`Filed on behalf of: Gold Standard Instruments, LLC Paper ____
`
`
`
`
` Date filed: March 16, 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 OPPOSITION TO
`PETITIONER’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
`
`
`
`
`

`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................... ii 
`I. 
`Introduction ...................................................................................................... 1 
`II. 
`Exhibit 2006 ..................................................................................................... 1 
`III.  Exhibit 2026, ¶ 51 ............................................................................................ 3 
`IV.  Exhibit 2027, ¶¶ 37-40, 42, 43, and 45 ............................................................ 4 
`V. 
`Exhibit 2028, ¶¶ 33, 40, 48, and 49 ................................................................. 6 
`VI.  Exhibit 2040 ..................................................................................................... 7 
`VII.  Exhibit 2043 ..................................................................................................... 8 
`VIII.  Exhibit 2044 ..................................................................................................... 9 
`IX.  Exhibit 2050 ................................................................................................... 10 
`X. 
`Exhibits 2051 and 2052 ................................................................................. 12 
`XI.  Portions of Exhibits 1038 and 1040 .............................................................. 15 
`XII.  Conclusion ..................................................................................................... 15 
`
`
`
`
`
`i
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`

`
`TABLE OF AUTHORITIES
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`
`
`Cases 
`
`EMC Corp. v. Personalweb Tech., LLC,
`IPR2013-00083 (PTAB May 15, 2014) ..............................................................1, 5
`Graham v. John Deere Co. of Kansas City,
`86 S.Ct. 684 (1966) ............................................................................................... 10
`In re GPAC, Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) .............................................................................. 10
`Johnson v. Samsung Elecs. Am., Inc.,
`277 F.R.D. 161(E.D. La. 2011) ............................................................................. 4
`Kirk v. Raymark Indus., Inc.,
`61 F.3d 147 (3d Cir. 1995) ..................................................................................... 3
`Mason v. Safeco Ins. Co. Am.,
` 2010 U.S. Dist. LEXIS 86696 (E.D. Mo. Aug. 23, 2010) ...................................... 4
`OddzOn Products, Inc. v. Just Toys, Inc.,
`122 F. 3d 1396 (Fed. Cir. 1997) ........................................................................... 10
`SK Innovation Co., v. Celgard, LLC,
`IPR2014-00679 (PTAB 2015) .............................................................................. 15
`Statutes 
`
`35 U.S.C. § 103 .......................................................................................................... 9
`Other Authorities 
`
`FRE 702 Advisory Committee Notes to 2000 Amendments (“The term ‘data’ is
`intended to encompass the reliable opinions of other experts.”). ........................... 4
`Rules 
`
`37 C.F.R. § 42.20(c) ................................................................................................... 1
`37 C.F.R. § 42.62(a) ................................................................................................... 1
`Fed. R. Civ. Pro. 30(b)(6) .......................................................................................... 2
`Fed. R. Evid. 401 ................................................................................................ 9, 13
`Fed. R. Evid. 402 ................................................................................................ 9, 13
`
`ii
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`

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`Case IPR2015-00632
`Patent 8,727,773 B2
`
`Fed. R. Evid. 403 ................................................................................................ 9, 13
`Fed. R. Evid. 801(d)(2) ..................................................................................... 5, 8, 9
`Fed. R. Evid. 802 ...................................................................................................8, 9
`Fed. R. Evid. 807 ...................................................................................................2, 3
`Fed. R. Evid. 901 ..................................................................................................... 11
`
`iii
`
`

