`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper 20
`Date: June 26, 2020
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`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
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`
`
`
`
`
`
`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.
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`2
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`
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`IPR2020-00131
`Patent RE45,380
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`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”).
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`3
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`IPR2020-00131
`Patent RE45,380
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`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.
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`4
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`IPR2020-00131
`Patent RE45,380
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`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.
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`5
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`IPR2020-00131
`Patent RE45,380
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`ORDER
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`It is:
`ORDERED that no inter partes review is instituted.
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`6
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`IPR2020-00131
`Patent RE45,380
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`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
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`7
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