Case IPR2023-00042
`US Patent No. 11,004,271
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Medivis, Inc.
`Petitioner
`
`v.
`
`Novarad Corp.
`Patent Owner
`
`Case IPR2023-00042
`US Patent No. 11,004,271
`
`SUPPLEMENTAL DECLARATION OF MAHESH S. MULUMUDI, M.D.
`
`In Support of Patent Owner Pursuant to 37 C.F.R. § 42.64(b)(2)
`
`
`
`1
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`Page 1 of 5
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`Ex. 2009
`Medivis v. Novarad
`IPR2023-00042
`
`
`US Patent No. 11,004,271
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Medivis, Inc.
`Petitioner
`
`v.
`
`Novarad Corp.
`Patent Owner
`
`Case IPR2023-00042
`US Patent No. 11,004,271
`
`SUPPLEMENTAL DECLARATION OF MAHESH S. MULUMUDI, M.D.
`
`In Support of Patent Owner Pursuant to 37 C.F.R. § 42.64(b)(2)
`
`
`
`1
`
`Page 1 of 5
`
`Ex. 2009
`Medivis v. Novarad
`IPR2023-00042
`
`
`
`Case IPR2023-00042
`US Patent No. 11,004,271
`
`1.
`
`I have read Petitioner’s Objections to Exhibits Filed with Patent
`
`Owner Response (Paper 13) (“Petitioner’s Objections”) and provide additional
`
`comments with respect to this action.
`
`EXPERTISE IN THE RELEVANT FIELD
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`2.
`
`I agree with Petitioner that “systems and methods for using
`
`augmented reality during medical procedures” is the relevant field.
`
`RELEVANT TIME PERIOD
`
`3.
`
`I also agree with Petitioner that the relevant time period for the ’271
`
`Patent is on or before March 30, 2017.
`
`PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
`
`4.
`
`Petitioner asserts “the hypothetical person of ordinary skill in the art
`
`at the time … (POSA) [aka POSITA] would be ‘a person with a bachelor’s degree
`
`in computer science, electrical engineering, or a related field with several years of
`
`experience in the design, development, and study of augmented reality devices and
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`either (a) familiar with conventional medical imaging data and visualization of data
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`for medical procedures or (b) working with a team including someone with such
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`familiarity.’” Petition at 10 (quoting Kazanzides Decl., Ex. 1012, ¶¶ 25).
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`5.
`
`I disagree that a POSITA necessarily requires a degree in computer
`
`science or electrical engineering. As the Petitioner acknowledges, the ’271 Patent
`
`does not disclose new hardware, but new software. See Petition at 4-5. Thus, first
`2
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`Page 2 of 5
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`Ex. 2009
`Medivis v. Novarad
`IPR2023-00042
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`
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`Case IPR2023-00042
`US Patent No. 11,004,271
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`and foremost, a POSITA would be familiar with conventional medical imaging
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`data and visualization of that data for use during a medical procedure. Secondly, a
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`POSITA would be familiar with software engineering, user interface design, user
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`interaction design, human-computer interaction for the implementation of AR
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`and/or VR environments.
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`6.
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`I am very familiar with conventional medical imaging data and
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`visualization of that data for use during medical procedures. As stated in my
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`declaration, I have over 20 years of experience treating peripheral vascular and
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`coronary artery diseases using 2D and 3D medical imaging, including “3D
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`Ultrasound, gated Computerized Tomography (CT), and Magnetic Resonance
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`Imaging (MRI).” See Ex. 2002 at ¶ 131; see also Ex. 2003 at 1. I am “[p]roficient
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`in medical image processing techniques and manipulation techniques to determine
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`the appropriate sizing of values and other devices, ensuring precise anatomical
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`placement.” Ex. 2003 at 1. I have “[e]xtensive expertise in utilizing [2D and 3D]
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`ultrasound guidance for safe vascular access, facilitating entry into arteries and
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`veins, and navigating medical equipment securely to the desired implantation site
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`or area of interest.” Id.
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`7.
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`I also have several years of experience in the design and development
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`1 Paragraph 29 of my declaration should read “from 2000 through today,” as it is
`written in paragraph 13 of my declaration.
`3
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`Page 3 of 5
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`Ex. 2009
`Medivis v. Novarad
`IPR2023-00042
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`
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`Case IPR2023-00042
`US Patent No. 11,004,271
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`of virtual and augmented reality environments. I created a VR enhanced
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`telemedicine solution designed to enhance remote healthcare delivery by providing
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`an immersive and realistic experience. I also recently submitted a U.S. Patent
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`Application for an innovative VR application that leverages biofeedback to offer
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`mindfulness exercises aimed at reducing stress and enhancing focus.
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`8.
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`Finally, I am a named inventor of several U.S. Patents. See Ex. 2003
`
`at 7-12. Two patents relate to a “guidewire insertion tool configured to measure a
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`length of an anatomic region” in order to “accurately position surgical devices in
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`the body.” U.S. Patent Nos. 11,311,206, Abstract and 1:21-24. See also U. S. Pat.
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`No. 10,271,763. Six patents are related to an “acoustic collection system [e.g.,
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`stethoscope] for handheld electronic devices [e.g., smartphones and tablets]” and a
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`“mounting system” for such acoustic collection systems. U.S. Pat. No. 9,602,917,
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`Abstract; U.S. Patent No. 10,898,161, Abstract; see also U.S. Pat. Nos.
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`10,271,816; 9,855,019; 9,706,975; and 9,414,155.
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`RULE 26 REQUIREMENTS
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`9.
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`As stated in my CV, I have served as an expert witness on three other
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`occasions in 2001, 2007, and most recently in 2020. The 2020 case2 occurred in
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`2 Cynthia Smith, as personal representative of Robert Emery Smith v. Vitaly
`Piluiko, Case No. 2012-ca-0365, Circuit Court 4th Judicial District, Clay County,
`Florida.
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`4
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`Page 4 of 5
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`Ex. 2009
`Medivis v. Novarad
`IPR2023-00042
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`
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`Case IPR2023-00042
`US Patent No. 11,004,271
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`Florida and concerned a transcatheter valve replacement that resulted in an annular
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`rupture.
`
`10.
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`In my CV, I also provided a current list of all my publications. Ex.
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`2003 at 13-14.
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under § 1001 of Title 18 of the United States Code.
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`Date: 8/8/2023
`
`Mahesh Mulumudi, M.D.
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`
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`5
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`Page 5 of 5
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`Ex. 2009
`Medivis v. Novarad
`IPR2023-00042
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