`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
`
`v.
`
`TELEFLEX LIFE SCIENCES LIMITED,
`Patent Owner.
`
`
`
`
`Case IPR2020-01341
`Patent 8,142,413
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO
`PETITIONERS’ MOTION TO EXCLUDE EXHIBIT 2024 AND
`PORTIONS OF EXHIBIT 1799
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I. The Board Already Denied Petitioners’ Nearly Identical Motion to Exclude
`Exhibit 2024 in the Related IPRs and Should Do So Again ............................... 1
`
`A. Exhibit 2024 Is the August 24, 2005 Product Requirements Document
`Supporting that GuideLiner Rapid Exchange Had Been Tested and
`Shown to Work by At Least That Date ...................................................... 2
`
`B. Exhibit 2024 Is Authenticated Under FRE 901 ......................................... 3
`
`C. Exhibit 2024 Is Admissible Under Federal Rule of Evidence 803(6) ....... 8
`
`D. Petitioner’s Cases Are Unhelpful and Distinguishable .............................. 9
`
`II. The Board Should Not Exclude Any of Mr. Erb’s Testimony ..........................11
`
`A. Mr. Erb’s Redirect Testimony Should Not Be Excluded .........................12
`
`B. Mr. Erb’s Re-Cross Testimony, Elicited by Petitioner, Should Not be
`Excluded ...................................................................................................14
`
`III. Conclusion .........................................................................................................15
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHRORITES
`
`
`Cases
`
`Page(s)
`
`Comcast Cable Commc’ns, LLC v. Veveo, Inc.,
`IPR2019-00237, Paper 59 (PTAB Aug. 12, 2020) .......................................... 8
`
`Conoco Inc. v. Department of Energy,
`99 F.3d 387 (Fed. Cir. 1996) ........................................................................... 8
`
`Hamilton Beach Brands, Inc. v. F’Real Foods, LLC,
`IPR2016-01107, Paper 40 (PTAB Dec. 19, 2017) .......................................... 8
`
`Ingenico Inc. v. IOENGINE, LLC,
`IPR2019-00929, Paper 53 (PTAB Sept. 21, 2020) ......................................... 9
`
`Lexington Ins. Co. v. Western Pa. Hosp.,
`423 F.3d 318 (3d Cir. 2005) ............................................................................ 3
`
`Linear Tech. Corp. v. Micrel, Inc.,
`275 F.3d 1040 (Fed. Cir. 2001) ....................................................................... 9
`
`Netflix, Inc. v. DivX, LLC,
`IPR2020-00511, Paper 46 (PTAB Aug. 13, 2021) ........................................14
`
`Riverbed Tech. Inc. v. Realtime Data LLC
`IPR2016-00978, Paper 67 (PTAB Oct. 30, 2017) .....................................9, 10
`
`Schroeder v. Smith’s Food & Drug Ctrs., Inc.,
`2014 U.S. Dist. LEXIS 17830 (D. Nev. Feb. 11, 2014) ................................10
`
`United States v. Dhinsa,
`243 F.3d 635 (2d Cir. 2001) ............................................................................ 3
`
`United States v. Ruggiero,
`928 F.2d 1289 (2d Cir. 1991) .......................................................................... 3
`
`Rules
`
`Fed. R. Evid. 803 ...................................................................................................8, 9
`
`Fed. R. Evid. 901 ...................................................................................................3, 6
`
`ii
`
`
`
`Regulations
`Regulations
`
`37 C.F.R. § 42.20 .....................................................................................................11
`37 CLEAR. § 42.20 oe ceeeesceeceseesseeseeeeeeseeeeceseseecsaesaeeseeeesseeeeesseesaeeseeeeseseeseeseeeas® 11
`
`37 C.F.R. § 42.64 .....................................................................................................11
`37 CLELR. § 42.64 oc ceeecsceeceseesseeseeceeeseeeeceseeeecseesaeesceeessseeeesseeaeeseeeeseseeeseeseesass 11
`
`iii
`ill
`
`
`
`Petitioner’s Motion to Exclude (“MTE”) first asks the Board to exclude
`
`Exhibit 2024 (the Product Requirements Document), but the Board already denied
`
`a nearly identical motion from Petitioner in the related IPRs. For those same
`
`reasons, and the reasons explained here, Exhibit 2024 should not be excluded.
