Paper No. 3
`IPR202100775
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EDWARDS LIFESCIENCES CORPORATION AND EDWARDS
`LIFESCIENCES LLC,
`Petitioners
`v.
`COLIBRI HEART VALVE LLC,
`Patent Owner
`
`Patent No. 9,125,739
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2020-01454
`
`
`IPR202100775
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EDWARDS LIFESCIENCES CORPORATION AND EDWARDS
`LIFESCIENCES LLC,
`Petitioners
`v.
`COLIBRI HEART VALVE LLC,
`Patent Owner
`
`Patent No. 9,125,739
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2020-01454
`
`
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`TABLE OF CONTENTS
`
`Page
`STATEMENT OF THE PRECISE RELIEF REQUESTED ................ 1
`I.
`STATEMENT OF MATERIAL FACTS .............................................. 2
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED .............. 3
`A.
`Legal Standard ............................................................................ 3
`B.
`Each of the Relevant Factors Weighs in Favor of the Board
`Granting the Motion for Joinder ................................................. 4
`1.
`Joinder with the Medtronic IPR Is Appropriate ............... 4
`2.
`Petitioners Do Not Propose New Grounds ....................... 5
`3.
`Joinder Will Not Negatively Impact the Medtronic
`IPR Trial Schedule ............................................................ 6
`Procedures to Simplify Briefing and Discovery ............... 7
`4.
`IV. The General Plastic Factors Do Not Favor Denial ............................... 8
`1.
`
`“whether the same petitioner previously filed a
`petition directed to the same claims of the same
`patent” ............................................................................ 10
`
`2.
`
`3.
`
`4.
`
`“whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have known of it” .............................. 12
`“whether at the time of filing the second petition the
`petitioner already received the patent owner’s
`preliminary response to the first petition or received
`the Board’s decision on whether to institute review in
`the first petition”............................................................. 12
`“the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the
`second petition and the filing of the second petition”
`
`i
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`
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`and “whether the petitioner provides adequate
`explanation for the time elapsed between the filings
`of multiple petitions directed to the same claims of
`the same patent” ............................................................. 13
`“the finite resources of the Board” ................................ 14
`
`5.
`6.
`
`“the requirement under 35 U.S.C. § 316(a)(11) to
`issue a final determination not later than 1 year after
`the date on which the Director notices institution of
`review” ........................................................................... 15
`CONCLUSION ................................................................................... 15
`
`V.
`
`ii
`
`
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Apple Inc. v. INVT SPE LLC,
`IPR2019-00958, Paper No. 9 (PTAB May 30, 2019) .................................. 10, 11
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00854, Paper No. 9 (PTAB Oct. 28, 2020) ......................................... 10
`Celltrion, Inc. v. Genentech, Inc.,
`IPR2018-01019, Paper No. 11 (PTAB Oct. 30, 2018) ....................................... 10
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper No. 17 (PTAB July 29, 2013) ......................................... 4
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper No. 19 (PTAB Sept. 6, 2017) .................................passim
`HTC v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper No. 12 (PTAB June 1, 2017) .......................................... 1
`LG v. Memory Integrity, LLC.,
`IPR2015-01353, Paper No. 11 (PTAB Oct. 5, 2015) ............................... 4, 5, 6, 8
`Noven Pharmaceuticals, Inc. v. Novartis AG,
`IPR2014-00550, Paper No. 38 (PTAB Apr. 10, 2015) ........................................ 7
`Par Pharmaceutical, Inc. v. Novartis AG,
`IPR2016-01023, Paper No. 20 (PTAB Oct. 27, 2016) ......................................... 5
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper No. 12 (PTAB Aug. 24, 2016) ........................................ 4
`Rules, Statutes and Regulations
`35 U.S.C. § 315(b) ............................................................................................... 2, 14
`35 U.S.C. § 315(c) ................................................................................................. 1, 3
`
`iii
`
`
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`35 U.S.C. § 316(a)(11) ............................................................................................. 15
`37 C.F.R. § 42.1(b) ................................................................................................ 1, 5
`37 C.F.R. §§ 42.22 ..................................................................................................... 1
`37 C.F.R. § 42.122(b) ...................................................................................... 1, 9, 14
`
`iv
`
`
`
`I.
