UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`R.J. Reynolds Vapor Company,
`
`Petitioner
`
`v.
`
`Fontem Holdings 1 B.V.
`
`Patent Owner
`
`
`
`
`
`
`
`Case No. IPR2016-01268
`Patent No.: 8,365,742
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`
`
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE PURSUANT TO 37 C.F.R. §§42.62 AND 42.64
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`R.J. Reynolds Vapor Company,
`
`Petitioner
`
`v.
`
`Fontem Holdings 1 B.V.
`
`Patent Owner
`
`
`
`
`
`
`
`Case No. IPR2016-01268
`Patent No.: 8,365,742
`
`
`
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE PURSUANT TO 37 C.F.R. §§42.62 AND 42.64
`
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Page No.
`
`CASES
`Activision Blizzard, Inc. et al. v. Acceleration Bay, LLC,
`IPR2015-01953, Paper 107 (PTAB Mar. 23, 2017) ............................................. 13
`Apple Inc. v. Sightsound Techs., LLC,
`CBM2013-00020, Paper 105 (PTAB Oct. 7, 2014) ............................................. 12
`Biomarin Pharm. Inc. v. Genzyme Therapeutic
`Prods. Ltd. P'ship,
`IPR2013-00537, Paper 79 (PTAB Feb. 23, 2015) ............................................... 14
`Dig. Ally, Inc. v. Util. Assocs., Inc.,
`IPR2014-00725, Paper 27 (PTAB July 27, 2015) ................................................ 13
`EBay Inc. v. Moneycat Ltd.,
`CBM2014-00092, Paper 49 (PTAB Sept. 23, 2015)............................................ 14
`First Quality Baby Prods., LLC v. Kimberly-Clark Worldwide, Inc.,
`IPR2014-01023, Paper 56 (PTAB Dec. 10, 2015) ............................................... 10
`Google Inc. v. Visual Real Estate, Inc.,
`IPR2014-01341, Paper 38 (PTAB Feb. 19, 2016) ............................................... 12
`Intri-Plex Techs., Inc. et al. v. Saint-Gobain Performance Plastics
`Rencol Ltd.,
`IPR2014-00309, Paper 83 (PTAB March 23, 2014) (Ex. 2031) .......................... 11
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper 78 (PTAB Feb. 11, 2014) ...................................... 1, 6, 9
`Lindsay Corp. v. Valmont Indus., Inc.,
`IPR2015-01039, Paper 37 (PTAB Sept. 14, 2016) ................................................ 7
`Nintendo of America Inc. v. Motion Games,
`LLC, IPR2014-00164, Paper 51 (PTAB May 15, 2015) ........................................ 7
`
`
`
`i
`
`
`
`Scotts Company LLC v. Encap LLC,
`IPR2013-00110, Paper 79 (PTAB June 24, 2014) (Ex. 2034) ............................. 11
`Square, Inc. v. Unwired Planet, LLC,
`CBM2014-00156, Paper 40 (PTAB Dec. 22, 2015) ............................................ 14
`Toro Co. v. MTD Prods. Inc.,
`IPR2016-00194, Paper 41 (PTAB May 10, 2017) ................................................. 7
`Veeam Software Corp. v. Symantec Corp.,
`IPR2013-00141, Paper 35 (PTAB April 7, 2014) (Ex. 2032) .............................. 12
`RULES
`Fed. R. Evid. 401 .......................................................................................... 2, 13, 14
`Fed. R. Evid. 402 .......................................................................................... 2, 13, 14
`Fed. R. Evid. 403 ...................................................................................... 2, 6, 13, 14
`Fed. R. Evid. 701 ..................................................................................................... 12
`Fed. R. Evid. 702 ................................................................................................ 2, 12
`Fed. R. Evid. 703 ............................................................................................ 2, 6, 12
`
`
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`
`
`
`ii
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`I.
`
`INTRODUCTION
`
`Even though P.O. only identifies 18 paragraphs as containing purportedly
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`“new” opinions, P.O. moves to exclude the entire 76-paragraph Reply Declaration
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`of Dr. Robert Sturges (Ex. 1027). This alone warrants denial of P.O’s motion. See
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003, Paper 78 at
`
`68 (PTAB Feb. 11, 2014) (“[W]hile [Patent Owner’s] motion specifically discusses
`
`only selected paragraphs of the reply declarations . . ., it seeks to exclude the
`
`entirety of the reply declarations. That, in itself, is sufficient basis to deny the
`
`relief requested.”).
