`Tel: 571-272-7822
`
`Paper 7
`Entered: July 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ST. JUDE MEDICAL, LLC,
`Petitioner,
`
`v.
`
`THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
`Patent Owner.
`
`Case IPR2017-01338 (Patent 6,502,575)
`Case IPR2017-01339 (Patent 6,164,283)1
`
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 Although the proceedings have not been consolidated, this Order addresses
`issues that are common to each of the above-referenced proceedings. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2015, p. 1
`
`
`
`IPR2017-01338 (Patent 6,502,575)
`IPR2017-01339 (Patent 6,164,283)
`
`
`On July 18, 2017, the Board held a conference call between Judges
`
`Scanlon, Worth, and Woods and counsel for Petitioner St. Judge Medical,
`
`LLC (“St. Jude”) and Patent Owner The Regents of the University of
`
`California (“The Regents”).
`
`The Regents requested a conference call seeking authorization to file a
`
`motion to dismiss based on Eleventh Amendment immunity as a state entity,
`
`and seeking to postpone the due date of the Patent Owner Preliminary
`
`Response pending the motion to dismiss. On the conference call, The
`
`Regents argued that this case follows the example of three recent Board
`
`cases: See Covidien LP v. University of Florida Research Foundation Inc.,
`
`IPR2016-01274 (PTAB Jan. 25, 2017) (Paper 21); NeoChord Inc. v.
`
`University of Maryland, Case IPR2016-00208 (PTAB May 23, 2017) (Paper
`
`28); and Reactive Surfaces Ltd., LLC v. Toyota Motor Corp., Case IPR2017-
`
`00572 (PTAB July 13, 2017) (Paper 32). The Regents further contends that
`
`it should not be required to file a Preliminary Response to the Petition if it is
`
`entitled to Eleventh Amendment immunity.
`
`St. Jude states that it does not object to the granting of authorization
`
`for The Regents to file a motion to dismiss but indicates that St. Jude would
`
`file an opposition thereto on the merits. St. Jude indicates that it plans to
`
`argue that The Regents has waived any Eleventh Amendment immunity,
`
`e.g., in a related district court proceeding. St. Jude further opposes
`
`postponing the due date of the Patent Owner Preliminary Response because
`
`it would prefer that this proceeding finish prior to trial in the district court
`
`proceeding, which is currently scheduled for February 2019, according to St.
`
`2
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2015, p. 2
`
`
`
`IPR2017-01338 (Patent 6,502,575)
`IPR2017-01339 (Patent 6,164,283)
`
`Jude.2 St. Jude also suggested that The Regents was aware of the Eleventh
`
`Amendment issue prior to contacting the Board and may have delayed
`
`before seeking to stay the schedule.
`
`Under the current schedule the Patent Owner Preliminary Response is
`
`due August 16, 2017, and if an inter partes review were instituted, the
`
`Board’s final written decision would have a statutory due date of no later
`
`than November 16, 2018.
`
`After considering the circumstances of this case, we find it to be in the
`
`interest of justice to obtain briefing on this issue, and we authorize The
`
`Regents to file a motion to dismiss. We further postpone the due date for the
`
`Patent Owner Preliminary Response for two months.
`
`Accordingly, having heard from the parties, we authorize The Regents
`
`to file its motion by July 25, 2017. The Regents’s brief is limited to fifteen
`
`(15) pages. In its briefing, The Regents should bear in mind the arguments
`
`made by St. Jude during the teleconference.
`
`St. Jude may file an opposition, also limited to fifteen (15) pages, by
`
`August 1, 2017. The Regents may further file a reply to St. Jude’s
`
`opposition by August 8, 2017, limited to ten (10) pages.
`
`Accordingly, it is
`
`ORDERED that The Regents of the University of California is
`
`authorized to file, no later than July 25, 2017, a Motion to Dismiss Based on
`
`Sovereign Immunity, limited to fifteen (15) pages;
`
`
`2 In its Mandatory Notice, Patent Owner identifies, inter alia, the following
`case as related: The Regents of the University of California v. St. Jude
`Medical, LLC, Case No. 4:16-cv-06210 (N.D. Cal.). Paper 4, 2 (IPR2017-
`01338).
`
`3
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2015, p. 3
`
`
`
`IPR2017-01338 (Patent 6,502,575)
`IPR2017-01339 (Patent 6,164,283)
`
`
`FURTHER ORDERED that St. Jude may file, no later than August 1,
`
`2017, an Opposition to Patent Owner’s Motion, limited to fifteen (15) pages;
`
`FURTHER ORDERED that The Regents of the University of
`
`California may file, no later than August 8, 2017, a Reply to Petitioner’s
`
`Opposition to Patent Owner’s Motion, limited to ten (10) pages;
`
`FURTHER ORDERED that the Patent Owner Preliminary Response
`
`in each of IPR2017-01338 and IPR2017-01339 shall be due on October 16,
`
`2017; and
`
`FURTHER ORDERED that no other filings are authorized at this
`
`time.
`
`
`
`PETITIONER:
`
`Matthew Smith
`smith@turnerboyd.com
`
`
`PATENT OWNER:
`
`Jonathan Lindsay
`jlindsay@crowell.com
`
`Kainoa Asuega
`kasuega@crowell.com
`
`
`
`4
`
`Patent Owner Saint Regis Mohawk Tribe
`Ex. 2015, p. 4
`
`