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Edwards Lifesciences Corporation and Edwards Lifesciences LLC
`
`(“Petitioners” or “Edwards”) respectfully submit this Motion for Joinder,
`
`concurrently with a Petition (“Edwards’ Second Petition”) for Inter Partes Review
`
`of U.S. Patent No. 9,125,739 (“the ’739 patent”) filed herewith.
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Edwards
`
`requests institution of an inter partes review and joinder with Medtronic Corevalve
`
`LLC v. Colibri Heart Valve LLC, IPR2020-01454 (“the Medtronic IPR”), which the
`
`Board instituted on March 10, 2021, concerning the same claims 1-5 of the ’739
`
`patent at issue in Edwards’ Second Petition. This request is being submitted within
`
`the time frame set forth in 37 C.F.R. § 42.122(b).
`
`Edwards submits that this request for joinder is consistent with the policy
`
`surrounding inter partes reviews, as it is the most expedient way to “to secure the
`
`just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R.
`
`§ 42.1(b); see also HTC v. Parthenon Unified Memory Architecture LLC., IPR2017-
`
`00512, Paper No. 12 at 5-6 (PTAB June 1, 2017). Edwards’ Second Petition and the
`
`Medtronic IPR petition are substantially identical; they contain the same grounds
`
`(based on the same prior art combinations and supporting evidence) against the same
`
`claims. (See Ex. 1025, illustrating changes between Edwards’ Second Petition and
`
`the Medtronic IPR petition). Further, upon joining the Medtronic IPR, Edwards will
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`1
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`
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`act as an “understudy” and will not assume an active role unless Medtronic
`
`CoreValve LLC (“Medtronic”) ceases
`
`to participate
`
`in
`
`the proceedings.
`
`Accordingly, the proposed joinder will neither unduly complicate the Medtronic IPR
`
`nor delay its schedule. As such, the joinder will promote judicial efficiency in
`
`determining the patentability of the ’739 patent without prejudice to Patent Owner.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`The ’739 patent is at issue in an infringement action against Medtronic
`
`1.
`
`in the Central District of California, Case No. 8:20-cv-00847.
`
`2.
`
`There is no past or current litigation between Edwards and Patent
`
`Owner involving the ’739 Patent, and, in fact, Patent Owner has “commit[ed] not to
`
`assert the ’739 patent against any of [Edwards’] current products (whether
`
`commercialized or in clinical trials).” See IPR2020-1649. Paper No. 6 at 24.
`
`Accordingly, Edwards is not subject to any time bar under 35 U.S.C. § 315(b).
`
`3.
`
`On September 2, 2020, Medtronic filed the Medtronic IPR (IPR2020-
`
`01454), which requested cancellation of claims 1-5 of the ʼ739 patent.
`
`4.
`
`On September 18, 2020, Edwards filed its first petition on claims 1-5
`
`of the ’739 patent. See IPR2020-01649 (“Edwards’ First Petition”), Paper No. 2.
`
`5.
`
`On March 10, 2021, the Board instituted the Medtronic IPR. Medtronic
`
`IPR, Paper No. 11.
`
`2
`
`
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`On March 26, 2021, the Board instituted Edwards’ First Petition.
`
`6.
`
`IPR2020-01649, Paper No. 8.
`
`7.
`
`The Scheduling Orders entered by the same Board panel for the
`
`Medtronic IPR and Edwards’ First Petition are substantially similar, with both
`
`schedules culminating in December 8, 2021 oral arguments (if requested) before the
`
`same Board panel. Compare Medtronic IPR, Paper No. 12 with Edwards’ First
`
`Petition, Paper No. 9.
`
`8.
`
`Edwards’ Second Petition, which has been filed for joinder purposes
`
`and substantively mirrors the Medtronic IPR petition, is Edwards second petition
`
`concerning claims 1-5 of the ’739 patent. Edwards’ Second Petition and the
`
`Medtronic IPR petition contain the same grounds (based on the same prior art
`
`combinations and supporting evidence) against the same claims.
