UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`PATENT OWNER ETHICON LLC’S MOTION TO TERMINATE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`PATENT OWNER ETHICON LLC’S MOTION TO TERMINATE
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION .......................................................................................... 1
`
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
`
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`
`A.
`
`Petitioner Reasonably Could Have Raised The Grounds Of The
`Present IPR In The -01247 Or -01254 IPRs .......................................... 4
`
`1.
`
`2.
`
`The “Reasonably Could Have Raised” Language Of §
`315(e)(1) Is Not Tied To Word Limits For Petitions ................. 4
`
`§ 315(e)(1) Makes No Exception For IPRs Filed On The
`Same Day .................................................................................... 5
`
`The Board Must Terminate This -1248 Proceeding Before
`Reaching A Final Written Decision ...................................................... 7
`
`If Termination Is Deemed Discretionary, The Board Should
`Exercise That Discretion ....................................................................... 9
`
`B.
`
`C.
`
`V.
`
`CONCLUSION .............................................................................................. 10
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Clearlamp, LLC v. LKQ Corp.,
`2016 U.S. Dist. LEXIS 186028 (N.D. Ill. Mar. 18, 2016) ................................... 5
`F’real Foods, LLC v. Hamilton Beach Brands, Inc.,
`2019 U.S. Dist. LEXIS 62547 (D. Del. Apr. 10, 2019)........................................ 5
`IBM Corp. v. Intellectual Ventures II LLC,
`Case No. IPR2014-01465, Paper 32 (P.T.A.B. Nov. 6, 2015) ........................... 10
`Intuitive Surgical, Inc. v. Ethicon LLC,
`Case No. IPR2018-01247, Paper 40 (P.T.A.B. Jan. 13, 2020) ............................. 3
`Intuitive Surgical, Inc. v. Ethicon LLC,
`Case No. IPR2018-01254, Paper 43 (P.T.A.B. Jan. 13, 2020) ............................. 3
`Kingston v. SPEX,
`IPR2018-01002, Paper No. 12 (Nov. 6, 2018) ..................................................... 6
`Novartis Pharm. Corp. v. Par Pharm., Inc.,
`2019 U.S. Dist. LEXIS 62489 (D. Del. Apr. 11, 2019)........................................ 5
`Progressive Cas. Ins. Co. v. Liberty Mut. Ins. Co.,
`625 Fed. Appx. 552 (Fed. Cir. Aug. 24, 2015) ......................................... 6, 7, 8, 9
`SAS Institute Inc. v. Iancu,
`584 U.S. ___, Case No. 19-969, slip op. (2018) ................................................... 8
`SiOnyx, LLC v. Hamamatsu Photonics K.K.,
`330 F. Supp. 3d 574 (D. Mass. 2018) ................................................................... 5
`Sirona Dental Sys. v. Institut Strautmann AG,
`892 F.3d 1349 (Fed. Cir. 2018) ............................................................................ 8
`SK Hynix Inc. v. Netlist Inc.,
`Case No. IPR2018-00364, Paper 32 (P.T.A.B. August 5, 2019) ........... 5, 6, 7, 10
`
`ii
`
`
`
`Statutes
`35 U.S.C. § 315(e)(1) ........................................................................................passim
`35 U.S.C. § 327(a) ..................................................................................................... 9
`Other Authorities
`37 C.F.R. §42.1(b) ................................................................................................... 10
`37 C.F.R. § 42.22(c) ................................................................................................... 2
`37 C.F.R. § 42.73(d)(1) .............................................................................................. 3
`37 C.F.R. § 42.122(a) ................................................................................................. 6
`
`
`
`EXHIBIT LIST
`
`Exhibit #
`
`Ex. 2002
`
`Ex. 2001
`
`Description
`Excerpts of a technology tutorial filed in Ethicon v. Intuitive
`Surgical, C.A. No. 1-17:cv-871 (LPS) (CJB) (D. Del. June 28,
`2018)
`Patent Statutory Disclaimer for U.S. Patent No. 8,479,969 filed on
`October 15, 2018
`[Reserved]
`Ex. 2003
`[Reserved]
`Ex. 2004
`[Reserved]
`Ex. 2005
`[Reserved]
`Ex. 2006
`[Reserved]
`Ex. 2007
`[Reserved]
`Ex. 2008
`[Reserved]
`Ex. 2009
`[Reserved]
`Ex. 2010
`[Reserved]
`Ex. 2011
`[Reserved]
`Ex. 2012
`[Reserved]
`Ex. 2013
`[Reserved]
`Ex. 2014
`[Reserved]
`Ex. 2015
`[Reserved]
`Ex. 2016
`[Reserved]
`Ex. 2017
`[Reserved]
`Ex. 2018
`[Reserved]
`Ex. 2019
`[Reserved]
`Ex. 2020
`Ex. 2021 Declaration of Dr. Shorya Awtar
`Ex. 2022 Deposition Transcript of Dr. Bryan Knodel, IPR2018-01248,
`April 4, 2019
`
`iv
`
`
`
`Description
`
`Exhibit #
`[Reserved]
`Ex. 2023
`[Reserved]
`Ex. 2024
`[Reserved]
`Ex. 2025
`[Reserved]
`Ex. 2026
`[Reserved]
`Ex. 2027
`Ex. 2028 Defendants’ Invalidity Contentions, C.A. No. 17-871-LPS (D. Del.
