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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`US ENDODONTICS, LLC,
`Petitioner
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`v.
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`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner
`____________________
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`Case No. IPR2015-00632
`U.S. Patent No. 8,727,773 B2
`____________________
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`PETITIONER’S MOTION FOR LEAVE TO ADD
`TWO REAL PARTIES-IN-INTEREST
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`US ENDODONTICS, LLC,
`Petitioner
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`v.
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`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner
`____________________
`
`Case No. IPR2015-00632
`U.S. Patent No. 8,727,773 B2
`____________________
`
`PETITIONER’S MOTION FOR LEAVE TO ADD
`TWO REAL PARTIES-IN-INTEREST
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`Petitioner US Endodontics, LLC (“Petitioner” or “US Endo”) respectfully
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`requests leave to identify two additional real parties-in-interest (“RPIs”)—
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`Guidance Endodontics, LLC (“Guidance”) and Edge Endo, LLC (“Edge Endo”)—
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`that Patent Owner Gold Standard Instruments, LLC (“Patent Owner” or “GSI”)
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`asserts in its preliminary response were improperly omitted from US Endo’s
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`Petition. US Endo further requests that the Board maintain US Endo’s original
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`January 30, 2015 filing date.
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`A.
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`Introduction
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`Although US Endo disputes that either Guidance or Edge Endo is actually an
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`RPI (while each is owned by the majority owner of US Endo, they are separate
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`entities that did not exert any control over this proceeding and had no involvement
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`in the filing of the petition), it is willing to concede the issue in order to streamline
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`the proceeding and avoid unnecessary litigation. Petitioner US Endo’s request
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`would not implicate any of the considerations under 35 U.S.C. § 315(b) or (e),
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`even if it is assigned a new filing date.
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`Patent Owner GSI’s only claim of prejudice raised during the May 20, 2015,
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`telephone conference—that it “had to do the work and spend the money” to
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`prepare its argument—lacks merit. Although GSI may have spent money
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`addressing the RPI issue in its preliminary response, parties routinely spend
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`resources addressing issues that are ultimately conceded or otherwise resolved in
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`litigation. Indeed, that is one of the main goals of all IPRs—to narrow the issues
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`and proceed to a final written decision as efficiently and expeditiously as possible.
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`See 37 C.F.R. § 42.1(b). Further, GSI’s claim of prejudice is belied by the fact that
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`it seeks to pursue discovery on this issue, thereby subjecting the parties to
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`additional time, money and expense, when it could just consent to the addition of
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`Guidance and Edge Endo as RPIs.
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`During the May 20 teleconference, GSI also asserted that granting US
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`Endo’s request would set bad policy and encourage petitioners in future
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`proceedings to intentionally omit RPIs. This claim also lacks merit since both
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`parties and practitioners owe a duty of candor and good faith to the Board. In any
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`event, petitioners would not generally engage in the conduct that GSI suggests
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`since it would often trigger the time bar provision of 35 U.S.C. § 315(b). See GEA
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`Processing Eng’g, Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 140 (Feb.
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`22, 2015) (“Steuben”).
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`Pursuant to 37 C.F.R. § 42.5, good cause exists to maintain US Endo’s
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`original January 30, 2015, filing date. First, assigning a new filing date would
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`needlessly restart the entire process and delay ultimate resolution of the
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`patentability issues raised in the petition in contravention to 37 C.F.R. § 42.1(b).
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`See also 77 Fed. Reg. 48,615. Second, US Endo’s motion is intended to avoid
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`unnecessary litigation, reduce costs, and focus the proceeding on whatever
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`patentability issues the Board might institute for trial. Further, US Endo has
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`already identified the owner of both Guidance and Edge Endo, Dr. Charles J.
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`Goodis, as an RPI in this proceeding.
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`Accordingly, the Board should grant US Endo’s motion for leave to add
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`Guidance and Edge Endo as additional RPIs, and maintain US Endo’s original
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`filing date.
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`B.
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`Facts
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`Petitioner US Endo is a manufacturer of endodontic files that is owned by
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`Dr. Charles Goodis (70%) and Mr. Bobby Bennett (30%). Edge Endo markets and
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`sells products manufactured by US Endo and other entities, while Guidance only
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`sells filler material (gutta percha points) and drying material (paper points) used in
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`root canals manufactured by companies other than US Endo. Edge Endo and
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`Guidance are each owned by Dr. Goodis. Neither company has any ownership
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`interest in US Endo. Edge Endo and Guidance did not exert any control over this
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`proceeding and had no involvement in the filing of the petition.
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`On June 24, 2014, Petitioner US Endo was sued in the U.S. District Court
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`for the Eastern District of Tennessee by Dentsply International, Inc. (“Dentsply”)
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`for alleged infringement of the U.S. Patent No. 8,727,773 (“the ’773 patent”).1
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`1
`Dentsply was initially identified as the licensee of Patent Owner GSI.
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`Dentsply later moved to amend its complaint to add Tulsa Dental Products, LLC as
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`Petitioner was served with the complaint on June 25, 2015. Neither Edge Endo nor
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`Guidance is a party to the pending district court litigation.
