UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
`
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`
`Patent Owner
`_____________________________
`
`Cases IPR2020-0126, IPR2020-0127
`U.S. Patent No. 8,048,032
`______________________________
`
`PETITIONERS’ EXPLANATION OF MATERIAL DIFFERENCES
`BETWEEN PETITIONS AND PETITION RANKING FOR
`U.S. PATENT NO. 8,048,032
`
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
`
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`
`Patent Owner
`_____________________________
`
`Cases IPR2020-0126, IPR2020-0127
`U.S. Patent No. 8,048,032
`______________________________
`
`PETITIONERS’ EXPLANATION OF MATERIAL DIFFERENCES
`BETWEEN PETITIONS AND PETITION RANKING FOR
`U.S. PATENT NO. 8,048,032
`
`
`
`Medtronic, Inc. and Medtronic Vascular, Inc. (“Petitioners”) filed concurrent
`
`inter partes review (“IPR”) petitions against U.S. Pat. No. 8,048,032 (“the ’032
`
`Patent;” Ex-1001), but the claims are split so only two petitions challenge a given
`
`claim. The Board should consider and institute both petitions.
`
`1. Two petitions are necessary because of a priority date dispute.
`
`The Board’s Trial Practice Guide states that “more than one petition may be
`
`necessary” where, as here, “there is a dispute about priority date requiring
`
`arguments under multiple prior art references.” TPG UPDATE (July 2019) at 26.
`
`Petitioners filed two petitions per claim for this exact reason, as outlined below.
`
`Itou-Based Petition
`Ground 1: Claims 1-19 and 22 as anticipated by U.S. Patent
`Petition 1
`IPR2020-0126
`No. 7,736,355 (“Itou”).
`
`Ground 2: Claims 3, 13, and 14 as obvious over Itou in view of
`U.S. Patent No. 7,604,612 (“Ressemann”), and/or the
`knowledge of a POSITA.
`
`Ground 3: Claim 20 as obvious over Itou in view of U.S. Patent
`No. 5,911,715 (“Berg”), and/or the knowledge of a POSITA
`Kontos-Based Petition
`Ground 1: Claims 1-7, 9, 11-16, and 18-19 of the ’032 Patent
`Petition 2
`IPR2020-0127
`as obvious over U.S. Patent No. 5,439,445 (“Kontos”) in view
`of U.S. Patent Pub. 2004/0010280 (“Adams”), and/or the
`knowledge of a POSITA
`
`
`Ground 2: Claims 8 and 17 as obvious over Kontos in view of
`Adams, Takahashi et al., New Method to Increase a Backup
`Support of a 6 French Guiding Coronary Catheter, and
`published in 2004 (“Takahashi”), and/or the knowledge of a
`POSITA
`
`
`
`
`1
`
`
`
`Ground 3: Claim 20 as obvious over Kontos in view of Adams,
`Berg, and/or the knowledge of a POSITA
`
`
`Petition 1 asserts Itou as the primary reference. Itou was filed (and has an
`
`
`
`
`effective filing) date of September 23, 2005. (Ex-1007.) But Patent Owner has
`
`alleged a conception and reduction to practice date in 2004—a date much earlier
`
`than the priority date on the face of the ’032 Patent.1 (Ex-1084; Ex-1001.)
`
`Petitioners therefore submitted a second Petition (Petition 2) that covers a similar
`
`set of claims as Petition 1 but asserts prior art references with priority dates before
`
`2004. This second petition (Petition 2) relies on Kontos as the primary reference.
`
`Kontos issued on August 8, 1995, and it is prior art under at least
`
`§ 102(b). (Ex-1009.) Patent Owner is not able to swear behind Kontos, as it may
`
`attempt to do for Itou in Petition 1.
`
`
`
`The Board’s decision in Microsoft Corp. v. IPA Technologies, Inc. is
`
`instructive. IPR2019-00810, Paper 12 (PTAB Oct. 16, 2019). There, as here, the
`
`Patent Owner raised a priority date issue necessitating “arguments under multiple
`
`prior art references.” IPR2019-00810, Paper 12 at 15. In Microsoft Corp. the
`
`priority date dispute concerned a single prior art reference. Here, the priority
`
`dispute is more fundamental—Patent Owner has raised a priority date issue
`
`
`1 The ʼ032 Patent claims priority to U.S. Pat. No. 8,292,850, which, on its face, is
`
`entitled to a priority date of May 3, 2006. (Ex-1001.)
