`571-272-7822
`
`
`
`
`Paper 66
`Entered: November 25, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MEDTRONIC, INC. and MEDTRONIC VASCULAR, INC.,
`Petitioner,
`v.
`TELEFLEX INNOVATIONS S.À.R.L.,
`Patent Owner.
`
`
`IPR2020-00126 (Patent 8,048,032 B2)
`IPR2020-00127 (Patent 8,048,032 B2)
`IPR2020-00128 (Patent RE45,380)
`IPR2020-00129 (Patent RE45,380)
`IPR2020-00130 (Patent RE45,380)
`IPR2020-00132 (Patent RE45,760)
`IPR2020-00134 (Patent RE45,760)
`IPR2020-00135 (Patent RE45,776)
`IPR2020-00136 (Patent RE45,776)
`IPR2020-00137 (Patent RE47,379)
`IPR2020-00138 (Patent RE47,379) 1
`
`
`
`
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JON B. TORNQUIST, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`SNEDDEN, Administrative Patent Judge.
`
`
`1 This Decision addresses identical issues in each of these 11 related cases.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2020-00126, IPR2020-00127 (Patent 8,048,032 B2) IPR2020-00128,
`IPR2020-00129, IPR2020-00130 (Patent RE45,380) IPR2020-00132,
`IPR2020-00134 (Patent RE45,760) IPR2020-00135, IPR2020-00136 (Patent
`RE45,776) IPR2020-00137, IPR2020-00138 (Patent RE47,379)
`
`
`ORDER
`Denying Petitioner’s Motion for Good Cause Extension
`35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c)
`
`With our authorization, Medtronic, Inc. and Medtronic Vascular, Inc.
`(“Petitioner”) filed a Motion for a Good Cause Extension Pursuant to 37 §
`C.F.R. § 42.100(c). Paper 56.2 Also with our authorization, Teleflex
`Medical Devices S.À.R.L. (“Patent Owner”) filed an Opposition to
`Petitioner’s Motion for Good Cause Extension. Paper 61 (“Opp.”). For the
`reasons that follow, we deny Petitioner’s Motion.
`A. Background
`On November 12, 2019, Petitioner filed Petitions initiating each of the
`above-identified proceedings. See, e.g., IPR2020-00126, Paper 1.
`On June 8, 2020, the Board instituted trial in each of IPR2020-00126,
`IPR2020-00128, IPR2020-00129, IPR2020-00132, IPR2020-00135, and
`IPR2020-00137. See, e.g., IPR2020-00126, Paper 22. The one-year period
`normally available to issue a Final Written Decision in each of those cases
`expires on June 8, 2021.
`On June 26, 2020, the Board instituted trial in each of IPR2020-
`00127, IPR2020-00130, IPR2020-00134, IPR2020-00136, and IPR2020-
`00138 (Paper 20). See, e.g., IPR2020-00127, Paper 20. The one-year period
`normally available to issue a Final Written Decision in each of those cases
`expires on June 26, 2021.
`
`
`2 Petitioner filed similar motions in each of the above-identified proceedings.
`For purposes of expediency, we cite to Papers filed in IPR2020-00126
`unless otherwise indicated.
`
`2
`
`
`
`IPR2020-00126, IPR2020-00127 (Patent 8,048,032 B2) IPR2020-00128,
`IPR2020-00129, IPR2020-00130 (Patent RE45,380) IPR2020-00132,
`IPR2020-00134 (Patent RE45,760) IPR2020-00135, IPR2020-00136 (Patent
`RE45,776) IPR2020-00137, IPR2020-00138 (Patent RE47,379)
`
`
`On June 30, 2020, the Board issued a Consolidated Scheduling Order
`placing each of above-identified proceedings on the same trial schedule.
`DISCUSSION
`B. Petitioner’s Contentions
`In its Motion, Petitioner contends that the current IPR schedule is
`unworkable in view of the volume of information submitted with each of the
`Patent Owner Responses, including: 4 expert declarations and 4 fact
`declarations in support of the Patent Owner Responses; evidence of
`secondary indicia of nonobviousness; separate briefing attempting to
`antedate Petitioner’s prior art by establishing an earlier conception and
`reduction to practice date (“CRTP”); 65 documents and 7 declarations (one
`expert and 6 fact declarations) in support of Patent Owner’s CRTP briefs; 11
`motions to amend; up to 8 amended claims and a separate expert declaration
`in support of each proposed amendment; and 9 fact declarations attempting
`to authenticate exhibits. Mot. 1–2. “In sum, in conjunction with Due Date
`2, in addition to its briefing, Teleflex submitted up to 215 exhibits, six expert
`declarations, and twenty fact declarations per IPR.” Id. at 2.
`Petitioner further contends that Patent Owner will not be prejudiced
`by a three-month extension. Id. at 3–5.
`C. Patent Owner’s Contentions
`In its Opposition, Patent Owner contends that “[t]he 13 IPR
`proceedings that Medtronic chose to initiate have not ‘ballooned’ in any
`unexpected or unpredictable way.” Opp. 1.
