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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`CORPAK MEDSYSTEMS, INC. and HALYARD HEALTH, INC.,
`Petitioner,
`
`v.
`
`KIRN MEDICAL DESIGN, L.L.C.,
`Patent Owner.
`
`_______________
`
`Case IPR2017-01990
`Patent 6,631,715 B2
`
`_______________
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
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`Case IPR2017-01990
`Patent 6,631,715
`
`
`
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` TABLE OF AUTHORITIES
`
`
`Cases
`
`General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357,
`(P.T.A.B. Sept. 6, 2017) (Paper 19) (Section II.B.4.i designated
`precedential) .................................................................................................. 1
`
`Statutes
`
`35 U.S.C. § 314(a) ................................................................................................. 1, 4
`
`Other Authorities
`
`37 C.F.R. § 42.108(a) ................................................................................................ 1
`
`37 C.F.R. § 42.65(a) ................................................................................................... 2
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`
`i
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`Case IPR2017-01990
`Patent 6,631,715
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`Petitioner was granted leave to file a Reply in response to Patent Owner’s
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`argument that the Board should exercise its discretion to decline institution of the
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`follow-on Petition in this case pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. §
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`42.108(a) in view of General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
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`Case IPR2016-01357, slip op. at 15 (P.T.A.B. Sept. 6, 2017) (Paper 19) (Section
`
`II.B.4.i designated precedential). Petitioner requested leave because Section
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`II.B.4.i of General Plastic was designated precedential on October 18, 2017, after
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`Petitioner filed its follow-on Petition. Petitioner’s Reply is a last-minute attempt
`
`by Petitioner to address § 314(a) and the factors considered by the Board, which
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`Petitioner failed to do in its follow-on Petition. Yet the arguments presented by
`
`Petitioner in its Reply merely confirm that Petitioner’s follow-on Petition falls
`
`squarely in the class of petitions that should be denied under § 314(a).
`
`Despite being given an extra opportunity to adequately explain why its
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`follow-on Petition should be instituted in view of the unreasonable deficiency of its
`
`previous Petition, Petitioner again fails to provide an adequate explanation. The
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`Board has applied an objective standard in determining whether a particular claim
`
`construction by the Board should have been expected by a petitioner. See General
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`Plastic, at 21. Petitioner’s previous Petition was fatally flawed because it
`
`effectively ignored that claim 18 requires snapping a tube into a channel, not
`
`snapping two pieces of a clip together. Petitioner now attempts to excuse its prior
`
`
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`1
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`Case IPR2017-01990
`Patent 6,631,715
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`failure to find the new secondary references of its follow-on Petition by saying that
`
`it had not searched for this art until the Board had issued its Decision Denying
`
`Institution of the previous Petition, with Petitioner explaining that, “[s]upported 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.’’” Reply at 4 (citing Ex. 1018, ¶ 52).
`
`But Petitioner merely points to the same unsupported reasoning that the
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`Board rejected in Petitioner’s previous Petition. “Expert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based is entitled to
`
`little or no weight.” 37 C.F.R. § 42.65(a). The expert’s testimony relied upon by
`
`Petitioner was not supported by underlying facts or data. Instead, the expert’s
`
`testimony was an opinion that merely cited Ballantyne’s disclosure of an anchoring
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`clip that comprises two pieces which are snap-fitted together upon the ends of a
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`bridle and perhaps also upon a tube. Compare Ex. 1018, ¶ 52, with Ex. 1002 at
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`col. 8, ll. 6-17. Petitioner does not provide any other explanation or support in its
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`Reply for how its interpretation could have been reasonable. This is not an
`
`adequate explanation.
