Samuels v. TriVascular Corporation

Filing 35

ORDER RESETTING CMC. Case Management Statement due by 9/18/2014. Case Management Conference set for 9/25/2014 09:00 AM in Courtroom 5, 17th Floor, San Francisco.. Signed by Judge Edward M. Chen on 2/20/14. (bpf, COURT STAFF) (Filed on 2/20/2014)

Case3:13-cv-02261-EMC Document34 Filed02/13/14 Page1 of 5

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James D. Petruzzi (Bar No. 115175)
MASON & PETRUZZI
4900 Woodway Dr., Suite 745
Houston, TX 77056
Telephone: [phone]
Facsimile: [phone]
[e-mail]

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Arthur S. Feldman (Admitted Pro Hac Vice)
Texas State Bar No. 06886600
55 Waugh Dr., Suite 800
Houston, TX 77002
Telephone: [phone]
Facsimile: [phone]
[e-mail]

Marc H. Cohen (Bar No. 168773)
Sean O. Christofferson (Bar No. 240474)
Lien K. Dang (Bar No. 254221)
KIRKLAND & ELLIS LLP
3330 Hillview Avenue
Palo Alto, CA 94304
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant
TRIVASCULAR, INC.

Attorneys for Plaintiff
DR. SHAUN L. W. SAMUELS

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN FRANCISCO DIVISION
DR. SHAUN L.W. SAMUELS,
Case No. CV-13-2261-EMC

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Plaintiff,
vs.
TRIVASCULAR, INC.,

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JOINT STATUS REPORT ON THE
PATENT TRIAL AND APPEAL
BOARD’S DECISION ON THE INTER
PARTES PETITION

Defendant.

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TRIVASCULAR, INC.,
Counter-Claimant,

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vs.
DR. SHAUN L. W. SAMUELS,
Counter-Defendant.

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JOINT STATUS REPORT ON THE PATENT TRIAL AND
APPEAL BOARD’S DECISION ON THE INTER PARTES
PETITION

CASE NO. CV-13-2261

Case3:13-cv-02261-EMC Document34 Filed02/13/14 Page2 of 5

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Pursuant to Paragraphs 2 and 5 of the Court’s Order Granting Joint Stipulation to Stay Case

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Pending Inter Partes Review (Dkt. No. 32), Plaintiff Dr. Shaun L.W. Samuels (“Dr. Samuels”) and

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Defendant TriVascular, Inc. (“TriVascular”) submit a status report as follows:

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1.

On February 4, 2014, the Patent Trial and Appeals Board (“PTAB”) issued a decision

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instituting inter partes review of U.S. Patent 6,007,575 (“the ’575 patent”), the only patent-in-suit in

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this case. The decision is attached hereto as Exhibit A.

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2.

The PTAB further issued a Scheduling Order for the inter partes review, summarized

below and attached hereto as Exhibit B.
EVENT

DUE DATE

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Patent owner’s response to the petition

April 4, 2014

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Patent owner’s motion to amend the patent

April 4, 2014

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Petitioner’s reply to patent owner response to petition

June 4, 2014

Petitioner’s opposition to motion to amend

June 4, 2014

Patent owner’s reply to petitioner opposition to motion to
amend

July 8, 2014

Petitioner’s motion for observation regarding crossexamination of reply witness

July 29, 2014

Motion to exclude evidence

July 29, 2014

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Request for oral argument

July 29, 2014

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Patent owner’s response to observation

August 12, 2014

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Opposition to motion to exclude

August 12, 2014

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Reply to opposition to motion to exclude

August 19, 2014

Oral argument (if requested)

September 3, 2014

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JOINT STATUS REPORT ON THE PATENT TRIAL AND
APPEAL BOARD’S DECISION ON THE INTER PARTES
PETITION

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CASE NO. CV-13-2261

Case3:13-cv-02261-EMC Document34 Filed02/13/14 Page3 of 5

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3.

In accordance with Paragraph 3 of the Court’s Order Granting Joint Stipulation to

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Stay Case Pending Inter Partes Review (Dkt. No. 32), since the PTAB has instituted inter partes

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review of the ’575 patent, “the case shall be further stayed until the PTAB issues a final written

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decision.”

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DATED: February 13, 2014

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/s/ James D. Petruzzi
James D. Petruzzi
MASON & PETRUZZI
4900 Woodway Dr., Suite 745
Houston, TX 77056
Telephone: [phone]
Facsimile: [phone]
[e-mail]

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/s/ Marc H. Cohen
Marc H. Cohen
[e-mail]
Sean O. Christofferson
[e-mail]
Lien K. Dang
[e-mail]
KIRKLAND & ELLIS LLP
3330 Hillview Avenue
Palo Alto, CA 94304
Telephone: [phone]
Facsimile: [phone]

Arthur S. Feldman (Admitted Pro Hac Vice)
Texas State Bar No. 06886600
55 Waugh Dr., Suite 800
Houston, TX 77002
Telephone: [phone]
Facsimile: [phone]
[e-mail]

Attorneys for Defendant
TRIVASCULAR, INC.

Attorneys for Plaintiff
DR. SHAUN L. W. SAMUELS

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JOINT STATUS REPORT ON THE PATENT TRIAL AND
APPEAL BOARD’S DECISION ON THE INTER PARTES
PETITION

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CASE NO. CV-13-2261

Case3:13-cv-02261-EMC Document34 Filed02/13/14 Page4 of 5

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ATTESTATION OF CONCURRENCE IN FILING

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I, Marc H. Cohen, am the ECF User whose identification and password are being used to file

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this Joint Stipulation. In compliance with Local Rule 5-1(i)(3), I hereby attest that James D. Petruzzi

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of Mason & Petruzzi has concurred in this filing.

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DATED: February 13, 2014

/s/ Marc H. Cohen
Marc H. Cohen
[e-mail]
Sean O. Christofferson
[e-mail]
Lien K. Dang
[e-mail]
KIRKLAND & ELLIS LLP
3330 Hillview Avenue
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant
TriVascular, Inc.

