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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________________
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`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
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`Petitioners,
`
`v.
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`TELEFLEX INNOVATIONS S.À.R.L.,
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`Patent Owner
`_____________________________
`
`Cases IPR2019-0128, IPR2019-0129, IPR2019-0130, IPR2019-0131
`U.S. Patent No. RE 45,380E
`______________________________
`
`PETITIONERS’ EXPLANATION OF MATERIAL DIFFERENCES
`BETWEEN PETITIONS AND PETITION RANKING FOR
`U.S. PATENT NO. RE 45,380E
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`
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`Medtronic, Inc. and Medtronic Vascular, Inc. (“Petitioners”) filed four
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`concurrent inter partes review (“IPR”) petitions against U.S. Pat. No. RE 45,380E
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`(“the ’380 Patent;” Ex-1401), but the claims are split such that only two petitions
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`challenge a given claim. The Board should consider and institute all four petitions.
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`Two petitions per claim are necessary due to a priority date dispute. The
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`Board’s Trial Practice Guide states that “more than one petition may be necessary”
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`where, as here, “there is a dispute about priority date requiring arguments under
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`multiple prior art references.” TPG UPDATE (July 2019) at 26. As outlined below,
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`Petitioners filed two petitions per claim for this exact reason.
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`Itou-Based Petitions
`Ground 1: Claims 1-4, 6-10, 12-20, and 23 as anticipated by
`Petition 1A
`IPR2019-0128
`U.S. Pat. No. 7,736,355 (“Itou”)
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`Ground 2: Claims 3, 14, and 15 as obvious over Itou in view of
`U.S. Pat. No. 7,604,612 (“Ressemann”), and/or the knowledge
`of a POSITA
`
`Ground 3: Claim 21 as obvious over Itou and U.S. Pat. No.
`5,911,715 (“Berg”), and/or the knowledge of a POSITA
`Ground 1: Claims 25-31, 34-37, and 39 as anticipated by
`Ressemann
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`Ground 2: Claim 27 as obvious over Ressemann and the
`knowledge of a POSITA
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`Ground 3: Claim 27 as obvious over Ressemann in view of
`U.S. Pat. App. 2005/0015073 (“Kataishi”) and the knowledge of
`a POSITA
`
`
`Petition 1B
`IPR2019-0129
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`
`
`1
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`
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`Ground 4: Claim 27 as obvious over Ressemann in view of
`U.S. Pat. No. 5,980,486 (“Enger”) and the knowledge of a
`POSITA
`
`Ground 5: Claims 32 and 33 as obvious over Ressemann in
`view of Takahashi and the knowledge of a POSITA
`
`Ground 6: Claim 38 as obvious over Ressemann in view of
`Berg and the knowledge of a POSITA
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`Ground 7: Claims 25-26, 28-37, and 39 as anticipated by Itou
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`Ground 8: Claim 27 as obvious over Itou in view of Kataishi
`and the knowledge of a POSITA
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`Ground 9: Claim 38 as obvious over Itou in view of Berg and
`the knowledge of a POSITA
`Kontos-Based Petitions
`Ground 1: Claims 1-4, 6-7, 9, 12-17, and 19-20 as obvious over
`Petition 2A
`IPR2019-0130
`U.S. Patent No. 5,439,445 (“Kontos”) in view of U.S. Pat. Pub.
`2004/0010280 (“Adams”), and/or the knowledge of a POSITA
`
`
`Ground 2: Claims 8 and 18 as obvious over Kontos in view of
`Adams, Takahashi et al., New Method to Increase a Backup
`Support of a 6 French Guiding Coronary Catheter
`(“Takahashi”), and/or the knowledge of a POSITA
`
`Ground 3: Claim 21 as obvious over Kontos in view of Berg,
`and/or the knowledge of a POSITA
`Ground 1: Claims 25-26, 28-31, 34-37, and 39 as obvious over
`Kontos in view of Adams and/or the knowledge of a POSITA
`
`
`Ground 2: Claim 27 as obvious over Kontos in view of Adams,
`Kataishi, and/or the knowledge of a POSITA
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`Ground 3: Claim 27 as obvious over Kontos in view of Adams,
`Enger, and/or the knowledge of a POSITA
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`Ground 4: Claims 32-33 as obvious over Kontos in view of
`Takahashi, and/or the knowledge of a POSITA
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`Petition 2B
`IPR2019-0131
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`2
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`
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`Ground 5: Claim 38 as obvious over Kontos in view of Adams,
`Berg, and/or the knowledge of a POSITA
`
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`Petitions 1A and 1B assert Itou as a primary reference. Itou has an effective
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`
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`filing date of September 23, 2005. (Ex-1407.) But Patent Owner has alleged a
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`conception and reduction to practice date in 2004—a date much earlier than the
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`priority date on the face of the ’380 Patent.1 (Ex-1484; Ex-1401.) Petitioners
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`therefore submitted another set of Petitions (Petitions 2A and 2B) that cover a
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`similar set of claims as Petitions 1A and 1B but assert prior art references with
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`priority dates before 2004. This second set of petitions (Petitions 2A and 2B) rely
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`on Kontos as the primary reference. Kontos issued on August 8, 1995, and it is
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`prior art under at least § 102(b). (Ex-1409.) Patent Owner is not able to swear
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`behind Kontos, as it may attempt to do for Itou in Petitions 1A and 1B.
