UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENOME & COMPANY,
`Petitioner,
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`v.
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`THE UNIVERSITY OF CHICAGO,
`Patent Owner.
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`––––––––––––––
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`PGR2019-00002
`Patent 9,855,302 B2
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`––––––––––––––
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`PATENT OWNER’S OBJECTIONS TO REPLY EVIDENCE
`UNDER 37 C.F.R. § 42.64(b)(1)
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`––––––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––
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`GENOME & COMPANY,
`Petitioner,
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`v.
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`THE UNIVERSITY OF CHICAGO,
`Patent Owner.
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`––––––––––––––
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`PGR2019-00002
`Patent 9,855,302 B2
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`––––––––––––––
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`PATENT OWNER’S OBJECTIONS TO REPLY EVIDENCE
`UNDER 37 C.F.R. § 42.64(b)(1)
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`PGR2019-00002
`U.S. Patent No. 9,855,302 B2
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`Patent Owner’s Objections to Evidence
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`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence
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`(“FRE”), as applied by the Patent Trial and Appeal Board pursuant to 37
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`C.F.R. § 42.62, Patent Owner submits the following objections to evidence
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`filed by Petitioner with its Reply (Paper 23). These objections are timely filed
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`within five (5) business days of the due date of the Reply (November 11,
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`2019).
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`Patent Owner reserves the right to present further objections to this or
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`additional evidence submitted by Petitioner, as allowed by the applicable rules
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`or other authority, including without limitation upon conclusion of cross-
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`examination of Dr. Jonathan Braun.
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`Exhibit 1041 (Fares)
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`Exhibit 1041 is inadmissible under FRE 401 and 402 for lack of
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`relevance. Exhibit 1041 recites “published at ascopubs.org on May 17, 2019”
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`(Ex. 1041 at 1, left-hand margin) and includes the year “2019” in its footer.
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`Thus, Exhibit 1041 indicates that it was not available until 2019, which is after
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`the effective filing date in this case. Exhibit 1041 also lacks relevance because
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`Petitioner does not cite this Exhibit in its Reply. Patent Owner objected to the
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`introduction of this exhibit during Dr. Mani’s deposition. Ex. 1042, 37:18–
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`38:13.
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`1
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`U.S. Patent No. 9,855,302 B2
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`Exhibit 1043 (Reply Declaration of Dr. Braun)
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`Patent Owner’s Objections to Evidence
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`Exhibit 1043 is inadmissible to the extent it is relied upon as evidence
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`of the truth of the matters asserted therein, because it is hearsay under FRE
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`802 and does not meet the standard for an expert to rely on hearsay under FRE
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`702 and 703. For example, at least the following paragraphs of Exhibit 1043
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`mirror the Reply nearly verbatim:
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`Exhibit 1043
`¶¶ 41, 43–44
`¶¶ 57–63
`¶¶ 64–66
`¶¶ 72–77
`¶¶ 78–83
`¶¶ 84–85, 87–89
`¶¶ 90–92
`¶¶ 93–98
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`Duplicated from Reply pages
`10–11
`12–13 (Section II.B.2)
`13–15 (Section II.B.3)
`15–17 (Section II.B.4)
`18–19, 21 (Section III.A)
`21–24 (Section III.B)
`24–25 (Section III.B.1)
`25–27 (Section III.C)
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`Although an expert may rely on hearsay in certain circumstances, “[a]n
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`expert who simply repeats the hearsay of the client who retained him, without
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`any independent investigation or analysis, does not assist the trier of fact in
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`understanding matters
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`that require specialized knowledge”—in such
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`circumstances, the expert’s testimony does not qualify for an exception. Arista
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`Records LLC v. Usenet.com, Inc., 608 F. Supp. 2d 409, 424–29 (S.D.N.Y.
