Case: 21-2359 Document: 59 Page: 1 Filed: 06/05/2023
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`
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`MEDTRONIC, INC., MEDTRONIC VASCULAR,
`INC.,
`Appellants
`
`v.
`
`TELEFLEX INNOVATIONS S.A.R.L.,
`Appellee
`______________________
`
`2021-2359, 2021-2362, 2021-2366
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2020-
`00129, IPR2020-00134, IPR2020-00138.
`______________________
`
`Decided: June 5, 2023
`______________________
`
`JENNIFER L. GRABER, Wilmer Cutler Pickering Hale
`and Dorr LLP, Washington, DC, argued for appellants.
`Also represented by BRITTANY BLUEITT AMADI; TASHA JOY
`BAHAL, MARK CHRISTOPHER FLEMING, HANNAH ELISE
`GELBORT, MADELEINE C. LAUPHEIMER, Boston, MA.
`
` JOSEPH W. WINKELS, Carlson, Caspers, Vandenburgh
`& Lindquist PA, Minneapolis, MN, argued for appellee.
`Also represented by PETER M. KOHLHEPP, TARA CATHERINE
`NORGARD, J. DEREK VANDENBURGH.
` ______________________
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`MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L.
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`
`Before MOORE, Chief Judge, LOURIE and DYK, Circuit
`Judges.
`
`MOORE, Chief Judge.
`Medtronic, Inc. and Medtronic Vascular, Inc. (collec-
`tively, Medtronic) appeal inter partes review decisions of
`the Patent Trial and Appeal Board holding Medtronic
`failed to establish the unpatentability of various claims of
`U.S. Patent Nos. RE45,380; RE45,760; and RE47,379 (the
`patents-in-suit). Medtronic also appeals the Board’s deci-
`sions granting Teleflex Innovation S.à.r.l’s (Teleflex) mo-
`tion to amend certain claims of the ’379 patent. For the
`following reasons, we affirm.
`BACKGROUND
`Coronary artery disease, in which plaque buildup nar-
`rows the lumen (i.e., the tubular cavity) of a patient’s ar-
`tery and obstructs blood flow, affects millions of Americans.
`Cardiologists refer to this narrowing of a patient’s artery
`as stenosis. See ’380 patent at 1:48–49.1 For decades, car-
`diologists have used devices known as guide catheters to
`deliver interventional cardiology devices (e.g., guidewires,
`stents, balloon catheters) designed to alleviate stenoses.
`Id. at 1:39–52. Treatment typically involves inserting the
`guide catheter into the patient’s femoral or radial artery
`and guiding the catheter to the patient’s aorta until the dis-
`tal tip of the catheter reaches the ostium (i.e., opening) of
`the coronary artery. Id. at 1:53–59. Interventional devices
`can then be inserted into the proximal opening of the cath-
`eter, advanced through the lumen of the catheter using a
`
`
`1 The patents-in-suit share a common specification.
`For simplicity, all citations to the written description will
`refer to the ’380 patent.
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`guidewire, and delivered past the stenosis.2 Id.
`These procedures involved certain challenges and
`risks. For example, “[c]rossing tough lesions can create
`enough backward force to dislodge the guide catheter from
`the ostium of the artery being treated,” disrupting the pro-
`cedure and potentially harming the patient. Id. at 1:59–
`63, 4:56–62. This problem drove practitioners to seek new
`catheter designs and methods with increased “back-up sup-
`port” that would prevent backward dislodgment of the
`catheter. Id. at 1:59–67. For example, one method dis-
`closed in a prior art journal article (Takahashi) involves a
`“mother-and-child” technique in which a standard 5
`French guide catheter is inserted into a 6 French guide
`catheter and advanced until its distal tip is deep within the
`patient’s ostium, a technique known as deep seating.3 Id.
`at 2:40–51; see J.A. 2276–80 (Takahashi). However, deep
`seating using standard guide catheters in the mother-and-
`child technique also involved risks, including that the stiff
`distal end of the inner catheter could damage the coronary
`artery when deeply embedded. ’380 patent at 2:51–56.
