`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
`
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`
`Patent Owner
`
`_________________
`
`Case IPR2020-00131
`Patent RE45,380
`_________________
`
`PETITIONERS’ REQUEST FOR REHEARING
`
`
`
`Case IPR2020-00131
`Patent RE45,380
`
`TABLE OF CONTENTS
`
`Argument ..................................................................................................... 1
`A.
`The Decision Could Result in Conflicting Patentability Findings
`For Substantially Similar Claims, Including Claims 32 and 33 of
`the ʼ380 Patent. .................................................................................. 2
`The Kontos Grounds and Challenged Claims in the Instant
`Petition Are Substantially Similar to Those In the Other
`Instituted IPRs and Will Not Burden the Board or the Parties. ........... 5
`
`B.
`
`C. Medtronic Is Willing to Limit the Instant Petition to Claims 32
`and 33 to Further Alleviate Any Efficiency or Burden Concerns ....... 8
`Conclusion ................................................................................................... 9
`
`
`I.
`
`II.
`
`
`
`
`
`i
`
`
`
`Case IPR2020-00131
`Patent RE45,380
`In response to the Patent Trial and Appeal Board’s Decision of June 26, 2020
`
`(Paper 20, “Decision”), Petitioners Medtronic, Inc. and Medtronic Vascular, Inc.
`
`(“Medtronic”) respectfully request rehearing of the Decision denying institution of
`
`inter partes review for claims 25-39 (“the challenged claims”) of U.S. Patent No.
`
`RE45,380 (“the ’380 patent”). The Decision did not reach the merits of Medtronic’s
`
`Petition; instead, the Decision exercised discretion under 35 U.S.C. § 314(a) because
`
`the Board granted institution of another petition challenging the ’380 patent (i.e.,
`
`IPR2020-00129). See Dec. at 3–5 (citing Consolidated Trial Practice Guide (“Trial
`
`Practice Guide”) (November 2019) at 59). As explained below, Medtronic
`
`respectfully requests rehearing of the Decision and institution of this proceeding,
`
`and is willing—pending the Board’s guidance in its Rehearing decision—to limit
`
`the instant Petition to claims 32 and 33 to further alleviate any efficiency or burden
`
`concerns.
`
`I.
`
`Argument
`Medtronic appreciates the considerations underlying the Board’s policy of
`
`limiting institution to a single petition challenging a given set of claims in the
`
`absence of special circumstances. See Trial Practice Guide at 59-60. The Trial
`
`Practice Guide also provides, however, that discretionary denial under § 314 “is
`
`informed” by the policies of, among others, “economy, the integrity of the patent
`
`system, [and] the efficient administration of the Office.” Id. at 56. In particular,
`
`1
`
`
`
`Case IPR2020-00131
`Patent RE45,380
`“[t]he AIA was designed to establish a more efficient and streamlined patent system
`
`that will improve patent quality and limit unnecessary and counterproductive
`
`litigation costs.” Id. (citing H.R. Rep. No. 112–98, pt. 1, at 40 (2011)) (emphasis
`
`added).
`
`The Board’s Decision to deny institution under § 314 does not achieve this
`
`goal because it could result in unnecessary and counterproductive litigation. In
`
`particular, the Decision has the consequence of causing potentially inconsistent
`
`validity rulings for the ʼ380 patent—in particular, claims 32 and 33—that recites
`
`nearly identical subject matter as other claims in the Teleflex family for which this
`
`Board found
`
`that Medtronic had established a reasonable
`
`likelihood of
`
`demonstrating invalidity. These potential inconsistencies are not good for either the
`
`integrity of the patent system or the efficient administration of the Office.
`
`Accordingly, and for the additional reasons set forth below, the Board should grant
`
`Rehearing. See Sand Revolution II, LLC v. Continental Intermodal Group – Trucing
`
`LLC, IPR2019-01393, Paper 24 at 2–3 (P.T.A.B. June 16, 2020) (granting Request
`
`for Rehearing that overturned decision exercising discretion under § 314).
