Filed on behalf of Patent Owner 3Shape A/S
`By: Todd R. Walters, Esq.
`
`Roger H. Lee, Esq.
`Mythili Markowski, Ph.D., Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314
`Main Telephone (703) 836-6620
`Main Facsimile (703) 836-2021
`todd.walters@bipc.com
`roger.lee@bipc.com
`mythili.markowski@bipc.com
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`EXOCAD GMBH and EXOCAD AMERICA, INC.
`Petitioners
`
`v.
`
`3SHAPE A/S
`Patent Owner
`
`__________________
`
`Case No. IPR2018-00788
`Patent 9,336,336
`__________________
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`By: Todd R. Walters, Esq.
`
`Roger H. Lee, Esq.
`Mythili Markowski, Ph.D., Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314
`Main Telephone (703) 836-6620
`Main Facsimile (703) 836-2021
`todd.walters@bipc.com
`roger.lee@bipc.com
`mythili.markowski@bipc.com
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`EXOCAD GMBH and EXOCAD AMERICA, INC.
`Petitioners
`
`v.
`
`3SHAPE A/S
`Patent Owner
`
`__________________
`
`Case No. IPR2018-00788
`Patent 9,336,336
`__________________
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`
`
`Case No. IPR2018-00788
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`
`II.
`STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED ...... 1
`
` CONCLUSION ................................................................................................ 3 III.
`
`APPENDIX A - LIST OF EXHIBITS
`CERTIFICATE OF FILING AND SERVICE
`
`
`
`
`i
`
`
`
`Case No. IPR2018-00788
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner 3Shape A/S hereby requests
`
`exclusion of Section VI.C. (pages 27-29) of Exhibit 1023 as inadmissible under the
`
`Federal Rules of Evidence.1
`
`
`II.
`
`STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED
`Exhibit 1023 is the second declaration of Dr. Joseph Mundy, Petitioner’s
`
`expert. Petitioner cites Section VI.C. of Exhibit 1023 at pages 23-24 of
`
`Petitioner’s Reply. However, Section VI.C. of Exhibit 1023 is inadmissible under
`
`the Federal Rules of Evidence and should be excluded for the following reasons.
`
`The Board in its Institution Decision correctly determined that the Petition
`
`does not contain an obviousness rationale in which Wiedmann is modified, “either
`
`alone or in combination with Sachdeva,” to arrive at the limitation “provide a 3D
`
`virtual model of at least part of an oral cavity of the patient.” Institution Decision
`
`at 31.
`
`Section VI.C. (pages 27-29) of Exhibit 1023 is directed to this obviousness
`
`rationale that was not presented in the Petition. This is clear from the fact that
`
`1Patent Owner timely objected to Section VI.C. (pages 27-29) of Exhibit 1023
`
`under Fed. R. Evid. 401-403 in its Objections to Petitioner’s Evidence filed on
`
`April 18, 2019 (Paper 28).
`
`1
`
`
`
`Case No. IPR2018-00788
`
`Section VI.C. of Exhibit 1023 is entitled “It Would Have Been Obvious to
`
`Substitute a Post-Restoration Model of the Patient’s Oral Cavity with a Pre-
`
`Restoration Model.” Ex.1023 at 27; see also id. (“Assuming the construction of ‘at
`
`least part of an oral cavity of the patient’ used by the Board in its Institution
`
`Decision, it is my opinion that the combination of Wiedmann and Sachdeva
`
`renders the claim obvious…”). The testimony set forth in Section VI.C. of Exhibit
`
`1023 pertains to an obviousness rationale that was not alleged in the Petition. Such
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`testimony is therefore irrelevant to any obviousness rationale upon which trial was
`
`instituted, and should be excluded. Fed. R. Evid. 401, 402. See also Office Patent
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`Trial Practice Guide, August 2018 Update, 83 (Aug. 13, 2018) (available at
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`https://go.usa.gov/xU7GP) at 14 (“It is also improper to present in reply new
`
`evidence (including new expert testimony) that could have been presented in a
`
`prior filing”).
`
`
`
`Petitioner previously attempted to submit a supplemental expert declaration
`
`via supplemental evidence to address this deficiency in its Petition. Paper 9 at 3-4.
`
`The Board correctly rejected this initial attempt by Petitioner at gap-filling its
`
`prima facie case. Paper 17 at 6. Petitioner again attempts to gap-fill its prima
`
`facie case, this time by way of a second declaration of its expert (Exhibit 1023)
`
`filed with its Reply. The Board should reject Petitioner’s latest attempt.
`
`Petitioner’s submission of Dr. Mundy’s new alleged reasons to combine
`
`2
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`
`
`Case No. IPR2018-00788
`
`Wiedmann and Sachdeva is unduly delayed and unfairly prejudicial. Section VI.C.
`
`of Exhibit 1023 includes a new obviousness rationale that could have, and should
`
`have, been included in Dr. Mundy’s first declaration. Any alleged probative value
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`of Section VI.C. of Exhibit 1023 is substantially outweighed by undue delay and
`
`unfair prejudice, and should be excluded. Fed. R. Evid. 403.
`
` CONCLUSION
`III.
`For the foregoing reasons, Patent Owner requests that the Board exclude
`
`Section VI.C. (pages 27-29) of Exhibit 1023.
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`/Roger H. Lee/
`Roger H. Lee, Esq.
`Registration No. 46,317
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314
`Main Telephone (703) 836-6620
`Direct Telephone (703) 838-6545
`Main Facsimile (703) 836-2021
`roger.lee@bipc.com
`Counsel for Patent Owner
`
`
`
`Date: May 29, 2019
`
`
`
`3
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`
`
`Case No. IPR2018-00788
`
`
`EXHIBIT
`
`1023
`
`APPENDIX A - LIST OF EXHIBITS
`DESCRIPTION
`
`Second Declaration of Joseph L. Mundy, Ph.D.
`
`
`A-1
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`
`
`Case No. IPR2018-00788
`
`
`CERTIFICATE OF FILING AND SERVICE
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER’S MOTION TO EXCLUDE EVIDENCE is being filed via PTAB E2E
`
`and served on counsel for Petitioner by electronic mail this 29th day of May, 2019
`
`as follows:
`
`Matthew B. Lowrie, Esq.
`Christopher J. McKenna, Esq.
`Kevin M. Littman, Esq.
`Foley & Lardner LLP
`111 Huntington Avenue, Suite 2600
`Boston, Massachusetts 02199
`(617) 342-4001
`exocadIPR@foley.com
`klittman@foley.com
`
`
`
`
`Date: May 29, 2019
`
`
`
`
`
`
`
`
`
`
`/Roger H. Lee/
`Roger H. Lee, Esq.
`Registration No. 46,317
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314
`Main Telephone (703) 836-6620
`Direct Telephone (703) 838-6545
`Main Facsimile (703) 836-2021
`roger.lee@bipc.com
`Counsel for Patent Owner
`
`
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