UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`EIS GMBH,
`Petitioner,
`
`v.
`
`NOVOLUTO GMBH,
`Patent Owner.
`
`_________________
`
`IPR2019-01302
`Patent No. 9,937,097 B2
`___________________
`
`DECLARATION OF ANDREW J. SUTTON IN SUPPORT OF
`PETITONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`EIS EXHIBIT 1050
`
`1 of 9
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`EIS GMBH,
`Petitioner,
`
`v.
`
`NOVOLUTO GMBH,
`Patent Owner.
`
`_________________
`
`IPR2019-01302
`Patent No. 9,937,097 B2
`___________________
`
`DECLARATION OF ANDREW J. SUTTON IN SUPPORT OF
`PETITONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`EIS EXHIBIT 1050
`
`1 of 9
`
`
`
`I, Andrew J. Sutton, make the following declaration pursuant to 28 U.S.C.
`
`§ 1746:
`
`1.
`
`2.
`
`I am an attorney at the law firm of Bookoff McAndrews PLLC.
`
`I provide this Declaration in connection with the above-identified Inter
`
`Partes Review proceeding requested at the United States Patent and Trademark
`
`Office by EIS GmbH against Novoluto GmbH under 35 U.S.C. § 311, 37 C.F.R.
`
`§ 42.104. Unless otherwise stated, the facts stated in this Declaration are based on
`
`my personal knowledge.
`
`3.
`
`Exhibit 1022 hereto is a true and correct copy of the transcript of the cross-
`
`examination of Dr. Morten Jensen held on November 18, 2020. An exhibit label on
`
`the first page and page numbers on all pages have been added to the bottom of this
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`document but no other alterations have been made.
`
`4.
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`Exhibit 1023 hereto is a true and correct copy of the transcript of the cross-
`
`examination of Dr. Debra Herbenick held on November 19, 2020. An exhibit label
`
`on the first page and page numbers on all pages have been added to the bottom of
`
`this document but no other alterations have been made.
`
`5.
`
`Exhibit 1024 is a demonstrative prepared by counsel showing a redline
`
`highlighting differences between portions of U.S. Pat. No. 9,937,097 and its parent
`
`U.S. Application No. 15/302,981. An exhibit label on the first page and page
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`2 of 9
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`
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`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
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`6.
`
`Exhibit 1025 is a true and correct copy of EIS GmbH v. Novoluto, GmbH,
`
`IPR2020-00007, Decision Granting Petitioner’s Request for Rehearing of Decision
`
`Granting Institution of Inter Partes Review, Pap. 15 (PTAB Sept. 25, 2020). An
`
`exhibit label on the first page and page numbers on all pages have been added to
`
`the bottom of this document but no other alterations have been made.
`
`7.
`
`Exhibit 1026 is a true and correct copy of a dictionary definition of “and/or”,
`
`which I personally obtained online by screenshot from the website
`
`https://www.lexico.com/en/definition/and/or on November 17, 2020. An exhibit
`
`label on the first page and page numbers on all pages have been added to the
`
`bottom of this document but no other alterations have been made.
`
`8.
`
`Exhibit 1027 is a true and correct copy of excerpts from Webster’s Third
`
`International Dictionary (2002) depicting the definition of “pulsation”, which I
`
`personally obtained from the reference section of the Charles E. Beatley, Jr.
`
`Central Library located in Alexandria, Virginia on November 16, 2020. An exhibit
`
`label on the first page and page numbers on all pages have been added to the
`
`bottom of this document but no other alterations have been made.
`
`9.
`
`Exhibit 1028 is a true and copy of excerpts from Dorland’s Illustrated
`
`Medical Dictionary, 31st Ed. (2007) depicting the definition of “perineum”, which
`
`3 of 9
`
`
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`I personally obtained from the Charles E. Beatley, Jr. Central Library located in
`
`Alexandria, Virginia on Dec. 1, 2020. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`10.
`
`Exhibit 1029 is a true and correct copy of Yavagal et al., Normal
`
`Vulvovaginal, Perineal, and Pelvic Anatomy with Reconstructive Considerations,
`
`SEMINARS IN PLASTIC SURGERY, Vol. 25, No. 2, 121-129 (2011), which I
`
`personally downloaded online from the website
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`https://www.ncbi.nlm.nih.gov/pmc/articles/PMC3312145/ on November 16, 2020.
`
`An exhibit label on the first page and page numbers on all pages have been added
`
`to the bottom of this document but no other alterations have been made.
`
`11.
`
`Exhibit 1030 is a true and correct copy of Yu et al., Application of Acupoints
`
`and Meridians for the Treatment of Primary Dysmenorrhea: A Data Mining-Based
`
`Literature Study, Evidence-Based Complementary and Alternative Medicine, Vol.
`
`2015 (Feb. 2015), which I personally downloaded online from the website
`
`https://core.ac.uk/download/pdf/204756825.pdf on November 16, 2020. An
`
`exhibit label on the first page and page numbers on all pages have been added to
`
`the bottom of this document but no other alterations have been made.
`
`12.
`
`Exhibit 1031 is a true and correct copy of Baxter et al., Clinical
`
`Effectiveness of Laser Acupuncture: A Systematic Review, J. Acupunct. Meridian
`
`4 of 9
`
`
`
`Study 2008, 1(2), 65-82 (2008), which I personally downloaded online from the
`
`website https://www.sciencedirect.com/science/article/pii/S2005290109600261 on
`
`November 16, 2020. An exhibit label on the first page and page numbers on all
`
`pages have been added to the bottom of this document but no other alterations have
`
`been made.
`
`13.