`
`P.O.’s motion also warrants denial as to the 18 paragraphs specifically
`
`addressed. P.O.’s argument that these 18 paragraphs introduce “new” evidence is
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`meaningless. But the opinions set forth in Sturges’ Reply Declaration are within
`
`the scope of proper reply because they respond to arguments and opinions raised
`
`by P.O. and P.O.’s expert. And, with one exception, these opinions are not new in
`
`any event. To the contrary, they trace their roots to Sturges’ Petition Declaration
`
`and/or P.O. elicited these opinions during cross-examination of Dr. Sturges back in
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`March 2017, before P.O. even filed its Opposition papers. P.O. has had multiple
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`opportunities to respond to Dr. Sturges’ opinions. Indeed, if P.O. believed
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`otherwise, it could have requested leave to file a sur-reply or sought other relief,
`1
`
`
`
`
`
`but it did not do so. Both the record and P.O.’s own inaction belies its cries of
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`unfair prejudice.
`
`P.O. also moves to exclude Sturges’ Reply Declaration pursuant to FRE 702
`
`and 703. As the moving party, it was P.O.’s burden to show that the Sturges Reply
`
`Declaration, as supplemented by his Supplemental Evidence Declaration
`
`(Ex. 1034), should be excluded under FRE 702 and 703. But P.O. did not even try
`
`to meet its burden. P.O. provides no analysis whatsoever explaining how Sturges’
`
`Reply Declaration allegedly falls short under FRE 702/703.
`
`P.O. also moves to exclude exhibits 1028-1032, because they are only cited
`
`in the purportedly improper Sturges Reply Declaration. But Dr. Sturges’ Reply
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`Declaration is entirely proper, so P.O.’s sole predicate for excluding exhibits 1028-
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`1032 necessarily fails. In any event, exhibits 1028-1032 are not relied upon in the
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`specific paragraphs addressed by P.O.’s motion, and are proper reply evidence.
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`Exhibits 1028-1031 are offered in reply to the opinion of P.O.’s expert that aerosol
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`allegedly cannot pass through Hon 043’s porous body 27. Ex. 1027 at ¶ 42.
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`Ex. 1032 supports Sturges’ reply opinion addressing slipstream. Id. at ¶ 57.
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`Finally, P.O. moves to exclude exhibit 1005-1008 and 1022 pursuant to FRE
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`401-403, but that motion is similarly without merit. Exhibits 1005-1008 are
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`excerpts from the prosecution history of the 742 patent, which is the patent at issue
`
`in this proceeding. These exhibits are cited in the Petition for relevant context.
`
`2
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`
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`Petition at 10. P.O. does not even attempt to explain how these exhibits cause it
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`unfair prejudice. Exhibit 1022 is P.O. expert’s sworn deposition testimony from
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`another IPR involving Petitioner and P.O, and is relevant to the weight that should
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`be afforded his opinions concerning Hon 043. Once again, P.O. does not even
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`attempt to explain how Exhibit 1022 causes it unfair prejudice.
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`For these, and the additional reasons discussed below, P.O.’s motion should
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`be denied.
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`II.
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`FACTUAL BACKGROUND
`
`In his Petition Declaration (Ex. 1015), Dr. Sturges opined about the various
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`types of support that Hon 043’s cavity wall 25 provides for the porous body 27.
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`As Dr. Sturges explained, Hon 043’s cavity wall provides support by preventing
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`axial displacement of the porous body 27 when it is forcibly inserted into Hon
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`043’s solution storage body 28. Dr. Sturges also opined that the cavity wall
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`provides radial support for the porous body, which can have a wide range of
`
`rigidities, in over-pressure situations. See Ex. 1015 at ¶¶ 41-50.
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`After considering the competing opinions and arguments offered by the
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`parties, the Board instituted trial, concluding that “Petitioner has established that
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`Hon ‘043 describes ‘a porous component supported by a frame’ as required by
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`claim 2.” Paper 10 at 2, 12-14.