`
`
`
`2
`
`
`
`regarding the challenged patent itself. It would be manifestly unfair and prejudicial
`
`to Petitioner if the Board exercises its discretion under § 314(a) to deny Petition 2
`
`and post-institution Patent Owner successfully swears behind Itou. Accordingly,
`
`the Board should consider and institute Petition 1 and Petition 2.
`
`2. Two petitions are necessary because of the length and number of
`claims asserted by Patent Owner in district court.
`
`
`The ’032 Patent has 22 lengthy claims. Claims 1 and 11 of the ’032 Patent
`
`consist of a combined 628 words. Indeed, in Petition 1 recitation of the challenged
`
`claims alone takes up over 1,400 words—more than 10% of Petitioner’s allotted
`
`word count.
`
`Given Patent Owner’s allegations in district court, Petitioners must also
`
`challenge substantially all claims of the ’032 Patent. The Board’s Trial Practice
`
`Guide states that “more than one petition may be necessary” where, as here, “the
`
`patent owner has asserted a large number of claims in litigation.” TPG UPDATE
`
`(July 2019) at 26. In the district court litigation, Patent Owner has refused to
`
`identify the specific claims—or a specific number of claims—it will assert against
`
`Petitioner. (Ex-1079 ¶ 30 (“Medtronic has infringed and continues to infringe one
`
`or more claims of the ’032 patent, including at least claims 12 and 14…”); see also
`
`Ex-1083 at 2 (¶ 5d).)
`
`The Board’s decision in Microsoft Corp. is again instructive. There, as here,
`
`“word count limitations and a large number of challenged claims” supported the
`3
`
`
`
`
`
`filing of multiple petitions. IPR2019-00810, Paper 9 at 14. In Microsoft Corp., the
`
`patent owner generally alleged infringement of “one or more claims” of the subject
`
`patent. IPR2019-00810, Paper 9, 1 (“The complaint identified only claim 61, while
`
`generally alleging that Petitioner infringed ‘one or more claims.’”) The patent
`
`owner also opposed the streamlining of disputed issues, rejecting petitioner’s
`
`proposal to consider a set of twenty-four exemplary claims. IPR2019-00810, Paper
`
`9 at 13.
`
`Here, too, Petitioner cannot reasonably fit its arguments into a single
`
`petition. Petitioner cannot reasonably fit both its Itou-based and Kontos-based
`
`arguments into a single petition—both of which are necessary, as outlined above—
`
`because of Patent Owner’s position regarding its alleged conception and reduction
`
`to practice date. And Patent Owner has rejected reasonable proposals to narrow the
`
`parties’ dispute (See Ex-1083 at 2 (¶ 5d).)
`
`3. The Board should consider and institute both petitions, beginning
`with Petition 1 and then Petition 2.
`
`For the reasons set forth above, Petitioners respectfully request consideration
`and institution of both Petition 1 and Petition 2. Petitioners request that the Board
`consider its petitions in the following order: Petition 1 (IPR2020-0126), followed
`by Petition 2 (IPR2020-0127).
`
`
`
`
`
`
`
`4
`
`
`
`RESPECTFULLY SUBMITTED,
`
`ROBINS KAPLAN LLP
`
`
`Date: November 12, 2019
`800 LaSalle Ave, Suite 2800
`Minneapolis, MN 55402
`612.349.8500
`
`
`
`
`
`/ Cyrus A. Morton /
`Cyrus A. Morton
`
`Attorney for Petitioner
`Medtronic, Inc.
`
`
`
`
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that PETITIONERS’ EXPLANATION OF
`
`
`
`
`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
`
`RANKING FOR U.S. PATENT NO. 8,048,032 was served on November 12, 2019,
`
`by Federal Express mail to the USPTO correspondence address of record listed
`
`below:
`
`
`
`Paul Onderick
`PATTERSON THUENTE PEDERSEN, P.A.
`80 South 8th Street
`4800 IDS Center
`Minneapolis, MN 55402-2100
`
`Courtesy copies were also sent to the following address of record for counsel
`
`in Vascular Solutions LLC, et al. v. Medtronic, Inc., et al., No. 19-cv-01760 (D.
`
`Minn., filed July 2, 2019):
`
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`
`/ Cyrus A. Morton /
`
`Cyrus A. Morton
`Registration No. 44,954
`Robins Kaplan LLP
`cmorton@robinskaplan.com
`
`Attorney for Petitioners
`
`6
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`
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`
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`
`
`
`
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