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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 IPR2020-00127
`Patent 8,048,032
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`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION TO
`COMPEL OR AUTHORIZE DEPOSITION OF AMY WELCH
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`Patent Owner Teleflex prepared and submitted the declaration of Ms. Amy
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`Welch in the related district court litigation in connection with its motion for a
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`preliminary injunction, and Petitioner Medtronic spent a full day deposing Ms.
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`Welch on the contents of her declaration in that matter. Patent Owner subsequently
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`cited nine discrete paragraphs of Ms. Welch’s district court declaration to support a
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`limited number of statements in its Patent Owner Response. Petitioner now seeks to
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`depose Ms. Welch a second time regarding the basis for her statements cited in
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`Patent Owner’s Response and “potential related omitted information that may refute
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`or undercut Patent Owner’s arguments regarding alleged secondary considerations.”
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`Paper 60 at 1. Petitioner’s first request seeks a purely duplicative deposition
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`concerning the same declaration and the same factual information Ms. Welch has
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`already been deposed on, while Petitioner’s second request is an undisguised attempt
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`to fish for “potential . . . omitted” information that Petitioner speculates may exist
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`and may support Petitioner’s position. Id. (emphasis added). Petitioner’s request to
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`depose Ms. Welch on a declaration that was not prepared for this proceeding is not
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`routine discovery. Instead, it is a wholly speculative request for additional discovery
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`that should be rejected as duplicative, unduly burdensome to the party and witness,
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`and contrary to the just and efficient administration of these proceedings.
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`Petitioner’s requests should be denied in their entirety.
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`1
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`I.
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`A SECOND DEPOSITION OF MS. WELCH CONCERNING A
`DECLARATION THAT WAS NOT PREPARED FOR THIS
`PROCEEDING IS NOT ROUTINE DISCOVERY
`The plain language of 37 C.F.R. § 42.51(b)(1)(ii) clearly and unambiguously
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`indicates that Petitioner’s request to depose Ms. Welch on declaration testimony that
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`was prepared for the district court litigation is not routine discovery. Id. (“Cross
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`examination of affidavit testimony prepared for the proceeding is authorized . . .”)
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`(emphasis added). The “prepared for the proceeding” language was expressly added
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`in a 2015 amendment. Nestle Healthcare Nutrition, Inc. v. Steuben Foods, Inc.,
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`IPR2015-00249, Paper 107 at 4, n.3 (PTAB Oct. 29, 2018) (citing 80 FR 28,561,
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`28,565). Petitioner notes that “no commentary in making this ‘clarifying’
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`amendment was provided by the Office,” (Paper 60 at 3, citing 80 FR 28,563), and
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`argues that this plain language should be ignored. First, Petitioner’s assertion is not
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`accurate. The Office stated that the amendment was made “[t]o clarify that routine
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`discovery includes only the cross-examination of affidavit testimony prepared for
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`the proceeding.” 80 FR 28,563 (emphasis added); see Taylor Made Golf Co., Inc.
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`v. Parsons Xtreme Golf, LLC, IPR2018-00675, Paper 50 at 3 (PTAB Jan. 11, 2019)
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`(citing same). The Office evidenced a clear intent that routine discovery only
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`provides for cross-examination of witnesses who have prepared new testimony for
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`the proceeding. Second, the absence of any additional explanatory commentary does
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`not justify departing from the clear and unambiguous meaning of the plain language:
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`2
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`“testimony” that was not “prepared for this proceeding” is not routine discovery.
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`Indeed, an extensive line of Board decisions supports this straightforward reading of
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`the plain language. E.g., Intel Corp. v. Tela Innovations, Inc., IPR2019-01228,
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`Paper 54 at 4-5 (PTAB Aug. 21, 2020); Taylor Made Golf Co., LLC, IPR2018-
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`00675, Paper 50; Steuben Foods, IPR2015-00249, Paper 107 at 3; Blue Coat Sys,
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`Inc. v. Finjan, Inc., IPR2016-01444, Paper 25 at 3 (PTAB Oct. 6, 2017); 1964 Ears,
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`LLC v. Jerry Harvey Audio Holdings, LLC, IPR2016-00494, Paper 40 at 5-6 (PTAB
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`Jan. 30, 2017); Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc.,
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`IPR2013-00576, Paper 29 at 2-3 (PTAB Aug. 15, 2014); CBS Interactive, Inc. v.
