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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`INTUITIVE SURGICAL, INC.,
`Petitioner,
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`v.
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`ETHICON LLC,
`Patent Owner.
`______________________
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`Case IPR2018-01248
`U.S. Patent No. 8,479,969
`______________________
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`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO TERMINATE
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`Case No. IPR2018-01248
`Attorney Docket No. 11030-0049IP9
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`TABLE OF CONTENTS
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`RELIEF REQUESTED ..................................................................................... 1
`INTRODUCTION ............................................................................................ 1
` RELEVANT FACTS ........................................................................................ 3
` ARGUMENT .................................................................................................... 5
` Petitioner Could Not Have Reasonably “Raised” The Grounds in a Single
`Petition and Therefore Simultaneously Filed Three Petitions ....................... 5
` Alternatively, For Estoppel Purposes, All Three Simultaneously-Filed
`Petitions Should Be Considered a Single Petition ......................................... 8
`In Any Event, Petitioner Is Not “Maintaining” This Proceeding, Which Is
`Now In Board Control .................................................................................... 9
` Regardless, the Board Should Exercise Its Discretion and Issue the Final
`Written Decision ............................................................................................. 9
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`Case No. IPR2018-01248
`Attorney Docket No. 11030-0049IP9
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc.,
`898 F.3d 1205 (Fed. Cir. 2018) ............................................................................ 7
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ........................................ 3
`Great West Casualty Co. et al. v. Intellectual Ventures II LLC,
`IPR2016-01534, Paper 13 (PTAB Feb. 15, 2017) ................................................ 8
`Kingston Technology Company, Inc. v. Spex Technologies, Inc.,
`IPR2018-01002, Paper 12 (P.T.A.B. November 6, 2018). ................................... 6
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .......................................................................................... 5
`Shaw Industries Group Inc. v. Automated Creel Systems,
`817 F.3d 1293 (Fed. Cir. 2016) ........................................................................ 7, 8
`SK Hynix Inc. v. Netlist Inc.,
`Case No. IPR2018-00364, Paper 32 at p. 6 (P.T.A.B. August 5, 2019). ............. 6
`Statutes
`35 U.S.C. § 314(b), 316(a)(11) .................................................................................. 2
`35 U.S.C. § 315(e)(1) ............................................................................................. 1, 5
`35 U.S.C. § 317(a) ............................................................................................... 9, 10
`35 U.S.C. § 318(a) ................................................................................................. 2, 9
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`ii
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`Case No. IPR2018-01248
`Attorney Docket No. 11030-0049IP9
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`RELIEF REQUESTED
`Petitioner respectfully requests that Patent Owner’s Motion be denied and
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`that the Board issue its Final Written Decision (“FWD”) in this proceeding.
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`INTRODUCTION
`There is no basis to dismiss the proceeding because all three petitions
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`challenging the ’969 Patent were filed on the same day, and would have been filed
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`as a single petition, but for the word count limit imposed by 37 C.F.R. § 42.24.
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`Significantly, Patent Owner fails to identify any authority where estoppel
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`applied to multiple petitions filed on the same day. Indeed, no legitimate purpose
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`would be served by such a rule. The purpose of statutory estoppel is to discourage
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`a petitioner from filing a later petition after it files a first, in order to get two bites
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`at the apple. This purpose would not be served by granting Patent Owner’s Motion.
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`The legislative history makes this crystal clear. The estoppel of 35 U.S.C. §
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`315(e)(1) was intended to apply to “a subsequent PTO proceeding” to bar a party
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`“from later using inter partes review or ex parte reexamination against the same
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`patent, since the only issues that can be raised in an inter partes review or ex parte
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`reexamination are those that could have been raised in the earlier post-grant or
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`inter partes review.” 157 Cong. Rec. S1376 (March 8, 2011) (statement of Sen.
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`Kyle) (emphasis and italics added). Clearly, Congress did not intend to have this
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`estoppel apply where multiple IPR petitions are filed simultaneously.
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`Attorney Docket No. 11030-0049IP9
`Here, the Board instituted review of the three simultaneously-filed petitions,
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`and therefore all three should proceed to FWD pursuant to §318(a). Certainly,
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`actions by Patent Owner or the Board should not impact the application of §318(a).
