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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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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 IPR2019-00880
`Patent 7,490,749
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`PETITIONER’S OBJECTIONS TO EVIDENCE
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` 
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`

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`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
`
`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 Patent
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`Owner, Ethicon LLC (“Patent Owner”), served on January 14, 2020 in connection
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`with IPR2019-00880.
`
`No. Objections
`2001 FRE 401/402/403: Ex. 2001 is not cited in Ethicon’s Patent Owner
`Response and, therefore, lacks sufficient relevance to outweigh the
`confusion and prejudice it introduces.
`
`FRE 801/802: The statements made in Ex. 2001, as relied upon in Ex.
`2008, are inadmissible hearsay. Each relied upon statement is represented
`as being made outside of this proceeding and is offered “for its truth” as to
`the alleged activities. Because Ethicon has not identified any applicable
`hearsay exception for the relied upon statements, Ex. 2001 constitutes
`inadmissible hearsay.
`
`FRE 901: Exhibit 2001 is inadmissible for lack of proper authentication,
`because: (1) the exhibit is not self-authenticating; and (2) Ethicon has failed
`to produce legally sufficient evidence to support a finding that the exhibit is
`what Ethicon claims it is.
`
`FRE 105: To the extent Exhibit 2001 is admitted, its use should be
`restricted to the purpose for which it was originally submitted.
`
`1
`
`

`

`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
`
` 
`No. Objections
`2002 FRE 801/802: The statements made in Ex. 2002, as relied upon in
`Ethicon’s Patent Owner Response, Ex. 2008, Ex. 2009, and Ex. 2017, are
`inadmissible hearsay. Each relied upon statement is represented as being
`made outside of this proceeding and is offered “for its truth” as to the
`alleged activities. Because Ethicon has not identified any applicable
`hearsay exception for the relied upon statements, Ex. 2002 constitutes
`inadmissible hearsay.
`
`FRE 901: Exhibit 2002 is inadmissible for lack of proper authentication,
`because: (1) the exhibit is not self-authenticating; and (2) Ethicon has failed
`to produce legally sufficient evidence to support a finding that the exhibit is
`what Ethicon claims it is.
`
`FRE 105: To the extent Exhibit 2002 is admitted, its use should be
`restricted to the purpose for which it was originally submitted.
`2003 FRE 801/802: The statements made in Ex. 2003, as relied upon in
`Ethicon’s Patent Owner Response, Ex. 2008, and Ex. 2009, are
`inadmissible hearsay. Each relied upon statement is represented as being
`made outside of this proceeding and is offered “for its truth” as to the
`alleged activities. Because Ethicon has not identified any applicable
`hearsay exception for the relied upon statements, Ex. 2003 constitutes
`inadmissible hearsay.
`
`FRE 901: Exhibit 2003 is inadmissible for lack of proper authentication,
`because: (1) the exhibit is not self-authenticating; and (2) Ethicon has failed
`to produce legally sufficient evidence to support a finding that the exhibit is
`what Ethicon claims it is.
`
`FRE 105: To the extent Exhibit 2003 is admitted, its use should be
`restricted to the purpose for which it was originally submitted.
`
`2
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`

`

`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
`
` 
`No. Objections
`2004 FRE 401/402/403: Ex. 2004 is not cited in Ethicon’s Patent Owner
`Response and, therefore, lacks sufficient relevance to outweigh the
`confusion and prejudice it introduces.
`
`FRE 801/802: The statements made in Ex. 2004, as relied upon in Ex.
`2008, are inadmissible hearsay. Each relied upon statement is represented
`as being made outside of this proceeding and is offered “for its truth” as to
`the alleged activities. Because Ethicon has not identified any applicable
`hearsay exception for the relied upon statements, Ex. 2004 constitutes
`inadmissible hearsay.
`
`FRE 901: Exhibit 2004 is inadmissible for lack of proper authentication,
`because: (1) the exhibit is not self-authenticating; and (2) Ethicon has failed
`to produce legally sufficient evidence to support a finding that the exhibit is
`what Ethicon claims it is.
`
`FRE 105: To the extent Exhibit 2004 is admitted, its use should be
`restricted to the purpose for which it was originally submitted.
`2005 FRE 401/402/403: Ex. 2005 is not cited in Ethicon’s Patent Owner
`Response and, therefore, lacks sufficient relevance to outweigh the
`confusion and prejudice it introduces.
`
`FRE 801/802: The statements made in Ex. 2005, as relied upon in Ex.
`2017, are inadmissible hearsay. Each relied upon statement is represented
`as being made outside of this proceeding and is offered “for its truth” as to
`the alleged activities. Because Ethicon has not identified any applicable
`hearsay exception for the relied upon statements, Ex. 2005 constitutes
`inadmissible hearsay.
`
`FRE 901: Exhibit 2005 is inadmissible for lack of proper authentication,
`because: (1) the exhibit is not self-authenticating; and (2) Ethicon has failed
`to produce legally sufficient evidence to support a finding that the exhibit is
`what Ethicon claims it is.
`
`FRE 105: To the extent Exhibit 2005 is admitted, its use should be
`restricted to the purpose for which it was originally submitted.
`
`3
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`

