Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: February 27, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01281
`Patent 7,828,767 B2
`____________
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`CONDUCT OF PROCEEDING
`Denying Request for Reply and Amending Due Dates 4–6
`37 C.F.R. § 42.5
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 13
`Entered: February 27, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01281
`Patent 7,828,767 B2
`____________
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`CONDUCT OF PROCEEDING
`Denying Request for Reply and Amending Due Dates 4–6
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-01281
`Patent 7,828,767 B2
`
`A conference call was conducted on February 21, 2018, between
`
`Edwards Lifesciences Corporation (“Petitioner”), Boston Scientific Scimed,
`
`Inc. (“Patent Owner”), and Judges Powell, Tartal, and Margolies. We
`
`instituted trial on claims 5, 6, 8–12, 14, 16, and 17 of U.S. Patent
`
`No. 7,828,767 B2 (“the ’767 patent”) on November 3, 2017. Paper 9. As
`
`required by our Case Management and Scheduling Order, Patent Owner
`
`requested the conference call to discuss the impact on this proceeding of
`
`Patent Owner’s decision not to file a Patent Owner Response or Motion to
`
`Amend the Patent, which had been due on February 9, 2018. See Paper 10,
`
`6, 8.
`
`We confirmed that Patent Owner had waived any arguments for
`
`patentability by not filing a Patent Owner Response or Motion to Amend the
`
`Patent. See id. at 6 (stating that “[t]he patent owner is cautioned that any
`
`arguments for patentability not raised in the response will be deemed
`
`waived”). We also explained that in our Institution Decision we determined
`
`the information presented in the Petition showed a reasonable likelihood that
`
`Petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the Petition. See Paper 9; see also 35 U.S.C. § 314(a). We did not
`
`determine in the Institution Decision whether Petitioner had demonstrated by
`
`a preponderance of the evidence that claims 5, 6, 8–12, 14, 16, and 17 were
`
`unpatentable. That determination, as we explained, would be made in a final
`
`written decision. See 35 U.S.C. § 318(a); 37 C.F.R. § 42.73.
`
`We asked Patent Owner if it intended to file a request for adverse
`
`judgment under 37 C.F.R. § 42.5. Patent Owner responded that it did not
`
`have such an intent at this time, but would take it under consideration. We
`
`request that Patent Owner promptly inform the Board if it determines that it
`
`2
`
`
`
`IPR2017-01281
`Patent 7,828,767 B2
`
`will request adverse judgment in this proceeding or will elect to file a
`
`disclaimer disclaiming one or more of claims 5, 6, 8–12, 14, 16, and 17 of
`
`the ’767 patent.
`
`Petitioner requested the opportunity to file a reply to address the
`
`Institution Decision, notwithstanding the absence of a Patent Owner
`
`Response. We have considered Patent Owner’s request, and it is denied. “A
`
`reply may only respond to arguments raised in the corresponding opposition,
`
`patent owner preliminary response, or patent owner response.” 37 C.F.R.
`
`§ 42.23(b). Further, because Patent Owner has waived any argument in
`
`favor of patentability, there is no issue raised by Patent Owner to which
`
`Petitioner can respond to in a reply. We understand Petitioner’s interest in
`
`addressing before the Panel the Petition and the Institution Decision in light
`
`of the standard applied for purposes of a final written decision, and
`
`Petitioner may have the opportunity to do so during oral argument, if
`
`requested.
`
` With the goal of expediting this proceeding in the absence of a
`
`Patent Owner Response or Motion to Amend the Patent, we amend Due
`
`Date 4 to require that any motion to exclude evidence or any request for oral
`
`argument be filed no later than March 16, 2018. Due Date 5 is amended to
`
`require that an opposition to any motion to exclude may be filed no later
`
`than March 30, 2018. Due Date 6 is amended to require that a reply to an
`
`opposition to any motion to exclude may be filed no later than April 6, 2018.
`
`We anticipate that the date of the oral argument also will be amended in
`
`coordination with the parties. As result, the parties may stipulate to different
`
`dates for amended Due Dates 4 and 5 (earlier or later, but no later than
`
`3
`
`
`
`IPR2017-01281
`Patent 7,828,767 B2
`
`amended Due Date 6). Any notice of such stipulation, specifically
`
`identifying the changed due dates, must be promptly filed.
`
`It is hereby:
`
`ORDERED that Petitioner’s request for leave to file a Reply in the
`
`absence of a Patent Owner Response is denied,
`
`FURTHER ORDERED that Due Date 4 is amended to require that
`
`any motion to exclude evidence or any request for oral argument may be
`
`filed no later than March 16, 2018,
`
`FURTHER ORDERED that Due Date 5 is amended to require that an
`
`opposition to any motion to exclude may be filed no later than March 30,
`
`2018,
`
`FURTHER ORDERED that Due Date 6 is amended to require that a
`
`reply to an opposition to any motion to exclude may be filed no later than
`
`April 6, 2018, and
`
`FURTHER ORDERED that an amendment of DUE Date 7 shall be
`
`determined by the Board upon receipt of a request for oral hearing.
`
`4
`
`
`
`IPR2017-01281
`Patent 7,828,767 B2
`
`PETITIONER:
`
`James Isbester
`jisbester@kilpatricktownsend.com
`
`Craig Summers
`2css@knobbe.com
`
`Cheryl Burgess
`2ctb@knobbe.com
`
`
`PATENT OWNER:
`
`Wallace Wu
`wallace.wu@apks.com
`
`Jennifer Sklenar
`jennifer.sklenar@apks.com
`
`Nicholas Nyemah
`nicholas.nyemah@aporter.com
`
`
`
`
`
`
`
`5
`
`
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