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`571-272-7822
`Date Entered: May 29, 2014
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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., MEDTRONIC VASCULAR, INC., and
`MEDTRONIC COREVALVE, LLC
`Petitioner
`
`v.
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`TROY R. NORRED, M.D.
`Patent Owner
`____________
`
`Case IPR2014-00111
`Patent 6,482,228
`____________
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`
`
`
`Before JOSIAH C. COCKS, SHERIDAN K. SNEDDEN, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
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`
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`INITIAL CONFERENCE SUMMARY
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`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`Case IPR2014-00111
`Patent 6,482,228
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`1. Introduction
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`On May 28, 2014, an initial conference call was conducted between
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`respective counsel for the parties and Judges Cocks, Snedden, and Grossman. .
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`Medtronic, Inc., Medtronic Vascular, Inc., and Medtronic Corevalve, LLC
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`(“Petitioner”) was represented by lead counsel Jack Barufka and Evan Finkel. Troy
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`R. Norred, M.D. (“Patent Owner”) was represented by lead counsel James
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`Kernell. The purpose of the call was to determine if the parties have any issues
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`concerning the Scheduling Order (Paper 11) and to discuss any motions
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`contemplated by the parties.
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`2. Related Matters
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`No reexaminations or reissue applications of patent 6,482,228 (“the ’228
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`patent”) have been identified by the parties.
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`Petitioner advised the panel that it had filed on May 27, 2014 an additional
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`request for inter partes review of the ’228 patent1 and had filed also a motion for
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`joinder of that inter partes review proceeding with this involved proceeding.
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`Patent Owner informed the Board that it would oppose joinder. The panel
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`indicated that it would consider the matter when appropriate.
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`Petitioner also informed the panel that it had filed previously an additional
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`inter partes review proceeding involving the ’228 patent and observed that the
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`proceeding that been assigned to a different panel. 2 Petitioner questioned the
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`present panel as to whether the claim construction that had been articulated in this
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`involved proceeding (IPR2014-00111) would be the same as in the related
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`proceeding. The panel of this proceeding indicated that it could not speak for a
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`1 See IPR2014-00823.
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` See IPR2014-00395.
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`2
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` 2
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`Case IPR2014-00111
`Patent 6,482,228
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`different panel in a different proceeding, but expressed that, in such circumstances,
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`the Board as a whole strives for consistency.
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`3. Scheduling Order
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`Lead counsel for Patent Owner expressed some concern that Patent Owner
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`may have difficulty in timely providing the appropriate filings due by DUE
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`DATE 1. During the call, the panel reminded the parties that, without obtaining
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`prior authorization from the Board, they may stipulate to different dates for
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`DATES 1-53 by filing an appropriate notice with the Board. Lead counsel for
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`Patent Owner indicated that he had not yet conferred with opposing counsel as to
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`possible stipulation of the due dates should the need arise. The panel advised
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`counsel to confer and, if necessary, contact the Board if agreement cannot be
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`reach.
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`4. Protective Order
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`The parties have not discussed a protective order at this time. No protective
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`order has been entered. Should circumstances change, the parties are reminded of
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`the requirement for a protective order when filing a Motion to Seal. 37 C.F.R.
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`§ 42.54. If the parties choose to propose a protective order other than or departing
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`from the default Standing Protective Order, Office Trial Practice Guide, 77 Fed.
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`Reg. 48756, App. B (Aug. 14, 2012), they must submit a joint, proposed protective
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`order, accompanied by a red-lined version based on the default protective order in
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`Appendix B to the Board’s Office Patent Trial Practice Guide. See id. at 48769.
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`5. Discovery
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`The parties are reminded of the discovery provisions of 37 C.F.R. §§ 42.51-
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`52 and Office Trial Practice Guide. See 77 Fed. Reg. at 48761-2. Discovery
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`3 The parties may not stipulate to changes for any other DUE DATE.
