Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 74
`Entered: December 8, 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.
`
`
`571-272-7822
`
`
`
`
`Paper 74
`Entered: December 8, 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 to Compel Deposition of Amy Welch
`37 C.F.R. § 42.52
`INTRODUCTION
`I.
`With our authorization, Petitioner filed a Motion to Compel
`Deposition of Amy Welch (Paper 68,2 “Motion” or “Mot.”) in the instant
`proceedings. The stated purpose of the deposition is to depose Ms. Welch
`“regarding the basis for her cited statements and potential related omitted
`information that may refute or undercut Patent Owner’s arguments regarding
`alleged secondary considerations.” Mot. 1. Specifically, “Petitioner wishes
`to depose Ms. Walsh to expose through cross-examination information
`omitted from Ms. Welch’s declaration that helps refute those positions or
`shows lack of credibility.” Id. at 7.
`With our authorization, Patent Owner filed an Opposition to the
`Motion. Paper 72 (“Opp.”).
`For the reasons stated below, Petitioner’s Motion is denied.
`
`II. DISCUSSION
`
`A. The Parties’ Dispute
`With its Patent Owner Response, Patent Owner submitted a
`declaration from Amy Welch regarding secondary considerations of non-
`
`
`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)
`
`obviousness. PO Resp. 40–41, 46, 48, 50, 53 (citing Ex. 20443). According
`to Petitioner, “Ms. Welch’s declaration is the same declaration that was filed
`in the now-stayed related district court litigation in connection with Patent
`Owner’s motion for a preliminary injunction.” Mot. 1 (citing Exs. 2043,
`2044). Petitioner contends, however, that
`
`Ms. Welch has not been deposed specifically regarding
`secondary considerations topics, and Petitioner seeks to
`depose her regarding the basis for her cited statements and
`potential related omitted information that may refute or
`undercut Patent Owner’s arguments regarding alleged
`secondary considerations.
`Mot. 1. Petitioner contends that Ms. Welch’s deposition should be
`compelled as “routine discovery” under 37 C.F.R. § 42.51(b)(1). Id. at 2–4.
`In the alternative, Petitioner contends that Ms. Welch’s deposition is in the
`interests of justice and should be compelled as “additional discovery” under
`37 C.F.R. § 42.51(b)(2). Id. at 4–9 (citing Garmin Int’l, Inc. v. Cuozzo
`Speed Techs. LLC, IPR2012-00001, slip op. at 6–7 (PTAB March 5, 2013)
`(Paper 26) (precedential) (“Garmin”)).
`Patent Owner contends that Ms. Welch’s declaration testimony was
`prepared for the related district court litigation and therefore the cross-
`examination of Ms. Welch would not fall under routine discovery. Opp. 2–
`4. Patent Owner contends also that “Petitioner has deposed Ms. Welch on
`the same testimony in the district court litigation” and that a second
`deposition will not generate useful information. Id. at 5–7. In particular,
`
`
`3 The declaration of Ms. Welch was filed under seal as Ex. 2043 and a
`redacted version was filed as Ex. 2044.
`
`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)
`
`Patent Owner contends that Ms. Welch’s statements regarding secondary
`considerations were addressed in the previous deposition. Id. at 6–7 (citing
`Ex. 2221, 118:25–120:6 (licensing, market share); 211:1–18 (importance of
`GuideLiner to overall business); 212:11–213:9 (basis for Ms. Welch’s
`testimony); 220:13–221:25 (copying); 234:6–237:5 (copying); 239:20–242:7
`(basis for Ms. Welch’s testimony); 268:10–269:21 (licensing); 269:22–272:8
`(copying); 282:16–283:25 (copying); 294:10–295:21 (sales, market share,
`licensing)). Thus, according to Patent Owner, another deposition would be
`redundant and therefore a second deposition is not necessary in the interest
`of justice. Id.
`B. Analysis
`Discovery is available for the deposition of witnesses submitting
`affidavits or declarations and for what is otherwise necessary in the interest
`of justice. 35 U.S.C. § 316(a)(5). Cross–examination of affidavit testimony
`prepared for the proceeding falls under “routine discovery.” 37 C.F.R.
