`
`
`
`
`
`
`
`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 IPR2020-00126
`Patent 8,048,032
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR
`GOOD CAUSE EXTENSION PURSUANT TO 37 C.F.R. § 42.100(c)
`
`
`
`Medtronic’s unprecedented motion to extend the statutory 1-year deadline for
`
`the convenience of its counsel should be denied. That proceedings Medtronic
`
`initiated with full knowledge of the statutorily-mandated schedules have now
`
`become inconvenient for Medtronic’s counsel is not “good cause,” especially when
`
`granting Medtronic’s motion would prejudice Teleflex and shift inconvenience to
`
`Teleflex’s counsel. Teleflex would certainly consider less-prejudicial changes that
`
`maintain the 1-year deadline, but Medtronic has not offered any.
`
`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”
`
`in any unexpected or unpredictable way. Before even filing its IPRs, Medtronic was
`
`well aware that its primary reference, Itou, was a 102(e) reference, that Teleflex
`
`contended it pre-dated Itou, and that robust objective evidence of nonobviousness
`
`existed. Paper 14 (PO Sur-Reply detailing Medtronic’s knowledge of this evidence).
`
`Medtronic was also well aware that patent owners can move to amend their patents
`
`during IPR proceedings. Medtronic nonetheless chose to file 13 IPR petitions
`
`(including many “back-up” petitions that Teleflex has been forced to address),
`
`knowing full well what the statutorily-mandated schedule would be. Moreover,
`
`Teleflex has already offered Medtronic deposition dates for all routine discovery
`
`depositions within the range Medtronic requested, such that all depositions are
`
`1
`
`
`
`scheduled to conclude well before Due Date 2 under the current schedule. Ex-2218
`
`at 1. Having chosen to instigate these proceedings, Medtronic’s complaint that the
`
`schedule is unfair or inconvenient to its counsel does not constitute good cause.
`
`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
`
`efficient process for adjudicating patent validity. That need for swift adjudication is
`
`particularly important here, where Teleflex filed suit immediately after Medtronic
`
`introduced its infringing product and where Medtronic relied on the present IPRs to
`
`both overcome Teleflex’s preliminary injunction motion and obtain a stay of the
`
`district court proceedings.
`
`Medtronic’s assertions that Teleflex would not be prejudiced are unfounded.
`
`Medtronic contends that the district court is unlikely to lift the stay on the five patents
`
`at issue in the present IPRs until after IPR petitions filed by Medtronic against two
`
`other patents-in-suit are resolved. Not only is Medtronic’s argument speculative (for
`
`example, the Board has not yet even decided whether to institute those petitions), it
`
`misstates the district court precedent. Medtronic claims that Judge Schiltz previously
`
`refused to lift a stay on one patent because of ongoing reexamination of another
`
`patent. Paper 56 at 4. In fact, the exact opposite is true. In the Horton case cited by
`
`Medtronic, Judge Schiltz lifted a stay as to one patent even though reexamination of
`
`2
`
`
`
`a second patent was ongoing. Horton, Inc. v. Kit Masters, Inc., 08-cv-6291, 2010
`
`U.S. Dist. LEXIS 134369, at *3 (D. Minn. Dec. 20, 2010) (“The ’415 patent has now
`
`emerged from two reexamination proceedings, and [patentee] has a right to enforce
`
`it. Although some slight efficiencies might result from leaving the stay in place until
`
`the ’796 patent’s reexamination is concluded…, those efficiencies are offset by the
`
`unfairness of continuing to prevent [patentee] from enforcing the ’415 patent.”).1
`
`Judge Schiltz’s decision is in accord with other courts. E.g., Centrip. Networks, Inc.
`
`v. Cisco Sys., 2:18cv94, 2019 U.S. Dist. LEXIS 231215, at *9-11 (E.D. Va. Sep. 15,
`
`2019); Cequent Performance Prods. v. Hopkins Mfg. Corp, 13-cv-15293, 2015 U.S.
`
`Dist. LEXIS 153654, at *2-4 (E.D. Mich. Nov. 13, 2015). Thus, Judge Schiltz’s past
`
`practice and the practice of many other courts indicates that the stay likely will be
`
`lifted as to at least the first five patents as soon as a Final Written Decision is issued.
