`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`MONAGHAN MEDICAL CORP.,
`Petitioner
`
`
`v.
`
`
`SMITHS MEDICAL ASD, INC.,
`Patent Owner.
`
`________________
`
`Case No. IPR2018-01466
`Patent No. 7,059,324
`Issue Date: June 13, 2006
`Title: Positive Expiratory Pressure Device With Bypass
`
`_____________________________________________________________
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`LEAVE TO FILE A BRIEF CONSTRUING CHALLENGED CLAIMS
`UNDER A DISTRICT COURT-TYPE STANDARD
`_____________________________________________________________
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`
`
`
`
`
`PO’s Opp to MFL to File Brief Construing Terms Under District Court Stand.
`Case IPR2018-01466
`U.S. Patent No. 7,059,324
`
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`Patent Owner Smiths Medical ASD, Inc. (“Smiths Medical”) hereby opposes
`
`I.
`
`Petitioner Monaghan Medical Corp.’s (“Monaghan”) Motion for Leave to File a
`
`Brief Construing the Challenged Claims Under a District Court-Type Standard
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`(“Motion”). The Board should deny the relief requested because Monaghan has at
`
`all turns failed to comply with both the content and the spirit of the rules. Not only
`
`did the Board not give permission to file the Motion, Monaghan never even
`
`actually requested permission to file its Motion. (Exhibit 1017.) Finally,
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`Petitioner should not be rewarded for its failing to follow the rules because of
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`Smiths Medical would be prejudiced by Monaghan’s behavior. Even under the
`
`best of conditions, Smiths Medical will not be given notice prior to filing its
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`preliminary response which standard will be applied. Therefore, Smiths Medical
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`will have to brief both constructions, the very thing Monaghan has suggested was
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`too large a burden to place on it.
`
`II. GOVERNING LAWS, RULES, AND PRECEDENT
`Pursuant to 37 C.F.R. § 42.100(b), “[a] party may request a district court-
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`type claim construction approach to be applied if a party certifies that the involved
`
`patent will expire within 18 months from entry of the Notice of Filing Date
`
`Accorded to [the] Petition.”
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`2
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`PO’s Opp to MFL to File Brief Construing Terms Under District Court Stand.
`Case IPR2018-01466
`U.S. Patent No. 7,059,324
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`In the commentary to the current version of Rule 37 C.F.R. § 42.100(b), the
`
`
`
`Patent Office explained:
`
`A request by either party for a Phillips-type construction must be done
`
`by motion, triggering a conference call with the panel to discuss the
`
`request to resolve whether such a motion is appropriate under the
`
`circumstances and whether any other briefing is necessary for each
`
`party to be able to address adequately the appropriate construction
`
`standard. For instance, petitioner may be afforded an opportunity to
`
`address a Phillips-type construction analysis before patent owner is
`
`required to file its preliminary response.
`
`…
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`[A] motions practice in which the petitioner may be able to brief an
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`alternative construction before a patent owner files its preliminary
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`response may be an efficient way to proceed, but such choice is left to
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`the discretion of the panel… [T]he Office prefers to resolve the
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`applicable claim construction standard before institution, and ideally,
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`before the patent owner preliminary response deadline has
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`passed.
`
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`3
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`PO’s Opp to MFL to File Brief Construing Terms Under District Court Stand.
`Case IPR2018-01466
`U.S. Patent No. 7,059,324
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`81 Fed. Reg. 18752, 18753. (Emphasis added.)
`
`III. THE BOARD SHOULD DENY MONAGHAN LEAVE TO ADDRESS
`CLAIM CONSTRUCTION ACCORDING TO A DISTRICT COURT-
`TYPE APPROACH IN THIS PROCEEDING
`Monaghan should not be allowed leave to file additional briefing for district
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`court-type claim constructions. First, there was no burden on Monaghan to make
`
`its arguments in the petition. At the time it filed its petition, the parties had already
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`argued their respective claim construction positions in court and the Court had
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`already issued a claim construction order. (Petition at 14; Ex. 1015.) It should
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`have been a simple matter to include its already-established positions in its
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`Petition.
