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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC., and MEDTRONIC VASCULAR, INC.
`Petitioner
`
`v.
`
`ENDOTACH LLC
`Patent Owner
`
`____________
`
`Case IPR2014-00100
`Patent 5,593,417
`____________
`
`Attorney Docket No. 058888-0000015
`
`____________
`
`
`REQUEST FOR AUTHORIZATION TO FILE MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION UNDER 37 C.F.R. § 42.123(a)
`
`

`

`
`
`
`In advance of the initial conference call scheduled for Thursday, April 17,
`
`2014, Petitioner requests authorization under 37 C.F.R. § 42.123(a) to file a motion
`
`to submit supplemental information relevant to a claim for which the trial has been
`
`instituted. Specifically, Petitioner requests authorization to file a motion to submit
`
`supplementation information to present additional grounds of unpatentability
`
`because it meets the requirements of 37 C.F.R. § 42.123(a) – specifically: (1) this
`
`authorization request is being made within one month of the trial institution date of
`
`March 26, 2014; and (2) the supplemental information is relevant to a claim
`
`(i.e., claim 1) for which the trial has been instituted.
`
`Petitioner’s request for authorization to file a motion to submit supplemental
`
`information should be granted at least because:
`
`(1) Petitioner has become aware of three secondary references that were
`
`unknown to it when the Petition was filed, and which are likely to be
`
`relevant to the grounds for which trial has been granted based upon
`
`Patent Owner’s claim interpretation in concurrent litigation.
`
`(2) Specifically, in co-pending litigation over the ‘417 patent between
`
`Patent Owner and Petitioner, Petitioner’s litigation counsel, Karen
`
`McDaniel of the Briggs and Morgan firm, received Patent Owner’s
`
` Infringement Contentions on February 18, 2014 (attached hereto as
`
`Exhibit 1009);
`
`
`
`
`

`

`
`
`
`
`
`(3) In those Infringement Contentions, citing to claim construction
`
`rulings in other litigation involving the same patent (Endotach LLC v.
`
`Cook Medical Inc., 1:12-cv-1630-LJM-DKL, Southern District of
`
`Indiana (Dkt. No. 102)), Patent Owner posits that the term “engage”
`
`means “to partly embed, interlock or enmesh,” while the term “tightly
`
`engage” in claim 1 excludes penetration that perforates or creates
`
`holes through the wall.
`
`(4) The underlined language above is entirely absent from claim 1 when
`
`read literally.
`
`(5) While Petitioner appreciates that the rules for claim interpretation
`
`used in district court litigation are different than the “broadest
`
`reasonable interpretation in light of the specification” used for these
`
`IPR proceedings, Petitioner nevertheless expects that Patent Owner
`
`will attempt to argue for the same interpretation in these proceedings.
`
`(6) On the basis of Patent Owner’s Infringement Contentions, Petitioner’s
`
`litigation counsel performed a prior art search in March 2014 that
`
`uncovered three prior art secondary references that show stent
`
`projections that partly embed, interlock or enmesh in the surrounding
`
`vessel. Specifically, those references are: U.S. Patent No. 5,562,725 to
`
`Schmitt, U.S. Patent No. 5,370,657 to Irie, and U.S. Patent
`
`2
`
`

`

`
`
`
`No. 3,952,747 to Kimmel (attached hereto as Exhibits 1010, 1011,
`
`and 1012). Petitioner was not in possession of these three secondary
`
`references prior to the Petition’s filing date of October 31, 2013 for
`
`this IPR proceeding.
`
`(7) These three secondary references are highly material to patentability
`
`in the context of arguments Petitioner now expects Patent Owner to
`
`assert in these proceedings. Petitioner proposes to add these three
`
`secondary references to show that this specific attribute is clearly well
`
`known in the art.
`
`As indicated above, Petitioner (and its litigation and IPR counsels) was not
`
`in possession of the relevant Infringement Contention documents or the additional
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`prior art references until after the IPR petition’s filing date of October 31, 2013.
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`Accordingly, authorization for Petitioner to file a motion to submit supplemental
`
`information under 37 C.F.R. § 42.123(a) to present the additional grounds for
`
`unpatentability should be granted.
`
`
`
`
`
`3
`
`

`

`HAW PITTMAN LLP
`
`Respectfully submitted,
`
`ILLSBURY WINT
`4Q
`
`ac S. Barufl<a
`
`Reg. No. 37,087
`Tel. No. 703.770.7712
`
`Fax No. 703.905.2500
`
`Date: April 151 2014
`
`PO. Box 10500
`
`McLean, VA 22102
`
`(703) 770-7900
`
`

`

`
`
`
`EXHIBIT APPENDIX
`
`Exhibit Description
`Patent Owner’s Infringement Contentions
`U.S. Patent No. 5,562,725 to Schmitt
`U.S. Patent No. 5,370,657 to Irie
`U.S. Patent No. 3,952,747 to Kimmel
`
`Exhibit No.
`1009
`1010
`1011
`1012
`
`
`
`5
`
`

`

`CERTIFICATE OF SERVICE 137 C.F.R. § 42.619414”
`
`I hereby certify that a true copy of the REQUEST FOR AUTHORIZATION
`
`TO FILE MOTION TO SUBMIT SUPPLEMENTAL INFORMATION UNDER
`
`37 C.F.R. § 42.123(a) and Exhibits 1009—1012 were served electronically by email
`
`this 15th day of April, 2014 on the attorneys of record for the Patent Owner:
`
`Matthew Phillips
`(matthew.phillips@renaissanceiplaw.com)
`Renaissance IP Law Group LLP
`9600 SW. Oak St., Suite 560
`
`Portland, OR 97223
`
`Brett M. Pinkus
`
`(pinkus@fsclaw.com)
`Jonathan T. Suder
`
`(jts@fsclaw.com)
`Friedman, Suder & Cooke
`
`604 E. Fourth Street, Suite 200
`
`Fort Worth, TX 76102
`
`Respectfully submitted,
`
`
`
`PILLSBURY WW HAW PITTMAN LLP
`
`é ’ ‘
`. Barufl<a
`
`\
`
`
`‘.
`
`
`
`eg. No. 37,087
`Tel. No. 703.770.7712
`
`Fax No. 703.905.2500
`
`Date: April 15, 2014
`
`PO. Box 10500
`
`McLean, VA 22102
`
`(703) 770—7900
`
`

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