Trials@uspto.gov Paper No. 10 Paper No. 12
`
`571-272-7822
`Date Entered: May 29, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC., MEDTRONIC VASCULAR, INC., and
`MEDTRONIC COREVALVE, LLC
`Petitioner
`
`v.
`
`TROY R. NORRED, M.D.
`Patent Owner
`____________
`
`Case IPR2014-00110
`Patent 6,482,228
`____________
`
`
`
`
`Before JOSIAH C. COCKS, SHERIDAN K. SNEDDEN, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`INITIAL CONFERENCE SUMMARY
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`

`

`Case IPR2014-00110
`Patent 6,482,228
`
`
`1. Introduction
`
`On May 28, 2014, an initial conference call was conducted between
`
`respective counsel for the parties and Judges Cocks, Snedden, and Grossman.
`
`Medtronic, Inc., Medtronic Vascular, Inc., and Medtronic Corevalve, LLC
`
`(“Petitioner”) was represented by lead counsel Jack Barufka and Evan Finkel.
`
`Troy R. Norred, M.D. (“Patent Owner”) was represented by lead counsel James
`
`Kernell. The purpose of the call was to determine if the parties have any issues
`
`concerning the Scheduling Order (Paper 11) and to discuss any motions
`
`contemplated by the parties.
`
`2. Related Matters
`
`No reexaminations or reissue applications of patent 6,482,228 (“the ’228
`
`patent”) have been identified by the parties.
`
`Petitioner advised the panel that it had filed on May 27, 2014 an additional
`
`request for inter partes review of the ’228 patent1 and had filed also a motion for
`
`joinder of that inter partes review proceeding with this involved proceeding.
`
`Patent Owner informed the Board that it would oppose joinder. The panel
`
`indicated that it would consider the matter when appropriate.
`
`Petitioner also informed the panel that it had filed previously an additional
`
`inter partes review proceeding involving the ’228 patent and observed that the
`
`proceeding that been assigned to a different panel.2 Petitioner questioned the
`
`present panel as to whether the claim construction that had been articulated in this
`
`involved proceeding (IPR2014-00110) would be the same as in the related
`
`proceeding. The panel of this proceeding indicated that it could not speak for a
`
`
`1 See IPR2014-00823.
`
` See IPR2014-00395.
`
`2
`
` 2
`
`
`
`

`

`Case IPR2014-00110
`Patent 6,482,228
`
`different panel in a different proceeding, but expressed that, in such circumstances,
`
`the Board as a whole strives for consistency.
`
`3. Scheduling Order
`
`Lead counsel for Patent Owner expressed some concern that Patent Owner
`
`may have difficulty in timely providing the appropriate filings due by DUE
`
`DATE 1. During the call, the panel reminded the parties that, without obtaining
`
`prior authorization from the Board, they may stipulate to different dates for
`
`DATES 1-53 by filing an appropriate notice with the Board. Lead counsel for
`
`Patent Owner indicated that he had not yet conferred with opposing counsel as to
`
`possible stipulation of the due dates should the need arise. The panel advised
`
`counsel to confer and, if necessary, contact the Board if agreement cannot be
`
`reach.
`
`4. Protective Order
`
`The parties have not discussed a protective order at this time. No protective
`
`order has been entered. Should circumstances change, the parties are reminded of
`
`the requirement for a protective order when filing a Motion to Seal. 37 C.F.R.
`
`§ 42.54. If the parties choose to propose a protective order other than or departing
`
`from the default Standing Protective Order, Office Trial Practice Guide, 77 Fed.
`
`Reg. 48756, App. B (Aug. 14, 2012), 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. See id. at 48769.
`
`5. Discovery
`
`The parties are reminded of the discovery provisions of 37 C.F.R. §§ 42.51-
`
`52 and Office Trial Practice Guide. See 77 Fed. Reg. at 48761-2. Discovery
`
`3 The parties may not stipulate to changes for any other DUE DATE.
`3
`
`
`
`

`

`Case IPR2014-00110
`Patent 6,482,228
`
`requests and objections are not to be filed with the Board without prior
`
`authorization. The parties may request a conference with the Board if the parties
`
`are unable to resolve discovery issues between them. A motion to exclude, which
`
`does not require Board authorization, must be filed to preserve any objection. See
`
`37 C.F.R. § 37.64, Office Trial Practice Guide, 77 Fed. Reg. at 48767. There are
`
`no discovery issues pending at this time.
`
`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 Trial Practice Manual at 77 Fed. Reg. at 48772, App. D.
`
`6. 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 motions are authorized in this proceeding at this time.
`
`7. Motion to Amend
`
`
`
`Although Patent Owner may file one motion to amend the patent by
`
`cancelling or substituting claims without Board authorization, Patent Owner must
`
`confer with the Board before filing a motion to amend. 37 C.F.R. § 42. 121(a).
`
`During the conference call, counsel for the Patent Owner informed the Board that
`
`it is contemplating actively a motion to amend concerning the request entry of
`
`narrowing substitute claims for claims 16 and claim 20 of the ’228 patent.
`
`
`
`During the call, the Board reminded Patent Owner that, as the moving party,
`
`it bears the burden of proof in establishing entitlement for the requested relief. See
`
`37 C.F.R. § 42.20(c). A motion to amend must explain in detail how any
`
`proposed substitute claim obviates the grounds of unpatentability authorized in this
`
`
`
`4
`
`

