UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`EIS GMBH,
`Petitioner,
`
`v.
`
`NOVOLUTO GMBH,
`Patent Owner.
`
`_________________
`
`IPR2020-00007
`Patent No. 9,849,061 B2
`___________________
`
`DECLARATION OF ANDREW J. SUTTON IN SUPPORT OF
`PETITONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`EIS EXHIBIT 1043
`EIS GmbH V. Novoluto GmbH
`IPR2020-00007
`
`1 of 8
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`EIS GMBH,
`Petitioner,
`
`v.
`
`NOVOLUTO GMBH,
`Patent Owner.
`
`_________________
`
`IPR2020-00007
`Patent No. 9,849,061 B2
`___________________
`
`DECLARATION OF ANDREW J. SUTTON IN SUPPORT OF
`PETITONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`EIS EXHIBIT 1043
`EIS GmbH V. Novoluto GmbH
`IPR2020-00007
`
`1 of 8
`
`
`
`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 1014 hereto is a true and correct copy of the transcript of the cross-
`
`examination of Dr. Morten Jensen held on February 8, 2021. 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.
`
`4.
`
`Exhibit 1015 hereto is a true and correct copy of the transcript of the cross-
`
`examination of Dr. Morten Jensen held on December 30, 2020, with respect to
`
`IPR2019-01444. 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 1016 hereto is a true and correct copy of the transcript of the cross-
`
`examination of Dr. Debra Herbenick held on January 13, 2021, with respect to
`
`IPR2019-01444. An exhibit label on the first page and page numbers on all pages
`
`1
`
`2 of 8
`
`
`
`
`
`have been added to the bottom of this document but no other alterations have been
`
`made.
`
`6.
`
`Exhibit 1017 hereto is a true and correct copy of the transcript of the cross-
`
`examination of Dr. Debra Herbenick held on February 19, 2021. 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 1022 hereto is a true and correct copy of the transcript of the cross-
`
`examination of Dr. Morten Jensen held on November 18, 2020, with respect to
`
`IPR2019-01302. 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 1023 hereto is a true and correct copy of the transcript of the cross-
`
`examination of Dr. Debra Herbenick held on November 19, 2020, with respect to
`
`IPR2019-01302. 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 1024 is a true and correct copy of Grand View Research, Inc., Sex
`
`Toys Market Size, Share & Trends Analysis Report, which I personally obtained
`
`online by screenshot from the website
`
`https://www.grandviewresearch.com/industry-analysis/sex-toys-market on January
`
`
`
`2
`
`3 of 8
`
`
`
`
`
`20, 2021. 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 1025 is a true and correct copy of excerpts from Webster’s Third
`
`International Dictionary (2002) depicting the definition of “and/or”, 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.
`
`11. 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.
`
`12. Exhibit 1027 is a screenshot of a demonstrative prepared by counsel, which I
`
`personally obtained during cross-examination of Dr. Morten Jensen on November
`
`18, 2020, with respect to IPR2019-01302, 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.
`
`
`
`3
`
`4 of 8
`
`
`
`
`
`13. Exhibit 1028 is a screenshot of a demonstrative prepared by counsel, which I
`
`personally obtained during cross-examination of Dr. Morten Jensen on November
`
`18, 2020, with respect to IPR2019-01302, 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.
`
`14. Exhibit 1029 is a true and correct copy of German Patent Document No.
`
`856788 to Stuttgart Wolfgang Wehl, which is publicly available via the European
`
`Patent Office’s Espacenet website. A certified translation of the document by the
`
`registered translator for the District Court of Landshut, Germany has been
`
`included. 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.
`
`15. Exhibit 1031 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.
`
`16. Exhibit 1032 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
`
`
`
`4
`
`5 of 8
`
`
`
`
`
`exhibit label and page number have been added to the bottom of this document but
`
`no other alterations have been made.
`
`17. Exhibit 1033 hereto is a true and correct copy of International Patent
`
`Publication No. WO 2010/149168, which is available online via the World
`
`Intellectual Property Organization’s PATENTSCOPE website. 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 1036 is a true and correct copy of Excerpts from Sir Richard
`
`Glazebrook, A Dictionary of Applied Physics, Vol. 1 (1922), which I personally
`
`obtained online on February 26, 2021, from the website
`
`https://www.google.com/books/edition/A Dictionary of Applied Physics/-
`
`6rQAAAAMAAJ?hl=en&gbpv=1&dq=dictionary+bellows&pg=PA10&printsec=f
`
`rontcover. 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.
`
`19. Exhibit 1037 is a true and correct copy of Excerpts from Myer Kutz et. al,
`
`Mechanical Engineers’ Handbook (John Wiley & Sons, Inc.) (1986), which was
`
`obtained at my direction on March 10, 2021. 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
`
`6 of 8
`
`
`
`
`
`20. Exhibit 1038 is a true and correct copy of U.S. Patent Number 9,937,097 B2,
`
`which is publicly available via the USPTO’s Patent Application Information
`
`Retrieval (“PAIR”) website. 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.
`
`21. Exhibit 1039 is a demonstrative I personally prepared 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. 1006;
`
`“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.
`
`22. Exhibit 1040 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.
`
`23. Exhibit 1041 is a true and correct copy of the Declaration of Debby
`
`Herbenick dated February 11, 2020, submitted in In The Matter of Australian
`
`
`
`6
`
`7 of 8
`
`
`
`
`
`Patent Application No. 2018203659. 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. Exhibit 1042 is a true and correct copy of the Declaration of Debby
`
`Herbenick dated March 29, 2019, submitted in In The Matter of Australian Patent
`
`Application No. 2015386680. 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.
`
`In signing this declaration, I understand that willful and false statements and
`
`the like are punishable by fine or imprisonment, or both.
`
`26.
`
`I declare that all statements made herein of my knowledge are true, and that
`
`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.
`
`27.
`
`I declare under penalty of perjury under the laws of the United States of
`
`America that the foregoing is true and correct. Executed this 12th day of March,
`
`2021, at Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: __________________
`
`Andrew J. Sutton
`
`7
`
`8 of 8
`
`
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
