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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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`__________________________
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
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`Petitioner,
`
`v.
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`TELEFLEX INNOVATIONS S.À.R.L.,
`
`Patent Owner
`_____________________________
`
`Case No.: IPR2020-00126
`U.S. Patent No. 8,048,032
`______________________________
`
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`PETITIONERS’ REQUEST FOR ORAL ARGUMENT
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`
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`IPR2020-00126
`Patent 8,048,032
`Pursuant to 37 C.F.R. § 42.70, Petitioner hereby respectfully requests oral
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`argument. The Consolidated Scheduling Order (Paper 26) set one day, March 8,
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`2021, for oral argument. Petitioner believes a typical day includes six hours on the
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`record. Accordingly, Petitioner respectfully requests a total of six hours for a one-
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`day hearing according to the following schedule: (1) 30 minutes of argument per
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`side regarding the consolidated conception and reduction to practice issues for the
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`patents challenged in IPR2020-00126, -00128, - 00129, -00132, -00134, -00135,
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`and -00137, (2) two hours of argument per side regarding the instituted grounds of
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`invalidity in all eleven instituted IPRs in IPR2020-00126, -00127, -00128, -00129,
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`-00130, -00132, -00134, -00135, -00136, -00137, and -00138, and (3) 30 minutes
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`of argument per side regarding Patent Owner’s five unique contingent motions to
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`amend.
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`Patent Owner has indicated it may seek a total of seven hours of
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`argument/testimony, with six hours of argument and one hour of live testimony
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`from Mr. Howard Root, an inventor, concerning the consolidated conception and
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`reduction to practice issues. Petitioner opposes any request for live testimony. If
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`the Board wishes to consider allowing live testimony, Petitioner believes the issue
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`should be fully briefed before any ruling by the Board.
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`Petitioner does not oppose additional time, however. If the Board is
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`considering allotting seven hours, for instance, Petitioner would use the additional
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`1
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`IPR2020-00126
`Patent 8,048,032
`time to address the myriad of issues Patent Owner has raised on the instituted
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`grounds. Petitioner’s proposed time for conception and reduction to practice and
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`motions to amend would remain the same.
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`Issues to be argued in this IPR:
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`1. Whether the inventors conceived and reduced to practice the various
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`claimed inventions prior to the filing of the Itou reference;
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`2.
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`A determination that the patent is not entitled to its claim of priority
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`and is instead an AIA patent;
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`3. Whether claims 1-19 and 22 are anticipated by U.S. Patent No.
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`7,736,355 (“Itou”);
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`4. Whether claims 3, 13, and 14 are rendered obvious by Itou in view of
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`U.S. Patent No. 7,604,612 (“Ressemann”) and the knowledge of a
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`POSITA;
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`5. Whether claim 20 is rendered obvious by Itou in view of U.S. Patent
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`No. 5,911,715 (“Berg”) and the knowledge of a POSITA;
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`6.
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`Patent Owner’s Contingent Motion to Amend and Petitioners’
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`Opposition to the same; and
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`7.
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`Any issues raised by the parties in any filings contemporaneous with
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`or subsequent to this Request.
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`2
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`IPR2020-00126
`Patent 8,048,032
`Dated: January 28, 2021
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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 Petitioner
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`3
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`IPR2020-00126
`Patent 8,048,032
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on January
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`28, 2021, a copy of PETITIONERS’ REQUEST FOR ORAL ARGUMENT was
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`served in its entirety by electronic mail on Patent Owner’s counsel at the following
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`addresses indicated in Patent Owner’s 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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`Joseph W. Winkels
`jwinkels@carlsoncaspers.com
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`Peter M. Kohlhepp
`pkohlhepp@carlsoncaspers.com
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`Tara C. Norgard (pro hac vice pending)
`tnorgard@carlsoncaspers.com
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`Alexander S. Rinn (pro hac vice pending)
`pkohlhepp@carlsoncaspers.com
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`Megan E. Christner, Reg. No. 78,979
`mchristner@carlsoncaspers.com
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`Kenneth E. Levitt, Reg. No. 39,747
`levitt.kenneth@dorsey.com
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`
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`Dated: January 28, 2021
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`Respectfully submitted,
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
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`4
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