UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EDWARDS LIFESCIENCES CORP., EDWARDS LIFESCIENCES LLC, AND
`EDWARDS LIFESCIENCES AG,
`
`Petitioners,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`
`Patent Owner.
`_______________
`
`Case IPR2017-01293
`Patent 8,992,608
`_______________
`
`PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EDWARDS LIFESCIENCES CORP., EDWARDS LIFESCIENCES LLC, AND
`EDWARDS LIFESCIENCES AG,
`
`Petitioners,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`
`Patent Owner.
`_______________
`
`Case IPR2017-01293
`Patent 8,992,608
`_______________
`
`PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`STATEMENT OF MATERIAL FACTS ........................................................1
`
`III. ARGUMENT...................................................................................................2
`
`A.
`
`B.
`
`C.
`
`Petitioner Is Not Entitled To A “Second Bite At The
`Apple”....................................................................................................3
`
`Joinder Will Prejudice Patent Owner....................................................9
`
`The Statute Does Not Authorize Joinder Of The Same
`Party To An Instituted IPR..................................................................14
`
`IV. CONCLUSION..............................................................................................14
`
`- i -
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`ABB Inc. v. Roy-G-Biv Corp.,
`IPR2013-00286, Paper 14 (Aug. 9, 2013).......................................................7
`
`Ariosa Diagnostics v. Isis Innovation Ltd.,
`IPR2013-00250, Paper 25 (Sept. 3, 2013).......................................................8
`
`Boston Scientific Corp. v. Edwards Lifesciences Corp.,
`Case No. 1:16-cv-00275-SLR-SRF, Dkt. No. 1..............................................1
`
`Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc.,
`IPR. IPR2014-00557, Paper 10 (Jun. 13, 2014).............................................7
`
`Great West Casualty Co. v. Intellectual Ventures II, LLC,
`IPR2016-00453, Paper 8 (Feb. 22, 2016)......................................................12
`
`Harmonix Music Systems, Inc. v. Princeton Digital Image Corp.,
`IPR2015-00271, Paper 15 at 10 (Jun. 2, 2015) .............................................13
`
`HM Electronics, Inc. v. 3M innovative Properties Co.,
`IPR2015-00482, Paper 21 at 4-5 (Sept. 22, 2015) ........................................13
`
`LG Electronics, Inc. v. ATI Technologies ULC,
`IPR2015-01620, Paper 10 at 10 (Feb. 2, 2016)...............................................8
`
`Macronix Int’l Co., Ltd., et al v. Spansion LLC,
`IPR2014-00898, Paper 15 (Aug. 13, 2014)...................................................11
`
`Medtronic, Inc. v. Endotach LLC,
`IPR2014-00695, Paper 18 (Sept. 25, 2014).....................................................5
`
`Microsoft Corp. v. Enfish, LLC,
`IPR2014-00574, Paper 13 at 7 (Sept. 29, 2014)..............................................7
`
`Samsung Electronics Co. Ltd. v. Rembrandt Wireless Technologies, LP,
`IPR2015-00555, Paper 20 (Jun. 19, 2015) ......................................................6
`
`- ii -
`
`
`
`Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, LLC,
`IPR2015-00820, Paper 12 (May 15, 2015) ........................................6, 10, 14
`
`Sierra Wireless America, Inc. v. M2M Sols. LLC,
`IPR2016-00853, Paper 16 at 5 (Sept. 20, 2016)............................................12
`
`Skyhawke Tech., LLC v. L&H Concepts, LLC,
`IPR2014-01485, Paper 13 at 3 (Mar. 20, 2015) ............................................14
`
`Sony Corp. v. Yissum,
`IPR2013-00327, Paper 15 (Sept. 24, 2013).....................................................8
`
`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508, Paper 31 (Feb. 12, 2015)......................................................7
`
`Toyota Motor Corp. v. American Vehicular Sciences LLC,
`IPR2015-00262, Paper 10 at 6 (Jan. 29, 2015) ...............................................6
`
`STATUTES
`
`37 C.F.R. § 42.1(b) ..................................................................................................12
`
`37 C.F.R. § 42.20(c)...................................................................................................2
`
`37 C.F.R. § 42.23(a)...................................................................................................1
`
`37 C.F.R. § 42.122(b) ................................................................................................3
`
`35 U.S.C. § 315(c) ...............................................................................................3, 14
`
`OTHER AUTHORITIES
`
`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) .......................................................3
`
`- iii -
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.23(a), Patent Owner hereby respectfully opposes
`
`Petitioner’s Motion for Joinder with IPR2017-00060 (“’060 IPR”) (Paper 3)
`
`(“Motion” or “Mot.”). As shown below, Petitioner has failed to meet its burden of
`
`establishing that joinder would promote efficient resolution of the new issues of
`
`patentability first raised in the Petition filed in this IPR2017-01293 without
`
`substantially affecting the schedule for the ‘060 IPR and prejudicing Patent Owner.
