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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________________
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`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
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`Petitioners,
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`v.
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`TELEFLEX INNOVATIONS S.À.R.L.,
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`Patent Owner
`_____________________________
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`Cases IPR2019-0135, IPR2019-0136
`U.S. Patent No. RE45,776
`______________________________
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`PETITIONERS’ EXPLANATION OF MATERIAL DIFFERENCES
`BETWEEN PETITIONS AND PETITION RANKING FOR
`U.S. PATENT NO. RE45,776
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`
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`Medtronic, Inc. and Medtronic Vascular, Inc. (“Petitioners”) filed concurrent
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`inter partes review (“IPR”) petitions against U.S. Pat. No. RE45,776 (“the ’776
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`Patent;” Ex-1001), but the claims are split so only two petitions challenge a given
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`claim. The Board should consider and institute both petitions.
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`1. Two petitions are necessary because of a priority date dispute.
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`The Board’s Trial Practice Guide states that “more than one petition may be
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`necessary” where, as here, “there is a dispute about priority date requiring
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`arguments under multiple prior art references.” TPG UPDATE (July 2019) at 26.
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`Petitioner filed two petitions per claim for this exact reason, as outlined below.
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`Itou-Based Petition
`Ground 1: Claims 25-27, 29-33, 35-37, 41-45, and 47-49 as
`Petition 1
`IPR2019-0135
`anticipated by U.S. Patent No. 7,736,355 (“Itou”)
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`Ground 2: Claims 39 and 46 as obvious over Itou in view of
`the knowledge of a POSITA
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`Ground 3: Claims 36-37 and 52-56 as obvious over Itou in
`view of U.S. Pat. App. 2005/0015073 (“Kataishi”) and/or the
`knowledge of a POSITA
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`Ground 4: Claims 32, 36-38, 46, 52-56 as obvious over Itou
`in view of U.S. Patent No. 7,604,612 (“Ressemann”) and/or
`the knowledge of a POSITA
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`Ground 5: Claims 52-56 as obvious over Itou in view of U.S.
`Patent No. 5,980,486 (“Enger”) and/or the knowledge of a
`POSITA
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`1
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`Kontos-Based Petition
`Ground 1: Claims 25-27, 29, 33, 35-37, 39, 41-49, and 52 as
`Petition 2
`IPR2019-0136
`obvious over U.S. Patent No. 5,439,445 (“Kontos”),
`Ressemann and/or the knowledge of a POSITA
`
`
`Ground 2: Claims 30-32 and 53-56 as obvious over Kontos,
`Ressemann, Takahasi et al., New Method to Increase a
`Backup Support of a 6 French Guiding Coronary Catheter
`(“Takahashi”) and/or the knowledge of a POSITA
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`Ground 3: Claim 52 as obvious over Kontos, Ressemann,
`Kataishi, and/or the knowledge of a POSITA
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`Ground 4: Claims 53-56 as obvious over Kontos in view of
`Ressemann, Takahashi, Kataishi, and/or the knowledge of a
`POSITA
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`Petition 1 asserts Itou as a primary reference. Itou has an effective filing date
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`
`
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`of September 23, 2005. (Ex-1007.) But Patent Owner has alleged a conception and
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`reduction to practice date in 2004—a date much earlier than the priority date on the
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`face of the ’776 Patent.1 (Ex-1084; Ex-1001.) Petitioners therefore submitted a
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`second Petition (Petition 2) that covers a similar set of claims as Petition 1 but
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`asserts prior art references with priority dates before 2004. This second petition
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`(Petition 2) relies on Kontos as a primary reference. Kontos issued on August 8,
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`1995, and it is prior art under at least § 102(b). (Ex-1009.) Patent Owner is not able
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`to swear behind Kontos, as it may attempt to do for Itou in Petition 1.
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`1 The ʼ776 Patent claims priority to U.S. Pat. No. 8,292,850, which, on its face, is
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`entitled to a priority date of May 3, 2006. (Ex-1001.)
