Filed on behalf of: Mallinckrodt Hosp. Prods. IP Ltd.
`
`
`
`
`
`
`
`Entered: April 11, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`PRAXAIR DISTRIBUTION, INC.
`Petitioner
`
`v.
`
`MALLINCKRODT HOSPITAL PRODUCTS IP LTD.,
`Patent Owner
`_______________________
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210 B2
`_______________________
`
`Before KEN B. BARRETT, MICHAEL J. FITZPATRICK, AND
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`
`
`Entered: April 11, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`PRAXAIR DISTRIBUTION, INC.
`Petitioner
`
`v.
`
`MALLINCKRODT HOSPITAL PRODUCTS IP LTD.,
`Patent Owner
`_______________________
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210 B2
`_______________________
`
`Before KEN B. BARRETT, MICHAEL J. FITZPATRICK, AND
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`
`I.
`
`INTRODUCTION
`
`Praxair Distribution, Inc. (“Petitioner”) challenges the validity of United
`
`States Patent No. 8,573,210 (“’210 patent,” Ex. 1001) under 35 U.S.C. § 103 on
`
`grounds that require the combination of five or more references. Petitioner’s
`
`obviousness theories rely extensively—and in many instances are predicated
`
`solely—on the declaration of Dr. Robert T. Stone. In his declaration, Dr. Stone
`
`offered opinions about what a person of ordinary skill in the art would find
`
`obvious, what the ’210 patent purportedly “covers,” and the purported motivation
`
`to combine the disparate references. Unbeknownst to Patent Owner and the Board
`
`when it instituted Inter Partes Review, however, Dr. Stone rendered these opinions
`without ever analyzing the claims of the ’210 patent.
`
`Patent Owner discovered this fact during Dr. Stone’s deposition when he
`
`admitted that he did not analyze the claims of the ’210 patent and disavowed any
`
`connection between his opinions and the patent claims:
`
`Q. But none of the claimed inventions here had been done exactly as
`claimed by anyone before; correct?
`A. I have not done a claim analysis. So I can’t answer that question
`without doing so.
`Q. Well, when you say you haven’t done a claim analysis, what does
`that mean?
`A. I have not gone element by element through the claims, I have not
`had the claims construed, and I have not prepared a report based on
`that.
`
`* * *
`
`1
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`Q. Did you do any analysis on a claim-by-claim basis?
`A. No, I did not.
`Q. Did you do, for any claims, an analysis on an element-by-element
`basis?
`A. No, I did not.
`(Ex. 2020 at 49:11-24; 56:11-16.)1 In addition to having failed to perform the most
`basic part of any obviousness analysis (i.e., analyzing the patent claims), Dr.
`
`Stone’s deposition testimony revealed several other fatal flaws with his opinions,
`
`including his failure to apply any recognized legal standards, his use of
`
`impermissible hindsight bias, and his failure to consider secondary considerations
`
`of non-obviousness, each of which is discussed in more detail below.
`
`For all of these reasons, the Board should exclude Dr. Stone’s opinions
`
`under Federal Rules of Evidence 402 and 702 as irrelevant and unreliable.
` MOTION TO EXCLUDE AND AUTHORIZATION
`II.
`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), as well as the Board’s
`
`Scheduling Order (Paper 16), Patent Owner moves to exclude the testimony of
`
`Petitioner’s expert, Dr. Robert Stone (Exhibits 1002 and 2020). Patent Owner
`
`objected to Dr. Stone’s opinions in its Patent Owner’s Response on December 9,
`
`2015, within 5 business days of the facts relevant to this motion being revealed
`
`during Dr. Stone’s December 2, 2015 deposition. (See Paper 30 at 19-32.) The
`
`Federal Rules of Evidence apply to Inter Partes Review proceedings, and under
`
`Rules 402 and 702, the Board should exclude Dr. Stone’s testimony as irrelevant
`
`1
`All emphases added and objections omitted unless otherwise noted.
`
`2
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`and unreliable. See 37 C.F.R. § 42.62.
` PROCEDURAL BACKGROUND
`III.
