throbber
Trials@uspto.gov
`571.272.7822
`
`
`Paper 63
`Date February 16, 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 B21
`____________
`
`Before JAMES A. TARTAL, JAMES A. WORTH,
`ROBERT A. POLLOCK, RYAN H. FLAX, and
`DEVON ZASTROW NEWMAN Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`ORDER
`Denying Petitioner’s Motion to Exclude,
`and Patent Owner’s Motion to Exclude
`37 C.F.R. §§ 42.5(a), 42.71(a)
`
`
`
`
`
`1 Because this Order applies to each of these related inter partes review
`proceedings, we use this caption for efficiency. The parties are not
`authorized to follow this practice, but may request such authorization.
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`
`I.
`INTRODUCTION
`New World Medical, Inc. (“Petitioner”) filed a Petition for an inter
`partes review in: IPR2020-01573 regarding Patent 9,107,729;
`IPR2020-01711 regarding Patent 9,358,155; IPR2021-00017 regarding
`Patent 9,820,885; IPR2021-00065 regarding Patent 10,123,905; and
`IPR2021-00066 regarding Patent 9,999,544. See, e.g., Paper 1 of
`IPR2020-01573.2 MicroSurgical Technology, Inc. (“Patent Owner”) is the
`Patent Owner in these proceedings. Trial was instituted in each of these
`proceedings (see, e.g., Paper 22 in IPR2020-01573).
`In each proceeding, each party filed a motion to exclude the other’s
`evidence. Patent Owner filed a Motion to Exclude Exhibits 1020, 1021, and
`1031–1033, as well as portions of Exhibits 1003 and 1030 (declarations)
`addressing these exhibits. Paper 51 (“Patent Owner’s Motion” or “PO
`Mot.”). Petitioner filed a Motion to Exclude portions of Exhibit 2019
`(declaration). Paper 52 (“Petitioner’s Motion” or “Pet. Mot.”). Each party
`filed a respective Opposition to the other’s Motion (Paper 54, “Petitioner’s
`Opposition” or “Pet. Opp.”; Paper 53, “Patent Owner’s Opposition” or “PO
`Opp.”), and each party filed a respective Reply to the other’s Opposition
`(Paper 55, “Patent Owner’s Reply” or “PO Reply”; Paper 56, “Petitioner’s
`Reply” or “Pet. Reply”). Oral argument was heard at a final hearing on
`January 10, 2022, and each party addressed these Motions. Paper 62 (“Hr’g
`Tr.”).
`
`
`2 For efficiency, we cite to the record from IPR2020-01573; the records in
`the related proceedings are similar.
`
`2
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`
`The party moving to exclude evidence bears the burden of proving
`that it is entitled to the relief requested—namely, that the material sought to
`be excluded is inadmissible under the Federal Rules of Evidence (“FRE”).
`See 37 C.F.R. §§ 42.20(c), 42.62(a) (2019). Furthermore, as an initial matter
`in considering the parties’ motions, “[w]here, as here, the decision is by an
`administrative agency, rather than a jury, there is a diminished concern that
`[ ] exhibits [will] be prejudicial.” Eli Lilly and Co., v. Teva Pharms. Int’l
`GMBH, IPR2018-01710, Paper 69 at 161 (PTAB Mar. 31, 2020) (citing
`Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB
`May 1, 2014)).
`We have considered the parties’ Motions, related briefing, and
`arguments and, for the reasons below, we deny each Motion.
`II. PATENT OWNER’S MOTION
`As noted above, Patent Owner’s Motion requests that we exclude
`Exhibits 1020, 1021, and 1031–1033. PO Mot. 1. Exhibit 1020 is indicated
`on its face to be a poster abstract by Thomas Shute, Wesley Green, James
`Liu, and Arsham Sheybani, related to the American Glaucoma Society’s 29th
`Annual Meeting, which Patent Owner indicates is purported to explain an
`eye surgery technique called bent ab interno needle goniectomy (“BANG”).