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`A.
`Legal Standard
`Pursuant to 35 U.S.C. § 315(c), the Board may grant a motion for joining an
`
`inter partes review petition with another inter partes review proceeding. The Board,
`
`in determining whether to exercise its discretion to grant joinder, considers whether
`
`the joinder motion: (1) sets forth the reasons why joinder is appropriate; (2) identifies
`
`any new grounds of unpatentability asserted in the petition; (3) explains what impact
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`(if any) joinder would have on the trial schedule for the existing review; and
`
`3
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`
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`(4) addresses specifically how briefing and discovery may be simplified. See
`
`Frequently
`
`Asked
`
`Question
`
`(“FAQ”)
`
`H5,
`
`available
`
`at
`
`https://www.uspto.gov/patents/ptab/ptab-e2e-frequently-asked-questions
`
`(last
`
`visited Apr. 1, 2021); see also Dell, Inc. v. Network-1 Security Solutions, Inc.,
`
`IPR2013-00385, Paper No. 17 at 3 (PTAB July 29, 2013).
`
`B.
`
`Each of the Relevant Factors Weighs in Favor of the Board
`Granting the Motion for Joinder
`All four factors weigh in favor of granting Petitioners’ motion for joinder.
`
`Edwards’ Second Petition is substantively identical to the Medtronic IPR petition.
`
`Edwards does not present any new grounds of unpatentability. Additionally, as all
`
`issues are substantively identical and Edwards will act as an “understudy,” joinder
`
`will have minimal or no impact on the pending schedule of the Medtronic IPR. See
`
`LG v. Memory Integrity, LLC., IPR2015-01353, Paper No. 11 at 6 (PTAB Oct. 5,
`
`2015) (granting motion for joinder where petitioners requested an “understudy”
`
`role). Moreover, the briefing and discovery will be simplified by resolving all issues
`
`presented in Edwards’ Second Petition and the Medtronic IPR in a single
`
`proceeding. Accordingly, joinder is appropriate.
`
`Joinder with the Medtronic IPR Is Appropriate
`1.
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper No.
`
`4
`
`
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`12 at 9 (PTAB Aug. 24, 2016) (internal quotations and citations omitted). Here,
`
`joinder with the Medtronic IPR is appropriate because Edwards’ Second Petition
`
`introduces identical arguments and the same grounds raised in the existing
`
`Medtronic IPR proceeding (i.e., it challenges the same claims of the same patent,
`
`relies on the same expert declaration, and is based on the same grounds and
`
`combinations of prior art submitted in the Medtronic IPR petition). Because these
`
`proceedings are substantively identical and Edwards timely moved for joinder, good
`
`cause exists for joining this proceeding with the Medtronic IPR so that the Board,
`
`consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and
`
`inexpensive resolution” of Edwards’ Second Petition and the Medtronic IPR in a
`
`single proceeding.
`
`Petitioners Do Not Propose New Grounds
`2.
`Edwards’ Second Petition is substantively identical to the petition in the
`
`Medtronic IPR and does not propose any new grounds of unpatentability. Joinder
`
`is appropriate. See LG, IPR2015-01353, Paper No. 11 at 6 (granting institution of
`
`IPR and motion for joinder where petitioners relied “on the same prior art, same
`
`arguments, and same evidence, including the same expert and a substantively
`
`identical declaration”); see also Par Pharmaceutical, Inc. v. Novartis AG,
`
`IPR2016-01023, Paper No. 20 at 14 (PTAB Oct. 27, 2016) (granting motion for
`
`joinder where petitioners “do not assert any new ground of unpatentability that is
`
`5
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`
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`not already being considered in [an IPR proceeding], rely on the same arguments
`
`and evidence, and do not require any modification to the existing schedule”).
`
`3.
`
`Joinder Will Not Negatively Impact the Medtronic IPR
`Trial Schedule
`Joinder will have minimal impact, if any, on the Medtronic IPR trial schedule
`
`because Edwards’ Second Petition presents no new issues or grounds of
`
`unpatentability. See LG, IPR2015-01353, Paper No. 11 at 6 (granting IPR and
`
`motion for joinder where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR]”).
