IPR2014-00823
`Patent 6,482,228
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`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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`MEDTRONIC, INC., MEDTRONIC VASCULAR, INC.,
`and MEDTRONIC COREVALVE, LLC
`Petitioner
`
`v.
`
`TROY R. NORRED, M.D.
`Patent Owner
`
`____________
`
`Case IPR2014-00823
`Patent 6,482,228
`____________
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`Attorney Docket No. 058888-0000023
`____________
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`PETITIONER’S REPLY TO OPPOSITION TO MOTION FOR JOINDER
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`404686536v4
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`Patent 6,482,228
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`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 IPR2014-00823
`Patent 6,482,228
`____________
`
`Attorney Docket No. 058888-0000023
`____________
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`PETITIONER’S REPLY TO OPPOSITION TO MOTION FOR JOINDER
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`404686536v4
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`IPR2014-00823
`Patent 6,482,228
`Pursuant to 37 C.F.R. § 42.23(a), Petitioner files this Reply to “Opposition
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`of Patent Owner to Petitioner’s Motion for Joinder” (Paper 7, “Opposition”).
`
`I.
`
`RESPONSE TO PATENT OWNER’S ARGUMENTS AGAINST
`JOINDER
`A.
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`Patent Owner Incorrectly Argues That The Deadline For Filing A
`Request For Rehearing Is Relevant To Joinder
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`In its Opposition, Patent Owner asserts that the Motion for Joinder is im-
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`proper because the motion “is nothing more than an out-of-time request for rehear-
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`ing of the April 25, 2014 decision of the Board to institute trial on claims 20-24 of
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`the ‘228 Patent in IPR2014-00111.” Paper 7, p. 4. The deadline for filing a mo-
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`tion for rehearing is entirely irrelevant, however, because Petitioner did not elect to
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`file a motion for rehearing.
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`The deadline for filing the Motion for Joinder is one month after the Institu-
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`tion Decision on the Petition in IPR2014-00111 (“First Petition”). 37 C.F.R. §
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`42.122(b). However, because the one-month period expired on Sunday, May 25,
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`2014, and Monday, May 26 was a Federal Holiday (Memorial Day), the deadline
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`for filing the Motion for Joinder was Tuesday, May 27, 2014. 37 C.F.R. §§ 1.7
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`and 42.1(a). The Second Petition and Motion for Joinder were appropriate and
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`timely, as they were concurrently filed on May 27, 2014. The timing for filing a
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`motion for rehearing is not at issue herein.
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`404686536v4
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`IPR2014-00823
`Patent 6,482,228
`B.
`Patent Owner’s Argument That “Delay” Warrants Denying Join-
`der Is Untenable
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`The Patent Owner argues that joinder is improper because it would result in
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`substantial delay. See Opposition, p. 10-11. That is not correct. Patent Owner has
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`already considered and provided its response regarding Figulla as applied to claims
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`20-24 in the First Petition (see IPR2014-00111, Paper 9 (Preliminary Response), p.
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`21-22 and 39-40), and repeats those arguments in opposition to the Motion for
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`Joinder (see IPR2014-00823, Paper 7, p. 11-12).1 Thus, there is no reason for any
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`substantial delay to arise from joinder. Moreover, Petitioner renews its offer to ac-
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`commodate any reasonable logistical or scheduling request of Patent Owner, or de-
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`termined by the Board to be appropriate or necessary, in view of the joinder of the
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`proceedings. See IPR2014-00823, Paper 2, p. 8-9. Extensions of the schedule are
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`permitted by law and are not a reason to deny joinder herein. 35 U.S.C. §
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`316(a)(1); 37 C.F.R. § 42.100(c).
`
`
`1 The arguments Patent Owner makes regarding the patentability of claims 20-24
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`over Figulla rely on limitations missing from the claims and/or erroneous claim
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`constructions, much as the Board concluded in connection with comparable ar-
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`guments made by Patent Owner in its Preliminary Response to the First Petition.
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`See, e.g., IPR2014-00111, Paper 10 (Decision), at p. 6-11 (rejecting Patent Own-
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`er’s proposed construction of “means for maintaining” and “ring member”).
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`404686536v4
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`2
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`IPR2014-00823
`Patent 6,482,228
`C.
`Patent Owner’s Argument That The Second Petition Is Uneces-
`sary Is At Odds With The Indisputable Facts
`
`In its Motion for Joinder, Petitioner explained that joinder of the instant peti-
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`tion in IPR2014-00823 (“Second Petition”) seeking review of U.S. Patent No.
