Patent Owner’s Preliminary Response
`IPR2017-01301
`
`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 IPR2017-01301
`Patent 6,915,560
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`IPR2017-01301
`
`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 IPR2017-01301
`Patent 6,915,560
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Patent Owner’s Preliminary Response
`IPR2017-01301
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`STATEMENT OF RELIEF REQUESTED ....................................................1
`
`INTRODUCTION ...........................................................................................1
`
`III. RELATED PROCEEDINGS ..........................................................................2
`
`IV.
`
`V.
`
`THE PETITION SHOULD BE DENIED PURSUANT TO THE
`ESTOPPEL PROVISION OF 35 U.S.C. § 351(e)(1) .....................................5
`
`THE PETITION SHOULD BE DENIED PURSUANT TO THE
`BOARD’S DISCRETION UNDER 35 U.S.C. § 325(d) ................................6
`
`VI. ADDITIONAL FACTORS COMPEL DENIAL OF THE
`PETITION .....................................................................................................11
`
`VII. CONCLUSION..............................................................................................18
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Alarm.com Inc. v. Vivint, Inc.,
`IPR2016-01091, Paper 11 at 13 (P.T.A.B. Nov. 23, 2016)...........................18
`
`Page(s)
`
`Blue Coat Sys. LLC v. Finjan, Inc.,
`IPR2016-01443, Paper 13 at 8–10 (P.T.A.B. Jan. 23, 2017) ............13, 14, 17
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper 8 at 12–13 (P.T.A.B. Oct. 14, 2014)........................17
`
`Conopco, Inc. v. Proctor & Gamble Co.,
`IPR2014-00506, Paper 17 at 6 (P.T.A.B. July 7, 2014)..........................12, 15
`
`Conopco, Inc. v. Proctor & Gamble Co.,
`IPR2014-00506, Paper 25 at 4 (P.T.A.B. Dec. 10, 2014) .............................12
`
`Conopco, Inc. v. Proctor & Gamble Co.,
`IPR2014-00628, Paper 21 at 11 (P.T.A.B. Oct. 20, 2014)................12, 15, 16
`
`Conopco, Inc. v. Proctor & Gamble Co.,
`IPR2014-00628, Paper 21 at 12 (P.T.A.B. Oct. 20, 2014)............................18
`
`Duncan Parking Techs., Inc., v. IPS Grp. Inc.,
`IPR2016-01144, Paper 9 at 10–11 (P.T.A.B. Nov. 21, 2016).......................15
`
`Edwards Lifesciences Corp. v. Boston Scientific Scimed, Inc.,
`IPR2017-00072, Paper 1 (P.T.A.B. Oct. 14, 2016).........................................2
`
`Edwards Lifesciences Corp. v. Boston Scientific Scimed, Inc.,
`IPR2017-00072, Paper 7 at 7–25 (P.T.A.B. Jan. 25, 2017) ............................3
`
`Edwards Lifesciences Corp. v. Boston Scientific Scimed, Inc.,
`IPR2017-00072, Paper 8 at 11 (P.T.A.B. Apr. 21, 2017) ...............................5
`
`Edwards Lifesciences Corp. v. Boston Scientific Scimed, Inc.,
`IPR2017-00444, Paper 1(P.T.A.B. Dec. 7, 2016)...........................................3
`
`-ii-
`
`
`
`Edwards Lifesciences Corp. v. Boston Scientific Scimed, Inc.,
`IPR2017-00444, Paper 7 at 8–12, 27–29 (P.T.A.B. Apr. 4, 2017...................4
`
`Edwards Lifesciences Corp. v. Boston Scientific Scimed, Inc.,
`IPR2017-00444, Paper 9 at 7 (P.T.A.B. June 29, 2017) .............................5, 8
`
`LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L.,
`IPR2016-00986, Paper 12 at 6–7 (P.T.A.B. Aug. 22, 2016).........................13
`
`Medtronic, Inc. v. Nuvasive, Inc.,
`IPR2014-00487, Paper 8 at 5–7 (P.T.A.B. Sept. 11, 2014) ..........................11
`
`NVIDIA Corp. v. Samsung Elec. Co.,
`IPR2016-00134, Paper 9 at 6–7 (P.T.A.B. May 4, 2016) .............................13
`
`Toyota Motor Corp. v. Cellport Sys., Inc.,
`IPR2015-01423, Paper 7 at 8 (P.T.A.B. Oct. 28, 2015)..............12, 15, 17, 18
`
`Unified Patents, Inc. v. PersonalWeb Techs., LLC,
`IPR2014-00702, Paper 13 at 7–9 (P.T.A.B. July 24, 2014)..........................14
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00454, Paper 12 at 5–6 (P.T.A.B. Sept. 25, 2013) ........................17
`
`STATUTES, RULES AND REGULATIONS
`
`35 U.S.C. § 314(a) ...................................................................................................11
`
`35 U.S.C. § 316(a)(11).............................................................................................11
`
