Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 8
`May 22, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00444
`Patent 6,915,560 B2
`____________
`
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`DECISION
`Denying Authorization to File a Reply to the
`Patent Owner Preliminary Response
`37 C.F.R. §§ 42.23, 42.108
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 8
`May 22, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00444
`Patent 6,915,560 B2
`____________
`
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`DECISION
`Denying Authorization to File a Reply to the
`Patent Owner Preliminary Response
`37 C.F.R. §§ 42.23, 42.108
`
`
`
`
`
`
`
`
`IPR2017-00444
`Patent 6,915,560 B2
`
`
`INTRODUCTION
`I.
`Boston Scientific Scimed, Inc. (“Patent Owner”) filed a Preliminary
`Response (Paper 7) on April 4, 2017. On May 5, 2017, Edwards
`Lifesciences Corporation (“Petitioner”) emailed the Board to request a
`conference call to seek authorization to file a Reply to the Patent Owner
`Preliminary Response to address Patent Owner’s statement that the prior art
`and arguments in the Petition are the same, or substantially the same, as
`those previously raised during prosecution. On May 19, 2017, a conference
`call was held between counsel for the parties and the Board. For the reasons
`that follow, Petitioner’s request for authorization is denied for lack of good
`cause.
`
`II. DISCUSSION
`Petitioner may seek authorization to file a reply to the preliminary
`response, but “must make a showing of good cause.” See 37 C.F.R.
`§ 42.108(c) (revised April 1, 2016). In considering whether good cause has
`been shown in this case, our discretionary determination of whether to
`institute inter partes review is explicitly guided by 35 U.S.C. § 325(d),
`which provides, in relevant part, that consideration may be given to
`“whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented to
`the Office.” 35 U.S.C. § 325(d).
`During the teleconference Petitioner contended that good cause in this
`case was shown because the requested reply would address factual
`inaccuracies in the Patent Owner Preliminary Response that Petitioner could
`not have anticipated concerning the prosecution history, and, relatedly,
`whether the prior art or arguments presented in the Petition (Paper 1, “Pet.”)
`
`2
`
`
`
`IPR2017-00444
`Patent 6,915,560 B2
`
`are the same, or substantially the same, as those previously raised during
`prosecution. Petitioner also indicated that the timing of its request, coming a
`month after the filing of the Patent Owner Preliminary Response, was
`prompted by a decision of the Board denying a petition filed by Petitioner
`against the same patent in an earlier proceeding.
`In consideration of the arguments advanced during the teleconference
`by both parties, we determine good cause for authorization to file the
`requested reply has not been shown. First, whether there are factual
`inaccuracies in Patent Owner’s Preliminary Response concerning the
`prosecution history is an issue the Board is typically capable of evaluating
`without further briefing from Petitioner. Second, Petitioner was on notice
`prior to filing its Petition that, by statute, consideration may be given to
`whether the prior art or arguments presented in the Petition are the same, or
`substantially the same, as those previously raised during prosecution.
`Accordingly, Petitioner had the opportunity to address the issue in the
`Petition, and, given the limits on the length of a Petition, may not neglect to
`address an issue with the expectation that additional briefing will be
`permitted in reply. Further, in this case Petitioner does not appear to have
`neglected to address the prosecution history, which it discussed at length in
`the Petition. Pet. 23–30. Thus, there is no indication that the Board lacks
`sufficient information to scrutinize Patent Owner’s contentions regarding the
`prosecution history. Finally, the timing of Petitioner’s request does not
`support a showing of good cause. Petitioner waited a month after Patent
`Owner’s Preliminary Response was filed to request authorization to file a
`reply, and we are not persuaded that the timing of issuance of a decision in a
`related proceeding is sufficient reason for such a delay.
`
`3
`
`
`
`IPR2017-00444
`Patent 6,915,560 B2
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request for authorization to file a reply to
`Patent Owner’s Preliminary Response is DENIED.
`
`
`
`PETITIONER:
`Craig S. Summers
`2css@knobbe.com
`
`Brenton R. Babcock
`2brb@knobbe.com
`
`Christy G. Lea
`2cgl@knobbe.com
`
`Cheryl T. Burgess
`2ctb@knobbe.com
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`(949) 760-0404
`
`PATENT OWNER:
`Wallace Wu
`Wallace.Wu@aporter.com
`
`Jennifer A. Sklenar
`Jennifer.Sklenar@aporter.com
`
`
`4
`
`
`
`IPR2017-00444
`Patent 6,915,560 B2
`
`
`ARNOLD & PORTER LLP
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`(213) 243-4199
`
`
`
`Nicholas M. Nyemah
`Nicholas.Nyemah@aporter.com
`
`ARNOLD & PORTER LLP
`601 Massachusetts Avenue, NW
`Washington, DC 20001
`(202) 942-5999
`
`
`5
`
`
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