Filed: January 22, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`MEDTRONIC COREVALVE LLC,
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`PETITIONER,
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`V.
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`COLIBRI HEART VALVE LLC,
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`PATENT OWNER.
`___________________
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`Case No. IPR2020-01454
`U.S. Patent No. 9,125,739
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`SUR-REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`MEDTRONIC COREVALVE LLC,
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`PETITIONER,
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`V.
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`COLIBRI HEART VALVE LLC,
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`PATENT OWNER.
`___________________
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`Case No. IPR2020-01454
`U.S. Patent No. 9,125,739
`___________________
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`SUR-REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`Factor 1: Petitioner admits that “the district judge indicated during a
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`11/17/2020 conference that he intended to deny the motion to stay and that the trial
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`date would not move”. (Reply, 1.) Nothing in Petitioner’s Reply changes this. The
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`trial date remains September 14, 2021—six months prior to the March 2022 FWD
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`deadline. That the district court never denied the stay in writing is of no moment,
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`as Judge Carter denied the stay orally during the 11/17/20 conference, and
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`subsequently entered a scheduling order “maintaining the September 14, 2020 jury
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`trial date,” which is consistent with his denial of the stay motion. (Ex. 2009 ¶ 6;
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`Ex. 2003, 2-4.) That Judge Carter agreed to stay a different case prior to institution
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`has no bearing on the fact that Judge Carter denied Petitioner’s stay motion
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`applicable here. See Apple Inc. v. Fintiv, Inc. (“Fintiv II”), IPR2020-00019, Pap.
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`15, 13 (PTAB May 13, 2020) (informative) (“declin[ing] to infer, based on actions
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`taken in different cases with different facts, how the District Court would rule
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`should a stay be requested by the parties in the parallel case here”).
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`Petitioner presents no evidence that the court will grant a stay if IPR is
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`instituted. Instead, Petitioner lumps this case in with ones in which, according to
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`Petitioner, “the judge [has] contemporaneously continued other trial dates in light
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`of COVID.” (Reply, 1 (citing Exs. 1026-27).) But in Ex. 1027, Judge Carter denied
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`the “Application to Continue Trial Date from November 17, 2020 to February 23,
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`2021,” and ruled that the “Parties are to remain prepared to go to trial as soon as
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`1
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`the Court reopens.” (Ex. 1027, 17.) And in Ex. 1026, Judge Carter extended a
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`stipulated continuance first granted in March because the Defendants “include the
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`California Department of Public Health” and others “currently focusing their
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`resources on the State’s response to the COVID 19 crisis.” (Ex. 2012, 2-3.) No
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`such reason exists for continuing this trial date. “[W]hen a district court has denied
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`a motion to stay and has not indicated it would reconsider if an [IPR] is instituted,
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`the facts underlying this factor weigh in favor of denying institution.” Apple Inc. v.
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`Pinn, Inc., IPR2020-00999, Pap. 15, 8 (PTAB Dec. 8, 2020).
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`Factor 2: The Board “generally take[s] courts’ trial schedules at face value
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`absent some strong evidence to the contrary.” Fintiv II Pap. 15, 13 (holding that
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`this factor weighs in favor of discretionary denial where, although the trial had
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`been postponed once due to COVID, the trial was still “scheduled to begin two
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`months before [the] deadline to reach a final decision”.) Here, no such contrary
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`evidence exists. Indeed, Petitioner’s own evidence indicates that the district court
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`is unlikely to move the September 14, 2021 trial date in light of COVID. Ex. 1027
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`shows that, even in the event of a court closure, Judge Carter is unlikely to extend
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`the trial date by even three months and will instead hold trial as soon as courts are
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`allowed to reopen (ruling “Parties are to remain prepared to go to trial as soon as
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`the Court reopens”). (Ex. 1027, 17.) Ex. 1027 also refutes Petitioner’s unsupported
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`argument that Judge Carter will delay cases currently set for trial in order to deal
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`2
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`with “a backlog of 9+ months.” Rather, Ex. 1027 indicates that Judge Carter does
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`not intend to handle “backlog” by disrupting currently-scheduled cases.
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`Judge Carter has dealt with COVID not by continuing cases, but rather by
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`“hold[ing] civil cases outside the courthouse doors,” which he did as recently as
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`1/13/21. (Ex. 2013, 1; Ex. 2014, 2.) In addition, Dr. Fauci, Director of the National
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`Institute of Allergy and Infectious Diseases, has predicted that the U.S. may
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`“approach herd immunity by summer’s end and ‘normality that is close to where
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`we were before’ by the end of 2021.” (Ex. 2015, 2.) Thus, there is no evidence that
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`Judge Carter intends to or will need to delay the 9/14/21 trial date, which he made
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`clear on 11/17/20 “would not move under any circumstances.” (Ex. 2004, 2; Ex.
