Petitioner Dexcom, Inc.
`IPR2022-00605 – U.S. Patent No. 10,945,649
`(Claims 1-28)
`Before JEFFREY N. FREDMAN, RYAN H. FLAX, and CYNTHIA M. HARDMAN,
`Administrative Patent Judges
`
`John Vandenberg & Derrick Toddy
`April 26, 2023
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`IPR2022-00605 – U.S. Patent No. 10,945,649
`(Claims 1-28)
`Before JEFFREY N. FREDMAN, RYAN H. FLAX, and CYNTHIA M. HARDMAN,
`Administrative Patent Judges
`
`John Vandenberg & Derrick Toddy
`April 26, 2023
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Topics
`
`Rotor Shape and Position
`I.
`II. Compression Spring Configuration
`III. Ground 2 Motivation to Combine
`IV. Patent Owner’s Objections to Petitioner’s
`Reply Arguments and Evidence
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`[Case No. IPR2022-00605]
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`2
`
`
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`Rotor Shape and Position
`
`* * *
`
`[Ex. 1001, claims 1 (selected portions), 7, 11, and 18 (selected portion)]
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`[Case No. IPR2022-00605]
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`3
`
`
`
`1300 Embodiment
`
`Ex. 1001, Figure 45
`[Ex. 1001, FIG. 45]
`
`[POR at 18, citing Ex. 1001, FIG. 45 (annotated)]
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`[Case No. IPR2022-00605]
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`4
`
`
`
`Rotor Shape
`
`[PO Sur-Reply at 16]
`
`[PO Sur-Reply at 19]
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`[Case No. IPR2022-00605]
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`5
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`
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`Rotor Shape
`
`[Institution Decision at 13]
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`[Case No. IPR2022-00605]
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`6
`
`
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`Rotor Position
`
`[Ex. 1001, FIG. 44, shown in
`Pet. at 41, cited in Pet. at 9, 40]
`
`[Pet. at 40, showing Ex. 1001, FIG. 38 (annotated)]
`
`[Ex. 1001, FIG. 41, cited in Pet. at 9]
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`[Case No. IPR2022-00605]
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`7
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`
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`Rotor Position
`
`[PO Sur-Reply at 14]
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`[Case No. IPR2022-00605]
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`8
`
`
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`“Compression spring configured to …”
`
`* * *
`
`[Ex. 1001, claim 1 (selected portions)]
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`[Case No. IPR2022-00605]
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`9
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`
`
`“Compression spring configured to …”
`
`[PO Sur-Reply at 2]
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`[Case No. IPR2022-00605]
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`10
`
`
`
`POSITA
`
`[Ex. 1001 at col. 22:29-36, cited in Pet. at 11, 16]
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`[Case No. IPR2022-00605]
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`11
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`
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`Ground 2: Claims 7, 11, 18-28
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`[Case No. IPR2022-00605] 12
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`
`
`Motivation to Combine Yodfat’s Teachings
`
`[Pet. at 90]
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`[Pet. at 90-91]
`[Case No. IPR2022-00605]
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`13
`
`
`
`Motivation to Combine Yodfat’s Teachings
`
`[Institution Decision at 38]
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`[Case No. IPR2022-00605]
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`14
`
`
`
`Motivation to Combine Yodfat’s Teachings
`
`* * *
`
`[Institution Decision at 40, citing POPR at 62, Ex. 2001, First Cima Dec., ¶¶ 125-26]
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`[Pet. at 88, showing Ex. 1008, Yodfat, FIG. 16 (annotated)]
`15
`
`[Case No. IPR2022-00605]
`
`
`
`Yodfat - “rotor … within the recess”
`
`A.
`Q.
`
`A.
`
`Q.
`A.
`
`Q.
`A.
`
`Q.
`
`A.
`
`“It comprises a cylindrically symmetric portion.”
`“Sorry, just to be clear, so that flywheel, you would consider that to be a
`rotor?”
`“Yeah, at least it comprises one. In other words, it includes a cylindrically
`symmetric portion.”
`“There could be more to it?”
`“There could be more to it.”
`
`[Ex. 1029, Cima Depo. Tr., 78:2-10, cited in Pet. Reply at 22]
`
`“What would you understand the rotor to be in Yodfat?”
