`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`
`
`HOLOGIC, INC.
`
`and BECTON, DICKINSON AND COMPANY,
`
`Petitioners,
`
`v.
`
`ENZO LIFE SCIENCES, INC.,
`
`Patent Owner
`
`____________
`
`Case No. IPR2016-00820
`
`U.S. Patent No. 7,064,197
`
`____________
`
`PETITIONERS’ MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`I. Requested Relief and Timely Objections ........................................................... 1
`
`II. The RTP Exhibits, And The Portions of Dr. Buck’s And Mr. Weiner’s
`Declarations Relying On Them, Are Inadmissible Evidence .................................... 1
`
`A. Summary of the RTP Exhibits ...................................................................... 2
`
`Paragraphs 3-10, 12, 14, 16, and 17 of the Weiner Declaration Should Be
`B.
`Excluded ................................................................................................................. 4
`
`1. Mr. Weiner Lacks Personal Knowledge For His Testimony ..................... 4
`
`2.
`
`The Weiner Declaration Is Inadmissible Hearsay. .................................... 6
`
`C. The RTP Exhibits Have Not Been Authenticated And Are Inadmissible
`Hearsay ................................................................................................................... 7
`
`1.
`
`2.
`
`The RTP Exhibits Are Unauthenticated and Inadmissible ........................ 7
`
`The RTP Exhibits Are Hearsay With No Legitimate Exception ............... 9
`
`D. Portions of Dr. Buck’s Declaration Should Be Excluded For Lack Of
`Personal Knowledge, Hearsay, And Failure To Explain Conclusions .................11
`
`1. Buck Lacks Personal Knowledge And Presents Inadmissible Hearsay ..11
`
`3. Dr. Buck’s Assertions Regarding the RTP Exhibits Are Improper Expert
`Testimony Under FRE 702 and 703 .................................................................12
`
`III. Conclusion ......................................................................................................15
`
`
`
`
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`
`I.
`
`
`Requested Relief and Timely Objections
`
`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c), Petitioners Hologic, Inc. and
`
`Becton, Dickinson and Company move to exclude the following:
`
`• Exhibits 2035 and 2037-2041 under Federal Rules of Evidence (“FRE”) 901
`
`for lack of authentication and under FRE 802 as improper hearsay;
`
`• Paragraphs 3-10, 12, 14, 16, and 17 of Exhibit 2043 (Mr. Weiner’s
`
`Declaration) under FRE 602 for lack of personal knowledge and under FRE
`
`802 as improper hearsay; and
`
`• Paragraphs 146 and 165-181 of Exhibit 2042 (Dr. Buck’s Declaration) under
`
`FRE 602 for lack of personal knowledge, under FRE 802 as improper
`
`hearsay, and under FRE 702 and 703 as improper expert testimony.
`
`Petitioners timely objected to these exhibits on those bases. Paper 24, at 2-4.
`
`II.
`
`
`The RTP Exhibits, And The Portions of Dr. Buck’s And Mr. Weiner’s
`Declarations Relying On Them, Are Inadmissible Evidence
`
`Enzo introduced Exhibits 2035, 2037, 2038, 2039, 2040, and 2041—
`
`purported to be copies of laboratory notebooks and other documents—as evidence
`
`of the conception and reduction to practice of the invention of the ’197 patent, in
`
`an effort to prove an invention date prior to October 1982 (collectively “the RTP
`
`Exhibits”). Paper 20, 40-41. These out of court statements in the RTP Exhibits
`
`have no indicia of reliability, and Petitioners have had no chance to cross-examine
`
`anyone with personal knowledge of the experiments and dates recorded in these
`
`
`
`1
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`documents. Also, most of the pages of the RTP Exhibits are unsigned, undated,
`
`unwitnessed, and/or illegible. Enzo chose not to present any inventor or other
`
`competent testimony to suggest that those documents are what Enzo says they are
`
`or that they satisfy any hearsay exception. For the reasons stated below, the RTP
`
`Exhibits and the related testimony from Patent Owner’s declarants, Dr. Gregory
`
`Buck and Mr. Barry Weiner (Exhibits 2042, 2043), should be excluded as
`
`inadmissible evidence. Each RTP Exhibit is summarized in turn before addressing
`
`evidentiary issues.