`The patents-in-suit, owned by Teleflex, sought to ad-
`dress these problems by using a coaxial extension catheter
`insertable into standard guide catheters that offered in-
`creased back-up support and the ability to deep seat with-
`out the attendant drawbacks of traditional mother-and-
`child systems. See id. at 2:9–27, 4:56–5:27. In a preferred
`embodiment, the disclosed extension catheter includes
`three parts: (1) a proximal substantially rigid portion 20
`(yellow); (2) a reinforced portion 18 (blue); and (3) a distal
`
`2 The proximal and distal ends of a catheter respec-
`tively refer to the ends nearest to and farthest from the
`treating physician.
`3 One French is the standard unit of measurement
`for catheter diameters. One French equals one third of a
`millimeter. See J.A. 1952 ¶ 50.
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`flexible tip 16 (pink). See id. at 6:31–7:15; see also id. at
`Fig. 4 (reproduced below as annotated by Medtronic’s ex-
`pert). The proximal end of the guide extension catheter in-
`cludes a “side opening,” i.e., a partially cylindrical region
`(red circle), which permits the extension catheter to receive
`and deliver interventional cardiological devices while it is
`within the guide catheter. Id. at 10:1–20. As depicted in
`Figure 4, the side opening may include multiple inclined
`regions separated by a non-inclined region, a structure re-
`ferred to herein as a double-inclined side opening. The pa-
`tents-in-suit also disclose and claim embodiments in which
`the diameter of the extension catheter is no more than one
`French smaller than the diameter of the guide catheter,
`thereby preserving maximal volume within the coaxial lu-
`men for receiving interventional devices. See id. at 3:28–
`49.
`
`
`PROCEDURAL HISTORY
`In November of 2019, Medtronic petitioned for inter
`partes review of the patents-in-suit, alleging the challenged
`claims would have been obvious over U.S. Patent No.
`7,604,612 (Ressemann), which discloses an evacuation
`sheath assembly with a distal side opening used to aspirate
`embolic material while occluding blood flow using sealing
`balloons, in view of various combinations of secondary ref-
`erences. The secondary references included: (1) U.S. Pa-
`tent No. 5,439,445 (Kontos), which discloses a support
`catheter for delivering angioplasty balloons; (2) U.S. Patent
`Application Publication No. 2005/0015073 (Kataishi),
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`disclosing a suction catheter designed to remove thrombi
`in blood vessels; and (3) Takahashi.
`The Board instituted each petition and issued final
`written decisions holding some claims unpatentable and
`others not. Medtronic, Inc. v. Teleflex Innovations S.à.r.l.,
`No. IPR2020-00129, 2021 WL 2524890 (P.T.A.B. June 17,
`2021) (’380 Decision); Medtronic, Inc. v. Teleflex Innova-
`tions S.à.r.l., No. IPR2020-00134, Paper No. 122 (P.T.A.B.
`June 7, 2021) (’760 Decision); Medtronic, Inc. v. Teleflex In-
`novations S.à.r.l., IPR2020-00138, Paper No. 104 (P.T.A.B.
`June 7, 2021) (’379 Decision).4,5 In addition, the Board
`granted Teleflex’s contingent motion to amend certain
`claims of the ’379 patent and determined the amended
`claims were not unpatentable. ’379 Decision, at J.A. 133–
`64.
`
`The parties organize the claims determined not un-
`patentable into three (overlapping) sets, a categorization
`we adopt for our analysis. The One-French Claims are
`claims 32 and 33 of the ’380 patent; claims 48 and 51–53 of
`the ’760 patent; and claims 46–51 of the ’379 patent. The
`Double-Incline Claims are claim 27 of the ’380 patent and
`claims 44, 46–48, and 51 of the ’379 patent. Lastly, the
`Substitute Claims are claims 46, 47, and 49–51 of the ’379
`patent.
`
`DISCUSSION
`Medtronic appeals the Board’s determination that
`Medtronic failed to prove the One-French and Double-In-
`cline Claims would have been obvious. It also challenges
`the Board’s decision granting Teleflex’s motion to introduce
`
`
`4 The ’760 Decision is included in the Joint Appendix
`at J.A. 53–77.
`5 The ’379 Decision is included in the Joint Appendix
`at J.A. 78–167.
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`substitute claims in the ’379 patent. We address each issue
`in turn.
`
`I
`We first address Medtronic’s arguments that the Board
`erred in determining the One-French and Double-Incline
`Claims are not unpatentable as obvious.6 Obviousness is a
`question of law based on underlying facts. In re Gartside,
`203 F.3d 1305, 1316 (Fed. Cir. 2000). We review the
`Board’s ultimate determination of obviousness de novo and
`its underlying findings of fact for substantial evidence. Id.
