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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.
`
`Petitioner,
`
`v.
`
`ETHICON, LLC,
`
`Patent Owner.
`
`CASE IPR2018-0124(cid:25)
`
`U.S. Patent No. 8,479,969
`
`Hearing - Conference Call
`
`January 17, 2020
`
`10:30 a.m.
`
`---- Reporter: Desirea S. Jura ----
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.001
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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`1/17/2020
`Page 2
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`APPEARANCES:
`
`For the Petitioner:
`
`Fish & Richardson, PC
`
` By Steven R. Katz, Esquire
`
` By Roger Denning, Esquire
`
` One Marina Park Drive
`
` Boston, Massachusetts 02210-1878
`
` (617) 521-7803
`
` Katz@fr.com
`
`For the Patent Owner:
`
`Weil, Gotshal & Manges, LLP
`
` By Anish R. Desai, Esquire
`
` 767 Fifth Avenue
`
` New York, New York 10153-0119
`
` (212) 310-8730
`
` Anish.desai@weil.com
`
` ALSO PRESENT: Dean Garner, Johnson & Johnson
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`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.002
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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` P R O C E E D I N G S
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` JUDGE COX: Good morning. This is Judge
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`Cox. I have with me on the call Judges Myers and
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`Wood. Do we have counsel for the petitioner on the
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`call?
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` MR. KATZ: Yes, Your Honor. This is
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`Steven Katz and Roger Denning are on for petitioner.
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` JUDGE COX: Thank you, Mr. Katz.
`
` And do we have counsel for the patent
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`owner?
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` MR. DESAI: Yes, Your Honor. This is
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`Anish Desai for patent owner. Also on the call with
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`me is Dean Garner from Johnson & Johnson.
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` JUDGE COX: Okay. Thank you, Mr. Desai.
`
`And it sounds like we have a court reporter; is that
`
`correct?
`
` THE COURT REPORTER: Yes, sir.
`
` MR. DESAI: That's correct, Your Honor.
`
`We arranged for a court reporter.
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` JUDGE COX: Thank you. If you could
`
`please file a transcript as an exhibit when it
`
`becomes available.
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.003
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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` MR. DESAI: Absolutely.
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` JUDGE COX: Okay. Mr. Desai, you had, I
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`think, requested this call in respect to a motion to
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`terminate. So why don't you just give us a little
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`background.
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` MR. DESAI: Sure. I will try to quickly
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`frame the issue.
`
` The 1240 IPR is one of three IPRs filed by
`
`petitioner challenging claim 24 of the '969 patent.
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`It also challenges claims 25 and 26. The other two
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`IPRs, the 1247 and the 1254, which Your Honors well
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`know had filed a petition for issue on Monday,
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`January 13th. As to claim 24, in addition, the 1247
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`IPR final decision also addressed claims 25 and 26.
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` Patent owner's view is as a result of the
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`final decision is the plain language of 35 USC
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`315(e)(1), meaning that the 1248 IPR cannot proceed
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`as far as the language is basically the petitioner
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`and any third-party review of a claim in a patent may
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`not request or maintain a proceeding before the
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`office with respect to that claim on any ground that
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`the petitioner raised or reasonably could have raised
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.004
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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`during that interparty review.
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` There's basically two issues in our
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`brief -- the motion to terminate. The first is
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`whether the estoppel applies, whether the grounds
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`raised in the 1243 IPR could have been raised for the
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`1247 or the 1254 IPR. Numerous courts and the Board
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`held that the reason they could have raised
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`language -- in anticipation or obvious grounds based
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`on patents or printed publication that the petitioner
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`actually knew about or that a skilled researcher
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`could have diligently located.
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` Here petitioner actually knew about Prisco
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`and Cooper, which on the record that are in the 1248
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`IPR. They're petitioner's own patent publications
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`and they were asserting --
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` (Reporter interruption.)
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` MR. DESAI: I was talking about the motion
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`of petitioner's where I think at least several months
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`before the time that the IPRs were filed, the
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`references were asserted and detailed charges -- our
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`view is the estoppel applied -- first is that they
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`could not have been raised because the statute
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.005
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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`doesn't estop on those grounds petitioner reasonably
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`could have raised -- and add those words to that
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`statute severely narrow -- estoppel -- and not
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`statute. I think the Hynix decision reference
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`suggesting that --
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` The second one was that the argument --
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`did not apply that petitioners filed on the same day.