`
`A. Summary of the RTP Exhibits
`
`Exhibit 2035. Enzo alleges that Exhibit 2035 is a document signed by co-
`
`inventors Barbara Thalenfeld and Kenneth Johnston, demonstrating “[conception]
`
`on approximately February 22, 1982 and that the first written record and
`
`experiment demonstrating the invention occurred on May 26, 1982.” Paper 20, at
`
`41. The exhibit is neither dated nor witnessed. Ex. 2035, at 5.
`
`Exhibit 2037. Dr. Buck and Mr. Weiner describe Exhibit 2037 as inventor
`
`Dollie Kirtikar’s notebook. See Ex. 2042, ¶¶ 167, 169, 170, 172, 174, 175; Ex.
`
`2043, ¶¶ 10-11. This 306-page exhibit contains copies of removable sheets in a
`
`binder, which are in non-chronological order and are often undated and/or
`
`
`
`2
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`unsigned. None of the pages are witnessed by a testifying declarant.1 Ex. 1036,
`
`140:10-144:3.
`
`Exhibits 2038 and 2039. Enzo alleges that Exhibits 2038 and 2039 are
`
`inventor Barbara Thalenfeld’s laboratory notebook. E.g., Ex. 2043, ¶¶ 12, 14.
`
`Exhibit 2038 is non-chronological, unsigned, and unwitnessed, while Exhibit 2039
`
`is neither signed nor witnessed. Both exhibits contain additional documents either
`
`“folded or stapled to the handwritten pages.” Ex. 2043, ¶¶ 13, 15.
`
`Exhibit 2040. Enzo asserts that Exhibit 2040 was prepared by inventors
`
`Barbara Thalenfeld and Kenneth Johnston and describes June 1982 experiments.
`
`Ex. 2042, ¶¶ 167-168; Ex. 2043, ¶ 16. It is not witnessed.
`
`Exhibit 2041. Enzo describes Exhibit 2041 as a photocopy of photocopies
`
`of Dr. Thalenfeld’s notebook, and the pages were “signed or initialed … after the
`
`copy was made.” Ex. 2043, ¶ 17 (emphasis added). Thus, the inventors did not sign
`
`the original notebook, and it is not witnessed.
`
`
`
`
`1 Mr. Weiner alleged that certain pages were witnessed by a non-inventor, Dr.
`
`Norman Kelker. Ex. 1036, 64:1-16, 66:1-13, 68:11-24. Dr. Kelker consulted with
`
`Mr. Weiner prior to his deposition (id., 10:4-7, 11:5-14:22), but Enzo chose not to
`
`present his testimony.
`
`
`
`3
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`B. Paragraphs 3-10, 12, 14, 16, and 17 of the Weiner Declaration Should
`Be Excluded
`1. Mr. Weiner Lacks Personal Knowledge For His Testimony.
`Enzo offers Mr. Weiner’s testimony in an attempt to authenticate the RTP
`
`Exhibits and to corroborate the experiments and dates reported in those documents.
`
`Paper 20, 40-41. Mr. Weiner, however, testified that he did not have a scientific
`
`background and he did not work in the lab with the inventors:
`
`Q. Were you aware of the specific steps and conditions of
`the experiments that the inventors were doing?
`A. I am not a scientist, as I've testified today. I do not
`review scientific methods, because I could not
`contribute to that benefit. And so my activity does not
`involve the actual scientific experimentation.
`
`Ex. 1036, 40:12-21; Ex. 1036, 24:6-10. Indeed, any knowledge he has regarding
`
`the claimed invention can be imputed to information received directly or indirectly
`
`from the inventors. Id., 19:13-21:23. Mr. Weiner has no personal knowledge of
`
`when the inventors’ allegedly reduced the claimed invention to practice:
`
`Q. Independent of the lab notebooks that you looked at
`before preparing your declarations, do you have any
`personal knowledge of when in 1982 did the inventors of
`the '197 patent accomplish the [im]mobilization of
`nucleic acids on a non-porous solid support?
`A. During that period in time, I was aware of
`developments that were ongoing within the
`4
`
`
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`laboratory. I cannot say that I was aware of the
`specific date that the experiment was deemed to say
`success [sic], I think this was an iterative process,
`multiple times of review and examination internally.
`…
`See Ex.1036, 136:11-137:6.
`
`When asked to verify when the claimed subject matter was reduced to
`
`practice, Mr. Weiner identified the relevant time frame as 1980 to 1984, even
`
`though Enzo has alleged in its Response that the invention was reduced to practice
`
`“no later than August of 1982” (Paper 20, 39-41):
`
`Q. But sitting here today, independent of the lab
`notebooks, you cannot verify for me a time frame during
`which the immobilization of nucleic acids on a non-
`porous solid support was done, correct?
