`
`By: Joseph Harmer
`Jed Hansen
`Thorpe North & Western, LLP
`175 S. Main St., Ste. 900
`Salt Lake City, UT 84111
`Tel: (801) 566-6633
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`MEDIVIS, INC.,
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`Petitioner,
`
`
`v.
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`NOVARAD CORP.,
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`Patent Owner.
`_____________
`
`Patent 11,004,271 B2
`_____________
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`Case IPR 2023-00042
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`
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`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
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`Case IPR 2023-00042
`Patent 11,004,271 B2
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`
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`TABLE OF CONTENTS
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`
`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
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`TABLE OF AUTHORITIES
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`
`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
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`iii
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`
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`Exhibit No.
`Ex. 2002
`Ex. 2003
`Ex. 2004
`Ex. 2005
`Ex. 2006
`Ex. 2007
`Ex. 2008
`Ex. 2009
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`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
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`
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`iv
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`I.
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`INTRODUCTION
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`Medivis has manufactured new expert requirements and reargues the merits
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`of its Petition under the ruse of a Motion to Exclude (“Motion”) [Paper 25] expert
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`testimony. Medivis’ Motion should be denied.
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`Medivis defines the person of ordinary skill in the art (POSITA) as a person
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`having:
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`
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`(1) a bachelor’s degree in computer science, electrical engineering, or a
`related field with
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`(2) several years of experience in the design, development, and study of
`augmented reality devices; and
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`(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.
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`
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`Mulumudi and Rosenberg meet all three of these requirements. In the case
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`at hand, the POSITA includes more than one discipline, i.e., augmented reality and
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`visualization of medical imaging data for medical procedures. While both
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`Rosenberg and Mulumudi are qualified POSITAs under Medivis’ definition,
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`Rosenberg provides the Board with a specialized understanding of augmented
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`reality. And Mulumudi provides the Board with the perspective of an actual
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`medical doctor who uses medical imaging data and visualization of that data for
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`medical procedures. Their testimony will help the Board to understand the
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`evidence and to determine the facts at issue.
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`Detailed more fully below, Rosenberg provides the Board with the valuable
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`understanding of an augmented reality engineer with over 30 years of experience.
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`See Ex. 2004, Rosenberg Dec., ¶¶ 13, 16. And Mulumudi provides the Board with
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`the critical understanding of an actual medical doctor with over two decades of
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`“experience in imaging, virtual reality, augmented reality with biofeedback, and
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`treating peripheral vascular and coronary artery diseases from 2000 through
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`today.” Ex. 2002, Mulumudi Dec., ¶ 13. Indeed, Mulumudi is the only expert
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`with “[e]xtensive expertise in utilizing [2D and 3D] ultrasound guidance for safe
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`vascular access, facilitating entry into arteries and veins, and navigating medical
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`equipment securely to the desired implantation site or area of interest.” Ex. 2003,
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`Mulumudi CV, 1; Ex. 2009, Mulumudi Supp. Dec., 3.
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`Medivis ignores these facts in an improper attempt to reargue the merits of
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`the case. A motion to exclude should be limited to the admissibility of testimony,
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`not its weight. See 37 C.F.R. § 42.64; USPTO, Consolidated Trial Practice Guide
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`(“TPG”), 79, (Nov. 2019) (“A motion to exclude must explain why the evidence is
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`not admissible (e.g., relevance or hearsay) but may not be used to challenge the
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`sufficiency of the evidence or to provide a particular fact.”).
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`II. ARGUMENT
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`A. The Level of Skill in the Art is a Factual Determination.
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`The level of ordinary skill in the art at the time of the invention is a factual
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`determination….” Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir.
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`1999) (citations omitted). The Board is the finder of fact and has not yet
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`determined the level of skill in the art nor is it bound by Medivis’ proposed
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`definition. See Hanwha Solutions Corp. et al v. Rec Solar PTE. LTD., IPR2021-
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`00988, Paper 40 at 11-12 (P.T.A.B. Dec. 9, 2022) (deciding that Petitioner’s
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`proposal is too broad and Patent Owner’s proposal is too narrow and adopting its
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`own definition).