`March 20, 2018)
`
`v
`
`
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 315(e)(1), Patent Owner moves to terminate this inter
`
`partes review. This motion was authorized by the Board in an order issued on
`
`January 17, 2020. Paper No. 30. This IPR proceeding (“the -1248 proceeding”)
`
`challenges claims 24-26 of U.S. Patent No. 8,479,969 based on four references:
`
`Prisco, Cooper, Tierney, and Wallace. Paper No. 2 at 8; Paper No. 7 at 9, 42. On
`
`January 13, 2020, the Board issued final written decisions in the -01247 and -01254
`
`IPRs. The -01247 final written decision addressed the patentability of, inter alia,
`
`claims 24-26 of the `969 Patent, and the -01254 final written decision likewise
`
`addressed the patentability of, inter alia, claim 24 of the `969 Patent. The final
`
`written decisions in the -1247 and -1254 proceedings have an estoppel effect under
`
`35 U.S.C. § 315(e)(1) because Petitioner reasonably could have raised the grounds
`
`based on Prisco, Cooper, Tierney, and Wallace in either the -01247 or -01254 IPR.
`
`Thus, because the estoppel attaches, the plain language of § 315(e)(1) requires that
`
`the -1248 proceeding be terminated immediately. In the alternative, if termination
`
`is at the discretion of the Board, Patent Owner submits that the Board should exercise
`
`that discretion and terminate the -1248 proceeding immediately.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`Patent Owner requests the immediate termination of the -1248 proceeding
`
`before the Board issues any final written decision.
`
`1
`
`
`
`III.
`
`STATEMENT OF MATERIAL FACTS
`Pursuant to 37 C.F.R. § 42.22(c), Patent Owner provides the below material
`
`facts in chronological order.
`
`1.
`
`On March 20, 2018, Petitioner served invalidity contentions in the
`
`District of Delaware asserting Prisco (U.S. 8,545,515), Cooper (U.S. 6,817,974) and
`
`Wallace (U.S. 6,699,235) as prior art. Ex. 2028 at p. 4-5. In addition, Petitioner
`
`asserted U.S. 7,524,320, which is a continuation of Tierney (U.S. 6,331,181). Id.
`
`2.
`
`On June 14, 2018, Petitioner filed the petition in this IPR, challenging
`
`claims 23-26 of the `969 Patent. The Petition presented the following four grounds:
`
`(a) anticipation of claims 23-26 by Prisco; (b) obviousness of claims 23-26 based on
`
`Prisco with Cooper; (c) obviousness of claims 23-26 based on Prisco with Cooper
`
`and Tierney; and (d) obviousness of claims 25 and 26 based on Prisco with Cooper,
`
`Tierney, and Wallace.
`
`3.
`
`Also on June 14, 2018, Petitioner filed a petition in IPR2018-01247,
`
`challenging claims 19-26 of the `969 Patent, and a petition in IPR2018-01254,
`
`challenging claims 1-11 and 24 of the `969 Patent.
`
`4.
`
`On January 15, 2019, the Board instituted the -01247 IPR as to claims
`
`19-22 and 24-26 of the `969 Patent, and entered a scheduling order. The Board also
`
`instituted the -01254 IPR as to claims 1-11 and 24 of the `969 Patent, and entered
`
`the same scheduling order as in the -01247 IPR.
`
`2
`
`
`
`5.
`
`On February 7, 2019, the Board instituted this IPR as to claims 24-26
`
`of the `969 Patent, and entered a scheduling order with different deadlines than those
`
`in the -01247 and -01254 IPRs.
`
`6.
`
`On January 13, 2020, the Board issued a final written decision in
`
`the -01247 IPR. That decision held that claims 19-20 were unpatentable, but
`
`affirmed the patentability of claims 21, 22, and 24-26. Intuitive Surgical, Inc. v.
