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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 MOTION TO EXCLUDE EVIDENCE
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`PUBLIC VERSION
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`Proceeding No.: IPR2019-00880
`Attorney Docket: 11030-0052IP1
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`Exhibits 2003 and 2009 Contain Inadmissible Hearsay ....................... 1
`i.
`Ethicon Relies on Out of Court Statements for Their Truth ......... 1
`ii. Ethicon Failed to Provide a Foundation for the “Business
`Record” Exception ...................................................................... 2
`iii. The Hearsay Exhibits Lack Circumstantial Guarantees of
`Trustworthiness ........................................................................... 4
`Exhibits 2003-2007 and Appendices 1-2 of Exhibit 2009 Are
`Unauthenticated ..................................................................................... 5
`Ethicon’s Evidence Does Not Demonstrate That
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`Have Direct Knowledge as to the Alleged Prototype ....... 10
`Ethicon’s Video Exhibits 2013-2015 Violate the Board’s Rules ....... 11
`D.
`III. CONCLUSION .............................................................................................. 12
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`B.
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`C.
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`Proceeding No.: IPR2019-00880
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`INTRODUCTION
`Intuitive moves to exclude, in whole or in part, Exhibits 2003-2007, 2009 and
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`I.
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`2013-2015. Ethicon submitted these exhibits with the Patent Owner Response
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`(Paper 15) as part of an attempt to antedate its own prior patent filings. Intuitive
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`raised several timely objections (Paper 18), yet Ethicon took no curative action.
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`Ethicon instead chose to proceed with unsupplemented, inadmissible evidence.
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`Ethicon should be held to its choice, and the Board should exclude the objected-to
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`portions of Exhibits 2003-2007, 2009 and 2013-2015.
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`II. ARGUMENT
`A.
`Exhibits 2003 and 2009 Contain Inadmissible Hearsay
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`Ethicon Relies on Out of Court Statements for Their Truth
`i.
`The table below catalogs the specific statements in Exhibit 2003 and
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`Appendices 1-2 of Exhibit 2009 (the Hearsay Exhibits) that constitute hearsay. See
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`FRE 801. These out-of-court statements lack relevance outside of their truthfulness
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`and, thus, have no “non-hearsay” purpose.
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`ii.
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`Ethicon Failed to Provide a Foundation for the “Business
`Record” Exception
`Ethicon has not established the Hearsay Exhibits as admissible business
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`records for multiple reasons. First, Ethicon failed to provide pertinent testimony
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`from an independent “custodian or qualified witness.” FRE 806(6)(D). The ’749
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`Patent’s inventors, who themselves rely on the Hearsay Exhibits, do not fit the bill.
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`See Chen v. Bouchard, 347 F.3d 1299, 1308 (Fed. Cir. 2003) (affirming the Board’s
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`exclusion of lab notebooks as hearsay lacking a business-record exception in view
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`of “circular testimony” from an inventor that the notebooks were intended to
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`corroborate).
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`; see also United States v. Wables, 731 F.2d 440, 449 (7th Cir.
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`1984) (“It is clear that, in admitting documents under the business records exception
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`to the hearsay rule, the testimony of the custodian or otherwise qualified witness
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`who can explain the record-keeping of his organization is ordinarily essential.”).
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`Second, it is not clear from the testimony of
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`that the Hearsay Exhibits were “kept in the course of a regularly conducted activity
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`of [Ethicon’s] business.” FRE 806(6)(B).
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`Ex. 2008, ¶2; Ex. 2009, ¶3; see Chen, 347 F.3d at 1308 (noting “the lack of evidence
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`of [the proponents’] policies regarding maintenance of laboratory notebooks” in
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`rationale affirming the Board’s hearsay exclusion).
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`Third, even setting aside the insufficient foundation testimony, the Hearsay
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`Exhibits themselves do not bear indicia that would suggest they are legitimate
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`business records.
