Trials@uspto.gov
`571-272-7822
`
`Paper 124
`Entered: March 23, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC. and MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`TELEFLEX INNOVATIONS S.A.R.L.,
`Patent Owner.
`____________
`
`IPR2020-00126, Patent 8,048,032 B2
`IPR2020-00127, Patent 8,048,032 B2
`IPR2020-00128, Patent RE45,380 E
`IPR2020-00129, Patent RE45,380 E
`IPR2020-00130, Patent RE45,380 E
`IPR2020-00132, Patent RE45,760 E
`IPR2020-00134, Patent RE45,760 E
`IPR2020-00135, Patent RE45,776 E
`IPR2020-00136, Patent RE45,776 E
`IPR2020-00137, Patent RE47,379 E
`IPR2020-00138, Patent RE47,379 E
`____________
`
`Record of Oral Hearing
`Held: March 8, 2021
`____________
`
`Before SHERIDAN K. SNEDDEN, JON B. TORNQUIST, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`
`
`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`CYRUS A. MORTON, ESQUIRE
`SHARON E. ROBERG-PEREZ, ESQUIRE
`CHRISTOPHER A. PINAHS, ESQUIRE
`EMILY J. TREMBLAY, ESQUIRE
`Robins Kaplan LLP
`800 LaSalle Avenue
`Suite 2800
`Minneapolis, Minnesota 55402
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`J. DEREK VANDENBURGH, ESQUIRE
`PETER KOHLEPP, ESQUIRE
`JOSEPH WINKELS, ESQUIRE
`TARA NOGARD, ESQUIRE
`MEGAN E. CHRISTNER, ESQUIRE (LEAP Practitioner)
`KEN LEVITT, ESQUIRE (of counsel)
`Carlson, Caspers, Vandenburgh & Lindquist, P.A.
`225 South 6th Street
`Minneapolis, Minnesota 55402
`
`
`ALSO PRESENT:
`
`
`Chad Hanson, Medtronic, Inc. and Medtronic Vascular, Inc.
`Howard Cyr, Teleflex Innovations, S.A.R.L.
`Dwayne Ritchie, Teleflex Innovations, S.A.R.L.
`Greg Smock, Teleflex Innovations, S.A.R.L.
`
`
`
`The above-entitled matter came on for hearing on Monday, March 8, 2021,
`commencing at 9:04 a.m. EDT, by Webex.
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`2
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`
`P R O C E E D I N G S
`
`- - - - -
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`JUDGE PAULRAJ: Good morning. This is the consolidated final
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`oral hearing in a series of inter partes reviews involving Petitioner Medtronic
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`and Patent Owner Teleflex, IPR 2020-00126, 127, 128, 129, 130, 132, 134,
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`135, 136, 137, and 138. I'm Judge Paulraj and also appearing via video
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`today will be Judge Tornquist and Judge Snedden. Let's start with
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`appearances starting with Petitioner's counsel first and then Patent Owner's
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`counsel.
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`MR. MORTON: Yes, Your Honor, this is Cy Morton for Petitioner
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`Medtronic. I have a number of people with me including other speakers
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`today will be Chris Pinahs and Sharon Roberg-Perez. I also have Emily
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`Tremblay with me and I believe we'll have our client representative Chad
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`Hanson on the phone.
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`JUDGE PAULRAJ: Okay, thank you, Mr. Morton. And I would ask
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`your co-counsel to introduce themselves when it's their turn to talk. So, and
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`I'm sure they'll be a lot of names that I'll have to try to remember during the
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`course of the day, but if they could re-introduce themselves when they
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`speak, that'd be helpful for me.
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`MR. MORTON: Of course, Your Honor.
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`JUDGE PAULRAJ: And then let's turn it over to Patent Owner's
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`counsel.
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`MR. VANDENBURGH: Yes, thank you, Your Honor. Derek
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`Vandenburgh for Patent Owner. We also have a number of speakers and
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`other people involved today speaking. We will hear from Peter Kohlepp and
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`Joe Winkels and Megan Christner. I also have Ken Levitt here in the room
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`3
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`with me and Tara Nogard of our firm on the line. And I believe on the dial-
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`in line we have Howard Cyr, Dwayne Ritchie, Greg Smock from Teleflex.
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`JUDGE PAULRAJ: All right, thank you, Mr. Vandenburgh. You're
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`coming in a little bit muted. Is there a way you can get a little bit closer to
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`your microphone?
