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`Paper No. 11
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`
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`OPUS KSD INC.,
`Petitioner
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`v.
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`INCISIVE SURGICAL, INC.,
`Patent Owner
`
`
`______________
`
`IPR2017-01438
`Patent 8,821,517
`______________
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`
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`PATENT OWNER OPPOSITION
`TO PETITIONER MOTION
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`IPR2017-01438
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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` Paper 11
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ................................................................................... iii
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`EXHIBIT LIST .......................................................................................................... v
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`I. INTRODUCTION ................................................................................................. 1
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`II. ARGUMENT ....................................................................................................... 1
`A. The Motion Fails to Carry Its Burden of Proof .................................................. 1
`B. SOFs Are Not Requests for Admission .............................................................. 2
`C. Patentee’s Responses to the SOF Comply With Rule 42.23(a) .......................... 3
`D. The Board Has No Authority to Grant Equitable Relief .................................... 5
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`CONCLUSION .......................................................................................................... 5
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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` Paper 11
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` TABLE OF AUTHORITIES
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`IPR2017-01438
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`Statutes
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`35 U.S.C. §253(a) ..................................................................................................... 2
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`Regulations
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`37 CFR §42.11 .......................................................................................................... 5
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`37 CFR §42.11(c)(2) ................................................................................................. 5
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`37 CFR §42.12 .......................................................................................................... 5
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`37 CFR §42.20(c) ...................................................................................................... 1
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`37 CFR §42.22 .......................................................................................................... 2
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`37 CFR §42.22(c) ...................................................................................................... 3
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`37 CFR §42.23 .......................................................................................................... 2
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`37 CFR §42.23(a) ...................................................................................................... 3
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`37 CFR §42.24 .......................................................................................................... 2
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`37 CFR §42.51(a) ...................................................................................................... 2
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`37 CFR §42.51(b) ..................................................................................................... 2
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`Cases
`Commissioner v. McCoy, 484 U.S. 3 (1987). ............................................................ 5
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`Guinn v. Kopf, 96 F.2d 1419 (Fed. Cir. 1996) .......................................................1, 2
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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`IPR2017-01438
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`Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Co., 590 F.3d
`1326 (Fed.Cir. 2010) .............................................................................................. 4
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` Paper 11
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`Richardson v. Morris, 409 U.S. 464 (1973). ............................................................. 5
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`Other Authorities
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`FRCP 36(a)(4) ............................................................................................................ 2
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`77 Fed.Reg. 48756 (Aug. 14, 2012) . ........................................................................ 3
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`77 Fed.Reg. 48612 (Aug. 14, 2012) . ........................................................................ 3
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`Apple, Inc. v. Achates Reference Publishing, Inc., IPR2013-00081 (PTAB, Mar.
`27, 2013) (Paper 21 – Decision to Institute) .......................................................... 3
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`IPR2017-01438
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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` Paper 11
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`EXHIBIT LIST
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`Ex.1001 – U.S. Patent No. 8,821,517 (’517 Patent).
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`Ex.1002 – Declaration of Charles Rogers, Phd.
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`Ex.1003 – U.S. Publication 2012/0325889 (’889 Publication).
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`Ex.1004 – Claims From Application No.13/796,798 (’798 Application).
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`Ex.1005 – Excerpt From ’517 Patent File History.
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`Ex.1006 – U.S. Patent No. 5,489,287 (‘287 Patent or Green).
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`Ex.1007 – Photos of Petitioner’s Stapler.
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`Ex.1008 – Excerpt From ‘200 [sic] Patent File History.
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`Ex.1009 – Letter from Patent Owner to Petitioner.
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`Ex.1010 – Photo of Commercial Patent Owner’s Commercial Stapler.
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`Ex.1011 – Photo of Commercial Patent Owner’s Commercial Stapler.
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`Ex.1012 – Declaration of Peter Stokes.
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`Ex.1013 – Principles of Wound Management.
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`Ex.1014 – Pediatric Emergency Procedures.
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`Ex.1015 – Ethicon Wound Closure Manual.
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`Ex.1016 – U.S. Patent No. 3,716,058.
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`Ex.1017 – Declaration of H. V. Mendenhall, DVM, Phd.
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`Ex.1018 – Excerpt from ‘838 Application.
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`. . .
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`IPR2017-01438
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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` Paper 11
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`Ex.2001 – Statutory Disclaimer.
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`Ex.2002 – Response to the “Amendments to the Rules of Practice for Trials
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`Before the Patent Trial and Appeal Board,” Fed. Reg. Vol. 80, No. 161 (August 20,
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`2015) (November 18, 2015) (available at
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`https://www.uspto.gov/sites/default/files/documents/PTAB%20Rules%20Aug%20
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`2015%20Individual%20Smith%20Pedersen%20Comments.pdf)
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`Ex. 2003 - Excerpt from Application No. 13/604,190 (Petitioner application
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`associated with '889 Publication).
