1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Phone Conference - 2/2/2021
`Medtronic, Inc., and Medtronic Vascular, Inc. vs. Teleflex Innovations S.A.R.L.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`-------------------------------------------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`-------------------------------------------------
`
`Medtronic, Inc., and Medtronic Vascular, Inc.,
`
`Petitioners,
`
`vs.
`
`Teleflex Innovations S.À.R.L.,
`
`Patent Owner
`
`-------------------------------------------------
`Case No.: IPR2020-00126
`-------------------------------------------------
`Case No.: IPR2020-00127
`-------------------------------------------------
`Case No.: IPR2020-00128
`-------------------------------------------------
`Case No.: IPR2020-00129
`------------------------------------------------
`Case No.: IPR2020-00130
` -------------------------------------------------
`Case No.: IPR2020-00132
`-------------------------------------------------
`Case No.: IPR2020-00134
`-------------------------------------------------
`Case No.: IPR2020-00135
`-------------------------------------------------
`Case No.: IPR2020-00136
`-------------------------------------------------
`Case No.: IPR2020-00137
`-------------------------------------------------
`Case No.: IPR2020-00138
`-------------------------------------------------
`
`TELEPHONIC PROCEEDING
`
`February 2, 2021
`
`By Brandi N. Bigalke, RPR RSA
`
`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`Page 1
`
`Medtronic Ex. 1920
`Medtronic v. Teleflex
`IPR2020-00126/-127/-128/-129/-130/-132/-134/-135/-136/-137/-138
`
`

`

`Phone Conference - 2/2/2021
`Medtronic, Inc., and Medtronic Vascular, Inc. vs. Teleflex Innovations S.A.R.L.
`
` Taken pursuant to notice to take telephonic
`
` oral proceeding, on the 2nd day of February, 2021,
`
` before Brandi N. Bigalke, Registered Professional
`
` Reporter, Realtime Systems Administrator,
`
` Stenographic Court Reporter, and a Notary Public
`
` in and for the State of Minnesota.
`
`A P P E A R A N C E S:
`
`(**Everyone appeared by telephone)
`
`The Honorable Christopher Paulraj
`
`The Honorable Sheridan Snedden
`
`The Honorable Jon Tornquist
`
`On Behalf of the Petitioner:
`
`Cyrus A. Morton
`Chris Pinahs
`Sherry Roberg-Perez
`Robins Kaplan, LLP
`800 LaSalle Avenue
`Suite 2800
`Minneapolis, Minnesota 55402
`612-349-8722
`CMorton@RobinsKaplan.com
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`Page 2 (2)
`
`

`

`Phone Conference - 2/2/2021
`Medtronic, Inc., and Medtronic Vascular, Inc. vs. Teleflex Innovations S.A.R.L.
`
`APPEARANCES (Cont'd)
`
`On Behalf of the Patent Owner Teleflex Innovations,
`S.À.R.L.:
`
`J. Derek Vandenburgh
`Peter Kohlhepp
`CARLSON CASPERS
`Capella Tower, Suite 4200
`225 South Sixth Street
`Minneapolis, Minnesota 55345
`612-436-9618
`dvandenburgh@carlsoncaspers.com
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`Page 3 (3)
`
`

