UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EDWARDS LIFESCIENCES CORP.,
`
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`
`Patent Owner.
`_______________
`
`Case IPR2017-00444
`Patent 6,915,560
`_______________
`
`Before the Honorable NEIL T. POWELL, JAMES A. TARTAL, and STACY B.
`MARGOLIES, Administrative Patent Judges.
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EDWARDS LIFESCIENCES CORP.,
`
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`
`Patent Owner.
`_______________
`
`Case IPR2017-00444
`Patent 6,915,560
`_______________
`
`Before the Honorable NEIL T. POWELL, JAMES A. TARTAL, and STACY B.
`MARGOLIES, Administrative Patent Judges.
`
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1
`
`
`
`I.
`
`Introduction
`
`Pursuant to 37 C.F.R. §§ 42.23(b) and 42.64, Boston Scientific Scimed, Inc.
`
`(“Patent Owner”) respectfully requests that the Board exclude Petitioner Edwards
`
`Lifesciences Corp.’s (“Petitioner’s”) Exhibit 1127 (“Sheehan’s Supplemental
`
`Declaration”)1 and Petitioner’s Reply (Paper Nos. 17 (sealed) and 18 (public)) for
`
`including new claim construction issues and arguments raised for the first time in
`
`the Petitioner’s reply.
`
`Patent Owner timely objected to Petitioner’s Reply and Sheehan’s
`
`Supplemental Declaration in Patent Owner’s Second Set of Objections. (Paper No.
`
`20 at 1 (“new claim construction arguments and analyses relating thereto (e.g.,
`
`¶¶ 32-36 (“operatively engaged”), ¶ 45 (“distinct connection locations”)….”).)
`
`Petitioner elected not to provide supplemental evidence in response to Patent
`
`Owner’s objections.
`
`II.
`
`Argument
`
`In an IPR proceeding, a petitioner is required to identify “with particularity”
`
`the “evidence that supports the grounds for the challenge to each claim” it its initial
`
`petition. 35 U.S.C. § 312(a)(3). Specifically, the petitioner must “provide a claim
`
`construction for the challenged claims” in its initial petition. Office Patent Trial
`
`1 Petitioner filed a corrected Exhibit 1127 on January 19, 2018 (which adds an
`
`under-the-penalty-of-perjury statement at the end).
`
`2
`
`
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). The petitioner’s
`
`reply is limited to arguments raised in the patent owner’s response. 37 C.F.R.
`
`§ 42.23(b). Pursuant to these rules, the Board has excluded new issues raised for
`
`the first time in a petitioner’s reply brief and expert declaration. See, e.g.,
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed.
`
`Cir. 2016) (affirming the Board’s exclusion of new arguments raised for the first
`
`time in the Petitioner’s reply brief and expert declaration); Scotts Co. v. Encap,
`
`LLC., IPR2013-00110, Paper 79 at 5-6 (PTAB June 24, 2014) (granting motion to
`
`exclude materials that were outside of the proper scope of a reply, including claim
`
`construction related analyses). Further, “[o]nce the Board identifies new issues
`
`presented for the first time in reply, neither this court nor the Board must parse the
`
`reply brief to determine which, if any, parts of that brief are responsive and which
`
`are improper.” Intelligent Bio-Sys., 821 F.3d at 1369; see also Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. at 48,767 (The Board “will not attempt to sort proper
`
`from improper portions of the reply.”); Scotts Co. v. Encap, LLC., IPR2013-00110,
`
`Paper 79 at 6, fn. 3 (“The fact that two declarations may contain some material
`
`appropriate for a response does not require our consideration of them, as the Board
`
`will not attempt to sort the proper from the improper portions [citing Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. at 48,767].”).