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`Second, Monaghan should not be rewarded for failing to follow the rules and
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`procedures established by the Board. Smiths Medical requested permission to file
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`motions for district court-type claim construction in two separate IPR proceedings.
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`(Ex. 1017.) The Board granted permission for Smiths Medical to file its motions.
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`(Id.) However, Monaghan never requested permission from the Board, nor did the
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`Board give approval for Monaghan to file its Motion. (Id.) The only permission
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`granted by the Board was for Smiths Medical to file “motions for District Court
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`type claim construction.” (Id.)
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`4
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`PO’s Opp to MFL to File Brief Construing Terms Under District Court Stand.
`Case IPR2018-01466
`U.S. Patent No. 7,059,324
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`Third, “[a] motion may only be filed according to a schedule set by the
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`
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`Board” and “will not be entered without Board authorization.” 37 C.F.R. §§
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`42.20(b), 42.25. Monaghan has never asked for, nor has the Board provided a
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`briefing schedule to brief this issue. Therefore, according to the default briefing
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`schedule under 37 C.F.R. § 42.25, since Monaghan’s Motion was filed on August
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`31, 2018, and allowing for two months for the filing for an opposition and reply
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`brief, Monaghan’s reply would not be due until October 21, 2018, just a short time
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`before the preliminary response is due. As a result, even if the Board decided the
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`Motion immediately, and Monaghan supplemented briefing on its constructions
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`immediately, Smiths Medical would be faced with briefing both claim
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`constructions in its preliminary response – the very thing that Monaghan argued
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`would have been unduly burdensome for it. This is inconsistent with the
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`commentary to the official rules where the Board stated the claim construction
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`issue should ideally be decided and addressed by patent owner before the patent
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`owner preliminary response deadline has passed. 81 Fed. Reg. 18752, 18753.
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`Placing the burden to brief both variations on Patent Owner is unfair and
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`prejudicial to Smiths Medical.
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`Fourth, Monaghan never identified prejudice (other than cost and general
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`burden) that it would suffer if it were not allowed further briefing, and it never
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`
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`5
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`PO’s Opp to MFL to File Brief Construing Terms Under District Court Stand.
`Case IPR2018-01466
`U.S. Patent No. 7,059,324
`
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`even explained how, if at all, its constructions would change under a district court-
`
`type claim construction. See generally, IPR2018-01466, Paper 10.
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`IV. CONCLUSION
`Because Monaghan has had every opportunity to previously address district
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`court-type claim constructions and the relief Monaghan requests would shift the
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`prejudice to Smiths Medical, the Board should deny Monaghan’s request for leave
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`to further brief district court-type claim constructions.
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`Dated: October 1, 2018
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`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Jeremy D. Peterson/ .
`Jeremy D. Peterson (Reg. No. 52,115)
`
`
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`6
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`PO’s Opp to MFL to File Brief Construing Terms Under District Court Stand.
`Case 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), lead counsel for Patent Owner hereby
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`
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`certifies that on October 1, 2018 copies of this PATENT OWNER’S
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`OPPOSITION TO PETITIONER’S MOTION FOR LEAVE TO FILE A BRIEF
`
`CONSTRUING CHALLENGED CLAIMS UNDER A DISTRICT COURT-TYPE
`
`STANDARD were served to the email correspondence address of record for
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`Petitioner’s counsel of record:
`
`David P. Lindner
`(dlindner@brinksgilson.com)
`William H. Frankel
`(wfrankel@brinksgilson.com)
`
`Respectfully submitted,
`
` .
`
` /Jeremy D. Peterson/ .
`Jeremy D. Peterson (Reg. No. 52,115)
`
`Dated: October 1, 2018
`
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`7
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