`A. No, that's not correct. I mean, during this period,
`as I stated, this work was in process.
`Q. Can you state that period again?
`A. From the period of the early '80s, '80 through '84,
`we did work in the area. This particular work was the
`earlier part of our activity and clearly fell within that
`time frame.
`Q. And can you verify for me the time period during
`which the inventors of the '197 patent accomplished
`hybridization of nucleic acids on a non-porous solid
`support?
`
`
`
`5
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`
`A. That time –
`Q. Independent of the lab notebooks, please verify.
`A. I can't recall 30 years ago the specific date of an
`event. This is a major project that this company
`worked on and embodied in its intellectual property.
`It happened during that period. I certainly can't
`recall a date 30 years ago when an experiment may
`have been discovered.
`
`Ex. 1036, 138:16-139:21.
`
`As demonstrated, Mr. Weiner has no personal knowledge that the alleged
`
`reduction to practice activities occurred before 1984. Therefore, his testimony on
`
`when the claimed subject matter was reduced to practice is inadmissible under
`
`FRE 602.
`
`2. The Weiner Declaration Is Inadmissible Hearsay.
`Mr. Weiner’s testimony about the inventors’ experiments by certain dates is
`
`based on the purported inventor records, i.e., Exhibits 2035, and 2037-2041, and
`
`discussions with the inventors and laboratory supervisors who reported to him. See
`
`Ex. 1036, 19:13-21:23, 24:6-25, 37:7-38:2. As discussed below, the RTP Exhibits
`
`are inadmissible hearsay under FRE 801 and do not fall under any hearsay
`
`exception, including FRE 803, 804, and 807.
`
`Enzo is also trying to use Mr. Weiner’s recitation of inventors’ or lab
`
`supervisors’ statements, which were made outside this proceeding, to prove the
`
`
`
`6
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`truth of the matters asserted—this is hearsay. FRE 801. Some of these statements
`
`are attributed to particular individuals, such as Dr. Kelker, who reported scientific
`
`activities to Mr. Weiner. See Ex. 1036, 9:20-10:7, 31:18-32:12, 37:7-38:2. Enzo
`
`chose not to present testimony from Dr. Kelker—who still works with Enzo (Ex.
`
`1036, 11:8-12) or other individuals with first-hand knowledge of the scientific
`
`activities at Enzo during the relevant time period. Enzo cannot use Mr. Weiner
`
`now as a conduit to introduce otherwise inadmissible hearsay from the lab
`
`notebooks or discussions with inventors and laboratory supervisors.
`
`C. The RTP Exhibits Have Not Been Authenticated And Are
`Inadmissible Hearsay
`1. The RTP Exhibits Are Unauthenticated and Inadmissible.
`“To satisfy the requirement of authenticating or identifying an item of
`
`evidence, the proponent must produce evidence sufficient to support a finding that
`
`the item is what the proponent claims it is.” FRE 901(a) (emphasis added). Thus,
`
`one starts with the proponent’s description of what the document is purported to be
`
`to determine whether a document is admissible under FRE 901. One may also
`
`consider circumstantial evidence such as “[t]he appearance, contents, substance,
`
`internal patterns, or other distinctive characteristics of the [document], taken
`
`together with all the circumstances.” FRE 901(b)(4). Here, under the
`
`circumstances, the RTP Exhibits are missing crucial indicia of authenticity, and as
`
`such, Enzo has failed to produce sufficient evidence to establish authenticity.
`
`
`
`7
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`For instance, Mr. Weiner stated that signing, dating, and witnessing were
`
`part of Enzo’s notebook policy. Ex. 1036 at 50:11-57:4, 118:21-119:2. None of the
`
`RTP Exhibits, however, are consistently signed, dated, or witnessed, and at least
`
`Exhibits 2037, 2038, and 2039, were not maintained in a chronological fashion.
`
`Exhibit 2035 is undated and not witnessed. Exhibit 2037 is often undated and
`
`unsigned, and not witnessed by a testifying declarant. Exhibits 2038 and 2039 are
`
`neither signed nor witnessed; and only a copy of Exhibit 2041, which was never
`
`witnessed, was signed by the inventors.
`
`Such conditions create significant suspicion regarding the substance and
`
`dates on which the experiments or recording of the experiments occurred—
`
`findings which are critical to Enzo’s proffering the exhibits as contemporaneous
`
`records of the invention date of the ’197 patent. See, e.g., Linear Tech. Corp. v.