`
`A. The Decision Could Result in Conflicting Patentability Findings
`For Substantially Similar Claims, Including Claims 32 and 33 of
`the ʼ380 Patent.
`The Board denied institution of this Petition because it instituted review of
`
`IPR2020-00129. In the -00129 Institution Decision, the Board preliminarily found
`
`2
`
`
`
`Case IPR2020-00131
`Patent RE45,380
`that Medtronic demonstrated a reasonable likelihood that claims 25-31, 34-37 and
`
`39 were invalid, but preliminarily disagreed with Medtronic’s argument as to claims
`
`32 and 33. Paper 22 at 23-33 (“-00129 Decision”). In particular, in the -00129
`
`Decision, the Board preliminarily determined that Medtronic did not demonstrate a
`
`reasonable likelihood of invalidating claims that require the distance between the
`
`inner diameter of the guide catheter and the guide extension catheter to be no more
`
`than one French (“One French Claims”). Id. at 31–33. Thus, it is possible that the
`
`Board may find claim 32 and, by virtue of its dependency, claim 33 not unpatentable
`
`in IPR2020-00129.
`
`The Board, however, preliminarily determined in IPR2020-00127 and -00130
`
`that the same Kontos grounds advanced in the instant Petition render the One French
`
`Claims unpatentable. Importantly, as shown in the below table, the ʼ032 and ʼ380
`
`patents recite substantially the same claim feature—which the Board preliminarily
`
`determined to be taught by the Kontos-based prior art—as claim 32 of the ’380
`
`patent.
`
`IPR No.
`Claim
`
`IPR2020-00127
`“The device of claim
`1 wherein the cross-
`sectional inner
`diameter of the
`coaxial lumen of the
`tubular structure is
`not more than one
`French smaller than
`the cross-sectional
`
`IPR2020-00130
`“The system of claim
`1, wherein the cross-
`sectional inner
`diameter of the
`coaxial lumen of the
`tubular structure is
`not more than one
`French smaller than
`the cross-sectional
`
`IPR2020-00131
`“The system of claim 25,
`wherein a uniform inner
`diameter of a lumen of
`the means for receiving
`the interventional device
`and guiding the
`interventional device
`deeper into the branch
`vessel is not more than
`
`3
`
`
`
`inner diameter of the
`guide catheter.” U.S.
`Patent No. 8,048,032
`at claim 8; see also
`id. at claim 17.
`
`inner diameter of the
`guide catheter.” U.S.
`Patent No. Re45,380
`at claim 8; see also
`id. at claim 18.
`
`Case IPR2020-00131
`Patent RE45,380
`one French smaller than
`a second inner diameter
`of the lumen of the means
`for guiding the
`interventional device to
`the location near the
`ostium of the branch
`vessel.” U.S. Patent No.
`Re45,380 at claim 32.
`Kontos, Adams,
`Takahashi
`Denied under § 314
`(Paper 20 at 5)
`
`Ground
`
`Decision
`
`Kontos, Adams,
`Takahashi
`“Petitioner has
`demonstrated a
`reasonable likelihood
`that claims 8 and 17
`would have been
`obvious over Kontos,
`Adams, and
`Takahashi.” (Paper
`20 at 31)
`
`Kontos, Adams,
`Takahashi
`“Petitioner has
`demonstrated a
`reasonable likelihood
`that claims 8 and 18
`would have been
`obvious over Kontos,
`Adams, and
`Takahashi.” (Paper
`20 at 28)
`
`
`It would certainly not be a just result if the Board were to ultimately find the
`
`One French Claims unpatentable in IPR2020-00127 and -00130, but not in IPR2020-
`
`00131. The Board can readily avoid this unjust result by instituting the instant
`
`Petition, which challenges claims 32 and 33 on the same grounds as in IPR2020-
`
`00127 and -00130. Any de minimis additional burden on the Board or Patent Owner
`
`in considering the challenge to claims 32 and 33 based on the Kontos grounds in this
`
`proceeding, as set forth below, is clearly outweighed by a conflicting finding of
`
`patentability for substantially similar claims, including in the same patent. For this
`
`reason, the Board should institute review of the instant Petition.