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`MR. VANDENBURGH: Is that any better?
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`JUDGE PAULRAJ: That is better, thank you.
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`MR. VANDENBURGH: Yes.
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`JUDGE PAULRAJ: So, again, I would ask your co-counsel,
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`especially if they're going to argue portions of the hearing today, to
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`reintroduce themselves so I can keep track of who's arguing during a
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`particular section. As I mentioned during the prehearing conference on
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`Friday, this will be a public hearing. And we do have a public line where
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`members of the public can dial in. I'm not sure how much of those will be
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`members of your client representatives versus true members of public. But
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`to the extent that confidential information will be discussed today, I would
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`ask counsel to let me know before we start discussing anything confidential
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`so we can mute the public line.
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`We're also in receipt of the parties' demonstratives and I have access
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`to the record in these cases. So, to make sure that the transcript is clear, I
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`would ask counsel to identify the specific slide number they're discussing
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`during their arguments so we can follow along. I know you cannot present
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`the demonstratives on your screen, but we have the demonstratives on our
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`respective screens and we'll follow along to whatever you're discussing. We
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`have also received the parties' objections to the other side's demonstratives.
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`4
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`We'll take those objections under advisement, but we will not exclude
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`counsel from presenting arguments based on those demonstratives today.
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`I will generally remind the parties that demonstratives are not
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`evidence themselves and cannot be used to supplement the record.
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`Generally, unless there's a risk that a party may be getting into confidential
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`information while on the public line, I would ask counsel to refrain from
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`making objections until the end of the other side's arguments. As set forth in
`
`our hearing order, we'll be dividing the hearing into three segments based on
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`the main issues that are going to be argued. We'll start with arguments on
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`conception and reduction to practice, or CRTP, and each side will have
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`about 60 minutes to argue that issue with Patent Owner going first. Then
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`we'll get into the 102, 103 issues where each side will have 90 minutes to
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`argue those issues with Petitioner going first. And finally, we'll hear
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`arguments on the motion to amend with each side getting 30 minutes to
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`argue and Petitioner also going first on those arguments.
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`As set forth in our hearing order, each side may reserve some amount
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`of rebuttal or surrebuttal time for their respective arguments. But no more
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`than half the total time allocated for each argument section. We'll plan to
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`take a lunch break around 12:30 eastern for about an hour. We'll also take a
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`short 10 to 15-minute break between each segment, each argument segment.
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`And hopefully we'll wrap up by about 4:30, 4:45 or so Eastern.
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`I would like to remind the parties that if you aren't speaking, please
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`mute yourself so we don't hear any background noises during the arguments.
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`I'm hearing some feedback on the line right now, so, to the extent that you're
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`not muting -- you're not muted when you're not speaking please do so, so
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`5
`
`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`that we don't hear any feedback. And I'll do that myself when I'm not
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`speaking. Any questions?
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`MR. MORTON: Yes, Your Honor. Hopefully when we're there in
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`person I can see the clock and see how I'm doing. Will we have any
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`opportunity to see that or are you keeping the clock? I'm just interested in
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`how you're managing the time.
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`JUDGE PAULRAJ: I will keep the clock, but I would also ask that
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`you self-police a little bit as well and keep your own clock and let me know.
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`I'll try to give a warning when I have about 5 minutes left on your time both
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`for your initial set of arguments and your rebuttal and surrebuttal arguments.
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`And I'll give you a warning as we're winding down. So, I'll give a 5-minute
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`warning and then I'll try to just say wrap up. I'll give a wrap up warning
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`with 30 seconds or so left. Is that okay?
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`MR. MORTON: Yep. We'll work with that. I was just curious.
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`JUDGE PAULRAJ: Excellent. Okay, any other preliminary matters
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`we need to discuss before we get to the merits, we get to the arguments?
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`MR. VANDENBURGH: No, Your Honor.
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`JUDGE PAULRAJ: Okay. Then I believe per what we discussed in
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`our hearing order, we'll start off with the CRTP arguments and Patent Owner
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`going first. So, Mr. Morton, whether it's you or whoever is on your team
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`going to argue, I'm ready whenever you are.
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`MR. VANDENBURGH: Yes, Your Honor. For Patent Owner it'll be
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`me, Mr. Vandenburgh.
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`JUDGE PAULRAJ: I apologize, Mr. Vandenburgh. Yes, so, Mr.
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`Vandenburgh, whenever you're ready.
