Trials@uspto.gov
`Tel: 571-272-7822
`
`
` Paper 46
`Entered: December 23, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`EDWARDS LIFESCIENCES CORPORATION AND
`EDWARDS LIFESCIENCES LLC,
`Petitioner,
`
`v.
`
`AORTIC INNOVATIONS, INC.,
`Patent Owner.
`
`
`IPR2021-01527, Patent 10,792,172 B2
` IPR2021-01584, Patent 10,857,011 B2
` IPR2022-00034, Patent 10,966,846 B2
` IPR2022-00193, Patent 10,881,538 B11
`
`
`Before JOHN G. NEW, JASON W. MELVIN, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`PER CURIAM.
`
`
`ORDER
`Denying Patent Owner’s Motion Seeking Authorization to File
`Supplemental Material and Briefing
`37 C.F.R. § 42.123
`
`
`
`
`
`
`1 The combined caption is for administrative convenience only and does not
`indicate a joined case or an expanded panel. The parties are not authorized
`to use this caption absent express permission of the Board.
`
`
`Tel: 571-272-7822
`
`
` Paper 46
`Entered: December 23, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`EDWARDS LIFESCIENCES CORPORATION AND
`EDWARDS LIFESCIENCES LLC,
`Petitioner,
`
`v.
`
`AORTIC INNOVATIONS, INC.,
`Patent Owner.
`
`
`IPR2021-01527, Patent 10,792,172 B2
` IPR2021-01584, Patent 10,857,011 B2
` IPR2022-00034, Patent 10,966,846 B2
` IPR2022-00193, Patent 10,881,538 B11
`
`
`Before JOHN G. NEW, JASON W. MELVIN, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`PER CURIAM.
`
`
`ORDER
`Denying Patent Owner’s Motion Seeking Authorization to File
`Supplemental Material and Briefing
`37 C.F.R. § 42.123
`
`
`
`
`
`
`1 The combined caption is for administrative convenience only and does not
`indicate a joined case or an expanded panel. The parties are not authorized
`to use this caption absent express permission of the Board.
`
`
`
`IPR2021-01527, Patent 10,792,172 B2
`IPR2021-01584, Patent 10,857,011 B2
`IPR2022-00034, Patent 10,966,846 B2
`IPR2022-00193, Patent 10,881,538 B1
`
`
`On December 19, 2022, the Board received an email from Patent
`Owner seeking authorization to file supplemental information and briefing in
`these IPRs.2 See, e.g., IPR2021-01527, Ex. 3002. Specifically, Patent
`Owner sought to introduce as an exhibit Dehdashtian et al. (US 6,663,667
`B2, December 16, 2003) (“Dehdashtian”) and Spenser et al. (US Appl. Ser.
`No. 2006/0004442 A1, January 5, 2006) (the “’442 application”). Patent
`Owner stated that it had become aware of these references on December 9
`and 10, 2022, respectively. Patent Owner also sought supplemental briefing
`in support of these filings. Patent Owner represented that Petitioner opposed
`these supplemental Exhibits and briefing.
`In a follow-up email to the Board, Patent Owner also sought
`authorization to file as an exhibit the transcript of the second deposition of
`its expert, Dr. Nigel P. Buller (filed as Ex. 2104 in the related IPR2022-
`00556 (the “Second Buller Deposition”)). See, e.g., IPR2021-01527,
`Ex. 3003.
`A telephone conference was held between the panel and counsel for
`both parties on Wednesday, December 21, 2022 at 3:00 pm EST. A
`transcript of the conference was taken and has been entered into the record.
`See, e.g., IPR2021-01527, Ex. 2115 (“Hearing Transcr.”).
`During the conference, Patent Owner represented that Dehdashtian is
`assigned to Petitioner, and that Mr. Dehdashtian is an author of Walther
`
`
`2 Patent Owner originally attempted to contact the Board via an incorrect
`email mailbox, with the result that the panel did not receive Patent
`Owner’s email request until December 19, 2022, after oral argument in
`these inter partes reviews had been conducted on December 15, 2022.
