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,
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`v.
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`ETHICON LLC,
`Patent Owner.
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`Case IPR2019-00880
`U.S. Patent No. 7,490,749 B2
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`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`SERVED BY PETITIONER INTUITIVE SURGICAL, INC. IN INTER
`PARTES REVIEW
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`
`v.
`
`
`ETHICON LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2019-00880
`U.S. Patent No. 7,490,749 B2
`
`
`
`
`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
`SERVED BY PETITIONER INTUITIVE SURGICAL, INC. IN INTER
`PARTES REVIEW
`
`
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`
`
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`Pursuant to 37 C.F.R. § 42.64(b), Patent Owner Ethicon LLC, hereby objects
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`as follows to the admissibility of evidence filed by Petitioner Intuitive Surgical, Inc.
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`in Inter Partes review of U.S. Patent No. 7,490,749 (IPR2019-00880).
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`Evidence
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`Objections
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`Exhibit 1003
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`FRE 105: To the extent that any portion of this exhibit
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`may be deemed admissible, such admissibility should be
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`for a limited purpose.
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`FRE 403: The probative value of paragraphs 14-162 to
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`any ground upon which trial was instituted is substantially
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`outweighed by the danger of unfair prejudice, confusing
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`the issues, undue delay, wasting time, or needlessly
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`cumulative evidence.
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`FRE 602: As to at least paragraphs 14-24, 27-122, 132-
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`162, the exhibit includes assertions for which evidence has
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`not been introduced sufficient to show that the witness has
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`personal knowledge of the matters asserted.
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`FRE 701/702 and/or 37 C.F.R. § 42.65: As to at least
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`paragraphs 14-162, the exhibit declarant is not qualified to
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`opine on what a person of ordinary skill in the art would
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`understand, to opine on patent claim limitations, to
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`1
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`Evidence
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`Objections
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`perform claim construction, and/or to perform legal
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`analysis of invalidity. The opinion testimony offered in
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`this exhibit is not based on scientific, technical, or other
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`specialized knowledge, and is also not based on personal
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`knowledge. The opinion testimony includes
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`unsubstantiated leaps and advances inaccurate, unqualified
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`generalizations. The opinion testimony fails to properly
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`disclose the underlying facts or data on which the opinion
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`is based. The opinion testimony includes testimony on
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`United States patent law and/or patent examination
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`practice.
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`FRE 705 / 37 C.F.R. § 42.65: Exhibit includes expert
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`testimony that does not disclose the underlying facts or
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`data.
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`FRE 802: The entirety of the exhibit is inadmissible
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`hearsay if offered to prove the truth of any matter
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`allegedly asserted therein.
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`Exhibit 1007
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`FRE 402: The exhibit is not relevant to any ground upon
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`which trial was instituted.
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`2
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`Evidence
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`Objections
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`FRE 403: The exhibit’s probative value to any ground
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`upon which trial was instituted is substantially outweighed
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`by the danger of unfair prejudice, confusing the issues,
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`undue delay, wasting time, or needlessly cumulative
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`evidence.
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`Exhibit 1008
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`Lack of Foundation: Petitioner has not provided
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`sufficient explanation of what the exhibit is or what it
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`allegedly shows.
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`FRE 402: The exhibit is not relevant to any ground upon
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`which trial was instituted.
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`FRE 403: The exhibit’s probative value to any ground
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`upon which trial was instituted is substantially outweighed
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`by the danger of unfair prejudice, confusing the issues,
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`undue delay, wasting time, or needlessly cumulative
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`evidence.
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`FRE 802: The exhibit is inadmissible hearsay if offered to
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`prove the truth of any matter allegedly asserted therein.
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`FRE 805: The exhibit contains improper hearsay within
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`hearsay.
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`3
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`Evidence
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`Objections
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`FRE 901: Petitioner has not produced evidence sufficient
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`to support a finding that the exhibit is what Petitioner
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`claims it is.
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`Exhibit 1009
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`Lack of Foundation: Petitioner has not provided
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`sufficient explanation of what the exhibit is or what it
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`allegedly shows.
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`FRE 402: The exhibit is not relevant to any ground upon
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`which trial was instituted.
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`FRE 403: The exhibit’s probative value to any ground
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`upon which trial was instituted is substantially outweighed
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`by the danger of unfair prejudice, confusing the issues,
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`undue delay, wasting time, or needlessly cumulative
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`evidence.
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`FRE 802: The exhibit is inadmissible hearsay if offered to
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`prove the truth of any matter allegedly asserted therein.
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`FRE 805: The exhibit contains improper hearsay within
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`hearsay.
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`4
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`Evidence
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`Objections
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`FRE 901: Petitioner has not produced evidence sufficient
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`to support a finding that the exhibit is what Petitioner
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`claims it is.
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`Exhibit 1010
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`FRE 402: The exhibit is not relevant to any ground upon
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`which trial was instituted.
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`FRE 403: The exhibit’s probative value to any ground
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`upon which trial was instituted is substantially outweighed
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`by the danger of unfair prejudice, confusing the issues,
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`undue delay, wasting time, or needlessly cumulative
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`evidence.
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`Exhibit 1011
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`FRE 402: The exhibit is not relevant to any ground upon
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`which trial was instituted.
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`FRE 403: The exhibit’s probative value to any ground
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`upon which trial was instituted is substantially outweighed
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`by the danger of unfair prejudice, confusing the issues,
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`undue delay, wasting time, or needlessly cumulative
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`evidence.
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`Exhibit 1012
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`FRE 402: The exhibit is not relevant to any ground upon
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`which trial was instituted.
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`5
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`Evidence
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`Objections
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`FRE 403: The exhibit’s probative value to any ground
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`upon which trial was instituted is substantially outweighed
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`by the danger of unfair prejudice, confusing the issues,
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`undue delay, wasting time, or needlessly cumulative
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`evidence.
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`FRE 802: Portions of this exhibit contain inadmissible
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`hearsay if offered to prove the truth of any matter
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`allegedly asserted therein.
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`FRE 901: Petitioner has not produced evidence sufficient
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`to support a finding that the exhibit is what Petitioner
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`claims it is.
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`6
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`Dated: October 16, 2019
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`Respectfully submitted,
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`/Anish R. Desai/
`Anish R. Desai (Reg. No. 73,760)
`Elizabeth S. Weiswasser (Reg No. 55,721)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8000
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`
`Adrian Percer (Reg. No.46,986)
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`T: 650-802-3141
`adrian.percer@weil.com
`
`Christopher T. Marando (Reg. No. 67,898)
`Christopher M. Pepe (Reg. No. 73,851)
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, D.C. 20036
`T: 202-682-7094
`christopher.marando@weil.com
`christopher.pepe@weil.com
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`
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`7
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on October 16, 2019, the foregoing
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`
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`PATENT OWNER’S OBJECTIONS TO ADMISSIBILITY OF EVIDENCE
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`SERVED BY PETITONER INTUITIVE SURGICAL, INC. IN INTER
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`PARTES REVIEW was served via electronic mail, upon the following:
`
`Steven R. Katz
`Joshua A. Griswold
`Kenneth W. Darby, Jr.
`John C. Philips
`Ryan P. O’Connor
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`
`IPR11030-0052IP1@fr.com
`PTABInbound@fr.com
`katz@fr.com
`griswold@fr.com
`kdarby@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`
`
`/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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`8
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