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`6
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`
`MR. VANDENBURGH: All right, thank you very much, Your
`
`Honor. The reason we have such a complex --
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`JUDGE PAULRAJ: Mr. Vandenburgh, before you get into your
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`argument, can I ask you how much time you want to save for rebuttal?
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`MR. VANDENBURGH: At the top of my outline, it says in all caps
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`reserve rebuttal time (inaudible). Ten minutes, please, Your Honor.
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`JUDGE PAULRAJ: All right, so, I'll set the clock for you for 50
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`minutes at this portion of the argument.
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`MR. VANDENBURGH: Thank you much. Thank you very much.
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`JUDGE PAULRAJ: Put that on and then start the clock for you.
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`MR. VANDENBURGH: Thank you. So, to start, again, the reason
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`we have such a complex set of 11 IPRs is because Petitioner wanted to rely
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`on the Itou reference that qualified as prior art only under 102(e). And they
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`knew that there was a real risk that it would turn out not to be prior art and
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`that the Patent Owner would show prior invention. That fear turned out to
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`be well-founded. The evidence before the Board shows that the claimed
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`invention was both conceived and reduced to practice before the September
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`23, 2005 critical date of the Itou reference. This is fully dispositive of five
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`of the IPRs and around half of two other IPRs.
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`Now, before I get into the evidence, I'd like to start by directing the
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`panel's attention to Slide 4 of my demonstratives because I think it's
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`important to start out by talking about the legal standard. This rule of reason
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`represents a fundamental difference in the way that the two parties present,
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`discuss, and view the evidence. You know, we submitted detailed
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`declaration from the inventors explaining, you know, not only saying, you
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`know, that it was conceived and reduced to practice, discussing in all the
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`7
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`documents, explaining the relevance of them to the company. There's this
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`tendency to say, well, that's not real evidence. That comes from the
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`inventors. We know we can't consider that. So, we need to just set that
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`aside and ignore it. That is not the law.
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`Under the rule of reason, the inventor's testimony is evidence just like
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`any other. And the reason -- the only reason that we look to the
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`corroborating evidence is as the top slide says, so that a sound determination
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`of the credibility of the inventor's story may be reached. Now, the reason
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`that Mr. Root is not here testifying live this morning is because Petitioner
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`made it clear they weren't challenging the credibility of the inventors. So, as
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`we're looking for corroborating evidence to find credibility in witnesses
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`whose credibility hasn't been challenged and it emphasizes that this is not a
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`high burden in connection with corroboration.
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`The other very important point under the rule of reason it's dealt with
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`in the bottom case quote on my slide is that there is no requirement for
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`corroboration of every last detail associated with conception and reduction
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`to practice. The Petitioners, you know, are asking for evidence on every last
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`point. Well, where is your evidence that this prototype was built or this
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`prototype was tested. What about this other one? You got to show every
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`last little detail. That's not what the law requires. The law simply requires
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`that the corroborative evidence including circumstantial evidence supports
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`the credibility of the inventor's story. So, with that --
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`JUDGE PAULRAJ: Mr. Vandenburgh, how do you perhaps
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`distinguish the Apator case in the quote that Petitioner relies upon as that
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`you can't have more or less a catch 22 of corroboration where you're relying
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`upon inventor testimony and the documents that perhaps might be your
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`8
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`corroborating evidence? The lab notebooks or the internal memoranda that
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`you're relying upon here. It could only be perhaps authenticated by the
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`inventor so, you need the inventors to corroborate the documents, and you
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`need the documents to corroborate the inventor testimony. How do you
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`perhaps distinguish that situation, sir?
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`MR. VANDENBURGH: There's an important difference there. First
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`of all, in the Apator case I think if I recall correctly was one where the exact
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`date of the document mattered. It was only like a week before the critical
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`date and it wasn't an ordinary business record. And that's an important
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`difference here because the documents we're talking about -- of course,
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`there's only a couple that were prepared and authenticated solely by -- or I
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`shouldn't even say I don't think any of them are authenticated solely by the
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`inventors. We put in extensive authentication evidence by document
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`keepers within Teleflex, by the third-party vendors who supplied some of
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`the documents at issue here. So, there's very few documents where we're
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`really relying on the inventor anyway.