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`
`
`3
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`
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`P.O. deposed Dr. Sturges on March 8, 2017. Ex. 2016. P.O. cross-
`
`examined Dr. Sturges about his Petition Declaration (Ex. 1015) and Supplemental
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`Declaration (Ex. 1020). In response to P.O.’s questions, Dr. Sturges articulated
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`three of the four purportedly “new” opinions that are the subject of P.O.’s current
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`motion. Dr. Sturges explained that the axial displacement referenced in his
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`Petition Declaration is the axial displacement of the porous body relative to Hon
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`043’s cavity wall. Ex. 2016 at 117:7-118:20; 130:6-23. Dr. Sturges also
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`repeatedly explained how Hon 043’s cavity wall prevents Hon 043’s porous body
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`from deforming, again all in response to P.O.’s cross-examination questioning.
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`See id. at 117:15-118:20; 120:6-16; 127:3-6; 170:25-171:11. Finally, P.O. asked
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`about the other types of support that Hon 043’s cavity wall provided the porous
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`body. Dr. Sturges responded that Hon 043’s cavity wall also supports the weight
`
`of the liquid-filled porous body, which, as Dr. Sturges noted, could be made from
`
`materials having a “wide range of rigidity,” including relatively “low rigidity”
`
`materials. Id. at 127:20-24, 126:4-127:17.1
`
`
`1 During redirect examination, Dr. Sturges explained that Hon 043’s liquid-filled
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`porous body “would sag rather like a horse’s back under the weight of gravity”
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`without “the support of the cavity wall.” Id. at 186:23-187:15.
`
`
`
`4
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`
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`Nearly a month after Dr. Sturges offered these opinions in response to P.O.’s
`
`cross-examination questioning, P.O. filed its Opposition papers on April 4, 2017.
`
`Notably, P.O.’s Opposition makes numerous references to Dr. Sturges’ March
`
`2017 deposition testimony, as does the Opposition Declaration of P.O.’s expert
`
`Meyst. See Paper 24 at 1, 2, 3, 7, 19, 20, 21, 22, 24, 25, 26, 28, 30, 31, 32, 35, 37,
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`38, 40, 46, 47, 48, 49, 50, 51, and 52; Ex. 2015 at ¶¶ 9, 34, 43, 44, 45, 57, 67, 76,
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`98, and 104.
`
`On July 5, 2017, Petitioner filed its Reply, which was accompanied by the
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`Sturges Reply Declaration. Notably, throughout his Reply Declaration, including
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`in many of the paragraphs cited in P.O.’s motion, Dr. Sturges identifies P.O.’s
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`opinions and argument to which he is replying, and he oftentimes refers back to his
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`March 2017 deposition testimony and his previous Petition and Supplemental
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`Declarations for support. See e.g., Ex. 1027 at ¶¶ 8-13 (replying to Meyst’s
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`opinion about the meaning of “supported by”); ¶ 16 (summary of the types of
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`support provided by Hon 043’s cavity wall); ¶¶ 18-19 (replying to Meyst’s
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`opinion and noting that without either a friction fit or bonding material the ejection
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`holes of Hon 043’s porous body and cavity wall would become misaligned);
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`¶¶ 21-22 (commenting on Meyst’s testimony as it relates to weight-bearing
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`support), ¶¶ 23-34, 48 (replying to P.O.’s attempts to mischaracterize his opinion
`
`
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`5
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`
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`about axial displacement, replying to Meyst’s opinions about deformation and
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`weight-bearing support); ¶¶ 35-43, 45-46 (replying to Meyst’s opinions about a
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`purported exit hole in Hon 043, and noting that the cavity wall nevertheless
`
`provides weight-bearing support even if there is an exit hole); and ¶ 44 (replying to
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`Meyst’s opinion that 2 psi backpressure is not sufficient to cause Hon 043’s porous
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`body to deform and impinge on the atomization cavity).
`
`P.O. objected to the Sturges Reply Declaration, including under FRE 403
`
`and 703. Paper 32. In response, Petitioner served a Supplemental Evidence
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`Declaration of Dr. Sturges. Ex. 1034.
