................................................................................passim
`
`FRE 402 ..........................................................................................................passim
`
`FRE 403 ..........................................................................................................passim
`
`FRE 703 ................................................................................................................. 13
`
`FRE 802 ..........................................................................................................passim
`
`FRE 805 ................................................................................................................... 7
`
`FRE 901 ..................................................................................................... 10, 11, 13
`
`
`
`ii
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`

`
`Pursuant to 37 C.F.R. § 42.64(c) and the Scheduling Order (Paper 30),
`
`Petitioner US Endodontics, LLC (“Petitioner”) moves to exclude Patent Owner
`
`Gold Standard Instruments, LLC (“Patent Owner”)’s Exhibits 2006, 2040, 2043,
`
`2044, and 2050-2052, certain paragraphs of declarations of Patent Owner’s
`
`witnesses, in Exhibits 2026-2028, and certain portions of the re-direct examination
`
`testimony elicited by Patent Owner from its witnesses, in Exhibits 1038 and 1040.
`
`Pursuant to 37 C.F.R. § 42.62, Petitioner’s objections apply the Federal Rules of
`
`Evidence (“FRE”).
`
`I.
`
`EXHIBIT 2006 IS INADMISSIBLE UNDER FRE 802
`
`Exhibit 2006 is described by Patent Owner as “Dentsply Int’l Inc. and Tulsa
`
`Dental Prods. LLC d/b/a/ Tulsa Dental Specialties v. US Endodontics, LLC, No.
`
`2:14-196, Declaration of John Voskuil, filed July 9, 2014 (E.D. Tenn.).” Petitioner
`
`timely objected to Exhibit 2006 as inadmissible hearsay under FRE 802. See Paper
`
`31, pp. 1, 3-4.
`
`Patent Owner offers an out-of-court statement by Mr. Voskuil in Paragraph
`
`9 of Exhibit 2006 to prove the truth of the matter asserted therein, namely, that
`
`“Dentsply manufactures a heat-treated file known as the Vortex Blue file, which is
`
`1
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`

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`covered by the ’773 patent.” See Paper 44, p. 58 (citing Ex. 2006, ¶ 9). See also
`
`Ex. 2027, ¶ 45 (citing Ex. 2006, ¶ 9).1
`
`Exhibit 2006 is a declaration from the pending district court litigation. Patent
`
`Owner did not submit a declaration from Mr. Voskuil in this proceeding.
`
`Therefore, Exhibit 2006 is inadmissible, under FRE 802, as hearsay. Kirk v.
`
`Raymark Indus., Inc., 61 F.3d 147, 164 (3d Cir. 1995) (finding no exception
`
`against hearsay applied to a declarant’s “prior trial testimony”). No exceptions to
`
`the rule against hearsay are applicable to Mr. Voskuil’s out-of-court statement.
`
`Further, Dr. Luebke, who relies on Mr. Voskuil’s statement, see Ex. 2027, ¶
`
`45, “may not simply transmit [such] hearsay” statement to the Board. Triboro Quilt
`
`Mfg. Corp. v. Luve LLC, 2014 WL 158606, at *7 (S.D.N.Y. Mar. 18, 2014)
`
`(quoting United States v. Mejia, 545 F.3d 179, 197 (2d Cir. 2008)).
`
`Accordingly, Exhibit 2006 should be excluded.
`
`
`1 Mr. Voskuil is not a technical expert, but the Vice President and General Manager
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`for real party-in-interest Tulsa Dental Products, LLC, and his declaration from the
`
`district court action provides no support for his conclusory statement in Exhibit
`
`2006 that “Dentsply’s Vortex Blue is manufactured using a process that falls
`
`within the scope of the claims of the ’773 patent.”
`
`2
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`

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`II. EXHIBIT 2026, ¶ 51 IS INADMISSIBLE UNDER FRE 802
`
`
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`Exhibit 2026 is described by Patent Owner as “Declaration of Robert
`
`Sinclair, Ph.D.” In Paragraph 51 of Exhibit 2026, Patent Owner’s expert witness,
`
`Dr. Sinclair, declares:
`
`“51. As an initial matter, I understand from reading Dr.
`
`Lemon’s declaration, that in the period of over 15 years
`
`between the publication by Walia in 1988 (referenced above)
`
`and the filing of Dr. Luebke’s international patent application in
`
`2005, nobody thought to heat treat an entire superelastic nickel
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`titanium endodontic file in order to make a softer, permanently
`
`deformable endodontic file. Ex. 2028, ¶ 33.”
`
`As explained below (see infra Section IV), the sole basis for the statements from
`
`Dr. Lemon’s declaration in Exhibit 2028, ¶ 33 came from a “background
`
`discussion” between Dr. Lemon and counsel for Patent Owner and real-party-in-
`
`interest Dentsply. See Ex. 1039, 20:16-21:7. Petitioner timely objected to Exhibit
`
`2028, ¶ 33 and any “reference to or reliance on the foregoing” as constituting
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`inadmissible hearsay. See Paper 48, pp. 1, 3-4. Dr. Sinclair may not simply
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`transmit such hearsay statements to the Board. Triboro Quilt, 2014 WL 158606, at
`
`*7. Accordingly, Exhibit 2026, ¶ 51 should be excluded.
`
`3
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`

