Trials@uspto.gov Paper No. 10 Paper No. 15
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`571-272-7822
`Date Entered: May 28, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`FOCAL THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`
`SENORX, INC.,
`Patent Owner.
`
`_______________
`
`Case IPR2014-00116
`Patent 8,288,745 B2
`_______________
`
`
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`571-272-7822
`Date Entered: May 28, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`FOCAL THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`
`SENORX, INC.,
`Patent Owner.
`
`_______________
`
`Case IPR2014-00116
`Patent 8,288,745 B2
`_______________
`
`
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2014-00116
`Patent 8,288,745 B2
`
`
`1. Introduction
`
`On May 23, 2014, an initial conference call was conducted between
`
`respective counsel for the parties and Judges Bonilla, Green, and Prats. Petitioner
`
`Focal Therapeutics, Inc. (“Petitioner”), was represented by counsel, Matthew
`
`Kreeger. Patent Owner, SenoRx, Inc. (“Patent Owner”), was represented by
`
`counsel, Michael Fink and Arnold Turk. The purpose of the call was to determine
`
`if the parties have any issues concerning the Scheduling Order (Paper 9) and to
`
`discuss any motions contemplated by the parties.
`
`Prior to the call, Patent Owner filed a List of Proposed Motions (Paper 12,
`
`“List”), indicating that it wished to file four different motions regarding requests:
`
`(1) to be accorded benefit to the challenged patent of earlier applications; (2) and
`
`(3) to “swear behind” two prior art references at issue in the proceeding; and (4) to
`
`challenge the date accorded to one reference for prior art purposes. Id. at 1-2. The
`
`List also listed a “motion to substitute one or more claims,” contingent on any
`
`challenged claim being determined unpatentable. Id. at 2. In addition, Patent
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`Owner also indicated that it wished to file a motion requesting permission to file a
`
`certificate of correction and/or a reissue application regarding U.S. Pat. No.
`
`6,881,226 (Ex. 2002). Id. Petitioner did not file a list of proposed motions prior
`
`to the call.
`
`2. Scheduling Order
`
`Counsel for Patent Owner indicated during the call that Patent Owner wishes
`
`to extend DUE DATE 1 in the Scheduling Order (Paper 9). We reminded the
`
`parties that, without obtaining prior authorization from the Board, they may
`
`stipulate to different dates for DUE DATES 1-5 by filing an appropriate notice
`
`with the Board. We also stated, however, that the panel would not move DUE
`
`
`
`2
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`
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`Case IPR2014-00116
`Patent 8,288,745 B2
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`DATE 7, i.e., the scheduled oral hearing date of December 12, 2014. The parties
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`indicated that they would work to agree upon, and stipulate, regarding changes to
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`DUE DATES 1-5 to accommodate Patent Owner’s concerns.
`
`3. Discovery
`
`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. 48,756, 48761-2 (Aug. 14, 2012). 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. § 37.64;
`
`Office Patent 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 Patent Trial Practice Guide at 77 Fed. Reg. at 48772, App.
`
`D. We explained that the parties shall file entire transcripts of any depositions,
`
`rather than portions or sections, when relying on such testimony in a paper.
`
`4. 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.
`
`As noted above, Patent Owner requested authorization to file four different
`
`motions relating to obtaining a benefit date for the challenged patent, swearing
`
`
`
`3
`
`
`
`Case IPR2014-00116
`Patent 8,288,745 B2
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`behind two prior art references, and challenging a date according to a prior art
`
`patent reference. Paper 12, 1-2. The Board advised Patent Owner that such
`
`arguments should be raised in the Patent Owner Response, rather than by motion.
`
`In its Response, Patent Owner may rely on evidence in support, such as declaration
`
`evidence, which the Patent Owner should file as exhibits. Regarding declaration
`
`evidence relevant to antedating a prior art reference, we pointed the parties to
`
`IPR2013-00203, Paper 6, 5-7. Patent Owner is not authorized to file the first four
`
`motions listed in its List of Proposed Motions. Id.
`
`Patent Owner also requested authorization to file a motion “requesting
`
`permission to file a certificate of correction and/or reissue application” in relation
`
`to U.S. Pat. No. 6,881,226 (Ex. 2002), a family member of the challenged patent.
`
`The Board explained that authorization or permission by the panel is not required
`
`in this regard. If it so wishes, Patent Owner may go through usual channels to
`
`request such action before the Office. We explained, however, that given our one-
`
`year statutory deadline for completing an inter partes review, we would not grant a
`
`stay of this proceeding pending the outcome of a request for certificate of
`
`correction and/or reissue application. We also indicated that if Patent Owner takes
`
`such action, it shall keep the panel and Petitioner apprised of relevant events by
`
`filing a copy of relevant papers with the Board promptly.
`
`We authorize no other motions in this proceeding at this time.
`
`5. 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 indicated that it is
`
`contemplating filing a contingent motion to amend.
`
`
`
`4
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`
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`Case IPR2014-00116
`Patent 8,288,745 B2
`
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`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 relied. See
`
`37 C.F.R. § 42.20(c). We advised Patent Owner that a motion to amend must
`
`must set forth support in the original disclosure of the patent for each proposed
`
`substitute claim, i.e., Patent Owner must identify clearly the written description
`
`support in the disclosure corresponding to the earliest date upon which Patent
`
`Owner seeks to rely. Id. at § 42.121(b); see also Invensense, Inc. v.
`
`STMicroelectronics, Inc., IPR2013-00241, Paper 21.
`
`The Board also advised Patent Owner that a motion to amend must explain
`
`in detail how any proposed substitute claim obviates the grounds of unpatentability
`
`authorized in this 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.
`
`For further guidance regarding these requirements, Patent Owner is directed
`
`to prior Board decisions concerning motions to amend, including Idle Free
`
`Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Papers 26 and 66; Nichia
`
`Corporation v. Emcore Corporation, IPR2012-00005, Papers 27 and 68; ZTE
`
`Corp. v. ContentGuard Holdings, IPR2013-00136, Papers 32 and 33; and Toyota
`
`Motor Corp. v.American Vehicular Sciences LLC, IPR2013-00419, Paper 32.
`
`
`
`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.
`
`
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`5
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`
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`Case IPR2014-00116
`Patent 8,288,745 B2
`
`
`6. Protective Order
`
`The parties have not discussed a protective order at this time and do not
`
`anticipate needing a protective order. 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.
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`
`
`6
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`
`
`Case IPR2014-00116
`Patent 8,288,745 B2
`
`
`
`
`PETITIONER:
`
`Matthew Kreeger
`Matthew Chivvis
`Morrison & Foerster LLP
`patentdocket@mofo.com
`
`PATENT OWNER:
`
`Michael Fink
`Arnold Turk
`Greenblum & Bernstein, P.L.C.
`mfink@gbpatent.com
`aturk@gbpatent.com
`
`
`
`
`
`7
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