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`2009) (excluding portions of an expert’s testimony under FRE 702 where the
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`expert did not investigate facts himself and merely restated the views of the
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`2
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`U.S. Patent No. 9,855,302 B2
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`party hiring him). In other words, an expert relying on hearsay may not
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`Patent Owner’s Objections to Evidence
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`“simply transmit that hearsay” to the factfinder and instead “must form his
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`own opinions by applying his extensive experience and reliable methodology
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`to the inadmissible materials,” as “simply repeating hearsay evidence without
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`applying any expertise whatsoever . . . allows [a party] to circumvent the rules
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`prohibiting hearsay.” United States v. Mejia, 545 F.3d 179, 197–98 (2nd Cir.
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`2008) (internal quotation marks and citations omitted). Therefore, the
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`statements of Dr. Braun’s Reply Declaration (Exhibit 1043) that mirror the
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`Reply should be excluded as inadmissible hearsay.
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`Exhibit 1043 is also inadmissible to the extent it is relied upon as expert
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`witness testimony because it does not satisfy the requirements of FRE 702.
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`For example, Dr. Braun’s statements that are verbatim recitations of the
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`Reply’s arguments are attorney argument and do not provide “scientific,
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`technical, or other specialized knowledge [that] will help the trier of fact to
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`understand the evidence or to determine a fact in issue” as required by FRE
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`702(a), and they are not “the product of reliable principles and methods” as
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`required by FRE 702(c). Thus, Dr. Braun’s reply declaration testimony is
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`inadmissible under FRE 702.
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`In addition, at least paragraphs 1–9, 14, 20–22, 57–58, 63–64, 72, 77–
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`3
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`U.S. Patent No. 9,855,302 B2
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`78, 81, 84, 87, 93–94, and 99 of Exhibit 1043 are inadmissible under FRE 401
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`Patent Owner’s Objections to Evidence
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`and 402 because they lack relevance to this proceeding, as the Reply does not
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`refer to or cite these paragraphs.
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`The following paragraphs of Exhibit 1043 are also inadmissible
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`because, as cited in the Reply, they constitute an improper circumvention of
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`the word count limit: paragraphs 23–30 (465 words), which are cited together
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`in the Reply at 9, note 6; paragraphs 31–42 (750 words), which are cited
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`together in the Reply at 10, note 7; paragraphs 45–51 (442 words), which are
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`cited together in the Reply at 11; and paragraphs 67–71 (317 words), which
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`are cited together in the Reply at 15. These paragraphs are cited with little or
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`no explanation in the Reply and are therefore incorporations-by-reference in
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`violation of 37 C.F.R. § 42.6(a)(3). See Cisco Systems, Inc. v. C-Cation
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`Techs., LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12, 7–10)
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`(informative) (“we will not consider arguments that are not made in the
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`Petition, but are instead incorporated by reference to the cited paragraphs [of
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`the expert declaration]”). The passages thus incorporated total 1,974 words,
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`which, when combined with the Reply certified word count of 5,457 (Reply
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`29) causes the Reply to exceed the word limit of 5,600 words (37 C.F.R. §
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`42.24(c)(1)) by 1,831 words, or 33% of the allowed limit.
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`4
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`U.S. Patent No. 9,855,302 B2
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`Exhibit 1044 (Sánchez)
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`Patent Owner’s Objections to Evidence
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`Exhibit 1044 is inadmissible under FRE 401 and 402 for lack of
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`relevance. Exhibit 1044 recites “Volume 2015” in its first-page header and
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`“Copyright © 2015” on the first page. Petitioner has not provided any
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`evidence showing that Exhibit 1044 was available as a printed publication
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`before the effective filing date in this case.
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`Exhibits 1046 (Dunn), 1047 (Blanco), 1052 (Boopathy), 1053
`(Bouhnik), 1056 (Brook), 1057 (Weber), 1058 (Cheroutre)
`Exhibits 1046, 1047, 1052, 1053, 1056, 1057, and 1058 each are
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`inadmissible under FRE 401 and 402 for lack of relevance. As listed in the
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`following table, Petitioner cites each of these exhibits generally, without
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`identifying the particular part of each document relied upon as evidence. Each
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`of these documents is over 1,000 words in length (several over 10,000 words
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`in length), such that the relevance of each to this proceeding is not readily
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`ascertainable without undue burden on the Patent Owner and the Board.
