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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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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
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`v.
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`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
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`Case IPR2020-00131
`U.S. Patent No. RE45,380
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`PATENT OWNER’S RESPONSE TO PETITIONERS’
`REQUEST FOR REHEARING
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`Patent Owner Teleflex files this 5-page response to Petitioner Medtronic’s
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`Request for Rehearing pursuant to authorization received from the Board during a
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`telephone call on July 30, 2020. On June 26, 2020, the Board issued a Decision
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`denying institution of inter partes review for claims 25-39 of U.S. Patent No.
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`RE45,380 (“the ʼ380 patent”). Paper 20 at 5. The Board’s Consolidated Trial
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`Practice Guide specifies that the Board has a general policy of one petition per
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`patent. Medtronic sought to bring not just two or three petitions against the ’380
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`patent, but four. The Board determined that Medtronic failed to justify the fourth
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`petition challenging the ʼ380 patent and accordingly exercised its discretion under
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`35 U.S.C. § 314 to deny the petition. Id.
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`As the Board correctly recognized, Medtronic’s 2020-00129 IPR petition
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`already contained two challenges to claims 25-39 of the ’380 patent—one based on
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`the Itou reference, and a second based on the Ressemann reference. Paper 20 at 5.
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`Medtronic’s justification for its 2020-00131 IPR petition challenging the same
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`claims a third time—that it needed a “back-up” challenge in the event Itou was not
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`prior art—was completely unsupported. Medtronic’s -00129 IPR petition already
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`contained a “back-up” challenge to claims 25-39: in the event Itou was found not
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`to be prior art, “the petition in the -00129 IPR would still contain grounds
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`addressing every challenged claim based on a primary reference (Ressemann) that
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`Patent Owner has not attempted to swear behind.” Paper 20 at 5. The -00131 IPR
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`1
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`petition, based on the Kontos reference, was just a third, unnecessary challenge to
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`that same set of claims.
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`With its Request for Rehearing, Medtronic asks again for this third bite at
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`the apple, providing new reasons it purportedly needs a third bite. However, it fails
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`to point to anything that the Board misapprehended or overlooked in its decision
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`not to institute the -00131 IPR. Thus, Medtronic has failed to carry its burden to
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`show that the Board’s non-institution decision should be modified. See 37 C.F.R.
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`§42.71(d). What’s more, even Medtronic’s new arguments are unsupported.
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`Medtronic’s Request for Rehearing should be denied.
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`I.
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`Argument
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`A. Medtronic’s Request for Rehearing Should Be Denied Because it
`Improperly Raises New Arguments
`A party requesting rehearing of a Board decision has the burden to show that
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`the decision should be modified. 37 C.F.R. § 42.71(d). The rehearing request
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`must “specifically identify all matters the party believes the Board misapprehended
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`or overlooked, and the place where each matter was previously addressed in a
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`motion, an opposition, or a reply.” Id.
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`Medtronic already had an opportunity to explain why the -00131 petition
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`was necessary in view of the three other petitions it filed challenging the ʼ380
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`patent. Paper 2. Medtronic used that opportunity to explain that two petitions per
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`claim were necessary because of the priority dispute related to Itou. Paper 2 at 1-3.
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`2
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`The Board considered this argument and found that the -00129 IPR provided
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`sufficient “back-up” for the Itou-based grounds. Paper 20 at 5. The Board’s
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`decision was correct, and Medtronic does not now dispute that.
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`Instead, Medtronic’s rehearing request is based on new—though equally
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`unsupported—reasons as to why it purportedly needs this third-bite petition.
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`Medtronic now argues, for the first time, that non-institution of the -00131 IPR will
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`result in conflicting patentability findings and that review will not burden the
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`Board or the parties because the challenged claims are “substantially similar” to
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`the other instituted claims. See generally Paper 21 at 2-8. A rehearing request is
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`not the proper place to raise these new arguments, and Medtronic’s request should
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`be denied.
