UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`
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`MEDTRONIC INC., MEDTRONIC VASCULAR, INC.
`Petitioners
`
`v.
`
`MARITAL DEDUCTION TRUST
` Patent Owner
`
`________________
`
`
`
`Case No. IPR2014-00695
`Patent No. 5,593,417
`
`__________________
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`
`
`
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`
`
`
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`
`
`__________________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`
`MEDTRONIC INC., MEDTRONIC VASCULAR, INC.
`Petitioners
`
`v.
`
`MARITAL DEDUCTION TRUST
` Patent Owner
`
`________________
`
`
`
`Case No. IPR2014-00695
`Patent No. 5,593,417
`
`__________________
`
`
`
`
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`
`
`
`
`
`
`Case No. IPR2014-000695
`Patent No. 5,593,417
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.23(a), the Patent Owner hereby provides an
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`Opposition to the Petitioners’ Motion for Joinder filed April 25, 2014 (Paper 2;
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`herein “the Motion”). The Petitioners filed the Motion concurrently with its
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`Second Petition for Inter Partes Review of U.S. Patent No. 5,593,417 (Paper 1;
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`herein “the Second Petition”). The Petitioners earlier filed a Petition for Inter
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`Partes Review of U.S. Patent No. 5,593,417 in IPR2014-00100 (Paper 1; herein
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`“the First Petition”). A Notice dated May 28, 2014 (Paper 12) authorized the filing
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`of this Opposition at the same time as the Patent Owner’s Preliminary Response to
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`the Second Petition. The Patent Owner’s Preliminary Response is filed
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`concurrently. This Opposition is therefore timely filed, and no fee is due with this
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`Opposition. If, however, the Office believes that any additional fee is due, it is
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`authorized to charge deposit account No. 50-5836.
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`The Patent Owner does not oppose joinder in the event that the Board
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`institutes trial with respect to at least one challenge in the Second Petition,
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`provided that the schedule for joined proceedings is fair and reasonable.
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`Nonetheless, the Patent Owner does not agree with the Statement of Material Facts
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`set forth on pages 2-6 of the Motion. The Patent Owner therefore files this
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`Opposition to deny specific facts, to provide a more complete accounting of the
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`Opposition to Motion for Joinder
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`Page 2 of 12
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`Case No. IPR2014-000695
`Patent No. 5,593,417
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`facts, and to propose a fair and reasonable joined schedule for IPR2014-00100 and
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`this IPR2014-00695.
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`II. RESPONSE TO STATEMENT OF MATERIAL FACTS
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`1. On November 1, 2012, Endotach LLC (“hereinafter, Patent Owner”)
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`filed a suit against Petitioner, which is pending in the U.S. District Court for the
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`Northern District of California, San Jose Division, in a case titled Endotach LLC v.
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`Medtronic, Inc., et al., No. 5:13-cv-03292-BLF.
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`Response: Admitted, except that Endotach LLC is not the owner of the
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`’417 Patent but instead the exclusive licensee. The owner of the ’417 Patent is the
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`Marital Deduction Trust, created under the Valentine J. Rhodes Revocable Trust.
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`Dr. Valentine J. Rhodes, now deceased, was a medical doctor who specialized in
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`vascular surgery and the inventor of the ’417 Patent.
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`2.
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` On October 31, 2013, Petitioner filed a Petition for Inter Partes
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`Review (hereinafter, “First Petition”) requesting review of claims 1, 2, 9, 10, and
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`13 of the ’417 patent, now instituted as Medtronic, Inc., et al. v. Endotach LLC,
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`Case No. IPR2014-00100 (“IPR2014-00100”). In the First Petition, Petitioner
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`raised six grounds of unpatentability based on four prior art references—U.S.
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`Patent No. 5,104,399 to Lazarus (“Lazarus”), U.S. Patent No. 4,562,596 to
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`Opposition to Motion for Joinder
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`Page 3 of 12
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`Case No. IPR2014-000695
`Patent No. 5,593,417
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`Kornberg (“Kornberg”), U.S. Patent No. 5,397,355 to Marin (“Marin”), and U.S.
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`Patent No. 5,122,154 to Rhodes (“Rhodes ’154”).
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`Response: Admitted.
