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`UNITED STATES PATENT AD TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.,
`Petitioner,
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`v.
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`TELEFLEX INNOVATIONS S.À.R.L.,
`Patent Owner.
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`
`Case IPR2020-00126
`Patent 8,048,032 B2
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`PETITIONERS’ REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`
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`IPR2020-00126
`Patent 8,048,032 B2
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`Medtronic had no obligation to address secondary considerations or
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`reduction to practice in its Petition. Teleflex, as the Patent Owner, has the burden
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`of production and proof and on those issues, respectively. Teleflex’s arguments
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`have not been fully developed, let alone adjudicated, before any District Court or
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`in the Patent Office. Neither issue should be addressed until the trial phase.
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` Medtronic did not have to raise secondary considerations in its Petition.
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`Medtronic had no obligation to address secondary considerations in the
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`Petition. The Board has repeatedly rejected similar arguments, including those
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`involving allegations far more developed than the random assortment of evidence
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`Teleflex presents here. See, e.g., Lowe’s, Cos., Inc. v. Nichia Corp., IPR2017-
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`02011, Paper 12 at *4-6 (POPR), Paper 13 at *18 (PTAB Mar. 12, 2018)
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`(Institution Decision); C&D Zodiac, Inc. v. b/e Aerospace, Inc., IPR2017-01275,
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`Paper 6 at *53-56 (POPR), Paper 12 at *15 (PTAB Oct. 31, 2017) (Institution
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`Decision); Petroleum Geo-Services Inc. v. W. Geco LLC, IPR2014-01477, Paper
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`12 at *40-41 (POPR), Paper 18 at *32 (PTAB Mar. 17, 2015) (Institution
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`Decision). Indeed, the Board rejected the same argument from Teleflex’s counsel
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`in Arctic Cat, Inc. v. Polaris Industries Inc., IPR2017-00433, Paper 17 at *9-10
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`(PTAB July 5, 2017). The Board explained that “Patent Owner does not identify,
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`nor are we aware of any persuasive authority requiring Petitioner in this case to
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`address secondary considerations, not previously presented to the Office, in the
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`1
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`IPR2020-00126
`Patent 8,048,032 B2
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`Petition.” Id. at *10. “[T]he burden of production rests on Patent Owner with
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`regard to secondary considerations,” and thus “full consideration of evidence of
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`secondary considerations of this nature is not necessary” before institution. Id. at
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`*10, *19.
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`The same rules apply here. Again, Teleflex’s counsel identifies no case
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`requiring a petitioner to address evidence of secondary considerations in its
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`petition, absent a decision by the Patent Office, ITC, or District Court crediting
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`that evidence. See, e.g., Stryker Corp. et al. v. KFx Med., LLC, IPR2019-00817,
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`Paper 10 at *27-28 (PTAB Sept. 16, 2019) (“[S]econdary considerations evidence
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`was developed fully during the Arthrex Litigation, and the Federal Circuit affirmed
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`the jury’s verdict”). The Patent Office never addressed the issue during prosecution
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`of this patent. See Exs. 1002-1003. Further, secondary considerations have not
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`even been raised by Teleflex in litigation against Medtronic, let alone been fully
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`developed or adjudicated. Teleflex argues that Medtronic should have cobbled
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`together disparate disclosures to make Teleflex’s argument for it, including from
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`an infringement report in a different case (Ex. 2056) and a declaration on purported
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`irreparable harm from preliminary injunction briefing (Ex. 2043), among other
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`exhibits, none of which even mention secondary considerations. Requiring
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`Petitioners to engage in guessing games would waste the parties’ and the Board’s
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`resources. Under these circumstances, Medtronic did not have to raise secondary
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`2
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`IPR2020-00126
`Patent 8,048,032 B2
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`considerations in its Petition.
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` Medtronic had no obligation to address conception and reduction to
`practice before Teleflex raised the issue.
`Conception and reduction to practice are issues for the trial phase that
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`Medtronic did not have to address in its Petition. The Board’s rulings on
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`Petitioner’s obligations with respect to secondary considerations apply even more
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`forcefully here, because “Patent Owner bears the burden of proof regarding its
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`antedating contention.” Mylan Pharms. Inc. v. Boehringer Ingelheim Pharms. Inc.,
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`IPR2016-01563, Paper 14 at *4 (PTAB Dec. 7, 2016). Later, the “Petitioner is
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`entitled to respond to the contention after discovery.” Id. As the Board has
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`explained, “[i]t is premature at the institution stage to address the merits of Patent
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`Owner’s antedating contention.” Id.; see also Pfizer Inc. v. Genentech, Inc.,
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`IPR2017-01488, Paper 27 at *15 (PTAB Dec. 1, 2017). And it has rejected
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`arguments “that Petitioners were required in the Petition to foresee and prebut
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`Patent Owner’s argument and evidence purporting to show a reduction to practice
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`of certain subject matter.” Associated British Foods PLC v. Cornell Research
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`Found., IPR2019-00577, Paper 25 at *31 (PTAB July 25, 2019); Mylan, Paper 14
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`at *3-4. Medtronic had no obligation to do so either.