`A. ONE-FRENCH CLAIMS
`Claim 48 of the ’760 patent is representative of the
`One-French Claims. It recites:
`48. A system comprising:
`a guide catheter configured to be advance-
`able through a main blood vessel to a posi-
`tion adjacent to an ostium of a coronary
`artery, the guide catheter having a lumen
`extending from a hemostatic valve at a
`
`6 Teleflex contends Medtronic forfeited various argu-
`ments by failing to raise them in its Requests for Director
`Rehearing made pursuant to 37 C.F.R. § 42.71(d), which
`requires the petitioning party to “specifically identify all
`matters the party believes the Board misapprehended or
`overlooked.” Specifically, Teleflex argues Medtronic’s al-
`leged failure to comply with § 42.71(d), while not a jurisdic-
`tional bar to our review, grants us discretion to find
`unraised issues forfeited. We need not resolve this ques-
`tion. Even if Medtronic forfeited these arguments, an issue
`we do not decide, we have the discretion to reach them on
`appeal. Ciena Corp. v. Oyster Optics, LLC, 958 F.3d 1157,
`1161 (Fed. Cir. 2020) (“[I]t is a discretionary decision to for-
`give waivers of non-jurisdictional challenges . . . .”).
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`proximal end of the guide catheter to a dis-
`tal end of the guide catheter that is adapted
`to be positioned adjacent to the ostium of
`the coronary artery;
`a guide extension catheter configured to be
`partially advanceable through the guide
`catheter and into the coronary artery, the
`guide extension catheter having a length
`such that the distal end of the guide exten-
`sion catheter is extendable through the lu-
`men and beyond the distal end of the guide
`catheter, and a proximal end of the guide
`extension catheter is extendable through
`the hemostatic valve at the proximal end of
`the guide catheter;
`the guide extension catheter including, in a
`proximal to distal direction, a substantially
`rigid segment, a segment defining a side
`opening, and a tubular structure defining a
`lumen coaxial and in fluid communication
`with the lumen of the guide catheter, the
`lumen of the tubular structure having a
`length that is shorter than the length of the
`lumen of the guide catheter and having a
`uniform cross-sectional inner diameter that
`is not more than one French size smaller
`than the cross-sectional inner diameter of
`the lumen of the guide catheter, the side
`opening extending for a distance along the
`longitudinal axis of the segment defining
`the side opening and accessible from a lon-
`gitudinal side defined transverse to the lon-
`gitudinal axis, and the side opening and
`the lumen of the tubular structure config-
`ured to receive one or more stents or bal-
`loon catheters when the segment defining
`the side opening and a proximal end
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`portion of the tubular structure are posi-
`tioned within the lumen of the guide cath-
`eter and the distal end of the guide
`extension catheter extends beyond the dis-
`tal end of the guide catheter;
`wherein the segment defining the side
`opening comprises a portion of the guide
`extension catheter that is more rigid than
`a distal end portion of the tubular struc-
`ture.
`’760 patent at claim 48 (emphasis added).
`As relevant on appeal, Medtronic asserted the One-
`French Claims would have been obvious over Ressemann
`in view of Takahashi. ’380 Decision, at *3; ’760 Decision,
`at J.A. 59; ’379 Decision, at J.A. 88. Medtronic argued a
`skilled artisan would have been motivated to modify
`Ressemann by removing its sealing balloons and replacing
`its inflation lumen with a pushrod or wire so that it could
`be used as an extension catheter. See, e.g., ’380 Decision,
`at *16. Medtronic alleged a skilled artisan would be moti-
`vated to remove the sealing balloons and inflation lumen
`used to aspirate emboli because, inter alia, Ressemann
`teaches its device can also be used to deliver certain inter-
`ventional cardiological devices such as stents or angio-
`plasty balloons. Id. It further alleged a skilled artisan
`would be motivated to incorporate Takahashi’s five-in-six
`system into Ressemann as modified to achieve the in-
`creased back-up support touted by Takahashi. Id.
