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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`
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`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
`
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`
`Patent Owner
`_____________________________
`
`Cases IPR2019-0132, IPR2019-0133, IPR2019-0134
`U.S. Patent No. RE 45,760E
`______________________________
`
`PETITIONERS’ EXPLANATION OF MATERIAL DIFFERENCES
`BETWEEN PETITIONS AND PETITION RANKING FOR
`U.S. PATENT NO. RE 45,760E
`
`
`
`Medtronic, Inc. and Medtronic Vascular, Inc. (“Petitioners”) filed three
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`concurrent inter partes review (“IPR”) petitions against U.S. Pat. No. RE 45,760E
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`(“the ’760 Patent;” Ex-1001). However, the claims are split such that only two
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`petitions challenge claims 25-42, 44, and 47, with a third petition addressed to
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`claims 48 and 51-53. The Board should consider and institute all three petitions.
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`1. Three petitions are necessary due to a priority date dispute.
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`The Board’s Trial Practice Guide states that “more than one petition may be
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`necessary” where, as here, “there is a dispute about priority date requiring
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`arguments under multiple prior art references.” TPG UPDATE (July 2019) at 26.
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`As outlined below, Petitioners filed multiple petitions for this very reason.
`
`Itou-Based Petition
`Ground 1: Claims 25-31, 33-38, 41, 42, 44, and 47 as
`Petition 1
`IPR2019-0132
`anticipated by U.S. Pat. No. 7,736,355 (“Itou”).
`
`Ground 2: Claims 25, 30, 32, 39, and 40 as obvious over Itou in
`view of U.S. Pat. No. 7,604,612 (“Ressemann”) and/or the
`knowledge of a POSITA
`
`Ground 3: Claim 32 as obvious over Itou, U.S. Pat. App.
`2005/0015073 (“Kataishi”), and/or the knowledge of a POSITA
`
`Ground 4: Claim 32 as obvious over Itou in view of U.S. Pat.
`No. 5,980,486 (“Enger”) and the knowledge of a POSITA
`Ressemann-Based Petition
`Ground 1: Claims 25-42, 44, and 47 as obvious over
`Petition 2
`IPR2019-0133
`Ressemann in view of Takahashi et al., New Method to Increase
`a Backup Support of a 6 French Guiding Coronary Catheter
`(“Takahashi”), and/or the knowledge of a POSITA
`
`
`
`
`1
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`
`
`Ground 2: Claim 32 as obvious over Ressemann in view of
`Takahashi, Kataishi, and the knowledge of a POSITA
`
`Ground 3: Claim 32 as obvious over Ressemann in view of
`Takahashi, Enger, and/or the knowledge of a POSITA
`Combined Itou and Ressemann-Based Petition for Claims 48 and 51-53
`Ground 1: Claims 48, 51, and 53 as anticipated by Itou
`Petition 3
`IPR2019-0134
`
`
`Ground 2: Claims 48, 51, and 53 as obvious over Ressemann
`and/or the knowledge of a POSITA
`
`Ground 3: Claim 52 as obvious over Itou in view the
`knowledge of a POSITA
`
`Ground 4: Claims 48 and 51-53 as obvious over Ressemann in
`view of Takahashi, and/or the knowledge of a POSITA
`
`Petition 1 asserts Itou as a primary reference. Itou has an effective filing date
`
`
`
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`of September 23, 2005. (Ex-1007.) But Patent Owner has alleged a conception and
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`reduction to practice date in 2004—a date much earlier than the priority date on the
`
`face of the ’760 Patent.1 (Ex-1084; Ex-1001.) Petitioners therefore submitted
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`another Petition (Petition 2) that covers a similar set of claims as Petition 1 but
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`asserts prior art references with priority dates before 2004. This second petition
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`(Petition 2) relies on Ressemann as the primary reference. Ressemann was filed on
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`August 9, 2002, and it is prior art under both pre-AIA §102(e) and post-AIA
`
`
`1 The ʼ760 Patent claims priority to U.S. Pat. No. 8,292,850, which, on its face, is
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`entitled to a priority date of May 3, 2006. (Ex-1001.)
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`
`
`2
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`
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`§102(a)(1), (2). (Ex-1008.) Patent Owner is not able to swear behind Ressemann,
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`as it may attempt to do for Itou in Petition 1 and Petition 3 (Grounds 2 and 4).
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`
`
`Due to the number of claims that Petitioners needed to address and the
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`accompanying word count issues, discussed infra, Petitioners combined Itou- and
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`Ressemann-based grounds for claims 48 and 51-53 in a third petition (Petition 3).
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`As shown in the above chart, the grounds in Petition 3 are divided similar to the
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`divide between Petition 1 and Petition 2. That is, Petition 3 addresses the same set
`
`of claims across two Itou-based grounds and two Ressemann-based grounds. This
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`split is driven by Patent Owners’ conception and reduction to practice position,
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`which necessitates the filing of multiple petitions.
