`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`
`IPR2018-01247
`U.S. Patent No. 8,479,969
`
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.70 and the Board’s Scheduling Order, Patent
`
`Owner Ethicon LLC respectfully submits this Request for Oral Argument. The
`
`Board has currently scheduled the oral hearing in IPR2018-01247 for
`
`September 18, 2019. Patent Owner specifies the following issues to be argued:
`
`
`
`The alleged obviousness under 35 U.S.C. § 103 of claim 24 over
`
`Anderson (U.S. Patent No. 6,783,524) in view of Timm (U.S. Patent No.
`
`7,510,107).
`
`
`
`The inapplicability of the January 2018 Certificate of Correction to
`
`this proceeding.
`
`
`
`The new, impermissible arguments in Petitioner’s Reply that should
`
`be disregarded, as identified in Patent Owner’s Sur-Reply and Patent Owner’s List
`
`of Improper Reply Arguments (Paper No. 24).
`
`
`
`The alleged obviousness under 35 U.S.C. § 103 of claims 25-26 over
`
`Anderson in view of Timm and Wallace (U.S. Patent No. 6,699,235).
`
`
`
`The alleged obviousness under 35 U.S.C. § 103 of claims 19-20 over
`
`Anderson in view of Knodel (U.S. Patent No. 5,465,895).
`
`
`
`The alleged obviousness under 35 U.S.C. § 103 of claims 21-22 over
`
`Anderson in view of Viola (U.S. Patent No. 5,954,259).
`
`
`
`Any other issue the Board deems necessary for issuing a Final Written
`
`Decision.
`
`
`
`1
`
`
`
`
`
`
`
`The Board has also currently scheduled an oral hearing on September 18,
`
`2019 for a related proceeding concerning U.S. Patent No. 8,479,969 (IPR2018-
`
`01254). Patent Owner requests that IPR2018-01247 and IPR2018-01254 be
`
`consolidated into a single hearing.
`
`
`
`Patent Owner requests forty-five minutes of time to address the issues
`
`identified above and the related issues identified in Patent Owner’s Request for
`
`Oral Argument in IPR2018-01254. To the extent the Board schedules the
`
`hearing to last more than ninety minutes, however, Patent Owner requests that it
`
`be given half the length of the hearing to address these issues.
`
`
`
`Patent Owner requests that ten spaces be reserved at the oral hearing to
`
`accommodate its counsel and corporate representatives.
`
`
`
`
`
`
`
`2
`
`
`
`
`
`
`
`
`
`Date: August 20, 2019
`
`
`Respectfully submitted,
`
`
`/Anish R. Desai/
`Anish R. Desai (Reg. No. 73,760)
`Elizabeth S. Weiswasser (Reg. No. 55,721)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`Anish.Desai@weil.com
`Elizabeth.Weiswasser@weil.com
`
`Adrian Percer (Reg. No. 46,986)
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Adrian.Percer@weil.com
`
`Christopher T. Marando (Reg. No. 67,898)
`Christopher M. Pepe (Reg. No. 73,851)
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`Christopher.Marando@weil.com
`Christopher.Pepe@weil.com
`
`Counsel for Patent Owner Ethicon LLC
`
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that on August 20, 2019, the foregoing
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT was served via
`
`electronic mail, upon the following:
`
`John C. Phillips
`Steven R. Katz
`Ryan P. O’Connor
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`phillips@fr.com
`katz@fr.com
`oconnor@fr.com
`
`IPR11030-0049IP5@fr.com
`PTABInbound@fr.com
`
`
`
`/Emily P. Davis/
`Emily P. Davis
`Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Ste. 600
`Washington, DC 20036
`T: 202-682-7000
`Emily.Davis@weil.com
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