`
`Petitioner has also failed to provide an adequate justification for its failure to raise
`
`the new grounds asserted in the current Petition when it filed the ‘060 IPR.
`
`Petitioner’s motion should therefore be denied.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`On April 19, 2016, Patent Owner asserted U.S. Patent No. 8,992,608 (“’608
`
`patent”) against Petitioner in the U.S. District Court for the District of Delaware.
`
`Boston Scientific Corp. v. Edwards Lifesciences Corp., Case No. 1:16-cv-00275-
`
`SLR-SRF, Dkt. No. 1. Petitioner was served on the same day. Id., Dkt. No. 6. On
`
`October 12, 2016, Petitioner filed a 75-page Petition for Inter Partes Review
`
`challenging claims 1-4 of the ‘608 patent in the ‘060 IPR on eleven grounds. ‘060
`
`IPR, Paper 1. On March 29, 2017, the Board instituted trial on three grounds1 –
`
`1 The Board instituted review on three obviousness grounds: WO 03/047468 A1
`
`(“Spenser”) in light of U.S. Patent App. Pub. No. 2003/0236567 A1 (“Elliot”);
`
`Footnote continued on next page
`
`- 1 -
`
`
`
`while declining to institute review on the remaining eight grounds – and entered a
`
`scheduling order. ‘060 IPR, Papers 7 and 8.
`
`On April 18, 2017, one year after being served with the complaint in district
`
`court, Petitioner filed a second petition, this time challenging claims 1-9 of the
`
`‘608 patent.
`
`IPR2017-01293, Paper 2 (“Second Petition”). Petitioner’s 72-page
`
`Second Petition asserts two new grounds of unpatentability based on four new
`
`references: (1) anticipation of claims 1-9 by Haug (Ex. 1135); and (2) obviousness
`
`of claims 1-4 over Seguin (Exs. 1150, 1153) in view of Lazarus (Ex. 1147) and
`
`Lawrence-Brown (Ex. 1149.) None of these references were asserted in the ‘060
`
`IPR. Along with its Second Petition, Petitioner submitted 54 exhibits, including a
`
`new expert declaration (Ex. 1136) of Dr. Nigel Buller containing 71 paragraphs
`
`addressing Petitioner’s new grounds. (Id. at ¶¶ 53-122.)
`
`III. ARGUMENT
`
`Petitioner bears the burden of establishing that it is entitled to joinder, 37
`
`C.F.R. § 42.20(c), and must (1) set forth the reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact joinder would have on the trial schedule for the existing review; and
`
`Footnote continued from previous page
`Spenser in light of U.S. Patent No. 6,015,431 (“Thornton”); and Spenser in light of
`
`U.S. Patent App. Pub. No. 2004/0082989 (“Cook”).
`
`-2-
`
`
`
`(4) address specifically how briefing and discovery may be simplified. See, e.g.,
`
`IPR2013-00386, Paper 16 at 3-4; Frequently Asked Question H5 at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp. The decision to grant joinder is
`
`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). The Board determines
`
`whether to grant joinder on a case-by-case basis, taking into account the particular
`
`facts of each case. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement
`
`of Sen. Kyl). Here, joinder is inappropriate for at least three reasons: (1) Petitioner
`
`fails to provide a sufficient reason to warrant a “second bite at the apple”;
`
`(2) joinder will have a substantial impact on the ‘060 IPR and unduly prejudice
`
`Patent Owner; and (3) the statute does not authorize the joinder of the same party
`
`to an already instituted IPR. Accordingly, the Board should exercise its discretion
`
`under § 315(c) to deny Petitioner’s Motion.
