Paper No. 18
` Date: September 25, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`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
`Patent 5,593,417
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK,
`and HYUN J. JUNG, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge BONILLA.
`
`Opinion Concurring filed by Administrative Patent Judge FITZPATRICK.
`
`
`
`BONILLA, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder,
`and Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
` Date: September 25, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`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
`Patent 5,593,417
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK,
`and HYUN J. JUNG, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge BONILLA.
`
`Opinion Concurring filed by Administrative Patent Judge FITZPATRICK.
`
`
`
`BONILLA, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder,
`and Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`On April 25, 2014, Medtronic, Inc. and Medtronic Vascular, Inc.
`
`(“Petitioner”) filed a Petition for Inter Partes Review (Paper 1, “Second
`
`Petition”) involving the same parties and claims of U.S. Patent No.
`
`5,593,417 (Ex. 1001, “the ’417 patent”) at issue in instituted trial proceeding
`
`IPR2014-00100. Petitioner concurrently filed a Motion for Joinder,
`
`requesting “that the Second Petition be joined with IPR2014-00100.” Paper
`
`2 (“Joinder Motion”), 2. Petitioner filed its Joinder Motion within one
`
`month after institution of a trial in IPR2014-00100, as required by 37 C.F.R.
`
`§ 42.122(b). On June 25, 2014, Patent Owner Endotach LLC (“Patent
`
`Owner”) filed an Opposition to Motion for Joinder (Paper 16, “Opp. to
`
`Joinder”), and a Preliminary Response (Paper 14, “Prelim. Resp.”). On July
`
`11, 2014, Petitioner filed a Reply to Opposition to Motion for Joinder (Paper
`
`17). We have jurisdiction under 35 U.S.C. § 314.
`
`II. BACKGROUND
`
`The statutory provision governing joinder of inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads as follows:
`
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`35 U.S.C. § 315(b) normally bars institution of inter partes review
`
`when the petition is filed more than one year after the petitioner (or
`
`petitioner’s real party in interest or privy) is served with a complaint alleging
`
`
`
`2
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). That
`
`
`
`
`
`one-year time bar, however, does not apply to a request for joinder. 35
`
`U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). This is an
`
`important consideration here because Petitioner was served with a complaint
`
`asserting infringement of the ʼ417 patent more than one year before filing
`
`the Second Petition.1 Thus, absent joinder of Petitioner in this proceeding as
`
`a party to IPR2014-00100, the Second Petition is barred.
`
`Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When
`
`exercising that discretion, the Board is mindful that patent trial regulations,
`
`including the rules for joinder, must be construed to secure the just, speedy,
`
`and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).2
`
`III. ANALYSIS
`
` We are not persuaded that Petitioner has shown that joinder is
`
`justified in this instance. Petitioner filed its Second Petition one month after
`
`institution in IPR2014-00100. This case represents a “second bite at the
`
`apple” for Petitioner, who has received the benefit of seeing our Decision to
`
`Institute in the prior case involving the same parties and patent claims. See
`
`IPR2014-00100, Paper 15 (“Institution Decision”). This “second bite at the
`
`
`1 Petitioner was served with a complaint alleging infringement of the ’417
`Patent on November 1, 2012. Prelim. Resp. 17; Second Petition 2, 8.
`Petitioner filed its Petition in the instant proceeding on April 25, 2014.
`2 35 U.S.C. § 316(b) (“In prescribing regulations under this section, the
`Director shall consider the effect of any such regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings instituted under this
`chapter.”).
`
`
`
`3
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`apple” situation is particularly noteworthy in view of the § 315(b) bar at
`
`
`
`
`
`issue here, as well as a difference of opinion that currently exists at the
`
`Board as to whether the Board has discretion under 35 U.S.C. § 315(c) to
`
`allow joinder of a person to an ongoing inter partes review when that person
`
`is already a party to the ongoing inter partes review.3
`
`For the purposes of this Decision, we will assume we have discretion
`
`to allow joinder under the circumstances of this case. Thus, we assume that
`
`a “second bite” for a petitioner is appropriate under certain circumstances,
`
`particularly when a § 315(b) bar does not apply. That said, when a § 315(b)
`
`bar would apply absent joinder, we hesitate to allow a petitioner a second
`
`bite one month after institution in a first case, at the expense of scheduling
`
`constraints for everyone, as well as additional costs (and potential prejudice)
`
`to Patent Owner, absent a good reason for doing so.
`
`The Board determines whether to grant joinder on a case-by-case
`
`basis, taking into account the particular facts of each case. See 157 Cong.
