`571.272.7822
`
`
`
`
`
` Paper No. 38
`Entered: May 8, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`v.
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00444
`Patent 6,915,560 B2
`____________
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`ORDER
`
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2017-00444
`Patent 6,915,560 B2
`
`
`Edwards Lifesciences Corporation (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) requesting institution of inter partes review of claims 1, 2,
`6, 8–11, 14, 15, 17–19, 23, 25–28, 31, 33–35, 37, 39, and 40 of U.S. Patent
`No. 6,915,560 B2 (Ex. 1101, “the ’560 patent”). On June 29, 2017, we
`instituted an inter partes review of all claims challenged in the Petition.
`Paper 9 (“Institution Decision” or “Dec.”), 31. We determined that
`Petitioner demonstrated a reasonable likelihood that it would establish that at
`least one of the challenged claims of the ’560 patent is unpatentable. Id. at
`2.
`
`Petitioner characterized its arguments as two grounds in the Petition:
`(1) claims 1, 2, 6, 8-10, 14, 15, 18, 23, 25, 27, 28, 31, 33, 37, and 40 as
`obvious under 35 U.S.C. § 103 over Yasumi in view of the AAPA; and
`claims 11, 17, 19, 26, 34, 35, and 39 as obvious under 35 U.S.C. § 103 over
`Yasumi in view of the AAPA and further in view of Morales. Pet. 30. In
`our Institution Decision we determined that Petitioner’s arguments
`encompassed a wider range of grounds and instituted review of: (1) claims
`1, 2, 6, 8–11, 14, 15, 17–19, 23, 25–28, 31, 33–35, 37, 39, and 40 as obvious
`under 35 U.S.C. § 103(a) over Yasumi, as taught in the embodiment of
`Figure 8; and (2) claims 11, 17, 19, 26, 34, 35, and 39 as obvious under 35
`U.S.C. § 103(a) over Yasumi, as taught in the embodiment of Figure 8, and
`Morales. Dec. 7–8, 25.
`Boston Scientific Scimed, Inc. filed its Patent Owner Response on
`September 22, 2017. Paper 15. All other briefing was completed, and the
`oral hearing in the case was held on March 15, 2018. See Paper 37.
`On April 24, 2018, the Supreme Court held in SAS Inst., Inc. v. Iancu
`that a decision to institute under 35 U.S.C. § 314 may not institute on less
`
`2
`
`
`
`IPR2017-00444
`Patent 6,915,560 B2
`
`than all claims challenged in the petition. 2018 WL 1914661, at *10 (U.S.
`Apr. 24, 2018). As noted above, we instituted review on all challenged
`claims. Dec. at 31. The parties are to meet and confer to discuss their
`positions with respect to the impact, if any, of SAS on this proceeding. The
`parties should discuss whether they seek to include the institution of
`additional grounds from the Petition into this proceeding and shall endeavor
`to reach agreement and, if additional briefing is requested, develop a joint
`proposal with the aim of concluding this proceeding within the twelve-
`month timeframe established by statute.
`After conferring, the parties must, within seven (7) days of the date of
`this Order, submit a proposal (or, if the parties do not agree on a joint
`proposal, the parties must submit their respective proposals) in an email to
`the Board, in which the parties also request a conference call to discuss any
`additional briefing and modification of the schedule. The parties’ email
`must include proposed times for such a call when both parties are available.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner and Patent Owner shall confer to determine
`any desired additional briefing and modification of the schedule and shall
`provide their proposals and request a conference call with the Board within
`seven (7) days of the date of this Order.
`
`
`3
`
`
`
`IPR2017-00444
`Patent 6,915,560 B2
`
`PETITIONER:
`
`Craig Summers
`Brenton Babcock
`Christy Lea
`Cheryl Burgess
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2css@knobbe.com
`2brb@knobbe.com
`2cgl@knobbe.com
`2ctb@knobbe.com
`
`PATENT OWNER:
`
`Wallace Wu
`Jennifer Sklenar
`Nicholas Nyemah
`ARNOLD & PORTER KAYE SCHOLER LLP
`wallace.wu@apks.com
`jennifer.sklenar@apks.com
`nicholas.nyemah@aporter.com
`
`
`
`4
`
`
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