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
`
`
`
`
`
`
`PETITIONER’S MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(C)
`
`
`
`
`
`
`
`
`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 MOTION TO EXCLUDE
`EVIDENCE UNDER 37 C.F.R. § 42.64(C)
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
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`EXHIBIT 2034 IS INADMISSIBLE UNDER FRE 802, 805, AND
`901 ................................................................................................................... 1
`
`EXHIBIT 2035 IS INADMISSIBLE UNDER FRE 802, 805, AND
`901 ................................................................................................................... 3
`
`III. EXHIBIT 2036 IS INADMISSIBLE UNDER FRE 802 AND 901 ............... 4
`
`IV. EXHIBIT 2038 IS INADMISSIBLE UNDER FRE 802 ................................ 5
`
`V. A SUBSTANTIAL PORTION OF THE SEPTEMBER 12, 2016
`CROSS-EXAMINATION OF PETITIONER’S EXPERT DR.
`GOLDBERG IS INADMISSIBLE UNDER 37 C.F.R. 42.53(d)(5)(ii) .......... 6
`
`i
`
`
`
`Pursuant to 37 C.F.R. § 42.64(c) and the Order Modifying Scheduling Order
`
`(Paper 21), Petitioner US Endodontics, LLC (“Petitioner”) moves to exclude the
`
`following evidence submitted by Patent Owner Gold Standard Instruments, LLC
`
`(“Patent Owner”): (1) portions of Exhibit 2034; (2) Exhibits 2035, 2036, and 2038;
`
`and (3) portions of the transcript of the September 12, 2016 cross-examination of
`
`Petitioner’s expert, Dr. Goldberg, identified by Patent Owner in Paper 37 as
`
`Exhibit 2047. Petitioner’s objections apply the rules set forth in 37 C.F.R. Part 42
`
`and the Federal Rules of Evidence (“FRE”).
`
`I.
`
`EXHIBIT 2034 IS INADMISSIBLE UNDER FRE 802, 805, AND 901
`
`Exhibit 2034 is described by Patent Owner as “File History for U.S. Patent
`
`Application Serial No. 14/522,013.” Patent Owner relies on a portion of Exhibit
`
`2034 to state that “Dr. Luebke submitted information to the Patent Office
`
`demonstrating that a heat-treatment at 300°C resulted in a file that satisfies the
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`permanent deformation of the ’wherein‘ clause,” citing to Ex. 2034, pp. 43-64. See
`
`Paper 27, p. 4. Such pages do not appear to provide any support for Patent Owner’s
`
`assertion.
`
`To the extent Patent Owner meant to cite to a declaration executed by Neill
`
`H. Luebke (“Luebke”) on March 3, 2016, and submitted during the prosecution of
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`U.S. Patent Appl. Serial No. 14/522,013, one of Luebke’s later-filed applications
`
`not at issue in this proceeding, and to the extent that the Board is willing to
`
`1
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`
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`consider the same, Petitioner timely objected to the portions of Exhibit 2034 as
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`constituting inadmissible hearsay under FRE 802 and 805, and for lack of
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`authentication under FRE 901. See Paper 29, pp. 2-3.
`
`Luebke’s declaration constitutes inadmissible hearsay under FRE 802. No
`
`exceptions to the rule against hearsay are applicable to Luebke’s statements
`
`contained therein. Such declaration was not submitted in this proceeding and
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`Patent Owner offered no testimony, expert or otherwise, regarding the same.
`
`Exhibit A to Luebke’s declaration, a testing report purportedly prepared by
`
`Nick Chadd of Knight Mechanical Testing (“KMT”), also constitutes inadmissible
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`hearsay under FRE 802. No exceptions to the rule against hearsay are applicable to
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`Mr. Chadd’s or KMT’s statements therein. Patent Owner did not submit any
`
`testimony from Mr. Chadd or anyone at KMT in this proceeding. Further, the
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`reliance on, and citation to, the KMT report in the Luebke declaration creates a
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`classic hearsay-within-hearsay problem, making Exhibit A additionally
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`inadmissible under FRE 805.
`
`Exhibit A to Luebke’s declaration submitted during the prosecution of U.S.
`
`Patent Appl. Serial No. 14/522,013 is also inadmissible for lack of authentication
`
`under FRE 901. Patent Owner failed to lay the proper foundation to show that
`
`Exhibit A is a true and correct copy of a report prepared by KMT. There is no
`
`sworn testimony from Mr. Chadd or anyone else at KMT with personal knowledge
`
`2
`
`
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`to confirm this. Further, Patent Owner failed to lay the proper foundation to
`
`confirm the identification, authenticity, and chain of custody of the file samples
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`purportedly received and tested by KMT.
