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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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`Case IPR2020-00135
` Patent RE 45,776
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`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S REPLY TO ADDRESS 35 U.S.C. § 314(a)
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`The POPR explains why the Board should decline to institute under 35
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`U.S.C. § 314(a). Paper 8 at 29-33. The Apple factors confirm this.
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`Factor 1: Petitioner has not sought a stay, and a stay is unlikely. Where, as
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`here, neither party has requested a stay the Board declines to infer how the district
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`court would rule. E.g. Intel, IPR2020-00113, Paper 15 at 8-9 (May 19, 2020);
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`Apple, IPR2020-00019, Paper 15 at 12 (May 13, 2020). The QXMédical case was
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`stayed only because QXMédical agreed to exit the market and waived its
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`obviousness/anticipation defenses. Ex. 1094 at 2. Petitioner’s assertion that Judge
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`Schiltz has previously granted stays ignores that (i) one was stipulated and (ii)
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`none involved direct competitors/allegations of irreparable harm.
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`Factor 2: The trial-ready date (August 1, 2021) is only weeks after the last
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`statutory deadline (July 8, 2021). The dates are very close; that the statutory
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`deadline is first should not significantly impact the analysis. Petitioner notes that
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`Judge Schiltz has extended trial-ready dates in other cases but provides no
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`information regarding the circumstances. Indeed, in both this and the QXMédical
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`case the extension was by stipulation of the parties, not sua sponte.
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`Factor 3: The District Court is already deeply invested and the litigation has
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`significantly progressed. As the POPR explains, the Court is already very familiar
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`with the GuideLiner patents, the validity arguments and prior art, and the issue of
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`Teleflex’s pre-Itou invention via (i) the co-pending QXMédical case and (ii) the
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`1
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`parties’ extensive litigation of the preliminary injunction motion. The parties have
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`exchanged infringement contentions. There have been two depositions; three more
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`are set for the coming weeks (Exs. 2050, 2051, 2082–2084). Fact discovery will be
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`finished by Sept. 1, 2020, only 1.5 months after any institution decision. Ex. 2049
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`at 2. Also, Petitioner did delay—as the POPR explains Petitioner knew this
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`dispute was coming long ago but waited until November 2019 to file. Paper 8 at 2.
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`Factor 4: There is complete overlap between the issues raised in the parallel
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`proceedings. In the district court, Petitioner challenges the validity of all claims
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`in each asserted patent, based on the same invalidity art and arguments as the
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`petitions. Ex. 2078 at 55 (“Second Defense”), 58-61. The fact- and witness-
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`intensive issue of whether Teleflex’s invention pre-dates Itou is also in both
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`proceedings. The Petitioner also seeks to raise a written description issue in both.
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`Factor 5: The Petitioner and the district court defendant are the same party.
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`Factor 6: Other circumstances favor denial. As the POPRs explain, the
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`petitions have significant substantive weaknesses. Moreover, the petitions
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`themselves are highly burdensome and inefficient, challenging some claims on
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`numerous duplicative grounds. E.g. IPR2020-00129, -00131 (claim 27 (seven
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`grounds)); IPR2020-00132, -00133, -00134 (claim 32 (six grounds), claims 48, 51,
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`53 (three grounds each)); IPR2020-00135, -00136 (claims 52-56 (five grounds),
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`claims 36 (four grounds)); IPR2020-00137, -00138 (claim 44 (seven grounds)).
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`2
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`Dated: May 21, 2020.
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`Respectfully submitted,
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`
`
`/J. Derek Vandenburgh /
`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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`3
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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 May 21, 2020, a true and correct copy of the
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`foregoing Patent Owner’s Sur-Reply to Petitioner’s Reply to Address 35 U.S.C. §
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`314(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)
`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
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`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel for Patent Owner)
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