Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 20
`Date: June 26, 2020
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.,
`Petitioner,
`v.
`TELEFLEX INNOVATIONS S.À.R.L.
`Patent Owner.
`
`
`IPR2020-00131
`Patent RE45,380
`
`
`
`Before SHERIDAN K. SNEDDEN, JON B. TORNQUIST, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 20
`Date: June 26, 2020
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.,
`Petitioner,
`v.
`TELEFLEX INNOVATIONS S.À.R.L.
`Patent Owner.
`
`
`IPR2020-00131
`Patent RE45,380
`
`
`
`Before SHERIDAN K. SNEDDEN, JON B. TORNQUIST, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`
`INTRODUCTION
`Medtronic, Inc. and Medtronic Vascular, Inc. (collectively
`“Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting an inter partes
`review of claims 25–39 of U.S. Reissue Patent RE45,380 (Ex. 1801, “the
`’380 patent”). Teleflex Innovations S.À.R.L. (“Patent Owner”) filed a
`Preliminary Response to the Petition (Paper 9, “Prelim. Resp.”). Pursuant to
`our authorization, Petitioner filed a Reply (Paper 14) addressing its burden
`on secondary considerations and reduction to practice, and Patent Owner
`filed a Sur-Reply (Paper 15) addressing Petitioner’s burden on those issues.
`Also pursuant to our authorization, Petitioner filed another Reply (Paper 17)
`and Patent Owner filed another Sur-Reply (Paper 18) addressing the factors
`for discretionary denial under 35 U.S.C. § 314(a).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). As part of this
`analysis, we may consider whether Petitioner has filed more than one
`petition directed to the challenged patent. For the reasons discussed below,
`we determine that Petitioner has not justified an additional Petition directed
`to the ’380 patent. Accordingly, we do not institute an inter partes review.
`A. Related Matters
`The parties indicate that the ’380 patent is the subject of litigation in
`Vascular Solutions LLC, et al. v. Medtronic, Inc., et al., No. 19-cv-01760
`(D. Minn.) and QXMedical, LLC v. Vascular Solutions, LLC, No. 17-cv-
`01969 (D. Minn). Pet. 4–5; Paper 4, 2–3. The ’380 patent is also at issue in
`IPR2020-00128, IPR2020-00129, and IPR2020-00130. Paper 4, 3; Pet. 5.
`
`2
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`
`B. Prior Art and Asserted Grounds
`Petitioner contends claims 25–39 of the ’380 patent would have been
`unpatentable on the following grounds:
`Reference(s)/Basis
`Claims Challenged
`35 U.S.C. §
`Kontos1, Adams2
`25, 26, 28–31, 34–37, 39
`103
`Kontos, Adams, Kataishi3
`27
`103
`Kontos, Adams, Enger
`27
`103
`Kontos, Adams, Takahashi4
`32, 33
`103
`Kontos, Adams, Berg5
`38
`103
`Petitioner also relies on the testimony of Dr. Stephen JD Brecker (Ex. 1805)
`and Richard A. Hillstead (Ex. 1842).
`ANALYSIS
`Petitioner filed four petitions for inter partes review of the
`’380 patent:
`
`Claims
`IPR
`Challenged
`IPR2020-00128 1–4, 6–10, 12–21,
`23
`IPR2020-00129 25–39
`IPR2020-00130 1–4, 6–9, 12–21
`IPR2020-00131 25–39
`
`Primary
`Reference
`Itou
`
`Ressemann
`Kontos
`Kontos
`
`Petitioner’s
`Ranking
`Petition 1A
`
`Petition 1B
`Petition 2A
`Petition 2B
`
`
`1 Kontos, US 5,439,445, issued August 8, 1995 (Ex. 1809) (“Kontos”).
`2 Adams, US 2004/0010280 A1, published January 15, 2004 (Ex. 1835)
`(“Adams”).
`3 Kataishi, US 2005/0015073 A1, published January 20, 2005 (Ex. 1825)
`(“Kataishi”).
`4 Takahashi, et al., New Method to Increase a Backup Support of a 6 French
`Guiding Coronary Catheter, Catheterization and Cardiovascular
`Interventions 63:452–456 (2004) (Ex. 1810) (“Takahashi”).
