`
`
`
`
`
`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.
`
`
`Case IPR2020-00131
`Patent RE 45,380
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`IPR2020-00131
`Patent RE 45,380
`
`
`Medtronic had no obligation to address secondary considerations in its
`
`Petition. Instead, Teleflex, as the Patent Owner, has the burden of production on
`
`that issue. Teleflex’s positions on secondary considerations—which are not even
`
`supported by expert testimony—have not been fully developed, let alone
`
`adjudicated, in Court or the Patent Office. Nor has Teleflex identified any authority
`
`requiring a Petitioner to address secondary considerations absent those instances.
`
`Thus, secondary considerations should not be addressed until the trial phase.
`
`The Board has repeatedly rejected arguments that a petition must address
`
`secondary considerations, including in cases involving allegations far more
`
`developed than the miscellaneous assortment of evidence presented here. In
`
`Lowe’s Co. v. Nichia Corp., the Board granted institution and found that the
`
`Petitioner did not have to address evidence of secondary considerations even
`
`though the District Court’s findings of fact previously credited that evidence.
`
`IPR2017-02011, Paper 12 at *4-6, 55-58 (POPR), Paper 13 at *18 (PTAB Mar. 12,
`
`2018) (Institution Decision); see also Petroleum Geo-Services Inc. v. W.
`
`Geco LLC, IPR2014-01477, Paper 12 at *40-41 (POPR), Paper 18 at *32
`
`(PTAB Mar. 17, 2015) (Institution Decision). Similarly, in C & D Zodiac, Inc. v.
`
`b/e Aerospace, Inc., the Board concluded that a petition need not “introduce and
`
`address such secondary considerations evidence” that was “discovered during the
`
`co-pending litigation.” IPR2017-01275, Paper 12 at *15 (PTAB Oct. 31, 2017).
`
`1
`
`
`
`IPR2020-00131
`Patent RE 45,380
`
`
`Indeed, the Board rejected the same arguments from Teleflex’s counsel in
`
`Arctic Cat, Inc. v. Polaris Industries Inc., IPR2017-00433, Paper 17 at *9-10
`
`(PTAB July 5, 2017). The Board explained that “Patent Owner does not identify,
`
`nor are we aware of any persuasive authority requiring Petitioner in this case to
`
`address secondary considerations, not previously presented to the Office, in the
`
`Petition.” Id. at *10. Instead, “the burden of production rests on Patent Owner with
`
`regard to secondary considerations.” Id. Thus, the Board found that “full
`
`consideration of evidence of secondary considerations of this nature is not
`
`necessary” before institution. Id. at *19.
`
`Teleflex’s arguments are no more compelling here. Again, Teleflex’s
`
`counsel identifies no authority for requiring a Petitioner, such as Medtronic, to
`
`address evidence of secondary considerations, absent a decision by the Patent
`
`Office, ITC, or District Court crediting that evidence. See, e.g., Stryker Corp. et al.
`
`v. KFx Med., LLC, IPR2019-00817, Paper 10 at *27-28 (PTAB Sept. 16, 2019)
`
`(“[S]econdary considerations evidence was developed fully during the Arthrex
`
`Litigation, and the Federal Circuit affirmed the jury’s verdict”); Robert Bosch Tool
`
`Corp. v. Sd3, No. IPR2016-01753, Paper, at *12 (PTAB Mar. 22, 2017) (“[A]fter
`
`development of the record at the ITC, including cross-examination, the
`
`Administrative Judge determined that the evidence of secondary considerations
`
`was ‘very strong’ in favor of Patent Owner.”); Gilead Sciences, Inc. v. United
`
`2
`
`
`
`IPR2020-00131
`Patent RE 45,380
`
`States, IPR2019-01453, Paper 14 at *26-27 (PTAB Feb. 20, 2020) (“[W]ell-
`
`developed evidence of” secondary considerations “was key to the allowance of the
`
`claims”); Coal. for Affordable Drugs V LLC v. Hoffman-LaRoche Inc., IPR2015-
`
`01792, Paper 14 at 17-18 (PTAB Mar. 11, 2016) (pointing to “objective indicia of
`
`nonobviousness presented to the Office during the prosecution”). None of those
`
`circumstances are present here.
`
`The Patent Office never addressed secondary considerations during
`
`prosecution of this patent. See Exs. 1802-1803. Nor have secondary considerations
`
`even been raised by Teleflex in litigation against Medtronic, let alone fully
`
`developed or adjudicated. None of Teleflex’s identified exhibits even mention
`
`“secondary considerations.” Instead, an expert report from a different case discuses
`
`infringement (Ex. 2056); a declaration from Teleflex’s preliminary injunction
`
`briefing addresses purported irreparable harm (Ex. 2043); and an interrogatory
`
`response sets forth Teleflex’s alleged market share (Ex. 2059). Teleflex argues that
`
`Medtronic should have cobbled together disparate disclosures from these types of
`
`exhibits to make Teleflex’s argument for it. Requiring petitioners to engage in
`
`guessing games would waste the parties’ and the Board’s resources. Under these
`
`circumstances, Medtronic did not have to raise secondary considerations in its
`
`Petition. The Board should grant institution and reject Teleflex’s attempt to shift
`
`the initial burden on secondary considerations to Medtronic.
`
`3
`
`
`
`IPR2020-00131
`Patent RE 45,380
`
`
`Dated: April 24, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`Attorney for Patent Owner
`
`4
`
`
`
`IPR2020-00131
`Patent RE 45,380
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on April
`
`24, 2020, a copy of PETITIONERS’ REPLY TO PATENT OWNER’S
`
`PRELIMINARY RESPONSE was served in its entirety by electronic mail on
`
`Patent Owner’s counsel at the following addresses indicated in Patent Owner’s
`
`Mandatory Notices:
`
`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
`
`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
`
`
`
`Dated: April 24, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`Attorney for Patent Owner
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