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` The Hearsay Exhibits have no such indicia, and this stark contrast
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`undermines any contention by Ethicon that they were kept in the ordinary course of
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`business. FRE 806(6)(B).
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`iii.
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`The Hearsay Exhibits Lack Circumstantial Guarantees of
`Trustworthiness
`In “truly exceptional cases,” a hearsay statement that does not qualify for a
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`specific exception may still be admissible if it “is supported by sufficient guarantees
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`of trustworthiness.” Pozen Inc. v. Par Pharm., Inc., 696 F.3d 1151, 1161 n.6 (Fed.
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`Cir. 2012) (quoting United States v. Walker, 410 F.3d 754, 757 (5th Cir. 2005); FRE
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`807(a)(1). But this case is not exceptional, and the present circumstances raise
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`concerns about trustworthiness, not guarantees.
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`1 Even if Exhibits 2004-2006 were found to qualify for the hearsay exception under
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`FRE 803(6), which Intuitive does not concede, they are still inadmissible for lack of
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`authentication, as discussed infra at Section II.B.
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`Despite Intuitive’s objections, Ethicon did not serve the native files from which the
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`Hearsay Exhibits were derived. Nor did Ethicon’s witnesses explain (i) how the
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`native files were maintained
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`and (ii) whether the files were secured against editing during that time.
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`Ethicon is attempting to swear behind the overlapping disclosures of its own earlier-
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`filed applications further counsels towards scrutinizing the Hearsay Exhibits, and
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`not reflexively granting them trust.
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`B.
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`Exhibits 2003-2007 and Appendices 1-2 of Exhibit 2009 Are
`Unauthenticated
`Authentication is “a condition precedent to admitting evidence.” United
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`States v. Sliker, 751 F.2d 477, 497 (2d Cir. 1984). “To satisfy the requirement of
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`authenticating or identifying an item of evidence, the proponent must produce
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`evidence sufficient to support a finding that the item is what the proponent claims it
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`is.” FRE 901(a). Ethicon provides no such evidence in support of Exhibits 2003-
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`2007 and Appendices 1-2 of Exhibit 2009 (the Unauthenticated Exhibits), and they
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`should be excluded as a consequence.
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`The following table summarizes the relevant testimony from each of
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`Ethicon’s declarants addressing the Unauthenticated Exhibits.
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`Proceeding No.: IPR2019-00880
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`The testimony cataloged above does not sufficiently establish that the
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`Unauthenticated Exhibits are what they are purported to be. FRE 901(a). To start,
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`the declarants do not state that the Unauthenticated Exhibits are true and correct
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`copies of the electronic documents they represent, as those documents existed at the
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`specific dates attributed to them. This alone warrants exclusion. And certain of the
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`Unauthenticated Exhibits have even more glaring flaws.
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`Moreover, several of the Unauthenticated Exhibits—namely Exhibits 2003,
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`2004, 2007, and Appendices 1-2 of Exhibit 2009—should be excluded as a result of
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`Ethicon’s refusal to sponsor them through an independent witness. The testimony
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`of
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`rely on it as corroboration. Ethicon cannot have it both ways. Other panels,
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`recognizing as much, have granted motions to exclude when the only sponsoring
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`testimony is that of an interested party seeking corroboration by the same evidence.
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`See Microsoft Corp. v. Surfcast, Inc., IPR2013-00292 Paper 93 at 52 (PTAB Oct.
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`14, 2014) (“The testimony of an interested party, such as Mr. Santoro and Dr. Bone,
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`is not sufficient to authenticate a document offered for purposes of corroboration.”);
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`Neste Oil Oyj v. REG Synthetic Fuels, LLC, IPR2013-00578, Paper 52 at 3-5 (PTAB
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`March 12, 2015) (“Specifically, because REG relies on these exhibits to corroborate
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`the testimony of Mr. Abhari, in an attempt to prove invention prior to the Dindi prior
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`art reference, independent evidence of authenticity is required[.]”), aff’d-in-part,
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`rev’d-in-part and vacated-in-part on other grounds, REG Synthetic Fuels, LLC v.