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JOINT STATUS REPORT ON THE PATENT TRIAL AND
APPEAL BOARD’S DECISION ON THE INTER PARTES
PETITION

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CASE NO. CV-13-2261

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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on February 13, 2014 that a copy of the foregoing document is

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being electronically filed with the Clerk of the United States District Court for the Northern District

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of California by using the CM/ECF system, which will send notice of such filing to all counsel of

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record.

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DATED: February 13, 2014

/s/ Marc H. Cohen
Marc H. Cohen
[e-mail]
Sean O. Christofferson
[e-mail]
Lien K. Dang
[e-mail]
KIRKLAND & ELLIS LLP
3330 Hillview Avenue
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant
TriVascular, Inc.

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ER

R NIA

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M. Che

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dward
Judge E

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RT

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NO

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DERED
SO OR ED
IT IS
DIFI
AS MO

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RT
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S

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IT IS SO ORDERED that the CMC is reset from 3/13/14 to 9/25/14 at 9:00 a.m.
An updated joint CMC statement shall be filed by 9/18/14.
__________________ TR
S DIS ICT
Edward M. Chen
TE
C
TA
U.S. District Judge

UNIT
ED

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F
D IS T IC T O
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CERTIFICATE OF SERVICE

CASE NO. CV-13-2261

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EXHIBIT A

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[e-mail]
571-272-7822

Paper 10
Entered: February 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
TRIVASCULAR, INC.
Petitioner
v.
SHAUN L.W. SAMUELS
Patent Owner
____________
Case IPR2013-00493
Patent 6,007,575
____________
Before RICHARD E. RICE, SCOTT E. KAMHOLZ, and
ADAM V. FLOYD, Administrative Patent Judges.
RICE, Administrative Patent Judge.
DECISION
Institution of Inter Partes Review
37 C.F.R. § 42.108

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Case IPR2013-00493
Patent 6,007,575
I.

INTRODUCTION

TriVascular, Inc. (“Petitioner”) filed a petition (Paper 1, “Pet.”) requesting
inter partes review of claims 1-24 of U.S. Patent No. 6,007,575 (Ex. 1001, “the
’575 patent”). In response, Shaun L.W. Samuels (“Patent Owner”) filed a patent
owner preliminary response (Paper 9, “Prelim. Resp.”).1 We have jurisdiction
under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a), which provides as follows:
THRESHOLD -- The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.
Upon consideration of the petition and the preliminary response, we
determine that the information presented in the petition establishes that there is a
reasonable likelihood that Petitioner would prevail in challenging claims 1, 2, and
4-24 as unpatentable on at least one ground of patentability. Accordingly, pursuant
to 35 U.S.C. § 314, we institute an inter partes review for claims 1, 2, and 4-24 of
the ’575 patent. However, we determine that the information presented in the
petition does not establish that there is a reasonable likelihood that Petitioner

1

We note that Patent Owner’s sole exhibit, as currently filed, is not numbered in
the range 2001-2999, as required by 37 C.F.R. § 42.63(c). In particular, Patent
Owner’s exhibit is filed as Exhibit 1015, rather than Exhibit 2001. Patent Owner
will be required, within five business days of this decision, to re-file the exhibit
using the correct numbering.
2

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Case IPR2013-00493
Patent 6,007,575
would prevail in challenging claim 3 as unpatentable. Accordingly, we do not
institute an inter partes review for claim 3.
A. Related Proceedings
Petitioner represents that the ’575 patent is involved in co-pending litigation
styled Dr. Shaun L.W. Samuels v. Trivascular, Inc., Case No. 3:13-cv-02261
(EMC), filed in the United States District Court for the Northern District of
California. Pet. 2.
B. The ’575 Patent
The ’575 patent, titled “Inflatable Intraluminal Stent and Method for
Affixing Same within the Human Body,” issued on December 28, 1999, based on
Application No. 08/870,745, filed June 6, 1997.
The patent describes prior art stent designs that utilize “anchoring pins,
surgical staple-like clips or exposed barbs to secure the stent to the tube walls via
penetration of the walls.” Ex. 1001, 1:52-54. The patent further explains that
“[d]amage to the tubular wall may occur when [such a] device is being positioned
within the tube” and that “repositioning of such stents cannot be accomplished
without damaging the tube walls.” Id. at 1:54-58.
It is an objective of the invention of the ’575 patent “to provide a stent, and a
method of placing it, that allows for repositioning of the stent within a tubular
structure of the body.” Id. at 1:64-67. It is also an objective of the invention of the
patent “to provide a stent, and a method of placing it, that allows for the stent to be
affixed to the tubular structure inner walls in a manner that prevents both damage
to the walls and migration of the stent after it has been affixed.” Id. at 1:67-2:4.
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Case IP
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Patent 6,007,575
6
Figure 1 of the ’575 patent is rep
F
p
produced b
below:

Figure 1 is a perspecti view of “an embo
F
ive
odiment of the inflata
f
able
intralum
minal stent of the pres invent
sent
tion.” Id. a 2:62-63, 3:24-25. As illustra
at
,
ated
in Figur 1, stent 5 includes lumen 15, which is d
re
,
defined by inflatable cuff 17
y
having inner surfa 19 and outer surfa 23. Id at 3:26-31. Outer s
i
ace
face
d.
surface 23
includes “a numbe of inflat
s
er
table ridges 25 dispos about i circumf
s
sed
its
ference.” I
Id.
at 3:32-33. As depicted in Figure 1, ea of ridg 25 is a raised strip disposed
F
ach
ges
p
d
about th circumfe
he
ference of the cuff. “[C]uff 17 i inflated by way of an inflatio
t
is
f
on
syringe 71 with an inflation material 73, [which] . . . harden over tim to
n
7
]
ns
me
permanently affix stent 5 wi
x
ithin the tu
ubular struc
cture of the [human] body via
e
circumf
ferential rid
dges 25.” Id. at 4:33-43.
The patent states that “[a] uniqu feature o the prese inventi is its
T
ue
of
ent
ion
capabili of being optimally positione within a tubular st
ity
g
y
ed
tructure in the body
([e.g.], a blood vessel) witho causing damage t the surro
out
g
to
ounding tis
ssue.” Id.
at 4:66-5:2. In ord to posi
der
ition the ste optima
ent
ally, the ste is first i
ent
inflated such
that “[th ridges [] affix the stent to th tubular w
he]
e
he
walls without penetra
ation.” Id.
.
at 5:2-4 Next, “th position of the ste is exam
4.
he
n
ent
mined fluoro
oscopically to determ
y
mine

