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)

Download PDF
Case3:13-cv-02261-EMC Document34 Filed02/13/14 Page1 of 5 1 2 3 4 James D. Petruzzi (Bar No. 115175) MASON & PETRUZZI 4900 Woodway Dr., Suite 745 Houston, TX 77056 Telephone: (713) 840-9993 Facsimile: (713) 877-9100 jpetruzzi@masonpetruzzi.com 5 6 7 8 9 10 11 Arthur S. Feldman (Admitted Pro Hac Vice) Texas State Bar No. 06886600 55 Waugh Dr., Suite 800 Houston, TX 77002 Telephone: (713) 586-1616 Facsimile: (713) 586-1617 arthur@feldmanlawfirm.com 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: (650) 859-7000 Facsimile: (650) 859-7500 marc.cohen@kirkland.com sean.christofferson@kirkland.com lien.dang@kirkland.com Attorneys for Defendant TRIVASCULAR, INC. Attorneys for Plaintiff DR. SHAUN L. W. SAMUELS 12 UNITED STATES DISTRICT COURT 13 NORTHERN DISTRICT OF CALIFORNIA 14 15 SAN FRANCISCO DIVISION DR. SHAUN L.W. SAMUELS, Case No. CV-13-2261-EMC 16 17 18 Plaintiff, vs. TRIVASCULAR, INC., 19 JOINT STATUS REPORT ON THE PATENT TRIAL AND APPEAL BOARD’S DECISION ON THE INTER PARTES PETITION Defendant. 20 21 TRIVASCULAR, INC., Counter-Claimant, 22 23 24 25 vs. DR. SHAUN L. W. SAMUELS, Counter-Defendant. 26 27 28 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 1 Pursuant to Paragraphs 2 and 5 of the Court’s Order Granting Joint Stipulation to Stay Case 2 Pending Inter Partes Review (Dkt. No. 32), Plaintiff Dr. Shaun L.W. Samuels (“Dr. Samuels”) and 3 Defendant TriVascular, Inc. (“TriVascular”) submit a status report as follows: 4 1. On February 4, 2014, the Patent Trial and Appeals Board (“PTAB”) issued a decision 5 instituting inter partes review of U.S. Patent 6,007,575 (“the ’575 patent”), the only patent-in-suit in 6 this case. The decision is attached hereto as Exhibit A. 7 8 2. The PTAB further issued a Scheduling Order for the inter partes review, summarized below and attached hereto as Exhibit B. EVENT DUE DATE 10 Patent owner’s response to the petition April 4, 2014 11 Patent owner’s motion to amend the patent April 4, 2014 12 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 19 Request for oral argument July 29, 2014 20 Patent owner’s response to observation August 12, 2014 21 Opposition to motion to exclude August 12, 2014 22 Reply to opposition to motion to exclude August 19, 2014 Oral argument (if requested) September 3, 2014 9 13 14 15 16 17 18 23 24 25 26 27 28 JOINT STATUS REPORT ON THE PATENT TRIAL AND APPEAL BOARD’S DECISION ON THE INTER PARTES PETITION 1 CASE NO. CV-13-2261 Case3:13-cv-02261-EMC Document34 Filed02/13/14 Page3 of 5 1 3. In accordance with Paragraph 3 of the Court’s Order Granting Joint Stipulation to 2 Stay Case Pending Inter Partes Review (Dkt. No. 32), since the PTAB has instituted inter partes 3 review of the ’575 patent, “the case shall be further stayed until the PTAB issues a final written 4 decision.” 5 DATED: February 13, 2014 6 /s/ James D. Petruzzi James D. Petruzzi MASON & PETRUZZI 4900 Woodway Dr., Suite 745 Houston, TX 77056 Telephone: (713) 840-9993 Facsimile: (713) 877-9100 jpetruzzi@masonpetruzzi.com 7 8 9 10 11 12 13 14 15 16 /s/ Marc H. Cohen Marc H. Cohen marc.cohen@kirkland.com Sean O. Christofferson sean.christofferson@kirkland.com Lien K. Dang lien.dang@kirkland.com KIRKLAND & ELLIS LLP 3330 Hillview Avenue Palo Alto, CA 94304 Telephone: (650) 859-7000 Facsimile: (650) 859-7500 Arthur S. Feldman (Admitted Pro Hac Vice) Texas State Bar No. 06886600 55 Waugh Dr., Suite 800 Houston, TX 77002 Telephone: (713) 586-1616 Facsimile: (713) 586-1617 arthur@feldmanlawfirm.com Attorneys for Defendant TRIVASCULAR, INC. Attorneys for Plaintiff DR. SHAUN L. W. SAMUELS 17 18 19 20 21 22 23 24 25 26 27 28 JOINT STATUS REPORT ON THE PATENT TRIAL AND APPEAL BOARD’S DECISION ON THE INTER PARTES PETITION 2 CASE NO. CV-13-2261 Case3:13-cv-02261-EMC Document34 Filed02/13/14 Page4 of 5 1 ATTESTATION OF CONCURRENCE IN FILING 2 I, Marc H. Cohen, am the ECF User whose identification and password are being used to file 3 this Joint Stipulation. In compliance with Local Rule 5-1(i)(3), I hereby attest that James D. Petruzzi 4 of Mason & Petruzzi has concurred in this filing. 5 DATED: February 13, 2014 /s/ Marc H. Cohen Marc H. Cohen marc.cohen@kirkland.com Sean O. Christofferson sean.christofferson@kirkland.com Lien K. Dang lien.dang@kirkland.com KIRKLAND & ELLIS LLP 3330 Hillview Avenue Palo Alto, California 94304 Telephone: (650) 859-7000 Facsimile: (650) 859-7500 6 7 8 9 10 11 12 Attorneys for Defendant TriVascular, Inc. 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 JOINT STATUS REPORT ON THE PATENT TRIAL AND APPEAL BOARD’S DECISION ON THE INTER PARTES PETITION 3 CASE NO. CV-13-2261 Case3:13-cv-02261-EMC Document34 Filed02/13/14 Page5 of 5 1 CERTIFICATE OF SERVICE I HEREBY CERTIFY that on February 13, 2014 that a copy of the foregoing document is 2 3 being electronically filed with the Clerk of the United States District Court for the Northern District 4 of California by using the CM/ECF system, which will send notice of such filing to all counsel of 5 record. 6 DATED: February 13, 2014 /s/ Marc H. Cohen Marc H. Cohen marc.cohen@kirkland.com Sean O. Christofferson sean.christofferson@kirkland.com Lien K. Dang lien.dang@kirkland.com KIRKLAND & ELLIS LLP 3330 Hillview Avenue Palo Alto, California 94304 Telephone: (650) 859-7000 Facsimile: (650) 859-7500 7 8 9 10 11 12 13 Attorneys for Defendant TriVascular, Inc. 14 15 16 25 ER R NIA n M. Che FO dward Judge E H 24 RT 23 NO 22 LI 21 DERED SO OR ED IT IS DIFI AS MO A 20 RT U O 19 S 18 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 17 N F D IS T IC T O R C 26 27 28 CERTIFICATE OF SERVICE CASE NO. CV-13-2261 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page1 of 29 EXHIBIT A Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page2 of 29 Trials@uspto.gov 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 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page3 of 29 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 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page4 of 29 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. 