`
`4
`
`
`
`B.
`
`Case IPR2020-00131
`Patent RE45,380
`The Kontos Grounds and Challenged Claims in the Instant
`Petition Are Substantially Similar to Those In the Other
`Instituted IPRs and Will Not Burden the Board or the Parties.
`Underlying the Board’s Decision was the policy promulgation that multiple
`
`petitions “may place a substantial and unnecessary burden on the Board and the
`
`patent owner and could raise fairness, timing, and efficiency concerns.” Trial
`
`Practice Guide at 59 (citing 35 U.S.C. § 316(b)). Medtronic respectfully submits
`
`that these concerns are not implicated here because the same panel of the Board has
`
`already instituted review of other petitions—in particular, IPR2020-00127 and
`
`-00130—whose grounds and claim language extensively overlap with those in the
`
`instant Petition. Thus, instituting the instant Petition would place, at best, a de
`
`minimis burden on the Board and Patent Owner because the same or substantially
`
`the same issues will be litigated in co-pending IPR proceedings. Moreover, as set
`
`forth above in Section I.A, any such burden is far outweighed by the unfairness that
`
`would result if the Board finds certain challenged claims not unpatentable in
`
`IPR2020-00129, while finding substantially similar claims unpatentable in the
`
`related IPR petitions based on grounds substantially similar to those advanced in the
`
`instant Petition.
`
`The instant Petition relies on Kontos as the primary reference. Decision at 3.
`
`The Board has concurrently instituted three other IPR petitions also based on
`
`Kontos:
`
`5
`
`
`
`Case IPR2020-00131
`Patent RE45,380
`• IPR2020-00130 for the instant ’380 patent (for different challenged
`
`claims that recite “system” claims);
`
`• IPR2020-00127 for Patent No. 8,048,032 (“the ’032 patent”); and
`
`• IPR2020-00136 for Patent No. RE45,776 (“the ’776 patent”).
`
`All three challenged patents have identical specifications. But more important, the
`
`challenged claims and the grounds in the instant Petition are nearly identical to and
`
`extensively overlap with those in IPR2020-00127 and -00130, one of which involves
`
`the same ’380 patent. The extent of overlap, including the nearly identical nature of
`
`the grounds at issue, is summarized in the table below.
`
`
`
`
`Ground
`(Claims)
`
`Ground
`(Claims)
`
`Ground
`(Claims)
`
`Institution
`Decision
`
`
`
`IPR2020-00127
`Kontos and Adams
`(1-7, 9, 11-16, 18, 19)
`
`Kontos, Adams, and
`Takahashi
`(8, 17)
`Kontos, Adams, and
`Berg
`(20)
`Medtronic
`demonstrated a
`reasonable likelihood
`of success as to each
`petitioned ground
`
`IPR2020-00130
`Kontos and Adams
`(1-4, 6, 7, 9, 12-17, 19,
`20)
`Kontos, Adams, and
`Takahashi
`(8, 18)
`Kontos, Adams, and
`Berg
`(21)
`Medtronic
`demonstrated a
`reasonable likelihood
`of success as to each
`petitioned ground
`
`IPR2020-001311
`Kontos and Adams
`(25, 26, 28-31, 34-37,
`39)
`Kontos, Adams, and
`Takahashi
`(32, 33)
`Kontos, Adams, and
`Berg
`(38)
`Institution denied under
`§ 314(a)
`
`
`1 For simplicity sake, Medtronic excluded claim 27 from the above table, which
`
`included challenges unique to the -00131 IPR.