`
`Ethicon LLC, Case No. IPR2018-01247, Paper 40 (P.T.A.B. Jan. 13, 2020).
`
`7.
`
`On the same day, the Board also issued a final written decision in the
`
`-01254 IPR. That decision held that claims 1-10 were unpatentable, but affirmed the
`
`patentability of claims 11 and 24. Intuitive Surgical, Inc. v. Ethicon LLC, Case No.
`
`IPR2018-01254, Paper 43 (P.T.A.B. Jan. 13, 2020).
`
`IV.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`In view of the final written decisions in the -01247 and -01254 IPRs, Petitioner
`
`is immediately estopped under 35 U.S.C. § 315(e)(1) from maintaining this IPR:
`
`The petitioner in an inter partes review of a claim in a patent under
`this chapter that results in a final written decision under 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.
`
`(emphasis added). 37 C.F.R. § 42.73(d)(1) provides similar estoppel language as §
`
`315(e)(1). Petitioner already received final written decisions under § 318(a) as to
`3
`
`
`
`claims 24-26 of the `969 Patent in the -01247 and -01254 IPRs. See Facts 6, 7.
`
`Claims 24-26 are the only claims at issue in the -1248 proceeding, and therefore, §
`
`315(e)(1) prevents Petitioner from maintaining the -1248 proceeding.
`
`A.
`
`Petitioner Reasonably Could Have Raised The Grounds Of The
`Present IPR In The -01247 Or -01254 IPRs
`The estoppel of § 315(e)(1) applies because there can be no dispute that
`
`Petitioner reasonably could have raised the grounds asserted in the -1248 proceeding
`
`in the -01247 or -01254 IPRs as well. Indeed, all four prior art references relied upon
`
`in the grounds in this proceeding are assigned to Petitioner or Petitioner’s wholly-
`
`owned subsidiaries; the Prisco, Cooper, and Wallace references and a related
`
`Tierney reference were cited by Petitioner in invalidity contentions several months
`
`earlier (see Fact 1); and the Cooper, Tierney, and Wallace references are cited on the
`
`face of the `969 Patent. Thus, Petitioner actually knew of these references and a
`
`skilled prior art searcher exercising basic diligence could readily have identified the
`
`prior art relied upon in this proceeding well before the date on which Petitioner filed
`
`the -1247 and -1254 IPRs. As explained in the subsections below, Petitioner’s
`
`arguments that the estoppel does not apply should be rejected.
`
`1.
`
`The “Reasonably Could Have Raised” Language Of §
`315(e)(1) Is Not Tied To Word Limits For Petitions
`
`Petitioner argues that the grounds asserted in this proceeding were not grounds
`
`that Petitioner “reasonably could have raised” in the -01247 or -01254 IPRs due to
`
`4
`
`
`
`word limits. Numerous courts interpreting identical “reasonably could have raised”
`
`language in the estoppel provision of § 315(e)(1) have consistently held that the
`
`language encompasses all anticipation or obviousness grounds based on patents or
`
`printed publications that the petitioner actually knew about or that a skilled searcher
`
`conducting a diligent search reasonably could have been expected to discover. See,
`
`e.g., F’real Foods, LLC v. Hamilton Beach Brands, Inc., 2019 U.S. Dist. LEXIS
`
`62547, at *3 (D. Del. Apr. 10, 2019); Novartis Pharm. Corp. v. Par Pharm., Inc.,
`
`2019 U.S. Dist. LEXIS 62489, at *6-9 (D. Del. Apr. 11, 2019); SiOnyx, LLC v.
`
`Hamamatsu Photonics K.K., 330 F. Supp. 3d 574, 601 (D. Mass. 2018); Clearlamp,
`
`LLC v. LKQ Corp., 2016 U.S. Dist. LEXIS 186028, at *18-21 (N.D. Ill. Mar. 18,
`
`2016). Petitioners’ unsupported statutory construction attempts to rewrite §
`
`315(e)(1) to estop only grounds that a petitioner reasonably could have raised within
`
`the 14,000 word limit. The plain language of the statute includes no such limitation,
`
`and adding it would be impractical1 and would drastically alter the scope of estoppel
`
`under § 315. Accordingly, Petitioner’s argument that the estoppel should be limited
`
`to only those grounds that can fit within the 14,000 word limit must be rejected.
`
`2.
`
`§ 315(e)(1) Makes No Exception For IPRs Filed On The Same
`Day
`The Board should reject Petitioner’s argument that estoppel does not attach
`
`1 See SK Hynix Inc. v. Netlist Inc., Case No. IPR2018-00364, Paper 32 at p. 9
`(P.T.A.B. August 5, 2019).
