UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MONAGHAN MEDICAL CORP.,
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`Petitioner,
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`SMITHS MEDICAL ASD, INC.,
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`Patent Owner.
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`Case No. IPR2018-01466
`Patent No. 7,059,324
`Issue Date: June 13, 2006
`Title: Positive Expiratory Pressure Device With Bypass
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`__________________________________________________________________
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`PETITIONER’S MOTION FOR LEAVE TO FILE A BRIEF CONSTRUING
`CHALLENGED CLAIMS UNDER A DISTRICT COURT-TYPE
`STANDARD
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MONAGHAN MEDICAL CORP.,
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`Petitioner,
`v.
`SMITHS MEDICAL ASD, INC.,
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`Patent Owner.
`
`
`Case No. IPR2018-01466
`Patent No. 7,059,324
`Issue Date: June 13, 2006
`Title: Positive Expiratory Pressure Device With Bypass
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`__________________________________________________________________
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`PETITIONER’S MOTION FOR LEAVE TO FILE A BRIEF CONSTRUING
`CHALLENGED CLAIMS UNDER A DISTRICT COURT-TYPE
`STANDARD
`__________________________________________________________________
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`In response to Patent Owner Smiths Medical ASD, Inc.’s (“Smiths
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`Case No.: IPR2018-01466
`U.S. Patent No. 7,059,324
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`I.
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`Medical”) request that the Board apply a district court-type claim construction
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`approach in the instance case (Paper 8), Petitioner Monaghan Medical Corp.
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`(“Monaghan”) requests leave to file a brief addressing the challenged claims under
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`the district court-type approach. While conferring with Smiths Medical on its
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`motion, Monaghan informed Smiths Medical that it intended to file this request for
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`leave which was reported to the Board in Patent Owner’s email of August 29,
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`2018. (Exhibit 1017). The Board authorized the Parties’ filings in its email
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`correspondence of August 29, 2018. (Id.)
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`II. GOVERNING LAWS, RULES, AND PRECEDENT
`A claim in an unexpired patent is given its broadest reasonable construction
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`in light of the specification in which it appears. In re Cuozzo Speed Techs., LLC,
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`793 F.3d 1268, 1275-76, 1278-79 (Fed. Cir. 2015), aff’d Cuozzo Speed Techs. v.
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`Lee, 136 S. Ct. 2131 (2016). Pursuant to 37 C.F.R. § 42.100(b), “[a] party may
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`request a district court-type claim construction approach to be applied if a party
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`certifies that the involved patent will expire within 18 months from the entry of the
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`Notice of Filing Date Accorded to [the] Petition.” (Emphasis added.)
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`In promulgating the current version of Rule 37 C.F.R. § 42.100(b), the
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`Patent Office provided commentary shedding light on the rules governing this
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`optional district court-type claim construction approach. 81 Fed. Reg. 18750,
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`Case No.: IPR2018-01466
`U.S. Patent No. 7,059,324
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`18750-62. Specifically, the Patent Office explained:
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`The Office agrees that procedures to determine which claim
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`construction standard applies to a patent that may expire before the
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`conclusion of a proceeding should minimize the cost and burden to
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`the parties, and also offer a full and fair opportunity for each party to
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`present its case under the appropriate approach. The Office agrees
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`that it is too burdensome to require a petitioner to submit in its
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`petition a construction under both a broadest reasonable
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`construction and a Phillips-type construction if the petitioner
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`determines that the challenged patent may expire before the end
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`of the proceeding.
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`***
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`The Office agrees with commenters that a motions practice in
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`which the petitioner may be able to brief an alternative
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`construction before patent owner files its preliminary response
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`may be an efficient way to proceed, but such choice is left to the
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`discretion of the panel.
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`81 Fed. Reg. 18750, 18753. (Emphasis added.)
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`Case No.: IPR2018-01466
`U.S. Patent No. 7,059,324
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`III. THE BOARD SHOULD GRANT MONAGHAN LEAVE TO
`ADDRESS CLAIM CONSTRUCTION ACCORDING TO A
`DISTRICT COURT-TYPE APPROACH IN THIS PROCEEDING
`It is clear that 37 C.F.R. § 42.100(b) provides for an optional alternative
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`claim construction approach that differs from the standard approach applied in IPR
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`proceedings. Specifically, the rule requires a party to explicitly request application
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`of this alternative claim construction approach. 37 C.F.R. § 42.100(b). And,
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`although several commenters requested a bright-line rule as to when to a apply a
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`Phillips-type construction, the Patent Office rejected such an approach, and instead
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`implemented the current optional approach while acknowledging that petitioners
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`may be permitted to brief alternate constructions. See 81 Fed. Reg. 18750, 18752-
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`53.