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`Specifically, a petitioner has control over the timing of its petitions, and the
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`estoppel provision imposes consequences for petitioners who choose to file later,
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`follow-on petitions. However, under Patent Owner’s theories, even where a
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`petitioner files simultaneous petitions, a Patent Owner could create an estoppel by
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`choosing the timing of its Patent Owner Preliminary Responses—because it is that
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`occurrence that triggers the institution deadline, which in turn triggers the final
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`written decision deadlines. 35 U.S.C. § 314(b), 316(a)(11). It would be both
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`peculiar and unjust to interpret the estoppel statute in a manner that would penalize
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`Petitioner for actions taken by both the Patent Office (in timing the release of the
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`FWDs), and Patent Owner (in timing the Preliminary Responses)—over which
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`Petitioner has no control.1
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`Moreover, the work of the parties here is done. In advance of the issuance
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`1 Here, the consequences would be particularly unjust because Patent Owner first
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`responded to the petitions with grounds based on Section 103, and only later filed a
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`preliminary response to the Prisco petition which has a ground based on
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`anticipation under Section 102.
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`2
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`Attorney Docket No. 11030-0049IP9
`of the FWD, the Petitioner has no further role in the proceeding. The parties had
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`their consolidated oral hearing on October 17, 2019, the Board’s analysis is
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`presumably complete, with the FWD on the third of the three simultaneously-filed
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`Petitions due shortly. There is thus nothing left for the parties to do.
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` RELEVANT FACTS
`1.
`The Patent Office imposes a word count limit on all inter partes
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`review petitions. Under the rules, the Patent Office will not accept a petition that
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`contains more than 14,000 words (excluding certain sections that are exempt from
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`the word count). See 37 C.F.R. § 42.24. This limit is not found in the statute.
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`2.
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`In view of the word count limit, the Patent Office specifically permits
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`the filing of multiple petitions against the same claim or set of claims. Gen. Plastic
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`Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, Paper 19 at 15–16
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`(PTAB Sept. 6, 2017) (precedential) (noting that the Patent Office may nonetheless
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`exercise its discretion to deny institution based on a variety of factors).
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`3.
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`Because of the word count limit imposed by 37 C.F.R. § 42.24, on
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`June 14, 2018, Petitioner simultaneously filed three petitions against U.S. Patent
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`No. 8,479,969 (“the ’969 patent”) because Petitioner could not reasonably fit all its
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`substantive arguments challenging patentability into a single petition. IPR2018-
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`01247, Paper 2, IPR2018-01248, Paper 2, IPR2018-01254, Paper 2. The three
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`petitions combined contained 14 grounds and 39,170 words. Claim 24 was at issue
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`in each of the petitions. Each petition cross referenced the other two. Id.
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`4.
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`Although all petitions were filed on the same day, and were each
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`accorded that same filing date by the Patent Office, the institution decisions for the
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`three petitions issued on different days. On January 15, 2019, the Board instituted
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`review of IPR2018-01247 and IPR2018-01254, and on February 7, 2019, the
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`Board instituted review of IPR2018-01248.
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`5.
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`Thus, it appears that the institution decisions issued on different dates
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`because the Patent Owner filed its Preliminary Responses on different dates, and
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`the institution decisions followed each of those responses by about 3 months.
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`6.
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` The proceedings moved forward on parallel and similar schedules
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`through pre-trial, until September 9, 2019, when the Board consolidated hearings
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`for all three proceedings. IPR2018-01248, Papers 19, 22 (the identical papers were
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`filed in the two related proceedings as well).
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`7.
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`On October 17, 2019, the Board heard a single consolidated oral
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`argument for all three proceedings.
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`8.
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`On January 13, 2020, the Board issued its Final Written Decision in
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`IPR2018-001247 (Paper 40) and IPR2018-01254 (Paper 43).
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`9.
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`The deadline for the Final Written Decision here is February 7, 2020.
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`4
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`Attorney Docket No. 11030-0049IP9
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` ARGUMENT
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`Petitioner Could Not Have Reasonably “Raised” The Grounds in
`a Single Petition and Therefore Simultaneously Filed Three
`Petitions
`The ’969 Patent has 28 claims, and Petitioner had 14 grounds of
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`unpatentability to raise. Had Petitioner been able to file all 14 grounds in a single
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`petition, it would have. However, solely because of the word count limit imposed
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`by regulation, Petitioner had to break up its grounds across three petitions. Simply
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`put, it was not reasonably possible to raise all 14 grounds in a single petition.