`
`
`
`The Board’s decision in Microsoft Corp. v. IPA Technologies, Inc. is
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`instructive. IPR2019-00810, Paper 12 (PTAB Oct. 16, 2019). There, as here, the
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`patent owner raised a priority date issue necessitating “arguments under multiple
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`prior art references.” Id. at 15. In Microsoft Corp., the priority date dispute
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`concerned a single prior art reference. Here, the priority dispute is more
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`fundamental—Patent Owner has raised a priority date issue regarding the
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`challenged patent itself. It would be manifestly unfair if the Board exercises its
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`discretion under § 314(a) to deny Petition 2 (or the Ressemann-based grounds in
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`Petition 3) and post-institution Patent Owner successfully swears behind Itou.
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`Accordingly, the Board should consider and institute Petitions 1, 2, and 3.
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`
`
`3
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`
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`2. Three petitions are necessary because of the length and number of
`claims asserted by Patent Owner in district court.
`The ’760 Patent has 28 lengthy claims. Claim 25 of the ’760 Patent, for
`
`
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`example, consists of 339 words. Mere recitation of the challenged claims takes up
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`almost 2,000 words.
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`Given Patent Owner’s allegations in district court, Petitioners must also
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`challenge a significant number of claims in the ’760 Patent and consider multiple
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`potential interpretations of claim limitations. The Board’s Trial Practice Guide
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`states that “more than one petition may be necessary” where, as here, “the patent
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`owner has asserted a large number of claims in litigation.” TPG UPDATE (July
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`2019) at 26. In the district court litigation, Patent Owner has refused to identify the
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`specific claims—or a specific number of claims—it will assert against Petitioner.
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`(Ex-1079 ¶ 71 (“Medtronic has infringed and continues to infringe one or more
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`claims of the ’760 patent, including at least claims 25, 28, 29, 32, and 48…;” see
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`also Ex-1083, ¶ 5d.)
`
`The Board’s decision in Microsoft Corp. is again instructive. There, as here,
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`“word count limitations and a large number of challenged claims” supported the
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`filing of multiple petitions. IPR2019-00810, Paper 9 at 14. In Microsoft Corp., the
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`patent owner generally alleged infringement of “one or more claims” of the subject
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`patent. IPR2019-00810, Paper 9, 1 (“The complaint identified only claim 61, while
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`generally alleging that Petitioner infringed ‘one or more claims.’”) The patent
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`
`
`4
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`
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`owner also opposed the streamlining of disputed issues, rejecting petitioner’s
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`proposal to consider a set of twenty-four exemplary claims. IPR2019-00810, Paper
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`9 at 13.
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`Here, too, Petitioner cannot reasonably fit its arguments into a single
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`petition. Petitioner cannot reasonably fit both its Itou-based and Ressemann-based
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`arguments into a single petition—both of which are necessary, as outlined above—
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`because of Patent Owner’s position regarding its alleged conception and reduction
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`to practice date. And Patent Owner has rejected reasonable proposals to narrow the
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`parties’ dispute (See Ex-1083 at 2 (¶ 5d).)
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`3. The Board should consider and institute all three petitions.
`For the reasons set forth above, Petitioners respectfully request consideration
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`and institution of all three petitions challenging claims of the ’760 Patent.
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`Petitioners request that the Board consider its petitions in the following order:
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`Petition 1 (IPR2019-0132) and Petition 3 (IPR2019-0134), followed by Petition 2
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`(IPR2019-0133).
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`
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`
`
`5
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`
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`RESPECTFULLY SUBMITTED,
`
`ROBINS KAPLAN LLP
`
`
`Date: November 13, 2019
`800 LaSalle Ave, Suite 2800
`Minneapolis, MN 55402
`612.349.8500
`
`
`
`
`
`
`
`/ Cyrus A. Morton /
`Cyrus A. Morton
`
`Attorney for Petitioner
`Medtronic, Inc.
`
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that PETITIONERS’ EXPLANATION OF
`
`
`
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`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
`
`RANKING FOR U.S. PATENT NO. RE 45,760 was served on November 13,
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`2019, by Federal Express mail to the USPTO correspondence address of record
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`listed below:
`
`
`
`Paul Onderick
`PATTERSON THUENTE PEDERSEN, P.A.
`80 South 8th Street
`4800 IDS Center
`Minneapolis, MN 55402-2100
`
`Courtesy copies were also sent to the following address of record for counsel
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`in Vascular Solutions LLC, et al. v. Medtronic, Inc., et al., No. 19-cv-01760 (D.
`
`Minn., filed July 2, 2019):
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`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`
`/ Cyrus A. Morton /
`
`Cyrus A. Morton
`Registration No. 44,954
`Robins Kaplan LLP
`cmorton@robinskaplan.com
`
`Attorney for Petitioners
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`7
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