UNITED STATES PATENT AND TRADE MARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NE W WORLD MEDICAL, INC.,
`Petitioner,
`
`v.
`
`MICROSURGICAL TECHNOLOGY, INC.,
`Patent Owner.
`
`Case IPR2020-01573
`
`U.S. Patent No. 9,107,729
`
`PATENT O WNER'S ADDITIONAL DISCOVERY REQUESTS
`
`Patent Owner Ex. 2009-0001
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NE W WORLD MEDICAL, INC.,
`Petitioner,
`
`v.
`
`MICROSURGICAL TECHNOLOGY, INC.,
`Patent Owner.
`
`Case IPR2020-01573
`
`U.S. Patent No. 9,107,729
`
`PATENT O WNER'S ADDITIONAL DISCOVERY REQUESTS
`
`Patent Owner Ex. 2009-0001
`
`
`
`Patent Owner MicroSurgical Technology, Inc. ("MST" or "Patent Owner")
`
`requests that Petitioner New World Medical, Inc. ("N WM" or "Petitioner") produce
`
`documents and things in response to the following Requests for Production and
`
`provide information in response to the following Interrogatories.
`
`INSTRUCTIONS
`
`1. In producing documents and things responsive to these Requests for
`
`Production and providing information responsive to these Interrogatories, please
`
`comply with Federal Rules of Civil Procedure 26, 30, 33 and 34; any Board Order
`
`in this proceeding; and the instructions in the Office Patent Trial Practice Guide.
`
`2. Patent Owner requests that Petitioner produce the documents and things
`
`described in the following Requests for Production and provide information in
`
`response to the following Interrogatories within thirty (30) days.
`
`3. In the event any document responsive to a Request for Production or
`
`identified in response to an Interrogatory is withheld, in whole or in part, on the basis
`
`of aclaim ofattorney-client privilege, attorney work product, or any other exemption
`
`or immunity from discovery, You must furnish a privilege log that provides a
`
`description and identification of the requested document sufficient to frame an
`
`appropriate demand for the document and a motion to compel disclosure thereof,
`
`that identifies each document for which any privilege is claimed, and that provides,
`
`with respect to each document, the following information: (i) the date of the
`
`Patent Owner Ex. 2009-0002
`
`
`
`document; (ii) the subject matter of the document; (iii) the persons) who prepared
`
`the document; (iv) all persons to whom the document was distributed, shown or
`
`explained, as well as the dates on which such disclosure was made; (v) its present
`
`custodian; and (vi) the nature of the privilege asserted. Notwithstanding aclaim that
`
`a document is privileged or otherwise protected from disclosure, any documents so
`
`withheld must be produced with the portion claimed to be protected excised or
`
`redacted.
`
`4. In the event that any document called for by these Requests for
`
`Production is no longer in your possession or subject to your control, or has been
`
`destroyed or discarded, that document is to be identified by stating: (i) the date of
`
`the document; (ii) the subject matter of the document; (iii) the persons) who
`
`prepared the document; (iv) all persons to whom the document was distributed,
`
`shown or explained; (v) the date of the transfer of control of the document or the
`
`destruction, manner of destruction, and reason for destruction; (vi) the persons who
`
`were authorized to carry out such destruction; and (vii) whether any copies of the
`
`document presently exist and, if so, the name of the custodian of each copy of the
`
`document.
`
`5. If You object to or disagree with any of the definitions set forth below,
`
`or if You do not understand any term used in these Requests for Production or
`
`Patent Owner Ex. 2009-0003
`
`
`
`Interrogatories, explain in detail the nature of Your disagreement with the definition,
`
`or lack of understanding of the term, and provide Your definition of the term.
`
`6. If You object to a portion or an aspect of any Request for Production,
`
`Interrogatory, or Deposition Topic, You should state the grounds of Your objection
`
`with specificity and respond to the remainder of the request.
`
`7. You should timely amend Your responses if You learn that Your
`
`response is incomplete or additional responsive information is found.
`
`DEFINITIONS
`
`1. "IPR" means Case No. IPR2020-01573.
`
`2. "You," "Your," and "Yourself 'refer to NWM, as well as any of each
`
`of NWM's agents, officers, employees, representatives, attorneys, and any and all
`
`predecessor or successor entities, corporations, or business entities. These terms also
`
`refer to any division, company, corporation, or other business entity affiliated with
`
`NWM or owned by NWM in whole or in part or which owns NWM in whole or in
`
`part, and the directors, officers, agents, employees, consultants, and attorneys of any
`
`of them, including all persons acting or purporting to act on behalf of, or who are
`
`subject to the direction or control of, any of the foregoing.
`
`3. "Person" or "Entity" shall mean individuals and entities, including
`
`all natural persons, businesses, firms, partnerships, associates, organizations,
`
`governmental units, joint ventures, corporations, and any other entities.
`
`Patent Owner Ex. 2009-0004
`
`
`
`4. The terms "and" and "or" are terms of inclusion and not of exclusion
`
`and are to be construed either disjunctively or conjunctively as necessary to bring
`
`within the scope of these requests any documents or responses which might be
`
`otherwise construed to be outside their scope.
`
`5. The term "any" shall include "all," and the term "all" shall include
`
`« » any.
`
`6. The singular of any term shall include the plural, and the plural of
`
`any term shall include the singular.
`
`7. "Concerning" and "relating to" shall mean identifying, concerning,
`
`referring to, relating to, evidencing, demonstrating, summarizing, reflecting,
`
`constituting, containing, embodying, mentioning, pertaining to, commenting
`
`upon, connected with, discussing, describing, analyzing, showing, comprising, or
`
`relating to in any way relevant to a particular subject, in whole or in part, either
`
`directly or indirectly.
