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`By:
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`Date filed: September 20, 2016
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`Joseph A. Hynds, Lead Counsel
`Steven Lieberman, Back-up Counsel (Pro Hac Vice)
`C. Nichole Gifford, Back-up Counsel
`R. Elizabeth Brenner-Leifer, Back-up Counsel
`Derek F. Dahlgren, Back-up Counsel (Pro Hac Vice)
`Jason M. Nolan, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040 | Facsimile: 202-783-6031
`Emails: jhynds@rfem.com
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` slieberman@rfem.com
` ngifford@rfem.com
` ebrenner@rothwellfigg.com
` ddahlgren@rfem.com
` jnolan@rfem.com
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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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`US ENDODONTICS, LLC,
`Petitioner,
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`v.
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`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`_______________
`
`Case PGR2015-00019
`Patent 8,876,991 B2
`_______________
`
`PATENT OWNER’S MOTION TO EXCLUDE
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`
`
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`Case PGR2015-00019
`Patent 8,876,991 B2
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`Introduction
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`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner Gold Standard Instruments,
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`LLC (“Patent Owner”) moves to exclude Exhibits 1005, 1006, 1016, 1017, 1020,
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`1021, 1025, 1034, 1036, and 1038.
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`II. Exhibit 1005
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`Ex. 1005 is a Ph.D. thesis by Satish B. Alapati. Petitioner relied on Ex. 1005
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`on pages 5 and 6 of its Petition (Paper 1) and on page 10 of its Reply (Paper 31).
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`Patent Owner objected to Ex. 1005 (1) under Fed. R. Evid. 401–403 as irrelevant
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`to the instituted grounds, (2) under Fed. R. Evid. 801 as improper hearsay for
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`which Petitioner has not established any exception, and (3) under Fed. R. Evid. 901
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`for lack of authentication. Paper 19. Petitioner has not cured these objections.
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`First, Ex. 1005 is not prior art to US 8,876,991 (“the ’991 patent”) and not
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`part of any instituted ground. Thus, it should be excluded because it is not relevant
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`to the proceeding. Second, it should be excluded because it is hearsay, not subject
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`to any exception. Petitioner improperly relied on Ex. 1005 for the truth of the
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`matter asserted in the document. Petitioner has not cited to any hearsay exception,
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`and none applies. Here, Petitioner has not presented the testimony of any
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`Patent 8,876,991 B2
`individual having first-hand knowledge of the statements and/or experiments
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`described in Ex. 1005. Finally, for the same reasons, Ex. 1005 should be excluded
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`for lack of authentication. Petitioner has not presented any evidence of public
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`availability for Ex. 1005. Petitioner also did not serve supplemental evidence to
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`address Patent Owner’s objections, such as providing evidence of cataloguing or
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`other indexing.
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`III. Exhibit 1006
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`
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`Ex. 1006 is an article by Pelton et al. Petitioner relied on Ex. 1006 on
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`pages 6, 10, 42, 65, 68, and 71 of its Petition (Paper 1) and on page 10 of its Reply
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`(Paper 31). In Paper 19, Patent Owner objected to Ex. 1006 under Fed. R. Evid.
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`401–403 as irrelevant to the grounds upon which trial has been instituted.
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`Petitioner has not and cannot cure these objections. In this trial, no ground relies
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`upon Ex. 1006. Thus, Ex. 1006 should be excluded because it is not relevant to this
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`proceeding.
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`IV. Exhibit 1016
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`Ex. 1016 is an article by Schäfer et al. Petitioner relied on Ex. 1016 on
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`pages 36 and 63 of its Petition (Paper 1). Patent Owner objected to Ex. 1016 under
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`Fed. R. Evid. 401–403 as irrelevant to the grounds upon which trial has been
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`instituted. Paper 19. Petitioner has not cured this objection. Nor can it. Ex. 1016 is
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`Patent 8,876,991 B2
`not part of any instituted ground in this trial. Thus, it should be excluded because it
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`is not relevant.
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`V. Exhibit 1017
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`Ex. 1017 is an article by Testarelli et al. Petitioner relied on Ex. 1017 on
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`pages 36 and 63 of its Petition (Paper 1). Patent Owner objected to Ex. 1017 under
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`Fed. R. Evid. 401–403 as irrelevant to the instituted grounds. Paper 19. Petitioner
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`has not served supplemental evidence addressing these objections, nor can it.
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`Ex. 1017 is not prior art to the ’991 patent and not part of any instituted ground.
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`Thus, it should be excluded because it is not relevant to this proceeding.