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Case IPR2013-00493
Patent 6,007,575
if it is optimal.” Id. at 5:4-5. If the position needs to be changed, “[the] stent []
may be deflated, repositioned and then reinflated.” Id. at 5:6-7. The patent states
that “[i]t is important to note that the tissue of the vessel walls is not damaged by
exposure to [the] ridges [] of the stent.” Id. at 5:7-8.
C. Exemplary Claim
Claims 1, 14 and 23 are independent. Claims 2-13, directly or indirectly,
depend from claim 1, and claims 15-22 and 24, directly or indirectly, depend from
claim 14. Claim 1 is illustrative of the invention of the ’575 patent and is
reproduced below.
1.
An inflatable intraluminal stent adapted to be secured to the
interior of a tubular structure within the human body comprising:
a) an inflatable and deflatable cuff of generally hollow
cylindrical continuation having a collapsible lumen, an inner surface,
an inlet, an outlet and a friction enhancing outer surface, said frictionenhancing outer surface featuring inflatable protrusion(s) including at
least one circumferential ridge disposed about the inflatable cuff, said
friction-enhancing outer surface engaging the interior of the tubular
structure without penetration to prevent the cuff from moving in a
longitudinal direction with respect to the tubular structure when said
cuff is in a fully inflated condition;
b) means for injecting an inflation material into said cuff to
inflate it; and
c) a valve integral with the inflatable cuff for permitting entry
of the inflation material from the means for injecting and thereafter
sealing said cuff to prevent deflation.
D. Prior Art Relied Upon
The Petitioner relies on the following prior art references:
Samuels ’851

US 5,423,851

June 13, 1995
5

Ex. 1002

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Case IPR2013-00493
Patent 6,007,575
Rogers
Lazarus
Rhodes
Lane
Miller, Jr.
Todd
Sisson
Pigott
Holman

US 5,534,024
US 5,693,088
US 5,665,117
US 5,494,029
US 3,991,767
US 5,423,745
US 4,586,505
US 5,156,620
US 5,871,537
E.

July 9, 1996
Dec. 2, 1997
Sept. 9, 1997
Feb. 27, 1996
Nov. 16, 1976
June 13, 1995
May 6, 1986
Oct. 20, 1992
Feb. 16, 1999

Ex. 1003
Ex. 1004
Ex. 1005
Ex. 1006
Ex. 1007
Ex. 1008
Ex. 1009
Ex. 1010
Ex. 1011

The Alleged Grounds of Unpatentability

The Petitioner challenges claims 1-24 of the ’575 patent based on the alleged
grounds of unpatentability set forth in the table below:
Reference(s)
Samuels ’851
Rogers
Samuels ’851 and Rogers
Samuels ’851 and Lazarus
Samuels ’851 and Rhodes
Samuels ’851 and Lane,
Miller, Todd, or Sisson
Lazarus and Miller, Todd,
or Sisson
Holman, Pigott, and Lane

Basis
§ 102(b) and § 103(a)
§ 102(e) and § 103(a)
§ 103(a)
§ 103(a)
§ 103(a)
§ 103(a)

Challenged Claims
1, 2, 6-15, and 18-24
1-6, 11, 14-17, and 21
1-24
1, 2, and 4-24
1, 2, 4-16, and 18-24
1, 2, 6-15, and 18-24

§ 103(a)

1, 4-6, 9-11, 13, 14, 16,
17, and 19-21
1, 2, 4-8, 11, 13-18, and
21

§ 103(a)

II.

ANALYSIS

A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable construction in light of the specification of
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the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). The broadest
reasonable construction of a means-plus-function limitation “is that statutorily
mandated in [paragraph 6 of 35 U.S.C. § 112].” In re Donaldson Co., 16 F.3d
1189, 1194-95 (Fed. Cir. 1994). Also, claim terms are given their ordinary and
customary meaning as would be understood by one of ordinary skill in the art in
the context of the entire disclosure. See In re Translogic Technology, Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be
set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994).
1. “Means for” terms
Petitioner proposes claim constructions for each of the following “means
for” terms, which Petitioner contends are means-plus-function limitations: “means
for injecting an inflation material into said cuff to inflate it,” recited in claim 1;
“means for inflating the cuff with inflation material in fluid communication with
said inflation port,” recited in claim 14; “means for inflating the plurality of cuffs
with inflation material,” recited in claim 23; and “means for securing an
intraluminal medical device to the inner surfaces of the cuffs,” recited in claim 24.2
Pet. 7-9. However, Patent Owner, in the preliminary response, does not propose
competing claim constructions for, or rely on, any of these “means for” terms. See
Prelim. Resp. 2, 19-33 (claim charts). We determine that these terms do not need
to be construed at this time because they are not material to our decision.
2

We note that claim 20 similarly recites “means for securing an intraluminal
medical device to the inner surface of the cuff.”
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2. “Friction-enhancing outer surface”
Petitioner contends that:
“friction-enhancing outer surface” means the surface features of the
outer surface of an inflatable cuff, such as inflatable ridges, nubs,
bumps and indentations, such that when the inflatable cuff is
deployed, such surface features engage or secure the inflated stent to
the interior wall of a tubular structure without penetrating it or
harming or damaging the tissue of the walls of the tubular structure.
Pet. 9. Patent Owner does not propose a competing claim construction in the
preliminary response. Prelim. Resp. 2.
We do not agree with Petitioner’s proposed claim construction because it
unjustifiably reads limitations into the claim language from an embodiment
appearing in the specification of the ’575 patent. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment
appearing in the written description may not be read into a claim when the claim
language is broader than the embodiment.”) For purposes of this decision, we
interpret “friction-enhancing outer surface” to mean surface features of an outer
surface that increase the capability of the outer surface to engage or grip another
surface. See, e.g., Ex. 1001, 2:35-37 (“a friction-enhancing face that engages the
interior surface of the tubular structure”); 3:64-67 (“surface features [that] allow
the inflated stent to grip the interior walls of a tubular structure with a force that is
sufficient to prevent its migration”).
3. “Circumferential ridge disposed
about the inflatable cuff”
Petitioner contends that “circumferential ridge disposed about the inflatable
cuff” means “an elevated part of the outer surface disposed about the inflatable