`“I would say those parts that had cylindrical symmetry could be considered
`a rotor.”
`“And we're going to get into Yodfat in more detail later, but those two parts you
`mentioned, the ratchet crank and the flywheel, those two parts both have
`cylindrical symmetry, as you understand it?”
`“They comprise cylindrical symmetry.”
`[Ex. 1029, Cima Depo. Tr., 94:11-20, cited in Ex. 1028, Fletcher Supp., ¶ 194]
`[Case No. IPR2022-00605]
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`16
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`
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`Ground 1: Claim Elements Disclosed
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`[Case No. IPR2022-00605] 17
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`
`
`Ground 1: Claims 1-6, 8-10, 12-17
`
`* * *
`
`[Ex. 1001, claim 1 (selected portions)]
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`[Case No. IPR2022-00605]
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`18
`
`
`
`“Rotor”
`
`Gravesen, FIG. 9 (annotated)
`[Pet. at 20, showing Ex. 1004, Gravesen, FIG. 1 (annotated)]
`[Pet. at 42, showing Ex. 1004, Gravesen, FIG. 9 (annotated)]
`[Case No. IPR2022-00605]
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`19
`
`
`
`“Torsion spring received within the rotor…”
`
`[Pet. at 41, showing Ex. 1004, Gravesen, FIG. 12 (annotated); see also id. at 46, 47, 69, 70]
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`20
`
`
`
`“Torsion spring received within the rotor…”
`A.
`“The person skilled in the art would see that and know that there
`has to be two detents to hold the spring onto the lever.”
`[Ex. 1029, Cima Depo Tr. 121:15-17, cited in Pet. Reply at 8-9]
`
`“So those would be part of the lever, those snaps?”
`Q.
`A. “Those would be part of the lever, right.”
`[Ex. 1029, Cima Depo. Tr. 121: 23-25, cited in Ex. 1028, Fletcher Supp., ¶ 96]
`
`A.
`
`A.
`
`“[…] So normally those are two little pieces of plastic that, you know,
`like the wire goes in and they snap, they’re forced apart and then
`they snap closed”
`[Ex. 1029, Cima Depo. Tr. 121:18-21, cited in Pet. Reply at 8 and Ex. 1028, Fletcher Supp., ¶ 96]
`
`“I guess a better way, it’s captured by the detents. You’ve seen
`these on plastic parts. They stick out a little bit and then you can
`push a wire into them and they snap close.”
`[Ex. 1029, Cima Depo. Tr. 126:1-5, cited in Ex. 1028, Fletcher Supp., ¶ 98]
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`[Case No. IPR2022-00605]
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`21
`
`
`
`Ground 1: Claims 7, 11, 18-28
`
`[Ex. 1001, claims 7, 11, and 18 (selected portion)]
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`[Case No. IPR2022-00605]
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`22
`
`
`
`“recess”; “comprises a cylindrical shape”
`
`[Pet. at 51, showing Ex. 1004, Gravesen,
`FIG. 9 (annotated); see also id. at 21, 58]
`
`Gravesen’s FIG. 9 (annotated to show Gravesen’s
`suggested incorporation of elements from FIGS. 1-3)
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`[Case No. IPR2022-00605]
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`23
`
`
`
`Ground 1: Motivation and Reasonable
`Expectation of Success
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`[Case No. IPR2022-00605] 24
`
`
`
`Gravesen Combination
`
`[Ex. 1004, Gravesen ¶ 50, cited in Pet. at 48, 58]
`
`[Ex. 1004, Gravesen, FIG. 9]
`
`[Ex. 1004, Gravesen, ¶ 67, cited in Pet. at 20, 21; see also Pet. at 27, 31, 48, 51, 63, 75]
`25
`[Case No. IPR2022-00605]
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`
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`Gravesen Combination
`
`[Ex. 1004, Gravesen, FIG. 1]
`
`[Ex. 1004, Gravesen, ¶ 9, cited in Pet. at 3, 15, 21, 24]
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`[Case No. IPR2022-00605]
