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Served on behalf of: Gold Standard Instruments, LLC Paper ____
`
`By:
`
`Date filed: September 20, 2016
`
`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
`_______________
`
`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
`_______________
`
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`

`
`Case PGR2015-00019
`Patent 8,876,991 B2
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`I.
`
`Introduction
`
`Pursuant to 37 C.F.R. § 42.64(c), Patent Owner Gold Standard Instruments,
`
`LLC (“Patent Owner”) moves to exclude Exhibits 1005, 1006, 1016, 1017, 1020,
`
`1021, 1025, 1034, 1036, and 1038.
`
`II. Exhibit 1005
`
`
`
`Ex. 1005 is a Ph.D. thesis by Satish B. Alapati. Petitioner relied on Ex. 1005
`
`on pages 5 and 6 of its Petition (Paper 1) and on page 10 of its Reply (Paper 31).
`
`Patent Owner objected to Ex. 1005 (1) under Fed. R. Evid. 401–403 as irrelevant
`
`to the instituted grounds, (2) under Fed. R. Evid. 801 as improper hearsay for
`
`which Petitioner has not established any exception, and (3) under Fed. R. Evid. 901
`
`for lack of authentication. Paper 19. Petitioner has not cured these objections.
`
`First, Ex. 1005 is not prior art to US 8,876,991 (“the ’991 patent”) and not
`
`part of any instituted ground. Thus, it should be excluded because it is not relevant
`
`to the proceeding. Second, it should be excluded because it is hearsay, not subject
`
`to any exception. Petitioner improperly relied on Ex. 1005 for the truth of the
`
`matter asserted in the document. Petitioner has not cited to any hearsay exception,
`
`and none applies. Here, Petitioner has not presented the testimony of any
`
`2
`
`

`
`Case PGR2015-00019
`Patent 8,876,991 B2
`individual having first-hand knowledge of the statements and/or experiments
`
`described in Ex. 1005. Finally, for the same reasons, Ex. 1005 should be excluded
`
`for lack of authentication. Petitioner has not presented any evidence of public
`
`availability for Ex. 1005. Petitioner also did not serve supplemental evidence to
`
`address Patent Owner’s objections, such as providing evidence of cataloguing or
`
`other indexing.
`
`III. Exhibit 1006
`
`
`
`Ex. 1006 is an article by Pelton et al. Petitioner relied on Ex. 1006 on
`
`pages 6, 10, 42, 65, 68, and 71 of its Petition (Paper 1) and on page 10 of its Reply
`
`(Paper 31). In Paper 19, Patent Owner objected to Ex. 1006 under Fed. R. Evid.
`
`401–403 as irrelevant to the grounds upon which trial has been instituted.
`
`Petitioner has not and cannot cure these objections. In this trial, no ground relies
`
`upon Ex. 1006. Thus, Ex. 1006 should be excluded because it is not relevant to this
`
`proceeding.
`
`IV. Exhibit 1016
`
`
`
`Ex. 1016 is an article by Schäfer et al. Petitioner relied on Ex. 1016 on
`
`pages 36 and 63 of its Petition (Paper 1). Patent Owner objected to Ex. 1016 under
`
`Fed. R. Evid. 401–403 as irrelevant to the grounds upon which trial has been
`
`instituted. Paper 19. Petitioner has not cured this objection. Nor can it. Ex. 1016 is
`
`3
`
`

`
`Case PGR2015-00019
`Patent 8,876,991 B2
`not part of any instituted ground in this trial. Thus, it should be excluded because it
`
`is not relevant.
`
`V. Exhibit 1017
`
`
`
`Ex. 1017 is an article by Testarelli et al. Petitioner relied on Ex. 1017 on
`
`pages 36 and 63 of its Petition (Paper 1). Patent Owner objected to Ex. 1017 under
`
`Fed. R. Evid. 401–403 as irrelevant to the instituted grounds. Paper 19. Petitioner
`
`has not served supplemental evidence addressing these objections, nor can it.
`
`Ex. 1017 is not prior art to the ’991 patent and not part of any instituted ground.
`
`Thus, it should be excluded because it is not relevant to this proceeding.
`
`VI. Exhibit 1020
`
`
`
`Ex. 1020 is another article by Pelton et al. Petitioner relied on Ex. 1020 on
`
`page 44 of its Petition (Paper 1) and on page 14 of its Reply (Paper 31). Patent
`
`Owner objected to Ex. 1020 under Fed. R. Evid. 401–403 as irrelevant to the
`
`grounds upon which trial has been instituted. Paper 19. Petitioner cannot cure these
`
`objections. Ex. 1020 is not part of any instituted ground. Thus, it should be
`
`excluded because it is not relevant to this proceeding.
`
`VII. Exhibit 1021
`
`
`
`Ex. 1021 is an article by Miyazaki et al. Petitioner relied on Ex. 1021 on
`
`page 44 of its Petition (Paper 1) and on page 14 of its Reply (Paper 31). Patent
`
`Owner objected to Ex. 1021 under Fed. R. Evid. 401–403 as irrelevant to the
`
`4
`
`