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`Again, there's nothing in the language of the statute
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`that provides such perception. Petitioner's basis
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`for this argument, I think it appears to be from the
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`Hynix decision saying that there was language in that
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`petition was filed on the same day -- are not subject
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`to Section 358. While the Hynix decision does say
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`that, the Board's decision states it is clearly wrong
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`and the Tenth Circuit case that the Hynix board
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`cited, which is Progressive 625 APPX 552 clearly did
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`not stand for that proposition.
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` I think the first point we would make in
`
`our brief is that the Progressive case is
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`non-precedential, but more importantly, it does cite
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`and of course it couldn't say that 315(e)(1) does not
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`apply to petition -- that day. Instead, Progressive
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.006
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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`refused to give estoppel effect from one final
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`written decision to another final written decision
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`issued on the same day. They said that two final
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`late petitions were struck that day can be considered
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`simultaneous; therefore, one didn't have a preclusive
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`effect on the other.
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` That's not the situation here. There's no
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`final written decision in the 1248 IPR. That
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`proceeding is still pending. The situation in the
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`Progressive case would have been analogous if we were
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`asking the Board to vacate or terminate the decision
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`of the 1254 IPR based on the final written decision
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`of the 1247 IPR, but we're not asking for that. So
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`that would be the first issue whether the estoppel
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`applies.
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` The second is whether application of
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`estoppel should result in termination of the IPR.
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`And the patent owners do here -- any other option
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`other than terminating. If the proceeding continues,
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`the petitioner -- exactly what it is not a policy by
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`statute, which is maintaining a proceeding before the
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`office. The only way to give effect here to the
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`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.007
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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`statutory awards may not maintain a proceeding is to
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`terminate the 1248 IPR.
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` I think we would address also in our brief
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`the nonconfidential Progressive case again. And that
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`was dealing with -- the estoppel statute for CBN, 35
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`USC 225(b)(1). It's the same language. But we think
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`the Progressive case there -- that suggests the
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`termination based on the estoppel is discretionary.
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`We don't think that's correct and we would like the
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`opportunity to brief why it's not correct. If --
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`Progressive to reach that issue on discretion because
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`they had -- they had already decided that the two
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`final written decisions issued on the same day and
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`the one didn't have a preclusive effect on the other,
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`so there's no estoppel, we don't need to reach the
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`issue of whether termination was discretionary or
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`not.
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` So again, even if it is discretionary, we
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`point out in our motion to terminate that the Board
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`should exercise the discretion here just like the
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`Hynix board did in that case and exercise the
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`discretion to terminate. The Board does not need to
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.008
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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`expend resources in writing a forward decision on
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`claims 24 to 26 even if the estoppel applied.
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`Certainly a situation here where the estoppel applied
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`pushes below the -- decision to not promote -- the
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`resolution of every proceeding.
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` So unless Your Honors have any question,
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`that is effectively what would be the subject of our
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`motion to terminate.
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` JUDGE COX: Thank you, Mr. Desai. We
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`might have some questions, but I'd like to hear from
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`Mr. Katz first.
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` MR. KATZ: Thank you, Your Honors.
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`Basically, we believe that this doesn't need to get
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`past this teleconference stage and that there's
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`really no reason to even bother filing the motion
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`mainly because SK Hynix is kind of directly on point
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`and states the rule, which is these petitions were
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`filed on the same day. They weren't filed weeks
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`apart or months apart. So the -- were we aware of
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`Prisco at the time of the filing? Of course we were.
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`We filed the petition on the same day, and Hynix is
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`very clear that petitions are filed on the same day.
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.009
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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` You can look at it in a variety of ways.
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`Either they're treated as kind of a common petition
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`for purposes of estoppel, or that you can look at it
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`another way and say, well, clearly the fact that
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`Prisco had to be filed on its own petition on that
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`same day shows it couldn't have reasonably been
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`inserted in one of the other two petitions.
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` Either way you slice it, it comes out to
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`the same result, which is when you file multiple
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`petitions on the same day to deal with the word
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`limit, the estoppel would not apply to any of those
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`petitions. In fact, it's not only SK Hynix that
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`makes that statement. It makes it very clearly in
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`paper 32 of IPR 2018 364, but also that the Kingston
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`versus SPEX Technology's decision, which is paper 12
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`of IPR 2018 1002, makes a similar statement, which is
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`that when you file -- the reasonably could have
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`raised standard asks not whether you could have filed
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`it in a particular petition, but whether you could
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`have filed it in a petition or contemporaneously in a
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`sibling petition. That was a direct quote from the
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`Kingston case.