`
`Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (when
`
`determining whether and when to allow joinder, the Office may consider
`
`factors including the breadth or unusualness of the claim scope, claim
`
`construction issues, and consent of the patent owner). Here, while we
`
`appreciate that Patent Owner does not oppose joinder in the event that the
`
`Board institutes trial with respect to at least one challenge in the Second
`
`Petition (Opp. to Joinder 2), we determine that Petitioner’s stated reasons for
`
`allowing joinder do not outweigh meaningful reasons to not allow joinder.
`
`
`3 See Target Corp. v. Destination Maternity Corp., Case IPR2014-00508,
`(PTAB Sept. 25, 2014) (Paper 18); see also, e.g., Ariosa Diagnostics v. Isis
`Innovation Ltd., Case IPR2012-00022, (PTAB Sept. 2, 2014) (Paper 166).
`
`
`
`4
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`
`
`
`
`
`As noted above, we are mindful of a public interest in securing “the
`
`just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`
`§ 42.1(b). As relevant to the “speedy” consideration, we observe that the
`
`Second Petition reasserts two grounds of unpatentability previously asserted
`
`in IPR2014-00100, as well as three new grounds relying on two additional
`
`references. Second Petition 10, 13. Thus, Petitioner raises five grounds
`
`potentially requiring a response by Patent Owner after Patent Owner has
`
`already filed its Response to the Petition in IPR2014-00100 on July 28,
`
`2014. IPR2014-00100, Paper 5 (“First Petition”); Paper 27 (“PO Resp.”). If
`
`we were to grant joinder and institute on any of the five grounds, therefore,
`
`it would impact the schedule of IPR2014-00100, because it would require a
`
`response by Patent Owner in relation to any additional instituted ground(s).
`
`With respect to the “just” consideration, we note that Petitioner
`
`created its own § 315(b) bar situation by filing the Second Petition when it
`
`did, something entirely within Petitioner’s control. If a § 315(b) bar did not
`
`apply, a trial in the second case could proceed, on its own schedule if
`
`needed, assuming Petitioner otherwise met the “reasonable likelihood that
`
`[it] would prevail” standard under 35 U.S.C. § 314(a). It is only the
`
`existence of a § 315(b) bar in this case that requires us to consider modifying
`
`a schedule in a joined case requiring Patent Owner to address additional
`
`grounds at a late stage in that first proceeding.
`
`In the Joinder Motion, Petitioner indicates that it received “Patent
`
`Owner’s Infringement Contentions” (Ex. 1007, “Infringement Contentions”)
`
`as part of a related district court case on February 18, 2014, after Petitioner
`
`filed its First Petition, and after the § 315(b) bar applied. Joinder Motion 3.
`
`Petitioner contends that Patent Owner’s Infringement Contentions discuss
`
`
`
`5
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`claim construction by a different district court, involving a different
`
`
`
`
`
`defendant,4 of the phrase “tightly engage” in independent claim 1 of the ’417
`
`patent. Id. (citing Ex. 1007, 16). Challenged claim 1 recites, inter alia, that
`
`“at least one surface” of projections of the anchoring means “tightly engage
`
`the interior surface of the vessel, duct, or lumen. . . .” Ex. 1001, 9:23–45
`
`(emphasis added). The Infringement Contentions indicate that a district
`
`court has concluded previously that “tightly engage” in claim 1 “excludes
`
`penetration that perforates or creates holes through the wall.” Id. (citing Ex.
`
`1007, 16).
`
`Petitioner states that on the basis of Patent Owner’s Infringement
`
`Contentions, Petitioner performed a prior art search in March 2014, which
`
`uncovered U.S. Patent No. 5,562,725 (Ex. 1011, “Schmitt”) and U.S. Patent
`
`No. 5,370,657 (Ex. 1012, “Irie”), which Petitioner contends it did not
`
`possess prior to October 31, 2013, when it filed the First Petition in
`
`IPR2014-00100. Joinder Motion 3–4.
`
`On March 25, 2014, we instituted trial in IPR2014-00100 on some,
`
`but not all, asserted grounds. IPR2014-00100, Paper 15. In our Institution
`
`Decision, we deemed two grounds, i.e., anticipation by Lazarus (Ex. 1005)5
`
`and obviousness over Rhodes ’154 (Ex. 1008)6 and Lazarus, among other
`
`grounds, to be redundant in light of two grounds, i.e., anticipation by
`
`
`4 Endotach LLC v. Cook Medical Inc., 1:12-cv-1630-LJM-DKL (S.D. Ind.)
`(Dkt No. 102). Joinder Motion 3; Ex. 1007, 16.
`5 U.S. Pat. No. 5,104,399 (“Lazarus”) (Ex. 1005).
`6 U.S. Pat. No. 5,122,154 (“Rhodes ’154”) (Ex. 1008).