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`3. While a decision on the First Petition was pending, on February 18,
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`2014, Petitioner’s litigation counsel, Karen McDaniel of the Briggs and Morgan
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`firm, received Patent Owner’s Infringement Contentions (Exh. 1007). The
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`Infringement Contentions cite to claim construction rulings in another litigation
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`involving the same patent (Endotach LLC v. Cook Medical Inc., 1:12-cv-1630-
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`LJM-DKL, Southern District of Indiana (Dkt. No. 102)) (hereinafter, “Cook
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`District Court case”). In the Infringement Contentions, Patent Owner posits that
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`the term “engage” means “to partly embed, interlock or enmesh,” while the term
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`“tightly engage” in claim 1 excludes penetration that perforates or creates holes
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`through the wall. Exh. 1007, pg. 16.
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`Response: Admitted, but the Patent Owner adds the following for the sake
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`of completeness:
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`(a) The claim construction ruling in the Cook District Court case was
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`issued April 10, 2013 – more than ten months before the Patent Owner
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`served its Infringement Contentions on the Petitioner’s litigation counsel.
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`That claim construction ruling (Ex. 2004) was a non-confidential document
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`Opposition to Motion for Joinder
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`Page 4 of 12
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`Case No. IPR2014-000695
`Patent No. 5,593,417
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`made publicly available on PACER on or about April 10, 2013.
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`Furthermore, several other publicly available pleadings from the Cook
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`District Court case revealed the Patent Owner’s claim construction position
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`regarding “engage” and “tightly engage.” For example, on December 21,
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`2012 and January 24, 2013, respectively, the Patent Owner filed on PACER
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`publicly available copies of its Opening and Responsive Claim Construction
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`Briefs, which detail the Patent Owner’s claim construction positions
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`regarding “engage” and “tightly engage.” (Ex. 2002 at 31-33; Ex. 2003 at
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`21-23.) Further, on June 28, 2013, Cook filed on PACER a publicly
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`available copy of the Patent Owner’s infringement contentions for the ’417
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`Patent that detail the Patent Owner’s claim construction positions regarding
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`“tightly engage” as related to Cook’s accused products. (Ex. 2005 at 21-26.)
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`(b) Every paragraph of the ’417 Patent specification containing the phrase
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`“tightly engage” also says either “tightly engage, e.g., burrow slightly into”
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`or “tightly engage (and not necessarily penetrate).” (’417 Patent (Ex. 1001)
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`at 4:10-25, 4:26-38, 7:9-33, 9:1:17.) Further, it is a stated object of the
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`invention in the ’417 Patent “to provide anchoring means for intraluminal
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`medical devices to be secured within in a vessel, duct, or lumen of a living
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`being, and which anchoring means does not pose a significant risk of
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`Opposition to Motion for Joinder
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`Page 5 of 12
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`Case No. IPR2014-000695
`Patent No. 5,593,417
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`perforating the tissue of the vessel, duct, or lumen.” (Id. at 3:53-58). It is
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`also stated more specifically in the ’417 Patent specification, that:
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`If some penetration is deemed desirable the height of the
`projections is selected so that their penetrating points do not
`penetrate too deeply into the artery wall. In this regard, the
`height of the projections is selected so that they do not penetrate
`into the adventicial or medial layers of the artery wall, but can
`penetrate its intima.
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`(Id. at 8:25-31). The terms “intima,” “medial,” and “adventicial” here refer
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`to the innermost, middle, and outer layers of an artery wall, respectively.
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`4. On the basis of Patent Owner’s Infringement Contentions, Petitioner’s
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`litigation counsel performed a prior art search in March 2014 that uncovered
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`several prior art references that show projections that partly embed, interlock or
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`enmesh in the surrounding vessel. Among those references are: U.S. Patent No.
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`5,562,725 to Schmitt (“Schmitt”) and U.S. Patent No. 5,370,657 to Irie (“Irie”)
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`(attached hereto as Exhibits 1011 and 1012). Petitioner was not in possession of
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`these two references prior to the Petition’s filing date of October 31, 2013 for
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`IPR2014-00100.
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`Response: The Patent Owner has insufficient information to either admit or
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`deny the assertions in paragraph 4 of the Motion and therefore denies the same.