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`26
`
`
`
`Gravesen and Brister Combination
`
`[Ex. 1005, Brister, ¶ 251, cited in Pet. at 4, 15, 23, 24, 30]
`[Ex. 1005, Brister, FIGS. 7A-7D, cited in Pet. at 23, 29, 34, 56]
`[Case No. IPR2022-00605]
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`27
`
`
`
`Patent Owner’s Objections to Petitioner’s
`Reply Arguments and Evidence
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`[Case No. IPR2022-00605] 28
`
`
`
`Petitioner’s Reply Arguments and Evidence
`
`(Numbers below correspond to Patent Owner’s List of Allegedly Improper Reply Arguments and Evidence (“PO List”))
`A. Additional examples demonstrating POSITA’s understanding
`of “rotor” (PO List no. 2)
`B. POSITA’s understanding of Gravesen’s suggested combined
`embodiment (PO List nos. 3, 10)
`C. POSITA’s reasonable expectation of success in implementing
`Gravesen/Brister combination (PO List nos. 5-8)
`D. Gravesen’s other embodiments (PO List nos. 1, 4)
`E. Yodfat teaches the rotor limitations (PO List nos. 4, 9)
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`[Case No. IPR2022-00605]
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`29
`
`
`
`Additional Examples Demonstrating POSITA’s
`Understanding of “rotor” (PO List no. 2)
`
`[Ex. 1028, Fletcher Supp. Dec., ¶¶ 81, 83, showing Ex. 1033,
`Fuhring, FIG. 1 (annotated), Ex. 1031, Kocher, FIG. 2 (annotated);
`see generally id., ¶¶ 67-85, cited in Pet. Reply at 6]
`
`[POR at 17]
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`[Case No. IPR2022-00605]
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`30
`
`
`
`POSITA’s Understanding of Gravesen’s Suggested Combined
`Embodiment (spring “received within the rotor”) (PO List no. 3)
`
`[Pet. Reply at 8, quoting POR at 61]
`
`[Ex. 1028, Fletcher Supp. Dec., ¶ 96, quoting Ex. 1029, Cima Depo Tr., 121:15-25]
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`[Pet. at 43, showing
`Ex. 1004, Gravesen,
`FIG. 9 (annotated);
`see generally id.
`at 18-22, 42-44]
`
`[Case No. IPR2022-00605]
`
`31
`
`
`
`POSITA’s Understanding of Gravesen’s Suggested Combined
`Embodiment (base wall “blocks”) (PO List no. 10)
`
`[Ex. 1028, Fletcher Supp., ¶ 22]
`
`[POR at 51, showing
`Ex. 1004, Gravesen, FIG. 9
`(annotated to show
`Gravesen’s suggested
`incorporation of
`elements from FIGS. 1-3)
`from Pet. at 51
`(re-annotated by PO)]
`
`Pet. 51 (annotated, Petitioner’s text
`boxes and highlighting removed)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`[POR at 48, showing Ex. 1004,
`Gravesen, FIGS. 1, 3 (annotated),
`citing Ex. 2024, Second Cima
`Dec., ¶ 139]
`
`[Case No. IPR2022-00605]
`
`32
`
`
`
`POSITA’s Reasonable Likelihood of Success in Implementing
`Gravesen/Brister Combination (PO List nos. 5-8)
`
`[Pet. Reply at 13, quoting POR at 28]
`
`[Pet. at 56, showing Ex. 1005, Brister, FIGS. 7A-7D (annotated)]
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`[Case No. IPR2022-00605]
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`33
`
`
`
`POSITA’s Reasonable Expectation of Success in Implementing
`Gravesen/Brister Combination (PO List nos. 5-8) (continued)
`
`[Pet. at 55, quoting Ex. 1005, Brister, ¶ 0254]
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`[Case No. IPR2022-00605] 34
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`
`
`POSITA’s Reasonable Expectation of Success in Implementing
`Gravesen/Brister Combination (PO List nos. 5-8) (continued)
`
`[Pet. at 56, quoting Ex. 1005, Brister, ¶ 0309, and showing Brister, FIGS. 7A-7D (annotated)]
`
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`[Case No. IPR2022-00605]
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`35
`
`
`
`POSITA’s Reasonable Expectation of Success in Implementing
`Gravesen/Brister Combination (PO List nos. 5-8) (continued)