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`Accordingly, the portions of Exhibit 2034 relied upon by Patent Owner
`
`should be excluded.
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`II. EXHIBIT 2035 IS INADMISSIBLE UNDER FRE 802, 805, AND 901
`
`Exhibit 2035 is described by Patent Owner as “Kowalski Heat Treatment
`
`Company Certification, date [sic] January 15, 2016,” and purports to be a
`
`certification from Kowalski Heat Treatment Company (“Kowalski”), which
`
`contains an illegible “Approved by” signature from an unidentified individual
`
`dated January 15, 2016. Petitioner timely objected to Exhibit 2035 as constituting
`
`inadmissible hearsay under FRE 802 and 805, and for lack of authentication under
`
`FRE 901. See Paper 29, p. 3.
`
`Patent Owner relies on Exhibit 2035 in support of its assertion that “Patent
`
`Owner replicated the process described by Kuhn and heated the same file
`
`specimens as set forth in Kuhn,” specifically, that “files were heated at 400ºC in a
`
`salt bath for 10 minutes, [and] quenched in water.” Paper 27, pp. 5-6, 43.
`
`Exhibit 2035 constitutes inadmissible hearsay under FRE 802. No
`
`exceptions to the rule against hearsay are applicable to the statements therein.
`
`3
`
`
`
`The certification also mentions Jason Nolan’s “Process instructions.” No
`
`exceptions to the rule against hearsay are applicable to such statements by Nolan.
`
`Further, the reference to Nolan’s purported statements in Exhibit 2035 creates a
`
`classic hearsay-within-hearsay problem, making such statements further
`
`inadmissible under FRE 805.
`
`Exhibit 2035 is also inadmissible for lack of authentication under FRE 901.
`
`Patent Owner failed to lay the proper foundation to show that Exhibit 2035 is a true
`
`and correct copy of a certification from Kowalski. There is no sworn testimony
`
`from the unidentifiable individual who purportedly signed the certification, or
`
`anyone else at Kowalski with personal knowledge to confirm this. Further, Patent
`
`Owner failed to lay the proper foundation to confirm the identification,
`
`authenticity, and chain of custody of the “parts” purportedly received and annealed
`
`by Kowalski.
`
`Accordingly, Exhibit 2035 should be excluded.
`
`III. EXHIBIT 2036 IS INADMISSIBLE UNDER FRE 802 AND 901
`
`Exhibit 2036 is described by Patent Owner as “KMT ProFile Rotary File
`
`ISO 3630-1 Section 7.5 Testing Final Report, dated Jan [sic] 18, 2016,” and
`
`purports to be a testing report prepared by Nick Chadd of KMT. Petitioner timely
`
`objected to Exhibit 2036 as constituting inadmissible hearsay under FRE 802, and
`
`for lack of authentication under FRE 901. See Paper 29, p. 3.
`
`4
`
`
`
`Patent Owner relies on Exhibit 2036 in support of its assertion that “Patent
`
`Owner replicated the process described by Kuhn,” and that the files “did not
`
`exhibit greater than 10 degrees of permanent deformation as required by the claims
`
`of the ʼ991 patent.” Paper 27, pp. 5-6; see also id. at 43.
`
`Exhibit 2036 constitutes inadmissible hearsay under FRE 802. No
`
`exceptions to the rule against hearsay are applicable to Mr. Chadd’s or KMT’s
`
`statements therein.
`
`Exhibit 2036 is also inadmissible for lack of authentication under FRE 901.
`
`Patent Owner failed to lay the proper foundation to show that it is a true and
`
`correct copy of a report prepared by KMT. There is no sworn testimony from Mr.
`
`Chadd or anyone else at KMT with personal knowledge to confirm this. Further,
`
`Patent Owner failed to lay the proper foundation to confirm the identification,
`
`authenticity, and chain of custody of the file samples purportedly received and
`
`tested by KMT.
`
`Accordingly, Exhibit 2036 should be excluded.
`
`IV. EXHIBIT 2038 IS INADMISSIBLE UNDER FRE 802
`
`Exhibit 2038 is described by Patent Owner as “Email communications
`
`between Dr. Neill H. Luebke and Bobby Bennett, dated June 27, 2010 and July 6,
`
`2010.” Petitioner timely objected to Exhibit 2038 as inadmissible hearsay under
`
`FRE 802. See Paper 29, p. 1.
`
`5
`
`
`
`Patent Owner relies on Exhibit 2038 in support of its assertion that “Mr.
`
`Bennett engaged in licensing discussions with Luebke and sent Luebke a proposal
`
`for licensing his invention.” Paper 27, p. 13.
`
`Exhibit 2038 constitutes inadmissible hearsay under FRE 802. No exception
`
`to the rule against hearsay is applicable to Luebke’s and Bennett’s statements
`
`therein.
