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 REPLY
`IN SUPPORT OF 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 REPLY
`IN SUPPORT OF MOTION TO EXCLUDE EVIDENCE
`
`
`
`Case No. IPR2018-00788
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`
`
`
`
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`ARGUMENT ................................................................................................... 1
`Patent Owner’s Motion to Exclude is Proper ........................................ 1
`A.
`Section VI.C of Dr. Mundy’s Second Declaration is Irrelevant ........... 3
`B.
` CONCLUSION ................................................................................................ 5 III.
`
`APPENDIX A - LIST OF EXHIBITS
`CERTIFICATE OF FILING AND SERVICE
`
`
`i
`
`
`
`Case No. IPR2018-00788
`
`
`I.
`
`INTRODUCTION
`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.
`
` ARGUMENT
`II.
`
`Patent Owner’s Motion to Exclude is Proper
`A.
`
`Petitioners assert that Patent Owner’s Motion to Exclude is improper and its
`
`arguments are only pertinent to a Motion to Strike because Patent Owner’s Motion
`
`to Exclude allegedly “addresses evidence that Patent Owner believes is beyond the
`
`scope of Petitioner’s Reply.” Paper 37 at 1. Petitioners are mistaken for at least
`
`the following reasons.
`
`First, Patent Owner’s Motion to Exclude makes no mention regarding the
`
`scope of Petitioner’s Reply, let alone whether Section VI.C. of Exhibit 1023
`
`exceeds the proper scope of reply.1 Instead, as plainly stated in both its Objections
`
`
`1 Patent Owner separately filed a Motion to Strike Petitioner’s Untimely New
`
`Reply Arguments and Evidence on May 7, 2019. Patent Owner’s Motion to Strike
`
`separately explains why the Board should strike Petitioner’s new arguments and
`
`evidence.
`
`1
`
`
`
`Case No. IPR2018-00788
`
`to Petitioner’s Evidence and Motion to Exclude, Patent Owner objects to Section
`
`VI.C. of Exhibit 1023 based on Fed. R. Evid. 401, 402, and 403. Papers 28 and 36.
`
`Second, Patent Owner’s Motion to Exclude is the proper mechanism for
`
`excluding new expert testimony that is irrelevant. See Office Patent Trial Practice
`
`Guide, August
`
`2018 Update,
`
`(Aug.
`
`13,
`
`2018)
`
`(available
`
`at
`
`https://go.usa.gov/xU7GP) at 14 (“If a party submits a new expert declaration with
`
`its reply, the opposing party may cross-examine the expert, move to exclude the
`
`declaration, ….” (emphasis added)). The Office Patent Trial Practice Guide also
`
`cites to Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015). Id. at 14.
`
`Belden found evidence raised in reply excludable because “a party may move to
`
`exclude evidence, whether as improper under the response-only regulation, under
`
`the Trial Practice Guide’s advice, or on other grounds. 35 U.S.C. § 42.64(c).”
`
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015). Petitioner’s
`
`reliance on Vibrant Media, Inc. v. General Electric Co., IPR2013-00170 (P.T.A.B.
`
`June 26, 2014)—a non-precedential and non-informative decision—is likewise
`
`misplaced because the Vibrant decision issued before both the Belden opinion and
`
`the Office Patent Trial Practice Guide August 2018 Update.
`
`Thus, Patent Owner’s Motion to Exclude is proper.
`
`2
`
`
`
`Case No. IPR2018-00788
`
`B.
`
`
`
`Section VI.C of Dr. Mundy’s Second Declaration is Irrelevant
`
`Petitioners’ Opposition to Motion to Exclude confirms, rather than refutes,
`
`that Petitioners improperly seek to repair a gap in their prima facie case of
`
`obviousness.
`
`While the Office Patent Trial Practice Guide does state that “the Board will
`
`permit the petitioner, in its reply brief, to address issues discussed in the institution
`
`decision,” it also states that “Petitioner may not submit new evidence or argument
`
`in reply that it could have presented earlier, e.g. to make out a prima facie case of
`
`unpatentability.” See Office Patent Trial Practice Guide, August 2018 Update, at
`
`14.
`
`Here, Petitioners allege that the introduction of Section VI.C. of Dr.
`
`Mundy’s second declaration “addresses an issue set forth [in] the Institution
`
`Decision and Patent Owner’s Response.” Paper 37 at 3. However, whether there
`
`was a motivation to combine Wiedmann with Sachdeva to arrive at the limitation
`
`“provide a 3D virtual model of at least part of an oral cavity of the patient” was not
`
`an issue set forth in the Petition, much less cured by the Institution Decision.
`
`Rather, the Board mentioned this issue for the purpose of explaining that the
`
`Petition did 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.” Paper 7 at 31.
`
`3
`
`
`
`Case No. IPR2018-00788
`
`Section VI.C. of Exhibit 1023 pertains to an obviousness rationale that was not
`
`even alleged in the Petition. And certainly, the Board did not present any
`
`obviousness rationale in the Institution Decision on this issue. The new evidence
`
`is therefore irrelevant to the obviousness rationales at issue in this proceeding.
`
`Moreover, Petitioners admit that “[t]his portion of Dr. Mundy’s second
`
`declaration addresses … whether the claims would still have been obvious based
`
`on Wiedmann – or Wiedmann combined with Sachdeva – even if Wiedmann does
`
`not disclose a ‘3D virtual model of at least part of an oral cavity of the patient.’”
`
`Paper 37 at 3 (emphasis added). That is, even Petitioners recognize that the
`
`testimony set forth in Section VI.C. of Exhibit 1023 pertains to an obviousness
`
`rationale that was not originally alleged in the Petition. Petitioners also admit in
`
`this passage that Section VI.C. of Exhibit 1023 pertains to an unpatentability
`
`ground that was never alleged in the Petition: “whether the claims would still have
`
`been obvious based on Wiedmann” alone. Such testimony is therefore irrelevant to
`
`any unpatentability ground and any obviousness rationale upon which trial was
`
`instituted, and should be excluded. Fed. R. Evid. 401, 402; see also Office Patent
`
`Trial Practice Guide, August 2018 Update, at 15 (“It is also improper to present in
`
`reply new evidence (including new expert testimony) that could have been
`
`presented in a prior filing”).
`
`4
`
`
`
`Case No. IPR2018-00788
`
`Thus, Petitioner’s attempt to interject additional expert testimony for the
`
`purpose of gap-filling at this stage is improper under applicable Federal Circuit and
`
`P.T.A.B. authority, and the untimely testimony should be excluded.
`
` 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: June 10, 2019
`
`
`
`5
`
`
`
`Case No. IPR2018-00788
`
`
`EXHIBIT
`
`1023
`
`APPENDIX A - LIST OF EXHIBITS
`
`DESCRIPTION
`
`Second Declaration of Joseph L. Mundy, Ph.D.
`
`
`A-1
`
`
`
`Case No. IPR2018-00788
`
`
`CERTIFICATE OF FILING AND SERVICE
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`
`EVIDENCE is being filed via PTAB E2E and served on counsel for Petitioner by
`
`electronic mail this 10th day of June, 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: June 10, 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
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