`
`I.
`
`Introduction
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Patent Owner opposes Petitioner’s Motion to Exclude Evidence (Paper 62).
`
`Petitioner has not met its burden of establishing that it is entitled to the requested
`
`relief. 37 C.F.R. §§ 42.20(c), 42.62(a). Petitioner’s motion to exclude Ex. 2006,
`
`Ex. 2026, Ex. 2027, ¶¶37-40, 42, 43, and 45, Ex. 2028, ¶¶33, 40, 48, and 49,
`
`Ex. 2040, Ex. 2043, Ex. 2044, Ex. 2050, Ex. 2051, and Ex. 2052, and portions of
`
`Exs. 1038 and 1040 should be denied for the reasons that follow.
`
`II.
`
`Exhibit 2006
`
`Ex. 2006 is “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 specifically objects only to the
`
`statement in ¶9 of Mr. Voskuil’s declaration: “Dentsply’s Vortex Blue file is
`
`manufactured using a process that falls within the scope of the claims of the ’773
`
`patent.” Petitioner does not address other statements in Ex. 2006. By not
`
`addressing statements other than ¶9, Petitioner has waived any objection to any
`
`other statements in this declaration. EMC Corp. v. Personalweb Tech., LLC,
`
`IPR2013-00083, slip. op. at 39 (PTAB May 15, 2014) (Paper 80). Thus, Patent
`
`Owner responds only to Petitioner’s allegation that ¶9 of Ex. 2006 is hearsay.
`
`The Voskuil Declaration is not hearsay. The Voskuil Declaration was
`
`submitted in this proceeding on May 11, 2015, with the Patent Owner Preliminary
`
`1
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`

`
`Response. It constitutes testimony in this proceeding. Petitioner could have cross-
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`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`examined Mr. Voskuil, but it chose not to. If it had cross-examined Mr. Voskuil,
`
`then all of his statements, including the statements in ¶9, would unquestionably be
`
`admissible. Petitioner cannot convert a declaration submitted in this matter into
`
`hearsay simply by choosing not to cross-examine the declarant.
`
`Further, even if ¶9 is hearsay, it falls within the exception in FRE 807. Mr.
`
`Voskuil’s statement in ¶9 was based on his firsthand knowledge of the licensing
`
`agreement between licensees Dentsply Int’l Inc. and Tulsa Dental Products, LLC
`
`and licensor Gold Standard Instruments, LLC (Patent Owner),1 and his firsthand
`
`knowledge of the process used by licensees to make Vortex Blue. In addition, other
`
`circumstantial guarantees of trustworthiness support the admissibility of the
`
`statement in ¶9. And other evidence corroborates the statement.
`
`First, there is no reason to question the veracity of the statement in ¶9. It
`
`was made within the scope of Mr. Voskuil’s role as a Dentsply officer. It was made
`
`“under penalty of perjury that the foregoing is true and correct.” Ex. 2006, 5. And
`
`counsel for Petitioner questioned Mr. Voskuil about his declaration in a deposition
`
`under Fed. R. Civ. Pro. 30(b)(6). Second, other evidence shows that Vortex Blue is
`
`                                                            
`1 See Ex. 2006, ¶¶10-11. Paragraphs 10-11 are also cited in Paper 44 at p. 58 but
`
`were not argued to be hearsay in Petitioner’s Motion to Exclude.
`
`2
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`

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`Case IPR2015-00632
`Patent 8,727,773 B2
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`manufactured using a process covered by the ’773 patent. For example, counsel for
`
`Petitioner questioned Dr. Luebke on cross examination about Vortex Blue. See Ex.
`
`2045, 18 (“Q: What products that Dentsply sells do they pay you royalties for? A:
`
`… For the ’773 patent, the Vortex Blue.”). Third, Mr. Voskuil’s statement avoids
`
`any of the dangers associated with hearsay, such as perception, memory, narration,
`
`and sincerity. And Petitioner’s reliance on Kirk v. Raymark Indus., Inc., 61 F.3d
`
`147 (3d Cir. 1995) is misplaced. There, the court did not address the prior
`
`testimony of a Rule 30(b)(6) witness; i.e., someone who was required to testify
`
`about information known or reasonably available to the organization. As such,
`
`even if the statement were hearsay, it therefore is otherwise admissible.
`
`III. Exhibit 2026, ¶51
`
`Ex. 2026 is “Declaration of Robert Sinclair, Ph.D.” Petitioner alleges that
`
`¶51 is hearsay. That is incorrect. Dr. Sinclair’s statement is not hearsay because it
`
`was made by the declarant while testifying in this trial. And Petitioner cross
`
`examined him. Moreover, FRE 703 specifically provides that:
`
`If of a type reasonably relied upon by experts in the particular field
`informing opinions or inferences upon the subject, the facts or data
`need not be admissible in evidence in order for the opinion or
`inference to be admitted.
`
`Here, Dr. Sinclair was entitled to rely on the expert opinion of Dr. Lemon, who is
`
`himself an expert in a related field. This is particularly true since Dr. Lemon
`
`3
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`

