Trials@uspto.gov Paper 10
`571-272-7822 Entered: February 25, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BIOTRONIK, INC.,
`Petitioner,
`
`v.
`
`ATLAS IP LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00534
`Patent 5,371,734
`____________
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`I. INTRODUCTION
`Petitioner, Biotronik, Inc., filed a Petition for inter partes review of
`claims 6, 11, 14, and 21 of U.S. Patent No. 5,371,734 (Ex. 1001, “the ’734
`patent”). Paper 1 (“Pet.”). Concurrently with its Petition, Biotronik filed a
`
`
`571-272-7822 Entered: February 25, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BIOTRONIK, INC.,
`Petitioner,
`
`v.
`
`ATLAS IP LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00534
`Patent 5,371,734
`____________
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`I. INTRODUCTION
`Petitioner, Biotronik, Inc., filed a Petition for inter partes review of
`claims 6, 11, 14, and 21 of U.S. Patent No. 5,371,734 (Ex. 1001, “the ’734
`patent”). Paper 1 (“Pet.”). Concurrently with its Petition, Biotronik filed a
`
`
`
`IPR2015-00534
`Patent 5,371,734
`
`Motion for Joinder. Paper 2 (“Mot.”). The Motion for Joinder seeks to join
`this proceeding with St. Jude Medical, Inc. v. Atlas IP, LLC, Case IPR2014-
`00916 (“the St. Jude IPR”). Mot. 1. Patent Owner, Atlas IP LLC, indicates
`it does not oppose the Motion for Joinder and it has opted not to file a
`Preliminary Response. Paper 8, 2. Petitioner in the St. Jude IPR—St. Jude
`Medical, Inc., St. Jude Medical S.C., and Pacesetter, Inc. (collectively, “St.
`Jude”)—has not filed an opposition to Biotronik’s Motion for Joinder after
`being given the opportunity to do so. See St. Jude Medical, Inc. v. Atlas IP,
`LLC, Case IPR2014-00916, Paper 14, 2–3.
`For the reasons explained below, we institute an inter partes review of
`claims 6, 11, 14, and 21 of the ’734 patent and grant Biotronik’s Motion for
`Joinder.
`
`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds as those on
`which we instituted review in the St. Jude IPR. Pet. 4; Mot. 2. On
`December 8, 2014, we instituted a trial in the St. Jude IPR on the following
`grounds: (a) claims 6, 14, and 21 as anticipated under 35 U.S.C. § 102(a) by
`Natarajan 1992;1 (b) claim 11 for obviousness under 35 U.S.C. § 103(a) over
`Natarajan 1992 and Bella;2 (c) claims 6, 14, and 21 for obviousness under
`35 U.S.C. § 103(a) over Natarajan ’5423 and Bantz;4 and (d) claim 11 for
`
`
`1 K.S. Natarajan et al., Medium Access Control Protocol for Wireless LANs
`(An Update), IEEE P802.11/92-39, Mar. 9, 1992 (Ex. 1011, “Natarajan
`1992”).
`2 U.S. Patent No. 4,542,499, issued Sept. 17, 1985 (Ex. 1026, “Bella”).
`3 U.S. Patent No. 5,241,542, issued August 31, 1993 (Ex. 1003, “Natarajan
`’542”).
`4 U.S. Patent No. 5,123,029, issued June 16, 1992 (Ex. 1013, “Bantz”).
`2
`
`
`
`IPR2015-00534
`Patent 5,371,734
`
`obviousness under 35 U.S.C. § 103(a) over Natarajan ’542, Bantz, and Bella.
`St. Jude Medical, Inc. v. Atlas IP, LLC, Case IPR2014-00916, Paper 7, 22.
`In view of the challenges in the instant Petition and the petition in the
`St. Jude IPR, we institute an inter partes review in this proceeding on the
`same grounds as those on which we instituted in the St. Jude IPR. We do
`not institute inter partes review on any other grounds.