`
`Micrel, Inc., 275 F.3d 1040, 1055-56 (Fed. Cir. 2001) (excluding, as
`
`unauthenticated, proffered letters, “which are dated before the critical date [but] are
`
`not signed, are not on company letterhead,” and bear no other indicia of
`
`reliability).
`
`Mr. Weiner fails to address these shortcomings of the documents with
`
`respect to signatures, dates, and witnessing. While he recognized some of the
`
`handwriting, he testified that he did not have the scientific background to
`
`understand the details of the experiments, and in any case did not review the
`
`
`
`8
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`notebooks at the time to assure they were being properly maintained. Ex. 1036,
`
`53:24-57:4; 40:12-21; id., 24:6-10.
`
`Because these Exhibits are missing critical indicia of reliability and
`
`authenticity, they cannot qualify as ancient documents under FRE 901(8), i.e.,
`
`where the document “is in a condition that creates no suspicion about its
`
`authenticity; was in a place where, if authentic, it would likely be; and is at least 20
`
`years old when offered.” FRE 901(8) (emphasis added); see also Mathin v. Kerry,
`
`782 F.3d 804, 812 (7th Cir. 2015) (“The requirement that the document be free of
`
`suspicion to be authenticated as an ancient document relates …to whether the
`
`document is what it purports to be.”). Here, the RTP Exhibits lack the details
`
`expected in reliable notebook-keeping practice, including Enzo’s own notebook
`
`policy (see Ex. 1036 at 50:11-57:4, 118:21-119:2). See id., finding affidavits did
`
`not qualify as ancient documents because they lacked any details that might be
`
`expected in a document created after the event in question.
`
`Finally, the RTP Exhibits cannot be self-authenticated under FRE 902, as
`
`they do not fall within any of the express categories covered by the rule.
`
`2. The RTP Exhibits Are Hearsay With No Legitimate Exception
`Enzo relies on the RTP Exhibits as written assertions offered to prove the
`
`truth of the matter asserted. This is inadmissible hearsay under FRE 801. Further,
`
`the RTP Exhibits do not fall within any of the hearsay exceptions, including FRE
`
`
`
`9
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`803(6), 803(16), 804, and 807. The exhibits do not qualify for, e.g., the business
`
`records exception (FRE 803(6)), because none of the RTP Exhibits are
`
`consistently signed, dated, or witnessed according to Enzo’s notebook policy, as
`
`stated by Mr. Weiner (see Ex. 1036, 50:11-57:4; 118:21-119:2). Moreover, at least
`
`Exhibits 2037, 2038, and 2039 were not maintained in a chronological fashion.
`
`Therefore, the records were not kept according to Enzo’s notebook policy.
`
`Furthermore, the PTAB does not consider that laboratory notebooks and
`
`experimental data are records of “regularly conducted” business activity, and such
`
`documents do not qualify for the business records exception under FRE 803(6).
`
`Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 97, at 5-7 (P.T.A.B.
`
`May 1, 2014) (“Conducting specific and unique scientific experimental work is not
`
`‘a regularly conducted activity.’ Rather, conducting specific scientific experiments,
`
`such as those conducted by [Patent Owner], involves unique events not normally
`
`repeated on a ‘regular’ basis.”).
`
`The absence of these indicia of reliability in each RTP Exhibit also prevents
`
`each from qualifying under other hearsay exceptions. As noted above, the RTP
`
`Exhibits do not qualify as ancient documents under FRE 901(8), and therefore are
`
`not admissible under FRE 803(16). The RTP Exhibits similarly cannot satisfy the
`
`requirements for admission under the exceptions for unavailable declarant under
`
`FRE 804 or under FRE 807.
`
`
`
`10
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`For the reasons stated above, the RTP Exhibits are neither authenticated nor
`
`admissible hearsay, and must be excluded on those bases.
`
`D. Portions of Dr. Buck’s Declaration Should Be Excluded For Lack Of
`Personal Knowledge, Hearsay, And Failure To Explain Conclusions
`1. Buck Lacks Personal Knowledge And Presents Inadmissible
`Hearsay.
