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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.,
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`Petitioner,
`
`v.
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`TELEFLEX LIFE SCIENCES LIMITED,
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`Patent Owner.
`______________
`
`Case IPR2020-01341
`U.S. Patent No. 8,142,413
`
`Case IPR2020-01343
`U.S. Patent No. RE 46,116
`_______________
`
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`EXHIBIT 2024 AND PORTIONS OF EXHIBIT 1799
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`
`
`I.
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`II.
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`
`
`
`TABLE OF CONTENTS
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`Page
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`TELEFLEX CONFUSES WITNESS ASSUMPTIONS AND
`OPINIONS ABOUT EXHIBIT 2024 FOR FACTS
`AUTHENTICATING THE DOCUMENT. ..................................................... 1
`TELEFLEX CANNOT RELY ON ERB’S NEW, INCONSISTENT,
`PREJUDICIAL TESTIMONY. ........................................................................ 3
`
`
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`
`
`i
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`
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Conoco Inc. v. Dep’t of Energy,
`99 F.3d 387 (Fed. Cir. 1996) ................................................................................ 2
`McKay v. Town and Country Cadillac, Inc.,
`No. 97 C 2102, 2002 WL 318295 (N.D. Ill. Feb. 26, 2002) ................................ 3
`Rambus, Inc. v. Infineon Techs. AG,
`348 F. Supp. 2d 698 (E.D. Va. 2004) ................................................................... 3
`Rules
`Fed. R. Evid. 403 ................................................................................................... 3, 5
`Fed. R. Evid. 901 ....................................................................................................... 1
`Fed. R. Evid. 902 ....................................................................................................... 2
`
`
`
`
`ii
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`Medtronic asked this Board to exclude (1) Exhibit 2024 because Teleflex
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`cannot establish that the document is what Teleflex claims—an August 24, 2005
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`marker for the beginning of the regulatory process for the GuideLiner RX device;
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`and (2) portions of Exhibit 1799 in which Erb expands and contradicts his
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`declaration testimony. Not a single Teleflex witness can address the creation or
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`maintenance of Exhibit 2024. And Erb cannot, now, claim to have observed testing
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`for which he previously disclaimed personal involvement. Medtronic requests that
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`the Board grant its motion.
`
`I.
`
`TELEFLEX CONFUSES WITNESS ASSUMPTIONS AND OPINIONS
`ABOUT EXHIBIT 2024 FOR FACTS AUTHENTICATING THE
`DOCUMENT.
`
`None of Teleflex’s purported authenticating witnesses offer evidence
`
`sufficient to prove that Exhibit 2024 is what Teleflex claims: a document created
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`on August 24, 2005, addressing GuideLiner RX as of that date. Teleflex in fact
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`reverses the authenticity analysis. It looks through the wrong end of the telescope.
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`A witness does not authenticate a document if she understands what the document
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`might represent assuming the document is what she believes. A witness
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`authenticates a document by having personal knowledge of its creation and
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`maintenance, by providing information showing what the document is, and by
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`confirming that the document is reliable. Fed. R. Evid. 901.
`
`
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`1
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`
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`
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`Teleflex assumes Exhibit 2024’s “authenticity” using information it pulls
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`from the face of the document. See, e.g., PO’s Opposition at 7 (“As shown on the
`
`face of the document, . . . .”). But Exhibit 2024 is not self-authenticating. See Fed.
`
`R. Evid. 902. And further, the document supplies only indicia of unreliability.
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`Teleflex does not dispute that Exhibit 2024 is missing critical information,
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`including: (1) a reliable, non-hearsay date; (2) an author; (3) an “RX” file name;
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`and (4) content. Nothing and no one supplies this missing information.
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`Teleflex contends that “[f]our separate witnesses submitted sworn
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`testimony” related to Ex-2024. PO’s Opposition at 3. But each witness assumes
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`that the document is what it appears to be, without providing information and
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`personal knowledge sufficient to rely on the document. No witness has personal
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`knowledge of when the document was created, who created it, or when critical
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`information was added to it. At minimum, Teleflex needs a witness with personal
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`knowledge to testify that references to the GuideLiner RX were added to the
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`document as of August 24, 2005. It does not have one.
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`Teleflex suggests that the Board should consider Exhibit 2024 because it is a
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`business record. Yet Teleflex offers no witness to speak to the document’s creation
`
`or maintenance, information critical to establishing that a document is a business
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`record. See Conoco Inc. v. Dep’t of Energy, 99 F.3d 387, 391 (Fed. Cir. 1996)
`
`(requiring a document custodian or other witness who understands “the system
`
`
`
`2
`
`
`
`
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`used to prepare the records” to establish that a document is a reliable business
`
`record); Rambus, Inc. v. Infineon Techs. AG, 348 F. Supp. 2d 698, 703 (E.D. Va.
`
`2004) (for a witness to serve as a document custodian, they “must have knowledge
`
`of the procedures under which the record was created”); see also McKay v. Town
`
`and Country Cadillac, Inc., No. 97 C 2102, 2002 WL 318295, at *1 (N.D. Ill. Feb.