`Teleflex responded that Medtronic’s modifications
`would not have been obvious because they would render
`Ressemann inoperable as a catheter capable of providing
`embolic protection (i.e., preventing embolic debris from es-
`caping down the bloodstream while the embolism is being
`removed), which Teleflex alleged was the entire purpose of
`Ressemann. Id. Teleflex further argued the modifications
`were based on hindsight and that the alleged benefits could
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`not be achieved without further modifications not detailed
`in the petitions. See, e.g., ’379 Decision, at J.A. 118–19. In
`reply, Medtronic argued removing Ressemann’s sealing
`balloons would not render it inoperable for embolic protec-
`tion because other non-occlusive, distal protection devices
`could be used instead. ’380 Decision, at *16.
`The Board agreed with Teleflex and held Medtronic
`failed to establish the One-French Claims would have been
`obvious. ’380 Decision, at *16–17; ’760 Decision, at J.A. 71–
`72; ’379 Decision, at J.A. 119–21. Contrary to Medtronic’s
`position that Ressemann is a multi-purpose device, the
`Board found Ressemann’s “entire premise” was to provide
`embolic protection using sealing balloons and that Med-
`tronic’s “extensive” modifications would eliminate “the ca-
`pability of Ressemann’s aspiration catheter to act as an
`aspiration catheter.” ’379 Decision, at J.A. 120; ’380 Deci-
`sion, at *16 (finding Medtronic’s “intended-purpose-de-
`stroying modification counsels strongly against an
`obviousness determination”); ’760 Decision, at J.A. 71–72
`(same). The Board rejected Medtronic’s argument that em-
`bolic protection could be preserved through other means,
`noting Medtronic did not raise these arguments in its peti-
`tions and that the additional extensive modifications were
`further evidence of hindsight bias. E.g., ’380 Decision, at
`*17.
`On appeal, Medtronic argues the Board legally erred
`by focusing on the detrimental effects of Medtronic’s modi-
`fications to one of Ressemann’s intended purposes (embolic
`protection) to the neglect of Ressemann’s other purpose of
`delivering interventional cardiological devices. According
`to Medtronic, the Board’s reasoning conflicts with our deci-
`sion in Intel Corp. v. Qualcomm Inc., in which we held the
`“intended purpose of [a reference] does not control” the ob-
`viousness inquiry. 21 F.4th 784, 800–01 (Fed. Cir. 2021).
`We do not agree.
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`Medtronic’s argument, although styled as a legal chal-
`lenge, is premised on an assertion of fact contrary to the
`Board’s findings, namely that Ressemann is suitable for
`procedures that do not employ occlusive sealing balloons.
`The Board did not find that Ressemann’s device was in-
`tended to function for any purpose, including delivering in-
`terventional devices, in the absence of sealing balloons.
`Rather, it found Ressemann’s “entire premise” was to use
`sealing balloons to prevent embolic flow and that removing
`the balloons would “render Ressemann completely inopera-
`ble for its stated purpose of embolic protection.” ’379 Deci-
`sion, at J.A. 120 (emphasis added) (adopting Teleflex’s
`positions). That finding is supported by substantial evi-
`dence,
`including Teleflex’s expert
`testimony
`that
`“Ressemann’s sealing balloons are critical to [its] goal of al-
`lowing a lesion to be treated without embolic debris being
`carried downstream” and Ressemann’s own disclosures
`emphasizing the role of sealing balloons for embolic protec-
`tion. Id. (citing J.A. 20596–97 ¶ 148; J.A. 2240–43
`(Ressemann) at 8:12–15, 12:31–53, 13:15–14:39). Med-
`tronic’s experts also acknowledged Ressemann is “directed
`to an embolic protection device” and that Ressemann’s
`sealing balloons were a “necessary part” of that function.
`J.A. 12192 at 396:20–397:20; see also ’379 Decision, at J.A.
`118 (citing Medtronic’s expert testimony that “[i]f a
`POSITA desired to only use Ressemann for delivering ther-
`apy devices, . . . Ressemann’s device would be simplified to
`eliminate the features necessary for evacuating emboli,” in-
`cluding sealing balloons).
`Medtronic contends this finding is inconsistent with
`Ressemann’s disclosures that its device can be used in
`other surgical procedures, including to deliver interven-
`tional devices. See J.A. 2239 at 6:25–34 (describing
`Ressemann’s device “is contemplated for use . . . in other
`procedures . . . where reduction or removal of a blockage in
`a blood vessel is beneficial”); J.A. 2248 at 23:8–20 (disclos-
`ing Ressemann’s evacuation sheath is “designed to allow
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`for the passage of interventional devices”). Teleflex’s ex-
`perts, however, explained that sealing balloons would still
`be used during such procedures to occlude blood flow. J.A.