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Case IPR2013-00493
Patent 6,007,575
cuff.” Pet. 10. Patent Owner responds that Petitioner’s proposed construction
improperly ignores the term “circumferential.” Prelim. Resp. 3. Patent Owner
contends that “the broadest reasonable interpretation . . . is ‘an elevated part of the
outer surface extending circumferentially about the inflatable cuff'.’” Id. We
disagree with both parties’ proposed claim constructions.
As discussed above, the ’575 patent describes a “circumferential ridge” as a
ridge, i.e., a raised strip, “disposed about [the] circumference” of outer surface 23
of inflatable cuff 17. Ex. 1001, 3:32-33, 54; Figs. 1 and 2. As this description
accords with the ordinary and customary meaning of the word “ridge” as “a raised
strip (as of plowed ground),”3 we interpret a “circumferential ridge disposed about
the inflatable cuff” to mean a “raised strip disposed circumferentially about the
outer surface of the inflatable cuff.”
4. “When said cuff is in a fully inflated condition”
and “when the cuff is fully inflated”
Petitioner contends that the terms “when said cuff is in a fully inflated
condition,” in claim 1 (emphasis added), and “when the cuff is fully inflated,” in
claim 14 (emphasis added), each means “when the cuff is inflated to the extent that
the cuff is affixed to the lumen of the tubular structure but not inflated to the extent
that it penetrates the tubular structure.” Pet. 11 (emphasis added). Patent Owner
disagrees and argues these claim terms refer to “how much expansion of the cuff
will occur when the maximum amount of fluid that the cuff can receive is placed
therein.” Prelim. Resp. 3. However, these terms do not need to be construed at
this time because they are not material to our decision.
3

Ex. 1014 (WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY (1986)), 1014.
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5. Other Terms
All other terms in claims 1-24 are given their ordinary and customary
meaning as would be understood by one with ordinary skill in the art and need not
be construed explicitly at this time.
B. Claims 1, 2, 6-15, and 18-24—Obviousness
over Samuels ’851 and Todd
As noted above, Petitioner alleges, inter alia, that claims 1, 2, 6-15, and 1824 of the ’575 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
Samuels ’851 and Todd. In light of the arguments and supporting evidence
submitted by the parties, Petitioner has established a reasonable likelihood that
claims 1, 2, 6-15, and 18-24 are unpatentable over Samuels ’851 and Todd for the
reasons explained below.
1. Samuels ’851
Samuels ’851 discloses inflatable balloon cuff 10, which can be used to affix
a medical device within the tubular structures of the body. Ex. 1002, 2:35-37.

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6
Figures 1 an 2 of Sam
F
nd
muels ’851 which ar reproduc below, illustrate the
1,
re
ced
,
inflatable balloon cuff 10 be
efore and after inflation, respect
a
tively:

deploymen perspect view o an appar
nt
tive
of
ratus
Figure 1 is a pre-d

Figure 2 is a post-d
deploymen perspect view o an appar
nt
tive
of
ratus.

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As illustrate in Figur 1, inflata cuff 1 0 includes a plurality of reinforced
A
ed
re
able
s
y
recesses 12, each of which is bonded to individual barb 18, such that, before
s
,
,
inflation individu barbs 18 lie benea outer su
n,
ual
8
ath
urface 14 o inflatabl cuff 10. Id.
of
le
at 2:40- 59-61. “When th cuff 10 is fully inf
-42,
he
flated,” as illustrated in Figure 2,
“the rec
cesses 12 pop out to allow the barbs 18 to engage th wall of a tubular
p
a
b
he
structur within th body.” Id. at 2:62re
he
I
-64.
Figure 3 of Samuels ’851 is repr
F
roduced be
elow:

Fig
gure 3 is a sectional view of a pa
s
v
artially-inf
flated cuff.
.
Figure 3 is a sectional view of in
F
l
nflatable cu 10 as d
uff
deployed in a tubular
n
structur of the hu
re
uman body when the cuff is infl
y
flated only partially; a shown in
as
Figure 3, outer sur
3
rface 14 of cuff 10 en
f
ngages the tubular st
e
tructure’s w
wall, but ba
arbs
18 rema inside recesses 12 Id. at 3:57-60. It i disclosed that, as p
ain
r
2.
is
d
partially
inflated “the oute surface 14 holds th cuff 10 i place ag
d,
er
1
he
in
gainst the w 30 so t
wall
that
it can be determin whethe the positioning of . . . the cuf 10 is opt
e
ned
er
ff
timal.” Id. at
.
3:67‒4:2. It is fur
rther disclo
osed that, “if the posi
“
ition is not optimal, t
t
then the cu
uff
10 can be deflated and move to the op
b
d
ed
ptimal pos
sition witho harmin or dama
out
ng
aging
the surr
rounding tissue.” Id. at 4:6-9. “If the pos
“
sition is fou to be o
und
optimal, then
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the cuff 10 is fully inflated so that the barbs 18 rigidly engage with the wall 30 to
permanently hold the medical device in place.” Id. at 4:3-6. Inflation syringe 32 is
connected by tubing 22 to duck bill valve 20, which is integral with side of cuff 10
and is comprised of opposing leaflets 21. Id. at 2:65-68; Figs. 1, 2, 5, and 6.
“Tubing 22 is inserted into the valve 20 to separate the opposing leaflets 21 of the
valve 20 when the cuff 10 is to be inflated or deflated.” Id. at 3:2-5. “After the
cuff 10 has been fully inflated, the tubing 22 is removed and the opposing leaflets
21 close to seal the inflated cuff 10. Id. at 3:5-7.
2. Todd
Todd discloses “[g]ripping means for securely gripping the walls of a body
passageway in order to secure [a] catheter in place within the passageway.”
Ex. 1008, 4:16-18. Todd’s preferred embodiment comprises “a plurality of
protuberances that project outwardly from the outer surface of [a] balloon.” Id.
at 6:59-60. Todd describes the protuberances as “soft enough to grip the walls of
the body passageway without damaging the tissues.” Id. at 6:66-68. Figures 5-8 of
Todd illustrate various configurations of protuberances. Id. at 6:68-7:2.

