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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 IPR2020-00128
`Patent RE 45,380
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`PATENT OWNER’S PAPER AUTHORIZED BY JANUARY 5, 2021
`ORDER
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`Pursuant to the Board’s authorization provided via a January 5, 2021
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`telephonic hearing (Ex-2233), Patent Owner Teleflex identifies the following
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`arguments and evidence outside the scope of a proper reply:
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`1)
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`Petitioner’s new theory that Itou inherently discloses that all four
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`types of enumerated interventional cardiology devices are insertable through
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`its suction catheter is outside the scope of a proper reply, as the Petition did not
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`argue inherency for this claim limitation. The following arguments and evidence
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`correspond to this improper new theory:
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`a) Reply (Paper 83), pages 6-10 (Section III(B) and (C));
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`b) Ex-1806, ¶¶47-52, 155-158; Ex-1807, ¶¶42-44; and
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`c) Ex-1015b, 189; Ex-1802; Ex-1803; Ex-1804; Ex-1811.
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`2)
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`Petitioner’s new theory for how a POSITA would purportedly
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`expect to successfully combine Ressemann’s collar with Itou’s pushwire is
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`outside the scope of a proper reply, as the Petition and supporting evidence relied
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`on how Ressemann taught to incorporate the collar tab into Itou (e.g., Ex-1042,
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`¶108) and the Reply now provides new evidence purporting to support a way of
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`combining that is different than what Ressemann teaches. The following
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`arguments and evidence correspond to this improper new theory:
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`a) Reply (Paper 83), 15-16 (Section III(E)); and
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`b) Ex-1807, ¶¶67-96; 129-132.
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`2
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`Dated: February 1, 2021
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`Respectfully submitted,
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`/J. Derek Vandenburgh /
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`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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`3
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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 February 1, 2021, a true and correct copy of the
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`foregoing Patent Owner’s Paper Authorized by January 5, 2021 Order
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`was served 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)
`William E. Manske
`Emily J. Tremblay
`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 for Patent Owner)
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`4
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