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`Petitions define the scope of the proceedings, see SAS Institute Inc. v. Iancu,
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`138 S. Ct. 1348 (2018), and therefore limitations on petitions necessarily restrict
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`what a Petitioner “could have raised” in an individual numbered proceeding. Such
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`limits must be part of the “reasonably could have raised” analysis under 35 U.S.C.
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`§ 315(e)(1). Otherwise, Patent Office rule making would fundamentally alter
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`Petitioner’s statutory rights, which cannot be correct.
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`Here, it was not possible to raise all 14 grounds in a single petition and
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`therefore Petitioner filed three simultaneous petitions solely due to the word count
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`limit (and incurred three times the filing fees). Patent Owner has not suggested
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`otherwise, and thus the Board can accept this fact, which is undisputed.
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` Given the strict word count limit, at least two Board decisions commenting
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`on this issue both reached the same conclusion—estoppel does not apply if
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`Attorney Docket No. 11030-0049IP9
`multiple petitions are simultaneously filed. In SK Hynix Inc. v. Netlist Inc., the
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`petitioner filed a second petition five days after the first. The Board found estoppel
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`because the grounds could have been raised “at the time [petitioner] filed the [first]
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`IPR petitions in those petitions or a contemporaneously filed petition.” Case No.
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`IPR2018-00364, Paper 32 at p. 6 (P.T.A.B. August 5, 2019). Similarly, in
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`Kingston Technology Company, Inc. v. Spex Technologies, Inc., the Board applied
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`estoppel because petitioner did not file the estopped grounds “at the time of filing
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`its earlier petition,” and “could have filed contemporaneously multiple petitions” to
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`avoid estoppel. IPR2018-01002, Paper 12 at 9 (P.T.A.B. November 6, 2018).
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`SK Hynix and Kingston both distinguished simultaneous filing from serial
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`filings, with only the latter implicating the estoppel statute. As the Board stated in
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`SK Hynix, where a follow-on petition is filed after a first petition, it “would be
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`impractical for the Board to implement a standard based on” the word count limit.
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`SK Hynix, at 9. The reasoning for later-filed petitions is simple—the word count
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`limit cannot explain away the delay, and the Petitioner should have filed
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`simultaneous petitions.
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`Thus, as SK Hynix concluded: “whether grounds are raised in one petition or
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`more than one petition on the same day will not have estoppel effect on other
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`grounds raised in a petition filed the same day.” Id. (citing Progressive Cas. Ins.
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`6
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`Attorney Docket No. 11030-0049IP9
`Co. Liberty Mut. Ins. Co., 625 F. App’x 552, 555-56 for the proposition that events
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`occurring on the same day are considered simultaneous.)
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`Patent Owner cites to a handful of District Court cases discussing the
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`estoppel statute, but none grappled with the issue here—whether estoppel applies
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`to two simultaneously filed petitions. On the contrary, in each case, there was a
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`later-filed petition—sometimes much later. In each of the cases, the issue was
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`whether a petitioner could “hold back” grounds for later assertion. See string cite
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`on page 5 of Patent Owner’s motion. These Courts had no reason to consider
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`simultaneously filed petitions and the impact of the word count limit.
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`Patent Owner also argues that “the plain language of the statute includes no
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`such [word count] limitation.” Patent owner has it backwards. The statute bars
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`grounds that “reasonably could have been raised” and the regulations
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`implementing the statute provide limits regarding what can reasonably be raised in
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`a single petition. The statutory text compels consideration of such limits. There is
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`no basis to ignore this reality.
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`Also, Patent Owner’s wooden and flawed strict constructionist approach
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`conflicts with Federal Circuit precedent regarding similar wording in Section
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`315(e)(2). Before BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc., 898
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`F.3d 1205, 1208 (Fed. Cir. 2018), which eliminated partial institutions, the Federal
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`Circuit held that grounds actually raised in a petition, but not instituted by the
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`Attorney Docket No. 11030-0049IP9
`Board were not estopped, even though no such exclusion was expressly recited in
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`the statute in haec verbe. Shaw Industries Group Inc. v. Automated Creel Systems,
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`817 F.3d 1293, 1300 (Fed. Cir. 2016) (noninstituted grounds are not subject to
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`estoppel under §315(e)(2)); Great West Casualty Co. et al. v. Intellectual Ventures
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`II LLC, IPR2016-01534, Paper 13, at 12 (PTAB Feb. 15, 2017) (”[W]e discern that
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`Shaw Industries Group held that estoppel does not apply to any ground of
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`unpatentability that was presented in a petition, but denied institution.”).
