EIS GmbH et al. vs Novoluto GmbH et al.

Order: Order Granting Patent Owner’s Unopposed Motion to Expunge

Other: other court decision

Other: Fed Circuit mandate

Patent Owner's Supplemental Mandatory Notices Pursuant to 37 CFR 42.8

Patent Owner's Renewed Motion to Expunge Exhibit 2056 Pursuant to CFR 42.56

Notice of Appeal and Final Written Decision

Final Written Decision: original

PETITIONER'S REPLY TO PATENT OWNER'S OPPOSITION TO PETITIONER'S MOTION TO EXCLUDE PATENT OWNER'S EXHIBITS 2034, 2035, AND 2061 UNDER 37 C.F.R. �� 41.155

Patent Owner Response to Motion to Exclude

PETITIONER'S MOTION TO EXCLUDE PATENT OWNER'S EXHIBITS 2034, 2035, AND 2061 UNDER 37 C.F.R. ��41.155

Email dated October 9, 2020, from Petitioner to Patent Owner serving objections to the Patent Owner's Preliminary Response and requesting Patent Owner to provide facts and/or data underlying Jensen and Herbenick declarations that have not been provided

Email dated October 23, 2020, from Patent Owner to Petitioner serving Supplemental Declaration of Debby Herbenick dated October 23, 2020 provided as Exhibit 1046

Supplemental Declaration of Debby Herbenick dated October 23, 2020, in Support of Patent Owner's Preliminary Response

Email dated October 27, 2020, from Patent Owner to Petitioner refusing to provide additional evidence

Email dated December 28, 2020, from Petitioner to Patent Owner serving objections to the Patent Owner's Response and requesting Patent Owner to provide facts and/or data underlying Jensen and Herbenick declarations that have not been provided

Email dated January 12, 2021, from Patent Owner to Petitioner serving Supplemental Declaration of Patent Owner's Counsel, Tammy J. Dunn dated January 12, 2021 provided as Exhibit 1050

Supplemental Declaration of Patent Owner's counsel, Tammy J. Dunn, dated January 12, 2021 in support of Patent Owner's Response

Email dated January 20, 2021, from Petitioner to Patent Owner requesting Patent Owner to provide facts and/or data underlying Jensen and Herbenick declarations that have not been provided

Joint Notice Regarding Oral Argument

Patent Owner Amended Mandatory Notices

Patent Owner Sur-Reply

Deposition Transcript of Cross-Examination of Dr. Michael R. Prisco, held January 6, 2021

Patent Owner Unopposed Motion To Submit Supplemental Information

Certificate of Correction for the US Pat No 9,849,061

Patent Owner Amended Mandatory Notices

Patent Owner Objections to Evidence Submitted with Petitioner Reply

PETITIONER'S REPLY TO PATENT OWNER'S RESPONSE

Transcript of Cross-examination of Dr. Morten Jensen ("Jensen") held February 8, 2021

Transcript of Cross-examination of Dr. Morten Jensen ("Jensen") held December 30, 2020 in IPR2019-01444

Transcript of Cross-examination of Dr. Debra Herbenick ("Herbenick") held January 13, 2021 in IPR2019-01444

Transcript of Cross-examination of Dr. Debra Herbenick ("Herbenick") held February 19, 2021

Declaration of Michael R. Prisco, P.E., Ph.D. in support of Petitioner's Reply ("Prisco")

Curriculum Vitae of Dr. Michael Prisco

Declaration of Richard Meyst in support of Petitioner's Reply ("Meyst")

Curriculum Vitae of Richard Meyst

Transcript of Cross-examination of Dr. Jensen ("Jensen") held November 18, 2020 in IPR2019-01302

Transcript of Cross-examination of Dr. Herbenick ("Herbenick") held November 19, 2020 in IPR2019-01302

Grand View Research, Inc., Sex Toys Market Size, Share & Trends Analysis Report, available online at: https://www.grandviewresearch.com/industry-analysis/sex-toys-market (accessed on January 20, 2021)

Definition of "and/or" from Webster's Third New International Dictionary Unabridged (2002)

Definition of "and/or," available online at www.lexico.com/en/definition/and/or (obtained on November 17, 2020)

Taylor Demonstrative 1

Taylor Demonstrative 2

DE 856788 B with English Translation

PTAB Consolidated Trial Practice Guide (November 2019) ("TPG")

