Served on behalf of: Gold Standard Instruments, LLC
`
`By:
`
` Date served: Aug. 19, 2015
`
`Joseph A. Hynds, Lead Counsel
`R. Elizabeth Brenner-Leifer, Back-up Counsel
`Steven Lieberman, Back-up Counsel
`Jason M. Nolan, Back-up Counsel
`Derek F. Dahlgren, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: jhynds@rothwellfigg.com
`
` ebrenner@rothwellfigg.com
`
` slieberman@rothwellfigg.com
`
` ddahlgren@rothwellfigg.com
` jnolan@rothwellfigg.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`_______________
`
`PATENT OWNER’S OBJECTIONS TO PETITIONER’S EVIDENCE
`
`
`
`
`

`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Gold Standard
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Instruments, LLC, objects to the following evidence submitted by Petitioner with
`
`its Petition for Inter Partes Review of U.S. Patent No. 8,727,773 (Paper No. 2).
`
`Patent Owner’s Objections
`All portions of the Declaration not
`based on personal knowledge are
`objected to as improper hearsay (FRE
`801).
`Paragraphs 88, 99-105, 113, 120-124,
`126, 127, 129, 138, 140, 141-144, 146,
`153-163, 165, 167, 168, 171, 175, 181,
`183, 186, 187, 192-198, 206, 214, 217-
`221, and 223-227 are objected to as
`improper legal conclusions (FRE 702).
`Paragraphs 25-35, 37-40, 42-58, 65-70,
`75-82, 86-127, 168-198, 226-227 are
`objected to as irrelevant to the grounds
`upon which trial has been instituted
`(FRE 401-403).
`Paragraphs 39, 40, 134-137, 172, and
`201 are objected to as lacking
`foundation, assuming facts not in
`evidence, containing testimony on
`matters in which the witness lacks
`personal knowledge, and conclusory
`(FRE 602, 703, 705).
`Paragraph 204 is objected to for lack of
`authentication (FRE 901).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`
`Evidence Submitted by Petitioner
`Ex. 1002 (Declaration of A. Jon
`Goldberg)
`
`Ex. 1003 (Harmeet Walia et al., An
`Initial Investigation of the Bending and
`Torsional Properties of Nitinol Root
`Canal Files, 14 J. ENDODONTICS 346
`(1988))
`
`2
`
`

`
`Evidence Submitted by Petitioner
`Ex. 1004 (Fujio Miura et al., The super-
`elastic property of the Japanese NiTi
`alloy wire for use in orthodontics, 90
`AM. J. ORTHODONTICS &
`DENTOFACIAL ORTHOPEDICS 1
`(1986))
`Ex. 1005 (Satish B. Alapati, “An
`investigation of phase transformation
`mechanisms for nickel-titanium rotary
`endodontic instruments,” PhD thesis,
`2006)
`Ex. 1006 (Alan R. Pelton et al.,
`Optimisation of Processing and
`Properties of Medical-Grade Nitinol
`Wire, 9 Minimally Invasive Therapies
`& Allied Techs. 107 (2000))
`Ex. 1007 (U.S. Patent No. 5,697,906 to
`Ariola et al.)
`
`Ex. 1009 (Prosecution history of U.S.
`Patent No. 8,062,033)
`
`Ex. 1010 (Prosecution history of U.S.
`Patent No. 8,562,341)
`
`Ex. 1011 (US. Provisional Patent
`Application No. 60/578,091)
`
`Ex. 1012 (U.S. Patent Application
`Publication No. 2008/0032260 A1,
`Luebke)
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Patent Owner’s Objections
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`
`This exhibit is objected to as irrelevant
`because it is not analogous prior art
`(FRE 401-403) and as improper
`hearsay (FRE 801).
`
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`
`3
`
`

`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Patent Owner’s Objections
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`
`Evidence Submitted by Petitioner
`Ex. 1013 (Prosecution history of U.S.
`Patent No. 8,083,873)
`
`Ex. 1014 (U.S. Patent Application
`Publication No. 2011/0271529 A1, Gao
`et al.)
`
`Ex. 1015 (U.S. Provisional Patent
`Application No. 61/332,954)
`
`Ex. 1017 (International Standard ISO
`3630-1, 2nd ed. (2008))
`
`Ex. 1018 (Salwa E. Khier et al., Bending
`properties of superelastic and
`nonsuperelastic nickel-titanium
`orthodontic wires, 99 AM. J.
`ORTHODONTICS & DENTOFACIAL
`ORTHOPEDICS 310 (1991))
`Ex. 1020 (U.S. Patent No. 5,628,674 to
`Heath et al.)
`
`Ex. 1021 (Edgar Schäfer et al., Bending
`properties of rotary nickel-titanium
`instruments, 96 ORAL SURGERY
`ORAL MEDICINE ORAL
`PATHOLOGY 757 (2003))
`Ex. 1024 (S. Miyazaki et al.,
`Characteristics of Deformation and
`Transformation Pseudoelasticity in Ti-Ti
`Alloys, 43 J. PHYSIQUE COLLOQUES
`C4-255 (1982))
`
`4
`
`

`
`Evidence Submitted by Petitioner
`Ex. 1025 (Franklin S. Weine,
`ENDODONTIC THERAPY, 6th Ed.,
`2004, Chapter 5)
`
`Ex. 1026 (Japanese Unexamined Patent
`Application Publication No. 2006-
`149675, Matsutani et al.)
`
`Ex. 1027 (English translation of
`Japanese Unexamined Patent
`Application Publication No. 2006-
`149675, Matsutani et al.)
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Patent Owner’s Objections
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403) and as
`improper hearsay (FRE 801).
`This exhibit is objected to as irrelevant
`to the grounds upon which trial has
`been instituted (FRE 401-403), as
`hearsay evidence (FRE 801), and for
`lack of authentication (FRE 901).
`
`
`
`
`The foregoing objections are made within 10 business days of the institution
`
`of the trial in accordance with 37 C.F.R. § 42.64(b)(1).
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Dated: August 19, 2015
`
`
`
`
`
`By: /Joseph A. Hynds/
`
`Joseph A. Hynds, Reg. No. 34,627
`ROTHWELL, FIGG, ERNST &
`MANBECK, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`
`Counsel for Patent Owner
`Gold Standard Instruments, LLC
`
`5
`
`

`
`CERTIFICATE OF SERVICE
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`I hereby certify that on this 19th day of August, 2015, a true and correct
`
`copy of the foregoing PATENT OWNER’S OBJECTIONS TO PETITIONER’S
`
`EVIDENCE was served, via electronic mail upon the following counsel for
`
`Petitioner US Endodontics, LLC:
`
`Jeffrey S. Ginsberg, Esq.
`Matthew G. Berkowitz, Esq.
`Eric T. Schreiber, Esq.
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Phone: 212-425-7200
`Facsimile: 212-425-5288
`Emails: jginsberg@kenyon.com
`mberkowitz@kenyon.com
`eschreiber@kenyon.com
`
`
`
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
`
`
`
`
`
`1