`
`Paragraphs 146 and 165-181 of Dr. Buck’s Declaration (Exhibit 2042)
`
`contend that the RTP Exhibits show conception and reduction to practice by
`
`certain dates. Dr. Buck, however, cannot independently confirm the inventors’
`
`activity in 1982, because he “was not in the lab in 1982 with the inventors” and
`
`“had nothing to do with Enzo at that period of time,” confirming that he “would
`
`not have any independent knowledge of that.” Ex. 1035, 39:11-14. In fact, Dr.
`
`Buck agreed that his testimony as to the dates of the experiments was based solely
`
`upon the RTP Exhibits and Mr. Weiner’s Declaration. Ex. 1035, 39:15-20.
`
`Thus, Dr. Buck lacks personal knowledge under FRE 602 about what the
`
`inventors were doing in 1982, and his testimony about what they did at that time is
`
`hearsay or hearsay within hearsay under FRE 802 and 805. Ex. 2042, ¶¶ 146, 165-
`
`178, 180, 181 (Dr. Buck’s testimony about the inventors’ alleged activity by, or on,
`
`certain dates).
`
`Just like Mr. Weiner’s testimony, Dr. Buck’s testimony about the inventors’
`
`activities by certain dates is based on the purported records of the inventors, which
`
`
`
`11
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`are statements outside of this proceeding. Enzo chose not to present testimony of
`
`anyone having personal knowledge about when the inventors performed any work.
`
`Enzo cannot improperly use Dr. Buck “as a conduit for introducing hearsay under
`
`the guise that the testifying expert used the hearsay as the basis of his testimony.”
`
`See Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 136 (2d Cir. 2013).
`
`3. Dr. Buck’s Assertions Regarding the RTP Exhibits Are
`Improper Expert Testimony Under FRE 702 and 703
`
`Dr. Buck’s testimony concerning the dates is not proper expert testimony
`
`under FRE 702 and 703; it is factual testimony about the dates on the documents.
`
`Also, although a properly qualified expert may opine as to what the contents of the
`
`RTP Exhibits would have meant, Dr. Buck does not provide the factual bases for
`
`his conclusions about the meaning of those documents as required by FRE 702.
`
`For example, Dr. Buck concludes that Ex. 2035 shows that “the first written
`
`record and experiment demonstrating the invention occurred” on May 26, 1982.
`
`Ex. 2042, ¶ 166. Dr. Buck cites no facts supporting that conclusion. Page 2 of
`
`Exhibit 2035 simply includes that date written next to those quoted words, but
`
`presents no actual written record. Moreover, Exhibit 2035 does not describe ’197
`
`claim limitations, e.g., a non-porous solid support, amines, epoxides, or hydroxyls.
`
`Dr. Buck also contends that notebooks of two of the inventors confirm that
`
`the inventions worked for their intended purpose. Ex. 2042, ¶ 166. But Dr. Buck’s
`
`subsequent testimony fails to explain the facts upon which that conclusion is based.
`
`
`
`12
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`All of the challenged claims require that “at least one single-stranded nucleic acid
`
`is fixed or immobilized in hybridizable form to said non-porous solid support via
`
`said one or more amine(s), hydroxyl(s) or epoxide(s).” Addressing those
`
`limitations, Dr. Buck contends that the purported inventor documents show actual
`
`hybridization experiments with single-stranded nucleic acids fixed through an
`
`amine or hydroxyl. Id., ¶ 177, right col. of table, at pp. 94-98. However, he fails to
`
`explain how the documents support that conclusion.
`
`Dr. Buck first cites Exhibit 2041, at page 3, as showing “an experiment that
`
`showed that the fixed single-stranded DNA actually hybridized when contacted
`
`with complementary strands of DNA.” Id., ¶¶ 167, 168, 172, 173, 177 (p. 95, rt.
`
`col.). Dr. Buck failed to explain how that page shows successful hybridization
`
`work. And during his deposition, when discussing this purported work in Exhibit
`
`2041, Dr. Buck stated that “[t]hey show results and I assume this is what they’re
`
`referring to is that the hybridization works. So unfortunately, you can’t read the
`
`results here. I can’t read the results.” Ex. 1035, 81:5-17. Page 3 of Ex. 2041,
`
`however, does not indicate that “hybridization works.” Rather page 3 appears to
`
`show a protocol under the heading “Can we hybridize on microElisaplates [sic].”
`
`Dr. Buck thus fails to explain how he reached his conclusion that page 3 of Exhibit
`
`2041 shows actual hybridization.
`
`Dr. Buck then cites Exhibit 2041, at page 10, as showing “actual
`
`
`
`13
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`hybridization experiments on non-porous supports,” but fails to explain why. Ex.