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`2009 ¶ 6.). Contemporaneously with that order, and to ensure that the trial
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`proceeds on schedule, Judge Carter appointed a technical special master to
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`expeditiously and efficiently conduct the Markman hearing and “issue a Report
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`and Recommendation as to claim construction.” (Ex. 2006, 3.) On 1/21/21, the
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`Special Master indicated that the Markman hearing would go forward on 2/1/21.
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`(Ex. 2016, 1.) Thus, the “facts underlying this second Fintiv factor strongly favor
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`denying institution.” Apple, IPR2020-00999, Pap. 15, 9-10) (denying institution
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`where PO presented evidence that parallel litigation in the Central District of
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`California “likely will proceed as scheduled” despite COVID-19 and where, “even
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`if the district court were to delay the trial by a few months, the trial still would be
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`3
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`completed well before a final written decision would issue in our proceeding.”).
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`Factor 3: Petitioner relies on the Board’s holding that a petition filed
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`“promptly after [Petitioner becomes] aware of the claims being asserted [weighs]
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`against denying institution.” Snap, Inc. v. SRK Tech, LLC, IPR2020-00820, Pap.
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`15, 11 (precedential). But as Petitioner acknowledges, PO first filed its complaint
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`against Petitioner in 2019—nine months before this Petition was filed. On Reply,
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`Petitioner cannot and does not deny that it was “aware of the claims being
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`asserted” at the time PO filed its original complaint. (See Reply, 2-3.) Rather,
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`Petitioner relies solely on the fact that this complaint was never served. (Reply, 3.)
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`But Snap does not base its definition of “promptness” on the date of service, but
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`rather on the relevant date of Petitioner’s awareness of the asserted claims. Thus,
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`Petitioner was not prompt in filing its Petition, resulting in significant investment
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`in the parallel proceeding by the court and the parties, including—by the institution
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`decision deadline—completion of the Markman and fact discovery process, as well
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`as infringement and invalidity contentions and responses. (See POPR, 20-24; Ex.
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`2005, 2-3.) As in Fintiv II, this factor favors discretionary denial. See Fintiv II at
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`13-14 (factor favors denial where the parties had completed claim construction and
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`infringement and invalidity contentions, despite fact discovery being incomplete
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`and expert discovery and substantive motion practice yet to come).
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`Factor 4: Petitioner’s third, desperate attempt at a Sotera-like stipulation in
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`4
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`this case (see Exs. 1023, 2017, 1025) does nothing but reiterate the estoppel
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`already prescribed by 35 U.S.C. §315(e)(2) (Petitioner in IPR resulting in FWD
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`may not assert in court “that the claim is invalid on any ground that the petitioner
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`raised or reasonably could have raised during that IPR”). Petitioner’s proposed
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`stipulation is toothless and nowhere promises it will “cease asserting the prior art
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`references relied upon in the petitions”. Petitioner’s latest stipulation is merely
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`one in a set of “non-dispositive factors considered for institution under 35 U.S.C.
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`§ 314(a), … as part of a balanced assessment of all relevant circumstances of the
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`case, including the merits”—the majority of which weigh in favor of discretionary
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`denial. See Fintiv I, 5 (quotation omitted).
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`Factor 6: Petitioner ignores that, during prosecution, the PTO considered
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`Garrison and Leonhardt and rejected the crux of Petitioner’s arguments. (POPR,
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`28-31.) Petitioner’s arguments on Reply mischaracterize PO’s arguments in an
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`attempt to obscure the Petition’s abject failure to meet its burden of demonstrating
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`obviousness. As in Fintiv II, an “initial inspection of the merits on the record
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`before [the Board] suggests some of Petitioner’s challenges contain certain
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`weaknesses and, taken as a whole, the strengths of the merits do not outweigh
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`other factors in favor of discretionary denial.” Fintiv II at 16 (“[i]t is sufficient that
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`Patent Owner has pointed out that Petitioner’s case, at least as to two of three
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`independent claims, is a close call.”).
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`5
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`Dated: January 22, 2021
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`Respectfully Submitted,
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`/s/ Sarah E. Spires
`Sarah E. Spires (Reg. No. 61,501)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Patent Owner
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`Paul J. Skiermont (pro hac vice
`application to be submitted)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Petitioner a true and correct copy of the foregoing Sur-Reply to Patent
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`Owner’s Preliminary Response Under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, by
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`electronic means on January 22, 2021 at the following addresses of record:
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`James L. Davis, Jr.
`Scott A. McKeown
`Cassandra Roth
`ROPES & GRAY LLP
`james.l.davis@ropesgray.com
`scott.mckeown@ropesgray.com
`cassandra.roth@ropesgray.com
`Medtronic-Colibri-IPRService@ropesgray.com
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`Dated: January 22, 2021
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`Respectfully submitted,
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`/s/ Sarah E. Spires
`Sarah E. Spires (Reg. No. 61,501)
`Lead Counsel for Patent Owner
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