`Ex. 1020; PO Mot. 2. Exhibit 1021 is a 43 second video, having a fixed
`caption reading “Arsham Sheybani MD,” showing manipulation of the tip of
`a needle followed by a surgical procedure, which Patent Owner explains is
`purported to show the aforementioned BANG procedure. Ex. 1021; PO
`Mot. 2. Exhibits 1031–1033 are three videos titled “Netland Reply
`Declaration Video” “1,” “2,” and “3,” which show Petitioner’s witness,
`
`3
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`Dr. Netland, performing a surgical procedure on cadaver eyes using three
`bent needles. Ex. 1030 ¶¶ 16–23 (Dr. Netland’s Declaration describing
`these exhibits); Ex. 1031–1033; PO Mot. 2. Patent Owner argues that none
`of the aforementioned exhibits are printed publications or prior art and that
`they are, therefore, “irrelevant” and should be excluded pursuant to FRE
`401–402. PO Mot. 2. Patent Owner also argues that Exhibits 1020 and
`1021 are not authenticated and should be excluded under FRE 901. Id.
`Regarding relevancy, Patent Owner asserts that Exhibits 1020, 1021,
`and 1031–1033 are not contemporaneous with Petitioner’s Quintana
`reference (Ex. 1004), asserted by Petitioner to be an anticipatory and
`obviousness-rendering reference with respect to the challenged claims, and
`that the exhibits are not prior art, so they are not relevant. PO Mot. 2–4.
`Patent Owner argues that Petitioner has not met its burden of showing that
`these exhibits are printed publications, so they cannot be considered by the
`Board. Id. at 4. Patent Owner also argues that the BANG procedure, which
`is the subject of Exhibits 1020 and 1021, was not yet developed as of
`Quintana’s publication, and that Exhibit’s 1031–1033 depict a “striking[ly]
`similar[ ] procedure,” and, thus, all these exhibits are “not ‘of consequence
`in determining the action’” here, and so are not relevant. Id. at 4–5.
`Regarding Exhibits 1020 and 1021, Patent Owner also argues they are
`unauthenticated by Petitioner because Petitioner has not established when
`the evidence was “published,” or if the evidence constituted true and correct
`copies. PO Mot. 5–6. Patent Owner argues that these exhibits are not self-
`authenticating under FRE 901(b)(4) or 902. Id. at 6.
`
`4
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`
`In response, Petitioner argues that Exhibits 1020 and 1021 are
`relevant as background information (and that they do relate to the BANG
`procedure) on how a bent needle surgical procedure as taught by Quintana
`would work. Pet. Opp. 2. Petitioner agues that Exhibits 1031–1033 are
`relevant as its expert’s efforts to replicate the surgical procedure taught by
`Quintana and are responsive to Patent Owner’s arguments over the
`reference. Id. Petitioner argues that these exhibits should remain in
`evidence because, even though they post-date the challenged patent’s
`effective date, they educate the fact finder regarding the technology at issue
`and what is taught by the prior art. Id. at 3 (citing In re Baxter Travenol
`Labs., 952 F.2d 388, 390 (Fed. Cir. 1991); Hospira, Inc. v. Fresenius Kabi
`USA, LLC, 946 F.3d 1322, 1329–31 (Fed. Cir. 2020); Monsanto Tech. LLC
`v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018);
`Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir.
`2003)). Petitioner argues that it does not assert this evidence to fill any gaps
`in Quintana’s disclosure. Id. at 4.