`
`2042, ¶ 177 (pp. 95-96, rt. col.). The portion of page 10 reproduced on page 96 of
`
`his declaration appears to be another protocol, rather than results.
`
`Dr. Buck then cites Exhibit 2040, at page 3, as showing “that an array of
`
`single-stranded DNA could be bound to a plastic plate via amines using PLL or
`
`DDDA coatings and then hybridized to other DNA strands.” Ex.2042, ¶ 177, p. 97,
`
`under the reproduced portion of p. 3 of Ex. 2040. Exhibit 2040, however, is not a
`
`laboratory record providing actual data or specific conditions for hybridization
`
`experiments. Moreover, the work described at Exhibit 2040, page 3, states that the
`
`hybridization work was performed with DNA “bound to polystyrene plates as
`
`described in section two [of Ex. 2040].” Ex. 1035, 73:15-74:23. Section two
`
`appears on page 2 of Exhibit 2040, and it discusses binding of DNA to uncoated
`
`polystyrene plates. Ex. 2040, 2; Ex. 1035, 73:11-14. Dr. Buck never asserted that
`
`binding to uncoated polystyrene plates was via an amine, hydroxyl, or epoxide.
`
`Rather, despite evidence to the contrary, Dr. Buck assumed that the hybridization
`
`work described on page 3 of Exhibit 2040 involved PLL-coated plates, which
`
`would have involved binding DNA via an amine. Ex. 1035, 79:25-92:3. Dr. Buck
`
`similarly admitted during his deposition that none of the hybridization discussion
`
`in Exhibit 2041 expressly stated that the experiments involved PLL-coated plates,
`
`rather than uncoated plates. Id. Thus, Dr. Buck fails to explain why Exhibits 2040
`
`
`
`14
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`and 2041 show reduction to practice of this limitation of all claims.
`
`Finally, Dr. Buck cites Exhibits 2037, at pages 168-171, and Exhibit 2002 at
`
`page 3 (pdf page 4), as showing hybridization experiments. Ex. 2042, ¶¶ 167, 174,
`
`175, 177 (pp. 97-98, rt. col.). Page 171 of Exhibit 2037 appears to be a protocol
`
`without results. And Exhibit 2002, at page 3, states that the inventors “discovered
`
`that nucleic acids could be fixed to non-porous solid supports and remain available
`
`for hybridization”—presenting no actual results. Thus, Dr. Buck provides no
`
`explanation how Exhibits 2037 and 2002 show actual hybridization results.
`
`Thus, Dr. Buck’s testimony that the RTP Exhibits show actual hybridization
`
`of nucleic acids that are bound via an amine, hydroxyl, or epoxide, is improper
`
`under FRE 702 and 703, because he fails to provide factual bases for that
`
`conclusion. Dr. Buck fails to explain the factual bases for several of his other
`
`conclusions about the RTP Exhibits, but space constraints prevent Petitioners from
`
`addressing them all here.
`
` Conclusion
`III.
`For the foregoing reasons, the Exhibits 2035 and 2037-2041, and certain
`
`portions of Exhibits 2042 and 2043, should be excluded from this proceeding.
`
`Date: April 24, 2017
`
`
`Respectfully submitted,
`
`
`
`
`/M. Paul Barker/
`M. Paul Barker, Reg. No. 32,013
`Lead Counsel for Hologic, Inc.
`
`
`
`15
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing PETITIONERS’ MOTION TO
`
`EXCLUDE was served on April 24, 2017, in its entirety via electronic mail to
`
`Patent Owner’s and BD’s counsel at:
`
`
`
`For Patent Owner
`EnzoIPRService@desmaraisllp.com
`Kevin K. McNish
`kmcnish@desmaraisllp.com
`Michael P. Stadnick
`mstadnick@desmaraisllp.com
`Justin P.D. Wilcox
`jwilcox@desmaraisllp.com
`Kerri-Ann Limbeek
`klimbeek@desmaraisllp.com
`
` For BD
`
`Jamie T. Wisz
`jamie.wisz@wilmerhale.com
`Heather Petruzzi
`heather.petruzzi@wilmerhale.com
`Nancy Lynn Schroeder
`nancy.schroeder@wilmerhale.com
`
`Patent Owner and BD have consented to electronic service.
`
`Date: April 24, 2017 Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Kristin M. Creed/
`Kristin M. Creed
`Case Manager
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER, L.L.P.
`
`
`
`
`
`
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
