`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner.
`
`Case PGR2015-00019
`Patent 8,876,991 B2
`
`PETITIONER'S FIRST SET OF OBJECTIONS
`TO PATENT OWNER'S EXHIBITS
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner US Endodontics, LLC ("US
`
`Endo") submits the following objections to Exhibits 2001, 2002, 2004, 2005,
`
`2006, 2007, 2008, 2011, 2014, 2015, 2017, 2018, and 2019 submitted by Patent
`
`Owner Gold Standard Instruments, LLC ("GSI"), and any reference to or reliance
`
`on the foregoing. Pursuant to 37 C.F.R. § 42.62, US Endo's objections apply the
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`Federal Rules of Evidence.
`
`I.
`
`OBJECTIONS TO EXHIBITS 2001, 2002, 2004, 2006, 2008, 2011, 2014,
`AND 2019
`
`Exhibits 2001, 2002, 2004, 2006, 2008, 2011, 2014, and 2019 are identified
`
`by GSI as hearing transcripts, hearing demonstratives, deposition transcripts, and
`
`expert reports from the pending district court litigation.
`
`Exhibit 2001 is described by GSI as "Preliminary Injunction Hearing
`
`Transcript, Vol. I (public version), Dentsply Int'l Inc. and Tulsa Dental Prods.
`
`LLC d/b/a/ Tulsa Dental Specialties v. US Endodontics, LLC, No. 2:14-196 (E.D.
`
`Tenn. Nov. 25, 2014)."
`
`Exhibit 2002 is described by GSI as "Preliminary Injunction Hearing
`
`Transcript, Vol. II, Dentsply Int'l Inc. and Tulsa Dental Prods. LLC d/b/a/ Tulsa
`
`Dental Specialties v. US Endodontics, LLC, No. 2:14-196, (E.D. Tenn. Nov. 26,
`
`2014)."
`
`Exhibit 2004 is described by GSI as "Deposition Transcript of Neill H.
`
`1
`
`
`
`Luebke, D.D.S., M.S. (redacted), Dentsply Int'l Inc. and Tulsa Dental Prods. LLC
`
`d/b/a/ Tulsa Dental Specialties v. US Endodontics, LLC, No. 2:14-196, (E.D.
`
`Tenn. Oct. 8, 2014); and errata sheet (E.D. Tenn. Nov. 12, 2014)."
`
`Exhibit 2006 is described by GSI as "Declaration of John Voskuil,
`
`Dentsply Int'l Inc. and Tulsa Dental Prods. LLC d/b/a/ Tulsa Dental Specialties v.
`
`US Endodontics, LLC, No. 2:14-196 (E.D. Tenn. July 9, 2014)."
`
`Exhibit 2008 is described by GSI as "US Endodontics, LLC's Counter-
`
`Designations to Plaintiffs' Designations of Bobby Bennett Deposition Testimony
`
`and Redacted Public Version of the Designated Transcript, Dentsply Int'l Inc. and
`
`Tulsa Dental Prods. LLC d/b/a/ Tulsa Dental Specialties v. US Endodontics,
`
`LLC, No. 2:14-196 (E.D. Tenn. Dec. 12, 2014), pp. 1, 29-32, 36, 58-61, 65, 67,
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`68, 71, 79, 80, 93, 98, 99, 145, 149, 150, 187, 195, 196, 200, 221-224, and 229."
`
`Exhibit 2011 is described by GSI as "PowerPoint slides presented by
`
`Petitioner's Expert Dr. Jeffrey Stec, Dentsply Int'l Inc. and Tulsa Dental Prods.
`
`LLC d/b/a/ Tulsa Dental Specialties v. US Endodontics, LLC, No. 2:14-196, (E.D.
`
`Tenn. Nov. 26, 2014)."
`
`Exhibit 2014 is described by GSI as "Deposition Transcript of A. Jon
`
`Goldberg, Ph.D., Dentsply Int'l Inc. and Tulsa Dental Prods. LLC d/b/a/ Tulsa
`
`Dental Specialties v. US Endodontics, LLC, No. 2:14-196 (E.D. Tenn. Sept. 30,
`
`2014)."
`
`2
`
`
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`Exhibit 2019 is described by GSI as "Expert Report of Robert Sinclair,
`
`Ph.D., Dentsply Int'l Inc. and Tulsa Dental Prods. LLC d/b/a/ Tulsa Dental
`
`Specialties v. US Endodontics, LLC, No. 2:14-196 (E.D. Tenn. Sept. 12, 2014)."
`
`US Endo objects to Exhibits 2001, 2002, 2004, 2006, 2008, 2011, 2014,
`
`and 2019 as irrelevant, under Fed. R. Evid. 401, to the grounds upon which this
`
`proceeding has been instituted, and therefore, inadmissible under Fed. R. Evid.
`
`402-403.
`
`US Endo further objects to Exhibits 2001, 2002, 2004, 2006, 2008, 2011,
`
`2014, and 2019 as constituting hearsay, under Fed. R. Evid. 801, for which no
`
`exception has been established, and therefore, inadmissible under Fed. R. Evid.
`
`802.
