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Filed on behalf of:
`Edwards Lifesciences Corporation
`By: Craig S. Summers
`Brenton R. Babcock
`Christy G. Lea
`Joshua Stowell
`Cheryl T. Burgess
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`Email: BoxEdwards-4@knobbe.com
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner
`
`
`
`
`
`
`
`
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`
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`
`
`Case No. IPR2017-00444
`Patent 6,915,560
`
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE EVIDENCE
`
`

`

`IPR2017-00444
`Edwards v. Boston Scientific
`
`Petitioner Edwards Lifesciences Corp. (“Petitioner” or “Edwards”) opposes
`
`Patent Owner Boston Scientific Scimed, Inc.’s (“Patent Owner’s” or “Boston’s”)
`
`Motion to Exclude Evidence (“Motion”) (Paper 25). The Board should deny
`
`Boston’s Motion for three reasons. First, a motion to exclude evidence is an
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`improper mechanism to argue that a reply brief contains new arguments and
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`evidence. Second, the arguments identified by Boston are directly responsive to
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`issues first presented in Boston’s Patent Owner’s Response and, thus, Edwards’
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`arguments are appropriate for its Reply. Third, Edwards did not apply any “new”
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`claim constructions in its Reply.
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` Edwards has applied the same claim
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`constructions throughout this inter partes review.
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`I. BOSTON’S MOTION TO EXCLUDE IS IMPROPER
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`The Board has repeatedly stated that a “motion to exclude evidence filed for
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`the purpose of striking or excluding an opponent’s brief and/or evidence that a
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`party believes goes beyond what is permitted under 37 CFR § 42.23 is improper.”
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`Palo Alto Networks, Inc. v. Finjan Inc., Case IPR2015-01979, Paper 62, at 66
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`(PTAB Mar. 15, 2017) (collecting cases). “An allegation that evidence does not
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`comply with 37 CFR § 42.23 is not a sufficient reason under the Federal Rules of
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`Evidence for making an objection and requesting exclusion of such evidence.” Id.;
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`see also Blackberry Corp. v. Zipit Wireless, Inc., Case IPR2014-01508, Paper 49,
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`1
`
`

`

`IPR2017-00444
`Edwards v. Boston Scientific
`
`at 40 (PTAB Mar. 29, 2016) (“a motion to exclude is not a proper vehicle for a
`
`party to raise the issue of arguments exceeding the permissible scope of a reply”).
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`Boston’s Motion seeks to exclude Petitioner’s entire Reply (Papers 17 and
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`18) and the entire Supplemental Declaration of Neil Sheehan (Exhibit 1127)
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`pursuant to 37 CFR § 42.23 on the purported basis that they include “two new
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`claim construction issues raised for the first time in Petitioner’s Reply.” Mot. at 4.
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`Boston does not identify any other basis to exclude Edwards’ Reply or Mr.
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`Sheehan’s Supplemental Declaration. Thus, Boston’s Motion is improper and
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`should be denied. See e.g., Palo Alto, Case IPR2015-01979, Paper 62, at 66
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`(denying improper motion to exclude evidence); Valeo N.A., Inc. v. Magna Elecs.,
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`Inc., Case IPR2014-00227, Paper 44, at 2 (PTAB Jan. 14, 2015) (expunging
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`improper motion to exclude evidence).
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`II. EDWARDS PROPERLY RESPONDED TO BOSTON’S NEW CLAIM
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`CONSTRUCTIONS
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`Boston alleges that paragraphs 32 and 45 of Mr. Sheehan’s Supplemental
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`Declaration include new claim constructions arguments for “operatively engaged”
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`and “distinct connection locations.” Mot. at 4. Boston mischaracterizes Mr.
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`Sheehan’s Supplemental Declaration. In both paragraphs 32 and 45, Mr. Sheehan
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`appropriately responded to claim constructions first presented by Boston in its
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`Patent Owner’s Response and explained why Boston’s claim constructions are
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`2
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`

`

`IPR2017-00444
`Edwards v. Boston Scientific
`
`overly-narrow and inconsistent with the understanding of a Person of Ordinary
`
`Skill in the Art (“POSITA”).
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`A petitioner is entitled to respond to arguments raised in a patent owner
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`response. 37 CFR § 42.23. “The mere fact that a Reply presents evidence that was
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`not in the record previously does not make that evidence improper.” The Toro Co.
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`v. MTD Prods. Inc., Case IPR2016-00194, Paper 41 at 12 (May 10, 2017). The
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`“back-and-forth” identified by Boston “shows that what [Boston] characterizes as
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`an argument raised ‘too late’ is simply the by-product of one party necessarily
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`getting the last word.” Idemitsu Kosan Co. v. SFC Co., 870 F.3d 1376, 1381 (Fed.
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`Cir. 2017).
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`Boston’s implicit contention that Mr. Sheehan and Edwards should have
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`“preemptively addressed” Boston’s new claim constructions in the Petition “is
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`plainly mistaken.” Idemitsu, 870 F.3d at 1376. Boston did not even raise these
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`claim constructions in its Patent Owner’s Preliminary Response. POPR (Paper 7)
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`at 32-33. Instead, Boston first raised the constructions of “operatively engaged”
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`and “distinct connection locations,” at least implicitly, in its Patent Owner’s
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`Response. Edwards “simply countered, as it was entitled to do.” Idemitsu, 870
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`F.3d at 1376.
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`3
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`

`

`IPR2017-00444
`Edwards v. Boston Scientific
`
`Moreover, the responsive arguments in Mr. Sheehan’s Supplemental
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`Declaration are consistent with the arguments in his initial declaration. Mr.
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`Sheehan did not offer any “new” arguments.
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`A. Mr. Sheehan Disagrees with Boston’s Overly-Narrow Construction of
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`“Operatively Engaged”
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`In support of Patent Owner’s Response, Boston’s declarant, Dr. Solar,
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`argues that Yasumi’s “moveable pieces” and “side plates” are not “operatively
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`engaged.” Patent Owner’s Response (Paper 15) at 26-27. To make this argument,
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`Dr. Solar imports a direct fixation requirement into the claim term “operatively
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`engaged.” For example, Dr. Solar opined that Yasumi does not satisfy the
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`“operatively engaged” limitation because there is no evidence that Yasumi’s
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`support disks are “fixed to, and not moving relative to, the side plates.” Ex. 2016
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`(Solar Decl.) at ¶51 (emphasis added). Dr. Solar also opined that there “is no
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`disclosure that the either support disk is fixed in any manner to either side plates.”
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`Id. (emphasis added). Boston adopted Dr. Solar’s erroneous claim construction in
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`its Patent Owner’s Response, arguing “there is no evidence that the moveable
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`pieces, the support discs, or the setting piece is affixed to any side plate….” Patent
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`Owner’s Response (Paper 15) at 27 (emphasis added).
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`
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`Edwards’ declarant, Mr. Sheehan, responded to these new arguments in his
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`Supplemental Declaration. Ex. 1127 (Sheehan Supp. Decl.) at ¶41. Mr. Sheehan
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`4
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`

`

`IPR2017-00444
`Edwards v. Boston Scientific
`
`disagreed with Dr. Solar’s claim construction because neither the claims, nor the
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`specification, limited “operatively engaged” to direct fixation. Id. at ¶¶38-43. Mr.
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`Sheehan also demonstrated
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`that Boston’s overly-narrow construction was
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`inconsistent with the plain and ordinary meaning of the term under the required
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`broadest reasonable interpretation. Id. at ¶¶32, 38-39, 41-42. Mr. Sheehan
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`explained that a POSITA would understand the plain and ordinary meaning of
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`“operatively engage” to simply mean “engaged in a way that furthers the operation,
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`or that the engagement produces the intended effect.” Id. at ¶32.
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`Contrary to Boston’s assertion, Mr. Sheehan did not “construe” the term
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`“operatively engaged.” Rather, Mr. Sheehan used the words of the claim term
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`itself (“engaged” and “operation”) to explain its plain and ordinary meaning. Id.
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`Mr. Sheehan’s explanation was an appropriate response to Boston’s overly-narrow
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`and incorrect construction of “operatively engaged” introduced for the first time in
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`the Patent Owner’s Response. See e.g., The Toro Co., Paper 41, at 12 (“We find it
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`entirely reasonable that Petitioner responded to Patent Owner’s proposed claim
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`construction in its Reply, and given the nature of the claim construction argument,
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`provided evidence in support of its position.”).
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`
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`Boston is mistaken that Mr. Sheehan offered a “new” construction of
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`“operatively engaged.” Mot. at 4. Mr. Sheehan has applied the plain and ordinary
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`meaning of “operatively engaged” at all stages of this proceeding. In his original
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`5
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`

`

`IPR2017-00444
`Edwards v. Boston Scientific
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`declaration, Mr. Sheehan explained that he “analyzed each claim term in
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`accordance with its plain and ordinary meaning under the required broadest
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`reasonable interpretation.” Ex. 1105 (Sheehan Decl.) at ¶20. In his Supplemental
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`Declaration, Mr. Sheehan similarly explained that he “applied the ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the art in
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`the context of the specification.” Ex. 1127 (Sheehan Supp. Decl.) at ¶32. Mr.
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`Sheehan reaffirmed his plain and ordinary understanding of the term during his
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`deposition. Ex. 2052 (Sheehan Dep.) at 72:9-24. Mr. Sheehan’s understanding
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`and application of “operatively engaged” has not changed.
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`B. Mr. Sheehan Disagrees with Boston’s Incorrect Construction of
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`“Distinct Connection Locations”
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`In its Patent Owner’s Response, Boston argues that Yasumi does not satisfy
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`the “distinct connection locations” limitation. Patent Owner’s Response (Paper 15)
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`at 27. Although it is not entirely clear from Boston’s Patent Owner’s Response,
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`Boston appears to argue that the “distinct connection locations” must be on the
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`stationary end-walls, as opposed to (or, in addition to) the dies. Id. Boston’s
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`declarant appears to adopt this same argument in his declaration. Ex. 2016 (Solar
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`Decl.) at ¶¶47-48.
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`In his Supplemental Declaration, Mr. Sheehan disagreed with Boston’s new
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`argument. Ex. 1127 (Sheehan Suppl. Decl.) at ¶44. The first sentence of Mr.
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`6
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`

`

`IPR2017-00444
`Edwards v. Boston Scientific
`
`Sheehan’s paragraph 45 begins, “As an initial matter, Dr. Solar has reversed the
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`language used in the claims, which impacts the meaning of the claim limitation.”
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`Id. at ¶45. Mr. Sheehan then quotes the actual claim language and explains that a
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`POSITA would understand the claim to require “distinct connection locations” on
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`the dies, not the stationary end-walls. Id. Mr. Sheehan’s arguments in paragraph
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`45 were an appropriate response to the new arguments raised by Boston and
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`Boston’s declarant in the Patent Owner’s Response.
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`Boston is mistaken that Mr. Sheehan offered a “new” construction of
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`“distinct connection locations.” Mot. at 4. Mr. Sheehan has maintained
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`throughout this proceeding that the “distinct connection locations” are located on
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`the dies. In paragraph 45 of his Supplemental Declaration, Mr. Sheehan explicitly
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`refers back to his original declaration where he identified the “the elongated hole
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`on each movable piece as the ‘distinct connection locations.’” Ex. 1127 (Sheehan
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`Supp. Decl.) at ¶45; see also Ex. 1105 (Sheehan Decl.) at ¶126 (identifying
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`“distinct connection locations (elongated holes 23-1 to 23-6)”). Mr. Sheehan’s
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`understanding of “distinct connection locations” has not changed.
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` Finally, Boston’s position that there is a dispute about the location of the
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`“distinct connection locations” is puzzling. Boston’s declarant, Dr. Solar,
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`conceded in his deposition that the claims require “distinct connection locations”
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`on the dies. Ex. 1126 (Solar Dep. Tr.) at 46:6-47:7.
`
`7
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`

`

`IPR2017-00444
`Edwards v. Boston Scientific
`
`
`
`III. EDWARDS HAS CONSISTENTLY EXPLAINED HOW YASUMI
`
`SATISFIES THE CLAIM LIMITATIONS
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`Boston
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`identifies paragraphs 33-36 of Mr. Sheehan’s Supplemental
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`Declaration and pages 9-12 and 14-15 of Edwards’ Reply as allegedly including
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`“new arguments on how the elements of the instituted claims of the ‘560 patent are
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`found in the prior art reference.” Mot. at 5. However, Boston fails to explain the
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`basis for its objection. For example, Boston does not identify any arguments that
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`are allegedly “new” or explain why it believes any of the Reply arguments differ
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`from those presented in Edwards’ Petition. Boston’s failure to “explain the
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`objections” renders its Motion deficient under 37 CFR § 42.64. The Board should
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`deny Boston’s Motion for this reason alone.
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`Further, Boston is incorrect in arguing that Edwards and Mr. Sheehan made
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`“new arguments on how the elements of the instituted claims of the ’560 patent are
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`found” in Yasumi. Mot. at 5. Edwards and Mr. Sheehan have consistently
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`explained how Yasumi meets the “operatively engaged” limitation. In the Petition,
`
`Edwards explained that Yasumi’s stationary side plates are “operatively engaged”
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`to the moveable pieces through the support disks, drive pins, screws, and setting
`
`piece. Petition (Paper 1) at 55-56; Ex. 1105 (Sheehan Decl.) at ¶126, element 1c.
`
`8
`
`

`

`IPR2017-00444
`Edwards v. Boston Scientific
`
`Edwards reiterated this position in its Reply. Reply (Paper 17) at 9-12; Ex. 1127
`
`(Sheehan Supp. Decl.) at ¶¶35-36.
`
`Likewise, Edwards and Mr. Sheehan have consistently explained how
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`Yasumi meets the “distinct connection locations” limitation. In the Petition,
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`Edwards and Mr. Sheehan explained that “the six elongated holes [23-1 to 23-6]
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`are the six distinct connection locations that operatively engage the six dies to the
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`stationary end-walls.” Petition (Paper 1) at 55-56; Ex. 1105 (Sheehan Decl.) at
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`¶126, element 1c. Edwards reiterated this explanation in its Reply. Reply (Paper
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`17) at 14-15; Ex. 1127 (Sheehan Supp. Decl.) at ¶45.
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`Edwards’ consistent arguments contrast with the arguments presented in the
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`two cases cited by Boston to support its Motion. In Intelligent Bio-Systems, Inc. v.
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`Illumina Cambridge Ltd., the petitioner “relied on an entirely new rationale to
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`explain why one of skill in the art would have been motivated to combine” the
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`prior art references and introduced new “non-patent literature” on reply to support
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`the new rationale. 821 F.3d 1359, 1369-1370 (Fed. Cir. 2016). In its petition, the
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`petitioner asserted that “Zavgorodny” taught the conditions required by the claim.
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`Id. at 1369. In its reply, the petitioner changed its argument and claimed that a
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`POSITA would have considered it obvious to use conditions “other than those
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`described in Zavgorodny.” Id. (emphasis in original).
`
`9
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`

`

`IPR2017-00444
`Edwards v. Boston Scientific
`
`In The Scotts Co. v. Encap, LLC, the petitioner did not submit a declaration
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`in support of its petition. Case IPR2013-00110, Paper 2, at iii (PTAB Jan. 10,
`
`2013). On reply, the petitioner submitted two declarations from new experts that
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`included new arguments and analyses regarding claim construction and the
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`asserted prior art. Id., Paper 79, at 5. The Board appropriately excluded the
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`declarations from the new experts as untimely.
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`These cases are readily distinguishable from the present case. Unlike the
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`petitioner in Intelligent Bio-Systems, Edwards has not changed its grounds for
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`patentability between the Petition and Reply. Similarly, unlike Scotts, Edwards
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`has not introduced new declarants advancing new analyses on Reply. Mr. Sheehan
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`has been Edwards’ one and only expert throughout this proceeding and, as shown
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`above, his arguments have been consistent throughout.
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`IV. CONCLUSION
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`Edwards requests that the Board deny Boston’s Motion to Exclude Evidence
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`because (1) the Motion is an improper mechanism to argue that Edwards has
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`exceeded the scope of reply under 37 CFR § 42.23; (2) Edwards’ arguments are
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`responsive to new arguments raised by Boston in the Patent Owner’s Response;
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`and (3) Edwards’ arguments have been consistent throughout this proceeding.
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`10
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`

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`IPR2017-00444
`Edwards v. Boston Scientific
`
`Dated: February 23, 2018
`
`
`
`
`
`Respectfully Submitted,
`
`By: /Craig S. Summers/
`Craig S. Summers (Reg. No. 31,430)
`Brenton R. Babcock (Reg. No. 39,592)
`Christy G. Lea (Reg. No. 51,754)
`Joshua Stowell (Reg. No. 64,096)
`Cheryl T. Burgess (Reg No. 55,030)
`Customer No. 20,995
`
`Attorneys for Petitioner
`EDWARDS LIFESCIENCES CORP.
`
`11
`
`

`

`
`
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of PETITIONER’S
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`EVIDENCE is being served on February 23, 2018, via electronic mail pursuant to
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`37 C.F.R. § 42.6(e) and with the consent of Patent Owner’s counsel, to counsel for
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`Patent Owner’s at the addresses below:
`
`
`
`Nicholas M. Nyemah
`Nicholas.Nyemah@aporter.com
`ARNOLD & PORTER LLP
`601 Massachusetts Avenue, NW
`Washington, DC 20001
`
`
`Wallace Wu
`Wallace.Wu@aporter.com
`Jennifer A. Sklenar
`Jennifer.Sklenar@aporter.com
`xEDW_BSC_IPR201700444@aporter.com
`ARNOLD & PORTER LLP
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`
`
`
`Dated: February 23, 2018
`
`
`
`
`
`By: /Craig S. Summers/
`Craig S. Summers (Reg. No. 31,430)
`Brenton R. Babcock (Reg. No. 39,592)
`Christy G. Lea (Reg. No. 51,754)
`Joshua Stowell (Reg. No. 64,096)
`Cheryl T. Burgess (Reg No. 55,030)
`Customer No. 20,995
`
`Attorneys for Petitioner
`EDWARDS LIFESCIENCES CORP.
`
`
`
`1
`
`

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