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`On July 18, 2017, P.O. deposed Sturges a second time. Ex. 2030. On
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`August 25, 2017, P.O. filed a Motion for Observations on Cross-Examination of
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`Dr. Sturges. Paper 38.
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`III. ARGUMENT
`A.
`P.O.’s Over-Reaching Alone Warrants Denial Of Its Motion
`As an initial matter, P.O. improperly seeks to strike the entirety of Sturges’
`
`76-paragraph Reply Declaration although its motion specifically targets just 18 of
`
`those paragraphs. This alone warrants denial of P.O.’s motion. See Liberty Mut.,
`
`CBM2012-00003, Paper 78 at 68 (“[W]hile [Patent Owner’s] motion specifically
`
`discusses only selected paragraphs of the reply declarations . . ., it seeks to exclude
`
`
`
`6
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`
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`the entirety of the reply declarations. That, in itself, is sufficient basis to deny the
`
`relief requested.”).
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`P.O. Conflates Legitimate Reply With “New” Evidence
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`B.
`P.O’s motion is without merit with respect to the 18 paragraphs specifically
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`called out. There is no statute or rule that prohibits Petitioner from submitting new
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`evidence with its Reply. “Rather, the scope of the Petitioner’s Reply and any
`
`supporting evidence is limited in that the ‘reply may only respond to arguments
`
`raised in the corresponding opposition or patent owner response.’” Lindsay Corp.
`
`v. Valmont Indus., Inc., IPR2015-01039, Paper 37 at 42-43 (PTAB Sept. 14, 2016);
`
`see also Toro Co. v. MTD Prods. Inc., IPR2016-00194, Paper 41 at 11-13 (PTAB
`
`May 10, 2017) (“Patent Owner argues that ‘Petitioner cannot submit additional,
`
`belated evidence in its Reply that supports its Petition if it could have been
`
`presented in a prior filing.’ This statement of the law is wrong. . . . Patent Owner
`
`blurs ‘belated evidence’ with reply evidence; not all evidence first submitted in a
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`reply is belated.”); Nintendo of America Inc. v. Motion Games, LLC, IPR2014-
`
`00164, Paper 51 at 24 (PTAB May 15, 2015) (“[T]he mere fact that Dr. Welch’s
`
`Reply Declaration includes evidence that was not discussed specifically in the
`
`Petition is insufficient to establish the impropriety of such evidence, much less
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`inadmissibility under the FRE.”).
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`7
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`
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`Dr. Sturges’ purportedly “new” opinions are within the scope of proper reply
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`because they respond directly to the arguments and opinions raised by P.O. and
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`P.O’s expert, and P.O. make no effort whatsoever to demonstrate otherwise. In its
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`Opposition papers, P.O. challenged Dr. Sturges’ opinion about deformation (see
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`Paper 24 at 26-28; Ex. 2015 at ¶¶ 66-75, 87), mischaracterized and disputed
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`Dr. Sturges’ opinion about axial displacement (see Paper 24 at 21-22; Ex. 2015 at
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`¶¶ 51-55), alleged that Hon 043’s cavity wall does not provide weight-bearing
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`support for the porous body (see Paper 24 at 20, 23; Ex, 2015 at ¶ 50), disputed the
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`rigidity of Hon 043’s porous body (see Paper 24 at 29-30, 41; Ex. 2015 at ¶¶ 63-
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`65, 87-88), and contended that there is no friction fit or bonding material between
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`Hon 043’s cavity wall and porous body (see Paper 24 at 22, 24; Ex. 2015 at ¶¶ 41,
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`51-55, 62-65). Dr. Sturges’ opinions concerning deformation, axial displacement,
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`sag/rigidity, and misalignment are in direct reply to these arguments and opinions.
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`See, e.g., Ex. 1027 at ¶¶ 8-13, 16, 18-19, 21-48.2 And P.O. makes no effort to
`
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`2 P.O. irrelevantly notes that Sturges’ 50-page Reply Declaration is “nearly as long
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`as his” Petition (Ex. 1015) and Supplemental (Ex. 1020) Declarations combined.
