`571-272-7822
`
`
`
`
`Paper No. 17
` Entered: April 11, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00933 (Patent 9,084,601 B2)
`Case IPR2018-00934 (Patent 8,998,058 B2)
`Case IPR2018-00935 (Patent 8,991,677 B2) 1
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Motion to File Corrected Motions
`35 U.S.C. § 42.5
`
`
`
`
`1 This Order applies to all of the listed cases. We exercise our discretion to
`issue one Order to be filed in each proceeding. The parties are not
`authorized to use this caption in any subsequent papers.
`
`
`
`Case IPR2018-00933 (Patent 9,084,601 B2)
`Case IPR2018-00934 (Patent 8,998,058 B2)
`Case IPR2018-00935 (Patent 8,991,677 B2)
`
`
`By email dated March 8, 2019, Patent Owner submitted an unopposed
`
`request to file a corrected motion to amend in IPR2018-00933 and corrected
`
`contingent motions to amend in IPR2018-00934 and IPR2018-00935. Ex.
`
`3001. Patent Owner asserts that it timely filed a motion to amend in the
`
`-00933 proceeding and contingent motions to amend in the -00934 and
`
`-00935 proceedings, and each of these motions set forth written-description
`
`support for the proposed amended claims in the claim listings appended to
`
`each motion. Id. Patent Owner requests to file corrected versions of these
`
`motions, however, in light of a recent precedential Board decision2 that
`
`interprets 37 C.F.R. § 42.121 to require written-description support for
`
`proposed amended claims to be set forth in a motion to amend itself rather
`
`than in the claim listing. Id. Accordingly, Patent Owner seeks leave to file
`
`corrected motions that conform to that interpretation.
`
`Having considered Patent Owner’s unopposed request and its stated
`
`reasons therefor, we determine that good cause exists to grant Patent
`
`Owner’s request.3
`
`Accordingly, it is:
`
`ORDERED that Patent Owner’s unopposed request to file a corrected
`
`motion to amend in IPR2018-00933 is granted, and
`
`
`2 Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, -0030 (PTAB Feb. 25,
`2019) (Paper 15).
`
`3 We informed the parties that this request was granted by email dated April
`4, 2019.
`
`
`
`2
`
`
`
`Case IPR2018-00933 (Patent 9,084,601 B2)
`Case IPR2018-00934 (Patent 8,998,058 B2)
`Case IPR2018-00935 (Patent 8,991,677 B2)
`
`
`FURTHER ORDERED that Patent Owner’s unopposed request to file
`
`corrected contingent motions to amend in IPR2018-00934 and IPR2018-
`
`00935 is granted.
`
`
`PETITIONER:
`
`John C. Phillips
`Steven R. Katz
`Ryan P. O’Connor
`Fish & Richardson
`phillips@fr.com
`katz@fr.com
`oconnor@fr.com
`
`
`
`PATENT OWNER:
`
`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Christopher T. Marando
`Christoper M. Pepe
`Weil, Gotschal & Manges LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`adrian.percer@weil.com
`christopher.marando@weil.com
`christopher.pepe@weil.com
`
`
`
`
`
`3
`
`
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