`On March 16, 2015, Petitioner filed its Petition for Inter Partes Review
`
`(“Petition,” Paper 1). The Petition relied extensively on Dr. Stone’s declaration,
`
`citing it more than 130 times. (Exhibit 1002.) In many instances Dr. Stone’s
`declaration is the sole support for Petitioner’s arguments, including the supposed
`
`existence of a motivation to combine (see, e.g., Petition at 19 (“A person of
`
`ordinary skill in the art would have been motivated to combine [the references] to
`
`predictably result in an improved nitric oxide delivery system . . . .”)), and the
`
`purported obviousness of certain combinations (see, e.g., id. at 24 (“Combining
`
`these portions of a NO delivery system . . . into a single system would predictably
`
`result in an improved NO delivery system . . . .”)).
`
`Dr. Stone’s declaration opines about how “[o]ne skilled in the relevant art
`would have found it obvious” to combine various references, (Ex. 1002 ¶ 114) and
`
`the “motivation to combine” various references. (See, e.g., id. ¶ 124.) The
`
`declaration is replete with references to legal terminology such as the expectation
`
`of success (id. ¶ 121) and “use of a known technique . . . to obtain predictable
`
`results” (id. ¶ 146). Dr. Stone’s declaration also contains statements directed to
`what the ’210 patent purportedly “covers”: “the ’210 Patent covers manually
`
`operable actuators to open and close the valve that controls delivery of therapy
`
`gas” (Id. ¶ 47.)
`
`3
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`The Board has refused to credit the testimony of Dr. Stone on at least two
`other occasions.2 However, in the instant case, the foregoing statements made it
`appear that Dr. Stone’s testimony was based on his review of the claims and
`
`guided by legal principles, and it was reasonable at the time for the Board (and the
`
`Patent Owner) to take his opinions at face value. The Board instituted Inter Partes
`
`Review in a decision (“Decision,” Paper 14) that relied on Dr. Stone’s declaration.
`
`(See, e.g., id. at 7, 10, 18-20, 26, 27.) However, Patent Owner had not deposed Dr.
`
`Stone at the time the Decision issued, and neither the Board nor Patent Owner had
`
`any way of knowing what Dr. Stone would later admit at his deposition.
`
`Patent Owner deposed Dr. Stone on December 2, 2015, and learned for the
`
`first time the extent of the fatal flaws in his analysis. Dr. Stone admitted that he:
`• had “not done an element by element analysis on these patents and/or
`any of the prior art references” (Ex. 2020 at 115:22-24);
`• “did not do any claim comparisons” (id. at 116:8);
`• had “not done any claim-by-claim analysis” (id. at 116:16-17);
`
`
`2
`See Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc., No. IPR2013-
`00439 (P.T.A.B. Jan. 16, 2014), Paper 26 at 15-16 (“[W]e give little to no credit to
`
`the analysis of Dr. Stone . . . . Dr. Stone does not cite evidence in the record for
`
`his opinion . . . .”); Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc., No.
`
`IPR2013-00460 (P.T.A.B. Jan. 16, 2014), Paper 23 at 13-14 (petitioner who relied
`
`on a declaration by Dr. Stone did “not provide sufficient and credible evidence”).
`
`4
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`• was not provided any guidance on the relevant legal standards by
`Petitioner’s counsel, which he could not therefore apply (id. at
`
`105:15-107:4);
`• failed to consider relevant, objective evidence of non-obviousness (id.
`at 64:7-65:6); and
`• based his analysis on impermissible hindsight bias using the ’210
`patent as the starting point for his analysis (id. at 60:24-61:2).
`
`After Dr. Stone admitted to these critical deficiencies, Patent Owner filed its
`
`response and timely objected to Dr. Stone’s testimony on December 9, 2015.
`
`IV.
`
`(Paper 30 at 19-32.)
` THE BOARD SHOULD EXCLUDE DR. STONE’S TESTIMONY
` Dr. Stone Failed to Analyze the Claims
`A.
`“It is a bedrock principle of patent law that the claims of a patent define the
`
`invention . . . .” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
`
`(internal quotation marks and citation omitted). By the same token, validity
`
`(including obviousness) must be analyzed on a claim-by-claim basis. See, e.g.,
`
`Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1372 (Fed. Cir.