`
`A.
`
`Petitioner Is Not Entitled To A “Second Bite At The Apple”
`
`Petitioner waited until the Board’s institution decision in the ‘060 IPR before
`
`asserting two new grounds of invalidity that it could have asserted at the time of
`
`the ‘060 IPR; the Board should not permit such a serial, piecemeal approach. As
`
`an initial matter, with respect to its contention that claims 1-9 of the ‘608 patent are
`
`anticipated by its grandparent application, Petitioner does not even attempt to
`
`justify its failure to assert this ground in October 2016 or earlier. Petitioner’s
`
`argument turns entirely on the prosecution history of the ‘608 patent and members
`
`-3-
`
`
`
`of the same patent family. All information relevant to that argument was available
`
`to Petitioner as soon as the ‘608 patent was asserted against it.
`
`Petitioner’s attempt to justify its failure to assert its other ground ‒
`
`obviousness of claims 1-4 over Seguin in view of Lazarus and Lawrence-Brown ‒
`
`is also unsuccessful. Specifically, Petitioner’s reliance on positions allegedly taken
`
`by Patent Owner during a trial
`
`in the United Kingdom in January 2017 is
`
`misplaced. In the U.K. case, Patent Owner had asserted two patents, one claiming
`
`“flaps and pockets,” like the ‘608 patent, and another claiming “sacs” ‒ a separate
`
`embodiment disclosed in the specification of the ‘608 patent, but not the basis of
`
`any claims at issue in either this or the ‘060 IPR.
`
`In arguing that, during the trial, Patent Owner took the position that art
`
`comprising “sacs” reads on the “flaps” and “pockets” claims of the ‘608 patent,
`
`Petitioner grossly mischaracterizes Patent Owner’s position. See Mot. at 10 (“seals
`
`compromising sac-type features similar to the ‘inflatable peripheral chambers’ of
`
`Seguin can read on a fabric seal that bunches up and to create flaps and pockets,
`
`such as is claimed in the ‘608 patent”).
`
`In fact, in the very passages of the
`
`transcript on which Petitioner relies, Patent Owner’s U.K. counsel made clear that
`
`the “sac” claims were distinct from the “flaps” and “pockets” claims and ‒ directly
`
`contradicting Petitioner’s argument here ‒ that it was possible for a product to
`
`infringe the sac claims without infringing the flaps and pockets claims: “[Y]ou can
`
`-4-
`
`
`
`be within both patents, or you can be in the bunched-up and not the sac, or the sac
`
`and not the bunched up.”
`
`(Ex. 1146 at 1067:8-10 (emphasis added).) Patent
`
`Owner merely pointed out that it was possible for Petitioner’s product to infringe
`
`both the “sac” patent and the “flaps” and “pockets” patent.
`
`In sum, there are no “changed circumstances” rising to the level in which the
`
`Board has deemed joinder appropriate. See Section III.B, infra; Medtronic, Inc. v.
`
`Endotach LLC, IPR2014-00695, Paper 18 (Sept. 25, 2014). The Board has
`
`repeatedly rejected petitioners’ arguments that the patent owner’s alleged “change
`
`in position” or “unexpected position” on claim construction justifies joinder.
`
`Id.
`
`at 9 (“[A]lthough Petitioner suggests it was unaware of Patent Owner’s claim
`
`construction position … until after it filed its First Petition, Petitioner had the
`
`burden to anticipate reasonable claim construction positions, and adequately
`
`address such positions in its Petition as needed.”) (emphasis added); Microsoft
`
`Corp. v. Enfish, LLC, IPR2014-00574, Paper 13 at 7 (Sept. 29, 2014) (“Microsoft’s
`
`claim that Enfish has changed its position is not reason enough to permit what is
`
`essentially a rehearing request”).
