Rocky Mountain Bank -v- Google, Inc.

Filing 157

Rocky Mountain Bank -v- Google, Inc.

Doc. 157

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

LYNN H. PASAHOW (CSB No. 054283) ([e-mail]) CHARLENE M. MORROW (CSB No. 136411) ([e-mail]) MICHAEL J. SHUSTER (CSB No. 191611) ([e-mail]) PATRICK E. PREMO (CSB No. 184915) ([e-mail]) CAROLYN CHANG (CSB No. 217933) ([e-mail]) C. J. ALICE CHUANG (CSB No. 228556) ([e-mail]) FENWICK & WEST LLP Silicon Valley Center, 801 California Street Mountain View, CA 94041 Telephone: [phone] Facsimile: [phone] CHARLES F. ROBINSON (CSB No. 113197) ([e-mail]) P. MARTIN SIMPSON (CSB No. 122867) ([e-mail]) RITA HAO (CSB No. 191693) ([e-mail]) UNIVERSITY OF CALIFORNIA 1111 Franklin Street, 8th Floor Oakland, CA 94607 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff/Counterdefendant THE REGENTS OF THE UNIVERSITY OF CALIFORNIA UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, Plaintiff, v. MICRO THERAPEUTICS, INC., a Delaware corporation, DENDRON GmbH, a German corporation, and ev3 INC., a Delaware corporation, Defendants, MICRO THERAPEUTICS, INC., a Delaware corporation, and DENDRON GmbH, a German corporation, Third Party Plaintiffs, v. BOSTON SCIENTIFIC CORPORATION, a Delaware corporation, and TARGET THERAPEUTICS, INC., a Delaware corporation, Third Party Defendants Case No. C 03 05669 JW (RS) PLAINTIFF THE REGENTS OF THE UNIVERSITY OF CALIFORNIA'S OPPOSITION TO DEFENDANTS' MOTION IN LIMINE TO EXCLUDE REFERENCE AT TRIAL TO THE PTO'S REEXAMINATION OF U.S. PATENT NO. 5,122,136 Judge: Date: Time: Place: Honorable James Ware September 7, 2007 9:00 a.m. Courtroom 8, 4th Floor

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Trial date: October 16, 2007

OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

CASE NO. C 03 05669 JW (RS)
Dockets.Justia.com

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

TABLE OF CONTENTS (continued) Page(s) I. II. INTRODUCTION .............................................................................................................. 1 ARGUMENT ...................................................................................................................... 2 A. Legal Standard ........................................................................................................ 2 B. The PTO's Reexamination Is Highly Relevant Evidence that Must Be Admitted.................................................................................................................. 3 C. MTI's Attempt to Exclude the Reexamination on the Grounds that It Is Incorrect Should Fail............................................................................................... 5 1. The PTO Is Presumed to Have Done Its Job Correctly .............................. 5 a. The PTO Applied the Correct Legal Standards .............................. 5 (1) The PTO Reexamination Remains Probative Evidence After KSR............................................................ 5 (2) The PTO Applied the Correct Anticipation Analysis ......... 6 b. The PTO Properly Analyzed the Bari Paper ................................... 7 c. The PTO Was Not Bound by the Court's Claim Construction .................................................................................... 8 d. MTI Mischaracterizes the Lund Reference..................................... 8 2. The PTO Reexamination Does Not Need to Be Relevant to All Issues to Be Admissible ............................................................................ 10 CONCLUSION ................................................................................................................. 10

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 III.

OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

-i-

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

TABLE OF AUTHORITIES Page(s) Cases Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308 (Fed. Cir. 1999)....................................................................................... 1, 5, 10 American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350 (Fed. Cir. 1984)....................................................................................... 4, 5, 10 Arnold Partnership v. Dudas, 362 F.3d 1338 (Fed. Cir. 2004)................................................................................................. 6 Bayer AG v. Schein Pharm., Inc., 129 F. Supp. 2d 705 (D. N.J. 2001) .................................................................................. 3, 4, 9 Brown v. Shimano American Corp., 18 U.S.P.Q. 2d 1496 (C.D. Cal. 1991)...................................................................................... 3 Celeritas Techs. v. Rockwell Int'l Corp., 150 F.3d 1354 (Fed. Cir. 1998)................................................................................................. 4 Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955 (Fed. Cir. 1986)........................................................................................... 1, 3, 4 E. I. du Pont de Nemours & Co. v. Cetus Corp., 19 U.S.P.Q. 2d 1174 (N.D. Cal. 1990) ................................................................................. 5, 8 Fresenius Med. Care Holdings, Inc. v. Baxter Int'l, Inc., No. C03-01431, 2006 U.S. Dist. LEXIS 42159 (N.D. Cal. June 12, 2006) ............................. 2 Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549 (Fed. Cir. 1985)................................................................................................. 3 Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339 (Fed. Cir. 2004)................................................................................................. 4 Gould v. Control Laser Corp., 705 F.2d 1340 (Fed. Cir. 1983)................................................................................................. 3 In re American Academy of Science Tech Center, 367 F.3d 1359 (Fed. Cir. 2004)................................................................................................. 8 In re Trans Texas Holdings Corp., No. 2006-1599 -1600, 2007 U.S. App. LEXIS 19909 (Fed. Cir. Aug. 22, 2007) ................ 1, 8 In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984)................................................................................................. 8 Interconnect Planning Corp. v. Feil, 774 F.2d 1132 (Fed. Cir. 1985)............................................................................................. 1, 3 KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007) .......................................................................................................... 5, 6 Liebel-Flarsheim Co v. Medrad, Inc., 481 F.3d 1371 (Fed. Cir. 2007)................................................................................................. 4 Nanometrics, Inc. v. Nova Measuring Instr., Ltd., Case No. C 06-2252, 2007 U.S. Dist. LEXIS 18785 (N.D. Cal. Feb. 26, 2007)...................... 3

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

- ii -

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

TABLE OF AUTHORITIES (continued) Page(s) PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 (Fed. Cir. 2007)................................................................................................. 4 Prima Tek II, L.L.C. v. Polypap, S.A.R.I., 412 F.3d 1284 (Fed. Cir. 2005)................................................................................................. 4 Takeda Chem. Indus., Inc. v. Alphapharm Pty., Ltd., 83 U.S.P.Q. 2d 1169 (Fed. Cir. 2007)....................................................................................... 6 United States v. Dennis, 625 F.2d 782 (8th Cir. 1980)..................................................................................................... 2 United States v. Marrero-Ortiz, 160 F.3d 768 (1st Cir. 1998) ..................................................................................................... 2 United States v. Mende, 43 F.3d 1298 (9th Cir. 1995)..................................................................................................... 2 United States v. Patterson, 819 F.2d 1495 (9th Cir. 1987)................................................................................................... 2 Rules Federal Rule of Evidence 403 ......................................................................................................... 2

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

- iii -

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

I.

INTRODUCTION MTI's motion in limine to exclude reference to the PTO's reexamination of the '136

