`571-272-7822
`
`
`
`
`Paper 23
`August 12, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01254
`Patent 8,479,969 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`IPR2018-01254
`Patent 8,479,969 B2
`On July 24, 2019, Patent Owner sent an email to the Board indicating
`that Patent Owner and Petitioner “write jointly concerning an agreement the
`parties have reached, subject to the Board’s approval.” Ex. 3001.
`According to Patent Owner, “Petitioner has asserted in its Reply that
`the sale of its robotic staplers demonstrates that tactile feedback is not a
`critical design feature (see Reply at 8–9).” Id. More particularly, Patent
`Owner states:
`Petitioner asserted the same argument, and the Board authorized
`Patent Owner to submit under seal with its Sur-Reply deposition
`testimony from the co-pending litigation of one of Petitioner’s
`employees, which Patent Owner contends is inconsistent with
`this argument. See IPR2018-0036 [sic, 936], Paper No. 23 at 3–
`4 (July 19, 2019). The Board further authorized Petitioner to file
`a Sur-Sur-Reply up to 6 pages in length one week after Patent
`Owner files its Sur-Reply, which will be limited to responding to
`content appearing in Patent Owner’s Sur-Reply that is directed
`to the new evidence. Id.
`Id. Patent Owner represents that “Counsel for Patent Owner and Petitioner
`have conferred by email and request authorization to apply the same
`procedure in IPR2018-01254.” Id.
`Accordingly, consistent with our procedure in IPR2018-01254, we
`authorize Patent Owner to submit under seal with its Sur-Reply deposition
`testimony from the co-pending litigation of one of Petitioner’s employees,
`which Patent Owner contends is inconsistent with this argument (Ex. 3001),
`and we also authorize Petitioner to file a Sur-Sur-Reply up to 6 pages in
`length one week after Patent Owner files its Sur-Reply, which will be
`limited to responding to content appearing in Patent Owner’s Sur-Reply that
`is directed to the new evidence. Id.
`It is so ORDERED.
`
`
`
`2
`
`
`
`IPR2018-01254
`Patent 8,479,969 B2
`For PETITIONER:
`
`Steven Katz
`John Phillips
`Ryan O'Connor
`FISH & RICHARDSON P.C.
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`For PATENT OWNER:
`
`Anish Desai
`Elizabeth Weiswasser
`Adrian Percer
`Christopher Marando
`Christopher 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
`
`
`3
`
`
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