throbber
Filed on Behalf of Novarad Corp.
`
`By: Joseph Harmer
`Jed Hansen
`Thorpe North & Western, LLP
`175 S. Main St., Ste. 900
`Salt Lake City, UT 84111
`Tel: (801) 566-6633
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`MEDIVIS, INC.,
`
`Petitioner,
`
`
`v.
`
`
`NOVARAD CORP.,
`
`Patent Owner.
`_____________
`
`Patent 11,004,271 B2
`_____________
`
`Case IPR 2023-00042
`
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`
`
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 3
`A. The Level of Skill in the Art is a Factual Determination. ................................ 3
`B. Standard for the Admissibility of Expert Testimony in an IPR. ...................... 4
`C. Dr. Mulumudi is Qualified to Offer Opinions Regarding the ’271 Patent and
`Should Not Be Excluded. ................................................................................ 5
`1. Dr. Mulumudi is Qualified as an Expert. ..................................................... 5
`2. Medivis’ Attempts to Undermine Dr. Mulumudi’s Testimony Lack Merit.
`
` ...................................................................................................................... 7
`D. Dr. Rosenberg is Qualified to Offer Opinions Regarding the ’271 Patent
`Should Not Be Excluded. ..............................................................................10
`1. Dr. Rosenberg is Qualified as an Expert. ..................................................11
`2. Medivis’ Attempts to Undermine Dr. Rosenberg Lack Merit. ..................11
`III. CONCLUSION ..............................................................................................15
`
`
`
`
`
`
`
`ii
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`

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`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Al-Site Corp. v. VSI Int’l Inc.,
`174 F.3d 1308 (Fed. Cir. 1999) .............................................................................. 3
`Eisai Inc. v. Crystal Pharm. (Suzhou) Co., Ltd.,
` PGR2021-00047 (P.T.A.B. Aug. 8, 2022) ............................................................ 4
`Hanwha Solutions Corp. et al v. Rec Solar PTE. LTD.,
`IPR2021-00988 (P.T.A.B. Dec. 9, 2022) ............................................................... 3
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ................................................................................ 3
`Intel Corp. v. Alacritech, Inc.,
`IPR2017-01406(P.T.A.B. Nov. 26, 2018) .............................................................. 4
`Les Ateliers Beau-Roc Inc. v. Air Power Sys. Co.,
`IPR2020-01702 (P.T.A.B. Apr. 18, 2022) .......................................................5, 11
`Metrasens, Inc. et al. v. Keith A. Kopp,
`IPR2022-01224 (P.T.A.B. Dec. 21, 2023) ............................................................. 4
`Okajima v. Bourdeau,
`261 F.3d 1350 (Fed. Cir. 2011) .............................................................................. 3
`Primera Tech, Inc. v. Automatic Mfg. Sys., Inc.,
`IPR2013-00196 (P.T.A.B. Jul. 17, 2014) ............................................................... 4
`SEB S.A. v. Montgomery Ward & Co.,
`594 F.3d 1360 (Fed. Cir. 2010) .............................................................................. 4
`Statutes
`37 C.F.R. § 42.64 ....................................................................................................... 2
`
`
`
`
`
`iii
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`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`
`Exhibit No.
`Ex. 2002
`Ex. 2003
`Ex. 2004
`Ex. 2005
`Ex. 2006
`Ex. 2007
`Ex. 2008
`Ex. 2009
`
`EXHIBIT LIST
`Exhibit Description
`Declaration of Mahesh S. Mulumudi, M.D. (“Mulumudi”)
`Dr. Mulumudi C.V.
`Declaration of Craig Rosenberg, Ph.D. (“Rosenberg”)
`Dr. Rosenberg C.V.
`Dr. Kazanzides Deposition (“Kazanzides Depo”)
`Dr. Rosenberg Supplemental C.V.
`Dr. Rosenberg Supplemental Declaration
`Dr. Mulumudi Supplemental Declaration
`
`
`
`iv
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`I.
`
`INTRODUCTION
`
`Medivis has manufactured new expert requirements and reargues the merits
`
`of its Petition under the ruse of a Motion to Exclude (“Motion”) [Paper 25] expert
`
`testimony. Medivis’ Motion should be denied.
