UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC., and MEDTRONIC VASCULAR, INC.
`Petitioner
`v.
`MARITAL DEDUCTION TRUST
`Patent Owner
`____________
`Case IPR2014-00100
`Patent 5,593,417
`
`PETITIONER MEDTRONIC’S
`DEMONSTRATIVE EXHIBITS
`
`Attorney Docket No. 058888-0000015
`Jack S. Barufka
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC., and MEDTRONIC VASCULAR, INC.
`Petitioner
`v.
`MARITAL DEDUCTION TRUST
`Patent Owner
`____________
`Case IPR2014-00100
`Patent 5,593,417
`
`PETITIONER MEDTRONIC’S
`DEMONSTRATIVE EXHIBITS
`
`Attorney Docket No. 058888-0000015
`Jack S. Barufka
`
`
`
`The ‘417 Patent Specification Describes An
`Improvement to the Projections of the Patentee’s
`Prior ‘154 Patent
`
`U.S. Patent No. 5,593,417, Col. 3, lines 21-27
`
`1
`
`IPR Petitioner Exhibit 1001 at p. 6
`
`
`
`The ‘417 Patent Specification States That Its
`Device is Constructed According to the
`Teachings of the Prior ‘154 Patent, Except for
`the Anchoring Means
`
`U.S. Patent No. 5,593,417, Col. 5, lines 10-17
`
`2
`
`IPR Petitioner Exhibit 1001 at p. 7
`
`
`
`The ‘417 Patent Specification States That the
`Projections Can Take Numerous Sizes or Shapes,
`So Long As They are Oriented at an Acute Angle
`
`U.S. Patent No. 5,593,417, Col. 9, lines 1-13
`
`3
`
`IPR Petitioner Exhibit 1001 at p. 9
`
`
`
`During Prosecution, the Patentee Argued That His
`Earlier ‘154 Patent Discloses a Similar Device With
`Anchoring Means, But Not as Now Claimed
`
`Amendment filed May 15, 1996 at p. 4
`
`4
`
`IPR Petitioner Exhibit 1002 at p. 48
`
`
`
`Patentee Argued That the Acute Angle Wasn’t
`Shown in the Prior Art and Enabled Tight
`Engagement
`
`5
`
`Amendment filed May 15, 1996 at p. 5
`
`IPR Petitioner Exhibit 1002 at p. 49
`
`
`
`The “Whereupon” Clause is Not a Limitation
` Lockheed Martin Corp. v. Space Systems/Loral, Inc. 324 F.3d 1308
`(Fed. Cir. 2003).
` Claim Limitation of: “means for rotating said wheel in accordance with a
`predetermined rate schedule which varies sinusoidally over the orbit at the
`frequency of the satellite whereby the attitude of said satellite is offset in resposne
`to the effect of said rotating wheel by the direction of the pitch axis being changed
`with respect to said momentum vector”
` Court stated that the foregoing limitation "is properly identified as the language
`after the 'means for' clause and before the 'whereby' clause, because a
`whereby clause that merely states the result of the limitations in the claim adds
`nothing to the substance of the claim."
`
` Titan Atlas Mfg. Inc. v. Sisk, 894 F. Supp.2d 754 (W.D.Va 2012).
` Claim limitation of: A mine ventilation structure … whereby the structure forms an
`air seal in the passageway.
` District court held that “the whereby clause does not add anything material or
`substantive to the claims [and] … [i]t is, therefore, unnecessary to construe it
`as an additional limitation on the claims.”
`
`6
`
`
`
`The Patent Owner’s Own Expert Testified That
`the Plain & Ordinary Meaning of “Tightly Engaged”
`is “Very Securely Attached”
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 21:12-25
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 22:1-20
`
`7
`
`IPR Petitioner Exhibit 1014 at pp. 21-22
`
`
`
`Kornberg Discloses All the Features of Claim 1 of
`the ‘417 Patent
`
`U.S. Patent No. 4,562,596, Abstract
`
`IPR Petition at p. 20 (Annotated FIG. 2)
`
`8
`
`IPR Paper No. 1 at p. 20
`IPR Petitioner Exhibit 1006 at pp. 1-2
`
`
`
`The ‘417 Patent Specification States That the
`Effects of Blood Flow Forces Were Known by Those
`Skilled in the Art
`
`U.S. Patent No. 5,593,417, Col. 8, lines 12-21
`
`9
`
`IPR Petitioner Exhibit 1001 at p. 8
`
`
`
`Expert Rowe Testified That The Downward Flow of
`Blood Disclosed in Kornberg:
`
`“Would Apply to the Tip of the Anchor [and] … drive
`it into [the vessel].”
