`Tel: 571-272-7822
`
`Paper 15
`Entered: May 4, 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.
`
`
`ORDER
`
`Conduct Of Proceeding
`Modifying Institution Decision to Institute Inter Partes Review on
`All Challenged Claims and Grounds Presented in the Petition
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2017-01281
`Patent 7,828,767 B2
`Edwards Lifesciences Corporation (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting institution of inter partes review of claims 1–12,
`14, 16, and 17 of U.S. Patent No. 7,828,767 B2 (Ex. 1001, “the
`’767 patent”). On November 3, 2017, we instituted an inter partes review of
`claims 5, 6, 8–12, 14, 16, and 17. Paper 9 (“Institution Decision” or
`“Dec.”), 31. Patent Owner Boston Scientific Scimed, Inc., did not file a
`Patent Owner Response or Motion to Amend following the institution of
`inter partes review. During a conference call with the parties on
`February 21, 2018, we confirmed that Patent Owner had waived any
`arguments for patentability on the instituted grounds by not filing a Patent
`Owner Response or Motion to Amend the Patent. See Paper 10, 6 (stating
`that “[t]he patent owner is cautioned that any arguments for patentability not
`raised in the response will be deemed waived”).
`On April 24, 2018, the Supreme Court held in SAS Inst., Inc. v. Iancu
`that a decision to institute under 35 U.S.C. § 314 may not institute on less
`than all claims challenged in the petition. 2018 WL 1914661, at *10 (U.S.
`Apr. 24, 2018). In our Institution Decision, we determined that Petitioner
`demonstrated a reasonable likelihood that it would establish that at least one
`of the challenged claims of the ’767 patent is unpatentable. Dec. at 2. We
`modify our Institution Decision to institute on all of the claims and all of the
`grounds presented in the Petition.
`Although Patent Owner elected not to file a Response or Motion to
`Amend following institution, this Order introduces challenged claims and
`grounds from the Petition into this proceeding that were not previously
`instituted. The parties are to meet and confer to discuss their positions with
`respect to the impact of SAS on this proceeding. The parties should discuss
`
`2
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`IPR2017-01281
`Patent 7,828,767 B2
`their proposals to accommodate the addition of claims and grounds into this
`proceeding and shall endeavor to reach agreement and develop a joint
`proposal, including any requested additional briefing and the length of such
`briefing. Furthermore, the parties should discuss a proposed revision to the
`Scheduling Order if needed to achieve the parties’ proposals with the aim of
`concluding this proceeding within the twelve-month timeframe established
`by statute.
`After conferring, the parties must, within seven (7) days of the date of
`this Order, submit a proposal (or, if the parties do not agree on a joint
`proposal, the parties must submit their respective proposals) in an email to
`the Board, in which the parties also request a conference call to discuss any
`additional briefing and modification of the schedule. The parties’ email
`must include proposed times for such a call when both parties are available.
`In consideration of the foregoing, it is hereby:
`ORDERED that our Institution Decision is modified to include review
`of all challenged claims of the ’767 patent on all grounds presented in the
`Petition, as follows:
`
`3
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`IPR2017-01281
`Patent 7,828,767 B2
`
`Basis
`References
`§ 103
`Dlugos1 and Hijlkema2
`§ 103
`Dlugos, Hijlkema, and Konstantino
`§ 103
`Dlugos, Hijlkema, and Forman3
`§ 102
`Dlugos
`§ 103
`Dlugos
`§ 103
`Dlugos and Eskaros4
`§ 103
`Dlugos, Eskaros, and Konstantino5
`§ 103
`Dlugos, Eskaros, and Hijlkema
`§ 103
`Dlugos, Eskaros, and Forman
`§ 103
`Dlugos, Eskaros, and Traxler6
`Dlugos, Eskaros, Traxler, and Forman § 103
`Dlugos, Eskaros, Forman, and Becker7 § 103
`Dlugos and Bampos8
`§ 103
`and,
`
`Claims challenged
`1, 2, 4, 5, and 8
`3
`6, 14, and 16
`5
`5
`5
`7
`8
`6, 14, and 16
`9, 10, and 12
`11
`17
`1
`
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine any desired additional briefing and modification of the
`schedule and shall provide their proposals and request a conference call with
`the Board within seven (7) days of the date of this Order.
`
`
`1 WO 2007/020087 A1, published February 22, 2007 (Ex. 1008, “Dlugos”).
`2 U.S. Patent No. 5,853,389, issued Dec. 29, 1998 (Ex. 1009, “Hijlkema”).
`3 U.S. Patent No. 5,501,759, issued March 26, 1996 (Ex. 1012, “Forman”).
`4 U.S. Patent App. Pub. No. 2008/0097300 A1, published April 24, 2008
`(Ex. 1011, “Eskaros”).
`5 U.S. Patent App. Pub. No. 2005/0177130 A1, published August 11, 2005
`(Ex. 1010, “Konstantino”).
`6 U.S. Patent App. Pub. No. 2001/0047149 A1, published November 29,
`2001 (Ex. 1013, “Traxler”).
`7 U.S. Patent No. 4,251,305, issued February 17, 1981 (Ex. 1014, “Becker”).
`8 U.S. Patent No. 6,013,055, issued January 11, 2000 (Ex. 1015, “Bampos”).
`
`4
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`IPR2017-01281
`Patent 7,828,767 B2
`
`PETITIONER:
`
`James Isbester
`KILPATRICK TOWNSEND & STOCKTON LLP
`jisbester@kilpatricktownsend.com
`
`Craig Summers
`Cheryl Burgess
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2css@knobbe.com
`2ctb@knobbe.com
`
`PATENT OWNER:
`
`Wallace Wu
`Jennifer Sklenar
`Nicholas Nyemah
`ARNOLD & PORTER KAYE SCHOLER LLP
`wallace.wu@apks.com
`jennifer.sklenar@apks.com
`nicholas.nyemah@aporter.com
`
`5
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`