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`This is hardly surprising given that Sturges’ Reply Declaration replies to P.O.’s
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`
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`8
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`
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`demonstrate otherwise. See, e.g., Liberty Mut., CBM2012-00003, Paper 78 at 68
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`(denying motion to exclude because “Progressive’s motion does not contain any
`
`meaningful discussion of the arguments Progressive has made in its patent owner
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`response, which reasonably might or might not have triggered [Petitioner’s]
`
`reliance on the testimony Progressive now seeks to exclude.”).
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`Nevertheless, with the sole exception of the “misalignment” opinion (which
`
`in any event was proper reply, see Ex. 1027 at ¶¶ 19-20), Dr. Sturges’ purportedly
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`“new” opinions are not new, but can trace their roots back to Sturges’ Petition
`
`Declaration and the cross-examination testimony elicited by P.O. during his March
`
`2017 deposition. See Exhibit 1015 at ¶¶ 44-46 (axial displacement of Hon 043’s
`
`porous body, which can have a wide range of rigidities), 47-49 (cavity wall
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`provides support against radial compression of the porous body); Exhibit 2016 at
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`117:7-118:20, 130:6-23 (axial displacement); 117:15-118:20, 120:6-16; 127:3-6;
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`170:25-171:11 (deformation prevention); and 127:20-24, 126:4-127:17 (preventing
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`sag and potential collapse of the relatively low rigidity porous body); see also
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`186:23-187:15 (redirect examination addressing the weight-bearing support that
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`Hon 043’s cavity wall provides the liquid filled porous body). P.O. can hardly
`
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`59-page Opposition and Meyst’s 51-page supporting declaration, which comprise
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`a combined 110 pages.
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`9
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`
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`complain that it has been unfairly prejudiced by opinions that have their origins in
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`Sturges’ Petition Declaration and/or in testimony P.O. itself elicited on cross-
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`examination prior to filing its Opposition papers.
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`C.
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`P.O. Has Had Ample Opportunity To Respond To Sturges’
`Reply Opinions
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`P.O. contends that Petitioner withheld Dr. Sturges’ purportedly “new”
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`opinions “until after Patent Owner filed its last substantive paper.” Mot. at 6. Not
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`so.
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`Dr. Sturges’ Reply opinions concerning deformation, relative axial
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`displacement, and sagging and potential collapse of Hon 043’s low rigidity porous
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`body were elicited by P.O. during cross examination at his March 2017 deposition,
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`nearly a month before P.O. filed its Opposition papers.
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`P.O. also had a second opportunity to respond. P.O. deposed Dr. Sturges
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`again; this time about his Reply Declaration, and subsequently filed a motion for
`
`observations on that cross-examination. Paper 38. P.O. thus had the opportunity
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`to bring any purportedly helpful cross-examination testimony to the Board’s
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`attention.
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`Moreover, if P.O. truly believed that it was unfairly prejudiced by
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`Dr. Sturges’ purportedly “new” opinions, it could have sought leave to file a sur-
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`reply and/or sought leave to file supplemental information responding to
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`
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`10
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`
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`Dr. Sturges’ purportedly “new” opinions. But P.O. did not pursue any of these
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`potential avenues of relief. See First Quality Baby Prods., LLC v. Kimberly-Clark
`
`Worldwide, Inc., IPR2014-01023, Paper 56 at 22-23 (PTAB Dec. 10, 2015)
`
`(finding no unfair prejudice when Patent Owner did not seek to adduce further
`
`testimony at the deposition or request additional relief from the Board when it had
`
`the opportunity to do so).
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`P.O.’s cited authority is not on point. In Scotts Co. LLC v. Encap LLC, the
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`Board expressly found that the relevant Declarations “contain[ed] material outside
`
`the proper scope of reply” and by waiting to serve this evidence until the reply
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`“denied [Encap] the opportunity to file responsive evidence.” IPR2013-00110,
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`Paper 79 at 5 (PTAB June 24, 2014) (Ex. 2034). In stark contrast, Dr. Sturges’
`
`reply opinions are within the proper scope of reply, were in any event not new, and
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`P.O. had ample opportunity, and in fact did, file responsive evidence.