`
`U.S. Patent No. 4,562,596, Col. 6, lines 24-27
`
`10
`
`Rowe Jun. 26, 2014 Deposition Transcript at 117:10-15
`IPR Petitioner Exhibit 1006 at p. 6
`IPR Patent Owner Exhibit 2023 at p. 117
`
`
`
`Rowe Testified That Blood Forces Can Drive an
`Anchor Further
`
`Rowe Jun. 26, 2014 Deposition Transcript at 118:8-17
`
`Expert Drawing (FIG. B)
`Created During Rowe
`Jun. 26, 2014 Deposition
`
`Expert
`Drawing
`(FIG. C)
`Created
`During Rowe
`Jun. 26, 2014
`Deposition
`
`11
`
`IPR Patent Owner Exhibit 2023 at p. 118
`IPR Petitioner Exhibit 1013 at pp. 2-3
`
`
`
`Use of Blood Flow to Cause an Anchoring Device to
`Tightly Engage was Known in the Art
`
`U.S. Patent No. 5,397,345 to Lazarus, Col. 5, lines 53-57
`
`U.S. Patent No. 5,387,235 to Chuter, Col. 10, lines 33-39
`
`U.S. Patent No. 5,397,345 to Lazarus, Col. 10, lines 18-21
`
`12
`
`IPR Patent Owner Exhibit 2009 at p. 30
`IPR Patent Owner Exhibit 2010 at pp. 10, 12
`
`
`
`Claim 1 of the ‘417 is Obvious over Rhodes ‘154 in
`View of Kornberg – Patent Owner’s Expert
`Testified, the Projections Can Be: Acute, Right, or
`Obtuse
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 85:2-15
`
`13
`
`IPR Petitioner Exhibit 1014 at p. 85
`
`
`
`Gupta Testified that Selecting an Acute Angle Made
`the Most Sense to Prevent Migration
`
`Gupta Jun. 25, 2014 Deposition Transcript at 101:4-17
`
`14
`
`IPR Patent Owner Exhibit 2021 at p. 101
`
`
`
`Patent Owner’s Expert Testified That the Prior Art
`Taught to Use Both Angles
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 91:13-20, 92:3-12
`
`15
`
`IPR Petitioner Exhibit 1014 at pp. 91, 92
`
`
`
`The ‘154 Patent Describes “Projections” that Were
`Effective for their Intended Purpose
`
`U.S. Patent No. 5,593,417, Col. Col. 3, lines 21-27
`
`16
`
`IPR Petitioner Exhibit 1001 at p. 6
`
`
`
`The ‘417 Patent Specification States That the
`Projections Can Take Numerous Sizes or Shapes,
`So Long As They are Oriented at an Acute Angle to
`the Fluid Flow Direction
`
`U.S. Patent No. 5,593,417, Col. 9, lines 1-13
`
`17
`
`IPR Petitioner Exhibit 1001 at p. 9
`
`
`
`The ‘154 Projections “Help Impact the Graft into the
`Arterial Wall to Maintain a Fixed Position Therein”
`
`U.S. Patent No. 5,122,154, Col. 7, lines 18-24
`
`18
`
`IPR Petitioner Exhibit 1008 at p. 9
`
`
`
`Patent Owner’s Response Argues That the
`Invention Addressed Problems With Existing
`Methods of Anchoring
`
`Patent Owner’s Jul. 28, 2014 Response to Petition for Inter Partes Review at p. 52
`
`19
`
`IPR Paper No. 27 at p. 52
`
`
`
`Patent Owner’s Expert Testified That Dr. Rhodes
`Set Out to Devise a Post-Deployment Method of
`Anchoring
`
`Declaration of James Silver, Ph.D. filed Jul. 28, 2014, at p. 49
`
`20
`
`IPR Patent Owner Exhibit No. 2002 at p. 49
`
`
`
`The ‘417 Device is a Stent That Can Be
`Expanded to Any Desired Expanded State
`
`U.S. Patent No. 5,593,417, Col. 6, lines 21-24
`
`21
`
`IPR Petitioner Exhibit 1001 at p. 7
`
`
`
`Patent Owner’s Expert Stated That Some of
`Kornberg’s Embodiments Will Not Fully Penetrate
`the Aorta Wall
`
`Declaration of James Silver, Ph.D. filed Jul. 28, 2014 at p. 35
`
`22
`
`IPR Patent Owner Exhibit 2002 at p. 35
`
`
`
`Patent Owner’s Expert Testified That Several
`Embodiments of Kornberg have Projection Heights
`Between 1.0 and 1.5 mm
`
`Kornberg discloses:
`Degree
`Length
`
`10°
`
`45°
`
`30°
`
`8 mm
`
`2 mm
`
`3 mm
`
`->
`
`->
`
`->
`
`Height
`
`1.389 mm
`
`1.414 mm
`
`1.5 mm
`
`Dr. Silver Aug. 28, 2014
`Deposition Transcript
`at 123:19 – 124:3
`
`Dr. Silver Aug. 28, 2014
`Deposition Transcript
`at 119:24 – 120:23
`
`Dr. Silver Aug. 28, 2014
`Deposition Transcript
`at 125:1-7
`
`23
`
`IPR Petitioner Exhibit 1014 at pp. 119-125
`
`
`
`Patent Owner’s Expert Testified that Where the
`Height of the Projections in Kornberg are in the
`Height Range of the ‘417, There Would Be No
`Puncturing and No Need for a Resilient Ring