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`Teleflex disclosed limited evidence on conception and reduction to practice
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`in the litigation prior to the filing of Medtronic’s Petition. In its first interrogatory
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`response from August 15, 2019, Teleflex only disclosed that “the inventors came
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`3
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`IPR2020-00126
`Patent 8,048,032 B2
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`up with the idea for what became the GuideLiner catheter product and that led to
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`the inventions claimed in the patents-in-suit at some point in 2004 after the annual
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`Transcatheter Cardiovascular Therapeutics conference that took place in late
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`September of that year.” Ex. 2045 at 3-4. The response identified just three
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`supporting documents dated in 2005 and were marked attorney’s eyes only
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`(“AEO”). Id. at 4; see, e.g., Exs. 2003-2004. That disclosure did not present a
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`complete picture of Teleflex’s arguments—it did not even identify a particular date
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`of alleged conception or reduction to practice.
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`Teleflex did not begin to disclose its actual positions until much later. On
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`November 6, 2019 (less than a week before Medtronic filed its Petition) Teleflex
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`supplemented its interrogatory response to provide its first narrative explanation,
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`marking it AEO. In total, prior to the Petition’s filing, Teleflex only disclosed
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`roughly 17 exhibits and its supplemental interrogatory responses. Exs. 2002-2004,
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`2014-2015, 2017-2019, 2022-2025, 2027, 2036, 2040-2041, 2043, 2045. All of the
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`documents were designated AEO and raised more questions than they clarified
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`Teleflex’s position. For example, invoices for part orders do not show conception
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`and reduction to practice of any particular claim limitation. See, e.g., Ex. 2027. Nor
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`did drawings of potential catheter designs, which Teleflex did not map to each and
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`every limitation in its responses. Ex. 2022. Moreover, several days was not
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`sufficient time to explicate Teleflex’s arguments and then respond.
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`4
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`IPR2020-00126
`Patent 8,048,032 B2
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`Nor was Medtronic legally permitted to use any of the evidence. Teleflex
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`saw to that by designating the documents under the Protective Order, which
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`provides that “[a] confidential document may be used only in this action.” Ex.
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`1086, § 3(a). Consequently, Medtronic was prohibited by court order from using
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`that evidence in its Petition. Nor does the Protective Order allow Medtronic’s IPR
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`counsel any access to those materials. Id., §§ 1(a), 3(b)-(c).
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`Teleflex’s evidence and arguments continued to evolve after Medtronic filed
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`its Petition. In its POPR, Teleflex relied on roughly 22 new exhibits that it had not
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`produced prior to the Petition. See, e.g., Exs. 2005-2011, 2013, 2016, 2020-2021,
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`2026, 2028-2036, 2038. Teleflex’s attempts to fill gaps in its documentary
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`evidence with two previously undisclosed declarations (Exs. 2001, 2039) raise
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`significant fact issues relating to witness testimony and lack of documentary
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`corroboration. This evidence is not analogous to LG Elecs., Inc. v. Wi-LAN Inc.,
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`where the Board found that a draft Patent Application showed all limitations
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`sufficient to antedate a prior art reference. IPR2018-00704, Paper 14 at 8-20
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`(PTAB Sept. 5, 2018). Nor is Teleflex’s attempt to swear behind valid under the
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`AIA. Medtronic is entitled to take discovery and submit expert testimony on gaps
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`in Teleflex’s evidence, including on reduction to practice of each limitation
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`(something Teleflex has not shown). Medtronic would be prejudiced if the burden
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`of proof were shifted and it was deprived of any rebuttal to Teleflex’s arguments.
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`5
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`IPR2020-00126
`Patent 8,048,032 B2
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`Dated: March 30, 2020
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`Respectfully submitted,
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`
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`Attorney for Patent Owner
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`6
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`IPR2020-00126
`Patent 8,048,032 B2
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on March
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`30, 2020, a copy of PETITIONERS’ REPLY TO PATENT OWNER’S
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`PRELIMINARY RESPONSE was served in its entirety by electronic mail on
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`Patent Owner’s counsel at the following addresses indicated in Patent Owner’s
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`Mandatory Notices:
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`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
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`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
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`Dated: March 30, 2020
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`90545520.1
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`Respectfully submitted,
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`
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`Attorney for Patent Owner
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`7
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