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6
Figure 8 of Todd is re
F
eproduced below:
b

igure 8 is a perspectiv view of a catheter balloon.
ve
f
r
Fi
Figure 8 illu
F
ustrates “p
protuberanc . . . in t form of outwardly projectin
ces
the
f
y
ng
annular rings 52 wound abou the exterior surfac of balloo 26.” Id at 7:41-43.
w
ut
ce
on
d.
3. Obv
viousness A
Analysis
Petitioner re
P
elies upon Samuels ’851 for all limitation of claim 1 except t
l
ns
m
the
friction-enhancing outer surface, and upon the “i
g
u
inflatable b
balloon pro
otuberance
es”
of Todd for this fe
d
eature. Pet 22. Petit
t.
tioner cont
tends that “
“[Todd] pr
rovides fric
ction
enhanci surface for preve
ing
es
enting mig
gration” and that, “[g]
]iven the b
basic struct
ture
of Samu ’851, it would be an obviou modific
uels
i
e
us
cation to ta the fric
ake
ctionenhanci features of [Todd and mod Samue ’851 wh mainta
ing
d]
dify
els
hile
aining its b
basic
intent an purpose Id. Pet
nd
e.”
titioner fur
rther conte
ends that “t teachin of these
the
ngs
e
referenc when combined not only pr
ces
c
n
rovide various non-pe
enetrating aspects of
f
creating friction-e
g
enhancing surfaces bu disclose . . . inflata ridges
s
ut
able
s
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circumferentially positioned about the devices.” Id.
Patent Owner responds that “removing the barbs in Samuels ’851 would
destroy the objective of the reference,” that “[n]one of the cited secondary
references teaches removing barbs,” and that “Petitioner’s suggested modification
goes totally against the basic teaching of Samuels [’851] and is thus not an obvious
step to take.” Prelim. Resp. 12. Additionally, Patent Owner argues that
Samuels ’851 “focuses on using barbs” and “stresses how important barbs are in
order to avoid the catastrophic results of migration of the device to an undesired
location.” Id. at 23, chart (citing Ex. 1002, 1:48-55; 2:5-6, 60-64; 3:51-56; claim
1(d)). Patent Owner also argues that “[n]o apparent reason to modify
Samuels ’851 is given” and that “Petitioner has not explained how the combination
would have inflatable circumferential ridges.” Id. at 12. Patent Owner also asserts
that Samuels ’851 teaches away from the subject matter of claim 1. See, e.g., id.
at 8.
Upon consideration of the parties’ arguments and evidence, we determine
that Petitioner has demonstrated a reasonable likelihood that claims 1, 2, 6-15, and
18-24 are unpatenatble for obviousness over Samuels ’851 and Todd.
We understand Petitioner to contend that it would have been obvious to a
person of ordinary skill in the art to substitute Todd’s protuberances (such as
outwardly projecting annular rings 52 of Figure 8) for the barbs of Samuels ’851,
because the protuberances and the barbs are each friction-enhancing features used
for attachment to a vessel. Pet. 22; see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007) (“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the field, the

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combination must do more than yield a predictable result”) (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)).
We do not agree with Patent Owner’s contention that Petitioner has failed to
explain how the combination of Samuels ’851 and Todd would have inflatable
circumferential ridges. See id. at 12. As discussed above, Petitioner relies, for
example, on Todd’s Figure 8, which depicts protuberances in the form of
outwardly projecting annular rings 52 wound about the exterior surface of
balloon 26. Pet. 22. This disclosure meets the requirement of claim 1 for “at least
one circumferential ridge disposed about the inflatable cuff,” as construed above.
Furthermore, on the present record, we do not agree with Patent Owner’s
argument that Samuels ’851 teaches away. See, e.g., Prelim. Resp. 8. Patent
Owner’s preliminary response does not explain sufficiently how Samuels ’851
criticizes, discredits, or otherwise discourages a friction-enhancing outer surface,
including an inflatable circumferential ridge disposed about the cuff, that engages a
tubular structure within the human body without penetration to prevent migration
of the cuff to an undesired location when the cuff is inflated, as recited in claim 1.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (in order to “teach away,” a
reference must “criticize, discredit, or otherwise discourage the solution
claimed.”).
Similarly, on the present record, Patent Owner has not established that
removing the barbs in Samuels ’851 would destroy the objective of the reference or
go against its basic teaching. See Prelim. Resp. 12. For example, Patent Owner
has not shown that substituting Todd’s protuberances for the barbs of Samuels
’851 necessarily would have increased the potential for migration of the device to

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an undesired location.
We have considered all of Patent Owner’s arguments, but we are persuaded,
on the present record, that Petitioner has provided adequate articulated reasoning
with rational underpinning to support a legal conclusion of obviousness. See KSR
Int'l Co. v. Teleflex Inc., 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
For the foregoing reasons, Petitioner has established a reasonable likelihood
that it would prevail in showing that claim 1 is unpatentable as obvious over
Samuels ’851 and Todd. In addition, the claim charts and supporting evidence
presented by Petitioner that explain how these prior art references allegedly teach
the claimed subject matter recited in claims 2, 6-15, and 18-24 have merit.
Therefore, Petitioner also has established a reasonable likelihood that it would
prevail in showing that claims 2, 6-15, and 18-24 are unpatentable under 35 U.S.C.
§ 103(a) over Samuels ’851 and Todd.
C. Claims 1, 4-6, 9-11, 13, 14, 16, 17, and 19-21—
Obviousness over Lazarus and Todd
Petitioner also alleges, inter alia, that claims 1, 4-6, 9-11, 13, 14, 16, 17, and
19-21 are unpatentable under 35 U.S.C. § 103(a) as obvious over Lazarus and
Todd. E.g., Pet. 4. In light of the arguments and supporting evidence submitted by
the parties, Petitioner has established a reasonable likelihood that claims 1, 4-6, 911, 13, 14, 16, 17, and 19-21 are unpatentable over Lazarus and Todd, for the
reasons explained below.