`§ 42.51(b)(1)(ii) (“Cross examination of affidavit testimony prepared for the
`proceeding is authorized . . . .”). For testimony not prepared for the
`proceeding, “additional discovery” is available if the party seeking
`additional discovery can show “that such additional discovery is in the
`interests of justice.” 37 C.F.R. § 42.51(b)(2)(i). In this case, the parties
`agree that the Ms. Welch’s declaration is the same declaration that was
`prepared for and filed in the related district court litigation rather than the
`specific proceedings before the Board. Mot. 1; Opp. 2. Consequently, the
`testimony of Ms. Welch was prepared for another proceeding and her cross-
`
`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)
`
`examination in this proceeding is not “routine discovery.” 37 C.F.R.
`§ 42.51(b)(1)(ii).
`We thus consider whether cross–examination of Ms. Welch as
`additional discovery is in the interest of justice under 37 C.F.R.
`§ 42.51(b)(2)(i). The Board has identified factors important in determining
`whether the additional discovery request meets the standard of being “in the
`interest of justice.” Garmin at 6–7. In Garmin, we held that the following 5
`factors (the so-called “Garmin factors”) are important in determining
`whether the additional discovery sought is in the interest of justice: (1)
`whether there exists more than a possibility and mere allegation that
`something useful will be discovered; (2) whether the requests seek the other
`party’s litigation positions and the underlying basis for those positions; (3)
`whether the moving party has the ability to generate equivalent information
`by other means; (4) whether the moving party has provided easily
`understandable instructions; and (5) whether the requests are overly
`burdensome. Id.
`Having reviewed Patent Owner’s request and arguments, we find that
`the Garmin factors do not weigh in favor of allowing additional discovery.
`In particular, we find Garmin Factor 1 dispositive. When assessing this
`factor, “[t]he mere possibility of finding something useful, and mere
`allegation that something useful will be found, are insufficient to
`demonstrate that the requested discovery is necessary in the interest of
`justice.” Garmin, Paper 26, at 6. To that point, Petitioner seeks to depose
`Ms. Welch to uncover “potential related omitted information that may refute
`
`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)
`
`or undercut Patent Owner’s arguments.” Mot. 1. Here, we agree with
`Petitioner that
`
`The very language of this request reveals that Petitioner is
`merely speculating that omitted information may exist, and
`that such information, if it does exist, may possibly refute
`Patent Owner’s arguments.
`Opp. 5 (emphasis omitted). As noted by Patent Owner, Ms. Welch was
`previously deposed by Petitioner’s counsel in the district court case. Ex.
`2221. Insofar as Petitioner seeks an additional deposition to cross-examine
`Ms. Welch on issues specific to this proceeding, we are not persuaded that
`Petitioner has shown that such cross-examination of Ms. Welch is in the
`interests of justice based on the facts and circumstances present here. To the
`extent that Petitioner is already in possession of relevant information and
`materials that Ms. Welch omitted from her declaration, Petitioner can
`identify that information as part of its Reply. Accordingly, in view of the
`above, we conclude that Petitioner has not met the “necessary in the interest
`of justice” standard for its request to compel the testimony of Ms. Welch.
`We agree with Petitioner, however, “[c]ross-examination is the
`principal means by which the believability of a witness and the truth of [her]
`testimony are tested.” Mot. 3–4 (quoting Davis v. Alaska, 415 U.S. 308, 316
`(1974)). As the proponent of the testimony, if the declarant is not made
`available for cross-examination, Patent Owner runs the risk that the direct
`testimony will not be considered or that the weight given to her declaration
`will be minimal. To that point, we note that Patent Owner is not arguing that
`Ms. Welch could not be made available for deposition and has opted instead
`to oppose Petitioner’s Motion rather than to produce its witness for the
`
`6
`
`
`
`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)
`
`requested limited scope of cross-examination. We will weigh the testimony
`accordingly.
`
`III. ORDER
`
`It is
`ORDERED that Petitioner’s Motion to Compel Deposition of Amy
`Welch 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
`
`7
`
`
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