`
`8. The terms "document," "documents," "things," and
`
`"communications" shall be interpreted in their broadest possible sense and refer
`
`without limitation to every document equal in scope to the usage of the term
`
`"documents" in Fed. R. Civ. P. 34, and includes without limitation writings,
`
`communications, emails, voice mails, texts, social media, drawings, graphs,
`
`charts, photographs, sound recordings, images, data stored electronically in any
`
`Patent Owner Ex. 2009-0005
`
`
`
`form, and computerized data compilations. These terms shall also include all
`
`"communications," including without limitation transmissions, exchanges, or
`
`transfers of information by any means, including letters, numbers, images,
`
`symbols, data, photographs, and sound. These terms shall also include "things,"
`
`including without limitation any tangible object other than a document, including
`
`prototypes, samples, models, and specimens, including packaging and
`
`accompanying materials. A draft or non-identical copy is a separate document
`
`within the meaning of this term.
`
`9. "Identify," "identifying," "identifies," "identification," or "identity"
`
`with respect to a natural person shall mean to provide his or her: (a) full name; (b)
`
`present mailing address, telephone number and email address, or if unknown, last
`
`known mailing address, telephone number and email address; (c) current
`
`employer; (d) title or position; and (e) employment duties, functions, and
`
`responsibilities. "Identify," "identifying," "identifies," "identification," or
`
`"identity" with respect to any legal entity such as a corporation, company, or
`
`person other than a natural person means that the following information shall be
`
`provided: (a) the entity's name; (b) the place of incorporation or organization; (c)
`
`the place of business; and (d) the nature of the business conducted by that legal
`
`entity. "Identify," "identifying," "identifies," "identification," or "identity" with
`
`respect to a communication shall mean to state, with respect to each such
`
`Patent Owner Ex. 2009-0006
`
`
`
`communication: (a) the identity of the person creating such communication; (b)
`
`the identity of the recipients) of such communication; (c) the date of the
`
`communication; (d) an identification of all documents reflecting, referring, or
`
`relating to the communication; and (e) the nature, substance, and contents of the
`
`communication.
`
`10. The "'729 patent" shall mean U.S. Patent No. 9,107,729.
`
`11. The "Licensed NWM Patent(s)" shall mean one or more of U.S.
`
`Patent Nos. 9,757,279; 9,872,799; 10,327,947; 10,682,254; and U.S. Patent
`
`Application Nos. 15/701,306; 16/678,785; 16/901,906, and 16/997,663 and any
`
`patents and applications and Foreign Counterparts related thereto.
`
`12. "NeoMedix" shall refer to NeoMedix Corp.
`
`13. "Foreign Counterparts" shall mean any foreign patents) and/or
`
`foreign patent applications) corresponding to any particular U.S. patent and/or
`
`patent application.
`
`Patent Owner Ex. 2009-0007
`
`
`
`REQUESTS FOR PRODUCTION
`
`Request for Production No. 1:
`
`All agreements, including licensing agreements, between You and the
`
`University of Colorado related to the Kahook Dual Blade® technology and/or the
`
`Licensed NWM patents.
`
`Request for Production No. 2:
`
`Documents concerning financial obligations or payments made and/or owed
`
`to the University of Colorado by You related to the Licensed NWM patents.
`
`Request for Production No. 3:
`
`All invoices, bills, requests for reimbursement, or the like received or
`
`provided by or on behalf of NWM requesting payment of or reimbursement for any
`
`fee, bill, or amount due related to the IPR.
`
`Request for Production No. 4:
`
`All documents related to any sponsorship, promotion, and/or financial
`
`contribution by and between You and the University of Colorado that concern the
`
`Kahook Dual Blade® technology and/or the Licensed NWM patents.
`
`Patent Owner Ex. 2009-0008
`
`
`
`INTERROGATORY REQUESTS
`
`Interrogatory No. 1:
`
`Describe and identify all agreements between You and the University of
`
`Colorado related to the Kahook Dual Blade® technology and/or the Licensed NWM
`
`Patents.
`
`Interrogatory No. 2:
`
`Describe the facts and circumstances surrounding Your relationship with the
`
`University of Colorado as it relates to the marketing, sales, and enforcement of the
`
`Kahook Dual Blade® technology and/or the Licensed NWM patents.
`
`Interrogatory No. 3:
`
`Describe all communications between You and the University of Colorado
`
`concerning this IPR and identify the persons involved in such communications,
`
`including their name, employer(s), and job title(s).
`
`Interrogatory No. 4:
`
`Identify all Persons) who provided direction, supervision, or financial
`
`support related to the IPR, including but not limited to review and/or approval of any
`
`of the papers filed in the IPR and payment of bills or invoices related to the IPR and,
`
`for each such Person, identify the Person by first and last name, and provide the
`
`name of their employers) and job title(s).
`
`Patent Owner Ex. 2009-0009
`
`
`
`Dated:
`
`
`
`Respectfully submitted,
`
`DRAFT
`Lawrence M. Sung
`Reg. No. 38,330
`Mary Sylvia
`Reg. No. 37,156
`Teresa M. Summers
`(Pro hac vice forthcoming)
`WILEY REIN LLP
`1776 K Street, N W
`Washington, DC 20006
`Tel. 202.719.7000
`Fax 202.719.7049
`lsung @wiley.law
`msylvia @wiley.law
`tsummers @wiley.law
`
`Counsel for Patent Owner
`MicroSurgical Technology, Inc.
`
`Patent Owner Ex. 2009-0010
`
`
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