`2
`
`
`
`
`
`IPR2021-01527, Patent 10,792,172 B2
`IPR2021-01584, Patent 10,857,011 B2
`IPR2022-00034, Patent 10,966,846 B2
`IPR2022-00193, Patent 10,881,538 B1
`
`(Ex. 1007) and an inventor of Spenser II (Ex. 1011). Hearing Transcr. 6. In
`particular, Patent Owner represented that there was reason to believe that
`Mr. Dehdashtian was the author of Figure 22 of Spenser II, which it stated is
`of particular relevance to the parties’ arguments in these inter partes
`reviews. Id. at 6–7.
`Patent Owner argued further that the Second Buller Deposition should
`also be admitted as being relevant to its arguments as presented both in the
`Patent Owner’s Response (IPR2022-00034, Paper 24) and at oral argument.
`Patent Owner further contended that, because the Second Buller Deposition
`transcript has been entered as an exhibit in the related IPR2022-00556,
`entering it in the record of these proceedings would ensure consistency of
`the record. Hearing Transcr. 11, 20–21.
`
`Petitioner responded that Dehdashtian and the ’442 application have
`been publicly available for many years, and that the Second Buller
`Deposition was taken on November 11, 2022, and transcript thereof was
`available to Patent Owner shortly afterwards. Hearing Transcr. 13–14.
`Petitioner contended that Patent Owner has failed to make a showing of why
`this supplemental information could not reasonably have been obtained
`earlier by Patent Owner, as required by 37 C.F.R § 42.123(b). Id. at 14.
`Petitioner also disagreed with Patent Owner’s characterization that either
`document is relevant to any of the Grounds stated in the Petition. Id. at 15.
`
`Section 42.123(b) states that:
`A party seeking to submit supplemental information more than
`one month after the date the trial is instituted, must request
`authorization to file a motion to submit the information. The
`motion to submit supplemental information must show why the
`
`
`
`3
`
`
`
`IPR2021-01527, Patent 10,792,172 B2
`IPR2021-01584, Patent 10,857,011 B2
`IPR2022-00034, Patent 10,966,846 B2
`IPR2022-00193, Patent 10,881,538 B1
`
`
`supplemental information reasonably could not have been
`obtained earlier, and that consideration of the supplemental
`information would be in the interests-of-justice.
`We agree with Petitioner that Patent Owner, in seeking to file exhibits
`and briefing as supplemental information more than one month after trial
`was instituted (and days before oral argument was conducted) has failed to
`make a showing of why documents that have been publicly available for
`more than fifteen years, or a deposition transcript that had been in Patent
`Owner’s possession for a month, could not reasonably have been obtained
`and entered into the record earlier. We consequently determine that Patent
`Owner’s Request to file Dehdashtian, the ’442 application, and the transcript
`of the Second Buller Deposition is untimely, and Patent Owner’s request for
`authorization to file the supplemental information is DENIED.
`
`It is therefore:
`ORDERED that Patent Owner’s motion seeking authorization to file
`supplemental information is DENIED.
`
`
`
`
`
`4
`
`
`
`IPR2021-01527, Patent 10,792,172 B2
`IPR2021-01584, Patent 10,857,011 B2
`IPR2022-00034, Patent 10,966,846 B2
`IPR2022-00193, Patent 10,881,538 B1
`
`For Petitioner:
`
`Craig Summers
`Joshua Stowell
`Brian Barnes
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2css@knobbe.com
`2jys@knobbe.com
`brian.barnes@knobbe.com
`
`For Patent Owner:
`
`Kenneth Weatherwax
`Nathan Lowenstein
`Patrick Maloney
`Vinson Lin
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`lin@lowensteinweatherwax.com
`
`
`
`5
`
`
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