`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`NEW WORLD MEDICAL, INC.,
`Petitioner,
`
`v.
`
`MICROSURGICAL TECHNOLOGY, INC.,
`Patent Owner.
`_______________________
`Case IPR2020-01573
`U.S. Patent No. 9,107,729
`_______________________
`
`PATENT OWNER’S OBJECTIONS
`TO PETITIONER’S DEMONSTRATIVES
`
`
`
`
`
`
`
`2003
`
`2004
`
`2010
`
`2002
`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`Description
`Exhibit
`2001 Declaration of Teresa M. Summers, Esq.
`Erin G. Sieck et al., Outcomes of Kahook Dual blade Goniotomy with
`and without Phacoemulsification Cataract Extraction, 1
`Ophthalmology Glaucoma, 75-81 (2018)
`Todd Neff, UCHealth Eye Center lands global innovation awards,
`UCHealth Today, January 6, 2016
`Complaint for Patent Infringement (ECF No. 1) in MicroSurgical
`Technology, Inc., et al. v. New World Medical, Inc., Case No. 1:20-cv-
`00754-UNA (D. Del.), filed June 4, 2020
`Presentation by New World Medical titled “KDB Competitive:
`2005
`Trabectome/Goniotome {MST}”
`2006 Kahook, Malik Y., U.S. Patent No. 10,327,947, “Modified dual-blade
`cutting system” issued June 25, 2019
`2007 October 21, 2015 press release titled “New World Medical to Launch
`the Kahook Dual Blade at AAO Meeting”
`2008 University of Colorado a global leader in patents for inventions,
`innovations, CU Connections, June 1, 2020
`2009 Draft Proposed Patent Owner’s Additional Discovery Requests
`Email conversation between Lawrence Sung, counsel for Patent
`Owner, and Kyle Deighan, counsel for Petitioner, containing messages
`from October 6-7, 2020
`2011 Declaration of Maeve Hickey
`Complaint for Patent Infringement (ECF No. 1) in New World
`Medical, Inc., et al. v. MicroSurgical Technology, Inc., Case No. 2:20-
`cv-01621-RAJ-BAT (W.D. Wash.), filed November 4, 2020
`Email from Lawrence Sung to Patent Trial and Appeal Board,
`November 5, 2020
`2014 KDB Glide comparison to the TrabEx
`2015 Kahook, Malik Y., U.S. Patent No. 10,786,391, “Intraocular device for
`dual incisions” issued September 29, 2020
`
`2012
`
`2013
`
`i
`
`
`
`
`Exhibit
`
`2016
`
`2016
`
`2016
`
`2017
`
`Description
`(Part 1) Cybersight, Surgery: Goniotomy Using the Kahook Dual
`Blade, YouTube (June 22, 2018)
`(Part 2) Cybersight, Surgery: Goniotomy Using the Kahook Dual
`Blade, YouTube (June 22, 2018)
`(Part 3) Cybersight, Surgery: Goniotomy Using the Kahook Dual
`Blade, YouTube (June 22, 2018)
`(Part 1) Dr. Malik Kahook, Kahook Dual Blade Excisional
`Goniotomy, YouTube (June 30, 2020)
`(Part 2) Dr. Malik Kahook, Kahook Dual Blade Excisional
`Goniotomy, YouTube (June 30, 2020)
`(Part 3) Dr. Malik Kahook, Kahook Dual Blade Excisional
`Goniotomy, YouTube (June 30, 2020)
`(Part 4) Dr. Malik Kahook, Kahook Dual Blade Excisional
`Goniotomy, YouTube (June 30, 2020)
`2018 Declaration of Jasmine Nazaire
`2019 Declaration of Garry P. Condon, M.D.
`2020
`Sworn Affidavit of Manuel Quintana, M.D.
`2021
`Transcript of Deposition of Dr. Peter Netland (May 27, 2021).
`2022
`Transcript of Deposition of Dr. Peter Netland (May 28, 2021).