`
`Petitioner next asks the Board to exclude small portions of Mr. Steven Erb’s
`
`recent deposition testimony as prejudicial to Petitioner because it could not have
`
`prepared for such testimony. But the testimony at issue is consistent with Mr.
`
`Erb’s declaration, his prior deposition testimony elicited by Petitioner, the
`
`testimony of inventor Mr. Howard Root, and the wealth of evidence showing that
`
`Teleflex reduced to practice prior to Itou in this case, and Petitioner cross-
`
`examined him on it. There is no credible argument for prejudice. Petitioner’s
`
`motion should be denied.
`
`I.
`
`The Board Already Denied Petitioners’ Nearly Identical Motion to
`Exclude Exhibit 2024 in the Related IPRs and Should Do So Again
`
`In the related IPRs, the Board denied a nearly identical motion filed by
`
`Petitioners to exclude Exhibit 2024. E.g., IPR2020-00126, Paper 129, Final
`
`Written Decision (“FWD”) at 72. The Board noted that “[a]uthenticity is . . . not
`
`an especially high hurdle.” Id. In view of the declarations of Mr. Peterson, Ms.
`
`Schmalz, Mr. Root, and Mr. Sutton, the Board found that Exhibit 2024 had been
`
`authenticated under FRE 901 and Petitioners’ arguments went to the weight of the
`
`evidence rather than its admissibility. Id. The same is true here.
`
`1
`
`
`
`A. Exhibit 2024 Is the August 24, 2005 Product Requirements
`Document Supporting that GuideLiner Rapid Exchange Had
`Been Tested and Shown to Work by At Least That Date
`
`At Vascular Solutions, Inc. (“VSI”), the Product Requirements document
`
`(Exhibit 2024) marked the beginning of the regulatory process for bringing the
`
`GuideLiner project to market. Ex-2119, ¶44; Ex-2039, ¶6. The document defined
`
`“the safety and performance requirements for the [VSI] GuideLiner (OTW) and
`
`rapid exchange (RX) guide catheter support system.” Ex-2024, §1.1; see also id. at
`
`§3.6 (referencing “the RX version of the catheter”).
`
`As VSI’s founder, CEO, and GuideLiner RX inventor Howard Root
`
`explained, Exhibit 2024 would not have been drafted, and the regulatory process
`
`would not have begun, “if the rapid exchange GuideLiner had not been determined
`
`to work for its intended purpose.” Ex-2118, ¶57. Indeed, it was VSI’s business
`
`practice to only create the Product Requirements document after a product was
`
`“prototyped, thoroughly tested, and shown to work for its intended purpose.” Ex-
`
`2039, ¶6; see also Ex-2252, ¶18. As that business practice was applied here,
`
`Exhibit 2024 was created after the April 2005 and July 2005 GuideLiner RX
`
`prototypes were built, tested, and shown to work for their intended purpose. Ex-
`
`2119, ¶21-22, 30-41, 44; Ex-2039, ¶6. From August 24, 2005 forward, VSI
`
`continued to refine GuideLiner RX prototypes for purposes of manufacturability
`
`and commercialization. Ex-2119, ¶44; Ex-2118, ¶¶20, 87-92.
`
`2
`
`
`
`Patent Owner’s witnesses explained that Exhibit 2024 marked the beginning
`
`of, and was further developed as part of, VSI’s formal regulatory process. Ex-
`
`1766, 62:18-25; see also Ex-1762, 120:10-121:1; id. at 121:15-18. Formal sign-off
`
`of the final document did not occur until the product was actually ready to be
`
`made. Ex-1762, 117:16-118:8. In the 2005 time period, VSI’s regulatory files
`
`were maintained in hard copy. Thus, although Exhibit 2024 was created in Word,
`
`the final and formal version of that document was developed over time, and then
`
`signed and maintained in hard copy. Ex-1766, 57:11-25.
`
`B.
`
`Exhibit 2024 Is Authenticated Under FRE 901
`
`Patent Owner provides an abundance of evidence that is more than
`
`“sufficient to support a finding that” Exhibit 2024 is authentic under Federal Rule
`
`of Evidence 901. Fed. R. Evid. 901(a). “The requirement under Rule 901 is
`
`satisfied ‘if sufficient proof has been introduced so that a reasonable juror could
`
`find in favor of authenticity or identification.’” United States v. Dhinsa, 243 F.3d
`
`635, 658 (2d Cir. 2001); see also, e.g., United States v. Dhinsa, 243 F.3d at 658
`
`(noting Rule 901’s “not . . . particularly high hurdle”); Lexington Ins. Co. v.
