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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.,
`Petitioner,
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`v.
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`TELEFLEX INNOVATIONS S.À.R.L.,
`Patent Owner.
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`Case IPR2020-00134
`Patent RE 45,760
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`PETITIONERS’ REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`IPR2020-00134
`Patent RE 45,760
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`I. Medtronic had no obligation to address conception and reduction to
`practice in the Petition.
`Conception and reduction to practice (“CRTP”) are issues for the trial phase
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`that Medtronic did not have to address in its Petition.1 Indeed, “Patent Owner bears
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`the burden of proof regarding its antedating contention,” meaning the “Petitioner is
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`entitled to respond to th[at] contention after discovery.” Mylan Pharms. Inc. v.
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`Boehringer Ingelheim Pharms. Inc., IPR2016-01563, Paper 14 at *4 (PTAB Dec.
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`7, 2016). As the Board has previously explained: “[i]t is premature at the
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`institution stage to address the merits of Patent Owner’s antedating contention.”
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`Id.; see also Pfizer Inc. v. Genentech, Inc., IPR2017-01488, Paper 27 at *15
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`(PTAB Dec. 1, 2017). The Board routinely rejects arguments “that Petitioners were
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`required in the Petition to foresee and prebut Patent Owner’s argument and
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`evidence purporting to show a reduction to practice of certain subject matter.”
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`Associated British Foods PLC v. Cornell Research Found., IPR2019-00577, Paper
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`25 at *31 (PTAB July 25, 2019); Mylan, Paper 14 at *3-4.
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`Medtronic should be afforded the opportunity to respond to Teleflex’s CRTP
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`theory. In particular, Medtronic should be able to take discovery and submit expert
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`1 Teleflex’s attempt to swear behind Itou is moot because the AIA applies. Pet. at
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`14-15. The Court’s decision is relevant because it finds a substantial question on
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`written description for the same reason argued in the Petition. Ex. 1688 at 9.
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`1
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`IPR2020-00134
`Patent RE 45,760
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`testimony addressing the holes in Teleflex’s evidence, including on the CRTP of
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`each limitation (something Teleflex and its expert has not done). Even more
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`concerning, is the evidence Teleflex has withheld from these proceedings. In
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`denying Teleflex’s motion for preliminary injunction, the District Court pointed
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`out that “a report dated December 1, 2005—months after Teleflex’s claimed
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`reduction to practice—states that ‘[t]he rapid exchange version requires additional
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`engineering and is not included in our 2006 forecasts.’” Ex. 1688 at 13. Teleflex
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`did not submit that contradictory report with its POPR. Thus, Medtronic would be
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`prejudiced if the burden of proof were shifted and it was deprived of any
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`opportunity to address such issues and rebut Teleflex’s arguments and evidence.
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`Notably, Teleflex disclosed limited evidence on CRTP in the litigation
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`before Medtronic filed its Petition. In Teleflex’s first interrogatory response from
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`August 15, 2019, it only disclosed that “the inventors came up with the idea for
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`what became the GuideLiner catheter product and that led to the inventions
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`claimed in the patents-in-suit at some point in 2004 after the annual Transcatheter
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`Cardiovascular Therapeutics conference that took place in late September of that
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`year.” Ex. 2045 at 3-4. The response identified just three supporting attorney’s
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`eyes only (“AEO”) documents from 2005. Id. at 4; see, e.g., Exs. 2003-2004. That
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`disclosure was far from a complete picture of Teleflex’s theory—it did not even
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`offer alleged dates for CRTP.
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`2
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`IPR2020-00134
`Patent RE 45,760
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`Teleflex did not begin to disclose its actual positions until much later. On
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`November 6, 2019 (less than a week before Medtronic filed its Petition) Teleflex
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`supplemented its interrogatory response to provide its first narrative explanation,
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`marking it AEO. In total, prior to the Petition’s filing, Teleflex only disclosed
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`roughly 17 exhibits and its supplemental interrogatory responses in the district
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`court litigation. Exs. 2002-2004, 2014-2015, 2017-2019, 2022-2025, 2027, 2036,
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`2040-2041, 2043, 2045. All of the documents were designated AEO and raised
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`more questions than they clarified on Teleflex’s CRTP position. For example,
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`invoices for part orders do not show CRTP of any particular claim limitation. See,
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`e.g., Ex. 2027; see also Ex. 1688 at 12-13 (“[T]hese documents do little to
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`corroborate either diligence or reduction to practice of the Rx version.”). Nor did
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`drawings of potential catheter designs, which Teleflex did not map to each and
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`every limitation in its responses. Ex. 2022. Moreover, several days was not
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`sufficient time to explicate Teleflex’s arguments and then respond.