`2023 DORLAND’S MEDICAL DICTIONARY SHORTER EDITION
`abridged from 25th ed. (1980) excerpt at 605 (definition of “section”)
`2024 BLACKS MEDICAL DICTIONARY 47th ed. (1992) excerpt at 519
`(definition of “section”)
`2025 Declaration of Jasmine Nazaire
`2026
`Emails between counsel, June 29 to July 8, 2021
`2027
`Letter from Lawrence M. Sung to Dr. Manuel Quintana, July 19, 2021
`2028
`Email from Lawrence M. Sung to Dr. Manuel Quintana, July 19, 2021
`Email from Dr. Manuel Quintana to Lawrence M. Sung, dated August
`22, 2021
`Patent Owner’s Responses to Petitioner’s Objections to Evidence
`
`2029
`
`2017
`
`2017
`
`2017
`
`2030
`
`ii
`
`
`
`
`Description
`Exhibit
`2031 Declaration of Yehosef Thomas
`2032
`Transcript of Deposition of Dr. Peter Netland (September 30, 2021)
`2033 Declaration of Jasmine Nazaire
`2034 Demonstrative Exhibit – Not Evidence
`Patent Owner’s Objected-to-Portions of Petitioner’s Demonstratives
`(Exhibit A)
`2036 Declaration of Jasmine Nazaire
`
`2035
`
`iii
`
`
`
`
`Pursuant to the Board’s Order Granting Request for Final Hearing dated
`
`November 22, 2021 (Paper 50, the “Order”), Patent Owner Microsurgical
`
`Technology, Inc. hereby submits the following objections to Petitioner New World
`
`Medical, Inc.’s demonstrative exhibits (Exhibit 1046). As stated in the Order, Patent
`
`Owner’s objections identify with particularity which portions of the demonstratives
`
`are subject to objection and include a one (1) sentence statement of the reason for
`
`each objection. A copy of the objected-to portions is attached as Exhibit A.
`
`As explained below, Patent Owner’s objections fall within four categories: (1)
`
`the content of slides 50, 51, and 70 advance new arguments or evidence that are not
`
`cited in a paper; (2) the content of slides 10, 28, 30, 31, 35, 36, and 42 are subject to
`
`Patent Owner’s Motion to Exclude Evidence (Paper 51) or Patent Owner’s Second
`
`Set of Objections to Evidence (Paper 38); (3) the content of slides 14-16 are subject
`
`to Patent Owner’s Opposition to Petitioner’s Motion to Exclude Evidence, Paper 53;
`
`and (4) the content of slides 2, 4, 9, 11, 12, 18, and 92 present argument and evidence
`
`concerning the affidavit of Dr. Quintana that the Board struck from the record (see
`
`Paper 49). Patent Owner files objections to the first category because the Board
`
`because the presentation of new evidence or arguments at a hearing is prohibited.
`
`Patent Owner files objections to categories (2) to (4) to preserve them for the record.
`
`
`
`1
`
`
`
`Slides 50, 51, and 70 Advance New Arguments or Evidence
`A.
`Patent Owner objects to the new argument on slides 50 and 51 that “Dr.
`
`Condon’s testimony and annotated figure demonstrate Quintana’s needle has two
`
`cutting parts and thus meets the Board’s constructions” because Petitioner’s
`
`argument has previously been that Dr. Condon’s testimony and annotated figure
`
`demonstrate Quintana’s needle has two cutting parts and thus is a “dual blade
`
`device” and otherwise has only advanced an argument that does not comport with
`
`the Board’s construction (compare IPR 2020-01573 Paper 35, p. 18 (Petitioner
`
`wrongly asserting that “[t]here is nothing in the Institution Decision, the plain and
`
`ordinary meaning, or the intrinsic record that requires a “dual blade device” to
`
`have two “distinct” cutting edges”) with Board’s construction at Paper 22, p. 17
`
`(“‘dual blade device’ is readily understandable on its face; dual refers to two, and
`
`blade, in context, refers to a cutting part”)).
`
`Patent Owner objects to the new argument in the heading of slide 70 that
`
`“Dr. Condon testifies patent provides no indication how to measure bluntness or
`
`sharpness” because Dr. Condon never testified as such and Petitioner previously
`
`did not argue that he had so testified.
