throbber
Page 1
`
`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
`
`12
`
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 2
`
`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
`
`12
`
`34
`
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 3
`
` 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.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 4
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 5
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 6
`
` 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.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 7
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 8
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 9
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 10
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 11
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 12
`
` 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.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 13
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 14
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 15
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 16
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 17
`
` 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.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 18
`
` 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.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 19
`
` PROCEEDINGS
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 20
`
` 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.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 21
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 22
`
` 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.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 23
`
` PROCEEDINGS
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 24
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 25
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 26
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 27
`
` PROCEEDINGS
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 28
`
` PROCEEDINGS
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 29
`
` 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
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`212-490-3430
`
`IPR2015-00632 – Ex. 1043
`US ENDODONTICS, LLC, Petitioner
`
`

`
`Page 30
`
` PROCEEDINGS
` 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

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket