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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 REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION 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
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`Hearsay (FRE 801/803): Ethicon Confuses the Issues and Misapplies
`A.
`the Law
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` i.
`The Dates on Exhibits 2003 and 2009 Have No Relevance
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`Beyond Their Truth ............................................................................... 1
`ii. Authorship Alone Does Not Make
`“Qualified
`Witnesses” Under the Business Records Exception ............................. 2
`Authentication (FRE 901): Ethicon’s Attorney Argument Cannot
`B.
`Remedy Evidentiary Deficiencies ................................................................... 3
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`i.
`The Federal Circuit Has Upheld Exclusion of Evidence Where
`the Only Basis for Authentication Was Inventor Testimony ................. 3
`ii.
` Do Not Testify That the Documents Are What
`Ethicon Purports Them To Be ............................................................... 4
`Personal Knowledge (FRE 602): Ethicon’s Rhetorical Assertions
`C.
`Cannot Remedy a Critical Gap in
` Testimony .......................... 5
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`I.
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`Proceeding No.: IPR2019-00880; Attorney Docket: 11030-0052IP1
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`INTRODUCTION
`Ethicon’s Exhibits 2003-2007, 2009 and 2013-2015 should be excluded for
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`all the reasons set forth in Intuitive’s Motion to Exclude (Paper 35). The ineffective
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`arguments in Ethicon’s Opposition (Paper 39) cannot remedy the evidentiary
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`deficiencies Ethicon chose to leave uncured by supplemental evidence.
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`II. ARGUMENT
`A. Hearsay (FRE 801/803): Ethicon Confuses the Issues and Misapplies
`the Law
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`i.
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`The Dates on Exhibits 2003 and 2009 Have No Relevance
`Beyond Their Truth
`Ethicon claims that the dates in Exhibits 2003 and 2009 serve a non-hearsay
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`purpose. Opp., p. 3. They do not. Unlike the Seabery decision cited by Ethicon,
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`the present issue is not whether a prior art reference was made publically available.
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`See Opp., 3 (citing Seabery N. Am. Inc. v. Lincoln Glob., Inc., IPR2016-00840, Paper
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`60 at 5-6 (PTAB Oct. 2, 2017)). It is the alleged date of a reduction to practice that
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`matters in this case. In Seabery, the Panel found dates appearing in an exhibit to be
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`non-hearsay because they provided “circumstantial evidence of publication and
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`[were] not assertions that publication occurred on a date certain.” Seabery at 6
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`(emphasis added). In contrast, Ethicon asserts here that the dates in Exhibits 2003
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`and 2009 establish “
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` designed and built the prototype.” Opp., p.3
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`(emphasis added). By its own admission, Ethicon relies on the dates in question for
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`their truth. The dates are, therefore, hearsay.
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`Proceeding No.: IPR2019-00880; Attorney Docket: 11030-0052IP1
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`ii.
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` “Qualified
`Authorship Alone Does Not Make
`Witnesses” Under the Business Records Exception
`Ethicon argues: “As the creators of Ex. 2003 and Appendices 1 and 2 of Ex.
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`2009,
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` are clearly qualified [witnesses].” Opp., p.5. But no authority
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`supports the proposition that a document creator is necessarily a “qualified witness”
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`under FRE 803(6)(D). The relevant question is whether the witness “can explain the
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`record-keeping of his organization.” United States v. Wables, 731 F.2d 440, 449
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`(7th Cir. 1984). The Federal Circuit’s Conoco Inc. v. Dep’t of Energy decision cited
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`by Ethicon is not inconsistent with this approach. Opp., p.5 (citing 99 F.3d 387, 391
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`(Fed. Cir. 1996)). The Conoco decision relies on 7th Circuit precedent that holds a
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`“qualified witness” must “be someone with knowledge of the procedure governing
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`the creation and maintenance of the type of records sought to be admitted.” United
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`States v. Franco, 874 F.2d 1136, 1139 (7th Cir. 1989). Ethicon’s problem is that
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` do not even attempt to explain anything like a
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`“procedure” for “maintenance” of
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`They instead mimic the language of FRE 803(6)(C) in footnotes that vaguely
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`reference Ethicon’s “regular practices.” Notably absent is any discussion of what
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`those alleged practices entail.
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`Even if
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` were “qualified witnesses” (they are
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`not), their conclusory testimony does not establish that the files in question were
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`“kept in the course of a regularly conducted activity of [Ethicon].” FRE 803(6)(B).
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`For example,
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` do not explain how or where the files
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`were maintained over the last decade, per Ethicon’s alleged “regular practice.” Such
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`an explanation is not “irrelevant,” as Ethicon argues. Opp., p.6. It is a codified
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`condition of the business record exception.
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`B. Authentication (FRE 901): Ethicon’s Attorney Argument Cannot
`Remedy Evidentiary Deficiencies
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`i.
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`The Federal Circuit Has Upheld Exclusion of Evidence Where
`the Only Basis for Authentication Was Inventor Testimony
`According to Ethicon, “Petitioner has failed to cite a single district court or
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`Federal Circuit case to support [the] assertion” that an inventor’s testimony may be
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`insufficient to authenticate a document relied on to corroborate the same inventor’s
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`testimony. Opp., p.8. Not so. Intuitive’s Motion cited REG Synthetic Fuels, LLC
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`v. Neste Oil Oyj, a decision where the Federal Circuit affirmed the Board’s exclusion
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`of documents for lack of authentication. See 841 F.3d 954, 965 (Fed. Cir. 2016).
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`The Board’s reasoning was as follows:
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`“While normally, the testimony of Mr. Abhari—as a witness having
`personal knowledge of the documents—could be sufficient to ‘support
`a finding that the item is what the proponent claims it is,’ the context in
`which these exhibits are offered requires more. Specifically, because
`REG relies on these exhibits to corroborate the testimony of Mr.
`Abhari, in an attempt to prove invention prior to the Dindi prior art
`reference, independent evidence of authenticity is required: . . .”
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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); see also REG Synthetic Fuels, 841 F.3d at 965 (Fed. Cir. 2016)
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`(“We have considered REG’s remaining arguments and find no abuse of discretion
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`in the Board’s decision to exclude Exhibits 2003 and 2006 for lack of
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`authentication.”).
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`While the Federal Circuit did not expressly adopt the Board’s reasoning in
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`REG Synthetic Fuels, the decision demonstrates that it is not improper to weigh the
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`lack of independent evidence against a finding of authentication. After all, FRE 901
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`does not say that any and all witness testimony will support a finding that an item is
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`what the proponent claims. The testimony must be “sufficient,” and the Board is not
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`obligated to accept self-serving statements from an interested party as such.
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`ii.
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` Do Not Testify That the Documents Are What
`Ethicon Purports Them To Be
`Ethicon argues that “Petitioner has failed to provide any reason why the Board
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`should discount [] uncontested testimony” by
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` as to Exhibits 2003-2007
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`and 2009 (Appendices). Opp., p.11. This argument is moot. The Board does not
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`need to discount
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` testimony to find that it is facially insufficient.
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`Statements that
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`dates do not establish that Exhibits 2003-2007 and 2009 (Appendices) are true and
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`correct copies of those documents as they existed on those dates. Ethicon is not
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`entitled to an assumption that its evidence is authentic. This is especially true here,
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`where Ethicon’s explanation of maintenance and chain of custody is sparse. For
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`example, Appendix 1 to Exhibit 2009 shows
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`address this discrepancy, and thus provides no assurance that the file was left
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`unmodified in the intervening decade since its creation.
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`C.
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`Personal Knowledge (FRE 602): Ethicon’s Rhetorical Assertions
`Cannot Remedy a Critical Gap in
` Testimony
`Ethicon has no legitimate answer to the question at hand: How do
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` know the device in question is the same prototype
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`? Ethicon says, “
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` described in detail how they designed and tested the prototype.” Opp.,
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`p.14. But this is beside the point.
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` It is not enough for
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` to identify the device imaged and mapped to the ’749 Patent as one of
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`multiple prototypes
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`. It must be the prototype alleged
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`by Ethicon to establish a reduction to practice date
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`. This is what
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` and Ethicon do not
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`adequately address.
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`Dated: June 26, 2020
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`(Control No. IPR2019-00880)
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`Respectfully submitted,
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`/Joshua A. Griswold/
`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.
`Attorneys for Petitioner
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`Proceeding No.: IPR2019-00880; Attorney Docket: 11030-0052IP1
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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 26,
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`2020, a complete and entire copy of this Petitioner’s Reply To Patent Owner’s
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`Opposition To Petitioner’s Motion Exclude Evidence was provided via email, to the
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`Patent Owner by serving the 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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`Ethicon.IPR.Service@weil.com
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`Email:
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`/Christine Rogers/
`Christine Rogers
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`Fish & Richardson P.C.
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` 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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`7
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`PUBLIC VERSION
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