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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 IPR2018-01254
`U.S. Patent No. 8,479,969 B2
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`PATENT OWNER’S SECOND SET OF 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,
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`Inc. in Inter Partes review of U.S. Patent No. 8,479,969 (IPR2018-01254).
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`Evidence
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`Exhibit 1017
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`Objections
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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 402/403: Paragraphs 3-15 of the exhibit are not
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`relevant to any ground upon which trial was instituted at
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`least because they are not cited in Petitioner’s Reply to
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`Patent Owner’s Response. Moreover, the probative value
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`of paragraphs 3-17 to any ground upon which trial was
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`instituted is substantially outweighed by the danger of
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`unfair prejudice, confusing the issues, undue delay,
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`wasting time, or needlessly cumulative evidence.
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`FRE 602: As to at least paragraphs 3-17, the exhibit
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`includes assertions for which evidence has not been
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`introduced sufficient to show that the witness has personal
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`knowledge of the matters asserted.
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`FRE 701/702 and/or 37 C.F.R. § 42.65: As to at least
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`1
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`Evidence
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`Objections
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`paragraphs 3-17, the exhibit declarant is not qualified to
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`opine on what a person of ordinary skill in the art would
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`have understood and/or to perform legal analysis of
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`invalidity. The opinion testimony offered in this exhibit is
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`not based on scientific, technical, or other specialized
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`knowledge, and is also not based on personal knowledge.
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`The opinion testimony includes unsubstantiated leaps and
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`advances inaccurate, unqualified generalizations. The
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`opinion testimony fails to properly disclose the underlying
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`facts or data on which the opinion is based. The opinion
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`testimony includes testimony on United States patent law.
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`FRE 705 / 37 C.F.R. § 42.65: Exhibit includes expert
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`testimony that does not disclose underlying facts or data.
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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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`Exhibit 1018
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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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`2
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`Evidence
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`Objections
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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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`Exhibit 1023
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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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`Exhibit 1024
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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 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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`3
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`Evidence
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`Objections
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`undue delay, wasting time, or needlessly cumulative
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`evidence.
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`FRE 602: 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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`FRE 701/702 and/or 37 C.F.R. § 42.65: The exhibit
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`deponent is not qualified to opine on what a person of
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`ordinary skill in the art would have understood and/or to
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`perform legal analysis of invalidity. The opinion
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`testimony offered in this exhibit is not based on scientific,
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`technical, or other specialized knowledge, and is also not
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`based on personal knowledge. The opinion testimony
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`includes unsubstantiated leaps and advances inaccurate,
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`unqualified generalizations. The opinion testimony fails to
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`properly disclose the underlying facts or data on which the
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`opinion is based. The opinion testimony includes
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`testimony on United States patent law.
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`FRE 705 / 37 C.F.R. § 42.65: Exhibit includes expert
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`4
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`Evidence
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`Objections
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`testimony that does not disclose underlying facts or data.
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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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`Exhibit 1025
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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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`Exhibit 1026
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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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`Exhibit 1027
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`FRE 402: The exhibit is not relevant to any ground upon
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`5
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`Evidence
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`Objections
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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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`6
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`Dated: July 22, 2019
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`Respectfully submitted,
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`/Anish R. Desai/
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`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
`
`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: 202-682-7094
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`7
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on July 22, 2019, the foregoing
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`PATENT OWNER’S SECOND SET OF OBJECTIONS TO
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`ADMISSIBILITY OF EVIDENCE SERVED BY PETITIONER INTUITIVE
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`SURGICAL, INC. IN INTER PARTES REVIEW was served via electronic
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`mail, upon the following:
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`
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`Steven R. Katz
`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
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`IPR11030-0049IPA@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, N.W., Suite 600
`Washington, DC 20036
`T: 202-682-7075
`timothy.andersen@weil.com
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`8
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