`
`Case PGR2015-00019
`Patent 8,876,991 B2
`grounds upon which trial has been instituted. Paper 19. Petitioner has not cured this
`
`objection, nor can it. Here, Ex. 1021 is not part of any instituted ground. Thus, it
`
`should be excluded because it is not relevant to the proceeding.
`
`VIII. Exhibit 1025
`
`
`
`Ex. 1025 is U.S. Patent Application Publication No. 2006/0115786 A1 to
`
`Matsutani et al. Petitioner relied on Ex. 1025 on pages 54–58 of its Petition
`
`(Paper 1). Patent Owner objected to Ex. 1025 under Fed. R. Evid. 401–403 as
`
`irrelevant to the grounds upon which trial has been instituted. Paper 19. Petitioner
`
`cannot cure this objection. Ex. 1025 is not prior art to the ’991 patent, nor is it part
`
`of any instituted ground. As such, it should be excluded because it is not relevant to
`
`this proceeding.
`
`IX. Exhibit 1034
`
`
`
`Ex. 1034 is an article by Bahia. Petitioner relied on Ex. 1034 on page 60 of
`
`its Petition (Paper 1). Patent Owner objected to Ex. 1034 under Fed. R. Evid. 401–
`
`403 as irrelevant to the grounds upon which trial has been instituted. Paper 19.
`
`Petitioner has not cured this objection, nor can it. Ex. 1034 is not prior art to
`
`the ’991 patent and is not part of any instituted ground. Thus, it should be excluded
`
`because it is not relevant to this proceeding.
`
`5
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`

`
`X. Exhibit 1036
`
`Case PGR2015-00019
`Patent 8,876,991 B2
`
`
`
`Ex. 1036 is an article by Drexel et al. Petitioner relied on Ex. 1036 on
`
`page 14 of its Reply (Paper 31). Patent Owner objected to Ex. 1036 under Fed. R.
`
`Evid. 401–403 as irrelevant to the grounds upon which trial has been instituted.
`
`Paper 19. Petitioner has not, and cannot, cure this objection. Ex. 1036 is not prior
`
`art to the ’991 patent and not part of any instituted ground. Thus, it should be
`
`excluded because it is not relevant to this proceeding.
`
`XI. Exhibit 1038
`
`
`
`Ex. 1038 is an article by Brantley et al. Petitioner relied on Ex. 1038 on
`
`pages 36 and 60 of its Petition (Paper 1). Patent Owner objected to Ex. 1038 under
`
`Fed. R. Evid. 401–403 as irrelevant to the grounds upon which trial has been
`
`instituted. Paper 19. Petitioner cannot cure this objection. Ex. 1038 is not part of
`
`any instituted ground. As such, it should be excluded because it is not relevant to
`
`this proceeding.
`
`XII. Conclusion
`
`Based on the foregoing, the Board should exclude Exhibits 1005, 1006,
`
`1016, 1017, 1020, 1021, 1025, 1034, 1036, and 1038.
`
`6
`
`

`
`Case PGR2015-00019
`Patent 8,876,991 B2
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: / Joseph A. Hynds /
`
`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
`
`
`
`
`
`
`
`
`
`Dated: September 20, 2016
`
`
`
`
`
`7
`
`

`
`CERTIFICATE OF SERVICE
`
`Case PGR2015-00019
`Patent 8,876,991 B2
`
`I hereby certify that on this 20th day of September 2016, a true and correct
`
`copy of the foregoing PATENT OWNER’S MOTION TO EXCLUDE was
`
`served, via electronic mail upon the following counsel for Petitioner US
`
`Endodontics, LLC:
`
`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
`
`
`
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
`
`
`
`
`
`
`
`
`
`1

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