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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
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`v.
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`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
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`Case IPR2020-00126
`Patent 8,048,032
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`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR
`GOOD CAUSE EXTENSION PURSUANT TO 37 C.F.R. § 42.100(c)
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`Medtronic’s unprecedented motion to extend the statutory 1-year deadline for
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`the convenience of its counsel should be denied. That proceedings Medtronic
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`initiated with full knowledge of the statutorily-mandated schedules have now
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`become inconvenient for Medtronic’s counsel is not “good cause,” especially when
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`granting Medtronic’s motion would prejudice Teleflex and shift inconvenience to
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`Teleflex’s counsel. Teleflex would certainly consider less-prejudicial changes that
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`maintain the 1-year deadline, but Medtronic has not offered any.
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`I. MEDTRONIC CHOSE TO AVAIL ITSELF OF THE IPR PROCESS
`WITH FULL KNOWLEDGE OF THE STATUTORILY-MANDATED
`SCHEDULE AND THE SCOPE OF THE PROCEEDINGS
`The 13 IPR proceedings that Medtronic chose to initiate have not “ballooned”
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`in any unexpected or unpredictable way. Before even filing its IPRs, Medtronic was
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`well aware that its primary reference, Itou, was a 102(e) reference, that Teleflex
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`contended it pre-dated Itou, and that robust objective evidence of nonobviousness
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`existed. Paper 14 (PO Sur-Reply detailing Medtronic’s knowledge of this evidence).
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`Medtronic was also well aware that patent owners can move to amend their patents
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`during IPR proceedings. Medtronic nonetheless chose to file 13 IPR petitions
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`(including many “back-up” petitions that Teleflex has been forced to address),
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`knowing full well what the statutorily-mandated schedule would be. Moreover,
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`Teleflex has already offered Medtronic deposition dates for all routine discovery
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`depositions within the range Medtronic requested, such that all depositions are
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`1
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`scheduled to conclude well before Due Date 2 under the current schedule. Ex-2218
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`at 1. Having chosen to instigate these proceedings, Medtronic’s complaint that the
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`schedule is unfair or inconvenient to its counsel does not constitute good cause.
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`II. EXTENDING THE STATUTORY DEADLINE WILL PREJUDICE
`TELEFLEX AND SHIFT INCONVENIENCE TO TELEFLEX’S
`COUNSEL
`The one-year statutory deadline protects patentees by mandating a fast and
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`efficient process for adjudicating patent validity. That need for swift adjudication is
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`particularly important here, where Teleflex filed suit immediately after Medtronic
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`introduced its infringing product and where Medtronic relied on the present IPRs to
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`both overcome Teleflex’s preliminary injunction motion and obtain a stay of the
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`district court proceedings.
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`Medtronic’s assertions that Teleflex would not be prejudiced are unfounded.
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`Medtronic contends that the district court is unlikely to lift the stay on the five patents
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`at issue in the present IPRs until after IPR petitions filed by Medtronic against two
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`other patents-in-suit are resolved. Not only is Medtronic’s argument speculative (for
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`example, the Board has not yet even decided whether to institute those petitions), it
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`misstates the district court precedent. Medtronic claims that Judge Schiltz previously
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`refused to lift a stay on one patent because of ongoing reexamination of another
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`patent. Paper 56 at 4. In fact, the exact opposite is true. In the Horton case cited by
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`Medtronic, Judge Schiltz lifted a stay as to one patent even though reexamination of
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`2
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`a second patent was ongoing. Horton, Inc. v. Kit Masters, Inc., 08-cv-6291, 2010
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`U.S. Dist. LEXIS 134369, at *3 (D. Minn. Dec. 20, 2010) (“The ’415 patent has now
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`emerged from two reexamination proceedings, and [patentee] has a right to enforce
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`it. Although some slight efficiencies might result from leaving the stay in place until
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`the ’796 patent’s reexamination is concluded…, those efficiencies are offset by the
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`unfairness of continuing to prevent [patentee] from enforcing the ’415 patent.”).1
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`Judge Schiltz’s decision is in accord with other courts. E.g., Centrip. Networks, Inc.
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`v. Cisco Sys., 2:18cv94, 2019 U.S. Dist. LEXIS 231215, at *9-11 (E.D. Va. Sep. 15,
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`2019); Cequent Performance Prods. v. Hopkins Mfg. Corp, 13-cv-15293, 2015 U.S.
