`Date Filed: August 8, 2013
`
`Filed on behalf of: Medtronic, Inc.
`
`By:
`
`Justin J. Oliver
`MEDVASCIPR@fchs.com
`(202) 530-1010
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`Lombard Medical Technologies PLC
`Petitioner,
`v.
`Medtronic, Inc.
`Patent Owner.
`________________
`
`Case IPR2013-00269
`U.S. Patent 6,306,141
`________________
`
`PRELIMINARY RESPONSE BY PATENT OWNER MEDTRONIC INC.
`UNDER 37 C.F.R. § 42.107
`
`COOK
`IPR2019-00123
`Cook v. Medtronic
`Exhibit 1033-0001
`
`
`
`Patent Owner Medtronic Inc. (hereinafter, "Patent Owner") hereby
`
`respectfully submits this Preliminary Response to the Petition seeking inter partes
`
`review in this matter. A trial should not be instituted based on Ground #6 because
`
`there is no statutory basis for the Petitioner to raise a challenge based on
`
`obviousness-type double-patenting in an inter partes review. In addition, although
`
`none of the references or combinations of references that Petitioner relies upon is
`
`reasonably likely to result in the invalidation of any one of claims 1-10 and 18-22
`
`of U.S. Patent No. 6,306,141 ("the '141 patent") [Grounds 1-5], Patent Owner has
`
`not addressed those substantive issues in this Preliminary Response.
`
`Ground 6 of the Petition requests invalidation of the claims-at-issue
`
`"under the doctrine of obviousness-type double patenting over the claims of U.S.
`
`Patent No. 5,597,378 to Jervis." (Petition at 3) The America Invents Act strictly
`
`limits the grounds on which a petitioner can seek review in an inter partes review
`
`to only those arguments "that could be raised under section 102 or 103 and only on
`
`the basis of prior art consisting of patents or printed publications." 35 U.S.C. §
`
`311(b) (emphasis added). Petitioner's obviousness-type double patenting challenge
`
`is thus impermissible for two reasons: (1) it is based on a judicially-created
`
`doctrine stemming from Section 101, not Section 102 or 103; and (2) U.S. Patent
`
`No. 5,596,378 ("the '378 patent") is not prior art to the '141 patent because they are
`
`both in the same patent family.
`
`2
`
`IPR2019-00123
`Exhibit 1033-0002
`
`
`
`Obviousness-type double patenting is not a statutory rejection based
`
`on either 35 U.S.C. § 102 or § 103; it is a judicially created doctrine. See In re
`
`Braat, 937 F.2d 589, 592 (Fed. Cir. 1991); In re Berg, 140 F.3d 1428, 1431 (Fed.
`
`Cir. 1998). Moreover, obviousness-type double patenting has its roots in 35
`
`U.S.C. § 101, which prohibits patenting of the same invention twice. See Ex parte
`
`Davis, No. 1999-1924, 56 U.S.P.Q.2d 1434, 1435 (B.P.A.I. May 1, 2000). The
`
`judicially created variation "extends the fundamental legal doctrine [prohibiting
`
`double-patenting] to preclude 'obvious variants' of what has already been
`
`patented." Id. In other words, obviousness-type double patenting cannot be the
`
`basis for inter partes review because it is the wrong sort of claim rejection (based
`
`on judicial doctrine, rather than statute), and derives from the wrong statute
`
`(Section 101, not Section 102 or 103). Moreover, it is well established that "the
`
`patent principally underlying the [obviousness-type] double patenting rejection is
`
`not considered prior art." MPEP § 804(II)(B)(1) (8th ed. Rev. 7, July 2008). In
`
`this case, the '378 patent and the '141 patent both claim ultimate priority to the
`
`same patent application— Appl. No. 06/541,852, filed October 14, 1983. Thus,
`
`the '378 patent is not prior art to the '141 patent.
`
`3
`
`IPR2019-00123
`Exhibit 1033-0003
`
`
`
`Because obviousness-type double patenting is a non-statutory, non-
`
`prior-art-based argument, it is not a permissible basis for inter partes review under
`
`35 U.S.C. § 311(b). Therefore, review of claims 1-10 and 18-22 should not be
`
`instituted based on at least Ground 6.
`
`Dated: August 8, 2013
`
`Respectfully submitted,
`
`_____/Justin J. Oliver/________
`Justin J. Oliver (Reg. No. 44,986)
`Lead Counsel for Patent Owner
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`Tel.: 202-530-1010
`Fax: 212-218-2200
`MEDVASCIPR@fchs.com
`
`4
`
`IPR2019-00123
`Exhibit 1033-0004
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service on the Petitioner, pursuant to 37
`
`C.F.R. § 42.6(e), by FEDERAL EXPRESS delivery of a true copy of the foregoing
`
`PRELIMINARY RESPONSE BY PATENT OWNER MEDTRONIC INC.
`
`UNDER 37 C.F.R. § 42.107 to lead counsel of record for Petitioner as follows:
`
`Steven D. Hemminger
`ALSTON & BIRD LLP
`275 Middlefield Road, Suite 150
`Menlo Park, CA 94025-4008
`Tel: 650-838-2029
`
`Dated: August 8, 2013
`
`_/Justin J. Oliver/_______
`Justin J. Oliver
`Reg. No. 44,986
`
`FCHS_WS 9263278v1.doc
`
`5
`
`IPR2019-00123
`Exhibit 1033-0005
`
`
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