`Tel: 571-272-7822
`
`Paper 16
`Entered: May 15, 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
`Authorizing Additional Briefing
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2017-01281
`Patent 7,828,767 B2
`On May 4, 2018, we issued an order modifying our Institution
`Decision (Paper 9) to include review of all challenged claims of U.S. Patent
`No. 7,828,767 B2 (Ex. 1001, “the ’767 patent”) on all grounds presented in
`the Petition. Paper 15, 3–4. We also requested that the parties meet and
`confer to determine whether they desired any changes to the schedule or
`briefing in the proceeding. Id. at 4. In response, Edwards Lifesciences
`Corporation (“Petitioner”) informed the Board on its behalf and on behalf of
`Patent Owner Boston Scientific Scimed, Inc., that:
`Petitioner seeks leave to submit a reply brief to address the
`(1)
`newly instituted claims and grounds; and
`Patent Owner opposes Petitioner’s request to submit a reply
`brief, but if a reply brief is authorized, Patent Owner seeks to
`adopt its Preliminary Response with respect to the newly
`instituted claims and grounds as its Patent Owner Response.
`
`(2)
`
`Ex. 3001.
`Typically, “[a]rguments must not be incorporated by reference from
`one document into another document.” 37 C.F.R. § 42.6(a)(3).
`Notwithstanding this provision, however, the Supreme Court’s decision in
`SAS Inst., Inc. v. Iancu, 2018 WL 1914661 (U.S. Apr. 24, 2018) has created
`an unusual circumstance, especially because this proceeding is at a fairly late
`stage. Therefore, considering the facts before us and our need to secure the
`just, speedy, and inexpensive resolution of this proceeding (37 C.F.R.
`§§ 42.1(a), 42.100(c)), we determine that it is appropriate to waive 37 C.F.R.
`§ 42.6(a)(3) to allow this incorporation by reference. Our determination in
`this regard applies only to the newly-added challenges. See Paper 15.
`
`2
`
`
`
`IPR2017-01281
`Patent 7,828,767 B2
`Additionally, considering the facts before us, we determine that it is
`appropriate for Petitioner to be permitted to file a reply to respond to the
`newly-added challenges with respect to the Decision on Institution and to the
`arguments and evidence provided in Patent Owner’s Preliminary Response,
`as adopted and incorporated as Patent Owner’s Response with our
`authorization. The provisions of 37 C.F.R. § 42.23 otherwise apply. See,
`e.g., 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments made in
`the corresponding . . . patent owner response.”).
`In consideration of the foregoing, it is hereby:
`ORDERED that we waive 37 C.F.R. § 42.6(a)(3) such that the
`arguments and evidence provided in Patent Owner’s Preliminary Response
`(Paper 8) directed to challenges instituted on May 4, 2018 (Paper 15) are
`adopted and incorporated as Patent Owner’s Response only as to those
`challenges; and,
`FURTHER ORDERED that Petitioner may file a reply in response
`only to issues raised in either the Institution Decision (Paper 9) or Patent
`Owner’s Preliminary Response (Paper 8) and only with respect to challenges
`instituted on May 4, 2018 (Paper 15), not to exceed fifteen (15) pages and
`due on or before June 8, 2018.
`
`
`
`
`
`3
`
`
`
`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
`
`4
`
`
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