UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EDWARDS LIFESCIENCES CORPORATION, EDWARDS LIFESCIENCES
`LLC, AND EDWARDS LIFESCIENCES AG
`Petitioners
`
`v .
`
`BOSTON SCIENTIFIC SCIMED, INC.
`Patent Owner
`
`Case IPR2017-01293
`Patent 8,992,608
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION FOR JOINDER
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EDWARDS LIFESCIENCES CORPORATION, EDWARDS LIFESCIENCES
`LLC, AND EDWARDS LIFESCIENCES AG
`Petitioners
`
`v .
`
`BOSTON SCIENTIFIC SCIMED, INC.
`Patent Owner
`
`Case IPR2017-01293
`Patent 8,992,608
`
`PETITIONER’S REPLY IN SUPPORT OF MOTION FOR JOINDER
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
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`TABLE OF CONTENTS
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`Page
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`I.
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`This Is Not a “Second Bite at the Apple” ............................................. 1
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`II.
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`Joinder Will Not Prejudice Patent Owner ............................................. 2
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`A.
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`Patent Owner Overstates the Impact on Discovery .................... 2
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`B.
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`Petitioner Could Not Reasonably Have Anticipated
`Patent Owner’s New Interpretation of “Flaps” and
`“Sacs” .......................................................................................... 3
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`III. Schedule Adjustments Can Be Made .................................................... 4
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`IV.
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`Joinder of Issues Is Permitted by Statute .............................................. 5
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`V.
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`Conclusion ............................................................................................. 5
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`i
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Oxford Nanopore Techs. Ltd. v. Univ. of Wash.,
`IPR2015-00057, Paper 10 (Apr. 27, 2015) ........................................................... 5
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`Samsung Elecs. Co. v. Affinity Labs of Texas, LLC,
`IPR2015-00820, Paper 12 (May 15, 2015) ........................................................... 1
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`Samsung Elecs. Co. v. Va. Innovations Scis., Inc.,
`IPR2014-00557, Paper 10 (June 13, 2014) ........................................................... 1
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`Skyhawke Techs. LLC v. L&H Concepts, LLC,
`IPR2014-01485, Paper 13 (Mar. 20, 2015) .......................................................... 5
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`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508, Paper 18 (Sept. 25, 2014) .......................................................... 5
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`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508, Paper 31 (Feb. 12, 2015) ........................................................... 5
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`Other Authorities
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`37 CFR § 42 ............................................................................................................... 1
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`Rules and Statutes
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`35 U.S.C. § 315 .................................................................................................. 1-2, 5
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`35 U.S.C. § 316 .......................................................................................................... 5
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`35 U.S.C. § 325 .......................................................................................................... 2
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`ii
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`Joinder of this Petition to IPR2017-00060 furthers the goals of “just, speedy,
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`and inexpensive resolution.” § 42.1(b).1 This Petition was filed before the § 315(b)
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`one-year bar (Pap. 3 at 6 n.1), and so would be timely even absent joinder, but if it
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`is instituted and not joined there will be needless duplication of efforts.
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`The decision to grant joinder is discretionary (§ 315(c); § 42.122(a)), and
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`motions for joinder are evaluated on a case-by-case basis. See Samsung Elecs. Co.
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`v. Va. Innovations Scis., Inc., IPR2014-00557, Pap. 10 at 15-16 (June 13, 2014);
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`Pap. 7 at 3. Under the facts and circumstances here, joinder will reduce the burdens
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`on all involved.
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`I.
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`This Is Not a “Second Bite at the Apple”
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`Joinder may be denied where a second petition merely “use[s a previous]
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`Decision to Institute . . . as a guide to remedy deficiencies in the earlier filed peti-
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`tion, i.e., a ‘second bite at the apple.’” Samsung Elecs. Co. v. Affinity Labs of Tex-
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`as, LLC, IPR2015-00820, Pap. 12 at 4 (May 15, 2015). Here, however, this Peti-
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`tion asserts two new grounds based entirely on art not asserted in IPR2017-00060
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`and addresses additional claims not at issue there (Claims 5-9).2 By definition, this
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`1 Section citations are to 37 C.F.R. or 35 U.S.C. as the context indicates.