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1. Lazarus
Lazarus discloses an intraluminal vascular graft “to be deployable within a
vessel for incorporation therein without use of hooks or barbs.” Ex. 1004,
Abstract. Lazarus explains that “hooks or barbs may damage the vessel,
particularly where the vessel is weakened already by an aneurysm or other disease
condition.” Id. at 1:56-59. As disclosed, the graft comprises a biocompatible tube
and a “non-puncturing attachment means.” Id. at 2:51-52. “[T]he attachment
means is formed from material which is, or is otherwise treated to be, porous
and/or textured to promote the attachment or ingrowth of tissue into the attachment
means thereby incorporating at least a portion of the intraluminal vascular graft
into the vessel.” Id. at 5:35-39. “The attachment means may also be treated, such
as by coating or infusion, with a substance or material which promotes attachment
of the vessel to the graft.” Id. at 6:6-8. For example, “the attachment means may
be a toroidal collar having an internal inflatable space which facilitates expansion
of the intraluminal vascular graft to contact the inner surface of the vessel.” Id. at
6:39-42.

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6
Figures 3 an 4 of Laz
F
nd
zarus are reproduced below:
r
d

Figure 3 is a view in elevation of the intra
F
s
aluminal v
vascular gra and
aft,
Figure 4 is an en
e
nlarged view of a sect
w
tion of a to
oroidal coll
lar.
Figure 3 depicts two attachment means 16 each in th form of toroidal
F
a
t
6,
he
f
inflatable collar 50 disposed about the circumfer
0,
d
e
rence of tu
ubular body 12. Id.
y
at 14:20
0-23. Figu 4 depict inflation conduit 56 attached via closea valve 58
ure
ts
n
d
able
to toroid collar 50. Id. at 15:15-18. Lazarus di
dal
5
1
iscloses tha after a f
at,
fluid is
pumped through inflation co
d
onduit 56 to inflate su
o
ufficiently toroidal co
ollar 50, “[
[t]he
inflation conduit 56 may the be removed from t valve 5 such as by pulling or
n
5
en
the
58,
g
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gently turning the inflation conduit 56 to dislodge it from the valve 58.” Id. at
15:28-31. Lazarus further discloses that, “[u]pon removal of the inflation conduit
56, the valve automatically closes sealing the fluid within the internal space 52 of
the toroidal collar 50.” Id. at 15:31-33.
2. Obviousness Analysis
Petitioner relies upon Lazarus for all limitations of claim 1 except the
friction-enhancing outer surface. Pet. 22-23. Petitioner argues that Lazarus
discloses an inflatable intraluminal graft without barbs or hooks and that Todd
discloses inflatable protuberances that prevent migration. Id. at 23. Petitioner
reasons that
[a] POSA looking to make an intraluminal device for treating
aneurysms would look to Lazarus ‘088 and modify it with the
teachings of [Todd] to arrive at the Samuels ‘575 recited claims. A
review of the claim charts provides a clear blueprint for such obvious
modification.
Id.
Patent Owner argues that Petitioner has not explained how the combination
of Lazarus and Todd “would have corresponding inflatable circumferential ridges.”
Prelim. Resp. 14. We disagree with this argument. We are persuaded that
providing the outwardly projecting annular rings 52 illustrated in Todd’s Figure 8
on the toroidal attachment means 16 of Lazarus would satisfy the requirement of
claim 1 for a friction-enhancing outer surface featuring inflatable protrusion(s) that
engage the interior of the tubular structure of the human body, without penetration,
to prevent the cuff from moving in a longitudinal direction with respect to the
tubular structure when said cuff is in a fully inflated condition, including at least
one circumferential ridge disposed about the inflatable cuff.
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Patent Owner further argues:
Even if one w[]ere to add spiral ridge 48 [of Todd’s Figure 7] to the
arrangement in Lazarus ‘088, the result would be a disaster as a spiral
ridge would not stop fluid flow exterior to the tubular body 12 of
intraluminal graft 10[,] and therefore[,] would destroy the objective in
Lazarus ‘088 of creating a seal between tubular body 12 and the inner
surface of the vessel wall, as stated in column 13, lines 1-7.
Id. at 15. As such, Patent Owner focuses on Todd’s Figure 7 and fails to
address Figure 8, upon which Petitioner also relies. Accordingly, on the
record before us, Patent Owner’s argument is not persuasive.
Patent Owner also argues that “[n]o explanation of an apparent reason to
modify Lazarus ‘088 is given” and, similarly, that “no explanation is provided as to
what apparent reason exists to modify Lazarus ‘088 and what modifications the
Petitioner envisions.” Prelim. Resp. 14, 15. However, we understand Petitioner to
contend that it would have been obvious to a person of ordinary skill in the art to
combine the teachings of Lazarus and Todd, because Lazarus teaches the use of
materials that enhance attachment to a vessel without barbs or other penetrating
devices, and Todd similarly teaches the use of protuberances (such as outwardly
projecting annular rings 52 of Figure 8) that grip the walls of a vessel without
damaging the tissue. Pet. 22-23. We are persuaded, on the present record, that
Petitioner has provided adequate articulated reasoning with rational underpinning
to support combining the teachings of Lazarus and Todd. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. at 417 (“[W]hen a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination is
obvious.”) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
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For the foregoing reasons, Petitioner has established a reasonable likelihood
that it would prevail in showing that claim 1 is unpatentable as obvious over
Lazarus and Todd. In addition, the claim charts and supporting evidence presented
by Petitioner that explain how these prior art references allegedly teach the claimed
subject matter recited in claims 4-6, 9-11, 13, 14, 16, 17, and 19-21 have merit.
Therefore, Petitioner also has established a reasonable likelihood that it would
prevail in showing that claims 4-6, 9-11, 13, 14, 16, 17, and 19-21 are unpatentable
under 35 U.S.C. § 103(a) over Lazarus and Todd.
D. Claims 1, 2, 6-15, and 18-24—Anticipation
or Obviousness over Samuels ’851
Petitioner contends that claims 1, 2, 6-15, and 18-24 are anticipated under
35 U.S.C. § 102(b) by, or obvious under 35 U.S.C. § 103(a) over, Samuels ’851.
After considering the arguments and supporting evidence submitted by the parties,
we conclude that Petitioner has not established a reasonable likelihood that it
would prevail in showing that any of claims 1, 2, 6-15, and 18-24 are unpatentable
over Samuels ’851.
Petitioner contends that Samuels ’851 discloses inflatable cuff 10 having a
plurality of reinforced recesses 12 radially arrayed around its outer surface and
that, when cuff 10 is inflated fully, recesses 12 pop out and are dome-shaped. E.g.,
Pet. 27, claim chart, at 1a-2 and 1a-3 (citing to Ex. 1002, 2:40-42, 57-59, 62-63,
Fig. 3). Petitioner has not persuaded us that Samuels ’851 discloses or suggests “at
least one circumferential ridge disposed about the inflatable cuff,” as construed
above, because the recesses 12 do not form a raised strip. Accordingly, we are not