`
`Further, Petitioners explicitly consent to the existing trial schedule. There are no new
`
`issues for the Board to address, and Patent Owner will not be required to present any
`
`additional responses or arguments.
`
`The Patent Owner’s Response will also not be negatively impacted because
`
`the issues presented in Edwards’ Second Petition are identical to the issues presented
`
`in the Medtronic IPR petition. Patent Owner will not be required to provide any
`
`additional analysis or arguments beyond what it will already provide in responding
`
`to the petition in the Medtronic IPR. Also, because Edwards’ Second Petition relies
`
`on the same expert and the same declaration, only a single deposition is needed for
`
`the proposed joined proceeding.
`
`Accordingly, joinder with the Medtronic IPR does not unduly burden or
`
`negatively impact the trial schedule.
`
`6
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`
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`Procedures to Simplify Briefing and Discovery
`4.
`Edwards explicitly agrees to take an “understudy” role, which will simplify
`
`briefing and discovery. Specifically, Edwards explicitly agrees, upon joining the
`
`Medtronic IPR, that the following conditions, as previously approved by the Board
`
`in similar circumstances, shall apply so long as the current Petitioner in the
`
`Medtronic IPR continues to remain an active party:
`
`a)
`
`Edwards shall not make any substantive filings, unless a filing
`
`concerns termination and settlement, or issues solely involving
`
`Edwards;
`
`b)
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`Edwards shall not present any argument or make any
`
`presentation at the oral hearing on issues not solely involving Edwards;
`
`c)
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`Edwards shall not seek to cross-examine or defend the cross-
`
`examination of any witness, unless the topic of cross-examination
`
`concerns issues solely involving Edwards; and
`
`d)
`
`Edwards shall not seek discovery from Patent Owner on
`
`issues not solely involving Edwards.
`
`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at
`
`5 (PTAB Apr. 10, 2015). Unless and until the current Petitioner ceases to actively
`
`participate in the Medtronic IPR, Edwards will not assume an active role therein.
`
`7
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`
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`Thus, by Edwards accepting an “understudy” role, Patent Owner and the current
`
`Petitioner can comply with the existing trial schedule without needing any
`
`duplicative efforts by the Board or the Patent Owner. These steps will minimize any
`
`potential complications or delay that may otherwise result by joinder. See LG,
`
`IPR2015-01353, Paper No. 11 at 6-7 (granting IPR and motion for joinder because
`
`“joinder would increase efficiency by eliminating duplicative filings and discovery,
`
`and would reduce costs and burdens on the parties as well as the Board” where
`
`petitioners agreed to an “understudy” role). Edwards is further willing to agree to
`
`any other reasonable conditions the Board deems necessary before joining Edwards
`
`to the Medtronic IPR.
`
`IV. The General Plastic Factors Do Not Favor Denial
`The General Plastic factors likewise do not favor denial of Edwards’ joinder
`
`motion.1 See General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357, Paper No. 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i).
`
`Edwards’ Second Petition does not present the kind of serial attack that General
`
`Plastic was intended to address. Id. at 17. Edwards’ First Petition and the Medtronic
`
`1
`
`To be clear, “[t]he General Plastic factors, alone or in combination, are not
`
`dispositive, but part of a balanced assessment of all relevant circumstances in the
`
`case, including the merits.” Consolidated Trial Practice Guide at 58 (Nov. 2019).