`
`submitted that declaration in this trial and was subject to cross examination on that
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`Case IPR2015-00632
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`declaration. It is well-settled that “‘[a]n expert may rely on the reliable opinion of
`
`another expert in forming his own opinion.’” Johnson v. Samsung Elecs. Am., Inc.,
`
`277 F.R.D. 161, 166 (E.D. La. 2011) (quoting Mason v. Safeco Ins. Co. Am., 2010
`
`U.S. Dist. LEXIS 86696, at *21 (E.D. Mo. Aug. 23, 2010)); see also FRE 702
`
`Advisory Committee Notes to 2000 Amendments (“The term ‘data’ is intended to
`
`encompass the reliable opinions of other experts.”).
`
`Dr. Sinclair’s understanding was also informed by Dr. Goldberg’s
`
`declaration and the references cited in the Petition, such as Exs. 1019 and 1023.
`
`Dr. Sinclair testified at length in his declaration and during cross as to why he
`
`disagreed with Dr. Goldberg’s opinions and why the asserted references in the
`
`Petition do not disclose a method of heat treating an entire superelastic nickel
`
`titanium endodontic file in order to make a softer, permanently deformable file.
`
`See, e.g., Ex. 2026, ¶¶ 52-179. Each reference in the instituted grounds was
`
`published between 1988 and 2005.
`
`IV. Exhibit 2027, ¶¶37-40, 42, 43, and 45
`
`Ex. 2027 is the “Declaration of Neill H. Luebke, D.D.S., M.S.” As an initial
`
`matter, Petitioner’s objection that ¶¶ 37-40, 42, 43, and 45 contain statements that
`
`are hearsay fails because Petitioner has not identified the particular statements in
`
`¶¶37-40, 42, 43, and 45 and therefore has not carried its burden. EMC Corp.,
`
`4
`
`

`
`IPR2013-00083, slip. op. at 39 (Paper 80).
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`Case IPR2015-00632
`Patent 8,727,773 B2
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`In addition, none of the statements in ¶¶37-40, 42, 43, and 45 are hearsay
`
`because they are not out of court statements offered for the truth of the matter
`
`being asserted. Rather, the statements are being offered to show the statements
`
`were made to Dr. Luebke. The fact that they were made is directly relevant to the
`
`issue of skepticism of the invention. Dr. Luebke’s recollection of conversations in
`
`which he personably participated is not hearsay. Additionally, in ¶37, Dr. Luebke
`
`states: “Mr. Maillefer told me that the files were too soft.” That statement was not
`
`offered to prove that Dr. Luebke’s heat-treated files were in fact “too soft.” Rather,
`
`the statement shows Dr. Luebke’s recollection as to how others described the heat-
`
`treated files. The same reasoning applies to the statements in ¶¶38-40, 42, 43, 45.
`
`The statements in ¶¶42-43 are also not hearsay under FRE 801(d)(2) because
`
`they are statements by an opposing party offered against the opposing party. Mr.
`
`Bennett is a real party in interest in this proceeding. Petitioner has not submitted a
`
`declaration from Mr. Bennett to clarify any statements in ¶¶42-43. Indeed,
`
`Petitioner does not even question the accuracy of Dr. Luebke’s recollection of his
`
`dealings with Mr. Bennett in 2010.
`
`Regarding ¶45, Dr. Luebke states that Vortex Blue is made using a process
`
`that is covered by the claims of the ’773 patent. It is not hearsay. Petitioner’s
`
`attacks on the bases for Dr. Luebke’s knowledge go to the weight to be accorded to
`
`5
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`

