IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CORPAK MEDSYSTEMS, INC. and HALYARD HEALTH, INC.,
`Petitioners
`v.
`KIRN MEDICAL DESIGN, L.L.C.,
`Patent Owner.
`____________
`Case IPR2017-01990
`Patent 6,631,715 B2
`____________
`
`PETITIONER’S REPLY TO PRELIMINARY RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CORPAK MEDSYSTEMS, INC. and HALYARD HEALTH, INC.,
`Petitioners
`v.
`KIRN MEDICAL DESIGN, L.L.C.,
`Patent Owner.
`____________
`Case IPR2017-01990
`Patent 6,631,715 B2
`____________
`
`PETITIONER’S REPLY TO PRELIMINARY RESPONSE
`
`
`
`IPR2017-01990
`U.S. Patent No. 6,631,715
`
`TABLE OF AUTHORITIES
`
`General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357(P.T.A.B. Sept. 6, 2017)
`(Paper 19) (precedential)...................................................................1, 3, 4, 5
`Microsoft Corp. v. Bradium Techs. LLC,
`Case IPR2016-00448 (P.T.A.B. July 25, 2016)
`(Paper 9) ...................................................................................................2, 3
`NetApp, Inc. v. Realtime Data LLC,
`Case IPR2017-01354 (P.T.A.B. Nov. 14, 2017)
`(Paper 16) .....................................................................................................5
`35 U.S.C. § 315(b)..................................................................................................4
`35 U.S.C. § 325(d)..............................................................................................2, 3
`
`i
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`
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`IPR2017-01990
`U.S. Patent No. 6,631,715
`
`EXHIBITS
`
`EXHIBIT 1001 U.S. Patent No. 6,631,715
`
`EXHIBIT 1002 U.S. Patent No. 5,185,005 (“Ballantyne”)
`
`EXHIBIT 1003
`
`“A New Nasal Bridle for Securing Nasoentereal Feeding
`Tubes” by Jeffrey A. Meer
`
`EXHIBIT 1004 Declaration of Dr. Terry Layton
`
`EXHIBIT 1005
`
`“Securing of intermediate duration feeding tubes” by W.
`Frederick McGuirt
`
`EXHIBIT 1006
`
`“The Bridle: Increasing the Use of Nasoenteric Feedings” by
`Albert Barrocas
`
`EXHIBIT 1007 U.S. Patent No. 5,752,511 (“Simmons”)
`
`EXHIBIT 1008 U.S. Patent No. 5,097,827 (“Izumi”)
`
`EXHIBIT 1009 Patent Owner’s Initial Infringement Contentions
`
`EXHIBIT 1010
`
`“Feeding Tube Anchor” by Albert Levenson
`
`EXHIBIT 1011 PCT International Application Publication No. WO 99/20334
`(“Bierman”)
`
`EXHIBIT 1012 Confirmation of Exclusive Licensee Applied Medical
`Technology, Inc.’s Authority to Conduct Inter Partes Review
`
`EXHIBIT 1013
`
`IPR2017-00646, Paper 9 (Decision) (P.T.A.B. July 26, 2017)
`
`EXHIBIT 1014
`
`IPR2017-00646, Paper 1 (Petition) (P.T.A.B. January 19,
`2017)
`
`EXHIBIT 1015
`
`IPR2017-00646, Paper 7 (Preliminary Response) (P.T.A.B.
`April 28, 2017)
`
`ii
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`IPR2017-01990
`U.S. Patent No. 6,631,715
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`EXHIBIT 1016 Declaration of Darlena H. Subashi for Pro Hac Vice
`
`EXHIBIT 1017 Transcript of Telephone Conference before the Board on
`January 8, 2018
`
`EXHIBIT 1018
`
`IPR2017-00646, Exhibit 1004 (Declaration of Terry Layton,
`PH.D) (P.T.A.B. January 19, 2017)
`
`iii
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`
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`IPR2017-01990
`U.S. Patent No. 6,631,715
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`Citing to General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
`
`Exclusive Licensee Applied Medical Technology, Inc. (“AMT”) argues that the
`
`’715 patent should be shielded from review. Case IPR2016-01357 (P.T.A.B. Sept.
