`571-272-7822 Entered: June 24, 2020
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ELEKTA INC.,
`Petitioner,
`
`v.
`
`BEST MEDICAL INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`IPR2020-00970
`Patent 6,393,096 B1
`____________
`
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`IPR2020-00970
`Patent 6,393,096 B1
`
`I. INTRODUCTION
`On May 28, 2020, Elekta Inc. (“Petitioner”) filed a Petition (Paper 2,
`“Petition” or “Pet.”) to institute inter partes review of claims 43, 44, and 46
`of U.S. Patent No. 6,393,096 B1 (Ex. 1001, “the ’096 patent,”) and a Motion
`for Joinder (Paper 3, “Motion” or “Mot.”) with Varian Medical Systems, Inc.
`v. Best Medical International, Inc., IPR2020-00072 (“Varian IPR”).
`Subsequently, during a conference call held on June 10, 2020, counsel for
`Best Medical International, Inc. (“Patent Owner”) represented that Patent
`Owner does not oppose Petitioner’s Motion and will not file a preliminary
`response. See Paper 7 (Order documenting the conference call).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314;
`see 37 C.F.R. § 42.4. Upon consideration of the Petition and the evidence of
`record, we determine that Petitioner has established a reasonable likelihood
`of prevailing with respect to the unpatentability of at least 1 claim of the
`’096 patent. Accordingly, we institute inter partes review of claims 43, 44,
`and 46 of the ’096 patent. We also grant Petitioner’s Motion.
`
`Related Proceedings
`The parties identify the following proceedings related to the
`’096 patent (Pet. 3–4; Paper 6, 1–2):
`Best Med. Int’l, Inc. v. Elekta Inc., No. 1:19-cv-03409-MLB (N.D.
`
`A.
`
`Ga.);
`
`
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`Best Med. Int’l, Inc. v. Elekta AB, No. 1:18-cv-01600-MN (D. Del.);
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`2
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`IPR2020-00970
`Patent 6,393,096 B1
`Best Med. Int’l, Inc. v. Varian Med. Sys., Inc., No. 1:18-cv-01599 (D.
`Del.);
`Elekta Inc. v. Best Med. Int’l, Inc., IPR2020-00074; and the Varian
`
`IPR.
`
`B.
`
`We also note that Petitioner has challenged patents owned by Patent
`Owner in IPR2020-00067, IPR2020-00070, IPR2020-00073,
`IPR2020-00956, and IPR2020-00971.
`
`The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 43, 44, and 46 of the
`’096 patent on the following grounds. Pet 6.
`Challenged Claims
`35 U.S.C. §
`43, 44, 46
`103(a)1
`43, 44, 46
`103(a)
`
`References
`Carol-1995, 2 Viggars3
`Curran-5, 4 Carol-25
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’096 patent
`was filed before March 16, 2013 (the effective date of the relevant
`amendment), the pre-AIA version of § 103 applies.
`2 Peacock™: A System for Planning and Rotational Delivery of Intensity-
`Modulated Fields,” International Journal of Imaging Systems and
`Technology (Spring 1995) (Ex. 1006, “Carol-1995”).
`3 Viggars D.A., et al., “The Objective Evaluation of Alternative Treatment
`Plans III: The Quantitative Analysis of Dose Volume Histograms,”
`International Journal of Radiation Oncology • Biology • Physics, 23:419–27
`(1992) (Ex. 1015, “Viggars”).
`4 Curran, B.H., Chapter 5 – Conformal Radiation Therapy Using a Multileaf
`Intensity Modulating Collimator, The Theory & Practice of Intensity
`Modulated Radiation Therapy (1997) 75– 90 (Ex. 1007, “Curran-5”).
`5 Carol, M.P., Chapter 2 – IMRT: Where We Are Today, The Theory &
`Practice of Intensity Modulated Radiation Therapy (1997) 17–36 (Ex. 1020,
`“Carol-2”).
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`3
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`IPR2020-00970
`Patent 6,393,096 B1
`Challenged Claims
`43, 44, 46
`
`35 U.S.C. §
`103(a)
`
`References
`Curran-5, Carol-176
`
`
`Petitioner relies on the Declaration of Kenneth P. Gall, Ph.D. (Ex. 1002) in
`support of its contentions.
`
`
`A.
`
`II. ANALYSIS
`Institution of Inter Partes Review
`We instituted an inter parties review in the Varian IPR on all
`challenged claims and all asserted grounds of unpatentability. Varian IPR,
`Paper 15. Petitioner here challenges the same claims and asserts the same
`grounds of unpatentability as those on which we instituted the Varian IPR.
`Pet. 1 (“The challenges to claims 43, 44, and 46 presented herein are
`substantively identical to Varian’s challenges in IPR2020-00072 and are
`based on the same evidence as presented in IPR2020-00072”); Mot. 1.
`Petitioner also relies on the same declarant as did the petitioner in the Varian
`IPR. Mot. 4. Compare Ex. 1002, with Varian IPR, Ex. 1002 (Declarations
`of Kenneth P. Gall, Ph.D.).
`Because the issues in the instant Petition are identical to those in the
`Varian IPR, and for the same reasons stated in our Decision on Institution in
`the Varian IPR, we institute inter partes review in this proceeding on the
`grounds presented in the Petition. See Varian IPR, Paper 15.
