Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: August 30, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` OPUS KSD INC.,
`Petitioner,
`
`v.
`
`
` INCISIVE SURGICAL INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01438
`Patent 8,821,517 B2
`____________
`
`
`Before FRANCES L. IPPOLITO, JAMES A. WORTH, and MICHAEL L.
`WOODS, Administrative Patent Judges.
`
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: August 30, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` OPUS KSD INC.,
`Petitioner,
`
`v.
`
`
` INCISIVE SURGICAL INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01438
`Patent 8,821,517 B2
`____________
`
`
`Before FRANCES L. IPPOLITO, JAMES A. WORTH, and MICHAEL L.
`WOODS, Administrative Patent Judges.
`
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2017-01438 (Patent 8,821,517 B2)
`
`On August 29, 2017, pursuant to a request by Petitioner, the Board
`
`held a conference call between Judges Ippolito, Worth, and Woods and
`
`counsel for the parties. Petitioner presented two requests: (1) a request for
`
`authorization to file a Reply to Patent Owner’s Preliminary Response; and
`
`(2) a request for authorization to file a motion to deem facts admitted. This
`
`proceeding is in a preliminary stage and no decision on institution has been
`
`entered.
`
`1. Request for Reply
`
`On the call, Petitioner requested a Reply to address whether Patent
`
`Owner’s statutory disclaimer of all claims in U.S. Patent No. 8,821,517 B2
`
`(“the ’517 patent”) that have been challenged in the Petition should be
`
`treated as a request for adverse judgment. Petitioner asserted that alleged
`
`facts related to the prosecution of the ’517 patent and alleged copying of
`
`claims by the Patent Owner have bearing on our decision on whether to
`
`institute an inter partes review, and especially, whether adverse judgment
`
`applies to our review of the Petition and Preliminary Response.
`
`In response, Patent Owner disagreed with Petitioner’s position that
`
`alleged facts regarding prosecution and copying provide a basis (e.g.,
`
`equitable basis) for the Board to treat Patent Owner’s statutory disclaimer as
`
`a request for adverse judgment. Nonetheless, Patent Owner does not oppose
`
`Petitioner’s request provided that Patent Owner may file a Sur-reply.
`
`We appreciate that the parties have raised this issue early in the
`
`preliminary proceeding and authorize both parties to provide additional
`
`briefing to aid our review of the Petition, Preliminary Response, and Patent
`
`Owner’s statutory disclaimer. We authorize Petitioner to file its Reply by
`
`September 5, 2017. Petitioner’s brief is limited to five (5) pages. Patent
`
`Owner may file a Sur-reply, also limited to five (5) pages, by September 12,
`
`
`
`IPR2017-01438 (Patent 8,821,517 B2)
`
`2017. Additionally, at this time, we do not authorize that any testimonial
`
`evidence and/or declarations may accompany the briefs. Should either party
`
`anticipate a need to file supporting testimonial evidence and/or declarations,
`
`the parties are instructed to confer and contact the Board with available
`
`dates/times for a conference call.
`
`2. Motion to Deem Facts Admitted
`
`Petitioner requested that certain material facts, including facts related
`
`to alleged copying of claims and priority of the ’517 patent, be deemed
`
`admitted facts on this record. Petitioner argued that the alleged facts sought
`
`to be deemed admitted are relevant to arguments it will rely upon in the
`
`Reply to Patent Owner’s Preliminary Response, which we have authorized
`
`above.
`
`Patent Owner reiterated its argument that there is no equitable basis
`
`for treating a statutory disclaimer as adverse judgment against Patent Owner,
`
`and, further sought clarity on the Board’s jurisdiction for authorizing and
`
`deciding Petitioner’s motion in light of Patent Owner’s statutory disclaimer.
`
`We understand Patent Owner’s position to be that the statutory disclaimer
`
`deprives us of jurisdiction to allow and review briefing on whether certain
`
`facts can be deemed admitted.
`
`While we note Patent Owner’s objection for the record, we disagree
`
`that the Board does not have jurisdiction to authorize the filing of
`
`Petitioner’s motion. Petitioner asserts that the alleged facts at issue pertain
`
`to our review of the Petition, Patent Owner’s Preliminary Response, Patent
`
`Owner’s statutory disclaimer, and, ultimately, our decision whether to
`
`institute trial. As such, we determine per, at least, 35 U.S.C. § 314(a), we
`
`have jurisdiction to consider the parties’ briefing on alleged facts that
`
`Petitioner represents are relevant to our review of the information presented
`
`
`
`IPR2017-01438 (Patent 8,821,517 B2)
`
`in the Petition and Preliminary Response. See also 37 C.F.R. § 42.2
`
`(“Preliminary Proceeding begins with the filing of a petition for instituting a
`
`trial and ends with a written decision as to whether a trial will be
`
`instituted.”). Moreover, we note that the grant of authorization to file the
`
`motion is not a decision to grant or deny the motion. Rather, having
`
`considered the parties’ arguments on the call, we are persuaded that allowing
`
`the parties to brief this issue in the record is in the interest of justice to
`
`maintain a clear and complete record of this dispute between the parties as it
`
`relates to the arguments presented in the Petition and Patent Owner’s
`
`Preliminary Response.
`
`Accordingly, we authorize Petitioner to file a motion to deem facts
`
`admitted. Petitioner’s brief is limited to five (5) pages to be filed by
`
`September 5, 2017. Patent Owner may file an opposition, also limited to
`
`five (5) pages, by September 12, 2017. Petitioner may further file a reply to
`
`Patent Owner’s opposition by September 19, 2017, limited to three (3)
`
`pages. Additionally, at this time, we do not authorize that any testimonial
`
`evidence and/or declarations may accompany the briefs. Should either party
`
`anticipate a need to file supporting testimonial evidence and/or declarations,
`
`the parties are instructed to confer and contact the Board with available
`
`dates/times for a conference call.
`
`
`
`Accordingly, it is
`
`ORDERED that Petitioner is authorized to file, no later than
`
`September 5, 2017, a Reply to Patent Owner’s Preliminary Response,
`
`limited to five (5) pages;
`
`FURTHER ORDERED that Patent Owner is authorized to file, no
`
`later than September 12, 2017, a Sur-reply to Petitioner’s Reply, limited to
`
`five (5) pages;
`
`
`
`IPR2017-01438 (Patent 8,821,517 B2)
`
`
`
`FURTHER ORDERED that Petitioner is authorized to file, no later
`
`than September 5, 2017, a Motion to Deem Facts Admitted, limited to five
`
`(5) pages;
`
`FURTHER ORDERED that Patent Owner may file, no later than
`
`September 12, 2017, an Opposition to Petitioner’s Motion, limited to five
`
`(5) pages;
`
`FURTHER ORDERED that Petitioner may file, no later than
`
`September 19, 2017, a Reply to Patent Owner’s Opposition to Petitioner’s
`
`Motion, limited to three (3) pages; and
`
`FURTHER ORDERED that Petitioner and Patent Owner are not
`
`authorized at this time to file supporting testimonial evidence and/or
`
`declarations with the aforementioned briefing.
`
`
`
`PETITIONER:
`
`Vincent McGeary
`Michael Cukor
`MCGEARY CUKOR LLC
`vmcgeary@mcgearycukor.com
`mcukor@mcgearycukor.com
`
`PATENT OWNER:
`
`Brad Pedersen
`Eric Chadwick
`PATTERSON THUENTE PEDERSEN, P.A.
`pedersen@ptslaw.com
`chadwick@ptslaw.com
`
`
`
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