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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 IPR2020-0128, IPR2020-0129, IPR2020-0130, IPR2020-00131
`Patent RE 45,380E
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`PATENT OWNER RESPONSE TO PETITIONER’S EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
`RANKING FOR U.S. PATENT NO. RE 45,380E
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`Petitioners Medtronic, Inc. and Medtronic Vascular, Inc. (collectively
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`“Medtronic”) filed four separate petitions against the ’380 patent, challenging a
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`total of only 35 claims. Further, Medtronic’s four petitions include a total of seven
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`different grounds against a single claim—claim 27. IPR2020-00129, Paper 1 at 7
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`(Grounds 1, 2, 3, 4, and 9); IPR2020-00131, Paper 1 at 7 (Grounds 2, 3).
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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 four petitions. Medtronic contends it needs four
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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 3–4. 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, four petitions are not justified.
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`The Board routinely declines to institute multiple petitions, even where there
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`is a priority date dispute. See, e.g., Comcast Cable Commc’ns., LLC v. Rovi
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`1
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`Guides, Inc., IPR2019-01354, Paper 10 at 6 (PTAB Jan. 27, 2020) (denying
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`institution of two of three petitions where a potential priority dispute existed);
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`Dropbox, Inc. v. Whitserve LLC, IPR2019-01018, Paper 13 at 8-9 (PTAB Nov. 1,
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`2019) (denying institution of a second petition where parties disputed the priority
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`date of multiple prior art references); Comcast Cable Comm’ncs, LLC v. Rovi
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`Guides, Inc., IPR2019-00279, Paper 10 at 6–7 (PTAB July 1, 2019) (declining to
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`institute four of five filed petitions where a potential priority dispute existed).
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`Furthermore, the TPG explains that three or more petitions are almost never
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`appropriate (TPG at 59)—here Medtronic seeks institution of four. Medtronic has
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`failed to justify why it needs not just two petitions, but four.
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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 3. 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 multiple 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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`2
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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.
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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 four petitions. Medtronic
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`contends that the number and length of the claims, word count constraints, and the
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`means-plus-function aspect of some claims requires four petitions. Paper 3 at 4–5.
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`But here, the four Petitions challenge only a total of thirty-five claims—hardly an
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`unusually high number. Medtronic also challenges the same claims on many
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`duplicative grounds—far more than needed to provide “back-up” in the event the
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`Itou reference is not prior art. For example, as explained above Medtronic
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`challenges claim 27 on seven separate grounds across the four petitions.
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`While Medtronic proffers the means-plus-function as a justification,
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`Medtronic’s Petitions state that the analysis is the same regardless of whether a
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`claim is construed to be means-plus-function. E.g., IPR2020-00129, Paper 1 at 23
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`(“If this limitation is not construed as means-plus-function, Ressemann’s same
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`teachings satisfy this limitation.”), 25, 66, 68. Where the analysis would differ,
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`Medtronic provides the alternate analysis in one sentence. See id. at 24, 68.
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`3
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`Further, Medtronic challenges independent claim 25 and various claims
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`depending therefrom on three separate grounds, each based on a different lead
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`reference: Itou, Ressemann, and Kontos. IPR2020-00129, Paper 1 at 7 (Ground 1,
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`Ressemann; Ground 7, Itou); IPR2020-00131, Paper 1 at 7 (Ground 1, Kontos).
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`Medtronic argues that it needs “Itou-based” based arguments (that raise the priority
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`date issue) and back-up “Kontos-based” arguments (that do not raise the priority
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`date issue). Paper 3 at 1–3, 5. But Medtronic does not explain why it needs a
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`third ground against the same claims, based on a third reference (Ressemann).
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`Medtronic’s contention that it could not fit all arguments into a single
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`petition is a problem it created itself. Rather than judiciously selecting its strongest
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`arguments, Medtronic chose, for example, to advance seven grounds against claim
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`27, and three separate grounds against independent claim 25. Again, Medtronic’s
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`reliance on Microsoft is inapposite. Microsoft concerned five petitions challenging
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`89 claims; here Medtronic seeks to use four petitions to challenge only 35 claims.
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`See Microsoft, IPR2019-00810, Paper 12 at 14. Medtronic’s deliberate drafting
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`choices do not reasonably justify pursuing an overly burdensome, inefficient, and
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`unfairly duplicative attack on the ’380 patent. See, e.g., Pfenex, Inc. v.
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`GlaxoSmithKline Biologicals SA, IPR2019-01027, Paper 12 at 13–14 (PTAB Nov.
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`13, 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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`4
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`justify the additional burden of a second petition directed to the same claims.”).
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`Instituting four 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,1 the Board should deny all four Petitions. However, if the Board is
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`inclined to institute trial on any one of the petitions, institution on only the Kontos-
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`based petitions (IPR2020-00130, IPR2020-00131) would avoid at least some of
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`these inefficiencies.
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`1 Patent Owner is filing a Preliminary Response in IPR2020-00128 and -00129
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`concurrently herewith, and intends to file a Preliminary Response in IPR2020-0130
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`and -00131 before the deadline provided in 37 C.F.R. 42.107(b).
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`5
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`Dated: March 9, 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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`6
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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 March 9, 2020, a true and correct copy of the
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`foregoing Patent Owner Response to Petitioner’s Explanation of Material
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`Differences Between Petitions and Petition Ranking for U.S. Patent No. RE
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`45,380E 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)
`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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