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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC., and MEDTRONIC VASCULAR, INC.
`Petitioner
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`v.
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`ENDOTACH LLC
`Patent Owner
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`____________
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`Case IPR2014-00100
`Patent 5,593,417
`____________
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`Attorney Docket No. 058888-0000015
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`____________
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`REQUEST FOR AUTHORIZATION TO FILE MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION UNDER 37 C.F.R. § 42.123(a)
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`In advance of the initial conference call scheduled for Thursday, April 17,
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`2014, Petitioner requests authorization under 37 C.F.R. § 42.123(a) to file a motion
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`to submit supplemental information relevant to a claim for which the trial has been
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`instituted. Specifically, Petitioner requests authorization to file a motion to submit
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`supplementation information to present additional grounds of unpatentability
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`because it meets the requirements of 37 C.F.R. § 42.123(a) – specifically: (1) this
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`authorization request is being made within one month of the trial institution date of
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`March 26, 2014; and (2) the supplemental information is relevant to a claim
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`(i.e., claim 1) for which the trial has been instituted.
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`Petitioner’s request for authorization to file a motion to submit supplemental
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`information should be granted at least because:
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`(1) Petitioner has become aware of three secondary references that were
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`unknown to it when the Petition was filed, and which are likely to be
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`relevant to the grounds for which trial has been granted based upon
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`Patent Owner’s claim interpretation in concurrent litigation.
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`(2) Specifically, in co-pending litigation over the ‘417 patent between
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`Patent Owner and Petitioner, Petitioner’s litigation counsel, Karen
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`McDaniel of the Briggs and Morgan firm, received Patent Owner’s
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` Infringement Contentions on February 18, 2014 (attached hereto as
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`Exhibit 1009);
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`(3) In those Infringement Contentions, citing to claim construction
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`rulings in other litigation involving the same patent (Endotach LLC v.
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`Cook Medical Inc., 1:12-cv-1630-LJM-DKL, Southern District of
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`Indiana (Dkt. No. 102)), Patent Owner posits that the term “engage”
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`means “to partly embed, interlock or enmesh,” while the term “tightly
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`engage” in claim 1 excludes penetration that perforates or creates
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`holes through the wall.
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`(4) The underlined language above is entirely absent from claim 1 when
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`read literally.
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`(5) While Petitioner appreciates that the rules for claim interpretation
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`used in district court litigation are different than the “broadest
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`reasonable interpretation in light of the specification” used for these
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`IPR proceedings, Petitioner nevertheless expects that Patent Owner
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`will attempt to argue for the same interpretation in these proceedings.
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`(6) On the basis of Patent Owner’s Infringement Contentions, Petitioner’s
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`litigation counsel performed a prior art search in March 2014 that
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`uncovered three prior art secondary references that show stent
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`projections that partly embed, interlock or enmesh in the surrounding
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`vessel. Specifically, those references are: U.S. Patent No. 5,562,725 to
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`Schmitt, U.S. Patent No. 5,370,657 to Irie, and U.S. Patent
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`2
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`No. 3,952,747 to Kimmel (attached hereto as Exhibits 1010, 1011,
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`and 1012). Petitioner was not in possession of these three secondary
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`references prior to the Petition’s filing date of October 31, 2013 for
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`this IPR proceeding.
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`(7) These three secondary references are highly material to patentability
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`in the context of arguments Petitioner now expects Patent Owner to
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`assert in these proceedings. Petitioner proposes to add these three
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`secondary references to show that this specific attribute is clearly well
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`known in the art.
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`As indicated above, Petitioner (and its litigation and IPR counsels) was not
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`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
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`information under 37 C.F.R. § 42.123(a) to present the additional grounds for
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`unpatentability should be granted.
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`3
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`HAW PITTMAN LLP
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`Respectfully submitted,
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`ILLSBURY WINT
`4Q
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`ac S. Barufl<a
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`Reg. No. 37,087
`Tel. No. 703.770.7712
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`Fax No. 703.905.2500
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`Date: April 151 2014
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`PO. Box 10500
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`McLean, VA 22102
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`(703) 770-7900
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`EXHIBIT APPENDIX
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`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
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`Exhibit No.
`1009
`1010
`1011
`1012
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`5
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`CERTIFICATE OF SERVICE 137 C.F.R. § 42.619414”
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`I hereby certify that a true copy of the REQUEST FOR AUTHORIZATION
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`TO FILE MOTION TO SUBMIT SUPPLEMENTAL INFORMATION UNDER
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`37 C.F.R. § 42.123(a) and Exhibits 1009—1012 were served electronically by email
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`this 15th day of April, 2014 on the attorneys of record for the Patent Owner:
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`Matthew Phillips
`(matthew.phillips@renaissanceiplaw.com)
`Renaissance IP Law Group LLP
`9600 SW. Oak St., Suite 560
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`Portland, OR 97223
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`Brett M. Pinkus
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`(pinkus@fsclaw.com)
`Jonathan T. Suder
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`(jts@fsclaw.com)
`Friedman, Suder & Cooke
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`604 E. Fourth Street, Suite 200
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`Fort Worth, TX 76102
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`Respectfully submitted,
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`PILLSBURY WW HAW PITTMAN LLP
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`é ’ ‘
`. Barufl<a
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`\
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`‘.
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`eg. No. 37,087
`Tel. No. 703.770.7712
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`Fax No. 703.905.2500
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`Date: April 15, 2014
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`PO. Box 10500
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`McLean, VA 22102
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`(703) 770—7900
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`