`
`In Intri-Plex Techs., Inc. et al. v. Saint-Gobain Performance Plastics Rencol
`
`Ltd., the petitioner did not file any expert declaration testimony with its petition but
`
`presented Dr. McCarthy’s Declaration with its reply. According to the Board, this
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`tactic prevented patent owner and its expert from responding to Dr. McCarthy’s
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`opinions in patent owner’s opposition. IPR2014-00309, Paper 83 at 13 (PTAB
`
`March 23, 2014) (Ex. 2031). In stark contrast, P.O. was provided with the Petition
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`and Supplemental Declarations of Dr. Sturges. P.O. cross-examined Dr. Sturges
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`11
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`
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`about these Declarations, and elicited the purportedly “new” opinions before P.O.
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`filed its Opposition papers. Moreover, P.O. was provided a second opportunity to
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`cross-examine Dr. Sturges, and filed a motion for observations on that cross-
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`examination.
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`In Veeam Software Corp. v. Symantec Corp., the patent owner’s declarations
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`in support of a motion to amend went beyond the permissible scope of reply.
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`IPR2013-00141, Paper 35 at 4 (PTAB April 7, 2014) (Ex. 2032). Here,
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`Dr. Sturges’ Reply Declaration is within the proper scope of reply, and P.O. makes
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`no attempt to show otherwise.
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`P.O. Has Not Met Its Burden Under FRE 702/703
`
`D.
`In response to P.O.’s objections, Petitioner served the Supplemental
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`Evidence Declaration of Dr. Sturges (Ex. 1034). P.O. does not even attempt to
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`explain how Dr. Sturges’ Reply Declaration in combination with his Supplemental
`
`Declaration fail to pass muster under FRE 702 and 703. As such, P.O.’s motion
`
`should be denied. See Google Inc. v. Visual Real Estate, Inc., IPR2014-01341,
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`Paper 38 at 39-40 (PTAB Feb. 19, 2016) (“A motion to exclude must, among other
`
`things, explain each objection. In this case, VRE does not explain adequately its
`
`objections to certain portions of Dr. Fuchs’s testimony. . . .”); see also Apple Inc. v.
`
`Sightsound Techs., LLC, CBM2013-00020, Paper 105 at 61 (PTAB Oct. 7, 2014)
`
`(denying motion to exclude because “SightSound argues that the material should
`
`12
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`
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`be excluded under Federal Rules of Evidence 602, 701, 702, 703, 704 or 705, but
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`does not provide specific analysis directed to any of those rules or case law support
`
`explaining why the material is inadmissible”).
`
`E.
`
`P.O. Has Not Met Its Burden Under FRE 401-403 With
`Respect to Exhibits 1028-1032
`
`P.O. moves pursuant to FRE 401-403 to exclude Exhibits 1028-1032, which
`
`are exhibits cited in Dr. Sturges’ Reply Declaration (Ex. 1027). But, as noted
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`above, Sturges’ Reply Declaration is appropriate reply, and these exhibits are not
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`even cited in the 18 paragraphs specifically challenged by the P.O.
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`P.O. also contends that these exhibits are irrelevant under FRE 403, because
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`“Petitioner does not directly rely on [them] in its Reply brief.” Mot. at 6.
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`However, “there is no requirement that Petitioner must cite evidence in its Reply or
`
`Opposition to be relevant.” Activision Blizzard, Inc. et al. v. Acceleration Bay,
`
`LLC, IPR2015-01953, Paper 107 at 75 (PTAB Mar. 23, 2017). Moreover,
`
`Dr. Sturges cites to this evidence in support of his reply opinions. Ex. 1027 at
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`¶¶ 42, 57.
