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`Case IPR2017-01438
`US Patent No. 8,821,517
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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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`OPUS KSD INC.,
`Petitioner,
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`v.
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`INCISIVE SURGICAL INC.,
`Patent Owner.
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`______________
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`Case IPR2017-01438
`Patent 8,821,517
`______________
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`REPLY ON MOTION TO DEEM FACTS ADMITTED
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`TABLE OF AUTHORITIES
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`Statutes
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`35 U.S.C. §§311-314 ……………………………………………..……………. 1
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`Regulations
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`37 C.F.R. §42 ……………………………………………………………… passim
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`Cases
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`Guinn v. Kopf, 96 F.2d 1419 (Fed. Cir. 1996) …………………………….…1, 2
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`Rembrandt Wireless Technologies, LP v. Samsung Electronics,
`853 F.3d 1370 (Fed. Cir. 2017)…………………………………………………2
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`Other Authorities
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`Manual of Patent Examining Procedure (MPEP) 2131.02……………………. 4
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`MPEP 2163(II)(A)(3)(a)(ii)……………………………………………………. 4
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`LIST OF EXHIBITS
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`Number
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`Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`U.S. Patent No. 8,821,517 (’517 Patent)
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`Declaration of Charles Rogers, Phd
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`U.S. Publication 2012/0325889 (’889 Publication)
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`Claims From Application No.13/796,798 (’798 Application)
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`Excerpt From ’517 Patent File History
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`U.S. Patent No. 5,489, 287 (‘287 Patent or Green)
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`1007A, B
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`Photos of Petitioner’s Stapler
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`Excerpt From ’200 Patent File History
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`Letter from Patent Owner to Petitioner
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`Photo of Patent Owner’s Commercial Stapler
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`Photo of Patent Owner’s Commercial Stapler
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`Declaration of Peter Stokes
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`Principles of Wound Management
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`Pediatric Emergency Procedures
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`Ethicon Wound Closure Manual
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`1016
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`U.S. Patent No. 3,716,058
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` ii
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`Declaration of H. V. Mendenhall, DVM, Phd
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`Excerpt from ‘838 Application
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`U.S. Publication No. 2009/0206127
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`Patent Owner Flyer for Stapler
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`Excerpt from ‘190 Application Prosecution History
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`U.S. Patent No. 5,615,816
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`Statutory Disclaimer
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`Response to the “Amendments to the Rules of Practice for
`Trials Before the Patent Trial and Appeal Board,” Fed. Reg.
`Vol. 80, No. 161 (August 20, 2015) (November 18, 2015)
`Excerpt from Application No. 13/604,190
`Excerpts from Application No. 15/145,194
`Excerpts from Application No. 13/796,798
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`2001
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`2002
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`2003
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`2004
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`2005
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`Abbreviations and Definitions
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` §42 means 37 C.F.R. §42.
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` ‘517 Patent means U.S. Patent No. 8,821,517
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`‘889 Publication means U.S. Publication 2012/0325889
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`‘798 Application means U.S. Application No.13/796,798
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`Board means the United States Patent Trial and Appeal Board
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`Federal Circuit means Court of Appeals for the Federal Circuit.
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`US Patent No. 8,821,517
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`MPEP means Manual of Patent Examining Procedure
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`Office, PTO or USPTO means the United States Patent and Trademark Office
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`Patentee means the owner of the challenged patent, Incisive Surgical, Inc.
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`Petitioner means Opus KSD Inc.
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`SOF means the Statements of Material Fact set forth in the Petition.
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`TABLE OF CONTENTS
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`Table of Authorities ……………………………………………………..…... i
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`Exhibit List ……………………………………………………………..…… ii
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`Abbreviations and Definitions ……………………………………….…….. iii
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`Table of Contents …………………………………………………….……... v
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`Introduction…….……………………………………………………….…… 1
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`A Statutory Disclaimer Does Not Divest the Board’s Authority...……….…. 1
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`Patentee Presents No Evidence Disputing the SOFs…………………….…... 2
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`Patentee’s Equity Argument Has No Bearing on the Board’s Authority……. 5
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`Certificate of Service ……………………………………………………...….7
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`v
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`Introduction
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`The Board should deem the SOFs admitted. Patentee contests the Board’s
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`authority, and it defends its responses on irrelevant, formalistic or hyper-technical
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`legal grounds. But it never disputes the SOFs are true.
