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`
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`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 17
`Entered: August 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ST. JUDE MEDICAL, LLC,
`Petitioner,
`
`v.
`
`THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
`Patent Owner.
`
`Case IPR2017-01338 (Patent 6,502,576)
`Case IPR2017-01339 (Patent 6,164,283)1
`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 Although the proceedings have not been consolidated, this Order addresses
`issues that are common to each of the above-referenced proceedings. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`
`IPR2017-01338 (Patent 6,502,576)
`IPR2017-01339 (Patent 6,164,283)
`
`
`On July 20, 2017, following a conference call with Patent Owner The
`Regents of the University of California (“The Regents”), and Petitioner St.
`Jude Medical, LLC (“St. Jude”), the Board authorized Patent Owner to file a
`motion to dismiss and set a briefing schedule for the parties. Paper 7.
`Pursuant to this authorization, The Regents filed “Patent Owner’s Motion to
`Dismiss” on July 25, 2017. Paper 9. On August 1, 2017, St. Jude filed
`“Petitioner’s Opposition to Motion to Dismiss” (Paper 13, “the Opposition”
`or “Opp.”). On August 8, 2017, The Regents filed “Patent Owner’s Reply to
`Opposition to Motion to Dismiss” (Paper 14, “the Reply” or “Rep.”).
`St. Jude subsequently requested a conference call to seek
`authorization to file a sur-reply. This conference call was held on August
`15, 2017, between Judges Scanlon, Worth, and Woods and counsel for St.
`Jude and The Regents. On the conference call, St. Jude stated that it wished
`to address certain factors in a five-factor test from the U.S. Court of Appeals
`for the Ninth Circuit. The panel observed that St. Jude already relies on the
`five-factor test in its Opposition and inquired whether the additional
`information could have been addressed previously. See Opp. 1–4 (citing
`Beentjes v. Placer Cty. Air Poll. Control Dist., 397 F.3d 775, 778 (9th Cir.
`2005)). St. Jude stated, inter alia, that it disagreed with The Regents’ use of
`case law in the Reply.
`The Regents opposed authorization for a sur-reply but conditionally
`requested the opportunity for further briefing as well if a sur-reply were
`granted.
`After considering St. Jude’s request, we find that St. Jude has not
`provided good cause for additional briefing. Accordingly, having heard
`from the parties, it is
`
`2
`
`
`
`IPR2017-01338 (Patent 6,502,576)
`IPR2017-01339 (Patent 6,164,283)
`
`
`
`ORDERED that no other filings are authorized at this time.
`
`
`
`PETITIONER:
`Matthew Smith
`Andrew Baluch
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`Zhuanjia Gu
`TURNER BOYD LLP
`gu@turnerboyd.com
`
`
`PATENT OWNER:
`
`Jonathan Lindsay
`Kainoa Asuega
`Mark Jansen
`CROWELL & MORING LLP
`jlindsay@crowell.com
`kasuega@crowell.com
`mjansen@crowell.com
`
`
`3
`
`
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