Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 32
` September 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`Case IPR2018-01703 (Patent 8,616,431 B2)1
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Trial Hearing
`35 U.S.C. § 42.70
`
`
`
`
`1 Because this Order addresses issues that are the same in each of the
`proceedings, we issue one Order to be entered in each proceeding. The
`parties are not authorized to use this caption unless later permitted.
`
`
`571-272-7822
`
`
`
`
`Paper No. 32
` September 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
`Case IPR2018-01254 (Patent 8,479,969 B2)
`Case IPR2018-01703 (Patent 8,616,431 B2)1
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Trial Hearing
`35 U.S.C. § 42.70
`
`
`
`
`1 Because this Order addresses issues that are the same in each of the
`proceedings, we issue one Order to be entered in each proceeding. The
`parties are not authorized to use this caption unless later permitted.
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`IPR2018-01254 (Patent 8,479,969 B2)
`IPR2018-01703 (Patent 8,616,431 B2)
`
`
`Petitioner and Patent Owner request an oral argument in IPR2018-
`01247, -01248, and -01254, pursuant to 37 C.F.R. § 42.70. Papers 27, 30.2
`Petitioner requests 75 minutes of total argument time “to present arguments
`collectively for this proceeding and the two related proceedings.” Paper 27,
`1. Patent Owner requests 60 minutes of total argument time. Paper 30, 2.
`Petitioner and Patent Owner also request an oral argument in
`IPR2018-01703, pursuant to 37 C.F.R. § 42.70. Papers 17, 18. Petitioner
`requests 45 minutes of total argument time. Paper 17, 1. Patent Owner
`requests 30 minutes of total argument time. Paper 18, 1.
`Having considered the parties’ submissions, the parties’ requests for
`oral argument are GRANTED. Oral argument will commence at 10:00 am
`Eastern Time on October 17, 2019, on the 9th floor of Madison Building
`East, 600 Dulany Street, Alexandria Virginia. Seating will be available on a
`first-come, first-served basis. The Board will provide a court reporter, and
`the transcript shall constitute the official record of the hearing.
`In the consolidated oral argument for IPR2018-01247, -01248, and
`-01254, each party will have 60 minutes of total argument time. Petitioner
`will open the hearing by presenting its case regarding the challenged claims.
`Patent Owner will then respond to Petitioner’s presentation. Petitioner may
`reserve rebuttal time of no more than half its total argument time to reply to
`Patent Owner’s arguments. Patent Owner may reserve sur-rebuttal time of
`no more than half its total argument time to respond to Petitioner’s rebuttal.
`
`
`2 IPR2018-01247 is representative of IPR2018-01248 and IPR2018-01254,
`and all citations are to IPR2018-01247 unless otherwise indicated.
`
`
`
`2
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`IPR2018-01254 (Patent 8,479,969 B2)
`IPR2018-01703 (Patent 8,616,431 B2)
`
`
`In the oral argument for IPR2018-01703, each party will have 45
`minutes of total argument time. Petitioner will open the hearing by
`presenting its case regarding the challenged claims. Patent Owner will then
`respond to Petitioner’s presentation. Petitioner may reserve rebuttal time of
`no more than half its total argument time to reply to Patent Owner’s
`arguments. Patent Owner may reserve sur-rebuttal time of no more than half
`its total argument time to respond to Petitioner’s rebuttal.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits, if any, must be
`served seven business days before the hearing. The parties also shall
`provide the demonstrative exhibits to the Board at least three business days
`prior to the hearing by emailing them to Trials@uspto.gov. The parties shall
`not file any demonstrative exhibits in this proceeding without prior
`authorization from the Board.
`The Board reminds the parties that demonstrative exhibits are not
`evidence, but are intended to assist the parties in presenting their oral
`arguments to the Board. The Board also reminds the parties that
`demonstrative exhibits are not a mechanism for making arguments not
`previously addressed in the papers. The parties are directed to St. Jude
`Medical, Cardiology Division, Inc. v. The Board of Regents of the University
`of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for
`guidance regarding the appropriate content of demonstrative exhibits.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits. If such objections
`cannot be resolved, the parties may file any remaining objections with the
`Board at least three business days before the oral hearing. The objections
`
`
`
`3
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`IPR2018-01254 (Patent 8,479,969 B2)
`IPR2018-01703 (Patent 8,616,431 B2)
`
`should identify with particularity the portions of the demonstrative exhibits
`that are subject to objection and include a one-sentence statement of the
`basis for each objection. No argument or further explanation is permitted.
`The Board will consider any objections and schedule a conference call if
`deemed necessary. Otherwise, the Board will reserve ruling on the
`objections until the hearing. Any objection to demonstrative exhibits that is
`not timely presented will be considered waived. A hard copy of the
`demonstratives should be provided to the court reporter at the hearing.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, any counsel of record may present the party’s
`argument. If either party anticipates that its lead counsel will not be
`attending the oral argument, the parties should initiate a joint telephone
`conference with the Board no later than two business days prior to the oral
`hearing to discuss the matter.
`Questions regarding specific audio-visual equipment should be
`directed to the Board at 571-272-9797. Requests for audio-visual equipment
`are to be made no later than 5 days in advance of the hearing date. The
`request is to be sent directly to Trials@uspto.gov. If the request is not
`timely, the equipment may not be available on the day of the hearing.
`
`In light of the foregoing, it is:
`ORDERED that the oral hearing, conducted pursuant to the
`procedures outlined above, shall commence at 10:00 am Eastern Time on
`October 17, 2019.
`
`
`
`
`4
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`IPR2018-01254 (Patent 8,479,969 B2)
`IPR2018-01703 (Patent 8,616,431 B2)
`
`
`PETITIONER:
`
`Steven Katz
`John Phillips
`Ryan O'Connor
`FISH & RICHARDSON P.C.
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`
`
`PATENT OWNER:
`
`Anish Desai
`Elizabeth Weiswasser
`Adrian Percer
`Christopher Marando
`Christopher Pepe
`WEIL, GOTSHAL & MANGES LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`adrian.percer@weil.com
`christopher.marando@weil.com
`christopher.pepe@weil.com
`
`
`
`5
`
`
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