`(571) 272-7822
`
`Paper 32
`Date: September 4, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01247 (Patent 8,479,969 B2)
`Case IPR2018-01248 (Patent 8,479,969 B2)
` Case IPR2018-01254 (Patent 8,479,969 B2)1
`_______________
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`1 Because this Order addresses issues that are the same in each of the proceedings,
`we issue one Order to be entered in each proceeding. The parties are not authorized
`to use this caption unless later permitted.
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`IPR2018-01254 (Patent 8,479,969 B2)
`
`
`In an e-mail received Monday, August 26, 2019, Petitioner reasserted its
`request to consolidate hearings for IPR2018-01247, -01248, and -01254 on
`October 17, 2019. Cf. Paper 27 (IPR2018-01247); Paper 29 (IPR2018-01254). All
`three proceedings involve U.S. Patent No. 8,479,969 (“the ’969 Patent”). In the
`email, Petitioner states that “[g]iven the overlapping issues, Petitioner submits
`consolidation of all three hearings into a single hearing would make the most sense
`and be both efficient and practical.”
`Patent Owner has not contacted the Board regarding Petitioner’s e-mail.
`However, Petitioner’s e-mail indicates that Patent Owner does not join Petitioner’s
`request. At this time and based on Petitioner’s e-mail, it appears that Patent Owner
`believes that the scheduling was “deliberate on the Board’s part to hold the -01248
`hearing separately.” There was, however, no deliberate intent by the Board to
`bifurcate hearings for the proceedings involving the ’969 Patent. Instead, the
`hearings were scheduled based solely on the different institution dates as a function
`of their respective filing dates.
`After considering the parties’ positions, we agree with Petitioner that given
`the overlapping subject matter it would “be both efficient and practical” to
`consolidate hearings for IPR2018-01247, -01248, and -01254 into a single hearing
`on October 17, 2019. This consolidation appears to be consistent with Patent
`Owner’s Request for Oral Argument. See Paper 26 (IPR2018-01247); see also
`Paper 28 (IPR2018-01254). In its Request for Oral Argument, “Patent Owner
`requests that IPR2018-01247 and IPR2018-01254 be consolidated into a single
`hearing” and Patent Owner indicates that it would need “forty-five minutes of time
`to address the issues identified” in both IPR2018-01247 and IPR2018-01254. See,
`e.g., Paper 26 (IPR2018-01247). Thus, we see no harm in consolidating all three
`
`2
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`IPR2018-01254 (Patent 8,479,969 B2)
`
`proceedings. However, if Patent Owner has good cause for opposing consolidation
`of the three identified proceedings, Patent Owner should contact the Board.
`
`Accordingly, it is:
`ORDERED that oral argument in each of IPR2018-01247, IPR2018-01248,
`and IPR2018-01254 be consolidated into a single hearing on October 17, 2019;
`FURTHER ORDERED that Patent Owner is authorized to file, in each
`captioned proceeding, good cause for opposing consolidation of the three identified
`proceedings involving the ’969 Patent;
`FURTHER ORDERED that Patent Owner’s response is to be filed no later
`than September 6, 2019; and
`FURTHER ORDERED that the paper is to be no more than one page,
`excluding the cover page, signature block, and certificate of service.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`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
`
`
`
`
`
`4
`
`
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