`
`6, 2017) (Paper 19) (precedential) (“General Plastic”). But “[t]here is no per se
`
`rule precluding the filing of follow-on petitions after the Board’s denial of one or
`
`more first-filed petitions on the same patent” and under the right circumstances, a
`
`second petition should be instituted. General Plastic at 15. Indeed, an analysis of
`
`the relevant factors, described below, leads to a conclusion that the petition in this
`
`proceeding should be instituted by the Board.
`
`Background. On January 19, 2017, Petitioner filed a first Petition in
`
`IPR2017-00646. On April 28, 2017, AMT filed its POPR, and on July 26, 2017,
`
`the Board denied institution. Thirty-four days later, on August 29, 2017, Petitioner
`
`filed the present Petition. On October 18, 2017, General Plastic was designated
`
`precedential. On December 12, 2017, AMT filed its POPR in the present
`
`proceeding.
`
`Factor 1: Petitioner filed a petition directed to the same claim of the same
`
`patent.
`
`Factor 2: Petitioner was aware of the Ballantyne reference at the time of
`
`filing its first Petition, but was not aware of the later-asserted art at that time.
`
`Petitioner discovered the Bierman reference on August 3, 2017, and the Simmons
`
`1
`
`
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`IPR2017-01990
`U.S. Patent No. 6,631,715
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`and Izumi references on August 9, 2017. Petitioner engaged a prior art search firm
`
`for the first Petition, and that search, despite the exercise of reasonable diligence,
`
`failed to locate these later-asserted references. Simmons (128/207.18) and Izumi
`
`(128/207.18) are also in much different U.S. primary classes/subclasses than
`
`Ballantyne (604/174), Meer (604/54), Gabriel (600/424), and Johlin (604/264),
`
`making identification more difficult for a reasonably diligent prior art search,
`
`despite their relevance to nasogastric tubes. Thus, Petitioner reasonably was
`
`unaware of these references where an accomplished prior art search firm conducted
`
`a reasonable search, and such references were not identified. Microsoft Corp. v.
`
`Bradium Techs. LLC, Case IPR2016-00448 at 10 (P.T.A.B. July 25, 2016) (Paper
`
`9) (“Whether Petitioner initially failed to locate references that in combination
`
`disclose the claimed features or failed to argue them successfully in its first
`
`petition, alone does not immunize Patent Owner from challenges raised in a second
`
`properly filed petition.”) (analysis under 35 U.S.C. § 325(d)).
`
`Factor 3: Petitioner had received the POPR and the Board’s decision on
`
`institution for the first Petition prior to filing the second Petition. However, neither
`
`the POPR nor the Board’s decision addresses the prior art combinations at issue in
`
`the second Petition. See Ex. 1013, 1015. In the Board’s decision, the Board did
`
`not explain the specific deficiencies of the asserted art with respect to the offending
`
`limitation: “snapping the at least one tube into a channel formed in a receiver.”
`
`2
`
`
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`IPR2017-01990
`U.S. Patent No. 6,631,715
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`See Ex. 1013 at 13-14. Rather, the Board pointed to an absence of disclosure,
`
`without providing a “roadmap” of any sort, simply noting that Ballantyne did not
`
`“teach or suggest that tube 18 is received in a channel.” Ex. 1013 at 14.
`
`At bottom, any decision denying institution could technically be
`
`characterized as a “roadmap” to cure the petition’s deficiencies by its very nature,
`
`but such a characterization would run afoul of General Plastic’s admonishment
`
`against creating “per se” rules. General Plastic at 15.
`
`Factor 4: Petitioner filed the second Petition less than one month after
`
`learning of the art. This is a speedy timeframe for preparing an IPR petition. This
`
`is not a case where Petitioner knew of the art and strategically delayed filing the
`
`Petition. In addition, Patent Owner is not prejudiced by the filing of the second
`
`Petition. See id. at 17. Petitioner notified both AMT and the Court of the second
`
`petition promptly after learning of the additional art. This is not a case where the
`
`IPR process is being “used as [a] tool[] for harassment or a means to prevent
`
`market entry through repeated litigation and administrative attacks on the validity
`
`of a patent.” Id. at 17. AMT is in the market. AMT is not “overwhelmed … with
`
`an unreasonable number of challenges to patentability” where this Petition and the
`
`first Petition are the only two challenges that have ever been waged against the
`
`’715 Patent. See Microsoft at 9 (analysis under 35 U.S.C. § 325(d)). To the
`
`contrary, AMT is the one “shift[ing]” its positions in search of a path to denial of
`
`3
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`
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`IPR2017-01990
`U.S. Patent No. 6,631,715
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`institution. See General Plastic at 17. AMT asserted a new claim construction in
`
`response to the second Petition. Compare POPR at 14 with Ex. 1015 at 5-18
`
`(construing “securing at least one tube through a nose into a patient” in the present
`
`proceeding where it did not do so in its response to the first Petition). Patent
`
`Owner will not be unduly prejudiced by institution.