`

`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
`
` 
`No. Objections
`2006 FRE 401/402/403: Ex. 2006 is not cited in Ethicon’s Patent Owner
`Response and, therefore, lacks sufficient relevance to outweigh the
`confusion and prejudice it introduces.
`
`FRE 801/802: The statements made in Ex. 2006, as relied upon in Ex.
`2017, are inadmissible hearsay. Each relied upon statement is represented
`as being made outside of this proceeding and is offered “for its truth” as to
`the alleged activities. Because Ethicon has not identified any applicable
`hearsay exception for the relied upon statements, Ex. 2006 constitutes
`inadmissible hearsay.
`
`FRE 901: Exhibit 2006 is inadmissible for lack of proper authentication,
`because: (1) the exhibit is not self-authenticating; and (2) Ethicon has failed
`to produce legally sufficient evidence to support a finding that the exhibit is
`what Ethicon claims it is.
`
`FRE 105: To the extent Exhibit 2006 is admitted, its use should be
`restricted to the purpose for which it was originally submitted.
`2007 FRE 801/802: The statements made in Ex. 2007, as relied upon in Ex.
`2017, are inadmissible hearsay. Each relied upon statement is represented
`as being made outside of this proceeding and is offered “for its truth” as to
`the alleged activities. Because Ethicon has not identified any applicable
`hearsay exception for the relied upon statements, Ex. 2007 constitutes
`inadmissible hearsay.
`
`FRE 901: Exhibit 2007 is inadmissible for lack of proper authentication,
`because: (1) the exhibit is not self-authenticating; and (2) Ethicon has failed
`to produce legally sufficient evidence to support a finding that the exhibit is
`what Ethicon claims it is.
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`FRE 105: To the extent Exhibit 2007 is admitted, its use should be
`restricted to the purpose for which it was originally submitted.
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`4
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`

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`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
`
` 
`No. Objections
`2008 FRE 401/402/403: At least Paragraphs 5-20 and Footnotes 1-3 are
`inadmissible because the risk of prejudice and confusion introduced by the
`testimony advanced in them outweighs any probative value.
`
`FRE 602/701: At least Paragraphs 5-20 and Footnotes 1-3 are inadmissible
`for lack of foundation; it has not been established that the declarant is
`competent to testify to the facts alleged. As just one example, Footnote 1
`purports to describe certain regular practices, but it has not been established
`(by the declarant’s testimony or otherwise) that the declarant is versed in
`these practices. At least Paragraphs 5-20 and Footnotes 1-3 are
`inadmissible because the testimony advanced in them is speculative; the
`declarant does not have first-hand knowledge of the facts alleged. Turning
`again to the example of Footnote 1, it has not been established (by the
`declarant’s testimony or otherwise) that the declarant had personal
`knowledge of the purported regular practices as of the relevant time period.
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`FRE 801/802: Testimony throughout Ex. 2008 recites statements made
`outside of this proceeding (e.g., via citation to Exs. 2001-2004) and offers
`those statements “for their truth” as to the alleged activities. Ethicon has
`not identified any applicable hearsay exception. This testimony therefore
`constitutes inadmissible hearsay.
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`5
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`

