`
`Lifeport Sciences LLC
`c/o Dechert LLP
`Robert W. Ashbrook, Jr., lead counsel
`Kevin M. Flannery, backup counsel
`Cira Centre, 2929 Arch Street
`Philadelphia, PA 19104-2808
`telephone (215) 994-2215
`telephone (215) 994-2814
`facsimile (215) 994-2222
`robert.ashbrook@dechert.com
`kevin.flannery@dechert.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`
`
`ENDOLOGIX, INC.
`Petitioner
`
`v.
`
`LIFEPORT SCIENCES LLC
`Patent Owner
`
`____________________
`
`IPR2015-01722
`United States Patent No. 8,192,482
`____________________
`
`
`
`PATENT OWNER’S NOTICE IN RESPONSE TO
`THE BOARD’S JANUARY 28, 2016 ORDER
`
`
`
`
`
`
`Pursuant to the Patent Trial and Appeal Board’s Order dated January 28,
`
`2016 (Paper 7), Patent Owner Lifeport Sciences LLC hereby gives notice that the
`
`‘482 patent expired on (i.e., was terminally disclaimed beyond) September 1, 2015,
`
`as set forth below.
`
`
`
`The ‘482 patent claims priority under 35 U.S.C. § 120 to an application filed
`
`on September 27, 1994. Under 35 U.S.C. § 154(a)(1), the term of the ‘482 patent
`
`would preliminarily be calculated as continuing until twenty years after the filing
`
`date of that priority application, i.e., until September 27, 2014. This is the date that
`
`Petitioner erroneously stated in the petition.
`
`
`
`However, the term of the ‘482 patent has been adjusted by 1,263 days
`
`pursuant to 35 U.S.C. 154(b). The adjusted patent term for the ‘482 patent is
`
`therefore calculated to continue until March 13, 2018.
`
`
`
`However, the ‘482 patent is subject to a terminal disclaimer with respect to
`
`any term beyond the statutory term of U.S. patent no. 5,800,508. See 35 U.S.C.
`
`§ 154(b)(2)(B) (applying a terminal disclaimer after any patent term adjustment).
`
`
`
`The ‘508 patent issued from an application filed on June 5, 1995, which is
`
`before the date that is 6 months after the date of the enactment of the Uruguay
`
`Round Agreement Act (i.e., before June 8, 1995). Under 35 U.S.C. § 154(c)(1)
`
`(1998), the term of the ‘508 patent is the longer of the 20-year term as provided in
`
`35 U.S.C. § 154(a), or 17 years from grant. The ‘508 patent claims priority under
`
`1
`
`
`
`35 U.S.C. § 120 to an application filed on September 27, 1994, and therefore the
`
`20-year term would continue until September 27, 2014. However, the ‘508 patent
`
`issued on September 1, 1998, and therefore 17 years from grant is September 1,
`
`2015. Therefore the term of the ‘508 patent continued until the latter of those two
`
`dates, i.e., September 1, 2015.
`
`
`
`Therefore, the term of the ‘482 patent expired on (i.e., has been disclaimed
`
`beyond) September 1, 2015. The expiration date stated by Petitioner in the petition
`
`is incorrect.
`
`
`
`
`
`
`
`
`
`Dated: January 28, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` / Robert W. Ashbrook Jr. /
`Robert W. Ashbrook Jr., reg. no. 52,572
`Kevin Flannery, reg. no. 35,871
`Dechert LLP
`Counsel for Patent Owner
`
`2
`
`
`
`Certificate of Service
`
` I
`
`
`
` certify that today in
`
`Endologix, Inc. v. Lifeport Sciences LLC, IPR2015-01722
`
` I
`
`
`
` caused to be served a copy of:
`
`Patent Owner’s Notice in Response to the Board’s January 28, 2016 Order
`Certificate of Service
`
`
`upon:
`
`
`
`via:
`
`
`Endologix, Inc.
`c/o Sanjay K. Murthy, Robert J. Barz, and Katherine L. Hoffee
`K & L Gates LLP
`70 W. Madison St., Suite 3100
`Chicago, IL 60602
`sanjay.murthy@klgates.com
`robert.barz@klgates.com
`katy.hoffee@klgates.com
`
`electronic service to the email addresses above
`
`
`Dated: January 28, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`15878095.1
`
`
`
`
`
`
`
` / Robert W. Ashbrook Jr. /
`Robert W. Ashbrook Jr., reg. no. 52,572
`Kevin Flannery, reg. no. 35,871
`Dechert LLP
`Counsel for Patent Owner
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