`Regarding the printed-publication status of Exhibits 1020, 1021, and
`1031–1033, Petitioner argues that it is not relying on this evidence as the
`basis for its grounds for unpatentability, but, rather, as mere supporting
`evidence. Id. at 4–5 (citing 37 C.F.R. § 42.104(b); Yeda Res. v. Mylan
`Pharms. Inc., 906 F.3d 1031, 1041 (Fed. Cir. 2018). In other words,
`Petitioner does not assert any of Exhibits 1020, 1021, or 1031–1033 as a
`basis for unpatentability, but instead submits that they inform the fact finder
`on the practical teachings of the prior art that is so asserted, for example,
`“what the Quintana reference actually teaches.” Id. at 5-6. As such, argues
`
`5
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`Petitioner, whether these exhibits are printed publications is not
`determinative of their relevance. Id. at 5.
`Petitioner argues that Dr. Netland’s testimony authenticates Exhibits
`1020 and 1021 and that, on their own, these exhibits “contain other indicia
`of authenticity” under FRE 901(b)(4). Pet. Opp. 6–8 (citing Ex. 1003 ¶¶ 98–
`100). Regarding the former, Dr. Netland testifies about what Exhibits 1020
`and 1021 disclose and, regarding Exhibit 1021, identifies the web address at
`which the video was obtained at YouTube. Ex. 1003 ¶¶ 98–100. Although
`not cited in its Opposition specifically, we also note that Dr. Netland more
`fully identifies the sources of Exhibits 1020 and 1021 in his Declaration in a
`table at paragraph 16, where he indicates that Exhibit 1020 was published in
`2019 by the “Am Glaucoma Society 29th Annual Meeting Poster Abstracts”
`at pages 34–35, and that it was available at https://ags.planion.com/
`Web.User/AbstractDet?ACCOUNT=AGS&CONF=AM19&ABSID=12309,
`and that Exhibit 1021 was dated August 24, 2017 and available at
`https://youtu.be/b5QxWts-Pxs. Ex. 1003 ¶ 16 (pages 9–10, each web
`address provided as a hyperlink, which functions for Ex. 1021, but not for
`Ex. 1020). Regarding the latter (indicia of authenticity) Petitioner argues
`that Exhibit 1020 “clearly appears to be a poster abstract” and includes
`characteristics expected of an authentic publication per FRE 901(b)(4), and
`also is a “self-authenticating [] periodical” under FRE 902(6). Pet. Opp. 7,
`n.2. Petitioner argues that the functional link to YouTube for Exhibit 1021
`authenticates that evidence. Id. at 8.
`Considering the parties’ arguments and the evidence, we are
`persuaded by Petitioner’s points.
`
`6
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`
`As an initial matter, regarding whether the objected-to exhibits are
`“printed publications,” they need not be such to be admissible evidence here.
`37 C.F.R. § 42.63 (a) (“Evidence consists of affidavits, transcripts of
`depositions, documents, and things.”). None of exhibits 1020, 1021, and
`1031–1033 was relied upon by Petitioner as a basis for its grounds for
`unpatentability. See, e.g., Pet. 4 (summary of grounds), 34–35. Thus,
`35 U.S.C. § 311(b) does not apply to this supporting evidence.
`Regarding the issue of relevance, we conclude that Exhibits 1020,
`1021, and 1031–1033 are relevant because they tend “to make a fact more
`or less probable than it would be without the evidence” pursuant to FRE
`401(a). That is, Petitioner’s prior art evidence, Quintana (Ex. 1004),
`discusses bending a hypodermic needle to perform a surgical procedure on
`the trabecular meshwork of the eye, along Schlemm’s canal, and each of
`these exhibits either discusses or shows by video a surgical procedure on this
`same anatomy using a bent hypodermic needle. See Ex. 1004, 3–4;
`Ex. 1020; Ex. 1021; Exs. 1031–1033. As finders of fact, familiar with the
`entirety of the record, we are well positioned to determine whether and to
`what extent the objected-to exhibits illuminate the prior art’s disclosure. At
`the very least, this evidence illustrates how a hypodermic needle may be
`bent and used for eye surgery and shows some results of such a procedure.