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`The level of ordinary skill in the art is a “lens” through which the Board
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`views the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
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`1350, 1355 (Fed. Cir. 2011). The POSITA is a hypothetical person presumed to
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`have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d
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`1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art,
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`the Board may consider factors, including the “type of problems encountered in the
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`art; prior art solutions to those problems; rapidity with which innovations are
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`made; sophistication of the technology; and educational level of active workers in
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`the field. Id. The “lens” of the level of ordinary skill in the art does not change a
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`prior art’s disclosure, though it may change one’s understanding of what is
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`disclosed.” Metrasens, Inc. et al. v. Keith A. Kopp, IPR2022-01224, Paper 21 at 8
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`(P.T.A.B. Dec. 21, 2023).
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`B.
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`Standard for the Admissibility of Expert Testimony in an IPR.
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`To qualify as an expert under FRE 702, an expert must have the “scientific,
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`technical, or other specialized knowledge [that] will help the trier of fact to
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`understand the evidence or to determine a fact at issue.” “There is [] no
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`requirement of a perfect match between the expert’s experience and the relevant
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`field.” TPG, 34 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373
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`(Fed. Cir. 2010)). “[A]ny perceived mismatch between the qualifications of
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`[Patent Owner’s] experts and the level of ordinary skill is not a basis to discount
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`their testimony” so long as the testimony “is helpful to the Board … and the ‘the
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`expert’s experience provides sufficient qualification in the pertinent art.’” Eisai
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`Inc. v. Crystal Pharm. (Suzhou) Co., Ltd., PGR2021-00047, Paper 58 at 10
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`(P.T.A.B. Aug. 8, 2022) (quoting TPG, 34).
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`
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`Moreover, challenges to an expert’s qualifications go to the weight of the
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`evidence, not its admissibility. See Intel Corp. v. Alacritech, Inc., IPR2017-01406,
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`Paper 83 at 42-43 (P.T.A.B. Nov. 26, 2018); Primera Tech, Inc. v. Automatic Mfg.
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`Sys., Inc., IPR2013-00196, Paper 50 at 30 (P.T.A.B. Jul. 17, 2014). “The Board
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`has broad discretion to assign weight to be accorded expert testimony.” TPG, 35.
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`“[T]he wholesale exclusion of witness’s declarations is rarely called for in a
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`proceeding before the Board” because “the policy considerations for excluding
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`expert testimony … are less compelling in bench proceedings such as inter partes
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`reviews than in jury trials.” Les Ateliers Beau-Roc Inc. v. Air Power Sys. Co.,
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`IPR2020-01702, Paper 32 at 60 (P.T.A.B. Apr. 18, 2022) (citation omitted).
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`C. Dr. Mulumudi is Qualified to Offer Opinions Regarding the ’271
`Patent and Should Not Be Excluded.
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`1.
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`Dr. Mulumudi is Qualified as an Expert.
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`
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`There is no basis for excluding Mulumudi’s testimony because he has more
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`than the requisite ordinary skill in the art and his testimony is undoubtedly helpful
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`in deciding the disputed factual issues. Mulumudi is a medical doctor, a field that
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`is unquestionably related to the ’271 Patent. Ex. 2002, Mulumudi Dec., ¶¶ 16-24.
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`He is “very familiar with conventional medical imaging data and visualization of
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`that data for use during medical procedures.” Ex. 2009, Mulumudi Supp. Dec., ¶ 6.
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`He has “over 20 years of experience treating peripheral vascular and coronary
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`artery diseases using 2D and 3D medical imaging, including ‘3D Ultrasound, gated
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`Computerized Tomography (CT), and Magnetic Resonance Imaging (MRI).’” Id.,
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`¶ 6. Mulumudi is “[p]roficient in medical image processing techniques and
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`manipulation techniques to determine the appropriate sizing of values and other
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`devices, ensuring precise anatomical placement.” Ex. 2003, Mulumudi CV, 1. He
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`has “[e]xtensive expertise in utilizing [2D and 3D] ultrasound guidance for safe
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`vascular access, facilitating entry into arteries and veins, and navigating medical
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`equipment securely to the desired implantation site or area of interest.” Ex. 2003,
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`1; Ex. 2009, Mulumudi Supp. Dec., ¶ 6.
