Tuesday, November 7, 2023 at 03:40:14 Eastern Standard Time
`
`Subject: RE: IPR2020-00680 and IPR2020-00712: Proposed Protec8ve Order
`Date: Monday, November 6, 2023 at 2:24:28 PM Eastern Standard Time
`From:
`Trials
`To:
`Samantha Jameson, Trials
`CC:
`Axonics Medtronic IPR, Axonics IPR, Modi, Naveen
`
`Counsel:
`
`From the Board –
`
`Pe44oner is authorized by the Panel to file a mo4on for entry of a proposed protec4ve order in IPR2020-
`00680 and IPR2020-00712, the mo4on not to exceed 5 pages, due on November 8, 2023. The mo4on shall
`include as exhibits the proposed protec4ve order and a tracked-changes version of the proposed protec4ve
`order iden4fying how the proposed protec4ve order differs from the Board’s default protec4ve order. Patent
`Owner is authorized to file an opposi4on to the mo4on, the opposi4on not to exceed 5 pages, due on
`November 10, 2023. No reply to the opposi4on is authorized at this 4me.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Samantha Jameson <samantha.jameson@tensegritylawgroup.com>
`Sent: Monday, November 6, 2023 11:10 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Axonics Medtronic IPR <PH-Axonics-Medtronic-IPR@paulhas4ngs.com>; Axonics IPR
`<Axonics_IPR@tensegritylawgroup.com>; Modi, Naveen <naveenmodi@paulhas4ngs.com>
`Subject: IPR2020-00680 and IPR2020-00712: Proposed Protec4ve Order
`
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding,
`clicking on links, or opening aeachments.
`
`
`Dear Honorable Board,
`
` I
`
` represent Pe44oner Axonics, Inc. in IPR2020-00680 and IPR2020-00712. Axonics respecgully requests
`authoriza4on to file a mo4on to enter a Proposed Protec4ve Order in these IPR proceedings that differs from
`the Board’s Default Protec4ve Order. Axonics’ Mo4on will address the necessity of the Proposed Protec4ve
`Order to protect Axonics’ highly confiden4al informa4on that Axonics intends to use during the Board’s
`
`Page 1 of 2
`
`Axonics Exhibit 1019
`Axonics, Inc. v. Medtronic, Inc.
`IPR2020-00712
`
`Page 1 of 2
`
`

`

`ordered deposi4on of Patent Owner Medtronic’s declarant, Dr. Mihran (IPR2020-00680, Paper 67 at 11), on
`November 14, 2023. Axonics’ Mo4on will also address the need for the very limited modifica4ons Axonics
`requests to the Default Protec4ve Order to (1) remove provisions that allowed disclosure of one party’s
`Protec4ve Order Material to the opposing party and its employees; (2) to permit opposing party in-house
`counsel access to the same extent that it is permieed by the protec4ve order in the related district court
`proceeding; (3) clarify that outside counsel of record may receive confiden4al informa4on; and (4) include
`the case number in the standard acknowledgement. These changes merely mirror certain key protec4ons
`from the protec4ve order in the district court proceeding between the same par4es for the same informa4on
`to avoid undermining that order. Pe44oner submits that Patent Owner has included argument in this joint
`email that is not proper and will address this argument at the proper 4me. In any event, Pe44oner submits
`that Patent Owner has cited no reason that could jus4fy blocking Pe44oner from cross examining Patent
`Owner's expert with documents having direct relevance to the opinions stated in Patent Owner's newly
`submieed expert declara4on.
`
`Axonics respecgully requests authoriza4on to file its mo4on and a briefing schedule on that mo4on that
`permits resolu4on of the mo4on by the Board prior to the scheduled November 14, 2023, deposi4on of Dr.
`Mihran in advance of the ordered November 15, 2023, deadline for it. IPR2020-00680, Paper 67 at 11.
`
`Patent Owner opposes Pe44oner’s Proposed Protec4ve Order. Patent Owner believes Pe44oner’s plan to
`produce its confiden4al informa4on during Dr. Mihran’s deposi4on is inconsistent with the limited scope of
`remand, as instructed by the Federal Circuit and noted by the Board. See generally IPR2020-00680, Paper 67
`(Board’s Order regarding Remand Proceedings). Pe44oner has represented to Patent Owner that it intends to
`produce such confiden4al informa4on in rela4on to the meaning and scope of the claims, but there is no
`claim construc4on issue for the Board to decide on remand. As such, Patent owner does not believe any
`Protec4ve Order is needed in these proceedings. Patent Owner can expand on its concerns during a
`conference call or in a response to any authorized mo4on by Pe44oner. Patent Owner disagrees that its
`email does not comply with the Board’s procedures and wanted to provide enough context given Pe44oner’s
`lengthy and argumenta4ve email.
`
`If the Board would like to schedule a conference call to discuss this request, the par4es can provide their
`availability.
`
`Respecgully submieed,
`Samantha Jameson
`
`SAMANTHA A. JAMESON
`TENSEGRITY LAW GROUP LLP
`
`8260 Greensboro Dr., Suite 260
`McLean, VA 22102
`703-940-5033 (phone)
`919-724-1084 (mobile)
`
`
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`Page 2 of 2
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`Page 2 of 2
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