`
`8
`
`
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`IPR were filed less than three weeks apart, and both were instituted by the same
`
`panel and provided nearly identical trial schedules. Edwards has never been in a
`
`position to gain a tactical advantage from Patent Owner’s Preliminary Responses or
`
`the Board’s institution of these two IPRs, and gains none here in filing a copycat
`
`petition to the Medtronic IPR that likewise did not have the benefit of any
`
`Preliminary Response or institution decision when it was filed. Edwards instead
`
`aimed to ensure efficiencies at the outset by not duplicating grounds in Edwards’
`
`First Petition, see IPR2020-01649, Paper No. 2 at 75 (“Medtronic’s petition does not
`
`make these arguments and relies almost entirely on different art.”), while
`
`conforming with the spirit of the joinder rules, which is to wait until after institution
`
`of another party’s petition before seeking to join the grounds set forth therein. See
`
`37 C.F.R. § 42.122(b) (“Any request for joinder must be filed … no later than one
`
`month after the institution date of any inter partes review for which joinder is
`
`requested.” (emphasis added)). Moreover, because Edwards is not subject to any
`
`litigation involving the ’739 Patent, Edwards is not skirting a statutory time bar in
`
`filing Edwards’ Second Petition. And, by agreeing to proceed in an understudy role
`
`without disrupting the schedule in the Medtronic IPR, Edwards is not expanding the
`
`scope or unduly burdening the parties in the ongoing Medtronic IPR proceeding.
`
`Thus, the facts here are distinguishable from cases that have denied joinder even
`
`where the petitioner has substantively copied a previously instituted petition and
`
`9
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`
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`agreed to assume an understudy role. See, e.g., Apple Inc. v. Uniloc 2017 LLC,
`
`IPR2020-00854, Paper No. 9, 5-12 (PTAB Oct. 28, 2020) (precedential) (denying
`
`joinder of Apple’s second-filed petition to an instituted Microsoft petition where
`
`Apple’s first petition was denied, Apple was beyond the one-year statutory bar, and
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`Patent Owner argued that Apple was using the joinder procedure as an “end run
`
`around its failed petition.”); but see Celltrion, Inc. v. Genentech, Inc., IPR2018-
`
`01019, Paper No. 11, 9-10 (PTAB Oct. 30, 2018) (noting that there is no per se rule
`
`against the filing of follow-on petitions on the same patent and that Celltrion’s
`
`copycat petition and agreement to proceed in an understudy role “effectively
`
`obviates any concerns of serial harassment and unnecessary expenditure of
`
`resources”); Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper No. 9, 11-12
`
`(PTAB May 30, 2019) (granting Apple’s joinder motion after consideration of
`
`General Plastic where Apple and HTC each filed separate, independent petitions a
`
`day apart, Apple’s petition was denied and HTC’s petition was instituted, and Apple
`
`timely sought joinder to HTC’s petition with a copycat petition and agreed to
`
`proceed in a limited understudy role). A factor-by-factor General Plastic analysis
`
`is set forth below.
`
`1.
`
`“whether the same petitioner previously filed a petition
`directed to the same claims of the same patent”
`The concern identified in General Plastic is that “[m]ultiple, staggered
`
`petitions challenging the same patent and same claims raise the potential for abuse.”
`10
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`
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`General Plastic, Paper No. 19 at 17. Here, although Edwards’ First Petition is
`
`directed at the same claims of the ’739 patent as Edwards’ Second Petition, Edwards’
`
`First Petition was filed only a couple weeks after the Medtronic IPR was filed, and
`
`Edwards’ Second Petition mirrors the Medtronic IPR petition. Edwards specifically
`
`avoided presenting identical grounds to those set forth in the Medtronic IPR,
`
`intending instead to rely on the joinder provisions if the Medtronic IPR was
`
`instituted. See Apple v. INVT, Paper No. 9 at 12 (recognizing that in filing its second
`
`petition, Apple appropriately “avail[ed] itself of the joinder provision provided by
`
`statute and regulation without expanding the scope or unduly burdening the parties
`
`of the ongoing proceeding.”). Thus, Edwards’ First and Second Petitions cannot be
`
`viewed as the “multiple, staggered” petitions that raised concerns in General Plastic,
`
`but should instead be viewed as parallel petitions where neither provides a tactical
`
`benefit to the other. This is highlighted by the fact that the same Board panel
`
`instituted both the Medtronic IPR and Edwards’ First Petition and assigned nearly
`
`identical schedules to their proceedings. Thus, although Factor 1, taken literally, is
`
`met by Edwards’ Second Petition because it challenges the same claims of the same
`
`patent in Edwards’ First Petition, the Edwards Petition is distinct from the “multiple,
`
`staggered” petitions of concern in General Plastic, which renders Factor 1 neutral
`
`to the analysis.