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`III. EXHIBIT 2027, ¶¶ 37-40, 42, 43, AND 45, ARE INADMISSIBLE
`UNDER FRE 802
`
`Exhibit 2027 is described by Patent Owner as “Declaration of Neill H.
`
`Luebke, D.D.S., M.S.” Petitioner timely objected to Exhibit 2027, ¶¶ 37-40, 42,
`
`43, and 45 as containing inadmissible hearsay under FRE 802. See Paper 48, p. 3.
`
`Patent Owner relies on these paragraphs in support of its argument that secondary
`
`considerations of nonobviousness exist. See Paper 44, pp. 1, 6, 7, 49, 55, 58. Each
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`of the objected-to paragraphs from Exhibit 2027 contains out-of-court statements
`
`upon which Dr. Luebke and/or Patent Owner rely to prove the truth of the matter(s)
`
`asserted therein:
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` Exhibit 2027, ¶ 37: statements allegedly made by Mr. Pierre-Luc
`
`Maillefer and “a group of practitioners” that the “invention of the ’773
`
`patent” met with skepticism;
`
` Exhibit 2027, ¶ 38: statements allegedly made by “others,” including
`
`“two [unidentified] colleagues” of Dr. Luebke that the “invention of
`
`the ’773 patent” met with skepticism;
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` Exhibit 2027, ¶ 39: statements allegedly made by “a number of
`
`different companies” that the “invention of the ’773 patent” met with
`
`skepticism and concerning efforts to commercialize the alleged
`
`“invention of the ’773 patent;”
`
`4
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`

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` Exhibit 2027, ¶ 40: statements allegedly made by the dental company
`
`“Coltene” and its “representatives” concerning efforts to
`
`commercialize the “invention of the ’773 patent;”
`
` Exhibit 2027, ¶¶ 42 and 43: statements allegedly made by the dental
`
`company “D&S Dental” and two of its representatives concerning
`
`efforts to commercialize the “invention of the ’773 patent;”
`
` Exhibit 2027, ¶ 42: refers to and relies upon the hearsay statements
`
`contained in Exhibit 2040 concerning efforts to commercialize the
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`“invention of the ’773 patent” (see infra Section V); and
`
` Exhibit 2027, ¶ 45: refers to and relies upon the hearsay statements
`
`contained in Exhibit 2006 concerning commercial success of the
`
`“invention of the ’773 patent” (see supra Section I).
`
`No exceptions to the rule against hearsay are applicable to these paragraphs.
`
`Accordingly, Exhibit 2027, ¶¶ 37-30, 40, 42, 43 and 45 should be excluded.
`
`IV. EXHIBIT 2028, ¶¶ 33, 40, 48, AND 49, ARE INADMISSIBLE UNDER
`FRE 802
`
`Exhibit 2028 is described by Patent Owner as “Declaration of Ronald R.
`
`Lemon, D.M.D.” Petitioner timely objected to Exhibit 2028, ¶¶ 33, 40, 48, and 49
`
`as containing inadmissible hearsay under FRE 802. See Paper 48, pp. 3-4.
`
`5
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`

