UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`US ENDODONTICS, LLC,
`Petitioner,
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`v.
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`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner.
`
`Case IPR2015-00632
`Patent 8,727,773 B2
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION
`TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(C)
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`TABLE OF CONTENTS
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`TABLE OF CONTENTSTABLE OF CONTENTS
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`PAGE
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`11
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`I.
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`I.I.
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`EXHIBIT 2006 ................................................................................................ 1
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`EXHIBIT 2006 .............................................................................................. ..1EXHIBIT 2006 .............................................................................................. ..1
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`II.
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`II.II.
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`EXHIBIT 2026, ¶ 51 ....................................................................................... 1
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`EXHIBIT 2026, ‘H 51 ..................................................................................... ..1EXHIBIT 2026, ‘H 51 ..................................................................................... ..1
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`III. EXHIBIT 2027, ¶¶ 37-40, 42, 43, AND 45 .................................................... 1
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`III.III.
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`EXHIBIT 2027, ‘M 37-40, 42, 43, AND 45 .................................................. ..1EXHIBIT 2027, ‘M 37-40, 42, 43, AND 45 .................................................. ..1
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`IV. EXHIBIT 2028, ¶¶ 33, 40, 48, AND 49 .......................................................... 2
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`IV.IV.
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`EXHIBIT 2028, ‘H 33, 40, 48, AND 49 ........................................................ ..2EXHIBIT 2028, ‘H 33, 40, 48, AND 49 ........................................................ ..2
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`V.
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`V.V.
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`EXHIBIT 2040 ................................................................................................ 3
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`EXHIBIT 2040 .............................................................................................. ..3EXHIBIT 2040 .............................................................................................. ..3
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`VI. EXHIBIT 2043 ................................................................................................ 3
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`VI.VI.
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`EXHIBIT 2043 .............................................................................................. ..3EXHIBIT 2043 .............................................................................................. ..3
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`VII. EXHIBIT 2044 ................................................................................................ 3
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`VII. EXHIBIT 2044 .............................................................................................. ..3VII. EXHIBIT 2044 .............................................................................................. ..3
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`VIII. EXHIBIT 2050 ................................................................................................ 3
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`VIII. EXHIBIT 2050 .............................................................................................. ..3VIII. EXHIBIT 2050 .............................................................................................. ..3
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`IX. EXHIBITS 2051 AND 2052 ........................................................................... 4
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`IX.IX.
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`EXHIBITS 2051 AND 2052 ......................................................................... ..4EXHIBITS 2051 AND 2052 ......................................................................... ..4
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`i
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`I.
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`EXHIBIT 2006
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`Patent Owner argues that the Voskuil declaration “constitutes testimony in
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`this proceeding,” and that “Petitioner could have cross-examined Voskuil, but
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`chose not to.” Patent Owner has it backwards. Real party-in-interest Tulsa Dental
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`could have submitted a declaration in this proceeding from its employee, Mr.
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`Voskuil, but chose not to. Thus, Petitioner could not cross-examine him without
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`requesting additional discovery and satisfying the relatively high “necessary in the
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`interest of justice” hurdle. 35 U.S.C. ¶ 316(a)(5)(B). Further, FRE 807 is
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`inapplicable to Voskuil’s conclusory statement in Exhibit 2006, ¶ 9, which
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`provides no details of the manufacturing process at issue. Notably, Patent Owner
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`does not argue that this statement satisfies the requirements of FRE 807(3) and (4).
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`II. EXHIBIT 2026, ¶ 51
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`In Exhibit 2026, ¶ 51, Dr. Sinclair essentially parrots a statement from Dr.
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`Lemon’s declaration, see Ex. 2028, ¶ 33, the sole basis for which came from a
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`hearsay statement made by Patent Owner’s counsel and communicated to Dr.
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`Lemon during a “background discussion.” Paper 62, p. 6. Such biased hearsay
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`statement is inadmissible under FRE 702/802, notwithstanding FRE 703. Id. at 3.
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`III. EXHIBIT 2027, ¶¶ 37-40, 42, 43, AND 45
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`The statements in paragraphs ¶¶ 37-40, 42, 43, and 45 of Exhibit 2027 are
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`hearsay for which no exception applies. In ¶¶ 37-40, and 42-43, the declarants
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`1
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`allegedly asserted their lack of interest in commercializing the invention recited in
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`the ’773 patent, and Patent Owner seeks to prove the truth of those matters, i.e.,
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`that the invention met with skepticism. Regarding ¶¶ 42 and 43, FRE 801(d)(2) is
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`inapplicable because Mr. Bennett’s alleged statements would have been made as a
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`representative of non-party D&S Dental, his employer at that time. Indeed, such
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`statements were alleged to have been made prior to the formation of Petitioner US
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`Endo. See Ex. 2010. Patent Owner does not attempt to argue that FRE 801(d)(2)
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`applies to the alleged statement by non-party Derek Heath in ¶ 43. Regarding ¶ 45
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`and commercial success, Dr. Luebke admitted on cross-examination that the sole
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`support for his statement regarding the Vortex Blue being covered by the ’773
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`patent is a statement by Mr. Voskuil. Ex. 1038, 172:7-173:9. Dr. Luebke may not
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`simply transmit such hearsay to the Board.
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`IV. EXHIBIT 2028, ¶¶ 33, 40, 48, AND 49
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`In the identified paragraphs from Exhibit 2028, Dr. Lemon merely parrots
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`hearsay statements of Patent Owner’s counsel (¶ 33) and of other endodontists (¶¶
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`40, 48, and 49). See Paper 62, pp. 6-7. FRE 703 is inapplicable to at least ¶ 33 as it
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`would not be reasonable for an expert to rely on such unsupported statements from
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`Patent Owner’s counsel. FRE 703 is also inapplicable because Dr. Lemon is a fact
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`witness, not an expert witness. See, e.g., Ex. 1039, 22:18-19 (“[A]s far as the
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`details of the [’773] patent and its art, I am not an expert in that field.”).
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`2
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`V. EXHIBIT 2040
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`Mr. Huddie’s statements are not admissions of a party opponent. As Mr.
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`Huddie’s e-mail states, he and the Westbury Group were advisors for non-party
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`D&S Dental. Such statements were made before Petitioner was even formed. See
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`Ex. 2010. Further, Patent Owner fails to make the requisite showing of
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`admissibility under FRE 807.
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`VI. EXHIBIT 2043
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`The identified statements in Exhibit 2043 are hearsay because Patent Owner
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`relies on such statements to prove the truth of the matter asserted, i.e., that others
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`praised the alleged invention of the ’773 patent. No exception applies.
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`VII. EXHIBIT 2044
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`Mr. Bennett’s statements were not made in his individual capacity, but in his
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`capacity as a representative of non-party D&S Dental. Indeed, the e-mail is dated
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`prior to the formation of Petitioner US Endo. See Ex. 2010. The exhibit is also
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`irrelevant because the application for the ’773 patent was not filed until nearly two
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`years after the e-mail exchange. Finally, Patent Owner’s claim of lack of prejudice
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`is wrong. Paper 62, p. 9.
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`VIII. EXHIBIT 2050
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`Again, Patent Owner’s claim of lack of prejudice resulting from its untimely
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`disclosure of this exhibit is wrong. Id. at 10-11. Further, Patent Owner’s
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`3
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`unsupported statement that Exhibit 2050 is relevant to all grounds instituted in this
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`trial lacks any explanation and is entirely unclear. Regarding the lack of
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`authentication, that the exhibit “appears” similar to Exhibits 1016 and 1017 does
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`not cure Patent Owner’s failure to lay a proper foundation. Id. at 11.
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`IX. EXHIBITS 2051 AND 2052
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`Patent Owner’s claim that Petitioner suffered no prejudice by Patent
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`Owner’s calculated decision to hold back the introduction of Exhibits 2051 and
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`2051 until the re-direct examination of its expert, Dr. Sinclair, is wrong. Id. at 12.
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`Patent Owner’s excuse for such untimely disclosure is disingenuous. Patent Owner
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`has known since the August 5, 2015 institution decision in this proceeding that the
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`Board agreed preliminarily with Petitioner that Kuhn renders unpatentable the
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`claims of the ’773 patent. Paper 29 at 15-25. There is no legitimate excuse for
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`Patent Owner’s improper and prejudicial delay. Thus, Exhibits 2051 and 2052 are
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`inadmissible under FRE 403.
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`Further, Patent Owner provided no evidence that the files Patent Owner
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`allegedly tested in January 2016 are the same as the files tested in the 2002 Kuhn
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`reference. Small differences in a number of variables such as file composition, file
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`design, and the manufacturing steps can materially affect the relevant
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`characteristics of the file. Ex. 1040, 44:4-8 (Patent Owner’s own expert explaining
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`that “nickel titanium is a rather complicated material” and that “its precise history
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`4
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`and . . . composition, are important to how it behaves and . . . how it might alter
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`under heat treatment conditions.”). Indeed, during prosecution of the application
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`for the ’773 patent, Dr. Luebke himself quoted portions of several prior art
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`references in support of this proposition in order to traverse a prior art rejection.
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`See, e.g., Ex. 1008, p. 149 (“The transformation is sensitive to factors such as
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`material composition, deformation processing, and heat treatments. . . . There are
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`many processing parameters which can influence the mechanical, thermal, and
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`bioreactive properties . . . .”). The prior art reference that formed the basis for the
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`rejection that Dr. Luebke was attempting to traverse is also in accord. See, e.g., id.
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`at 152 (“[T]ransformation temperatures are determined by, among other factors,
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`the ratio of nickel and titanium in the alloy. [T]he transformation temperatures are
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`extremely sensitive to very small changes in the Ni-Ti composition.”).
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`Accordingly, Exhibits 2051 and 2052 are also inadmissible for lack of relevance.
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`FRE 401.
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`Dated: March 23, 2016
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`/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
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`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036-6710
`Tel.: (212) 336-2000
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`5
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`

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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on March 23,
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`2016, the foregoing PETITIONER’S REPLY IN SUPPORT OF ITS MOTION
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`TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(C) was served via
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`electronic mail on the following counsel of record for the Patent Owner:
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`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)