`U.S. Patent No. 9,336,336
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`
`
`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.
`
`
`Patent No. 9.336,336
`Issue Date: May 10, 2016
`Title: 2D IMAGE ARRANGEMENT
`
`
`
`Inter Partes Review No. IPR2018-00788
`
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`PETITIONERS’ OPPOSITION TO MOTION TO EXCLUDE
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`
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`U.S. Patent No. 9,336,336
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
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`INTRODUCTION ........................................................................................... 1
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`ARGUMENT ................................................................................................... 1
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`A.
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`B.
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`The Motion to Exclude Is Improper ...................................................... 1
`
`Even if the Motion is Substantively Addressed, It Should Be
`Denied for the Same Reasons Patent Owner’s Motion to Strike
`Should Be Denied; Section VI.C of Dr. Mundy’s Second
`Declaration Is Relevant ......................................................................... 2
`
`III. CONCLUSION ................................................................................................ 5
`
`CERTIFICATE OF SERVICE ................................................................................... 7
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`
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`-i-
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`U.S. Patent No. 9,336,336
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Federal Cases
`Google Inc. v. Visual Real Estate, Inc.,
`IPR2014-01339, 2016 WL 308801 (PTAB Jan. 25, 2016) .................................. 1
`Vibrant Media, Inc. v. General Electric Co.,
`IPR2013-00170, 2014 WL 2965703 (PTAB June 26, 2014) ............................... 2
`Other
`83 Fed. Reg. 39989 (August 13, 2018) 14 ............................................................. 1, 5
`
`4853-0916-0268.2
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`
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`U.S. Patent No. 9,336,336
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`I.
`
`INTRODUCTION
`Patent Owner’s motion to exclude evidence is improper because it addresses
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`evidence that Patent Owner believes is beyond the scope of Petitioners’ Reply.
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`Patent Owner’s arguments are only pertinent to a motion to strike, which Patent
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`Owner has already filed, and Patent Owner merely repeats the same arguments
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`from its motion to strike. For this reason, the motion to exclude should be denied.
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`Even if the motion is considered substantively, it should be denied for the
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`same reasons set forth in Petitioners’ opposition to Patent Owner’s motion to
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`strike. Section VI.C of the Second Declaration of Dr. Mundy (Exhibit 1023) is
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`plainly relevant to address obviousness based on Wiedmann combined with
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`Sachdeva – which is a Ground included in the Petition – and to address an issue
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`explicitly set forth in the Board’s Institution Decision.
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`II. ARGUMENT
`A. The Motion to Exclude Is Improper
`Patent Owner’s motion to exclude should be denied because it is improper.
`
`The Trial Practice Guide Update provides that “a motion to exclude [should not]
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`address arguments or evidence that a party believes exceeds the proper scope of
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`reply or sur-reply.” Trial Practice Guide Update, 83 Fed. Reg. 39989 (Aug. 13,
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`2018) at 16; see also, e.g., Google Inc. v. Visual Real Estate, Inc., IPR2014-01339,
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`2016 WL 308801, *17 (PTAB Jan. 25, 2016) (“a motion to exclude is not the
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`proper mechanism to raise the issue of testimony in a rebuttal declaration
`1
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`U.S. Patent No. 9,336,336
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`exceeding the permissible scope of reply testimony”); Vibrant Media, Inc. v.
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`General Electric Co., IPR2013-00170, 2014 WL 2965703, *19 (PTAB June 26,
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`2014) (“A motion to exclude is not a mechanism to argue that a reply contains new
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`arguments or relies on evidence necessary to make out a prima facie case.”). That
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`is precisely what Patent Owner seeks to address with its motion to exclude, and
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`thus the motion should be denied.
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`B.
`
`Even if the Motion is Substantively Addressed, It Should Be
`Denied for the Same Reasons Patent Owner’s Motion to Strike
`Should Be Denied; Section VI.C of Dr. Mundy’s Second
`Declaration Is Relevant
`The issue set forth in Patent Owner’s motion to exclude has already been
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`briefed by the parties with respect to Patent Owner’s motion to strike. See Paper
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`30 and 33. Consequently, to the extent the Board is inclined to substantively
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`address this issue again here, in the context of an (improper) motion to exclude,
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`Petitioners refer back to its Opposition to the Motion to Strike. For all the reasons
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`set forth in that Opposition, Patent Owner’s motion to exclude should also be
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`denied. See Paper 33.
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`Furthermore, to briefly reiterate those arguments, Petitioners here again
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`briefly explain why Patent Owner’s arguments are incorrect. The opinion set forth
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`by Dr. Mundy in Section VI.C of his second declaration is permissible and relevant
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`to the obviousness issues in the proceeding.
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`
`
`2
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`U.S. Patent No. 9,336,336
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`In the Petition, Petitioners noted that the phrase “3D virtual model of at least
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`part of an oral cavity of the patient” in claim 1 of the ’336 patent includes both pre-
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`restoration and post-restoration models. Paper 1 at 8-9. In its Preliminary
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`Response, Patent Owner disagreed. Paper 6 at 11-14. In the Institution Decision,
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`the Board agreed with Patent Owner. Paper 7 at 9-10.
