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 REPLY IN SUPPORT OF ITS 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 REPLY IN SUPPORT OF ITS MOTION
`TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(C)
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`PAGE
`1
`
`I.
`
`EXHIBIT 2034 ................................................................................................ 1
`EXHIBIT 2034 .............................................................................................. ..1
`
`II.
`
`EXHIBIT 2035 ................................................................................................ 3
`EXHIBIT 2035 .............................................................................................. ..3
`
`III. EXHIBIT 2036 ................................................................................................ 4
`III.
`EXHIBIT 2036 .............................................................................................. ..4
`
`IV. EXHIBIT 2038 ................................................................................................ 4
`IV.
`EXHIBIT 2038 .............................................................................................. ..4
`
`V.
`
`EXHIBIT 2047 ................................................................................................ 5
`EXHIBIT 2047 .............................................................................................. ..5
`
`
`
`i
`
`
`
`I.
`
`EXHIBIT 2034
`
`A.
`
`Patent Owner’s Untimely Citation of Alleged Relevant Evidence
`
`In its response to this motion, Patent Owner cites pages 372-405 of Exhibit
`
`2034 for the first time in this proceeding. The Board should disregard such
`
`untimely identified “evidence.”
`
`B.
`
`Lack of Authentication
`
`To the extent Patent Owner argues that 37 C.F.R. § 42.61(b) obviates the
`
`need for its evidence to comply with FRE 902, it is incorrect. Since Patent Owner
`
`seeks to rely on a declaration from Luebke and accompanying report from KMT
`
`included in Exhibit 2034 for the truth of the matters asserted therein, it should have
`
`submitted declarations from Luebke, BodyCote, and KMT. See Gnosis S.p.A. v. S.
`
`Ala. Med. Sci. Found., IPR2013-00118, Paper 64, at *21, n.12 (P.T.A.B. June 20,
`
`2014) (“The patent [cited by Dr. Gregory] is admissible, however, only as evidence
`
`of what it describes. 37 C.F.R. § 42.61(c). To the extent the ’381 patent includes
`
`data upon which SAMSF relies to prove the truth of the data, Dr. Gregory’s
`
`declaration is insufficient to authenticate the data. . . .”).The fact that such hearsay-
`
`containing documents were submitted during the prosecution of a later-filed
`
`application does not transform them into admissible evidence.
`
`Patent Owner did not submit a declaration from BodyCote regarding: (1) the
`
`identity of the samples, i.e., brand and model, it allegedly obtained and heated; (2)
`
`1
`
`
`
`whether such samples were in sealed, packaged containers, indicating that they had
`
`not been previously handled; (3) whether it heated the samples at 300°C for 24
`
`hours; and (4) to whom it sent the samples after heating.
`
`Patent Owner also did not submit a declaration from KMT regarding: (1)
`
`whether the report contained in Exhibit A to Luebke’s declaration is a true and
`
`correct copy of a declaration allegedly prepared by it; (2) the identity of the
`
`samples, i.e., brand and model, it allegedly obtained and bend-tested; (3) whether it
`
`received the samples directly from BodyCote; and (4) whether the samples it
`
`allegedly bend-tested were ones that BodyCote heated at 300°C for 24 hours.
`
`Patent Owner argues that Exhibit A is self-authenticating under FRE 902(7),
`
`but cites two cases that are inapposite. In Alexander, the Sixth Circuit affirmed the
`
`district court’s refusal to consider unauthenticated documents submitted by
`
`appellant Alexander, except for one document on appellee CareSource’s letterhead,
`
`which was found to be self-authenticating. Alexander v. CareSource, 576 F.3d 551,
`
`561 (6th Cir. 2009). In other words, where one party submitted a document
`
`generated on the letterhead of the opposing party, the court found it to be self-
`
`authenticating. Similarly, in Reitz v. Mt. Juliet, the court declined to consider
`
`unauthenticated documents, but made an exception with respect to documents
`
`attached by plaintiff Reitz that were on the letterhead of defendant City of Mt.
`
`Juliet. Reitz v. Mt. Juliet, No. 3:08-cv-0728, 2009 WL 5170200, at *5 n.7 (M.D.
`
`2
`
`
`
`Tenn. Dec. 18, 2009). In such cases, there is less of a concern of forgery or
`
`falsification. In contrast, the KMT document on which Patent Owner seeks to rely
`
`neither was produced by Petitioner nor is on Petitioner’s letterhead.
`
`C.
