Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No.62
`Entered: January 27, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NEW WORLD MEDICAL INC.,
`Petitioner,
`
`v.
`
`MICROSURGICAL TECHNOLOGY, INC.,
`Patent Owner.
`___________
`
`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`___________
`
`Record of Oral Hearing
`Held: January 10, 2022
`_____________
`
`
`
`
`Before JAMES A. TARTAL, JAMES A. WORTH, ROBERT A.
`POLLOCK, RYAN H. FLAX, and DEVON ZASTROW NEWMAN,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No.62
`Entered: January 27, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NEW WORLD MEDICAL INC.,
`Petitioner,
`
`v.
`
`MICROSURGICAL TECHNOLOGY, INC.,
`Patent Owner.
`___________
`
`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`___________
`
`Record of Oral Hearing
`Held: January 10, 2022
`_____________
`
`
`
`
`Before JAMES A. TARTAL, JAMES A. WORTH, ROBERT A.
`POLLOCK, RYAN H. FLAX, and DEVON ZASTROW NEWMAN,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`TODD R. TUCKER, ESQ.
`Calfee, Halter & Griswold, LLP
`1405 E. 6th Street
`
`Cleveland, OH 44114
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`LAWRENCE SUNG, ESQ.
`Wiley Rein, LLP
`Montgomery Building
`2050 M Street, N.W.
`Washington, D.C. 20036
`
`
`
`
`The above-entitled matter came on for hearing on Monday, January
`10, 2022, commencing at 10:00 a.m., EDT, by video/by telephone.
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE FLAX: Good morning. This is Judge Flax. We are
`
`here this morning just past 10 a.m. to hear final oral argument in
`one, two, three, four, five IPRs. Those are IPR 2020- 01573
`concerning patent 9,107,729, IPR 2020- 01711 concerning patent
`9,358,155, IPR 2021- 00017 concerning patent 9,820,885, IPR
`2021-00065 concerning patent 10,123,905 and IPR 2021-00066
`concerning patent 9,999,544. You have an enlarged group of
`judges this morning spanning the panels of these various IPRs
`and besides myself with you today are Judges Tartal, Worth,
`Pollock and Zastrow Newman.
`
`The first thing I would like to do is ask you to please stay
`on mute when you're not speaking. I do hear an echo right now
`so probably someone isn’t, if they would mute themselves that
`would stop happening, so it did just stop and I appreciate that.
`Before we begin I do want to thank you all for your flexibility in
`conducting this remote video hearing today. At this point it's not
`an unusual way to conduct hearings. We know that it's not
`optimal and it's probably not what you would like to do and
`hopefully sometime soon in the future we will not have to hold
`hearings this way. Our primary concern here is your right to be
`heard. So if at any time during the proceeding you encounter
`technical or other difficulties that you feel fundamentally
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`undermine your ability to adequately represent your client,
`please do let us know immediately by contacting the team
`members who provided you with contact information.
`
`Second, as I just noted, when you're not speaking please do
`mute yourself. It will help us have an accurate record and it will
`help to have everyone participate this way. Third, whenever you
`do speak please identify yourself as a speaker. This will help the
`court reporter prepare an accurate transcript even though he
`should have your names associated with your video feeds. And
`fourth we do have the entire record in front of us including your
`demonstratives and your motions and your papers. So when you
`do refer to anything in the hearing, be it a paper or evidence or a
`motion, please identify it by number and page number and after
`you identify it pause just a moment so that you can give us time
`to find it in the record.
`
`That being said each side has agreed to one hour of
`argument today and at our conference call last week we
`discussed that we have motions on evidence that we will hear
`argument on before we get to the final oral argument on the
`merits. So, and we also agreed that that was going to take at
`most a half an hour, so 15 minutes per side. So if the counsel
`could please introduce themselves and get their names entered on
`the record, go ahead and do that now.
`
`MR. TUCKER: Yes, good morning. This is Todd Tucker.
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`I represent the Petitioner New World Medical. With me is Kyle
`Deighan and John Reulbach and also the general counsel/chief
`patent counsel of New World Medical David Klann. I will be the
`only one speaking however, so thank you.
