`Tel: 571-272-7822
`
`Paper 23
`Entered: February 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NEOCHORD, INC.,
`Petitioner,
`
`v.
`
`UNIVERSITY OF MARYLAND, BALTIMORE and
`HARPOON MEDICAL, INC.,
`Patent Owner.
`
`Case IPR2016-00208
`Patent 7,635,386 B1
`
`Before SALLY C. MEDLEY, ERICA A. FRANKLIN, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`WORTH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`
`On January 31, 2017, oral argument was heard on the merits of the
`instituted grounds pursuant to the Scheduling Order for this proceeding. The
`afternoon before the hearing, Patent Owner University of Maryland,
`Baltimore (“the University”) contacted the Board seeking authorization to
`file a motion to dismiss based on sovereign immunity. Because of the lack
`of written briefing on this issue, the panel informed the parties that a
`separate conference call would be held for the University to seek written
`briefing, pursuant to the Board’s requirements for prior authorization. See
`37 C.F.R. § 42.20(b). That call was scheduled for February 7, 2017.
`On February 7, 2017, the Board held a conference call between
`Judges Medley, Franklin, and Worth and counsel for Petitioner NeoChord,
`Inc. (“NeoChord”) and the University.1 A court reporter was present on the
`call, and the University has filed a copy of the transcript in the record. Paper
`21.
`
`The University argued that it is an arm of the State of Maryland, and
`is entitled to dismissal based on the panel’s decision in Covidien LP v.
`University of Florida Research Foundation Inc., PTAB Case IPR2016-
`01274 (Jan. 25, 2017) (Paper 21) (granting motion to dismiss). The panel
`inquired whether the University’s request was timely, and why this issue had
`not been pleaded sooner. The University represented that it contacted the
`Board to seek authorization within three business days of issuance of the
`Covidien decision.
`NeoChord argued, inter alia, that the University must show that its
`request, subject to Rule 42.5(c), is based on good cause, or in the interest of
`
`1 Harpoon Medical, Inc. has not entered a separate appearance in this
`proceeding.
`
`2
`
`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`justice, in order to excuse the late action. The University argued that good
`cause existed because of the timing of the Covidien decision, and that, in any
`event, the interest of justice was provided by the sovereign status of
`Maryland.
`After considering the unique circumstances of this case, we find it to
`be in the interest of justice to obtain briefing on this issue, and we authorize
`the University to file a motion to dismiss. Pursuant to the discussion on the
`conference call, the University has represented that it will file therewith a
`redacted copy of its license agreement with its exclusive licensee, Harpoon
`Medical, Inc.2
`Accordingly, having heard from the parties, we authorize the
`University to file its motion by February 21, 2017. The University’s brief is
`limited to fifteen (15) pages. In its briefing, the University should bear in
`mind the arguments made by NeoChord during the teleconference. E.g.,
`Paper 21, 17:18–23:5.
`NeoChord may file an opposition, also limited to fifteen (15) pages,
`by February 28, 2017. The University may further file a reply to
`NeoChord’s opposition by March 7, 2017, limited to ten (10) pages.
`Accordingly, it is
`ORDERED that the University of Maryland, Baltimore is authorized
`to file, no later than February 21, 2017, a Motion to Dismiss Based on
`Sovereign Immunity, limited to fifteen (15) pages, and may file, in addition,
`a redacted copy of its license agreement with Harpoon Medical, Inc.;
`
`
`2 Petitioner argued that the filing of a license agreement would require a
`showing in the interest of justice. Paper 21, 19–21. We so determine.
`
`3
`
`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`
`FURTHER ORDERED that NeoChord, Inc. may file, no later than
`February 28, 2017, an Opposition to Patent Owner’s Motion, limited to
`fifteen (15) pages;
`FURTHER ORDERED that the University of Maryland, Baltimore
`may file, no later than March 7, 2017, a Reply to Petitioner’s Opposition to
`Patent Owner’s Motion, limited to ten (10) pages; and
`FURTHER ORDERED that no other filings are authorized at this
`
`time.
`
`PETITIONER:
`Patterson Thuente Pedersen, P.A.
`Brad D. Pedersen
`Eric H. Chadwick
`Chad J. Wickman
`
`pedersen@ptslaw.com
`chadwick@ptslaw.com
`wickman@ptslaw.com
`
`PATENT OWNER:
`
`Cooley LLP
`C. Scott Talbot
`Erik B. Milch
`Nancy A. Vashaw
`
`stalbot@cooley.com
`emilch@cooley.com
`nvashaw@cooley.com
`IPR2016-00208@cooley.com
`
`
`4
`
`
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