UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`US ENDODONTICS, LLC,
`Petitioner
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner
`
`CASE IPR2015-00632
`Patent 8,727,773 B2
`
`PETITIONER'S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
`
`GOLD STANDARD EXHIBIT 2013
`US ENDODONTICS v. GOLD STANDARD
`CASE PGR2015-00019
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`US ENDODONTICS, LLC,
`Petitioner
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner
`
`CASE IPR2015-00632
`Patent 8,727,773 B2
`
`PETITIONER'S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
`
`GOLD STANDARD EXHIBIT 2013
`US ENDODONTICS v. GOLD STANDARD
`CASE PGR2015-00019
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
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`I. BACKGROUND ................................................................................................. 1
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`I. BACKGROUND ............................................................................................... ..1
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`II. SUPPLEMENTAL INFORMATION TO BE SUBMITTED ............................ 2
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`II. SUPPLEMENTAL INFORMATION TO BE SUBMITTED .......................... ..2
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`III. ARGUMENT ....................................................................................................... 2
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`III. ARGUMENT ..................................................................................................... ..2
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`IV. CONCLUSION .................................................................................................... 7
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`IV. CONCLUSION .................................................................................................. ..7
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`i
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`Cases
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`
`
`TABLE OF AUTHORITIES
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`Microsoft Corp. v. Multi-Tech Sys., Inc.,
` 357 F.3d 1340 (Fed. Cir. 2004) .............................................................................. 5
`Pac. Mkt. Int’l, LLC v. Ignite USA, LLC,
` IPR2014-00561, Paper 23 (PTAB Dec. 2, 2014) .......................................... 3, 5, 6
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
` IPR2013-00369, Paper 37 (PTAB Feb. 5, 2014) ........................................... 3, 5, 6
`Taiwan Semiconductor Mfg. Co., Ltd. v. DSS Tech. Mgmt., Inc.,
` IPR2014-01030, Paper 11 (PTAB Feb. 3, 2015) ........................................... 2, 5, 6
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
` 503 F.3d 1295 (Fed. Cir. 2007) .............................................................................. 5
`
`Regulations
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`37 C.F.R. § 42.123(a) ....................................................................................... passim
`
`ii
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`Pursuant to 37 C.F.R. § 42.123(a), Petitioner US Endodontics, LLC (“US
`
`Endo”) submits the following motion to submit supplemental information in
`
`IPR2015-00632. Specifically, US Endo seeks to submit the prosecution history
`
`of Patent Owner’s subsequently issued U.S. Patent No. 8,876,991 (“the ’991
`
`patent”), which includes statements that are relevant to the claims for which the
`
`trial has been instituted. US Endo requested authorization from the Board to file
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`this motion on August 26, 2015, which the Board granted on August 28, 2015.
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`Patent Owner stated that it would not oppose the filing of this motion.
`
`I.
`
`BACKGROUND
`On January 30, 2015, US Endo filed a petition for inter partes review of
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`claims 1-17 of U.S. Patent No. 8,727,773 (“the ’773 patent”), owned by Gold
`
`Standard Instruments, LLC (“Patent Owner” or “GSI”). In the petition, US
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`Endo explained that, if the “wherein” clause of claims 1 and 13 is considered to
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`be a claim limitation,1 it can be met “by a heat-treated file with an austenite finish
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`temperature above mouth temperature.” Paper 2 at 7-8. This understanding was
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`1
`Specifically, claims 1 and 13 of the ’773 patent claim a method of
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`manufacturing an endodontic instrument “wherein the heat treated shank has an
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`angle greater than 10 degrees of permanent deformation after torque at 45
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`[°/degrees] of flexion when tested in accordance with ISO Standard 3630-1.”
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`1
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`supported by the applicant’s statements in the prosecution histories of both the
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`’773 patent and other related patents, which admitted that a shank with a
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`transformation (austenite finish (“Af”)) temperature above body temperature would
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`satisfy the limitations of the “wherein” clause. Id. at 13-14. Based, in part, on this
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`understanding, the Board granted US Endo’s petition and instituted a trial on
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`Grounds 5, 6, 7, and 11 on August 5, 2015. Paper 29 at 19, 30 and 32.
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`II.