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`Reply Argument
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`I. A Statutory Disclaimer Does Not Divest the Board’s Authority
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`Patentee challenges the Board’s authority over this motion. The motion
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`explained the Board’s authority under 35 U.S.C. §§311-314, and showed that
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`§42.107(e) does not divest the Board of authority. Paper 8 at 4. Nevertheless,
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`Patentee, citing Guinn v. Kopf, 96 F.2d 1419 (Fed. Cir. 1996), argues that
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`disclaimed claims are viewed as if they never existed; therefore, its disclaimer
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`immediately divested the Board’s authority in this proceeding. Paper 11 at 4-5.
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`Even assuming the sufficiency of Patentee’s equivocal disclaimer, Patentee reads
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`Guinn incorrectly.
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`In Guinn, the Office declared an interference on a single claim. Guinn filed a
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`statutory disclaimer for the same reason Patentee filed one here: to avoid a priority
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`determination. The Board considered Guinn’s disclaimer a request for adverse
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`judgment over Guinn’s lack of jurisdiction objection. The Federal Circuit ruled
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`that 35 U.S.C. §135, like §§ 311-314 here, “does not provide for any such
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`divestment of jurisdiction.” The Court stated, “We hold that the Board had the
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`authority and the responsibility pursuant to 35 U.S.C. §135(a) to resolve the
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`interference and render judgment against Guinn as a result of his disclaimer of
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`claim 9 of the ‘812 Patent.” Guinn, 96 F.3d 1421-1422.
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`The same reasoning applies here. Patentee cannot divest the Board’s authority
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`with a statutory disclaimer. The effect of the disclaimer is to extinguish only the
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`patentee’s rights. See, Rembrandt Wireless Technologies, LP v. Samsung
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`Electronics, 853 F.3d 1370, 1383-1384 (Fed. Cir. 2017) (Court reasoned that
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`disclaimers relinquish only the patentee’s rights. Patentee could not avoid the
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`marking statute by disclaiming). Therefore, the Board under its statutory authority
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`should conduct this proceeding, including this motion, until it enters judgment,
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`institutes trial or dismisses the Petition. See also, Paper 9 at 2-5.
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`II. Patentee Presents No Evidence Disputing the SOFs
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`Instead of disputing the SOFs, Patentee contends that any response of “admit,”
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`“deny” or “cannot be admitted or denied” complies with the letter of the rule and
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`so warrants denial of this motion. This overly formalistic reading of the regulations
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`would eliminate the good faith requirement of §42.11. Just any response is not
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`sufficient. The response must have some basis.
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`Lacking a fair dispute on the merits, Patentee contends the SOFs do not cite to
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`the record, as, in its view, §42.22(c) requires. There is no such requirement. The
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`rule states that “preferably” SOFs should cite the record. Id. Here, Patentee knows
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`it copied the claims, knows it did not disclose them, knows it did not disclose the
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`‘889 Publication and knows the priority chain of its own applications. It did not
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`need cites to admit these facts.
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`Patentee also contends the SOFs do not define “‘889 Publication”, although the
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`term appears in the List of Exhibits, is used throughout the Petition, and the SOF 4
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`references the full application number. It argues that SOFs 9 and 10, which merely
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`state aspects of the chain of priority, are unanswerable because each taken alone is
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`inaccurate. This makes no sense. Inaccurate statements can be denied or admitted
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`subject to a qualification. Plus Patentee offers nothing about the SOFs that are not
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`true. For SOFs 5 and 8, it contends the words “copied” and “developed or
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`disclosed” are undefined and, citing irrelevant legal authority, call for legal
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`conclusions. Common words like these require no definition. And while improper
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`copying may be a legal conclusion, copying is just a fact. Patentee just doesn’t
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`want to make a record that it copied the claims and didn’t disclose it.