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`Dist. LEXIS 153654, at *2-4 (E.D. Mich. Nov. 13, 2015). Thus, Judge Schiltz’s past
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`practice and the practice of many other courts indicates that the stay likely will be
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`lifted as to at least the first five patents as soon as a Final Written Decision is issued.
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`Medtronic’s speculation to the contrary is unsupported and does not come close to
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`constituting “good cause” for its highly prejudicial request.
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`Moreover, Medtronic’s requested extension would not actually reduce the
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`overall inconvenience to counsel; it would merely shift inconvenience from
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`1 In the Order cited by Medtronic, Judge Schiltz merely denied (without prejudice)
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`the patentee’s earlier motion to lift the stay as to one patent prior to completion of
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`a second pending reexamination of that same patent. See Ex-1102.
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`3
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`Medtronic’s counsel to Teleflex’s. Teleflex’s counsel already compressed all of the
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`work necessary to prepare the PO Response-related filings for all eleven instituted
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`IPRs within the normal one-year schedule.2 It would be starkly unfair to now allow
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`Medtronic a much longer than normal time to prepare its Reply-related filings.
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`What’s more, if Medtronic’s unprecedented request to extend the statutory deadline
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`is granted and if the Board institutes the four additional IPR petitions that Medtronic
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`filed, Teleflex’s PO Responses in the new IPRs would be due at the same time
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`Teleflex is preparing its sur-replies and preparing for trial in the present eleven
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`IPRs. Medtronic’s request to shift inconvenience from its counsel to Teleflex’s is
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`not good cause.
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`III. MEDTRONIC IS JUDICIALLY ESTOPPED FROM SEEKING TO
`EXTEND THE STATUTORY DEADLINE
`Judicial estoppel applies where a party takes a later position that is clearly
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`inconsistent with its earlier position, the party persuaded the tribunal to accept its
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`earlier position, and the party will derive an unfair advantage or impose an unfair
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`detriment on the opposing party if not estopped. Scudder v. Dolgencorp, LLC, 900
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`2 Medtronic’s assertion that Teleflex had “almost a full year” to respond to the
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`Petitions, (Paper 56 at 1), is simply not true. Teleflex had no reason to begin
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`preparing its PO Responses and other documents until after the Board had decided
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`whether to institute the IPRs and on what basis.
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`4
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`F.3d 1000, 1006 (8th Cir. 2018).
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`Here, Medtronic repeatedly invoked the 1-year statutory deadline for
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`completing IPRs as a basis to grant its motion to stay the district court litigation. Ex-
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`2219 at 6, 9 (representing that final written decisions are expected by June 9 and
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`July 8, 2021); Ex. 2220 at 4:6-11 (asking the court to stay to allow the PTAB “to
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`conduct trial proceedings over the next 12 months”); 4:21-22 (“The PTAB will be
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`deciding in the next year whether each of those claims is invalid . . . .”); 7:12-18
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`(distinguishing case law relating to reexamination based on the “statutorily
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`mandated 12 months to final written decision”); 9:3-6 (“[T]he short stay for an IPR
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`will not unduly prejudice Teleflex. As we noted and everybody agrees, the PTAB
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`is statutorily mandated to issue its final written decision within 12 months”); 11:7-
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`11 (“[Teleflex’s] patents have six to seven years left on them. The stay is a one-year
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`stay. . . . And so that’s a small portion of that left.”). Having clearly and extensively
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`relied on the statutory deadline to obtain a stay of litigation, Medtronic is estopped
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`from arguing that the deadline should be extended. See, e.g., QXMédical, LLC v.
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`Vascular Sols., LLC, 17-cv-1969, 2020 U.S. Dist. LEXIS 118305, at *6-7 (D. Minn.
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`July 7, 2020) (Judge Schiltz in related litigation finding that another accused
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`infringer was judicially estopped from dissolving an injunction based on statements
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`made to convince the court to stay the litigation based on the present IPRs).
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`5
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`Dated: November 2, 2020.
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`Respectfully submitted,
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`/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
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`Lead Counsel for Patent Owner
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`6
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned certifies that on November 2, 2020, a true and correct copy of the
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`foregoing Patent Owner’s Opposition to Petitioners’ Motion for Good Cause
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`Extension Pursuant to 37 C.F.R. § 42.100(c) was served via electronic mail upon
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`the following:
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`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`William E. Manske
`Emily J. Tremblay
`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
`Email: Wmanske@robinskaplan.com
`Email: Etremblay@robinskaplan.com
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`/ J. Derek Vandenburgh /
`J. Derek Vandenburgh (Lead Counsel for Patent Owner)
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