`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`NEW WORLD MEDICAL, INC.,
`Petitioner,
`
`v.
`
`MICROSURGICAL TECHNOLOGY, INC.,
`Patent Owner.
`_______________________
`Case IPR2020-01573
`U.S. Patent No. 9,107,729
`_______________________
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
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`Pursuant to 37 C.F.R. § 42.70(a) and the Scheduling Order issued on March
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`16, 2021, Paper 23 (the “Scheduling Order”), Patent Owner hereby requests oral
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`argument for the hearing currently scheduled for January 10, 2022. Counsel for
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`Patent Owner conferred with counsel for Petitioner in advance of filing this
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`Request and the Parties agree to one hour per side for all five related Inter Partes
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`Review proceedings. Patent Owner respectfully submits the following issues for
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`discussion at oral argument:
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`(1) The grounds on which the subject trial was instituted;
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`(2) Any issue addressed in Petitioner’s or Patent Owner’s papers;
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`(3) Whether a person of ordinary skill in the art would have been motivated
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`to combine the alleged prior art;
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`(4) Whether a person of ordinary skill in the art would have had a reasonable
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`expectation of success in practicing the challenged claims;
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`(5) Motions to exclude filed in this proceeding (if any); and
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`(6) Any other matters raised by Petitioner or the Board.
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`Patent Owner requests the ability to use audio-visual equipment to display
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`demonstrative exhibits, including the use of a projector and screen for PowerPoint
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`display. In accordance with the Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48756, 48768 (Aug. 14, 2012), Patent Owner will contact a Board Trial Division
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`paralegal to discuss this request.
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`1
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`Dated: November 2, 2021
`
`
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`
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`Respectfully submitted,
`
`/s/ Lawrence M. Sung
`Lawrence M. Sung
`Reg. No. 38,330
`Mary Sylvia
`Reg. No. 37,156
`Teresa M. Summers
`(pro hac vice)
`WILEY REIN LLP
`1776 K Street, NW
`Washington, DC 20006
`Tel. 202.719.7000
`Fax 202.719.7049
`lsung@wiley.law
`msylvia@wiley.law
`tsummers@wiley.law
`
`Counsel for Patent Owner
`MicroSurgical Technology, Inc.
`
`2
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`
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`
`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on November 2, 2021, a true and
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`correct copy of the foregoing Patent Owner’s Request for Oral Argument was
`
`served by email on the following counsel of record for New World Medical, Inc.:
`
`
`
`Todd R. Tucker (Lead Counsel)
`Reg. No. 40,850
`Kyle T. Deighan (Back-up Counsel)
`Reg. No. 75,525
`John Reulbach (Back-up Counsel)
`(pro hac vice to be requested)
`CALFEE, HALTER & GRISWOLD LLP
`The Calfee Building
`1405 East Sixth Street
`Cleveland, OH 44114
`P: 216-622-8551 / F: 216-214-0816
`ttucker@calfee.com
`kdeighan@calfee.com
`jreulbach@calfee.com
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`/s/ Lawrence M. Sung
`
`Counsel for Patent Owner
`MicroSurgical Technology, Inc.
`
`3
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