IPR2023-00042 (Patent 11,004,271 B2)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDIVIS, INC.,
`Petitioner,
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`v.
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`NOVARAD CORP.,
`Patent Owner.
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`IPR2023-00042 (Patent 11,004,271 B2)
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`OBJECTIONS TO PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence,
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`patent owner Novarad Corp. (“Patent Owner”) hereby objects to the evidence of
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`petitioner Medivis, Inc. (“Petitioner”) proffered in connection its Petition for Inter
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`Partes Review filed on October 12, 2022, for the reasons set forth below.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MEDIVIS, INC.,
`Petitioner,
`
`v.
`
`NOVARAD CORP.,
`Patent Owner.
`
`
`
`IPR2023-00042 (Patent 11,004,271 B2)
`
`
`
`
`
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`OBJECTIONS TO PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`
`
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`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence,
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`patent owner Novarad Corp. (“Patent Owner”) hereby objects to the evidence of
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`petitioner Medivis, Inc. (“Petitioner”) proffered in connection its Petition for Inter
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`Partes Review filed on October 12, 2022, for the reasons set forth below.
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`
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`IPR2023-00042 (Patent 11,004,271 B2)
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`I.
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`Patent Owner Objects to Exhibits 1005, 1007, 1010, and 1014
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`Ex. 1005
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`FRE 106 (Incomplete); FRE 402, 403, 703 (Irrelevant); FRE 802
`(Hearsay)
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`Ex. 1007
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`FRE 802 (Hearsay); FRE 402, 403, 703 (Irrelevant)
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`Ex. 1010
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`FRE 802 (Hearsay); FRE 402, 403, 703 (Irrelevant)
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`Ex. 1014
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`FRE 402, 403, 703 (Irrelevant)
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`
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`Ex. 1005 (“Amira”)
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`FRE 402, 403, 703. Ex 1005 is purportedly the first two chapters (Chapter 1:
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`Introduction and Chapter 2: First steps in Amira) of a user guide for computer
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`software (Amira 5) used to visualize, analyze, and model three-dimensional data
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`on a two-dimensional computer monitor. Petitioner has not established the
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`authenticity of Ex. 1005 or whether it was disseminated or otherwise made
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`accessible to persons interested and ordinarily skilled in the subject to which Ex.
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`1005 relates prior to the critical date. Thus, Ex. 1005 has no tendency to make a
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`fact more or less probable that it would be without use of the evidence. Also, it is
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`of no consequence in determining the outcome of the proceeding.
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`IPR2023-00042 (Patent 11,004,271 B2)
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`FRE 802. Ex. 1005 is an out-of-court statement offered to prove the truth of the
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`matter asserted in statements by Dr. Kazanzides. Moreover, no hearsay exceptions
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`apply, including Fed. R. Evid. 803(18), because neither Dr. Kazanzides or any
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`other expert has established that Ex. 1005 comes from a reliable authority.
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`FRE 106. Exhibit 1005 purports to be an “Excerpt of Amira 5 User’s Guide title
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`through Chapter 2.” Under Fed. R. Evid. 106, in fairness, Patent Owner requires
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`Petitioner to produce the complete Amira 5 User Guide.
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`Ex. 1007 (“3D Visualization”)
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`FRE 402, 403, 703. Ex 1007 is purportedly a slide deck from a presentation given
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`at “Surgical Planning Laboratory, Brigham and Women’s Hospital in Boston,
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`Massachusetts.” The document does not indicate when this presentation was
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`given. The presentation allegedly provides an introduction to “the 3DSlicer
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`software.” Ex. 1007 at 3. Users allegedly use the 3DSlicer software to visualize,
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`analyze, and model three-dimensional data on a two-dimensional computer
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`monitor. Petitioner has not established the authenticity of Ex. 1007 or whether it
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`was disseminated or otherwise made accessible to persons interested and ordinarily
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`skilled in the subject to which Ex. 1007 relates prior to the critical date. Thus,
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`Ex. 1007 has no tendency to make a fact more or less probable that it would be
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`
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`without use of the evidence. Also, it is of no consequence in determining the
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`IPR2023-00042 (Patent 11,004,271 B2)
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`outcome of the proceeding.
