`
`Paper: 17
`Entered: April 30, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`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 IPR2017-01295
`Patent 8,709,062 B2
`____________
`
`
`
`Before JAMES A. TARTAL, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01295
`Patent 8,709,062 B2
`
`
`
`On April 24, 2018, the Supreme Court held that a final written
`decision under 35 U.S.C. § 318(a) must decide the patentability of all claims
`challenged in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at
`*10 (U.S. Apr. 24, 2018). In our Decision on Institution, we determined that
`Petitioner demonstrated a reasonable likelihood that it would establish that at
`least one of the challenged claims of the ’062 patent is unpatentable.
`Paper 9, 33–34. Pursuant to the holding in SAS, we modify our Decision on
`Institution to institute on all of the challenged claims and all of the grounds
`presented in the Petition.
`As set forth in our Scheduling Order, Petitioner’s Reply is currently
`due on May 1, 2018. Paper 10, 7. This Order, however, introduces new
`claims and grounds into this proceeding, which were not addressed in Patent
`Owner’s Response. See Paper 15. Accordingly, we postpone the due date
`for Petitioner’s Reply.
`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
`their proposals to accommodate the addition of claims and grounds into this
`proceeding, and shall endeavor to reach agreement and develop a joint
`proposal. For example, the parties should discuss whether Patent Owner
`desires to supplement its Patent Owner Response to address these claims and
`grounds, when such a submission would be filed, and to how many pages
`such a submission would be limited. In such a circumstance, the parameters
`of Petitioner’s Reply should also be discussed.
`Furthermore, the parties should discuss any proposed changes to the
`Scheduling Order needed to achieve the parties’ proposals, with the aim of
`
`2
`
`
`
`IPR2017-01295
`Patent 8,709,062 B2
`
`
`concluding this proceeding within the twelve-month timeframe established
`by statute.
`After conferring, the parties must, within five (5) business 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 seek
`authorization for such changes or briefing. 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, pursuant to 35 U.S.C. § 314(a), we modify our
`Decision on Institution to include review of all challenged claims and all
`grounds presented in the Petition;
`FURTHER ORDERED that the due date for Petitioner’s Reply is
`postponed; and
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule or briefing,
`and, if so, shall provide their proposals and request a conference call with
`the panel to seek authorization for such changes or briefing within five (5)
`business days of the date of this Order.
`
`
`3
`
`
`
`IPR2017-01295
`Patent 8,709,062 B2
`
`
`PETITIONER:
`A. James Isbester
`KILPATRICK TOWNSEND & STOCKTON LLP
`jisbester@kilpatricktownsend.com
`
`Craig S. Summers
` Joshua Stowell
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2css@knobbe.com
`Joshua.Stowell@knobbe.com
`
`
`PATENT OWNER:
`Wallace Wu
`Jennifer A. Sklenar
`Nicholas M. Nyemah
`ARNOLD & PORTER KAYE SCHOLER LLP
`Wallace.Wu@apks.com
`Jennifer.Sklenar@apks.com
`Nicholas.Nyemah@apks.com
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
