Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 23
`Entered: March 25, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEVRO CORP.,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC NEUROMODULATION CORP.,
`Patent Owner.
`____________
`
`IPR2019-01284
`Patent 7,822,480 B2
`____________
`
`
`
`Before ROBERT A. POLLOCK, SCOTT C. MOORE, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 23
`Entered: March 25, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEVRO CORP.,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC NEUROMODULATION CORP.,
`Patent Owner.
`____________
`
`IPR2019-01284
`Patent 7,822,480 B2
`____________
`
`
`
`Before ROBERT A. POLLOCK, SCOTT C. MOORE, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`IPR2019-01284
`Patent 7,822,480 B2
`INTRODUCTION
`I.
`On February 27, 2020, and pursuant to Petitioner’s email of February
`21, 2020, the Board granted Petitioner authorization to file a motion to
`submit supplemental information under 37 C.F.R. § 42.123(a). Paper 13
`(“Order”). Petitioner filed its Motion on March 3, 2020. Paper 16 (“Mot.”).
`Patent Owner filed an opposition to that motion on March 5. Paper 18
`(“Opp.”).
`Petitioner seeks to submit Proposed Exhibits 1028–1059 as
`supplemental information supporting the public accessibility and prior art
`status of Sato (Ex. 1018); Principles of Radiotelegraphy (Ex. 1019); Brenig
`(Ex. 1020); Oetting (Ex. 1021); Ghassemlooy (Exhibit 1022); and
`Hitzelberger (Ex. 1025). See Pet. 2–3. According to Petitioner, “Patent
`Owner did not dispute the prior art status of any reference in its preliminary
`patent owner response,” but served evidentiary objections challenging the
`prior art status of these references after institution. Mot. 3 (citing Paper 9,
`5–13, 16–17).
`For the reasons discussed below, Petitioner’s Motion is granted.
`
`II.
`
`LEGAL STANDARD
`A party may file a motion to submit supplemental information if the
`following requirements are met: (1) “[a] request for the authorization to file
`a motion . . . is made within one month of the date the trial is instituted,” and
`(2) “[t]he supplemental information must be relevant to a claim for which
`the trial has been instituted.” 37 C.F.R. § 42.123(a). The moving party bears
`the burden of proving that it is entitled to the requested relief. 37 C.F.R.
`§ 42.20(c).
`
`2
`
`
`
`IPR2019-01284
`Patent 7,822,480 B2
`III. DISCUSSION
`Timeliness of the Motion
`A.
`We instituted trial in this proceeding on January 21, 2020. Paper 7.
`Because Petitioner requested authorization to file a motion to submit
`supplemental information on February 21, 2020, Petitioner’s request was
`made within one month of the date the trial was instituted, and meets the
`requirements of § 42.123(a)(1).
`
`Relevance to a Claim for which Trial Has Been Instituted
`B.
`For reasons set forth below, Petitioner has met its burden to show
`Proposed Exhibits 1028–1059 are “relevant to a claim for which the trial has
`been instituted” as required under § 42.123(a)(2). Petitioner avers that the
`Petition relies on Sato, Principles of Radiotelegraphy; Brenig; Oetting;
`Ghassemlooy; and Hitzelberger “to explain the background state of the are
`with respect to the ’480 patent,” and “further relies on Hitzelberger . . . to
`support ground 3.” Mot. 2–3 (citing Pet. 5–8, 11, 27, 28, 52, 57; Ex. 1003
`¶¶ 31–39, 152). Petitioner offers Exhibits 1028–1059 as supplemental
`information supporting the public accessibility and prior art status of these
`references. Id.
`In particular, Petitioner asserts that Proposed Exhibit 1029 is relevant
`to Sato; Proposed Exhibit 1020 to Principles of Radiotelegraphy; proposed
`exhibit 1031 to Brenig; Proposed Exhibit 1032 to Oetting; Proposed Exhibit
`1032 to Ghassemlooy; and Proposed Exhibit 1028, and Proposed Exhibits
`1034–1059 to Hitzelberger. See Pet. 4–9. Patent Owner does not dispute
`the above contentions regarding the relevance of Proposed Exhibits 1028–
`1059. Finding Petitioner’s arguments reasonable, Petitioner has satisfied the
`requirements of § 42.123(a)(2).