`
`Inadmissible Hearsay
`
`Patent Owner appears to concede that the objected-to portions of Exhibit
`
`2034 contain hearsay. Patent Owner is incorrect that “there are circumstantial
`
`guarantees of trustworthiness associated with submitting a declaration with the
`
`PTO.” Luebke has a substantial financial stake in this outcome of these
`
`proceedings. See Paper 31, p. 8. His potential to “receive millions of dollars more”
`
`in royalties calls into question his self-serving statements. Id. at 9. Patent Owner’s
`
`argument that Exhibit 2034 is more probative “than any other evidence” is belied
`
`by the fact that it makes no representation of having made “reasonable efforts”—as
`
`required by FRE 807—to submit declarations from Luebke, BodyCote, or KMT.
`
`II. EXHIBIT 2035
`
`As set forth above, the Alexander and Reitz cases upon which Patent Owner
`
`relies do not support its argument regarding self-authentication. Patent Owner also
`
`appears to concede that Exhibit 2035 contains hearsay. Patent Owner’s argument
`
`that Exhibit 2035 is more probative “than any other evidence” is belied by the fact
`
`that it makes no representation of having made “reasonable efforts”—as required
`
`by FRE 807—to submit declarations from Kowalski or Jason Nolan. Further,
`
`3
`
`
`
`nothing in Exhibit 2035 indicates any relation between the samples allegedly
`
`heated by Kowalski and the files tested by Kuhn.
`
`III. EXHIBIT 2036
`
`Again, the Alexander and Reitz cases upon which Patent Owner relies do not
`
`support its argument regarding self-authentication. Patent Owner also appears to
`
`concede that Exhibit 2036 contains hearsay. Patent Owner’s argument that Exhibit
`
`2036 is more probative “than any other evidence” is belied by the fact that it makes
`
`no representation of having made “reasonable efforts”—as required by FRE 807—
`
`to submit a declaration from KMT. Further, nothing in Exhibit 2036 indicates that
`
`the files allegedly tested by KMT were the same files as the ones alleged heated by
`
`Kowalski at 400°C in a salt bath for 10 minutes.
`
`IV. EXHIBIT 2038
`
`Patent Owner is incorrect that “Mr. Bennett’s statements in the email are not
`
`hearsay under FRE 801(d)(2).” Mr. Bennett’s statements were not made in his
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`individual capacity or as a representative of Petitioner, but as a representative of
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`non-party D&S Dental. Indeed, the e-mail is dated prior to the formation of
`
`Petitioner. Patent Owner also appears to concede that the statements are hearsay. It
`
`argues that “Petitioner had an opportunity to cross-examine Dr. Luebke on his
`
`statements in Ex. 2038, but declined to do so.” Patent Owner has it backwards.
`
`Patent Owner, which is owned by Luebke, could have submitted a declaration from
`
`4
`
`
`
`Luebke in this proceeding, but chose not to. Thus, Petitioner could not cross-
`
`examine him without satisfying the relatively high hurdle of showing that such
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`discovery was “necessary in the interest of justice.” 35 U.S.C. ¶ 316(a)(5)(B).
`
`V. EXHIBIT 2047
`
`Patent Owner does not, and cannot, argue that the objected-to portions of Dr.
`
`Goldberg’s cross-examination testimony is within the scope of his direct testimony
`
`in his supplemental declaration, Exhibit 1041, which consists of merely ten
`
`paragraphs discussing the supplemental bend-testing commissioned by Petitioner
`
`and conducted by Innovative Test Solutions (“ITS”). In the objected-to portions,
`
`Patent Owner did not question Dr. Goldberg about such testing. Patent Owner also
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`misleadingly and incorrectly states that Petitioner “concedes that the testimony in
`
`these portions of the transcript is relevant to the issues of this trial.” First, 37 C.F.R
`
`§ 42.53(d)(5)(ii) provides ample basis to exclude such portions of the transcript.
`
`Second, Petitioner specifically argued the irrelevance of the portions of Exhibit
`
`2047 upon which Patent Owner submitted Observations on Cross-Examination.
`
`See Paper 45.
`
`
`Dated: October 7, 2016
`
`
`
`Respectfully submitted,
`
`/Jeffrey S. Ginsberg/
`
`
`
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`Abhishek Bapna (Reg. No. 64,049)
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036-6710
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on October 7,
`
`2016, the foregoing PETITIONER’S REPLY IN SUPPORT OF ITS MOTION
`
`TO EXCLUDE EVIDENCE UNDER 37 C.F.R. § 42.64(C) was served via
`
`electronic 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., Ste. 800
`Washington, DC 20005
`
`
`
`/Abhishek Bapna/
`
`
`Abhishek Bapna (Reg. No. 64,049)
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