`
`Medivis defines the person of ordinary skill in the art (POSITA) as a person
`
`having:
`
`
`
`(1) a bachelor’s degree in computer science, electrical engineering, or a
`related field with
`
`(2) several years of experience in the design, development, and study of
`augmented reality devices; and
`
`(3) either (a) familiar[ity] with conventional medical imaging data and
`visualization of data for medical procedures or (b) working with a team
`including someone with such familiarity.
`
`
`
`Mulumudi and Rosenberg meet all three of these requirements. In the case
`
`at hand, the POSITA includes more than one discipline, i.e., augmented reality and
`
`visualization of medical imaging data for medical procedures. While both
`
`Rosenberg and Mulumudi are qualified POSITAs under Medivis’ definition,
`
`Rosenberg provides the Board with a specialized understanding of augmented
`
`reality. And Mulumudi provides the Board with the perspective of an actual
`
`medical doctor who uses medical imaging data and visualization of that data for
`
`
`
`1
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`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`medical procedures. Their testimony will help the Board to understand the
`
`evidence and to determine the facts at issue.
`
`Detailed more fully below, Rosenberg provides the Board with the valuable
`
`understanding of an augmented reality engineer with over 30 years of experience.
`
`See Ex. 2004, Rosenberg Dec., ¶¶ 13, 16. And Mulumudi provides the Board with
`
`the critical understanding of an actual medical doctor with over two decades of
`
`“experience in imaging, virtual reality, augmented reality with biofeedback, and
`
`treating peripheral vascular and coronary artery diseases from 2000 through
`
`today.” Ex. 2002, Mulumudi Dec., ¶ 13. Indeed, Mulumudi is the only expert
`
`with “[e]xtensive expertise in utilizing [2D and 3D] ultrasound guidance for safe
`
`vascular access, facilitating entry into arteries and veins, and navigating medical
`
`equipment securely to the desired implantation site or area of interest.” Ex. 2003,
`
`Mulumudi CV, 1; Ex. 2009, Mulumudi Supp. Dec., 3.
`
`Medivis ignores these facts in an improper attempt to reargue the merits of
`
`the case. A motion to exclude should be limited to the admissibility of testimony,
`
`not its weight. See 37 C.F.R. § 42.64; USPTO, Consolidated Trial Practice Guide
`
`(“TPG”), 79, (Nov. 2019) (“A motion to exclude must explain why the evidence is
`
`not admissible (e.g., relevance or hearsay) but may not be used to challenge the
`
`sufficiency of the evidence or to provide a particular fact.”).
`
`
`
`
`
`2
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`II. ARGUMENT
`
`A. The Level of Skill in the Art is a Factual Determination.
`
`
`
`The level of ordinary skill in the art at the time of the invention is a factual
`
`determination….” Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir.
`
`1999) (citations omitted). The Board is the finder of fact and has not yet
`
`determined the level of skill in the art nor is it bound by Medivis’ proposed
`
`definition. See Hanwha Solutions Corp. et al v. Rec Solar PTE. LTD., IPR2021-
`
`00988, Paper 40 at 11-12 (P.T.A.B. Dec. 9, 2022) (deciding that Petitioner’s
`
`proposal is too broad and Patent Owner’s proposal is too narrow and adopting its
`
`own definition).
`
`The level of ordinary skill in the art is a “lens” through which the Board
`
`views the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2011). The POSITA is a hypothetical person presumed to
`
`have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d
`
`1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art,
`
`the Board may consider factors, including the “type of problems encountered in the
`
`art; prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active workers in
`
`the field. Id. The “lens” of the level of ordinary skill in the art does not change a
`
`prior art’s disclosure, though it may change one’s understanding of what is
`
`
`
`3
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`Case IPR 2023-00042
`Patent 11,004,271 B2
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`disclosed.” Metrasens, Inc. et al. v. Keith A. Kopp, IPR2022-01224, Paper 21 at 8
`
`(P.T.A.B. Dec. 21, 2023).
`
`B.
`
`Standard for the Admissibility of Expert Testimony in an IPR.