`
`MR. SUNG: Good morning, Your Honors. For Patent
`Owners Microsurgical Technology, Inc., and the Regents of the
`University of California I am Lawrence Sung on behalf of the
`Patent Owners. With me in the room today is Teresa Summers
`and Jasmine Su.
`
`JUDGE FLAX: Great. Thank you very much. One thing
`that I will ask is that when we are all finished today, if counsel
`would stay on the line for a minute after we go off the record in
`case the court reporter has any questions about how to spell
`things or anything that was said during the argument. Okay. So
`moving to the motions. Each side, Patent Owner and Petitioner
`have motions to exclude the others' evidence at trial here. We
`can start with the Petitioner's Motion to Exclude. That's paper
`52 and what I suggest is that you can go ahead and take as much
`time as you want, I guess your 15 minutes to argue it. Each side
`can also take five minutes afterwards to respond to whatever the
`other side had to argue about their motions. So if you want to go
`ahead and begin, Mr. Tucker.
`
`MR. TUCKER: Thank you, Your Honor. First off, may it
`please the Court. The Motion to Exclude that Petitioner's filed
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`seeks to exclude kind of three areas of the putative expert of
`Patent Owner's declaration and the three areas are his general --
`very likely general opinion when he applies the prior art in view
`of the claim construction to render ultimate opinions of
`anticipation and obviousness. This is despite not being able to
`define what anticipation obviousness was and we'll get into more
`detail (audio interference) foibles and shortcomings he had in his
`deposition. But essentially what I would say in his deposition is
`in my 26 years of doing patent litigation I've never seen an
`expert so willfully unable to answer questions about his own
`declaration which seemingly makes this declaration appear to be
`nothing more than attorney argument. That's the first tranche, so
`that's the ultimate opinion and the paragraphs underlying the
`ultimate opinion which would be paragraphs 87 through 266.
`
`We also seek to exclude paragraphs 56 through 61 where
`despite opining over five paragraphs about statements the U.S.
`Patent Office made in a Notice of Allowance in the '729 patent,
`he testified he had never seen the document before and finally
`the last group paragraphs 40 and 48 is where despite the
`Quintana declaration being struck from this case, Dr. Condon is
`essentially attempting to ba ckdoor that struck declaration into
`the case.
`
`So if the Board would please turn to demonstrative 13 and
`if you're there Patent Owner argues that Dr. Condon is one of
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`skill in the art --
`JUDGE FLAX: Counsel, are you talking about your
`demonstrative 13?
`MR. TUCKER: Oh, I'm sorry, yes. New World Medical
`Petitioner's demonstrative 13. Now, an issue in this case that
`we're going to see over and over again and hear a lot about today
`is the Patent Owner just tends to throw everything out there.
`They take a straightforward case and they're making it very
`complicated and also it seemed as if there's lots of reimagining
`going on when things don't go their way.
`So in our Motion we clearly point out, and this is the final
`paragraph of his opinion, paragraph 267 where he says he's
`opining on the ultimate issue in this case which is invalidity, are
`things anticipated, are claims obvious. The paragraphs in front
`of it he goes step by step applying the prior art in view of the
`claim construction to the claim limitations to come up with this
`ultimate opinion but Patent Owner reimagines this as hey, he
`didn't do any of this. All he did was discuss shortcomings in the
`prior art. Well, that's clearly not the case. He is clearly being
`offered for the ultimate issues in this case which becomes a
`major problem given what happened at his deposition.
`If you could turn to Petitioner's slide 14. In our paper I
`think we put about 30 some different statements where he's
`unable to defend what he did, unable to answer questions that he
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`hadn't read things. Patent Owner really doesn't respond to
`almost any of these. They respond to one they claim was taken
`slightly out of context but this deposition was literally death by a
`thousand cuts. We probably could have cited days, you know,
`pages on pages of where he could not answer things and as you'll
`see in my substantive argument, ironically the few times he
`could answer things he tended to support Petitioner's position.