`
`Nor can Petitioner claim that it was unaware of any of the references that it
`
`now seeks to assert – Seguin, Lazarus, Lawrence-Brown, or the grandparent Haug
`
`application – when it filed its petition in the ‘060 IPR. Indeed, Petitioner concedes
`
`that it asserted Seguin as invalidating prior art in a related U.K. proceeding (see
`
`-5-
`
`
`
`Pet. at 35, n.13) and asserted each of the newly-asserted references in opposition
`
`proceedings in Germany on June 23, 2016. (See Mot. at 10; Ex. 1152.) The Board
`
`has consistently denied joinder when a petitioner possessed, at the time it filed an
`
`earlier petition, the references asserted in a later-filed petition. For example, in
`
`Samsung Elec. Co., Ltd. v. Affinity Labs of Texas, LLC, the Board denied joinder
`
`where the petitioner presented no evidence that the prior art asserted in the second
`
`petition was not known or available to it at the time of filing the first petition.
`
`IPR2015-00820, Paper 12 (May 15, 2015);
`
`see also Toyota Motor Corp. v.
`
`American Vehicular Sciences LLC, IPR2015-00262, Paper 10 at 6 (Jan. 29, 2015)
`
`(denying joinder where “Petitioner could have presented in the earlier petition the
`
`grounds and arguments it now asserts, but it did not do so”); Samsung Elec. Co.
`
`Ltd. v. Rembrandt Wireless Techs., LP, IPR2015-00555, Paper 20 (Jun. 19, 2015)
`
`(denying joinder where there was no reason that the petitioner could not have
`
`asserted a piece of prior art in its first petition because it was a publically available
`
`published patent). The Board should deny Petitioner’s Motion because it uses art
`
`that was previously known and available to Petitioner.
`
`Petitioner’s contention that the Board should allow joinder because the
`
`Board “has allowed joinder of additional grounds by the same party” in similar
`
`circumstances (Mot. at 6-7) is meritless. In each of the cases cited by Petitioner,
`
`unlike the present Motion,
`
`the equities strongly favored the petitioner.
`
`For
`
`-6-
`
`
`
`example, in Target Corp. v. Destination Maternity Corp., all but one of the
`
`grounds asserted in the second petition were based on a piece of prior art that was
`
`requested in discovery but withheld from the petitioner until after the first petition
`
`was filed. IPR2014-00508, Paper 31 (Feb. 12, 2015). In Samsung Elec. Co., Ltd. v.
`
`Virginia Innovation Sciences, Inc., the second petition sought a very limited
`
`expansion of the proceedings in order to address the relevance of a single prior art
`
`reference to a single subject matter, the relevance of which was already being
`
`addressed in previous IPR. IPR2014-00557, Paper 10 (Jun. 13, 2014). In ABB Inc.
`
`v. Roy-G-Biv Corp., the prior art in the second petition substantially overlapped
`
`with the prior art at issue in the first proceeding and the patent owner explicitly
`
`waived its right to oppose the motion. IPR2013-00286, Paper 14 (Aug. 9, 2013).
`
`The remainder of the cases cited by Petitioner represent rare, exceptional
`
`instances in which the Board has previously granted joinder where the petitioner
`
`demonstrated “good cause” for joinder due to changed circumstances; namely,
`
`where the patent owner either (1) asserted new claims against the petitioner, or
`
`(2) launched a new product, threatening infringement of additional claims. See
`
`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15 at 3 (Feb. 25, 2013)
`
`(patent owner asserted additional claims against the petitioner in a concurrent
`
`district court litigation and the petitioner “proceeded expeditiously in filing a
`
`second Petition after learning that the additional claims were being asserted”);
`
`-7-
`
`
`
`Sony Corp. v. Yissum, IPR2013-00327, Paper 15 (Sept. 24, 2013); Ariosa
`
`Diagnostics v. Isis Innovation Ltd., IPR2013-00250, Paper 25 (Sept. 3, 2013)
`
`(launch of a new product threatened new assertions of infringement). Such
`
`equitable considerations do not apply to Petitioner’s Motion here, which is nothing
`
`more than an attempt to supplement its rejected arguments in the ‘060 IPR. No
`
`new claims have been asserted since the First Petition, no new discovery has been
`
`provided, nor are any new threats of infringement present.