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`2 Because the argument for Claims 5-9 in Ground 1 of the instant petition is the
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`same for Claims 1-4, it is efficient to consider all claims here.
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`1
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`
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`is not a “second bite at the apple,” as Patent Owner (“PO”) implicitly acknowledg-
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`es: “There is absolutely no overlap between Petitioner’s arguments or the art as-
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`serted.” Contrast Pap. 7 at 9 & id. at 2 with § 325(d) (may consider whether “sub-
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`stantially the same prior art or arguments” previously presented).
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`Further, this Petition is not time-barred, so Petitioner is not precluded from
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`separately pursuing both petitions (see §§ 315(d), 325(d)), unlike in the cases PO
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`cites to argue joinder should be denied if art could have been included in an earlier
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`petition (Pap. 7 at 6).
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`II.
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`Joinder Will Not Prejudice Patent Owner
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`PO complains of “undu[e] prejudice” from joinder because there are “two
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`new grounds of unpatentability” based on “four [new] references” and “challenges
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`[to] five new claims.” Pap. 7 at 9 (emph. orig.); id. at 10. But joining these two
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`petitions would clearly be more efficient than pursuing them both in parallel (the
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`alternative here): PO ignores that denying joinder would actually increase the work
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`required. And PO’s suggestion that granting joinder would set bad precedent (id. at
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`13) ignores both the actual circumstances here and that joinder motions are decided
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`case-by-case. Finally, PO’s suggestion that any joinder motion can be defeated just
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`by showing a joined proceeding would involve more grounds (and thus more ef-
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`fort) proves too much: any joinder of non-identical petitions has this result.
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`A.
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`Patent Owner Overstates the Impact on Discovery
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`First, as noted above, PO ignores that this timely-filed Petition could pro-
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`2
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`
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`ceed separately from IPR2017-00060, so joinder of the two would reduce duplica-
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`tive work for the parties and the Board. PO also ignores that one of the two
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`grounds—the one adding “five new claims”—asserts a break in the priority chain
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`and is based entirely on the ’608 Patent’s grandparent, which has a specification
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`that is identical to the ’608 Patent’s and is thus already well known to the parties
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`(and will be before the Board in IPR2017-00060 in any event). Addressing an
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`argument regarding lack of written description in an identical specification should
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`create minimal added work, and will include review and analysis already needed in
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`IPR2017-00060. Because this ground requires minimal extra discovery, joinder
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`will streamline the proceedings—not impede them.3
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`B.
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`Petitioner Could Not Reasonably Have Anticipated Patent
`Owner’s New Interpretation of “Flaps” and “Sacs”
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`PO ignores its role in creating the basis for Petitioners’ second ground. Dur-
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`ing the ’608 Patent’s prosecution, the PTO imposed a restriction requirement be-
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`tween “sacs” and fabric seals with “flaps.” Ex. 1102 at 331-32. PO elected, without
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`traverse, the fabric seal claims and noted that “Applicants understand that the Ex-
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`aminer has made a determination that the subject matter [of] any of the claims
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`specific to any of the various species does not render obvious the subject matter of
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`3 To streamline discovery, Petitioner offered to prepare its expert on both
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`petitions at his upcoming deposition (Ex. 1156), but PO declined. Ex. 1157.
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`3
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`
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`any claim specific to any of the other species.” Id. at 337, 352.