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persuaded that Samuels ’851 anticipates, or renders obvious, claims 1, 2, 6-15, and
18-24 of the ’575 patent.
E. Claims 1-6, 11, 14-17, and 21—Anticipation
or Obviousness over Rogers
Petitioner contends that claims 1-6, 11, 14-17, and 21 are anticipated under
35 U.S.C. § 102(b) by, or obvious under 35 U.S.C. § 103(a) over, Rogers. After
considering the arguments and supporting evidence submitted by the parties, we
conclude that Petitioner has not established a reasonable likelihood that it would
prevail in showing that any of claims 1-6, 11, 14-17, and 21 are unpatentable over
Rogers.
Petitioner contends that Rogers discloses an intraluminal stenting graft
including collapsible tube 12 having outer layer 18 that is joined to inner layer 20
to form a plurality of cylinders 30 that extend longitudinally. E.g., Pet. 27, claim
chart, at 1a-2 and 1a-3 (citing to Ex. 1003, 2:33-37; Fig. 1). Petitioner has not
persuaded us that Rogers discloses or suggests “at least one circumferential ridge
disposed about the inflatable cuff,” as construed above, because there are no strips
circumferentially disposed about the outer surface of the inflatable cuff.
Accordingly, we are not persuaded that Rogers anticipates, or renders obvious,
claims 1-6, 11, 14-17, and 21 of the ’575 patent.

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F. Claims 1-24—Obviousness
over Samuels ’851and Rogers
For the reasons discussed above in sections II.D and II.E, we conclude that
Petitioner has not established a reasonable likelihood that it would prevail in
showing that any of claims 1-24 are unpatentable under 35 U.S.C. § 103(a) over
Samuels ’851 and Rogers.
G. Claims 1, 2 and 4-24—Obviousness
over Samuels ’851 and Lazarus
As discussed in section II.D, Petitioner has not persuaded us that Samuels
’851 discloses or suggests “at least one circumferential ridge disposed about the
inflatable cuff,” as construed above. Petitioner does not contend that Lazarus
remedies that deficiency in Samuels ’851. See Pet. 40-41, 50-51, 57, claim chart,
at 1a-3, 14b-1, 23b-1. Accordingly, we conclude that Petitioner has not established
a reasonable likelihood that it would prevail in showing that any of claims 1, 2, and
4-24 are unpatentable under 35 U.S.C. § 103(a) over Samuels ’851 and Lazarus.
H. Claims 1, 2, 4-16, and 18-24—Obviousness
over Samuels ’851 and Rhodes
As discussed in section II.D, Petitioner has not persuaded us that Samuels
’851 discloses or suggests “at least one circumferential ridge disposed about the
inflatable cuff,” as construed above. Petitioner does not contend that Rhodes
remedies that deficiency in Samuels ’851. See Pet. 40, 50-51, 57, claim chart, at
1a-3, 14b-1, 23b-1. Accordingly, we conclude that Petitioner has not established a
reasonable likelihood that it would prevail in showing that any of claims 1, 2, 4-16,

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and 18-24 are unpatentable under 35 U.S.C. § 103(a) over Samuels ’851 and
Rhodes.
I. Remaining Grounds of Unpatentability
Petitioner also contends that the following claims are unpatentable under
35 U.S.C. § 103(a): 1) claims 1, 2, 6-15, and 18-24 over Samuels ’851 and Lane,
Miller, or Sisson; 2) claims 1, 4-6, 9-11, 13, 14, 16, 17, and 19-21 over Lazarus
and Miller or Sisson; and 3) claims 1, 2, 4-8, 11, 13-18, and 21 over Holman,
Pigott, and Lane. Petitioner relies upon Lane, Miller, and Sisson as disclosing
friction-enhancing surfaces similar to those disclosed in Todd. Pet. 22-23.
Further, the claims Petitioner asserts to be unpatentable over the combination of
Holman, Pigott, and Lane are a subset of the two groups of claims asserted to be
unpatentable over the combinations of 1) Samuels ’851 and Todd and 2) Lazarus
and Todd, respectively. Petitioner has not shown that either of those combinations
has any deficiency, or potential deficiency, that might be remedied by the
combination of Holman, Pigott, and Lane. Accordingly, the remaining grounds of
unpatentability are redundant to the grounds of unpatentability on which we initiate
an inter partes review. Therefore, we do not authorize an inter partes review on
the remaining grounds of unpatentability asserted by Petitioner against claims 1, 2,
and 4-24 of the ’575 Patent. See 37 C.F.R. § 42.108(a).

III. CONCLUSION
For the forgoing reasons, we determine that there is a reasonable likelihood
that Petitioner would prevail in showing that claims 1, 2, and 4-24 of the ’575

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patent are unpatentable. However, we have not made a final determination on the
patentability of any challenged claim.