`Patent Owner further contends that extending the statutory deadline
`will prejudice Patent Owner. Specifically, Patent Owner contends that the
`
`3
`
`
`
`IPR2020-00126, IPR2020-00127 (Patent 8,048,032 B2) IPR2020-00128,
`IPR2020-00129, IPR2020-00130 (Patent RE45,380) IPR2020-00132,
`IPR2020-00134 (Patent RE45,760) IPR2020-00135, IPR2020-00136 (Patent
`RE45,776) IPR2020-00137, IPR2020-00138 (Patent RE47,379)
`
`“need for swift adjudication is particularly important here, where Teleflex
`filed suit immediately after Medtronic introduced its infringing product and
`where Medtronic relied on the present IPRs to both overcome Teleflex’s
`preliminary injunction motion and obtain a stay of the district court
`proceedings.” Id. at 2.
`Patent Owner further contends that extending the statutory deadline
`will shift inconvenience to Patent Owner’s council. Id. at 3–4. Specifically,
`Patent Owner contends that
`
`Teleflex’s counsel already compressed all of the work
`necessary to prepare the PO Response-related filings for all
`eleven instituted IPRs within the normal one-year schedule. It
`would be starkly unfair to now allow Medtronic a much longer
`than normal time to prepare its Reply-related filings. What’s
`more, if Medtronic’s unprecedented request to extend the
`statutory deadline is granted and if the Board institutes the four
`additional IPR petitions that Medtronic filed, Teleflex’s PO
`Responses in the new IPRs would be due at the same time
`Teleflex is preparing its sur-replies and preparing for trial in
`the present eleven IPRs.
`Id. at 4.
`D. Analysis
` “An inter partes review proceeding shall be administered such that
`pendency before the Board after institution is normally no more than one
`year.” 37 C.F.R. § 42.100(c). Although “[that] time can be extended by up
`to six months for good cause by the Chief Administrative Patent Judge,” the
`Board has rarely extended any review beyond the one-year period. See id.;
`see also 37 C.F.R. § 42.1(b) (seeking to “secure the just, speedy, and
`inexpensive resolution of every proceeding”).
`
`4
`
`
`
`IPR2020-00126, IPR2020-00127 (Patent 8,048,032 B2) IPR2020-00128,
`IPR2020-00129, IPR2020-00130 (Patent RE45,380) IPR2020-00132,
`IPR2020-00134 (Patent RE45,760) IPR2020-00135, IPR2020-00136 (Patent
`RE45,776) IPR2020-00137, IPR2020-00138 (Patent RE47,379)
`
`
`Having considered the parties’ positions and evidence of record,
`summarized above, we are not persuaded that good cause exists to extend
`the statutory deadline in these cases. We do not discern any issue
`developing in these cases that to lead us to a conclusion that these cases are
`developing in an unexpected and unpredictable way. We recognize that the
`issues presented in these cases are complex. However, Petitioner chose the
`PTAB as the forum to address the patentability issues knowing the
`complexity of the issues that would likely be raised, including the possibility
`that Patent Owner would file a motion to amend. The issues identified by
`Petitioner as a reason to request extension, including Patent Owner’s CRTP
`and secondary considerations arguments, are issues that commonly arise in
`inter partes review.
`Furthermore, we make our decision in view of our various Board rules
`that reflect the strong public interest in securing just and speedy resolution
`of IPRs. See 37 C.F.R. §§ 42.1(b), 42.5(c)(1). Congress viewed the
`statutory deadline as an important tool for ensuring inter partes reviews
`serve the public interest in prompt review of issued patents. H.R. REP. 112–
`98, 45, 47 (2011) (IPR statutory deadline an improvement over inter partes
`reexaminations that can last “several years”). Moreover, we are persuaded
`by Patent Owner’s arguments that any extension of statutory deadline will
`merely shift inconvenience to Patent Owner’s council. Opp. 3–4.
`Accordingly, we deny Petitioner’s request for a good cause extension
`to the statutory deadline.
`It is therefore,
`
`5
`
`
`
`IPR2020-00126, IPR2020-00127 (Patent 8,048,032 B2) IPR2020-00128,
`IPR2020-00129, IPR2020-00130 (Patent RE45,380) IPR2020-00132,
`IPR2020-00134 (Patent RE45,760) IPR2020-00135, IPR2020-00136 (Patent
`RE45,776) IPR2020-00137, IPR2020-00138 (Patent RE47,379)
`
`
`ORDERED that Petitioner’s request for a good cause extension of the
`final written decision deadline is denied.
`
`
`
`
`
`
`
`FOR PETITIONER:
`
`Cyrus Morton
`cmorton@robinskaplan.com
`
`Sharon Roberg-Perez
`sroberg-perez@robinskaplan.com
`
`Christopher Pinahs
`cpinahs@robinskaplan.com
`
`
`FOR PATENT OWNER:
`
`Derek Vandenburgh
`dvandenburgh@carlsoncaspers.com
`
`Dennis Bremer
`dbremer@carlsoncaspers.com
`
`
`
`6
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`