`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________________________
`US ENDODONTICS LLC,
` Petitioner,
`-against-
`GOLD STANDARD INSTRUMENTS, LLC,
` Patent Owner.
`
`Case No. IPR 2015-00632
`_________________________________________
` April 1, 2016
` 1:00 p.m.
`
` T R A N S C R I P T
` O F
` P R O C E E D I N G S
`
`B E F O R E:
` JOSIAH C. COCKS,
` Administrative Patent Judge
` HYUN J. JUNG, Administrative
` Patent Judge
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`212-279-9424
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`Veritext Legal Solutions
`www.veritext.com
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`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Page 2
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`A P P E A R A N C E S:
`
`PATTERSON BELKNAP WEBB & TYLER LLP
` Attorneys for Petitioner
`1133 Avenue of the Americas
`New York, New York 10036
` BY: JEFFREY S. GINSBERG, ESQ.
` jginsberg@pbwt.com
` ABHISHEK BAPNA, ESQ.
` abapna@pbwt.com
`
`ROTHWELL, FIGG, ERNST & MANBECK
` Attorneys for Patent Owner
`607 14th Street, N.W.
`Washington, DC 20005
` BY: STEVEN LIEBERMAN, ESQ.
` slieberman@rfem.com
` C. NICHOLE GIFFORD, ESQ.
` ngifford@rfem.com
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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`
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`Page 3
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` PROCEEDINGS
` HON. COCKS: Good afternoon.
` This is Judge Cocks. I have with me
` on the call Judge Jung. This is a
` conference call for IPR 2015-00632.
` It sounds like we have quite a
` few parties on the call. We'll start
` with Petitioner. Do we have counsel
` for Petitioner?
` MR. GINSBERG: Yes, you do, your
` Honor. This is Jeff Ginsberg for U.S.
` Endodontics. With me is back-up
` counsel Abhishek Bapna.
` HON. COCKS: Thank you,
` Mr. Ginsberg. Do we have counsel for
` Patent Owner?
` MR. LIEBERMAN: This is Steve
` Lieberman for the Patent Owner and
` with me is Nicky Gifford.
` HON. COCKS: Thank you,
` Mr. Lieberman. I do understand there
` is a court reporter. Who arranged for
` the court reporter on this call?
` MR. GINSBERG: Petitioner did,
` your Honor.
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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`Page 4
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` PROCEEDINGS
` HON. COCKS: Mr. Ginsberg, once
` you have a transcript for the call,
` please file it as an exhibit?
` MR. GINSBERG: Absolutely.
` HON. COCKS: Thank you.
` I understand, Mr. Ginsberg, you
` requested this call because of
` objections to Patent Owner's
` demonstratives. Why don't you fill us
` in?
` MR. GINSBERG: Yes, your Honor.
` The parties exchanged
` demonstratives a couple days ago, had
` a meet-and-confer conference a couple
` days ago where we resolved many
` issues, but there are still some
` outstanding objections to Patent
` Owner's demonstratives we would like
` to address with the board.
` I believe Ms. Gifford, earlier
` today, had sent the slides that are at
` issue. I am not sure if the board has
` those but essentially, in a nutshell,
` there are 12 of the demonstrative
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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`Page 5
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` PROCEEDINGS
` slides that the patent owner wants to
` include with their presentation that
` we believe runs afoul of this Court's
` Order Number 64, which referred us to
` the CBS Interactive case as well as
` the St. Jude Medical case.
` The problems we have with these
` slides are that they mischaracterize
` the record and they also include
` evidence that are not discussed in any
` paper.
` So specifically, if we go to the
` first slide to which there is an
` objection, which was slide 15 in their
` original presentation, they include a
` particular thermogram. It is a figure
` from one of the references that is at
` issue in this case. It is the Kuhn
` reference, which is Exhibit 1019.
` Specifically they refer to Figure 4A.
` In the heading of this slide
` they refer to their expert, who is
` Dr. Sinclair, and indicate that
` Dr. Sinclair's declaration shows
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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`Page 6
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` PROCEEDINGS
` Kuhn's files remained superelastic.
