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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 IPR2020-0132, IPR2020-0133, IPR2020-0134
`Patent RE 45,760E
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`PATENT OWNER RESPONSE TO PETITIONER’S EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
`RANKING FOR U.S. PATENT NO. RE 45,760E
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`Petitioners Medtronic, Inc. and Medtronic Vascular, Inc. (collectively
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`“Medtronic”) filed three separate petitions against the ’760 patent, challenging a
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`total of only 23 claims. Further, Medtronic’s three petitions include a total of six
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`different grounds brought against a single claim—claim 32. IPR2020-00132,
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`Paper 1 at 8 (Grounds 2, 3, 4); IPR2020-00133, Paper 1 at 7 (Grounds 1, 2, 3).
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`Medtronic’s strategic choice to rely on a section 102(e) reference does
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`not justify institution of three petitions. Medtronic contends it needs three
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`petitions because Teleflex is asserting an invention date that pre-dates the Itou
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`reference (Ex. 1007). Paper 3 at 1-3. Teleflex did invent before the priority date
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`of Itou. Indeed, Itou’s prior art status is at issue in the parallel district court
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`litigation, and Medtronic was aware of substantial corroborated evidence showing
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`Teleflex’s prior invention before it filed its Petitions. Nevertheless, Medtronic
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`chose to rely on a § 102(e) reference and did not even try to address the issue of
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`Teleflex’s invention date in its Petitions. Thus this is not one of the “rare” cases in
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`which “two petitions by a petitioner may be needed.” November 2019
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`Consolidated Trial Practice Guide (“TPG”) at 59. Where, as here, a Petitioner
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`proceeds with filing petitions relying on a primary reference that it knows full-well
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`is likely to be antedated, three petitions are not justified.
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`The Board routinely declines to institute multiple petitions, even where there
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`is a priority date dispute. See, e.g., Comcast Cable Comms., LLC v. Rovi Guides,
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`1
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`Inc., IPR2019-01354, Paper 10 at 6 (PTAB Jan. 27, 2020) (denying institution of
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`two of three petitions where a potential priority dispute existed); Dropbox, Inc. v.
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`Whitserve LLC, IPR2019-01018, Paper 13 at 8-9 (PTAB Nov. 1, 2019) (denying
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`institution of a second petition where parties disputed the priority date of multiple
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`prior art references); Comcast Cable Comms, LLC v. Rovi Guides, Inc., IPR2019-
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`00279, Paper 10 at 6-7 (PTAB July 1, 2019) (declining to institute four of five filed
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`petitions where a potential priority dispute existed). Furthermore, the TPG
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`explains that three or more petitions are almost never appropriate (TPG at 59).
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`Medtronic has failed to justify why it needs not just two petitions, but three.
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`Medtronic cites Microsoft Corp. v. IPA Techs Inc., IPR2019-00810, Paper
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`12 (PTAB Oct. 16, 2019). See Paper 3 at 3. But Microsoft was different. First,
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`the petitioner in Microsoft explained that the “main difference” between its
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`petitions was that each petition challenged different claims. Id. at 12. Thus,
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`denying one of the petitions would completely eliminate the petitioner’s
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`opportunity to challenge those claims. Here, in contrast, Medtronic filed two
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`petitions attacking the same claims based on different references, and a third
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`petition challenging only four claims. Second, while Medtronic is correct that
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`there was a potential dispute about the priority date of Microsoft’s Kiss reference,
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`the petitioner explained that “the same analysis of the combination of Kiss/FIPA97
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`is the basic prior art challenge to every claim in each petition.” Id. Paper 9 at 1-2
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`2
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`(emphasis added). Thus, if the Kiss reference was found to not qualify as prior art,
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`all of the petitions would fail. Consequently, the petitioner’s filing of multiple
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`petitions was clearly not intended to provide a “back-up” petition because of a
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`potential priority issue. Medtronic’s reliance on Microsoft is inapt.
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`Medtronic’s strategic choice to include excessive, duplicative challenges
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`to the same claims does not justify institution of three petitions. Medtronic
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`contends that the number and length of the claims, as well as “word count issues,”
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`require three petitions. Paper 3 at 3-5. But the three Petitions challenge only a
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`total of 23 claims—hardly an unusually high number. What’s more, Medtronic
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`challenges the same claims on many duplicative grounds—far more than needed to
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`provide “back-up” in the event the Itou reference is not prior art. For example, as
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`explained above Medtronic challenges claim 32 of the ’760 patent on six separate
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`grounds.
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`Medtronic’s contention that it could not fit all arguments into a single
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`petition, or two petitions, at most, is a problem it created itself. Rather than
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`judiciously selecting its strongest arguments, Medtronic chose to advance
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`excessive, cumulative challenges to the same claims based on the same references.
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`For example:
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`• Medtronic’s first petition (IPR2020-0132) challenges claim 32 on
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`three separate grounds:
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`3
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`o Ground 2: Itou + Ressemann
`o Ground 3: Itou + Kataishi
`o Ground 4: Itou + Enger
`• Medtronic’s second petition (IPR2020-0133) challenges claim 32 on
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`three separate grounds:
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`o Ground 1: Ressemann + Takahashi
`o Ground 2, Ressemann + Takahashi + Kataishi
`o Ground 3: Ressemann + Takahashi + Enger
`• Medtronic’s third petition (IPR2020-0134) challenges claims 48, 51,
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`and 53 on three separate grounds:
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`o Ground 1: Itou
`o Ground 2: Itou + Ressemann
`o Ground 3: Ressemann
`Medtronic’s third petition challenges only four claims total, based on the same
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`primary references, Itou and Ressemann, asserted in its first and second petitions.
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`Medtronic’s argument that it could not have sufficiently challenged all claims in
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`one Itou-based petition and one Ressemann-based petition strains credulity.
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`Again, Medtronic’s reliance on Microsoft is inapposite. Microsoft
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`concerned five petitions challenging 89 claims; here Medtronic seeks to use three
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`petitions to challenge only 23 claims. See Microsoft, IPR2019-00810, Paper 12 at
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`4
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`14. Medtronic’s deliberate drafting choices do not reasonably justify its choice to
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`pursue an overly burdensome, inefficient, and unfairly duplicative attack on the
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`’760 patent. See, e.g., Pfenex, Inc. v. GlaxoSmithKline Biologicals SA, IPR2019-
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`01027, P12 at 13-14 (PTAB Nov. 13, 2019) (“[T]he mere fact that Petitioner may
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`have had additional art to assert, including a different statutory basis for asserting
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`that art, does not, on these facts, justify the additional burden of a second petition
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`directed to the same claims.”).
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`Instituting three petitions will result in inefficiency and unfairness. As
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`discussed above, Medtronic is aware that Teleflex intends to swear behind Itou,
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`and parallel district court litigation addressing this issue is ongoing. Concurrent
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`adjudication of these issues before the district court and the Board will result in
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`duplicative work, unnecessary and counterproductive litigation costs, the
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`possibility of inconsistent decisions, and will not promote the efficient
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`administration of the Office or the integrity of the patent system. See TPG at 56
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`(the Director must consider “the effect of any such regulation [under this section]
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`on the economy, the integrity of the patent system, the efficient administration of
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`the Office, and the ability of the Office to timely complete proceedings instituted
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`under this chapter”).
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`5
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`Dated: April 8, 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 April 8, 2020, a true and correct copy of the foregoing
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`Patent Owner Response to Petitioner’s Explanation of Material Differences
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`Between Petitions and Petition Ranking for U.S. Patent No. RE 45,760E 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)
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