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`FRE 802. Ex. 1007 is an out-of-court statement offered to prove the truth of the
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`matter asserted in statements by Dr. Kazanzides. Moreover, no hearsay exceptions
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`apply, including Fed. R. Evid. 803(18), because neither Dr. Kazanzides or any
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`other expert has established that Ex. 1007 comes from a reliable authority.
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`Ex. 1010 (“3D Slicer”)
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`FRE 402, 403, 703. Ex 1010 is purportedly online documentation for the 3DSlicer
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`software. Again, users allegedly use the 3DSlicer software to visualize, analyze,
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`and model three-dimensional data on a two-dimensional computer monitor.
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`Petitioner has not established the authenticity of Ex. 1010 or whether it was
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`disseminated or otherwise made accessible to persons interested and ordinarily
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`skilled in the subject to which Ex. 1010 relates prior to the critical date. Thus, Ex.
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`1010 has no tendency to make a fact more or less probable that it would be without
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`use of the evidence. Also, it is of no consequence in determining the outcome of
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`the proceeding.
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`FRE 802. Ex. 1010 is an out-of-court statement offered to prove the truth of the
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`matter asserted in statements by Dr. Kazanzides. Moreover, no hearsay exceptions
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`IPR2023-00042 (Patent 11,004,271 B2)
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`apply, including Fed. R. Evid. 803(18), because neither Dr. Kazanzides or any
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`other expert has established that Ex. 1010 comes from a reliable authority.
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`Ex. 1014 (“Novarad Litigation Counsel Email”)
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`FRE 402, 403, 703. Ex. 1014 is an email message dated August 3, 2022, between
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`Novarad’s and Medivis’ litigation counsel concerning “claim construction issue
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`identification” in the Scheduling Order in the related civil lawsuit pending in the
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`U.S. District Court for the District of Delaware (21-1447-GBW) and is wholly
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`irrelevant to this proceeding. Moreover, in its Petition, Petitioner acknowledged,
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`“Claim construction [in the related litigation] has not been briefed or argued. In
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`short, the case remains in its earliest stages.” ’271 Petition at 2-3.
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`II.
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`Patent Owner’s Objects to Ex. 1012—Dr. Kazanzides’ Declaration
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`Patent Owner objects to Exhibit 1012, Dr. Kazanzides’ Declaration for the
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`following reasons:
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`FRE 703 (Relies on
`inadmissible evidence.)
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`Ex. 1005
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`¶¶ 49, 82-88, 90-100.
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`Ex. 1007
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`¶¶ 106, 118, 121, 126, 128, 131
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`Ex. 1010
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`¶¶ 106, 120, 126
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`Ex. 1014
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`¶ 28.
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`FRE 702, 703 (Conclusory.
`Insufficient Facts or
`Information.)
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`FRE 704 (Improper legal
`conclusion.)
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`FRE 402, 403 (Irrelevant)
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`IPR2023-00042 (Patent 11,004,271 B2)
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`¶ 64, 68, 73, 77-79, 83, 84, 96, 101, 103, 106,
`110, 112, 117, 127, 129-130, 132.
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`¶¶ 59-60, 62, 81, 108.
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`Ex. 1012 is irrelevant and unfairly prejudicial to
`the extent it: (1) relies of inadmissible evidence;
`(2) is conclusory or fails to rely on sufficient
`facts or information; or (3) states an improper
`legal conclusion.
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`Date: May 8, 2023
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`Respectfully submitted,
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`
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`By: /s/ Jed Hansen
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`Jed Hansen, Reg. No. 59,106
`Joseph Harmer, Reg. No. 77,649
`Attorneys for Patent Owner
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`IPR2023-00042 (Patent 11,004,271 B2)
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a correct copy of the OBJECTIONS
`TO PETITIONER’S EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(b)(1) were
`served electronically upon the Petitioner on May 8, 2023, 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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`Date: May 8, 2023
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`/s/ Kaelynn Moultrie
`Kaelynn Moultrie
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