`

`Phone Conference - 2/2/2021
`Medtronic, Inc., and Medtronic Vascular, Inc. vs. Teleflex Innovations S.A.R.L.
`
` 1 P R O C E E D I N G S
` 2 Whereupon, the telephonic proceeding on February
` 3 2nd, 2021 was commenced at 2:00 p.m. as follows:
` 4 - - -
` 5 THE COURT: Good afternoon.
` 6 This is Judge Paulraj of the Patent
` 7 Trial and Appeal Board. With me on the line I
` 8 have Judges Tornquist and Snedden.
` 9 This is a conference call in
`10 ICR2020-00126, 127, 128, 129, 130, 132, 134, 135,
`11 136, 137, and 138.
`12 Can we start with role call. Let's
`13 start with petitioner's counsel first, then patent
`14 owner's counsel.
`15 MR. MORTON: Sorry, your Honor. I
`16 was on mute. I introduced everybody, but I'll do
`17 so again.
`18 So this is Cy Morton for petitioner.
`19 With me also is Chris Pinahs and Sherry
`20 Roberg-Perez.
`21 And we have do have a court reporter
`22 on the line I believe, your Honor.
`23 THE COURT REPORTER: Yes. This is
`24 Brandi Bigalke with Depo International.
`25 THE COURT: All right. Thank you,
` 1 Mr. Morton.
` 2 As is our usual practice, will you
` 3 submit a copy of the transcript whenever it's
` 4 available?
` 5 MR. MORTON: Yes, we will.
` 6 THE COURT: All right. Let's get
` 7 role call from patent owner's counsel.
` 8 MR. VANDENBURGH: Thank you, your
` 9 Honor. Derek Vandenburgh and Peter Kohlhepp for
`10 patent owner.
`11 THE COURT: All right. Thank you,
`12 Mr. Vandenburgh.
`13 So as we indicated in the invitation
`14 for this conference call, this was in response to
`15 the parties' submissions for a request for oral
`16 hearing.
`17 We did see that patent owner
`18 requested live testimony in this case, which we've
`19 done I believe once before, but we do have a
`20 presidential case that I believe you're relying
`21 on.
`22 Why don't we start with that issue,
`23 and Mr. Vandenburgh, I'll let you start it since
`24 it was patent owner's request. Then have
`25 Mr. Morton respond.
`
`Page 5
`
`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`Page 4
`
`Page 6
`
` 1 And once we address the live
` 2 testimony issue, perhaps we can briefly touch on
` 3 any other issues relating to logistics.
` 4 Does that sound like a workable
` 5 plan?
` 6 MR. VANDENBURGH: Sounds good, your
` 7 Honor.
` 8 THE COURT: All right. You may
` 9 proceed whenever you're ready.
`10 MR. VANDENBURGH: Thank you.
`11 Yeah. This is Mr. Vandenburgh.
`12 Just four quick points following the presidential
`13 case on this issue.
`14 First of all, of course this is an
`15 important family of patents relating to an
`16 important dispute between Teleflex and Medtronic.
`17 And we simply think it makes sense for the board
`18 to have all of the evidence as best as they can to
`19 reach the correct decision in this case.
`20 It also makes sense because this
`21 issue of prior invention is dispositive for many
`22 issues in this case. A ruling of course in patent
`23 owner's favor would completely resolve 5 of the 11
`24 IPRs and roughly half of 2 other IPRs.
`25 And of course the flip side is maybe
` 1 not to the same extent, but is somewhat true as
` 2 well. There are claims we have not disputed would
` 3 be anticipated if the veto reference is prior art.
` 4 So that's two.
` 5 Thirdly, of course when -- this is
` 6 not an expert witness. This is fact witness
` 7 testimony. And, you know, this issue of prior
` 8 invention could in fact turn on the credibility of
` 9 Teleflex's witnesses and particularly Mr. Root as
`10 the primary witness that we're relying on.
`11 You know, the petitioner has couched
`12 his arguments more in terms of corroboration than
`13 in terms of credibility, but at some point it is
`14 hard to distinguish between those two things and I
`15 think it is important for the board to hear
`16 Mr. Root directly explain why his testimony
`17 regarding prior -- you know, conception, reduction
`18 to practice is corroborated by the documents that
`19 were, you know, able to be obtained in this case
`20 after all these years relating specifically to the
`21 VSI business, the original patent owner.
`22 And that kind of leads to the last
`23 point, your Honor, which I think it is important
`24 for the Board to understand that all companies are
`25 different, the way they develop new products.
`
`Page 7
`Page 4 (4 - 7)
`
`