Demonstrative - Vulva Drawing by Herbenick

Demonstrative - Glans Clitoris Drawings by Herbenick

International Patent Publication No. WO 2010/149168

Declaration of Dr. Jensen filed as Exhibit 2026 in EIS GmbH v. Novoluto GmbH, IPR2019-01302

Excerpts from Sir Richard Glazebrook, A Dictionary of Applied Physics, Vol. 1 (1922), available online at https://www.google.com/books/edition/A_Dictionary_of_Applied_Physics/-6rQAAAAMAAJ?hl=en&gbpv=1&dq=dictionary+bellows&pg=PA10&printsec=frontcover

Excerpts from Myer Kutz et. al, Mechanical Engineers' Handbook (John Wiley & Sons, Inc.) (1986)

U.S. Pat. No. 9,937,097 (the "'097")

Demonstrative showing redline highlighting differences between portions of U.S. Pat. No. 6,464,653 ("Hovland'653") and its continuation-in-part U.S. Pat. No. 6,964,643 (Ex. 1006; "Hovland')

Excerpts from Medical Physiology - Principles for Clinical Medicine - 3rd Edition (2009)

Declaration of Debby Herbenick dated February 11, 2020, submitted In The Matter of Australian Patent Application No. 2018203659

Declaration of Debby Herbenick dated March 29, 2019, submitted In The Matter of Australian Patent Application No. 2015386680

Declaration of Andrew J. Sutton

Petitioner���s Amended Mandatory Notices

PETITIONER'S NOTICE OF DEPOSITION OF DR. DEBRA HERBENICK PURSUANT TO 37 C.F.R. ¿¿ 42.53

PETITIONER'S NOTICE OF DEPOSITION OF DR. MORTEN JENSEN PURSUANT TO 37 C.F.R. ¿¿ 42.53

Patent Owner Amended Mandatory Notices

Petitioner¿¿¿s Objections to Evidence Submitted With Patent Owner¿¿¿s Response

Patent Owner Response

EXPUNGED

EXPUNGED

EXPUNGED

EXPUNGED

21 C.F.R. 884.5960 (2019)

Debbie Josefson, FDA approves device for female sexual dysfunction, BMJ British Medical Journal, 320 (7247), 1427 (2000)

Emmanuele A. Jannini, et al., Ethical aspects of sexual medicine. Internet, vibrators, and other sex aids toys or therapeutic instruments, The Journal of Sexual Medicine, 9(12), 2994-3001 (2012)

Daniel Ventus, et al., Vibrator-Assisted Start¿¿¿Stop Exercises Improve Premature Ejaculation Symptoms A Randomized Controlled Trial, Archives of Sexual Behavior, 1-15 (2019)

Mollie K. McConnell, When button batteries become breakfast the hidden dangers of button battery ingestion, Journal of Pediatric Nursing, 28(6), e42-e49 (2013)

Russell Griffin, et al., Sexual stimulation device-related injuries. Journal of Sex & Marital Therapy, 35(4), 253-261 (2009)

Zdenek Halata, et al., The neuroanatomical basis for the protopathic sensibility of the human glans penis, Brain research, 371(2), 205-230 (1986)

EXPUNGED

EXPUNGED

Jordan E. Rullo, et al., Genital vibration for sexual function and enhancement: a review of evidence, Sexual and Relationship Therapy, 33(3), 263¿¿¿274 (2018)

Debby Herbenick, et al., Vibrators and other sex toys are commonly recommended to patients, but does size matter Dimensions of commonly sold products, The Journal of Sexual Medicine, 12(3), 641-645 (2015)

Alexander Semaan, et al., Severe vaginal burns in a 5-year-old girl due to an alkaline battery in the vagina, Journal of Pediatric and Adolescent Gynecology, 28(5), e147-e148 (2015)

T.A. Anderson, et al., A study of human papillomavirus on vaginally inserted sex toys, before and after cleaning, among women who have sex with women and men, Sexually transmitted infections, 90(7), 529-531 (2014)

David M. Ferguson, et al., Randomized, placebo-controlled, double blind, crossover design trial of the efficacy and safety of Zestra for Women in women with and without female sexual arousal disorder