` Then they have this Figure 4A, this
` picture of a DSC thermogram in support
` of that heading.
` However, Dr. Sinclair never
` argued that the DSC thermogram
` depicted in Figure 4A shows that the
` Kuhn heat-treated files remained
` superelastic. In fact, in paragraph
` 75 of the Sinclair declaration, which
` is Exhibit 2026, he stated, "One of
` ordinary skill in the art would not be
` able to determine whether the
` heat-treated files in Kuhn would meet
` the 'wherein' clause and claims of the
` '773 patent relying only on the DSC
` thermograms.
` Again, we believe this to be an
` improper characterization of the
` record and we maintain that the oral
` hearing is not an opportunity for a
` party to expand upon its reliance on
` declaration testimony in a matter not
` previously presented.
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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`Page 7
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` PROCEEDINGS
` HON. COCKS: Mr. Ginsberg, if I
` understand, is your objection for this
` particular slide really to the heading
` of the slide?
` MR. GINSBERG: That is correct,
` your Honor.
` HON. COCKS: I guess I would
` like to hear from Mr. Lieberman. Do
` you have any response?
` MR. LIEBERMAN: I do, your
` Honor. Maybe we can shorten this a
` bit because I think the same issue
` applies to slides 15 to 17 and 20 to
` 23. So, you can probably deal with
` seven slides all at one wallop.
` Each of these seven slides, the
` pictures depicted come -- the pictures
` are actually reproduced in the
` Sinclair declaration, which is
` Exhibit 2026. So if you look at
` paragraph 75 for slide 15, that
` thermogram is there. For the next
` slide, slide 16, that picture is there
` in paragraph 79. It's reproduced
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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`Page 8
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` PROCEEDINGS
` identically from the declaration.
` As I understand it, Petitioner's
` problem is they don't like the way we
` characterized these seven slides. The
` title on this is a summary of the
` section of the Sinclair declaration
` from which this comes.
` As you know, a big issue in this
` case is Kuhn and whether or not the
` Kuhn files that were tested, the ones
` that were heated -- or the one that
` was heated at 400 degrees remained
` superelastic or not. That is what
` Sinclair deals with for about 15
` pages, and that's the title we put in.
` HON. COCKS: It sounds like, if
` I understand Mr. Ginsberg's take,
` there isn't an objection to the images
` that are represented. And it sounds
` like they simply come from the record,
` and that is generally appropriate
` content for demonstrative exhibits.
` Sound more like Mr. Ginsberg believes
` the heading is itself an argument that
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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` PROCEEDINGS
` was not essentially made as part of
` the record here.
` I will inform both parties that
` certainly demonstrative exhibits, they
` are not briefing. They are in fact
` not evidence. It is simply supposed
` to relay in a summary fashion what is
` intended to be discussed at the oral
` argument and should only be content of
` the record. So, I want both parties
` to understand that.
` Mr. Lieberman, whether I
` necessarily agree right now whether it
` is additional argument, would you have
` any objection simply to omitting the
` heading? And it sounds like that
` would alleviate Mr. Ginsberg's concern
` for these particular slides.
` Is that correct, Mr. Ginsberg?
` Would that solve the issue for these
` slides?
` MR. GINSBERG: That would, your
` Honor.
` HON. COCKS: Would you be
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` PROCEEDINGS
` willing to do that?
` MR. LIEBERMAN: Not only, your
` Honor, are we willing to do that. We
` specifically offered that to the
` Petitioner. And he said, "No, you are
` stuck with the slides that you
` submitted on the date. You can't make
` changes and we are not going to
` consent to an alteration."
` MR. GINSBERG: Mr. Lieberman,
` you were not on that call. That
` comment was -- we're going to get to
` that slide.
` I apologize for jumping in, but
` Mr. Lieberman was not on that call.
` There was never an offer to take that
` the heading off this slide. We will
` get to a slide later on where Patent
` Owner started suggesting modifications
` to the slide. That comes up on slide
` 30.
