UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`EDWARDS LIFESCIENCES CORPORATION,
`
`
`
`Petitioner,
`
`v.
`
`ENDOHEART AG,
`
`Patent Owner.
`
`____________
`
`Case IPR2016-00300
`
`U.S. Patent No. 8,182,530
`
`____________
`
`PETITIONER’S MOTION UNDER 37 C.F.R. § 42.104(c)
`TO CORRECT PETITION
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`EDWARDS LIFESCIENCES CORPORATION,
`
`
`
`Petitioner,
`
`v.
`
`ENDOHEART AG,
`
`Patent Owner.
`
`____________
`
`Case IPR2016-00300
`
`U.S. Patent No. 8,182,530
`
`____________
`
`PETITIONER’S MOTION UNDER 37 C.F.R. § 42.104(c)
`TO CORRECT PETITION
`
`
`
`
`Petitioner’s Motion Under 37 C.F.R. § 42.104(c)
`Case IPR2016-00300
`U.S. Patent No. 8,182,530
`
`
`Petitioner, Edwards Lifesciences Corporation (“Edwards”), requests
`
`permission under 37 C.F.R. § 42.104(c) to file a corrected Petition to fix a clerical
`
`error in the Real Party-in-Interest section of the Mandatory Notices in its Petition.
`
`Pursuant to Rule 42.8(b)(1), Petitioner correctly identified Edwards Lifesciences
`
`Corporation and Edwards Lifesciences, LLC as the two real parties-in-interest.
`
`Petitioner, however, mis-transcribed the relationship between the two parties in the
`
`Mandatory Notices section of the Petition, information not required, per se,
`
`pursuant to the rules. Petitioner’s authorization to file this Motion was given by
`
`the Board and documented in the Order of March 8, 2016. See Paper 6.
`
`I.
`
`Background
`
`Edwards filed a Petition seeking inter partes review (“IPR”) of U.S. Patent
`
`No. 8,182,530 (the ‘530 patent) on December 9, 2015. In preparing its Petition,
`
`however, Edwards’ counsel made a clerical error by inadvertently mis-transcribing
`
`that Edwards Lifesciences, LLC is the parent company of Edwards Lifesciences
`
`Corporation. See IPR2016-00300, Paper 2 at 20.
`
`Edwards first noticed this error on February 17, 2016 when Endoheart AG’s
`
`(“Endoheart’s”) counsel, Mr. Edward Arons, sent an email correspondence to
`
`Edwards’ counsel of record, identifying a discrepancy found in the Mandatory
`
`Notices section of the Petition regarding the relationship between the two Edwards
`
`
`
`
`
`2
`
`
`
`Petitioner’s Motion Under 37 C.F.R. § 42.104(c)
`Case IPR2016-00300
`U.S. Patent No. 8,182,530
`
`
`Lifesciences entities. Endoheart reserved the right to oppose Edwards filing a
`
`revised Petition correcting the clerical or typographical error.
`
`Edwards includes with the revised Petition a Declaration of Ruby J.
`
`Natnithithadha (attached as Ex. 1046), attesting to the facts surrounding the clerical
`
`error, and a printout from SEC’s website (attached as Ex. 1047) plainly showing
`
`that Edwards Lifesciences Corporation is the parent company of Edwards
`
`Lifesciences, LLC.
`
`I. Edwards’ Correction Will Not Substantively Effect the Requested
`
`Relief
`
`When determining whether to grant a motion to correct a Petition under
`
`37 C.F.R. § 42.104(c), the Board considers “any substantial substantive effect,
`
`including any effect on the patent owner’s ability to file a preliminary response.”
`
`77 Fed. Reg. 48680, 48699. Further, the Board has previously noted that “this rule
`
`is remedial in nature and therefore is entitled to a liberal interpretation.” See ABB
`
`Inc. v. ROY-G-BIV Corp., IPR2013-00063, Paper 21 at 7 (Jan. 16, 2013) (citing
`
`Tcherepnin v. Knight, 389 U.S. 332, 336 (1967)). For the reasons provided next,
`
`Edwards respectfully submits that the requested change to its Petition, correcting
`
`the relationship between the two Edwards’ entities identified in the Mandatory
`
`
`
`
`
`3
`
`
`
`Petitioner’s Motion Under 37 C.F.R. § 42.104(c)
`Case IPR2016-00300
`U.S. Patent No. 8,182,530
`
`Notices section of the Petition, will not have any “substantial substantive effect” on
`
`this proceeding.
`
`37 CFR 42.8(a)(1) requires a Petitioner to file Mandatory Notices as part of
`
`its Petition, and Rule 42.8(b)(1) requires a notice identifying “each real party-in-
`
`interest for the party.” Importantly, Rule 42.8(b)(1) does not require a notice
`
`identifying the relationship between any two or more real parties-in-interest. As
`
`the requested correction regards information not required by Rule 42.8, it will have
`
`no impact on this proceeding. In particular, allowing Edwards to correctly identify
`
`that Edwards Lifesciences, LLC as a wholly owned entity of Edwards Lifesciences
`
`Corporation will not prejudice Endoheart or add any substantive information to this
`
`IPR required by law or regulation. The Petition, as-filed, including the clerical
`
`error sought to be corrected here, did not affect Endoheart’s ability to file the
`
`Preliminary Response dated March 15, 2016. See Paper 7. Edwards submits that
`
`the requested relief would benefit the public by providing a more accurate public
`
`record.
`
`Accordingly, Petitioner requests permission under 37 C.F.R. § 42.104(c) to
`
`file a Replacement Petition (attached hereto as Ex. 1045) for entry into the public
`
`record.
`
`
`
`
`
`
`
`4
`
`
`
`Petitioner’s Motion Under 37 C.F.R. § 42.104(c)
`Case IPR2016-00300
`U.S. Patent No. 8,182,530
`
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this proceeding to Deposit Account 15-0030 (Customer ID No.
`
`Respectfully submitted,
`Oblon, McClelland, Maier &
`Neustadt, LLP
`
`
`
`
`
`/W. Todd Baker /
`W. Todd Baker
`Reg. No. 45,265
`Attorney for Petitioner
`Edwards Lifesciences Corporation
`
`
`
`22850).
`
`
`
`
`
`
`
`
`
`
`Dated: March 22, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Customer Number
` 22850
`Tel. (703) 413-3000
`Fax. (703) 413-2220
`
`
`
`
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
`
`PETITIONER’S MOTION UNDER 37 C.F.R. 42.104(c) along with Exhibits
`
`1045-1047 on the counsel of record for the Patent Owner by filing this document
`
`through the Patent Review Processing System as well as delivering a copy via
`
`electronic mail to the following addresses:
`
`Edward M. Arons
`earons@weissarons.com
`
`Joel Weiss
`jweiss@weissarons.com
`Endoheart-IPR@weissarons.com
`
`Dated: March 22, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /W. Todd Baker /
`
`W. Todd Baker
`Reg. No. 45,265
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