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`Monaghan could have speculated as to whether Smiths Medical would elect
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`to invoke the optional provision to change the claim construction approach in the
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`instant IPR proceeding. However, such speculation was unnecessary in view of
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`the Patent Office’s rules and guidelines. At the time Monaghan filed its petition, it
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`applied the standard IPR claim construction approach, but Smiths Medical
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`subsequently sought to invoke the optional district court-type construction
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`approach permitted under 37 C.F.R. § 42.100(b).
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`However, invoking the rule does not conclude the matter. Indeed, the Patent
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`Office’s express guidelines concerning this rule contemplate the exact relief that
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`Monaghan now requests – an opportunity to brief the alternate construction. See
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`Case No.: IPR2018-01466
`U.S. Patent No. 7,059,324
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`81 Fed. Reg. 18750, 18753. Requiring Monaghan, at the time it filed its petition,
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`to anticipate whether Smiths Medical would seek to invoke the optional district
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`court-type approach, and thus address both standards in its petition, would have
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`increased the cost and burden to Monaghan. Monaghan’s petition includes
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`fourteen different grounds (Paper 2 at ii-vii), and under a dual claim construction
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`approach, Monaghan would have had to either eliminate invalidity grounds or file
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`multiple petitions against the ’598 Patent. The Patent Office has already agreed
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`that this is not the intent of its procedures. 81 Fed. Reg. 18750, 18753
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`(acknowledging “that it is too burdensome to require a petitioner to submit in its
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`petition a construction under both a broadest reasonable construction and a
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`Phillips-type construction . . . .”)
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`Moreover, granting Smiths Medical’s request for the district court-type
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`claim construction approach while denying Monaghan’s request to brief the
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`challenged claims under this approach amounts to an improper shifting of the
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`goalposts. A patent owner should not gain an advantage by requesting claim
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`constructions under a different standard and on an incomplete record. The Patent
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`Office’s guidelines make clear that a petitioner should be afforded a “full and fair
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`opportunity” to present its case under the Phillips standard even after invocation of
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`the optional alternate claim construction standard. Id. This makes sense, because
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`anything less would deprive the Board from having a full understanding of the
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`Case No.: IPR2018-01466
`U.S. Patent No. 7,059,324
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`scope of the ’324 Patent (Exhibit 1001).
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`IV. CONCLUSION
`In view of the foregoing, Monaghan respectfully requests authorization to
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`submit an additional brief addressing the construction of the challenged claims
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`under the district court-type claim construction standard.
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`Date: August 31, 2018 Respectfully submitted,
`By: /David P. Lindner/
`David P. Lindner
`Reg. No. 53,222
`Counsel for Petitioner
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`William H. Frankel
`Reg. No. 30,337
`Back-up Counsel for Petitioner
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`Case No.: IPR2018-01466
`U.S. Patent No. 7,059,324
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §42.6(e), the undersigned hereby certifies that
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`PETITIONER’S MOTION FOR LEAVE TO FILE A BRIEF CONSTRUING THE
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`CHALLNEGED CLAIMS UNDER A DISTRICT COURT-TYPE STANDARD
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`was served on August 31, 2018, upon the following counsel of record for Patent
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`Owner by electronic mail.
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`Jeremy D. Peterson
`MORGON, LEWIS & BOCKIOUS LLP
`111 Pennsylvania Avenue, NW
`Washington, DC 20004-2541
`jeremy.peterson@morganlewis.com
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`John D. Zele
`MORGON, LEWIS & BOCKIOUS LLP
`111 Pennsylvania Avenue, NW
`Washington, DC 20004-2541
`john.zele@morganlewis.com
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`J. Kevin Fee
`Pro Hac Vice Pending
`MORGON, LEWIS & BOCKIOUS LLP
`111 Pennsylvania Avenue, NW
`Washington, DC 20004-2541
`kevin.fee@morganlewis.com
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`Date: August 31, 2018 Respectfully submitted,
`By: /David P. Lindner/
`David P. Lindner
`Reg. No. 53,222
`Counsel for Petitioner
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`William H. Frankel
`Reg. No. 30,337
`Back-up Counsel for Petitioner
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