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`VI. Exhibit 1020
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`Ex. 1020 is another article by Pelton et al. Petitioner relied on Ex. 1020 on
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`page 44 of its Petition (Paper 1) and on page 14 of its Reply (Paper 31). Patent
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`Owner objected to Ex. 1020 under Fed. R. Evid. 401–403 as irrelevant to the
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`grounds upon which trial has been instituted. Paper 19. Petitioner cannot cure these
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`objections. Ex. 1020 is not part of any instituted ground. Thus, it should be
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`excluded because it is not relevant to this proceeding.
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`VII. Exhibit 1021
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`Ex. 1021 is an article by Miyazaki et al. Petitioner relied on Ex. 1021 on
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`page 44 of its Petition (Paper 1) and on page 14 of its Reply (Paper 31). Patent
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`Owner objected to Ex. 1021 under Fed. R. Evid. 401–403 as irrelevant to the
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`Patent 8,876,991 B2
`grounds upon which trial has been instituted. Paper 19. Petitioner has not cured this
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`objection, nor can it. Here, Ex. 1021 is not part of any instituted ground. Thus, it
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`should be excluded because it is not relevant to the proceeding.
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`VIII. Exhibit 1025
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`Ex. 1025 is U.S. Patent Application Publication No. 2006/0115786 A1 to
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`Matsutani et al. Petitioner relied on Ex. 1025 on pages 54–58 of its Petition
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`(Paper 1). Patent Owner objected to Ex. 1025 under Fed. R. Evid. 401–403 as
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`irrelevant to the grounds upon which trial has been instituted. Paper 19. Petitioner
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`cannot cure this objection. Ex. 1025 is not prior art to the ’991 patent, nor is it part
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`of any instituted ground. As such, it should be excluded because it is not relevant to
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`this proceeding.
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`IX. Exhibit 1034
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`Ex. 1034 is an article by Bahia. Petitioner relied on Ex. 1034 on page 60 of
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`its Petition (Paper 1). Patent Owner objected to Ex. 1034 under Fed. R. Evid. 401–
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`403 as irrelevant to the grounds upon which trial has been instituted. Paper 19.
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`Petitioner has not cured this objection, nor can it. Ex. 1034 is not prior art to
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`the ’991 patent and is not part of any instituted ground. Thus, it should be excluded
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`because it is not relevant to this proceeding.
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`X. Exhibit 1036
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`Case PGR2015-00019
`Patent 8,876,991 B2
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`Ex. 1036 is an article by Drexel et al. Petitioner relied on Ex. 1036 on
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`page 14 of its Reply (Paper 31). Patent Owner objected to Ex. 1036 under Fed. R.
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`Evid. 401–403 as irrelevant to the grounds upon which trial has been instituted.
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`Paper 19. Petitioner has not, and cannot, cure this objection. Ex. 1036 is not prior
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`art to the ’991 patent and not part of any instituted ground. Thus, it should be
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`excluded because it is not relevant to this proceeding.
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`XI. Exhibit 1038
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`Ex. 1038 is an article by Brantley et al. Petitioner relied on Ex. 1038 on
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`pages 36 and 60 of its Petition (Paper 1). Patent Owner objected to Ex. 1038 under
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`Fed. R. Evid. 401–403 as irrelevant to the grounds upon which trial has been
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`instituted. Paper 19. Petitioner cannot cure this objection. Ex. 1038 is not part of
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`any instituted ground. As such, it should be excluded because it is not relevant to
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`this proceeding.
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`XII. Conclusion
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`Based on the foregoing, the Board should exclude Exhibits 1005, 1006,
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`1016, 1017, 1020, 1021, 1025, 1034, 1036, and 1038.
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`Case PGR2015-00019
`Patent 8,876,991 B2
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`Respectfully submitted,
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`By: / Joseph A. Hynds /
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`Joseph A. Hynds, Reg. No. 34,627
`ROTHWELL, FIGG, ERNST &
`MANBECK, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`
`Counsel for Patent Owner
`Gold Standard Instruments, LLC
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`Dated: September 20, 2016
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`CERTIFICATE OF SERVICE
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`Case PGR2015-00019
`Patent 8,876,991 B2
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`I hereby certify that on this 20th day of September 2016, a true and correct
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`copy of the foregoing PATENT OWNER’S MOTION TO EXCLUDE was
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`served, via electronic mail upon the following counsel for Petitioner US
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`Endodontics, LLC:
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`Jeffrey S. Ginsberg, Esq.
`Abhishek Bapna, Esq.
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036-6710
`Phone: 212-336-2630
`Facsimile: 212-336-1270
`Emails: jginsberg@pbwt.com
`abapna@pbwt.com
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`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
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