`But let's run through some of the things that make this
`declaration not worthy to come in under Federal Rule of
`Evidence 702 where, you know, 702 it has to be based on
`sufficient data. It has to be applied reliable principles and
`methods to the facts of this IPR and it starts and it's this running
`cavalcade of I didn't read, I didn't know. He said that he merely
`flipped through the '729 patent. He's being offered for the
`ultimate opinion of patentability (audio interference) he just
`flipped through the patent. He didn't drill down on the
`requirements of the '729. He would not be comfortable telling
`you what is required in the patents at issue. He's admitting he
`can't read the claims.
`Critically, and this one is related to paragraphs 56 to 61.
`He was handed the Notice of Allowance from the '729 patent
`where the examiner, the U.S.P.T.O examiner made observations
`about the Lee reference and those observations went unrebutted,
`so they are admitted. He opined from paragraphs 56 to 61 on
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`this Notice of Allowance. I handed him Exhibit 15 in his
`deposition is the entire Notice of Allowance. He said, "I have
`not seen this before."
`Now, Patent Owner comes up with some argument in their
`opposition that I was trying to trick him and handed it to him and
`it was very cursory, that's not the case. As the record shows, he
`had the entire exhibit. He opined on this exhibit for several
`pages in his declaration but when presented with this he said,
`"I've never seen this before." The '905 he testified, "I don't
`remember the whole thing." The '155 he testified that he didn't
`"analyze it other than to look at the claim language."
`If we carry on to slide 15 of Petitioner's, what you see is he
`testifies he doesn't understand patent claims which is particularly
`troubling here because he is opining on the patentability of these
`claims. This is very troublesome. He testified in I believe it
`was the '544 patent which he was handed and I asked him,
`"Q Is claim 8 a device claim or a method claim?"
`And keep in mind the first three words of claim in that
`patent are a method for, and he said,
`"A I don't know how to classify it -- specifically classify
`claims."
`So the claim he's opining on he can't event tell us if it's to a
`device or a method. Similarly, he said I'm not capable of
`dissecting information on what the claim elements require.
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`
`If you move on to 16, this is where it -- I think this is the
`death knell of his declaration. He was asked what is his
`understanding of obviousness and he said I "would have to say
`no" and "I can't explain it." Yet, he is offering a declaration
`with opinions where he says the claims are nonobvious.
`Similarly, when he was asked what is your understanding of
`anticipation he said, "It's not crystal clear to me." Again, all of
`these passages are virtually unrefuted in the opposition. They
`claim we cherry picked and took things out of context. I'm not
`sure how it could be taken out of context when an expert who's
`been offered to opine on obviousness says I don't have an
`understanding of obviousness. It's very clear that this is just
`attorney argument thinly veiled with a very, very minor veneer
`of expert opinion and this did not stand up to scrutiny when
`cross-examined.
`Now, turning to paragraphs 56 to 61 of Lee, I'm sorry, 56 to
`61 of Dr. Condon's declaration, this is regarding Lee. I want to
`just emphasize this is where he said for five paragraphs, he
`discusses the effect of this Notice of Allowance in his
`declaration. But when presented with this in his deposition he
`said he'd never seen this before. That clearly does not meet the
`mandates of 702. That is not reliable, and then finally on 40 and
`48 of Dr. Condon's --
`JUDGE FLAX: Counsel, this is Judge Flax.
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`
`MR. TUCKER: Yes.
`JUDGE FLAX: Wouldn't his declaration still be useful for
`its technological expertise? Even if the witness has admitted he
`doesn't understand patent law, can't read patent claims and really
`can't offer an opinion about whether something is legally obvious
`or anticipated, doesn't he still know plenty about eye surgery to
`give us his opinion on that?
`MR. TUCKER: I think those are some of the paragraphs
`that we're not looking to strike. The problem is when you get
`into paragraphs 87 all the way to the end of the declaration he's
`then taking that background knowledge and applying it to (audio
`interference) we're asking to get rid of. I think some of this
`commentary on what he views of the prior art, those are -- a lot
`of that's in the paragraphs that we're not looking to strike
`because he clearly is, you know, he's been practicing I believe
`it's 35 odd years and moreover, there's actually a lot of
`commentary which you'll see in our main presentation. There's a
`lot of testimony where he's confronted with what he said about
`the references, about what they teach that actually falls in
`Petitioner's favor so we're obviously not looking to strike that.
