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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`
`IPR2018-01254
`U.S. Patent No. 8,479,969
`
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
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`Pursuant to 37 C.F.R. § 42.70, Patent Owner Ethicon LLC respectfully
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`submits this Request for Oral Argument. The Board has scheduled a single,
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`consolidated oral hearing on October 17, 2019 for IPR2018-01254 and two
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`related proceedings concerning U.S. Patent No. 8,479,969. See IPR2018-
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`01247, Paper No. 29; IPR2018-01248, Paper No. 19; IPR2018-01254, Paper
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`No. 32. Patent Owner specifies the following issues to be argued concerning
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`IPR2018-01254:
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`•
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`The alleged obviousness under 35 U.S.C. § 103 of claim 24 over the
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`following references: Giordano (U.S. Patent App. No. 2008/0167672) in view of
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`Wallace (U.S. Patent No. 6,699,235); Giordano in view of Wallace and Tierney
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`(U.S. Patent No. 6,331,181); and Shelton (U.S. Patent No. 6,978,921) in view of
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`Giordano and further in view of Wallace and Tierney.
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`•
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`The inapplicability of the January 2018 Certificate of Correction to
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`this proceeding.
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`•
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`The new, impermissible arguments in Petitioner’s Reply, as identified
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`in Patent Owner’s Sur-Reply and Patent Owner’s List of Improper Reply
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`Arguments (Paper No. 24).
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`•
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`The alleged obviousness of the following claims under 35 U.S.C. §
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`103 over the following references: Giordano in view of Wallace (claims 1-11);
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`Giordano in view of Wallace and Tierney (claims 1-11); Shelton in view of
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`1
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`Wallace and Tierney (claims 1-6 and 9-10); Shelton in view of Giordano and in
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`further view of Wallace and Tierney (claims 7, 8, and 11); and Shelton in view of
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`Wallace and Tierney and in further view of Hueil (U.S. Patent App. No.
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`2007/0158385) (claims 5 and 6).
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`•
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`Any other issue the Board deems necessary for issuing a Final Written
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`Decision.
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`Patent Owner requests sixty minutes of time to address the issues
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`identified above for IPR2018-01254 and the issues identified in Patent Owner’s
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`Requests for Oral Argument in IPR2018-01247 and IPR2018-01248. To the
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`extent the Board schedules the hearing to last more than two hours, however,
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`Patent Owner requests that it be given half the length of the hearing to address
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`these issues.
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`Patent Owner requests that ten spaces be reserved at the oral hearing to
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`accommodate its counsel and corporate representatives.
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`2
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`Date: September 12, 2019
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`Respectfully submitted,
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`
`/Anish R. Desai/
`Anish R. Desai (Reg. No. 73,760)
`Elizabeth S. Weiswasser (Reg. No. 55,721)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`Anish.Desai@weil.com
`Elizabeth.Weiswasser@weil.com
`
`Adrian Percer (Reg. No. 46,986)
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Adrian.Percer@weil.com
`
`Christopher T. Marando (Reg. No. 67,898)
`Christopher M. Pepe (Reg. No. 73,851)
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`Christopher.Marando@weil.com
`Christopher.Pepe@weil.com
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`Counsel for Patent Owner Ethicon LLC
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`3
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on September 12, 2019, the foregoing
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT was served via
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`electronic mail, upon the following:
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`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
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`IPR11030-0049IPA@fr.com
`PTABInbound@fr.com
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`
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`/Lauren McDuffie/
`Lauren McDuffie
`Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Ste. 600
`Washington, DC 20036
`T: 202-682-7000
`Lauren.McDuffie@weil.com
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`4
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