`
`2006) (“[W]e must evaluate obviousness on a claim-by-claim basis.”). As Judge
`
`Rich put it, “the name of the game is the claim.” Judge Giles Sutherland Rich,
`
`Extent of Protection and Interpretation of Claims—American Perspectives, 21
`
`INT’L REV. INDUS. PROP. & COPYRIGHT L. 497, 499 (1990). For this reason, courts
`
`have repeatedly rejected validity challenges that are not accompanied by
`
`“testimony from one skilled in the art identifying each claim element and
`
`5
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`explaining how each claim element is disclosed in the prior art reference.”
`
`Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1313 (Fed. Cir.
`
`2011) (affirming summary judgment of no invalidity under 35 U.S.C. § 102(e)).
`
`Dr. Stone’s declaration suggests that he did analyze the claims. (See, e.g.,
`Ex. 1002 ¶ 47 (“the ’210 Patent covers manually operable actuators to open and
`
`close the valve that controls delivery of therapy gas”).) However, under cross-
`
`examination, Dr. Stone unequivocally admitted he did not analyze the claims:
`
`Q. Did you do any analysis on a claim-by-claim basis?
`A. No, I did not.
`Q. Did you do, for any claims, an analysis on an element-by-element
`basis?
`A. No, I did not.
`(Ex. 2020 at 56:11-16.)
`
`Q. So you can’t tell me, as you sit here today, what elements from the
`various claims of the five patents at issue are not present in the French
`’804 reference?
`A. I didn’t say I can’t. What I said is I have not done that analysis,
`and I would not do that.
`(Id. at 115:4-10.) This testimony reveals that Dr. Stone’s failure to perform the
`requisite analysis was no oversight; Dr. Stone actually refused to render opinions
`
`comparing the prior art references to the patent claims at issue.
`
`Instead of analyzing the claims, Dr. Stone admitted that he analyzed the ’210
`patent specification:
`
`6
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`Q. Okay. So when you’re trying to figure out what your combination
`is going to be, what was your target?
`A. The system and the things that the system did.
`Q. The system that’s described in the --
`A. In each of the patents.
`Q. -- specification?
`A. That’s correct.
`(Ex. 2020 at 104:16-24, 105:3-7 (“Q. Again, when you say “the system,” you’re
`
`talking about the system that’s described in the specification of each of the five
`
`patents you looked at? A. I believe that’s correct.”).)
`
`Dr. Stone’s failure—or refusal, as the case may be—to analyze and opine on
`
`the patent claims pervades every aspect of his opinions, rendering them unreliable,
`
`irrelevant, and therefore inadmissible. Fed. R. Evid. 402 & 702. The obviousness
`
`inquiry requires “a challenger [to] demonstrate by clear and convincing evidence
`
`that a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled artisan
`
`would have had a reasonable expectation of success in doing so.” ActiveVideo
`
`Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012)
`
`(internal quotation marks and citation omitted).
`
`But by Dr. Stone’s own admission, he did not even try to analyze the claims
`or understand what the claimed invention is. Dr. Stone’s admission that he did not
`
`analyze the claims proves that he had no basis to opine about what the ’210 patent
`
`“covers.” (Ex. 1002 ¶ 47.)
`
`7
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`Dr. Stone’s opinions about something (whatever that is) other than the
`
`claimed invention should be excluded as irrelevant. See Fed. R. Evid. 402
`
`(“Irrelevant evidence is not admissible.”). Similarly, the Board should exclude his
`
`opinions under Fed. R. of Evid. 702 because they are not based on “sufficient facts
`
`or data,” they are not “the product of reliable principles and methods,” and Dr.
`
`Stone has not “reliably applied the principles and methods to the facts of the case”
`
`due to Dr. Stone’s failure and/or refusal to analyze the patent claims at issue. See
`
`Fed. R. Evid. 702. Exclusion is also warranted in this case as a matter of policy to
`
`dissuade petitioners from seeking to obtain review based on defective declarations
`
`that cannot, as a procedural matter, be exposed until cross-examination. Indeed, in
`
`light of Dr. Stone’s admissions at his deposition, the petition never should have
`
`been instituted in the first place.