`
`
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`In addressing factor 2 of General Plastic (whether a “petitioner knew of the
`
`prior art asserted in the second petition or should have known of it”), Petitioner
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`contends that it engaged an “accomplished prior art search firm” for the previous
`
`
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`2
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`Case IPR2017-01990
`Patent 6,631,715
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`Petition, and that the search firm exercised “reasonable diligence” and conducted a
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`“reasonable search.” Reply at 2. As provided in Patent Owner’s Preliminary
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`Response to the previous Petition, and affirmed in the Board’s decision to deny
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`institution of the previous Petition, “‘snapping the at least one tube into a channel
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`formed in a receiver’ means that snapping occurs with respect to a tube and a
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`channel, based on the express language.” Ex. 1013 at 8 (emphasis added). In its
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`Reply, Petitioner focuses on explaining the apparent difficulty that the search firm
`
`faced in finding the new references of Simmons and Izumi. See Reply at 2. Not
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`mentioned is whether Petitioner actually instructed the search firm to search for the
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`limitation. Thus, Petitioner also has not adequately explained whether it should
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`have known of these references, and if not, why.
`
`In addressing factor 5, Petitioner states that it “sacrificed” over seven of the
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`twelve months that it had to file its previous Petition because it filed the previous
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`Petition within five months of being served with the Complaint. Reply at 4. Of
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`course Petitioner also waited until the end of the twelve months to file its follow-
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`on Petition. Petitioner provides no meaningful explanation for the delay in filing
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`its follow-on Petition, other than that Petitioner did not look for the new references
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`until after the Board had issued its Decision Denying Institution of the previous
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`Petition. Reply at 1-2, 4. Specifically, Petitioner waited until the Board issued its
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`Decision on July 26, 2017 to look for new references, see Reply at 1, 4, and
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`
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`3
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`Case IPR2017-01990
`Patent 6,631,715
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`identified the references by August 9, 2017, i.e. within two weeks of looking,
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`Reply at 1-2. Thus, contrary to Petitioner’s assertion regarding factor 3 that the
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`Board did not provide a “‘roadmap’ of any sort” by pointing to an absence of
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`disclosure by Ballantyne, Reply at 3, Petitioner clearly used Patent Owner’s
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`Preliminary Response and the Board’s Decision Denying Institution as a
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`“roadmap” for preparing its follow-on Petition.
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`
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`In addressing factors 6 and 7, Petitioner asserts that Patent Owner effectively
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`conceded that all elements are disclosed by the prior art. Reply at 5. Patent Owner
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`disagrees with Petitioner’s characterization of Patent Owner’s substantive
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`argument. As discussed in Patent Owner’s Preliminary Response, Patent Owner
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`argued that Petitioner has failed to explain how Ballantyne, in view of the new
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`references, teaches or suggests a method of placing and “securing at least one tube
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`through a nose into a patient,” comprising “snapping the at least one tube into a
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`channel formed in a receiver.” Paper 8 at 5. In any case, Petitioner’s failure to
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`provide an adequate explanation for the unreasonable deficiency of its previous
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`Petition in its Reply is not an efficient use of the Board’s finite resources.
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`For at least these reasons, as well as those articulated in Patent Owner’s
`
`Preliminary Response, the Board should exercise its discretion to deny institution
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`under § 314(a).
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`4
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`Case IPR2017-01990
`Patent 6,631,715
`
`
`Respectfully submitted,
`
`/Gregory M. York/
`Gregory M. York (Reg. No. 57,533)
`Pearne & Gordon LLP
`Attorney for Patent Owner Kirn Medical
`Design, LLC and Exclusive Licensee
`Applied Medical Technology, Inc.
`
`
`
`5
`
`Date: February 1, 2018
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`Case IPR2017-01990
`Patent 6,631,715
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`CERTIFICATE OF SERVICE
`
`
`I certify that a copy of the foregoing PATENT OWNER’S SUR-REPLY TO
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`was served on February 1, 2018 by causing it to be sent by email to counsel for
`
`Petitioner at the following email addresses:
`
`
`
`
`
`Richard M. McDermott (rick.mcdermott@alston.com)
`
`Jitendra Malik Ph.D.
`
`Alissa Pacchioli
`
`
`
`(jitty.malik@alston.com)
`
`(alissa.pacchioli@alston.com)
`
`
`
`Date: February 1, 2018
`
`By: /Gregory M. York/
`Gregory M. York (Reg. No. 57,533)
`Pearne & Gordon LLP
`Attorney for Patent Owner Kirn Medical
`Design, LLC and Exclusive Licensee
`Applied Medical Technology, Inc.
`
`
`
`
`
`
`
`
`6
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