From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Morton, Cyrus A.
`Director_PTABDecision_Review; Precedential_Opinion_Panel_Request
`Peter M Kohlhepp; Pinahs, Christopher A.; Derek Vandenburgh; Joe W Winkels; Roberg-Perez, Sharon E.;
`Manske, William E.; Tara C. Norgard; Megan Christner; Dornberger, Ryan E.; Tacheny, Michele M.; Miller, Austin
`B.
`IPR 2020 - 126, 128, 132, 134, 135, 137
`Wednesday, July 21, 2021 5:56:04 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
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`
`Dear Director and Precedential Opinion Screening Committee:
`
`I represent Petitioner Medtronic, Inc., and Medtronic Vascular, Inc., in the six above-referenced
`IPRs. The Board issued final written decisions on June 7, 2021. We now seek Rehearing by the
`Director and POP Review. The Director granted a two-week an extension of time for this
`request to July 21, 2021.
`
`The Board found that Patent Owner swore behind the lead reference, Itou. Accordingly, the
`Board found none of the claims were shown to be unpatentable.
`
`The Board’s FWD misapplies Federal Circuit law regarding corroboration of inventor
`testimony. Specifically, for the second step of the reduction to practice test, demonstrating that
`the invention would work for its intended purpose, the Board relied solely on inventor
`testimony. There are no documents showing testing of the alleged prototypes. And the Board’s
`decision relies on, at most, only one corroborating witness, a co-employee, who provided no
`details regarding testing and was not cited by the Board for that purpose.
`
`Additionally, the Board found diligence despite little to no engineering work over an eight
`month period. The Board ignored months-long gaps in Patent Owner’s diligence timeline that
`negates a finding of “reasonably continuous” activity under prevailing law.
`
`Based on my professional judgment, I believe the Board’s FWD is contrary to the following
`decision(s) of the Supreme Court of the United States, the United States Court of Appeals for
`the Federal Circuit, or the precedent(s) of the Board: Medichem, S.A. v. Rolabo, S.L., 437 F.3d
`1157 (Fed. Cir. 2006); Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320 (2019); ATI Techs.
`ULC v. Iancu, 920 F.3d 1362 (Fed. Cir. 2019).
`
`Further, based on my professional judgment, I believe this case requires an answer to one or
`more precedent-setting questions of exceptional importance, including the following:
`
`1.
`
`Whether it is error to rely on solely inventor testimony, without
`corroborating documents or non-inventor testimony, to find that the inventor
`determined that the invention would work for its intended purpose and, as a
`result, reduced to practice.
`2. Whether testimony from interested parties, including non-inventors, alone,
`can be sufficient to corroborate inventor testimony related to reduction to
`practice.
`Under what circumstances will a patent owner’s evidence sufficiently
`
`3.
`
`IPR2020-00126, -00128, -00132,
`-00134, -00135, -00137
`Ex. 3100 p. 1 of 2
`
`

`

`demonstrate “reasonably continuous” activity to establish diligence in
`reducing an invention to practice where the record does not account for
`entire months during the critical time period?
`
`For the reasons above and as described in more detail in the rehearing petition, Patent Owner
`respectfully requests that a Precedential Opinion Panel be convened to rehear and assess the
`question described in this email. Patent Owner is available to provide additional briefing on this
`question before the Precedential Opinion Panel should it desire additional briefing.
`
`Counsel of record for Petitioner are copied on this email.
`
`Respectfully submitted,
`Cyrus A. Morton
`Counsel for Petitioner
`
`Cyrus A. Morton
`Chair, Patent Office Trials Group
`
`800 LaSalle Avenue | Suite 2800 | Minneapolis, MN 55402
`Direct Dial: 612.349.8722
`Mobile: 612.710.7778
`Email: cmorton@robinskaplan.com
`Bio: http://www.robinskaplan.com/lawyers/cyrus-morton
`
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`
`Thank you in advance for your cooperation.
`
`Robins Kaplan LLP
`http://www.robinskaplan.com
`____________________________________________________
`
`IPR2020-00126, -00128, -00132,
`-00134, -00135, -00137
`Ex. 3100 p. 2 of 2
`
`