`
`US further objects to Exhibit 2004 under Fed. R. Evid. 106 because it omits
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`portions of the transcript by way of redaction that in fairness should be considered
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`with the selectively cited portions.
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`II. OBJECTIONS TO EXHIBIT 2005
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`Exhibit 2005 is described by Patent Owner as "Guhring, Inc., Guhring
`
`Coating Services 2003."
`
`US Endo objects to Exhibit 2005 as irrelevant, under Fed. R. Evid. 401, to
`
`the grounds upon which this proceeding has been instituted, and therefore,
`
`inadmissible under Fed. R. Evid. 402-403.
`
`3
`
`
`
`US Endo further objects to Exhibit 2005 as constituting hearsay, under Fed.
`
`R. Evid. 801, for which no exception has been established, and therefore,
`
`inadmissible under Fed. R. Evid. 802.
`
`US Endo further objects to Exhibit 2005 under Fed. R. Evid. 901 for lack
`
`of authentication.
`
`III. OBJECTIONS TO EXHIBIT 2007
`
`Exhibit 2007 is described by Patent Owner as "Edge Endo, LLC's product
`
`information for the EdgeFile (Oct. 30, 2014), printed from
`
`<http://edgeendo.com/products/edgefile/>."
`
`US Endo objects to Exhibit 2007 as irrelevant, under Fed. R. Evid. 401, to
`
`the grounds upon which this proceeding has been instituted, and therefore,
`
`inadmissible under Fed. R. Evid. 402-403.
`
`US Endo further objects to Exhibit 2007 as constituting hearsay, under Fed.
`
`R. Evid. 801, for which no exception has been established, and therefore,
`
`inadmissible under Fed. R. Evid. 802.
`
`IV. OBJECTIONS TO EXHIBIT 2015
`
`Exhibit 2015 is described by Patent Owner as "U.S. Patent No. 5,843,244
`
`(filed Jun. 13, 1966)."
`
`US Endo objects to Exhibit 2015 as irrelevant, under Fed. R. Evid. 401, to
`
`the grounds upon which this proceeding has been instituted, and therefore,
`
`4
`
`
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`inadmissible under Fed. R. Evid. 402-403.
`
`US Endo further objects to Exhibit 2015 as constituting hearsay, under Fed.
`
`R. Evid. 801, for which no exception has been established, and therefore,
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`inadmissible under Fed. R. Evid. 802.
`
`V. OBJECTIONS TO EXHIBIT 2017
`
`Exhibit 2017 is described by Patent Owner as "Kuhn et al., "Influence of
`
`Structure on Nickel-Titanium Endodontic Instruments Failure," Journal of
`
`Endodontics, 27(8), 516-20 (Aug. 2001)."
`
`US Endo objects to Exhibit 2017 as irrelevant, under Fed. R. Evid. 401, to
`
`the grounds upon which this proceeding has been instituted, and therefore,
`
`inadmissible under Fed. R. Evid. 402-403.
`
`US Endo further objects to Exhibit 2017 as constituting hearsay, under Fed.
`
`R. Evid. 801, for which no exception has been established, and therefore,
`
`inadmissible under Fed. R. Evid. 802.
`
`VI. OBJECTIONS TO EXHIBIT 2018
`
`Exhibit 2018 is described by Patent Owner as "ASTM International,
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`F2004-05 (2010), Standard Test Method for Transformation Temperature of
`
`Nickel-Titanium Alloys by Thermal Analysis."
`
`US Endo objects to Exhibit 2018 as irrelevant, under Fed. R. Evid. 401, to
`
`the grounds upon which this proceeding has been instituted, and therefore,
`
`5
`
`
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`inadmissible under Fed. R. Evid. 402-403.
`
`US Endo further objects to Exhibit 2018 as constituting hearsay, under Fed.
`
`R. Evid. 801, for which no exception has been established, and therefore,
`
`inadmissible under Fed. R. Evid. 802.
`
`Dated: February 12, 2016
`
`/Jeffrey S. Ginsberg/
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`Lead counsel for Petitioner US Endodontics, LLC
`
`Abhishek Bapna (Reg. No. 64,049)
`Back-up counsel for Petitioner US Endodontics,
`LLC
`
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036-6710
`Tel.: (212) 336-2000
`
`6
`
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on February
`
`12, 2016, the foregoing Petitioner's First Set of Objections to Patent Owner's
`
`Exhibits was filed via the PRPS system and served via e-mail on the following
`
`counsel of record for the Patent Owner:
`
`Joseph A. Hynds
`(jhynds@rothwellfigg.com)
`R. Elizabeth Brenner-Leifer
`(ebrenner@rothwellfigg.com)
`Steven Lieberman
`(slieberman@rothwellfigg.com)
`Jason M. Nolan
`(jnolan@rothwellfigg.com)
`Derek F. Dahlgren
`(ddahlgren@rothwellfigg.com)
`C. Nichole Gifford
`(ngifford@rothwellfigg.com)
`Rothwell, Figg, Ernst & Manbeck P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`
`/Abhishek Bapna/
`Abhishek Bapna (Reg. No. 64,049)
`Patterson Belknap Webb & Tyler LLP
`
`
`
`
`8535795v.2