`

`Phone Conference - 2/2/2021
`Medtronic, Inc., and Medtronic Vascular, Inc. vs. Teleflex Innovations S.A.R.L.
`
` 1 The petitioner put in an expert
` 2 declaration on this issue that purports to talk
` 3 about how all medical products companies do their
` 4 product development. It kind of came out at
` 5 deposition that in fact they're not all the same.
` 6 But that's where I think it is
` 7 important to hear from Mr. Root to hear how they
` 8 did it, why these documents make sense and
` 9 corroborate the prior invention in terms of how
`10 VSI successfully ran its business and also to
`11 explain why some of the things that their experts
`12 tried to speculate about, for example that, you
`13 know, certain prototype parts might have been for
`14 some completely different product or for the
`15 over-the-wire version of this invention just
`16 really does not make sense, again, from the
`17 standpoint of somebody who lived through this and
`18 knows what these documents are about.
`19 So I think this is one of those rare
`20 cases where hearing live testimony does make
`21 sense. That's all I have.
`22 THE COURT: Thank you.
`23 Mr. Morton, you can proceed.
`24 MR. MORTON: Yes, your Honor. Thank
`25 you.
` 1 I have I think three general points,
` 2 which I'll then elaborate on each one.
` 3 First, you Honor, I'd say we are
` 4 just concerned that patent owner just wants to
` 5 illicit new evidence at the hearing. Set a new
` 6 story.
` 7 Second, without knowing exactly what
` 8 the proposed testimony would be, it's hard to
` 9 argue about whether credibility is actually at
`10 issue, and hard to prepare for the hearing.
`11 Third, there has not been a showing
`12 that any proposed testimony is case dispositive,
`13 which is a key factor in whether testimony should
`14 be allowed.
`15 So on the first point, your Honor,
`16 about new evidence, of course we've already had a
`17 trial, and Mr. Root testified and was crossed and
`18 redirected on Zoom. And that was recorded so that
`19 is all available.
`20 Now it just seems like patent owner
`21 wants the opportunity to do it again as if this
`22 were a trial in District Court, and just to have
`23 carte blanche to ask Mr. Root anything about
`24 conception, reduction to practice and illicit new
`25 testimony we'll hear for the first time at the
`
`Page 8
`
` 1 hearing.
` 2 And of course as the Board well
` 3 knows, there's usually no evidence at a P-TAB
` 4 hearing. At every turn here patent owner has
` 5 wanted to put in new evidence. They wanted new
` 6 surreply evidence when we discussed the briefing
` 7 on this with the Board last September.
` 8 Less than a month ago patent owner
` 9 was seeking more words and possibly more evidence
`10 because of their incorporation by reference issue.
`11 And now they want live testimony to just talk
`12 about this. And that's not how P-TAB trials are
`13 supposed to go. We've had a lot of process, spent
`14 a lot of time already.
`15 Second, your Honor, I have tried to
`16 figure out what the testimony will be about. So
`17 on the meet and confer I was told only that
`18 Mr. Root would testify to "a recollection of what
`19 happened and corroboration."
`20 Well, a recollection of what
`21 happened doesn't tell me anything of course, your
`22 Honor. And corroboration is not something that
`23 can come from Root, an inventor. So that to me is
`24 just wrong.
`25 In the request for live testimony,
`Page 10
` 1 patent owner, again they raised two issues. Again
` 2 one was corroboration, and Mr. Root cannot
` 3 corroborate himself or his story. He's an
` 4 inventor.
` 5 They also mentioned documents relies
` 6 on, this issue that Mr. Vandenburgh brought up
` 7 again just now, about whether orders for certain
` 8 parts might have related to other products that
` 9 were in development at the time.
`10 And I don't think we have, you know,
`11 directly said Mr. Root is lying on this topic. We
`12 have pointed out that a lot of the parts are
`13 generic and could be for other products. And if
`14 that's really all this is about is his testimony
`15 that those parts are for the rapid exchange
`16 version of GuideLiner, we don't need live
`17 testimony. He already testified to that. And his
`18 cross and redirect is recorded on Zoom.
`19 So if it's more than that, that's
`20 where I have a problem. I don't think you should
`21 be able to testify as to corroboration generally.
`22 That doesn't come from an inventor and there
`23 shouldn't be new evidence or surprise at a P-TAB
`24 trial.
`25 Third, your Honor, that issue about
`
`Page 11
`Page 5 (8 - 11)
`
`Page 9
`
`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`