`But I think it is -- under 702 it’s completely unreliable to let
`anything related to the ultimate question in.
`Then finally 40 to 48 with Quintana is a little bit of a
`unique animal. What the argument there is is under Patent
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`Owner saying that even though Quintana was struck from the
`case that under Federal Rule of Evidence 703 that experts aren't
`allowed to consider things that are inadmissible and 703 indeed
`lets experts consider things that are inadmissible evidence like
`hearsay. But the Quintana affidavit, it's not an evidentiary issue.
`It was struck from the record from procedural grounds. It can't
`even be considered as evidence. It doesn’t exist for this case so
`703 does not apply, 703 is when you have something that's
`evidence but it's inadmissible for another reason, for instance
`hearsay. Quintana here does not exist, yet he still tried to rely
`on it. So we think that one without issue has to come out.
`So I think, Your Honor, we've laid out the specific tranches
`of his declaration that we think need to be struck or afforded
`little or no weight because it's very clear when an expert is
`opining on anticipation and obviousness and can't say what it is
`or when an expert is applying prior art to a claim and can't
`identify the claim as a method or a device, that's not reliable
`evidence under 702. So that's all I have. Thank you, Your
`Honor. Any other questions?
`JUDGE FLAX: Not for me. This is Judge Flax. If any of
`the other judges on the panel have any questions, they can ask. I
`think they don't have any. So why don't we do this. Mr. Sung,
`why don't you go ahead and take your first bit of time here and
`respond and then you can go into your motions, and then we'll
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
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`give Mr. Tucker a couple of minutes if he needs it to respond to
`you. Does that sound workable to everybody? You might want
`to unmute yourself, sir.
`MR. TUCKER: Yes, that works for us, Your Honor. Thank
`
`you.
`
`MR. SUNG: Yes, Your Honor, that works for Patent Owner
`as well.
`JUDGE FLAX: Okay. So why don't you respond in your
`first few minutes and then you can move into your own motion.
`MR. SUNG: Thank you, Your Honors. Good morning
`everyone. May it please the Board. Petitioner's Motion to
`Exclude portions of the Condon declaration do amount to a series
`of really deposition gotcha attempts. While taking Mr. Tucker's
`representation at face value, he's got 26 years as a patent
`litigator and Dr. Condon was trying to provide information in
`response to these questions that were rather untethered to
`particular aspects of the declaration and Dr. Condon's testimony
`and the idea that we can in our opposition respond to each one of
`those point by point is a little bit daunting.
`But at the same time, Patent Owners recognize that Dr.
`Condon is not a patent expert. He is not being put forward as a
`patent expert and to the extent he has some level of unfamiliarity
`with patent law, that does not extend to an unfamiliarity with the
`patents or the prior art. What the deposition transcript actually
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`shows is that these few instances of uncertainty do relate to
`patent claim terminology as well as aspects of the prosecution
`history and the way that the disclosure is set forward.
`However, what's even more compounded here is that
`Petitioner would like to take specific answers to specific
`questions related to one or four of the patents and extend them to
`a complete uncertainty with respect to all of the patents and let
`me give you an example of that. To the extent that Mr. Tucker is
`referring to a specific question about whether Dr. Condon
`analyzed the '155 patent other than to look at the claim language,
`Dr. Condon's answer makes sense in the context of the fact that
`the '729, the '885 and the '155 share identical specifications and
`that's the context that that answer was provided. Was it required
`that Dr. Condon go and read through each and every word of
`something that he recognized as the same specification in
`different patents, but that's the type of example that Mr. Tucker
`is relying upon. Again, looking at taking discrete answers to
`discrete statements, caveated with his level of understanding and
`lack of understanding about patent law rather than stating that he
`had not wholesale reviewed or understood particular pieces of
`evidence, including the patents and the prosecution histories.