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`B. Claims 32 and 33 of the ʼ380 Patent Are Distinct from the Claims
`Challenged in other Instituted Petitions
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`Even if the Board is inclined to engage Medtronic’s new arguments on the
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`substance, the new arguments are unsupported. Medtronic’s request for rehearing
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`is premised on the position that claims 32 and 33 are similar to the already-
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`instituted “one-French” claims 8 and 17 in the -00127 IPR and 8 and 18 in the -
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`00130 IPR. According to Medtronic, this presents the risk of inconsistent
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`outcomes. Paper 21 at 3-4. But claims 32 and 33 of the ʼ380 patent are different
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`from these claims. For example, unlike the “one-French” claims of the -00127 and
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`-00130 IPRs, claims 32-33 (by virtue of depending from claim 25) require a guide
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`3
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`extension catheter with a means for receiving an interventional device “from an
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`intermediate or distal portion” of the standard guide catheter. Ex. 1801 at cl. 25.
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`Claims 32-33 (by virtue of depending from claim 25) are also means-plus-function
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`claims, unlike the “one-French” claims challenged by the -00127 and -00130 IPRs.
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`Ex. 1801 at 13:43-14:64. The analysis for these means-plus-function claims is
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`distinct from the analysis for the non-means-plus-function claims in the other two
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`IPRs.
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`For the same reasons as the Board already found, instituting review of
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`claims 25-39 of the ʼ380 patent on the bases set forth in the -00131 IPR petition
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`will most certainly “place a substantial and unnecessary burden on the Board and
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`the patent owner” and “raise fairness, timing, and efficiency concerns.” Trial
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`Practice Guide at 59. The law, facts, and analysis that would bear on the claims at
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`issue in the -00131 IPR is different from that of the other IPRs Medtronic
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`identified.
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`C. Medtronic Made the Strategic Decision to Challenge the Claim 25
`Set on Two “Back-Up” Grounds and It Should Not Get a Third
`Bite at the Apple
`The Kontos-based -00131 Petition is the third challenge Medtronic raises
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`with respect to claims 25-39 of the ʼ380 patent. Medtronic also challenged claims
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`25-39 of the ʼ380 patent on grounds based on Itou or, alternatively, Ressemann.
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`IPR2020-00129, Paper 1 at 7-8. As a result, claims 25-39 of the ʼ380 patent
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`4
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`represent the only claim set for which Medtronic chose to present not just one, but
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`two “back-up” grounds for the Itou reference—the -00131 petition is effectively a
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`“back-up” for the “back-up.” Now, after the Board preliminarily rejected
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`Medtronic’s first two arguments regarding claims 32 and 33, the Itou-based and
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`Ressemann-based grounds (see IPR2020-00129, Paper 22 at 30-33), Medtronic
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`wants to use its Kontos-based grounds for a third opportunity to challenge the same
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`claims. This directly contravenes the principles of fairness and efficiency
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`underlying the Board’s discretion in instituting multiple petitions. Medtronic’s
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`offer to limit the challenged claims to claims 32 and 33 of the ʼ380 patent (see
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`Paper 21 at 8) does nothing to alleviate this burden, as these claims are still subject
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`to an entirely different legal and analytical framework than the claims in the -
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`00127 and -00130 IPRs.
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`II. Conclusion
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`For the foregoing reasons, Teleflex respectfully requests that the Board deny
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`Medtronic’s request for rehearing.
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`5
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`Dated: August 6, 2020.
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`Respectfully submitted,
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`/J. Derek Vandenburgh /
`J. Derek Vandenburgh (Lead Counsel)
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh
` & Lindquist, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`Email:
`DVandenburgh@carlsoncaspers.com
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`Lead Counsel for Patent Owner
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`6
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned certifies that on August 6, 2020, a true and correct copy of the
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`foregoing Patent Owner’s Response to Petitioners’ Request for Rehearing was
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`served via electronic mail upon the following:
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`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`Robins Kaplan LLP
`800 LaSalle Avenue, Suite 2800
`Minneapolis, MN 55401
`Phone: 349-8500
`Fax: 612-339-4181
`Email: Cmorton@robinskaplan.com
`Email: Sroberg-perez@robinskaplan.com
`Email: Cpinahs@robinskaplan.com
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`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel for Patent Owner)
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`7
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