Trials
`Samantha Jameson; Trials
`Axonics Medtronic IPR; Axonics IPR; Modi, Naveen
`RE: IPR2020-00680 and IPR2020-00712
`Tuesday, November 28, 2023 2:11:38 PM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel:
`
`From the Board –
`
`Petitioner is authorized to file, as exhibits in IPR2020-00680 and IPR2020-00712, no later than
`December 4, 2023, the three exhibits identified during the November 14, 2023, deposition of Patent
`Owner’s declarant, Dr. Mihran. Petitioner may file a motion to seal these exhibits pursuant to the
`Protective Orders entered in these cases by the same date, but is cautioned that redacted versions
`of the exhibits must be filed with the motion and all redactions must be limited to the minimum
`amount necessary to protect confidential information, with the thrust of the underlying evidence
`clearly discernible from the redacted versions. After the exhibits are filed, Patent Owner may
`request leave to file a motion to exclude directed to these exhibits identifying in the request a short
`statement of the grounds for exclusion without further argument.
`
`Further to our Order on Procedures on Remand, Petitioner and Patent Owner are directed to meet
`and confer regarding Petitioner’s request to submit supplemental information to clarify whether
`Patent Owner does not oppose the filing of any of the documents at issue. Petitioner may file a
`motion to submit supplemental information, due on or before December 5, 2023, not to exceed ten
`(10) pages. Patent Owner may file an opposition to the motion to submit supplemental information,
`due on or before December 12, 2023, not to exceed ten (10) pages. Petitioner may file a reply in
`support of its motion to submit supplemental information, due on or before December 19, 2023, not
`to exceed five (5) pages.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Samantha Jameson <samantha.jameson@tensegritylawgroup.com>
`Sent: Tuesday, November 28, 2023 1:52 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Axonics Medtronic IPR <PH-Axonics-Medtronic-IPR@paulhastings.com>; Axonics IPR
`<Axonics_IPR@tensegritylawgroup.com>; Modi, Naveen <naveenmodi@paulhastings.com>
`Subject: Re: IPR2020-00680 and IPR2020-00712
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Exhibit 3002
`
`

`

`Honorable Board,
`
` I
`
` represent Petitioner Axonics, Inc. in IPR2020-00680 and IPR2020-00712. Axonics respectfully
`requests the Board’s guidance regarding its below requests in light of Axonics’ upcoming December
`5, 2023, Post-Remand Briefs so that Axonics can address any evidence, if allowed by the Board, in its
`Post-Remand Brief. Axonics is available to discuss this issue to whatever extent this would be useful
`to the Board via teleconference or any other format.
`
`Respectfully submitted,
`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)
`
`
`
`From: Samantha Jameson <samantha.jameson@tensegritylawgroup.com>
`Date: Monday, November 20, 2023 at 5:42 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Axonics Medtronic IPR <PH-Axonics-Medtronic-IPR@paulhastings.com>, Axonics IPR
`<Axonics IPR@tensegritylawgroup.com>, Modi, Naveen <naveenmodi@paulhastings.com>
`Subject: IPR2020-00680 and IPR2020-00712
`
`Dear Honorable Board,
`
` I
`
` represent Petitioner Axonics, Inc. in IPR2020-00680 and IPR2020-00712. As permitted by the
`Board’s October 18, 2023, Orders in IPR2020-00680 and IPR2020-00712 (Paper 67 and Paper 64,
`respectively), Axonics respectfully seeks leave to file as exhibits in each IPR proceeding three
`confidential exhibits that were marked during the November 14, 2023, deposition of Patent Owner’s
`declarant, Dr. Mihran and are not already of record. Axonics can provide additional information or
`can provide argument regarding these exhibits at the Board’s request. If Axonics is granted leave to
`file, Axonics will also be filing a Motion to Seal these exhibits pursuant to the Protective Orders
`entered in these cases (Ex. 1014 in IPR2020-00680 and Ex. 1015 in IPR2020-00712, entered by Paper
`72 and Paper 69, respectively).
`
`Additionally, Axonics’ understanding from the Board’s October 18 Orders was that Axonics’ request
`for leave to file motions to submit supplement information would be addressed in a subsequent
`order. Medtronic argued in its opposition to Axonics’ Motion For Entry Of A Proposed Protective
`Order that Axonics had not renewed its request to file supplemental information. Axonics disagrees
`
`

`

`that is necessary given its understanding that its original request for leave is pending subject to the
`Board’s subsequent order, but to avoid further objections on that basis and to the extent that the
`Board determines that a renewed request would be appropriate, Axonics respectfully renews its
`request for authorization to file a motion to submit supplemental information. Medtronic’s
`suggestion that Axonics should have agreed to only file the three confidential exhibits marked during
`Dr. Mihran’s deposition lacks merit as the relevant evidence Axonics seeks to submit is not limited to
`these three documents and there is no justification for preventing the Board from considering this
`relevant evidence. To the extent that the Board wishes to hear from the parties on this issue before
`deciding, Axonics can provide a full statement of its reasons in the Board’s preferred format.
`
`Patent Owner Medtronic opposes Petitioner’s requests to file the three exhibits marked during Dr.
`Mihran’s deposition and to file a motion for leave to submit supplemental information. In an effort
`to find a compromise, Patent Owner told Petitioner that it will consider not opposing Petitioner’s
`request to file the three exhibits marked during Dr. Mihran’s deposition if Petitioner limited its
`request to just those three exhibits. But given Petitioner is seeking to introduce many more
`documents into the record, Patent Owner remains concerned that Petitioner is trying to expand the
`scope of the remand and can provide its full reasoning and arguments during a call or in a paper
`should the Board order limited briefing on any of the issues.
`
`If the Board would like to schedule a conference call to discuss, the parties can provide their
`availability.
`
`Respectfully submitted,
`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)
`
`
`
`