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 128:1-8
`
`24
`
`IPR Petitioner Exhibit 1014 at p. 128
`
`
`
`Patent Owner’s Own Expert Testified That a
`Projection That Perforates is “Tightly Engaged”
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 26:4-13
`
`25
`
`IPR Petitioner Exhibit 1014 at p. 26
`
`
`
`The ‘417 Patent Specification States That
`Projections Can Tightly Engage and Not
`Necessarily Penetrate
`
`U.S. Patent No. 5,593,417, Col. 9, lines 13-17
`
`26
`
`IPR Petitioner Exhibit 1001 at p. 9
`
`
`
`The ‘417 Patent Recognizes That There is At Least
`Some Risk That Its Projections May Perforate the
`Vessel
`
`U.S. Patent No. 5,593,417, Col. 3, lines 53-58
`
`27
`
`IPR Petitioner Exhibit 1001 at p. 6
`
`
`
`Patent Owner’s Expert Explains that Simply Touching
`a Device Against the Artery Can Perforate It
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 52:1-7
`
`28
`
`IPR Petitioner Exhibit 1014 at p. 52
`
`
`
`Patent Owner Argues that Penetration is Required
`for Tight Engagement
`
`Patent Owner’s Jul. 28, 2014 Response to Petition for Inter Partes Review at p. 28
`
`29
`
`IPR Paper No. 27 at p. 28
`
`
`
`Patent Owner’s Expert Testified that Penetration is
`Required for “Tight Engagement”
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 41:2-8
`
`30
`
`IPR Petitioner Exhibit 1014 at p. 41
`
`
`
`Patent Owner’s Response Recognizes that it is Not
`Possible to Control the Depth of Penetration With
`Specificity
`
`Patent Owner’s Jul. 28, 2014 Response at p. 12
`
`31
`
`IPR Paper No. 27 at p. 12
`
`
`
`Patent Owner’s Expert Testified to Numerous
`Variables That Affect the Depth of Penetration
`62:1-17
`
`61:13-25
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 61:13-62:17
`
`32
`
`IPR Petitioner Exhibit 1014 at pp. 61-62
`
`
`
`Patent Owner’s Expert’s Understanding of the ‘417
`Patent is that the Disclosed Device Will Tightly
`Engage Only in Some Cases
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 227:17-22
`
`33
`
`IPR Petitioner Exhibit 1014 at p. 227
`
`
`
`Patent Owner’s Expert Testified That Two
`Identical Devices May or May Not Be Covered
`by Claim 1
`
`232:8-25
`
`233:1-15
`
`34
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 232:8-233:15
`
`IPR Petitioner Exhibit 1014 at pp. 232-233
`
`
`
`Patent Owner’s Expert Believes That Claim 1 Does
`Not Preclude Penetration Upon Deployment
`
`35
`
`Declaration of James Silver, Ph.D. filed Jul. 28, 2014 at p. 39, fn. 1
`
`IPR Patent Owner Exhibit 2002 at p. 39, fn. 1
`
`
`
`During His Testimony, Dr. Silver Testified By
`Providing Several Drawings
`
`36
`
`IPR Petitioner Exhibit 1020 at p. 1
`
`Dr. Silver Deposition Exhibit No. 6
`
`
`
`According to Patent Owner’s Expert, the ‘417
`Projections Do Not Penetrate Through the Intimal
`(Innermost) Layer
`
`99:21-25
`
`100:1-9
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 99:21-100:9
`
`Dr. Silver Deposition Exhibit No. 9
`
`37
`
`IPR Petitioner Exhibit 1014 at pp. 99-100
`IPR Petitioner Exhibit 1023
`
`
`
`No Secondary Indicia of Non-Obviousness
`The Patent Owner’s Expert has Never Seen Any
`Settlement Agreement
`
`Dr. Silver Aug. 28, 2014 Deposition Transcript at 192:1 – 193:1
`
`38
`
`IPR Petitioner Exhibit 1014 at pp. 192-193
`
`
`
`Patent Owner’s Expert Did Not Consider Several
`Factors Relating to Commercial Success
`
`Dr. Silver Aug. 28, 2014
`Deposition Transcript at 186:8-11
`
`Dr. Silver Aug. 28, 2014
`Deposition Transcript at 186:16-25
`
`Dr. Silver Aug. 28, 2014
`Deposition Transcript at 187:1-4
`
`39
`
`IPR Petitioner Exhibit 1014 at pp. 186-187
`
`
`
`No “Long-Felt Need” Given Patent Owner’s Position
`That Dr. Rhodes Was the “Only One” That
`Recognized the Alleged Problem
`
`Patent Owner’s
`Response at p. 49
`
`Patent Owner’s
`Response at p. 54
`
`40
`
`IPR Paper No. 27 at pp. 49 and 54
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