From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Herbert, Toni-Junell
`Trials
`Guerra, Kenneth; mark.feldstein@finnegan.com; raj.gupta@finnegan.com; UPL-PGR-Finnegan@finnegan.com;
`Rick, Michelle; Klecyngier, David M.; Bucca, Daniel; Carson, Charles C.
`PGR2023-00017; Request to Withdraw Motion to Exclude (Paper 49)
`Thursday, March 21, 2024 10:53:21 AM
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`To the Honorable Board,
`
`Petitioner requests to withdraw one of its Motions to Exclude; specifically Paper 49 directed to
`Exhibits 2003-2010 and 2020. It is our understanding that Patent Owner does not object. Petitioner
`sends this email to provide the Board with enough information to resolve the issue.
`
`We make this request to resolve issues raised by Patent Owner. On Tuesday evening PO informed us
`that they considered our other Motion to Exclude Certain Opinions of Jacobsen’s Declaration (Paper
`48) as improper for two reasons. First, they asserted that each party is limited to a single 15-page
`motion; and second, that Paper 48 contravenes the rule that “a motion to exclude is not a vehicle for
`addressing the weight to be given evidence—arguments regarding weight should appear only in the
`merits documents.” 2019 Consolidated Trial Practice Guide, 79.
`
`The next morning we replied informing them we disagreed with their analysis. We also pointed out
`that there was no rule limiting a party to a single motion for all objections and requested any
`authority they had on the issue. As for the issue of whether our other motion addressed the weight
`to be given evidence, we explained that our Paper 48 was properly directed to the admissibility of
`the identified Jacobsen opinions under the Federal Rules of Evidence as provided in Daubert v.
`Merrill Dow Pharm., Inc., 509 U.S. 579 (1993).
`
`Patent Owner then provided us with IPR2017-00573, Paper 77 at 2-3 (PTAB Sept. 17, 2018) as the
`relevant authority for a party being limited to one motion to exclude. We informed them that the
`case they provided is not precedential and not binding in this proceeding. We also noted there are
`other cases prior to and subsequent to IPR2017-00573 in which two motions to exclude were filed
`without issue.
`
`However, in an effort to resolve issues, we informed Patent Owner that we were willing to withdraw
`one of our motions, specifically Paper 49, addressing Exhibits 2003-2010 and 2020.
`
`Accordingly, we make this request to withdraw Paper 49, in our effort to follow through on our
`representation to Patent Owner.
`
`Respectfully,
`
`PGR2023-00017
`Ex. 3008
`
`

`

`Toni Herbert
`
`Toni Herbert
`Partner
`
`Washington Square
`1050 Connecticut Ave N.W. | Suite 1100
`Washington, DC 20036-5403
`T +1.202.861.1578
`
`therbert@bakerlaw.com
`bakerlaw.com
`
`Toni Herbert
`Partner
`
`Washington Square
`1050 Connecticut Ave N.W. | Suite 1100
`Washington, DC 20036-5403
`T +1.202.861.1578
`
`therbert@bakerlaw.com
`bakerlaw.com
`
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