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`2
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`The Board’s decision in Microsoft Corp. v. IPA Technologies, Inc. is
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`instructive. IPR2019-00810, Paper 12 (PTAB Oct. 16, 2019). There, as here, the
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`patent owner raised a priority date issue necessitating “arguments under multiple
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`prior art references.” Id. at 15. In Microsoft Corp. the priority date dispute
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`concerned a single prior art reference. Here, the priority dispute is more
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`fundamental—Patent Owner has raised a priority date issue regarding the
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`challenged patent itself. It would be manifestly unfair and prejudicial to Petitioner
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`if the Board exercises its discretion under § 314(a) to deny Petition 2 and
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`post-institution Patent Owner successfully swears behind Itou. Accordingly, the
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`Board should consider and institute Petition 1 and Petition 2.
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`2. Two petitions are necessary because of the length and number of
`claims asserted by Patent Owner in district court.
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`The ’776 Patent has 32 lengthy claims. The challenged independent
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`claims—claims 25, 52, and 53—consist of a combined 424 words. Mere recitation
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`of the challenged claims in Petitions 1 and 2 takes up over 1200 words.
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`Given Patent Owner’s allegations in district court, Petitioners must also
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`challenge substantially all claims of the ’776 Patent. The Board’s Trial Practice
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`Guide states that “more than one petition may be necessary” where, as here, “the
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`patent owner has asserted a large number of claims in litigation.” TPG UPDATE
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`(July 2019) at 26. In the district court litigation, Patent Owner has refused to
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`identify the specific claims—or a specific number of claims—it will assert against
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`3
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`
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`Petitioner. (Ex-1079 ¶ 71 (“Medtronic has infringed and continues to infringe one
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`or more claims of the ’776 patent, including at least claims 25, 36, and 37…;” see
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`also Ex-1083 at 2 (¶ 5d).)
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`The Board’s decision in Microsoft Corp. is again instructive. There, as here,
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`“word count limitations and a large number of challenged claims” supported the
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`filing of multiple petitions. IPR2019-00810, Paper 9 at 14. In Microsoft Corp., the
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`patent owner generally alleged infringement of “one or more claims” of the subject
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`patent. Id. at 1 (“The complaint identified only claim 61, while generally alleging
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`that Petitioner infringed ‘one or more claims.’”) The patent owner also opposed the
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`streamlining of disputed issues, rejecting petitioner’s proposal to consider a set of
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`twenty-four exemplary claims. Id. at 13.
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`Here, too, Petitioner cannot reasonably fit its arguments into a single
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`petition. Petitioner cannot reasonably fit both its Itou-based and Kontos-based
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`arguments into a single petition—both of which are necessary, as outlined above—
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`because of Patent Owner’s position regarding its alleged conception and reduction
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`to practice date. And Patent Owner has rejected reasonable proposals to narrow the
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`parties’ dispute (See Ex-1083 at 2 (¶ 5d).)
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`4
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`3. The Board should consider and institute both petitions, beginning
`with Petition 1 and then Petition 2.
`For the reasons set forth above, Petitioners respectfully request consideration
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`and institution of both Petition 1 and Petition 2. Petitioners request that the Board
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`consider its petitions in the following order: Petition 1 (IPR2019-0135), followed
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`by Petition 2 (IPR2019-0136).
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`
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`RESPECTFULLY SUBMITTED,
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`ROBINS KAPLAN LLP
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`Date: November 14, 2019
`800 LaSalle Ave, Suite 2800
`Minneapolis, MN 55402
`612.349.8500
`
`
`
`
`/ Cyrus A. Morton /
`Cyrus A. Morton
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`Attorney for Petitioner
`Medtronic, Inc.
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`
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`5
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that PETITIONERS’ EXPLANATION OF
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`
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`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
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`RANKING FOR U.S. PATENT NO. RE45,776 was served on November 14, 2019,
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`by Federal Express mail to the USPTO correspondence address of record listed
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`below:
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`
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`Paul Onderick
`PATTERSON THUENTE PEDERSEN, P.A.
`80 South 8th Street
`4800 IDS Center
`Minneapolis, MN 55402-2100
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`Courtesy copies were also sent to the following address of record for counsel
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`in Vascular Solutions LLC, et al. v. Medtronic, Inc., et al., No. 19-cv-01760 (D.
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`Minn., filed July 2, 2019):
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`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
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`/ Cyrus A. Morton /
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`Cyrus A. Morton
`Registration No. 44,954
`Robins Kaplan LLP
`cmorton@robinskaplan.com
`
`Attorney for Petitioners
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`6
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