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`Helferich Patent Licensing, LLC, IPR2013-00033, Paper 85 at 2-3 (PTAB Sept. 3,
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`2013) (“[B]ecause Dr. Deri’s declaration is not new testimony prepared for purposes
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`of the instant inter partes review, cross-examination of Dr. Deri is not provided as
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`routine discovery . . . .”) (emphasis added).
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`Petitioner identifies only two decisions that allegedly run contrary to this line
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`of decisions, both of which are distinguishable. First, Ikaria, Inc. v. Geno LLC,
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`IPR2013-00253, Paper 20 at 2 (PTAB Apr. 1, 2014) was decided before the
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`“prepared for this proceeding” language was added to the regulation and contains no
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`explanation or analysis supporting the Board’s conclusion. See Steuben Foods,
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`IPR2015-00249, Paper 107 at 4 (“Ikaria was decided under the previous version of
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`rule 42.51, and for that reason is no longer applicable.”). Second, IBG LLC v.
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`3
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`Trading Techs. Int’l, Inc., CBM2015-00179, Paper 39 (PTAB Apr. 15, 2016)
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`involved a unique and distinguishable set of facts. Petitioner relied on prior
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`testimonial evidence to show that a key reference published in Japanese was publicly
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`available, and thus constitutes prior art. The Board stated that the testimonial
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`evidence was “a pivotal part of Petitioner’s challenges” and found that “[b]ased on
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`the facts of these cases,” Petitioner must secure the availability of the witness. Id. at
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`3. In reaching that conclusion, it is unclear whether the Board allowed the deposition
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`as “routine discovery” or as “additional discovery,” even though a separate motion
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`for additional discovery was not filed. See id. at 2-3. In any event, the testimony at
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`issue in IBG was determinative to the success of Petitioner’s challenges, which is in
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`stark contrast to the testimony in this case, which concerns a limited topic on which
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`several other declarants are available for routine cross examination.
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`Even if the Board believes that, as a matter of policy, cross examination of
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`testimony prepared for other proceedings should be routine discovery, the Board is
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`bound by the plain language of the regulation, which is clear and unambiguous. And
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`even if the Board wished to depart from its well-established line of decisions abiding
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`by this interpretation, this is not the case to do so. Here, the declarant has already
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`been deposed by Petitioner on this testimony. As for Petitioner’s speculative request
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`to depose Ms. Welch in hopes of possibly discovering “potential” omitted
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`information, Petitioner unquestionably seeks new information for which Ms. Welch
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`4
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`is not a declarant, which cannot be routine discovery.
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`II. A SECOND DEPOSITION OF MS. WELCH SEEKING
`DUPLICATIVE TESTIMONY TO PROBE WHETHER
`“POTENTIAL RELATED OMITTED INFORMATION” EXISTS IS
`NOT IN THE INTERESTS OF JUSTICE
`A. A Second Deposition Will Not Generate Useful Information
`The first Garmin factor is whether there exists “more than a possibility and
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`mere allegation” that useful information will be discovered. Garmin Int’l, Inc. v.
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`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6 (PTAB Mar. 5, 2013)
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`(precedential). “The party requesting discovery should already be in possession of
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`evidence tending to show beyond speculation that in fact something useful will be
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`uncovered.” Id. (emphasis added). “Useful” in this context means “favorable in
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`substantive value to a contention of the party moving for discovery”; it does not
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`encompass evidence that is merely “relevant” or “admissible.” Id. at 7. Petitioner
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`seeks to depose Ms. Welch to uncover “potential related omitted information that
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`may refute or undercut Patent Owner’s arguments.” Paper 60 at 1 (emphasis added).