` MS. GIFFORD: This is Nichole
` Gifford. I was on the call and your
` position very clearly during the
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`US ENDODONTICS, LLC, Petitioner
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` PROCEEDINGS
` meet-and-confer yesterday,
` Mr. Ginsberg, was you were not
` accepting any modifications to any
` slides. We were going through each
` individual slide, talking about what
` the issues were.
` That was definitely a concession
` we were willing to make but you
` refused any modifications and informed
` me that if that was our response we
` could bring it to the board.
` HON. COCKS: Let me interrupt.
` This is Judge Cocks.
` I don't want this call to get
` into he said/she said. Regardless of
` what happened before, we can resolve
` the issue now. I believe that is
` sufficient, at least with these
` particular slides.
` Mr. Lieberman, if you are
` willing to omit -- I think on these
` seven slides, I am not sure what
` particular ones they are but I believe
` it is the heading "Dr. Sinclair's
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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`Page 12
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` PROCEEDINGS
` Declaration Exhibit 2026 Shows Kuhn's
` Files Remains Superelastic."
` If you are willing to omit
` those, I believe I understand that
` that resolves the issue for those
` slides.
` MR. LIEBERMAN: We are, your
` Honor. It would be slides 15, 16, 17,
` 20, 21, 22 and 23.
` HON. COCKS: Thank you,
` Mr. Lieberman.
` Mr. Ginsberg, just to clarify,
` that resolves the issue with respect
` to those slides that were just listed?
` MR. GINSBERG: It does, your
` Honor.
` HON. COCKS: Thank you. Do you
` have some other points?
` MR. GINSBERG: The next slide
` that comes up is slide 27. In this
` slide it refers to Exhibit 2024, and
` specifically they are presenting
` Figure 4 that appears on page 518 of
` this exhibit.
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`US ENDODONTICS, LLC, Petitioner
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` PROCEEDINGS
` This Figure 4 on page 518 was
` not referenced in any of their papers
` and we believe that it is improper for
` them to be referring to it for the
` first time in a demonstrative slide as
` this is evidence not discussed in any
` paper.
` HON. COCKS: Just so I
` understand, it is currently part of
` the record but it was not relied upon
` as part of any briefing?
` MR. GINSBERG: Correct. There
` is no reference to Figure 4 on page
` 518 in any briefing.
` HON. COCKS: Mr. Lieberman, is
` that the case? And if so, what is the
` purpose of Figure 4 as part of slide
` 27?
` MR. LIEBERMAN: That is not the
` case, your Honor. This particular
` document is referred to and discussed
` in some detail at pages 27 and 28 of
` the Patent Owner's response. And the
` clamp that you see in the picture on
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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` PROCEEDINGS
` the right of slide 27 is specifically
` referred to on page 28.
` Additionally, in Kuhn 2001, "The
` cloud had to be clamped to maintain a
` bend for SEM testing." That refers to
` the Exhibit 2024.
` I think Mr. Ginsberg's objection
` is that we didn't say "Figure 4" on
` the page. We referred to the clamp
` but we didn't say "Figure 4." I might
` be wrong but that is what he -- that
` is what I understand he said during
` the conference.
` HON. COCKS: Mr. Ginsberg, do
` you disagree that the content of the
` Patent Owner's response at 27 to 28
` makes at least implicit reference to
` Figure 4, the Figure 4 shown on slide
` 27?
` MR. GINSBERG: It does talk
` about that -- again, while we disagree
` that this has any relevance to their
` position because they are talking
` about a very sharp curve needs to be
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`Page 15
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` PROCEEDINGS
` maintained for this SEM examination,
` the scanning electron microscopy
` examination, that reference does say
` for doing that type of analysis you
` clamp it to have this very sharp
` curve. So yes, there is that
` reference to it.
` The issue we had is they had
` never cited specifically to Figure 4
` or shown that figure.