Miranda Farage, et al., The vulvar epithelium differs from the skin implications for cutaneous testing to address topical vulvar exposures, Contact dermatitis, 51(4), 201-209 (2004)

Virginia Braun, et al., Telling it straight Dictionary definitions of women¿¿¿s genitals, Journal of Sociolinguistics, 5(2), 214-232 (2001)

Debby Herbenick, et al., Women's vibrator use in sexual partnerships Results from a nationally representative survey in the United States, Journal of Sex & Marital Therapy, 36(1), 49-65 (2010)

Womanizer InsideOut Webpage (Dec. 17, 2020)

Womanizer Duo Manual

How the Womanizer Works - Pleasure Air Technology Webpage, (Dec. 17, 2020)

J. Patterson, Moisturizers, lubricants, and vulvar hygiene products issues, answers, and clinical implications, Current Sexual Health Reports, 8(4), 213-221 (2016)

Suzannah Weiss, Fear of the Clit A Brief History of Medical Books Erasing Women's Genitalia, Vice, (May 3, 2017)

Jillian Lloyd, et al., Female genital appearance: normality¿¿¿unfolds, BJOG An International Journal of Obstetrics & Gynaecology, 112(5), 643-646 (2005)

EXPUNGED

Womanizer Study (2013) with Certified Translation

Womanizer Vibe Review, (Oct. 7, 2015)

Compilation of Womanizer Awards

Evidence of Copying by Parties Other Than Petitioner with Certified Translation

Press Release with Certified Translation

Egan, Mary Ellen, The Love Machine , Forbes, (July 2, 2000)

MaryAnn Schroder, et al., Clitoral therapy device for treatment of sexual dysfunction in irradiated cervical cancer patients, International Journal of Radiation Oncology Biology Physics, 61(4), 1078-1086 (2005)

Womanizer InsideOut Manual

Womanizer Duo - Bordeaux Gold Webpage (December 17, 2020)

Declaration of Jason L. Tucker

Patent Owner Combined Motion to Seal and Motion For a Protective Order

Agreed Protective Order

Womanizer¿¿ DUO Rabbit Vibrator

Curriculum Vitae of Debra Herbenick, Ph.D. (2020)

Agreed Protective order (Redlined)

Declaration of Morten Olgaard Jensen, Ph.D., DR.MED. in support of Patent Owner Response, dated December 18, 2020 and Curriculum Vitae of Morten Olgaard Jensen, Ph.D., DR.MED. (2020)

Declaration of Debra Herbenick, Ph.D. in support of Patent Owner Response, dated November 3, 2020

EXPUNGED

Claim Chart in support of Patent Owner Response

Order - Granting Patent Owner's Motion for Pro Hac Vice Admission of Califf T. Cooper - 37 CFR 42.10

Patent Owner Amended Power of Attorney

Patent Owner Amended Mandatory Notices

Patent Owner Unopposed Motion for Admission Pro Hac Vice of Califf T. Cooper

Declaration of Califf T. Cooper in Support of Patent Owner Unopposed Motion for Admission Pro Hac Vice of Califf T. Cooper

Petitioner's Amended Mandatory Notices

PETITIONER'S OBJECTIONS TO EVIDENCE SUBMITTED WITH PATENT OWNER'S PRELIMINARY RESPONSE

SCHEDULING ORDER

Ex 3002 Fang

Decision Granting Petitioner¿¿¿s Request for Rehearing of Decision Denying Institution Granting Institution of Inter Partes Review

Patent Owner Amended Mandatory Notices

Patent Owner's Amended Mandatory Notices

PETITIONER'S AMENDED MANDATORY NOTICES

Order Denying POP Request

Notification of Receipt of POP Request

Ex. 3001

PETITIONER'S REQUEST FOR REHEARING

Trial Instituted Document

PETITIONER'S AMENDED MANDATORY NOTICES

Declaration of Morten Olgaard Jensen, Ph.D., DR.MED.

Curriculum Vitae of Morten Olgaard Jensen, Ph.D., DR.MED.

Webster¿¿¿s Ninth New Collegiate Dictionary Definition: ¿¿¿bellows¿¿¿ Merriam-Webster Inc. (1991)

Patent Owner's Preliminary Response

D.S. Solurush et al., The Human Sexuality Education of Physicians in North American Medical Schools, International Journal of Impotence Research, 15 Supp. 5 S41-S45 (2003).

