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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 IPR2020-00132
`Patent RE 45,760E
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PRELIMINARY RESPONSE
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`I. MEDTRONIC ACTIVELY SOUGHT, THEN IGNORED, TELEFLEX’S
`EVIDENCE SHOWING A PRIOR INVENTION DATE
`Medtronic argues it is not “required in the Petition to foresee and prebut”
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`Teleflex’s invention date evidence. Paper 12 at 3. But Medtronic fails to
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`acknowledge that it both requested and obtained the details of Teleflex’s invention
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`date and supporting evidence before filing its Petition. Months before filing its
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`Petition, Medtronic demanded expedited discovery in the related district court
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`case, including discovery specifically directed to Teleflex’s asserted conception
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`and reduction to practice. Ex. 2075 at 10–11; Ex. 2045. Medtronic’s request was
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`granted, and Teleflex produced documents and served a lengthy Interrogatory
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`Response describing in detail the timeline over which the invention was conceived
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`and reduced to practice and identifying supporting evidence. Ex. 2045 at 3–10.
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`Medtronic now complains that this Interrogatory Response was served “less
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`than a week before Medtronic filed its Petition.” Paper 12 at 4. But the date on
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`which Medtronic chose to file its Petition was entirely within Medtronic’s control.
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`When Medtronic filed its 13 IPR petitions, it still had seven months before the one-
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`year statutory deadline. Medtronic strategically timed the filing of its 13 IPR
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`petitions to use them as a tool to try to convince the district court to deny
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`Teleflex’s preliminary injunction motion. See Paper 9 at 3, 27–28. Further,
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`Medtronic’s argument is belied by the fact it filed an expert declaration in the
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`district court case that addressed Teleflex’s prior invention evidence a mere two
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`days after filing its Petition. Vascular Sols. LLC v. Medtronic, Inc., No. 19-cv-
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`01760, Dkt. 112 at ¶¶ 29–36 (D. Minn. Nov. 15, 2019).
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`Medtronic admits it had at least 17 of the exhibits supporting Teleflex’s pre-
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`Itou invention before filing the Petition. Paper 12 at 4. Medtronic
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`mischaracterizes the nature of the additional “new exhibits” Teleflex submitted in
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`connection with its Preliminary Response. These exhibits, which Teleflex located
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`after it served the Interrogatory Response, merely provide additional corroboration
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`for the timeline and evidence Medtronic already had. Prior to filing its Petition,
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`Medtronic knew Teleflex’s prior invention position—and supporting evidence—in
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`the form of Teleflex’s detailed Interrogatory Response narrative that also identified
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`dozens of supporting documents. That additional evidence was provided later does
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`not excuse Medtronic from addressing the extensive evidence it already had.
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`Medtronic next argues that its IPR counsel did not have access to Teleflex’s
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`Interrogatory Response and supporting documents. Paper 12 at 5. But this
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`argument misses the mark — Medtronic (the party) was fully aware of, and had
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`access to, this information. Medtronic cannot claim ignorance based on its
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`decision to hire separate IPR and litigation counsel. Further, Medtronic never
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`asked Teleflex whether it could use the prior invention information in connection
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`with its Petitions. Medtronic’s attempt to remain ignorant was further
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`demonstrated when, prior to filing its Petitions, it noticed and then withdrew a Rule
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`30(b)(6) corporate deposition topic on conception and reduction to practice. Ex.
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`2076 at Topic No. 24; Ex. 2077.
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`Medtronic incorrectly argues that depriving it of an opportunity to rebut
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`Teleflex’s arguments will shift the burden of proof. The issue currently before the
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`Board is whether Medtronic’s Petition justifies a lengthy and duplicative IPR
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`proceeding to evaluate the validity of Teleflex’s patents. Medtronic’s failure to
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`address the key issue of whether its lead reference qualifies as prior art deprived
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`the Board of information necessary to decide whether institution is warranted.