patent is unsupported by law. MTI does not cite a single case in which evidence of a PTO's completed reexamination is excluded. Indeed, it is well-established that a court must consider a PTO examiner's decision on reexamination in determining whether the party asserting invalidity has met its statutory burden by clear and convincing evidence. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 961 (Fed. Cir. 1986), citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1139 (Fed. Cir. 1985). This law alone compels denial of MTI's motion. MTI nevertheless argues that the reexamination should be excluded, claiming that the PTO made legal and factual errors during reexamination. MTI once again ignores the law. The PTO is presumed to have performed its duties properly. Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999). Part of MTI's burden of proving invalidity by clear and convincing evidence is the burden of overcoming this presumption. Id. (stating that the statutory presumption of validity carries with it the presumption that the PTO has done its job). Thus, MTI's arguments go to the weight of the reexamination evidence at trial, and not the admissibility of the reexamination record. Furthermore, MTI's claims of error by the PTO are without merit. For example, MTI claims the PTO erred in finding the '136 claims patentable over the Bari paper. Yet this Court has also found that the Bari paper does not anticipate the '136 patent claims. See August 24, 2007 Order Denying MTI's Motion for Partial Summary Judgment of Invalidity of the Patents in Suit Under 35 U.S.C. § 102 [Docket No. 876] ("Anticipation SJ Order") at 7:27. MTI also claims the PTO erred in not applying the Court's claim construction. MTI's suggestion is based solely on its unsupported belief regarding the examiner's mental processes. In fact, the existence of the claim construction to date was called out to the examiner. See Anstaett Decl., Ex. 4 at 2. Moreover, the law is clear that the PTO is not bound by a court's construction during its proceedings; it must give claims their broadest possible interpretation. In re Trans Texas Holdings Corp., No. 2006-1599 -1600, 2007 U.S. App. LEXIS 19909, at *8, *15-23 (Fed. Cir. Aug. 22, 2007). Finally, MTI argues that the PTO's findings are contrary to Dr. Nesbit's
OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

-1-

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

purported admission that the Lund reference anticipates claim 1 of the '136 patent. But MTI mischaracterizes deposition testimony to fabricate an admission where none exists. None of MTI's tenuous arguments overcome the great weight of authority emphasizing the relevance of the PTO's reexamination proceedings. Accordingly, The Regents respectfully requests that this Court deny MTI's motion in limine to exclude reference to the PTO's reexamination of the '136 patent. II. ARGUMENT A. Legal Standard

Federal Rule of Evidence 403 is "`an extraordinary remedy to be used sparingly because it permits the trial court to exclude otherwise relevant evidence.'" United States v. Mende, 43 F.3d 1298, 1302 (9th Cir. 1995), citing United States v. Patterson, 819 F.2d 1495, 1505 (9th Cir. 1987). To exclude the PTO's reexamination of the '136 patent under this rule, MTI must show that the probative value of the reexamination is substantially outweighed by the danger of unfair prejudice. Fed. R. Evid. 403. MTI cannot make this showing with its claims of prejudice. In weighing the probative value against the risk of unfair prejudice, courts generally strike the balance in favor of admission. Fresenius Med. Care Holdings, Inc. v. Baxter Int'l, Inc., No. C 03-01431, 2006 U.S. Dist. LEXIS 42159, at *14 (N.D. Cal. June 12, 2006), citing United States v. Dennis, 625 F.2d 782, 797 (8th Cir. 1980). MTI attempts to diminish the probative value of the '136 patent reexamination and fabricates unfair prejudice by arguing that the PTO's reexamination was flawed. MTI's arguments are contrary to law, which recognizes both the highly probative nature of the PTO's findings on reexamination and the presumption that the PTO performed its duties correctly. Under the prevailing law, MTI has not and cannot show any unfair prejudice. All evidence is meant to be prejudicial to one side or the other; it is only unfair prejudice against which Rule 403 protects. United States v. Marrero-Ortiz, 160 F.3d 768, 774 (1st Cir. 1998). Accordingly, MTI's motion in limine to exclude reference to the PTO's reexamination of the '136 patent should be denied.

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

-2-

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

B.