`
`Patent Owner attempts to prove the truth of the matters asserted in
`
`statements made outside of this proceeding by Dr. Luebke and others, and
`
`described by Dr. Lemon in these paragraphs of Exhibit 2028, in support of its
`
`arguments that the invention recited in the ’773 patent was an improvement over
`
`the prior art, and that secondary considerations of nonobviousness exist. Paper 44,
`
`pp. 2, 7, 55, 56, 57, 59; Ex. 2026, ¶¶ 51. The objected-to paragraphs of Exhibit
`
`2028 are inadmissible under FRE 802.
`
` In Exhibit 2028, ¶ 33, Dr. Lemon declares that “when Dr. Luebke tried to
`
`market his invention to different companies, he was initially told that it was not a
`
`good idea or commercially viable.” However, the sole basis for Dr. Lemon’s
`
`description is “background discussion” he had with counsel for Patent Owner and
`
`real-party-in-interest, Dentsply. Ex. 1039, 20:16-21:7. Dr. Lemon may not simply
`
`transmit such hearsay statements to the Board. Triboro Quilt, 2014 WL 158606, at
`
`*7.
`
`In Exhibit 2028, ¶ 40, Dr. Lemon declares, “I know that other educators and
`
`endodontists agreed with my impressions of Vortex Blue®, and also recognized
`
`the benefits of these files.” In Exhibit 2028, ¶ 48, Dr. Lemon declares that “[a]ll
`
`endodontists talk about the equipment they use, and why they use particular
`
`equipment,” and that “[v]irtually everyone I know who has used the post-machined
`
`heat-treated files prefers their performance in complex canal systems.” In Exhibit
`
`6
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`

`
`2028, ¶ 49, Dr. Lemon declares that “several endodontists in this area who have
`
`switched from Vortex Blue® because of the lower cost of this system.” No
`
`exceptions to the rule against hearsay are applicable to these paragraphs.
`
`Accordingly, Exhibit 2028, ¶¶ 33, 40, 48, and 49 should be excluded.
`
`V. EXHIBIT 2040 IS INADMISSIBLE UNDER FRE 802
`
`Exhibit 2040 is described by Patent Owner as “Email communication from
`
`Patrick Huddie to Neill H. Luebke, dated May 20, 2010.” Petitioner timely
`
`objected to Exhibit 2040 as inadmissible hearsay under FRE 802. See Paper 48,
`
`p. 5.
`
`Patent Owner offers out-of-court statements by Mr. Huddie in Exhibit 2040
`
`to prove the truth of the matter asserted therein, namely, that “Mr. Bobby Bennett
`
`tried to license Dr. Luebke’s invention . . . in 2010.” Paper 44, p. 58; Ex. 2027, ¶
`
`42. Exhibit 2040 is inadmissible under FRE 802. In addition, Mr. Huddie
`
`references hearsay statements allegedly made by Mr. Bobby Bennett. This is a
`
`classic hearsay-within-hearsay problem. FRE 805. No exceptions to the rule
`
`against hearsay are applicable to Mr. Huddie’s or Mr. Bennett’s alleged statements.
`
`Accordingly, Exhibit 2040 should be excluded.
`
`VI. EXHIBIT 2043 IS INADMISSIBLE UNDER FRE 802
`
`Exhibit 2043 is described by Patent Owner as “Product information on
`
`Vortex Blue (June 11, 2014), printed from:
`
`7
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`

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`<http://www.tulsadentalspecialties.com/defaut/endodontics_brands/Vortex_Blue.as
`
`px>.” Petitioner timely objected to Exhibit 2043 as containing inadmissible
`
`hearsay under FRE 802. See Paper 48, p. 6.
`
`Patent Owner attempts to prove the truth of the matters asserted in
`
`statements made outside of this proceeding by Nathan Baker, and quoted in Exhibit
`
`2043, in support of its argument that the “Vortex Blue files have also received
`
`praise in the industry, which further demonstrates that the invention was not
`
`obvious.” See Paper 44, p. 60. Exhibit 2043 is inadmissible, under FRE 802, as
`
`containing hearsay. No exceptions to the rule against hearsay are applicable.
`
`Accordingly, Exhibit 2043 should be excluded.
`
`VII. EXHIBIT 2044 IS INADMISSIBLE UNDER FRE 401-403 AND 802
`
`Exhibit 2044 is described by Patent Owner as “Email communications
`
`between Dr. Neill H. Luebke and Bobby Bennett, dated June 27, 2010 and July 6,
`
`2010.” Petitioner timely objected to Exhibit 2044 as irrelevant under FRE 401, and
`
`therefore, inadmissible under FRE 402, inadmissible as untimely and unfairly
`
`prejudicial under FRE 403, and inadmissible hearsay under FRE 802. See Paper
`
`58, p. 1.
`
`Patent Owner did not cite or discuss Exhibit 2044 in any of its substantive
`
`papers. Accordingly, Exhibit 2044 should be excluded as irrelevant under FRE
`
`8
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`

