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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 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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`Petitioners new invalidity theory relying on extensive, additional
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`modifications to material aspects of Kontos (at least six new modifications) is
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`outside the scope of a proper reply:
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`Petition theory:
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`New theory in reply:
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`The following arguments and evidence correspond to this improper new theory:
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`Reply (Paper 69), page 14 (“recess the marker bands”), page 13, n.4, pages 19-20
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`(Section IV(D)(3)), pages 21-22 (Section IV(E)); Ex-1806, ¶¶173 (“embed” distal
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`marker band), 182, 190-192; Ex-1807, ¶¶174-182, 190, 194-195.
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`2)
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`Petitioner’s new argument that a POSITA would be motivated to
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`replace Kontos’s funnel with a side opening to “maximize the usable real
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`estate” is outside the scope of a proper reply because the Petition did not make this
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`argument. The following arguments and evidence correspond to this improper new
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`theory: Reply (Paper 69), pages 12-14 (Section IV(D)); Ex-1806, ¶¶169-173; and
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`Ex-1807, ¶¶164-182.
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`2
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`3)
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`Petitioner’s new construction of “coaxial lumen” is outside the
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`proper scope of reply because the Petitioner offers a construction for the first time
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`in Reply. The following arguments and evidence correspond to this improper new
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`construction: Reply (Paper 69), pages 19-20 (Section IV(D)(3)); and Ex-1806,
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`¶¶14-26, 181.
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`4)
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`Petitioner’s new theory that Kontos inherently discloses a “cross-
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`sectional inner diameter through which interventional cardiology devices are
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`insertable” (independent claims 1 and 12) is outside the scope of a proper reply, as
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`the Petition did not argue inherency for this limitation. The following arguments
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`and evidence correspond: Reply (Paper 69), pages 4-5 (Section IV(A)); Ex-1806,
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`¶¶47-52,155-158; Ex-1802; Ex-1803; Ex-1804; and Ex-1811.
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`5)
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`Petitioner’s new mapping of the “flexible cylindrical portion”
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`(element of claim 1 of the ’380 patent) onto Kontos is outside the scope of a proper
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`reply because the Petitioner mapped claim elements onto different parts of
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`Kontos’s structure for the first time in Reply. The following arguments and
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`evidence correspond to this improper new theory: Reply (Paper 69), pages 5-6
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`(Section IV(B)); and Ex-1806, ¶¶185-187.
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`3
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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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`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 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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`5
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