Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 16
`Entered: July 25, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ETHICON, INC.,
`Petitioner,
`
`v.
`
`BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM,
`Patent Owner.
`_______________
`
`Case IPR2019-00406
`Patent 6,596,296 B1
`
`Case IPR2019-00407
`Patent 7,033,603 B2
`_______________
`
`MEDTRONIC, INC., and TYRX, INC.,
`Petitioners,
`
`v.
`
`BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM,
`and TISSUEGEN, INC.,
`Patent Owners.
`____________
`
`Case IPR2019-00037
`Patent 6,596,296 B1
`
` Case IPR2019-00038
`Patent 7,033,603 B21
`____________
`
`
`
`Before SUSAN L. C. MITCHELL, ROBERT A. POLLOCK, and
`KRISTI L. R. SAWERT Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`1 This Order addresses issues that are the same in the above-identified proceedings. We exercise our
`discretion to issue one Order to be entered in each proceeding. No Party is authorized to use this joint
`heading and filing style in their papers.
`
`
`Tel: 571-272-7822
`
`Paper 16
`Entered: July 25, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ETHICON, INC.,
`Petitioner,
`
`v.
`
`BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM,
`Patent Owner.
`_______________
`
`Case IPR2019-00406
`Patent 6,596,296 B1
`
`Case IPR2019-00407
`Patent 7,033,603 B2
`_______________
`
`MEDTRONIC, INC., and TYRX, INC.,
`Petitioners,
`
`v.
`
`BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM,
`and TISSUEGEN, INC.,
`Patent Owners.
`____________
`
`Case IPR2019-00037
`Patent 6,596,296 B1
`
` Case IPR2019-00038
`Patent 7,033,603 B21
`____________
`
`
`
`Before SUSAN L. C. MITCHELL, ROBERT A. POLLOCK, and
`KRISTI L. R. SAWERT Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`1 This Order addresses issues that are the same in the above-identified proceedings. We exercise our
`discretion to issue one Order to be entered in each proceeding. No Party is authorized to use this joint
`heading and filing style in their papers.
`
`
`
`IPR2019-00037, Patent 6,596,296 B1, IPR2019-00038, Patent 7,033,603 B2
`IPR2019-00406, Patent 6,596,296 B1, IPR2019-00407, Patent 7,033,603 B2
`
`
`
`ORDER
`Maintaining Suspension of Proceedings
`37 C.F.R. § 42.5
`
`
`
`In our Order of July 16, 2019, we authorized Petitioner Ethicon (and/or
`
`Petitioner Medtronic, if desired) to renew its request for a motion to lift the stay in
`
`its above-listed IPRs within one week of the Federal Circuit’s decision on whether
`
`to issue the mandate in Regents of the University of Minnesota v. LSI Corp., Case
`
`No. 2018-1599 (“the UMN case”) Paper 22, 3–42. On July 22, 2019, the CAFC
`
`issued an Order denying UMN’s motion to stay issuance of that mandate pending
`
`the filing and disposition of a petition for writ of certiorari in the United States
`
`Supreme Court.3 Ex. 3002 (Exhibit 3005 in IPR2019-00037 and IPR2019-00038).
`
`That same day, Petitioner Ethicon requested that we immediately lift the
`
`suspension of these proceedings and set a deadline for Patent Owner’s Preliminary
`
`Response. Ex. 3003 (Exhibit 3006 in IPR2019-00037 and IPR2019-00038).
`
`Patent Owner opposes.4 Id.
`
`In our July 12, 2019, conference call with parties, Petitioner Ethicon
`
`represented that it would suffer “litigation harm” to its on-going district court case
`
`
`2 Except as otherwise noted, we refer to papers filed in IPR2019-00406.
`Corresponding papers are filed in each of the above-referenced IPRs.
`
` 3
`
` In briefing this issue, UMN stated that it “intends to file a petition for writ of
`certiorari by the September 2019 deadline.” Ex. 3001, 2 (Exhibit 3004 in IPR2019-
`00037 and IPR2019-00038).