` HON. COCKS: Let me say this,
` for both parties' benefit. Certainly
` demonstratives aren't intended to have
` new argument. But to the extent they
` do have new argument and the parties
` concerned -- the panel will not be
` relying on the demonstratives for any
` new argument and it is not part of
` briefing.
` If in the event there is
` something that is characterized as new
` argument as part of the demonstratives
` or as a part of this hearing, that
` will not factor into the panel's
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` PROCEEDINGS
` decision in this case; in any case,
` but particularly this case.
` Mr. Ginsberg, with that in mind,
` does that alleviate some concern you
` have with respect to slide 27?
` MR. GINSBERG: It does, your
` Honor.
` MR. LIEBERMAN: Your Honor, this
` is Steve Lieberman.
` Let me be very clear. We
` understand PTAB's rules with respect
` to slides and particularly the
` principle you articulated, which is
` why you are not seeing any dispute in
` front of you regarding their slides.
` There are the same sorts of --
` if you want to call them deficiencies;
` I don't think they are -- with respect
` to their slides, but we know the
` slides are not evidence so we didn't
` bother to bring those issues to the
` panel.
` MR. GINSBERG: Mr. Lieberman, I
` am not sure of the point of this. But
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` PROCEEDINGS
` you objected to our slides, and we
` agreed to remove them. That's why
` they are not before the board. I am
` not sure of the point of your
` position.
` HON. COCKS: I don't think we
` need to go further with this. I
` believe with respect to what I just
` said and how the panel will approach
` the demonstratives in the hearing, I
` believe both parties now agree slides
` 27 can remain in the record with the
` caveat that to the extent the panel
` determines it is addressing or the
` content of the slide is used for a new
` argument, it won't be considered as a
` part of any final decision in this
` case.
` Mr. Lieberman, is that
` understood? And Mr. Ginsberg --
` first, Mr. Lieberman, is that
` understood?
` MR. LIEBERMAN: We can't use the
` slides to make new arguments. Yes.
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`US ENDODONTICS, LLC, Petitioner
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` PROCEEDINGS
` HON. COCKS: Mr. Ginsberg, are
` you okay with leaving slide 27 as is
` with the understanding that if it is
` new argument it won't be considered?
` MR. GINSBERG: Yes, your Honor.
` HON. COCKS: Thank you.
` Do we have some more points?
` MR. GINSBERG: We do. Just a
` few more.
` We are moving to slide 30 right
` now. This one, there are a couple of
` points here. They are alleging that
` there is two additions of the ISO 3630
` standard. There is a first edition
` published in 1992 and a second edition
` that was published in 2008.
` On this slide the Patent Owner
` refers to the 1992 edition of the ISO
` standard which requires that the
` working part of an endodontic file to
` be a stainless or carbon steel alloy.
` Then they have the subheading that
` that standard does not relate to
` nickel-titanium endodontic file.
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` That argument had never been
` presented previously, that the ISO
` standard does not relate to
` nickel-titanium files. As your Honor
` is aware, the claims require that the
` files that are heat-treated in
` accordance with the claim,
` specifically the shank, when they are
` bent in accordance with the bend test
` set forth in that standard, achieve a
` certain level of deformation.
` Neither their experts nor Patent
` Owner has ever taken a position that
` the 1992 standard does not relate to
` nickel-titanium endodontic files.
` In addition, they include in the
` slide, under the heading that "The
` 1992 ISO does not fill in the gaps in
` Petitioner's proof," they say that the
` claims are directed to a process, not
` files. They also have not argued that
` before.
` The claims are directed to a
` method of heat-treating
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
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`Page 20
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` PROCEEDINGS
` nickel-titanium endodontic files. For
` them to try to distance themselves
` from the ISO standard in a new manner
` which neither of their experts has
` ever raised we believe to be improper.
` HON. COCKS: Mr. Lieberman, do
` you have a response to these two
` items?
` MR. LIEBERMAN: We think that
` the slide fairly encompasses the
` arguments at pages 34 to 36 of the
` Patent Owner's response.
` Mr. Ginsberg, I understand, raised the
` issue of the word "relate" in his
` conversations with Ms. Gifford.
