Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 18
`Date Entered: April 21, 2014
`
`
`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
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`
`
`BONILLA, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`Paper No. 18
`Date Entered: April 21, 2014
`
`
`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
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`
`
`BONILLA, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`1. Introduction
`On April 17, 2014, an initial conference call was conducted between counsel
`for Petitioner, Jack Barufka and Ngai Zhang; counsel for Patent Owner, Matthew
`Phillips, Brett Pinkus, and Jonathan Suder; and Judges Bonilla and Jung. The
`purpose of the call was to determine if the parties have any issues concerning the
`Scheduling Order (Paper 16) and to discuss any motions contemplated by the
`parties. Prior to the call, Petitioner filed a paper requesting authorization to file a
`motion to submit supplemental information under 37 U.S.C. § 42.123(a). Paper
`17.
`
`2. Related Matters
`The parties have identified no other inter partes reviews, reexaminations or
`reissue applications of the ’417 patent. Counsel for Patent Owner confirmed that
`Patent Owner has asserted the ’417 patent in three U.S. District Court litigations,
`including one involving Petitioner as a defendant in the Northern District of
`California, one involving another defendant (W.L. Gore) in the Northern District
`of Florida (now settled), and one involving a different defendant (Cook Medical) in
`the Southern District of Indiana (having a scheduled trial date of September 15,
`2014).
`
`3. Scheduling Order
`Neither party indicated any issues with respect to the Scheduling Order. The
`parties are reminded that, without obtaining prior authorization from the Board,
`they may stipulate to different dates for DATES 1-3 by filing an appropriate notice
`with the Board. The parties may not stipulate to any other changes to the
`Scheduling Order.
`
`
`
`2
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`4. Discovery
`There are no discovery issues pending at this time. Counsel for Petitioner
`indicated that, at some future time, Petitioner may request additional discovery
`regarding expert reports and other documents potentially relating to patentability,
`which are currently under seal in a related district court litigation.
`The parties are reminded of the discovery provisions of 37 C.F.R. §§ 42.51-
`52 and Office Patent Trial Practice Guide. See Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48761-2 (Aug. 14, 2012). As noted in 37 C.F.R.
`§ 42.51(b)(2)(i), the parties may agree to additional discovery between themselves.
`Discovery requests and objections are not to be filed with the Board without prior
`authorization. If the parties are unable to resolve discovery issues between them,
`the parties may request a conference with the Board. A motion to exclude, which
`does not require Board authorization, must be filed to preserve any objection. See
`37 C.F.R. § 42.64, Office Patent Trial Practice Guide, 77 Fed. Reg. at 48767.
`Each party may depose experts and affiants supporting the opposing party.
`The parties are reminded of the provisions for taking testimony found at 37 C.F.R.
`§ 42.53 and the Office Patent Trial Practice Guide at 77 Fed. Reg. at 48772, App.
`D.
`
`5. No Proposed Motion to Amend
`During the conference call, counsel for the Patent Owner informed the
`Board that it will not file a motion to amend.
`
`6. Proposed Motion to Submit Supplemental Information
`Before the conference call, Petitioner filed a paper requesting authorization
`to file a motion to submit supplemental information “to present additional grounds
`of unpatentability.” Paper 17 at 1. Specifically, Petitioner requested authorization
`
`
`
`3
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`to file a motion to file in this proceeding Patent Owner’s “Infringement
`Contentions” (Ex. 1009) from the related district court litigation involving
`Petitioner, as well as three additional prior art references (Exs. 1010-1012). Id. at
`1-2. During the conference call, Counsel for Petitioner confirmed that Petitioner
`wished to file such documents to preemptively address positions that Patent Owner
`may take in its Patent Owner Response regarding claim construction and
`patentability, based on what Petitioner read in Patent Owner’s “Infringement
`Contentions” filed in district court.
`The Board explained that submitting supplemental information under 37
`C.F.R. § 42.123(a) as a vehicle to respond to a possible position that another party
`may take in the future is improper. Moreover, Petitioner may not raise a new
`ground of patentability after institution of a trial, even assuming Patent Owner
`offers its own claim construction, and patentability contentions based on that
`construction, in a Patent Owner Response. See Palo Alto Networks, Inc., v.