`
`Medtronic’s speculation to the contrary is unsupported and does not come close to
`
`constituting “good cause” for its highly prejudicial request.
`
`Moreover, Medtronic’s requested extension would not actually reduce the
`
`overall inconvenience to counsel; it would merely shift inconvenience from
`
`
`1 In the Order cited by Medtronic, Judge Schiltz merely denied (without prejudice)
`
`the patentee’s earlier motion to lift the stay as to one patent prior to completion of
`
`a second pending reexamination of that same patent. See Ex-1102.
`
`3
`
`
`
`Medtronic’s counsel to Teleflex’s. Teleflex’s counsel already compressed all of the
`
`work necessary to prepare the PO Response-related filings for all eleven instituted
`
`IPRs within the normal one-year schedule.2 It would be starkly unfair to now allow
`
`Medtronic a much longer than normal time to prepare its Reply-related filings.
`
`What’s more, if Medtronic’s unprecedented request to extend the statutory deadline
`
`is granted and if the Board institutes the four additional IPR petitions that Medtronic
`
`filed, Teleflex’s PO Responses in the new IPRs would be due at the same time
`
`Teleflex is preparing its sur-replies and preparing for trial in the present eleven
`
`IPRs. Medtronic’s request to shift inconvenience from its counsel to Teleflex’s is
`
`not good cause.
`
`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
`
`inconsistent with its earlier position, the party persuaded the tribunal to accept its
`
`earlier position, and the party will derive an unfair advantage or impose an unfair
`
`detriment on the opposing party if not estopped. Scudder v. Dolgencorp, LLC, 900
`
`
`2 Medtronic’s assertion that Teleflex had “almost a full year” to respond to the
`
`Petitions, (Paper 56 at 1), is simply not true. Teleflex had no reason to begin
`
`preparing its PO Responses and other documents until after the Board had decided
`
`whether to institute the IPRs and on what basis.
`
`4
`
`
`
`F.3d 1000, 1006 (8th Cir. 2018).
`
`Here, Medtronic repeatedly invoked the 1-year statutory deadline for
`
`completing IPRs as a basis to grant its motion to stay the district court litigation. Ex-
`
`2219 at 6, 9 (representing that final written decisions are expected by June 9 and
`
`July 8, 2021); Ex. 2220 at 4:6-11 (asking the court to stay to allow the PTAB “to
`
`conduct trial proceedings over the next 12 months”); 4:21-22 (“The PTAB will be
`
`deciding in the next year whether each of those claims is invalid . . . .”); 7:12-18
`
`(distinguishing case law relating to reexamination based on the “statutorily
`
`mandated 12 months to final written decision”); 9:3-6 (“[T]he short stay for an IPR
`
`will not unduly prejudice Teleflex. As we noted and everybody agrees, the PTAB
`
`is statutorily mandated to issue its final written decision within 12 months”); 11:7-
`
`11 (“[Teleflex’s] patents have six to seven years left on them. The stay is a one-year
`
`stay. . . . And so that’s a small portion of that left.”). Having clearly and extensively
`
`relied on the statutory deadline to obtain a stay of litigation, Medtronic is estopped
`
`from arguing that the deadline should be extended. See, e.g., QXMédical, LLC v.
`
`Vascular Sols., LLC, 17-cv-1969, 2020 U.S. Dist. LEXIS 118305, at *6-7 (D. Minn.
`
`July 7, 2020) (Judge Schiltz in related litigation finding that another accused
`
`infringer was judicially estopped from dissolving an injunction based on statements
`
`made to convince the court to stay the litigation based on the present IPRs).
`
`5
`
`
`
`Dated: November 2, 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
`
`6
`
`
`
`CERTIFICATION OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
`
`
`
`undersigned certifies that on November 2, 2020, a true and correct copy of the
`
`foregoing Patent Owner’s Opposition to Petitioners’ Motion for Good Cause
`
`Extension Pursuant to 37 C.F.R. § 42.100(c) 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)
`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
`
`
`
`
`
`
`
`
`
`/ J. Derek Vandenburgh /
`J. Derek Vandenburgh (Lead Counsel for Patent Owner)
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
