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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.
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`Petitioner
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`v.
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`ETHICON LLC
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`Patent Owner
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`Case IPR2018-01254
`U.S. Patent No. 8,479,969
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`PETITIONER’S REQUEST FOR ORAL ARGUMENT AND
`REQUEST TO RESCHEDULE
`TO ALIGN WITH IPR2018-01248
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`Pursuant to 37 C.F.R. § 42.70(a) and the Revised Scheduling Order (Paper
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`Proceeding No. IPR2018-01254
`Attorney Docket No. 11030-0049IPA
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`11), Petitioner submits this Request for Oral Argument on all of the instituted
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`grounds of unpatentability of U.S. Patent No. 8,479,969. Requests for Oral
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`Argument in related IPR proceedings (IPR2018-01247 and IPR2018-01248), each
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`of which concerns the ’969 Patent, are being filed on this same day.
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`At present, Oral Hearings for IPR2018-01247 and IPR2018-01254 are
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`scheduled for September 18, 2019 (See PTAB’s Revised Scheduling Orders of
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`February 12, 2019 (Paper 11 in each proceeding)) and the Oral Hearing for
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`IPR2018-01248 is scheduled for October 17, 2019 (See PTAB’s Scheduling Order
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`of February 7, 2019 (Paper 9 in that proceeding)).
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`Given the overlapping subject matter and the common patent, Petitioner
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`requests that all three proceedings concerning the ’969 Patent be consolidated and
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`held on October 17, 2019.
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`Petitioner requests 75 minutes for each side to present arguments
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`collectively for this proceeding and the two related proceedings
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`With regard to this particular proceeding, Petitioner requests (without
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`waiving consideration of any issue not listed below) to address the following
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`issues:
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`1. Whether claims 1-11, 24 are obvious over Giordano in view of Wallace;
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`2. Whether claims 1-11, 24 are obvious over Giordano in view of Wallace
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`Proceeding No. IPR2018-01254
`Attorney Docket No. 11030-0049IPA
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`and Tierney;
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`3. Whether claims 1-6, 9-10 are obvious over Shelton in view of Wallace
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`and Tierney;
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`4. Whether claims 7, 8, 11, 24 are obvious over Shelton in view of
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`Giordano and further in view of Wallace and Tierney;
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`5. Whether claims 5 and 6 are obvious over Shelton in view of Wallace and
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`Tierney, and further in view of Hueil;
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`6. Rebuttal to Patent Owner’s presentation on all matters; and
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`7. Any additional issues on which the Board seeks clarification.
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`The Board has already scheduled Oral Hearing for September 18, 2019. See
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`PTAB’s Revised Scheduling Order of February 12, 2019 (Paper 11).
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`Petitioner also respectfully requests the ability to use audio visual equipment
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`to display demonstrative exhibits, including the use of a projector and screen that
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`connects to a laptop computer. Petitioner’s counsel will use a laptop computer
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`with a VGA-type connector. In addition, Petitioner requests that an ELMO-type
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`projector be made available for use.
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`Dated: August 23, 2019
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`Proceeding No. IPR2018-01254
`Attorney Docket No. 11030-0049IPA
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`Respectfully submitted,
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`/Steven R. Katz/
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`Steven Katz, Reg. No. 43,706
`John C. Phillips, Reg. No. 35,322
`Ryan O'Connor, Reg. No. 60,254
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 858-678-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`Proceeding No. IPR2018-01254
`Attorney Docket No. 11030-0049IPA
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on August 23, 2019, a complete and entire copy of this Petitioner’s
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`Request for Oral Argument and Request to Reschedule to Align with IPR2018-
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`01248 was provided via email to the Patent Owner by serving the email
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`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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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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