UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HOLOGIC, INC.
`Petitioner
`
`v.
`
`ENZO LIFE SCIENCES, INC.
`Patent Owner
`
`____________
`
`Case No. IPR2016-00822
`U.S. Patent No. 7,064,197
`____________
`
`
`
`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EXHIBITS
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HOLOGIC, INC.
`Petitioner
`
`v.
`
`ENZO LIFE SCIENCES, INC.
`Patent Owner
`
`____________
`
`Case No. IPR2016-00822
`U.S. Patent No. 7,064,197
`____________
`
`
`
`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EXHIBITS
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner submits the following
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`Case No. IPR2016-00822
`Patent No.: 7,064,197
`
`
`objections to certain exhibits filed by Patent Owner on January 11, 2017.
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`Petitioner’s objections apply equally to Patent Owner’s reliance on these exhibits
`
`in any subsequently-filed documents. These objections are timely, having been
`
`filed within five business days of Patent Owner serving the evidence (January 16,
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`2017 being a federal holiday).
`
`Petitioner objects to the follow exhibits:
`
`
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`Exhibit 2117 — Deposition Transcript of Dr. Norman Nelson.
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`Exhibits 2131-2134 — Enzo Biochem’s Infringement Contentions from
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`Related Litigations
`
`Exhibits 2135, 2137-2141— Enzo Laboratory Notebooks and Documents
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`Exhibit 2142 — Expert Declaration of Dr. Gregory Buck.
`
`Exhibit 2143 — Expert Declaration of Barry Weiner.
`
`Exhibit 2117
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`Petitioner preserves its objections to specific portions of Dr. Nelson’s cross-
`
`examination testimony taken during the deposition on December 21, 2016. To the
`
`extent Patent Owner has relied or will rely on portions of the testimony that were
`
`objected to during the deposition, Petitioner maintains those objections and the
`
`grounds for such objections.
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`
`
`
`
`1
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`
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`Exhibits 2131-2134
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`Case No. IPR2016-00822
`Patent No.: 7,064,197
`
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`Petitioner objects to Exhibits 2131-2134 under Fed. R. Evid. 401, 402, and
`
`403 as lacking relevance and being more prejudicial than probative, and under 37
`
`C.F.R. § 42.120(a) (Outside Scope). These exhibits appear to be infringement
`
`contentions from litigations, but the underlying evidence (i.e., accused products
`
`and information about them) and exhibits have not been made available for
`
`consideration or evaluation by the Board or Petitioner. Furthermore, these exhibits
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`relate to infringement only and, therefore, are irrelevant and outside the scope of
`
`this proceeding.
`
`Exhibits 2135, 2137-2141
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`Petitioner objects to Exhibits 2135, 2137-2141 under Fed. R. Evid. 901 for
`
`lack of authentication. These exhibits are purported to include pages from
`
`laboratory notebooks and other documents, many of which are undated, unsigned,
`
`and unwitnessed, and appear to not have been bound together and consecutively
`
`numbered. Some of the pages are also not dated consecutively. Therefore, these
`
`exhibits lack proper authentication. Further, these exhibits do not qualify as self-
`
`authenticating documents under Fed. R. Evid. 902 and, thus, are inadmissible. The
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`testimony of Barry Weiner cannot be used to authenticate these exhibits for the
`
`reasons stated below with respect to Exhibit 2143.
`
`
`
`2
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`
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`Petitioner further objects to Exhibits 2135, 2137-2141 under Fed. R. Evid.
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`Case No. IPR2016-00822
`Patent No.: 7,064,197
`
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`802. To the extent Patent Owner relies on the contents of these exhibits for the
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`truth of the matter asserted, Petitioner objects to such contents as inadmissible
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`hearsay (see Fed. R. Evid 801), that does not fall under any exceptions, including
`
`those of Rules 803, 804, and 807. In particular, these exhibits are not admissible
`
`under Fed. R. Evid. 803(16) as statements contained in ancient documents because
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`the authenticity of these exhibits has not been established. These exhibits also do
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`not fall under the business records exception (Fed. R. Evid. 803(6)) or the catchall
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`exception under Fed. R. Evid. 807. See Chen v. Bouchard, 347 F.3d 1299, 1308
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`(Fed. Cir. 2003).
