UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`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 STNADARD INSTRUMENTS, LLC
`Patent Owner
`____________________
`
`CASE IPR2015-00632
`Patent 8,727,773 B2
`____________________
`
`PETITIONER’S FIRST SET OF OBJECTIONS
` TO PATENT OWNER’S EXHIBITS
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`US ENDODONTICS, LLC,
`Petitioner
`
`v.
`
`GOLD STNADARD INSTRUMENTS, LLC
`Patent Owner
`____________________
`
`CASE IPR2015-00632
`Patent 8,727,773 B2
`____________________
`
`PETITIONER’S FIRST SET OF OBJECTIONS
` TO PATENT OWNER’S EXHIBITS
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`Table of Contents
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`I. OBJECTION TO EXHIBITS 2001 (SUBSTITUTE),
`2002 (SUBSTITUTE), 2004, 2014, 2021, AND 2022 ............................................ 1
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`II. OBJECTION TO EXHIBIT 2006 ............................................................................ 3
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`III. OBJECTION TO EXHIBIT 2019 ............................................................................ 4
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`IV. OBJECTION TO EXHIBIT 2020 ............................................................................ 5
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`i
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`Cases
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`
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`Table of Authorities
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`
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`Baugh ex rel. Baugh v. Cuprum S.A. de C.V.,
` 730 F.3d 701 (7th Cir. 2013) .................................................................................... 5
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`
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`Rules
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`Fed. R. Evid. 106 ............................................................................................................ 3
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`Fed. R. Evid. 401 ................................................................................................ 2, 3, 4, 5
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`Fed. R. Evid. 402 ................................................................................................ 2, 3, 4, 5
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`Fed. R. Evid. 403 ................................................................................................ 2, 3, 4, 5
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`Fed. R. Evid. 802 .................................................................................................... 3, 4, 5
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`Regulations
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`37 C.F.R. § 42.62 ........................................................................................................... 1
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`37 C.F.R. § 42.64 ........................................................................................................... 1
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`ii
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner US Endodontics, LLC (“US
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`Endo”) submits the following objections to Exhibits 2001-2002, 2004, 2006, and
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`2019-2022 submitted by Patent Owner Gold Standard Instruments, LLC (“GSI”),
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`and any reference to or reliance on the foregoing. As required by 37 C.F.R
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`§ 42.62, US Endo’s objections below apply the Federal Rules of Evidence.
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`I.
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`OBJECTION TO EXHIBITS 2001 (SUBSTITUTE), 2002
`(SUBSTITUTE), 2004, 2014, 2021, AND 2022
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`Exhibits 2001 (substitute), 2002 (substitute), 2004, 2014, 2021, and 2022 are
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`selected portions of hearing and deposition transcripts from the pending district
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`court litigation. Exhibit 2001 (substitute) is described by GSI as “(Substitute)
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`Dentsply Int’l Inc. and Tulsa Dental Prods. LLC d/b/a/ Tulsa Dental Specialties v.
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`US Endodontics, LLC, No. 2:14-196, Preliminary Injunction Hearing Transcript,
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`Volume I, dated Nov. 25, 2014 (E.D. Tenn.), pp. 1, 2, 11, 12, 15, 19, 20, 27-30, 32-
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`59, 65, 66, 76-78, 141, 152, 163-65, 168, 170, 176, 240, 243, 249, 261, 262, 279,
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`and 301 (index).” (Paper 20 at 2). Exhibit 2002 (substitute) is described by GSI as
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`“(Substitute) Dentsply Int’l Inc. and Tulsa Dental Prods. LLC d/b/a/ Tulsa Dental
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`Specialties v. US Endodontics, LLC, No. 2:14-196, Preliminary Injunction Hearing
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`Transcript, Volume II, dated Nov. 26, 2014 (E.D. Tenn.), pp. 1, 2, 10, 37-51, 55-
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`57, 99-105, 129, 131, 159, 172-74, 180-81, and 197 (index).” (Paper 20 at 2-3).