`
`5
`
`
`
`because the -1248 IPR, the -01247 IPR, and -01254 IPR were all filed on the same
`
`day. First, the plain language of § 315(e)(1) applies so long as the proceeding to be
`
`estopped is pending or not-yet-filed at the Office when a final written decision
`
`issues. That is precisely the situation here as the -1247 and -1254 final written
`
`decisions have already issued, and the -1248 proceeding is still pending. Indeed,
`
`had Petitioner intended for the final written decision in all three IPRs to issue
`
`concurrently, it could have sought consolidation of the three proceedings pursuant
`
`to 37 C.F.R. § 42.122(a), or otherwise asked the Board to synchronize schedules of
`
`the three IPRs to avoid the issuance of staggered decisions. Petitioner did not do
`
`this and allowed the -1248 proceeding to go forward on a different schedule.
`
`Second, Petitioner’s reliance on the SK Hynix decision is misplaced.2 While
`
`the panel in Hynix wrote that “[p]etitions filed on the same day but at different times
`
`are not subject to subsection 315(e)(1),” the panel relied solely on a discussion in
`
`Progressive Cas. Ins. Co. v. Liberty Mut. Ins. Co., 625 Fed. Appx. 552 (Fed. Cir.
`
`Aug. 24, 2015) of simultaneously issued final written decisions to support this view.
`
`2 Petitioner’s email to the Board also referenced a panel decision in Kingston v.
`SPEX, IPR2018-01002, Paper No. 12 (Nov. 6, 2018). The Kingston decision does
`not say that § 315(e)(1) estoppel is not applicable to petitions filed on the same day.
`Rather the Kingston panel merely stated that Petitioner “could have filed
`contemporaneously multiple petitions.” Id. at 9. As already noted the estoppel
`provision of § 315(e)(1) is triggered by the issuance of a final written decision, and
`no exception is provided based on the filing date of a petition.
`6
`
`
`
`SK Hynix, Paper 32 at 9-10. Progressive, which is non-precedential, found that two
`
`final written decisions entered on the same day may be treated as “simultaneous and
`
`therefore outside § 325(e)(1)’s scope, regardless of the precise times of posting on
`
`an electronic docketing system.” Progressive, 625 Fed. Appx. at 555. This is
`
`consistent with the plain language of § 325(e)(1) and § 315(e)(1), which base the
`
`estoppel on the pendency of a proceeding before the Office at the time that a final
`
`written decision issues (rather than the initial filing dates of the proceedings).
`
`Thus, in its proper context, SK Hynix merely reflects that panel’s underlying
`
`assumption that two petitions filed on the same day will generally result in final
`
`written decisions that issue on the same day, and thus will not trigger § 315(e)(1).
`
`That is not the case here with respect to the -1248 proceeding, which is still pending.
`
`Because final written decisions have already issued with respect to claims 24-26,
`
`Petitioner cannot maintain the -1248 proceeding. Moreover, Petitioner cannot be
`
`heard to complain as it has long been on notice that the -1248 proceeding was
`
`operating on a different schedule than the -1247 and -1254 proceedings and
`
`Petitioner never sought to consolidate the proceedings.
`
`B.
`
`The Board Must Terminate This -1248 Proceeding Before
`Reaching A Final Written Decision
`Because the estoppel that attached upon the issuance of the final written
`
`decisions in the -01247 and -01254 IPRs prevents Petitioner from maintaining this
`
`IPR, the Board should immediately terminate the -1248 proceeding without reaching
`7
`
`
`
`a final written decision. Although Progressive suggested that the Board may exercise
`
`discretion to proceed to a final written decision after all petitioners to a covered
`
`business method review became estopped under § 325(e)(1)3, the Board should
`
`decline to follow this non-precedential opinion for several reasons.
