Trials@uspto.gov
`(571) 272-7822
`
`Paper 22
`Date: August 7, 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 IPR2018-01254 (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 both 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)
`
`
`On July 24, 2019, Patent Owner sent an email to the Board requesting
`authorization to file a motion to strike invalidity arguments in Petitioner’s Replies
`in IPR2018-01247 and IPR2018-01254. Patent Owner indicates that Petitioner
`opposes Patent Owner’s request. According to Patent Owner, Petitioner’s Replies
`include arguments that were not disclosed in the Petitions.
`Our Rules explain that “[a] reply may only respond to arguments raised in
`the corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). Indeed, “[a]
`reply that raises a new issue or belatedly presents evidence will not be considered
`and may be returned.” See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,767 (Aug. 14, 2012). For example, our Trial Practice Guide explains
`that “[e]xamples of indications that a new issue has been raised in a reply include
`new evidence necessary to make out a prima facie case for the patentability or
`unpatentability of an original or proposed substitute claim, and new evidence that
`could have been presented in a prior filing.” Id.
`We decline, at this time, to grant Patent Owner’s request to file motions to
`strike in these proceedings. Instead, on these facts, we determine that the
`following procedure serves the just, speedy, and inexpensive resolution of this
`issue. Patent Owner may file, in each proceeding, a paper titled “Patent Owner’s
`List of Improper Reply Arguments,” which shall include a numbered list of
`citations to those passages of the reply that Patent Owner believes exceed the scope
`of a proper reply.2 This list must include page and line numbers, and may include
`
`
`2 For purposes of this Order, an improper argument is an argument made by
`Petitioner in its Reply where (1) it is beyond the scope of a reply under 37 C.F.R.
`§ 42.23(b) or (2) if we were to rely on it in finding the challenged claims
`unpatentable, Patent Owner would not have had sufficient notice and opportunity
`to respond (see, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir.
`2015)).
`
`2
`
`

`

`IPR2018-01247 (Patent 8,479,969 B2)
`IPR2018-01248 (Patent 8,479,969 B2)
`
`a brief (e.g., one sentence) explanation. The propriety or impropriety of the
`identified portions of the replies will be addressed, to the extent necessary, in a
`later Order or in our Final Written Decision. To the extent the panel determines
`that any item identified by Patent Owner warrants additional briefing, an additional
`Order will be issued, providing such instruction to the parties.
`Furthermore, although at this time we do not deem it necessary to resolve
`this issue via formal briefing, should either party request a hearing, the parties may
`address this issue during oral argument if this issue is not resolved prior to oral
`argument.
`
`Accordingly, it is:
`ORDERED that Patent Owner is authorized to file, in each captioned
`proceeding, a List of Improper Reply Arguments, as outlined above;
`FURTHER ORDERED that Patent Owner’s List is to be filed no later than
`August 14, 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)
`
`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
`
`