`
`Exhibit 1032 is a true and correct copy of Jennie Longbottom, The
`
`Treatment of Pelvic Pain with Acupuncture: Part 1, Journal of Chinese Medicine
`
`No. 91 (Oct. 2009), which I personally downloaded online from the website
`
`https://www.journalofchinesemedicine.com/the-treatment-of-pelvic-pain-with-
`
`acupuncture-part-1.html on November 16, 2020. An exhibit label on the first page
`
`and page numbers on all pages have been added to the bottom of this document but
`
`no other alterations have been made.
`
`14.
`
`Exhibit 1033 is a true and correct copy of Liu et al., Applications and
`
`Therapeutic Actions of Complementary and Alternative Medicine for Women with
`
`Genital Infection, Evidence-Based Complementary and Alternative Medicine, Vol.
`
`2014 (2014), which I personally download online from the website
`
`https://www.ncbi.nlm.nih.gov/pmc/articles/PMC3932255/pdf/ECAM2014-
`
`658624.pdf on November 16, 2020. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`5 of 9
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`
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`
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`15. Exhibit 1035 is a true and correct copy of Park et al., Effect of Kegel
`
`Exercises on the Management of Female Stress Urinary Incontinence: A
`
`Systematic Review of Randomized Controlled Trials, Advances in Nursing, Vol.
`
`2014 (2014, which I personally downloaded online from the website
`
`http://downloads.hindawi.com/archive/2014/640262.pdf on November 17, 2020.
`
`An exhibit label on the first page and page numbers on all pages have been added
`
`to the bottom of this document but no other alterations have been made.
`
`16. Ex. 1036 is a true and correct copy of the Supplemental Declaration of Dr.
`
`Herbenick dated October 1, 2020, and served on Petitioner by Patent Owner’s
`
`counsel on October 2, 2020, by e-mail. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`17. Exhibit 1039 is a demonstrative prepared by counsel showing a redline
`
`highlighting differences between portions of U.S. Pat. No. 6,464,653
`
`(“Hovland’653”) and its continuation-in-part U.S. Pat. No. 6,964,643 (Ex. 1005;
`
`“Hovland’). An exhibit label on the first page and page numbers on all pages have
`
`been added to the bottom of this document but no other alterations have been
`
`made.
`
`18. Exhibit 1041 is a screenshot of a demonstrative prepared by counsel, which I
`
`personally obtained during cross-examination of Dr. Morten Jensen on November
`
`
`
`6 of 9
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`
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`18, 2020, depicting a first annotated version of Taylor Fig. 3. An exhibit label and
`
`page number have been added to the bottom of this document but no other
`
`alterations have been made.
`
`19.
`
`Exhibit 1042 is a screenshot of a demonstrative prepared by counsel, which I
`
`personally obtained during cross-examination of Dr. Morten Jensen on November
`
`18, 2020, depicting a second annotated version of Taylor Fig. 3. An exhibit label
`
`and page number have been added to the bottom of this document but no other
`
`alterations have been made.
`
`20.
`
`Exhibit 1045 is a screenshot of a demonstrative prepared by Dr. Herbenick,
`
`which I personally obtained during cross-examination on November 19, 2020,
`
`depicting a hand-drawing of the human vulva. An exhibit label and page number
`
`have been added to the bottom of this document but no other alterations have been
`
`made.
`
`21.
`
`Exhibit 1046 is a screenshot of a demonstrative prepared by Dr. Herbenick,
`
`which I personally obtained during cross-examination on November 19, 2020,
`
`depicting hand-drawings of exemplary shapes of the human glans clitoris. An
`
`exhibit label and page number have been added to the bottom of this document but
`
`no other alterations have been made.
`
`22.
`
`Exhibit 1047 is a true and correct copy of excerpts from Webster’s Third
`
`International Dictionary (2002) depicting the definition of “and/or”, which I
`
`7 of 9
`
`
`
`
`
`personally obtained from the reference section of the Charles E. Beatley, Jr.
`
`Central Library located in Alexandria, Virginia on December 1, 2020. An exhibit
`
`label on the first page and page numbers on all pages have been added to the
`
`bottom of this document but no other alterations have been made.
`
`23. Exhibit 1048 is a true and correct copy of excerpts from Stedman’s Medical
`
`Dictionary 28th Edition (2006) depicting the definition of “perineum”, which I
`
`personally obtained from the reference section of the Charles E. Beatley, Jr.
`
`Central Library located in Alexandria, Virginia on December 1, 2020. An exhibit
`
`label on the first page and page numbers on all pages have been added to the
`
`bottom of this document but no other alterations have been made.
`
`24. Ex. 1049 is a true and correct copy of excerpts from Rhoades et al., Medical
`
`Physiology - Principles for Clinical Medicine 3rd Edition, which I personally
`
`obtained online at
`
`https://www.google.com/books/edition/Medical Physiology/tBeAeYS-
`
`vRUC?hl=en&gbpv=0#spf=1607057496383 on December 4, 2020. An exhibit
`
`label on the first page and page numbers on all pages have been added to the
`
`bottom of this document but no other alterations have been made.
`
`25.
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`In signing this declaration, I understand that willful and false statements and
`
`the like are punishable by fine or imprisonment, or both.
`
`
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`8 of 9
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`26.
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`I declare that all statements made herein of my knowledge are true, and that
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`all statements made on information and belief are believed to be true, and that
`
`these statements were made with the knowledge that willful false statements and
`
`the like so made are punishable by fine or imprisonment, or both, under Section
`
`1001 of Title 18 of the United States Code.
`
`I declare under penalty of perjury under the laws of the United States of America
`
`that the foregoing is true and correct. Executed this 4th day of December, 2020, at
`
`Alexandria, Virginia.
`
`By: __________________
`Andrew J. Sutton
`
`9 of 9
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`
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