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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTUITIVE SURGICAL, INC.,
`Petitioner,
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`v.
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`ETHICON LLC,
`Patent Owner.
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`Case IPR2018-00935
`U.S. Patent No. 8,991,677
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`PATENT OWNER’S OBJECTIONS TO DOCUMENTS SERVED WITH
`PETITIONER’S REPLY AND PETITIONER’S OPPOSITION TO PATENT
`OWNER’S CONTINGENT MOTION TO AMEND
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`Pursuant to 37 C.F.R. § 42.64(b), Patent Owner Ethicon LLC hereby makes
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`the following objections to the admissibility of documents submitted with
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`Petitioner’s Reply and Petitioner’s Opposition to Patent Owner’s Contingent Motion
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`to Amend.
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`Evidence
`IS1029
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`IS1030
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`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.
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`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.
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`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.
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`FRE 401/402/403: Paragraphs 15-18, 25-32, 37, 51-53,
`75-76, 78, 82-85, 88-96, 98-106, 108-112, 116-130, 136-
`137, 148, and 150-153 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.
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`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
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`1
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`Evidence
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`Objections
`assertions for which evidence has not been introduced
`sufficient to show that the witness has personal knowledge
`of the matters asserted.
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`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).
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`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.
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`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.
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`FRE 705 and/or 37 C.F.R. § 42.65: This exhibit includes
`expert testimony that does not disclose the underlying
`facts or data.
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`Evidence
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`Dated: June 18, 2019
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`Objections
`FRE 802: The entirety of the exhibit is inadmissible
`hearsay if offered to prove the truth of any matter
`allegedly asserted therein.
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`Respectfully submitted,
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`/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
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on June 18, 2019, the foregoing
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`PATENT OWNER’S OBJECTIONS TO DOCUMENTS SERVED WITH
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`PETITIONER’S REPLY AND PETITIONER’S OPPOSITION TO PATENT
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`OWNER’S CONTINGENT MOTION TO AMEND was served via electronic
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`mail, upon the following:
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`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
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`IPR11030-0049IP3@fr.com
`PTABInbound@fr.com
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` /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
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`4
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