`This is very different from whether he has provided his
`expert opinion from the perspective of a POSA in comparing the
`prior art to the challenged claims and unlike Petitioner's expert
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`Dr. Netland who repeatedly opines outside of the scope of his
`expertise about how to interpret patents, Dr. Condon was careful
`to keep his answers tied to his knowledge and experience as an
`ophthalmologist.
`With respect to the prior art, for example, Petitioner's only
`quibble is whether Dr. Condon reviewed two cited background
`references in Quintana that Dr. Condon did not recall but more
`particularly which were never raised in the petition. These two
`references were raised for the first time in the reply paper No.
`35. This too is an example of a gotcha moment that Mr. Tucker
`would like to rely on that does not undermine Dr. Condon's
`expert testimony.
`Patent Owners are happy to walk through each of these
`particular statements, questions and answers point to point but
`we are confident that if you look at the entire deposition as a
`whole there aren't statements or admissions of the inability of
`Dr. Condon to understand the technology, particularly as
`applying the prior art teachings to the claims at issue and to
`address all of the relevant points within the analysis for
`obviousness and anticipation. The idea that he is not crystal
`clear about what the law of anticipation is in the way that Mr.
`Tucker had asked him is inconsequential to his expert testimony
`for purposes of these IPRs.
`What I would also like to raise, Judge Flax, is that on our
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`prehearing call, Mr. Tucker for Petitioners had raised the issue
`about demonstratives and their concern that their objections to
`our demonstratives were based on new argument that we were
`bringing to the final hearing. Perhaps I'm mistaken but I thought
`that we might have a brief opportunity to address that aspect as
`well because I think it's very important, especially within the
`context of a video conference hearing that we can do our best to
`avoid any unnecessary interruptions during the merits argument.
`If the Board would like to address some of that we'd be happy to
`speak to it.
`JUDGE FLAX: I think that you all should address that in
`this pre-merits argument portion. But before we get to all that,
`unless you feel like you need to do it right now it sounds like
`you're ready to go into your own Motion to Exclude.
`MR. SUNG: That's correct, Your Honor.
`JUDGE FLAX: Okay. I mean, if you want to combine your
`argument over your motion and whatever you want to say about
`the demonstratives, that would be okay also.
`MR. SUNG: Yes. I think what I'd like to do if it's fine
`with the Board is to talk about our motion and then to speak
`briefly to the demonstrative issue that Mr. Tucker raised and
`then that would open up time for him to respond to all of those.
`JUDGE FLAX: Okay.
`MR. SUNG: So on Patent Owner's Motion to Exclude.
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`They focus on these following key items. There are three
`exhibits that we refer to as the Netland videos. These are
`Exhibits 1031, 1032 and 1033 as well as videos related to
`something referred to as the Bang procedure. These are Exhibits
`1020 and 1021 in addition to certain paragraphs of Petitioner's
`expert report that relates to this. These particular videos and the
`declaration testimony have no permissible use in these IPRs.
`First, none of the video exhibits are prior art. These are
`post critical date evidence and the case authority relates to the
`use of post critical date evidence only in the context of showing
`inherency and that is an argument that Petitioners have not raised
`at this point in time and thus waived. Nor do these videos have
`any relevance to the prior art, particularly the Quintana reference
`because Petitioner's own expert admits that all of these
`procedures differ in material ways from Quintana, not the least
`of which is that it's not on a live patient as Dr. Quintana.
`Moreover, these exhibits have no relevance at all to Jacobi.
`Now, as a reminder the Netland videos were submitted for
`the first time in paper 35, the reply, for the sole purpose of
`rebutting the Quintana affidavit, Exhibit 2020 that was put
`forward by Patent Owners. In view of the Quintana affidavit
`having been struck by the Board, the Netland videos should be
`retroactively treated as new argument that is improperly raised in
`paper 35 that should be excluded in parallel. In particular,
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`Patent Owners have had no opportunity because of the
`introduction of these videos in the reply to rebut the Netland
`videos otherwise. Just like the absence for an opportunity for
`cross-examination of the Quintana affidavit the absence of our
`ability as Patent Owners to rebut the Netland videos is
`particularly prejudicial and the prior art, particularly Johnston - -
`JUDGE FLAX: Counsel, why do --
`MR. SUNG: -- that we will discuss in our merits argument
`
`--
`
`JUDGE FLAX: -- what are you saying, that you didn't have
`an opportunity to rebut the Netland videos? Why is that?