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`Exhibit 2004 is described by GSI as “Dentsply Int’l Inc. and Tulsa Dental Prods.
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`LLC d/b/a/ Tulsa Dental Specialties v. US Endodontics, LLC, No. 2:14-196,
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`1
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`Deposition Transcript of Neill H. Luebke, dated Oct. 8, 2014 (E.D. Tenn.), pp. 1
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`and 108-113.” (Paper 20 at 3). Exhibit 2014 is described by GSI as “Dentsply
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`Int’l Inc. and Tulsa Dental Prods. LLC d/b/a/ Tulsa Dental Specialties v. US
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`Endodontics, LLC, No. 2:14-196, US Endodontics, LLC’s Counter-Designations to
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`Plaintiffs’ Designations of Bobby Bennett Deposition Testimony and Redacted
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`Public Version of the Designated Transcript, dated Dec. 12, 2014 (E.D. Tenn.), pp.
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`1, 29-32, 36, 58-61, 65, 67, 68, 71, 79, 80, 93, 98, 99, 145, 149, 150, 187, 195, 196,
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`200, 221-224, and 229.” (Paper 20 at 4). Exhibit 2021 is described by GSI as
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`“Duplicate of Substitute Exhibit 2001.” (Paper 20 at 5). And Exhibit 2022 is
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`described by GSI as “Duplicate of Substitute Exhibit 2002.” (Paper 20 at 5).
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`US Endo objects to Exhibits 2001 (substitute), 2002 (substitute), 2004, 2014,
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`2021, and 2022 as irrelevant pursuant to Fed. R. Evid. 401, and therefore,
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`inadmissible under Fed. R. Evid. 402 and/or Fed. R. Evid. 403. The cited passages
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`in these exhibits do not make any fact relevant to the grounds upon which trial was
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`instituted more or less probable, and any facts that might be established based on
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`these exhibits are of no consequence in determining the issues on which trial was
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`instituted. Fed. R. Evid. 401. Including such citations in the record would merely
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`lead to unfair prejudice, undue delay, confusion, and a waste of time. Fed. R. Evid.
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`403.
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`2
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`Furthermore, US Endo objects to the inclusion of these portions of
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`transcripts under Fed. R. Evid. 106. Although GSI submitted substitute exhibits for
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`two of these exhibits (exhibits 2001 and 2002) in response to US Endo’s concerns
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`regarding the completeness of GSI’s selective citations (see Paper 19), these
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`substitute exhibits, 2001(substitute) and 2002 (substitute), as well as Exhibits 2004,
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`2014, 2021, and 2022, continue to omit significant pages of the transcripts that in
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`fairness must be considered with the selectively cited portions. Fed. R. Evid. 106.
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`Furthermore, US Endo objects to the admission of Exhibits 2001(substitute),
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`2002 (substitute), 2004, 2014, 2021, and 2022 under Fed. R. Evid. 802 as
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`constituting inadmissible hearsay for which no exception has been established.
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`II. OBJECTION TO EXHIBIT 2006
`Exhibit 2006 is described by GSI as “Dentsply Int’l Inc. and Tulsa Dental
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`Prods. LLC d/b/a/ Tulsa Dental Specialties v. US Endodontics, LLC, No. 2:14-196,
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`Declaration of John Voskuil, filed July 9, 2014 (E.D. Tenn.).” (Paper 20 at 3).
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`US Endo objects to Exhibit 2006 as irrelevant pursuant to Fed. R. Evid. 401,
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`and therefore, inadmissible under Fed. R. Evid. 402 and/or Fed. R. Evid. 403. The
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`declaration does not make any fact relevant to the grounds upon which trial was
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`instituted more or less probable, and any facts that might be established based on
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`this exhibit are of no consequence in determining the issues on which trial was
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`3
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`instituted. Fed. R. Evid. 401. Including it in the record would merely lead to
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`unfair prejudice, undue delay, confusion, and a waste of time. Fed. R. Evid. 403.
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`Furthermore, US Endo objects to the admission of Exhibit 2006 under Fed.