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`
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`Mulumudi also has “several years of experience in the design and
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`development of virtual and augmented reality environments.” Ex. 2009, ¶ 7.
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`Mulumudi “created a VR enhanced telemedicine solution designed to enhance
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`remote healthcare delivery by providing an immersive and realistic experience.”
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`Ex. 2002, Mulumudi Dec., ¶ 23; Ex. 2009, ¶ 7. He also “recently submitted a U.S.
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`Patent Application for an innovative VR application that leverages biofeedback to
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`offer mindfulness exercises aimed at reducing stress and enhancing focus.”
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`Ex. 2009, ¶ 7.
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`Mulumudi is also “a named inventor of several U.S. Patents.” Id., ¶ 8. Two
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`of Mulumudi’s patents relate to a “guidewire insertion tool configured to measure
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`a length of an anatomic region” in order to “accurately position surgical devices in
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`the body.” Id.; see U.S. Patent Nos. 11,311,306 and 10,271,763. Six of
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`Mulumudi’s patents are related to an “acoustic collection system [e.g., stethoscope]
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`for handheld electronic devices [e.g., smartphones and tablets]” and a “mounting
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`system” for such acoustic collection systems. Id.; see U.S. Patent Nos. 10,271,816;
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`9,855,019; 9,706,975; and 9,414,155.
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`In his Declaration (Ex. 2002), Mulumudi explained, “I believe I am qualified
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`to serve as a technical expert in this proceeding based on my educational and work
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`experience, including my 20+ years of experience in imaging, virtual reality,
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`augmented reality with biofeedback, and treating peripheral vascular and coronary
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`artery diseases from 2000 through today.” Ex. 2002, ¶ 13. He also testified, “The
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`combination of my education, research, training, and work experience in
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`cardiovascular health and virtual reality technology in healthcare as it relates to
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`improving the patient experience enables me to provide analysis and opinions on
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`the subject matter of this litigation.” Id., ¶ 26.
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`2. Medivis’ Attempts to Undermine Dr. Mulumudi’s
`Testimony Lack Merit.
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`Medivis’ criticisms of Mulumudi lack merit. Motion, ¶¶ 10-12. Medivis
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`
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`argues that Mulumudi’s “medical degree is not the required degree in computer
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`science, electrical engineering, or a related field.” Motion, 10. However,
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`Mulumudi’s medical degree is in a field of study unquestionably related to the ’271
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`Patent. Moreover, while Mulumudi is not a computer science or electrical
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`engineering major, these undergraduate degrees would not alter his opinion.
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`Mulumudi disagreed that “a POSITA necessarily requires a degree in computer
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`science or electrical engineering.” Ex. 2009, Mulumudi Supp. Dec., ¶ 5.
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`Mulumudi observed that “the ’271 Patent does not disclose new hardware, but new
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`software” (id.), as Petitioner acknowledged. See Petition, 4-5.
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`Medivis also argues that Mulumudi “relies on his own say-so.” Motion, 11.
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`Medivis contends that Mulumudi “cited no support for [his] allegations about DVR
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`or anything else.” Motion, 11. This argument lacks merit. Mulumudi provided an
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`overview of various ways that medical imaging data is visualized, including: slice-
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`by-slice viewing, multiplanar reconstruction (MPR), surface rendering, and direct
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`volume rendering (DVR). Ex. 2002, Mulumudi Dec., ¶¶ 51-58. Mulumudi also
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`explained why the ’271 Patent requires direct volume rendered 3D data. Id., ¶¶ 59-
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`62. Mulumudi repeatedly cites to the ’271 Patent as support for his opinions [see,
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`e.g., id., ¶ 59] which is explained more fully in Patent Owner’s Response and Sur-
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`reply. See, e.g., Response, 11-14; Sur-reply, 9-10.