`
`4 Subject to certain conditions not at issue here, Petitioner Medtronic takes no
`position as to whether this case should be stayed. See Ex. 2002, 20:17–21:14
`(Exhibit 3001 in IPR2019-00037 and IPR2019-00038); Ex. 3003 in IPR2019-
`00037 and IPR2019-00038.
`
` 2
`
`
`
`
`
`
`
`IPR2019-00037, Patent 6,596,296 B1, IPR2019-00038, Patent 7,033,603 B2
`IPR2019-00406, Patent 6,596,296 B1, IPR2019-00407, Patent 7,033,603 B2
`
`against Patent Owner if the stay was not lifted. Ex. 2002, 19:21–20:11. Petitioner,
`
`nonetheless, admitted that, “[t]here is at present no pending motion for stay” before
`
`the District Court and, as presently postured, trial will begin before the due date for
`
`final written decisions in the instant IPRs. Id. at 24:14–21; 19:21–20:11. Under
`
`the circumstances, we agree with Patent Owner that, “[i]f Ethicon believes that
`
`there is harm to them because the litigation is going to proceed ahead of the IPRs,
`
`they, of course, could go to the District Court and ask that the District Court stay
`
`the litigation, but Ethicon never did.” Id. at 22:18–22.
`
`Considering the particular circumstances before us, we deny Ethicon’s
`
`request. Although we do not disagree that in maintaining the stay of these
`
`proceedings Ethicon may suffer “the unfairness of delaying resolution of [its
`
`IPRs]” (see id. at 20:1–2), we maintain that “the potential litigation harm to
`
`Petitioner if this case is stayed, this is outweighed by the potential constitutional
`
`harm to Patent Owner, should the instant IPRs proceed on the merits” (Paper 11,
`
`3).
`
`ORDER
`
`ORDERED that these proceedings shall remain suspended pending the
`
`expiration of a deadline to file, or the final disposition of, a petition for writ of
`
`certiorari in the United States Supreme Court for Regents of the University of
`
`Minnesota v. LSI Corp., Case No. 2018-1599;
`
`FURTHER ORDERED that the deadline for Patent Owner to file any
`
`Preliminary Response in these proceedings will be set for two months from the
`
`earlier of the expiration of a deadline to file, or the final disposition of, a petition
`
`for writ of certiorari in the United States Supreme Court for Regents of the
`
`University of Minnesota v. LSI Corp., Case No. 2018-1599;
`
` 3
`
`
`
`
`
`
`
`IPR2019-00037, Patent 6,596,296 B1, IPR2019-00038, Patent 7,033,603 B2
`IPR2019-00406, Patent 6,596,296 B1, IPR2019-00407, Patent 7,033,603 B2
`
`
`FURTHER ORDERED that Patent Owner is authorized to file a Motion to
`
`Dismiss, if applicable, within two weeks of the date of any final decision resulting
`
`from a writ of certiorari for Regents of the University of Minnesota v. LSI Corp.,
`
`Case No. 2018-1599, not to exceed ten pages;
`
`FURTHER ORDERED that, in the event Patent Owner files a Motion to
`
`Dismiss, Petitioner will have two weeks to file an Opposition to Patent Owner’s
`
`Motion to Dismiss, not to exceed ten pages; and
`
`FURTHER ORDERED that the parties are to timely apprise the Board of
`
`developments or changes in the status of any other proceedings concerning these
`
`proceedings.
`
`
`
`PETITIONER ETHICON:
`
`Jeffrey S. Ginsberg
`Andrew D. Cohen
`jginsberg@pbwt.com
`acohen@pbwt.com
`
`PETITIONER MEDTRONIC:
`
`Andrew Sommer
`asommer@winston.com
`
`
`
`PATENT OWNER:
`
`Gerald B. Hrycyszyn
`Richard F. Giunta
`ghrycyszyn-ptab@wolfgreenfield.com
`rgiunta-ptab@wolfgreenfield.com
`
` 4
`
`
`
`
`
`
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