`
`Western Pa. Hosp., 423 F.3d 318, 329 (3d Cir. 2005) (the burden of proof for
`
`authentication is “slight”) (citation omitted).
`
`Four separate witnesses submitted sworn testimony that Exhibit 2024 is
`
`what it purports to be. Fed. R. Evid. 901(b)(1). Dean Peterson, who has been a
`
`3
`
`
`
`Principle Research and Development Engineer for VSI (and now Patent Owner)
`
`since 2005, submitted a sworn declaration about what this document is:
`
`Exhibit 2024 is a true and correct copy of an August 24, 2005 Product
`
`Requirements document for the GuideLiner Catheter System. This Product
`
`Requirements document was made by VSI personnel with knowledge of the
`
`issues contained therein on or near the date of the document. The document
`
`was made as a regular practice of developing a product at VSI and was
`
`maintained in the regular course of VSI’s business on its network.
`
`Ex-2252, ¶18. Medtronic chose not to depose Peterson and has no basis to dispute
`
`his testimony.
`
`Deborah Schmalz, the Vice President of Regulatory and Clinical Affairs for
`
`VSI from 2000 to 2008, submitted a sworn declaration and deposition testimony
`
`further authenticating Exhibit 2024. Ex-2039, ¶¶6-10; Ex-1766, 44:20-46:8;
`
`47:12-48:1; 48:8-50:12; 56:9-62:25. She explained what the document is, how it
`
`was used, and what it signified--specifically, that the GuideLiner RX was
`
`“prototyped, thoroughly tested, and shown to work for its intended purpose” before
`
`Exhibit 2024 was created. Ex-2039, ¶6; see also id. at ¶¶6-7; Ex-1766, 44:20-46:8;
`
`47:12-48:1; 48:8-50:12; 56:9-62:25.
`
`Notably, Schmalz testified that she personally and contemporaneously
`
`reviewed the document that is Exhibit 2024. Ex-1766, 45:19-46:4. And
`
`unrebutted, she testified to the circumstances of the creation of Exhibit 2024: “I
`
`specifically recall that a working prototype of the rapid exchange version of
`
`4
`
`
`
`GuideLiner was created prior to creation of the August 24, 2005 Products
`
`Requirements document.” Ex-2039, ¶7.
`
`Schmalz testified about additional evidence further corroborating that
`
`Exhibit 2024 is what it purports to be, including Exhibit 2025, “a Clinical
`
`Technical Report dated August 26, 2005 . . . [which] confirms that by this time, the
`
`rapid exchange version of GuideLiner had advanced beyond the concept
`
`development phase.” Ex-2039, ¶¶6, 9-10 (also describing Exhibit 2040, a
`
`memorandum addressed to her confirming the same); Fed. R. Evid. 901(b)(1).
`
`Schmalz is first-hand, comprehensive, and unrebutted in demonstrating that
`
`Exhibit 2024 is what it purports to be.
`
`Howard Root provides yet more unrebutted authenticating testimony. Root
`
`demonstrates personal knowledge of Exhibit 2024, specifically attesting to its
`
`being a true and accurate copy, and confirms this with his personal knowledge of
`
`the surrounding circumstances of its creation. Ex-2118, ¶57; Ex-1762, 116:11-
`
`125:13; Fed. R. Evid. 901(b)(1). Although he did not prepare “the first draft” of
`
`Exhibit 2024, he “certainly reviewed it.” Ex-1762, 116:18-24. Like Schmalz,
`
`Root explained that this Product Requirements document marked the beginning of
`
`the quality process at VSI, which “would not have begun if the rapid exchange
`
`GuideLiner had not been determined to work for its intended purpose.” Ex-2118,
`
`¶57. Root’s testimony is detailed and specific, explaining that “[t]his formal
`
`5
`
`
`
`quality program for the rapid exchange GuideLiner began shortly after” the April
`
`2005 and July 2005 GuideLiner RX prototypes “were made, tested and determined
`
`to work” and achieved one of the goals of that product, which was that the
`
`GuideLiner RX would be “capable of being used by one physician.” Id. In short,
`
`Root explained that by the time Exhibit 2024 was created on August 24, 2005, the
`
`details for manufacturing and commercialization still needed to be finalized but
`
`VSI knew the GuideLiner RX would work for its intended purpose. Ex-2118, ¶57;
`
`Ex-1762, 116:11-125:13.