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`Exhibit 2142
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`Petitioner objects to ¶¶ 161, 180-197 and 243-249 of Exhibit 2142 under
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`Fed. R. Evid. 802 and 805 as containing hearsay and/or hearsay within hearsay. To
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`the extent Patent Owner relies on the contents of these paragraphs for the truth of
`
`the matter asserted, Petitioner objects to such contents as inadmissible hearsay
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`and/or hearsay within hearsay (see Fed. R. Evid. 801 and 805), that does not fall
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`under any exceptions, including those of Rules 803, 804, 805, and 807.
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`Petitioner objects to ¶¶ 161, 180-197 and 243-249 of Exhibit 2142 under
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`Fed. R. Evid. 602 for lack of personal knowledge because Dr. Buck (the declarant)
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`lacks personal knowledge of the matters asserted.
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`
`
`3
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`
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`Petitioner objects to ¶¶ 161, 180-197 and 243-249 of Exhibit 2142 under
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`Case No. IPR2016-00822
`Patent No.: 7,064,197
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`Fed. R. Evid. 702 and 703 as improper expert testimony, because these paragraphs
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`include conclusory statements and lack explanation for bases of opinions,
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`particularly to the extent exhibits relied upon also fail to identify the factual bases
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`for the declarant’s opinions.
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`Petitioner further objects to ¶¶ 243-249 of Exhibit 2142 under Fed. R. Evid.
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`401, 402, and 403 as lacking relevance to the extent they fail to establish a basis or
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`requirement (e.g., nexus) for secondary considerations of non-obviousness.
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`Exhibit 2143
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`Petitioner objects to ¶¶ 3-10, 12, 14, 16, and 17 of Exhibit 2143 under Fed.
`
`R. Evid. 802 and 805 as containing hearsay and/or hearsay within hearsay. To the
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`extent Patent Owner relies on the contents of these paragraphs for the truth of the
`
`matter asserted, Petitioner objects to such contents as inadmissible hearsay and/or
`
`hearsay within hearsay (see Fed. R. Evid. 801 and 805), that does not fall under
`
`any exceptions, including those of Rules 803, 804, 805, and 807.
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`Petitioner objects to ¶¶ 3-10, 12, 14, 16, and 17 of Exhibit 2143 under Fed.
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`R. Evid. 602 for lack of personal knowledge because Mr. Weiner (the declarant)
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`lacks personal knowledge of the matters asserted.
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`
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`4
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`
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`Date: January 19, 2017
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`Case No. IPR2016-00822
`Patent No.: 7,064,197
`
`
`Respectfully submitted,
`
`
`
`
`
`/Arpita Bhattacharyya/
`Arpita Bhattacharyya
`Reg. No. 63,681
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`Two Seaport Lane
`Boston, MA 02210-2001
`Telephone: 617.646.1676
`Facsimile: 617.646.1666
`E-mail: arpita.bhattacharyya@finnegan.com
`
`Back-up Counsel for Petitioner Hologic, Inc.
`
`
`
`
`
`5
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`
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`Case No. IPR2016-00822
`Patent No.: 7,064,197
`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing PETITIONER’S OBJECTIONS
`
`TO PATENT OWNER’S EXHIBITS was served on January 19, 2017, in its
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`entirety on the following, via electronic mail to Patent Owner’s counsel at:
`
`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
`
`
`
`Patent Owner consented to electronic service.
`
`
`Respectfully submitted,
`
`/Kristin M. Creed/
`Kristin M. Creed
`Case Manager
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`
`
`
`
`
`
`Date: January 19, 2017
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