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`SUPPLEMENTAL INFORMATION TO BE SUBMITTED
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`The present motion seeks to submit the prosecution history of the ’991
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`patent, which includes statements that are relevant to the claims for which trial
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`has been instituted. The application resulting in the ’991 patent is a continuation
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`of the application that led to the ’773 patent. GSI is the owner of both of these
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`related patents. The supplemental information requested to be entered is included
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`as Exhibit 1030, submitted herewith.
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`III. ARGUMENT
`US Endo’s motion to submit supplemental information should be granted
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`because it satisfies the requirements of 37 C.F.R. § 42.123(a), and because the
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`supplemental information does not (i) change the grounds of unpatentability upon
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`which trial has been instituted, (ii) change the evidence initially presented, or (iii)
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`unfairly prejudice GSI. See, e.g., Taiwan Semiconductor Mfg. Co., Ltd. v. DSS
`
`Tech. Mgmt., Inc., IPR2014-01030, Paper 11 at 3 (PTAB Feb. 3, 2015); Palo Alto
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`2
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`
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`
`
`
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`
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`Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 37 at 3, 5 (PTAB
`
`Feb. 5, 2014); Pac. Mkt. Int’l, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 23
`
`at 4-5 (PTAB Dec. 2, 2014).
`
`Under 37 C.F. R. § 42.123(a), a motion to submit supplemental information
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`must show that: (1) the party seeking to submit supplemental information
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`requested authorization to file the motion within one month of the date the trial
`
`was instituted, and (2) the supplemental information is relevant to a claim for
`
`which the trial has been instituted. US Endo’s motion meets both of these
`
`requirements.
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`US Endo timely requested the Board’s authorization to file this motion on
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`August 26, 2015, less than one month after the institution of the trial. The Board
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`granted this authorization on August 28, 2015. As such, the first requirement of 37
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`C.F.R. § 42.123(a) has been satisfied.
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`Additionally, the second requirement of 37 C.F.R. § 42.123(a) is met
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`because the prosecution history of the ’991 patent includes statements that further
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`support the understanding that the “wherein” clauses of claims 1 and 13 can be
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`satisfied by heat-treating the file shank to alter the transformation temperature to
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`above body temperature. See, e.g., Ex. 1030 at 126-28, ¶¶ 4-6 (Inventor
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`declaration relying on differential scanning calorimetry (“DSC”) testing results that
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`show that the shanks of endodontic instruments heat-treated in accordance with his
`
`3
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`
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`
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`alleged invention had a transformation (Af) temperature of 37ºC or greater to argue
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`that this means that the files were in the martensite phase at body temperature and,
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`therefore, “will all have an angle greater than 10 degrees of permanent deformation
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`after torque at 45º of flexion when tested in accordance with ISO Standard 3630-1
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`as recited in pending independent claims 1, 6 and 11 of [his] patent application.”).
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`Such statements are directly relevant to all claims of the ’773 patent, as
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`demonstrated by the Board’s decision to institute trial on Grounds 5, 6, 7, and 11.
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`For example, in determining that the Kuhn reference of Grounds 5, 6, and 7
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`discloses the “wherein” clause of the claims, the Board cited the expert testimony
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`of Dr. Goldberg, stating that Kuhn discloses heat-treating a superelastic, nickel-
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`titanium file to increase the transformation (Af) temperature from 35 ºC to 40 ºC
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`(above body temperature) and that such increase, as represented by the inventor, is
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`the desired result of the invention of the ’773 patent. Paper 29 at 19. Similarly, in
`
`instituting trial on Ground 11 (obviousness of all the claims over the Matsutani,
`
`Pelton, and ISO 3630-1 references), the Board again credited Dr. Goldberg’s
`
`explanation that the “wherein” clause is satisfied because Matsutani and Pelton
`
`together disclose heat-treating shanks such that the transformation (Af) temperature
`
`is altered to be above body temperature. Id. at 30. Accordingly, sections of the
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`prosecution history of the ’991 patent that further support this understanding are
`
`directly relevant to the claims for which trial was instituted, so the proffered
`
`4
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`supplemental information meets the second requirement of 37 C.F.R. § 42.123(a).