The PTO's Reexamination Is Highly Relevant Evidence that Must Be Admitted

Controlling Federal Circuit authority establishes both the relevance of a reexamination proceeding and the necessity of its admission. One of the purposes of the reexamination procedure is to facilitate trial by providing the district court with the expert view of the PTO. Gould v. Control Laser Corp., 705 F.2d 1340, 1342 (Fed. Cir. 1983); Nanometrics, Inc. v. Nova Measuring Instruments, Ltd., No. C 06-2252, 2007 U.S. Dist. LEXIS 18785, at *7 (N.D. Cal. Feb. 26, 2007); Brown v. Shimano American Corp., 18 U.S.P.Q. 2d 1496 (C.D. Cal. 1991) ("reexamination by the PTO when issues relevant to prior art are involved is especially helpful given the PTO's expertise"). Evidence concerning the reexamination proceeding is particularly relevant in this case where, in the reexamination, the examiner considered all but four of the eighteen references MTI now claims it will raise at trial. Not only is the reexamination evidence highly probative, the Federal Circuit has held repeatedly that a PTO examiner's decision on reexamination is "`evidence the court must consider in determining whether the party asserting invalidity has met its statutory burden by clear and convincing evidence.'" Custom Accessories, 807 F.2d at 961 (emphasis added), citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1139 (Fed. Cir. 1985); Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1555 (Fed. Cir. 1985). It is reversible error not to give "any credence to the PTO reexamination proceeding." Custom Accessories, 807 F.2d at 961 (reversing judgment of invalidity where reexamination upholding claims over much of the same art that was presented before the district court was not considered); see also Bayer AG v. Schein Pharm., Inc., 129 F. Supp. 2d 705, 714-15 (D. N.J. 2001) (discussing Custom Accessories and holding that "the Court must examine what issues were presented to the PTO on reexamination and what conclusions the PTO reached on those issues"). Furthermore, consideration of the PTO's confirmation of all claims of the '136 patent upon reexamination informs MTI's burden of proving invalidity. The burden of proving invalidity by clear and convincing evidence is "especially difficult" when the defendant attempts to rely on prior art that was before the patent examiner during prosecution or reexamination.
OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

-3-

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004); Custom Accessories, 807 F.2d at 961; American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed. Cir. 1984). That is because the PTO's conclusions must be considered as evidence of validity. Bayer, 129 F. Supp. 2d at 714. Accordingly, since the reexamination proceeding is highly probative on the issues and prior art considered during reexamination, and since reexamination proceedings should be considered in conducting an invalidity analysis, MTI's motion to exclude such evidence should be denied. MTI cites no law to the contrary. Instead, MTI cites only cases holding that PTO decisions are not conclusive and a fact finder must conduct its own independent analysis of patentability. See MTI's Motion at 7:1-22. That a PTO's finding of patentability is not conclusive does not mean it is not probative or admissible. Indeed, the cases on which MTI relies give due consideration to the PTO's findings in determining patentability. See Celeritas Techs. v. Rockwell Int'l Corp., 150 F.3d 1354, 1360-61 (Fed. Cir. 1998) (recognizing that burden of proving invalidity is especially difficult when the prior art was before the PTO in addressing prosecution history evidence); PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1366 (Fed. Cir. 2007) (discussing the PTO's examiner's findings on reexamination in conducting invalidity analysis); see also Liebel-Flarsheim Co v. Medrad, Inc., 481 F.3d 1371, 1381 (Fed. Cir. 2007) (recognizing that burden of showing invalidity is especially difficult when the prior art reference was before the examiner during prosecution); Prima Tek II, L.L.C. v. Polypap, S.A.R.I., 412 F.3d 1284, 1287 (Fed. Cir. 2005) (acknowledging that prior art reference was before examiner during prosecution). Thus, the law makes clear that although a district court is not required to follow the findings of the PTO, it is required to consider them. MTI has not shown otherwise, and its motion in limine to exclude reference to the '136 patent reexamination should be denied.

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

-4-

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

C.