` Dr. Stone Failed to Apply Any Recognized Legal Standard
`Expert testimony that is premised on an incorrect legal standard cannot be
`
`B.
`
`relied upon to invalidate a patent:
`
`InTouch argues that VGo’s expert testimony was replete with errors
`because Dr. Yanco applied an incorrect legal standard . . . . [W]e
`agree with InTouch that the evidence on which VGo relies is not
`substantial enough to support an obviousness finding. Indeed, it did
`not even come close. Dr. Yanco’s testimony was plagued with
`numerous problems . . . .
`InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327, 1348 (Fed. Cir.
`
`2014). Despite Dr. Stone’s repeated references to legal terms and concepts in his
`
`declaration, he admitted at his deposition that his application of legal concepts such
`
`8
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`as obviousness and the motivation to combine in rendering his opinions was not
`
`guided by any recognized legal standard:
`
`Q. Okay. What do you understand “novelty” to mean?
`A. Novelty, I’m just - - ordinary meaning, it’s something that’s new.
`Q. . . . Okay. How does “obviousness” differ from “novelty”?
`A. Obviousness. “Obvious” means that a person of skill in the art
`would look at that and say “Yeah.” . . . I don’t know the legal
`terminology for it or describe it legally. I’d ask an attorney to
`describe it.
`(Ex. 2020 at 57:7-23.) The “standards” described above by Dr. Stone, if they can
`
`even be called that, do not parallel those required of an appropriate analysis under
`
`Section 103. Given Dr. Stone’s reliance on these “standards” in conducting his
`
`analysis and rendering his opinions, the Board cannot properly rely on his
`
`testimony. For example, Dr. Stone’s opinion that “[o]ne skilled in the relevant art
`would have found it obvious to use the sensor of the FR ’804 Publication . . . .”
`
`(see Ex. 1002 ¶ 114) is completely irrelevant and unreliable because it is based on
`application of an unrecognized and incorrect standard.3
`
`
`3
`Despite Dr. Stone’s testimony in his declaration using the word “obvious,”
`he claimed during his deposition that he did not opine on the legal issue of
`
`obviousness. (Ex. 2020 at 105:11-14 (“Q. And I understand, as background of this
`
`line of inquiry, that you don’t -- you didn’t opine on the legal issue of obviousness.
`
`Is that correct? A. That is correct.”).)
`
`9
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`Dr. Stone’s opinions relating to motivation to combine are equally irrelevant
`
`and unreliable (see, e.g., id. ¶ 130 “in my opinion, a person of skill in the art would
`be motivated to combine the ’510 Patent’s disclosure . . .”) because he failed to
`
`apply any recognized legal standard:
`
`Q. When you talk about this person of ordinary skill in the art being
`motivated to combine the references, do you mean motivated in the
`legal sense of motivated to combine them?
`A. No.
`(Id. at 61:25-62:4.) While it is unclear what Dr. Stone meant when he used the
`
`phrase “motivated to combine” in his declaration, his deposition unambiguously
`
`shows that he did not mean it in any sense that is relevant to this proceeding.
`
`In addition, even if Dr. Stone had testified at his deposition that he was
`
`endeavoring to provide opinions under the appropriate legal standard (which he did
`
`not), there is no way he could have done so since Petitioner’s counsel did not
`
`instruct him on, and he did not know, the appropriate legal standards:
`
`Q. Did you get any information from your attorneys or from Praxair’s
`attorneys about what “obviousness” is in the patent context?
`A. I don’t believe we have discussed obviousness in the patent
`context.
`(Id. at 53:19-23.) The Board should exclude Dr. Stone’s testimony for this reason
`
`as well. See Fed. R. Evid. 402 & 702; InTouch Techs., 751 F.3d at 1348-49.
` Dr. Stone Improperly Used Hindsight Bias
`The Federal Circuit has consistently and repeatedly warned that “the trap of
`
`C.
`
`hindsight” must be avoided in any obviousness analysis. See Mintz v. Dietz &
`
`10
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012) (citation omitted). “[A]voiding
`
`subconscious reliance on hindsight” is a “difficult task.” Id. When an invention is
`
`fully diagrammed and the court has the benefit of experts in the field, any
`
`invention may seem “obvious,” but it in fact “may have been a breakthrough of
`
`substantial dimension when first unveiled.” Id. (quoting Uniroyal, Inc. v. Rudkin–
`
`Wiley Corp., 837 F.2d 1044, 1051 (Fed. Cir. 1988)).