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`Ex. 2004 - Excerpts from Application No. 15/145,194 (Patentee application
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`associated with '472 Patent).
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`Ex. 2005 - Excerpts from Application No. 13/796,798 (Patentee application
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`associated with '517 Patent).
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`IPR2017-01438
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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` Paper 11
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`ABBREVIATIONS AND DEFINITIONS
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`Patentee – Incisive Surgical, Inc.
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`Petitioner – Opus KSD Inc.
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`‘517 Patent – U.S. Patent No. 8,821,517.
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`‘889 Publication – U.S. Publication 2012/0325889.
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`‘190 Application – U.S. Application 13/604,190 associated with ’889 Publication
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`‘798 Application – U.S. Application No.13/796,798.
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`‘472 Patent – U.S. Patent No. 9,717,472.
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`‘550 Publication – U.S. Publication 2003/0236550
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`‘705 Patent – U.S. Patent No. 6,726,705 assocated with ’550 Publication
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`Board – the United States Patent Trial and Appeal Board.
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`PTO – the United States Patent and Trademark Office.
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`IPR2017-01438
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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` Paper 11
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`I. INTRODUCTION
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`Petitioner’s Motion to Deem Material Facts Admitted should be denied for
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`multiple reasons. First, the Motion fails to prove that the the Board has the
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`authority to grant the relief requested. Once the statutory disclaimer was filed by
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`Patentee, it is as if the specific disclaimed claims of the ‘517 Patent never existed.
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`Guinn v. Kopf, 96 F.2d 1419 (Fed. Cir. 1996). The Motion fails to address how the
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`Board has any authority to grant the relief requested for claims that never existed.
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`Second, the proposed Statement of Material Facts (SOF) are not, as Petitioner
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`contends, requests for admission. Accordingly, the rules and obligations under the
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`FRCP are irrelevant. Third, Petitioner’s SOF do not comply with the SOF rules,
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`whereas Patentee has properly responded to each SOF under the rules.
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`Consequently, there is no reason for the Board to alter Patentee’s SOF responses.
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`Finally, the Board has no statutory or regulatory authority to provide what is an
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`equitable relief urged by Petitioner.
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`II. ARGUMENT
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`A. The Motion Fails to Carry Its Burden of Proof
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`Under 37 C.F.R. §42.20(c), Petitioner has “the burden of proof to establish
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`that it is entitled to the requested relief.” The Motion argues that the Board has the
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`statutory authority to consider the petition. (Paper 8, p.4-5). The Motion, however,
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`never explains or cites any authority or even other Board panel decisions as to how
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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`IPR2017-01438
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`the Board has authority to consider the Motion, as opposed to a petition, and to
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` Paper 11
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`grant the extraordinary relief of deeming the proposed SOF to be admitted that is
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`requested by the Motion. Nor does the Motion carry its burden to explain why the
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`Board has jurisdiction and authority to grant any relief once a statutory disclaimer
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`has been filed. The case law regarding a statutory disclaimer make clear that:
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` A statutory disclaimer under 35 U.S.C. §253(a) has the effect of
`cancelling the claims from the patent and the patent is viewed as
`though the disclaimed claims had never existed in the patent.
`Guinn at 1422.
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`Given that the claims of the ‘517 Patent are as if they never existed, it is up
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`to Petitioner to prove both that the Board has the authority to grant such
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`extraordinary relief and how such relief can be awarded if the claims never existed.
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`B. SOFs Are Not Requests for Admission
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`Without citing any authority, the Motion argues that FRCP 36(a)(4) is
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`somehow relevant to the Rules relating to SOFs under 37 C.F.R. §§42.22–42.24,
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`and that Patentee somehow has an obligation to explain its responses to the
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`proposed SOFs. (Paper 8, p.1-4). Petitioner is mistaken. Rule 42.51(b) makes clear
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`that a party “is not entitled to discovery” other than mandatory discovery pursuant
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`to Rule 42.51(a) or discovery authorized by motion or agreed upon by the parties.
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`Likewise the Trial Practice Guidelines confirm that the types of discovery
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`available under the FRCP can be sought, but only by requesting and filing a motion
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`for such discovery. 77 Fed.Reg. 48756, 48761 (Aug. 14, 2012). Petitioner made
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` Paper 11
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`no such motion for requests for admission. Nor is anything in the Rules or
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`Guidelines that imposes an obligation on a party to explain any responses to
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`proposed SOF. There are only a few panel decisions that even address the use of
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`lists of SOF under Rule 42.22(c) in a petition or motion, and most are focused on
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`how the listing of SOF are measured against page and word count limits. In terms
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`of whether SOFs should be deemed admitted, the only relevant decision Patentee
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`could find was Apple, Inc. v. Achates Reference Publishing, Inc., IPR2013-00081,
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`slip op. at 20 (PTAB, Mar. 27, 2013) (Paper 21 – Decision to Institute) (“we do not
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`deem any facts denied by Patent Owner as admitted for this proceeding . . .”).