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`The very language of this request reveals that Petitioner is merely speculating that
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`omitted information may exist, and that such information, if it does exist, may
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`possibly refute Patent Owner’s arguments. Petitioner’s unabashedly speculative
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`request falls far beyond the scope of this factor. See, e.g., Intel Corp., IPR2019-
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`01228, Paper 54 at 5-7; St. Jude Med., LLC v. Snyders Heart Valve LLC, IPR2018-
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`00105, Paper 37 at 3-5 (PTAB Oct. 18, 2018) (“Petitioner does not even identify a
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`5
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`contention that might be supported by something in the request[] . . . .”).
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`Petitioner’s reasoning that “Patent Owner apparently finds Ms. Welch’s
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`declaration useful in supporting its case, and thus any opportunity to cross examine
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`that same testimony would be useful and ‘favorable in substantive value’ to
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`Petitioner’s case,” (Paper 60 at 6), runs contrary to the rationale articulated in
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`Garmin. Indeed, accepting Petitioner’s reasoning would create a rule that all
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`declaration testimony offered in any IPR is automatically subject to cross
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`examination, which would completely eviscerate the binding regulation providing
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`that routine discovery only applies to “testimony prepared for the proceeding.” 37
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`C.F.R. § 42.51(b)(1)(ii).
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`Petitioner also seeks to depose Ms. Welch “regarding the basis for her cited
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`statements.” Paper 60 at 1. First, Petitioner has not demonstrated that such inquiry
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`will reveal “useful” information. Second, Petitioner’s assertion that this request is
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`justified because “Ms. Welch has not been deposed specifically regarding secondary
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`considerations topics,” (id.), is simply not true. Petitioner states that Ms. Welch’s
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`declaration is cited in support of four secondary considerations Patent Owner asserts.
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`Id. at 5. But these secondary considerations, as well as the basis for statements in
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`her declaration, were addressed in Ms. Welch’s previous deposition. E.g., Ex-2221
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`at 118:25-120:6 (licensing, market share); 211:1-18 (importance of GuideLiner to
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`overall business); 212:11-213:9 (basis for Ms. Welch’s testimony); 220:13-221:25
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`6
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`(copying); 234:6-237:5 (copying); 239:20-242:7 (basis for Ms. Welch’s testimony);
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`268:10-269:21 (licensing); 269:22-272:8 (copying); 282:16-283:25 (copying);
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`294:10-295:21 (sales, market share, licensing). Petitioner has already questioned
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`Ms. Welch about these topics under oath, which would have revealed any “useful”
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`information if it existed. At this stage, any information obtained on these specific
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`topics during a second deposition will merely be redundant.
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`Petitioner also seeks to challenge Ms. Welch’s credibility, (Paper 60 at 7),
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`but Petitioner had every incentive to challenge Ms. Welch’s credibility when it
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`deposed her on this factual testimony in the district court litigation. Moreover, this
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`goes to the weight of her testimony, rather than its “usefulness.” See Intel Corp.,
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`IPR2019-01228, Paper 54 at 6-7. Thus, Petitioner has failed to show that its
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`request to depose Ms. Welch a second time is likely to produce useful information.
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`B.
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`Petitioner Has Had Numerous Opportunities to Generate
`Equivalent Information By Other Means
`Garmin factor 3 considers the ability to generate equivalent information by
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`other means. Garmin, Paper 26 at 6. Here, Petitioner already had an opportunity
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`to generate the information it seeks. Petitioner has deposed Ms. Welch on the same
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`testimony in the district court litigation. While Petitioner argues that Ms. Welch’s
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`declaration was presented in the context of a motion for preliminary injunction in
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`the district court, (Paper 60 at 7), this is a meaningless distinction. The same facts
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`set out in Ms. Welch’s declaration in support of a preliminary injunction also support
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`7
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`secondary considerations, and, as noted above, Petitioner already questioned Ms.
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`Welch on the topics for which her declaration is cited in this matter. Petitioner had
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`every motivation to probe the underlying bases for these facts as well as Ms. Welch’s
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`credibility the first time it deposed her.