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`Other than Medivis’ general allegations that Mulumudi’s opinions on DVR
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`are unsupported, Medivis points to only one portion of one sentence in
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`Mulumudi’s Declaration—his opinion that “‘virtual 3D shape’ is derived from
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`direct volume rendering.” Id. (citing Ex. 2002, ¶ 78). However, Medivis’
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`quotation of Mulumudi is incomplete. Mulumudi said:
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`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
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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.
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`Ex. 2002, Mulumudi Dec., ¶ 78. Medivis’ provides no other evidence that
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`Mulumudi’s opinions are unsupported. Moreover, it provides no evidence from
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`its own expert to rebut any of Mulumudi’s testimony. Medivis’ failure in this
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`regard speaks volumes. Unable to present a single sentence of rebuttal testimony
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`from its own expert, it resorts to a strained reading of its POSITA definition in an
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`effort to eliminate that testimony.
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`Medivis also alleges that “Mulumudi admitted that he could identify DVR
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`only by the words “direct volume rendering.” Motion, 12 (citing Ex. 1022,
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`129:17-130:1). Medivis made this same argument in its Reply. Reply, 3-4.
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`Medivis’ allegation here, as in its Reply, lacks candor. During Mulumudi’s
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`deposition, Medivis’ counsel showed Mulumudi page 49 of Amira. The page from
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`Amira contains text with no images. Counsel then asked Mulumudi, “Is there any
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`way that you could tell whether the volume rendering referenced on page 49 of
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`Amira is direct volume rendering without the words ‘direct’—the phrase ‘direct
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`volume rendering’ being used?” To which, Mulumudi simply answered, “No.”
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`See Ex. 1022, 129:17-130:1. Medivis references Ex. 1005 at, e.g., 6/18-7/19,
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`37/49-39/51 in its Motion, but Medivis did not show Mulumudi any figures
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`from these pages during his deposition. It is misleading, at best, to suggest to
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`the Board that Medivis did so.
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`Lastly, Medivis manufactures new POSITA qualifications. Specifically,
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`Medivis argues that unfamiliarity with 3D Slicer (Ex. 1010), 3D Visualization (Ex.
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`1007) (a 3D Slicer presentation), and Amira (Ex. 1005) disqualifies Mulumudi as a
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`POSITA. Motion, 1, 6, 10. Medivis presumes that every POSITA must be
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`familiar with Exhibits 1005, 1007, 1010. But knowledge of any of the products
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`allegedly shown in those exhibits is not a condition that Medivis ever claimed was
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`required to be a POSITA. It cannot create them now.
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`Irrespective, Mulumudi’s testimony is consistent with the evidence. During
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`his deposition, Mulumudi explained that he was “not confident to say that these are
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`widely used tools by [a] wide variety of medical personnel.” Ex. 2020, 147:15-19.
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`3D Visualization states that “Slicer is a tool for research and is not FDA
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`approved.” Ex. 1007, 8. And Amira states, “Amira ® is intended for research use
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`only. It is not a medical device.” Ex. 1005, 4. This does not mean that Mulumudi
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`“admitted that he is unqualified to discuss the prior art technology,” as Medivis
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`contends. Motion, 7. Rather, it is probative of the fact that Medivis’ assertions of
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`patent invalidity are uncorroborated by experts in the field and lack merit.
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`D. Dr. Rosenberg is Qualified to Offer Opinions Regarding the ’271
`Patent Should Not Be Excluded.
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`1.
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`Dr. Rosenberg is Qualified as an Expert.
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`Medivis had the opportunity—but declined—to depose Dr. Rosenberg. See
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`Les Ateliers Beau-Roc, IPR2020-01702, Paper 32 at 60 (“any shortcomings” in
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`“the qualifications of an expert witness” are supposed to be explored “through
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`cross-examination”). Remarkably, Medivis now seeks to exclude the opinions for
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`which it declined to cross-examine Dr. Rosenberg.