`
`To qualify as an expert under FRE 702, an expert must have the “scientific,
`
`
`
`technical, or other specialized knowledge [that] will help the trier of fact to
`
`understand the evidence or to determine a fact at issue.” “There is [] no
`
`requirement of a perfect match between the expert’s experience and the relevant
`
`field.” TPG, 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373
`
`(Fed. Cir. 2010)). “[A]ny perceived mismatch between the qualifications of
`
`[Patent Owner’s] experts and the level of ordinary skill is not a basis to discount
`
`their testimony” so long as the testimony “is helpful to the Board … and the ‘the
`
`expert’s experience provides sufficient qualification in the pertinent art.’” Eisai
`
`Inc. v. Crystal Pharm. (Suzhou) Co., Ltd., PGR2021-00047, Paper 58 at 10
`
`(P.T.A.B. Aug. 8, 2022) (quoting TPG, 34).
`
`
`
`Moreover, challenges to an expert’s qualifications go to the weight of the
`
`evidence, not its admissibility. See Intel Corp. v. Alacritech, Inc., IPR2017-01406,
`
`Paper 83 at 42-43 (P.T.A.B. Nov. 26, 2018); Primera Tech, Inc. v. Automatic Mfg.
`
`Sys., Inc., IPR2013-00196, Paper 50 at 30 (P.T.A.B. Jul. 17, 2014). “The Board
`
`has broad discretion to assign weight to be accorded expert testimony.” TPG, 35.
`
`“[T]he wholesale exclusion of witness’s declarations is rarely called for in a
`
`
`
`4
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`Case IPR 2023-00042
`Patent 11,004,271 B2
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`proceeding before the Board” because “the policy considerations for excluding
`
`expert testimony … are less compelling in bench proceedings such as inter partes
`
`reviews than in jury trials.” Les Ateliers Beau-Roc Inc. v. Air Power Sys. Co.,
`
`IPR2020-01702, Paper 32 at 60 (P.T.A.B. Apr. 18, 2022) (citation omitted).
`
`C. Dr. Mulumudi is Qualified to Offer Opinions Regarding the ’271
`Patent and Should Not Be Excluded.
`
`1.
`
`Dr. Mulumudi is Qualified as an Expert.
`
`
`
`There is no basis for excluding Mulumudi’s testimony because he has more
`
`than the requisite ordinary skill in the art and his testimony is undoubtedly helpful
`
`in deciding the disputed factual issues. Mulumudi is a medical doctor, a field that
`
`is unquestionably related to the ’271 Patent. Ex. 2002, Mulumudi Dec., ¶¶ 16-24.
`
`He is “very familiar with conventional medical imaging data and visualization of
`
`that data for use during medical procedures.” Ex. 2009, Mulumudi Supp. Dec., ¶ 6.
`
`He has “over 20 years of experience treating peripheral vascular and coronary
`
`artery diseases using 2D and 3D medical imaging, including ‘3D Ultrasound, gated
`
`Computerized Tomography (CT), and Magnetic Resonance Imaging (MRI).’” Id.,
`
`¶ 6. Mulumudi is “[p]roficient in medical image processing techniques and
`
`manipulation techniques to determine the appropriate sizing of values and other
`
`devices, ensuring precise anatomical placement.” Ex. 2003, Mulumudi CV, 1. He
`
`has “[e]xtensive expertise in utilizing [2D and 3D] ultrasound guidance for safe
`
`
`
`5
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`Case IPR 2023-00042
`Patent 11,004,271 B2
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`vascular access, facilitating entry into arteries and veins, and navigating medical
`
`equipment securely to the desired implantation site or area of interest.” Ex. 2003,
`
`1; Ex. 2009, Mulumudi Supp. Dec., ¶ 6.
`
`
`
`Mulumudi also has “several years of experience in the design and
`
`development of virtual and augmented reality environments.” Ex. 2009, ¶ 7.
`
`Mulumudi “created a VR enhanced telemedicine solution designed to enhance
`
`remote healthcare delivery by providing an immersive and realistic experience.”
`
`Ex. 2002, Mulumudi Dec., ¶ 23; Ex. 2009, ¶ 7. He also “recently submitted a U.S.
`
`Patent Application for an innovative VR application that leverages biofeedback to
`
`offer mindfulness exercises aimed at reducing stress and enhancing focus.”
`
`Ex. 2009, ¶ 7.
`
`
`
`Mulumudi is also “a named inventor of several U.S. Patents.” Id., ¶ 8. Two
`
`of Mulumudi’s patents relate to a “guidewire insertion tool configured to measure
`
`a length of an anatomic region” in order to “accurately position surgical devices in
`
`the body.” Id.; see U.S. Patent Nos. 11,311,306 and 10,271,763. Six of
`
`Mulumudi’s patents are related to an “acoustic collection system [e.g., stethoscope]
`
`for handheld electronic devices [e.g., smartphones and tablets]” and a “mounting
`
`system” for such acoustic collection systems. Id.; see U.S. Patent Nos. 10,271,816;
`
`9,855,019; 9,706,975; and 9,414,155.
`
`
`
`6
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`Case IPR 2023-00042
`Patent 11,004,271 B2
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`
`
`In his Declaration (Ex. 2002), Mulumudi explained, “I believe I am qualified
`
`to serve as a technical expert in this proceeding based on my educational and work
`
`experience, including my 20+ years of experience in imaging, virtual reality,
`
`augmented reality with biofeedback, and treating peripheral vascular and coronary
`
`artery diseases from 2000 through today.” Ex. 2002, ¶ 13. He also testified, “The
`
`combination of my education, research, training, and work experience in
`
`cardiovascular health and virtual reality technology in healthcare as it relates to
`
`improving the patient experience enables me to provide analysis and opinions on
`
`the subject matter of this litigation.” Id., ¶ 26.
`
`2. Medivis’ Attempts to Undermine Dr. Mulumudi’s
`Testimony Lack Merit.
`
`Medivis’ criticisms of Mulumudi lack merit. Motion, ¶¶ 10-12. Medivis
`
`
`
`
`argues that Mulumudi’s “medical degree is not the required degree in computer
`
`science, electrical engineering, or a related field.” Motion, 10. However,
`
`Mulumudi’s medical degree is in a field of study unquestionably related to the ’271
`
`Patent. Moreover, while Mulumudi is not a computer science or electrical
`
`engineering major, these undergraduate degrees would not alter his opinion.
`
`Mulumudi disagreed that “a POSITA necessarily requires a degree in computer
`
`science or electrical engineering.” Ex. 2009, Mulumudi Supp. Dec., ¶ 5.
`
`
`
`7
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`Case IPR 2023-00042
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`Mulumudi observed that “the ’271 Patent does not disclose new hardware, but new
`
`software” (id.), as Petitioner acknowledged. See Petition, 4-5.
`
`
`
`Medivis also argues that Mulumudi “relies on his own say-so.” Motion, 11.
`
`Medivis contends that Mulumudi “cited no support for [his] allegations about DVR
`
`or anything else.” Motion, 11. This argument lacks merit. Mulumudi provided an
`
`overview of various ways that medical imaging data is visualized, including: slice-
`
`by-slice viewing, multiplanar reconstruction (MPR), surface rendering, and direct
`
`volume rendering (DVR). Ex. 2002, Mulumudi Dec., ¶¶ 51-58. Mulumudi also
`
`explained why the ’271 Patent requires direct volume rendered 3D data. Id., ¶¶ 59-
`
`62. Mulumudi repeatedly cites to the ’271 Patent as support for his opinions [see,
`
`e.g., id., ¶ 59] which is explained more fully in Patent Owner’s Response and Sur-
`
`reply. See, e.g., Response, 11-14; Sur-reply, 9-10.
`
`
`
`Other than Medivis’ general allegations that Mulumudi’s opinions on DVR
`
`are unsupported, Medivis points to only one portion of one sentence in
`
`Mulumudi’s Declaration—his opinion that “‘virtual 3D shape’ is derived from
`
`direct volume rendering.” Id. (citing Ex. 2002, ¶ 78). However, Medivis’
`
`quotation of Mulumudi is incomplete. Mulumudi said:
`
`A POSITA would understand that a ‘virtual 3D shape’, in the context of the
`’271 Patent, is more than a 3D appearance of an object. The ‘virtual 3D
`shape’ is derived from direct volume rendering the detail of the object and
`may extend beyond the outer layer or [] any inner layer defining the course
`of anatomical structures confined within it. This definition is of importance
`
`
`
`8
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`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
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`
`when a surgeon or a proceduralist is operating on a patient’s anatomy
`allowing for precision and proper positioning of required surgical
`instruments in relation to surrounding structures.
`
`Ex. 2002, Mulumudi Dec., ¶ 78. Medivis’ provides no other evidence that
`
`Mulumudi’s opinions are unsupported. Moreover, it provides no evidence from
`
`its own expert to rebut any of Mulumudi’s testimony. Medivis’ failure in this
`
`regard speaks volumes. Unable to present a single sentence of rebuttal testimony
`
`from its own expert, it resorts to a strained reading of its POSITA definition in an
`
`effort to eliminate that testimony.
`
`
`
`Medivis also alleges that “Mulumudi admitted that he could identify DVR
`
`only by the words “direct volume rendering.” Motion, 12 (citing Ex. 1022,
`
`129:17-130:1). Medivis made this same argument in its Reply. Reply, 3-4.
`
`Medivis’ allegation here, as in its Reply, lacks candor. During Mulumudi’s
`
`deposition, Medivis’ counsel showed Mulumudi page 49 of Amira. The page from
`
`Amira contains text with no images. Counsel then asked Mulumudi, “Is there any
`
`way that you could tell whether the volume rendering referenced on page 49 of
`
`Amira is direct volume rendering without the words ‘direct’—the phrase ‘direct
`
`volume rendering’ being used?” To which, Mulumudi simply answered, “No.”
`
`See Ex. 1022, 129:17-130:1. Medivis references Ex. 1005 at, e.g., 6/18-7/19,
`
`37/49-39/51 in its Motion, but Medivis did not show Mulumudi any figures
`
`
`
`9
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`

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`Case IPR 2023-00042
`Patent 11,004,271 B2
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`from these pages during his deposition. It is misleading, at best, to suggest to
`
`the Board that Medivis did so.
`
`
`
`Lastly, Medivis manufactures new POSITA qualifications. Specifically,
`
`Medivis argues that unfamiliarity with 3D Slicer (Ex. 1010), 3D Visualization (Ex.
`
`1007) (a 3D Slicer presentation), and Amira (Ex. 1005) disqualifies Mulumudi as a
`
`POSITA. Motion, 1, 6, 10. Medivis presumes that every POSITA must be
`
`familiar with Exhibits 1005, 1007, 1010. But knowledge of any of the products
`
`allegedly shown in those exhibits is not a condition that Medivis ever claimed was
`
`required to be a POSITA. It cannot create them now.
`
`
`
`Irrespective, Mulumudi’s testimony is consistent with the evidence. During
`
`his deposition, Mulumudi explained that he was “not confident to say that these are
`
`widely used tools by [a] wide variety of medical personnel.” Ex. 2020, 147:15-19.
`
`3D Visualization states that “Slicer is a tool for research and is not FDA
`
`approved.” Ex. 1007, 8. And Amira states, “Amira ® is intended for research use
`
`only. It is not a medical device.” Ex. 1005, 4. This does not mean that Mulumudi
`
`“admitted that he is unqualified to discuss the prior art technology,” as Medivis
`
`contends. Motion, 7. Rather, it is probative of the fact that Medivis’ assertions of
`
`patent invalidity are uncorroborated by experts in the field and lack merit.
`
`D. Dr. Rosenberg is Qualified to Offer Opinions Regarding the ’271
`Patent Should Not Be Excluded.
`
`
`
`
`10
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`

`Case IPR 2023-00042
`Patent 11,004,271 B2
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`
`1.
`
`Dr. Rosenberg is Qualified as an Expert.
`
`Medivis had the opportunity—but declined—to depose Dr. Rosenberg. See
`
`Les Ateliers Beau-Roc, IPR2020-01702, Paper 32 at 60 (“any shortcomings” in
`
`“the qualifications of an expert witness” are supposed to be explored “through
`
`cross-examination”). Remarkably, Medivis now seeks to exclude the opinions for
`
`which it declined to cross-examine Dr. Rosenberg.
`
`There is also no basis for excluding Rosenberg’s testimony because he has
`
`more than the requisite ordinary skill in the art and his testimony is undoubtedly
`
`helpful to the Board. Rosenberg has a BS in Industrial Engineering, a MS in
`
`Human Factors, and a PhD in Human Factors. Ex. 2004, Rosenberg Dec., ¶ 16.
`
`Rosenberg has over 30 years of experience in “human factors, user interface
`
`design, user interaction design, human-computer interaction, and software
`
`engineering from 1988 through today.” Id., ¶ 13. “For 30 years, [Rosenberg has]
`
`worked in human factors, user interface design, software development, software
`
`architecture, systems engineering, and modeling and simulation across application
`
`areas, including aerospace, communications, entertainment, and healthcare.”