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`Furthermore, Petitioner had
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`the opportunity
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`to generate equivalent
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`information when it deposed Howard Root, the founder and CEO of VSI and a
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`named inventor. Despite Mr. Root having firsthand knowledge of the secondary
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`considerations Patent Owner asserts, Petitioner never even asked Patent Owner
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`whether it could pursue these topics with Mr. Root. Had such a request been made
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`prior to his deposition, Patent Owner would have agreed. Thus, Petitioner has
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`relinquished its opportunity to generate the information it seeks through other means
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`that would have been far less burdensome and far more efficient than arranging and
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`preparing Ms. Welch, an additional witness, for a second, duplicative deposition.
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`Petitioner also has the opportunity to cross-examine several other declarants
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`who offer testimony concerning secondary considerations as part of routine
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`discovery. To the extent Petitioner attempts to characterize Ms. Welch as a key
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`declarant on the issue of nexus, this is simply not true. While Patent Owner cited
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`Ms. Welch’s declaration to support facts indicating that GuideLiner’s success was
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`not due to VSI’s pre-existing position in the market, contrary to Petitioner’s
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`assertion, Ms. Welch does not offer the opinion that GuideLiner’s success “was due
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`8
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`to the patent.” Paper 60 at 5. Indeed, Ms. Welch indicated during her deposition
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`that she has no knowledge regarding the contents of the GuideLiner patents. Ex-
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`2221 at 247:15-248:7. Furthermore, Petitioner already obtained deposition
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`testimony concerning Ms. Welch’s statements about the role of GuideLiner in VSI’s
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`early success. E.g., id at 211:1-5 (“[T]his is our game-changer product. This is the
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`product that gets us in the door. This is a product that’s opened doors for many,
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`many other products.”); 297:17-19 (GuideLiner is used in roughly 2000
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`catheterization labs).
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`Contrary to Petitioner’s implication, the majority of Patent Owner’s
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`testimonial nexus evidence is from the practicing cardiologists Dr. John Graham,
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`Dr. Craig Thompson, and Dr. Lorenzo Azzalini, as well as technical expert Mr. Peter
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`Keith. The depositions of each of these declarants have already taken place, or are
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`scheduled to take place in the coming weeks. Thus, Garmin factor 3 counsels in
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`favor of denying Petitioner’s request.
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`C.
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`Petitioner’s Vague Request Is Not Easily Understandable and
`Seeks Patent Owner’s Litigation Positions
`The second and fourth Garmin factors consider whether the requesting party
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`seeks the other party’s litigation positions and whether the instructions are “easily
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`understandable.” Garmin, Paper 26 at 6-7. Petitioner’s vague request for
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`“potential related omitted information” is not easily understandable, as it is unclear
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`9
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`what specific information Petitioner seeks, and whether such information even
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`exists. Thus, these factors support denying Petitioner’s request.
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`D.
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`Petitioner’s Request for a Duplicative Deposition Is Overly
`Burdensome
`The final Garmin factor assesses whether Petitioner’s request to depose Ms.
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`Welch is overly burdensome. Garmin, Paper 26 at 14. This includes consideration
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`of both financial burden as well as the burden on human resources. Id. Preparing a
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`witness for deposition is not a trivial or inexpensive task. Even preparing for a half-
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`day deposition requires several days of work for Patent Owner’s counsel, as well as
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`the witness, who will be burdened with this preparation in addition to demands and
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`responsibilities of her job and home life. Where, as here, the deposition is purely
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`duplicative and is unlikely to yield useful information, this burden is not justified.
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`III. CONCLUSION
`For the aforementioned reasons, a second deposition of Ms. Welch is not
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`routine discovery, and Petitioner’s request for additional discovery should be denied.
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`To the extent the Board is inclined to grant Petitioner’s request, any deposition of
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`Ms. Welch should be strictly limited to the specific paragraphs cited in Patent
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`Owner’s Response.
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`10
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`Dated: November 24, 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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`11
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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 November 24, 2020, a true and correct copy of the
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`foregoing Patent Owner’s Opposition to Petitioners’ Motion to Compel or
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`Authorize Deposition of Amy Welch was served via electronic mail upon the
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`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)
`William E. Manske
`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
`Email: Wmanske@robinskaplan.com
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`/ J. Derek Vandenburgh /
`J. Derek Vandenburgh (Lead Counsel for Patent Owner)
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`12
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