`
`401-402. See, e.g., SK Innovation Co., Ltd. v. Celgard, LLC, Case IPR2014-00679,
`
`Paper 58, at *49 (P.T.A.B. Sept. 25, 2015).
`
`Further, Exhibit 2044 is inadmissible, under FRE 403, because Patent
`
`Owner’s untimely submission of the exhibit is unfairly prejudicial to Petitioner.
`
`Patent Owner first introduced Exhibit 2044 during its re-direct examination of Dr.
`
`Luebke, and Petitioner objected to it at that time. Ex. 1038, 196:10-199:18. Patent
`
`Owner could have submitted Exhibit 2044 on November 4, 2015, with its
`
`Response. Patent Owner’s untimely submission of Exhibit 2044 is improper, and it
`
`deprived Petitioner the opportunity to prepare in advance a cross-examination of
`
`Dr. Luebke regarding such exhibit. See, e.g., Corning, Inc. v. DSM IP Assets B.V.,
`
`Case IPR2013-00052, Paper 88, at *15-16 (P.T.A.B. May 1, 2014) (“[F]ederal
`
`courts may exclude evidence when a party fails to timely disclose information . . . .
`
`To reach consistent and fair outcomes in performing its duties, the Board similarly
`
`must follow set rules and conduct its proceedings in an orderly fashion.”) (citing
`
`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1368 (Fed. Cir.
`
`2006) and Vehicle IP, LLC v. Werner Enters., Inc., CV10-503, 2013 WL 4786119,
`
`*2-3 (D. Del. Sept. 9, 2013)).
`
`Exhibit 2044 is also inadmissible, under FRE 802, as containing hearsay
`
`statements from Dr. Luebke and Bobby Bennett. No exception to the rule against
`
`9
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`

`
`hearsay is applicable to such statements. Accordingly, Exhibit 2044 should be
`
`excluded.
`
`VIII. EXHIBIT 2050 IS INADMISSIBLE UNDER FRE 401-403 AND 901
`
`Exhibit 2050 is described by Patent Owner as “Dentistry — Root-canal
`
`instruments — Part 1: General requirements, dated February 17, 2005.” The first
`
`page of Exhibit 2050 provides the following “Warning”: “This document is not an
`
`ISO International Standard. It is distributed for review and comment. It is subject
`
`to change without notice and may not be referred to as an International Standard.”
`
`See Ex. 2050, p. 1. Petitioner timely objected to Exhibit 2050 as irrelevant under
`
`FRE 401, and therefore, inadmissible under FRE 402, inadmissible as untimely
`
`and unduly prejudicial under FRE 403, and inadmissible under FRE 901 for lack of
`
`authentication. See Paper 58, pp. 1-2.
`
`Patent Owner did not cite or discuss Exhibit 2050 in any of its substantive
`
`papers. Accordingly, Exhibit 2050 should be excluded irrelevant under FRE 401-
`
`402. See, e.g., SK Innovation, Case IPR2014-00679, Paper 58, at *49.
`
`Further, Exhibit 2050 is inadmissible, under FRE 403, because Patent
`
`Owner’s untimely submission of this exhibit is unfairly prejudicial to Petitioner.
`
`Petitioner first introduced Exhibit 2050 during the re-direct examination of its
`
`expert, Dr. Sinclair, and Petitioner objected both to the exhibit and the testimony
`
`elicited thereon at that time. See Ex. 1040, 266:19-271:9. Petitioner could have
`
`10
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`

`
`submitted this exhibit on November 4, 2015, with its Response. Patent Owner’s
`
`untimely introduction of Exhibit 2050 is improper, and it deprived US Endo the
`
`opportunity to prepare in advance a cross-examination of Dr. Sinclair regarding the
`
`exhibit. See, e.g., Corning, Case IPR2013-00052, Paper 88, at *15-16.
`
`Exhibit 2050 is also inadmissible, under FRE 901, for lack of authentication.
`
`Patent Owner has not laid the proper foundation to show that Exhibit 2050 is a true
`
`and correct copy of a genuine working draft of the ISO Standard 3630-1, or that it
`
`was actually distributed for “review and comment.” Dr. Sinclair did not testify to
`
`having any personal knowledge regarding any drafting and/or distribution of ISO
`
`3630-1 working drafts. Indeed, on re-cross, Dr. Sinclair admitted that he does not
`
`recall when he first saw the document in Exhibit 2050, and that he does not know
`
`how many “working drafts” of ISO 3630-1 exist. Ex. 1040, 299:15-22.
`
`Accordingly, Exhibit 2050 should be excluded.
`
`IX. EXHIBITS 2051 AND 2052 ARE INADMISSIBLE UNDER FRE 401-
`403
`
`Exhibit 2051 is described by Patent Owner as “Kowalski Heat Treatment
`
`Company Purchase Order Certification, dated January 15, 2016.” Exhibit 2052 is
`
`described by Patent Owner as “Declaration of Nolan Knight, dated January 18,
`
`2016.” Petitioner timely objected to both exhibits as irrelevant under FRE 401, and
`
`therefore, inadmissible under FRE 402, and inadmissible as untimely and
`
`prejudicial under FRE 403. See Paper 58, pp. 2-3.
`
`11
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`