`
`Finally, while Petitioner’s Motion touts its timeliness in filing the Second
`
`Petition “less than three weeks” after the Board’s institution of the ‘060 proceeding
`
`(Mot. at 6), it fails to explain why Petitioner waited three months after purportedly
`
`learning of its “new argument” during the January 2017 U.K. trial to file its Second
`
`Petition.
`
`Instead, Petitioner waited until after the Board’s institution decision to
`
`raise these “new issues” through a Second Petition. Accordingly, the Board should
`
`deny Petitioner’s Motion because it fails to state any justifiable reason that merits
`
`such a second bite at the apple. See LG Elec., Inc. v. ATI Tech. ULC, IPR2015-
`
`01620, Paper 10 at 10 (Feb. 2, 2016) (“[P]ermitting second chances without
`
`constraint undermines judicial efficiency by expending our resources on issues that
`
`were not adequately presented the first time.”).
`
`-8-
`
`
`
`B.
`
`Joinder Will Prejudice Patent Owner
`
`Joinder of this proceeding with the ‘060 IPR would introduce new evidence
`
`and substantially expand discovery, unduly prejudicing Patent Owner. Petitioner
`
`asserts two new grounds of unpatentability using four references not asserted in the
`
`earlier proceeding and challenges five new claims not challenged in its First
`
`Petition.
`
`Petitioner’s unsupported assertions that “Patent Owner will not be
`
`prejudiced” and that “there will be minimal impact on the briefing, discovery and
`
`trial schedule” (Mot. at 2) are wrong for several reasons.
`
`Granting joinder would significantly complicate the substantive issues in the
`
`’060 IPR. Petitioner’s argument that the newly-raised grounds are “sufficiently
`
`related to the already-instituted grounds that all grounds can efficiently be decided
`
`simultaneously” (Mot. at 7) is unavailing. There is absolutely no overlap between
`
`Petitioner’s arguments or the art asserted. Joinder would require Patent Owner to
`
`address new arguments and evidence, and potentially require additional
`
`declarations and depositions, all under a compressed schedule necessary to
`
`accommodate the more advanced stage of the ‘060 IPR. Petitioner’s position is
`
`belied by Petitioner’s own 72-page petition and submission of a second declaration
`
`of Dr. Buller with 71 paragraphs addressing the newly-asserted grounds.
`
`(See
`
`Ex. 1155, ¶¶53-122.) This substantial volume of new material would require a
`
`comparable increase in the scope of Dr. Buller’s deposition testimony and the
`
`-9-
`
`
`
`rebuttal declaration of Patent Owner’s expert(s). Petitioner fails to explain how a
`
`“single” deposition of Dr. Buller could be accomplished or offer a suggestion of
`
`how Patent Owner could be required to address the issues and substantial amount
`
`of new evidence presented with the Second Petition even before there is an
`
`institution decision.
`
`The addition of two new grounds, based on four new pieces of prior art,
`
`challenging five claims of the patent that were not previously challenged would not
`
`simplify the existing briefing or discovery; in fact, it would plainly add complexity
`
`and burden on Patent Owner and the Board. See Samsung v. Affinity, IPR2015-
`
`00820, Paper 12 at 5 (“Petitioner’s desire to present additional grounds … does not
`
`justify the additional burden on Patent Owner, the additional costs, or the use of
`
`judicial resources.”). At a minimum, the new opinions set forth by Petitioner’s
`
`declarant “would increase the amount of discovery that would be required if
`
`joinder is permitted” (see IPR2013-00386, Paper 16 at 7 (denying joinder)) unless
`
`the ‘060 IPR proceeding is also placed on a later schedule.
`
`In either case,
`
`Petitioner’s request would vitiate the efficiencies in the current schedule for the
`
`‘060 IPR proceeding as contemplated by the Board.