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`II. MEDTRONIC WAS FULLY AWARE OF EVIDENCE OF
`SECONDARY CONSIDERATIONS
`Medtronic argues for a bright-line rule that a petition need only address
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`secondary considerations when there has been “a decision by the Patent Office,
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`ITC, or District Court crediting that evidence.” Paper 12 at 2. No such rule exists,
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`and the Board should decline Medtronic’s invitation to create one. As the Board’s
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`prior decisions demonstrate, whether a petitioner must address secondary
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`considerations in a petition is fact-specific. See, e.g., Robert Bosch Tool Corp. v.
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`SD3, LLC, IPR2016-01753, Paper 15 at 28–30 (PTAB Mar. 22, 2017) (“In this
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`particular case, we determine it is appropriate to review and address the objective
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`evidence of nonobviousness proffered by the Patent Owner for purposes of this
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`Decision [Denying Institution].”) (emphasis added). The fact that Medtronic can
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`cite cases where, on the facts of those particular cases, the Board found that a
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`patent owner failed to meet its burden of production concerning secondary
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`considerations is irrelevant. Indeed, in Robert Bosch Tool Corp., the Board
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`considered secondary considerations at the institution stage even though the ITC
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`Initial Determination issued after the petition was filed. IPR2016-01753, Paper 15
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`at 30 n.9.
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`Contrary to Medtronic’s assertion that it must “cobble[] together disparate
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`disclosures to make Teleflex’s argument for it,” (Paper 12 at 2), Medtronic was
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`fully aware of the objective evidence supporting the validity of the GuideLiner
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`patents. For example, Teleflex’s motion for preliminary injunction in the district
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`court case—filed over a month before Medtronic filed its Petition—contained
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`three separate sections with specific titles directed to long-felt need, commercial
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`success and copying. Ex. 1073 at 2, 5, 9. The objective evidence was also
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`provided in other documents that Medtronic already had, as explained in detail in
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`the Preliminary Response. See, e.g., Ex. 2043 (Welch Decl.), ¶¶ 4, 9–18, 34–35;
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`Ex. 2046 (Root 2013 Decl.) ¶ 39, 43–45. In the parallel district court case,
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`Medtronic has even deposed a Teleflex Director of Sales. What’s more, a mere
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`two days after filing its first Petition, Medtronic filed two declarations in the
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`district court seeking to explain, substantively, why Teleflex’s evidence did not
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`actually show copying. Teleflex v. Medtronic, Dkt. 110, ¶¶ 61–67, Dkt. 109.
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`There is no reason Medtronic could not have done the same thing in the
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`Petition. Medtronic’s contention that Teleflex’s evidence of secondary
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`considerations is not developed enough to address is just not credible.
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`Here, not only did Teleflex meet its burden, but Medtronic’s own actions
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`show that the burden of production was met. Medtronic was undisputedly aware
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`of an important competitor (Boston Scientific) holding a license to the GuideLiner
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`patents, and Medtronic itself admittedly asked for a license. Medtronic sought a
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`license to the GuideLiner patents because it was aware of the invention’s
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`commercial success, industry praise, and satisfaction of a long-felt need. This real-
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`world evidence confirms that Medtronic cannot credibly argue that the burden of
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`production had not been met.
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`Ultimately, the Board must be able to accurately evaluate the likelihood that
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`a petitioner will prevail and whether institution is an appropriate use of the Board’s
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`resources. Medtronic’s failure to address the substantial evidence of secondary
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`considerations of which it was aware prevents the Board from making a fully
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`informed decision. Where the petitioner knows the whole story, the Board should
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`not be forced to make an institution decision based on only half of the story.
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`Medtronic’s willful ignorance of the substantial, compelling evidence of secondary
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`considerations unfairly handicaps the Board’s ability to make a fair institution
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`decision.
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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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`Dated: April 6, 2020.
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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 April 6, 2020, a true and correct copy of the foregoing
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO PRELIMINARY RESPONSE
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`was 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)
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