`35 U.S.C. § 325(d) ...........................................................................................4, 6, 13
`
`35 U.S.C. § 351(e)(1).................................................................................................5
`
`37 C.F.R. § 42.107(a).................................................................................................1
`
`37 C.F.R. § 42.108 ...................................................................................................11
`
`81 Fed. Reg. 18750, 18759 (Apr. 1, 2016) ..............................................................14
`
`-iii-
`
`
`
`OTHER AUTHORITIES
`
`H.R. Rep. No. 112-98, pt. 1, at 48 (2011)................................................................17
`
`-iv-
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`
`
`Patent Owner’s Preliminary Response
`IPR2017-01301
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`On April 19, 2017, Edwards Lifesciences Corporation (“Petitioner”)
`
`submitted the instant Petition for Inter Partes Review (the “Petition” or “Pet.”)
`
`challenging 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 (“the ’560 Patent”). Pursuant to 37 C.F.R.
`
`§ 42.107(a), Boston Scientific Scimed, Inc. (“Patent Owner”) submits this
`
`Preliminary Response requesting that the Board deny the Petition for at least the
`
`reasons set forth herein.
`
`II.
`
`INTRODUCTION
`
`The instant Petition is the third in a series of petitions filed by Petitioner,
`
`each challenging exactly the same claims of the ’560 Patent. Petitioner filed the
`
`instant Petition only after being afforded the opportunity to review and analyze
`
`Patent Owner’s preliminary responses to both of the earlier petitions.
`
`In addition, the instant Petition raises the same arguments raised in the
`
`previously filed second petition, except that Petitioner alleges that a newly cited
`
`reference describes elements recited in the preambles of the challenged claims; this
`
`despite Petitioner’s contention that the claim preambles are not limitations, and
`
`despite the fact that Petitioner knew of the newly cited reference prior to filing
`
`both of the earlier petitions.
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`1
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`Patent Owner’s Preliminary Response
`IPR2017-01301
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`The Patent Office has repeatedly discouraged such conduct as unjust to
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`patent owners and a waste of the Patent Office’s limited resources. For at least
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`those reasons, which are discussed in further detail herein, the Petition should be
`
`denied.
`
`III. RELATED PROCEEDINGS
`
`The ’560 Patent is the subject of a district court action filed by Patent Owner
`
`against Petitioner on April 19, 2016. Boston Scientific Corp. v. Edwards
`
`Lifesciences Corp., Case 8:16-cv-0730 (C.D. Cal. 2016).
`
`On October 14, 2016, Petitioner filed a first petition for inter partes review,
`
`alleging that claims of the ’560 Patent were unpatentable in view of alleged
`
`Applicant Admitted Prior Art (“AAPA”), U.S. Patent No. 5,918,511
`
`(“Sabbaghian”), U.S. Patent No. 4,308,744 (“Baker”), and U.S. Patent No.
`
`5,893,852 (“Morales”). Edwards Lifesciences Corp. v. Boston Scientific Scimed,
`
`Inc., IPR2017-00072, Paper 1 (P.T.A.B. Oct. 14, 2016) (“First Petition”). The
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`specific grounds identified by Petitioner in the First Petition were as follows.
`
`References
`AAPA and Sabbaghian
`
`AAPA, Sabbaghian, and Morales
`AAPA and Baker
`
`AAPA, Baker, and Morales
`
`Basis
`§ 103
`
`§ 103
`§ 103
`
`§ 103
`
`Claims challenged
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`11, 17, 19, 26, 34, 35, and 39
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`11, 17, 19, 26, 34, 35, and 39
`
`Id. at 29.
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`2
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`Patent Owner’s Preliminary Response
`IPR2017-01301
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`On December 7, 2016, Petitioner filed a second petition for inter partes
`
`review, alleging that the same claims of the ’560 Patent were unpatentable in view
`
`of U.S. Patent No. 4,454,657 (“Yasumi”), the alleged AAPA, and Morales.
`
`Edwards Lifesciences Corp. v. Boston Scientific Scimed, Inc., IPR2017-00444,
`
`Paper 1(P.T.A.B. Dec. 7, 2016) (“Second Petition”). The specific grounds
`
`identified by Petitioner in the Second Petition were as follows.
`
`References
`Yasumi and AAPA
`
`Yasumi, AAPA, and Morales
`
`Basis
`§ 103
`
`§ 103
`
`Claims challenged
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`11, 17, 19, 26, 34, 35, and 39
`
`Id. at 30.
`
`On January 25, 2017, Patent Owner filed a preliminary response to the First
`
`Petition, arguing inter alia that the alleged AAPA was not a reference upon which
`
`Petitioner’s challenges could properly be based, that the preambles of the
`
`challenged claims were claim limitations, and that the same or substantially the
`
`same prior art and arguments relied upon by Petitioner were previously considered
`
`by the Patent Office during prosecution of the ’560 Patent. Edwards Lifesciences
`
`Corp. v. Boston Scientific Scimed, Inc., IPR2017-00072, Paper 7 at 7–25 (P.T.A.B.
`
`Jan. 25, 2017) (“First Preliminary Response”).
`
`On April 4, 2017, Patent Owner filed a preliminary response to the Second
`
`Petition, again arguing inter alia that the alleged AAPA was not a reference upon
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`3
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`Patent Owner’s Preliminary Response
`IPR2017-01301
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`which Petitioner’s challenges could properly be based, and that the preambles of
`
`the challenged claims were claim limitations. Edwards Lifesciences Corp. v.
`
`Boston Scientific Scimed, Inc., IPR2017-00444, Paper 7 at 8–12, 27–29 (P.T.A.B.
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`Apr. 4, 2017) (“Second Preliminary Response”).
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`After having been served with both the First Preliminary Response and the
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`Second Preliminary Response, Petitioner filed a third petition (the instant Petition)
`
`for inter partes review on April 19, 2017, the statutory deadline for filing such a
`
`petition, challenging the same claims of the ’560 Patent that were challenged in the
`
`First Petition and the Second Petition. (Pet. 26–27.) The grounds identified by
`
`Petitioner in the third petition are identical to the grounds identified in the Second
`
`Petition except that Petitioner’s earlier reliance on the alleged AAPA has been
`
`replaced by a reliance on U.S. Patent No. 5,437,083 (“Williams”). The specific
`
`grounds identified by Petitioner in the third petition are as follows.
`
`References
`Yasumi and Williams
`
`Basis
`§ 103
`
`Yasumi, Williams, and Morales
`
`§ 103
`
`Claims challenged
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`11, 17, 19, 26, 34, 35, and 39
`
`Id.
`
`On April 21, 2017, the Patent Trial and Appeals Board (the “Board”) issued
`
`a decision in which it exercised its discretion under 35 U.S.C. § 325(d) to deny the
`
`First Petition in its entirety, concluding that the First Petition raised the same or
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`4
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`Patent Owner’s Preliminary Response
`IPR2017-01301
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`substantially the same prior art or arguments as those previously considered by the
`
`Office. Edwards Lifesciences Corp. v. Boston Scientific Scimed, Inc., IPR2017-
`
`00072, Paper 8 at 11 (P.T.A.B. Apr. 21, 2017).
`
`On June 29, 2017, the Board issued a decision in which it concluded that
`
`Petitioner’s identification of grounds in the Second Petition “fail[ed] to properly
`
`summarize the full range of arguments and grounds asserted by Petitioner.”
`
`Edwards Lifesciences Corp. v. Boston Scientific Scimed, Inc., IPR2017-00444,
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`Paper 9 at 7 (P.T.A.B. June 29, 2017). As discussed in further detail below, the
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`Board instituted inter partes review with respect to two of those six grounds. Id. at
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`8, 25.
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`IV. THE PETITION SHOULD BE DENIED PURSUANT TO THE
`ESTOPPEL PROVISION OF 35 U.S.C. § 351(e)(1)
`
`35 U.S.C. § 351(e)(1) provides that:
`
`[t]he petitioner in an inter partes review of a claim in a
`patent under this chapter that results in a final written
`decision under section 318(a), or the real party in interest
`or privy of the petitioner, may not request or maintain a
`proceeding before the Office with respect to that claim on
`any ground that the petitioner raised or reasonably could
`have raised during that inter partes review.
`
`The grounds identified by Petitioner in the Second Petition are identical to
`
`those identified in the instant Petition except that Petitioner’s earlier reliance on the
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`5
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`Patent Owner’s Preliminary Response
`IPR2017-01301
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`alleged AAPA in the former has been replaced by a reliance on Williams in the
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`latter. (Compare Second Petition at 30 with Pet. 26–27.) There is no reason why
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`Petitioner could not have reasonably raised the instant grounds in either of its
`
`previous petitions. Indeed, Williams was known (or should have been known) to
`
`Petitioner, as it appears in the “References Cited” section of the ’560 Patent. (Ex.
`
`1201 at [56] (References Cited).)
`
`V.
`
`THE PETITION SHOULD BE DENIED PURSUANT TO THE
`BOARD’S DISCRETION UNDER 35 U.S.C. § 325(d)
`35 U.S.C. § 325(d) provides that, in determining whether to institute inter
`
`partes review, “[t]he Director may take into account whether, and reject the
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`petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” Because the prior art and
`
`arguments relied upon in the instant Petition are the same or substantially the same
`
`as those relied upon in the Second Petition, the Board should exercise its discretion
`
`to deny the Petition pursuant to 35 U.S.C. § 325(d).
`
`In the instant Petition, the third in a series of petitions filed by Petitioner
`
`against the ’560 Patent, Petitioner alleges that claims 1, 2, 6, 8–10, 14, 15, 18, 23,
`
`25, 27, 28, 31, 33, 37, and 40 are invalid as obvious over Yasumi in view of
`
`Williams. (Pet. 46.)
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`6
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`Patent Owner’s Preliminary Response
`IPR2017-01301
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`The preamble of each challenged claim recites a “stent crimper.” (Ex. 1201
`
`at 10:7–14:9.) Petitioner contends that the claim preambles are not limitations.
`
`(Pet. 28–29.) Nonetheless, Petitioner alleges that Yasumi alone discloses every
`
`element of claims 1, 2, 6, 8–10, 14, 15, 18, 23, 25, 27, 28, 31, 33, 37, and 40
`
`including the preambles. (See Pet. 80 (“The press tool of Yasumi is capable of
`
`crimping a stent and, thus, is a stent crimper.”).) Petitioner only relies on Williams
`
`to allege that “Williams discloses the use of tools such as ordinary pliers to crimp a
`
`stent” and that “to the extent necessary, it would have been obvious to a POSITA
`
`to use Yasumi as a stent crimper in view of Williams.” (Pet. 48, 80.) Thus,
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`Petitioner only relies on Williams to the extent that the Board determines, contrary
`
`to Petitioner’s allegations, that (1) the claim preambles are limitations, and
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`(2) Yasumi does not disclose the “stent crimper” of the preambles.
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`Petitioner made the same allegations in the earlier filed Second Petition,
`
`except that Petitioner relied on the alleged AAPA for its description of a “stent
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`crimper” instead of on Williams. (Second Petition at 51 (“The AAPA also
`
`discloses the preamble ‘stent crimper.’”), 82 (“[T]o the extent necessary, it would
`
`have been obvious to a POSITA to modify Yasumi for use as a stent crimper in
`
`view of the AAPA.”).)
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`In the instant Petition, Petitioner further alleges that the additional
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`limitations of claims 11, 17, 19, 26, 34, 35, and 39 “are disclosed in or obvious
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`7
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`Patent Owner’s Preliminary Response
`IPR2017-01301
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`over Yasumi either alone or in view of Williams.” (Pet. 83.) Petitioner also
`
`alleges that “[t]o the extent these limitations are not viewed as disclosed in or
`
`obvious in view of Yasumi alone or in view of Williams, Morales also discloses
`
`these limitations.” (Pet. 84.) Petitioner made the same allegations in the earlier
`
`filed Second Petition, except that Petitioner relied on the alleged AAPA instead of
`
`on Williams. (Second Petition at 85 (“These limitations are disclosed in or
`
`obvious over Yasumi either alone or in view of the AAPA.”), 86 (“To the extent
`
`these limitations are not viewed as disclosed in or obvious in view of Yasumi or
`
`the AAPA, Morales also discloses these limitations.”).)
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`In addition, in both the instant Petition and the earlier filed Second Petition,
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`Petitioner relies on two distinct embodiments described by Yasumi (i.e., the
`
`embodiments shown in Figure 8 and Figure 9(a) of Yasumi) but fails to provide
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`any explanation of their relationship, if any, to one another. (See Pet. 46–82;
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`Second Petition at 49–85.)
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`In view of the foregoing allegations in the Second Petition, the Board found
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`that in IPR2017-00444, “Petitioner’s identification of the grounds it asserts . . .
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`fails to properly summarize the full range of arguments and grounds asserted by
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`Petitioner in the Petition.” Edwards Lifesciences Corp. v. Boston Scientific
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`Scimed, Inc., IPR2017-00444, Paper 9 at 7–8 (P.T.A.B. June 29, 2017). The Board
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`8
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`Patent Owner’s Preliminary Response
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`then articulated what it understood to be the actual grounds asserted by Petitioner
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`in the Second Petition. Those grounds are as follows.
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`References
`Yasumi (Figure 8 embodiment)
`
`Basis
`§ 103
`
`Yasumi (Figure 8 embodiment) and
`Morales
`Yasumi (Figure 8 embodiment) and
`alleged “Applicant Admitted Prior
`Art”
`Yasumi (Figure 8 embodiment) and
`Yasumi (Figure 9(a) embodiment)
`Yasumi (Figure 8 embodiment),
`Yasumi (Figure 9(a) embodiment),
`and alleged “Applicant Admitted
`Prior Art”
`Yasumi (Figure 8 embodiment),
`Yasumi (Figure 9(a) embodiment),
`and Morales
`
`Id. at 8.
`
`Claims challenged
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`11, 17, 19, 26, 34, 35, and 39
`
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`11, 17, 19, 26, 34, 35, and 39
`
`Assuming that the Board’s understanding is correct, Petitioner’s
`
`identification of the grounds it asserts in the instant Petition also fails to properly
`
`summarize the full range of arguments and grounds asserted by Petitioner. See id.
`
`at 7–8. According to the Board’s reasoning, Petitioner has asserted the following
`
`grounds in the instant Petition.
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`9
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`Claims challenged
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`11, 17, 19, 26, 34, 35, and 39
`
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`1, 2, 6, 8–10, 14, 15, 18, 23, 25,
`27, 28, 31, 33, 37, and 40
`
`References
`Yasumi (Figure 8 embodiment)
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Yasumi (Figure 8 embodiment) and
`Morales
`Yasumi (Figure 8 embodiment) and
`Williams
`Yasumi (Figure 8 embodiment) and
`Yasumi (Figure 9(a) embodiment)
`Yasumi (Figure 8 embodiment),
`Yasumi (Figure 9(a) embodiment),
`and Williams
`Yasumi (Figure 8 embodiment),
`Yasumi (Figure 9(a) embodiment),
`and Morales
`
`§ 103
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`11, 17, 19, 26, 34, 35, and 39
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`Of the grounds identified in the table immediately above, the first, second,
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`fourth, and sixth are identical to grounds previously presented in the Second
`
`Petition. Accordingly, the Board should deny the instant Petition with respect to
`
`those grounds.
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`Of the grounds identified in the table immediately above, the third and fifth
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`are substantially the same as grounds previously presented in the Second Petition.
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`Indeed, Petitioner’s present argument that it would have been obvious to use
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`Yasumi as a stent crimper in view of prior art that discloses a stent crimper is the
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`same argument that it asserted in the Second Petition. (Second Petition at 83–84.)
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`Furthermore, Petitioner’s reliance on Williams for its description of a “stent
`
`crimper” is duplicative in view of the alleged AAPA, Yasumi, and Morales, each
`
`of which were presented in the Second Petition, and each of which Petitioner
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`10
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`Patent Owner’s Preliminary Response
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`contends discloses a “stent crimper.” (Pet. at 44, 48; Second Petition at 47, 51.)
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`Moreover, Petitioner itself argues that the teachings of Williams are not unique in
`
`view of “[n]umerous patents.” (Pet. at 81 (“Numerous patents from prior to
`
`September of 1999, including Williams, recognize that tools, such as ordinary
`
`pliers, were used to crimp stents.”).) Accordingly, the instant Petition should be
`
`denied with respect to all grounds. See, e.g., Medtronic, Inc. v. Nuvasive, Inc.,
`
`IPR2014-00487, Paper 8 at 5–7 (P.T.A.B. Sept. 11, 2014) (informative) (denying
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`petition for inter partes review when, despite petitioner’s argument that the
`
`grounds presented were not redundant, the petition presented the same or
`
`substantially the same prior art or arguments and the parties were already involved
`
`in a separate inter partes review proceeding involving all of the same challenged
`
`claims).
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`VI. ADDITIONAL FACTORS COMPEL DENIAL OF THE PETITION
`Institution of inter partes review is discretionary. See 35 U.S.C. § 314(a);
`
`37 C.F.R. § 42.108. Panels of the Board have considered a variety of factors in
`
`deciding whether to exercise discretion not to institute review including, inter alia:
`
`(1)
`
`(2)
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`the finite resources of the Board;
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`the requirement under 35 U.S.C. § 316(a)(11) to issue
`a final determination not later than one year after the
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`Patent Owner’s Preliminary Response
`IPR2017-01301
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`date on which the Director notices institution of
`review;
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`(3) whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`
`(4) whether, at the time of filing of the earlier petition, the
`petitioner knew of the prior art asserted in the later
`petition or should have known of it;1
`
`(5) whether, at the time of filing of the later petition, the
`petitioner already received the patent owner’s
`preliminary response to the earlier petition or received
`the Board’s decision on whether to institute review in
`the earlier petition;2
`
`1 See Conopco, Inc. v. Proctor & Gamble Co., IPR2014-00506, Paper 25 at 4
`
`(P.T.A.B. Dec. 10, 2014) (informative); Conopco, Inc. v. Proctor & Gamble Co.,
`
`IPR2014-00506, Paper 17 at 6 (P.T.A.B. July 7, 2014) (informative); Toyota Motor
`
`Corp. v. Cellport Sys., Inc., IPR2015-01423, Paper 7 at 8 (P.T.A.B. Oct. 28, 2015).
`
`2 See Conopco, Inc. v. Proctor & Gamble Co., IPR2014-00628, Paper 21) at 11
`
`(P.T.A.B. Oct. 20, 2014) (discouraging filing of a first petition that holds back
`
`prior art for use in later attacks against the same patent if the first petition is
`
`denied); Toyota Motor Corp., IPR2015-01423, Paper 7 at 8 (“[T]he opportunity to
`
`Footnote continued on next page
`
`12
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`
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`Patent Owner’s Preliminary Response
`IPR2017-01301
`
`(6)
`
`the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the later
`petition and the filing of the later petition;
`
`(7) whether the petitioner provides adequate explanation
`for the time elapsed between the filing dates of
`multiple petitions directed to the same claims of the
`same patent; and
`
`(8) whether the same or substantially the same prior art or
`arguments previously were presented to the Office.3
`
`Blue Coat Sys. LLC v. Finjan, Inc., IPR2016-01443, Paper 13 at 8–10 (P.T.A.B.
`
`Jan. 23, 2017) (citing LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L.,
`
`IPR2016-00986, Paper 12 at 6–7 (P.T.A.B. Aug. 22, 2016); NVIDIA Corp. v.
`
`Samsung Elec. Co., IPR2016-00134, Paper 9 at 6–7 (P.T.A.B. May 4, 2016);
`
`Footnote continued from previous page
`read Patent Owner’s Preliminary Response in IPR2015-00634, prior to filing the
`
`Petition here, is unjust.”).
`
`3 See 35 U.S.C. § 325(d) (“In determining whether to institute or order a
`
`proceeding under . . . chapter 31 [providing for inter partes review], the Director
`
`may take into account whether, and reject the petition or request because, the same
`
`or substantially the same prior art or arguments previously were presented to the
`
`Office.”).
`
`13
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`
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`Patent Owner’s Preliminary Response
`IPR2017-01301
`
`Unified Patents, Inc. v. PersonalWeb Techs., LLC, IPR2014-00702, Paper 13 at 7–
`
`9 (P.T.A.B. July 24, 2014) (informative); Amendments to the Rules of Practice for
`
`Trials Before the Patent Trial and Appeal Board, 81 Fed. Reg. 18750, 18759 (Apr.
`
`1, 2016) (“[T]he current rules provide sufficient flexibility to address the unique
`
`factual scenarios presented to handle efficiently and fairly related proceedings
`
`before the Office on a case-by-case basis” and “the Office will continue to take
`
`into account the interests of justice and fairness to both petitioners and patent
`
`owners where multiple proceedings involving the same patent claims are before the
`
`Office.”)). The factors guide the Board’s decision to exercise discretion, but not
`
`all factors need be present and the Board need not give equal weight to each factor
`
`in reaching its decision. Blue Coat Sys. LLC, IPR2016-01443, Paper 13 at 10. In
`
`the instant case, however, all of the factors are present and all weigh in favor of
`
`denial of the Petition.