`5 Berg, US 5,911,715, issued June 15, 1999 (Ex. 1851) (“Berg”).
`
`3
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`As indicated in the chart above, IPR2020-00128 relies on Itou as the primary
`reference; IPR2020-00129 relies on Ressemann as the primary reference;
`and IPR2020-00130 and IPR2020-00131 rely on Kontos as the primary
`reference. Paper 2, 1–2. Petitioner labels IPR2020-00128 as “Petition 1A,”
`IPR2020-00129 as “Petition 1B,” IPR2020-00130 as “Petition 2A,” and
`IPR2020-00131 as “Petition 2B.” Id. at 1–3. Petition 1A is directed to
`claims 1–4, 6–10, 12–21, and 23 of the ’380 patent. Id. at 1. Petition 1B is
`directed to claims 25–39 of the ’380 patent. Id. at 1–2. Petitioner 2A is
`directed to claims 1–4, 6–9, and 12–21 of the ’380 patent. Id. at 2. Petition
`2B is directed to claims 25–39 of the ’380 patent. Id.
`The Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(“Trial Practice Guide”) (Nov. 2019)6 explains that “there may be
`circumstances in which more than one petition may be necessary, including,
`for example, . . . when there is a dispute about priority date requiring
`arguments under multiple prior art references.” Trial Practice Guide at 59.
`“In such cases two petitions by a petitioner may be needed, although this
`should be rare.” Id. The Trial Practice Guide further instructs that “it is
`unlikely that circumstances will arise where three or more petitions by a
`petitioner with respect to a particular patent will be appropriate.” Id. Here,
`Petitioner has filed four petitions challenging claims of the ’380 patent.
`Paper 2, 1–3.
`Petitioner contends Petitions 1A and 1B “assert Itou as a primary
`reference” and Patent Owner has “raised a priority date issue necessitating
`‘arguments under multiple prior art references.’” Id. at 3 (quoting Microsoft
`
`
`6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`Corp. v. IPA Techs., Inc., IPR2019-00810, Paper 12 at 15 (PTAB Oct. 16,
`2019)). And, according to Petitioner, “[i]t would be manifestly unfair if the
`Board exercises its discretion under § 314(a) to deny Petitions 2A and 2B”
`and, post-institution, Patent Owner successfully swears behind Itou. Id. at 4.
`We do not find Petitioner’s arguments persuasive. As noted by
`Petitioner, the petition in IPR2020-00129 addresses the same challenged
`claims as the current Petition, but asserts “Itou as a primary reference.” Id.
`at 3. The petition in IPR2020-00129, however, only includes Itou in its
`seventh, eighth, ninth, and tenth grounds, and does so in addressing claims
`that are already addressed by its earlier anticipation and obviousness
`grounds based on Ressemann, a § 102(e) reference with a filing date of
`August 9, 2002. IPR2020-00129, Paper 1, 7–8. Patent Owner has only
`asserted that conception of the invention claimed in the ’380 patent occurred
`in late 2004 and reduction to practice occurred “in the spring and summer of
`2005.” See IPR2020-00128, Paper 8, 21–22. Thus, even if Patent Owner
`successfully swears behind Itou, the petition in the -00129 IPR would still
`contain grounds addressing every challenged claim based on a primary
`reference (Ressemann) that Patent Owner has not attempted to swear behind.
`In this situation, a fourth petition challenging the ’380 patent is not justified.
`In view of the foregoing, Petitioner has not demonstrated a need for
`its Petition in IPR2020-00131. Accordingly, we exercise our discretion
`under 35 U.S.C. § 314 and deny the current Petition.
`
`CONCLUSION
`For the reasons discussed above, we do not institute an inter partes
`review.
`
`5
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`
`
`
`ORDER
`
`It is:
`ORDERED that no inter partes review is instituted.
`
`6
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`FOR PETITIONER:
`
`Cyrus Morton
`Christopher Pinhas
`Sharon Roberg-Perez
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`cpinhas@robinskaplan.com
`sroberg-pinhas@robinskaplan.com
`
`
`FOR PATENT OWNER:
`Derek VanDenBurgh
`Dennis Bremer
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`dvandenburgh@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`
`
`
`7
`
`
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
