Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 31
`Entered: August 14, 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
`Trial Hearing
`35 U.S.C. § 42.70
`
`
`
`
`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.
`
`
`571-272-7822
`
`
`
`
`Paper No. 31
`Entered: August 14, 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
`Trial Hearing
`35 U.S.C. § 42.70
`
`
`
`
`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)
`
`
`Petitioner and Patent Owner request an oral argument in each of
`IPR2018-00933, IPR2018-00934, and IPR2018-00935 pursuant to 37 C.F.R.
`§ 42.70. Papers 252, 26. Petitioner requests 90 minutes of total argument
`time “to present arguments collectively for this proceeding and the
`concurrent proceedings.” Paper 25, 1. Patent Owner requests that all three
`proceedings be consolidated into a single hearing and that it be given 45
`minutes total argument time for the consolidated hearing. Paper 26, 2.
`Having considered the parties’ submissions, the parties’ requests for
`oral argument are GRANTED. A consolidated oral argument for all three
`captioned proceedings will commence at 9:30 am Eastern Time on
`September 5, 2019, on the 9th floor of Madison Building East, 600 Dulany
`Street, Alexandria Virginia. Seating will be available on a first-come, first-
`served basis. The Board will provide a court reporter, and the transcript
`shall constitute the official record of the hearing.
`Each party will have 60 minutes of total argument time. Petitioner
`will open the hearing by presenting its case regarding the challenged claims
`and the proposed substitute claims. Patent Owner will then respond to
`Petitioner’s presentation. Petitioner may reserve rebuttal time of no more
`than half its total argument time to reply to Patent Owner’s arguments.
`Patent Owner may reserve sur-rebuttal time of no more than half its total
`argument time to respond to Petitioner’s rebuttal.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits, if any, must be
`served seven business days before the hearing. The parties also shall
`
`
`2 IPR2018-00933 is representative and all citations are to IPR2018-00933
`unless otherwise indicated.
`
`
`
`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)
`
`provide the demonstrative exhibits to the Board at least three business days
`prior to the hearing by emailing them to Trials@uspto.gov. The parties shall
`not file any demonstrative exhibits in this proceeding without prior
`authorization from the Board.
`The Board reminds the parties that demonstrative exhibits are not
`evidence, but are intended to assist the parties in presenting their oral
`arguments to the Board. The Board also reminds the parties that
`demonstrative exhibits are not a mechanism for making arguments not
`previously addressed in the papers. The parties are directed to St. Jude
`Medical, Cardiology Division, Inc. v. The Board of Regents of the University
`of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for
`guidance regarding the appropriate content of demonstrative exhibits.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits. If such objections
`cannot be resolved, the parties may file any remaining objections with the
`Board at least three business days before the oral hearing. The objections
`should identify with particularity the portions of the demonstrative exhibits
`that are subject to objection and include a one-sentence statement of the
`basis for each objection. No argument or further explanation is permitted.
`The Board will consider any objections and schedule a conference call if
`deemed necessary. Otherwise, the Board will reserve ruling on the
`objections until the hearing. Any objection to demonstrative exhibits that is
`not timely presented will be considered waived. A hard copy of the
`demonstratives should be provided to the court reporter at the hearing.
`
`
`
`3
`
`
`
`Case IPR2018-00933 (Patent 9,084,601 B2)
`Case IPR2018-00934 (Patent 8,998,058 B2)
`Case IPR2018-00935 (Patent 8,991,677 B2)
`
`
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, any counsel of record may present the party’s
`argument. If either party anticipates that its lead counsel will not be
`attending the oral argument, the parties should initiate a joint telephone
`conference with the Board no later than two business days prior to the oral
`hearing to discuss the matter.
`Questions regarding specific audio-visual equipment should be
`directed to the Board at 571-272-9797. Requests for audio-visual equipment
`are to be made no later than 5 days in advance of the hearing date. The
`request is to be sent directly to Trials@uspto.gov. If the request is not
`timely, the equipment may not be available on the day of the hearing.
`
`In light of the foregoing, it is:
`ORDERED that the oral hearing, conducted pursuant to the
`procedures outlined above, shall commence at 9:30 am Eastern Time on
`September 5, 2019.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`Case IPR2018-00933 (Patent 9,084,601 B2)
`Case IPR2018-00934 (Patent 8,998,058 B2)
`Case IPR2018-00935 (Patent 8,991,677 B2)
`
`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
`
`
`
`
`5
`
`
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