`571-272-7822
`
`
`
`
`Paper 30
`Date: January 17, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01248
`Patent 8,479,969 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2018-01248
`Patent 8,479,969 B2
`
`1. Introduction
`
`On January 17, 2020 a conference call was held between counsel for
`
`the respective parties and Judges Cocks, Meyers, and Wood. Intuitive
`
`Surgical, Inc. (“Petitioner”) was represented by Steven Katz. Ethicon LLC
`
`(“Patent Owner”) was represented by Anish Desi. Patent Owner requested
`
`the call seeking authorization to file a motion to terminate the proceeding.1
`
`2. Discussion
`
`Trial was instituted in IPR2018-01248 on February 7, 2019 and
`
`concerns claims 24–26 of U.S. Patent No. 8,479,969 B2 (“the ’969 patent”).
`
`We have not yet entered a final written decision in IPR2018-01248. There is
`
`a related proceeding, IPR2018-01247, that also concerns claims 24–26 of the
`
`’969 patent. A final written decision in IPR2018-01247 addressing claims
`
`24–26 was entered on January 13, 2020. There is another related
`
`proceeding, IPR2018-01254, that concerns claim 24 of the ’969 patent. A
`
`final written decision in IPR2018-01254 addressing claim 24 was entered on
`
`January 13, 2020. Patent Owner contends that pursuant to 35 U.S.C.
`
`§ 315(e)(1)2, Petitioner is prohibited from maintaining the IPR2018-01248
`
`proceeding as to claims 24–26. Because those claims are the only claims
`
`involved in IPR2018-01248, Patent Owner believes termination of the
`
`IPR2018-01248 proceeding is appropriate.
`
`
`1 Patent Owner had arranged for a court reporter on the call. When the
`transcript of the call becomes available the transcript should be filed as an
`exhibit in the proceeding.
`
`2 35 U.S.C. § 315(e)(1) reads as follows:
`
`
`
`(e) Estoppel.–
`
`(1) Proceedings before the office.–The petitioner in an inter
`
`2
`
`
`
`IPR2018-01248
`Patent 8,479,969 B2
`
`
`
`Petitioner does not agree with Patent Owner and is of the view that 35
`
`U.S.C. § 315(e)(1) does not apply in this case because IPR2018-01247,
`
`IPR2018–001254, and IPR2018-01248 were filed on the same day (June 14,
`
`2018). Petitioner directs our attention to prior Board proceedings SK Hynix
`
`v. Netlist, IPR2018-00364, (PTAB Aug. 5, 2019) and Kingston v. SPEX,
`
`IPR2018-01002 (PTAB Nov. 6, 2018) that Petitioner believes supports its
`
`view.
`
`
`
`During the call, Patent Owner requested authorization to file a motion
`
`to terminate of no more than ten pages due no later than January 21, 2020.
`
`Petitioner expressed that if such a motion is permitted it requests
`
`authorization to file an opposition of no more than ten pages due no later
`
`than January 27, 2020. The panel believes that briefing from the parties
`
`pertaining to the above noted issue is warranted. Accordingly, the parties
`
`are authorized to file their requested briefings.
`
`3. Order
`
`It is
`
`ORDERED that Patent Owner is authorized to file a motion to
`
`terminate of no more than ten pages due no later than January 21, 2020; and
`
`FURTHER ORDERED that Petitioner is authorized to file an
`
`opposition of no more than ten pages due no later than January 27, 2020.
`
`
`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 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.
`
`3
`
`
`
`IPR2018-01248
`Patent 8,479,969 B2
`
`PETITIONER:
`
`Steven R. Katz
`John C. Phillips
`Ryan O’Connor
`Roger A. Denning
`FISH & RICHARDSON P.C.
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`denning@fr.com
`
`PATENT OWNER:
`
`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Christopher T. Marando
`Christopher M. 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
`
`
`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