`
`Gregg Sutton is yet another corroborating witness. Sutton, a co-inventor and
`
`Vice President of Research & Development for VSI from 2004 to mid-2006, was
`
`involved first-hand in building the GuideLiner RX prototypes in early to mid-2005.
`
`Ex-2119, ¶41. Sutton explained how that testing of the GuideLiner RX led to
`
`Exhibit 2024:
`
`Exhibit 2024 is the Products Requirements document for the GuideLiner,
`
`dated August 24, 2005. This is one of the first documents that is part of the
`
`design history process. At VSI we did not spend the time to create this
`
`document unless or until we had gone through feasibility and prototyping of
`
`a device and were ready to move forward with commercialization efforts.
`
`From this point forward, we continued to refine prototypes of the
`
`GuideLiner rapid exchange for purposes of manufacturability and
`
`commercialization.
`
`Id. at ¶44; Fed. R. Evid. 901(b)(1). In addition to this document, Sutton has
`
`6
`
`
`
`knowledge of documents in the month before Exhibit 2024 as well as one dated a
`
`mere two days after. Ex-2119 at ¶43 (“Exhibit 2036 is a July 2005 Research &
`
`Development Update that I wrote for the Board”); Id. at ¶45 (“Exhibit 2025 is a
`
`Clinical Technical Report, dated August 26, 2005”).
`
`As shown on the face of the document, as well as by the testimony of
`
`Schmalz, Root, Sutton, and Peterson, Exhibit 2024 was created on or by August
`
`24, 2005. The text of the document and testimony of each of these witnesses is
`
`supported by corroborating documents and circumstances. E.g., Ex-1926, ¶18; Ex-
`
`2039, ¶¶6-10 (Schmalz testifying that Exhibit 2024 was created after a working
`
`prototype, and before a regulatory document, Exhibit 2025, and a memo to her
`
`confirming the same, Exhibit 2040); Ex-2118, ¶¶54-57 (same); Ex-2119, ¶¶44-46
`
`(same). Further, as shown on the face of the document, Exhibit 2024 is the first
`
`revision, and the August 24, 2005 date is consistent throughout, occurring twice on
`
`the first page of the document, and again on the last. Ex. 2024 at 1, 4. It is also
`
`consistently labeled as “Rev. 01” in the top right-hand corner of each of the
`
`document’s four pages. Id. at 1-4.
`
`That Exhibit 2024 is an early version of a document, which by design was
`
`updated as part of the regulatory quality process, is of no consequence to its
`
`authenticity. Indeed, it was VSI’s business practice to start with a draft of the
`
`document and develop and finalize the details of its content as the company moved
`
`7
`
`
`
`toward regulatory approval and commercialization. Ex-1762, 120:19-121:1;
`
`121:15-18; Ex-1766, 62:18-25.
`
`And contrary to Petitioner’s argument, Patent Owner is not required to
`
`advance testimony of the author of the document to authenticate it. E.g., Conoco
`
`Inc. v. Department of Energy, 99 F.3d 387, 391 (Fed. Cir. 1996) (“Courts have
`
`made clear . . . that the ‘custodian or other qualified witness’ who must
`
`authenticate business records need not be the person who prepared or maintained
`
`the records . . . as long as the witness understands the system used to prepare the
`
`records.”); Comcast Cable Commc’ns, LLC v. Veveo, Inc., IPR2019-00237, Paper
`
`59, at 72-75 (PTAB Aug. 12, 2020). (CTO of patent owner’s company at the time
`
`of contested email who was neither the sender nor recipient of could authenticate it
`
`as he had knowledge of the system used to prepare the documents and of “the
`
`team’s ongoing activities at the time”); Hamilton Beach Brands, Inc. v. F’Real
`
`Foods, LLC, IPR2016-01107, Paper 40, at 32-34 (PTAB Dec. 19, 2017) (witness
`
`was in management position and was involved in company’s business, R&D, and
`
`sales and could authenticate sales data from a particular time-frame).
