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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`SLAYBACK PHARMA LLC,
`Petitioner,
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`v.
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`EYE THERAPIES, LLC,
`Patent Owner.
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`Case No.: IPR2022-00142
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`U.S. Patent No.: 8,293,742
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION
`TO PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`37 C.F.R. § 42.64(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————
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`SLAYBACK PHARMA LLC,
`Petitioner,
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`v.
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`EYE THERAPIES, LLC,
`Patent Owner.
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`—————
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`Case No.: IPR2022-00142
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`U.S. Patent No.: 8,293,742
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`—————
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION
`TO PETITIONER’S MOTION TO EXCLUDE EVIDENCE
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`37 C.F.R. § 42.64(c)
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`Patent Owner’s arguments regarding the admissibility of the evidence that
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`Petitioner seeks to exclude are flawed. Therefore, the Board should exclude Exhibits
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`2152–2156 and portions of Exhibits 2023 and 1052.
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`I.
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`Paragraph 7 of Exhibit 2023 and Portions of Exhibit 1052
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`Patent Owner argues that Paragraph 7 of Exhibit 2023 “is admissible as a
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`summary to prove content of voluminous IQVIA data that cannot be conveniently
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`examined in court,” citing FRE 1006. Paper No. 62 at 2. But FRE 1006 requires that
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`“[t]he proponent must make the originals…available for examination…by other
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`parties.” FRE 1006. Patent Owner did not produce the originals, so FRE 1006 is
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`inapplicable. Mylan Pharms., Inc. v. Yeda Rsch. & Dev. Co. Ltd., IPR2015-00643,
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`Paper No. 90 at 37–38 (P.T.A.B. Dec. 2, 2016) (denying motion to exclude because
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`the underlying documents had been made available to the moving party); see also,
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`e.g., Trend Micro Inc. v. Cupp Computing AS, IPR2019-00765, Paper No. 30 at 8
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`(P.T.A.B. Aug. 25, 2020); Designing Health, Inc. v. Erasmus, 132 F. App’x 826,
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`833 (Fed. Cir. 2005) (“Failure to make available the materials underlying a summary
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`exhibit, renders that summary exhibit inadmissible.”).
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`Patent Owner mistakenly attempts to shift the burden to Petitioner, alleging
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`that Petitioner never “asked for [the underlying data],” (Paper No. 62 at 2), but it is
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`Patent Owner who “must make the originals or duplicates available for examination
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`or copying.” FRE 1006 (emphasis added). Patent Owner relies on Paragraph 7 of
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`Exhibit 2023 to bolster its claims of secondary considerations of non-obviousness,
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`for which Patent Owner bears the burden of production. Pfizer, Inc. v. Apotex, Inc.,
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`480 F.3d 1348, 1360 (Fed. Cir. 2007) (“[P]atentee has the burden of going forward
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`with rebuttal evidence.”). It was not Petitioner’s burden to request the underlying
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`data, and this contention should not support the inclusion of inadmissible data.
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`Patent Owner attempts to preserve its ability to get this same, undisclosed data
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`into the record through Dr. Jarosz’s re-direct examination, simply because he is an
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`expert, but this is nothing but gamesmanship. FRE 702(b) requires that an expert’s
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`testimony be “based on sufficient facts or data.” FRE 702(b). Dr. Jarosz’s testimony
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`is nothing more than a regurgitation of Mr. Ferris’s unsupported statements. There
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`is no evidence that Dr. Jarosz reviewed the underlying IQVIA data—it is not in his
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`materials considered list, was not mentioned in his declaration, and was not shown
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`to him at the deposition. Therefore, Dr. Jarosz was not made aware of the data that
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`supports Mr. Ferris’s testimony, and Dr. Jarosz’s testimony should be excluded.1
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`II. Exhibit 2156 and Paragraphs 14–18 of Exhibit 2023
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`Patent Owner’s arguments that Exhibit 2156 falls into an exclusion or
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`1 Patent Owner’s arguments that Petitioner allegedly failed to preserve its
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`objections are similarly misplaced. Petitioner timely objected to the questions
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`Petitioner seeks to exclude during the deposition. See EX-1052 at 105:10–107:16.
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`2
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`exception to the rule against hearsay are also flawed. Patent Owner is wrong that
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`Exhibit 2156 qualifies as a market report under FRE 803(17).2 FRE 803(17) “applies
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`to ‘objective compilations of easily ascertainable facts,’ not reports containing
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`‘conclusions reached after analysis by a specialized marketing company.’” Bianco
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`v. Globus Med., Inc., No. 2:12-CV-00146-WCB, 2014 WL 119285, at *2 (E.D. Tex.
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`Jan. 12, 2014) (quoting JIPC Mgmt., Inc. v. Incredible Pizza Co., No. CV 08-04310
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`MMM (PLAx), 2009 WL 8591607, at *24 (C.D. Cal. 2009)). Here, Ipsos—a
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`specialized market research company—conducted a survey of eye care
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`professionals, analyzed the data, and created a presentation for Patent Owner to
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`communicate its conclusions. This is exactly the type of subjective analysis that was
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`excluded in Telebrands and Bianco, and it should be excluded here.