IV. ORDER
Accordingly, it is
ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
hereby instituted as to claims 1, 2, and 4-24 of the ’575 patent on the following
grounds of unpatentability:
1. Claims 1, 2, 6-15, and 18-24 as unpatentable under 35 U.S.C. § 103(a) as
obvious over Samuels ’851 and Todd; and
2. Claims 1, 4-6, 9-11, 13, 14, 16, 17, and 19-21 as unpatentable under
35 U.S.C. § 103(a) as obvious over Lazarus and Todd;
FURTHER ORDERED that no other grounds of unpatentability are
authorized for the inter partes review as to claims 1-24 of the ’575 patent;
FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 C.F.R.
§ 42.4, notice is hereby given of the institution of a trial on the grounds of
unpatentability authorized above; the trial commences on the entry date of this
decision;
FURTHER ORDERED that an initial conference call with the Board is
scheduled for 2:00 PM Eastern Time on February 18, 2014; the parties are directed
to the Office Trial Practice Guide (Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,765-66 (Aug. 14, 2012)) for guidance in preparing for the conference
call, and should be prepared to discuss any proposed change to the Scheduling
Order concurrently entered herewith and any motion the parties intend to file; and
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FURTHER ORDERED that Patent Owner shall re-file, within five business
days of the date of this decision, Exhibit 1015 correctly numbered per 37 C.F.R.
§ 42.63(c).

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For the PETITIONER:
Daniel A. Scola, Jr.
Michael I. Chakansky
[e-mail]
[e-mail]
For the PATENT OWNER:
Everett Diederiks
James D. Petruzzi
[e-mail]
[e-mail]

ELD

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EXHIBIT B

Case3:13-cv-02261-EMC Document34-2 Filed02/13/14 Page2 of 8

[e-mail]
571-272-7822

Paper 11
Entered: February 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
TRIVASCULAR, INC.
Petitioner
v.
SHAUN L.W. SAMUELS
Patent Owner
____________
Case IPR2013-00493
Patent 6,007,575
____________
Before RICHARD E. RICE, SCOTT E. KAMHOLZ, and
ADAM V. FLOYD, Administrative Patent Judges.
RICE, Administrative Patent Judge.

SCHEDULING ORDER

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A.

INITIAL CONFERENCE CALL

The initial conference call is scheduled for 2:00 PM Eastern Time on
February 18, 2014.
B.

DUE DATES

This order sets due dates for the parties to take action after institution of the
proceeding. The parties may stipulate to different dates for DUE DATES 1 through
3 (earlier or later, but no later than DUE DATE 4). A notice of the stipulation,
specifically identifying the changed due dates, must be promptly filed. The parties
may not stipulate to an extension of DUE DATES 4-7.
In stipulating to different times, the parties should consider the effect of the
stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to supplement
evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-examination (37 C.F.R.
§ 42.53(d)(2)), and to draft papers depending on the evidence and crossexamination testimony (see section C, below).
The parties are reminded that the Testimony Guidelines appended to the
Office Trial Practice Guide, 77 Fed.Reg. 48,756, 48,772 (Aug. 14, 2012)
(Appendix D), apply to this proceeding. The Board may impose an appropriate
sanction for failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For
example, reasonable expenses and attorneys’ fees incurred by any party may be
levied on a person who impedes, delays, or frustrates the fair examination of a
witness.

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1. DUE DATE 1
The patent owner may file—
a. A response to the petition (37 C.F.R. § 42.120), and
b. A motion to amend the patent (37 C.F.R. § 42.121).
The patent owner must file any such response or motion to amend by DUE
DATE 1. If the patent owner elects not to file anything, the patent owner must
arrange a conference call with the parties and the Board. The patent owner is
cautioned that any arguments for patentability not raised in the response will be
deemed waived.
2. DUE DATE 2
The petitioner must file any reply to the patent owner’s response and
opposition to the motion to amend by DUE DATE 2.
3. DUE DATE 3
The patent owner must file any reply to the petitioner’s opposition to patent
owner’s motion to amend by DUE DATE 3.
4. DUE DATE 4
a. The petitioner must file any motion for an observation on the crossexamination testimony of a reply witness (see section C, below) by DUE DATE 4.
b. Each party must file any motion to exclude evidence (37 C.F.R
§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by DUE
DATE 4.

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5. DUE DATE 5
a. The patent owner must file any reply to a petitioner observation on crossexamination testimony by DUE DATE 5.
b. Each party must file any opposition to a motion to exclude evidence by
DUE DATE 5.
6. DUE DATE 6
Each party must file any reply for a motion to exclude evidence by DUE
DATE 6.
7. DUE DATE 7
The oral argument (if requested by either party) is set for DUE DATE 7.
C.

CROSS-EXAMINATION

Except as the parties might otherwise agree, for each due date—
1. Cross-examination begins after any supplemental evidence is due.
37 C.F.R. § 42.53(d)(2).
2. Cross-examination ends no later than a week before the filing date for
any paper in which the cross-examination testimony is expected to be used. Id.
D.

MOTION FOR OBSERVATION ON CROSS-EXAMINATION

A motion for observation on cross-examination provides the petitioner with
a mechanism to draw the Board’s attention to relevant cross-examination
testimony of a reply witness, since no further substantive paper is permitted after
the reply. See Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
2012). The observation must be a concise statement of the relevance of precisely

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Case IPR2013-00493
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identified testimony to a precisely identified argument or portion of an exhibit.
Each observation should not exceed a single, short paragraph. The patent owner
may respond to the observation. Any response must be equally concise and
specific.
DUE DATE APPENDIX

DUE DATE 1…………………………………………………April 4, 2014
Patent owner’s response to the petition
Patent owner’s motion to amend the patent

DUE DATE 2…………………………………………………. June 4, 2014
Petitioner’s reply to patent owner response to petition
Petitioner’s opposition to motion to amend

DUE DATE 3………………………………………………… July 8, 2014
Patent owner’s reply to petitioner opposition to motion to amend

DUE DATE 4………………………………………………… July 29, 2014
Petitioner’s motion for observation regarding
cross-examination of reply witness
Motion to exclude evidence
Request for oral argument

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DUE DATE 5………………………………………………… August 12, 2014
Patent owner’s response to observation
Opposition to motion to exclude

DUE DATE 6………………………………………………… August 19, 2014
Reply to opposition to motion to exclude

DUE DATE 7………………………………………………… September 3, 2014
Oral argument (if requested)

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Case IPR2013-00493
Patent 6,007,575
For the PETITIONER:
Daniel A. Scola, Jr.
Michael I. Chakansky
[e-mail]
[e-mail]
For the PATENT OWNER:
Everett Diederiks
James D. Petruzzi
[e-mail]
[e-mail]

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