`

`Phone Conference - 2/2/2021
`Medtronic, Inc., and Medtronic Vascular, Inc. vs. Teleflex Innovations S.A.R.L.
`
` 1 what the parts were for is not in and of itself
` 2 dispositive. Mr. Vandenburgh argues that the
` 3 whole issue of conception, reduction to practice
` 4 could be dispositive for some IPRs, and I agree
` 5 with that. But even if those parts were for the
` 6 rapid exchange version of GuideLiner and were
` 7 received, there's still no evidence they were
` 8 assembled or tested or worked for the intended
` 9 purpose. So that one topic alone is not
`10 dispositive.
`11 So in conclusion, your Honor, I do
`12 understand that this is an area where there has
`13 been live testimony ordered in the past, it has
`14 happened. But we have very limited time at this
`15 hearing given how many issues have been raised,
`16 and so we don't want an hour of it to go to
`17 rehashing a small issue that's been fully vetted
`18 in the trial phase. And we don't think it's
`19 appropriate to give patent owner an open
`20 invitation and have Mr. Root just show up and try
`21 to tell a better story than what he already told.
`22 And it won't even be live, your
`23 Honor. It will be over Zoom again. I mean how
`24 much better is it going to be than the Zoom
`25 testimony we have in terms of judging credibility.
`Page 12
` 1 So if there is any testimony, your
` 2 Honor, it should be very limited and specific to a
` 3 well-defined points that the Board deems is
` 4 appropriate and that we know about. And it should
` 5 take up as little time as possible.
` 6 And so that's our position right now
` 7 is that patent owner has not demonstrated a need
` 8 for any testimony. And again, if there was any,
` 9 it should be very limited, very well disclosed
`10 what we're going to be talking about, and we would
`11 rather not use our, you know, precious time at
`12 this hearing on this point.
`13 That's all I have, your Honor.
`14 THE COURT: All right. Thank you,
`15 counsel.
`16 Just going back to patent owner's
`17 counsel, could you speak, Mr. Morton about -- I'm
`18 sorry, Mr. Vandenburgh about what you were
`19 contemplating in terms of the logistics, how -- if
`20 we were to grant live testimony of Mr. Root, how
`21 would you present that testimony and what would
`22 cross-examination look like and would you also
`23 want some type of redirect?
`24 Could you go through what you have
`25 in mind.
`
`Page 13
`
` 1 MR. VANDENBURGH: Yep. Yeah.
` 2 So as Mr. Morton mentioned, we have
` 3 gotten fairly adept in the last 8, 10 months in
` 4 taking testimony via Zoom. We would -- we're
` 5 assuming that this final hearing will be done via
` 6 Zoom and so we think it's a simple enough matter
` 7 to have a court reporter on, have Mr. Root come
` 8 on, put him under oath and have him testify on the
` 9 Zoom.
`10 I do think an important part of his
`11 testimony is going to be going through the
`12 exhibits, and I guess I don't know if we've
`13 totally locked down that -- that down, but I would
`14 sort of envision having, you know, make sure he's
`15 got a binder of all the exhibits with the exhibit
`16 numbers. I assume the Board will have the same,
`17 and that he can kind of walk through the important
`18 exhibits.
`19 And yeah, I do foresee a -- you
`20 know, we suggested 30 minutes per side. I
`21 definitely would want to reserve some of that time
`22 for rebuttal testimony. Again we do, you know,
`23 obviously we want to explain his declaration in
`24 the context of the arguments raised by, again,
`25 petitioner's expert who never worked at VSI but
` 1 seems to know how VSI does its new product
` 2 development, and have him explain why those
` 3 speculations are incorrect. But again, sticking
` 4 closely to what is in his declaration. And then
` 5 have time to provide perhaps 10 minutes rebuttal
` 6 testimony after petitioner finishes up.
` 7 Is that clear enough at this point?
` 8 THE COURT: It does. So from
` 9 your -- I'm sure you're aware of the prior
`10 presidential case that we had where we did allow
`11 live testimony and, you know, in that case the
`12 Board only allowed cross-examination and redirect
`13 to specifically avoid the concern I believe that
`14 Mr. Morton raised, which is new evidence at the
`15 point of the hearing.
`16 MR. VANDENBURGH: Could I jump in on
`17 that point, your Honor?
`18 THE COURT: Yes, please.
`19 MR. VANDENBURGH: I know that that
`20 is what the K40 case says, but I don't think
`21 that's how it actually worked out at the hearing,
`22 and it makes sense that it doesn't because when
`23 you have an opposing party who doesn't want the
`24 testimony, if you just basically say, well, you
`25 know, let the petitioner go first, they just say
`
`Page 14
`
`Page 15
`Page 6 (12 - 15)
`
`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`