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`See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1307
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`(Fed. Cir. 2007) (finding disclaimer based on patentee’s statements made during
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`the prosecution of a related application after the patent in question issued);
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`Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349-50 (Fed. Cir. 2004)
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`(holding statements by patentee regarding scope of the invention made during
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`prosecution of sibling applications having a common disclosure with earlier-issued
`
`patent relevant to claim construction of the patent).
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`In addition to meeting the two requirements of § 42.123(a), the submission
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`of the ’991 prosecution history would not raise any new ground of unpatentability
`
`or change the evidence previously presented. See, e.g., Taiwan Semiconductor
`
`Mfg. Co., Paper 11 at 3; Palo Alto Networks, Inc., Paper 37 at 3; Pac. Mkt. Int’l,
`
`Paper 23 at 4. As explained supra, the Board already instituted trial on Grounds 5,
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`6, 7, and 11, based, in part, on the understanding that the “wherein” clause of the
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`’773 patent is met by a heat-treated shank with a transformation temperature
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`“altered to be above body temperature.” Paper 29 at 30. This understanding of the
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`“wherein” clause is based on the applicant’s statements during the prosecution of
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`the ’773 patent as well as its statements during the prosecution of related patents
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`other than the ’991 patent. Paper 2 at 13-14. Supplementing this understanding
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`with further applicant statements from the prosecution history of the ’991 patent
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`5
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`does not alter the grounds upon which trial was instituted, add new grounds of
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`unpatentability, or change the previously presented evidence, but, rather, merely
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`adds a supplemental reference that further confirms the statements made by the
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`applicant in the previously cited applications. Taiwan Semiconductor Mfg. Co.,
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`Paper 11 at 3; Palo Alto Networks, Inc., Paper 37 at 3; Pac. Mkt. Int’l, Paper 23 at
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`4.
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`Lastly, the addition of this supplemental information does not unfairly
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`prejudice GSI. The president of GSI, Neill Luebke, is the sole named inventor of
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`the ’773 and ’991 patents. Paper 4. Both GSI and its president were, of course,
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`aware of the arguments made during prosecution of the ’991 patent. Indeed, the
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`interpretation of the “wherein” clause according to the ’991 patent’s prosecution
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`history is already supported by the prosecution history of the ’773 patent itself, as
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`well as by the prosecution histories of other patents within the same patent family.
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`Paper 2 at 13-14. As such, GSI is well aware of US Endo’s position regarding the
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`meaning of the “wherein” clause. Palo Alto Networks, Inc., Paper 37 at 5; Pac.
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`Mkt. Int’l, Paper 23 at 5. Finally, because this supplemental information is being
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`submitted so early in the trial process, GSI has a full opportunity to attempt to
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`refute it, including within its full response. Id. Because the requirements of 37
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`C.F.R. § 42.123(a) are satisfied and the proffered supplemental information merely
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`further confirms the previously submitted evidence without adding new grounds of
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`6
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`unpatentability or unfairly prejudicing GSI, US Endo’s motion to submit
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`supplemental information should be granted.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner US Endo seeks entry of the prosecution
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`history of the ’991 patent, submitted as Exhibit 1030 herewith.
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`Respectfully submitted,
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`
`
`/Jeffrey S. Ginsberg /
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`Lead counsel for Petitioner US Endodontics, LLC
`
`Matthew G. Berkowitz (Reg. No. 57,215)
`Eric T. Schreiber (Reg. No. 58,771)
`Back-up counsel for Petitioner US Endodontics,
`LLC
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
`
`Dated: August 28, 2015
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`7
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`Certificate of Service
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`
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 28,
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`2015, the foregoing Petitioner’s Motion to Submit Supplemental Information
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`Pursuant to 37 C.F.R. § 42.123(a) was served via electronic mail on the following
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`counsel of record for the Patent Owner:
`
`Joseph A. Hynds
`R. Elizabeth Brenner-Leifer
`Steven Lieberman
`Jason M. Nolan
`Derek F. Dahlgren
`jhynds@rothwellfigg.com
`ebrenner@rothwellfigg.com
`slieberman@rothwellfigg.com
`jnolan@rothwellfigg.com
`ddahlgren@rothwellfigg.com
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`
`
`/Eric T. Schreiber/
`Eric T. Schreiber (Reg. No. 58,771)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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