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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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`__________________________
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
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`Petitioners,
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`v.
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`TELEFLEX INNOVATIONS S.À.R.L.,
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`Patent Owner
`_____________________________
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`Case IPR2020-00131
`Patent RE 45,380
`______________________________
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`PETITIONERS’ REPLY TO ADDRESS 35 U.S.C. § 314(a) AND 37 C.F.R.
`§ 42.5
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`Petitioners submit this Reply to address the § 314 factors set forth in Apple
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`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B. March 20, 2020).
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`Judge Schiltz Issues “Ready for Trial” Dates, not Actual Trial Dates: The parties’
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`“Ready for Trial” date was originally June 1, 2021, but has already been extended
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`to August 1, 2021.1 It is likely that this date will again be extended. Indeed, Judge
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`Schiltz’s final “Ready for Trial” date in patent proceedings is, on average, over
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`eight months after the original “Ready for Trial” date. Ex-1889. For example, in
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`the QXMedical litigation, Judge Schiltz issued an April 15, 2019 “Ready for Trial”
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`date. Ex-1890 at 9. That date was later extended, per stipulation of the parties, to
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`November 1, 2019. Ex-1891 at 10. A trial date was finally set for February 24,
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`2020, more than ten months after the original “Ready for Trial” date. Ex-1892 at 1.
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`Judge Schiltz’s scheduling orders do not provide trial dates, and whatever date is
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`finally set in this litigation, it will be long after the Board’s Final Written Decision.
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`“Other Factors” Indicate that a § 314 denial is Inappropriate: Other than by
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`advancing an incorrect construction of “interventional cardiology devices,”
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`Teleflex does not dispute that the prior art discloses all claim limitations. Due to
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`Petitioners’ strong invalidity showing, the Board should not deny under § 314.
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`1 The schedule was extended after Patent Owner filed an Amended Complaint
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`adding two additional patents. Medtronic is preparing to file IPRs for these patents.
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`1
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`Judge Schiltz Grants Post-Institution Stays: Judge Schiltz has granted every post-
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`institution request to stay litigation pending reexamination or IPR. See Ex-1893.
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`Judge Schiltz is also expecting a merits-based institution decision in these IPRs. In
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`the co-pending QxMedical litigation—that involves the same family of patents
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`challenged here—Judge Schiltz granted a stay pending the institution decision in
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`this IPR after QxMedical agreed to suspend its limited sales and waive its
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`anticipation and obviousness defenses. Ex-1894. The Judge further stated that if
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`the Board institutes, “the Court will invite the parties to brief whether the stay
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`should extend through the conclusion of the review process.” Id. The Judge will
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`certainly entertain Petitioners’ motion to stay in the event of institution.
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`The Litigation has not Significantly Progressed: An important consideration under
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`this factor—whether Petitioner unreasonably delaying in seeking IPR—favors
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`Medtronic. See Apple, IPR2020-00019, Paper 11 at 11. Indeed, Medtronic filed
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`these IPRs roughly 4 months after the Complaint and before Patent Owner filed its
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`infringement contentions. See id. (noting that “it is often reasonable for a petitioner
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`to wait to file its petition until” after receiving infringement contentions).
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`Patent Owner Asserts only a Sub-Set of the Challenged Claims: In the District
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`Court, Patent Owner asserts only a small fraction of the Challenged Claims. Ex-
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`1895 at 2-3.
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`2
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`Dated: May 19, 2020
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`Respectfully submitted,
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`
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`/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
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`3
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on May 19,
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`2020, a copy of PETITIONERS’ REPLY TO ADDRESS 35 U.S.C. § 314(a) AND
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`37 C.F.R. § 42.5 was served in its entirety by electronic mail on Patent Owner’s
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`counsel at the following addresses indicated in Patent Owner’s Mandatory Notices:
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`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
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`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
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`Dated: May 19, 2020
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`Respectfully submitted,
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`
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`/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
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`4
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