` Ms. Gifford offered to change the word
` "relate" to "discuss."
` Our intention it not to raise a
` new argument, but this is a fight
` about how you summarize three pages of
` briefs in one slide. If Mr. Ginsberg
` is upset about the word "relate," we
` offered to change the word. He said
` we were stuck with the slide.
`
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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`Page 21
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` PROCEEDINGS
` I repeat my offer to change the
` word "relate" to "discuss."
` Otherwise, I think it fairly
` characterizes what is in the brief.
` MR. GINSBERG: Your Honor, the
` issue that we have is none of their
` experts indicated that the ISO
` standard does not relate. So now
` there is an offer to change "relate"
` to "discuss."
` None of their experts tried to
` distinguish our reliance on the 1992
` ISO standard by saying the claims are
` directed to a process not filed. I
` pointed that out during the call.
` That still stays in there.
` We believe this slide is
` presenting evidence that is not
` discussed in any paper -- I'm sorry --
` is presenting an argument not
` contained in any prior briefing and it
` mischaracterizes the record and should
` be excluded.
` HON. COCKS: So do you disagree
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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`Page 22
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` PROCEEDINGS
` that the content of the Patent Owner's
` response at 34 to 36 is directed in
` some fashion to discussion of the
` nickel-titanium endodontic files not
` being a part of or not being subject
` matter that is associated with the
` 1992 ISO and it doesn't
` characterize -- it doesn't draw a
` distinction between a process and
` files themselves?
` MR. GINSBERG: On the second
` point, the answer is yes, your Honor.
` On the first point, the point is again
` the claims require that a certain
` amount of deformation be achieved when
` the files are tested in accordance
` with this 1992 ISO standard.
` It has never been a position
` that was taken by the Patent Owner
` that the standard itself does not
` relate to nickel-titanium endodontic
` files and therefore reliance on the
` same does not support our position.
` That's the problem that we have.
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`US ENDODONTICS, LLC, Petitioner
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` HON. COCKS: Mr. Lieberman, I
` would like to ask you a question. You
` just referred to pages 34 and 36 of
` your response. So, you disagree with
` Mr. Ginsberg that those pages of the
` response are stating that the 1992 ISO
` does not pertain to nickel-titanium
` endodontic files?
` MR. LIEBERMAN: I have to
` confess, your Honor, I don't entirely
` understand the point he is making.
` Let me read some words that sound a
` lot like what he is complaining about.
` It is at page 33 of the POPR and
` it reads, "The 1992 ISO nowhere
` discusses nickel-titanium files. It
` only discusses stainless and carbon
` steel files." That's from page 33 of
` the POPR.
` So, to the extent there is a
` difference between that and what is in
` the slide, I am not smart enough to
` figure it out.
` HON. COCKS: Let me stop you
`
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`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
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` PROCEEDINGS
` there. Mr. Ginsberg, that sounds a
` lot like an argument saying -- it
` admittedly didn't use the word
` "relate," but it seems like it might
` be a little pedantic. It sounds like
` what was just read is a fair
` characterization of what at least that
` first part of the slide looks like to
` me.
` MR. GINSBERG: Your Honor, I
` need to go to that page.
` Mr. Lieberman is just bringing this on
` me. The citation on the slide is to
` paper 44, pages 34 to 36.
` MS. GIFFORD: For the record, I
` would like to point out there is a
` specific citation included within the
` first bullet point, which is what
` Mr. Lieberman just read, to
` Exhibit 1016 at page 8.
` HON. COCKS: I think this is
` enough. At first blush, at least that
` first part, I don't really see that as
` necessarily being a new argument. To
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` PROCEEDINGS
` the extent it is and we determine it
` is, as I mentioned before, it won't
` factor in.
` I hope that would alleviate, at
` least for the first part of the slide,
` Mr. Ginsberg, alleviate your concern.
` I don't want to really get into nickel
` and diming a particular word.
` So I understand, the panel
` understands your objection here and
` your concern. To the extent that it
` is new argument, it won't be
` considered. I hope that offers you
` some -- addresses at least in part
` your concern.