`
`[POPR at 44, quoting Pet. at 55; similarly, see POR at 27]
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`[Case No. IPR2022-00605]
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`36
`
`
`
`POSITA’s Reasonable Likelihood of Success in Implementing
`Gravesen/Brister Combination (PO List nos. 5-8) (continued)
`
`[Ex. 1028, Fletcher Supp., ¶¶ 152-53, citing
`POR at 23, cited in Pet. Reply at 16]
`
`[Ex. 1003, Fletcher Dec., ¶ 114, quoting Ex. 1004, Gravesen, ¶ 0011,
`cited in Pet. at 51]
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`[Case No. IPR2022-00605]
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`37
`
`
`
`POSITA’s Reasonable Expectation of Success in Implementing
`Gravesen/Brister Combination (PO List nos. 5-8) (continued)
`
`[POR at 26]
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`[Case No. IPR2022-00605]
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`38
`
`
`
`POSITA’s Reasonable Expectation of Success in Implementing
`Gravesen/Brister Combination (PO List nos. 5-8) (continued)
`
`[Pet. Reply at 15-16, citing Ex. 1028, Fletcher Supp., ¶¶ 152-62]
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`[Case No. IPR2022-00605]
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`39
`
`
`
`POSITA’s Reasonable Expectation of Success in Implementing
`Gravesen/Brister Combination (PO List nos. 5-8) (continued)
`
`[Ex. 1028, Fletcher Supp., ¶ 159]
`
`[Ex. 1028, Fletcher Supp., ¶ 159, showing illustration from
`Ex. 1040, “Video Animation” of Gravesen/Brister combination]
`[Case No. IPR2022-00605]
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`40
`
`
`
`POSITA’s Reasonable Likelihood of Success in Implementing
`Gravesen/Brister Combination (PO List nos. 5-8) (continued)
`
`[Pet. Reply at 15, quoting Ex. 1005,
`Brister, ¶¶ 0196, 0254]
`
`[Ex. 1003, Fletcher Dec., ¶ 180, quoting Ex. 1005,
`Brister, ¶ 0196, cited in Pet. at 79]
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`[Case No. IPR2022-00605]
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`41
`
`
`
`POSITA’s Reasonable Expectation of Success in Implementing
`Gravesen/Brister Combination (PO List nos. 5-8) (continued)
`
`[Ex. 2024, Second Cima Dec., ¶ 78, citing Ex. 2028, “Video Animation” of
`Ex. 1005, Brister’s FIGS. 7A and 7B, cited in POR at 24]
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`[Case No. IPR2022-00605]
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`42
`
`
`
`Citation to Gravesen’s Other Embodiments (PO List nos. 1, 4)
`
`* * *
`
`[Pet. Reply at 2, 9-10]
`
`Id., Fig. 6 (annotated); Cima Decl. ¶ 129.
`
`[POR at 44, showing Ex. 1004, Gravesen, FIG. 6
`(annotated); see generally POR at 42-46]
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`[Case No. IPR2022-00605]
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`43
`
`
`
`Yodfat Teaches the Rotor Limitations (PO List nos. 4, 9)
`
`[Pet. Reply at 23, citing Pet. at 87-88, which
`cites Ex. 1008, Yodfat, FIG. 16, ¶¶ 0121-24]
`
`[POR at 73-74, citing Ex. 1008, Yodfat, FIGS. 16, 21d, ¶ 0121]
`
`[Pet. Reply at 24, showing Ex. 1008, Yodfat, FIG. 16
`(annotated); see generally id. at 22-24]
`
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`[Case No. IPR2022-00605]
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`44
`
`
`
`Yodfat Teaches the Rotor Limitations (PO List nos. 4, 9)
`
`[Pet. Reply at 24, citing Ex. 1029, Cima Depo. Tr.,
`93:17-24, 100:24-101:1, 105:4-10]
`
`[POR at 71, quoting Pet. at 92]
`
`[Pet. at 95, showing Ex. 1008, Yodfat, FIG. 16 (annotated),
`citing Ex. 1003, Fletcher Dec., ¶¶ 241-42]
`
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`[Case No. IPR2022-00605]
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`45
`
`
`
`Dr. Cima’s Testimony on Retaining a Sensor Under the Skin
`
`Q.
`
`A.