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`Opposition to Motion for Joinder
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`Page 6 of 12
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`Case No. IPR2014-000695
`Patent No. 5,593,417
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`5. On March 26, 2014, the Board instituted trial on claims 1, 2, 9, 10,
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`and 13 of the '417 patent (“IPR2014-00100 Decision”) on two of the six grounds of
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`unpatentability, based on only two of the prior art references—Kornberg and
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`Rhodes ’154—in the First Petition. Exh. 1009, pg. 15. The Board did not,
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`however, authorize an inter partes review on the remaining grounds of
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`unpatentability, reasoning that the remaining four grounds “are redundant in light
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`of the grounds on the basis of which [the Board] institute[d] inter partes review of
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`the same claims” in IPR2014-00100. Id. at pg. 14.
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`Response: Admitted.
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`6. Concurrently with this Motion, Petitioner is filing its Second Petition,
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`challenging the same claims (claims 1, 2, 9, 10, and 13 of the '417 patent).
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`Response: Admitted.
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`7.
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`The Second Petition asserts a prior art reference (Lazarus) that was
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`included in the First Petition, but was not instituted for trial in IPR2014-00100
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`Decision. While Lazarus was deemed redundant with the references instituted for
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`trial in IPR2014-00100, it is not.
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`Response: The Patent Owner admits that the Second Petition asserts
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`challenges relying on Lazarus. The Patent Owner also admits that the First
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`Petition asserted challenges relying on Lazarus, and that the Board did not institute
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`Opposition to Motion for Joinder
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`Page 7 of 12
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`Case No. IPR2014-000695
`Patent No. 5,593,417
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`trial on those challenges for the reason that they were redundant with other
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`challenges for which trial was instituted. The Patent Owner denies the Petitioner’s
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`assertion that Lazarus is not redundant to the references for which trial was
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`instituted. The Patent Owner adds the following for the sake of completeness:
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`(a) The two Lazarus-based challenges in this Second Petition are exactly
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`the same as the two Lazarus-based challenges presented in the First Petition
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`and determined by the Board to be redundant.
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`(b) The deadline for the Petitioners to have filed a request for rehearing of
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`the Institution Decision in IPR2010-00100 was April 24, 2013. The
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`Petitioners did not file a request for rehearing. Instead, the Petitioners filed
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`the Second Petition and the Motion on April 25, 2013.
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`8.
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`The Second Petition also asserts Schmitt and Irie, two references that
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`were uncovered by the search noted above.
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`Response: The Patent Owner admits that the Second Petition asserts
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`Schmitt and Irie but has insufficient information to either admit or deny the other
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`assertions in paragraph 8 of the Motion and therefore denies the same.
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`9.
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`The Second Petition is being filed to address new information that
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`came to light when Endotach provided Medtronic with its claim construction
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`Opposition to Motion for Joinder
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`Page 8 of 12
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`Case No. IPR2014-000695
`Patent No. 5,593,417
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`position on the term “tightly engage” in connection with infringement contentions
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`in parallel (now stayed) district court litigation.
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`Response: The Patent Owner denies that any new information regarding its
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`claim construction positions on “tightly engage” came to light when Endotach
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`provided Medtronic its infringement contentions. The Patent Owner has
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`insufficient information to either admit or deny the other assertions in paragraph 9
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`of the Motion and therefore denies the same.
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`10. Petitioner attempted to address this new information in IPR2014-
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`00100 by submitting supplemental information under 37 C.F.R. § 42.123(a).
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`However, the Board denied the Petitioner’s request for authorization to file a
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`motion to submit supplemental information on the basis that Petitioner could not
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`raise a new ground of patentability after institution of a trial, reasoning that 37
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`C.F.R. § 42.123(a) is not the proper vehicle to address Patent Owner’s claim
`
`construction in the district court case.
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`Response: Admitted, except for the characterization of the Board’s reasons
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`for denying the Petitioners’ request for authorization to file a motion to submit
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`supplemental information. The Board’s decision denying the Petitioner’s request
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`states, inter alia, “Petitioner may not raise a new ground of patentability after
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`institution of a trial.” (IPR2014-00100 Paper 18 at 4.)
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`Opposition to Motion for Joinder
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`Page 9 of 12
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`
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`Case No. IPR2014-000695
`Patent No. 5,593,417
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`
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`11. Petitioner contacted Patent Owner the day of this filing to determine
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`whether Patent Owner would agree to this motion to enable the Board to fully
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`consider the issues germane to the co-pending litigation, assuming the Board
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`would entertain it.