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`There is also no basis for excluding Rosenberg’s testimony because he has
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`more than the requisite ordinary skill in the art and his testimony is undoubtedly
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`helpful to the Board. Rosenberg has a BS in Industrial Engineering, a MS in
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`Human Factors, and a PhD in Human Factors. Ex. 2004, Rosenberg Dec., ¶ 16.
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`Rosenberg has over 30 years of experience in “human factors, user interface
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`design, user interaction design, human-computer interaction, and software
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`engineering from 1988 through today.” Id., ¶ 13. “For 30 years, [Rosenberg has]
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`worked in human factors, user interface design, software development, software
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`architecture, systems engineering, and modeling and simulation across application
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`areas, including aerospace, communications, entertainment, and healthcare.”
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`Ex. 2004, ¶ 16. (emphasis added). Rosenberg unquestionably meets all of the
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`requirements of a POSITA related to the ‘271 Patent.
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`2. Medivis’ Attempts to Undermine Dr. Rosenberg Lack
`Merit.
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`Medivis’ criticisms of Rosenberg lack merit. Motion, 12-15. Medivis
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`contends that Rosenberg’s “degrees are not in computer science, electrical
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`engineering, or a related field.” Motion, 12. Medivis’ contention lacks candor.
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`Rosenberg’s BS in Industrial Engineering, MS in Human Factors, and a PhD in
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`Human Factors are clearly fields of study related to the ’271 Patent. See Ex. 2004,
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`Rosenberg Dec., ¶ 16. As stated above, Rosenberg has “worked in human factors,
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`user interface design, software development, software architecture, systems
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`engineering, and modeling and simulation across application areas, including
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`aerospace, communications, entertainment, and healthcare” for over 30 years. See
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`Id. Rosenberg has experience with “application prototyping … object-oriented
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`software architecture, graphical user interface analysis and design, as well as
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`UML, C++, C#, and Java software development. Ex. 2007, Rosenberg Supp. CV,
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`1.
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`Medivis also contends that Rosenberg lacks the required AR device
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`experience. Motion, 12. This contention lacks merit. Rosenberg has “several
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`years of experience the design, development, and study of augmented reality
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`environments—however, not necessarily augmented reality devices.” Ex. 2008,
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`Rosenberg Supp. Dec., ¶ 5. Rosenberg explains, “Although the ’271 Patent claims
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`the use of an augmented reality headset, the focus of the claims is more about
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`software than hardware.” Id. Rosenberg has authored several relevant
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`publications, including a book chapter on augmented reality displays in the book,
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`‘Virtual Environments and Advanced Interface Design’ (Oxford University Press,
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`1995).” Ex. 2004, ¶ 19; see Ex. 2007, Rosenberg Supp. CV, 3-4. He “received an
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`award from the Link Foundation for [his] work furthering the field of virtual
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`interface design.” Ex. 2007, Rosenberg CV, 2. Moreover, Rosenberg has “worked
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`on a significant number of patent litigation cases, several of which were related to
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`virtual and augmented reality,” including: ARCzar v. Nintendo (AR); Glasses.com
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`v. Ditto (AR); Lennon v. Sephora (AR); RPX v. Virtual Immersion Technologies
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`(VR); Princeton Digital Image Corporation v. Harmonix Music Systems (VR);
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`Princeton Digital Image Corporation v. Konami Digital Entertainment (VR);
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`Barbaro v. Niantic (VR); Worlds, Inc. v. Linden Labs (VR); and Utherverse v.
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`Epic Games (VR). See Ex. 2004, Rosenberg Dec., ¶ 34; see also Ex. 2007, 4-5.
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`Medivis also contends that Rosenberg lacks familiarity with conventional
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`medical imaging data. Motion, 12. Rosenberg stated that he is “not an expert in
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`the specifics of medical imaging,” but that is not required to be a POSITA here.
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`Rosenberg need only have “either (a) familiar[ity] with conventional medical
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`imaging data and visualization of data for medical procedures or (b) working with
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`a team including someone with such familiarity.” (Emphasis added). He has both.