`
`
`
`Patent Owner did not cite or discuss Exhibits 2051 and 2052 in any of its
`
`substantive papers. Accordingly, Exhibit 2050 should be excluded as irrelevant
`
`under FRE 401-402. See, e.g., SK Innovation, Case IPR2014-00679, Paper 58, at
`
`*49.
`
`Exhibits 2051 and 2052 are also inadmissible, under FRE 403, because
`
`Patent Owner’s untimely introduction of the exhibits is unfairly prejudicial to
`
`Petitioner. Patent Owner first introduced Exhibits 2051 and 2052 in the re-direct
`
`examination of its expert, Dr. Sinclair, eight days before Petitioner’s Reply was
`
`due. During the re-direct examination, Petitioner objected to these exhibits and the
`
`testimony elicited thereon. See Ex. 1040, 275:17-289:1. Patent Owner could have
`
`submitted these exhibits on November 4, 2015, with its Response. Had Patent
`
`Owner timely disclosed Exhibits 2051 and 2052, Petitioner would have had the
`
`opportunity to investigate the statements contained therein and to prepare for cross-
`
`examination. Instead, Patent Owner waited until after Petitioner finished cross-
`
`examining its expert witness before first introducing such exhibits. This is
`
`improper. See, e.g., Corning, Case IPR2013-00052, Paper 88, at *15-16 (P.T.A.B.
`
`May 1, 2014).
`
`Accordingly, Exhibits 2051-2052 should be excluded.
`
`12
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`

`
`X.
`
`PORTIONS OF EXHIBITS 1038 AND 1040 ARE INADMISSIBLE
`UNDER FRE 401-403 AND 703
`
`As discussed above, Exhibits 2044 and 2050-2052 are inadmissible, inter
`
`alia, under FRE 401-403, 802, and 901. See supra Sections VII-IX. Petitioner
`
`submits that, for the same reasons explained above with respect to each of those
`
`exhibits, any attempted reliance by Patent Owner on the following re-direct
`
`examination testimony should be rejected: Exhibit 1038, 196:10-198:10 (Dr.
`
`Luebke’s re-direct examination testimony regarding Exhibit 2044); Exhibit 1040,
`
`266:19-271:9 (Dr. Sinclair’s re-direct examination testimony regarding Exhibit
`
`2050), 275:17-289:1 (Dr. Sinclair’s re-direct examination testimony regarding
`
`Exhibits 2051 and 2052). FRE 401-403, 703. As noted above, Petitioner timely
`
`objected to the testimony concerning each of these exhibits during the re-direct
`
`examinations of Drs. Luebke and Sinclair.
`
`Accordingly, the following portions of Exhibits 1038 and 1040 should be
`
`excluded: Exhibit 1038, 196:10-198:10; Exhibit 1040, 266:19-271:9, and 275:17-
`
`289:1.
`
`Dated: March 2, 2016
`
`Respectfully submitted,
`
`/Jeffrey S. Ginsberg/
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`Lead counsel for Petitioner US Endodontics, LLC
`
`Abhishek Bapna (Reg. No. 64,049)
`Back-up counsel for Petitioner US Endodontics, LLC
`
`13
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`

`
`
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036-6710
`Tel.: (212) 336-2000
`
`14
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`

`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on March 2,
`
`2016, the foregoing PETITIONER’S MOTION TO EXCLUDE EVIDENCE
`
`UNDER 37 C.F.R. § 42.64(C) was served via electronic mail on the following
`
`counsel of record for the Patent Owner:
`
`Joseph A. Hynds
`(jhynds@rothwellfigg.com)
`R. Elizabeth Brenner-Leifer
`(ebrenner@rothwellfigg.com)
`Steven Lieberman
`(slieberman@rothwellfigg.com)
`Jason M. Nolan
`(jnolan@rothwellfigg.com)
`Derek F. Dahlgren
`(ddahlgren@rothwellfigg.com)
`C. Nichole Gifford
`(ngifford@rothwellfigg.com)
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Ste. 800
`Washington, DC 20005
`
`
`
`
`
`
`/Abhishek Bapna/
`Abhishek Bapna (Reg. No. 64,049)