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`But the other important point and this is touched on, on my Slide 9, is
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`that when you're talking about ordinary business records, they are treated as
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`authentic. They are authenticated. They are given weight just like any other
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`evidence. We can trust the dates shown on those references. There is no
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`concern on that front. Now, on the issue of conception --
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`JUDGE PAULRAJ: When you're saying ordinary business records,
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`are you asking us to apply what might be considered the hearsay exception
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`for business records? Or is there some other standard we need to look at?
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`MR. VANDENBURGH: Correct, Your Honor. It would be a hearsay
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`exception for business records.
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`9
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`
`JUDGE PAULRAJ: Okay. And so, that's the analysis we got to
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`figure out whether or not these are in fact ordinary business records as you
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`say they are.
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`MR. VANDENBURGH: Yes, but I think there's only been one
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`document that they've actually challenged in a motion to exclude. And I'm
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`going to get to that one and I can talk about it. But that one certainly, you
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`know, there's dozens of documents here. So, even if that one were not
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`considered, there's still plenty of documentary corroboration.
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`JUDGE PAULRAJ: I'm curious though because I just wonder if, like
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`a lab notebook, a one-off lab notebook, would be considered an ordinary
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`business record. Because, I mean, going back to my evidence class from
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`law school, I think it had to be generated in the regular course of business,
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`and I just wonder if a lab notebook meets that requirement or not.
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`MR. VANDENBURGH: Your Honor, I think it would in some
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`circumstances, maybe not in others. But this case I would say it really
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`doesn't matter for two reasons. And just because I did want to talk briefly
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`about the lab notebook entry, which is Slide 7. It's dated January 4th.
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`There's two particular reasons why it's not really important in this case that
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`we'd be given that exact date. One, is because we don't need that exact date.
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`The critical date here is nine months later. So, it's not like it really matters if
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`it's exactly this document. We've shown this primarily because it is the
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`classic invention document you would expect to see.
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`But the other reason is because of all the other documents to come
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`after it. The seeing like invoices starting in January proceeding over the
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`next six months, all of those documents corroborate the accuracy of this
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`date. So, I think that's what really distinguishes the Apator cases. They
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`10
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`needed that exact date. It was only 10 days before the critical date. And
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`there was nothing else kind of in that following time period that would
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`authenticate the, I think, in that case grass patent application to show
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`conception. So, you know, as I say, I don't want to spend a lot of time on
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`conception because I think all the documents behind it corroborate that
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`January makes sense under the rule of reason standard that we apply.
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`I really want to spend time what I think the Board indicated at last
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`Friday's prehearing conference we should be focusing most of our time on,
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`which is the corroboration of reduction to practice including testing. And
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`so, on Slide 13, and just for organization today, -- Your Honor, are you
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`speaking? I can't hear you.
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`JUDGE PAULRAJ: Apologies. I had muted myself. So, I did want
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`to touch on the lab notebook a little bit. And I understand it's public so we
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`can stay on the public record. Is that okay? Okay.
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`MR. VANDENBURGH: Yes.
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`JUDGE PAULRAJ: So, that said. We have the lab notebook. We
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`also have Exhibit 2003, and then we have the Exhibit 2004. Those are your
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`primary conception documents. Is that fair to say?
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`MR. VANDENBURGH: That is fair to say, Your Honor, except that
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`we don't need those dates. So, for example, the June and July prototypes
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`that I've talked about, you could call those conception documents. They
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`evidence the conception. The conception of the invention. We think it
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`evidences reduction to practice. But so, it does go back to we focused on
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`those early documents really just as a matter of convenience.
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`JUDGE PAULRAJ: All right, well, in terms of the early documents, I
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`do want to kind of get a sense of what Mr. Sutton and Mr. Root actually
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`thought was their invention. So, we have a pretty clear statement as to what
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`the idea was that they had in Exhibit 2002, right? Where it seems like it's
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`clear that it relates to the problem of trying to provide more back-up support
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`for the stent device. And that seems to be the heart of what the problem that
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`they were trying to solve. Would you agree with that statement that you
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`need to provide increased back-up support?
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`MR. VANDENBURGH: Certainly, increase back-up support was an
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`aspect to it. I would say the other primary aspect of it would be in what we
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`refer to as a rapid exchange format where, you know, you don't have to have
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`the extra-long exchange wire that was used with the prior art mother and
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`child configuration.
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`JUDGE PAULRAJ: Okay. And that's the distinction between
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`perhaps the rapid exchange version of the GuideLiner versus the over the
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`wire version? Is that right?
