`571-272-7822
`
`
`
`
`
`
`
`Paper No. 21
`Entered: May 28, 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 IPR2014-00695
`Case IPR2014-001001
`Patent 5,593,417
`____________
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`CONFERENCE CALL SUMMARY AND ORDER
`
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 We exercise our discretion to issue one Decision to be entered in each case. The
`parties may not use this style heading absent our leave.
`
`
`
`Case IPR2014-00695
`Case IPR2014-00100
`Patent 5,593,417
`
`
`
`
`
`
`
`
`1. Introduction
`On May 22, 2014, a conference call was conducted between counsel for
`Petitioner, Jack Barufka and Ngai Zhang; counsel for Patent Owner, Matthew
`Phillips; and Judges Bonilla, Fitzpatrick, and Jung. Both parties requested the call
`to discuss a Motion for Joinder (Paper 2, “Joinder Motion”) filed by Petitioner,
`along with its Petition (Paper 1), on April 25, 2014, in IPR2014-00695. The
`Joinder Motion requests joinder of IPR2014-00695 with IPR2014-00100, which
`involve the same parties, as well as the same patent and challenged claims. This
`panel instituted an inter partes review in IPR2014-00100 on March 25, 2014.
`Prior to the call, Petitioner submitted to the Board by e-mail correspondence a
`proposed scheduling order that Petitioner indicated is “acceptable to both parties”
`in the event the Board grants the Joinder Motion.
`2. Discussion
` During the call, counsel for Petitioner emphasized that the parties worked
`together to agree upon the proposed scheduling order. Counsel for Patent Owner
`stated that Patent Owner intends to file a preliminary response in IPR2014-00695,
`but also requests joinder in the event the Board decides to institute review based on
`any ground in the Petition in this proceeding.
` It is premature to decide the Joinder Motion or adopt the proposed
`scheduling order before we decide whether to institute review in IPR2014-00695 in
`the first instance. If we deny institution, for example, the Joinder Motion and
`proposed schedule become moot. That said, during the call, we provided guidance
`to the parties in relation to what the Board might find acceptable when considering
`the Joinder Motion in the event that we grant institution.
`
`
`
`2
`
`
`
`Case IPR2014-00695
`Case IPR2014-00100
`Patent 5,593,417
`
`
`
`
`
`
`
`
`First, as stated in the call, we appreciate the agreement between the parties
`regarding the proposed scheduling order, as well as obvious good efforts to offer a
`compressed schedule, including an accelerated due date for Patent Owner’s
`preliminary response. Such efforts will help ensure that both proceedings will
`conclude within one year of institution in the first case, IPR2014-00100. We note,
`however, that the proposal to move the oral hearing date far beyond the current
`hearing date in IPR2014-00100 of November 20, 2014, will most likely not be
`acceptable to the panel. Thus, we suggest that the parties propose a schedule that
`allows for a hearing date closer to November 20, 2014, such as sometime before
`the holidays in December 2014, rather than on January 9, 2015.
`On this note, because Patent Owner has indicated that it will file a
`preliminary response and will not oppose joinder in the event of institution, we
`suggest that Patent Owner file a response to Petitioner’s Joinder Motion, indicating
`agreement between the parties regarding a possible joinder, as well as providing a
`revised proposed scheduling order along the lines discussed above.
`As also indicated during the call, regardless of the joinder issue, the parties
`may stipulate to different dates for DUE DATES 1-5 (earlier or later, but no later
`than DUE DATE 6) in IPR2014-00100. A notice of such stipulation, specifically
`identifying the changed due dates, must be promptly filed. Currently, the DUE
`DATES in IPR2014-00100 remain as indicated in the Scheduling Order (Paper 16)
`for that proceeding.
`
`
`
`3
`
`
`
`Case IPR2014-00695
`Case IPR2014-00100
`Patent 5,593,417
`
`
`
`
`
`
`
`
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file a response to Petitioner’s
`Motion for Joinder at the same time it files its preliminary response, including a
`revised proposed scheduling order as an appendix; and
`FURTHER ORDERED that the parties may stipulate to different dates for
`DUE DATES 1 through 5 (earlier or later, but no later than DUE DATE 6) in
`IPR2014-00100.
`
`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 (Reg. No. 59,980)
`Friedman, Suder & Cooke
`pinkus@fsclaw.com
`
`Jonathan T. Suder
`Friedman, Suder & Cooke
`jts@fsclaw.com
`
`
`
`4
`
`
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