`
`Petitioner’s argument that Patent Owner will not be prejudiced because
`
`“Patent Owner is already familiar with the arguments and that art” (Mot. at 12) is
`
`unavailing and contradicts its own reasoning as to why joinder is appropriate in the
`
`-10-
`
`
`
`first place. For support, Petitioner cites to its own opposition brief, dated June 23,
`
`2016, against EP 2 926 766 in a German proceeding separate from the U.K. trial
`
`on which Petitioner relies as its justification for joinder. (See Ex. 1152.) Indeed,
`
`Patent Owner and Petitioner are involved in several suits internationally, including
`
`in the United Kingdom, Germany, and France, involving some patent claims that
`
`are not coextensive with the claims of the ‘608 patent. The Board’s precedents do
`
`not require Patent Owner to respond urgently in an IPR to the belated assertion by
`
`Petitioner of any reference identified in “related” foreign proceedings.
`
`See
`
`Macronix Int’l Co., Ltd., et al v. Spansion LLC, IPR2014-00898, Paper 15
`
`(Aug. 13, 2014) (denying joinder notwithstanding petitioner’s argument that patent
`
`owner was familiar with references asserted in co-pending litigation).
`
`Petitioner’s contention that “no modifications to briefing or discovery
`
`procedures should be necessary” (Mot. at 12) asks the Board to suspend disbelief;
`
`Petitioner is silent as to (1) how its Petition could be joined to the ‘060 IPR without
`
`significantly impacting the trial schedule of the ‘060 IPR, and (2) how briefing and
`
`discovery may be simplified. Case IPR2017-00060 was filed more than seven
`
`months ago and is already well underway.
`
`In contrast, under typical
`
`trial
`
`schedules, an institution decision in the present proceeding would not occur until
`
`late October 2017 ‒ after discovery and most of the briefing are completed, and a
`
`mere two months before trial, in the ‘060 IPR. Any attempt to synchronize
`
`-11-
`
`
`
`consideration of Petitioner’s newly-asserted grounds with that of the grounds
`
`instituted in the ‘060 IPR would undermine the Board’s policy of securing “the
`
`just, speedy, and inexpensive resolution of every proceeding.”
`
`37 C.F.R.
`
`§ 42.1(b). The Board has consistently denied joinder in such circumstances. See
`
`Great West Casualty Co. v. Intellectual Ventures II, LLC, IPR2016-00453, Paper 8
`
`(Feb. 22, 2016) (denying joinder because a five month gap between the filing of
`
`the relevant petitions would be prejudicial
`
`to the patent owner); Macronix,
`
`IPR2014-00898, Paper 15 at 5 (“Joinder would have a significant adverse impact
`
`on our ability to complete the existing proceeding in a timely manner, which
`
`weighs against granting the motion for joinder.”).
`
`Petitioner’s vague offer “to accommodate any additional,
`
`reasonable
`
`logistical or scheduling requests,” and “forfeit a reasonable portion of its reply
`
`period” (Mot. at 12-13) does not cure the prejudice to Patent Owner. When joinder
`
`would complicate and delay the original proceedings, the Board has rejected such
`
`offers. See, e.g., Sierra Wireless America, Inc. v. M2M Sols. LLC, IPR2016-
`
`00853, Paper 16 at 5 (Sept. 20, 2016) (“Petitioner’s general statements of forfeiting
`
`‘reasonable’ periods of its response period and accommodating ‘reasonable’
`
`logistical and scheduling requests does not address sufficiently the impact joinder
`
`would have on the [original proceeding]… [a]s such, Petitioner has not provided
`
`sufficient explanation as to how such timing would impact the trial schedule[.]”).
