`
`
`Paper 23
`Date: December 11, 2023
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`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)
`IPR2023-00045 (Patent 10,945,807 B2)1
`____________
`
`
`
`Before MIRIAM L. QUINN, MICHAEL R. ZECHER, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Granting In Part Patent Owner’s Request to File Exhibits
`37 C.F.R. § 42.5(a)
`
`
`
`1 The Board exercises its discretion to mail the same Order in both of these
`proceedings. The parties are not authorized to use this caption format.
`
`
`
`IPR2023-00042 (Patent 11,004,271 B2)
`IPR2023-00045 (Patent 10,945,807 B2)
`
`
`
`On December 5, 2023, the Board held a telephone conference with the
`parties to discuss Patent Owner’s request to file exhibits which Patent Owner
`intended to file with its Sur-replies in IPR2023-00042 (Paper 22) and
`IPR2023-00045 (Paper 22). See Ex. 3001. Judges Quinn, Zecher, and
`Raevsky participated on behalf of the Board.
`In IPR2023-00042, Patent Owner requests to submit the following
`exhibits:
`(1) Declaration of Page Vault Representative Todd W. Price (May 19,
`2023) (“Price Declaration”), which includes a copy of Amira 5
`User’s Guide (Visual Imaging 2009) (“Amira”);
`(2) Dr. Rosenberg Supplemental Declaration (referenced as Exhibit
`2008 in Paper 22); and
`(3) Dr. Mulumudi Supplemental Declaration (referenced as Exhibit
`2009 in Paper 22).
`In IPR2023-00045, Patent Owner requests to submit the Price
`Declaration and the Dr. Mulumudi Supplemental Declaration (referenced as
`Exhibit 2005 in Paper 22).
`
`Price Declaration
`We first address the Price Declaration. During the call, we noted that
`the Price Declaration is already of record in IPR2023-00042 as Exhibit
`1023. Patent Owner therefore agreed that there is no need to refile the Price
`Declaration in the -00042 case and amended its request to file the Price
`Declaration solely in the -00045 case. See 37 C.F.R. § 42.6(d). Patent
`Owner explained that the copy of Amira in the Price Declaration is the entire
`reference, whereas the copy of Amira filed as Exhibit 1005 only includes
`two chapters of the reference. Patent Owner had planned to file a motion to
`
`
`
`IPR2023-00042 (Patent 11,004,271 B2)
`IPR2023-00045 (Patent 10,945,807 B2)
`
`
`exclude the incomplete version of Amira of Exhibit 1005, and to argue in the
`alternative that the Board should allow Patent Owner to file the full copy of
`Amira in Exhibit 1023. However, as the parties’ arguments continued, with
`no objection from Petitioner to include the Price Declaration in the -00045
`case, Patent Owner stated that a motion to exclude Exhibit 1005 would not
`be needed if the Price Declaration would be allowed in the record.
`Furthermore, considering how Amira bears on the issues presented
`and developed by the parties in the -00045 case, the panel notes it will be
`beneficial to have the Price Declaration with a full copy of Amira.
`Consequently, because Petitioner does not object to Patent Owner’s request
`to include the Price Declaration in the -00045 case, and it would be
`beneficial to the Board, we grant Patent Owner’s request to submit the Price
`Declaration as a 2000-series exhibit in IPR2023-00045.
`Drs. Rosenberg and Mulumudi Supplemental Declarations
`Now we turn to whether we allow Patent Owner to file the
`supplemental declarations of Drs. Rosenberg and Mulumudi, cited as new
`evidence in the sur-reply. After hearing the parties’ arguments, we deny
`Patent Owner’s request to submit the Dr. Rosenberg Supplemental
`Declaration (in the -00042 case) and the Dr. Mulumudi Supplemental
`Declarations (in both cases).
`It is well established that “[a] sur-reply may only respond to
`arguments raised in the corresponding reply and may not be accompanied by
`new evidence other than deposition transcripts of the cross-examination of
`any reply witness.” 37 C.F.R. § 42.23(b). Although we have the authority to
`waive this rule, Patent Owner does not persuade us to do so for these
`declarations. See id. § 42.5(b) (“The Board may waive or suspend a
`
`
`
`IPR2023-00042 (Patent 11,004,271 B2)
`IPR2023-00045 (Patent 10,945,807 B2)
`
`
`requirement of parts 1, 41, and 42 and may place conditions on the waiver or
`suspension.”).2 On the call, Patent Owner argued that the Dr. Rosenberg
`Supplemental Declaration and the Dr. Mulumudi Supplemental Declarations
`address Petitioner’s arguments in the Reply concerning the qualifications of
`these declarants. We determine that it is unnecessary for Patent Owner to
`present new evidence of qualification of its declarations via these
`declarations for us to assess the merits of Petitioner’s arguments raised in the
`Reply. At a minimum, we are able to assess the qualifications of these
`declarants based on their curricula vitae already submitted by Patent Owner
`(IPR2023-00042, Exs. 2003 & 2005; IPR2023-00045, Ex. 2003). And the
`inclusion of this new evidence would raise concerns of expanding discovery
`and briefing unnecessarily, given that (1) we are capable of determining
`what weight to afford the declarants’ testimony based on the sufficiency of
`their testimony and (2) exclusion of evidence is determined based on a
`proper motion to exclude.
`Should Petitioner subsequently file a proper motion to exclude Dr.
`Rosenberg or Dr. Mulumudi’s original declarations based on their
`qualifications, Patent Owner may at that time choose to file these
`declarations with its opposition to Petitioner’s motion to exclude. See 37
`C.F.R. § 42.64(b)(2) (“The party relying on evidence to which an objection
`is timely served may respond to the objection by serving supplemental
`evidence within ten business days of service of the objection.”);
`Consolidated Trial Practice Guide 79, available at
`
`
`2 Note that we are exercising our authority under Rule 42.5 to permit Patent
`Owner to file the Price Declaration.
`
`
`
`IPR2023-00042 (Patent 11,004,271 B2)
`IPR2023-00045 (Patent 10,945,807 B2)
`
`
`https://www.uspto.gov/TrialPracticeGuideConsolidated (“Supplemental
`evidence is not filed at the time of the objection, but simply served, and is
`filed only in support of an opposition to a motion to exclude.”).
`
`It is, therefore,
`ORDERED that Patent Owner’s request to file the Price Declaration
`as a 2000-series exhibit in IPR2023-00045 is granted; and
`FURTHER ORDERED that Patent Owner’s request to file
`supplemental declarations in IPR2023-00042 and IPR2023-00045 as new
`evidence supporting the Patent Owner Sur-reply is denied.
`
`
`
`IPR2023-00042 (Patent 11,004,271 B2)
`IPR2023-00045 (Patent 10,945,807 B2)
`
`
`FOR PETITIONER
`Kia L. Freeman
`John Curran
`MCCARTER & ENGLISH, LLP
`kfreeman@mccarter.com
`jcurran@mccarter.com
`
`FOR PATENT OWNER
`Joseph Harmer
`Jed H. Hansen
`THORPE NORTH & WESTERN LLP
`joseph.harmer@tnw.com
`hansen@tnw.com
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
