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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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`CORRECTED 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
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`Rembrandt Wireless Technologies, LP v. Samsung Electronics,
`853 F.3d 1370 (Fed. Cir. 2017)…………………………………………………1
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`Other Authorities
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`Manual of Patent Examining Procedure (MPEP) 2131.02……………………. 3
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`MPEP 2163(II)(A)(3)(a)(ii)……………………………………………………. 3
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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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`Case IPR2017-01438
`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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`Certificate of Service ……………………………………………………...….5
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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. It never disputes the SOFs are true.
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`I. A Statutory Disclaimer Does Not Divest the Board’s Authority
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`The Board has authority over this motion under 35 U.S.C. §§311-314. Paper 8
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`at 4. Patentee, citing Guinn v. Kopf, 96 F.2d 1419 (Fed. Cir. 1996), argues that its
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`disclaimer divested the Board’s statutory authority. Paper 11 at 4-5. Patentee reads
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`Guinn incorrectly. In Guinn, the Office declared an interference. Guinn filed a
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`statutory disclaimer, like Patentee did here, to avoid a priority determination. The
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`Board entered adverse judgment over Guinn’s divestment of jurisdiction argument.
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`The Federal Circuit ruled that 35 U.S.C. §135, like §§ 311-314 here, “does not
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`provide for any such divestment of jurisdiction,” and held 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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`interference and render judgment against Guinn as a result of his disclaimer ...”
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`Guinn, 96 F.3d 1421-1422. The same reasoning applies here. Patentee cannot
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`unilaterally divest the Board’s authority. The disclaimer extinguishes 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). See also, Paper 9 at 2-5.
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` 1
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`Case IPR2017-01438
`US Patent No. 8,821,517
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`Patentee also argues that the motion relies on equity, and can only be heard as a
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`sanctions motion. The Board’s legal authority resides in §§42.11-42.12, including
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`§42.5, which broadly grants the power to “enter non-final orders to administer the
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`proceeding”. Thus, the Board has authority to deem SOFs admitted without a
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`sanctions finding. Or the Board under §42.5(b) can waive the notice requirements
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`of §42.11(2) and consider this an opposed motion for sanctions. By either analysis,
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`Patentee’s equity argument has no merit.
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`II. Patentee Presents No Evidence Disputing the SOFs
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`Instead of evidence, Patentee defends its responses with formalisms. It contends
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`the bare use of “admit,” “deny” or “cannot be admitted or denied” warrants
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`denying this motion, and that §42.22(c) requires SOFs to cite the record. Under
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`§42.11 not just any response will do. There must be some basis. And, §42.22(c)
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`states “preferably” SOFs should cite the record. Id. Patentee knows it copied the
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`claims and knows it did not disclose them. It needs no citations.
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`Patentee then complains terms are undefined or call for legal conclusions. The
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`Petition, of which the SOFs form a part, defines ‘889 Publication, and words like
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`“copied” and “developed or disclosed” require no definition. While improper
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`copying may be a legal conclusion, copying is just a fact Patentee wants to avoid.
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`Patentee also tries distraction. Instead of showing Patentee drafted the claims
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`first to support denying SOFs 6 and 7, it misleadingly contends the “PTO has
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`thrice determined” the subject matter was enabled and described. Describing an
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`US Patent No. 8,821,517
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`invention and presenting a claim are different, so the argument is irrelevant. But it
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`is also not true. Exhibit 2003 is an office action applying one of Patentee’s priority
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`documents. Written description was not at issue, and a reference need not need
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`satisfy the written description requirement. Compare MPEP 2131.02 with
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`2163(II)(A)(3)(a)(ii). The examiner also modified the reference (rotating the
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`figure) showing the subject matter was not described. Exh. 2003 at 9. See also,
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`Exh. 1012 at ¶¶62-70. Exhibits 2004 and 2005 are double patenting rejections. The
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`examiner made no priority determinations in these irrelevant exhibits.
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`The Board should also ignore Patentee’s unattested accusations of Petitioner’s
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`copying. The Petition proves the ‘517 Patent was useless for short incisions. Paper
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`1 at 1-4; 39; Exh. 1012 at ¶¶72-73. Petitioner published a stapler for short incisions
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`by 2009, while Patentee marketed its stapler for short incisions years later.
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`Compare Exhs. 1019 at Fig. 9d with Exh. 1020. Patentee’s excuse that it didn’t
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`disclose the copied claims because the Office had determined priority cannot be
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`true. The ‘517 Patent issued before the Office sent Exhibit 2003. Also, why didn’t
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`Patentee disclose the office action applying prior art antedating the ‘517 Patent’s
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`earliest asserted priority date? See, Exhs. 1021 at 8-11; 1022. Both the double
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`patenting rejections occurred after Patentee submitted copied claims. It therefore
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`could not have believed the office actions excused disclosure of the copied claims.
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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 19, 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 19, 2017, I delivered a copy of the above
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`Corrected Reply on Motion to Deem Facts Admitted to Patent Owner’s counsel,
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`Brad Pedersen, Esq. and Paul Haun, Esq., at their respective email addresses at
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`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
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`Attorneys for Petitioner
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`DATED: September 19, 2017
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` 5
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