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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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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
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`v.
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`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
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`Case IPR2020-0126, IPR2020-0127
`U.S. Patent No. 8,048,032
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`PATENT OWNER RESPONSE TO PETITIONER’S EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
`RANKING FOR U.S. PATENT NO. 8,048,032
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`Petitioners Medtronic, Inc. and Medtronic Vascular, Inc. (collectively
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`“Medtronic”) filed two separate petitions against the ’032 patent, challenging a
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`total of only 21 claims.
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`Medtronic’s strategic choice to rely on a section 102(e) reference does
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`not justify institution of multiple petitions. Medtronic contends it needs two
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`petitions because Teleflex is asserting an invention date that pre-dates the Itou
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`reference (Ex. 1007). Paper 3 at 1-3. Teleflex did invent before the priority date
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`of Itou. Indeed, Itou’s prior art status is at issue in the parallel district court
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`litigation, and Medtronic was aware of substantial corroborated evidence showing
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`Teleflex’s prior invention before it filed its Petitions. Nevertheless, Medtronic
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`chose to rely on a § 102(e) reference and did not even try to address the issue of
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`Teleflex’s invention date in its Petitions. Thus, this is not one of the “rare” cases
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`in which “two petitions by a petitioner may be needed.” November 2019
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`Consolidated Trial Practice Guide (“TPG”) at 59. Where, as here, a Petitioner
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`proceeds with filing petitions relying on a primary reference that it knows full-well
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`is likely to be antedated, multiple petitions are not justified.
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`Medtronic cites Microsoft Corp. v. IPA Techs Inc., IPR2019-00810, Paper
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`12 (PTAB Oct. 16, 2019). See Paper 3 at 2. But Microsoft was different. First,
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`the petitioner in Microsoft explained that the “main difference” between its
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`petitions was that each petition challenged different claims. Microsoft, IPR2019-
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`00810, Paper 12 at 12. Thus, denying one of the petitions would completely
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`eliminate the petitioner’s opportunity to challenge those claims. Here, in contrast,
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`Medtronic filed two petitions attacking the same claims based on different
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`references. Second, while Medtronic is correct that there was a potential dispute
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`about the priority date of Microsoft’s Kiss reference, the petitioner explained that
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`“the same analysis of the combination of Kiss/FIPA97 is the basic prior art
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`challenge to every claim in each petition.” Id. Paper 9 at 1-2 (emphasis added).
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`Thus, if the Kiss reference was found to not qualify as prior art, all of the petitions
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`would fail. Consequently, the petitioner’s filing of multiple petitions was clearly
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`not intended to provide a “back-up” petition because of a potential priority issue.
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`Medtronic’s reliance on Microsoft is inapt. Indeed, the Board routinely
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`declines to institute multiple petitions, even where there is a priority date dispute.
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`See, e.g., Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2019-01354,
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`Paper 10 at 6 (PTAB Jan. 27, 2020) (denying institution of two of three petitions
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`where a potential priority dispute existed); Dropbox, Inc. v. Whitserve LLC,
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`IPR2019-01018, Paper 13 at 8-9 (PTAB Nov. 1, 2019) (denying institution of a
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`second petition where parties disputed the priority date of multiple prior art
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`references); Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2019-00279,
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`Paper 10 at 6-7 (PTAB July 1, 2019) (declining to institute four of five filed
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`petitions where a potential priority dispute existed).
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`Medtronic’s strategic choice to include excessive, duplicative challenges
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`to the same claims does not justify institution of two petitions. Medtronic
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`contends that the number and length of the claims requires two petitions. Paper 3
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`at 3-4. But here, the Petitions challenge only a total of 21 claims. This is hardly an
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`unusually high number. Medtronic’s contention that it could not fit all arguments
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`into a single petition is a problem it created itself by failing to judiciously select
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`and streamline its strongest arguments. Again, Medtronic’s reliance on Microsoft
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`is inapposite. Microsoft concerned five petitions challenging 89 claims; here
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`Medtronic uses two petitions to challenge only 21 claims. See Microsoft,
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`IPR2019-00810, Paper 12 at 14. Medtronic’s deliberate drafting choices do not
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`reasonably justify its choice to pursue an overly burdensome, inefficient, and
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`unfairly duplicative attack on the ‘032 patent. See, e.g., Pfenex, Inc. v.
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`GlaxoSmithKline Biologicals SA, IPR2019-01027, P12 at 13-14 (PTAB Nov. 13,
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`2019) (“[T]he mere fact that Petitioner may have had additional art to assert,
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`including a different statutory basis for asserting that art, does not, on these facts,
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`justify the additional burden of a second petition directed to the same claims.”).
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`Instituting both petitions will result in inefficiency and unfairness. As
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`discussed above, Medtronic is aware that Teleflex intends to swear behind Itou,
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`and parallel district court litigation addressing this issue is ongoing. Concurrent
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`adjudication of these issues before the district court and the Board will result in
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`duplicative work, unnecessary and counterproductive litigation costs, the
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`possibility of inconsistent decisions, and will not promote the efficient
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`administration of the Office or the integrity of the patent system. See TPG at 56
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`(the Director must consider “the effect of any such regulation [under this section]
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`on the economy, the integrity of the patent system, the efficient administration of
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`the Office, and the ability of the Office to timely complete proceedings instituted
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`under this chapter”). For the reasons set forth in Patent Owner’s Preliminary
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`Responses to Petitions, the Board should deny both petitions. However, if the
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`Board is inclined to institute trial on any one of the petitions, institution on only the
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`Kontos-based petition (IPR2020-0127) would avoid at least some of these
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`inefficiencies.
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`Dated: April 7, 2020.
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`Respectfully submitted,
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`/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
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`Lead Counsel for Patent Owner
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned certifies that on April 7, 2020, a true and correct copy of the foregoing
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`Patent Owner Response to Petitioner’s Explanation of Material Differences
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`Between Petitions and Petition Ranking for U.S. Patent No. 8,048,032 was served
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`via electronic mail upon the following:
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`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`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
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`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel)
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