Paper 23
`Trials@uspto.gov
`Entered: February 5, 2018
`Tel: 571-272-7822
`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.
`
`
`
`
`DECISION
`Granting Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 Although the proceedings have not been consolidated, this Decision
`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.”
`
`
`Trials@uspto.gov
`Entered: February 5, 2018
`Tel: 571-272-7822
`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.
`
`
`
`
`DECISION
`Granting Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 Although the proceedings have not been consolidated, this Decision
`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, the Board granted Patent Owner, The Regents of
`the University of California (“The Regents”), authorization to file a motion
`to dismiss based on Eleventh Amendment immunity and postponed, by two
`months, the due date for the Patent Owner Preliminary Response, i.e., to
`October 16, 2017. Paper 7. On July 25, 2017, The Regents filed “Patent
`Owner’s Motion to Dismiss.” Paper 9. On August 1, 2017, Petitioner, St.
`Jude Medical, LLC (“St. Jude”), filed “Petitioner’s Opposition to Motion to
`Dismiss.” Paper 13. On August 8, 2017, The Regents filed “Patent Owner’s
`Reply to Opposition to Motion to Dismiss.” Paper 14. The Board denied a
`request from St. Jude to file a sur-reply. Paper 17.
`On September 12, 2017, the Board granted The Regents a second two-
`month extension of the due date for the Patent Owner Preliminary Response,
`i.e., until December 16, 2017. On November 22, 2017, the Board granted
`The Regents a third two-month extension of the due date for the Patent
`Owner Preliminary Response, i.e., until February 16, 2017.
`On January 12, 2017, the Board issued an Order (Paper 20, “the
`Order”), denying The Regents’ request for a further two-month extension of
`the due date for the Patent Owner Preliminary Response, or in the
`alternative, that any Patent Owner Preliminary Response be due one month
`from a decision on the pending motion to dismiss, or further in the
`alternative, that the panel stay these proceedings pending decision by
`another Board panel on whether to stay the University of Minnesota
`proceedings, i.e., in view of possible appellate review of the decisions in
`those proceedings. See, e.g., Ericsson Inc. and Telefonaktiebolaget LM
`Ericsson, v. Regents Of The University of Minnesota, Cases IPR2017-01186,
`-1197, -1200, -1213, -1214, -1219 (PTAB Jan. 5, 2018) (Paper 17).
`
`2
`
`
`
`IPR2017-01338 (Patent 6,502,576)
`IPR2017-01339 (Patent 6,164,283)
`
`
`On January 26, 2018, the Regents filed “Patent Owner’s Request for
`Rehearing Under 37 C.F.R. § 42.71(d)” (Paper 21, “Request”), seeking
`reconsideration of the Order. Patent Owner also requested a call with the
`Board. The Request asked the Board to grant an extension of the Patent
`Owner Preliminary Response or stay the proceeding so that The Regents do
`not have to substantively participate in the proceedings. Request 1. The
`Regents argues, inter alia, that the Board has not yet ruled on the threshold
`jurisdiction issue of sovereign immunity, and that St. Jude would not be
`prejudiced by a further delay:
`Based on the current schedule in the co-pending
`proceeding, the district court litigation will be finished before a
`final decision has been rendered by this Board. As such, SJM’s
`[St. Jude’s] invalidity counterclaims—including those before the
`Board—will have been fully adjudicated by the district court
`before a decision in these proceedings with or without a further
`extension or stay of the POPR due date.
`In contrast, The Regents will suffer irreparable injury from
`being forced to litigate a matter in violation of its sovereign
`immunity rights. The Regents’ irreparable injury categorically
`outweighs SJM’s purported prejudice.
`
`Request 2; see also id. at 3–4.
`On January 30, 2018, a conference call was held between Judges
`Scanlon, Worth, Woods, and counsel for the parties. On the call, St. Jude
`requested leave to file an opposition to the Request. On the call, the Board
`granted St. Jude authorization to file an opposition within two days, i.e., by
`February 1, 2018. The Board concomitantly indicated to the parties that any
`Order on the Request would provide at minimum two days further extension
`for the Patent Owner Preliminary Response.
`
`3
`
`
`
`IPR2017-01338 (Patent 6,502,576)
`IPR2017-01339 (Patent 6,164,283)
`
`
`On February 1, 2018, St. Jude filed “Petitioner’s Opposition to the
`Request for Reconsideration” (Paper 22, “Opposition”). St. Jude argues that
`although any Final Written Decision would occur after the district court trial
`date, (a) the timing is quite close; (b) district court trial schedules frequently
`change; and (c) even if the Final Written Decision occurs after the trial date,
`it may inform any remaining portion of litigation, e.g., on remand from the
`Federal Circuit. Opposition 1 (citing Fresenius USA, Inc. v. Baxter Int’l,
`Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013)). St. Jude further argues, inter
`alia, that The Regents fails to explain the harm to itself in any concrete way,
`and that The Regents initiated the lawsuit in federal court. Id. at 2.
`The Board typically grants rehearing only where it has overlooked or
`misapprehended an issue. See 37 C.F.R. §42.71(d). Nevertheless, there is
`an additional factor here, i.e., the passage of time, such that St. Jude would
`now be in the position of preparing for filing a Patent Owner Preliminary
`Response in the event that the case is not dismissed. We are persuaded that
`St. Jude should not be asked to prepare a brief on the merits while its motion
`to dismiss for sovereign immunity is still pending.
`Accordingly, it is
`ORDERED that The Regents’ request for rehearing is granted; and
`FURTHER ORDERED that any Patent Owner Preliminary Response
`would be due one month from a decision on The Regents’ motion to dismiss,
`i.e., in the event that the proceeding is not dismissed.
`
`
`
`
`
`4
`
`
`
`IPR2017-01338 (Patent 6,502,576)
`IPR2017-01339 (Patent 6,164,283)
`
`PETITIONER:
`Matthew A. Smith
`SMITH BALUCH LLP
`smith@turnerboyd.com
`
`Zhuanjia Gu
`TURNER BOYD LLP
`gu@turnerboyd.com
`
`PATENT OWNER:
`
`Jonathan Lindsay
`Kainoa Asuega
`CROWELL & MORING LLP
`jlindsay@crowell.com
`kasuega@crowell.com
`
`5
`
`
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
