From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Ritchie, Thomas W.
`Trials
`Rich Coller; Jon Wright; Richard M. Bemben; Christian A. Camarce; Lestin Kenton; PTAB Account; Insogna,
`Anthony M.; Stitt, Tracy A.; Swize, Jennifer L.; Oblon, Michael A.
`PGR2021-00022, -00023, -00024, -00025
`Wednesday, May 5, 2021 9:08:56 AM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Re: Allergan, Inc. v. BTL Medical Technologies s.r.o.,
` PGR2021-00022, -00023, -00024, -00025
`
`To the Board:
`
`Petitioners request leave to Reply to Patent Owner’s Preliminary Responses (“POPRs”) in the above 4
`PGRs regarding whether the Board should exercise its discretion to deny institution under §§ 324(a)
`and 325(d).
`
`
`As background, Judges Petravick, Parvis, and Cotta previously granted leave to file replies/sur-replies
`addressing Fintiv factors 2-4 raised in POPRs filed on March 22, 2021 in related matters PGR2021-
`00015, -00016, -00017, -00018, -00020, and -00021, which involve the same parties as in the above
`proceedings but challenge 3 different patents from the same family. Petitioners hereby seek leave
`to file replies/sur-replies to preliminary responses that were subsequently filed on April 13 and April
`26, 2021 in the PGR proceedings identified above. Specifically, Petitioners propose addressing these
`responses collectively in a single omnibus reply for the convenience of the Board, and thus are
`seeking 12 pages for a single omnibus reply to four POPRs regarding challenges to the two patents at
`issue in PGR2021-00022, -00023, -00024, and -00025.
`
`Good cause exists for this request as specific issues raised by Patent Owner were not reasonably
`foreseeable and could not have been addressed in the Petitions, including the following relevant to
`Fintiv factors 2-4, 6, or § 325(d):
`
`
`1) Patent Owner acknowledges that, after Petitioners filed their Petitions, Complainant BTL
`Industries, Inc. (Patent Owner’s licensee) narrowed its allegations of infringement in ITC
`investigation 337-TA-1219, but Patent Owner does not address how those changes impact
`any overlap (or lack thereof) between the ITC proceeding and PGR2021-00022, -00023
`(challenging the ’894 patent) and PGR2021-00024, -00025 (challenging the ’576 patent).
`
`2) As Patent Owner acknowledges, on April 9, 2021, after Petitioners filed their Petitions, the
`ALJ in ITC investigation 337-TA-1219 extended the procedural schedule, but Patent Owner
`does not fully address how the new schedule impacts a comparison between the ALJ’s and
`the Board’s investment in the merits.
`
`3) Patent Owner argued that the Board should exercise its discretion to deny the Petitions
`
`

`

`under §325(d). In support of its argument, for example, Patent Owner combined prior art
`references, but omitted discussion about the material differences between them. Patent
`Owner additionally argued that some prior art included in grounds of the Petitions had been
`applied during patent prosecution, but Patent Owner omitted discussion about the context,
`including the limited disclosures that the Examiner actually applied against the claims or
`discussed in the Office Actions. Petitioners could not have envisioned:
`
` ·
`
` that Patent Owner would create charts (see, e.g., PGR2021-00023, POPR at 26-34)
`combining selected information from various data sheets for different Magstim products
`to argue that the Magstim paper applied in the Petitions (which was not of record for
`any of the patents) was considered by the Examiner; or
`
`· that Patent Owner would assert that various references applied in the Petition, which
`were not discussed or applied by the Examiner, should be deemed “fully considered by
`the Office.” See, e.g., PGR2021-00023, POPR at 24.
`
`While Patent Owner’s Response below contends this fails to show good cause, Patent Owner
`does so based on the unsupportable view that Petitioners should have anticipated such
`assertions in these preliminary responses. Petitioners therefore request a brief reply to
`provide a more complete record.
`
`Accordingly, Petitioners request leave to file a single, omnibus reply by May 12, 2021, not to exceed
`12 pages, that addresses the Board’s discretion to institute in view of Fintiv factors 2-4, 6 and also in
`view of section 325(d). Patent Owner should be authorized to submit a single, omnibus sur-reply by
`May 19, 2021, of the same length.
`
`The parties have conferred and Patent Owner’s Response to this request is included below.
`Petitioners are aware of the Board’s guidance regarding the inclusion of substantive
`communications in emails to the Board. Petitioners’ explanation for their request responds to
`Patent Owner’s correspondence to Petitioners, in which Patent Owner asserted that Petitioners had
`“not adequately explained” the good cause to support their request.
`
`If the Board has any questions or is inclined to deny Petitioners’ request for leave, in whole or in
`part, Petitioners request a conference call for an opportunity to be heard on its request for leave to
`file a reply.
`
`PATENT OWNER’S RESPONSE
`
`Patent Owner supports Petitioner’s request for supplemental briefing on Fintiv. But as with the
`related PGRs, the supplemental briefing should only cover Fintiv factors 2-4, which are the only
`factors that have changed since the Petition was filed.
`
`Patent Owner opposes supplemental briefing addressing Fintiv factor 6 and Section 325(d) because
`Petitioner has not shown good cause for additional briefing on those issues.
`
`
`