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.010
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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` So we have two PTAB cases both saying the
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`same thing. In fact, any other result would place
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`form over substance and really wouldn't make any
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`sense at all given that it wouldn't further any of
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`the benefits supposedly of estoppel, given that,
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`obviously, the Prisco decision grounds would have
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`been included in one of the other two petitions if
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`they could have fit there.
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` And so whether you say that Hynix and
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`Kingston stand for the proposition that petitions on
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`the same day don't have estoppel or that if petitions
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`filed on the same day demonstrates that you
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`reasonably couldn't have raised the issues in the
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`other petitions, you get to the same place, which is
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`estoppel doesn't apply.
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` I would also point out that this Board
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`did, at petitioner's request, consolidate the hearing
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`in the three cases. It maintains the three different
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`numbers, but the hearings were consolidated into a
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`single hearing, not just kind of even the line, but
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`it was a single hearing for all three. And given
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`that, in this particular instance, it seems as though
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.011
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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`applying any estoppel from one decision to another of
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`a consolidated hearing doesn't make sense to us.
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` But, again, our position is this Board
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`really need not go farther than SK Hynix and say,
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`look, they're filed on the same day. There's really
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`no reason to spend time briefing the issue.
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` JUDGE COX: Okay. Thank you, Mr. Katz. I
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`actually have two questions. One with the Hynix
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`case, the panel in stating that the 315(e)(1)
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`wouldn't apply for same day filings, are they basing
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`that on the Progressive case, the federal circuit
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`Progressive case? Is that your understanding?
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` MR. KATZ: I believe they cited the
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`Progressive case for support, but I don't believe it
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`was -- they didn't claim the Progressive case
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`controlled. They did discuss the Progressive case as
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`part of their analysis, but I would not think that
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`the basis was the Progressive case. I think it was
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`they identified a federal circuit case in support.
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` JUDGE COX: And one further question is if
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`the 1248 petition, for instance, had been filed three
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`days later, are we having a different conversation if
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.012
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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`that's the result, if that was what happened?
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` MR. KATZ: That would be a very different
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`conversation.
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` JUDGE COX: Okay. Thank you. I am going
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`to confer with my colleagues.
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` Before I do, Mr. Desai, what exactly are
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`you asking for in terms of your motion and a
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`timeframe?
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` MR. DESAI: I think we could be ready to
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`file a motion Monday, if need be, if we have the
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`draft ready. And so as far as -- I don't know what
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`petitioner would like as far as time for a reply, but
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`we can get ours on file very quickly.
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` JUDGE COX: And how many pages -- I will
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`ask Mr. Katz, but how many pages are you requesting
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`as a part of your motion?
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` MR. KATZ: I think ten pages is probably
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`sufficient.
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` JUDGE COX: I do note that Monday is a
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`holiday.
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` MR. KATZ: That's right. We would do it
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`on Tuesday.
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.013
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

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` JUDGE COX: Mr. Katz, if we do authorize
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`the filing of a motion, would you like an opposition
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`as well?
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` MR. KATZ: Yes, Your Honors. We would
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`certainly like an opposition.
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` JUDGE COX: So if we were to permit ten
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`pages and a filing on Tuesday of the motion and -- I
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`have not conferred with my colleagues, so I'm not
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`authorizing that yet, but just so I have full
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`information, I assume you would want a ten-page
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`opposition. And when would you file that if the
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`motion is filed on Tuesday?
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` MR. KATZ: I think ten pages -- an equal
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`number of pages would be sufficient, because we
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`definitely want to get this drafted and also get
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`client input, I think we'd like to file the following
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`Monday.
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` JUDGE COX: Okay. I should point out that
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`the panel -- if termination does not occur or
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`anything of that sort, this panel is under an
`
`obligation to produce a final written decision by
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`February 7th. So we would appreciate, if we
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.014
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`Conference call
`
`Washington, DC
`
`1/17/2020
`Page 15
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`authorize the filings, filing promptly.
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` But let me confer with my colleagues.
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`Please stay on the call and we will return shortly.
`
` (Recess.)
`
` JUDGE COX: Hello. This is Judge Cox
`
`again. I have the panel with me.
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` Mr. Katz, are you still on the call?