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`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
`
` 
`No. Objections
`2009 FRE 401/402/403: At least Paragraphs 4, 6-21 and Footnotes 2-3 are
`inadmissible because the risk of prejudice and confusion introduced by the
`testimony advanced in them outweighs any probative value.
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`FRE 602/701: At least Paragraphs 4, 6-21 and Footnotes 2-3 are
`inadmissible for lack of foundation; it has not been established that the
`declarant is competent to testify to the facts alleged. As just one example,
`Footnote 2 purports to describe certain regular practices, but it has not been
`established (by the declarant’s testimony or otherwise) that the declarant is
`versed in these practices. At least Paragraphs 4, 6-21 and Footnotes 2-3 are
`inadmissible because the testimony advanced in them is speculative; the
`declarant does not have first-hand knowledge of the facts alleged. Turning
`again to the example of Footnote 2, it has not been established (by the
`declarant’s testimony or otherwise) that the declarant had personal
`knowledge of the purported regular practices as of the relevant time period.
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`FRE 801/802: Testimony throughout Ex. 2009 recites statements made
`outside of this proceeding (e.g., via citation to Exs. 2002, 2002, 2007) and
`offers those statements “for their truth” as to the alleged activities. Ethicon
`has not identified any applicable hearsay exception. This testimony
`therefore constitutes inadmissible hearsay.
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`6
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`

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`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
`
` 
`No. Objections
`2013 FRE 401/402/403: Ex. 2013 is inadmissible because the risk of prejudice
`and confusion introduced by the declarant’s video testimony outweighs any
`probative value.
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`FRE 602/701: Ex. 2013 is inadmissible because the declarant’s video
`testimony lacks foundation; it has not been established that the declarant is
`competent to testify to facts concerning the alleged activities. Ex. 2013 is
`also inadmissible because the declarant’s video testimony is speculative;
`the declarant does not have first-hand knowledge of facts concerning the
`alleged activities.
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`37 C.F.R. 42.53(a)/42.2: Ex. 2013 is inadmissible because it offers
`improper direct testimony; the exhibit is not an affidavit, an ex parte
`deposition transcript, or a declaration. The parties did not agree to video-
`recorded testimony, and Ethicon did not obtain prior authorization from the
`Board to submit video-recorded testimony.
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`37 C.F.R. 42.53(d)(1)/(3)/(5): Ex 2013 is inadmissible to the extent it
`constitutes a deposition (elicitation of testimony other than by affidavit or
`declaration) without proper notice.
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`37 C.F.R. 42.53(f): Ex 2013 is inadmissible to the extent it constitutes a
`deposition (elicitation of testimony other than by affidavit or declaration)
`where the witness was not sworn by an officer authorized to take testimony
`under 35 U.S.C. 23.
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`7
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`

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`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
`
` 
`No. Objections
`2014 FRE 401-403: Ex. 2014 is inadmissible because the risk of prejudice and
`confusion introduced by the declarant’s video testimony outweighs any
`probative value.
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`FRE 602/701: Ex. 2014 is inadmissible because the declarant’s video
`testimony lacks foundation; it has not been established that the declarant is
`competent to testify to facts concerning the alleged activities. Ex. 2014 is
`also inadmissible because the declarant’s video testimony is speculative;
`the declarant does not have first-hand knowledge of facts concerning the
`alleged activities.
`
`37 C.F.R. 42.53(a)/42.2: Ex. 2014 is inadmissible because it offers
`improper direct testimony; the exhibit is not an affidavit, an ex parte
`deposition transcript, or a declaration. The parties did not agree to video-
`recorded testimony, and Ethicon did not obtain prior authorization from the
`Board to submit video-recorded testimony.
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`37 C.F.R. 42.53(d)(1)/(3)/(5): Ex 2014 is inadmissible to the extent it
`constitutes a deposition (elicitation of testimony other than by affidavit or
`declaration) without proper notice.
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`37 C.F.R. 42.53(f): Ex 2014 is inadmissible to the extent it constitutes a
`deposition (elicitation of testimony other than by affidavit or declaration)
`where the witness was not sworn by an officer authorized to take testimony
`under 35 U.S.C. 23.
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`8
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`

