`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`
`Case IPR2018-00935
`U.S. Patent No. 8,991,677
`
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
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`Pursuant to 37 C.F.R. § 42.70 and the Board’s Scheduling Order, Patent
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`Owner Ethicon LLC respectfully submits this Request for Oral Argument. The
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`Board has currently scheduled the oral hearing in IPR2018-00935 for September
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`5, 2019. Patent Owner specifies the following issues to be argued:
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` Whether claims 1-18 of U.S. Patent No. 8,991,677 (the “677 Patent”)
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`are unpatentable under 35 U.S.C. § 103 as obvious over U.S. Patent
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`No. 5,383,880 (“Hooven”) in view of U.S. Patent Application
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`Publication No. 2005/0131390 A1 (“Heinrich”).
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` Whether claims 1-5 and 16 are unpatentable under 35 U.S.C. § 103
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`as obvious over Hooven in view of Heinrich and further in view of
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`U.S. Patent No. 5,865,361 (“Milliman”).
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` Whether claims 1-5 and 16 are unpatentable under 35 U.S.C. § 103
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`as obvious over Hooven in view of Heinrich and further in view of
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`U.S. Patent No. 5,779,130 (“Alesi”).
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` Whether the substitute claims in Patent Owner’s Contingent Motion to
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`Amend (“MTA”) introduce new matter.
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` Whether substitute claims 19-22 and 24 in Patent Owner’s MTA are
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`unpatentable under 35 U.S.C. § 103 as obvious over U.S. Patent No.
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`5,954,259 (“Viola”) in view of Heinrich.
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` Whether substitute claims 23 and 32 in Patent Owner’s MTA are
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`unpatentable under 35 U.S.C. § 103 as obvious over Viola in view of
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`
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`Henrich and further in view of Comparison of Control Modes of a
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`Hand-Held Robot for Laparoscopic Surgery (“Tonet”).
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` Any other issue the Board deems necessary for issuing a final written
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`decision.
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`The Board has also currently scheduled oral hearings on September 5,
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`2019, for two related proceedings: IPR2018-00933 and IPR2018-00934. Patent
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`Owner requests that all three proceedings (IPR2018-00933, -00934, and -00935)
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`be consolidated into a single hearing.
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`Patent Owner requests forty-five minutes of time to address the issues
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`identified above and the related issues identified in Patent Owner’s Request for
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`Oral Argument in IPR2018-00933 and IPR2018-00934. To the extent the Board
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`schedules the hearing to last more than ninety minutes, however, Patent Owner
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`requests that it be given half the length of the hearing to address these issues.
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`Patent Owner requests that five spaces be reserved at the oral hearing to
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`accommodate its counsel and corporate representatives.
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`
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`Date: August 6, 2019
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`Respectfully submitted,
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`/Anish R. Desai/
`Anish R. Desai (Reg. No. 73,760)
`Elizabeth S. Weiswasser (Reg. No. 55,721)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`Anish.Desai@weil.com
`Elizabeth.Weiswasser@weil.com
`
`Robert S. Magee (Reg. No. 70,227)
`Adrian Percer (Reg. No. 46,986)
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Robert.Magee@weil.com
`Adrian.Percer@weil.com
`
`Christopher T. Marando (Reg. No. 67,898)
`Christopher M. Pepe (Reg. No. 73,851)
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`Christopher.Marando@weil.com
`Christopher.Pepe@weil.com
`
`Counsel for Patent Owner Ethicon LLC
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on August 6, 2019, the foregoing
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT was served via
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`electronic mail, upon the following:
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`John C. Phillips
`Steven R. Katz
`Ryan P. O’Connor
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`phillips@fr.com
`katz@fr.com
`oconnor@fr.com
`
`IPR11030-0049IP3@fr.com
`PTABInbound@fr.com
`
`/Bruce Davis/
`Bruce Davis
`Senior Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`T: 202-682-7196
`Bruce.Davis@weil.com
`
`
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