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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`INTUITIVE SURGICAL, INC.
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`Petitioner
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`v.
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`ETHICON LLC
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`Patent Owner
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`
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`Case IPR2018-00934
`Patent 8,998,058
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`______________________
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`PETITIONER’S REQUEST FOR ORAL ARGUMENT
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`Proceeding No. IPR2018-00934
`Attorney Docket No. 11030-0049IP2
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`Pursuant to 37 C.F.R. § 42.70(a) and the Scheduling Order (Paper 10),
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`Petitioner submits this Request for Oral Argument on all of the instituted grounds
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`of unpatentability of U.S. Patent No. 8,998,058. A request for Oral Argument in
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`related IPR proceedings (IPR2018-00933 and IPR2018-00935) are being filed on
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`this same day. Petitioner requests 90 minutes for each side (180 minutes total) to
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`present arguments collectively for this proceeding and the concurrent proceedings.
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`With regard to this particular proceeding, Petitioner requests (without
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`waiving consideration of any issue not listed below) to address the following
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`issues:
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`1. Whether substitute claims 19-28 impermissibly introduce new matter;
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`2. Whether substitute claims 19-22 and 24-27 are obvious over Viola in
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`view of Heinrich;
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`3. Whether substitute claims 23 and 28 are obvious over Viola in view of
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`Heinrich and, if necessary, further in view of Young;
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`4. Whether claims 1-10 are obvious over Hooven in view of Heinrich;
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`5. Rebuttal to Patent Owner’s presentation on all matters; and
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`6. Any additional issues on which the Board seeks clarification.
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`The Board has already scheduled Oral Hearing for September 5, 2019. See
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`PTAB’s Scheduling Order of December 7, 2018 (Paper 10).
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`Petitioner also respectfully requests the ability to use audio visual equipment
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`Proceeding No. IPR2018-00934
`Attorney Docket No. 11030-0049IP2
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`to display demonstrative exhibits, including the use of a projector and screen that
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`connects to a laptop computer. Petitioner’s counsel will use a laptop computer
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`with a VGA-type connector. In addition, Petitioner requests that an ELMO-type
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`projector be made available for use.
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`Dated: August 1, 2019
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`Respectfully submitted,
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`/John C. Phillips/
`John C. Phillips, Reg. No. 35,322
`Steven Katz, Reg. No. 43,706
`Ryan O'Connor, Reg. No. 60,254
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 858-678-5070
`F: 877-769-7945
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`
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`Attorneys for Petitioner
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`
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`
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`Proceeding No. IPR2018-00934
`Attorney Docket No. 11030-0049IP2
`
`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on August 1, 2019, a complete and entire copy of this Petitioner’s
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`Request for Oral Argument was provided via email to the Patent Owner by serving
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`the email correspondence addresses of record as follows
`
`
`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Robert S. Magee
`Adrian Percer
`Christopher T. Marando
`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
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`Email:
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`Ethicon.IPR.Service@weil.com
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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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