`

`Consistent with the page limits set by the Board in the related PGR proceedings identified above by
`Petitioner, Patent Owner believes that a single omnibus 8-page reply and a single omnibus 8-page
`sur-reply would be sufficient in these matters. Patent Owner believes that 12-page briefs are
`excessive. Patent Owner agrees with Petitioner’s proposed briefing schedule.
`
`Finally, Patent Owner also opposes Petitioner’s attempt to effectively brief its case via email in
`advance of obtaining permission for a POPR response. But to the extent that the Board does not
`object to such informal pre-briefing, Patent Owner responds as follows:
`
`Fintiv: Petitioner sought supplemental briefing on several issues from the Board in the related PGR
`proceedings identified above by Petitioner. But the Board only allowed supplemental briefing on
`Fintiv factors 2-4. Good cause for supplemental briefing on Fintiv factors 2-4 existed because
`developments at the ITC that post-dated the Petitions (and POPRs) were relevant to Fintiv factors 2-
`4. The panel explicitly denied Petitioner’s request for supplemental briefing on Fintiv factor 6, and
`should do the same here. Far from showing good cause, Petitioner’s articulated reasons for seeking
`additional briefing on factor 6 amount to routine disagreement on the strength and merits of the
`proposed grounds.
`
`Section 325(d): With respect to Section 325(d), the analysis has not been impacted by any
`developments at the ITC (or elsewhere) that post-date the Petitions. Petitioner contends that Patent
`Owner’s Section 325(d) POPR arguments addressing old art and arguments relied on by Petitioner
`“were not reasonably foreseeable and could not have been addressed in the Petitions.” This is
`incorrect. Petitioner has not adequately explained why it could not have foreseen that the
`differences between the art cited during prosecution, and the art relied upon in the IPR, would have
`been material to the 325(d) analysis. Indeed, that is one of the factors the Board has required parties
`to address in Advanced Bionics, IPR2019-01469, DI, 8. (“If the ‘same or substantially the same prior
`art or arguments previously were presented to the Office,’ then the Board’s decisions generally have
`required a showing that the Office erred in evaluating the art or arguments.”) Far from being
`unforeseeable, Patent Owner’s POPR charts are an efficient way to convey the similarity between
`the art put before the Office and the art relied upon in the Petition here. It was incumbent on the
`Petitioner in the first instance to explain any material differences. It should not get a do-over now—a
`failure to sufficiently explain in the Petition how the examiner erred is not grounds for supplemental
`briefing on Section 325(d), and such briefing wastes both Board and party resources.
`
`Patent Owner believes that this email, combined with the briefing already submitted, are sufficient
`for the Board to determine whether to exercise its discretion. Patent Owner also does not believe a
`conference call is necessary; but it can be available if the Board would like to conduct one.
`
`
`* * *
`
`
`Thomas W. Ritchie
`Partner
`JONES DAY® - One Firm Worldwide®
`77 West Wacker Drive
`Chicago, IL 60601-1692
`Office +1.312.269.4003
`Mobile +1.847.477.5615
`
`

`

`twritchie@jonesday.com
`
`***This e-mail (including any attachments) may contain information that is private,
`confidential, or protected by attorney-client or other privilege. If you received this e-mail in
`error, please delete it from your system without copying it and notify sender by reply e-mail,
`so that our records can be corrected.***
`
`