`MR. SUNG: The only address that we had was within the
`Motions to Exclude but the actual underlying information that
`Petitioner hoped to convey through the Netland videos, they
`submitted those videos in the reply and there were no paper
`opportunities for Patent Owners to raise a rebuttal to them. We
`had mentioned in our Motion to Exclude that we think the proper
`procedure or course would be to the extent that the Board struck
`the Quintana affidavit to similarly strike or exclude the rebuttal
`evidence to that which is in the form of these Netland videos.
`Your Honor, is there a further question?
`JUDGE FLAX: I don't know if I have another question.
`I'm just considering the fact that you had a surreply brief after
`the reply brief and you could have asked for another deposition
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`or there seemed to have been some resources at your fingertips
`that you didn't exploit, but go ahead.
`MR. SUNG: Yes, and it's Patent Owner's understanding
`that within that surreply, again, there was no opportunity to
`bring in additional evidence at that point in time and so that's the
`reason that we had addressed this in our Motion to Exclude as
`opposed to treat another or provide another paper on the
`substance of that because again, they raised it as rebuttal
`evidence to the Quintana affidavit not as any other, you know,
`not for a purpose that's tied to (audio interference) a further
`clarification of what was in the petition. So it seemed to be on a
`rather different track.
`Your Honors, if I can comment briefly on the demonstrative
`issue then before turning it over to Mr. Tucker. Mr. Tucker on
`the prehearing call had raised issues about the parties'
`demonstratives and during our meet and confer Patent Owners
`told Petitioner that the Patent Owners would lodge certain
`objections to their demonstratives on the record to preserve the
`issue but it was not a matter that Patent Owners felt required the
`Board's deliberation. However, Patent Owners do maintain the
`position that these certain slides are objectionable but, again, we
`don't believe that the Board needs to hear further about them.
`Patent Owners, on the other hand, are prepared to respond
`to each and every one of Petitioner's objections to our
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`demonstratives but the underlying assertion of new argument is
`the real issue. The demonstratives are really just a vehicle for
`that. Petitioner has advocated here for a standard whereby a
`reference to a portion of the prior art cited in the petition, the
`challenged patents or the expert witness deposition testimony
`should automatically constitute a new argument. They raised
`two cases in their objections, the IBM case and the CBS case.
`Both of these cases are readily distinguishable from the
`circumstances here.
`In those cases the focus was on a party's attempt to rely for
`the first time at oral hearing on different paragraphs of expert
`declarations that have not been previously relied upon. So none
`of these cases involve, as in oral IPRs, reliance on the prior art,
`the challenged patents or the expert witness deposition testimony
`and that's a very critical difference because as the Board knows,
`expert declarations are often written in a way that each and every
`paragraph can address a different argument and in fact in IBM
`the parties admitted that the newly cited paragraphs address
`different albeit similar arguments. Patent Owner's reference to
`the prior art, the challenged patents or any expert witness
`deposition testimony as a whole directly relates to Patent
`Owner's contention that the prior art does not teach the claimed
`inventions. The Petitioner and the Board are aware of these
`arguments in our papers and Petitioner is not prejudiced in any
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`IPR2020-01573 (Patent 9,107,729 B2)
`IPR2020-01711 (Patent 9,358,155 B2)
`IPR2021-00017 (Patent 9,820,885 B2)
`IPR2021-00065 (Patent 10,123,905 B2)
`IPR2021-00066 (Patent 9,999,544 B2)
`
`way by reference to what a piece of prior art as a whole
`addresses.
`Now if a party were to point -- if we were to point to a
`statement in a prior art reference to argue for the
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