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`On January 30, 2015, Petitioner filed a petition for inter partes review of all
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`claims of the ’773 patent. IPR2015-00632, Paper 2. The petition identified US
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`Endo as a RPI. On February 25, 2015, Petitioner, with the Board’s permission and
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`without objection from GSI, submitted corrected mandatory notices, identifying
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`both Dr. Goodis and Mr. Bennett as additional RPIs. Paper 8. GSI filed its
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`preliminary response on May 11, 2015. In its preliminary response, GSI argues
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`that Petitioner should have also identified Edge Endo and Guidance as RPIs (in
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`addition to US Endo, Dr. Goodis and Mr. Bennett). Specifically, Patent Owner
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`argues that Guidance and Edge Endo are all owned and controlled by Dr. Goodis
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`and that they share many of the same resources. Paper 9 at 55.
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`On May 20, 2015, the Board held a teleconference regarding US Endo’s
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`request to add Edge Endo and Guidance as additional RPIs. Ex. 1028. The Board
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`granted US Endo leave to file a motion, not to exceed 10 pages, and granted GSI
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`the same number of pages for its responsive brief. Ex. 1028 at 30:19-31:3.
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`an additional plaintiff. The named inventor of the ’773 patent, Dr. Luebke, is the
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`president of GSI. Ex. 1029.
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`C. Argument
`Good cause exists to grant Petitioner US Endo’s request to add Guidance
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`and Edge Endo as RPIs pursuant to 37 C.F.R. § 42.5.
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`1.
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`Granting Petitioner’s Motion Would Streamline the Proceeding and
`Avoid Expensive and Pointless Discovery
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`Petitioner seeks to add Guidance and Edge Endo as RPIs simply to avoid
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`litigating an ancillary issue and dealing with potentially burdensome and intrusive
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`discovery during the proceeding. Despite GSI’s protestations, there is no
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`legitimate reason to continue fighting an issue that US Endo is effectively
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`conceding. GSI’s litigation-for-the-sake-of-litigation approach is the antithesis of
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`IPR policy. See 37 CFR § 42.1(b). Where possible, IPR trials should focus on the
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`patentability issues instituted by the Board for review, and not on issues that have
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`already been mooted.
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`2.
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`35 U.S.C § 315(b) and (e) Are Not Implicated by This Motion
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`Petitioner was first served with a complaint alleging infringement of the
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`’773 patent on June 25, 2015. Neither Guidance nor Edge Endo has been accused
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`of infringing this method patent. Therefore, this not a case like Steuben, IPR2014-
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`00041, Paper 140, where the Petitioner sought leave to amend more than one year
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`after having been sued; US Endo can re-file a new petition up and through at least
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`June 25, 2015, without implicating 35 U.S.C. § 315(b) or (e). Re-filing a new
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`petition, however, would be a waste of resources and would needlessly restart the
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`whole process.
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`3.
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`GSI’s Arguments About Prejudice are Meritless
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`GSI would not suffer any prejudice should US Endo be granted leave to add
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`two additional RPIs. GSI spent four pages of its preliminary response addressing
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`the RPI issue, but its total response was still three pages short of the 60-page limit.
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`Clearly, GSI did not strategically omit any substantive arguments in favor of the
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`RPI issue. Ex. 1028 at 18:12-15. The only claim of specific prejudice GSI
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`articulated during the May 20 teleconference was that it “had to do the work and
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`spend the money” to prepare its argument. Ex. 1028 at 19:23-20:16. This
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`argument rings hollow. Although GSI may have expended some resources on this
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`four page section, it is routine in litigation that parties spend resources on issues
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`that are ultimately conceded. It seems unlikely that GSI would assert prejudice if
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`US Endo elected to concede a substantive issue of patentability that GSI had
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`addressed in its preliminary response. This situation is no different. Moreover, if
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`GSI was truly concerned about limiting the time and expense in litigating this
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`issue, it would simply consent to Petitioner’s request to add Guidance and Edge
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`Endo as RPIs to this proceeding. Instead, it seeks to obtain discovery so that it can
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`further litigate an issue that Petitioner is willing to concede, with the knowledge
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`that this will only result in increased cost to all parties. Ex. 1028 at 13:5-14:3.
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`Additionally, as noted above, US Endo is not yet barred or estopped from
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`filing another petition for inter partes review. Any alleged prejudice must be
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`measured against the fact that a new petition filed before June 25, 2015 and
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`naming Edge Endo and Guidance as RPIs would not be subject to the RPI defense
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`now asserted by GSI.
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`During the May 20, 2015, teleconference, GSI also argued that if
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`Petitioner’s request is granted, future “Petitioners will be motivated to identify the
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`real parties-in-interest only with the most crabbed and conservative approach . . .”
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`Ex. 1028 at 12:6-9. This is wrong for a number of reasons.
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`First and foremost, parties and practitioners owe a duty of candor and good
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`faith to the Office during the course of a proceeding. See, e.g., 37 C.F.R. § 42.11;
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`37 C.F.R. § 11.303. It is unreasonable for GSI to suggest that a ruling in favor of
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`Petitioner here—which is intended simply to streamline the issues—will open the
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`floodgates to unethical conduct. Moreover, US Endo decided shortly after filing
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`the petition that, in view of recent Board decisions, it should amend its petition to
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`identify the two owners of US Endo, Dr. Goodis and Mr. Bennett as RPIs. If it
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`was Petitioner’s goal to hide Edge Endo or Guidance, or to shield them from the
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`estoppel effects of 35 U.S.C. § 315 as Patent Owner suggests, US Endo would not
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`have identified Dr. Goodis—the owner of US Endo, Guidance, and Edge Endo—as
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`an RPI.
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`Second, GSI’s concern is illusory because many petitioners would face dire
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`consequences under 35 U.S.C. § 315(b) should they play fast and loose with their
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`RPI identification. See, e.g., Steuben, IPR2014-00041, Paper 140; Galderma S.A.
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`& Q-Med AB v. Allergan Industrie, SAS, IPR2014-01422, Paper 14 (March 5,
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`2015). Here, GSI chose to challenge the RPI issue in its preliminary response, but
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`a patent owner has no obligation to do so, and could instead choose to wait until its
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`patent owner response after institution. In such case, approximately 8 months
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`would pass from the petition date, meaning that, in many cases, the petitioner
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`would be time-barred from filing a new petition under 35 U.S.C. § 315. See
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`Steuben Foods, IPR2014-00041, Paper 140. A petitioner would be foolish to
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`intentionally risk this type of situation by avoiding full RPI identification.
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`GSI’s claims of prejudice lack merit and reveal its true motivation—
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`attempting to avoid the Board ruling on the merits of US Endo’s petition while its
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`exclusive licensee proceeds with the pending district court litigation.
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`4.
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`Petitioner’s Filing Date Should be Maintained
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`The Board should exercise its authority under 37 C.F.R § 42.5 and maintain
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`US Endo’s original filing date of January 30, 2015. Good cause exists for several
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`reasons. First, US Endo is still not time-barred or otherwise estopped from filing a
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`new petition, so assigning a new filing date would serve only to delay the
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`proceedings. Moreover, this is not a situation where GSI needs an opportunity to
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`file a new preliminary response. The addition of Edge Endo and Guidance as RPIs
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`does not raise any new issues that GSI would have to address, and GSI has
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`conceded that there were no page-limit issues regarding its already-filed
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`preliminary response, Ex. 1028 at 18:12-15.
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`Second, although initial identification of all RPIs is important (see 77 Fed.
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`Reg. 48,617), in this case, the usual concerns about Board conflicts and timeliness
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`of the petition are not implicated. US Endo, Guidance and Edge Endo are
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`privately-owned companies, and the owners of each have already been identified
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`as RPIs. US Endo—the only company that has been sued for infringement of the
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`’773 patent—was not served with a complaint until June 25, 2014. None of US
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`Endo, Edge Endo or Guidance Endo has ever petitioned for any inter partes
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`review. Accordingly, the provisions of 35 U.S.C. § 315(b) and (e) are not even
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`arguably implicated by petitioner’s proposed amendments.
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`Finally, maintaining US Endo’s filing date in this instance would encourage
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`petitioners to streamline the proceedings by conceding RPI arguments raised by
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`patent owners that do not implicate the provisions of 35 U.S.C. § 315(b) or (e). If
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`the Board assigns a new filing date in these instances (other than situations like
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`Steuben Foods, where 35 U.S.C. § 315 (b) was implicated by a filing date change),
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`petitioners would be motivated to fight RPI arguments even where the issue does
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`not implicate 35 U.S.C. § 315(b) or (e) or otherwise affect the parties’ rights in the
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`proceeding.
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`D. Conclusion
`For the foregoing reasons, US Endo respectfully requests that the Board
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`grant it leave to add Guidance and Edge Endo as RPIs, and maintain the original
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`January 30, 2015, filing date.
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` Respectfully submitted,
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`Dated: May 27, 2015
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`/Jeffrey S. Ginsberg/
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`jginsberg@kenyon.com
`Lead Counsel for Petitioner
`Matthew G. Berkowitz (Reg. No. 57,215)
`mberkowitz@kenyon.com
`Eric T. Schreiber (Reg. No. 58,771)
`eschreiber@kenyon.com
`Back-up counsel for Petitioner
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`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004
`Phone: (212) 425-7200
`Facsimile: (212) 425-5288
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on May 27, 2015, this Motion for Leave to
`Add Two Real Parties-in-Interest, along with Exhibit 1029, was served via email
`on counsel for the Patent Owner at the following addresses:
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`Dated: May 27, 2015
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`Joseph A. Hynds
`jhynds@rothwellfigg.com
`R. Elizabeth Brenner-Leifer
`ebrenner@rothwellfigg.com
`Steven Lieberman
`slieberman@rothwellfigg.com
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`
`
`
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`/Matthew G. Berkowitz/
`Matthew G. Berkowitz
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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`
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