`
`C. Exhibit 2024 Is Admissible Under Federal Rule of Evidence
`803(6)
`
`
`Petitioner only hints at a hearsay objection (see MTE at 4, 6), but witness
`
`testimony more than sufficiently establishes Exhibit 2024 as a business record
`
`under Fed. R. Evid. 803(6). E.g. Ex-2252, ¶18; Ex-2039, ¶¶6, 9-10; Ex-1762,
`
`8
`
`
`
`116:18-118:8; Ex-2119, ¶44. Petitioner has not shown that the method or
`
`circumstances of preparation indicate a lack of trustworthiness and does not
`
`dispute the authenticity of any of the other exhibits so close in time which the
`
`witnesses also attest to as authentic. Fed. R. Evid. 803(6)(E); e.g., Ex-2025; Ex-
`
`2021; Ex-2017; Ex-2252, ¶¶14, 17, 18, and 19.
`
`D.
`
`Petitioner’s Cases Are Unhelpful and Distinguishable
`
`
`
`Unlike the Ingenico Inc. v. Ioengine, LLC (MTE at 6), there is ample
`
`supporting testimony that Exhibit 2024 is what Patent Owner claims it is.
`
`Compare §§I.A-B supra with Ingenico Inc. v. Ioengine, LLC, IPR2019-00929,
`
`Paper 53, at 99 (PTAB Sept. 21, 2020) (“In the absence of any supporting
`
`testimony, Patent Owner has not met its burden of showing that Exhibit 2114 is
`
`what Patent Owner claims it is.” (emphasis added)).
`
`In Linear (MTE at 6, 7, and 9), the facts are very similar. Linear Tech.
`
`Corp. v. Micrel, Inc., 275 F.3d 1040, 1054-56 (Fed. Cir. 2001). Among other
`
`things, exhibits claimed to be letters that were sent to customers bore no indicia of
`
`“having ever been mailed to a customer” and the proffering party submitted no
`
`testimony about the circumstances surrounding the letters. Id. Here, again by
`
`stark contrast, multiple witnesses have testified about their first-hand knowledge of
`
`Exhibit 2024 and the circumstances surrounding its creation. See supra §§ I.A-B.
`
`Riverbed Tech. Inc. v. Realtime Data LLC involved an exhibit excluded
`
`9
`
`
`
`where “Patent Owner ha[d] provided no evidence” that the paper was a true and
`
`correct copy, unaltered, or where the expert “found it.” IPR2016-00978, Paper 67,
`
`at 40 (PTAB Oct. 30, 2017). Additionally, Patent Owner in that case did not offer
`
`any supplemental evidence to overcome Petitioner’s objection, and Patent Owner
`
`stated that the expert did not rely on the document. Id. at 41.
`
`In Schroeder v. Smith’s Food & Drug Ctrs., Inc., an attorney’s testimony
`
`that “he ‘received’ [photos] from [the defendant grocery store]” was held
`
`insufficient to authenticate video surveillance footage and photos of an alleged slip
`
`and fall. 2014 U.S. Dist. LEXIS 17830, at *1, 5-6 (D. Nev. Feb. 11, 2014). Unlike
`
`the attorney in Schroeder, here, four separate witnesses have testified about their
`
`first-hand understanding and recollection of Exhibit 2024 and that testimony is
`
`further supplemented by corroborating documents. See supra §§I.A-B.
`
`In Standard Innovation Corp. v. Lelo, Inc., the PTAB stated that when
`
`considering exhibits that were webpage printouts offered to “prove the website’s
`
`contents, the proponent of the evidence must authenticate the information from the
`
`website itself, not merely the printout.” IPR2014-00148, Paper 41, at 10 (PTAB
`
`April 23, 2015). The proponent of the screenshot exhibit “ha[d] not provided
`
`testimony of any witness with personal knowledge of the information on the
`
`website(s) or the associated printouts at issue.” Id. at 12. Nor had the proponent
`
`even “identified the website(s) from which [the exhibits] were downloaded.” Id.
`
`10
`
`
`
`The facts in Standard Innovation could not be more different than the facts
`
`supporting Exhibit 2024 here. See supra §§I.A-B.
