Case IPR2016-00820
`U.S. Patent No. 7,064,197
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`
`
`HOLOGIC, INC., and BECTON, DICKINSON AND COMPANY,
`Petitioner
`
`
`
`v.
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`
`
`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE EVIDENCE
`
`
`
`
`
`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
`
`
`
`
`
`In response to Enzo’s motion to exclude paragraphs 3 and 5 of and
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`Attachment A to Petitioner’s Exhibit 1037 (Bhattacharyya Declaration) under
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`Federal Rule of Evidence (“FRE”) 602, Petitioner fails to identify any evidence
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`that Dr. Bhattacharyya (“the declarant”) has personal knowledge that the
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`laboratory protocol attached as Attachment A (“Attachment A protocol”) to her
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`declaration is the same protocol cited in Diehl in 2001.
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` Petitioner does not dispute that the declarant does not have personal
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`knowledge of the contents of the web address listed in Diehl during the relevant
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`timeframe in 2001. She did not visit the web address at that time and she has no
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`personal knowledge of the activities described in the Diehl paper. Instead,
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`Petitioner argues that declarant’s testimony regarding her alleged retrieval of the
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`Attachment A protocol on April 5, 2017 provides sufficient basis for personal
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`knowledge of the content that would have been found at that web address 16 years
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`ago. But, as explained in Enzo’s Motion to Exclude, Petitioner has provided no
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`facts to support a finding that the declarant has personal knowledge of the contents
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`of the laboratory protocol website as of 2001, when it was cited in the Diehl
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`article. (Paper 43.)
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`Petitioner’s argument that the Attachment A protocol’s version date
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`indicating that it was purportedly last updated on October 6, 1999 has no bearing
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`on whether the declarant has personal knowledge of that website as it existed when
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`1
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`Case IPR2016-00820
`U.S. Patent No. 7,064,197
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`it was cited by Diehl in 2001. (Paper 46, 2.) As an initial matter, because the
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`declarant has no personal knowledge whether the protocol has been updated since
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`1999, no basis exists to know whether the version date is actually correct.
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`Furthermore, the date on the protocol in Attachment A cannot establish that it was
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`located at the web address listed in Diehl in 2001. Moreover, as Petitioner admits,
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`the Attachment A protocol is not even currently located at the web address
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`identified in Diehl (http://cmgm.stanford.edu/pbrown/MGuide/), which is no
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`longer available. Rather, the declarant testified that the Attachment A protocol is
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`located at a different web address that was accessed after clicking on multiple other
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`links. (Paper 46, 2-3 (“the protocol can be accessed by first going to the webpage
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`at http://cmgm.stanford.edu/pbrown/MGuide/ and clicking on “Protocols” and then
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`clicking on “Slide Preparation” under the “Protocols” header. The URL for the
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`“Slide
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`Preparation”
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`subpage
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`is
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`http://cmgm.stanford.edu/pbrown/protocols/1_slides.html”).) Thus, the declarant
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`has no personal knowledge of the two critical portions of her testimony necessary
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`to authenticate the Attachment A protocol: (1) “[t]he protocol website cited in
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`Diehl (http://cmgm.stanford.edu/pbrown/MGuide) is still in use today,” and (2)
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`“Attachment A to this Declaration is a true and correct copy of the protocol cited
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`in Diehl.” (Ex. 1037 ¶¶ 3, 5 (emphasis added).)
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`2
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`Case IPR2016-00820
`U.S. Patent No. 7,064,197
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`Because the declarant lacks any personal knowledge that the Attachment A
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`protocol that she purportedly accessed in April 2017 is the same protocol cited in
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`the 2001 Diehl article, Paragraphs 3 and 5 and Attachment A of Exhibit 1037
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`should be excluded under Fed. R. Evid. 602.
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`
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`Dated: May 15, 2017
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`Respectfully submitted,
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`/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.
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`3
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`Case IPR2016-00820
`U.S. Patent No. 7,064,197
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on May 15,
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`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:
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`M. Paul Barker (Reg. No. 32,013)
`paul.barker@finnegan.com
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`Arpita Bhattacharyya (Reg. No. 63,681)
`arpita.bhattacharyya@finnegan.com
`
`Thomas L. Irving (Reg. No. 28,619)
`tom.irving@finnegan.com
`
`For Petitioner BD:
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`Jamie T. Wisz (Reg. No. 58,429)
`Jamie.Wisz@WilmerHale.com
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`Heather Petruzzi (Reg. No. 71,720)
`Heather.Petruzzi@WilmerHale.com
`
`Nancy Lynn Schroeder (Reg. No.
`75,538)
`nancy.schroeder@wilmerhale.com
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`
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`Dated: May 15, 2017
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`Respectfully submitted,
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`
`
`/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.
`
`
`
`
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