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`Dr. Luebke’s testimony, not its admissibility.
`
`V.
`
`Exhibit 2028, ¶¶33, 40, 48, and 49
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`Case IPR2015-00632
`Patent 8,727,773 B2
`
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`Ex. 2028 is the “Declaration of Ronald R. Lemon, D.M.D.” Petitioner
`
`alleges that statements in ¶¶33, 40, 48, and 49 are hearsay. Those statements are
`
`not hearsay because they were made in this trial and were subject to cross-
`
`examination. Moreover, even if they were hearsay, they are still admissible under
`
`FRE 703, which permits an expert witness to base his or her opinions on facts or
`
`data perceived by or made known to them, including facts or data deemed hearsay.
`
`If the Board finds a statement to be hearsay, then Patent Owner requests a limiting
`
`order because Petitioner’s motion to strike entire paragraphs is overly broad. For
`
`example, ¶33 states: “To my knowledge, no one had this idea before Dr. Luebke.”
`
`Petitioner does not challenge the admissibility of that statement—it should remain
`
`in the record even if another statement in ¶33 is excluded.
`
`The statement in ¶33 that Petitioner alleges to be hearsay relates to Dr.
`
`Lemon’s understanding. Petitioner elided the words “I understand” from “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.” Paper 62, 6. Dr. Lemon is
`
`entitled to rely in forming his opinions on information received directly or
`
`indirectly from Dr. Luebke. Again, Petitioner’s criticism goes to the weight to be
`
`accorded to Dr. Lemon’s testimony, rather than its admissibility. Here, the weight
`
`6
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`

`
`that should be accorded is substantial since Dr. Lemon’s understanding of industry
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`Case IPR2015-00632
`Patent 8,727,773 B2
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`skepticism is consistent with information provided in Dr. Luebke’s declaration.
`
`Regarding ¶¶40, 48, and 49, Petitioner alleges that particular statements
`
`based on Dr. Lemon’s firsthand knowledge are hearsay. Not so. The statements,
`
`such as “I know that other educators and endodontists agreed with my impressions
`
`of Vortex Blue,” and “[v]irtually everyone know who has used the post-machined
`
`heat-treated files prefers their performance in complex canal systems” provide a
`
`basis for Dr. Lemon’s opinions and are not hearsay under FRE 703.
`
`VI. Exhibit 2040
`
`Ex. 2040 is “Email communication from Patrick Huddie, Managing Director
`
`of the Westbury Group, LLC to Dr. Neill H. Luebke, dated May 20, 2010.”
`
`Petitioner incorrectly argues that the email contains hearsay statements from Mr.
`
`Huddie and Mr. Bennett. But Mr. Bennett is a real party in interest in this
`
`proceeding, and Mr. Huddie was speaking as an agent for Mr. Bennett. Ex. 2040
`
`(“Bobby Bennett suggested that we speak about the next steps towards creating a
`
`partnership with D&S Dental. The Westbury Group is advising D&S Dental . . .
`
`We propose you and Bobby meet in the next couple weeks. The purpose of the
`
`meeting is to negotiate a licensing and royalty agreement for the assignment of the
`
`intellectual property you have developed . . . .”). Thus, the statements were
`
`effectively made by Mr. Bennett. Petitioner is owned in part by Mr. Bennett. Thus,
`
`7
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`
`the statements in the email are admissions of a party opponent and are not hearsay
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`under FRE 801(d)(2). And if they were hearsay, then they should remain in the
`
`record because of the circumstantial indicia of trustworthiness. The statements in
`
`the email were made by or for a real party in interest and avoid any of the dangers
`
`associated with hearsay, such as perception, memory, narration, and sincerity.
`
`VII. Exhibit 2043
`
`Ex. 2043 is “Product information on Vortex Blue (June 11, 2014):
`
`<http://www.tulsadentalspecialties.com/defaut/endodontics_brands/Vortex_Blue.as
`
`px>.” Petitioner alleges that Ex. 2043 is hearsay under FRE 802 because it contains
`
`a quote from Dr. Nathan Baker. Dr. Baker states:
`
`I really love the Vortex Blue files. They are my favorite file system
`ever. In my experience Vortex Blue files are far more likely to follow
`the shape of the canal without breaking - and since they cut dentin like
`butter, I can negotiate the most wicked of curves with complete
`confidence. Thanks to DENTSPLY Tulsa for adding them to my
`armamentanum!
`Ex. 2043 is not hearsay because Patent Owner was not offering Ex. 2043 to
`
`prove that Vortex Blue files follow the shape of the canal without breaking. Nor it
`
`is offering Ex. 2043 to prove that Vortex Blue files cuts dentin like butter, or that
`
`Dr. Baker can negotiate the most wicked of curves with complete confidence, or
`
`that Vortex Blue files are Dr. Baker’s favorite file system. Instead, it is being
`
`8
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`

