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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 IPR2020-00130
`Patent RE 45,380
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PRELIMINARY RESPONSE
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`Medtronic argues for a bright-line rule that a petition need only address
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`secondary considerations when there has been “a decision by the Patent Office,
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`ITC, or District Court crediting that evidence.” Paper 14 at 2. No such rule exists,
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`and the Board should decline Medtronic’s invitation to create one. As the Board’s
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`prior decisions demonstrate, whether a petitioner must address secondary
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`considerations in a petition is fact-specific. See, e.g., Robert Bosch Tool Corp. v.
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`SD3, LLC, IPR2016-01753, Paper 15 at 28–30 (PTAB Mar. 22, 2017) (“In this
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`particular case, we determine it is appropriate to review and address the objective
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`evidence of nonobviousness proffered by the Patent Owner for purposes of this
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`Decision [Denying Institution].”) (emphasis added). The fact that Medtronic can
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`cite cases where, on the facts of those particular cases, the Board found that a
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`patent owner failed to meet its burden of production concerning secondary
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`considerations is irrelevant. Indeed, in Robert Bosch Tool Corp., the Board
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`considered secondary considerations at the institution stage even though the ITC
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`Initial Determination issued after the petition was filed. IPR2016-01753, Paper 15
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`at 30 n.9. Here, Medtronic was unquestionably aware of compelling evidence of
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`secondary considerations, and Medtronic’s failure to address that evidence in its
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`Petition unfairly deprived the Board of relevant information needed to make an
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`informed decision whether to institute trial.
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`Contrary to Medtronic’s assertion that it must “cobble[] together disparate
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`1
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`disclosures . . . to make Teleflex’s argument for it,” (Paper 14 at 3), Medtronic was
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`presented with clear objective evidence supporting the validity of the GuideLiner
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`patents. For example, Medtronic complains that “[n]one of Teleflex’s identified
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`exhibits even mention ‘secondary considerations,’” (id.), but Teleflex’s motion for
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`preliminary injunction in the district court case—filed over a month before
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`Medtronic filed its Petition—contained three separate sections with specific titles
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`directed to long-felt need, commercial success and copying. Ex. 1473 at 2, 5, 9.
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`The objective evidence was also provided in other documents that Medtronic
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`already had, as explained in detail in the Preliminary Response. Paper 10 at 33–
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`45; see also, e.g., Ex. 2058; Ex. 1473 at 5; Ex. 2043 (Welch Decl.), ¶¶ 4, 9–18, 34–
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`35; Ex. 2046 (Root 2013 Decl.), ¶¶ 39, 43–45; Ex. 2059 (Interrog. Resp.); Exs.
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`2065–2067; Ex. 2069 at 5; Ex. 1479, ¶ 18. In the parallel district court case,
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`Medtronic even deposed a Teleflex Director of Sales well before filing its Petition,
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`specifically questioning the witness on sales of GuideLiner. Ex. 2051. What’s
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`more, a mere three days after filing its first Petition, Medtronic filed two
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`declarations in the district court seeking to explain, substantively, why Teleflex’s
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`evidence did not actually show copying. Vascular Sols. LLC v. Medtronic, Inc.,
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`No. 19-cv-01760-PJS-TNL, Dkt. 110, ¶¶ 61–67, Dkt. 109 (D. Minn.). There is no
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`reason Medtronic could not have done the same thing in the Petition. Medtronic’s
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`contention that Teleflex’s evidence of secondary considerations is not developed
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`2
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`enough to address is just not credible.
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`Here, not only did Teleflex meet its burden, but Medtronic’s own actions
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`show that the burden of production was met. Medtronic was undisputedly aware
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`of an important competitor (Boston Scientific) holding a license to the GuideLiner
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`patents, and Medtronic itself admittedly asked for a license. Ex. 2068, ¶ 26.
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`Medtronic sought a license to the GuideLiner patents because it was aware of the
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`invention’s commercial success, industry praise, and satisfaction of a long-felt
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`need. This real-world evidence confirms that Medtronic cannot credibly argue that
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`the burden of production had not been met.
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`Ultimately, the Board must be able to accurately evaluate the likelihood that
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`a petitioner will prevail and whether institution is an appropriate use of the Board’s
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`resources. Medtronic’s failure to address the substantial evidence of secondary
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`considerations of which it was aware prevents the Board from making a fully
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`informed decision. Where the petitioner knows the whole story, the Board should
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`not be forced to make an institution decision based on only half of the story.
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`Medtronic’s willful ignorance of the substantial, compelling evidence of secondary
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`considerations unfairly handicaps the Board’s ability to make a fair institution
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`decision.
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`3
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`Dated: May 1, 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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`4
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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 May 1, 2020, a true and correct copy of the foregoing
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`Patent Owner’s Sur-Reply to Petitioner’s Reply to Preliminary Response was
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`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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