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`MR. VANDENBURGH: Correct, Your Honor.
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`JUDGE PAULRAJ: And I did note in the lab notebook and some of
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`the other early documents it did note that the design allows for rapid
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`exchange. But I wanted to get your point as to how that rapid exchange
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`feature ties-in to the claim language. I know we have a lot of claims at issue
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`here and the conception needs to be shown for all the claimed inventions as I
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`understand it. So, not that I'm going to have you go through every single
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`claim limitation, but could you perhaps address how the RX version the
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`GuideLiner satisfies certain key limitations such as the -- and I think -- let
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`me ask it this way. You know, what specific solicitations of the claims go to
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`the rapid exchange feature of the GuideLiner?
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`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`
`MR. VANDENBURGH: Yes, Your Honor. I'm going to step off
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`camera just a second to grab a document.
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`JUDGE PAULRAJ: Sure.
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`MR. VANDENBURGH: So, I'm going to start with our -- with the
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`demonstrative claim document that we submitted -- that the parties jointly
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`submitted. And I'm going to start on page 2, which is Claim 1 of the '032
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`patent. So, you have a flexible tip portion, which in that in the context of
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`this claim, is the polymer tubular portion that is much shorter than the guide
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`catheter. And then we have a substantially rigid portion that defines a rail
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`structure and has a maximum cross-sectional dimension at a proximal
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`portion that is smaller than the cross-sectional outer diameter of the flexible
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`tip portion. So, that's essentially defining a rapid exchange device. In an
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`over the wire device, --
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`JUDGE PAULRAJ: Let me pause you right there. Yeah, and if I --
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`you know what, why don't you continue to explain how that defines the
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`rapid exchange device as distinguished from an over the wire device.
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`Because I was curious as to whether Claim 1 is broad enough to cover what's
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`admittedly prior art, which is the over the wire device.
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`MR. VANDENBURGH: Right. So, backing up to the specification
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`of the flexible tip portion, it requires that it have a length shorter than the
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`predetermined -- I'm sorry -- predefined length of the continuous lumen of
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`the guide catheter. So, that's a clear limitation that limits you to a rapid
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`exchange device. And that's really the difference between the rapid
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`exchange and the over the wire is if you're over the wire, the tube is longer
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`than the guide catheter so that the tube runs the whole length and comes out
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`the back end. So, that limitation limits you to rapid exchange. Then it
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`separately defines the substantially rigid portion and then there's an overall
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`length limitation in the claim that basically says the two together allow you
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`to stick the distal end of the flexible tip portion out the far end of the guide
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`catheter, while the substantially rigid portion is still outside the proximal end
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`of the guide catheter. So, again, those limitations collectively are defining a
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`rapid exchange device.
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`JUDGE PAULRAJ: Okay. And I do appreciate you going back to
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`the joint demonstratives, which I found very helpful. You know, I don't
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`necessarily need you to go through every single limitation. I think the
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`record will reflect it. But in terms of the side opening feature that's been
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`argued, you know, it seemed to me that that was actually an important
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`feature of the rapid exchange guide catheter. Can you have a -- let me ask it
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`this way. Can you have a rapid exchange guide catheter without such a side
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`opening?
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`MR. VANDENBURGH: Yes, you can, Your Honor. Because a
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`interventional cardiology device, a stent, can still go in and call it an end
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`opening where it's just a tube with a vertically cut end. You can still feed a
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`stent catheter down into a guide catheter and it will enter into that vertical
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`opening. Maybe not as efficiently. And, you know, when we talk about
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`importance of features, having a side opening was certainly a very important
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`feature because it facilitates the entry of the device into that tubular section.
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`But and perhaps I should start at this more basic point just to make sure
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`we're correct in our terminology. In the terminology we use, a side opening
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`means the opening into that tubular portion that's shorter than the guide
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`catheter -- I'm sorry -- the side opening means it's not -- it's not a vertically
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`cut opening. It's at some sort of angle. It might be a complex shape, but it's
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`14
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`not a vertical opening. You have to have an opening between the rail
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`structure and the tubular portion, but it can be either straight or angled.
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`JUDGE PAULRAJ: All right, thank you, counsel.
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`MR. VANDENBURGH: Sure. Does that make sense? Okay.
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`JUDGE PAULRAJ: It does. And you can proceed to where you left
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`off before --
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`MR. VANDENBURGH: Okay.
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`JUDGE PAULRAJ: -- I started with questions.
