throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 72
`Entered: November 25, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MEDTRONIC, INC. and MEDTRONIC VASCULAR, INC.,
`Petitioner,
`v.
`TELEFLEX INNOVATIONS S.À.R.L.,
`Patent Owner.
`
`
`IPR2020-00126 (Patent 8,048,032 B2)
`IPR2020-00127 (Patent 8,048,032 B2)
`IPR2020-00128 (Patent RE45,380)
`IPR2020-00129 (Patent RE45,380)
`IPR2020-00130 (Patent RE45,380)
`IPR2020-00132 (Patent RE45,760)
`IPR2020-00134 (Patent RE45,760)
`IPR2020-00135 (Patent RE45,776)
`IPR2020-00136 (Patent RE45,776)
`IPR2020-00137 (Patent RE47,379)
`IPR2020-00138 (Patent RE47,379) 1
`
`
`
`
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JON B. TORNQUIST, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`SNEDDEN, Administrative Patent Judge.
`
`
`1 This Decision addresses identical issues in each of these 11 related cases.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`

`

`IPR2020-00126, IPR2020-00127 (Patent 8,048,032 B2) IPR2020-00128,
`IPR2020-00129, IPR2020-00130 (Patent RE45,380) IPR2020-00132,
`IPR2020-00134 (Patent RE45,760) IPR2020-00135, IPR2020-00136 (Patent
`RE45,776) IPR2020-00137, IPR2020-00138 (Patent RE47,379)
`
`
`ORDER
`Denying Petitioner’s Motion for Good Cause Extension
`35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c)
`
`With our authorization, Medtronic, Inc. and Medtronic Vascular, Inc.
`(“Petitioner”) filed a Motion for a Good Cause Extension Pursuant to 37 §
`C.F.R. § 42.100(c). Paper 56.2 Also with our authorization, Teleflex
`Medical Devices S.À.R.L. (“Patent Owner”) filed an Opposition to
`Petitioner’s Motion for Good Cause Extension. Paper 61 (“Opp.”). For the
`reasons that follow, we deny Petitioner’s Motion.
`A. Background
`On November 12, 2019, Petitioner filed Petitions initiating each of the
`above-identified proceedings. See, e.g., IPR2020-00126, Paper 1.
`On June 8, 2020, the Board instituted trial in each of IPR2020-00126,
`IPR2020-00128, IPR2020-00129, IPR2020-00132, IPR2020-00135, and
`IPR2020-00137. See, e.g., IPR2020-00126, Paper 22. The one-year period
`normally available to issue a Final Written Decision in each of those cases
`expires on June 8, 2021.
`On June 26, 2020, the Board instituted trial in each of IPR2020-
`00127, IPR2020-00130, IPR2020-00134, IPR2020-00136, and IPR2020-
`00138 (Paper 20). See, e.g., IPR2020-00127, Paper 20. The one-year period
`normally available to issue a Final Written Decision in each of those cases
`expires on June 26, 2021.
`
`
`2 Petitioner filed similar motions in each of the above-identified proceedings.
`For purposes of expediency, we cite to Papers filed in IPR2020-00126
`unless otherwise indicated.
`
`2
`
`

`

`IPR2020-00126, IPR2020-00127 (Patent 8,048,032 B2) IPR2020-00128,
`IPR2020-00129, IPR2020-00130 (Patent RE45,380) IPR2020-00132,
`IPR2020-00134 (Patent RE45,760) IPR2020-00135, IPR2020-00136 (Patent
`RE45,776) IPR2020-00137, IPR2020-00138 (Patent RE47,379)
`
`
`On June 30, 2020, the Board issued a Consolidated Scheduling Order
`placing each of above-identified proceedings on the same trial schedule.
`DISCUSSION
`B. Petitioner’s Contentions
`In its Motion, Petitioner contends that the current IPR schedule is
`unworkable in view of the volume of information submitted with each of the
`Patent Owner Responses, including: 4 expert declarations and 4 fact
`declarations in support of the Patent Owner Responses; evidence of
`secondary indicia of nonobviousness; separate briefing attempting to
`antedate Petitioner’s prior art by establishing an earlier conception and
`reduction to practice date (“CRTP”); 65 documents and 7 declarations (one
`expert and 6 fact declarations) in support of Patent Owner’s CRTP briefs; 11
`motions to amend; up to 8 amended claims and a separate expert declaration
`in support of each proposed amendment; and 9 fact declarations attempting
`to authenticate exhibits. Mot. 1–2. “In sum, in conjunction with Due Date
`2, in addition to its briefing, Teleflex submitted up to 215 exhibits, six expert
`declarations, and twenty fact declarations per IPR.” Id. at 2.
`Petitioner further contends that Patent Owner will not be prejudiced
`by a three-month extension. Id. at 3–5.
`C. Patent Owner’s Contentions
`In its Opposition, Patent Owner contends that “[t]he 13 IPR
`proceedings that Medtronic chose to initiate have not ‘ballooned’ in any
`unexpected or unpredictable way.” Opp. 1.
`Patent Owner further contends that extending the statutory deadline
`will prejudice Patent Owner. Specifically, Patent Owner contends that the
`
`3
`
`