MTI's Attempt to Exclude the Reexamination on the Grounds that It Is Incorrect Should Fail 1. The PTO Is Presumed to Have Done Its Job Correctly

MTI next suggests that the reexamination proceedings in this case are so legally and analytically flawed that their admission would cause jury confusion and undue prejudice. MTI's argument is an improper attempt to relieve itself of its burden of proof in this case. As a matter of law, PTO examiners are presumed to perform their duties correctly. Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999); American Hoist, 725 F.2d 1350, 1359 (Fed. Cir. 1984) (stating that the presumption of validity is based on the "basic proposition that a government agency such as the then PTO is presumed to do its job"). That is why a challenger's burden of proving invalidity by clear and convincing evidence is especially difficult when the prior art was before the PTO examiner. Al-Site Corp., 174 F.3d at 1323. "When an attacker simply goes over the same ground travelled by the PTO, part of the burden is to show that the PTO was wrong in its decision." American Hoist, 725 F.2d at 1360 (emphasis in original). Therefore, it is part of MTI's burden at trial to prove that the PTO was wrong in its decision to uphold the '136 patent claims on reexamination. See id.; see also E. I. du Pont de Nemours & Co. v. Cetus Corp., 19 U.S.P.Q. 2d 1174, 1179 (N.D. Cal. 1990). The arguments MTI makes now address the weight of the evidence, not its admissibility. Therefore, MTI offers no grounds justifying exclusion of the reexamination. In addition, MTI's specific claims of error by the PTO are unsupported by law or fact, and do not substantially outweigh the probative value of the PTO's findings on reexamination. a. The PTO Applied the Correct Legal Standards The PTO Reexamination Remains Probative Evidence (1) After KSR

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

MTI first argues that the PTO's reexamination decision should be excluded because the examiner did not apply the obviousness standard articulated in KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007). See MTI's Motion at 8:24-10:12. MTI's experts never opined on the correctness of the PTO's reexamination of the '136 patent. Specifically, MTI's patent law expert

OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

-5-

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

offered no opinions that the PTO examiner committed any error during the reexamination.1 MTI should be precluded from doing so now. Moreover, MTI's reliance on Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004), to argue that application of an incorrect legal standard entitles the PTO to no deference is misplaced. Arnold Partnership involved a patent owner's challenge of the PTO's denial of patent term extension under the Administrative Procedure Act (APA), a decision which was ultimately upheld. Id. at 1340, 1343. As an action under the APA, the case did not address the deference due, or admissibility of, PTO reexamination proceedings. Thus, it has no application here. In any event, MTI admits that the PTO examiner applied the correct obviousness standard in effect at the time of the reexamination. See MTI's Motion at 9:14-16. Its only complaint is that KSR issued subsequent to the reexamination. The PTO's findings with respect to the prior art are still probative of the obviousness inquiry, however, even under the KSR standard. See Takeda Chem. Indus., Inc. v. Alphapharm Pty., Ltd., 83 U.S.P.Q. 2d 1169, 1173-74 (Fed. Cir. 2007) (reviewing evidence presented in district court and upholding pre-KSR verdict of nonobviousness where trial court's analysis was not inconsistent with KSR). Meanwhile, the risk of jury confusion is low. All parties acknowledge that the PTO's findings are not conclusive. The jury will be instructed to apply the obviousness standard set forth in KSR in conducting its own independent obviousness analysis. The PTO reexamination is evidence that the jury should consider in conducting that analysis. (2) The PTO Applied the Correct Anticipation Analysis

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

MTI also argues that the PTO applied an incorrect anticipation standard in finding that the Bari paper did not anticipate the claims of the '136 patent. MTI focuses on the PTO's findings that Bari's breaking off of the electrode tip was a failure of the experiments and did not teach the method claimed in the '136 patent. Such findings, MTI argues, is at odds with law that states anticipation cannot be avoided simply because the prior art experiment was a failure. See MTI's
1

The Regents will be filing a motion in limine to address in detail MTI's patent law expert's failure to offer any opinions on the reexamination of the '136 patent. That motion will seek to preclude him from offering any opinions at trial regarding the reexamination proceedings. -6CASE NO. C 03 05669 JW (RS)

OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

Motion at 10:15-11:11. MTI misapprehends the PTO's findings and the requirements of the '136 patent. Anticipation was not avoided simply because the Bari experiments were a failure; anticipation was avoided because the Bari paper did not teach all the steps of the claimed method. Indeed, this Court has already rejected MTI's arguments, agreeing with the PTO that the Bari paper does not anticipate the '136 patent claims. See Anticipation SJ Order at 4:18-7:27. The method claimed in the '136 patent requires the step of "detaching said distal tip." See '136 patent at col. 9:14-16. This inventive step requires that "manipulative steps" be taken for the purpose of detaching the tip. Anticipation SJ Order at 7:1-2. Applying the proper legal standard, both the PTO examiner and this Court found that the Bari paper does not teach a manipulative step taken for the purposes of detaching the tip. See id. at 7:23-27; Anstaett Decl., Ex. 6 at 4 ("Why the tip broke off is speculation and the break off appears from reading the reference in total a failure of three of the fifteen case study."). Therefore, there was no legal error in the PTO's reexamination of the '136 patent, and this Court should deny MTI's motion to exclude evidence of the reexamination. b. The PTO Properly Analyzed the Bari Paper

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

MTI next argues that the reexamination should be excluded because the examiner failed to explain coherently why the Bari paper does not anticipate claim 1 of the '136 patent. MTI's Motion at 11:14-12:26. MTI does so by mischaracterizing the deposition testimony of Mr. Nusbaum, The Regents' patent law expert. Id. at 12:1-15. Mr. Nusbaum did not testify that the PTO's conclusion was incoherent or flawed. When asked what he believed the examiner thought was missing from the Bari paper, Mr. Nusbaum testified that: We know ­ we know for sure that ­ that even ­ that the examiner indicates that [the Bari paper] does disclose insertion of a metal electrode into an aneurysm, application of a current, breaking off of the electrode tip. And one might infer from that that the ­ that which is required by the detaching step of leaving the distal tip within the vascular cavity is not shown ... Anstaett Decl., Ex. 5 at 156:24-158:11. In fact, Mr. Nusbaum testified that "we know for sure that the examiner concluded that this ­ the methodology that's referred to in claim 1 was neither disclosed, taught or suggested with respect to the claimed invention in claim 1." Id. at 157:5-8.
OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

-7-

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

c.

The PTO Was Not Bound by the Court's Claim Construction

MTI goes on to argue that the PTO's failure to apply the Court's claim construction justifies exclusion of the reexamination. This too is contrary to law. The Federal Circuit has rejected the notion that the PTO, in the course of reexamination proceedings, is bound by a court's claim construction. In re Trans Texas Holdings Corp., No. 2006-1599 -1600, 2007 U.S. App. LEXIS 19909, at *8, *15-23 (Fed. Cir. Aug. 22, 2007). In so doing, the Federal Circuit confirmed the well-established principle that "[c]laims are given `their broadest reasonable interpretation, consistent with the specification, in reexamination proceedings.'" Id. at *20, citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); see also In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). The fact the '136 patent claims survived reexamination in light of the PTO's broader interpretation of claims further speaks to the highly probative nature of the reexamination. See Cetus, 19 U.S.P.Q. 2d at 1179. Rather than exclusion, MTI's arguments further support inclusion of evidence of the reexamination. d. MTI Mischaracterizes the Lund Reference

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

MTI also argues the PTO examiner erred in failing to reject claim 1 of the '136 patent over the Lund reference. MTI's Motion at 13:3-14:5. To support this argument, MTI clips together incomplete and out of context excerpts of the deposition testimony of Dr. Nesbit, The Regents' technical expert. Specifically, MTI cites only a portion of Dr. Nesbit's response to claim that Lund teaches endovascularly disposing a guidewire: Q. And does it teach endovascularly disposing a guidewire near an endovascular opening into the vascular cavity? A. Yes. MTI's Motion at 13:13-15, citing Anstaett Decl., Ex. 7 at 61:17-20. MTI does not include Dr. Nesbit's complete response, however. In fact, Dr. Nesbit's full response reveals that he did not understand the Lund reference to teach endovascularly disposing a guidewire: Q. And does it teach endovascularly disposing a guidewire near an endovascular opening into the vascular cavity. A. Yes. Well, I mean it's really not a guidewire, though. It's really a coil. Anstaett Decl., Ex. 7 at 61:17-22 (emphasis added). Dr. Nesbit went on to explain his testimony,
OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