`Even if the BANG surgery of focus in Exhibits 1020 and 1021
`represents a technique adopted sometime after Quintana’s publication, and
`even if the videos of Exhibits 1031–1033 showing Dr. Netland attempting to
`replicate Quintana’s disclosed techniques have some (as admitted at
`Ex. 1030) necessary differences from the precise procedure discussed in
`
`7
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`Quintana, we find there are enough similarities between these exhibits’
`subject matter and Quintana’s teachings to assist us in better understanding
`the prior art’s disclosure from a practical standpoint. We do not consider
`any of the objected-to exhibits as prior art, but merely as supporting
`Petitioner’s witness’s testimony on what the prior art discloses and how it
`would have been understood by the ordinarily skilled artisan.
`As to the authenticity of Exhibits 1020 and 1021, we are satisfied that
`they are what Petitioner purports them to be. Authentication is a low bar,
`requiring only a rational basis that evidence is what it is asserted to be. See
`e.g., Caterpillar Inc. v. Wirtgen Am., IPR2018-01091, Paper 49 at 72 (PTAB
`Nov. 27, 2019) (quoting United States v. Turner, 934 F.3d 794, 798 (8th Cir.
`2019)). FRE 901(b)(4) indicates that “[t]he appearance, contents, substance,
`internal patterns, or other distinctive characteristics of the item, taken
`together with all the circumstances” can authenticate an item, and FRE
`902(7) indicates “[a]n inscription, sign, tag, or label purporting to have been
`affixed in the course of business and indicating origin, ownership, or
`control” are self-authenticating. FRE 901(b)(4), 902(7). Although
`Petitioner bears the burden to authenticate its evidence, Patent Owner, as the
`moving party, bears the burden of establishing that Exhibits 1020 and 1021
`are not admissible. See FRE 901; 37 C.F.R. § 42.20(c).
`Petitioner asserts Exhibit 1020 is a 2019 publication by the
`“Am[erican] Glaucoma Society [for its] 29th Annual Meeting Poster
`Abstracts” at pages 34–35. Ex. 1003 ¶ 16; Pet Opp. 7. Exhibit 1020 bears
`indicia that it is such a publication in the form of a header indicating the
`society’s name and the annual meeting number. Ex. 1020, 1–2. The
`
`8
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`American Glaucoma Society is a known organization and a rudimentary
`online search shows that on March 14, 2019, “Thomas Shute MD,” the first-
`named author of Exhibit 1020, was listed as presenting on the subject of the
`title of this exhibit. Thus, the indicia of authenticity on the face of Exhibit
`1020 can be substantially confirmed by the most basic investigation (see
`AGS2019 Annual Meeting, Schedule, https://ags2019annualmeeting.
`sched.com/list/descriptions/, accessed Feb. 14, 2022). Taking the
`circumstances together, Exhibit 1020 is authenticated under FRE 901(b)(4).
`Regarding Exhibit 1021, Petitioner asserts it is a video of a surgical
`procedure, like that described in Exhibit 1020. Ex. 1003 ¶ 16; Pet. 35; Pet.
`Opp. 8. Petitioner’s witness, Dr. Netland, identifies that Exhibit 1021 was
`dated August 24, 2017, and was available at https://youtu.be/b5QxWts-Pxs.
`Ex. 1003 ¶ 16. Clicking on this link in Dr. Netland’s Declaration confirms
`that the video is indeed still available on YouTube, its title is “Bent Ab-
`interno Needle Goniectomy (BANG),” its upload date was August 24, 2017,
`the uploading person is identified as “Arsham Seybani” (who, we note, is
`another listed author on the face of Exhibit 1020), that that the associated
`description with the video on YouTube states “[t]his is a way to do angle
`surgery and still remove TM for those who do not have access to MIGS
`devices.” We find that Petitioner’s and its witness’s explanation of what
`Exhibit 1021 is appears to be substantiated and we find no reason to doubt
`the authenticity of Exhibit 1021.
`For the reasons above, we deny Patent Owner’s motion.