`

`Case IPR2014-00110
`Patent 6,482,228
`
`proceeding, explain how any substitute claim is patentable generally over the prior
`
`art known to the Patent Owner, and clearly identify where the corresponding
`
`written description support in the original disclosure can be found for each
`
`substitute claim. If the motion to amend includes a proposed substitution of claims
`
`beyond a one-for-one substitution, the motion must explain why more than a one-
`
`for-one substitution of claims is necessary.
`
`
`
`Counsel for Patent Owner expressed that he was aware of the distinction in
`
`amendment practice between inter partes review proceedings and other
`
`proceedings such as examination, reexamination, and reissue proceedings. The
`
`following is a reproduction of a blog posting from the Boards “AIA Blog,” that is
`
`titled “USPTO Message from PTAB: How to Make Successful Claim
`
`Amendments in an AIA Trial Proceeding”4:
`
`In an AIA trial proceeding, such as an inter partes review (IPR), post-
`grant review (PGR), or a covered business method patent review
`(CBM), a patent owner may move to amend the claims of the
`challenged patent. The patent owner should not, however, approach
`the amendment process in an AIA trial proceeding like the
`amendment process to overcome an Office rejection filed during the
`prosecution of a patent application or during a reexamination or
`reissue proceeding.
`
`the prosecution of a patent application or during a
`During
`reexamination or reissue proceeding, an applicant has a right to amend
`claims prior to a final Office action. Once an amendment is made, the
`burden then falls on the Examiner to show that the amended claims
`are unpatentable. In doing so, the Examiner undertakes a further prior
`art search, taking into account the added limitations. These aspects are
`different in an IPR, PGR, or CBM proceeding.
`
`
`4 See http://www.uspto.gov/blog/aia/entry/uspto_ptab_message_how_to (last
`accessed May 28, 2014.
`
`
`
`5
`
`

`

`Case IPR2014-00110
`Patent 6,482,228
`
`
`First, per the statute, a patent owner in an IPR, PGR, or CBM
`proceeding only may “move” to amend the claims. The proposed
`amendment is not entered automatically as it would be during
`prosecution of a patent application or during a reexamination or
`reissue proceeding.
`
`Second, the patent owner in an IPR, PGR, or CBM proceeding bears
`the burden to show that the proposed substitute claims are patentable.
`The statute prescribes that the patent owner must move to amend the
`claims, and in so doing, as the moving party bears the burden to show
`entitlement to the relief requested by motion. An applicant bears no
`such burden during the prosecution of a patent application. Likewise,
`a patent owner bears no such burden due a reexamination or re[]issue
`proceeding. Rather, the Examiner has the burden to establish the
`unpatentability of any claim during examination, reexamination, and
`reissue.
`
`Finally, the Board in an IPR, PGR, or CBM proceeding conducts no
`prior art search and performs no examination. Instead, the Board’s
`grant of a motion to amend operates to add the proposed substitute
`claims directly to an issued patent without a search or examination.
`
`To succeed on a motion to amend in an IPR, PGR, or CBM
`proceeding given these distinguishing aspects, a patent owner should,
`with respect to each claim feature added by amendment, discuss what
`it knows what was previously known about the feature and about the
`level of ordinary skill in the art. A patent owner does not need to
`address individually all the items of prior art known to the patent
`owner. Nor does a patent owner need to address all of the prior art in
`existence at the time of filing. Rather, the patent owner should explain
`why the claim feature added by amendment, in combination with all
`the other features of the claim, would not have been obvious to a
`person of ordinary skill in the art at the time of the invention, in light
`of the knowledge and skill level of the person of ordinary skill in the
`art.
`
`Additionally, a patent owner must be mindful that it is not sufficient
`to establish that its amended claims are patentable over the prior art
`applied by the petitioner. The petitioner did not select the prior art
`identified in the petition with knowledge of patent owner’s proposed
`
`
`
`6
`
`

`

`Case IPR2014-00110
`Patent 6,482,228
`
`
`substitute claims. In fact, the references applied by the petitioner
`reasonably are not expected to be the closest prior art regarding the
`added feature in the amended claims. Thus, while it is necessary for
`the patent owner to distinguish its amended claims over the prior art
`applied by the petitioner, a patent owner should not limit its motion to
`amend to that art. Demonstrating patentable distinction over the prior
`art applied by the petitioner does not establish the overall patentability
`of the proposed claims sufficient to have them added to the involved
`patent.
`
`Finally, a statement by the patent owner that the closest prior art it
`knows about was applied by the petitioner in the petition can be
`helpful if the supporting basis is explained in and established by the
`motion to amend. A conclusory statement to this effect would be of
`questionable value because its meaning depends on the patent owner’s
`subjective focus when making the statement.
`
`
`
`For further guidance regarding these requirements, Patent Owner is directed
`
`to prior Board decisions concerning motions to amend, including Nichia
`
`Corporation v. Emcore Corporation, IPR2012-00005, Paper No. 27 (June 3,
`
`2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26
`
`(June 11, 2013), Paper No. 66 (January 7, 2014); ZTE Corp. v. ContentGuard
`
`Holdings, IPR2013-00136, Paper 33 (November 7, 2013); and Invensense, Inc. v.
`
`STMicroelectronics, Inc., IPR2013-00241, Paper No. 21, (January 9, 2014).
`
`
`
`The parties are advised that, in this involved inter partes review proceeding,
`
`the initial conference call has satisfied Patent Owner’s obligation under 37 C.F.R.
`
`§ 42. 121(a) to confer with the Board prior to filing a motion to amend.
`
`
`
`8. Settlement
`
`The parties stated that there is no immediate prospect of settlement that will
`
`affect the conduct of this proceeding.
`
`
`
`
`
`7
`
`

`

`Case IPR2014-00110
`Patent 6,482,228
`
`PETITIONER:
`
`Jack Barufka
`jack.barufka@pillsburylaw.com
`
`Evan Finkel
`evan.finkel@pillsburylaw.com
`
`
`
`PATENT OWNER:
`
`James Kernell
`jjk@kcpatentlaw.com
`
`
`
`
`
`
`
`8
`
`