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`Patentee denied SOFs 6 and 7, which state that Patentee never presented the
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`challenged claims in any priority document and never presented method claims
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`without structure. Instead of pointing to the claims presented in some priority
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`application, Patentee references three exhibits it misleadingly contends show the
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`“PTO has thrice determined” the subject matter was enabled and described. This is
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`irrelevant to the SOFs. Supporting a claim and presenting a claim are obviously
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`US Patent No. 8,821,517
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`different.
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`But it is not even true. Exhibit 2003 is an office action using one of Patentee’s
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`priority documents as a reference. Written description was not an issue in the
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`action, and a reference need not need satisfy the written description requirement.
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`(A specific embodiment could anticipate a generic claim while not describing a
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`generic claim. MPEP 2131.02; MPEP 2163(II)(A)(3)(a)(ii).) Further, the examiner
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`modified the reference (rotating the figure 90 degrees to achieve the claimed
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`function) showing the subject matter was not in the reference. Exh. 2003 at 9. See
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`also, Exh. 1012 at ¶¶62-70. Exhibits 2004 and 2005 are double patenting rejections
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`that, likewise, do not involve written description determinations. So the examiner
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`made no priority determinations in these irrelevant exhibits.
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`The Board should not be distracted by Patentee’s irrelevant, unattested lawyer
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`accusations of Petitioner’s copying. The Petition demonstrates with in-depth
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`analysis, expert testimony and record citations that the ‘889 Publication invalidates
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`the ‘517 Patent claims. It proves the ‘517 Patent requires placing the insertion head
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`partially beneath the skin surface and was useless for short incisions. Paper 1 at 1-
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`4; 39; Exhs. 1012 at ¶¶72-73; 1001 at 1:27-43. Petitioner’s publication of a stapler
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`for short incisions appeared by 2009, while Patentee first marketed its stapler for
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`short incisions years later. Compare Exhs. 1019 at Fig. 9d with Exh. 1020.
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`Patentee’s excuse that it didn’t disclose the copied claims because the Office
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`had determined priority cannot be true. The ‘517 Patent issued before the Office
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`sent Exhibit 2003. Also, why didn’t Patentee disclose the office action applying
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`prior art antedating the ‘517 Patent’s earliest asserted priority date? See, Exhs.
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`1021 at 8-11; 1022. Both the double patenting rejections occurred after Patentee
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`submitted copied claims. It therefore could not have believed the office actions
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`excused disclosure of the copied claims. Patentee’s entire argument is a post hoc
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`rationalization it hopes will go unchallenged due to space constraints. The Board
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`should disregard Patentee’s erroneous, unsupported and misleading conclusions.
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`III. Patentee’s Equity Argument Has No Bearing on the Board’s Authority
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`Patentee-still avoiding the merits-finally argues that the motion seeks equitable
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`relief. The motion does not turn on equity. The Board’s explicit legal authority to
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`deem facts admitted resides in §§42.11-42.12. Further, §42.5 grants the Board
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`power to “enter non-final orders to administer the proceeding,” which includes
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`orders deeming SOFs admitted. No evidence exists to quarrel with the SOFs. Thus,
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`the Board has the authority under §§42.5, 42.11, 42.12 and 42.23 to deem them
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`admitted without making a sanctions finding. On the other hand, the Board under
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`§42.5(b) can waive the notice requirements of §42.11(2) and consider the
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`submissions as an opposed motion for sanctions. By either analysis, Patentee’s
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`equity argument has no merit.
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`Respectfully submitted,
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`_______________
`Vincent McGeary
`Reg. No. 42,862
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`McGEARY CUKOR LLC
`7 Dumont Place
`Morristown, NJ 07960
`973-339-7985
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`Attorneys for Petitioner
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`DATED: September 18, 2017
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`Certificate of Service
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`I hereby certify that on September 18, 2017, I delivered a copy of the above
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`Reply on Motion to Deem Facts Admitted with Exhibits 1019-1022 to Patent
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`Owner’s counsel, Brad Pedersen, Esq. and Paul Haun, Esq., at their respective
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`email addresses at which they consented to service.
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`
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`By: _______________
` Vincent McGeary
` vmcgeary@mcgearycukor.com
` Reg. No. 42,862
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`McGEARY CUKOR LLC
`7 Dumont Place
`Morristown, NJ 07960
`973-339-7985
`
`Attorneys for Petitioner
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`DATED: September 18, 2017
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