Debby Herbenick et al., An event¿¿¿level analysis of the sexual characteristics and composition among adults ages 18 to 59 Results from a national probability sample in the United States, The Journal of Sexual Medicine 2010, 7, 346-361 (2010).

Mayte Parada et al., Clitorodynia: A Descriptive Study of Clitoral Pain, The Journal of Sexual Medicine, 12(8), 1772-1780 (2015).

Selected Womanizer Reviews from Websites

Compilation of Womanizer Awards

Evidence of Copying

Erika Lynae, Satisfyer Pro 2 Review

Press Release

EIS, Inc. v. WOW Tech Int¿¿¿l GmbH, et al., C.A. No. 19-cv-01227-LPS (D. Del.), Complaint Excerpts (D.E. 1)

Declaration of Debra Herbenick, Ph.D.

Curriculum Vitae of Debra Herbenick, Ph.D.

Robert T. Michael et al., Sex in America: A Definitive Survey, Chapter 8 (1994).

Debra Herbenick et al., Prevalence and Characteristics of Vibrator Use by Woman in the United States: Results from a Nationally Representative Study, The Journal of Sexual Medicine 2009, 6, 1857-66 (2009).

Womanizer Webpage Womanizer - InsideOut,

Claim Chart

Debby Herbenick et al., Women's Experiences With Genital Touching, Sexual pleasure, and Orgasm: Results From a US Probability Sample of Women Ages 18 to 94, The Journal of Sex and Marital Therapy, 44(2), 201-212 (2017).

Hans Verstraelen et al., Persistent aching and itching of the clitoris, Archives of Gynecology and Obstetrics, 288, 233-234 (2013).

Debby Herbenick, SL Letter of the Day By Special Guest Debby Herbenick, SAVAGE LOVE

Debby Herbenick, Sex Made Easy Your Awkward Questions Answered For Better, Smarter, Amazing Sex, Running Press (2012)

Compilation of Womanizer Reviews from Amazon.com

Compilation of Womanizer Reviews from Websites

Satisfyer Pro G-Spot Rabbit

Examples of Product Descriptions

EIS, Inc. v. WOW Tech Intl GmbH, et al., C.A. No. 19-cv-01227-LPS (D. Delaware), Exhibit 15 to Original Complaint D.E. 1

Womanizer v. Satisfyer Comparison Guide

Greater Than, Less Than, Equal To Womanizer vs. Satisfyer Secret Pleasures Boutique

Womanizer vs. Satisfyer Clash of the Clit Suckers

U.S. Patent No. 6,464,653 B2 to Hovland et al

Satisfyer Pro 2 Website

Patent Owner Mandatory Notices Pursuant to 37 CFR 42.8

Patent Owner Power of Attorney Pursuant to 37 CFR 42.10(b)

Notice of Accord Filing Date

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,849,061

POWER OF ATTORNEY FOR PETITIONER EIS GMBH

U.S. Patent No. 9,849,061 B2

Declaration of Michael R. Prisco, P.E., Ph.D. - Part 1

Declaration of Michael R. Prisco, P.E., Ph.D. - Part 3

Prosecution History of U.S. Patent No. 9,849,061 B2 - Part 2

Prosecution History of U.S. Patent No. 9,849,061 B2 - Part 3

Declaration of Michael R. Prisco, P.E., Ph.D. - Part 2

Declaration of Michael R. Prisco, P.E., Ph.D. - Part 4

Declaration of Michael R. Prisco, P.E., Ph.D. - Part 5

Prosecution History of U.S. Patent No. 9,849,061 B2 - Part 1

Prosecution History of U.S. Patent No. 9,849,061 B2 - Part 5

U.S. Patent No. 5,725,473 to Taylor

Prosecution History of U.S. Patent No. 9,849,061 B2 - Part 4

U.S. Patent Publication No. 2013/0261385 A1to Zipper

Amended Complaint in EIS Inc. v. WOW Tech International GmbH et al.

GPTO Decision on Opposition DE 10 2013 110 501 and Translation

U.S. Patent No. 6,964,643 B2 to Hovland et al.

Billups, Role of Mechanical Devices in Treating Female Sexual Dysfunction

U.S. Patent No. 9,763,851 B2

German Patent No. 10 2013 110 501 and Certified Translation