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`R. Evid. 802 as constituting inadmissible hearsay for which no exception has been
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`established.
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`III. OBJECTION TO EXHIBIT 2019
`Exhibit 2019 is described by GSI as “Dentsply Int’l Inc. and Tulsa Dental
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`Prods. LLC d/b/a/ Tulsa Dental Specialties v. US Endodontics, LLC, No. 2:14-196,
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`Plaintiff’s Motion for a Preliminary Injunction, filed July 9, 2014 (E.D. Tenn.).”
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`(Paper 20 at 4).
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`US Endo objects to Exhibit 2019 as irrelevant pursuant to Fed. R. Evid. 401,
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`and therefore, inadmissible under Fed. R. Evid. 402 and/or Fed. R. Evid. 403. The
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`exhibit does not make any fact relevant to the grounds upon which trial was
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`instituted more or less probable, and any facts that might be established based on
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`this exhibit are of no consequence in determining the issues on which trial was
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`instituted. Fed. R. Evid. 401. Including it in the record would merely lead to
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`unfair prejudice, undue delay, confusion, and a waste of time. Fed. R. Evid. 403.
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`Furthermore, US Endo objects to the admission of Exhibit 2019 under Fed.
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`R. Evid. 802 as constituting inadmissible hearsay for which no exception has been
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`established.
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`4
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`IV. OBJECTION TO EXHIBIT 2020
`Exhibit 2020 is described by GSI as “Dentsply Int’l Inc. and Tulsa Dental
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`Prods. LLC d/b/a/ Tulsa Dental Specialties v. US Endodontics, LLC, No. 2:14-196,
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`Defendant’s Preliminary Injunction Hearing Demonstratives by Dr. Jeffery A. Stec,
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`Nov. 26, 2014 (E.D. Tenn.), pp. 1 and 8.” (Paper 20 at 5).
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`US Endo objects to Exhibit 2020 as irrelevant pursuant to Fed. R. Evid. 401,
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`and therefore inadmissible under Fed. R. Evid. 402 and/or Fed. R. Evid. 403. This
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`exhibit, which is merely an excerpt of an inadmissible demonstrative in the
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`pending district court litigation, does not make any fact relevant to the grounds
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`upon which trial was instituted more or less probable and any facts that might be
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`established based on this exhibit are of no consequence in determining the issues
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`on which trial was instituted. Fed. R. Evid. 401. Baugh ex rel. Baugh v. Cuprum
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`S.A. de C.V., 730 F.3d 701, 708 (7th Cir. 2013) (explaining that demonstrative
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`exhibits “are not admitted as substantive evidence under the Federal Rules of
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`Evidence”) (emphasis in original). Including it in the record would merely lead to
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`unfair prejudice, undue delay, confusion, and a waste of time. Fed. R. Evid. 403.
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`Furthermore, US Endo objects to the admission of Exhibit 2020 under Fed.
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`R. Evid. 802 as constituting inadmissible hearsay for which no exception has been
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`established.
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`5
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`/Jeffrey S. Ginsberg /
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`Lead counsel for Petitioner US Endodontics, LLC
`
`Matthew G. Berkowitz (Reg. No. 57,215)
`Eric T. Schreiber (Reg. No. 58,771)
`Back-up counsel for Petitioner US Endodontics,
`LLC
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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`6
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`Dated: August 19, 2015
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`Certificate of Service
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`
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 19,
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`2015, the foregoing Petitioner’s First Set of Objections to Patent Owner’s Exhibits
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`was served via electronic mail on the following counsel of record for the Patent
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`Owner:
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`Joseph A. Hynds
`R. Elizabeth Brenner-Leifer
`Steven Lieberman
`Jason M. Nolan
`Derek F. Dahlgren
`jhynds@rothwellfigg.com
`ebrenner@rothwellfigg.com
`slieberman@rothwellfigg.com
`jnolan@rothwellfigg.com
`ddahlgren@rothwellfigg.com
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`
`
`/Eric T. Schreiber/
`Eric T. Schreiber (Reg. No. 58,771)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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