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`Rosenberg is familiar with medical imaging data and visualization of data for
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`medical procedures and has worked with a team including medical professionals
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`familiar with conventional medical imaging data. Rosenberg is a “Cofounder of a
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`medical startup company creating an innovated case for smartphones that turns it
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`into a digital stethoscope for enhanced diagnosis, serial comparisons, and
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`telemedicine.” Ex. 2007, Rosenberg CV, 1. He is also the Cofounder a second
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`medical startup company “leveraging wearable technologies such as Good Glass
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`and Apple Watch to allow physicians to much more easily interact with their
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`electronic medical records.” Id.
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`Medivis also contends that Rosenberg “construed the claim terms ‘three-
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`dimensional (3D) data’ and ‘inner layer of the patient’ as requiring specific
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`medical imaging.” Motion, 14-15. Leaning further into its argument, Medivis
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`continues to state that Rosenberg is not an expert in “medical imaging” and so he
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`cannot opine on what these terms mean. Medivis misconstrues the record.
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`With respect to the term “three-dimensional (3D) data…”, Rosenberg noted
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`“I am not an expert in the specifics of medical imaging. However, based on the
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`plain and ordinary meaning of the ‘three-dimensional (3D),’ a POSITA would
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`understand that that image projected onto the patient in an AR environment must at
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`least appear to the user to have height, width, and depth.” Ex. 2004, Rosenberg
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`Dec., ¶ 79. With respect to the term “inner layer(s) of the patient,” Rosenberg said,
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`“Again, based on the plain language of the claim, a POSITA would understand that
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`the image projected onto the patient in an AR environment, whether the complete
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`3D dataset or some subset, appears to the user to have height, width, and depth.”
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`Id., ¶ 80. Medivis’ contention that Rosenberg construed these claims “as requiring
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`specific medical imaging,” lacks candor.
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`Finally, Medivis accuses Rosenberg of cognitive bias and constructing “a
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`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
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`evidence—arguments regarding weight should appear only in the merits
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`documents.” TPG 79. Medivis’ accusation also lacks merit. Medivis contends
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`that Rosenberg constructed “being confined within … a virtual 3D shape” instead
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`of “being confined within a volume of a virtual 3D shape.” (Emphasis added); see
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`Motion, 14. Medivis’ contention is specious. A 3D shape has a volume. “Within
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`a 3D shape” is therefore synonymous with “within a volume of a 3D shape.”
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`III. CONCLUSION
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`For the foregoing reasons, Medivis’ Motion should be denied.
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`Dated: January 9, 2024
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` /s/ Joseph Harmer
`Joseph Harmer
`U.S. Patent Reg. No. 77,649
`Jed H. Hansen
`U.S. Patent Reg. No. 59,106
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`Attorney for Patent Owners Novarad
`Corp.
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`THORPE NORTH & WESTERN LLP
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`175 South Main, Suite 900
`Salt Lake City, Utah 84111
`Telephone: 801-566-6633
`Email: joseph.harmer@tnw.com
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`CERTIFICATE OF COMPLIANCE PURSUANT TO 37 C.F.R. §42.24
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
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`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
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`the style requirements of 37 C.F.R. §§42.6(a)(iii) and (iv). This document contains
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`15 pages or less, excluding the parts exempted as provided in 37 C.F.R. §
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`42.24(a)(1)(v).
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` /s/ Joseph Harmer
`Joseph Harmer
`U.S. Patent Reg. No. 77,649
`Jed H. Hansen
`U.S. Patent Reg. No. 59,106
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`Attorney for Patent Owners Novarad
`Corp.
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`THORPE NORTH & WESTERN LLP
`175 South Main, Suite 900
`Salt Lake City, Utah 84111
`Telephone: 801-566-6633
`Email: joseph.harmer@tnw.com
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a correct copy of this Patent Owner
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`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:
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`kfreeman@mccarter.com
`ebelt@mccarter.com
`jcurran@mccarter.com
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`Dated: January 9, 2024
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`/s/ Kaelynn Moultrie
`Kaelynn Moultrie
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