IPR / Reexam Case No.
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Patent No.
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Claims Challenged
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Status
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IPR2013-00468 &
IPR2013-00469
(merged)
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7, 516, 192
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1-37 (all claims)
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Final decision issued Jan. 27, 2015. All challenged
claims cancelled. Bosch appealed and the Federal
Circuit affirmed the PTAB’s decision in Rule 36
Judgment on June 29, 2016.
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90/013, 269
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7, 516, 192
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1-10, 13-19, 37
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Office Action rejecting challenged claims mailed May
19, 2015. Bosch filed Notice of Appeal on July 2,
2015. Bosch filed Reply Brief and Request for Oral
Hearing on December 21, 2015. Bosch waived Oral
Hearing on July 8, 2016.
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IPR2013-00449
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7, 840, 420
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1-5 (all claims)
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Final decision issued Jan. 15, 2015. All challenged
claims cancelled. Bosch appealed and the Federal
Circuit affirmed the PTAB’s decision in Rule 36
Judgment on June 29, 2016.
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90/013, 270
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7, 840, 420
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1-5 (all claims)
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All claims confirmed on June 5, 2015. Reexamination
certificate issued on July 22, 2015.
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IPR2013-00431
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7, 921, 186
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1-16 (all claims)
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Final decision issued Jan. 15, 2015. All challenged
claims cancelled. Bosch appealed and the Federal
Circuit affirmed the PTAB’s decision in Rule 36
Judgment on June 29, 2016.
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90/013, 263
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7, 921, 186
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1-8
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Final Office Action rejecting challenged claims
mailed April 15, 2015. Bosch filed Notice of Appeal
on Sept. 15, 2015 and Appeal Brief on Nov. 16, 2015.
Examiner filed Answer to Appeal Brief on December 1,
2015. Bosch waived Oral Hearing on July 8, 2016.
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IPR2013-00451
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7, 587, 469
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1, 2, 5-10
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Final decision issued Jan. 15, 2015. All challenged
claims cancelled. Bosch filed Notice of Appeal on
Mar. 18, 2015. Bosch filed motion to terminate
appeal. The Federal Circuit granted the motion to
dismiss appeal on July 24, 2015.
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90/013, 175
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7, 587, 469
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1-22 (all claims)
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Reexamination certificate issued on December 8, 2015,
confirming claims 3 and 4, and canceling claims 1, 2,
and 5-22.
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90/013, 663
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7, 587, 469
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3
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Reexamination request filed on Dec. 21, 2015, pending
decision by Office. The USPTO mailed a non-final
Office Action rejecting claim 3 on May 18, 2016.
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IPR2014-00488
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7, 769, 605
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1-9 (all claims)
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IPR Instituted on all claims Sept. 2014.
Terminated on Bosch’s Motion to Terminate for
Petitioner’s Failure to Name all Real Parties
in Interest on March 16, 2015. Request for Rehearing
denied May 22, 2015. Medtronic filed Notice of Appeal
on July 23, 2015. Federal Circuit granted
Bosch’s motion to dismiss appeal on Nov. 17,
2015. Medtronic filed petition for en banc
rehearing on Dec. 17, 2015. Federal Circuit sua
sponte recalled its dismissal mandate on June
30, 2016. Federal Circuit ordered additional briefing
on July 1, 2016.
Medtronic also filed suit against Michelle K. Lee,
Director of the United States Patent and Trademark
Office in the District Court for the Eastern District
of Virginia. Medtronic sought an order requiring the
PTO to reinstitute the terminated IPR. The District
Court for the E.D. Virginia dismissed case. Medtronic
appealed the dismissal to the Federal Circuit
requesting initial en banc review. Briefing
suspended by the Federal Circuit Feb. 22. 2016.
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90/013, 167
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7, 769, 605
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1-9 (all claims)
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All claims confirmed on June 2, 2015. Reexamination
certificate issued on June 22, 2015.
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90/013, 484
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7, 769, 605
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1-9 (all claims)
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Reexamination ordered on all claims June 9, 2015.
First office action issued on Sept. 10, 2015,
rejecting all claims. Bosch submitted response on
Nov. 10, 2015. All claims confirmed on March 14,
2016. Reexamination certificate issued on March 30,
2016.