`
`III. GRANT OF MOTION FOR JOINDER
`The Petition in this proceeding has been accorded a filing date of
`January 6, 2015, and, thus, satisfies the requirement that joinder be requested
`no later than one month after the institution date of the St. Jude IPR. See
`37 C.F.R. § 42.122(b); Paper 4 (Notice of Filing Date Accorded to Petition).
`The Petition in this proceeding sets forth the same grounds and
`combinations of prior art, the same expert declaration, and the same
`arguments considered by the board in instituting trial in the St. Jude IPR.
`See Mot. 5. Biotronik represents in its Motion for Joinder that it has
`conferred with counsel for St. Jude, and both Biotronik and St. Jude will
`agree to consolidated filings on the existing briefing schedule, for which St.
`Jude will be responsible. Mot. 6. Similar to procedures ordered in other
`inter partes reviews, Biotronik is willing to be limited to separate filings, if
`any, of no more than seven pages directed only to points of disagreement
`with St. Jude, with the understanding it will not be permitted separate
`arguments in furtherance of those advanced in St. Jude’s consolidated
`filings. Id. Biotronik represents that St. Jude and Biotronik have agreed to
`work together to manage the time normally allotted for depositions and oral
`argument, with St. Jude permitted to ask questions before Biotronik at any
`deposition and to present argument before Biotronik at any oral argument if
`
`3
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`
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`IPR2015-00534
`Patent 5,371,734
`
`St. Jude so chooses. Id. As noted, St. Jude does not oppose Biotronik’s
`Motion for Joinder of this proceeding with the St. Jude IPR.
`Under the circumstances, we conclude Biotronik has demonstrated
`that joinder will not unduly complicate or delay the St. Jude IPR, and
`therefore, we grant Biotronik’s Motion for Joinder to join this proceeding
`with St. Jude Medical, Inc. v. Atlas IP, LLC, Case IPR2014-00916.
`
`IV. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that IPR2015-00534 is instituted and joined with
`IPR2014-00916;
`
`FURTHER ORDERED that the grounds on which IPR2014-00916
`was instituted are unchanged, and no other grounds are instituted in the
`joined proceeding;
`
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2014-00916 (Paper 8) shall govern the joined proceedings;
`
`FURTHER ORDERED that, throughout the joined proceeding, St.
`Jude and Biotronik will file any paper, except for a motion that does not
`involve the other party, as a single, consolidated filing on behalf of
`Petitioner, and St. Jude will identify each such filing as a consolidated filing;
`
`FURTHER ORDERED that for any consolidated filing made by St.
`Jude, Biotronik may file an additional paper, not to exceed seven pages,
`which may address only points of disagreement with St. Jude;
`
`FURTHER ORDERED that IPR2015-00534 is terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`made in IPR2014-00916;
`
`4
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`
`
`IPR2015-00534
`Patent 5,371,734
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of IPR2014-00916; and
`
`FURTHER ORDERED that the case caption in IPR2014-00916 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`FOR PETITIONER:
`Jeffrey M. Olson
`Matthew S. Jorgenson
`SIDLEY AUSTIN LLP
`jolson@sidley.com
`mjorgenson@sidley.com
`
`FOR PATENT OWNER:
`Matthew Pasulka
`ATLAS IP, LLC
`mpasulka@hotmail.com
`
`George C. Summerfield
`STADHEIM AND GREAR, LTD.
`summerfield@stadheimgrear.com
`
`5
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`
`
`Example Case Caption for Joined Proceeding
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ST. JUDE MEDICAL, INC., ST. JUDE MEDICAL S.C., INC.,
`PACESETTER, INC., and BIOTRONIK, INC.
`Petitioner,
`
`v.
`
`ATLAS IP LLC,
`Patent Owner.
`____________
`
`Case IPR2014-009161
`Patent 5,371,734
`____________
`
`
`1 Case IPR2015-00534 has been joined with this proceeding.
`
`
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