`
`Ex. 2004, ¶ 16. (emphasis added). Rosenberg unquestionably meets all of the
`
`requirements of a POSITA related to the ‘271 Patent.
`
`2. Medivis’ Attempts to Undermine Dr. Rosenberg Lack
`Merit.
`
`11
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`Case IPR 2023-00042
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`
`Medivis’ criticisms of Rosenberg lack merit. Motion, 12-15. Medivis
`
`contends that Rosenberg’s “degrees are not in computer science, electrical
`
`engineering, or a related field.” Motion, 12. Medivis’ contention lacks candor.
`
`Rosenberg’s BS in Industrial Engineering, MS in Human Factors, and a PhD in
`
`Human Factors are clearly fields of study related to the ’271 Patent. See Ex. 2004,
`
`Rosenberg Dec., ¶ 16. As stated above, Rosenberg has “worked in human factors,
`
`user interface design, software development, software architecture, systems
`
`engineering, and modeling and simulation across application areas, including
`
`aerospace, communications, entertainment, and healthcare” for over 30 years. See
`
`Id. Rosenberg has experience with “application prototyping … object-oriented
`
`software architecture, graphical user interface analysis and design, as well as
`
`UML, C++, C#, and Java software development. Ex. 2007, Rosenberg Supp. CV,
`
`1.
`
`Medivis also contends that Rosenberg lacks the required AR device
`
`experience. Motion, 12. This contention lacks merit. Rosenberg has “several
`
`years of experience the design, development, and study of augmented reality
`
`environments—however, not necessarily augmented reality devices.” Ex. 2008,
`
`Rosenberg Supp. Dec., ¶ 5. Rosenberg explains, “Although the ’271 Patent claims
`
`the use of an augmented reality headset, the focus of the claims is more about
`
`software than hardware.” Id. Rosenberg has authored several relevant
`
`
`
`12
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`Case IPR 2023-00042
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`publications, including a book chapter on augmented reality displays in the book,
`
`‘Virtual Environments and Advanced Interface Design’ (Oxford University Press,
`
`1995).” Ex. 2004, ¶ 19; see Ex. 2007, Rosenberg Supp. CV, 3-4. He “received an
`
`award from the Link Foundation for [his] work furthering the field of virtual
`
`interface design.” Ex. 2007, Rosenberg CV, 2. Moreover, Rosenberg has “worked
`
`on a significant number of patent litigation cases, several of which were related to
`
`virtual and augmented reality,” including: ARCzar v. Nintendo (AR); Glasses.com
`
`v. Ditto (AR); Lennon v. Sephora (AR); RPX v. Virtual Immersion Technologies
`
`(VR); Princeton Digital Image Corporation v. Harmonix Music Systems (VR);
`
`Princeton Digital Image Corporation v. Konami Digital Entertainment (VR);
`
`Barbaro v. Niantic (VR); Worlds, Inc. v. Linden Labs (VR); and Utherverse v.
`
`Epic Games (VR). See Ex. 2004, Rosenberg Dec., ¶ 34; see also Ex. 2007, 4-5.
`
`Medivis also contends that Rosenberg lacks familiarity with conventional
`
`medical imaging data. Motion, 12. Rosenberg stated that he is “not an expert in
`
`the specifics of medical imaging,” but that is not required to be a POSITA here.
`
`Rosenberg need only have “either (a) familiar[ity] with conventional medical
`
`imaging data and visualization of data for medical procedures or (b) working with
`
`a team including someone with such familiarity.” (Emphasis added). He has both.
`
`Rosenberg is familiar with medical imaging data and visualization of data for
`
`medical procedures and has worked with a team including medical professionals
`
`
`
`13
`
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`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`familiar with conventional medical imaging data. Rosenberg is a “Cofounder of a
`
`medical startup company creating an innovated case for smartphones that turns it
`
`into a digital stethoscope for enhanced diagnosis, serial comparisons, and
`
`telemedicine.” Ex. 2007, Rosenberg CV, 1. He is also the Cofounder a second
`
`medical startup company “leveraging wearable technologies such as Good Glass
`
`and Apple Watch to allow physicians to much more easily interact with their
`
`electronic medical records.” Id.