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`C. Patentee’s Responses to the SOF Comply With Rule 42.23(a)
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`All of Patentee’s Responses comply with Rule 42.23(a) because each
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`response includes one of the three permitted responses – “admitted, denied or
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`cannot be admitted or denied.” As evidenced by the comments on the rules, the
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`final sentence of Rule 42.23(a) is inapplicable here because it relates only to a
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`situation where a list of proposed SOFs are completely ignored. 77 Fed.Reg.
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`48612, 48633 (Aug. 12, 2012) (Comment 80).
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`Petitioner’s failure to comply with Rule 42.22(c) by not identifying in the
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`record the source for the proposed SOF and failure to properly define terminology
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`used in the proposed SOF are partly responsible for Patentee having to respond that
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`a proposed SOF “cannot be admitted or denied.” For example, the term “‘889
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`Publication” is undefined for SOFs 11-12. SOFs 9 and 10 are unanswerable
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`because the statements about the priority chain of the ‘517 Patent are split between
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`two separate SOFs, neither of which alone is accurate. For SOFs 5 and 8, the
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`proposed statements are not statements of fact; rather, these statements use
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`undefined terminology such as “copied” or “developed or disclosed” that
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`necessarily call for a legal conclusion. See, Koninklijke Philips Electronics N.V. v.
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`Cardiac Science Operating Co., 590 F.3d 1326, 1335-36 (Fed.Cir. 2010).
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`Accordingly, these statements are not proper for a proposed SOF.
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`For SOFs 6-7, although the Motion cites to the record for SOFs 6-7 (Paper 8,
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`p.3-4), these citations were not part of the proposed SOFs in the Petition. Even
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`though there is no basis for requiring Patentee to explain its denial of SOFs 6-7,
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`Patentee notes that the PTO has thrice determined that the claimed subject matter
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`was “presented” as being described and enabled in the priority applications for the
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`‘517 Patent. (Ex. 2003, pp. 4-7, Ex.2004, pp. 4-9 & 18, Ex.2005, pp. 2-6). Not only
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`is there no requirement for Patentee to explain its response to SOF 6-7, there is no
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`authority for the Board to change Patentee’s responses to SOFs 6-7. Likewise,
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`there is no reason for the Board to alter any of the other of Patentee’s SOF
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`responses.
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`IPR2017-01438
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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`D. The Board Has No Authority to Grant Equitable Relief
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`As an Article I tribunal, the Board’s authority is expressly limited to what is
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`provided by statute and does not include the authority to consider equitable
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`principles unless authorized by statute. See, e.g., Richardson v. Morris, 409 U.S.
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`464, 465 (1973); Commissioner v. McCoy, 484 U.S. 3, 7 (1987).
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`Although the Board has the authority to impose sanctions under 37 C.F.R.
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`§§42.11–42.12, these rules are never argued in the Motion. Rule 42.11(c)(2) makes
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`clear that any motion for sanctions “must be made separately from any other
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`motion.” For all of the reasons set forth in this Opposition and Petitioner’s Sur-
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`Reply (Paper 10), there is simply no basis for alleging that Patentee has breached
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`any duty of candor or good faith to the Office or is not otherwise in compliance
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`with the certification requirements so as to merit any motion for sanctions.
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`Here, the Motion argues in equity for the Board to deem admitted proposed
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`SOF 5-12, including SOFs 6-7 that were expressly denied. Patentee has fully
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`complied with the rules regarding proposed SOFs, and the Motion sets forth no
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`basis in statute or regulation for the Board to award the extraordinary relief that is
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`requested. Because the Board does not have any inherent authority to provide relief
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`in equity and there is nothing to merit it, the Motion must therefore be denied.
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`CONCLUSION
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`Patentee respectfully requests that the Board deny the Motion.
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`IPR2017-01438
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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` Paper 11
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`Dated: September 12, 2017
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`Respectfully submitted,
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` s/Brad D. Pedersen
`Brad D. Pedersen
`Reg. No. 32,432
`Patterson, Thuente, Pedersen P.A.
`4800 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`pedersen@ptslaw.com
`Telephone: (612) 349-5774
`Facsimile: (612) 349-9266
`Attorneys for Patent Owner,
`Incisive Surgical, Inc.
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`INTER PARTES REVIEW OF US PATENT NO. 8,821,517
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§42.6(e)(4)(i) et seq., the undersigned certifies that
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`on September 12, 2017, a complete and entire copy of this PATENT OWNER
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`OPPOSITION TO PETITIONER MOTION for Inter Partes Review of U.S.
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`Patent 8,821,517 and supporting materials was provided via electronic service by
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`e-mail to:
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`Vincent E. McGeary
`vmcgeary@mcgearycukor.com
`7 Dumont Place
`Morristown NJ 07960
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` /Brad D. Pedersen/
`Brad D. Pedersen
`Reg. No. 32,432
`Attorney for Petitioner
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`Dated: September 12, 2017
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