`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`US ENDODONTICS, LLC,
`Petitioner
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner
`____________________
`
`CASE IPR2015-00632
`Patent 8,727,773 B2
`____________________
`
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`I. BACKGROUND ................................................................................................. 1
`
`I. BACKGROUND ............................................................................................... ..1
`
`II. SUPPLEMENTAL INFORMATION TO BE SUBMITTED ............................ 2
`
`II. SUPPLEMENTAL INFORMATION TO BE SUBMITTED .......................... ..2
`
`III. ARGUMENT ....................................................................................................... 2
`
`III. ARGUMENT ..................................................................................................... ..2
`
`IV. CONCLUSION .................................................................................................... 7
`
`IV. CONCLUSION .................................................................................................. ..7
`
`
`
`
`
`i
`
`
`
`
`
`Cases
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Microsoft Corp. v. Multi-Tech Sys., Inc.,
` 357 F.3d 1340 (Fed. Cir. 2004) .............................................................................. 5
`Pac. Mkt. Int’l, LLC v. Ignite USA, LLC,
` IPR2014-00561, Paper 23 (PTAB Dec. 2, 2014) .......................................... 3, 5, 6
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
` IPR2013-00369, Paper 37 (PTAB Feb. 5, 2014) ........................................... 3, 5, 6
`Taiwan Semiconductor Mfg. Co., Ltd. v. DSS Tech. Mgmt., Inc.,
` IPR2014-01030, Paper 11 (PTAB Feb. 3, 2015) ........................................... 2, 5, 6
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
` 503 F.3d 1295 (Fed. Cir. 2007) .............................................................................. 5
`
`Regulations
`
`37 C.F.R. § 42.123(a) ....................................................................................... passim
`
`ii
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.123(a), Petitioner US Endodontics, LLC (“US
`
`Endo”) submits the following motion to submit supplemental information in
`
`IPR2015-00632. Specifically, US Endo seeks to submit the prosecution history
`
`of Patent Owner’s subsequently issued U.S. Patent No. 8,876,991 (“the ’991
`
`patent”), which includes statements that are relevant to the claims for which the
`
`trial has been instituted. US Endo requested authorization from the Board to file
`
`this motion on August 26, 2015, which the Board granted on August 28, 2015.
`
`Patent Owner stated that it would not oppose the filing of this motion.
`
`I.
`
`BACKGROUND
`On January 30, 2015, US Endo filed a petition for inter partes review of
`
`claims 1-17 of U.S. Patent No. 8,727,773 (“the ’773 patent”), owned by Gold
`
`Standard Instruments, LLC (“Patent Owner” or “GSI”). In the petition, US
`
`Endo explained that, if the “wherein” clause of claims 1 and 13 is considered to
`
`be a claim limitation,1 it can be met “by a heat-treated file with an austenite finish
`
`temperature above mouth temperature.” Paper 2 at 7-8. This understanding was
`
`
`1
`Specifically, claims 1 and 13 of the ’773 patent claim a method of
`
`manufacturing an endodontic instrument “wherein the heat treated shank has an
`
`angle greater than 10 degrees of permanent deformation after torque at 45
`
`[°/degrees] of flexion when tested in accordance with ISO Standard 3630-1.”
`
`1
`
`
`
`
`
`
`
`
`
`supported by the applicant’s statements in the prosecution histories of both the
`
`’773 patent and other related patents, which admitted that a shank with a
`
`transformation (austenite finish (“Af”)) temperature above body temperature would
`
`satisfy the limitations of the “wherein” clause. Id. at 13-14. Based, in part, on this
`
`understanding, the Board granted US Endo’s petition and instituted a trial on
`
`Grounds 5, 6, 7, and 11 on August 5, 2015. Paper 29 at 19, 30 and 32.
`
`II.
`
`SUPPLEMENTAL INFORMATION TO BE SUBMITTED
`
`The present motion seeks to submit the prosecution history of the ’991
`
`patent, which includes statements that are relevant to the claims for which trial
`
`has been instituted. The application resulting in the ’991 patent is a continuation
`
`of the application that led to the ’773 patent. GSI is the owner of both of these
`
`related patents. The supplemental information requested to be entered is included
`
`as Exhibit 1030, submitted herewith.
`
`III. ARGUMENT
`US Endo’s motion to submit supplemental information should be granted
`
`because it satisfies the requirements of 37 C.F.R. § 42.123(a), and because the
`
`supplemental information does not (i) change the grounds of unpatentability upon
`
`which trial has been instituted, (ii) change the evidence initially presented, or (iii)
`
`unfairly prejudice GSI. See, e.g., Taiwan Semiconductor Mfg. Co., Ltd. v. DSS
`
`Tech. Mgmt., Inc., IPR2014-01030, Paper 11 at 3 (PTAB Feb. 3, 2015); Palo Alto
`
`2
`
`
`
`
`
`
`
`
`
`Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 37 at 3, 5 (PTAB
`
`Feb. 5, 2014); Pac. Mkt. Int’l, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 23
`
`at 4-5 (PTAB Dec. 2, 2014).
`
`Under 37 C.F. R. § 42.123(a), a motion to submit supplemental information
`
`must show that: (1) the party seeking to submit supplemental information
`
`requested authorization to file the motion within one month of the date the trial
`
`was instituted, and (2) the supplemental information is relevant to a claim for
`
`which the trial has been instituted. US Endo’s motion meets both of these
`
`requirements.
`
`US Endo timely requested the Board’s authorization to file this motion on
`
`August 26, 2015, less than one month after the institution of the trial. The Board
`
`granted this authorization on August 28, 2015. As such, the first requirement of 37
`
`C.F.R. § 42.123(a) has been satisfied.
`
`Additionally, the second requirement of 37 C.F.R. § 42.123(a) is met
`
`because the prosecution history of the ’991 patent includes statements that further
`
`support the understanding that the “wherein” clauses of claims 1 and 13 can be
`
`satisfied by heat-treating the file shank to alter the transformation temperature to
`
`above body temperature. See, e.g., Ex. 1030 at 126-28, ¶¶ 4-6 (Inventor
`
`declaration relying on differential scanning calorimetry (“DSC”) testing results that
`
`show that the shanks of endodontic instruments heat-treated in accordance with his
`
`3
`
`
`
`
`
`
`
`
`
`alleged invention had a transformation (Af) temperature of 37ºC or greater to argue
`
`that this means that the files were in the martensite phase at body temperature and,
`
`therefore, “will all have an angle greater than 10 degrees of permanent deformation
`
`after torque at 45º of flexion when tested in accordance with ISO Standard 3630-1
`
`as recited in pending independent claims 1, 6 and 11 of [his] patent application.”).
`
`Such statements are directly relevant to all claims of the ’773 patent, as
`
`demonstrated by the Board’s decision to institute trial on Grounds 5, 6, 7, and 11.
`
`For example, in determining that the Kuhn reference of Grounds 5, 6, and 7
`
`discloses the “wherein” clause of the claims, the Board cited the expert testimony
`
`of Dr. Goldberg, stating that Kuhn discloses heat-treating a superelastic, nickel-
`
`titanium file to increase the transformation (Af) temperature from 35 ºC to 40 ºC
`
`(above body temperature) and that such increase, as represented by the inventor, is
`
`the desired result of the invention of the ’773 patent. Paper 29 at 19. Similarly, in
`
`instituting trial on Ground 11 (obviousness of all the claims over the Matsutani,
`
`Pelton, and ISO 3630-1 references), the Board again credited Dr. Goldberg’s
`
`explanation that the “wherein” clause is satisfied because Matsutani and Pelton
`
`together disclose heat-treating shanks such that the transformation (Af) temperature
`
`is altered to be above body temperature. Id. at 30. Accordingly, sections of the
`
`prosecution history of the ’991 patent that further support this understanding are
`
`directly relevant to the claims for which trial was instituted, so the proffered
`
`4
`
`
`
`
`
`
`
`
`
`supplemental information meets the second requirement of 37 C.F.R. § 42.123(a).
`
`See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1307
`
`(Fed. Cir. 2007) (finding disclaimer based on patentee’s statements made during
`
`the prosecution of a related application after the patent in question issued);
`
`Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349-50 (Fed. Cir. 2004)
`
`(holding statements by patentee regarding scope of the invention made during
`
`prosecution of sibling applications having a common disclosure with earlier-issued
`
`patent relevant to claim construction of the patent).
`
`In addition to meeting the two requirements of § 42.123(a), the submission
`
`of the ’991 prosecution history would not raise any new ground of unpatentability
`
`or change the evidence previously presented. See, e.g., Taiwan Semiconductor
`
`Mfg. Co., Paper 11 at 3; Palo Alto Networks, Inc., Paper 37 at 3; Pac. Mkt. Int’l,
`
`Paper 23 at 4. As explained supra, the Board already instituted trial on Grounds 5,
`
`6, 7, and 11, based, in part, on the understanding that the “wherein” clause of the
`
`’773 patent is met by a heat-treated shank with a transformation temperature
`
`“altered to be above body temperature.” Paper 29 at 30. This understanding of the
`
`“wherein” clause is based on the applicant’s statements during the prosecution of
`
`the ’773 patent as well as its statements during the prosecution of related patents
`
`other than the ’991 patent. Paper 2 at 13-14. Supplementing this understanding
`
`with further applicant statements from the prosecution history of the ’991 patent
`
`5
`
`
`
`
`
`
`
`
`
`does not alter the grounds upon which trial was instituted, add new grounds of
`
`unpatentability, or change the previously presented evidence, but, rather, merely
`
`adds a supplemental reference that further confirms the statements made by the
`
`applicant in the previously cited applications. Taiwan Semiconductor Mfg. Co.,
`
`Paper 11 at 3; Palo Alto Networks, Inc., Paper 37 at 3; Pac. Mkt. Int’l, Paper 23 at
`
`4.
`
`Lastly, the addition of this supplemental information does not unfairly
`
`prejudice GSI. The president of GSI, Neill Luebke, is the sole named inventor of
`
`the ’773 and ’991 patents. Paper 4. Both GSI and its president were, of course,
`
`aware of the arguments made during prosecution of the ’991 patent. Indeed, the
`
`interpretation of the “wherein” clause according to the ’991 patent’s prosecution
`
`history is already supported by the prosecution history of the ’773 patent itself, as
`
`well as by the prosecution histories of other patents within the same patent family.
`
`Paper 2 at 13-14. As such, GSI is well aware of US Endo’s position regarding the
`
`meaning of the “wherein” clause. Palo Alto Networks, Inc., Paper 37 at 5; Pac.
`
`Mkt. Int’l, Paper 23 at 5. Finally, because this supplemental information is being
`
`submitted so early in the trial process, GSI has a full opportunity to attempt to
`
`refute it, including within its full response. Id. Because the requirements of 37
`
`C.F.R. § 42.123(a) are satisfied and the proffered supplemental information merely
`
`further confirms the previously submitted evidence without adding new grounds of
`
`6
`
`
`
`
`
`
`
`
`
`unpatentability or unfairly prejudicing GSI, US Endo’s motion to submit
`
`supplemental information should be granted.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner US Endo seeks entry of the prosecution
`
`history of the ’991 patent, submitted as Exhibit 1030 herewith.
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Jeffrey S. Ginsberg /
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`Lead counsel for Petitioner US Endodontics, LLC
`
`Matthew G. Berkowitz (Reg. No. 57,215)
`Eric T. Schreiber (Reg. No. 58,771)
`Back-up counsel for Petitioner US Endodontics,
`LLC
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
`
`Dated: August 28, 2015
`
`
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`Certificate of Service
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 28,
`
`2015, the foregoing Petitioner’s Motion to Submit Supplemental Information
`
`Pursuant to 37 C.F.R. § 42.123(a) was served via electronic mail on the following
`
`counsel of record for the Patent Owner:
`
`Joseph A. Hynds
`R. Elizabeth Brenner-Leifer
`Steven Lieberman
`Jason M. Nolan
`Derek F. Dahlgren
`jhynds@rothwellfigg.com
`ebrenner@rothwellfigg.com
`slieberman@rothwellfigg.com
`jnolan@rothwellfigg.com
`ddahlgren@rothwellfigg.com
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`
`
`/Eric T. Schreiber/
`Eric T. Schreiber (Reg. No. 58,771)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200