`
`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’ OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE EVIDENCE
`
`
`
`
`
`
`
`Patent Owner Enzo Life Sciences, Inc. filed a motion to exclude ¶¶ 3 and 5
`
`IPR2016-00820
`U.S. Patent 7,064,197
`
`
`of, and Attachment A to, Petitioners’ Exhibit 1037 (Bhattacharyya Declaration)
`
`under Fed. R. Evid. 602 on the ground that Petitioner Hologic, Inc.’s back-up
`
`counsel (the Declarant) lacks personal knowledge of the matters testified to in
`
`those paragraphs. Patent Owner’s Motion to Exclude Evidence, Paper No. 43
`
`(“Mot.”) at 1. For at least the following three reasons, Patent Owner fails to
`
`establish Declarant’s lack of personal knowledge of the information discussed in ¶¶
`
`3 and 5 of Exhibit 1037.
`
`First, Exhibit 1037 is an attorney authentication declaration that the website
`
`cited in the Diehl reference (Exhibit 1021) is still in use today and Exhibit 1032
`
`can still be accessed by using the URL cited in Diehl (see Ex. 1021 at 1, right col.,
`
`last ¶) and clicking on two links. See Ex. 1037, ¶ 3. Patent Owner asserts no basis
`
`to question Declarant’s personal knowledge about how to access the website in
`
`Diehl and the webpage marked as Exhibit 1032. Thus, Patent Owner fails to
`
`establish that ¶ 3 of Exhibit 1037 should be excluded under Fed. R. Evid. 602.
`
`Second, Exhibit 1037 further states that “Attachment A to the Bhattacharyya
`
`Declaration is a true and correct copy of the protocol cited in Diehl, retrieved from
`
`the above-cited website on April 5, 2017.” See Ex. 1037, ¶ 5. Patent Owner argues
`
`that the Declarant has no personal knowledge that the protocol shown in
`
`Attachment A to the Bhattacharyya Declaration is the same protocol cited in Diehl.
`
`
`
`1
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`Mot. at 3. However, the protocol webpage shown in Attachment A states that it
`
`was last updated on October 6, 1999, while the Diehl reference published in 2001.1
`
`Moreover, the protocol webpage shown in Attachment A was accessed by
`
`Declarant on April 5, 2017, using the URL cited in Diehl (see date stamp on top on
`
`Attachment A). Accordingly, Declarant does have personal knowledge that the
`
`protocol in Attachment A is the same protocol cited in Diehl. Patent Owner has
`
`provided no reasonable basis for its argument that the protocol may have changed
`
`in the past 16 years, when the webpage itself states that the webpage (and hence
`
`the protocol provided in that webpage) has not been updated since 1999.
`
`Third, Patent Owner argues that the URL from which the protocol in
`
`Attachment A was accessed is different from the URL cited in Diehl. Mot. at 2-3.
`
`As stated in ¶ 3 of the Bhattacharyya Declaration, the protocol can be accessed by
`
`first going to the webpage at http://cmgm.stanford.edu/pbrown/MGuide/ and
`
`clicking on “Protocols” and then clicking on “Slide Preparation” under the
`
`“Protocols” header. The URL for the “Slide Preparation” subpage is
`
`http://cmgm.stanford.edu/pbrown/protocols/1_slides.html, which was cited by Dr.
`
`
`1 It should be noted, moreover, that the protocol webpage shown in Attachment A
`
`to the Bhattacharyya Declaration is the same protocol webpage cited by
`
`Petitioners’ expert, Dr. Nelson, and marked as Petitioners’ Exhibit 1032.
`
`
`
`2
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`Nelson in his declaration (Exhibit 1002 at 20, n. 1), and which is printed at the
`
`bottom of Attachment A to the Bhattacharyya Declaration. Attachment A to
`
`the Bhattacharyya Declaration and Dr. Nelson’s Declaration both include the URL
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`for the “Slide Preparation” subpage (and not the primary URL cited in Diehl).
`
`Contrary to Patent Owner’s argument, the “Slide Preparation” subpage, which
`
`provides the protocol marked as Exhibit 1032, was accessed via the primary URL
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`cited in Diehl.
`
`For the foregoing reasons, ¶¶ 3 and 5 of Petitioners’ Exhibit 1037 and
`
`Attachment A should not be excluded from this proceeding. As discussed above
`
`and in the Bhattacharyya Declaration, Declarant has personal knowledge that the
`
`webpage cited in Diehl is still in use today because Declarant was able to access it
`
`on April 5, 2017. Further, Declarant has personal knowledge that the protocol in
`
`Attachment A is the same protocol cited in Diehl because 1) Attachment A was
`
`accessed from the webpage cited in Diehl, and 2) the webpage has not been
`
`updated since 1999.
`
`Date: May 8, 2017
`
`
`Respectfully submitted,
`
`
`
`
`/M. Paul Barker/
`M. Paul Barker, Reg. No. 32,013
`Lead Counsel for Hologic, Inc.
`
`
`
`
`
`3
`
`
`
`IPR2016-00820
`U.S. Patent 7,064,197
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing PETITIONERS’ OPPOSITION
`
`TO PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE was served on
`
`May 8, 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: May 8, 2017
`
`Respectfully submitted,
`
`/Kristin M. Creed/
`Kristin M. Creed
`Case Manager
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER, L.L.P.
`
`
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