Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 20
`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.
`____________
`
`IPR2019-01315
`Patent 7,127,298 B1
`____________
`
`
`
`Before ROBERT A. POLLOCK, SCOTT C. MOORE, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 20
`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.
`____________
`
`IPR2019-01315
`Patent 7,127,298 B1
`____________
`
`
`
`Before ROBERT A. POLLOCK, SCOTT C. MOORE, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`IPR2019-01315
`Patent 7,127,298 B1
`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 14.
`Petitioner filed its Motion on March 2, 2020. Paper 15 (“Mot.”). Patent
`Owner filed an opposition to that motion on March 13, 2020. Paper 19
`(“Opp.”).
`Petitioner seeks to submit Proposed Exhibits 1024–1044 as
`supplemental information supporting the public accessibility and prior art
`status of Hitzelberger (Ex. 1005). See Pet. 17–18; Mot. 1. 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 Hitzelberger after institution. Mot. 3
`(citing Paper 10, 4–5, 11–17).
`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).
`
`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
`
`2
`
`
`
`IPR2019-01315
`Patent 7,127,298 B1
`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 1024–1044 are “relevant to a claim for which the trial has
`been instituted” as required under § 42.123(a)(2). Petitioner avers that “the
`Board instituted trail in this proceeding on several grounds, including
`grounds relying on Hitzelberger.” Mot. 2 (citing Ex. 1005; Paper 7, 22–23).
`Petitioner further avers that “[t]he Petition and accompanying declaration of
`co-author Dr. Manoli explained that Hitzelberger was a printed publication
`that was publicly accessible prior to the ’298 patent’s priority date.” Id. at
`2–3 (citing Pet. 17–18; Ex. 1015 ¶¶ 13–18; Ex. 1005; Ex. 1016; Ex. 1017;
`Ex. 1018; Ex. 1019; Ex. 1020. Petitioner offers Exhibits 1024–1044 as
`supplemental information supporting the public accessibility and prior art
`status of Hitzelberger. Id.
`In particular, Petitioner asserts that proposed Exhibits 1025–1034 are
`Internet archive evidence that corroborate and confirm the prior art status of
`Hitzelberger,1 that proposed Exhibits 1035–1042 are IEEE evidence that
`demonstrate the prior art status of Hitzelberger, and that Exhibits 1043 and
`1044 further confirm the prior art status of Hitzelberger. See Mot. 4–7.
`Patent Owner does not dispute Petitioner’s contentions regarding the
`relevance of proposed Exhibits 1024–1044. See generally Opp. Finding
`
`
`1 Petitioner avers that Exhibit 1024 is a declaration from Samuel A. Dillon
`that “confirms the hyperlink interrelationship of Exhibits 1028-1034.” Mot.
`4 n.2.
`
`3
`
`
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`IPR2019-01315
`Patent 7,127,298 B1
`Petitioner’s arguments reasonable, Petitioner has satisfied the requirements
`of § 42.123(a)(2).
`
`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 1024–
`44 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 the Hetzelberger [sic] reference (Exhibit 1005) was publically
`accessible before the critical date of the ’298 patent.” Opp. 5. 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 6–8. We do not find Patent Owner’s argument
`persuasive.
`The ’298 patent claims the benefit of provisional application
`60/419,684, filed on October 18, 2002. Ex. 1001 (60). While we need not
`address here whether the challenged claims are entitled to the benefit of that
`date, this is, nevertheless, the earliest possible priority date for prior art
`purposes. Petitioner has already provided evidence that Hitzelberger “is a
`paper that was published and publically disseminated as part of the 2001
`ESSCIRC conference in Villach, Austria.” Pet. 17 (citing Ex. 1015 ¶¶ 11–
`18). Under the present circumstances, Petitioner has made a threshold
`showing that Hitzelberger is prior art to the ’298 patent.
`Having now challenged the prior art status of these references, Patent
`Owner cannot complain that Petitioner seeks to rebut its assertions with
`
`4
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`IPR2019-01315
`Patent 7,127,298 B1
`additional evidence. The Institution Decision was “[b]ased on the record as
`a whole at this stage of the proceeding,” and the parties have the opportunity
`to further develop the factual record during trial. Paper 7, 34. 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 Hitzelberger. Patent
`Owner’s 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
`that granting the Motion as to Exhibits 1024–1044 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 1024–1044 as
`supplemental information is granted;
`FURTHER ORDERED that Petitioner must file Exhibits 1024–1044
`within three business days of entry of this Order.
`
`
`
`
`
`
`
`
`
`5
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`
`
`IPR2019-01315
`Patent 7,127,298 B1
`FOR PETITIONER:
`
`Ching-Lee Fukuda
`Samuel A. Dillon
`Matthew Hopkins
`SIDLEY AUSTIN LLP
`clfukuda@sidley.com
`samuel.dillon@sidley.com
`matthew.hopkins@sidley.com
`
`Jon Wright
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jwright-ptab@sternekessler.com
`
`FOR PATENT OWNER:
`
`David A. Caine
`Wallace Wu
`ARNOLD & PORTER KAYE SCHOLER LLP
`david.caine@apks.com
`wallace.wu@apks.com
`
`
`
`
`
`
`
`6
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`
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