`
`The third and eighth factors are discussed in Sections III and V above.
`
`Petitioner filed two petitions directed to the same claims of the ’560 Patent prior to
`
`filing the instant Petition, and the same or substantially the same prior art and
`
`arguments were previously presented to the Patent Office in at least the Second
`
`Petition.
`
`With respect to the fourth, sixth, and seventh factors, Petitioner knew of both
`
`Yasumi and Morales upon filing the earlier petitions. Yasumi is discussed in detail
`
`14
`
`
`
`Patent Owner’s Preliminary Response
`IPR2017-01301
`
`in the First Petition and is expressly relied upon by Petitioner in the Second
`
`Petition. (E.g., First Petition at 7, 97–98; Second Petition at 49–51.) Morales is
`
`expressly relied upon by Petitioner in both the First Petition and the Second
`
`Petition. (First Petition at 77–78, 93; Second Petition at 85–86.) Furthermore,
`
`Petitioner knew (or should have known) of Williams and Morales at least upon the
`
`commencement of the related district court action, as Williams and Morales both
`
`appear in the “References Cited” section of the ’560 Patent. (Ex. 1201 at [56]
`
`(References Cited).) Petitioner has not provided any argument or evidence that it
`
`did not know of Williams upon filing the First Petition or the Second Petition. The
`
`Board has stated that “it is typically only an additional reference of which
`
`Petitioner was not, or reasonably could not have been, aware that could potentially
`
`justify the filing of a serial petition.” Duncan Parking Techs., Inc., v. IPS Grp.
`
`Inc., IPR2016-01144, Paper 9 at 10–11 (P.T.A.B. Nov. 21, 2016); see also
`
`Conopco, Inc. v. Proctor & Gamble Co., IPR2014-00506, Paper 17 at 6 (P.T.A.B.
`
`July 7, 2014) (informative) (denying a petition for inter partes review because the
`
`petitioner “present[ed] no argument or evidence that the seven newly cited
`
`references were not known or available to it at the time of filing of the [earlier]
`
`Petition”); See Conopco, Inc. v. Proctor & Gamble Co., IPR2014-00628, Paper 21
`
`at 11 (P.T.A.B. Oct. 20, 2014); Toyota Motor Corp. v. Cellport Sys., Inc.,
`
`IPR2015-01423, Paper 7 at 8 (P.T.A.B. Oct. 28, 2015). Moreover, Petitioner has
`
`15
`
`
`
`Patent Owner’s Preliminary Response
`IPR2017-01301
`
`not provided an adequate explanation as to why its filing of the instant Petition was
`
`delayed over four months after the filing of the Second Petition, over six months
`
`after the filing of the First Petition, and one year after the commencement of the
`
`district court action.
`
`With respect to the fifth factor, the instant Petition was filed after Petitioner
`
`had already received and reviewed Patent Owner’s Preliminary Responses to the
`
`First Petition and the Second Petition. In fact, Petitioner indicates that its purpose
`
`in filing the instant Petition was to address arguments in Patent Owner’s earlier
`
`preliminary responses. (Pet. 93–94 (“The present petition relies on Williams for
`
`the suggestion to use Yasumi as a stent crimper. Petition IPR2017-00444 similarly
`
`relies on Yasumi, but relies on the AAPA (which Patent Owner has argued is not
`
`prior art) for the suggestion to use Yasumi as a stent crimper. . . . The Patent
`
`Owner cannot overcome Williams by establishing that it is not properly considered
`
`as patent or printed publication prior art for purposes on an inter partes review.”).)
