`
`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’S NOTICE OF SUPPLEMENTAL AUTHORITY
`
`
`
`
`Patent Owner submits the following notice of supplemental authority in
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`
`
`response to the Board’s request at the oral hearing for authority that the Delaware
`
`District Court’s order (IPR2018-01247, Ex. 2013) constitutes a final judgment for
`
`collateral estoppel purposes. See Paper No. 27 at 33:1-18.
`
`A.
`
`Supplemental Authority Regarding Finality
`We conclude that under Fourth Circuit law, collateral estoppel attaches
`in light of the JPMC court’s partial summary judgment order [finding
`claims invalid under § 101]. … [F]inality neither demands final
`judgment, nor requires a party’s appeal. … Because this particular issue
`has reached such a stage that the district court would see no really good
`reason for permitting it to be litigated again, the JPMC court’s order
`meets the finality requirement under Fourth Circuit precedent.
`
`Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1337-38 (Fed.
`
`Cir. 2017) (quotations and citations omitted).
`
`[B]ecause the application of general collateral estoppel principles, such
`as finality of judgment, is not a matter within the exclusive jurisdiction
`of this court, we must apply the law of the circuit in which the district
`court here sits, i.e., the Fourth Circuit.
`
`Pharmacia & Upjohn Co. v. Mylan Pharm., Inc., 170 F.3d 1373, 1381 n.4 (Fed.
`
`Cir. 1999) (citing Hartley v. Mentor Corp., 869 F.2d 1469, 1471 n.1 (Fed. Cir.
`
`1989)).
`
`1
`
`
`
`B.
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`
`Supplemental Authority Regarding Application of Issue Preclusion to
`the USPTO
`[T]he clear and convincing standard applicable under our precedent to
`other validity challenges should also apply to the present challenge to
`the validity of the certificate of correction.
`
`Superior Fireplace Co. v. Majestic Prod. Co., 270 F.3d 1358, 1367 (Fed. Cir. 2001).
`
`The Examiner invokes issue preclusion to prevent re-litigating issues
`of written description already litigated in the district court cases. …
`[T]he party seeking to prove invalidity succeeded in meeting the higher
`standard of proof in district court, which typically means the same
`evidence should also meet the lower standard in the PTO. … Because
`we hold that issue preclusion prevents Appellant from re-litigating
`issues of written description, we need not reach the merits of the
`Examiner’s written description rejection. To do otherwise would moot
`the benefits of judicial economy that issue preclusion is intended to
`promote.
`
`Ex Parte Ditzik, No. 14/169,232, 2018 WL 3409672, at *3-4, *9 (P.T.A.B. July
`
`10, 2018) (designated informative) (emphasis in original) (citing B & B Hardware,
`
`Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1298-99 (2015)1).
`
`
`
`
`
`
`1 B & B Hardware, 135 S. Ct. at 1303 (“The Court … regularly turns to the
`Restatement (Second) of Judgments for a statement of the ordinary elements of
`issue preclusion.”); Restatement (Second) of Judgments § 13 (1982) (“[F]or
`purposes of issue preclusion (as distinguished from merger and bar), ‘final
`judgment’ includes any prior adjudication of an issue in another action that is
`determined to be sufficiently firm to be accorded conclusive effect.”).
`2
`
`
`
`Dated: November 21, 2019
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`
`
`
`
`
`Respectfully submitted,
`
`/Anish R. Desai/
`Anish R. Desai
`Reg. No. 73,760
`WEIL, GOTSHAL & MANGES LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8730
`E: anish.desai@weil.com
`
`Counsel for Patent Owner
`
`
`3
`
`
`
`
`
`IPR2018-01248
`U.S. Patent No. 8,479,969
`
`CERTIFICATE OF SERVICE
`I hereby certify that on November 21, 2019, a copy of PATENT
`
`OWNER’S NOTICE OF SUPPLEMENTAL AUTHORITY was served by
`
`filing this document through the PTAB’s E2E Filing System as well as delivering a
`
`copy via electronic mail upon the following:
`
`Steven R. Katz
`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`IPR11030-0049IP9@fr.com
`PTABInbound@fr.com
`
`/Timothy J. Andersen/
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`T: 202-682-7075
`E: timothy.andersen@weil.com
`
`4
`
`
`
`
`
`
`
`
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