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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTUITIVE SURGICAL, INC.
`Petitioner
`v.
`ETHICON LLC
`Patent Owner
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`Case IPR2018-00934
`Patent 8,998,058
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`PETITIONER’S OBJECTIONS TO EVIDENCE
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`Proceeding No. IPR2018-00934
`Attorney docket No. 11030-0049IP2
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner, Intuitive Surgical, Inc.
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`(“Petitioner”), hereby submits its notice of objections to certain evidence that
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`Patent Owner, Ethicon LLC (“Patent Owner”), submitted with its Patent Owner
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`Preliminary Response dated September 10, 2018, in connection with IPR2018-
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`00934. These objections are being submitted within ten business days of the
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`Institution Decision.
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`Petitioner objects to Exhibit No. 2003 (Excerpts from Technology Tutorial
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`filed in Ethicon LLC, et al. v. Intuitive Surgical, Inc., et al., C.A. No. 17-871 (LPS)
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`(CJB) (District of Delaware)). Exhibit 2003 is a set of demonstrative slides that
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`appears to contain excerpts from documents that are not cited and not part of this
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`record as well as attorney arguments regarding the same. As such, Exhibit 2003 is
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`not evidence, but rather an improper attempt to submit incomplete and unidentified
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`documentary evidence along with additional attorney arguments that are not
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`included in Patent Owner’s Preliminary Response. See St. Jude Medical,
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`Cardiology Division, Inc. v. The Board of Regents of the University of Michigan,
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`Case No. IPR2013-00041, slip op. at 2-3 (PTAB Jan. 27, 2014) (Paper 65)
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`(explaining that demonstrative exhibits are not evidence and that demonstrative
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`exhibits are not an opportunity for additional briefing). Thus, the bases for
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`objecting to this exhibit include the following Federal Rules of Evidence:
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`1
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`Proceeding No. IPR2018-00934
`Attorney docket No. 11030-0049IP2
`FRE 801, 802 & 803: Hearsay. Petitioner objects to Exhibit 2003 as
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`inadmissible hearsay to the extent Patent Owner intends to offer this Exhibit
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`for the truth of the matters asserted, including the attorneys’ arguments
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`regarding alleged facts to which they have no first-hand knowledge.
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`FRE 401 & 402: General Admissibility of Relevant Evidence.
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`Petitioner objects to Exhibit 2003 as irrelevant to the extent it concerns a
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`proceeding involving patents not at issue here. Furthermore, Exhibit 2003
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`has not been shown to be a recognized authority for any of the subject matter
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`contained therein.
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`FRE 106 & 403: Remainder of or Related Writings or Recorded
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`Statements and Excluding Relevant Evidence for Prejudice, Confusion,
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`Waste of Time, or Other Reasons. To the extent Exhibit 2003 is deemed to
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`be relevant, Petitioner objects to Exhibit 2003 because it: (1) concerns a
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`litigation involving unrelated patents; (2) appears to contains excerpts of
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`documents that are not part of this record; (3) is itself a partial document;
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`and (4) contains unsupported attorney arguments. Thus, the probative value
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`of Exhibit 2003 (if any), would be substantially outweighed by the dangers
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`of unfair prejudice, wasting time, and confusing the issues.
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`2
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`Proceeding No. IPR2018-00934
`Attorney docket No. 11030-0049IP2
`Respectfully submitted,
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`/John C. Phillips/
`John C. Phillips
`Reg. No. 35,322
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 858-678-4304
`Email: phillips@fr.com
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`Dated: December 20, 2018
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`3
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`Proceeding No. IPR2018-00934
`Attorney docket No. 11030-0049IP2
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on December 20, 2018, a complete and entire copy of this
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`Petitioner’s Objections to Evidence was provided via email to the Patent Owner
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`by serving the email correspondence addresses of record as follows:
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`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Robert S. Magee
`Adrian Percer
`Christopher T. Marando
`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
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`Email:
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` Ethicon.IPR.Service@weil.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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