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`Response: The Patent Owner admits that the Petitioner contacted the Patent
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`Owner on the day the Motion was filed to determine whether the Patent Owner
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`would agree to the Motion but denies the remainder of paragraph 11.
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`12. Patent Owner indicated that it would not have time to review the
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`Petition, but requested that Petitioner send an advanced copy, which Petitioner
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`complied with. Patent Owner further indicated that, subject to revision after
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`having time to evaluate the Second Petition and this Motion, Patent Owner would
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`not be opposed to joinder so long as the schedule for a joined proceeding is
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`acceptable and provided Patent Owner adequate time to respond to the challenges
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`in the Second Petition. Petitioner responded that it would accommodate Patent
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`Owner’s request, as further set forth herein.
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`Response: Admitted.
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`III. RESPONSE TO ARGUMENT
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`While
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`the Patent Owner does not agree with
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`the assertions,
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`characterizations, and so-called evidence cited in the “ARGUMENT” portion
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`Opposition to Motion for Joinder
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`Page 10 of 12
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`Case No. IPR2014-000695
`Patent No. 5,593,417
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`(pages 8-15) of the Motion, the Patent Owner does not oppose the requested relief
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`if (1) the Board first decides to grant the Second Petition at least in part after
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`consideration of the Patent Owner’s Preliminary Response, and (2) the schedule
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`for the joined proceedings is fair and reasonable. As an acceptable schedule, the
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`Patent Owner proposes the following, assuming that the Board can enter an
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`institution decision on the Second Petition by about August 25, 2014:
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`Current
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`Proposed
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`DUE DATE 1:
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`July 25, 2014
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`Oct. 3, 2014
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`DUE DATE 2:
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`Sept. 25, 2014
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`Nov. 17, 2014
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`DUE DATE 3:
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`Not Needed
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`
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`DUE DATE 4:
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`Oct. 10, 2014
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`Nov. 26, 2014
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`DUE DATE 5:
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`Oct. 23, 2014
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`Dec. 5, 2014
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`DUE DATE 6:
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`Oct. 30, 2014
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`Dec. 12, 2014
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`DUE DATE 7:
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`Nov. 20, 2014
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`Dec. 19, 2014
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`DUE DATE 3 is not needed because the Patent Owner does not intend to file
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`a motion to amend. As a result, some of the tasks due on the other due dates are
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`simplified, thereby permitting some compression in the schedule.
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`This proposed schedule is similar to the one jointly proposed to the Board by
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`the Petitioners and the Patent Owner in advance of the May 22, 2014 conference
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`call in this case, but this proposed schedule follows the guidance in the Board’s
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`Opposition to Motion for Joinder
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`Page 11 of 12
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`Case No. IPR2014-000695
`Patent No. 5,593,417
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`May 28, 2014 order (Paper 12) in that DUE DATE 7 occurs before the Christmas
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`holiday.
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`Date: 2014 June 25
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`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`Brett M. Pinkus, Reg. No. 59,980
`
`Jonathan T. Suder (pro hac vice)
`
`Backup Counsel for Patent Owner
`
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Telephone: (817) 334-0400
`Facsimile: (817) 334-0401
`pinkus@fsclaw.com
`jts@fsclaw.com
`
`Matthew C. Phillips
`Reg. No. 43,403
`
`Lead Counsel for Patent Owner
`
`Renaissance IP Law Group LLP
`9600 SW Oak Street, Suite 560
`Portland, Oregon 97223
`Telephone: 503-964-1129
`Facsimile: 503-517-9919
`matthew.phillips@renaissanceiplaw.com
`
`Opposition to Motion for Joinder
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`
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`Page 12 of 12
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 25, 2014, copies of the foregoing PATENT
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`OWNER’S OPPOSITION TO MOTION FOR JOINDER and all documents filed
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`with it were served via electronic mail, as agreed to by counsel, upon the following
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`counsel for the Petitioner:
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`Jack Barufka: jack.barufka@pillsburylaw.com
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`Ngai Zhang: ngai.zhang@pillsburylaw.com
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`Evan Finkel: evan.finkel@pillsburylaw.com
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`with a courtesy copy to docket_ip@pillsburylaw.com.
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
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