`
`“Would a POSITA understand that friction could similarly be used to retain a
`sensor under the skin?”
`“So when we talk about friction, we're talking about including not just friction in
`motion, but adhesion, things like that, suction. When you stick something into
`the skin, it's sort of elastic and it compresses at least the small body, and so
`to withdraw something like that, one needs to overcome that. And so
`depending on the nature of the materials, I guess their size, that sort of thing,
`and how you're protecting the device, any cannula or presumably sensor
`exterior to the body from other external forces, you potentially could use just
`that force to keep the cannula or presumably the sensor in place.”
`[Ex. 1029, Cima Depo. Tr., 184:14-185:6]
`
`Q.
`
`A.
`
`“And a POSITA would understand that you could use, for example, surface
`topography of the sensor to retain it, correct?”
`“Absolutely.”
`
`[Ex. 1029, Cima Depo. Tr., 185:7-11 (objection omitted), cited in Reply at 15]
`
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`[Case No. IPR2022-00605]
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`46
`
`
`
`Dr. Fletcher’s Testimony on Position of Yodfat’s “Rotor”
`
`Q.
`
`A.
`
`“So you would agree with me that the ratchet crank is not within what you
`have identified as the recess in the figure on page 105, right?”
`“It is my understanding that ratchet crank 914, that particular component of
`what I believe is the full rotor, is not within the recess that I identified in that
`annotated figure 16 on page 105 of my declaration.”
`[Ex. 2051, Fletcher Second Depo. Tr., 27:24-28:11 (objection omitted)]
`
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`[Case No. IPR2022-00605]
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`47
`
`
`
`Dr. Fletcher’s Testimony on Connecting Gravesen’s Driving Spring
`
`Q.
`
`A.
`
`“You agree with me that there are lots of different ways that the driving
`spring 215 can be connected to lever 211, right?”
`“Yes. ... Well, as I stated in paragraph – state in paragraph 93, positioning the
`driving spring within the lever would be one of a finite number of solutions
`for coupling or, as Gravesen describes, whatever the word was that's on
`paragraph 68. Oh, it attaches it so that it acts upon the lever 211. So, yeah, I
`guess that would be my statement, in answer to your question.”
`
`[Ex. 2031, Fletcher First Depo. Tr., 284:16-285:8 (objection and counsel interjection omitted)]
`
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`[Case No. IPR2022-00605]
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`48
`
`
`
`Dr. Fletcher’s Testimony on Connecting Gravesen’s Driving Spring
`
`Q.
`
`A.
`
`“As you have suggested in your second declaration, the detents would be on
`the outside of Gravesen's lever, correct?”
`“As I say in paragraph 98, if I am quoting Cima's deposition transcript correctly, he
`states they stick out a little bit and then you can push a wire into them and
`they snap close.” [sic]
`[Ex. 2051, Fletcher Second Depo. Tr., 222:3-13 (objection and counsel interjection omitted)]
`
`Q.
`
`A.
`
`“So you have no independent understanding of whether detents are on the
`outside of a lever, other than what Dr. Cima said?”
`“No, I could imagine a very similar structure but it's inlaid in -- into the
`surface of the lever.”
`
`[Ex. 2051, Fletcher Second Depo. Tr., 222:15-21]
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`[Case No. IPR2022-00605]
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`49
`
`
`
`IPR2022-00605
`Patent 10,945,649
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that on April 24, 2023, a complete copy of
`
`PETITIONER’S DEMONSTRATIVES was served on counsel for Abbott
`
`Diabetes Care Inc. via electronic mail as follows:
`
`Service email: abbottdexcomIPR@kirkland.com
`
`W. Todd Baker – Lead Counsel
`Gregg F. LoCascio – Back-up Counsel
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`
`Amanda Hollis – First Back-up Counsel
`Gregory B. Sanford – Back-up Counsel
`Sadaf Misbah – Back-up Counsel
`Tareq M. Alosh – Back-up Counsel
`KIRKLAND & ELLIS LLP
`300 N. LaSalle
`Chicago, IL 60654
`
`
`
`
`By: /Derrick W. Toddy/
`Derrick W. Toddy (Registration No. 74,591)
`derrick.toddy@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Page 1
`
`
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