`
`This portion of Dr. Mundy’s second declaration addresses an issue set forth
`
`the Institution Decision and Patent Owner’s Response, which is whether the claims
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`would still have been obvious based on Wiedmann – or Wiedmann combined with
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`Sachdeva1 – even if Wiedmann does not disclose a “3D virtual model of at least
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`part of an oral cavity of the patient,” assuming this limitation is construed to
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`require that the “oral cavity of the patient” is in its pre-restoration state, instead of
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`post-restoration. This specific issue is set forth in the Institution Decision, where
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`the Board accepted Patent Owner’s construction of this phrase, limiting it to a
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`model of the patient’s oral cavity pre-restoration. Paper 7 at 9-10. The Board
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`further stated:
`
`We note that the source of the 3D model, whether from a database, as
`Wiedmann discloses (Ex. 1007, 6), or from another known method,
`such as in Sachdeva (see, e.g., Ex. 1005 at 14:20–28, Fig. 6; Pet. 23–
`24), would not appear to change the operation of Wiedmann’s system
`otherwise. But whether modifying Wiedmann, either alone or in
`combinations with Sachdeva, such that the provided 3D model is of
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`1 Ground 1 in the Petition asserts that claim 1 and various other claims are either
`anticipated by Wiedmann or, alternatively, rendered obvious by Wiedmann in view
`of Sachdeva. See Paper 1 at 12-51.
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`
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`3
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`U.S. Patent No. 9,336,336
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`the patient’s oral cavity, would have been obvious to one of ordinary
`skill in the art, and whether there exists “some articulated reasoning
`with some rational underpinning” (KSR, 550 U.S. at 418) to support
`such a modification are open questions we expect will be of
`particular interest during the trial phase of this proceeding.
`Id. at 31-32 (emphasis added).
`
`Petitioners then moved to submit supplemental information, including a
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`supplemental declaration of Dr. Mundy. See Paper 9 at 3-4. The purpose was to
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`present information to address this issue – i.e., under the Board’s / Patent Owner’s
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`construction, it still would have been obvious to combine Wiedmann with
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`Sachdeva (Ground 1) to meet this limitation. Id.
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`The Board denied this portion of Petitioners’ motion to submit supplemental
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`information. The basis for denying the motion was as follows:
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`In accordance with our updated Trial Practice Guide, “the Board
`will permit the petitioner, in its reply brief, to address issues
`discussed in the institution decision.” Trial Practice Guide Update,
`83 Fed. Reg. 39989 (August 13, 2018) 14 (emphasis added).
`Petitioner will have an opportunity to address both the Institution
`Decision and the Patent Owner Response, if submitted, in its Reply as
`provided in the Scheduling Order. Thus, we determine that the
`submission of this supplemental Declaration from Petitioner’s expert
`is premature and would not promote “the just, speedy, and
`inexpensive resolution” of this proceeding. Motion 2; 37 C.F.R. §
`42.1(b); see 37 C.F.R. § 42.22(a).
`Paper 17 at 6 (emphasis added).
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`In other words, the Board previously explicitly held that it would allow these
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`issues to be part of the Reply. This is consistent with the Trial Practice Guide
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`4
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`U.S. Patent No. 9,336,336
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`Update, as quoted above by the Board. See Trial Practice Guide Update, 83 Fed.
`
`Reg. 39989 (August 13, 2018) 14 (“the Board will permit the petitioner, in its reply
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`brief, to address issues discussed in the institution decision.”).
`
`Section VI.C of Exhibit 1023 (Dr. Mundy’s Second Declaration) does just
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`that, exactly as contemplated by the Board. That section of the declaration is also
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`substantively identical to the one provided to Patent Owner with Petitioners’
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`motion to submit supplemental information.
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`The issues raised in Section VI.C of Exhibit 1023 (Dr. Mundy’s Second
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`Declaration) are thus plainly relevant to an obviousness issue that is part of the
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`proceeding. Patent Owner’s motion to exclude should be denied for that reason,
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`also.
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`III. CONCLUSION
`For the foregoing reasons, Patent Owner’s motion should be denied.
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`Dated: June 4, 2019
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`Respectfully submitted,
`
`
`
`/Matthew B. Lowrie/
`Matthew B. Lowrie
`Registration No. 38,228
`Kevin M. Littman
`admitted pro hac vice
`Foley & Lardner LLP
`111 Huntington Avenue
`Boston, MA 02199-7610
`Tel: (617) 342-4000
`Fax: (617) 342-4001
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`5
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`U.S. Patent No. 9,336,336
`US. Patent No. 9,336,336
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`Counsel for Petitioners
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`Counsel for Petitioners
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`6
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`U.S. Patent No. 9,336,336
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a true and correct copy of the
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`foregoing PETITIONERS’ OPPOSITION TO MOTION TO EXCLUDE will be
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`filed via PTAB E2E and served via electronic mail this 4TH day of June, 2019, on
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`counsel for Patent Owner as follows.
`
`todd.walters@bipc.com
`
`roger.lee@bipc.com
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`By:
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`
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`/Matthew B. Lowrie/
`Matthew B. Lowrie
`Reg. No. 38,228
`Counsel for Petitioners
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`7
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