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`Neste Oil Oyj, 841 F.3d 954, 965 (Fed. Cir. 2016); Horton v. Stevens, 7 U.S.P.Q.2d
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`1245, 1988 WL 252359 at *4 (BPAI Mar. 8, 1988) (confirming that independent
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`evidence of authenticity is required); see also White v. Habenstein, 219 U.S.P.Q.
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`1213, 1983 WL 50193 at *7 (BPAI May 11, 1983) (same).
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`Ethicon’s swear-behind case depends on Exhibits 2003-2007 and Appendices
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`1-2 of Exhibit 2009. Even so, and despite Intuitive's objections, Ethicon did not
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`bother to authenticate them. Exclusion is both appropriate and warranted.
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`C.
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`Ethicon’s Evidence Does Not Demonstrate That
` Have Direct Knowledge as to the Alleged Prototype
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` This is a critical
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`—inadmissible under
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`gap in their testimony that renders it—
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`Federal Rule of Evidence 602.
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`The rule states that “[a] [non-expert] witness may testify to a matter only if
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`evidence is introduced sufficient to support a finding that the witness has personal
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`knowledge of the matter.” FRE 602. While it is permissible for such evidence to
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`come from the witness’s own testimony, neither
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`provide as much. The generic catch-all that “the statements in this declaration are
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`based on my personal knowledge”
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` may suffice in some
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`cases, but it is not “sufficient” under FRE 602 in this case given the circumstances.
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`As discussed,
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` are interested parties attempting
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`to establish an earlier invention date
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`, which has been
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`asserted in litigation against Intuitive. Moreover,
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`, and it is difficult to understand—because it has not been
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`explained—how
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`device among multiple other prototypes.
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`D.
`Ethicon’s Video Exhibits 2013-2015 Violate the Board’s Rules
`The Board’s rules are clear: “Uncompelled direct testimony must be
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`submitted in the form of an affidavit.” 37 C.F.R. 42.53(a). “Parties may agree to
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`video-recorded testimony, but may not submit such testimony without prior
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`authorization of the Board.” Id. Ethicon did not abide these rules.
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`Ethicon’s Exhibits 2013-2015 contain the uncompelled direct testimony of its
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`expert, Dr. Awtar. Intuitive did not agree to Ethicon’s introduction of video-
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`recorded testimony, and Ethicon did not obtain prior authorization from the Board
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`before submitting such testimony into the record. Moreover, it is not clear that Dr.
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`Awtar’s testimony in these videos was taken under oath; yet another violation of the
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`Board’s rules. See 37 C.F.R. 42.53(a)(f) (“Before giving deposition testimony, each
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`witness shall be duly sworn according to law by the officer before whom the
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`deposition is to be taken.”). The appropriate remedy is to exclude these improper
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`exhibits. See 37 C.F.R. 42.5 (“The Board may determine a proper course of conduct
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`in a proceeding for any situation not specifically covered by this part[.]”).
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`III. CONCLUSION
`For the foregoing reasons, Intuitive requests that the evidence discussed above
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`be excluded.
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`Dated: June 12, 2020
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`(Control No. IPR2019-00880)
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`Respectfully submitted,
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`/Joshua A. Griswold/
`Joshua A. Griswold, Reg. No. 46,310
`Steven R. Katz, Reg. No. 43,706
`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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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on June 12,
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`2020, a complete and entire copy of this Petitioner’s Motion to Exclude was provided
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`via email, to the Patent Owner by serving the email correspondence addresses of
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`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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`Ethicon.IPR.Service@weil.com
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`Email:
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`/Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
` 3200 RBC Plaza
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`60 South Sixth Street
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`Minneapolis, MN 55402
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`(650) 839-5092
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