`
`II. The Board Should Not Exclude Any of Mr. Erb’s Testimony
`
`
`Petitioner bears the burden of showing that portions of Mr. Erb’s deposition
`
`testimony should be excluded. 37 C.F.R. § 42.20(c). Only those portions of
`
`testimony objected to on the record may be excluded. 37 C.F.R. § 42.64.
`
`Petitioner groundlessly accuses Mr. Erb of adding to and changing his
`
`testimony during re-direct and re-cross and asks the Board to exclude small
`
`portions of his transcript as purportedly unfairly prejudicial. MTE at 10-15.1 The
`
`Board should deny Petitioner’s request. Mr. Erb’s testimony was consistent with
`
`and within the scope of his declaration, consistent with his earlier deposition
`
`testimony, consistent with inventor testimony, and consistent with the large
`
`amount of additional corroborating evidence. Moreover, Petitioner has not shown
`
`that the testimony is unfairly prejudicial under FRE 403. The testimony concerned
`
`subjects in Mr. Erb’s declaration and about which Petitioner had elicited testimony,
`
`Petitioner had the opportunity to (and did) re-cross Mr. Erb, and Petitioner had the
`
`opportunity to (and did) submit a sur-reply brief.
`
`
`1 A central theme to Petitioner’s case now appears to be unfounded attacks against
`
`Mr. Erb’s character and credibility. E.g., Paper 51, Pet’s Reply at 14-15, n.7.
`
`11
`
`
`
`A. Mr. Erb’s Redirect Testimony Should Not Be Excluded
`
`
`
`Petitioner objected to, and now moves to exclude a portion of Mr. Erb’s
`
`testimony on re-direct related to when testing was done on the April and July 2005
`
`prototypes. MTE at 11-12. The Board should deny Petitioner’s motion. Mr. Erb’s
`
`testimony about when the prototypes were tested is consistent with and within the
`
`scope of his own direct declaration testimony, the cross-examination testimony
`
`elicited by Petitioner, and the wealth of additional evidence in the case.
`
`For example, Mr. Erb’s declaration discusses how he machined and tested
`
`early prototypes, explains how VSI quickly moved to outsourcing components for
`
`GuideLiner prototypes, discusses in detail the components used in the April and
`
`July 2005 prototypes and when they were received, says he was involved in
`
`assembling the subsequent prototypes, that additional testing like he already
`
`described (i.e. in paragraph 12) was performed on the subsequent prototypes, and
`
`that he recalled Howard Root and others working on the subsequent prototypes.
`
`Ex-2122, ¶¶7-19. He also explains that VSI knew from its early testing that the
`
`prototypes would work. Id. at ¶20. Mr. Erb’s declaration clearly describes swift
`
`building and testing of rapid exchange prototypes, including the April and July
`
`prototypes. His testimony in this respect on re-direct is hardly new or
`
`contradictory.
`
`The objected-to testimony is also within the scope of testimony Petitioner
`
`12
`
`
`
`elicited on cross-examination. For example, Petitioner cross-examined Mr. Erb
`
`regarding his and others’ work on the GuideLiner project, eliciting testimony about
`
`the timing of that work, who was involved, and what the roles were. Ex-1799,
`
`10:11-12:16. Petitioner itself elicited testimony about prototype testing in 2005—
`
`that Patent Owner followed-up with questions about that testing and when it
`
`occurred on re-direct is hardly inconsistent, new, or prejudicial.
`
`Furthermore, Mr. Erb’s testimony on re-direct is consistent with Mr. Root’s
`
`testimony that the April and July 2005 prototypes were tested shortly after they
`
`were assembled in April and July. E.g. Ex-2118, ¶¶38, 50-51. Notably, this
`
`testimony from Mr. Root was provided before testimony in question from Mr. Erb.
`
`Compare Ex-1798 (Root deposition on July 15, 2021) with Ex-1799 (Erb
`
`deposition on July 22, 2021). Again, Mr. Erb’s deposition testimony about when
`
`prototype testing occurred can hardly be called inconsistent or surprising—there is
`
`no basis to claim Petition was prejudiced by this testimony.
`
`Petitioner argues that testimony about specifically when the April and July
`
`prototypes were tested is prejudicial because it did not have “the opportunity to
`
`meaningfully prepare and test that testimony.” MTE at 11-13. That is not the
`
`case. Petitioner was well-aware of evidence that the April and July prototypes
`
`were tested shortly after the were assembled. E.g., Ex-1798, 41:9-22 (Mr. Root
`
`testifying on July 15, 2021—a week before Mr. Erb’s July 22, 2021 deposition--
`
`13
`
`
`
`that the April and July 2005 prototypes occurred “within a matter of a week or
`
`two” of receiving parts). Further, it had the opportunity to (and did) re-cross Mr.