`
`Medivis also contends that Rosenberg “construed the claim terms ‘three-
`
`dimensional (3D) data’ and ‘inner layer of the patient’ as requiring specific
`
`medical imaging.” Motion, 14-15. Leaning further into its argument, Medivis
`
`continues to state that Rosenberg is not an expert in “medical imaging” and so he
`
`cannot opine on what these terms mean. Medivis misconstrues the record.
`
`With respect to the term “three-dimensional (3D) data…”, Rosenberg noted
`
`“I am not an expert in the specifics of medical imaging. However, based on the
`
`plain and ordinary meaning of the ‘three-dimensional (3D),’ a POSITA would
`
`understand that that image projected onto the patient in an AR environment must at
`
`least appear to the user to have height, width, and depth.” Ex. 2004, Rosenberg
`
`Dec., ¶ 79. With respect to the term “inner layer(s) of the patient,” Rosenberg said,
`
`“Again, based on the plain language of the claim, a POSITA would understand that
`
`the image projected onto the patient in an AR environment, whether the complete
`
`
`
`14
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`

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`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`3D dataset or some subset, appears to the user to have height, width, and depth.”
`
`Id., ¶ 80. Medivis’ contention that Rosenberg construed these claims “as requiring
`
`specific medical imaging,” lacks candor.
`
`Finally, Medivis accuses Rosenberg of cognitive bias and constructing “a
`
`non-existent claim term.” Motion, 14-15. This is not a basis for exclusion. A
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`“motion to exclude is not a vehicle for addressing the weight to be given
`
`evidence—arguments regarding weight should appear only in the merits
`
`documents.” TPG 79. Medivis’ accusation also lacks merit. Medivis contends
`
`that Rosenberg constructed “being confined within … a virtual 3D shape” instead
`
`of “being confined within a volume of a virtual 3D shape.” (Emphasis added); see
`
`Motion, 14. Medivis’ contention is specious. A 3D shape has a volume. “Within
`
`a 3D shape” is therefore synonymous with “within a volume of a 3D shape.”
`
`III. CONCLUSION
`
`For the foregoing reasons, Medivis’ Motion should be denied.
`
`Dated: January 9, 2024
`
`
`
`
`
`
` /s/ Joseph Harmer
`Joseph Harmer
`U.S. Patent Reg. No. 77,649
`Jed H. Hansen
`U.S. Patent Reg. No. 59,106
`
`Attorney for Patent Owners Novarad
`Corp.
`
`THORPE NORTH & WESTERN LLP
`
`
`
`15
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`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`
`
`
`
`175 South Main, Suite 900
`Salt Lake City, Utah 84111
`Telephone: 801-566-6633
`Email: joseph.harmer@tnw.com
`
`
`
`
`
`
`16
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`Case IPR 2023-00042
`Patent 11,004,271 B2
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`
`CERTIFICATE OF COMPLIANCE PURSUANT TO 37 C.F.R. §42.24
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
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`EXCLUDE complies with the typeface requirements of 37 C.F.R. §42.6(a)(ii) and
`
`the style requirements of 37 C.F.R. §§42.6(a)(iii) and (iv). This document contains
`
`15 pages or less, excluding the parts exempted as provided in 37 C.F.R. §
`
`42.24(a)(1)(v).
`
`
`
` /s/ Joseph Harmer
`Joseph Harmer
`U.S. Patent Reg. No. 77,649
`Jed H. Hansen
`U.S. Patent Reg. No. 59,106
`
`Attorney for Patent Owners Novarad
`Corp.
`
`THORPE NORTH & WESTERN LLP
`175 South Main, Suite 900
`Salt Lake City, Utah 84111
`Telephone: 801-566-6633
`Email: joseph.harmer@tnw.com
`
`
`
`17
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`
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a correct copy of this Patent Owner
`
`Sur-Reply was served upon the Petitioner on January 9, 2024, by email to the
`email addresses identified in Petitioner’s Updated Mandatory Notices dated
`February 2, 2023:
`
`
`kfreeman@mccarter.com
`ebelt@mccarter.com
`jcurran@mccarter.com
`
`
`Dated: January 9, 2024
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Kaelynn Moultrie
`Kaelynn Moultrie
`
`
`
`18
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`

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