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90/013, 527
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7, 769, 605
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1-9 (all claims)
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Petition filed June 12, 2015. Reexamination denied on
Aug. 12, 2015. Petition for review of reexamination
denial filed on Sept. 14, 2015. The USPTO denied
review of denial on January 15, 2016 and no claim was
cancelled.
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90/013, 769
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7, 769, 605
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1-9 (all claims)
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Petition filed June 17, 2016. Awaiting USPTO decision
on whether to institute reexamination.
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90/013, 773
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7, 769, 605
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1-9 (all claims)
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Petition filed June 29, 2016. Reexamination ordered
for all claims on July 19, 2016.
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IPR2014-00607 (merged with 2014-00691)
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7, 870, 249
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1, 2, 6-8, 11-13
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Terminated on Bosch’s Motion to Terminate for
Petitioner’s Failure to Name all Real Parties
in Interest on March 16, 2015. Request for Rehearing
denied May 22, 2015. Medtronic filed Notice of Appeal
on July 23, 2015. Federal Circuit granted
Bosch’s motion to dismiss appeal on Nov. 17,
2015. Medtronic filed petition for en banc
rehearing on Dec. 17, 2015. Federal Circuit sua
sponte recalled its dismissal mandate on June
30, 2016. Federal Circuit ordered additional briefing
on July 1, 2016.
Medtronic also filed suit against Michelle K. Lee,
Director of the United States Patent and Trademark
Office in the District Court for the Eastern District
of Virginia. Medtronic sought an order requiring the
PTO to reinstitute the terminated IPR. The District
Court for the E.D. Virginia dismissed case. Medtronic
appealed the dismissal to the Federal Circuit
requesting initial en banc review. Federal
Circuit suspended briefing on Feb. 22, 2016.
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IPR2014-00691
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7, 870, 249
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3-5, 9, 10, 14-29
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Terminated on Bosch’s Motion to Terminate for
Petitioner’s Failure to Name all Real Parties
in Interest on March 16, 2015. Request for Rehearing
denied May 22, 2015. Medtronic filed Notice of Appeal
on July 23, 2015. Federal Circuit granted
Bosch’s motion to dismiss appeal on Nov. 17,
2015. Medtronic filed petition for en banc
rehearing on Dec. 17, 2015. Federal Circuit sua
sponte recalled its dismissal mandate on June
30, 2016. Federal Circuit ordered additional briefing
on July 1, 2016. Medtronic also filed suit against
Michelle K. Lee, Director of the United States Patent
and Trademark Office in the District Court for the
Eastern District of Virginia. Medtronic sought an
order requiring the PTO to reinstitute the terminated
IPR. The District Court for the E.D. Virginia
dismissed case. Medtronic appealed the dismissal to
the Federal Circuit requesting initial en
banc review. Federal Circuit suspended briefing
on Feb. 22, 2016.
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90/013, 262
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7, 870, 249
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14-18, 20-21, 23-26
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Reexamination certificate confirming claims 14-18,
20-21 and cancelling claims 23-26, issued May 22,
2015.
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90/013, 493
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7, 870, 249
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1, 2, 6-8, 10-13
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Reexamination ordered for claims 1, 2, 6-8, and 10-13
on June 3, 2015. First office action issued on Aug.
20, 2015, rejecting challenged claims. Bosch filed
response and terminal disclaimer on Oct. 20, 2015.
Terminal disclaimer approved on Oct. 21, 2015.
Non-final rejection mailed February 25, 2016. Bosch
filed response on May 25, 2016. Proceeding merged
with 90/013, 647 on July 8, 2016.
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90/013, 647
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7, 870, 249
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1-13
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Reexamination ordered for claims 1-13 on January 20,
2016. Non-final rejection mailed April 7, 2016. Bosch
filed response on June 21, 2016. Proceeding merged
with 90/013, 493 on July 8, 2016.
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90/013, 638
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7, 870, 249
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1-2, 6-8, 11-13
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Reexamination request filed on Nov. 23, 2015. Request
denied on Dec. 17, 2015. Reexamination terminated on
February 18, 2016 and no claims were cancelled.
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