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`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
`
` 
`No. Objections
`2015 FRE 401-403: Ex. 2015 is inadmissible because the risk of prejudice and
`confusion introduced by the declarant’s video testimony outweighs any
`probative value.
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`FRE 602/701: Ex. 2015 is inadmissible because the declarant’s video
`testimony lacks foundation; it has not been established that the declarant is
`competent to testify to facts concerning the alleged activities. Ex. 2015 is
`also inadmissible because the declarant’s video testimony is speculative;
`the declarant does not have first-hand knowledge of facts concerning the
`alleged activities.
`
`37 C.F.R. 42.53(a)/42.2: Ex. 2015 is inadmissible because it offers
`improper direct testimony; the exhibit is not an affidavit, an ex parte
`deposition transcript, or a declaration. The parties did not agree to video-
`recorded testimony, and Ethicon did not obtain prior authorization from the
`Board to submit video-recorded testimony.
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`37 C.F.R. 42.53(d)(1)/(3)/(5): Ex 2015 is inadmissible to the extent it
`constitutes a deposition (elicitation of testimony other than by affidavit or
`declaration) without proper notice.
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`37 C.F.R. 42.53(f): Ex 2015 is inadmissible to the extent it constitutes a
`deposition (elicitation of testimony other than by affidavit or declaration)
`where the witness was not sworn by an officer authorized to take testimony
`under 35 U.S.C. 23.
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`9
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`

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`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
`
` 
`No. Objections
`2017 FRE 401-403: At least Paragraphs 3-11 and Footnote 1 are inadmissible
`because the risk of prejudice and confusion introduced by the testimony
`advanced in them outweighs any probative value.
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`FRE 602/701: At least Paragraphs 3-11 and Footnote 1 are inadmissible for
`lack of foundation; it has not been established that the declarant is
`competent to testify to the facts alleged. As just one example, Footnote 1
`purports to describe a certain system, but it has not been established (by the
`declarant’s testimony or otherwise) that the declarant is versed as to the
`particulars of that system. At least Paragraphs 3-11 and Footnote 1 are
`inadmissible because the testimony advanced in them is speculative; the
`declarant does not have first-hand knowledge of the facts alleged. Turning
`again to the example of Footnote 1, it has not been established (by the
`declarant’s testimony or otherwise) that the declarant had personal
`knowledge of relevant particulars about the system.
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`FRE 801/802: Testimony throughout Ex. 2017 recites statements made
`outside of this proceeding (e.g., via citation to Exs. 2002, 2005, 2006) and
`offers those statements “for their truth” as to the alleged activities. Ethicon
`has not identified any applicable hearsay exception. This testimony
`therefore constitutes inadmissible hearsay.
`2019 FRE 602/701: At least Paragraphs 61, 67-83, 129 are inadmissible for lack
`of foundation; it has not been established that the declarant is competent to
`testify to facts concerning the alleged activities. At least Paragraphs 61,
`67-83, 129 are inadmissible because the testimony advanced in them is
`speculative; the declarant does not have first-hand knowledge of facts
`concerning the alleged activities.
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`FRE 702/703/705: The testimony offered throughout Exhibit 2019 (e.g., at
`least Paragraphs 22-46, 67-129) is inadmissible. The testimony is not
`sufficiently supported by the declarant’s scientific, technical, or other
`specialized knowledge. The testimony is not based on sufficient facts or
`data. The testimony is not the product of reliable principles and
`methods. And the testimony is not based on reliable application of such the
`principles and methods to the facts of the case.
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`
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`10
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`

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` 
`
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`Dated
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`January 22, 2020
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`(Control No. IPR2019-00880)
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`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
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`
`
`/Kenneth Wayne Darby Jr./
`
`Steven R. Katz, Reg. No. 43,706
`Joshua A. Griswold, Reg. No. 46,310
`Kenneth W. Darby, Jr., Reg. No. 65,068
`John C. Phillips, Reg. No. 35,322
`Ryan P. O’Connor, Reg. No. 60,254
`Fish & Richardson P.C.
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`Attorneys for Petitioner
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`11
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` 
`
`Proceeding No. IPR2019-00880
`Attorney Docket No. 11030-0052IP1 
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`
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`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 January 22, 2020, a complete and entire copy of Petitioner’s
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`Objections to Evidence were provided via email to the Patent Owner by serving the
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`email correspondence addresses of record as follows:
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`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Christopher T. Marando
`Christopher M. Pepe
`Kathryn M. Kantha
`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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`/Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(650) 839-5092
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`12
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