`
`
`
`6
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`Kornberg (Ex. 1006)7 and obviousness over Rhodes ’154 and Kornberg, on
`
`
`
`
`
`which we instituted review. IPR2014-00100, Paper 15 at 5–6, 14.
`
`Thereafter, on April 15, 2014, Petitioner filed a Request for
`
`Authorization to File a Motion to Submit Supplemental Information in
`
`IPR2014-00100, as a vehicle to file Patent Owner’s Infringement
`
`Contentions (Ex. 1009) and three additional prior art references (Exs. 1010–
`
`1012). IPR2014-00100, Paper 17 (“Supplemental Information Request”) at
`
`1. In its Supplemental Information Request, Petitioner requested
`
`authorization to file the motion “to present additional grounds,” asserting it
`
`became “aware of three secondary references that were unknown to it when
`
`the Petition was filed.” Id. We did not authorize that motion, stating that
`
`submitting supplemental information under 37 C.F.R. § 42.123(a) as a
`
`vehicle to respond to a possible position that another party may take in the
`
`future was improper. IPR2014-00100, Paper 18 at 4. We further explained
`
`that “Petitioner may not raise a new ground of patentability after institution
`
`of a trial, even assuming Patent Owner offers its own claim construction,
`
`and patentability contentions based on that construction, in a Patent Owner
`
`Response,” and also stated that Petitioner “will have an opportunity to
`
`respond to a Patent Owner Response in a Reply.” Id.
`
`Notably, in its Supplemental Information Request, Petitioner did not
`
`refer to any ground deemed to be redundant in the Institution Decision.
`
`IPR2014-00100, Paper 17, Paper 15 at 14–15. In addition, Petitioner did not
`
`file a request for rehearing under 37 C.F.R. § 42.71(d)(1) (stating that a party
`
`dissatisfied with a decision to institute may file, without prior authorization,
`
`
`7 U.S. Pat. No. 4,562,596 (“Kornberg”) (Ex. 1006).
`
`
`
`7
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`within 14 days of the decision, a request for rehearing identifying matters the
`
`
`
`
`
`party believes the Board misapprehended or overlooked).
`
`Instead, on April 25, 2014, Petitioner filed the Second Petition and
`
`Joinder Motion in the current proceeding. In the Joinder Motion, Petitioner
`
`asserts, for the first time, that two grounds raised in the First Petition based
`
`on Lazarus (Ex. 1005), which we deemed redundant in IPR2014-00100, are
`
`not redundant in view of Patent Owner’s Infringement Contentions. Joinder
`
`Motion 4–5, 7. In the Joinder Motion and Second Petition, Petitioner also
`
`asserts three new grounds relying on two new references, i.e., anticipation by
`
`Schmitt (Ex. 1011), obviousness over Rhodes ’154 and Schmitt, and
`
`obviousness over Rhodes ’154 and Irie (Ex. 1012). Joinder Motion 13–14;
`
`Second Petition 22–32.
`
`With respect to the three new grounds, although there is overlap in
`
`relation to one reference, i.e., Rhodes ’154, cited in an instituted ground in
`
`IPR2014-00100, Petitioner relies in significant part, in three different
`
`grounds, on two references never cited by Petitioner before institution in
`
`IPR2014-00100. Thus, we do not perceive that there is “no discernible
`
`prejudice” to Patent Owner if we grant the Joinder Motion. See Microsoft
`
`Corp. v. Proxyconn, Inc., Case IPR2013-00109, slip op. at 4 (PTAB Feb. 25,
`
`2013) (Paper 15) (concluding there was “no discernible prejudice to either
`
`party” in granting joinder).
`
`In relation to the two previously deemed redundant grounds based on
`
`Lazarus, the First Petition could have, but did not, articulate adequately a
`
`meaningful distinction in terms of relative strengths and weaknesses
`
`regarding the application of cited references in relation to “tightly engage” in
`
`claim 1. See UltraTec, Inc. v. Sorenson Commc’ns, Inc., Case IPR2013-
`
`
`
`8
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`00288, slip op. at 4 (PTAB Jan. 10, 2014) (Paper 23). Furthermore,
`
`
`
`
`
`Petitioner did not raise its position that those grounds were not redundant in
`
`view of Patent Owner’s Infringement Contentions in any paper filed in
`
`IPR2014-00100 after institution, such as in a request for rehearing or its
`
`Supplemental Information Request. Instead, Petitioner effectively asks us to
`
`re-address the issue of redundancy in a Second Petition subject to a bar
`
`under § 315(b) absent joinder with IPR2014-00100, which is much further
`
`along in its own schedule and in which Patent Owner has already filed a
`
`Patent Owner Response.