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`Patent 6,482,228
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`requests and objections are not to be filed with the Board without prior
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`authorization. The parties may request a conference with the Board if the parties
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`are unable to resolve discovery issues between them. A motion to exclude, which
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`does not require Board authorization, must be filed to preserve any objection. See
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`37 C.F.R. § 37.64, Office Trial Practice Guide, 77 Fed. Reg. at 48767. There are
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`no discovery issues pending at this time.
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`Each party may depose experts and affiants supporting the opposing party.
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`The parties are reminded of the provisions for taking testimony found at 37 C.F.R.
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`§ 42.53 and the Office Trial Practice Manual at 77 Fed. Reg. at 48772, App. D.
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`6. Motions
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`The parties are reminded that, except as otherwise provided in the Rules,
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`Board authorization is required before filing a motion. 37 C.F.R. § 42.20(b). A
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`party seeking to file a motion should request a conference to obtain authorization
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`to file the motion. No motions are authorized in this proceeding at this time.
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`7. Motion to Amend
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`Although Patent Owner may file one motion to amend the patent by
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`cancelling or substituting claims without Board authorization, Patent Owner must
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`confer with the Board before filing a motion to amend. 37 C.F.R. § 42. 121(a).
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`During the conference call, counsel for the Patent Owner informed the Board that
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`it is contemplating actively a motion to amend concerning the request entry of
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`narrowing substitute claims for claims 16 and claim 20 of the ’228 patent.
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`During the call, the Board reminded Patent Owner that, as the moving party,
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`it bears the burden of proof in establishing entitlement for the requested relief. See
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`37 C.F.R. § 42.20(c). A motion to amend must explain in detail how any
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`proposed substitute claim obviates the grounds of unpatentability authorized in this
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`4
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`Case IPR2014-00111
`Patent 6,482,228
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`proceeding, explain how any substitute claim is patentable generally over the prior
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`art known to the Patent Owner, and clearly identify where the corresponding
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`written description support in the original disclosure can be found for each
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`substitute claim. If the motion to amend includes a proposed substitution of claims
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`beyond a one-for-one substitution, the motion must explain why more than a one-
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`for-one substitution of claims is necessary.
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`Counsel for Patent Owner expressed that he was aware of the distinction in
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`amendment practice between inter partes review proceedings and other
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`proceedings such as during examination, reexamination, and reissue proceedings.
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`The following is a reproduction of a blog posting from the Boards “AIA Blog,”
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`that is titled “USPTO Message from PTAB: How to Make Successful Claim
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`Amendments in an AIA Trial Proceeding”4:
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`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.
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`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.
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`4 See http://www.uspto.gov/blog/aia/entry/uspto_ptab_message_how_to (last
`accessed May 28, 2014.
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`5
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`Case IPR2014-00111
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`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.
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`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.
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`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.
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`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.
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`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
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`6
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`Case IPR2014-00111
`Patent 6,482,228
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`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.
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`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.
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`For further guidance regarding these requirements, Patent Owner is directed
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`to prior Board decisions concerning motions to amend, including Nichia
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`Corporation v. Emcore Corporation, IPR2012-00005, Paper No. 27 (June 3,
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`2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26
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`(June 11, 2013), Paper No. 66 (January 7, 2014); ZTE Corp. v. ContentGuard
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`Holdings, IPR2013-00136, Paper 33 (November 7, 2013); and Invensense, Inc. v.
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`STMicroelectronics, Inc., IPR2013-00241, Paper No. 21, (January 9, 2014).
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`The parties are advised that, in this involved inter partes review proceeding,
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`the initial conference call has satisfied Patent Owner’s obligation under 37 C.F.R.
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`§ 42. 121(a) to confer with the Board prior to filing a motion to amend.
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`8. Settlement
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`The parties stated that there is no immediate prospect of settlement that will
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`affect the conduct of this proceeding.
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`7
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`8
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`Case IPR2014-00111
`Patent 6,482,228
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`PETITIONER:
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`Jack Barufka
`jack.barufka@pillsburylaw.com
`
`Evan Finkel
`evan.finkel@pillsburylaw.com
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`
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`PATENT OWNER:
`
`James Kernell
`jjk@kcpatentlaw.com