IPR2019-01315 (P.T.A.B. Jul. 13, 2020)

Boston Scientific Neuromodulation Corp.

Patent Trials and Appeals BoardJul 13, 2020

IPR2019-01315 (P.T.A.B. Jul. 13, 2020)

Trials@uspto.gov Paper 29 571-272-7822 Entered: July 13, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NEVRO CORP., Petitioner, v. BOSTON SCIENTIFIC NEUROMODULATION CORP., Patent Owner. ____________ IPR2019-01315 Patent 7,127,298 B1 ____________ Before ROBERT A. POLLOCK, SCOTT C. MOORE, and RICHARD J. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. JUDGMENT Granting Request for Adverse Judgment After Institution of Trial 37 C.F.R. § 42.73(b) IPR2019-01315 Patent 7,127,298 B1 2 I. INTRODUCTION Nevro Corp. (“Petitioner”) filed a Petition requesting inter partes review of claims 1–19 of U.S. Patent No. 7,127,298 (the “’298 patent”). Paper 1 (“Petition”). Boston Scientific Neuromodulation Corp. (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6. On January 21, 2020, we instituted an inter partes review as to all challenged claims. Paper 7. On May 29, 2020, Petitioner and Patent Owner filed a Joint Stipulation of Modification for Due Dates 1–3 and 5–6 (“Stipulation”). Paper 27. Pursuant to the Stipulation, the deadline (Due Date 1) for Patent Owner to file its response and a motion to amend the ’298 patent was extended to June 12, 2020. Id. at 2. However, Patent Owner did not file its response or a motion to amend on or before June 12, 2020. On June 30, 2020, Petitioner forwarded an e-mail to the Board regarding the Patent Owner’s “failure to file a patent owner response or a motion to amend,” detailing Petitioner’s efforts to communicate with Patent Owner regarding the “failure to file,” and requesting a conference call with the Board to discuss the matter. Ex. 3001. On July 6, 2020, Patent Owner forwarded an e-mail to the Board requesting authorization to file a motion seeking entry of an adverse judgment in the present inter partes review, which we authorized on July 8, 2020. Id. On July 8, 2020, Patent Owner filed a Request for Adverse Judgment Pursuant to 37 C.F.R. § 42.73(b), asking the Board to “cancel the instituted claims” and “enter an adverse judgement against Patent Owner and terminate this proceeding.” Paper 28, 2. Patent Owner also represented that “[c]ounsel for Petitioner has stated that Petitioner does not oppose the requested relief.” Id. IPR2019-01315 Patent 7,127,298 B1 3 II. DISCUSSION Under 37 C.F.R. § 42.73(b), “[a] party may request judgment against itself at any time during a proceeding.” As permitted by this Rule, Patent Owner has explicitly asked the Board to enter adverse judgment cancelling claims 1–19 of the ’298 patent. Paper 28. Claims 1–19 are the only claims at issue in this proceeding. See Paper 7, 2, 34. III. CONCLUSION Having reviewed Patent Owner’s request for adverse judgment, we determine that entry of judgment against Patent Owner cancelling claims 1– 19 of the ’298 patent is appropriate. Thus, we grant the request for adverse judgment pursuant to 37 C.F.R. § 42.73(b). This constitutes a final written decision pursuant to 35 U.S.C. § 318(a) cancelling claims 1–19 of the ’298 patent. IV. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner pursuant to 37 C.F.R. § 42.73; FURTHER ORDERED that claims 1–19 of the ’298 patent are cancelled; FURTHER ORDERED that this constitutes a Final Written Decision under 35 U.S.C. § 318(a); FURTHER ORDERED that Patent Owner shall file a notice and copy of this judgment in the files of any proceeding or action involving the ’298 patent; and FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.73(d)(3), Patent Owner is precluded from taking any action inconsistent with this IPR2019-01315 Patent 7,127,298 B1 4 judgment, including obtaining any patent claim that is not patentably distinct from a cancelled claim in this proceeding. FOR PETITIONER: Ching-Lee Fukuda Sharon Lee Samuel Dillon Matthew Hopkins SIDLEY AUSTIN LLP clfukuda@sidley.com sharon.lee@sidley.com samuel.dillon@sidley.com matthew.hopkins@sidley.com Jon Wright STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. jwright-ptab@skgf.com FOR PATENT OWNER: David A. Caine Wallace Wu ARNOLD & PORTER KAYE SCHOLER LLP david.caine@arnoldporter.com wallace.wu@arnoldporter.com