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`Thereafter, contrary to this position PO took before the PTO, PO told the
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`court in a U.K. proceeding on related patents that it was possible for sac-type prior
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`art to read on fabric seals with flaps: “you can be within both patents.” Ex. 1146 at
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`1067:8–10; see also Pap. 7 at 4–5 (“Patent Owner merely pointed out that it was
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`possible for Petitioner’s product to infringe both the ‘sac’ patent and the ‘flaps’ and
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`‘pockets’ patent.”).4
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`Thus, unlike the decisions PO cites, a construction of “fabric seals” encom-
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`passing both “sac” prior art and “flaps and pockets” prior art was not a “reasonable
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`claim construction” Petitioner could have anticipated, given the file history and
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`PO’s express statements therein. Now that PO has affirmatively adopted this
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`broader interpretation, Petitioner raises a single new ground based on a piece of
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`prior art that includes a fabric seal comprising a “sac” that can now be interpreted
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`as a fabric seal comprising “flaps and pockets.”
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`III. Schedule Adjustments Can Be Made
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`Joinder will not “halve” PO’s page limits or reduce its time to respond. Pap.
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`7 at 13. Petitioner will stipulate, if necessary, to expanded page limits or supple-
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`4 PO’s conceded familiarity with at least some of the cited art also belies PO’s
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`complaints that it is “new.” Compare, e.g., Pap. 7 at 5-6 with id. at 10.
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`4
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`mental responses to address the grounds in this Petition, as in Oxford Nanopore
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`Techs. Ltd. v. Univ. of Wash., IPR2015-00057, Pap. 10 at 25-27 (Apr. 27, 2015).
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`And if the proceedings are joined, the 1-year time limit to issue a final written
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`decision does not apply. § 316(a)(11). Petitioner proposes an adjusted schedule,
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`like that in Oxford, adding about 6 months to the deadlines, which should result in
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`faster collective resolution of the petitions and reduce duplication. Appendix A.
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`IV. Joinder of Issues Is Permitted by Statute
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`As the Board has repeatedly found, § 315(c) permits joinder of issues, as
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`well as parties. See Pap. 3 at 6–7. PO’s single cited case to the contrary, Skyhawke
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`Techs. LLC v. L&H Concepts, LLC, IPR2014-01485, Pap. 13 at 5 (Mar. 20, 2015),
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`relied on an initial panel decision in Target Corp. v. Destination Maternity Corp.,
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`IPR2014-00508, Pap. 18 (Sept. 25, 2014), that was later reversed by an expanded
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`panel that found the denial relied on by Skyhawke to be an abuse of discretion. Id.
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`at Paper 31 (Feb. 12, 2015). The Skyhawke Petitioner was also otherwise time-
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`barred from filing another petition. IPR2014-01485, Pap. 13 at 5. See Oxford,
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`IPR2015-00057, Paper 10 at 24 (“Petitioner is not using its Joinder Motion as a
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`means to circumvent the § 315(b) bar . . . .”) (joining issues and rejecting patent
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`owner’s concern that issue joinder permits serial challenges).
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`V. Conclusion
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`For the foregoing reasons and those in its Motion, Petitioners respectfully
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`requests that the Board join this proceeding with IPR2017-00060.
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`5
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`Dated: June 9, 2017
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`Respectfully Submitted,
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`/s/ Gregory S. Cordrey
`Gregory S. Cordrey, Esq. (Reg. No. 44,089)
`Attorney for Petitioners
`Edwards Lifesciences Corporation,
`Edwards Lifesciences LLC, and
`Edwards Lifesciences AG
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on June 9, 2017, I caused a true and correct copy of the
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`foregoing Petitioner’s Reply in Support of Motion for Joinder Pursuant to § 315(c)
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`and 37 C.F.R. § 42.122(b) to be served via Express Mail delivery at the corre-
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`spondence address of record for the ’608 Patent:
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`SEAGER, TUFTE & WICKHEM, LLP
`100 South 5th Street, Suite 600
`Minneapolis MN 55402
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`COURTESY COPY TO:
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`
`jennifer.sklenar@apks.com
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`
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`wallace.wu@apks.com
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`
`/s/ Gregory S. Cordrey
`Gregory S. Cordrey, Esq. (Reg. No. 44,089)
`Attorney for Petitioners
`Edwards Lifesciences Corporation,
`Edwards Lifesciences LLC, and
`Edwards Lifesciences AG
`
`
`
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