`
`26, 2002) (conclusory affidavit insufficient under 803(6) because the court could
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`not “infer from [the witness’s] affidavit that she has knowledge of the procedures
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`governing the creation of a record such as [the submitted exhibit]”) (emphasis in
`
`original). No one is familiar with the actual creation or maintenance of Exhibit
`
`2024.
`
`II. TELEFLEX CANNOT RELY ON ERB’S NEW, INCONSISTENT,
`PREJUDICIAL TESTIMONY.
`
`Erb changed his testimony. Teleflex tries to obfuscate the inconsistencies,
`
`but Erb’s testimony on redirect and re-cross was new, beyond the scope, and
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`unfairly prejudicial under Fed. R. Evid. 403.
`
`Erb is a moving-target “yes man” whose testimony is, at best, taken with a
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`grain of salt. In the first set of related IPRs, Erb’s declaration limited his personal
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`knowledge to “early GuideLiner prototypes” that did not embody the inventions.
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`See Ex-2122 ¶ 8. He nowhere discussed the “April” and “July” prototypes. See
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`generally Ex-2122. When asked about one of the “July” component parts drawings
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`for the first time on re-direct, he could not “recall seeing a prototype made using
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`
`
`3
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`
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`
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`[that] part in 2005”—that is, until counsel asked him twice more and coached him
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`to the correct answer. See Ex-2248, 93:14-95:12; -01341 Reply at 11; -01343
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`Reply at 6.
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`For these proceedings, counsel had Erb review the “April” and “July”
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`component parts drawings, to plug the holes in his testimony. He explicitly
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`testified that he could not remember reviewing the drawings before he created his
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`declaration and, thus, disclaimed contemporaneous personal knowledge of those
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`critical prototypes. Ex-1799, 22:5-8, 23:21-24:1. During his deposition, Erb took
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`his testimony even further, testifying for the first time to the timing of particular
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`prototype testing.
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`Disclaiming personal involvement in particular testing (Ex-2122 ¶ 12) and
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`then claiming to have observed that precise testing are entirely inconsistent.
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`Indeed, Erb previously testified that he was “personally involved” in other testing
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`when his role was limited to observing. See, e.g., Ex-2248, 67:6-22 (testifying that
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`he was “personally involved” in testing when he “would have been standing there
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`next to whoever was testing” and others performed the tests). If Erb had in fact
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`observed testing involving stents and balloons, as he claimed for the first time
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`4
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`
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`during his second deposition, then he would not have—certainly should not have—
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`disclaimed personal involvement in his declaration.1
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`Erb’s deposition testimony that is the subject of Medtronic’s motion is not
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`consistent with Erb’s declaration. It is, however, conveniently consistent with
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`Root’s testimony. The new, untimely and prejudicial testimony was elicited in an
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`effort to corroborate an inventor, and to try to support Teleflex’s reduction-to-
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`practice case for this new set of claims. For the reasons in Medtronic’s motion and
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`those set forth herein, Erb’s new deposition testimony (both from redirect and re-
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`cross) is contradictory, new, and beyond-the-scope of his declaration. It should be
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`excluded as prejudicial under Fed. R. Evid. 403.
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`
`
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`
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`1 Medtronic did not “elicit” Erb’s new testimony. Medtronic’s re-cross questions
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`attempted to confirm that Erb’s personal knowledge of critical prototype testing
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`was limited—as stated in his declaration. Erb’s testimony was not responsive to
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`Medtronic’s questions, contradicted his declaration testimony, was untimely, and
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`was beyond the scope of his declaration. Ex-1799, 39:9-20.
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`
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`5
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`
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`Dated: November 12, 2021
`
`Respectfully submitted,
`
`/s/ Cyrus A. Morton__________
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`
`Attorney for Petitioner
`
`
`
`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on November
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`12, 2021, a copy of PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO
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`EXCLUDE EXHIBIT 2024 AND PORTIONS OF EXHIBIT 1799 was served by
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`electronic mail on Patent Owner’s counsel at the following addresses indicated in
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`Patent Owner’s Mandatory Notices:
`
`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
`
`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
`
`Joseph W. Winkels
`jwinkels@carlsoncaspers.com
`
`Peter M. Kohlhepp
`pkohlhepp@carlsoncaspers.com
`
`Alexander S. Rinn
`arinn@carlsoncaspers.com
`
`Megan E. Christner, Reg. No. 78,979
`mchristner@carlsoncaspers.com
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`Shelleaha L. Jonas
`sjonas@carlsoncaspers.com
`
`Tara C. Norgard
`tnorgard@carlsoncaspers.com
`
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`Dated: November 12, 2021
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`Respectfully submitted,
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`/s/Cyrus A. Morton___________
`Cyrus A. Morton
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`
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`7
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`Registration No. 44,954
`Attorney for Petitioner
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`8
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