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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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`IPR2020-00135
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`PATENT OWNER’S REQUEST
`FOR ORAL ARGUMENT PURSUANT TO 37 C.F.R. § 42.70(a)
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`Pursuant to 37 C.F.R. § 42.70(a) and the Consolidated Scheduling Order
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`(Paper 26) Patent Owner Teleflex requests an opportunity to present oral argument
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`regarding the claims challenged in IPR2020-00126 (Patent 8,048,032 B2),
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`IPR2020-00127 (Patent 8,048,032 B2), IPR2020-00128 (Patent RE45,380),
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`IPR2020-00129 (Patent RE45,380), IPR2020-00130 (Patent RE45,380), IPR2020-
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`00132 (Patent RE45,760), IPR2020-00134 (Patent RE45,760), IPR2020-00135
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`(Patent RE45,776), IPR2020-00136 (Patent RE45,776), IPR2020-00137 (Patent
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`RE47,379), and IPR2020-00138 (Patent RE47,379). The Board has set a hearing
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`on this matter for March 8, 2021. (Paper 26, Due Date 8.) Patent Owner requests
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`oral argument (without waiving consideration of any issue not listed below) to
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`address the grounds on which these IPRs were instituted, including the specific
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`invalidity grounds raised in the Petitions of the instituted trials, the parties’ dispute
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`regarding conception and reduction to practice (“CRTP”) in IPR2020-00126, -
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`00128, -00129, -00132, -00134, -00135, and -00137, and Patent Owner’s
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`Contingent Motions to Amend, any motion to exclude filed in this proceeding, any
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`additional issues identified in Petitioners’ request for oral argument, and any
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`additional issues on which the Board seeks clarification.
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`Patent Owner further requests the opportunity to present live testimony from
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`inventor Howard Root on CRTP. The Consolidated Scheduling Order states that
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`“the panel may consider whether live testimony is appropriate for the underlying
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`1
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`factual issues related to” that issue as it is presented in IPR2020-00126, -00128, -
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`00129, -00132, -00134, -00135, and -00137. (Paper 26, 4.)
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`The factors the Board considers in deciding whether to allow live testimony
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`weigh in favor of allowing Mr. Root’s testimony in these proceedings. See K-40
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`Elecs., LLC v. Escort, Inc., IPR2013-00203, Paper 34 (PTAB May 21, 2014)
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`(precedential). Petitioner’s Itou-based CRTP challenge is central to the IPRs
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`currently before the Board. A ruling in Patent Owner’s favor on CRTP would be
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`completely dispositive of five IPRs (-00126, -00128, -00132, -00135, and -00137),
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`and resolve several grounds of two additional IPRs (Grounds 7-9 of -00129 and
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`Grounds 1-3 of -00134). Mr. Root is the founder and former CEO of Vascular
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`Solutions, the original owner of the patents at issue, although he is not associated
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`with the current Patent Owner. He is also a named inventor and principal fact
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`witness. Id. at 3. Although Petitioner’s expert agrees that Patent Owner’s
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`testimonial and documentary evidence is truthful, Petitioner has put Mr. Root’s
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`credibility at issue by arguing that his testimony is not sufficiently corroborated
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`and by contending that certain documentary evidence he relies on may actually
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`relate to other products. Those arguments directly contradict Mr. Root’s
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`testimony. See MPOWERD Inc. v. LuminAID Lab, LLC, IPR2018-01524, Paper
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`40, 4 (PTAB Nov. 1, 2019). Moreover, if the Board were to reject Petitioner’s
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`argument that Mr. Root’s declaration lacks sufficient corroboration, this case may
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`2
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`well turn on Mr. Root’s credibility. Id. Thus, Mr. Root’s testimony may be case
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`dispositive.
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`It is well settled that “[t]he fundamental requisite of due process of law is the
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`opportunity to be heard.” Grannis v. Ordean, 234 U.S. 385, 394 (1914). “In
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`almost every setting where important decisions turn on questions of fact, due
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`process requires an opportunity” for live testimony. Goldberg v. Kelly, 397 U.S.
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`254, 269 (1970). Under the facts and circumstances presented in these IPRs,
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`Patent Owner believes this an “appropriate situation[]” where live testimony is
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`warranted. Office Trial Practice Guide, 77 Fed. Reg. 48,762 & 48,768 (Aug. 14,
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`2012); Consolidated Trial Practice Guide (November 2019), 32.
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`Patent Owner has met and conferred with Petitioner about the parties’
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`respective proposals for conduct of the proceedings. Agreement was not reached
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`on the issue of live testimony or the amount of time for argument on CRTP or the
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`35 U.S.C. §§ 102/103 validity issues presented in these IPRs. The parties do agree
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`on the appropriate time to allot to Patent Owner’s Contingent Motions to Amend.
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`Patent Owner therefore asks the Board to enter the following:
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`• CRTP: 30 minutes per side for examination of Mr. Root, plus 60 minutes
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`oral argument per side;
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`• 35 U.S.C. §§ 102/103 issues: 90 minutes oral argument per side; and
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`3
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`• Contingent Motions to Amend: 30 minutes oral argument per side (per
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`parties’ agreement).
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`Approximately ten people from Patent Owner’s side will attend the oral
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`argument.
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`Patent Owner requests technology to display demonstrative exhibits,
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`including technology to allow the exhibits to be viewed by any Judge participating
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`remotely. Patent Owner understands that the Consolidated Scheduling Order
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`(Paper 26) set oral argument, if requested, to take place at the U.S. Patent &
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`Trademark Office headquarters in Alexandria, Virginia, but that in light of the
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`ongoing COVID-19 pandemic and the Board’s March 13, 2020 notice
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`(https://www.uspto.gov/about-us/news-updates/uspto-update-person-meetings), the
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`oral argument will be conducted remotely by video or telephone. Patent Owner
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`respectfully requests that oral argument be conducted by videoconference rather
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`than teleconference, if possible.
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`If this request for oral argument is granted, Patent Owner will direct its
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`request for audio-visual technology to PTABHearings@uspto.gov.
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`4
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`Dated: January 28, 2021
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`Respectfully submitted,
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`/J. Derek Vandenburgh /
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`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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`5
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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 January 28, 2021, a true and correct copy of the
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`foregoing Patent Owner’s Request for Oral Argument Pursuant to 37 C.F.R. §
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`42.70(a) was 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)
`William E. Manske
`Emily J. Tremblay
`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
`Email: Wmanske@robinskaplan.com
`Email: Etremblay@robinskaplan.com
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`/ J. Derek Vandenburgh /
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`J. Derek Vandenburgh (Lead Counsel for Patent Owner)
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