`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
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`INTUITIVE SURGICAL, INC.,
`Petitioner,
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`v.
`
`ETHICON LLC,
`Patent Owner.
`
`________________________
`
`Case IPR2019-00880
`U.S. Patent No. 7,490,749
`________________________
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
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`
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`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner Ethicon LLC submits the
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`following mandatory notices.
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Ethicon LLC (the assignee of U.S. Pat. No. 7,490,749 (“the 749 Patent”)) is
`
`
`
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`an indirect subsidiary of Johnson & Johnson. Ethicon LLC has exclusively licensed
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`Ethicon Endo-Surgery, Inc. to sell products in the United States that would infringe
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`the 749 Patent absent a license. Ethicon Endo-Surgery, Inc. has exclusively
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`sublicensed that right to Ethicon US, LLC. Ethicon US, LLC and Ethicon Endo-
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`Surgery, Inc. are indirect subsidiaries of Johnson & Johnson.
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`
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
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`Patent Owner identifies the following judicial and/or administrative matters
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`that may be deemed related under 37 C.F.R. § 42.8(b)(2):
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`The 749 Patent is presently asserted in Ethicon LLC et al. v. Intuitive
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`Surgical, Inc. et al., C.A. No. 1:18-cv-01325-LPS (D. Del.) (“the Delaware
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`litigation”). U.S. Pat. Nos. 9,884,369 (“the 369 Patent”), 8,602,288 (“the 288
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`Patent”), 8,602,287 (“the 287 Patent”), and 9,326,770 (“the 770 Patent”) are also
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`asserted in the Delaware litigation. On March 12, 2019, Patent Owner filed a
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`motion for leave to file an amended complaint in the Delaware litigation to
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`withdraw infringement allegations relating to the 770 Patent and assert two
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`additional patents, U.S. Patent No. 9,844,379 (“the 379 Patent”) and U.S. Patent
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`2
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`No. 8,479,969 (“the 969 Patent”). As of April 17, 2019, Patent Owner’s motion is
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`still pending. The 969 Patent is also presently asserted in Ethicon LLC et al. v.
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`Intuitive Surgical, Inc. et al., C.A. No. 1:17-cv-00871-LPS (D. Del.).
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`
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`No patents or applications claim priority to U.S. Patent Application No.
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`11/729,355, which issued as the 749 Patent.
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`The 749 Patent states that it is related to U.S. Patent Application No.
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`11/729,013, filed Mar. 28, 2007 (the “013 Application”), now U.S. Patent No.
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`8,056,787. No patents or applications claim priority to the 013 Application.
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`The 749 Patent is subject to a terminal disclaimer tied to U.S. Patent
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`Application No. 11/497937, filed Aug. 2, 2006 (the “937 Application”), now U.S.
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`Patent No. 7,441,684. U.S. Patent No. 7,431,189 claims priority to the 937
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`Application.
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`C. Lead and Back-Up Counsel and Service Information (37 C.F.R. §
`42.8(b)(3)-(4))
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`Patent Owner identifies the following lead and back-up counsel and service
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`
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`information:
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`Lead Counsel
`Anish R. Desai
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8730
`F: 212-310-8007
`anish.desai@weil.com
`USPTO Reg. No. 73,760
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`Back-Up Counsel
`Elizabeth Stotland Weiswasser
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8022
`F: 212-310-8007
`elizabeth.weiswasser@weil.com
`USPTO Reg. No. 55,721
`
`
`
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`3
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`
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`Customer No. 506,499
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`
`
`Adrian Percer
`Weil, Gotshal & Manges LLP
`201 Redwood Shores, CA 94065
`T: 650-802-3141
`F: 650-802-3100
`adrian.percer@weil.com
`USPTO Reg. No. 46,986
`
`Christopher T. Marando
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, D.C. 20036
`T: 202-682-7094
`F: 202-857-0940
`christopher.marando@weil.com
`USPTO Reg. No. 67,898
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`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, D.C. 20036
`T: 202-682-7153
`F: 202-857-0940
`christopher.pepe@weil.com
`USPTO Reg. No. 73,851
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`Please address all correspondence to lead and backup counsel. Patent Owner
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`consents to service by electronic mail at the following address:
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`Ethicon.IPR.Service@weil.com.
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`Date: April 16, 2019
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` Respectfully submitted,
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`/Anish R. Desai/ 1
`Anish R. Desai
`Reg. No. 73,760
`Lead Counsel for Patent Owner
`
`4
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`CERTIFICATE OF SERVICE
`
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`The undersigned hereby certifies that on April 16, 2019, the foregoing
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`PATENT OWNER’S MANDATORY NOTICES PURSUANT TO 37 C.F.R. §
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`42.8 was served via electronic mail, upon the following:
`
`
`Steven R. Katz
`Joshua A. Griswold
`Kenneth W. Darby, Jr.
`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
`griswold@fr.com
`kdarby@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`IPR11030-0052IP1@fr.com
`PTABInbound@fr.com
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`
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`
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`/Timothy J. Andersen/ a
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`timothy.andersen@weil.com
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