`

`Phone Conference - 2/2/2021
`Medtronic, Inc., and Medtronic Vascular, Inc. vs. Teleflex Innovations S.A.R.L.
`
` 1 they have no questions and that's the end of it.
` 2 So just looking back, I don't think
` 3 I've actually maybe seen the transcript, but I was
` 4 reading a news article on the case and it does
` 5 sound like there was in fact a direct examination,
` 6 again hewing very closely to the evidence that was
` 7 presented -- or initially presented with the
` 8 briefing, but it did start with direct testimony.
` 9 THE COURT: Okay. And do you
`10 anticipate that the direct testimony would just be
`11 mimicking or mirroring what we have in terms of
`12 the declaration, or are you anticipating
`13 addressing issues beyond the declaration at this
`14 point?
`15 MR. VANDENBURGH: Well, it's
`16 100 percent going to be addressing issues that are
`17 in the declaration. I'm assuming the Board
`18 doesn't really want us to get up there and just
`19 read his declaration.
`20 And again, I think it's important to
`21 talk about what is in his declaration, but in the
`22 context of the arguments that have been raised by
`23 petitioner's counsel.
`24 So I guess I -- my feeling is the
`25 answer is somewhere in between, and certainly if
`Page 16
` 1 Mr. Morton thinks that we are straying from what
` 2 is in his declaration, he can certainly object at
` 3 that time.
` 4 MR. MORTON: Your Honor, if I could
` 5 respond. This is Mr. Morton.
` 6 THE COURT: Briefly, Mr. Morton.
` 7 THE WITNESS: So briefly I mean I
` 8 guess I do agree if there was any live testimony,
` 9 I mean I think it makes sense for them to go first
`10 and then we to cross. I'll agree with
`11 Mr. Vandenburgh on that.
`12 Beyond that, he has simply repeated
`13 that he wants Mr. Root to testify as to
`14 corroboration, which Mr. Root cannot provide. He
`15 said he wanted Mr. Root to respond to our expert,
`16 what our expert has said. Again that's not the
`17 role of a fact witness. We don't have any issue
`18 at play here that goes to credibility.
`19 And we are just going to hear a
`20 rehash of what's in his declaration apparently,
`21 which we already have the declaration. I already
`22 crossed him on that and he's redirected on that.
`23 So I don't see that there's been any showing here
`24 for why we need the extraordinary remedy still of
`25 live testimony.
`
`Page 17
`
` 1 THE COURT: All right. Thank you,
` 2 Mr. Morton.
` 3 Mr. Vand --
` 4 MR. VANDENBURGH: I don't want to
` 5 keep dragging this out, but I'm happy to respond.
` 6 THE COURT: I would like you to
` 7 address one key issue. Right. So, you know, we
` 8 do have, you know, Mr. Root's declaration
` 9 testimony and his cross-examination that will be
`10 part of the record already.
`11 Could you perhaps then address what
`12 additional benefit, you know, in terms of
`13 credibility assessment, I think that was a point
`14 that was made in the prior presidential case, we
`15 can look at out of live testimony.
`16 What's the credibility issue that we
`17 need to perhaps assess that might necessitate live
`18 testimony here?
`19 MR. VANDENBURGH: Well, I think
`20 there are, you know, a couple of things.
`21 Again one is this issue that they've
`22 made of whether or not the prototype parts that
`23 were bought were in fact for this project as
`24 opposed to some other project.
`25 Another one of the key issues though
` 1 is did this company in fact show that these
` 2 prototypes that they built worked for their
` 3 intended purpose. And one of the key issues that
` 4 has become a big deal here is the issue of what is
` 5 reflected by a company starting its -- a medical
` 6 product company starting its quality process.
` 7 You know, they've taken the position
` 8 that you don't -- you haven't reduced it to
` 9 practice at that point, that everything should be
`10 in the design history file as part of the quality
`11 process before you can reduce something to
`12 practice.
`13 And one of the key credibility
`14 issues is Mr. Root's testimony, and it is
`15 corroborated and we will have him explain where
`16 the corroboration comes from and why it comes
`17 from, but in fact within the way that VSI ran its
`18 business it's exactly the other way around. They
`19 didn't start the quality process until they had
`20 determined that a new product would work for its
`21 intended purpose. And so the fact that that
`22 quality process was started prior to the critical
`23 date is one of those key facts that corroborates
`24 reduction to practice here.
`25 THE COURT: And that last point that
`
`Page 18
`
`Page 19
`Page 7 (16 - 19)
`
`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`