`
`2
`
`
`
`
`B.
`
`Slides 10, 28, 30, 31, 35, 36 and 42 are Subject to Patent Owner’s
`Motion to Exclude Evidence or Patent Owner’s Objections to
`Evidence
`Patent Owner objects to the entirety of slides 10 and 35 because the refer
`
`and cite to evidence that is irrelevant, was generated solely to rebut the Quintana
`
`affidavit, which the Board struck, and are being used by Petitioner to rebut the
`
`plain meaning of the Quintana reference, as explained in Patent Owner’s Motion to
`
`Exclude Evidence, Paper 51, and Patent Owner’s Reply to Petitioner’s Opposition
`
`to Patent Owner’s Motion to Exclude Evidence, Paper 55. Patent Owner objects to
`
`the last bullet point on slide 28, stating that “Dr. Netland’s additional testing
`
`confirms Quintana discloses ‘strips’ of TM” for the same reasons.
`
`Patent Owner objects to the entirety of slides 30 and 31 as well as the last
`
`bullet point on slide 36 because they refer to and recite new evidence (Spencer and
`
`Becker) raised for the first time in a reply in violation of 37 C.F.R. § 42.23 and that
`
`evidence is also hearsay and unauthenticated. See Patent Owner’s Second Set of
`
`Objections to Evidence, Paper 38, pp. 5-7.
`
`Patent Owner objects to the entirety of slide 42 because it refers to and
`
`recites evidence that is irrelevant, hearsay and unauthenticated. Id., pp. 7-8.
`
`3
`
`
`
`
`C.
`
`Slides 14-16 are Subject to Patent Owner’s Motion to Exclude
`Evidence or Patent Owner’s Opposition to Petitioner’s Motion to
`Exclude Evidence
`Patent Owner objects to the entirety of slides 14-16 because Dr. Condon’s
`
`testimony is credible, reliable, and based on sufficient facts or data. See Patent
`
`Owner’s Opposition to Petitioner’s Motion to Exclude Evidence, Paper 53.
`
`D.
`
`Slides 2, 4, 6, 9, 11, 12, 18, and 92 Present Argument and Evidence
`Concerning the Affidavit of Dr. Quintana That the Board Struck
`Patent Owner objects to the references to “Quintana’s Affidavit” on slides 2,
`
`4, 6, 9, 11, 12, 18, and 92 because the Quintana Affidavit was struck from this
`
`proceeding.
`
`
`
`Dated: January 9, 2022
`
`
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`
`
`Respectfully submitted,
`
`/s/ Lawrence M. Sung
`Lawrence M. Sung
`Reg. No. 38,330
`Mary Sylvia
`Reg. No. 37,156
`Teresa M. Summers
`(pro hac vice)
`WILEY REIN LLP
`2050 M Street, NW
`Washington, DC 20036
`Tel. 202.719.7000
`Fax 202.719.7049
`lsung@wiley.law
`msylvia@wiley.law
`tsummers@wiley.law
`
`Counsel for Patent Owner
`
`4
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`
`
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`
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`MicroSurgical Technology, Inc.
`
`5
`
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`
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`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on January 9, 2022, a true and
`
`correct copy of the foregoing Patent Owner’s Objections to Petitioner’s
`
`Demonstratives and accompanying exhibits were served by email on the following
`
`counsel of record for New World Medical, Inc.:
`
`
`
`Todd R. Tucker (Lead Counsel)
`Reg. No. 40,850
`Kyle T. Deighan (Back-up Counsel)
`Reg. No. 75,525
`John Reulbach (Back-up Counsel)
`(pro hac vice to be requested)
`CALFEE, HALTER & GRISWOLD LLP
`The Calfee Building
`1405 East Sixth Street
`Cleveland, OH 44114
`P: 216-622-8551 / F: 216-214-0816
`ttucker@calfee.com
`kdeighan@calfee.com
`jreulbach@calfee.com
`
`
`
`
`
`
`
`
`
`
`/s/ Lawrence M. Sung
`
`Counsel for Patent Owner
`MicroSurgical Technology, Inc.
`
`6
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`
`
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