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`6,482,228 based on Figulla alone and in combination with Shu will avoid potential
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`prejudice to Petitioner because Figulla and Shu are references under 35 U.S.C. §
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`102(b) (“102(b)”), whereas Shreck is a reference under 35 U.S.C. § 102(e)
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`(“102(e)”) which Patent Owner is attempting to antedate. Paper 2 (Motion) at p. 5.
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`Patent Owner’s response is to argue that Petitioner should have “raised these issues
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`in a request for rehearing.” Paper 7 (Opposition) at p. 7. The rules, however, do
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`not require Petitioner to file a request for rehearing rather than the timely Second
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`Petition and Motion for Joinder.
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`Patent Owner also argues that Petitioner will not suffer prejudice if joinder is
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`denied because even if “Norred is able to swear behind Schreck and survive
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`IPR2014-00111 with claims 20-24 intact,” Petitioner still has IPR2014-00110 and
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`IPR2014-00395. Paper 7 (Opposition) at p. 8. That argument is baseless.
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`The claims at issue in IPR2014-00110 (claims 16-19) have no overlap to the
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`claims at issue in this proceeding (claims 20-24). Thus, IPR2014-00110 will not
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`lessen the prejudice to Petitioner if joinder is denied as to the application of Figulla
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`(alone and in combination with Shu) to claims 20-24.
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`404686536v4
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`3
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`IPR2014-00823
`Patent 6,482,228
`And while claims 20-24 are at issue in IPR2014-00395, Figulla is an im-
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`portant reference because it is a 102(b) reference that clearly shows the connecting
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`rods connecting each stent segment:
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`
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`See IPR2014-00823, Paper 3 (Petition), p. 10, Fig. 2.
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`The Patent Owner is only now (i.e., as of the filing of its Response dated Ju-
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`ly 17, 2014) apparently asserting that such connecting rods, as disclosed in Figulla,
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`meet the “means for maintaining” limitation of independent claim 20, as illustrated
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`by the following side-by-side comparison of the drawing that Patent Owner offers
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`as evidence of conception of the purported invention of claim 20 and another fig-
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`ure from Figulla:
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`404686536v4
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`4
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`IPR2014-00823
`Patent 6,482,228
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`
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`Excerpt from IPR2014-00111, Paper 15 (Pa-
`tent Owner Response), p. 11; see element
`20(c) in particular.
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`Excerpt from IPR2014-00823,
`Ex. 1004 (Figulla), p. 13, Fig. 4.
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`II. CONCLUSION
`For the reasons set out in the Motion for Joinder and above, Petitioner re-
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`spectfully requests joinder of the Second Petition with IPR2014-00111.
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`Respectfully submitted,
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`Date: July 28, 2014
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`PILLSBURY WINTHROP SHAW PITTMAN LLP
`
`
`
`/Jack S. Barufka/
`
`
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`
`
`Jack S. Barufka
`Reg. No. 37,087
`Tel. No. 703.770.7712
`Fax No. 703.905.2500
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`5
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`P.O. Box 10500
`McLean, VA 22102
`(703) 770-7900
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`404686536v4
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`IPR2014-00823
`Patent 6,482,228
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the PETITIONER’S REPLY TO OPPO-
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`SITION TO MOTION FOR JOINDER was served by EXPRESS MAIL (or by
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`means at least as fast and reliable) this 28th day of July, 2014 on the attorney of
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`record of U.S. Patent No. 6,482,228 shown in PAIR and the attorneys of record for
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`IPR2014-00823:
`
`David Marcus
`Bartle & Marcus LLC
`1100 Main Street, Suite 2730
`Kansas City, MO 64105
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`
`
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`James J. Kernell
`Erickson Kernell Derusseau & Kleypas, LLC
`8900 State Line Road, Suite 500
`Leawood, KS 66206
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`Date: July 28, 2014
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` PILLSBURY WINTHROP SHAW PITTMAN LLP
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`Respectfully submitted,
`
`/Jack S. Barufka/
`
`Jack S. Barufka
`Reg. No. 37,087
`Tel. No. 703.770.7712
`Fax No. 703.905.2500
`
`
`P.O. Box 10500
`McLean, VA 22102
`(703) 770-7900
`
`404686536v4
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`6
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