`20597 ¶ 148; see also J.A. 2243 (Ressemann) at 13:15–14:39
`(discussing the use of sealing balloons to occlude blood flow
`during stent delivery). Medtronic relies on other disclo-
`sures indicating an elastomeric tube could be used in lieu
`of sealing balloons, see J.A. 2240 at 8:41–44, but this does
`not lead to a conclusion that the Board’s finding is not sup-
`ported by substantial evidence.7 Consolo v. Fed. Mar.
`Comm’n, 383 U.S. 607, 620 (1966) (“[T]he possibility of
`drawing two inconsistent conclusions from the evidence
`does not prevent an administrative agency’s finding from
`being supported by substantial evidence.”); Velander v.
`Garner, 348 F.3d 1359, 1378 (Fed. Cir. 2003) (“If the evi-
`dence will support several reasonable but contradictory
`conclusions, we will not find the Board’s decision unsup-
`ported by substantial evidence simply because the Board
`chose one conclusion over another plausible alternative.”).
`Even if Ressemann contemplates use cases without
`sealing balloons, the Board’s reasoning does not constitute
`legal error. Medtronic contends the Board’s finding is in-
`consistent with our holding in Intel that the intended pur-
`pose of a prior art device is not dispositive of whether a
`skilled artisan would have been motivated to modify it. See
`21 F.4th at 800–01.
`
`
`7 Teleflex argues Medtronic forfeited its argument
`that sealing balloons are not mandatory because they could
`be replaced by an elastomeric tube. It also disputes, as a
`factual matter, whether inflatable elastomeric tubes are
`meaningfully distinct from sealing balloons. We will not
`resolve this factual dispute on appeal. Even if Medtronic’s
`argument is not forfeited and has a reasonable basis in fact,
`it does not compel reversal of the Board’s finding.
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`But there is no conflict. We read the Board as finding
`that Ressemann teaches against using its device without
`sealing balloons because doing so while advancing inter-
`ventional cardiac devices like those contemplated for use
`with the challenged claims might produce safety concerns.
`See, e.g., ’380 Decision, at *8, *16 (finding that removing
`sealing balloons would undermine Ressemann’s ability to
`“capture particulate matter during a procedure,” for exam-
`ple “positioning and placing [a] stent”); J.A. 20565 ¶ 103,
`20597 ¶ 148 (Teleflex expert asserting that a person of or-
`dinary skill in the art would not “insert and deploy a bal-
`loon or stent catheter through the Ressemann device
`without first using the balloons to occlude blood flow”); ’380
`patent at abstract & 1:42–44 (invention directed at exten-
`sion catheter for use with interventional devices such as
`stents and balloon catheters).
`In other words, the Board found that removing
`Ressemann’s sealing balloons would undermine a goal it
`shares with the challenged claims—safely advancing inter-
`ventional devices to treat cardiac lesions. See ’380 Deci-
`sion, at *2 (finding that the ’380 patent is directed at guide
`catheters for advancing “a stent or balloon catheter” to
`treat a cardiac lesion); id. at *9 (finding that Ressemann
`allows surgeons to advance a “therapeutic device, such as
`a stent” to treat a cardiac lesion while collecting “dislodged
`material”); J.A. 2237 (Ressemann) (noting that procedures
`such as stent placement carry the risk “that some of the
`treated plaque will be disrupted,” and “if allowed to flow
`through the vascular system, may cause subsequent infarc-
`tions or ischemia”). Medtronic did not argue that the pro-
`cedures contemplated in the challenged claims were free
`from such risks. See, e.g., J.A. 28399–400 (arguing instead
`that Ressemann could retain the ability to catch loose
`plaque even if modified); J.A. 22129–130 (same). The
`Board reasonably recognized that modifying a device in a
`manner that would undermine a purpose it shares with the
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`challenged claims counsels against a motivation to make
`such modifications.