`
`9
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`
`III. PETITIONER’S MOTION
`As noted above, Petitioner’s Motion requests that we exclude portions
`of Exhibit 2019 (“Condon Declaration”), which is Patent Owner’s witness,
`Dr. Condon’s Declaration. Pet. Mot. 1. Specifically, Petitioner seeks to
`exclude paragraphs 40, 48, 56–61, and 87–266 of the Condon Declaration.
`Id. at 9. Petitioner asserts that Dr. Condon’s direct testimony presented in
`Exhibit 2019 directed to aspects of the prior art, application of the prior art
`to the challenged claims, and the patentability of the challenged claims is
`unreliable, irrelevant, and fails to satisfy the requirements of expert
`testimony. Id. at 1.
`Petitioner asserts that on cross-examination by deposition, Dr. Condon
`testified, inter alia, that he had not carefully read the challenged patent(s), he
`was unsure in some respects as to what the claims of the challenged patent(s)
`require, did not know the difference between device and method claims, did
`not understand anticipation or obviousness, had not seen at least some
`portions of the challenged patent’s prosecution history, did not understand
`what a patent file history is, did not understand or had not analyzed at least
`some claim language of the challenged patent(s), was not capable of
`interpreting the meaning of at least some claim language, and presented
`internally-conflicting testimony on the proper reading of Petitioner’s
`asserted prior art. Pet. Mot. 3–9 (see citations to Exs. 1041–1043 therein).
`Petitioner asserts that, under FRE 702 and 37 C.F.R. §§ 42.62, 42.65,
`Dr. Condon’s direct testimony is insufficient regarding his knowledge, basis
`in facts and data, and reliability because the witness does not understand the
`legal concepts of anticipation and obviousness to which he testifies, had not
`
`10
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`considered or analyzed evidence he had purported in his direct testimony to
`have considered and analyzed, and does not fully understand the challenged
`claims. Id. at 9–13. Petitioner also asserts that Dr. Condon’s testimony
`relies, in part, on other evidence that was struck from the record (Ex. 2020),
`and must itself be discounted. Id. at 13.
`Patent Owner argues that Petitioner “grossly mischaracterizes”
`Dr. Condon’s deposition testimony. PO Opp. 1. Patent Owner argues that
`Dr. Condon’s direct testimony is credible, reliable, and based on sufficient
`facts and data. Id. at 2. Patent Owner argues that the fact that “Dr. Condon
`is a technical expert, not a patent attorney,” excuses the witness’s inability at
`deposition to testify as to, for example, the requirements of the claims of the
`challenged patent(s), the meaning of anticipation and obviousness, what a
`patent file history is, etc. Id. at 3–4. Patent Owner argues, for example, that,
`during his deposition, Petitioner failed to point Dr. Condon to certain
`relevant pages of exhibit evidence (e.g., the ’729 patent’s prosecution
`history’s Notice of Allowance’s discussion of prior art) upon which
`Dr. Condon had indicated he relied for his opinions in his direct testimony,
`and that this excuses Dr. Condon’s cross-exam testimony that he’d never
`seen the relevant evidence before. See id. at 3–6.
`Patent Owner argues that “[e]ven if Petitioner’s assertions regarding
`Patent Owner’s evidence were true, which they are not, Petitioner’s
`requested exclusion of such evidence does not comport with the Board’s
`customary practice in this regard” and “[i]t is well established that the Board
`prefers to determine the appropriate weight to give expert evidence ‘without
`resorting to formal exclusion that might later be held reversible error.” Id. at
`
`11
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`7–8 (citing Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper
`38 at 52 (PTAB May 31, 2016); Sony Comput. Ent. Am. LLC v. Game
`Controller Tech. LLC, IPR2013-00634, Paper 32 at 32 (PTAB Apr. 14,
`2015); Daiichi Sankyo Co. v. Alethia Biotherapeutics Inc., IPR2015-00291,
`Paper 75 at 24 (PTAB June 14, 2016)). Further, Patent Owner argues that,
`“[h]ere, the objections raised by Petitioner go to the weight or sufficiency of
`[Dr. Condon’s] testimony, not its admissibility.” Id. at 8. (citing Liquid
`Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006)).
