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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTUITIVE SURGICAL, INC.,
`Petitioner,
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`v.
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`ETHICON LLC,
`Patent Owner.
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`Case IPR2018-01247
`U.S. Patent No. 8,479,969 B2
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`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`SERVED BY PETITIONER INTUITIVE SURGICAL, INC. IN INTER
`PARTES REVIEW
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`Pursuant to 37 C.F.R. § 42.64(b), Patent Owner Ethicon LLC, hereby objects
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`as follows to the admissibility of evidence filed by Petitioner Intuitive Surgical, Inc.
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`in Inter Partes review of U.S. Patent No. 8,479,969 (IPR2018-01247).
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`Evidence
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`Objections
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`Exhibit 1004
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`FRE 105: To the extent that any portion of this exhibit
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`may be deemed admissible, such admissibility should be
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`for a limited purpose.
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`FRE 403: The probative value of paragraphs 26-176 to
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`any ground upon which trial was instituted is substantially
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`outweighed by the danger of unfair prejudice, confusing
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`the issues, undue delay, wasting time, or needlessly
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`cumulative evidence.
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`FRE 602: As to at least paragraphs 28-31, 33-35, 42-47,
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`49, 51, 52, 54, 55, 58, 60, 61, 62, 64-69, 71-87, 89-92, 96,
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`98-100, 103-121, 123-134, 138, 142-147, 149-158, 160-
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`165, and 168-176, the exhibit includes assertions for which
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`evidence has not been introduced sufficient to show that
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`the witness has personal knowledge of the matters
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`asserted.
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`1
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`Evidence
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`Objections
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`FRE 701/702 and/or 37 C.F.R. § 42.65: As to at least
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`paragraphs 24-35, and 42-176, the exhibit declarant is not
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`qualified to opine on what a person of ordinary skill in the
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`art would understand, to opine on patent claim limitations,
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`to perform claim construction, and/or to perform legal
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`analysis of invalidity. The opinion testimony offered in
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`this exhibit is not based on scientific, technical, or other
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`specialized knowledge, and is also not based on personal
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`knowledge. The opinion testimony includes
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`unsubstantiated leaps and advances inaccurate, unqualified
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`generalizations. The opinion testimony fails to properly
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`disclose the underlying facts or data on which the opinion
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`is based. The opinion testimony includes testimony on
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`United States patent law and/or patent examination
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`practice.
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`FRE 802: The entirety of the exhibit is inadmissible
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`hearsay if offered to prove the truth of any matter
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`allegedly asserted therein.
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`2
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`Evidence
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`Exhibit 1004,
`Appendix A
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`Objections
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`FRE 402: The exhibit is not relevant to any ground upon
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`which trial was instituted.
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`FRE 403: The exhibit’s probative value to any ground
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`upon which trial was instituted is substantially outweighed
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`by the danger of unfair prejudice, confusing the issues,
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`undue delay, wasting time, or needlessly cumulative
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`evidence.
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`FRE 802: Portions of this exhibit contain inadmissible
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`hearsay if offered to prove the truth of any matter
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`allegedly asserted therein.
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`FRE 805: The exhibit contains improper hearsay within
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`hearsay.
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`FRE 901: Petitioner has not produced evidence sufficient
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`to support a finding that the exhibit is what Petitioner
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`claims it is.
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`FRE 1006: Portions of the exhibit constitute an
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`inadmissible summary with underlying documents not
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`made available.
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`Dated: January 30, 2019
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`Respectfully submitted,
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`/Elizabeth S. Weiswasser/
`Elizabeth S. Weiswasser (Reg No. 55,721)
`Anish R. Desai (Reg. No. 73,760)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8000
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`Adrian Percer (Reg. No. 46,986)
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`T: 650-802-3141
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`Christopher T. Marando (Reg. No. 67,898)
`Christopher M. Pepe (Reg. No. 73,851)
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, D.C. 20036
`T: 202-682-7000
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on January 30, 2019, the foregoing
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`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
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`SERVED BY PETITIONER INTUITIVE SURGICAL, INC. IN INTER
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`PARTES REVIEW 8,479,969 (IPR2018-01247) was served via electronic mail,
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`upon the following:
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` Steven R. Katz
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
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`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`12390 El Camino Real
`San Diego, CA 92130
`phillips@fr.com
`oconnor@fr.com
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`IPR11030-0049IP5@fr.com
`PTABInbound@fr.com
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`/Timothy J. Andersen/ a
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`2001 M Street, NW, Suite 600
`Washington, DC 20036
`timothy.andersen@weil.com
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