`U.S. Patent No. 7,064,197
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`HOLOGIC, INC., and BECTON, DICKINSON AND COMPANY,
`Petitioner
`
`
`
`v.
`
`
`
`ENZO LIFE SCIENCES, INC.,
`Patent Owner
`
`__________________
`
`
`
`Case IPR2016-00820
`
`U.S. Patent No. 7,064,197
`TITLE: SYSTEM, ARRAY AND NON-POROUS SOLID SUPPORT
`COMPRISING FIXED OR IMMOBILIZED NUCLEIC ACIDS
`Issue Date: June 20, 2006
`
`__________________
`
`
`
`ENZO’S OBJECTIONS TO EVIDENCE UNDER 37 C.F.R. § 42.64(b)
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2016-00820
`U.S. Patent No. 7,064,197
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b), Patent Owner Enzo Life Sciences, Inc.
`
`(“Enzo”) submits these objections to the evidence submitted by Petitioners on
`
`April 5, 2017 with their Reply. Patent Owner is concurrently serving these
`
`objections on Petitioner as set forth in the below certificate of service. These
`
`objections are timely filed and served within five business days of the service of
`
`the evidence to which Enzo objects.
`
`Exhibit Portion(s)
`Objected To
`¶¶ 3, 5
`
`1037
`
`Basis For
`Objection
`Fed. R. Evid.
`602
`
`1037 All
`
`37 C.F.R. §
`11.307(a)
`
`
`Grounds For Objection
`
`The declarant does not have personal
`knowledge that the protocol purportedly
`available at the website is the same
`protocol cited in the Diehl article.
`
`For example, the declarant does not have
`personal knowledge that the purported
`contents of the website have not changed
`between the alleged publication of the
`Diehl article in 2001 and the declarant’s
`purported access of the website in April
`2017.
`The declarant is back-up counsel for
`Petitioner Hologic,
`Inc.
`in
`this
`proceeding. The declarant is also a
`necessary
`fact witness
`in
`that her
`declaration is cited in Petitioners’ reply
`to support the purported authenticity and
`public accessibility of the Diehl protocol.
`
`37 C.F.R. § 11.307(a) states:
`“A practitioner shall not act as advocate
`at a proceeding before a tribunal in
`which the practitioner is likely to be a
`necessary witness unless:
`(1) The
`testimony
`relates
`
`to an
`
`1
`
`
`
`Case IPR2016-00820
`U.S. Patent No. 7,064,197
`
`
`
`Exhibit Portion(s)
`Objected To
`
`Basis For
`Objection
`
`
`
`Grounds For Objection
`
`uncontested issue;
`(2) The testimony relates to the nature
`and value of legal services rendered in
`the case; or
`(3) Disqualification of the practitioner
`would work substantial hardship on the
`client.”
`
`
`
`Dated: April 12, 2017
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`
`
`
`
`
`
`2
`
`
`
`Case IPR2016-00820
`U.S. Patent No. 7,064,197
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on April 12,
`
`2017, a complete copy of the foregoing was served on counsel of record for the
`Petitioner by filing this document through PTAB E2E and by sending this
`document via electronic mail to the following addresses:
`
`For Petitioner Hologic:
`
`M. Paul Barker (Reg. No. 32,013)
`paul.barker@finnegan.com
`
`Arpita Bhattacharyya (Reg. No. 63,681)
`arpita.bhattacharyya@finnegan.com
`
`Thomas L. Irving (Reg. No. 28,619)
`tom.irving@finnegan.com
`
`For Petitioner BD:
`
`Jamie T. Wisz (Reg. No. 58,429)
`Jamie.Wisz@WilmerHale.com
`
`Heather Petruzzi (Reg. No. 71,720)
`Heather.Petruzzi@WilmerHale.com
`
`
`
`
`Dated: April 12, 2017
`
`Respectfully submitted,
`
`
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`3
`
`
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