`Although we agree with Petitioner’s characterizations of
`Dr. Condon’s testimony on cross-examination and also find Petitioner’s
`assertions regarding this testimony and its applicability to interpreting
`Dr. Condon’s direct testimony to be accurate, we also agree with Patent
`Owner’s last points.
`The Board has broad discretion as to what weight to accord expert
`testimony, including Dr. Condon’s Declaration. Yorkey v. Diab, 601 F.3d
`1279, 1284 (Fed. Cir. 2010); see also Patent Trial and Appeal Board
`Consolidated Trial Practice Guide 35 (Nov. 2019), (“CTPG”).3 Petitioner’s
`objections do not support excluding any portion of Dr. Condon’s testimony
`or any of Patent Owner’s briefing reliant thereon. The nature of our
`proceedings, in which the same panel that decides admissibility also serves
`as the fact-finder, disfavors exclusion in these circumstances. See Corning
`Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66, 19 (PTAB May 1,
`2014) (sitting as a non-jury tribunal, the Board may assign appropriate
`weight to evidence presented) (citing Donnelly Garment Co. v. NLRB, 123
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`12
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`F.2d 215, 224 (8th Cir. 1941)). As the Donnelly court observed, “[o]ne who
`is capable of ruling accurately upon the admissibility of evidence is equally
`capable of sifting it accurately after it has been received . . . .” Donnelly,
`123 F.2d at 224. Expert “testimony must be based on sufficient facts and
`data. Fed. R. Evid. 702(b). ‘Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is entitled to little or
`no weight.’ 37 C.F.R. § 42.65(a).” CTPG 35.
`“Expert testimony may be presented to establish the scope and content
`of the prior art for determining obviousness and anticipation. Such
`testimony may be helpful in evaluating, for example, the ‘prior art as viewed
`with the knowledge of one of skill in the art at the time of invention.’
`Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1297 (Fed. Cir.
`2002).” CTPG 36. Thus, to the extent that Dr. Condon’s testimony and
`Patent Owner’s reliance thereon ventures into areas the witness has
`conceded he either does not understand or has inadequately analyzed, we are
`capable of distinguishing (and disregarding as entitled to little weight) such
`testimony and related argument from that relating to Dr. Condon’s technical
`expertise in, for example, anatomy, eye surgery, and his own reading of
`evidence. Similar to a district court in a bench trial, the Board, sitting as a
`non-jury tribunal with administrative expertise, is well positioned to
`determine and assign appropriate weight to evidence presented, including
`not relying on it or giving it no weight. See, e.g., Donnelly, 123 F.2d at 224.
`We conclude that the better course is to have a complete record of the
`evidence to facilitate public access as well as appellate review. Therefore,
`
`13
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`for this reason and for the reasons explained above, we deny Petitioner’s
`motion.
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion to Exclude is denied; and
`FURTHER ORDERED that Petitioner’s Motion to Exclude is denied.
`
`
`
`
`
`
`14
`
`

`

`IPR2020-01573, Patent 9,107,729; IPR2020-01711, Patent 9,358,155;
`IPR2021-00017, Patent 9,820,885; IPR2021-00065, Patent 10,123,905;
`IPR2021-00066, Patent 9,999,544
`
`
`For PETITIONER:
`
`Todd R. Tucker
`Kyle T. Deighan
`CALFEE, HALTER & GRISWOLD LLP
`ttucker@calfee.com
`kdeighan@calfee.com
`
`
`For PATENT OWNER:
`
`Lawrence M. Sung
`Mary Sylvia
`Teresa Summers
`WILEY REIN LLP
`lsung@wiley.law
`msylvia@wiley.law
`tsummers@wiley.law
`
`15
`
`

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