`
`submitted to show praise by those in the industry. Notably, Petitioner does not
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`challenge the authenticity of the document or that the statement on the website was
`
`made by Dr. Baker. In sum, Ex. 2043 is not hearsay.
`
`VIII. Exhibit 2044
`
`Ex. 2044 is “Email communication between Dr. Neill H. Luebke and Bobby
`
`Bennett, dated June 27, 2010 and July 6, 2010.” In Ex. 2044, Mr. Bennett,2 a real
`
`party in interest, offered to license Dr. Luebke’s patented technology and
`
`intellectual property. Petitioner is trying to remove this critical evidence by
`
`alleging that Ex. 2044 is irrelevant under FRE 402 and 403, and hearsay under
`
`FRE 802. Petitioner is incorrect. These statements are admissions of a party
`
`opponent and are not hearsay under FRE 801(d)(2). That is, the statements in the
`
`email were made by Mr. Bennett and are now offered against Mr. Bennett, and his
`
`privy, Petitioner.
`
`Ex. 2044 is also relevant to all grounds instituted under 35 U.S.C. § 103.
`
`Evidence is relevant if it has any tendency to make the existence of any fact of
`
`consequence in determining the action more or less probable than it would be
`
`without the evidence. FRE 401. Indeed, the Federal Circuit recognizes that there is
`
`a “low threshold for relevancy.” OddzOn Products, Inc. v. Just Toys, Inc., 122 F.
`
`                                                            
`2 Mr. Bennett is a part-owner and officer of Petitioner.
`
`9
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`

`
`3d 1396, 1407 (Fed. Cir. 1997). It is well-settled in the context of obviousness that
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`licenses and offers to license are evidence of nonobviousness. See, e.g., In re
`
`GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). Evidence of nonobviousness is
`
`indisputably relevant to this proceeding. Graham v. John Deere Co. of Kansas
`
`City, 86 S.Ct. 684, 694 (1966). Petitioner cannot assert otherwise in good faith.
`
`Further, Petitioner’s allegation of prejudice is without merit. Ex. 2044 is an
`
`email correspondence between Patent Owner and Petitioner’s owner and officer.
`
`Petitioner, therefore, has always been aware of this evidence and cannot argue that
`
`it was surprised by it. Moreover, arguments of prejudice are better reserved for a
`
`jury, where risks of inducing an emotional response may reside. Consideration of
`
`Ex. 2044 is within the interests of justice.
`
`IX. Exhibit 2050
`
`Ex. 2050 is “Dentistry — Root-canal instruments — Part 1: General
`
`Requirements, dated February 17, 2005.” Petitioner argues that Ex. 2050 is not
`
`relevant because it was not cited in the Patent Owner Response. Petitioner is
`
`wrong. While not cited earlier, Ex. 2050 is clearly relevant. For example, counsel
`
`for Petitioner asked Dr. Luebke numerous questions during cross examination
`
`about ISO Standard 3630-1. See, e.g., Ex. 2045 at 57:14–62:21. Moreover, the ISO
`
`Standard 3630-1 is recited in the claims of the ’773 patent and in the examples. Ex.
`
`2050—a revision of ISO Standard 3630-1— is relevant to all grounds instituted in
`
`10
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`this trial.
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`
`Petitioner’s argument that it was prejudiced and deprived of preparing an
`
`advanced cross examination of Dr. Sinclair also has no merit. Exs. 1016 and 1017
`
`were submitted with the Petition. Ex. 1016 is the first edition of ISO Standard
`
`3630-1 and Ex. 1017 is the second edition. Ex. 2050 is a draft revision of Ex. 1016,
`
`which eventually became Ex. 1017. Indeed, most if not all substantive parts of Ex.
`
`2050 can be found in Ex. 1016, Ex. 1017, or both. Moreover, Petitioner has not
`
`pointed to anything in Ex. 2050 that it was deprived of. And, as noted above,
`
`arguments of prejudice are better reserved for a jury trial. The interests of justice
`
`favor consideration of Ex. 2050.
`
`Petitioner also alleges that Ex. 2050 lacks authentication. This is incorrect,
`
`as the appearance, contents, substance, internal patterns, and distinctive
`
`characteristics in Ex. 2050, taken with circumstances such as Dr. Luebke’s
`
`longtime service as an expert and convener for the ISO (Ex. 2028, ¶ 3) are
`
`sufficient to satisfy the requirements of FRE 901. Exs. 1016 and 1017 were
`
`submitted with the Petition. Except for identifying the warning on page 1,
`
`Petitioner has identified no differences with respect to the appearance, contents,
`
`substance, internal patterns, and distinctive characteristics between Ex. 2050 and
`
`Exs. 1016 and 1017. Indeed, Figs. 1-3 on pp. 4, 6 and 7 in Ex. 2050 are the same or
`
`substantially the same as Figs. 1-2 in Ex. 1017 at 10/26. The same is true for Figs.
`
`11
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`

