Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 24
`Entered: October 14, 2020
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC. and MEDTRONIC VASCULAR, INC.,
`Petitioners,
`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 Petitioner’s Request on Rehearing of Decision
`Denying Institution of Inter Partes Review
`35 U.S.C. § 42.71(d)
`
`
`
`
`
`
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 24
`Entered: October 14, 2020
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC. and MEDTRONIC VASCULAR, INC.,
`Petitioners,
`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 Petitioner’s Request on Rehearing of Decision
`Denying Institution of Inter Partes Review
`35 U.S.C. § 42.71(d)
`
`
`
`
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`
`INTRODUCTION
`Medtronic, Inc. and Medtronic Vascular, Inc. (collectively
`“Petitioner”) filed a request for rehearing (Paper 21, “Req. Reh’g”) of our
`decision (Paper 20, “Decision” or “Dec.”) denying institution of inter partes
`review of claims 25–39 of U.S. Reissue Patent RE45,380 (Ex. 1801, “the
`’380 patent”). Patent Owner, Teleflex Innovations S.À.R.L., filed a
`Response to Petitioner’s request for rehearing. Paper 22.
`STANDARD FOR REHEARING
`Pursuant to 37 C.F.R. § 42.71(d):
`A party dissatisfied with a decision may file a single request for
`rehearing without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`When reconsidering a decision on institution, we review the decision for an
`abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists
`where a “decision [i]s based on an erroneous conclusion of law or clearly
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.
`Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed.
`Cir. 1988).
`
`ANALYSIS
`The Petition in IPR2020-00131 was the fourth filed by Petitioner
`against the ’380 patent and is identified by Petitioner as “Petition 2B.”
`Paper 2, 2. The other three petitions are identified by Petitioner as “Petition
`1A,” “Petition 1B,” and “Petition 2A” and assigned case numbers IPR2019-
`00128, IPR2019-00129, and IPR2019-00130, respectively. Id. In its papers,
`
`2
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`Petitioner asserted that the fourth petition challenging claims of the ’380
`patent was justified because Petitions 1A and 1B rely on a primary reference
`to which Patent Owner has “raised a priority date issue” and Petition 2B, in
`contrast to Petition 2A, addresses claims that are in means-plus-function
`format. Id. at 2–4 (quoting Microsoft Corp. v. IPA Techs., Inc., IPR2019-
`00810, Paper 12 at 15 (PTAB Oct. 16, 2019)).
`We did not find Petitioner’s arguments related to the current Petition
`persuasive because Petition 1B contains grounds addressing every means-
`plus-function claim challenged in Petition 2B, based on a reference that has
`a filing date that is prior to Patent Owner’s asserted date of conception and
`reduction to practice. Dec. 5. Petitioner does not disagree with this analysis
`or point to any facts or discussion in the Petition that the Board
`misapprehended or overlooked. Instead, Petitioner asserts that in IPR2020-
`00127 (challenging a related patent) and in IPR2020-00130 (Petition 2A),
`the Board found that Petitioner had demonstrated a reasonable likelihood
`that claims reciting, inter alia, a coaxial lumen with an inner diameter that is
`not more than one French smaller than the inner diameter of the guide
`catheter, would have been obvious over the combined disclosures of Kontos,
`Adams, and Takahashi. Req. Reh’g 3–4. And because Petitioner considers
`the Kontos, Adams, and Takahashi ground challenging claims 32 and 33 in
`the current Petition nearly identical to the grounds found to present a
`reasonable likelihood of success in IPR2020-00127 and Petition 2A,
`Petitioner contends there is a possibility that nearly identical claims are
`determined to be “unpatentable in IPR2020-00127 and -00130, but not in
`IPR2020-00131.” Id. at 4.
`
`3
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`
`Petitioner contends that because there is considerable overlap between
`the grounds raised in Petition 2B, IPR2020-00127, and Petition 2A,
`instituting an inter partes review in this case would not require analysis of
`additional prior art references or consideration of different obviousness
`arguments. Req. Reh’g 6–7. Nevertheless, Petitioner offers to streamline
`this proceeding by limiting the Petition to claims 32 and 33, if rehearing is
`granted. Id. at 8.
`We instituted review of claims 32 and 33 in IPR2020-00129 (Petition
`1B). See IPR2020-00129, Paper 22, 7, 38. Thus, Petitioner will have an
`opportunity to address the patentability of those claims in that proceeding.
`Id. at 7. Any potential for inconsistent results between the proceedings is the
`result of Petitioner’s strategic decisions as to how to separate its grounds and
`arguments between four different petitions.
`Petitioner’s offer to limit its challenge to claims 32 and 33 simply
`comes too late. It is an inefficient use of the Board’s and Patent Owner’s
`time and resources for Petitioner to challenge claims of a single patent in
`four separate IPR petitions and then, only after seeing the Board’s institution
`decisions, agree to limit the scope of a petition in a request for rehearing.
`For the foregoing reasons, we determine that Petitioner has not
`established that we misapprehended or overlooked any matter in declining to
`institute an inter partes review. Nor has Petitioner shown that the Decision
`is based on erroneous conclusions of law, clearly erroneous factual findings,
`or a clear error of judgment. See PPG, 840 F.2d at 1567. Thus, the request
`for rehearing is denied.
`
`4
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`
`ORDER
`
`It is:
`ORDERED that Petitioner’s Request for Rehearing in IPR2020-00131
`is denied.
`
`5
`
`
`
`IPR2020-00131
`Patent RE45,380
`
`FOR PETITIONER:
`
`Cyrus Morton
`Sharon Roberg-Perez
`Christopher Pinhas
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`sroberg-pinhas@robinskaplan.com
`cpinhas@robinskaplan.com
`
`
`FOR PATENT OWNER:
`Derek VanDenBurgh
`Dennis Bremer
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`dvandenburgh@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`
`
`6
`
`
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