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`Filed: 19 April 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZIMMER BIOMET HOLDINGS, INC.,
`Petitioner,
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`v.
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`FOUR MILE BAY, LLC,
`Patent Owner.
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`Case IPR2018-00052
` Patent 9,308,093 B2
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`Before, JOSIAH COCKS, GEORGE R. HOSKINS and
`FRANCES L. IPPOLITO, Administrative Patent Judges
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`PATENT OWNER’S RESPONSE TO
`PETITIONER’S OBJECTIONS TO PATENT OWNER’S EXHIBITS
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`Case IPR2018-00052
`Patent 9,308,093 B2
`Patent Owner serves the following Response to Petitioner’s Objections to
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`Patent Owner’s Exhibits pursuant to 37 C.F.R. § 42.64(b)(1). This Response is
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`being served within ten business days of Petitioner’s filing of its objections.
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`Patent Owner offers three important reasons why Petitioner’s motion to
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`exclude evidence should be refused.
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`First, evidence in an IPR proceeding should be admitted because “there is a
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`strong public policy for making all information filed in an administrative
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`proceeding available to the public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins.
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`Co., CBM2012-00010, Paper 59 at 40 (PTAB February 24, 2014).
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`Second, the PTAB is capable of determining the proper weight of evidence
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`received. See Corning, Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19
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`(PTAB May 1, 2014) (citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224
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`(8th Cir. 1941) (“[o]ne who is capable of ruling accurately upon the admissibility
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`of evidence is equally capable of sifting it accurately after it has been received . . .
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`.”)).
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`Third, the PTAB has an obligation to maintain a complete record for any
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`potential appellate review. See Gnosis S.p.A. v. S. Alabama Med. Sci. Found.,
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`IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014) (citing Donnelly Garment
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`Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“If the record on review contains
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`not only all evidence which was clearly admissible, but also all evidence of
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`Case IPR2018-00052
`Patent 9,308,093 B2
`doubtful admissibility, the court which is called upon to review the case can
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`usually make an end of it, whereas if evidence was excluded which that court
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`regards as having been admissible, a new trial or rehearing cannot be avoided.”)).
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`In addition to these three important reasons, Patent Owner provides further
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`reasons below directed to each of Petitioner’s objections.
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`
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`I.
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`Objections Based on Relevance (FRE 401 and 402)
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`Petitioner objected to Patent Owner’s Exhibits 2009, 2012, 2015, 2017, and
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`2020 under Federal Rules of Evidence 401 and 402, asserting that Petitioner [sic,
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`“Patent Owner”] has not established that these exhibits are relevant to what one of
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`ordinary skill in the art would have understood at the time of the alleged invention
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`of U.S. Patent No. 9,308,093 (the ‘093 patent).
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`Patent Owner submitted exhibits 2009, 2012, 2015, 2017, and 2020 to
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`establish the patentability of the patent claims at issue in the ‘093 patent. In the
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`Patent Owner Preliminary Response, Patent Owner relied on these exhibits to show
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`what one of ordinary skill in the art would have understood the invention claimed
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`in the ‘093 patent. For example, exhibits 2009, 2012, 2017, and 2020 show that
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`cutting Bobyn’s material smears the material and renders it unsuitable for use on a
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`hip implant. Exhibit 2015 provides a definition for the term “base” recited in one
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`or more claims.
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`Case IPR2018-00052
`Patent 9,308,093 B2
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`II. Objections Based on Hearsay (FRE 801 and 802)
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`Petitioner objected to Patent Owner’s Exhibits 2001-2013 and 2015-2020 on
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`the ground of hearsay under FRE 801 and 802.
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`Exhibits 2001-2013 and 2015-2020 were submitted to establish the
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`patentability of the patent claims at issue. These exhibits are being offered for what
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`they describe—not for the truth of their disclosure. See, e.g., EMC Corp. v.
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`Personal Web Technologies, LLC, IPR2013-00085, Final Written Decision, Paper
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`No. 73 at 66 (PTAB May 15, 2014) (“[A] prior art document submitted as a
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`‘printed publication’ under 35 U.S.C. § 102(b) is offered simply as evidence of
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`what it described, not for proving the truth of the matters addressed in the
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`document.”) (citing Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2
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`(D.D.C. 1990); Fed. R. Evid. 801(c) 1997 Adv. Comm. Note (“If the significance
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`of an offered statement lies solely in the fact that it was made, no issue is raised as
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`to the truth of anything asserted, and the statement is not hearsay.”)).
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`Furthermore, many of these exhibits fall under an exception to the hearsay
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`rule. F.R.E. 803(18) (“The following are not excluded by the rule against
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`hearsay … (18) Statements in Learned Treatises, Periodicals, or Pamphlets.”).
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`Case IPR2018-00052
`Patent 9,308,093 B2
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`III. Objections Based on Authentication (FRE 901 and 902)
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`Petitioner objected to Patent Owner’s Exhibits 2002, 2004, 2006, 2007, 2009,
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`2012, 2013, 2015, 2017, 2019, and 2020 under Federal Rules of Evidence 901 and
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`902 as not having been properly authenticated.
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`Many of these exhibit were already authenticated by Declarations of Dr.
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`Helmus and Vincelli. Furthermore, many of the exhibits are self-authenticating as
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`qualifying as a “Periodical” under Rule 902(6).
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`IV. Objections to Exhibit 2003 and 2008
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`Petitioner objected to Patent Owner’s Exhibits 2003 and 2008 because they
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`allegedly include information unrelated to the issues in this proceeding.
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`Exhibits 2003 and 2008 are Declarations of Dr. Helmus and Vincelli and
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`include relevant evidence about the state of the art, exhibits cited in this proceeding,
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`and information relating to how one of ordinary skill in the art would have
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`understood the invention claimed in the ‘093 patent.
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`Dated: April 19, 2018
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`Respectfully submitted,
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`/Philip S. Lyren/
`Philip S. Lyren (# 40,706)
`Counsel for Patent Owner (FMB)
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`5
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`Case IPR2018-00052
`Patent 9,308,093 B2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on April 19, 2018 the
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`foregoing Patent Owner’s Response to Petitioner’s Objections to Patent Owner’s
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`Exhibits is being served electronically via email to the following counsel of record:
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`
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`Naveen Modi
`naveenmodi@paulhastings.com
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`Young Park
`youngpark@paulhastings.com
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`Paromita Chatterjee
`mitachatterjee@paulhastings.com
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`Dated: April 19, 2018
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`/Philip S. Lyren/
`Philip S. Lyren (# 40,706)
`Counsel for Patent Owner (FMB)
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`6
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