`
`3
`
`
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`IPR2019-01284
`Patent 7,822,480 B2
`Entitlement to the Requested Relief
`C.
`Patent Owner seeks to persuade us that Petitioner is not entitled to the
`relief requested under 37 C.F.R. § 42.20(c) because it “offers Exhibits 1028–
`59 as a belated attempt to supplement its prima facie case and attempts to
`remedy the deficiencies present in the petition with respect to the issue of
`whether Exhibits 1018–22 and 1025 were publically accessible before the
`critical date of the ’480 Patent.” See Opp. 4. More particularly, Patent
`Owner contends that “Petitioner intends to rely on these exhibits as
`substantive evidence to support a new theory of public accessibility not set
`out in its Petition,” and that it would be prejudiced by having to analyze and
`address them at this stage of the proceeding, particularly because it “does not
`have the right to submit evidence of its own with a sur-reply.” Id. at 5–7.
`We do not find Patent Owner’s argument persuasive.
`The ’480 patent claims the benefit of provisional application
`60/392,475, filed on June 28, 2002. Ex. 1001 (60). While we need not
`address here whether the challenged claims are entitled to that benefit of that
`date, this is, nevertheless, the earliest possible priority date for prior art
`purposes. By comparison, each of the references Petitioner seeks to support
`with its Proposed Exhibits bears on its face, a markedly earlier presumptive
`date of publication. See Ex. 1018 (“Oct. 1978); Ex. 1019 (“1919”); Ex.
`1020 (“Aug. 1978); Ex. 1021 (“1979); Ex. 1022 (“March 1996”); Ex. 1025
`(“September 2001”). Under the present circumstances, Petitioner has made
`a threshold showing that Sato; Principles of Radiotelegraphy; Brenig;
`Oetting; Ghassemlooy; and Hitzelberger are prior art to the ’480 patent.
`Having now challenged the prior art status of these references, Patent
`Owner cannot complain that Petitioner seeks to rebut its assertions with
`additional evidence. As noted in the Institution Decision, “the parties will
`
`4
`
`
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`IPR2019-01284
`Patent 7,822,480 B2
`have the opportunity to further develop . . . facts during trial, and the Board
`will evaluate the fully developed record at the close of the evidence.” Paper
`7, 33. Accordingly, will not make a final determination on this particular
`issue until we have the benefit of a full record developed during the course
`of trial. Admitting supplemental information will allow for development of
`the record on the issue of public accessibility and prior art effect of Sato;
`Principles of Radiotelegraphy, Brenig, Oetting, Ghassemlooy, and
`Hitzelberger. Patent Owner concerns about prejudice are misplaced and
`premature. Patent Owner will have a full and fair opportunity to challenge,
`and respond to, this newly submitted evidence in the Patent Owner
`Response.
`In the circumstances presented here, given the relevancy of the
`supplemental information to the issue of public accessibility, we determine
`granting the Motion as to Exhibits 1028–1059 is warranted because it does
`not change the grounds of unpatentability set forth in the Petition, it will
`promote the “just, speedy, and inexpensive” resolution of this proceeding,
`and it will not otherwise prejudice Patent Owner.
`
`IV. ORDER
`Accordingly, it is
`ORDERED that Petitioner’s Motion to submit Exhibits 1028–1059 as
`supplemental information is granted;
`FURTHER ORDERED that Petitioner must file Exhibits 1028–1059
`within three business days of entry of this Order.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2019-01284
`Patent 7,822,480 B2
`FOR PETITIONER:
`
`Ching-Lee Fukuda
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`clfukuda@sidley.com
`samuel.dillon@sidley.com
`
`
`Jon Wright
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jwright-ptab@skgf.com
`
`FOR PATENT OWNER:
`
`David A. Caine
`Wallace Wu
`ARNOLD & PORTER KAYE SCHOLER LLP
`david.caine@arnoldporter.com
`wallace.wu@arnoldporter.com
`
`
`
`
`
`
`
`6
`
`
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