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` Alternatively, For Estoppel Purposes, All Three Simultaneously-
`Filed Petitions Should Be Considered a Single Petition
`Patent Owner asserts that when considering the phrase “reasonably could
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`have raised,” the Board should ignore the realities of what a Petitioner could
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`reasonably raise in a single petition given the strict word could limits imposed by
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`37 CFR § 42.24. However, if the Board were to ignore that reality, then the Board
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`should likewise look past the procedural form in which the 14 grounds were raised.
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`Setting aside the word count limit and the manner of filing, the fact remains that
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`Petitioner petitioned the Patent Office on June 14, 2018 seeking cancelation of
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`claim 24 and other claims of the ’969 Patent. Estoppel should not apply to that
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`“petition” (which consisted of three separate filings to accommodate the word
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`limit) or the “inter partes review” resulting from that “petition.” Under this view,
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`the “proceeding” at issue here is a single proceeding, filed on the same day, against
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`the ’969 Patent for purposes of the estoppel statute and thus there is no estoppel
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`Attorney Docket No. 11030-0049IP9
`(because there is no “other proceeding” to be estopped). Both SK Hynix and
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`Kingston are consistent with this view as well.
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`In Any Event, Petitioner Is Not “Maintaining” This Proceeding,
`Which Is Now In Board Control
`Setting aside the “reasonably could have raised” language, the statute states
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`that even if estoppel applies, a petitioner may not “request” or “maintain a
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`proceeding.” Petitioner is waiting for the FWD and is thus doing neither of these
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`acts. Petitioner’s final act in the -01248 proceeding was to present at the
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`consolidated oral hearing on October 17, 2019 for all three proceedings. Thus
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`estoppel does not apply to this proceeding because the Petitioner has no further
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`role in advance of issuance of the FWD.
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`This conclusion is consistent with the statutory provision concerning
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`settlement, which states that even if “no petitioner remains in the inter partes
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`review, the Office may . . . proceed to a final written decision.” 35 U.S.C. §
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`317(a). Clearly, if no petitioner remains, then the petitioner is not “maintaining”
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`the proceeding, which can nonetheless proceed to FWD. Accordingly, the estoppel
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`provision is now moot given the hearing is long past, and the Board has the
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`authority and the obligation to now issue its FWD. 35 U.S.C. § 318(a).
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` Regardless, the Board Should Exercise Its Discretion and Issue
`the Final Written Decision
`Finally, even if estoppel were to apply to this situation, estoppel applies to
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`9
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`Attorney Docket No. 11030-0049IP9
`petitioner and not to the Board. Because the Board is not estopped, at the very
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`least it has discretion to proceed and issue a FWD. Compare 35 U.S.C. § 317(a)
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`(Board may issue FWD even if no petitioner remains in proceeding).
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`As for Patent Owner’s repeated argument that the three related cases were
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`not consolidated, on the contrary, Petitioner requested consolidation at the hearing
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`stage and the Board granted that request. IPR2018-01248, paper no. 19
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`(consolidation order). Thus, the three proceedings were consolidated for the last
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`date requiring party input. There is no basis to assume Petitioner was or could
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`“game the system” or obtained any procedural advantage by filing three petitions,
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`and Petitioner sought no possible advantage by holding serial hearings. On the
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`contrary, Petitioner requested, and was granted, permission to argue all three
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`petitions as one. This fact clearly supports the Board exercising its discretion and
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`issuing the Final Written Decision, which must issue no later than February 7,
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`2020.
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`Dated: January 27, 2020
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`Respectfully submitted,
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`/Steven R. Katz/
`Steven R. Katz, Reg. No. 43,706
`Fish & Richardson P.C.
`Counsel for Petitioner
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`Case No. IPR2018-01248
`Attorney Docket No. 11030-0049IP9
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on January 27, 2020, a complete and entire copy of this Petitioner’s
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`Opposition To Patent Owner’s Motion To Terminate was provided via email to the
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`Patent Owner by serving the email correspondence addresses of record as follows:
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`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Christopher T. Marando
`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
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`Email:
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`Ethicon.IPR.Service@weil.com
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`/Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(650) 839-5092
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