`Here, far from trying to avoid the dangers of hindsight, Dr. Stone admitted
`that his analysis was in fact based on hindsight:
`
`Q. And in this case, where you’re talking about the combinability of
`the concepts disclosed, did you start by looking at the patent and then
`figure out whether the art that your attorneys provided to you could be
`combined into what you saw in the patent?
`A. Don’t recall the detail of the discussion. We looked at what was
`in the patent. We looked at the prior art. Would a person do a similar
`thing? Yes. So that’s -- I think that’s the best way of describing it.
`Q. And I’m just trying to understand the order. But starting from
`looking at the patent itself; is that correct?
`A. Yes.
`(Ex. 2020 at 59:3-17; see also id. at 60:1-3.) Dr. Stone further confirmed that his
`
`analysis did not begin with the prior art:
`
`Q. . . . do you start with one reference and say, “Here’s a thing that
`we can modify using some of these other references to come up with
`the patented design,” or was your process something else?
`A. I think we looked at the overall system concept. “Are these things
`that one would put together in a gas delivery system and then,
`
`11
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`specifically, a nitric oxide system?” as opposed to, “Oh, there’s this
`seminal patent that we're going to improve upon.” I don’t recall doing
`it in that fashion at all.
`(Id. at 71:13-24); see also id. at 72:4-7 (“Q. Okay. Is it fair to say you didn’t start
`
`with one of your references and add pieces from the other references to that first
`
`reference? A. I don’t recall doing that.”).)
`
`Dr. Stone further testified that his analysis was intended to show that,
`
`working with the ’210 patent as a starting point, the prior art “could be combined
`into a system similar to the patented system.” (Id. at 71:10-11.) The Federal
`
`Circuit has cautioned that “[d]efining the problem in terms of its solution reveals
`
`improper hindsight in the selection of the prior art relevant to obviousness.” Insite
`
`Vision Inc. v. Sandoz, Inc., 783 F.3d 853, 859 (Fed. Cir. 2015). That is precisely
`
`what Dr. Stone did here, and the Federal Circuit has reversed obviousness findings
`
`that relied on similarly defective testimony:
`
`impermissible
`than
`testimony was nothing more
`Dr. Yanco’s
`hindsight; she opined that all of the elements of the claims disparately
`existed in the prior art, but failed to provide the glue to combine these
`references. While she opined that the references were like separate
`pieces of a simple jigsaw puzzle, she did not explain what reason or
`motivation one of ordinary skill in the art at the time of the invention
`would have had to place these pieces together. . . . It appears that Dr.
`Yanco relied on the ’357 patent itself as her roadmap for putting what
`she referred to as pieces of a “jigsaw puzzle” together. . . . Dr.
`Yanco’s testimony primarily consisted of conclusory references to her
`belief that one of ordinary skill in the art could combine these
`references, not that they would have been motivated to do so.
`
`12
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`InTouch Techs., 751 F.3d at 1348-52 (emphasis original).
`
`The Board has similarly found that expert testimony that is conclusory or
`
`that only analyzes technical feasibility does not satisfy a petitioner’s burden:
`
`The [expert] testimony explains why the cutting tool of Shapiro could
`be used to cut cancellous bone to form a cavity, but it does not
`provide a sufficient reason why it would have been obvious to so use
`it. The purported reason Dr. Harrigan provides is to avoid damage to
`nearby tissue outside of the bone. . . . However, one could also avoid
`such damage by not cutting anything. What the Petition lacks is a
`sufficient rationale for why, in the first instance, a person having
`ordinary skill would use the Shapiro cutting tool to cut a cavity in
`cancellous bone.
`Wright Med. Tech., Inc. v. Orthophoenix, LLC, No. IPR2014-00912 (P.T.A.B. Dec.
`
`16, 2014), Paper 9 at 11-12 (emphasis original); see also, e.g., Panasonic Corp. v.