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`Exhibit Page cited in Reply
`1046
`10, 11
`1047
`11
`1052
`18
`1053
`18
`1056
`24
`1057
`24
`1058
`27
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`Length
`16,867 words
`10,792 words
`3,812 words
`4,668 words
`3,620 words
`1,499 words
`13,513 words
`Total 54,771 words
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`5
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`U.S. Patent No. 9,855,302 B2
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`Patent Owner’s Objections to Evidence
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`Each of these exhibits is also inadmissible for being incorporations-by-
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`reference disallowed under 37 C.F.R. § 42.6(a)(3). By not identifying which
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`parts of these documents it relies upon, Petitioner in effect forces Patent
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`Owner and the Board to sift through an additional 60,000+ words to locate
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`portions, if any, that relate to Petitioner’s Reply arguments.
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`Exhibit 1045 (Ridaura)
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`Exhibit 1045 is inadmissible under FRE 401 and 402 for lack of
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`relevance. Petitioner does not cite this Exhibit in its Reply.
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`Exhibit 1057 (Weber)
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`Exhibit 1057 is inadmissible under FRE 401 and 402 for lack of
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`relevance, as Petitioner has not provided any evidence that Exhibit 1057 was
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`available as a printed publication before the effective filing date. Exhibit 1057
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`recites “CID 2015:61 (1 August)” in its footer, “1 August” in its first-page
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`header, and “2015” and “© The Author 2015” at the end. The date August 1,
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`2015 is after the effective filing date in this case.
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`Exhibit 1059 (Schultz Declaration)
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`Exhibit 1059 is inadmissible under FRE 401 and 402 for lack of
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`relevance. Petitioner does not cite this Exhibit in its Reply.
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`6
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`U.S. Patent No. 9,855,302 B2
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`Ex. 2005 as relied upon in the Reply
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`Patent Owner’s Objections to Evidence
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`Exhibit 2005, as relied upon in the Reply at 9–10, is inadmissible under
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`FRE 401 and 402 for lack of relevance. Petitioner cites Exhibit 2005 as
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`relevant to what a person of ordinary skill in the art would have concluded
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`(Reply at 10, note 7) but has not presented evidence that Exhibit 2005 predates
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`the effective filing date. Exhibit 2005 includes a “DEC 08 2015” date stamp
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`on its cover page, the date “27 NOVEMBER 2015” on its Contents page and
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`footer, and the text “Published online 5 November 2015” on page 1084—all
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`of these dates are after the effective filing date.
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`7
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`PGR2019-00002
`U.S. Patent No. 9,855,302 B2
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`Dated: November 18, 2019
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`Patent Owner’s Objections to Evidence
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`Respectfully submitted,
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` /Scott E. Kamholz/
`Scott E. Kamholz, Reg. No. 48,543
`Covington & Burling LLP
`One CityCenter
`850 Tenth Street, NW
`Washington, DC 20001
`Phone: (202) 662-5339
`Fax: (202) 778-5339
`
`Jennifer L. Robbins, Reg. No. 61,163
`Covington & Burling LLP
`The New York Times Building
`620 Eighth Ave
`New York, NY 10018
`Phone: (212) 841-1180
`Fax: (646) 441-9180
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`Counsel for Patent Owner
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`8
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`U.S. Patent No. 9,855,302 B2
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`Patent Owner’s Objections to Evidence
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I certify that on the date listed below, a
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`copy of this paper and every exhibit (if any) filed with this paper was served
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`on the Petitioner by electronic mail to the following counsel of record for
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`Petitioner:
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`John A. Bauer (john.bauer@nelsonmullins.com)
`Kongsik Kim (kongsik.kim@nelsonmullins.com)
`Jane Remillard (jane.remillard@nelsonmullins.com)
`Amy Mandragouras (amy.mandragouras@nelsonmullins.com)
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`Dated: November 18, 2019
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` /Scott E. Kamholz/
`Scott E. Kamholz, Reg. No. 48,543
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