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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`New World Medical, Inc.,
`Petitioner
`
`v.
`
`MicroSurgical Tech., Inc.,
`Patent Owner
`
`_______________________
`
`Case No. IPR2020-01573
`
`U.S. Patent Nos. 9,107,729
`________________________
`
`PETITIONER’S OBJECTIONS TO
`PATENT OWNER’S DEMONSTRATIVE EXHIBITS (EX.2034)
`__________________________________________________________________
`
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`In accordance with the Board’s Order Granting Request for Final Hearing
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`(Paper 50) (“Order”), Petitioner submits the following objections to Patent
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`Owner’s demonstrative exhibits (Ex.2034). Under the Board’s rules,
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`“[d]emonstrative exhibits cannot be used to advance arguments or introduce
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`evidence not previously presented in the record.” Consolidated Trial Practice
`
`Guide (Nov. 2019) at 84. New evidence includes evidence of record that has not
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`previously been cited in any paper of record. Paper 50 at 4; see also, e.g.,
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`International Business Machines Corp. v. Intellectual Ventures II LLC, IPR2015-
`
`00089, Paper 41 at 3-4 (PTAB Jan. 14, 2016) (precluding use of slides with
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`citations to portions of evidence of record that were not included in a paper). As
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`explained below, Patent Owner’s demonstratives impermissibly contain numerous
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`excerpts of evidence in the record but that has not previously been discussed in any
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`paper in the record.
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`The parties met and conferred on January 4, 2022 and January 5, 2022
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`regarding the parties’ demonstratives but were unable to resolve Petitioner’s
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`objections. As required by the Board’s Order, the objections “identify with
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`particularity which portions of the demonstratives are subject to objection (and
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`should include a copy of the objected-to portions) and include a one (1) sentence
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`statement of the reason for each objection.” Paper 50 at 5.
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`
`
`
` 1
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`
`
`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`26
`
`Entire excerpted quotation from Johnstone:
`
`27
`
`Entire excerpted quotation from Johnstone:
`
`29
`
`Entire excerpted quotation from Johnstone:
`
`30
`
`Entire excerpted quotation from Johnstone:
`
`Patent Owner has not
`cited to this portion of
`the reference in any
`paper of record;
`therefore, this excerpt
`is impermissible new
`evidence and any
`argument by Patent
`Owner during the oral
`hearing related to this
`new evidence
`constitutes new
`argument.
`
`Same reasoning as
`Slide 26
`
`Same reasoning as
`Slide 26
`
`Same reasoning as
`Slide 26
`
`
`
`
`
`
`
`
`
`31
`
`Entire excerpted quotation from Johnstone:
`
`Same reasoning as
`Slide 26
`
` 2
`
`
`
`
`
`
`
`
`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`44
`
`Entire excerpted quotation from Jacobi 1997:
`
`46
`
`Entire excerpted quotation from Jacobi 2000:
`
`49
`
`Entire excerpted quotation from Jacobi 2000:
`
`Same reasoning as
`Slide 26
`
`Same reasoning as
`Slide 26
`
`Same reasoning as
`Slide 26
`
`
`
`
`
`
`
`
`
`51
`
`Entire excerpted quotation from Jacobi 2000:
`
`Same reasoning as
`Slide 26
`
` 3
`
`
`
`
`
`
`
`
`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`
`
`52
`
`Entire excerpted quotation from Jacobi 2000:
`
`54
`
`Entire excerpted quotation from Ferrari:
`
`Same reasoning as
`Slide 26
`
`Same reasoning as
`Slide 26
`
`
`
`
`
`
`
`
`
`56
`
`Entire excerpted quotation from deposition
`transcript (Ex.2021, 92:14-22) and included
`pages from deposition transcript (Ex.2021, 92,
`93):
`
`Same reasoning as
`Slide 26
`
` 4
`
`
`
`
`
`
`
`
`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`
`
`
`
` 5
`
`
`
`
`
`
`
`
`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`57
`
`Entire excerpted quotation from deposition
`transcript (Ex.2021, 124:17-21) and included
`page from deposition transcript (Ex.2021, 124):
`
`Same reasoning as
`Slide 26
`
`
`
`
`
` 6
`
`
`
`
`
`
`
`
`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`58
`
`Entire excerpted quotation from deposition
`transcript (Ex.2021, 131:16-19) and included
`page from deposition transcript (Ex.2021, 131):
`
`Same reasoning as
`Slide 26
`
`
`
`
`
` 7
`
`
`
`
`
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`
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`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`62
`
`Entire excerpted quotation from deposition
`transcript (Ex.2022, 285:4-8) and included page
`from deposition transcript (Ex.2022, 285):
`
`Same reasoning as
`Slide 26
`
`
`
`
`
` 8
`
`
`
`
`
`
`
`
`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`
`
`64
`
`Entire excerpted quotation from deposition
`transcript (Ex.2022, 299:17-22) and included
`pages from deposition transcript (Ex.2022, 298,
`299):
`
`Same reasoning as
`Slide 26
`
`
`
` 9
`
`
`
`
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`
`
`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`
`
`
`
`65
`
`Entire excerpted quotation from deposition
`transcript (Ex.2022, 299:17-22) and included
`
`Same reasoning as
`Slide 26
`
`10
`
`
`
`
`
`
`
`
`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`page from deposition transcript (Ex.2022, 298,
`299):
`
`
`
`
`
`11
`
`
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`
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`Slide
`No.
`
`Identification of Portion of Demonstrative
`Subject to Objection and Copy of Objected-
`To Portions
`
`Statement of Reason
`for Objection
`
`Dated: January 9, 2022
`
`
`
`Respectfully submitted,
`
`/s/ Todd R. Tucker
`Todd R. Tucker (Reg. No. 40,850)
`ttucker@calfee.com
`Kyle Deighan (Reg. No. 75,525)
`kdeighan@calfee.com
`CALFEE, HALTER & GRISWOLD LLP
`The Calfee Building
`1405 East Sixth Street
`Cleveland, Ohio 44114
`P: 216-622-8200
`F: 216-241-0816
`
`for Petitioner New World.
`Attorneys
`Medical, Inc.
`
`12
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing PETITIONER’S
`
`OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVE EXHIBITS
`
`(EX.2034) was served as of the below date by e-mail on the following individuals
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`and email addresses of record:
`
`Lawrence M. Sung (lsung@wiley.law)
`
`Mary Sylvia (msylvia@wiley.law)
`
`Teresa M. Summers (tsummers@wiley.law)
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`
`
`Dated: January 9, 2022
`
`/s/ John L. Reulbach III
`John L. Reulbach III
`Attorney for Petitioner
`
`
`
`
`
`
` 1
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`
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