`
`First, § 315(e)(1) commands that Petitioner “may not request or maintain a
`
`proceeding” after the estoppel attaches. As the Supreme Court explained in SAS
`
`Institute Inc. v. Iancu, the IPR process is structured such that “it makes the petition
`
`the centerpiece of the proceeding both before and after institution,” and “it’s the
`
`petitioner, not the Director, who gets to define the contours of the proceeding.” SAS
`
`Institute Inc. v. Iancu, 584 U.S. ___, Case No. 19-969, slip op. at 6, 12 (2018)
`
`(emphasis added); See also Sirona Dental Sys. v. Institut Strautmann AG, 892 F.3d
`
`1349, 1356 (Fed. Cir. 2018) (“[T]he statute tells us that the petitioner’s contentions,
`
`not the Director’s discretion, define the scope of the litigation all the way from
`
`institution through to conclusion.”). The only way to give effect to § 315(e)(1)’s
`
`statutory dictate that “the petitioner” “may not request or maintain a proceeding” is
`
`by terminating this proceeding. To do otherwise would nullify the language of §
`
`315(e)(1) by allowing the Petition—“the centerpiece of the proceeding” through
`
`which the Petitioner “gets to define the contours of the proceeding”—to persist. In
`
`3 § 325(e)(1) is identical to § 315(e)(1) but applies to post-grant reviews rather than
`IPRs.
`
`8
`
`
`
`other words, reaching a final written decision after Petitioner is estopped would in
`
`effect allow Petitioner to maintain this proceeding contrary to the express language
`
`of § 315(e)(1).
`
`Second, Progressive turned in part on the Court’s determination that final
`
`written decisions entered on the same day may be treated as “simultaneous and
`
`therefore outside § 325(e)(1)’s scope, regardless of the precise times of posting on
`
`an electronic docketing system.” Progressive, 625 Fed. Appx. at 556. The timing is
`
`different here, as the final written decisions triggering estoppel issued on January
`
`13, while the final written decision in the -1248 proceeding is not due until February
`
`7, 2020.
`
`Third, Progressive relied on 35 U.S.C. § 327(a) for the proposition that the
`
`Board may enter a final written decision in the absence of a petitioner. That provision
`
`of the statute, however, pertains to Board action after the parties to an IPR have
`
`settled. Nothing in the statute suggests that language is applicable where a petitioner
`
`is estopped under § 315(e)(1). Indeed, § 315(e)(1) includes no such language giving
`
`the Board discretion to allow a Petitioner’s proceeding to be maintained when the
`
`estoppel applies. The Board should therefore decline to adopt Progressive’s
`
`reasoning.
`
`C.
`
`If Termination Is Deemed Discretionary, The Board Should
`Exercise That Discretion
`Even if the Board determines that it has discretion to proceed to a final written
`9
`
`
`
`decision if no petitioner remains in an inter partes review, the Board should exercise
`
`that discretion to terminate this IPR without issuing a final written decision. As the
`
`Board explained in SK Hynix, reaching a final written decision requires the Board to
`
`“expend substantial resources” “based on all the discovery and briefing that has
`
`occurred post-institution.” SK Hynix, Paper 32 at 12. Petitioner has already had
`
`multiple opportunities to invalidate the claims of the `969 Patent, failing to invalidate
`
`claims 24-26 in the -01247 IPR and failing again to invalidate claim 24 in the -01254
`
`IPR, expending significant party and Board resources in the process. Expending
`
`additional, substantial Board resources to draft a third final written decision in this
`
`proceeding—which Petitioner is already estopped from maintaining—would be an
`
`inefficient use of the patent system, and does not promote “the just, speedy, and
`
`inexpensive resolution of every proceeding.” 37 C.F.R. §42.1(b); see also SK Hynix
`
`Inc., Paper 32 at 12-13; IBM Corp. v. Intellectual Ventures II LLC, Case No.
`
`IPR2014-01465, Paper 32 at 9 (P.T.A.B. Nov. 6, 2015). Moreover, Petitioner has
`
`long been aware that the -1248 proceeding was operating on a different schedule
`
`than the -1247 and -1254 proceedings, and never sought to consolidate the
`
`proceedings pursuant.
`
`V.
`
`CONCLUSION
`For the reasons set forth above, the Board should terminate this proceeding
`
`without reaching a final written decision.
`
`10
`
`
`
`Dated: January 21, 2020
`
`Respectfully submitted,
`
`/s/ Anish R. Desai
`Anish R. Desai
`Lead Counsel for Patent Owner
`Registration No. 73,760
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`212-310-8730
`anish.desai@weil.com
`
`11
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on January 21, 2020, the foregoing
`PATENT OWNER ETHICON LLC’S MOTION TO TERMINATE and
`EXHIBIT 2028 was served via electronic mail, upon the following:
`
`Steven R. Katz
`John C. Phillips
`Ryan P. O’Connor
`Roger A. Denning
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth
`Street Minneapolis, MN 55402
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`denning@fr.com
`IPR11030-0049IP9@fr.com
`PTABInbound@fr.com
`
`/Timothy J. Andersen/
`Timothy J. Andersen
`IP Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Ste. 600
`Washington, DC 20036
`202-682-7000
`timothy.andersen@weil.com
`
`
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