`
`6
`
`
`
`Case IPR2020-00131
`Patent RE45,380
`Thus, the instant Petition relies on the same primary reference (Kontos) and
`
`the same combination of prior art references that are already of record and discussed
`
`in instituted proceeding IPR2020-00127 and -00130. The Board and Patent Owner,
`
`therefore, will not have to review additional prior art for the instant Petition beyond
`
`that which is already at issue in the co-pending IPRs. Because the Board will
`
`necessarily perform nearly the same analysis in IPR2020-00127 and -00130—
`
`whether or not it grants Rehearing—instituting the instant Petition is not an
`
`inefficient use of the Board’s resources. Indeed, instituting the instant Petition will
`
`not “place a substantial and unnecessary burden on the Board [or] the patent owner”
`
`and will not raise “fairness, timing, and efficiency concerns” because the instant
`
`Petition and previously instituted IPR2020-00127 and -00130 raise almost identical
`
`issues. See Trial Practice Guide at 59; see also Samsung Electronics Co., Ltd. v.
`
`NuCurrent, Inc., IPR2019-00860, Paper 15 at 13-14 (P.T.A.B. Feb. 7, 2020)
`
`(granting Request for Rehearing because, among other reasons, “the Board ha[d]
`
`already instituted two other petitions . . . whose grounds and claims extensively
`
`overlap with those in the instant petition,” meaning there was “less[] burden on the
`
`Board and the Patent Owner”).
`
`Moreover, given that Medtronic submitted testimonial evidence from the
`
`same declarants for each of these proceedings, any burden on the Patent Owner can
`
`be further minimized by coordinating the depositions in these proceedings and
`
`7
`
`
`
`Case IPR2020-00131
`Patent RE45,380
`holding a consolidated oral hearing. Medtronic will accept any reasonable
`
`restrictions the Board may place on its deadlines to streamline these proceedings
`
`given the extensive overlap between them.
`
`C. Medtronic Is Willing to Limit the Instant Petition to Claims 32
`and 33 to Further Alleviate Any Efficiency or Burden Concerns.
`As explained in Section I.A above, the initial analysis in IPR2020-00129
`
`suggests that the Board may find claims 32 and 33 of the ’380 patent not
`
`unpatentable in that proceeding. But as also explained above in Section I.A, there is
`
`a reasonable likelihood that the Board would find these claims unpatentable if it
`
`instituted the instant Petition. And the proposed grounds for these claims in the
`
`instant Petition are substantially identical to those at issue in IPR2020-00127 and
`
`-00130. To further alleviate any efficiency or burden concerns that the Board may
`
`have, and should the Board find it necessary, Medtronic is willing to limit the
`
`challenge in the instant Petition to just claims 32 and 33 and withdraw its challenge
`
`to the remaining claims in the instant Petition.2 This concession will significantly
`
`decrease the already de minimis burden on the Board and Patent Owner in
`
`
`2 See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (noting that “in an inter
`
`partes review the petitioner is master of its complaint”). It follows that the Board
`
`may limit review to certain challenged claims because Medtronic proposes the
`
`limited review.
`
`8
`
`
`
`Case IPR2020-00131
`Patent RE45,380
`considering the instant Petition. For this additional reason, the Board should institute
`
`IPR.
`
`II. Conclusion
`For all of the above reasons, Medtronic respectfully requests that the Board
`
`reconsider its Decision and institute inter partes review of the instant Petition.
`
`Dated: July 27, 2020
`
`Respectfully submitted,
`
`By: /Cyrus A. Morton/
` Cyrus A. Morton (Reg. No. 44,954)
` Lead Counsel for Petitioners
`
`
`
`9
`
`
`
`Case IPR2020-00131
`Patent RE45,380
`
`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
`
`Request for Rehearing complies with the page limit set forth in 37 C.F.R.
`
`Respectfully submitted,
`
`By: /Cyrus A. Morton/
` Cyrus A. Morton (Reg. No. 44,954)
` Lead Counsel for Petitioners
`
`
`
`§ 42.24(a)(v).
`
`
`
`Dated: July 27, 2020
`
`
`
`
`
`
`
`Case IPR2020-00131
`Patent RE45,380
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on July 27, 2020 the foregoing Request for Rehearing was
`
`served on Patent Owner electronically at the following addresses:
`
`
`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
`
`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
`
`
`
`
`By:
`
`
`
`
`/Cyrus A. Morton/
`Cyrus A. Morton (Reg. No. 44,954)
`Lead Counsel for Petitioners
`
`
`
`
`
`
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