`
`11
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`
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`2.
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`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`“whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it”
`There is no dispute that at least as early as the filing date of Edwards’ First
`
`Petition, Edwards was aware of the prior art asserted in Edwards’ Second Petition.
`
`This is because Edwards’ First Petition specifically acknowledges the Medtronic
`
`IPR petition that Edwards’ Second Petition mirrors, and, in arguing that the Board
`
`should not apply its discretionary authority under § 325(d) in denying Edwards’ First
`
`Petition, makes clear that the grounds set forth in Edwards’ First Petition are distinct
`
`from those set forth in the Medtronic IPR petition. See Edwards’ First Petition at
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`75. It cannot be, however, that withholding grounds Edwards knew it could
`
`permissibly avail itself through the joinder provisions upon institution of the
`
`Medtronic IPR petition constitutes the type of knowledge of the prior art that was of
`
`concern in General Plastic. Otherwise, a petitioner is left risking a discretionary
`
`denial under § 325(d) for raising duplicative grounds at the outset rather than more
`
`efficiently waiting for institution before filing the duplicative grounds in conjunction
`
`with a joinder motion. Accordingly, Factor 2 is neutral to the analysis of the present
`
`facts.
`
`3.
`
`“whether at the time of filing the second petition the petitioner
`already received the patent owner’s preliminary response to
`the first petition or received the Board’s decision on whether
`to institute review in the first petition”
`
`12
`
`
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`Edwards’ Second Petition is a copycat petition of the Medtronic IPR petition.
`
`Because Edwards raises no new arguments or alters the analysis of the Medtronic
`
`IPR petition in any way, Factor 3 is best analyzed as of the time of filing the
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`Medtronic IPR petition, not the time of filing Edwards’ Second Petition. Edwards
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`does not dispute that at the time of filing Edwards’ Second Petition, it had received
`
`the Preliminary Responses and institution decisions for both Edwards’ First Petition
`
`and the Medtronic IPR. But at the time of filing the Medtronic IPR petition, which
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`Edwards’ Second Petition mirrors, Medtronic did not have the benefit of any
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`preliminary response or institution decision. Accordingly, Edwards had no tactical
`
`advantage in the formulation of the grounds set forth in its Second Petition.
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`Likewise, Edwards’ First Petition, which has been instituted, was filed prior to any
`
`preliminary response or institution decision. Edwards therefore is not gaining the
`
`same advantage that a petitioner whose first petition was denied may otherwise gain.
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`Notwithstanding the Medtronic IPR, Edwards’ First Petition will still proceed
`
`against the Patent Owner. Thus, Factor 3 favors institution.
`
`4.
`
`“the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition” and “whether
`the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the
`same claims of the same patent”
`Here too the principles of joinder need to be accounted for in evaluating
`
`Factors 4 and 5. The six months between the filing of Edwards’ First Petition and
`13
`
`
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`Second Petition is due to the copycat nature of the Second Petition. That is, if
`
`Medtronic’s petition had been denied, Edwards would not be filing its Second
`
`Petition. Instead, Edwards’ Second Petition properly invokes the joinder provisions
`
`provided by statute and regulation that allow for the filing of a joinder motion “no
`
`later than one month after the institution date of any inter partes review for which
`
`joinder is requested.” § 42.122(b). Moreover, Edwards’ Second Petition is not an
`
`“end-run” around the § 315(b) bar since the Patent Owner has not served Edwards
`
`with a complaint for patent infringement of the patent at issue and has instead
`
`represented that it never will do so with respect to Edwards’ current products. Thus,
`
`with no § 315(b) bar constraints and by properly following the joinder provisions,
`
`these two factors favor institution of Edwards’ Second Petition and joinder to the
`
`Medtronic IPR.
`
`5.
