Paper No. 4
`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
`
`PETITIONERS’ NOTICE
`REGARDING MULTIPLE PETITIONS
`
`
`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
`
`PETITIONERS’ NOTICE
`REGARDING MULTIPLE PETITIONS
`
`
`
`Edwards’ Notice Regarding
`Multiple Petitions
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ........................................................................................... 1
`I.
`RANKING ....................................................................................................... 2
`II.
`III. DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE
`MATERIAL, AND WHY ALL SHOULD BE INSTITUTED ................................. 2
`IV. CONCLUSION .................................................................................................... 3
`
`i
`
`
`
`I.
`
`INTRODUCTION
`
`Edwards’ Notice Regarding
`Multiple Petitions
`
`Edwards Lifesciences Corporation and Edwards Lifesciences LLC
`
`(“Petitioners” or “Edwards”) are filing herewith their second petition for inter partes
`
`review of Claims 1-5 of U.S. Patent No. 9,125,739 (“Edwards’ Second Petition”).
`
`As set forth in Edwards’ Motion for Joinder filed herewith, Edwards’ Second
`
`Petition substantially mirrors the petition filed in Medtronic Corevalve LLC v.
`
`Colibri Heart Valve LLC, IPR2020-01454 (“the Medtronic IPR”), which the Board
`
`instituted on March 10, 2021. Edwards previously filed IPR2020-01649 challenging
`
`Claims 1-5 of the ’739 Patent (“Edwards’ First Petition”), which was instituted on
`
`March 26, 2021. IPR2020-01649, Paper No. 8.
`
`II.
`
`RANKING
`
`The PTAB Consolidated Trial Practice Guide (“TPG”) seeks notice of
`
`multiple petitions “[t]o aid the Board in determining” why “more than one petition
`
`is necessary.” See TPG at 59-60 (Nov. 2019). Here, both the Medtronic IPR and
`
`Edwards’ First Petition have already been instituted by the same panel. In instituting
`
`Edwards’ First Petition, the Board determined, after fully considering its
`
`discretionary denial authority under §§ 314(a) and 325(d), that the grounds set forth
`
`in Edwards’ First Petition and the Medtronic IPR (which Edwards’ Second Petition
`
`now mirrors) both warrant review. See, e.g., IPR2020-01649, Paper No. 8 at 8-21.
`
`Thus, a ranking of Edwards’ First Petition and Edwards’ Second Petition is
`
`1
`
`
`
`Edwards’ Notice Regarding
`Multiple Petitions
`unnecessary. Nonetheless, because Edwards is seeking to participate only passively
`
`in the Medtronic IPR upon joinder of Edwards’ Second Petition to that proceeding
`
`and is actively participating in Edwards’ First Petition, it wishes the Board to first
`
`consider the merits of Edwards’ First Petition before Edwards’ Second Petition.
`
`III. DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE
`MATERIAL, AND WHY ALL SHOULD BE INSTITUTED
`
`As indicated in Edwards’ Second Petition, it is being submitted concurrently
`
`with a Motion for Joinder. Specifically, Edwards requests institution and joinder of
`
`Edwards’ Second Petition with the Medtronic IPR, which the Board instituted on
`
`March 10, 2021. Edwards’ Second Petition substantially mirrors the petition filed
`
`in the Medtronic IPR; it contains the same grounds (based on the same prior art
`
`combinations and supporting evidence) against the same claims (Claims 1-5). As to
`
`Edwards’ First Petition, it was filed after the Medtronic IPR, and accounted for the
`
`distinctions between it and the Medtronic IPR in setting forth bases why Edwards’
`
`First Petition should be instituted separate and apart from the Medtronic IPR. See
`
`IPR2020-01649, Paper No. 2 at 70-75. The same panel is assigned to the Medtronic
`
`IPR and Edwards’ First Petition, and, having considered the bases set forth by
`
`Edwards to decline the use of its discretionary authority, the Board instituted both
`
`the Medtronic IPR petition and Edwards’ First Petition. See, e.g., id., Paper No. 8
`
`at 8-21. Thus, for the same reasons the Board did not exercise its discretionary
`
`authority to deny Edwards’ First Petition in view of the Medtronic IPR, and for the
`2
`
`
`
`Edwards’ Notice Regarding
`Multiple Petitions
`additional reasons set forth in Edwards’ Motion for Joinder filed herewith, Edwards’
`
`Second Petition should be instituted. The facts here are consistent with the guidance
`
`in the consolidated TPG, which states that “the Board recognizes that there may be
`
`circumstances in which more than one petition may be necessary.” See TPG at 59-
`
`60.
`
`IV. CONCLUSION
`
`For the reasons given above, the Board should institute Edwards’ Second
`
`Petition, which is (1) distinct from Edwards’ already instituted First Petition; and
`
`(2) substantially identical to the Medtronic IPR that has already been instituted and
`
`that Edwards’ Second Petition seeks to join.
`
`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
`
`3
`
`
`
`Edwards’ Notice Regarding
`Multiple Petitions
`
`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
`
`4
`
`
`
`Edwards’ Notice Regarding
`Multiple Petitions
`
`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 Notice of Multiple
`
`Petitions 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 Notice 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
`
`5
`
`
`
`Edwards’ Notice Regarding
`Multiple Petitions
`
`Dated: April 6, 2021
`
`Respectfully submitted,
`
`By: /s/ Brian P. Egan________
`Brian P. Egan (Reg. No. 54,866)
`Counsel for Petitioners
`
`6
`
`
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