`
`Accordingly, Exhibit 2038 should be excluded.
`
`V. A SUBSTANTIAL PORTION OF THE SEPTEMBER 12, 2016
`CROSS-EXAMINATION OF PETITIONER’S EXPERT DR.
`GOLDBERG IS INADMISSIBLE UNDER 37 C.F.R. 42.53(d)(5)(ii)
`
`Petitioner’s expert, Dr. Goldberg, was cross-examined by Patent Owner for a
`
`second time in this proceeding on September 12, 2016. The transcript of this cross-
`
`examination is identified by Patent Owner in Paper 37 as Exhibit 2047. Petitioner
`
`moves to exclude the following portions of such transcript: 16:17-19:5; 27:21-
`
`31:22; 33:19-41:8; 41:15-59:10; 70:3-106:2; 127:17-186:10.
`
`By way of background, Petitioner submitted, along with its Petition in this
`
`proceeding, a declaration from its expert, Dr. Goldberg, discussing, inter alia, the
`
`results of testing commissioned by Petitioner that supports the grounds of
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`unpatentability relating to lack of enablement and lack of written description. See
`
`generally Ex. 1002. Patent Owner questioned Dr. Goldberg at length on the
`
`relevant issues in this proceeding in his first cross-examination, which took place
`
`6
`
`
`
`on April 20, 2016. See generally Ex. 2039. After Patent Owner raised, in its
`
`Response, arguments identifying alleged deficiencies in Petitioner’s testing,
`
`Petitioner submitted with its Reply, a short supplemental declaration of Dr.
`
`Goldberg consisting of ten paragraphs, the scope of which was limited to a
`
`discussion of supplemental testing commissioned by Petitioner to rebut such
`
`arguments by Patent Owner. See Ex. 1042. Patent Owner then requested Petitioner
`
`to make Dr. Goldberg available for cross-examination for the second time in this
`
`proceeding. Petitioner agreed, provided that the scope of Dr. Goldberg’s second
`
`cross-examination was limited to the scope of his supplemental declaration. The
`
`parties agreed, both prior to and during the cross-examination, that under 37 C.F.R.
`
`42.53(d)(5)(ii), the scope of cross-examination should be limited to the scope of
`
`direct testimony in Dr. Goldberg’s supplemental declaration. See, e.g., 9/12/16
`
`Dep. Tr. of A. Jon Goldberg, Ph.D. (identified by Patent Owner in Paper 37 as Ex.
`
`2047), 7:7-17.
`
`The vast majority Patent Owner’s cross-examination of Dr. Goldberg,
`
`however, went beyond the scope of Dr. Goldberg’s supplemental declaration.
`
`Petitioner timely objected to such lines of questioning during the cross-
`
`examination. On a conference call with the Board requested by the Petitioner at a
`
`break in the cross-examination, the Board noted Petitioner’s ability to file a motion
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`to exclude on this very issue. See id. at 123:20-124:24. Further, the parties agreed
`
`7
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`
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`that Petitioner may have a running objection under 37 C.F.R. § 42.53(d)(5)(ii) to
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`all such lines of questioning as outside the scope of Dr. Goldberg’s supplemental
`
`declaration, see, e.g., id. at 45:4-13, an approach that the Board found permissible,
`
`see id. at 125:12-23.
`
`Accordingly, the following portions of the transcript of Dr. Goldberg’s
`
`September 12, 2016 cross-examination (identified by Patent Owner in Paper 37 as
`
`Exhibit 2047) fall outside the scope of Dr. Goldberg’s supplemental declaration,
`
`and therefore, should be excluded: 16:17-19:5; 27:21-31:22; 33:19-41:8; 41:15-
`
`59:10; 70:3-106:2; 127:17-186:10.
`
`
`
`Dated: Sept. 20, 2016
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/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
`Telephone: (212) 336-2000
`
`8
`
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
`
`20, 2016, the foregoing PETITIONER’S MOTION TO EXCLUDE
`
`EVIDENCE UNDER 37 C.F.R. § 42.64(C) was served via electronic mail on the
`
`following counsel of record for Patent Owner:
`
`Joseph Hynds
`(jhynds@rothwellfigg.com)
`R. Elizabeth Brenner-Leifer
`(ebrenner@rothwellfigg.com)
`Steven Lieberman
`(slieberman@rothwellfigg.com)
`Jason Nolan
`(jnolan@rothwellfigg.com)
`Derek Dahlgren
`(ddahlgren@rothwellfigg.com)
`C. Nichole Gifford
`(ngifford@rothwellfigg.com)
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Ste. 800
`Washington, DC 20005
`
`
`
`/Abhishek Bapna/
`Abhishek Bapna (Reg. No. 64,049)
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