-8-

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

stating that Lund discloses endovascularly disposing a guidewire only if the guidewire is construed to be the coil: Q. Okay. So that's endovascularly disposing that guidewire into the cavity that you want to fit? A. If you construe the guidewire to be the coil, including the coil, that would fit into that, yes. Id. at 63:19-22. Dr. Nesbit, however, did not understand the coil to be the guidewire or the distal tip of the guidewire: Q. ... And the coil would constitute the distal tip of the guidewire in the Lund device, correct? There's a guidewire and then at the tip there's a coil, correct? A. But they're separate. They're just screwed together. Q. I understand they're screwed together, but until they're detached, it's one ­ it's one piece, correct? A. Yeah. I guess they're interconnected, yes, with the screw-on portion. Q. Okay. And the screw-on portion is the distal tip, correct? A. No. Anstaett Decl., Ex. 7 at 61:17-22, 62:8-20. Therefore, a review of the complete record shows that there was no concession by Dr. Nesbit that the Lund reference anticipates claim 1 of the '136 patent. MTI's suggestion that the PTO examiner missed the Lund reference due to the volume of references submitted on reexamination is also without merit. The PTO examiner specifically acknowledged his review of the Lund reference in the Information Disclosure Statement submitted during reexamination. See Declaration of Carolyn Chang in Support of Opposition to Motion In Limine to Exclude Reference to Reexamination, Ex. A. Moreover, the law presumes that an examiner reviewed and considered all materials submitted during reexamination. Bayer, 129 F. Supp. 2d at 715 (refusing to discount the voluminous materials submitted during reexamination and finding the examiner properly considered all references submitted during reexamination notwithstanding the fact that the examiner did not expressly dispose of those issues in her written response). Whatever MTI or any expert may argue regarding the Lund reference,
OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

-9-

CASE NO. C 03 05669 JW (RS)

1 2 3 4 5 6 7 8 9 10 11 12
FENWICK & WEST LLP
A T T O R N E Y S A T LAW M O U N T A I N VI E W

this Court must presume that the PTO examiner conducted its own independent analysis. Id.; see also American Hoist, 725 F.2d at 1359; Al-Site Corp., 174 F.3d at 1323 (stating that the presumption of validity "carries with it a presumption that the Examiner did his duty and knew what claims he was allowing"). MTI cannot exclude the reexamination by mischaracterizing deposition testimony or disregarding the law. Its motion in limine to exclude reference to the '136 patent reexamination should be denied. 2. The PTO Reexamination Does Not Need to Be Relevant to All Issues to Be Admissible

As its final argument, MTI claims that the reexamination should be excluded because it did not address all the defenses and prior art MTI intends to present at trial. MTI's Motion at 14:8-15:19. Evidence need not be probative of all issues to be admissible, however. That MTI may present evidence that address issues other than those considered during the reexamination has no bearing on whether the reexamination is admissible on those issues as to which it is probative. III. CONCLUSION For the foregoing reasons, plaintiff The Regents of the University of California respectfully requests that the Court deny MTI's Motion to Exclude Reference at Trial to the PTO's Reexamination of U.S. Patent No. 5,122,136.

13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Dated: August 31, 2007

FENWICK & WEST LLP

By:

/s/Carolyn Chang Carolyn Chang

Attorneys for Plaintiff/Counterdefendant THE REGENTS OF THE UNIVERSITY OF CALIFORNIA

OPP. TO MOTION IN LIMINE TO EXCLUDE REFERENCE TO REEXAMINATION

- 10 -

CASE NO. C 03 05669 JW (RS)