`Juniper Networks, Inc., IPR2013-00369, Paper 37 at 3 (granting a motion to
`submit supplemental information because, inter alia, “the supplemental
`information Petitioner seeks to submit does not change the grounds of
`unpatentability authorized in this proceeding, nor does it change the evidence
`initially presented in the Petition to support those grounds of unpatentability”).
`Petitioner will have an opportunity to respond to a Patent Owner Response
`in a Reply. Such a Reply, however, may respond only to arguments raised in the
`Patent Owner Response. 37 C.F.R. § 42.23(b). The Reply may cite new evidence,
`such as declarations, references, and other documents, as long as that evidence
`responds to Patent Owner’s arguments and is relevant to the grounds as instituted.
`
`
`
`4
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`Thus, the Board denies Petitioner’s request for authorization to file a motion
`to submit supplemental information, and will expunge Exhibits 1009-1012 from
`the record.
`
`7. Possible Motion to Seal and Protective Order
`Counsel for Patent Owner indicated that Patent Owner may file a motion to
`seal regarding documents under seal in a parallel district court litigation, assuming
`Petitioner obtains such documents through additional discovery, as discussed
`above. Such a motion is not authorized at this time. The parties may request a
`conference call with the Board in relation to a motion to seal and proposed
`protective order, assuming the need arises.
`In the meantime, the Board notes, as stated in 37 C.F.R. § 42.54, a party may
`file a motion to seal if the motion also contains a proposed protective order, such
`as the default standing protective order set forth in the Office Patent Trial Practice
`Guide, 77 Fed. Reg. at 48771, App. B. Upon filing of a motion and proposed
`protective order, the documents or things “shall be provisionally sealed on receipt
`of the motion and remain so pending the outcome of the decision on the motion.”
`37 C.F.R. § 42.14.
`As discussed in the conference call, no protective order is currently in place,
`and none will be entered in the proceeding unless a party files a motion to seal with
`a proposed protective order. If the parties choose to propose a protective order
`other than or departing from the default protective order, they must submit a joint,
`proposed protective order, accompanied by a red-lined version based on the default
`protective order in Appendix B to the Board’s Office Patent Trial Practice Guide,
`77 Fed. Reg. at 48771.
`If a party’s filed documents or things are accompanied by a motion to seal,
`any redacted information for which the motion is granted cannot be used in the
`5
`
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`
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`Case IPR2014-00100
`Patent 5,593,417
`
`Board’s final decision and also remain under seal, because the final decision is a
`matter of public record. Thus, the parties are cautioned to keep any redactions to a
`minimum, and to also consider other ways of presenting the information.
`
`8. Motions
`The parties are reminded that, except as otherwise provided in the Rules,
`Board authorization is required before filing a motion. 37 C.F.R. § 42.20(b). A
`party seeking to file a motion should request a conference to obtain authorization
`to file the motion. No other motions are authorized in this proceeding at this time.
`
`9. Settlement
`Although the parties have engaged in settlement discussions, the parties
`stated that there is no immediate prospect of settlement that will affect the conduct
`of this proceeding.
`
`Accordingly, it is
`ORDERED that Petitioner’s request for authorization to file a motion to
`submit supplemental information under 37 C.F.R. § 42.123(a) is DENIED;
`FURTHER ORDERED that Exhibits 1009-1012 filed on April 15, 2015, are
`expunged from the record of this proceeding;
`FURTHER ORDERED that no other motions are authorized at this time,
`other than those already authorized by rule or the Scheduling Order; and
`FURTHER ORDERED that due dates specified in the Scheduling Order
`dated March 25, 2014, remain unchanged.
`
`6
`
`
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`PETITIONER:
`
`
`Jack Barufka
`Pillsbury Winthrop Shaw Pittman LLP
`barufka@pillsburylaw.com
`
`Ngai Zhang
`Pillsbury Winthrop Shaw Pittman LLP
`ngai.zhang@pillsburylaw.com
`
`
`
`
`
`
`
`PATENT OWNER:
`
`
`Matthew Phillips
`Renaissance IP Law Group LLP
`matthew.phillips@renaissanceiplaw.com
`
`Brett M. Pinkus
`Friedman, Suder & Cooke
`pinkus@fsclaw.com
`
`Jonathan T. Suder
`Friedman, Suder & Cooke
`jts@fsclaw.com
`
`
`
`7
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