`
`Petitioner’s filing of the instant Petition is the precise conduct that the Board has
`
`discouraged and characterized as “unjust.” See Conopco, Inc., IPR2014-00628,
`
`Paper 21 at 11 (“On this record, the interests of fairness, economy, and efficiency
`
`support declining review—a result that discourages the filing of a first petition that
`
`holds back prior art for use in successive attacks, should the first petition be
`
`denied. . . . [T]he instant Petition simply swaps in new references, all of which
`
`16
`
`
`
`Patent Owner’s Preliminary Response
`IPR2017-01301
`
`were available to [petitioner] at the time of filing of the [first petition]; [Petitioner]
`
`should have presented its ‘best case’ in the first petition.”); Toyota Motor Corp.,
`
`IPR2015-01423, Paper 7 at 8 (“[T]he opportunity to read Patent Owner’s
`
`Preliminary Response in IPR2015-00634, prior to filing the Petition here, is
`
`unjust.”). Such conduct has a harassing impact on Patent Owner, and should not
`
`be entertained by the Board. Blue Coat Sys. LLC, IPR2016-01443, Paper 13 at 14–
`
`15 (“[I]t is appropriate to consider the harassing impact that the resulting
`
`piecemeal challenges have on Patent Owner in defending its patent.” (citing ZTE
`
`Corp. v. ContentGuard Holdings, Inc., IPR2013-00454, Paper 12 at 5–6 (P.T.A.B.
`
`Sept. 25, 2013) (informative) (“The Board is concerned about encouraging,
`
`unnecessarily, the filing of petitions which are partially inadequate.”); Butamax
`
`Advanced Biofuels LLC v. Gevo, Inc., IPR2014-00581, Paper 8 at 12–13 (P.T.A.B.
`
`Oct. 14, 2014) (“Allowing similar, serial challenges to the same patent, by the
`
`same petitioner, risks harassment of patent owners and frustration of Congress’s
`
`intent in enacting the Leahy-Smith America Invents Act.” (citing H.R. Rep. No.
`
`112-98, pt. 1, at 48 (2011)))).
`
`With respect to the first and second factors, the circumstances discussed
`
`above would strain the Board’s limited resources and hinder its ability to issue
`
`final determinations in accordance with statutory requirements. See Blue Coat Sys.
`
`LLC, IPR2016-01443, Paper 13 at 15 (“These various considerations also inform
`
`17
`
`
`
`Patent Owner’s Preliminary Response
`IPR2017-01301
`
`our consideration of the first and second factors. ‘The Board’s resources would be
`
`more fairly expended on initial petitions, rather than on follow-on petitions, such as
`
`the Petition in this case.’” (quoting Alarm.com Inc. v. Vivint, Inc., IPR2016-01091,
`
`Paper 11 at 13 (P.T.A.B. Nov. 23, 2016))); Toyota Motor Corp., IPR2015-01423,
`
`Paper 7 at 8 (“Petition seeks another opportunity to challenge the same claims on
`
`essentially the same grounds, albeit not based on the identical set of prior art
`
`references. Such a second bite at the apple wastes the Board’s limited resources
`
`and imposes undue burden on the Patent Owner.”); Conopco, Inc. v. Proctor &
`
`Gamble Co., IPR2014-00628, Paper 21 at 12 (P.T.A.B. Oct. 20, 2014) (“On this
`
`record, we are persuaded that our resources are better spent addressing matters
`
`other than [petitioner’s] second attempt to raise a plurality of duplicative grounds
`
`against the same patent claims.”).4
`
`VII. CONCLUSION
`
`For the reasons described above, Patent Owner requests that the Board deny
`
`the Petition.
`
`4 Patent Owner does not provide evidence or argument on the merits in this
`
`Preliminary Response in light of Patent Owner’s Preliminary Response and the
`
`Institution Decision in Case IPR2017-00444. Patent Owner will do so should the
`
`Board institute this proceeding.
`
`18
`
`
`
`Dated: August 9, 2017
`
`Respectfully submitted,
`
`Patent Owner’s Preliminary Response
`IPR2017-01301
`
`/s/ Wallace Wu
`Wallace Wu (Reg. No. 45,380)
`Jennifer A. Sklenar (Reg. No. 40,205)
`ARNOLD & PORTER KAYE SCHOLER LLP
`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 KAYE SCHOLER LLP
`601 Massachusetts Avenue, NW
`Washington, DC 20001
`Tel: (202) 942-5000
`Fax: (202) 942-5999
`
`Attorneys for Patent Owner Boston
`Scientific Scimed, Inc
`
`19
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`Patent Owner’s Preliminary Response
`IPR2017-01301
`
`CERTIFICATE OF WORD COUNT
`
`Pursuant to 37 C.F.R. § 42.24(d), Patent Owner hereby certifies, in
`
`accordance with and reliance on the word count provided by the word-processing
`
`system used to prepare this Preliminary Response, that the number of words in
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