`
`-12-
`
`
`
`Inevitably, granting Petitioner’s Motion would unjustly hamper Patent
`
`Owner’s ability to respond to both petitions by (1) effectively halving the page
`
`limit for Patent Owner’s responses, (2) reducing Patent Owner’s time to respond in
`
`one or both proceedings, and/or (3) introducing additional arguments before Patent
`
`Owner has even had a chance to respond to the initial arguments presented in the
`
`‘060 IPR. See Harmonix Music Sys., Inc. v. Princeton Digital Image Corp.,
`
`IPR2015-00271, Paper 15 at 10 (Jun. 2, 2015) (denying joinder because it would
`
`“increase the cost, time, and effort expended by Patent Owner in the [first IPR] and
`
`likely necessitate Patent Owner forfeiting its full statutory time periods for
`
`response”); HM Elec., Inc. v. 3M innovative Prop. Co., IPR2015-00482, Paper 21
`
`at 4-5 (Sept. 22, 2015) (“It is in the interests of ensuring a just proceeding that 3M
`
`have an opportunity to respond to the three grounds in [the new petition] …in a
`
`separate response in that proceeding”). The precedent that Petitioner seeks to set ‒
`
`allowing a petitioner to obtain tactical advantages by attacking the same patent
`
`through the filing of serial petitions ‒ would favor gamesmanship over fairness and
`
`efficiency.
`
`Because joinder would prejudice Patent Owner and undermine the Board’s
`
`procedures for ensuring fair and efficient resolutions of proceedings, the Board
`
`should deny Petitioner’s Motion.
`
`-13-
`
`
`
`C.
`
`The Statute Does Not Authorize Joinder Of The Same Party To
`An Instituted IPR
`
`Joinder is also impermissible under a proper interpretation of 35 U.S.C.
`
`§ 315(c). Correctly construed, the statute does not allow joinder of a petitioner that
`
`is already a party to the instituted review. Section 315(c) provides, in pertinent
`
`part: “If the Director institutes an inter partes review, the Director, in his or her
`
`discretion, may join as a party to that inter partes review any person who properly
`
`files a petition under section 311.” Because Petitioner is already a party in
`
`IPR2017-00060, Petitioner’s joinder request is fundamentally flawed: a “person
`
`cannot be joined as a party to a proceeding in which it is already a party.” See
`
`Skyhawke Tech., LLC v. L&H Concepts, LLC, IPR2014-01485, Paper 13 at 3 (Mar.
`
`20, 2015). While Patent Owner acknowledges that there has been disagreement
`
`among Board panels regarding this issue and statutory construction, Patent Owner
`
`submits that granting Petitioner’s Motion would require the Board to exceed the
`
`statutory authority granted to the Board for the purpose of joinder. See Samsung,
`
`IPR2015-00820, Paper 12 at 4. Accordingly, for this separate and independent
`
`reason, the Board should deny Petitioner’s Motion.
`
`IV. CONCLUSION
`
`For the reasons set forth above, Patent Owner respectfully requests that the
`
`Board deny Petitioner’s Motion for joinder of IPR2017-01293 to IPR2017-00060.
`
`-14-
`
`
`
`Dated: May 18, 2017
`
`Respectfully submitted,
`
`/Jennifer A. Sklenar/
`Jennifer A. Sklenar (Reg. No. 40,205)
`Wallace Wu, Ph.D. (Reg. No. 45,380)
`ARNOLD & PORTER KAYE
`SCHOLER LLP
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel:
`(213) 243-4000
`Fax: (213) 243-4199
`
`Attorneys for Patent Owner Boston
`Scientific Scimed, Inc.
`
`-15-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PATENT OWNER’S
`OPPOSITION TO MOTION FOR JOINDER was served on May 18, 2017 to the
`following Counsel for Petitioner via e-mail:
`
`Gregory S. Cordrey, Lead Counsel
`JEFFER MANGELS BUTLER & MITCHELL, LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614
`gcordrey@jmbm.com
`
`Brian Egan
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`1201 North Market Street
`Wilmington, DE 19899
`began@mnat.com
`
`Catherine Nyarady
`PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
`1285 Avenue of the Americas
`New York, NY 10019
`cnyarady@paulweiss.com
`
`Attorneys for Petitioners Edwards Lifesciences Corp., Edwards
`Lifesciences LLC, and Edwards Lifesciences AG
`
`/Jennifer A. Sklenar/
`Jennifer A. Sklenar (Reg. No. 40,205)
`ARNOLD & PORTER KAYE
`SCHOLER LLP
`777 S. Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel:
`(213) 243-4000
`Fax: (213) 243-4199
`
`-
`
`-
`
`
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