Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 101
`Entered: July 22, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COOK GROUP INCORPORATED
`and
`COOK MEDICAL LLC,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00134
`Patent 8,709,027 B2
`_______________
`
`
`Before JAMES T. MOORE, JAMES A. TARTAL,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`ORDER
`CONDUCT OF THE PROCEEDING
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 101
`Entered: July 22, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`COOK GROUP INCORPORATED
`and
`COOK MEDICAL LLC,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00134
`Patent 8,709,027 B2
`_______________
`
`
`Before JAMES T. MOORE, JAMES A. TARTAL,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`ORDER
`CONDUCT OF THE PROCEEDING
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00133
`Patent 8,709,027 B2
`
`
`I.
`
` Background
`
`The United States Court of Appeals for the Federal Circuit issued a
`
`decision in this case on April 30. 2020. Cook Group Incorporated, Cook
`
`Medical LLC v. Boston Scientific Scimed, Inc., 809 F. App’x. 990 (Fed. Cir.
`
`2020). That decision determined that we erred in our analysis of claims 4–6,
`
`15, and 20, and therefore vacated our decision that Petitioner failed to
`
`demonstrate by a preponderance of the evidence that those claims were
`
`unpatentable. The court remanded the proceeding to us, inter alia, to
`
`analyze the claims. Id., slip op. at 20.
`
`The court specifically found it was error for us not to consider
`
`Malecki. U.S. Patent No. 5,626,607 (“Malecki”) Embodiment #2 when
`
`considering the patentability of claim 20. The court also specifically found
`
`we erred in not considering the precise language of claim 20. Id. at 13. The
`
`court thus remanded this proceeding to us (1) to consider whether Malecki
`
`Embodiment #2 anticipates claim 20. Id.
`
`The court also specifically found we erred in not considering the
`
`impact of the admission contained within Patent Owner’s Preliminary
`
`Response. Id. at 17. The court vacated our finding that Sackier, U.S. Patent
`
`No. 5,749,881 (“Sackier”) and Nishioka, U.S. Patent No. 5,843,000
`
`(“Nishioka”) do not render claims 4–6, 15, and 20 obvious, and remanded
`
`for us (2) to consider, in the first instance, Patent Owner’s admission and the
`
`impact of that admission on the balance of the evidence. Id.
`
`
`
`b. Conference Call
`
`A conference call was conducted at 3:30 PM Eastern Time on
`
`Tuesday, June 30, 2020 in this proceeding.
`
`Judges James T. Moore, James A. Tartal, and Robert L. Kinder were
`
`2
`
`
`
`IPR2017-00133
`Patent 8,709,027 B2
`
`present for the call. Mr. Jeffry Nichols was present as lead counsel for the
`
`Petitioner, and Mr. David Caine was present as lead counsel for the Patent
`
`Owner. A transcript of the conference call has been filed as Exhibit 1119.
`
`(“Tr.”).
`
`The parties and the Board arranged the conference call to discuss
`
`post-remand procedures to be used in this proceeding and a related
`
`proceeding, IPR2017-00440 (IPR ’440).
`
`Petitioner took the position that no new argument or evidence would
`
`be appropriate. Tr. 7–9. Petitioner’s view is that the scope of the remand is
`
`very narrow and focused on (1) whether Patent Owner’s·admission
`
`concerning Sackier be given any weight, and (2) anticipation by Malecki.
`
`Id. at 11.
`
`According to Petitioner, there is already adequate briefing on these
`
`issues, including various briefs directed to the issues raised on remand. Id.
`
`Patent Owner agrees that no hearing is necessary on remand. Tr. 12–
`
`13. Patent Owner would prefer that we permit some briefing on the issue for
`
`context, especially in view of the Federal Circuit’s decision. Tr. 13. More
`
`specifically, Patent Owner feels that it could provide insight as to what
`
`constitutes an admission and how much weight we should give such. Tr.
`
`15–16.
`
`Patent Owner also is of the viewpoint that additional briefing on the
`
`issue of claim construction would be useful. Tr. 21. Patent Owner also
`
`contends that it should be permitted to submit additional evidence consisting
`
`of the preliminary patent owner response in a related inter partes review—
`
`IPR2017-00131, which also involves Petitioner and Patent Owner as parties.
`
`Tr. 16–18.
`
`3
`
`
`
`IPR2017-00133
`Patent 8,709,027 B2
`
`
`Both parties agree no oral argument is needed.
`
`We have carefully considered each of the parties’ positions and agree
`
`that some very limited briefing on the issues discussed above would be
`
`beneficial. Accordingly, each party is authorized an Opening Brief on
`
`Remand of 10 pages, due August 3, 2020. Each party is also authorized a
`
`Responsive Brief of 5 pages, due August 13, 2020. No new evidence shall
`
`be submitted. The parties may, however, cite to one specific pleading - the
`
`preliminary Patent Owner Response from IPR2017-00131. No oral
`
`argument shall be scheduled.
`
`II.
`
` Order
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner and Patent Owner may each submit an
`
`Opening Brief on Remand, limited to 10 pages, due August 3, 2020.
`
`ORDERED that Petitioner and Patent Owner may each submit a
`
`Responsive Brief on Remand, limited to 5 pages, due August 13, 2020.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-00133
`Patent 8,709,027 B2
`
`PETITIONER:
`
`Dominic P. Zanfardino
`Jeffry M. Nichols
`Robert Mallin
`Jason W. Schigelone
`James M. Oehler
`Andrew S. McElligott
`BRINKS GILSON & LIONE
`dpz@brinksgilson.com
`jnichols@brinksgilson.com
`rmallin@brinksgilson.com
`jschigelone@brinksgilson.com
`joehler@brinksgilson.com
`amcelligott@brinksgilson.com
`
`
`PATENT OWNER:
`
`David A. Caine
`Wallace Wu
`ARNOLD & PORTER LLP
`David.Caine@aporter.com
`Wallace.Wu@aporter.com
`
`
`5
`
`
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