`Trials@uspto.gov
`571-272-7822 Entered: April 1, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`COOK INC., COOK GROUP INC., and COOK MEDICAL LLC,
`Petitioner,
`
`v.
`
`MEDTRONIC, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00123
`Patent 6,306,141 B1
`____________
`
`
`
`Before JAMESON LEE, KEN B. BARRETT, and JAMES A. TARTAL,
`Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`IPR2019-00123
`Patent 6,306,141 B1
`
`Petitioner, in an email dated March 21, 2019, requested authorization
`
`to file a five page reply to Patent Owner’s Preliminary Response. Petitioner
`indicated that the requested brief would be limited to replying to Patent
`Owner’s arguments regarding: 1) objective indicia of non-obviousness,
`and 2) denial of the Petition under 35 U.S.C. §§ 314 and 325. Petitioner’s
`email further indicated that Patent Owner opposes the request. In our order
`of March 25, 2019 (Paper 7), we declined to hold a conference call to
`discuss the matter, and authorized Patent Owner to file a two-page brief
`addressing the basis for its opposition. Patent Owner filed that brief on
`March 27, 2019 (Paper 8), and maintains that we should deny Petitioner’s
`request to reply to the Preliminary Response “because there is no good
`cause.” Paper 8, 1.
`
`Patent Owner argues that “Petitioners were already aware of, but
`chose to not submit or address, Patent Owner’s evidence . . . [because]
`Petitioners were aware of Exhibits 2001–2007[, which were filed in the
`present case concurrently with the Preliminary Response].” Id. We
`understand Patent Owner to be referring to purported evidence of objective
`indicia that may have been the subject of arguments made in prior
`proceedings. See id. (citing to a Preliminary Response filed in a prior case
`(Ex. 1006) and asserting that Petitioner decided to “ignore evidence of
`secondary considerations”).
`
`Patent Owner further argues: “Likewise, the POPR’s arguments
`addressing §§ 314(a) and 325(d) were ‘reasonably foreseeable.’” Id. at 2
`(citations omitted). In this regard, Patent Owner asserts that “[t]he Petition
`(p. 1) also discusses Exhibits 2008-2009—petitions in prior proceedings.”
`Id. at 1. This is a reference to Petitioner’s mandatory identification of
`
`2
`
`
`
`IPR2019-00123
`Patent 6,306,141 B1
`
`related matters pursuant to 37 CFR § 42.8, and the “discuss[ion]” consists of
`the following: “Claims 1–22 of the ’141 Patent were challenged in
`IPR2013-00269 and/or IPR2014-00362. Both proceedings were settled and
`terminated before any institution decision.” Pet. 1.
`
`In the Preliminary Response, Patent Owner argues that the Board
`should exercise its discretion to deny the Petition based, at least, on two
`prior district court challenges and the two above-referenced challenges
`before this Board, and because “the vast majority of the asserted references
`in the Petition already were considered by the Patent Office,” and because
`one of the remaining references is purportedly cumulative of those already
`considered. Prelim. Resp. 48, 55–56.
`
`We determine that briefing from Petitioner regarding Patent Owner’s
`arguments for discretionary denial would be helpful to a fair disposition of
`the issues first raised by Patent Owner regarding discretionary denial of the
`Petition and do not find that Petitioner must have already addressed in its
`Petition discretionary denial under 35 U.S.C. § 314(a) or § 325(d). As such,
`there is good cause to allow a reply brief on that subject. In contrast, we see
`no need for further briefing at this time regarding the subject of objective
`indicia.
`
`Patent Owner additionally makes the apparently-preemptive argument
`that there is no good cause to allow Petitioner to address any alleged
`misstatements in the Preliminary Response. Id. at 2. Petitioner’s reply to
`the preliminary response is limited to addressing Patent Owner’s arguments
`regarding 35 U.S.C. §§ 314, 325.
`
`3
`
`
`
`IPR2019-00123
`Patent 6,306,141 B1
`
`It is:
`
`ORDERED that Petitioner is authorized to file a Reply to the
`
`Preliminary Response by April 8, 2019, limited to five pages and limited to
`addressing Patent Owner’s arguments regarding discretionary denial under
`35 U.S.C. §§ 314, 325.
`
`
`
`
`4
`
`
`
`IPR2019-00123
`Patent 6,306,141 B1
`
`
`For PETITIONER:
`Dominic Zanfardino
`Jeffry Nichols
`Jason Schigelone
`BRINKS GILSON & LIONE
`dpz@brinksgilson.com
`jnichols@brinksgilson.com
`jschigelone@brinksgilson.com
`
`
`
`For PATENT OWNER:
`James L. Davis, Jr.
`Andrew N. Thomases
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`james.l.davis@ropesgray.com
`andrew.thomases@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`
`
`
`
`
`
`5
`
`
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