`
`Optical Devices, LLC, No. IPR2014-00302 (P.T.A.B. July 11, 2014), Paper 9 at
`
`14-15, 18-19 (denying institution and giving “little weight” to petitioner’s
`
`“conclusory” expert declaration). Dr. Stone’s impermissible hindsight-driven
`
`approach independently warrants the exclusion of his testimony.
` Dr. Stone Failed to Consider Objective Indicia of Nonobviousness
`Considering objective indicia of nonobviousness is a necessary element of
`
`D.
`
`any obviousness inquiry. InTouch Techs., 751 F.3d at 1347 (noting that a “district
`court must consider evidence showing objective indicia of nonobviousness”).
`
`Objective indicia may be considered as independent evidence of nonobviousness.
`
`Id. These objective indicia are often “the most probative and cogent evidence of
`
`13
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`nonobviousness” available. Id. They are, in fact, especially valuable as they help
`
`protect against the threat of hindsight bias. Id.
`
`Here, the failure of others to implement the claimed invention is a powerful
`
`indicator of nonobviousness. Despite the existence of Petitioner’s cited prior art
`
`and
`
`the alleged obviousness of combining
`
`the references, none of
`
`the
`
`contemporary providers of inhaled nitric oxide delivery devices included the
`
`claimed features in their products (until Patent Owner released its embodying
`
`products). This is highly relevant evidence in this case—both Petitioner and the
`
`assignee of one of the patents which Dr. Stone relies on both made relatively
`
`contemporaneous efforts to develop an inhaled nitric oxide delivery device, but
`
`neither reached the claimed solution. (Paper 30 at 8-10, 58-59.) Dr. Stone should
`
`have considered and addressed this evidence in reaching any relevant opinion, but
`
`he failed to take it into account:
`
`Q. Okay. Did you have any conversations with your counsel about
`objective indicia of non-obviousness?
`A. No.
`Q. . . . Okay. Did you consider them at all in connection with your
`analysis here?
`A. I did what I was asked to do, and that was not part of my
`analysis.
`(Ex. 2020 at 134:20-135:4.) Indeed, Dr. Stone’s ignorance of this critical evidence
`
`revealed that his analysis was based on an incorrect understanding of the law when
`
`he asserted that such objective evidence was irrelevant. (See id. at 44:23-45:10.)
`
`14
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`
`Here, Dr. Stone’s refusal to consider secondary considerations is remarkable
`
`given that the relevant evidence of secondary considerations comes from one of the
`
`very documents he submitted relating to the FR ’804 reference (Ex. 1011, Air
`
`Liquide Opti Kinox Brochure) and the efforts of the Petitioner relating to its nitric
`
`oxide delivery device.
`
`Thus, Dr. Stone’s declaration should be excluded not just because he failed
`
`to consider all of the relevant evidence, but because he refused to consider some of
`the most relevant evidence, asserting that it could have no effect on his
`
`conclusions. See Fed. R. Evid. 402 & 702; InTouch Techs., 751 F.3d at 1348
`
`(reversing obviousness finding that was based on expert testimony that failed to
`
`V.
`
`“consider any objective evidence of nonobviousness.”).
` CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that Dr.
`
`Stone’s testimony (Exhibits 1002 and 2020) be excluded under Federal Rules of
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Robert Steinberg/
`Robert Steinberg (Reg. No. 33,144)
`
`Counsel for Patent Owner
`
`15
`
`Evidence 402 and 702.
`
`
`
`
`
`
`
`
`
`
`Dated: April 11, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-00891
`U.S. Patent No. 8,573,210
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 11th day of April,
`
`2016, a true and correct copy of the foregoing Patent Owner’s Motion to
`
`Exclude Evidence was served by electronic mail on Petitioner’s lead and backup
`
`counsel at the following email addresses:
`
`sanjay.murthy@morganlewis.com
`
`mike.abernathy@morganlewis.com
`
`maria.doukas@morganlewis.com
`
`margaux.nair@klgates.com
`
`benjamin.weed@klgates.com
`
`Praxair-Ikaria@klgates.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /Robert Steinberg/
`
`Robert Steinberg (Reg. No. 33,144)
`bob.steinberg@lw.com
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`213.485.1234; 213.891.8763 (Fax)
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