`
`Lastly, we note, as part of the “reasonable likelihood” standard under
`
`§ 314(a), Petitioner has a burden to make its case, taking into consideration
`
`possible contentions that Patent Owner may assert at a later time, whether it
`
`be in relation to claim construction or otherwise. Thus, although Petitioner
`
`suggests it was unaware of Patent Owner’s claim construction position
`
`regarding “tightly engage” in claim 1 until after it filed its First Petition,
`
`Petitioner had the burden to anticipate reasonable claim construction
`
`positions, and adequately address such positions in its Petition as needed.
`
`Moreover, a claim construction ruling regarding “tightly engage” in a district
`
`court case involving the same patent was publicly available in April 2013,
`
`six months before Petitioner filed its First Petition on October 31, 2013.
`
`Opp. to Joinder 4–5.
`
`In view of the foregoing, on the record before us, Petitioner has not
`
`shown that joinder is justified.
`
`
`
`9
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`
`
`
`
`
`IV. CONCLUSION
`
`We deny the Joinder Motion and, therefore, deny the Second Petition
`
`because it was not filed within the time limits imposed under 35 U.S.C.
`
`§ 315(b).
`
`
`
`V. ORDER
`
` Accordingly, it is
`
`ORDERED that the Joinder Motion is denied; and
`
`FURTHER ORDERED that the Second Petition is denied and no trial is
`
`instituted.
`
`10
`
`
`
`
`
`
`
`
`
`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
`Patent 5,593,417
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK,
`and HYUN J. JUNG, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge, concurring.
`
`I concur in the majority’s decision to deny joinder and to deny
`
`institution, but I would reach that result for different reasons.
`
`Pursuant to 35 U.S.C. § 315(c), Petitioner requests “that the Second
`
`Petition be joined with IPR2014-00100.” Joinder Motion 1–2. Section
`
`315(c), however, does not refer to the joining of a petition. Rather, it refers
`
`to the joining of a petitioner (i.e., “any person who properly files a
`
`petition . . .”). 35 U.S.C. § 315(c). Further, it refers to the joining of that
`
`petitioner “as a party to [an instituted] inter partes review.” Id. (emphasis
`
`added). Thus, § 315(c) authorizes joinder of a person, not a petition, to an
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`instituted inter partes review. It does not provide a mechanism for joining
`
`
`
`
`
`an additional petition to the instituted IPR2014-00100.
`
`Petitioner has sought, under 35 U.S.C. § 315(c), relief that § 315(c)
`
`cannot provide.8 For that reason alone, I would deny the Joinder Motion.
`
`With respect to the Second Petition, I would deny it as time barred
`
`under 35 U.S.C. § 315(b). As the majority notes, the Second Petition was
`
`filed more than one year after Petitioner was served with a complaint
`
`asserting infringement of the ʼ417 patent. Thus, we may not institute an
`
`inter partes review based on the Second Petition. 35 U.S.C. § 315(b) (“An
`
`inter partes review may not be instituted if the petition requesting the
`
`proceeding is filed more than 1 year after the date on which the petitioner,
`
`real party in interest, or privy of the petitioner is served with a complaint
`
`alleging infringement of the patent. The time limitation set forth in the
`
`preceding sentence shall not apply to a request for joinder under subsection
`
`(c).”).
`
`Relying on the second sentence of 35 U.S.C. § 315(b), the majority
`
`reasons that we may institute an inter partes review based on the Second
`
`Petition if Petitioner is joined to the instituted IPR2014-00100. But, in my
`
`view, the second sentence does not provide such an exception. Rather, it
`
`states—or clarifies—that the one-year time bar, which applies to instituting
`
`an inter partes review, does not also apply to a request to join, as a party, an
`
`instituted inter partes review. In short, § 315(b) bars institution of an inter
`
`partes review based on a petition filed more than 1 year after the date on
`
`which the petitioner is served with a complaint alleging infringement of the
`
`
`8 The relief that § 315(c) can provide is something Petitioner already has
`(i.e., status as a party in IPR2014-00100).
`
`
`
`2
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`patent, but does not bar a request by that petitioner to join, as a party, an
`
`
`
`
`
`already-instituted inter partes review of the same patent.
`
`Petitioner’s Second Petition was filed more than one year after it was
`
`served with a complaint asserting infringement of the ʼ417 patent. For that
`
`reason alone, I would deny it under 35 U.S.C. § 315(b).
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`PETITIONER:
`
`
`
`
`
`Jack Barufka
`Pillsbury Winthrop Shaw Pittman LLP
`barufka@pillsburylaw.com
`
`Evan Finkel
`Pillsbury Winthrop Shaw Pittman LLP
`evan.finkel@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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