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` MR. KATZ: Yes, I am, Your Honor.
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` JUDGE COX: And Mr. Desai?
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` MR. DESAI: Yes, Your Honor.
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` THE COURT: Thank you. So the panel has
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`discussed the issue and we are aware of the Hynix and
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`the Kingston cases, but I think we would like to hear
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`from the parties on this issue. There may be some
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`nuances here.
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` So we are going to permit the filing of
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`the motion limited to no more than ten pages due on
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`the 21st, January 21st. And we'll also permit the
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`filing of a ten-page opposition due no later than
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`Monday the 27th.
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` The panel has nothing further. Is there
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`anything else the parties would like to raise on this
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.015
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`Conference call
`
`Washington, DC
`
`1/17/2020
`Page 16
`
`call today?
`
` MR. DESAI: Nothing from patent owner,
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`Your Honor.
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` MR. KATZ: And nothing from petitioner,
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`Your Honor.
`
` JUDGE COX: Thank you very much. If we
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`have nothing further, the call is adjourned.
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`10:50.
`
` (Whereupon, at 10:58 a.m., the instant
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`proceedings ceased.)
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`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Ethicon Exhibit 2029.016
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`Patent Owner’s Errata Sheet to the January 17, 2020, Conference Call
`Case Name: Intuitive Surgical, Inc., Petitioner v. Ethicon, LLC, Patent Owner
`IPR Number: IPR2018-01248
`Patent: U.S. Patent No. 8,479,969
`
`
`Now Reads
`
`1240
`know had filed a petition for
`final decision is
`and any third-party review
`interparty
`1243
`for
`on the record
`and detailed charges
`applied
`The second one was that the argument -
`- did not apply that petitioners filed on
`the same day.
`perception
`saying that there was language in that
`petition was filed on the same day – are
`not subject to Section 358.
`Tenth
`does cite
`petition -- that day
`later petitions were struck that day
`patent owners do here -- any other
`option
`petitioner -- exactly what it is not a
`policy by statute
`awards
`nonconfidential
`CBN, 35 USC 225(b)(1)
`there --
`If -- Progressive to reach that issue
`
`forward
`pushed below the -- decision to not
`promote -- the resolution of every
`proceeding.
`
`Page : Line
`4: 8
`4:12
`4:16
`4:19
`5:1
`5:5
`5:5
`5:13
`5:20
`5:21
`6:6-7
`
`6:9
`6:11-13
`
`6:15
`6:20
`6:22
`7:4
`7:18
`
`7:20-21
`
`8:1
`8:4
`8:5-6
`8:7
`8:10-11
`
`9:1
`9:4-5
`
`
`
`Should Read
`
`1248
`know, had final written decisions
`final decisions
`in an inter partes review
`inter partes
`1248
`in
`are the references
`in detailed contentions
`applies
`The second argument is that the
`estoppel does not apply to petitions
`filed on the same day.
`exception
`that has language that petitions filed
`on the same day are not subject to
`Section 315.
`Federal
`doesn’t say
`petitions filed on the same day
`decisions issued the same day
`patent owner submits there is no other
`option
`petitioner gets exactly what it is not
`entitled to by statute
`words
`nonprecedential
`CBM, 35 US 325(e)(1)
`has dicta
`It is dicta because Progressive didn’t
`need to reach that issue
`final
`pushing forward with the third
`decision does not promote the just,
`speedy, and inexpensive resolution of
`every proceeding.
`
`Ethicon Exhibit 2029.017
`Intuitive v. Ethicon
`IPR2018-01248
`
`

`

`CERTIFICATE OF REPORTER
`
`I, DESIRAE S. JURA, RPR, hereby certify that I am the official court
`
`reporter who reported to the best of my ability and thereafter reduced to
`
`typewriting under my direction the proceedings in the foregoing matter.
`
`That I am neither counsel for, related to, nor employed by any of the
`
`parties to this matter.
`
`I further certify that I am not a relative nor employee
`
`of any attorney or counsel employed by the parties thereto, nor financially or
`
`otherwise interested in the outcome of this matter.
`
`dizegiUZfl Qi {gt/15$ /
`
`DESIRAE S. JURA.
`
`Ethicon Exhibit 2029.018
`
`Intuitive v. Ethicon
`
`lPR2018-01248
`
`Ethicon Exhibit 2029.018
`Intuitive v. Ethicon
`IPR2018-01248
`
`