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`Nor was Medtronic legally permitted to use any of the evidence from the
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`district court. Teleflex saw to that by designating the documents under the
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`Protective Order, which provides that “[a] confidential document may be used only
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`in this action.” Ex. 1686, § 3(a). Consequently, Medtronic was prohibited by court
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`order from using that evidence in its Petition. Nor does the Protective Order allow
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`Medtronic’s IPR counsel any access to those materials. Id., §§ 1(a), 3(b)-(c).
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`3
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`IPR2020-00134
`Patent RE 45,760
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`Further, Teleflex’s evidence and arguments continued to evolve after
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`Medtronic filed its Petition. In its POPR, Teleflex relied on roughly 22 new
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`exhibits that it had not produced prior to the Petition. See, e.g., Exs. 2005-2011,
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`2013, 2016, 2020-2021, 2026, 2028-2036, 2038. This evidence is not analogous to
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`LG Elecs., Inc. v. Wi-LAN Inc., where the Board found that a draft Patent
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`Application showed all limitations sufficient to antedate a prior art reference.
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`IPR2018-00704, Paper 14 at 8-20 (PTAB Sept. 5, 2018). Despite the volume of
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`Teleflex’s exhibits, in the order denying Teleflex’s motion for preliminary
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`injunction, the District Court’s found a “lack of primary documentation that would
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`typically be generated during the development and testing of a medical device.”
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`Ex. 1688 at 13-14. The Court also noted “a remarkable discrepancy between the
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`robust documentation of the development of the OTW [over-the-wire] version and
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`the meager documentation that Teleflex has submitted to corroborate the reduction
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`to practice of the Rx [rapid-exchange] version.” Id. at 12. These types of issues
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`demonstrate why Petitioners should not be saddled with predicting how patent
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`owners could potentially piece together evidence of uncertain applicability. Indeed,
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`even Teleflex has been unable to present a cogent theory sufficient to overcome the
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`“substantial question” of validity based on Itou in the District Court. Id. at 14.
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`Thus, Medtronic’s Petition did not need to address and prebut Teleflex’s CRTP.
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`1. Medtronic did not have to raise secondary considerations in its Petition.
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`4
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`IPR2020-00134
`Patent RE 45,760
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`Medtronic had no obligation to address secondary considerations in the
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`Petition. The Board has repeatedly rejected Teleflex’s arguments to the contrary.
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`See, e.g., Lowe’s, Cos. v. Nichia Corp., IPR2017-02011, Paper 13 at *18 (PTAB
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`Mar. 12, 2018); C&D Zodiac, Inc. v. b/e Aerospace, Inc., IPR2017-01275, Paper
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`12 at *15 (PTAB Oct. 31, 2017); Petroleum Geo-Services Inc. v. W. Geco LLC,
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`IPR2014-01477, Paper 18 at *32 (PTAB Mar. 17, 2015). Indeed, the Board
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`rejected the same argument from Teleflex’s counsel in Arctic Cat, Inc. v. Polaris
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`Industries Inc., IPR2017-00433, Paper 17 at *9-10 (PTAB July 5, 2017). The
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`Board explained that “Patent Owner does not identify, nor are we aware of any
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`persuasive authority requiring Petitioner in this case to address secondary
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`considerations, not previously presented to the Office, in the Petition.” Id. at *10.
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`“[T]he burden of production rests on Patent Owner with regard to secondary
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`considerations,” and thus “full consideration of evidence of secondary
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`considerations of this nature is not necessary” before institution. Id. at *10, *19.
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`The Board should reach the same conclusion here. Secondary considerations
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`have not been raised, fully developed, or adjudicated by the Patent Office or a
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`District Court. See Exs. 1602-1603. Requiring petitioners to engage in guessing
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`games would waste the parties’ and the Board’s resources. Under these
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`circumstances, Medtronic’s Petition did not have to raise secondary considerations,
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`and the Board should grant institution.
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`5
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`IPR2020-00134
`Patent RE 45,760
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`Dated: April 24, 2020
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`Respectfully submitted,
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`Attorney for Patent Owner
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`6
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`IPR2020-00134
`Patent RE 45,760
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on April
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`24, 2020, a copy of PETITIONERS’ REPLY TO PATENT OWNER’S
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`PRELIMINARY RESPONSE was served in its entirety by electronic mail on
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`Patent Owner’s counsel at the following addresses indicated in Patent Owner’s
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`Mandatory Notices:
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`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
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`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
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`Dated: April 24, 2020
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`Respectfully submitted,
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`Attorney for Patent Owner
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`7
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