`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
`
`
`
`
`Case IPR2020-0126, IPR2020-0127
`U.S. Patent No. 8,048,032
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER RESPONSE TO PETITIONER’S EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
`RANKING FOR U.S. PATENT NO. 8,048,032
`
`
`
`Petitioners Medtronic, Inc. and Medtronic Vascular, Inc. (collectively
`
`“Medtronic”) filed two separate petitions against the ’032 patent, challenging a
`
`total of only 21 claims.
`
`Medtronic’s strategic choice to rely on a section 102(e) reference does
`
`not justify institution of multiple petitions. Medtronic contends it needs two
`
`petitions because Teleflex is asserting an invention date that pre-dates the Itou
`
`reference (Ex. 1007). Paper 3 at 1-3. Teleflex did invent before the priority date
`
`of Itou. Indeed, Itou’s prior art status is at issue in the parallel district court
`
`litigation, and Medtronic was aware of substantial corroborated evidence showing
`
`Teleflex’s prior invention before it filed its Petitions. Nevertheless, Medtronic
`
`chose to rely on a § 102(e) reference and did not even try to address the issue of
`
`Teleflex’s invention date in its Petitions. Thus, this is not one of the “rare” cases
`
`in which “two petitions by a petitioner may be needed.” November 2019
`
`Consolidated Trial Practice Guide (“TPG”) at 59. Where, as here, a Petitioner
`
`proceeds with filing petitions relying on a primary reference that it knows full-well
`
`is likely to be antedated, multiple petitions are not justified.
`
`Medtronic cites Microsoft Corp. v. IPA Techs Inc., IPR2019-00810, Paper
`
`12 (PTAB Oct. 16, 2019). See Paper 3 at 2. But Microsoft was different. First,
`
`the petitioner in Microsoft explained that the “main difference” between its
`
`petitions was that each petition challenged different claims. Microsoft, IPR2019-
`
`1
`
`
`
`00810, Paper 12 at 12. Thus, denying one of the petitions would completely
`
`eliminate the petitioner’s opportunity to challenge those claims. Here, in contrast,
`
`Medtronic filed two petitions attacking the same claims based on different
`
`references. Second, while Medtronic is correct that there was a potential dispute
`
`about the priority date of Microsoft’s Kiss reference, the petitioner explained that
`
`“the same analysis of the combination of Kiss/FIPA97 is the basic prior art
`
`challenge to every claim in each petition.” Id. Paper 9 at 1-2 (emphasis added).
`
`Thus, if the Kiss reference was found to not qualify as prior art, all of the petitions
`
`would fail. Consequently, the petitioner’s filing of multiple petitions was clearly
`
`not intended to provide a “back-up” petition because of a potential priority issue.
`
`Medtronic’s reliance on Microsoft is inapt. Indeed, the Board routinely
`
`declines to institute multiple petitions, even where there is a priority date dispute.
`
`See, e.g., Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2019-01354,
`
`Paper 10 at 6 (PTAB Jan. 27, 2020) (denying institution of two of three petitions
`
`where a potential priority dispute existed); Dropbox, Inc. v. Whitserve LLC,
`
`IPR2019-01018, Paper 13 at 8-9 (PTAB Nov. 1, 2019) (denying institution of a
`
`second petition where parties disputed the priority date of multiple prior art
`
`references); Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2019-00279,
`
`Paper 10 at 6-7 (PTAB July 1, 2019) (declining to institute four of five filed
`
`petitions where a potential priority dispute existed).
`
`2
`
`
`
`Medtronic’s strategic choice to include excessive, duplicative challenges
`
`to the same claims does not justify institution of four petitions. Medtronic
`
`contends that the number and length of the claims requires two petitions. Paper 3
`
`at 3-4. But here, the Petitions challenge only a total of 21 claims. This is hardly an
`
`unusually high number. Medtronic’s contention that it could not fit all arguments
`
`into a single petition is a problem it created itself by failing to judiciously select
`
`and streamline its strongest arguments. Again, Medtronic’s reliance on Microsoft
`
`is inapposite. Microsoft concerned five petitions challenging 89 claims; here
`
`Medtronic uses two petitions to challenge only 21 claims. See Microsoft,
`
`IPR2019-00810, Paper 12 at 14. Medtronic’s deliberate drafting choices do not
`
`reasonably justify its choice to pursue an overly burdensome, inefficient, and
`
`unfairly duplicative attack on the ‘032 patent. See, e.g., Pfenex, Inc. v.
`
`GlaxoSmithKline Biologicals SA, IPR2019-01027, P12 at 13-14 (PTAB Nov. 13,
`
`2019) (“[T]he mere fact that Petitioner may have had additional art to assert,
`
`including a different statutory basis for asserting that art, does not, on these facts,
`
`justify the additional burden of a second petition directed to the same claims.”).
`
`Instituting both petitions will result in inefficiency and unfairness. As
`
`discussed above, Medtronic is aware that Teleflex intends to swear behind Itou,
`
`and parallel district court litigation addressing this issue is ongoing. Concurrent
`
`adjudication of these issues before the district court and the Board will result in
`
`3
`
`
`
`duplicative work, unnecessary and counterproductive litigation costs, the
`
`possibility of inconsistent decisions, and will not promote the efficient
`
`administration of the Office or the integrity of the patent system. See TPG at 56
`
`(the Director must consider “the effect of any such regulation [under this section]
`
`on the economy, the integrity of the patent system, the efficient administration of
`
`the Office, and the ability of the Office to timely complete proceedings instituted
`
`under this chapter”). For the reasons set forth in Patent Owner’s Preliminary
`
`Responses to Petitions,1 the Board should deny both petitions. However, if the
`
`Board is inclined to institute trial on one of the petitions, institution on only the
`
`Kontos-based petition (IPR2020-0127) would avoid at least some of these
`
`inefficiencies.
`
`
`
`
`
`
`
`
`
`
`1 Patent Owner is filing a Preliminary Response in IPR2020-0126 concurrently
`
`herewith, and intends to file a Preliminary Response in IPR2020-0127 before the
`
`deadline provided in 37 C.F.R. 42.107(b).
`
`4
`
`
`
`Dated: March 9, 2020.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel)
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh
` & Lindquist, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`Email:
`DVandenburgh@carlsoncaspers.com
`
`Lead Counsel for Patent Owner
`
`
`5
`
`
`
`CERTIFICATION OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
`
`
`
`undersigned certifies that on March 9, 2020, a true and correct copy of the
`
`foregoing Patent Owner Response to Petitioner’s Explanation of Material
`
`Differences Between Petitions and Petition Ranking for U.S. Patent No. 8,048,032
`
`was served via electronic mail upon the following:
`
`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`Robins Kaplan LLP
`800 LaSalle Avenue, Suite 2800
`Minneapolis, MN 55401
`Phone: 349-8500
`Fax: 612-339-4181
`Email: Cmorton@robinskaplan.com
`Email: Sroberg-perez@robinskaplan.com
`Email: Cpinahs@robinskaplan.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`