3 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page5 of 29 Case IP PR2013-004 493 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 4 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page6 of 29 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 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page7 of 29 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 6 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page8 of 29 Case IPR2013-00493 Patent 6,007,575 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.” 7 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page9 of 29 Case IPR2013-00493 Patent 6,007,575 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 8 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page10 of 29 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. 9 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page11 of 29 Case IPR2013-00493 Patent 6,007,575 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. 10 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page12 of 29 Case IP PR2013-004 493 Patent 6,007,575 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. 11 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page13 of 29 Case IP PR2013-004 493 Patent 6,007,575 6 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 12 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page14 of 29 Case IPR2013-00493 Patent 6,007,575 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. 13 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page15 of 29 Case IP PR2013-004 493 Patent 6,007,575 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 14 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page16 of 29 Case IPR2013-00493 Patent 6,007,575 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 15 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page17 of 29 Case IPR2013-00493 Patent 6,007,575 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 16 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page18 of 29 Case IPR2013-00493 Patent 6,007,575 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. 17 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page19 of 29 Case IPR2013-00493 Patent 6,007,575 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. 18 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page20 of 29 Case IP PR2013-004 493 Patent 6,007,575 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 19 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page21 of 29 Case IPR2013-00493 Patent 6,007,575 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. 20 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page22 of 29 Case IPR2013-00493 Patent 6,007,575 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)). 21 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page23 of 29 Case IPR2013-00493 Patent 6,007,575 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 22 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page24 of 29 Case IPR2013-00493 Patent 6,007,575 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. 23 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page25 of 29 Case IPR2013-00493 Patent 6,007,575 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, 24 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page26 of 29 Case IPR2013-00493 Patent 6,007,575 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 25 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page27 of 29 Case IPR2013-00493 Patent 6,007,575 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 26 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page28 of 29 Case IPR2013-00493 Patent 6,007,575 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). 27 Case3:13-cv-02261-EMC Document34-1 Filed02/13/14 Page29 of 29 Case IPR2013-00493 Patent 6,007,575 For the PETITIONER: Daniel A. Scola, Jr. Michael I. Chakansky dscola@hbiplaw.com mchakansky@hbiplaw.com For the PATENT OWNER: Everett Diederiks James D. Petruzzi ediederiks@dwpatentlaw.com jpetruzzi@masonpetruzzi.com ELD 28 Case3:13-cv-02261-EMC Document34-2 Filed02/13/14 Page1 of 8 EXHIBIT B Case3:13-cv-02261-EMC Document34-2 Filed02/13/14 Page2 of 8 Trials@uspto.gov 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 Case3:13-cv-02261-EMC Document34-2 Filed02/13/14 Page3 of 8 Case IPR2013-00493 Patent 6,007,575 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. 2 Case3:13-cv-02261-EMC Document34-2 Filed02/13/14 Page4 of 8 Case IPR2013-00493 Patent 6,007,575 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. 3 Case3:13-cv-02261-EMC Document34-2 Filed02/13/14 Page5 of 8 Case IPR2013-00493 Patent 6,007,575 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 4 Case3:13-cv-02261-EMC Document34-2 Filed02/13/14 Page6 of 8 Case IPR2013-00493 Patent 6,007,575 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 5 Case3:13-cv-02261-EMC Document34-2 Filed02/13/14 Page7 of 8 Case IPR2013-00493 Patent 6,007,575 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) 6 Case3:13-cv-02261-EMC Document34-2 Filed02/13/14 Page8 of 8 Case IPR2013-00493 Patent 6,007,575 For the PETITIONER: Daniel A. Scola, Jr. Michael I. Chakansky dscola@hbiplaw.com mchakansky@hbiplaw.com For the PATENT OWNER: Everett Diederiks James D. Petruzzi ediederiks@dwpatentlaw.com jpetruzzi@masonpetruzzi.com 7

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?