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`MR. VANDENBURGH: Yeah, I want to get into the collaborating
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`evidence on the building and testing of prototypes. And again, none of this
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`that I'm going to be talking about would have happened if the invention
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`already hadn't been conceived of. So, starting on Slide 14, you know, we
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`have two corroborating witnesses here. The first is Mr. Steve Erb. Mr. Erb
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`was the technician in the engineering department at Vascular Solutions, the
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`company that developed this product. And, of course, he is not an inventor.
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`And as you can see there, he started at VSI right at the very beginning of
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`2005. And that's had some importance when you think about his credibility.
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`Not that they're challenging his credibility. But he testified this is the very
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`first project that he worked on at Vascular Solutions. That stuff sticks with
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`you.
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`The first thing you do at a job or in sort any context, you remember
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`that. So, it's not surprising that Mr. Erb has a very specific recollection of
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`the work he did on the GuideLiner project. So, when you look at, for
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`example, Slide 15, here we have a mere 10 days after the lab notebook entry.
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`Mr. Erb is ordering stainless steel hypotube from a vendor. It's got his name
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`on it. It's got a date on it. This is an ordinary business record. And he talks
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`15
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`about it. He says, I remember doing this. I ordered these parts. Because he
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`was the one who made the very first prototypes.
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`And then so if we go to Slide 16 and 17, there's more detail from his
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`declaration where he talks about building a jig and he had to hold the part so
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`he could cut these hypotubes down into that to make the proximal portion of
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`this -- of prototype devices. And he says, I did that. We mated them up to
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`flexible distal tubular portions. We tested them. Some of them we glued
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`and we had a different methodology for putting together. And then he goes
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`on to talk about at one point he was -- they went past the point of sort of in-
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`house built prototypes and they went on to ordering more sophisticated parts
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`from vendors. And I'll get to the documents on those. But he corroborates
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`that. He says, yep, we moved on. We started buying parts from, for
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`example, a company called SPECTRAlytics. I was there. I know that these
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`products were built and tested. I saw a lot of it with my own eyes.
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`JUDGE TORNQUIST: Counsel, this is Judge Tornquist. The one
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`question I had looking at Mr. Erb's testimony is if you look at your
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`representative claim, there are a lot of limitations there in that claim. And
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`Mr. Erb just says, you know, we had tubes and we -- this is how I read it --
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`and we tested some things. How do we know they tested was actually
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`claimed?
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`MR. VANDENBURGH: Right. A couple answers to that. First is,
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`for the issue of the prototypes back to the invention, we rely on, you know,
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`we put in pictures, a big picture of the -- of the April and July prototypes.
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`And maybe I should start there. We're really relying on the April and July
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`prototypes because we have drawings. We could see them. We know what
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`they look like. So, and then we have the detailed exhibits in the Root
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`
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`16
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`

`

`IPR2020-00126, IPR2020-00127, IPR2020-00128, IPR2020-00129,
`IPR2020-00130, IPR2020-00132, IPR2020-00134, IPR2020-00135,
`IPR2020-00136, IPR2020-00137, IPR2020-00138
`
`declaration. And I am hoping to kind of toward the end of my discussion
`
`talk about the evidence on whether the prototypes practiced -- those two
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`prototypes practiced the claims.
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`But in terms of, you know, this is what Petitioner wants to argue is
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`that, well, Mr. Erb, you know, he's just talking about the early prototypes.
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`He doesn't very specifically say, you know, yep, those exact later May and
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`July prototypes were tested and shown to work. That is just wrong. First of
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`all, Mr. Erb says, and it's on -- I'll go back to Slide 17. He points out in
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`Slide 11 that whenever a prototype was constructed at Vascular Solutions, it
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`was typical that testing immediately followed. That makes sense. You
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`know, again, we're operating under the rule of reason where there doesn't
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`need to be independent proof that each and every event occurred. We just
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`have to look to make sure the inventor's story makes sense.
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`Vascular Solutions is in the business of developing and introducing
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`products. So, even if there's no further evidence, the fact that they bought
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`the parts, that makes it extremely reasonable that they built them and that
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`they tested them. They didn't build them just to look at them. They built
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`them to test them. So, even if all we had was Mr. Erb's declaration, I would
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`submit that we have complied with the corroboration requirement because
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`he corroborates all aspects of Mr. Root's and Mr. Sutton's declaration.
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`But we do have more. We, of course, have the declaration of M