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 REPLY IN SUPPORT OF ITS 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
`
`
`_______________
`
`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 REPLY IN SUPPORT OF ITS 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
`
`
`
`Petitioner raises three arguments in opposition to Patent Owner’s Motion to
`
`Exclude, none of which justifies the untimeliness and prejudicial effect of the new
`
`issues raised in Mr. Sheehan’s Supplemental Declaration and Petitioner’s Reply.
`
`A.
`
`Petitioner’s Procedural Challenge Is Unavailing
`
`While citing certain non-precedential decisions supporting its procedural
`
`challenge to Patent Owner’s Motion To Exclude (see Opp’n (Paper 31) at 1-2),
`
`Petitioner simply ignores the authorities relied on by Patent Owner supporting its
`
`Motion To Exclude. (See Mot. (Paper 25) at 3 citing Intelligent Bio-Sys., Inc. v.
`
`Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“IBS”) and Scotts
`
`Co. v. Encap, LLC., IPR2013-00110, Paper 79 (PTAB June 24, 2014) (“Scotts”).)
`
`Specifically, in the IPR proceeding underlying the Federal Circuit decision in IBS,
`
`the patent owner filed a motion to exclude a reply expert declaration and a reply
`
`brief that included new issues raised for the first time. IPR2013-00517, Paper 62
`
`at 6 (“…Dr. Branchaud raises a new invalidity theory…”); id. at 8 (“Dr.
`
`Branchaud’s new invalidity theory”); Paper 74 at 4 (new argument improper under
`
`“37 C.F.R. § 42.23(b)”). In the final written decision of the IBS IPR, the Board
`
`held that the petitioner raised new issues in the reply expert declaration and reply
`
`brief. Paper 87 at 14-16. In light of that ruling, the Board deemed the patent
`
`owner’s motion to exclude moot. Id. at 23. The Federal Circuit affirmed the
`
`Board’s decision and held that “the Board did not abuse its discretion in excluding
`
`1
`
`
`
`those documents.” IBS, 821 F.3d at 1370. At no point did the Board or the Federal
`
`Circuit suggest any impropriety of the patent owner’s motion to exclude based on
`
`violations of 37 C.F.R. § 42.23(b).
`
`Similarly, in the final written decision of Scotts IPR, the Board specifically
`
`granted a motion to exclude an expert declaration for violating 37 C.F.R. §
`
`42.23(b). Scotts, Paper 79 at 6-7 (citing 37 C.F.R. § 42.23(b)). While a different
`
`panel may set forth a different practice guidance, there are ample authorities—
`
`including from the Federal Circuit—that support the filing of Patent Owner’s
`
`Motion to Exclude based on Petitioner’s violation of 37 C.F.R. § 42.23(b).
`
`B.
`
`Patent Owner Did Not Propose Any “New Claim Constructions”
`
`Petitioner next alleges that “new claim constructions” in Patent Owner’s
`
`Response justify the new claim constructions in Petitioner’s Reply. (Opp’n at 2.)
`
`Yet, Petitioner fails to point to any actual “new claim constructions” raised by
`
`Patent Owner in its Response. (Id. at 2-7.) The portions of Dr. Solar’s Declaration
`
`(Ex. 2016 at ¶¶ 47-48, 51) and Patent Owner’s Response (Paper 15 at 27) that
`
`Petitioner cites merely demonstrate—without invoking any claim construction
`
`issues—that there is no evidence showing that the movable pieces of Yasumi are
`
`operatively engaged to a side plate at all. In other words, contrary to Petitioner’s
`
`suggestion, neither Patent Owner nor Dr. Solar proposed that “operatively
`
`engaged” should be construed to mean “fixed,” “affixed,” or “not moving relative
`
`2
`
`
`
`to.” Nor did Patent Owner or Dr. Solar propose any construction for “distinct
`
`connection locations.” Not surprisingly, Petitioner never filed any objections to or
`
`motion to exclude any alleged new claim constructions raised by Patent Owner or
`
`Dr. Solar Indeed, Petitioner’s Reply itself never indicated or suggested that Patent
`
`Owner or Dr. Solar raised any new claim constructions for “operatively engaged”
`
`or “distinct connection locations.” (Paper 17 at 9-15.)
`
`Further, Petitioner claims that Mr. Sheehan, in his Supplemental
`
`Declaration, merely explained the same “ordinary and customary meaning” that he
`
`applied in his original declaration. (Opp’n at 5.) However, Mr. Sheehan’s
`
`statement in his original declaration that he “analyzed each claim term in
`
`accordance with its plain and ordinary meaning under the required broadest
`
`reasonable interpretation”—under the “Legal Standards” section—merely
`
`acknowledged his understanding of the correct legal standards. (See Opp’n at 5-6
`
`(citing Ex. 1105 at ¶ 20).) Mr. Sheehan set forth a separate “Claim Construction”
`
`section in his original declaration, stating that he had “reviewed the claims and
`
`specification of the ’560 patent in order to determine the broadest reasonable
`
`construction of the claims in view of the patent’s specification.” (Ex. 1105 at ¶
`
`68.) He then proposed constructions for “a stent crimper comprising,”
`
`“dies”/“blades,” and “stationary end-walls”/“stationary plates” terms (the “Three
`
`Claim Terms”) under the broadest reasonable interpretation and opined, for more
`
`3
`
`
`
`than three pages, on the reasons why intrinsic evidence allegedly supported his
`
`proposals. (Ex. 1105 at ¶¶ 69-79.) Nowhere in this extensive discussion of claim
`
`construction issues did Mr. Sheehan propose or discuss any constructions for
`
`“operatively engaged” or “distinct connection locations.” In his Supplemental
`
`Declaration, however, he proposed—for the first time—constructions for
`
`“operatively engaged” and “distinct connection locations” and opined—for the first
`
`time—his invalidity theory based on the newly proposed constructions of
`
`“operatively engaged” and “distinct connection locations.” (See Mot. at 4-5 (citing
`
`Ex. 1127 at ¶¶ 32-26, 45).)
`
`Had Mr. Sheehan proposed the constructions for “operatively engaged” and
`
`“distinct connection locations” in his original declaration, Patent Owner could have
`
`responded to them in its Preliminary Response (as it did for the Three Claim
`
`Terms); the Board could have ruled on them in the Institution Decision (as it did
`
`for the Three Claim Terms); and Patent Owner could have challenged or applied
`
`the Board’s claim construction rulings in its Response (as it did for the Three
`
`Claim Terms). (See Paper 7 at 27-31; Paper 9 at 9-11; Paper 15 at 17-24.)
`
`C.
`
`Petitioner’s New Arguments Are The Newly Proposed Claim
`Constructions And The New Invalidity Theory Based Thereon
`
`Petitioner’s argument that it did not raise any new arguments in its Reply
`and its attempt to distinguish IBS and Scotts on that basis lack merit. Petitioner’s
`new arguments are the newly proposed claim constructions of “operatively
`engaged” and “distinct connection locations” and the new invalidity theory based
`
`4
`
`
`
`thereon. Petitioner’s invalidity case now depends on its overly broad proposed
`constructions of “operatively engaged” and “distinct connection locations”—not
`presented in the Petition. The Federal Circuit has emphasized a petitioner’s
`obligation to make its case in the petition itself, in light of the expedited nature of
`IPRs:
`
`Unlike district court litigation—where parties have greater freedom to
`revise and develop their arguments over time and in response to newly
`discovered material—the expedited nature of IPRs bring with it an
`obligation for petitioners to make their case in their petition to
`institute.
`
`IBS, 821 F.3d at 1369 (emphasis added). Like the petitioner in IBS, Petitioner here
`
`had an obligation to make its case in its petition to institute (including all claim
`
`construction issues). See 37 C.F.R. § 42.104 (A petition must set forth “[h]ow the
`
`challenged claim is to be construed.”). Like the petitioner in IBS, Petitioner here
`
`raised a new invalidity theory (based on newly proposed claim constructions) for
`
`the first time in its Reply. As in IBS, Petitioner here violated 37 C.F.R. § 42.23(b).
`
`For the reasons set forth in Patent Owner’s Motion To Exclude and herein,
`
`Mr. Sheehan’s Supplemental Declaration and Petitioner’s Reply should be
`
`excluded from evidence or given no weight.
`
`Dated: March 2, 2018
`
`Respectfully submitted,
`
`/s/ Wallace Wu
`Wallace Wu (Reg. No. 45,380)
`Attorney for Patent Owner Boston
`Scientific Scimed, Inc
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PATENT OWNER’S
`REPLY In SUPPORT OF ITS MOTION TO EXCLUDE EVIDENCE was served
`on March 2, 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 KAYE SCHOLER
`LLP
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel: (213) 243-4000
`Fax: (213) 243-4199
`
`-6-
`
`
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