`
`Erb after he provided the objected-to testimony. Ex-1799, 38:24-40:21. Petitioner
`
`also had the opportunity to (and did) submit a Reply brief in which it could present
`
`its argument concerning Mr. Erb’s testimony. E.g., IPR2020-01341, Paper 51,
`
`Reply at 14-15. Petitioner has not been prejudiced.
`
`Petitioner cites no case where the Board has excluded testimony in a similar
`
`situation. Petitioner cites Netflix, Inc. v. DivX, LLC for the proposition that the
`
`Board may consider whether to it is “in the interests of justice to maintain [this
`
`evidence] in the case file” (MTE at 10-11), but that case shows why there is no
`
`basis to exclude here. Netflix did not concern deposition testimony; rather it
`
`concerned deposition exhibits that the deponent testified he had never seen, and
`
`were filed late, for the first time with Patent Owner’s sur-reply. IPR2020-00511,
`
`Paper 46 at 55 (PTAB Aug. 13, 2021). The Board noted that Petitioner had no
`
`opportunity to respond to those new exhibits. Id. Here, by contrast, the evidence
`
`that Petitioner seeks to exclude is deposition testimony that was subject to cross-
`
`examination and that Petitioner was able to respond to in a Reply brief.
`
`B. Mr. Erb’s Re-Cross Testimony, Elicited by Petitioner, Should Not
`be Excluded
`
`Petitioner contends that Mr. Erb changed and went beyond the scope of his
`
`declaration on re-cross and therefore Mr. Erb’s re-cross testimony should be
`
`14
`
`
`
`excluded. Petitioner is wrong for two reasons.
`
`One, the testimony Petitioner seeks to exclude is testimony Petitioner itself
`
`elicited. Petitioner can hardly complain about testimony it elicits in cross-
`
`examination; further, Petitioner had ample opportunity to, and did in fact, further
`
`cross-examine Mr. Erb regarding the testimony it elicited. And as Petitioner
`
`admits (MTE at 14 n.2), it did not object to this testimony. Petitioner’s complaints
`
`about testimony its own questions elicited do not go to the admissibility.
`
`Two, Mr. Erb did not change or go beyond the scope of his declaration.
`
`Petitioner points to testimony in which Mr. Erb agreed that in his declaration he
`
`did not state that he “had personally observed any testing involving balloons and
`
`stents.” In his declaration, Mr. Erb stated that he was “aware of, though was not
`
`personally involved in” tests involving stents and balloons. Ex-2122, ¶12.
`
`Petitioner’s argument appears to boil down to the difference in word choice
`
`between “observed” and “aware of.” Mr. Erb stated in his declaration that he was
`
`“aware of” such tests, which clearly encompasses having “observed” such tests as
`
`described during deposition. There is no inconsistency here, and no credible
`
`argument of prejudice.
`
`III. Conclusion
`
`
`For the foregoing reasons, the Board should deny Petitioner’s motion.
`
`
`
`15
`
`
`
`Dated: November 5, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/J. Derek Vandenburgh /
`J. Derek Vandenburgh (Lead Counsel)
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh
` & Lindquist, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`Email:
`DVandenburgh@carlsoncaspers.com
`
`Lead Counsel for Patent Owner
`
`16
`
`
`
`CERTIFICATION OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
`
`undersigned certifies that on November 5, 2021, a true and correct copy of the
`
`foregoing Patent Owner’s Response to Petitioners’ Motion to Exclude Exhibit
`
`2024 and Portions of Exhibit 1799 was served via electronic mail upon the
`
`following:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`Robins Kaplan LLP
`800 LaSalle Avenue, Suite 2800
`Minneapolis, MN 55401
`Phone: 349-8500
`Fax: 612-339-4181
`Email: Cmorton@robinskaplan.com
`Email: Sroberg-perez@robinskaplan.com
`Email: Cpinahs@robinskaplan.com
`
`
`
`
`
`
`
`
`
`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel for Patent Owner)
`
`
`
`
`17
`
`
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
