`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`
`v.
`
`
`ETHICON LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-00934
`U.S. Patent No. 8,998,058
`
`
`
`
`PATENT OWNER’S OBJECTIONS TO DOCUMENTS SERVED WITH
`PETITIONER’S REPLY AND PETITIONER’S OPPOSITION TO PATENT
`OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b), Patent Owner Ethicon LLC hereby makes
`
`the following objections to the admissibility of documents submitted with
`
`Petitioner’s Reply and Petitioner’s Opposition to Patent Owner’s Contingent Motion
`
`to Amend.
`
`Evidence
`IS1029
`
`IS1030
`
`Objections
`FRE 401/402/403: This exhibit is not relevant at least
`because it is not cited in Petitioner’s Opposition to Patent
`Owner’s Motion to Amend and any probative value is
`substantially outweighed by the danger of unfair prejudice,
`confusing the issues, undue delay, and wasting time.
`
`FRE 801/802: This exhibit is an out of court statement
`offered for its truth, and because it does not fall within any
`exception to the rule against hearsay, it is inadmissible
`hearsay.
`
`FRE 901: Petitioner has not produced evidence sufficient
`to support a finding that the exhibit is what Petitioner
`claims it is.
`FRE 105: To the extent that any portion of this exhibit
`may be deemed admissible, such admissibility should be
`for a limited purpose.
`
`FRE 401/402/403: Paragraphs 37, 51-53, 74-76, 78, 82-
`85, 88-106, 108-110, 112, 116-118, 125, 130-131, and
`136-156 are not relevant at least because they are not cited
`in Petitioner’s Reply or in Petitioner’s Opposition to
`Patent Owner’s Contingent Motion to Amend, and any
`probative value of these sections is substantially
`outweighed by the danger of unfair prejudice, confusing
`the issues, undue delay, and wasting time.
`
`FRE 602: As to at least paragraphs 12-36, 38-74, 76-77,
`79-83, 86, 98-99, 104-107, 109-111, 113-115, 122-123,
`130-137, 140-141, 150, and 154-156, the exhibit includes
`
`
`
`
`
`1
`
`
`
`Evidence
`
`Objections
`assertions for which evidence has not been introduced
`sufficient to show that the witness has personal knowledge
`of the matters asserted.
`
`FRE 701/702/703: Paragraphs 12-156 are improper expert
`testimony because the exhibit declarant is not qualified to
`opine on what a person of ordinary skill in the art would
`understand, to opine on patent claim limitations, to
`perform claim construction, and/or to perform legal
`analysis of invalidity. The opinion testimony offered in
`this exhibit is not based on scientific, technical, or other
`specialized knowledge, and is also not based on personal
`knowledge. The opinion testimony includes
`unsubstantiated leaps and advances inaccurate, unqualified
`generalizations. The opinion testimony fails to properly
`disclose the underlying facts or data on which the opinion
`is based. The opinion testimony includes testimony on
`United States patent law and/or patent examination
`practice. These paragraphs include opinions that are not
`admissible under FRE 701, 702, or 703 or Daubert v.
`Merrell Dow Pharms, Inc., 509 U.S. 579 (1993).
`
`For example, paragraphs 12-25 are based on the
`conclusory opinion that Patent Owner’s proposed
`constructions of the original claims of the ’677 Patent are
`inconsistent with the plain language of the claims and the
`specification of the patent.
`
`As another example, paragraphs 41-50 are based on the
`conclusory opinion that a POSITA would have had a
`reasonable expectation of success in combining Viola and
`Heinrich in light of Young.
`
`FRE 705 and/or 37 C.F.R. § 42.65: This exhibit includes
`expert testimony that does not disclose the underlying
`facts or data.
`
`
`
`
`
`
`2
`
`
`
`Evidence
`
`
`
`
`
`
`Dated: June 18, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`Objections
`FRE 802: The entirety of the exhibit is inadmissible
`hearsay if offered to prove the truth of any matter
`allegedly asserted therein.
`
`
`
`
`
`Respectfully submitted,
`
`/Anish R. Desai/
`Anish R. Desai (Reg. No. 73,760)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8000
`anish.desai@weil.com
`
`
`
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that on June 18, 2019, the foregoing
`
`PATENT OWNER’S OBJECTIONS TO DOCUMENTS SERVED WITH
`
`PETITIONER’S REPLY AND PETITIONER’S OPPOSITION TO PATENT
`
`OWNER’S CONTINGENT MOTION TO AMEND was served via electronic
`
`mail, upon the following:
`
`
`
`
`
`
`
`
`
`
`
`
`John C. Phillips
`Steven R. Katz
`Ryan P. O’Connor
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`phillips@fr.com
`katz@fr.com
`oconnor@fr.com
`
`
`IPR11030-0049IP2@fr.com
`PTABInbound@fr.com
`
`
`
`
` /Timothy J. Andersen/ a
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`2001 M Street, NW, Suite 600
`Washington, DC 20036
`timothy.andersen@weil.com
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