`
`3
`
`
`
`Here, Sheehan’s Supplemental Declaration includes two new claim
`
`construction issues raised for the first time in Petitioner’s Reply, namely the
`
`proposed constructions of the terms (1) “operatively engaged” (in claims 1-2, 6, 8-
`
`9, 18-19, 23, 25-26, 37, and 40 of U.S. Patent No. 6,915,560 (“the ’560 patent”))
`
`and (2) “distinct connection locations” (in claims 1, 2, 6, and 8-9 of the ’560
`
`patent). (See Ex. 1127 at ¶ 32 (“Operatively engaged simply means engaged in a
`
`way that furthers the operation, or that the engagement produces the intended
`
`effect.”); at ¶ 45 (“Claim 1 and its dependents require ‘. . . at distinct connection
`
`locations.’ Thus, the recited ‘distinct connection locations’ are on the dies, not on
`
`the stationary end-walls.”)2 Based on these new (and overly broad) claim
`
`2 During his deposition, Mr. Sheehan readily admitted that he construed the term
`
`“operatively engaged” under the broadest reasonable interpretation standard in his
`
`supplemental declaration. (Ex. 2052 at 72:9-24 (using broadest reasonable
`
`interpretation to construe “operatively engaged”); see also id. at 72:25-75:7 (scope
`
`of “operatively engaged” under Mr. Sheehan’s new construction). He also readily
`
`admitted that the only issue he disputes, with respect to whether the claim element
`
`“distinct connection locations” is found in prior art, is with respect to the
`
`construction of “distinct connection locations”. (Id. at 75:11-77:11 (“I’m reading it
`
`[“distinct connection locations”] correctly;” agreeing that it is a “purely claim
`
`Footnote continued on next page
`
`4
`
`
`
`construction positions, Mr. Sheehan and Petitioner make new arguments on how
`
`the elements of the instituted claims of the ‘560 patent are found in the prior art
`
`reference. (Ex. 1127 at ¶¶ 33-36 (arguments and analyses based on the new
`
`construction of “operatively engaged”); Petitioner’s Reply at 9-12 (same); at 14-15
`
`(arguments and analyses based on the new construction of “distinct connection
`
`locations”).)
`
`Mr. Sheehan and Petitioner should have raised the claim construction issues
`
`and arguments relating to the “operatively engaged” and “distinct connection
`
`locations” terms in its initial Petition. Indeed, Mr. Sheehan and Petitioner raised
`
`three different claim construction issues (“a stent crimper comprising,” “dies and
`
`blades,” and “stationary end-walls”/“stationary plates”) in the initial Petition. (Ex.
`
`1105 at ¶¶ 68-79; Petition, Paper 1 at 31-34.) Nowhere in its initial Petition did
`
`Mr. Sheehan or Petitioner propose claim constructions for the terms “operatively
`
`engaged” and “distinct connection locations.” (Id.; see also Ex. 1105 at ¶ 122, 68-
`
`69; Paper 1 at 55-56.) By waiting to raise the new claim construction issues and
`
`arguments relating to the terms “operatively engaged” and “distinct connection
`
`Footnote continued from previous page
`construction issue); see also id. 77:12-81:3 (scope of “distinct connection
`
`locations” under Mr. Sheehan’s new construction).)
`
`5
`
`
`
`locations” in its Reply for the first time, Petitioner violates rules of an IPR
`
`proceeding and denies Patent Owner the opportunity to respond.
`
`III. Conclusion
`
`For the foregoing reasons, Petitioner’s Reply and Sheehan’s Supplemental
`
`Declaration should be excluded from evidence.
`
`Dated: February 9, 2018
`
`Respectfully submitted,
`
`/s/ Wallace Wu
`Wallace Wu (Reg. No. 45,380)
`Jennifer A. Sklenar (Reg. No. 40,205)
`ARNOLD & PORTER
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel: (213) 243-4000
`Fax: (213) 243-4199
`
`Nicholas M. Nyemah (Reg. No. 67,788)
`ARNOLD & PORTER
`601 Massachusetts Avenue, NW
`Washington, DC 20001
`Telephone: (202) 942-5000
`Fax: (202) 942-5999
`
`Attorneys for Patent Owner Boston
`Scientific Scimed, Inc
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE was served on February 9, 2018 to the
`following Counsel for Petitioner via e-mail:
`
`Craig S. Summers
`Brenton R. Babcock
`Christy G. Lea
`Cheryl T. Burgess
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`2css@knobbe.com
`2brb@knobbe.com
`2cgl@knobbe.com
`2ctb@knobbe.com
`BoxEdwards@knobbe.com
`
`Attorneys for Petitioner Edwards Lifesciences Corp.
`
`/s/ Wallace Wu
`Wallace Wu (Reg. No. 45,380)
`ARNOLD & PORTER
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel: (213) 243-4000
`Fax: (213) 243-4199
`
`-7-
`
`
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