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`Patent Owner is also wrong that Exhibit 2156 qualifies as a business record
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`under FRE 803(6). FRE 803(6) requires that the conditions of the exception “are
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`shown by the testimony of the custodian or another qualified witness.” FRE
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`803(6)(d). Patent Owner has not supplied the foundational testimony to establish
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`2 Patent Owner mistakenly complains that the Telebrands decision on which
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`Petitioner relies is unavailable, but the redacted version of that decision is publicly
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`available as Exhibit 3001. Telebrands Corp. v. Tinnus Enters., PGR2016-00030,
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`EX-3001 (P.T.A.B. Feb. 7, 2018).
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`3
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`how Exhibit 2156 was generated—either at Ipsos or Bausch. Mr. Ferris has no
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`knowledge of how Ipsos creates or maintains its documents. EX-1051 at 23:8–24:3.
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`Mr. Ferris is the “Senior Vice President, Global Consumer” and admitted that he
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`was not the “content owner” for Exhibit 2156. EX-2023 at ¶3; EX-1051 at 10:8–12.
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`None of his testimony provides any information regarding the creation of this
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`document as it was kept at Bausch. Courts routinely “decline to admit business
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`records under Rule 803(6) based on declarations of upper management employees
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`who never claim to be a ‘witness…familiar with the record keeping system.’”
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`Fambrough v. Wal-Mart Stores, Inc., 611 F. App’x 322, 328–29 (6th Cir. 2015)
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`(quoting United States v. Hathaway, 798 F.2d 902, 906 (6th Cir. 1986)). Patent
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`Owner cites to Paragraph 14 of Exhibit 2023, but this paragraph does not provide
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`the information necessary to trigger FRE 803(6), such as, that the record was created
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`at or near the time by someone with knowledge. Thus, Mr. Ferris has not provided
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`the requisite testimony to establish Exhibit 2156 as admissible hearsay.
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`Patent Owner’s arguments that Mr. Ferris should be allowed to provide lay
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`opinion testimony in Paragraphs 14–18 of his declaration (EX-2023), consisting
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`simply of repeating the data and conclusions drawn in Exhibit 2156, is misplaced.
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`Exhibit 2156 represents the scientific, technical, and specialized knowledge of Ipsos,
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`not Mr. Ferris. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362
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`(Fed. Cir. 2008) (excluding testimony where witness did not have proper expertise).
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`4
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`To allow Mr. Ferris to parrot Ipsos’s subjective analysis would flout the FRE and
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`deprive Petitioner of its right to test the opinions contained therein. These paragraphs
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`should be excluded as hearsay and as inappropriate testimony from a lay witness.
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`III. Exhibits 2152–2155 and Paragraph 6 of Exhibit 2023
`Patent Owner argues that Exhibits 2152–2155 fall under the market report
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`exception to the rule against hearsay under FRE 803(17). But these website
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`screenshots are not the type of document contemplated by the market report
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`exception. See Triple Crown Am., Inc. v. Biosynth AG, No. CIV. A. 96-7476, 1999
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`WL 305342, at *2 (E.D. Pa. 1999); see also Bianco, 2014 WL 119285, at *1 (“[T]he
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`exception is designed to include compilations of information such as reports of stock
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`market prices, telephone directories, and sales information for products.”). These
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`website screenshots are far afield from the documents contemplated by the exception
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`and should be excluded along with Paragraph 6 of Mr. Ferris’s declaration (EX-
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`2023), which relies on these inadmissible exhibits.
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`IV. Conclusion
`For the reasons set forth above and in Petitioner’s opening brief, Petitioner
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`respectively requests that the Board exclude the entirety of Exhibits 2152–2156 and
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`portions of Exhibits 2023 and 1052.
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`Dated: February 20, 2023
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`Respectfully submitted,
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`By: /Linnea P. Cipriano/
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`5
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`Linnea P. Cipriano
`(Reg. No. 67,729)
`Goodwin Procter LLP
`620 Eighth Avenue
`New York, NY 10018
`Phone: (212) 813-8800
`Cell: (443) 235-1739
`Fax: (212) 937-2204
`lcipriano@goodwinlaw.com
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`Counsel for Petitioner Slayback
`Pharma LLC
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Reply to Patent Owner’s Opposition to Petitioner’s Motion to Exclude was served
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`on February 20, 2023, by electronic mail to:
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`Bryan Diner
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` bryan.diner@finnegan.com
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`Justin Hasford
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`Justin.hasford@finnegan.com
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`Caitlin O’Connell caitlin.o’connell@finnegan.com
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`Christina Yang christina.yang@finnegan.com
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`February 20, 2023
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`Respectfully submitted,
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` /Linnea P. Cipriano/
`Linnea P. Cipriano
`(Reg. No. 67,729)
`Goodwin Procter LLP
`620 Eighth Avenue
`New York, NY 10018
`Phone: (212) 813-8800
`Cell: (443) 235-1739
`Fax: (212) 937-2204
`lcipriano@goodwinlaw.com
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`
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`Counsel for Petitioner Slayback
`Pharma LLC
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`7
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