`

`Phone Conference - 2/2/2021
`Medtronic, Inc., and Medtronic Vascular, Inc. vs. Teleflex Innovations S.A.R.L.
`
` 1 you made, is that already in the record somewhere?
` 2 And I'm trying to say like, you know, we're coming
` 3 up to the hearing, right, so the evidence in the
` 4 record should already be pretty much in the
` 5 record.
` 6 MR. VANDENBURGH: It is in the
` 7 record, but --
` 8 THE COURT: Yeah. I'm trying to
` 9 figure out what -- if you point to where in the
`10 record we can glean that evidence, what's the
`11 benefit of Mr. Root providing live testimony in
`12 that issue -- if that issue is --
`13 MR. VANDENBURGH: It's like any
`14 other credibility and ultimate factual issue that
`15 needs to be decided, your Honor.
`16 Yes, it will be decided based on,
`17 you know, all of the evidence that's in front of
`18 the Board but hearing a live witness talk about
`19 it, I mean that's why we have ultimately, you
`20 know, evidentiary trials on fact issues because
`21 hearing witnesses and hearing their demeanor,
`22 hearing the color that goes around their
`23 assertions, is important.
`24 You know, the K40 case kind of makes
`25 a distinction between fact issues the experts are
` 1 involved in, and I think it says something along
` 2 the lines of, you know, typically those issues
` 3 turn on the soundness of the theories being
` 4 asserted by the experts, as opposed to a fact
` 5 issue like prior invention where it does
` 6 ultimately turn on whether what the witnesses are
` 7 saying makes sense in the context of the evidence.
` 8 THE COURT: All right. Let me put
` 9 the parties on hold and confer with the panel.
`10 (Hold.)
`11 THE COURT: Okay. Counsel, I did
`12 confer with our panel members and we're going to
`13 take the request for live testimony under
`14 advisement, and we'll issue our ruling on that as
`15 part of our hearing order.
`16 I did want to get the parties' input
`17 on the logistics and timing for the other hearing
`18 issues, and specifically, you know, any thoughts,
`19 comments on what the schedule would look like in
`20 the event that we don't allow live testimony?
`21 We do have all day reserved for
`22 March 8th, but I would like to make sure we're
`23 using our time as sufficiently as possible that
`24 day.
`25 So, you know, we are in receipt of
`
`Page 21
`
`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`Page 20
`
`Page 22
`
` 1 the parties' request for oral hearing, and I
` 2 notice that there's some slight differences. It
` 3 appears that the parties are in agreement for 30
` 4 minutes per side on addressing the motion to
` 5 amend.
` 6 I see that leaving aside the live
` 7 testimony issue, patent owner wants about 60
` 8 minutes on the conception and reduction to
` 9 practice. And then with respect to the 102, 103
`10 issues, petitioner wants about 120 minutes on the
`11 102, 103 issues versus patent owner's request for
`12 90 minutes.
`13 So perhaps, again I'll go in the
`14 same sequence I started off with. So if patent
`15 owner can address a timeline issue, then I'll let
`16 petitioner respond.
`17 MR. VANDENBURGH: Right. Thank you,
`18 your Honor. This is Mr. Vandenburgh.
`19 I don't know how much more I have to
`20 add. The one thing I will say on the conception,
`21 reduction to practice we put down 60 minutes aside
`22 for oral argument. I will acknowledge I am
`23 certain that that much time is necessary.
`24 Of course the briefing has not been
`25 completed on this. The petitioner has one more
` 1 brief to go and we don't know what they're going
` 2 to say there.
` 3 I don't think 30 minutes is enough,
` 4 especially since I expect both sides are going to
` 5 want to reserve some time for rebuttal. You know,
` 6 cutting the difference and saying 45 I think would
` 7 be reasonable, but again I wouldn't want to be
` 8 kept as short as 30 on this, again, important
` 9 dispositive issue.
`10 Then as you say we're in agreement
`11 on the motions to amend, and then it simply comes
`12 down to are we going to do 90 minutes or 120
`13 minutes on the merit issues of 102, 103.
`14 And again in some sense I leave it
`15 to the Board. I don't know how long -- you know,
`16 going to do it in one day and with breaks and
`17 whatnot, we're certainly willing to go as long as
`18 need be, but we think we could get done what we
`19 need to get done in 90 minutes a side.
`20 THE COURT: All right. Thank you,
`21 Mr. Vandenburgh.
`22 Mr. Morton, any comments on the rest
`23 of the schedule?
`24 MR. VANDENBURGH: Cy, I think you
`25 might be on mute again.
`
`Page 23
`Page 8 (20 - 23)
`
`