`“the finite resources of the Board”
`Edwards’ Second Petition mirrors the Medtronic IPR petition. It relies on the
`
`same grounds, the same evidence, and the same expert. Edwards wishes only to
`
`preserve the grounds asserted in the Medtronic IPR should Medtronic cease to
`
`participate in the proceeding, and has committed to participating as an understudy
`
`with a completely passive role absent Medtronic’s withdrawal. As such, Edwards’
`
`Second Petition will not expand the scope or unduly burden the parties or the Board
`
`in the ongoing Medtronic IPR proceeding. And, even if Medtronic ceases to
`
`14
`
`
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`participate in the Medtronic IPR proceeding, Edwards’ First Petition will continue
`
`to proceed on the same trial schedule before the same Board panel, and thus
`
`Medtronic’s withdrawal would have limited impact on the resources of the Board
`
`devoted to the review of the ’739 patent. Factor 6 thus favors institution.
`
`6.
`
`“the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review”
`Finally, Edwards’ joinder to the Medtronic IPR will not delay its adjudication.
`
`Again, Edwards’ Second Petition is substantively identical to the Medtronic IPR
`
`petition. It contains the same grounds based on the same evidence, including
`
`reliance on the same expert. Edwards has agreed to participate as an understudy
`
`with a completely passive role, and seeks no alteration to the schedule in the
`
`Medtronic IPR, which substantially mirrors the schedule in place for Edwards’ First
`
`Petition. Thus, nothing will impede the prompt resolution of the Medtronic IPR if
`
`Edwards’ Second Petition is joined to it. Factor 7 therefore favors institution.
`
`In short, five of the seven General Plastic factors favor institution, while the
`
`remaining two factors are neutral. Edwards’ Second Petition does not warrant
`
`discretionary denial under § 314(a).
`
`V.
`
`CONCLUSION
`For the reasons set forth above, Edwards respectfully requests that the Board
`
`institute Edwards’ Second Petition and grant joinder with the Medtronic IPR.
`
`15
`
`
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`
`Respectfully submitted,
`
`/s/ Brian P. Egan____________
`
`Brian P. Egan (Reg. No. 54,866)
`Morris, Nichols, Arsht & Tunnell LLP
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899-1347
`Email: began@mnat.com
`Telephone: 302-351-9454
`Facsimile: 302-498-6216
`
`Gregory S. Cordrey (Reg. No. 44,089)
`Jeffer Mangels Butler & Mitchell, LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614
`Email: gcordrey@jmbm.com
`Telephone: 949-623-7200
`Facsimile: 949-623-7201
`
`Attorneys for Petitioners
`Edwards Lifesciences Corporation and
`Edwards Lifesciences LLC
`
`Date: April 6, 2021
`
`16
`
`
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
`
`42.105(b) on the Patent Owner by Fedex of a copy of this Motion for Joinder at the
`
`correspondence address of record for the ’739 patent:
`
`Fox Rothschild LLP
`Princeton Pike Corporate Center
`997 Lenox Drive Bldg. #3
`Lawrenceville, NJ 08648
`Copies of this Motion were also served by electronic mail on counsel-of-
`
`record in Medtronic CoreValve LLC v. Colibri Heart Valve LLC, IPR2020-01454:
`
`Sarah E. Spires
`Paul J. Skiermont
`Skiermont Derby LLP
`1601 Elm St., Ste. 4400
`Dallas, TX 75201
`sspires@skiermontderby.com
`pskiermont@skiermontderby.com
`
`James L. Davis, Jr.
`Scott A. McKeown
`Cassandra Roth
`Ropes & Gray LLP
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`james.l.davis@ropesgray.com
`scott.mckeown@ropesgray.com
`Cassandra.roth@ropesgray.com
`Medtronic-Colibri-IPR-Service@ropesgray.com
`
`17
`
`
`
`Edwards’ Motion for
`Joinder with Case IPR2020-01454
`
`Dated: April 6, 2021
`
`Respectfully submitted,
`
`By: /s/ Brian P. Egan
`____________
`Brian P. Egan (Reg. No. 54,866)
`Counsel for Petitioners
`
`18
`
`
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