`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
`
`Case IPR2020-00126
`Patent 8,048,032
`
`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S REPLY TO ADDRESS 35 U.S.C. § 314(a)
`
`
`
`The POPR explains why the Board should decline to institute under 35
`
`U.S.C. § 314(a). Paper 8 at 25-30. The Apple factors confirm this.
`
`Factor 1: Petitioner has not sought a stay, and a stay is unlikely. Where, as
`
`here, neither party has requested a stay the Board declines to infer how the district
`
`court would rule. E.g. Intel, IPR2020-00113, Paper 15 at 8-9 (May 19, 2020);
`
`Apple, IPR2020-00019, Paper 15 at 12 (May 13, 2020). The QXMédical case was
`
`stayed only because QXMédical agreed to exit the market and waived its
`
`obviousness/anticipation defenses. Ex. 1094 at 2. Petitioner’s assertion that Judge
`
`Schiltz has previously granted stays ignores that (i) one was stipulated and (ii)
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`none involved direct competitors/allegations of irreparable harm.
`
`Factor 2: The trial-ready date (August 1, 2021) is only weeks after the last
`
`statutory deadline (July 8, 2021). The dates are very close; that the statutory
`
`deadline is first should not significantly impact the analysis. Petitioner notes that
`
`Judge Schiltz has extended trial-ready dates in other cases but provides no
`
`information regarding the circumstances. Indeed, in both this and the QXMédical
`
`case the extension was by stipulation of the parties, not sua sponte.
`
`Factor 3: The District Court is already deeply invested and the litigation has
`
`significantly progressed. As the POPR explains, the Court is already very familiar
`
`with the GuideLiner patents, the validity arguments and prior art, and the issue of
`
`Teleflex’s pre-Itou invention via (i) the co-pending QXMédical case and (ii) the
`
`1
`
`
`
`parties’ extensive litigation of the preliminary injunction motion. The parties have
`
`exchanged infringement contentions. There have been two depositions; three more
`
`are set for the coming weeks (Exs. 2050, 2051, 2082–2084). Fact discovery will be
`
`finished by Sept. 1, 2020, only 1.5 months after any institution decision. Ex. 2049
`
`at 2. Also, Petitioner did delay—as the POPR explains Petitioner knew this
`
`dispute was coming long ago but waited until November 2019 to file. Paper 8 at 2.
`
`Factor 4: There is complete overlap between the issues raised in the parallel
`
`proceedings. In the district court, Petitioner challenges the validity of all claims
`
`in each asserted patent, based on the same invalidity art and arguments as the
`
`petitions. Ex. 2078 at 55 (“Second Defense”), 58-61. The fact- and witness-
`
`intensive issue of whether Teleflex’s invention pre-dates Itou is also in both
`
`proceedings. The Petitioner also seeks to raise a written description issue in both.
`
`Factor 5: The Petitioner and the district court defendant are the same party.
`
`Factor 6: Other circumstances favor denial. As the POPRs explain, the
`
`petitions have significant substantive weaknesses. Moreover, the petitions
`
`themselves are highly burdensome and inefficient, challenging some claims on
`
`numerous duplicative grounds. E.g. IPR2020-00129, -00131 (claim 27 (seven
`
`grounds)); IPR2020-00132, -00133, -00134 (claim 32 (six grounds), claims 48, 51,
`
`53 (three grounds each)); IPR2020-00135, -00136 (claims 52-56 (five grounds),
`
`claims 36 (four grounds)); IPR2020-00137, -00138 (claim 44 (seven grounds)).
`
`2
`
`
`
`Dated: May 21, 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
`
`3
`
`
`
`CERTIFICATION OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
`
`
`
`undersigned certifies that on May 21, 2020, a true and correct copy of the
`
`foregoing Patent Owner’s Sur-Reply to Petitioner’s Reply to Address 35 U.S.C. §
`
`314(a) 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 for Patent Owner)
`
`
`
`
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