`

`Phone Conference - 2/2/2021
`Medtronic, Inc., and Medtronic Vascular, Inc. vs. Teleflex Innovations S.A.R.L.
`
` 1 MR. MORTON: You are correct,
` 2 Mr. Vandenburgh. Let me start from the top.
` 3 You know, on CRTP, your Honor, I
` 4 feel like a, you know, basic IPR usually you get
` 5 30 minutes to argue, so it seems like that should
` 6 be enough but I don't -- I'm not militant on the
` 7 subject of, you know, 30 minutes versus 45 minutes
` 8 on the conception, reduction to practice.
` 9 And on the motions to amend, as you
`10 said, we kind of agree. There's only so many
`11 hours in the day so half an hour on that.
`12 The rest of it I do think is 11 IPRs
`13 and I think there's been a lot of issues raised by
`14 patent owner so I did want to get as much time as
`15 we could get on the core merits of the case. Sort
`16 of depends whether the Board has six hours
`17 available or seven hours or what a full day is.
`18 But we are trying to get as much time as we can on
`19 that.
`20 My only other comment on logistics
`21 there I think is, you know, I'm assuming we would
`22 do rebuttals and surrebuttals on conception,
`23 reduction to practice at that time. And the same
`24 for motions to amend.
`25 On the merits, you know, there are a
` 1 lot of issues and, you know, it has broken down
` 2 between Itou combinations and Ressemann
` 3 combinations and Kontos combinations and claim
` 4 construction.
` 5 So, you know, neither side proposed
` 6 breaking that up at all. We proposed just arguing
` 7 literally everything and the other side argues
` 8 literally everything, and then rebuttal and
` 9 surrebuttal.
`10 And I think that is a fair question
`11 for what would be best for the Board if we wanted
`12 to at all further break down, and you know, let
`13 the parties use the time as they see fit, but do
`14 we want to break it up a little bit more so we
`15 have a little more back and forth and the Board
`16 can focus on those issues.
`17 I could go either way on it. It's
`18 really a board preference that I just raised.
`19 THE COURT: Thank you, Mr. Morton.
`20 I'll confer with my panel members, and we can make
`21 a call on that at some point. And I appreciate
`22 the parties' input on the hearing logistics.
`23 Let me again put the parties on hold
`24 and see if there's any other comments that you
`25 have.
`
`Page 25
`
`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`Page 24
`
`Page 26
`
` 1 (Hold.)
` 2 THE COURT: This is Judge Paulraj.
` 3 We don't have any further comments.
` 4 Like I said, we will issue -- we've
` 5 taken the parties' arguments under advisement and
` 6 we'll issue a ruling on the live testimony issue
` 7 and also provide some guidance on the hearing
` 8 logistics in our hearing order.
` 9 Again, Mr. Morton, if you could make
`10 a transcript of this conference call available as
`11 soon as it's ready, we'll certainly go back to the
`12 transcript of this conference call in case we had
`13 any questions or we just wanted to go back to what
`14 the parties said about the respective issues.
`15 MR. MORTON: Yes, your Honor.
`16 Can I ask one more question? I
`17 apologize, your Honor.
`18 THE COURT: Go ahead. Yes.
`19 MR. MORTON: I have not done a zoom
`20 hearing with the Board. And so I'm just -- maybe
`21 this will be in your hearing order, but just
`22 curious about what the platform is and whether
`23 you're able to host that for all the people
`24 involved.
`25 And also curious about slide
` 1 presentation, if that's something you expect to
` 2 just do through the platform? If we can or should
` 3 send hard copies of the slides in advance in case
` 4 there's any issues with the platform or screen
` 5 sharing, just those kind of logistics.
` 6 And if the Board already has that
` 7 worked out and it's in the order, great, but I
` 8 haven't been through it so I wanted to ask.
` 9 THE COURT: Sure. No, that's a good
`10 question, Mr. Morton. Some of that is probably
`11 beyond my technical expertise. We will include
`12 some guidance in the hearing order.
`13 I can tell you at least with the
`14 virtual hearings that we've had so far, the
`15 standard practice is not to share demonstrative on
`16 the screen. We will have copies of the
`17 demonstrative that the parties will submit and
`18 we'll certainly go through those demonstratives
`19 and follow along. And as is stand