`Intel is both consistent with the Board’s analysis and
`distinguishable from the facts at hand. In Intel, we re-
`jected the Board’s reasoning that a proposed rationale for
`modifying a circuit was insufficient because it “would have
`resulted in the circuit not being suitable for its intended
`purpose.” 21 F.4th at 800. We explained this reasoning—
`in which the intended purpose of the device was given con-
`trolling weight—was inconsistent with the Supreme
`Court’s recognition that “common sense teaches . . . that fa-
`miliar items may have obvious uses beyond their primary
`purposes,” and with the reference’s express recognition of
`use cases compatible with the proposed modification to the
`circuit. Id. at 801 (quoting KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 420 (2007)). We did not hold, however, that
`a proposed modification’s destruction of a device’s primary
`purpose is always legally irrelevant to obviousness. Such
`a conclusion is equally at odds with common sense and
`gives in to the very hindsight bias the obviousness inquiry
`is designed to avoid. Indeed, we have held it was error for
`the Board to ignore evidence that a proposed modification
`would interfere with a reference’s stated purpose. See Po-
`laris Indus. v. Arctic Cat, Inc., 882 F.3d 1056, 1061, 1067–
`69 (Fed. Cir. 2018) (vacating Board decision that failed to
`consider whether modifying prior art reference would un-
`dermine its goal, shared with the challenged claims, of con-
`structing stable all-terrain vehicles).
`The Board’s analysis was consistent with these princi-
`ples. The Board found, in the context of these patents, that
`the destruction of Ressemann’s “entire premise” “coun-
`sel[ed] strongly against” obviousness, not that it was deter-
`minative. See, e.g., ’032 Decision, at *16. The Board went
`on to consider Medtronic’s argument that embolic protec-
`tion could be achieved without sealing balloons but found
`that argument unpersuasive because it was not presented
`in Medtronic’s petition and the extensive nature of the
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`additional proposed modifications was suggestive of hind-
`sight.8 Id. Further, unlike in Intel, in which the reference
`contemplated use cases beyond the “intended purpose,” 21
`F.4th at 801, the Board found Ressemann’s “entire prem-
`ise” was founded on the sealing devices Medtronic’s pro-
`posed modifications would remove. We conclude the Board
`did not err in determining the destruction of Ressemann’s
`entire purpose, shared with the challenged claims, was pro-
`bative of whether Medtronic’s modifications would have
`been obvious.
`The Board did not err in determining Medtronic failed
`to carry its burden to show the One-French Claims would
`have been obvious, and substantial evidence supports its
`underlying findings of fact. Accordingly, we affirm the
`Board’s holding that Medtronic failed to establish the One-
`French Claims are unpatentable.
`B. DOUBLE-INCLINE CLAIMS
`Claim 27 of the ’380 patent is representative of the
`Double-Incline Claims. It recites:
`
`
`8 Medtronic argues the Board legally erred and
`abused its discretion by “refusing to consider” these argu-
`ments because Medtronic properly raised them in reply to
`rebut Teleflex’s arguments. Appellant’s Opening Br. 39.
`The Board’s decisions make plain, however, that it consid-
`ered Medtronic’s arguments. See ’032 Decision, at *17 (re-
`counting and rejecting Medtronic’s reply arguments); ’760
`Decision, at J.A. 72 (same); ’379 Decision, at J.A. 121
`(same). It simply found them unpersuasive because they
`relied on extensive modifications not discussed in the peti-
`tion, suggesting they were “improperly based on a hind-
`sight desire to recreate the inventions . . . and not a known
`need in the art for such a device.” ’379 Decision, at J.A.
`121.
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`MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L.
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`15
`
`27. The system of claim 26, wherein the
`side opening includes at least two different
`inclined slopes.
`’380 patent at claim 27 (emphasis added).
` Medtronic asserted the Double-Incline Claims would
`have been obvious over Ressemann and Kataishi. It ar-
`gued a skilled artisan would have been motivated to incor-
`porate the double-inclined shape of Kataishi’s distal tip
`into Ressemann’s proximal side opening because doing so
`would increase entry area (i.e., the area in which to insert
`interventional devices into the extension catheter) and im-
`prove crossability (i.e., the ability to advance the extension
`catheter through the guide catheter and into vasculature).
`See ’032 Decision, at *13–14; ’379 Decision, at J.A. 124–26.
`
`The Board found neither motivation persuasive and ac-
`cordingly held Medtronic failed to prove the Double-Incline
`Claims are unpatentable. ’380 Decision, at *14–15; ’379
`Decision, at J.A. 127–29. Specifically, crediting Teleflex’s
`expert testimony, the Board found Medtronic failed to show
`a skilled artisan would be motivated to use the shape of
`Kataishi’s distal tip for Ressemann’s proximal side opening
`because opening area does not depend on having a double-
`inclined opening and because using the shape of Kataishi’s
`distal tip in lieu of Ressemann’s proximal side opening may
`actually impair crossability by increasing the risk of
`kinking. ’380 Decision, at *14–15; ’379 Decision, at J.A.