` Now with respect to the second
` item, this distinction between process
` and files, Mr. Lieberman, is that a
` point that has been made as a part of
` briefing to the board?
` MR. LIEBERMAN: I don't
` understand the argument so I am
` probably not going to be making this
` new sophisticated argument
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`US ENDODONTICS, LLC, Petitioner
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` PROCEEDINGS
` Mr. Ginsberg thinks I am making
` because I don't understand what he is
` saying. I don't know what the
` distinction is.
` MR. GINSBERG: Your Honor, with
` regard to the first point, the
` standard, the ISO 3630 standard
` appears in the claim of the patents
` themselves. It doesn't say the 1992
` edition, which was the only edition
` that was published at the time that
` the application was filed and
` prosecuted. The next edition, the
` second edition of the ISO standard
` came out in 2008.
` So, if they are really taking
` the position that this ISO standard
` doesn't relate to nickel-titanium
` files, it seems to me an admission
` that the claims are invalid under 35
` USC section 112, which I understand is
` not before the board.
` The problem I have is they seem
` to be suggesting that, well, you can't
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` rely on the ISO first edition of the
` standard, the only standard that was
` in place during the prosecution of
` these claims, to suggest that you can
` refer to that standard to tell you how
` to bend a file.
` So --
` HON. COCKS: Let me interrupt.
` I understand the point you are
` starting to make. But this call is
` not intended to be a preliminary oral
` argument. I have heard that you have
` had concern about the line, the first
` part of the line of slide 30 but I am
` not going to require at this time that
` it be omitted, again with the
` understanding that if the panel
` determines that it is new argument, it
` won't be considered as part of the
` final written decision.
` I would like to move to the
` second item, that the claims are
` directed to process and not file.
` MR. GINSBERG: It is a similar
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` argument, your Honor. With that
` understanding, for them to try to
` distinguish -- to try to object to any
` of our reliance on that ISO standard
` by saying, well, the claims don't
` pertain to the files themselves, it's
` just a process for making the files,
` again the issue we have is the claims
` themselves refer to the ISO standard
` and the only standard that was in
` place was the 1992 standard.
` But with the understanding and
` the explanation your Honor provided
` and the admonition to the Patent Owner
` that they cannot make new argument, I
` do understand the board's position.
` HON. COCKS: Okay. Let me make
` this point. As a part of the formal
` oral argument, the Patent Owner will
` have opportunity to oppose the
` Petitioner's initial case and
` Petitioner will have opportunity to
` reply to that opposition.
` So, to the extent that you want
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` PROCEEDINGS
` to identify to the board what you
` believe to be a new argument, you will
` be free to do so there, and we will
` take that under advisement.
` MR. GINSBERG: I appreciate
` that, your Honor. Understood. Thank
` you.
` HON. COCKS: Are there any other
` issues that are distinct from what we
` have just discussed there that merit
` further consideration here, or with
` the understanding that new arguments
` won't factor into our decision, does
` that resolve everything else?
` If it does not, please raise it
` now.
` MR. GINSBERG: Your Honor, I
` think that should cover the remaining
` issues.
` HON. COCKS: Well, thanks to
` both sides. I think what we drew from
` this is that, Mr. Lieberman, for
` slides 15, 17, 20, 21, 23, please just
` omit the heading, and that sounds like
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` that is the only modification that
` needs be made to the demonstratives
` that will be filed with the board.
` Is that accurate, Mr. Ginsberg?
` MR. GINSBERG: Just one
` clarification. I believe it is slides
` 15 to 17 and 20 to 23.
` HON. COCKS: Mr. Lieberman, is
` that correct and is that understood?
` MR. LIEBERMAN: It is correct,
` and we have no objection to that, as I
` had indicated, your Honor.
` Can we leave the very pretty
` blue and red box on the top of the
` page? Just a joke.
` HON. COCKS: I understand. I
` imagine Mr. Ginsberg does not have an
` issue with the aesthet