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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
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`New World Medical, Inc.,
`Petitioner
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`v.
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`MicroSurgical Tech., Inc.,
`Patent Owner
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`_______________________
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`Case No. IPR2020-01573
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`U.S. Patent Nos. 9,107,729
`________________________
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`PETITIONER’S REQUEST FOR ORAL ARGUMENT
`__________________________________________________________________
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`In accordance with 37 C.F.R. § 42.70 and the Scheduling Order (Paper No.
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`23), Petitioner New World Medical, Inc. (“Petitioner” or “New World”)
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`respectfully requests oral argument in this proceeding. According to the Board’s
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`Order Revising Schedule Common to Related Proceedings in IPR Nos. 2020-
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`01573, 2020-01711, 2021-00017, 2021-00065, and 2021-00066 (Paper No. 27),
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`oral argument in this and the related IPR proceedings is scheduled for January 10,
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`2022. New World respectfully requests 60 minutes at the oral argument to address
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`the related IPR proceedings (IPR Nos. 2020-01573, 2020-01711, 2021-00017,
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`2021-00065, and 2021-00066) or, to the extent it is greater, the amount of time
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`granted to Patent Owner.
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`Specifically, but not by way of waiver of any unenumerated issues, New
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`World requests oral argument to address the following issues related to this IPR
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`proceeding:
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`1. The grounds on which the IPRs were instituted, including the issues
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`and evidence raised in the parties’ briefing and supporting
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`declarations and exhibits, including but not limited to:
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`a. The proper construction of the claim terms of U.S. Patent No.
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`9,107,729 (“the ‘729 patent”);
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`b. Whether claims 1-4 and 7-9 of the ‘729 patent are anticipated
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`under pre-AIA 35 U.S.C. § 102 by Manuel Quintana,
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`Gonioscopic Trabeculotomy. First Results, in 43 SECOND
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`EUROPEAN GLAUCOMA SYMPOSIUM, DOCUMENTA
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`OPHTHALMOLOGICA PROCEEDINGS SERIES (E.L. Greve, W.
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`Leydhecker, & C. Raitta ed., 1985) (“Quintana”) (Ex. 1004);
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`c. Whether claims 4-6 and 10 of the ‘729 patent are rendered
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`obvious under pre-AIA 35 U.S.C. § 103 by Quintana in view of
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`the knowledge of a person of ordinary skill in the art;
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`d. Whether claims 1-4 and 7-9 of the ‘729 patent are rendered
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`obvious under pre-AIA 35 U.S.C. § 103 by Quintana in view of
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`U.S. Patent No. 4,900,300 to Lee (“Lee”) (Exhibit 1006);
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`e. Whether claims 4-6 and 10 of the ‘729 patent are rendered
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`obvious under pre-AIA 35 U.S.C. § 103 by Quintana in view of
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`Lee, and further in view of the knowledge of a person of
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`ordinary skill in the art;
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`f. Whether claims 1-4 and 7-8 of the ‘729 patent are anticipated
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`under pre-AIA 35 U.S.C. § 102 by Philipp C. Jacobi et al.,
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`“Technique of goniocurettage: a potential treatment for advance
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`chronic open angle glaucoma,” 81 BRITISH J. OPHTHALMOLOGY
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`302-307 (1997) (“Jacobi”) (Ex. 1007);
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` 2
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`g. Whether claims 5-6 and 9-10 of the ‘729 patent are rendered
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`obvious under 35 U.S.C. § 103 by Jacobi in further view of the
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`knowledge of a person of ordinary skill in the art;
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`2. Petitioner’s Motion to Strike the Affidavit of Manuel Quintana
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`(Exhibit 2020) (Paper 34) and the parties’ evidence and briefing
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`related to Petitioner’s Motion to Strike;
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`3. Any issues raised by Patent Owner in its Request for Oral Argument;
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`4. Rebuttal to Patent Owner’s presentation on all matters;
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`5. Any procedural and evidentiary issues raised by the parties; and
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`6. Any issues raised by the parties in any other filings contemporaneous
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`or subsequent to this Request, including any Motions to Exclude in
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`this proceeding.
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`New World requests the ability to use audio visual equipment to display
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`demonstrative exhibits at the hearing, including the use of a projector for a
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`PowerPoint presentation.
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`Dated: November 2, 2021
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`Respectfully submitted,
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`/s/ Todd R. Tucker
`Todd R. Tucker (Reg. No. 40,850)
`ttucker@calfee.com
`Kyle Deighan (Reg. No. 75,525)
`kdeighan@calfee.com
`CALFEE, HALTER & GRISWOLD LLP
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`The Calfee Building
`1405 East Sixth Street
`Cleveland, Ohio 44114
`P: 216-622-8200
`F: 216-241-0816
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`for Petitioner New World.
`Attorneys
`Medical, Inc.
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` 4
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing PETITIONER’S REQUEST
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`FOR ORAL ARGUMENT was served as of the below date by e-mail on the
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`following individuals and email addresses of record:
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`Lawrence M. Sung (lsung@wiley.law)
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`Mary Sylvia (msylvia@wiley.law)
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`Teresa M. Summers (tsummers@wiley.law)
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`Dated: November 2, 2021
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`/s/ John L. Reulbach III
`John L. Reulbach III
`Attorney for Petitioner
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