`127–29.
` On appeal, Medtronic argues the Board’s findings rest
`on legal error. In particular, it asserts the Board erred by
`(1) concluding an alternative design choice to increase en-
`try area negated its proposed motivation to combine, (2)
`reasoning the location of Kataishi’s tip vis-à-vis Ress-
`mann’s side opening (i.e., distal vs. proximal) weighed
`against a motivation to combine, and (3) effectively requir-
`ing physical incorporation of Kataishi into Ressemann
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`MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L.
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`when it credited Teleflex’s expert that using Kataishi’s
`double-inclined tip would increase the risk of kinking.
` Medtronic’s arguments are unavailing. First, the
`Board did not find a lack of motivation to use Kataishi’s
`double-inclined shape merely because entry area could be
`increased in other ways. The Board expressly found the
`use of a double-inclined opening is irrelevant to entry area
`because, as Teleflex’s expert testified, entry area depends
`only on the angle of the opening. See ’380 Decision, at *14
`(crediting expert testimony that “increased area is a func-
`tion of how sharp one chooses to angle the opening and does
`not depend on having a complex, multi-angle shape like
`that of Kataishi”); ’379 Decision, at J.A. 128 (same). While
`Medtronic may be correct that the entry area of Kataishi’s
`double-inclined tip is larger than Ressemann’s side open-
`ing, the Board found this is not due to Kataishi’s tip being
`doubly-inclined and that Medtronic therefore failed to
`show increasing entry area would have motivated a skilled
`artisan to incorporate this feature into Ressemann.
`The Board’s reasoning does not rest upon the existence
`of alternative designs to achieve the same ends. It rests on
`the idea that the design feature Medtronic sought to incor-
`porate—a double-inclined opening—does not achieve that
`end. Something else does, namely a sharper opening angle.
`This was not legal error. Indeed, to hold otherwise would
`countenance motivation arguments based on functionally
`irrelevant features of references that happen to exhibit a
`benefit for altogether different reasons, a recipe that would
`be ripe for hindsight abuse.
`Second, the Board did not err in finding that the al-
`leged benefits associated with Kataishi’s distal tip would
`not translate to Ressemann’s proximal opening. The Board
`relied on substantial evidence, including Teleflex’s expert
`testimony explaining that the ability of Kataishi’s tip to
`“cross tortuous vasculature is almost entirely driven by the
`design of its distal end, as that is the portion that interacts
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`17
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`with vasculature as it is being advanced” and that “[c]on-
`siderations for suctioning a thrombus into the distal open-
`ing of Kataishi, in a distal-to-proximal direction, would not
`apply to inserting interventional devices, in a proximal-to-
`distal direction, into Ressemann’s proximal opening.” ’379
`Decision, at J.A. 127 (citing J.A. 20600 ¶ 153, J.A. 12931 ¶
`193, and J.A. 12470 at 385:1–23). Given its finding that
`the benefits of Kataishi’s distal tip were tied to its distal
`location and the “lack of any teaching suggesting any inter-
`ventional devices being passed through Kataishi’s suction
`catheter,” the Board reasonably found Medtronic failed to
`carry its burden to establish a motivation to combine. Med-
`tronic again points to its contrary expert testimony that
`Kataishi teaches its shape would improve crossability even
`if applied to a proximal opening because it would improve
`the proximal opening’s ability to smoothly navigate
`through the guide catheter (as opposed to vasculature).
`But the Board’s decision to credit Teleflex’s experts over
`Medtronic’s does not render its finding unsupported by
`substantial evidence. In re Jolley, 308 F.3d 1317, 1329
`(Fed. Cir. 2002).
`Lastly, Medtronic’s contention that the Board required
`physical incorporation of the references is without merit.
`Medtronic argues the Board’s finding that kinking would
`discourage skilled artisans from using Kataishi’s distal tip
`was improperly predicated on using the materials disclosed
`in Kataishi. Yet, the Board’s decisions make no reference
`to Kataishi’s materials. Instead, the Board credited Tele-
`flex’s
`expert
`testimony