`
`4-9 in Ex. 2050. The outline, substance, and appearance in Ex. 2050 are the same
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`or substantially the same as those in Exs. 1016 and 1017.
`
`X.
`
`Exhibits 2051 and 2052
`
`Ex. 2051 is “Kowalski Heat Treatment Company Purchase Order
`
`Certification, dated January 15, 2016.” Ex. 2052 is “Declaration of Nolan Knight,
`
`dated January 18, 2016.” Petitioner objected to Exs. 2051 and 2052 on February 3,
`
`2016. Paper 58. Patent Owner files herewith Substitute Ex. 2051 and Substitute Ex.
`
`2052. These exhibits were served on Petitioner on Feb. 18, 2016.
`
`Substitute Ex. 2051 is a declaration of David Lorenz and Ex. A, which is a
`
`certified work order signed by Mr. Lorenz. Ex. A is identical to original Ex. 2051,
`
`and states that parts bearing PIT042025 were annealed by immersing them in a
`
`molten salt bath at 400°C for 10 minutes and then quenched. Mr. Lorenz explains
`
`that Kowalski was asked to conduct a heat treatment on samples of endodontic
`
`files in accordance with a procedure described in Kuhn (Ex. 1019).
`
`Substitute Ex. 2052 is a declaration from Nolan Knight and Ex. A, which is
`
`a testing report for materials provided by Kowalski Heat Treating Co. Ex. 2052 at
`
`¶ 3; Ex. A at 4. Substitute Ex. 2052 states that the endodontic files were tested in
`
`accordance with section 7.5 of ISO 3630-1. Ex. 2052, ¶ 2; Ex. A at 6. And Ex.
`
`2052 states that the endodontic file test materials had less than 1 degree of
`
`permanent deformation after bend testing. Ex. 2052, ¶ 5; Ex. A at 7.
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`

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`Petitioner argues that Exs. 2051 and 2052 are not relevant under FRE 401-
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`Case IPR2015-00632
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`403. Contrary to Petitioner’s assertion, Exs. 2051 and 2052 are highly relevant to
`
`whether Kuhn anticipates or renders obvious certain claims of the ’773 patent. A
`
`key point of contention between the parties is whether Kuhn’s annealing process at
`
`400°C would have resulted in files capable of at least 10 degrees of permanent
`
`deformation as required by the claims. The information described in Exs. 2051 and
`
`2052 provides results of an experiment that recreated the relevant process in
`
`Kuhn. The results show that the heated files in Kuhn do not exhibit 10 degrees of
`
`permanent deformation after bend testing, as Petitioner erroneously asserts. Rather,
`
`the results, which show less than 1 degree of permanent deformation after bending,
`
`are consistent with Patent Owner’s interpretation of Kuhn (Paper 44 at 15-34) and
`
`with Kuhn’s own statements in the article (Ex. 1019 at 718). Patent Owner
`
`explained, through Dr. Sinclair’s testimony, that Kuhn Fig. 6A does not
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`demonstrate permanent deformation, and that the files remain superelastic. Paper
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`44 at 24-27. Patent Owner also explained, through Dr. Sinclair’s testimony, that
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`Dr. Goldberg’s interpretation of Kuhn Fig. 6A was incorrect and that his attempt to
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`correlate the information from Kuhn Fig. 6A to the ISO bend test was not credible.
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`See Ex. 1002, ¶ 135 (estimating 10.125 degrees of permanent deformation).
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`Counsel for Petitioner cross-examined Dr. Sinclair for over an hour on these exact
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`issues. E.g., Ex. 2037 at 220–254. Therefore, Exs. 2051 and 2052 are directly
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`relevant to determining the existence of a fact of consequence—namely, what
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`Kuhn discloses and which expert is credible. Determining the facts would be less
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`probable without this evidence and, therefore, the interests of justice are best
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`served with this evidence in the record.
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`Petitioner also argues that it was unfairly prejudiced by Patent Owner’s use
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`of Exs. 2051 and 2052 during Dr. Sinclair’s re-direct examination. But Exs. 2051
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`and 2052 are directly relevant to and within the scope of the questions Petitioner
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`asked Dr. Sinclair about Kuhn and his disagreements with Dr. Goldberg’s opinions
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`(noted above). Further, Petitioner asked Dr. Sinclair several questions about Dr.
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`Luebke’s testimony at the preliminary injunction hearing. And during Dr.
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`Luebke’s deposition, Petitioner introduced the court’s decision on the motion for
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`preliminary injunction. Ex. 1032. The Board should note that the preliminary
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`injunction was denied because the court concluded that there was a substantial
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`question of validity of the ’773 patent based on Kuhn. Ex. 1032 at 17. The Nov.
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`20, 2015 decision was after Patent Owner’s Response was submitted on Nov. 4,
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`and Patent Owner had no way of knowing that the district court would fail to
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`understand Kuhn. Once it was known that the court relied on Petitioner’s
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`mischaracterizations of Kuhn, Patent Owner sought to reproduce the relevant Kuhn
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`experiment. This test data is more relevant to the grounds based on Kuhn than any
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`other evidence of record. The interests of justice are served if the Board considers
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`this evidence. Further, if claims of the ’773 patent are canceled in view of an
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`incomplete understanding of Kuhn, then it is Patent Owner who would be unfairly
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`prejudiced.
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`Petitioner’s reliance on SK Innovation Co., v. Celgard, LLC, IPR2014-00679
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`(PTAB 2015), is misplaced. There, the Board did not establish a per se rule and
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`that decision is not binding in this panel. Moreover, that case is distinguishable
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`because the evidence was characterized by Patent Owner as merely “useful
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`background.” In this case, Exs. 2051 and 2052 corroborate Dr. Sinclair’s opinions
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`and credibility, discredit Dr. Goldberg’s opinions and credibility, and go to the
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`heart of the parties’ dispute concerning Kuhn.
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`XI. Portions of Exhibits 1038 and 1040
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`Petitioner moves to strike the portions of Exs 1038 and 1040 for the reasons
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`identified for Exs. 2044 and 2050-2052. Patent Owner submits that this motion
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`should be denied for the reasons identified for Exs. 2044 and 2050-2052. The
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`substantive arguments above are hereby incorporated by reference.
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`XII. Conclusion
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`Based on the foregoing, the Board should deny Petitioner’s motion to
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`exclude Ex. 2006, Ex. 2026, Ex. 2027, ¶¶37-40, 42, 43, and 45, Ex. 2028, ¶¶33, 40,
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`48, and 49, Ex. 2040, Ex. 2043, Ex. 2044, Ex. 2050, Ex. 2051, and Ex. 2052, and
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`portions of Exs. 1038 and 1040.
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`Respectfully submitted,
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`/ Joseph A. Hynds /
`By:
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`Date: March 16, 2016
`Joseph A. Hynds, Reg. No. 34,627
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`ROTHWELL, FIGG, ERNST &
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` MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
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`Counsel for Patent Owner
`Gold Standard Instruments, LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 16th day of March 2016, a true and correct copy
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`Case IPR2015-00632
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`of the foregoing PATENT OWNER’S OPPOSITION TO PETITIONER’S
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`MOTION TO EXCLUDE was served, via electronic mail upon the following
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`counsel for Petitioner US Endodontics, LLC:
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`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
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`
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.