`
`Factor 5: Petitioner was not aware of the present art at the time that the first
`
`Petition was filed. Petitioner did not search for this art until the Board filed its
`
`institution decision in the first Petition. Supported by its expert, Petitioner had
`
`reasonably interpreted “snapping the at least one tube into a channel formed in a
`
`receiver” to refer to “‘snapping’ the ends of the nasal bridle and tube into a
`
`‘receiver.’” Ex. 1018, ¶ 52.
`
`Under 35 U.S.C. § 315(b), Petitioner had one year to file its first IPR
`
`petition. In the interest of efficiency and saving the District Court’s resources,
`
`Petitioner sacrificed over seven of those months, filing its first Petition less than
`
`five months after it was served with the Complaint. Denying institution in this
`
`case amounts to punishing Petitioner for speedily filing an IPR petition, before
`
`Petitioner had notice of AMT’s validity and claim construction positions. The
`
`result is that an order denying institution would encourage other petitioners to
`
`strategically delay their IPR challenges, ultimately wasting precious resources.
`
`4
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`IPR2017-01990
`U.S. Patent No. 6,631,715
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`Factors 6 & 7: The Board’s finite resources will be not be unduly stressed
`
`in this one-petition, one-claim proceeding with four prior art references at issue. In
`
`contrast, in General Plastic, the Board faced five follow-on petitions dealing with
`
`a total of two patents, 15 claims, and seven individual prior art references. General
`
`Plastic at 7-8; see also, e.g., NetApp, Inc. v. Realtime Data LLC, Case IPR2017-
`
`01354 (P.T.A.B. Nov. 14, 2017) (Paper 16) (eight claims).
`
`Further, the disputed issues are extremely narrow. AMT did not make any
`
`limitation-specific arguments in its POPR, effectively conceding that all elements
`
`are disclosed by the prior art. See POPR 29-61. As the Board has recognized, an
`
`“objective of the AIA is to provide an effective and efficient alternative to district
`
`court litigation.” See General Plastic at 16-17. If institution is denied, the district
`
`court will be taxed with reviewing and making determinations on claim
`
`construction, discovery, infringement, expert reports, and invalidity, when the
`
`Board’s exercise of discretion over a single claim could result in effective and
`
`efficient alternative to district court litigation. Finally, institution of this Petition
`
`should not affect the Board’s ability to issue a final determination within one year.
`
`The Board is faced with a single claim and a very narrow set of issues.
`
`Conclusion. Weighing the General Plastic factors, Petitioner respectfully
`
`submits that all Grounds should be instituted for review.
`
`5
`
`
`
`Date: January 12, 2018
`
`By:
`
`IPR2017-01990
`U.S. Patent No. 6,631,715
`
`/Richard M. McDermott/
`Richard M. McDermott (Reg. No. 40,720)
`Jitendra Malik Ph.D. (Reg. No. 55,823)
`Alissa M. Pacchioli (Reg. No. 74,252)
`
`6
`
`
`
`IPR2017-01990
`U.S. Patent No. 6,631,715
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January
`
`12, 2018, a complete and entire copy of this PETITIONER’S REPLY TO
`
`PRELIMINARY RESPONSE and all supporting exhibits were provided via
`
`electronic means to counsel for Applied Medical Technology, Inc. and Kirn
`
`Medical Design, LLC as follows:
`
`GREGORY M. YORK
`gyork@pearne.com
`
`STEVEN J. SOLOMON
`ssolomon@pearne.com
`
`CHRISTOPHER T. META
`cmeta@pearne.com
`
`MICHAEL P. PADDEN
`mpadden@pearne.com
`
`Date: January 12, 2018
`
`By:
`
`/Richard M. McDermott/
`Richard M. McDermott (Reg. No. 40,720)
`Jitendra Malik Ph.D. (Reg. No. 55,823)
`Alissa M. Pacchioli (Reg. No. 74,252)
`
`7
`
`
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