`
`
`
`6 Carol, M.P., Chapter 17 – Where We Go From Here: One Person’s Vision,
`The Theory & Practice of Intensity Modulated Radiation Therapy (1997)
`243–52 (Ex. 1021, “Carol-17”).
`
`
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`4
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`IPR2020-00970
`Patent 6,393,096 B1
`B. Motion for Joinder
`Joinder in an inter partes review is subject to the provisions of
`35 U.S.C. § 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. Kyocera Corp. v. SoftView, LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013).
`We determine that Petitioner has met its burden of showing that
`joinder is appropriate because, as set forth above, the Petition here: (1) is
`substantively identical to the petition in the Varian IPR; (2) contains the
`same grounds based on the same evidence; and (3) relies on the same
`declaration of Dr. Kenneth P. Gall. Mot., passim; Ex. 1002. Petitioner also
`represents that it “is willing to streamline discovery and briefing by taking
`an ‘understudy role,’ so that the proposed joinder will not complicate or
`delay the schedule in the Varian IPR.” Mot. 1.
`Additionally, “so long as Varian remains an active party in the joined
`proceeding,” Petitioner: (1) “shall be bound by any agreement between
`Patent Owner and Varian concerning discovery and/or depositions,” (2) shall
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`IPR2020-00970
`Patent 6,393,096 B1
`not receive at depositions “any direct examination, cross examination, or
`redirect time beyond that permitted in this proceeding under either 37 C.F.R.
`§ 42.53 or any agreement between Patent Owner and Varian,” (3) agrees that
`“‘[a]ll filings by Elekta in the joined proceeding shall be consolidated with
`the filings of Varian, unless a filing solely concerns issues that do not
`involve Varian,” and (4) “shall not be permitted to raise any new grounds
`not already instituted by the Board in the Varian IPR, or introduce any
`argument or discovery not already introduced by Varian.” Mot. 7–8.
`We determined above that the Petition warrants the institution of an
`inter partes review. Under these circumstances, we agree with Petitioner
`that joinder is appropriate and will not unduly impact the ongoing trial in the
`Varian IPR. We limit Petitioner’s participation in the joined proceeding, as
`follows: (1) Varian alone is responsible for all petitioner filings in the joined
`proceeding until such time that it is no longer an entity in the joined
`proceeding, and (2) Petitioner is bound by all filings by Varian in the joined
`proceeding, except for (a) filings regarding termination or settlement, and
`(b) filings where Petitioner receives permission to file an independent paper.
`Petitioner must obtain prior Board authorization to file any paper or take any
`action on its own in the joined proceeding, so long as Varian remains as a
`non-terminated petitioner in the joined proceeding. This arrangement
`promotes the just and efficient administration of the ongoing trial in the
`Varian IPR, and protects the interests of Varian as original petitioner in
`IPR2020-00072, and of Patent Owner.
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`Patent 6,393,096 B1
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`III. CONCLUSION
`For the foregoing reasons, we institute inter partes review of claims
`43, 44, and 46 of the ’096 patent based on the grounds of unpatentability set
`forth in the Petition. We grant Petitioner’s Motion for Joinder and join
`Petitioner to IPR2020-00072, with the limitations set forth herein.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review is
`hereby instituted as to claims 43, 44, and 46 of the ’096 patent with respect
`to the grounds set forth in the Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.122(a), Petitioner’s Motion for Joinder (Paper 3) is granted,
`and Petitioner is joined as a petitioner in IPR2020-00072;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2020-00072 are
`unchanged and remain the only instituted grounds;
`FURTHER ORDERED that the Scheduling Order in IPR2020-00072,
`and any modifications thereto, shall govern the schedule of the joined
`proceeding;
`FURTHER ORDERED that all further filings in the joined
`proceedings are to be made in IPR2020-00072;
`FURTHER ORDERED that the case caption in IPR2020-00072 for all
`further submissions shall be modified to add Elekta Inc. as a named
`Petitioner, and to indicate by footnote the joinder of IPR2020-00970 to that
`proceeding, as indicated in the attached sample case caption; and
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`IPR2020-00970
`Patent 6,393,096 B1
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record in IPR2020-00072.
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`IPR2020-00970
`Patent 6,393,096 B1
`PETITIONER:
`Tamara D. Fraizer
`Christopher W. Adams
`Vid R. Bhakar
`SQUIRE PATTON BOGGS (US) LLP
`tamara.fraizer@squirepb.com
`christopher.adams@squirepb.com
`vid.bhakar@squirepb.com
`
`PATENT OWNER:
`Anthony Son
`Matthew Ruedy
`Kaveh Saba
`Jeremy Edwards
`Maddox Edwards PLLC
`ason@meiplaw.com
`mruedy@meiplaw.com
`ksaba@meiplaw.com
`jedwards@meiplaw.com
`
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`IPR2020-00970
`Patent 6,393,096 B1
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`Sample Case Caption
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VARIAN MEDICAL SYSTEMS, INC. and ELEKTA INC.,
`Petitioner,
`
`v.
`
`BEST MEDICAL INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`IPR2020-000721
`Patent 6,393,096 B1
`____________
`
`
`
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`
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`1 IPR2020-00970 has been joined with this proceeding.
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`