`
`Aside from this, FRE 403 is not applicable in a proceeding in front of the
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`Board. Dig. Ally, Inc. v. Util. Assocs., Inc., IPR2014-00725, Paper 27 at 29 n.7
`
`(PTAB July 27, 2015) (“[A]s in a bench trial, evidence should not be excluded
`
`before the Board in an inter partes review under Fed. R. Evid. 403, on the grounds
`
`
`
`13
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`
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`that it is unfairly prejudicial.”); see also Square, Inc. v. Unwired Planet, LLC,
`
`CBM2014-00156, Paper 40 at 37 (PTAB Dec. 22, 2015) (“‘Rule 403 is
`
`inapplicable to bench trials.’ . . . The Board, sitting as a non-jury tribunal with
`
`administrative expertise, is well-positioned to determine and assign appropriate
`
`weight and/or relevance to evidence.”) (internal citation omitted). This is
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`particularly true in view of the “strong public policy for making all information
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`filed in an administrative proceeding available to the public, especially in a inter
`
`partes review.” Biomarin Pharm. Inc. v. Genzyme Therapeutic Prods. Ltd. P’ship,
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`IPR2013-00537, Paper 79 at 25 (PTAB Feb. 23, 2015) (noting the strong public
`
`policy and stating that “[i]t is better to have a complete record of the evidence
`
`submitted by the parties than to exclude particular pieces of evidence.”).
`
`F.
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`P.O. Has Not Met Its Burden Under FRE 401-403 With
`Respect to Exhibits 1005-1008 and 1022
`
`P.O. moves pursuant to FRE 403 to exclude Exhibits 1005-1008 (which are
`
`portions of the 742 patent’s prosecution history). As explained above, FRE 403 is
`
`not applicable in this context and the Board is “well-positioned to determine and
`
`assign appropriate weight and/or relevance to evidence.” Even assuming the
`
`applicability of FRE 403 in this proceeding, P.O. never explains why it is unfairly
`
`prejudiced, or how the purported prejudice outweighs the probative value. On this
`
`basis alone P.O.’s motion should be denied. Cf. EBay Inc. v. Moneycat Ltd.,
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`
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`14
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`
`
`CBM2014-00092, Paper 49 at 71 (PTAB Sept. 23, 2015) (“Although Patent Owner
`
`argues the uncited paragraphs are prejudicial to it, Patent Owner does not explain
`
`what is the nature of the prejudice it will suffer and why. . . . Patent Owner’s
`
`argument is at best a challenge to the sufficiency or weight to be given to the
`
`document, which is not proper in a motion to exclude.”).
`
`Moreover, these exhibits are relevant. Exhibits 1005-1008 are prosecution
`
`history excerpts that provide relevant context. Exhibit 1022 is relevant to the
`
`weight that should be afforded Meyst’s opinions concerning Hon 043. Meyst’s
`
`sworn testimony in Exhibit 1022 establishes that he does not know the size of
`
`droplets in an aerosol. This lack of foundational information calls into question the
`
`weight that should be afforded Meyst’s opinion that Hon 043’s aerosol cannot pass
`
`through Hon 043’s porous body. See Ex. 2015 at ¶¶ 42-44.
`
`IV. CONCLUSION
`For the foregoing reasons, P.O.’s motion to exclude should be denied in all
`
`respects.
`
`Dated: September 8, 2017
`
`BRINKS GILSON & LIONE
`P.O. Box 10395
`Chicago, Illinois 60610
`(312) 321-4200
`
`
`Respectfully submitted,
`
`
`
`/s/ Ralph J. Gabric
`Ralph J. Gabric, Reg. No. 34,167
`Lead Counsel for Petitioner
`
`
`
`
`15
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
`
`certifies that on September 8, 2017, a complete and entire copy of this
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`
`EXCLUDE PURSUANT TO 37 C.F.R. §§42.62 AND 42.64 was served by
`
`Electronic submission through the USPTO Patent Trial and Appeal Board End-to-
`
`End System and by e-mail to:
`
`Michael J. Wise, Lead Counsel
`(MWise@perkinscoie.com)
`
`Joseph P. Hamilton, Back-up Counsel
`(JHamilton@perkinscoie.com)
`
`Jenna M. DeRosier
`(JDeRosier@perkinscoie.com)
`
`Tyler R. Bowen, Back-up Counsel
`(TBowen@perkinscoie.com)
`
`Amy Candeloro (ACandeloro@perkinscoie.com)
`patentprocurement@perkinscoie.com
`
`Dated: September 8, 2017
`
`
`
`
`
`/s/ Ralph J. Gabric
`
`
`Ralph J. Gabric (Reg. No. 34,167)
`Brinks Gilson & Lione
`NBC Tower – Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
`Lead Counsel for Petitioner
`
`
`
`16
`
`
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