`

`IPR2020-00126, IPR2020-00127 (Patent 8,048,032 B2) IPR2020-00128,
`IPR2020-00129, IPR2020-00130 (Patent RE45,380) IPR2020-00132,
`IPR2020-00134 (Patent RE45,760) IPR2020-00135, IPR2020-00136 (Patent
`RE45,776) IPR2020-00137, IPR2020-00138 (Patent RE47,379)
`
`“need for swift adjudication is particularly important here, where Teleflex
`filed suit immediately after Medtronic introduced its infringing product and
`where Medtronic relied on the present IPRs to both overcome Teleflex’s
`preliminary injunction motion and obtain a stay of the district court
`proceedings.” Id. at 2.
`Patent Owner further contends that extending the statutory deadline
`will shift inconvenience to Patent Owner’s council. Id. at 3–4. Specifically,
`Patent Owner contends that
`
`Teleflex’s counsel already compressed all of the work
`necessary to prepare the PO Response-related filings for all
`eleven instituted IPRs within the normal one-year schedule. It
`would be starkly unfair to now allow Medtronic a much longer
`than normal time to prepare its Reply-related filings. What’s
`more, if Medtronic’s unprecedented request to extend the
`statutory deadline is granted and if the Board institutes the four
`additional IPR petitions that Medtronic filed, Teleflex’s PO
`Responses in the new IPRs would be due at the same time
`Teleflex is preparing its sur-replies and preparing for trial in
`the present eleven IPRs.
`Id. at 4.
`D. Analysis
` “An inter partes review proceeding shall be administered such that
`pendency before the Board after institution is normally no more than one
`year.” 37 C.F.R. § 42.100(c). Although “[that] time can be extended by up
`to six months for good cause by the Chief Administrative Patent Judge,” the
`Board has rarely extended any review beyond the one-year period. See id.;
`see also 37 C.F.R. § 42.1(b) (seeking to “secure the just, speedy, and
`inexpensive resolution of every proceeding”).
`
`4
`
`

`

`IPR2020-00126, IPR2020-00127 (Patent 8,048,032 B2) IPR2020-00128,
`IPR2020-00129, IPR2020-00130 (Patent RE45,380) IPR2020-00132,
`IPR2020-00134 (Patent RE45,760) IPR2020-00135, IPR2020-00136 (Patent
`RE45,776) IPR2020-00137, IPR2020-00138 (Patent RE47,379)
`
`
`Having considered the parties’ positions and evidence of record,
`summarized above, we are not persuaded that good cause exists to extend
`the statutory deadline in these cases. We do not discern any issue
`developing in these cases that to lead us to a conclusion that these cases are
`developing in an unexpected and unpredictable way. We recognize that the
`issues presented in these cases are complex. However, Petitioner chose the
`PTAB as the forum to address the patentability issues knowing the
`complexity of the issues that would likely be raised, including the possibility
`that Patent Owner would file a motion to amend. The issues identified by
`Petitioner as a reason to request extension, including Patent Owner’s CRTP
`and secondary considerations arguments, are issues that commonly arise in
`inter partes review.
`Furthermore, we make our decision in view of our various Board rules
`that reflect the strong public interest in securing just and speedy resolution
`of IPRs. See 37 C.F.R. §§ 42.1(b), 42.5(c)(1). Congress viewed the
`statutory deadline as an important tool for ensuring inter partes reviews
`serve the public interest in prompt review of issued patents. H.R. REP. 112–
`98, 45, 47 (2011) (IPR statutory deadline an improvement over inter partes
`reexaminations that can last “several years”). Moreover, we are persuaded
`by Patent Owner’s arguments that any extension of statutory deadline will
`merely shift inconvenience to Patent Owner’s council. Opp. 3–4.
`Accordingly, we deny Petitioner’s request for a good cause extension
`to the statutory deadline.
`It is therefore,
`
`5
`
`

`

`IPR2020-00126, IPR2020-00127 (Patent 8,048,032 B2) IPR2020-00128,
`IPR2020-00129, IPR2020-00130 (Patent RE45,380) IPR2020-00132,
`IPR2020-00134 (Patent RE45,760) IPR2020-00135, IPR2020-00136 (Patent
`RE45,776) IPR2020-00137, IPR2020-00138 (Patent RE47,379)
`
`
`ORDERED that Petitioner’s request for a good cause extension of the
`final written decision deadline is denied.
`
`
`
`
`
`
`
`FOR PETITIONER:
`
`Cyrus Morton
`cmorton@robinskaplan.com
`
`Sharon Roberg-Perez
`sroberg-perez@robinskaplan.com
`
`Christopher Pinahs
`cpinahs@robinskaplan.com
`
`
`FOR PATENT OWNER:
`
`Derek Vandenburgh
`dvandenburgh@carlsoncaspers.com
`
`Dennis Bremer
`dbremer@carlsoncaspers.com
`
`
`
`6
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket