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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.,
`Petitioner,
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`v.
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`TELEFLEX INNOVATIONS S.À.R.L.,
`Patent Owner.
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`Case IPR2020-00127
`Patent 8,048,032
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`PETITIONERS’ REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`IPR2020-00127
`Patent 8,048,032
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`Medtronic had no obligation to address secondary considerations in its
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`Petition. Instead, Teleflex, as the Patent Owner, has the burden of production on
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`that issue. Teleflex’s positions on secondary considerations—which are not even
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`supported by expert testimony—have not been fully developed, let alone
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`adjudicated, in Court or the Patent Office. Nor has Teleflex identified any authority
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`requiring a Petitioner to address secondary considerations absent those instances.
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`Thus, secondary considerations should not be addressed until the trial phase.
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`The Board has repeatedly rejected arguments that a petition must address
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`secondary considerations, including in cases involving allegations far more
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`developed than the miscellaneous assortment of evidence presented here. In
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`Lowe’s Co. v. Nichia Corp., the Board granted institution and found that the
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`Petitioner did not have to address evidence of secondary considerations even
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`though the District Court’s findings of fact previously credited that evidence.
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`IPR2017-02011, Paper 12 at *4-6, 55-58 (POPR), Paper 13 at *18 (PTAB Mar. 12,
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`2018) (Institution Decision); see also Petroleum Geo-Services Inc. v. W.
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`Geco LLC, IPR2014-01477, Paper 12 at *40-41 (POPR), Paper 18 at *32
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`(PTAB Mar. 17, 2015) (Institution Decision). Similarly, in C & D Zodiac, Inc. v.
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`b/e Aerospace, Inc., the Board concluded that a petition need not “introduce and
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`address such secondary considerations evidence” that was “discovered during the
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`co-pending litigation.” IPR2017-01275, Paper 12 at *15 (PTAB Oct. 31, 2017).
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`IPR2020-00127
`Patent 8,048,032
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`Indeed, the Board rejected the same arguments from Teleflex’s counsel in
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`Arctic Cat, Inc. v. Polaris Industries Inc., IPR2017-00433, Paper 17 at *9-10
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`(PTAB July 5, 2017). The Board explained that “Patent Owner does not identify,
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`nor are we aware of any persuasive authority requiring Petitioner in this case to
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`address secondary considerations, not previously presented to the Office, in the
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`Petition.” Id. at *10. Instead, “the burden of production rests on Patent Owner with
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`regard to secondary considerations.” Id. Thus, the Board found that “full
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`consideration of evidence of secondary considerations of this nature is not
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`necessary” before institution. Id. at *19.
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`Teleflex’s arguments are no more compelling here. Again, Teleflex’s
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`counsel identifies no authority for requiring a Petitioner, such as Medtronic, to
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`address evidence of secondary considerations, absent a decision by the Patent
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`Office, ITC, or District Court crediting that evidence. See, e.g., Stryker Corp. et al.
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`v. KFx Med., LLC, IPR2019-00817, Paper 10 at *27-28 (PTAB Sept. 16, 2019)
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`(“[S]econdary considerations evidence was developed fully during the Arthrex
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`Litigation, and the Federal Circuit affirmed the jury’s verdict”); Robert Bosch Tool
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`Corp. v. Sd3, No. IPR2016-01753, Paper, at *12 (PTAB Mar. 22, 2017) (“[A]fter
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`development of the record at the ITC, including cross-examination, the
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`Administrative Judge determined that the evidence of secondary considerations
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`was ‘very strong’ in favor of Patent Owner.”); Gilead Sciences, Inc. v. United
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`IPR2020-00127
`Patent 8,048,032
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`States, IPR2019-01453, Paper 14 at *26-27 (PTAB Feb. 20, 2020) (“[W]ell-
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`developed evidence of” secondary considerations “was key to the allowance of the
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`claims”); Coal. for Affordable Drugs V LLC v. Hoffman-LaRoche Inc., IPR2015-
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`01792, Paper 14 at 17-18 (PTAB Mar. 11, 2016) (pointing to “objective indicia of
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`nonobviousness presented to the Office during the prosecution”). None of those
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`circumstances are present here.
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`The Patent Office never addressed secondary considerations during
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`prosecution of this patent. See Exs. 1402-1403. Nor have secondary considerations
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`even been raised by Teleflex in litigation against Medtronic, let alone fully
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`developed or adjudicated. None of Teleflex’s identified exhibits even mention
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`“secondary considerations.” Instead, an expert report from a different case discuses
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`infringement (Ex. 2056); a declaration from Teleflex’s preliminary injunction
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`briefing addresses purported irreparable harm (Ex. 2043); and an interrogatory
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`response sets forth Teleflex’s alleged market share (Ex. 2059). Teleflex argues that
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`Medtronic should have cobbled together disparate disclosures from these types of
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`exhibits to make Teleflex’s argument for it. Requiring petitioners to engage in
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`guessing games would waste the parties’ and the Board’s resources. Under these
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`circumstances, Medtronic did not have to raise secondary considerations in its
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`Petition. The Board should grant institution and reject Teleflex’s attempt to shift
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`the initial burden on secondary considerations to Medtronic.
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`IPR2020-00127
`Patent 8,048,032
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`Dated: April 24, 2020
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`Respectfully submitted,
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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 Patent Owner
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`IPR2020-00127
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on April
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`24, 2020, a copy of PETITIONERS’ REPLY TO PATENT OWNER’S
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`PRELIMINARY RESPONSE was served in its entirety by electronic mail on
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`Patent Owner’s counsel at the following addresses indicated in Patent Owner’s
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`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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`Dated: April 24, 2020
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`Respectfully submitted,
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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 Patent Owner
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