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`
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`The Board’s decision in Microsoft Corp. v. IPA Technologies, Inc. is
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`instructive. IPR2019-00810, Paper 12 (PTAB Oct. 16, 2019). There, as here, the
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`patent owner raised a priority date issue necessitating “arguments under multiple
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`prior art references.” Id. at 15. In Microsoft Corp., the priority date dispute
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`concerned a single prior art reference. Here, the priority dispute is more
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`1 The ʼ380 Patent claims priority to U.S. Pat. No. 8,292,850, which, on its face, is
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`entitled to a priority date of May 3, 2006. (Ex-1401.)
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`
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`3
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`
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`fundamental—Patent Owner has raised a priority date issue regarding the
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`challenged patent itself. It would be manifestly unfair if the Board exercises its
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`discretion under § 314(a) to deny Petitions 2A and 2B and post-institution Patent
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`Owner successfully swears behind Itou. Accordingly, the Board should consider
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`and institute Petitions 1A and 2A and Petitions 2A and 2B.
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`
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`Four petitions are necessary because of the length, type, and number of
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`claims asserted by Patent Owner in district court. The ’380 Patent has 42
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`lengthy claims. Claim 1 of the ’380 Patent, for example, consists of 359 words. In
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`Petitions 1A and 2A, recitation of the challenged claims alone takes up over 1,400
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`words—more than 10% of Petitioners’ allotted word count. Further, claims 25 and
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`beyond include means-plus-function limitations requiring unique arguments.
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`Because of these issues, Petitioners split the means-plus-function claims of the
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`’380 Patent into Petitions 1B and 2B.
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`Given Patent Owner’s allegations in district court, Petitioners must also
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`challenge substantially all claims of the ’380 Patent and consider multiple potential
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`interpretations of claim limitations. The Board’s Trial Practice Guide states that
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`“more than one petition may be necessary” where, as here, “the patent owner has
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`asserted a large number of claims in litigation.” TPG UPDATE (July 2019) at 26.
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`In the district court litigation, Patent Owner has refused to identify the specific
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`claims—or a specific number of claims—it will assert against Petitioner. (Ex-1479
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`
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`4
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`
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`¶ 49 (“Medtronic has infringed and continues to infringe one or more claims of the
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`’380 patent, including at least claims 12, 13, and 15…;” see also Ex-1483, ¶ 5d.)
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`The Board’s decision in Microsoft Corp. is again instructive. There, as here,
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`“word count limitations and a large number of challenged claims” supported the
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`filing of multiple petitions. IPR2019-00810, Paper 9 at 14. In Microsoft Corp., the
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`patent owner generally alleged infringement of “one or more claims” of the subject
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`patent. Id. at 1 (“The complaint identified only claim 61, while generally alleging
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`that Petitioner infringed ‘one or more claims.’”) The patent owner also opposed the
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`streamlining of disputed issues, rejecting petitioner’s proposal to consider a set of
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`twenty-four exemplary claims. Id. at 13.
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`Here, too, Petitioner cannot reasonably fit its arguments into a single
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`petition. Petitioner cannot reasonably fit both its Itou-based and Kontos-based
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`arguments into a single petition—both of which are necessary, as outlined above—
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`because of Patent Owner’s position regarding its alleged conception and reduction
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`to practice date. And Patent Owner has rejected reasonable proposals to narrow the
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`parties’ dispute (See Ex-1483 at 2 (¶ 5d).)
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`The Board should consider and institute all four petitions. Petitioners
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`request that the Board consider its petitions in the following order: Petition 1A
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`(IPR2019-0128), followed by Petition 2A (IPR2019-0130) and then Petitions 1B
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`(IPR2019-0129) and 2B (IPR2019-0131).
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`
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`5
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`
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`RESPECTFULLY SUBMITTED,
`
`ROBINS KAPLAN LLP
`
`
`Date: November 12, 2019
`800 LaSalle Ave, Suite 2800
`Minneapolis, MN 55402
`612.349.8500
`
`
`
`
`/ Cyrus A. Morton /
`Cyrus A. Morton
`
`Attorney for Petitioner
`Medtronic, Inc.
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`6
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that PETITIONERS’ EXPLANATION OF
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`
`
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`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
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`RANKING FOR U.S. PATENT NO. RE 45,380E was served on November 12,
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`2019, by Federal Express mail to the USPTO correspondence address of record
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`listed below:
`
`
`
`Paul Onderick
`PATTERSON THUENTE PEDERSEN, P.A.
`80 South 8th Street
`4800 IDS Center
`Minneapolis, MN 55402-2100
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`Courtesy copies were also sent to the following address of record for counsel
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`in Vascular Solutions LLC, et al. v. Medtronic, Inc., et al., No. 19-cv-01760 (D.
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`Minn., filed July 2, 2019):
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`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`
`/ Cyrus A. Morton /
`
`Cyrus A. Morton
`Registration No. 44,954
`Robins Kaplan LLP
`cmorton@robinskaplan.com
`
`Attorney for Petitioners
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`7
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