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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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`Petitioner,
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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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`Case No.: IPR2020-00135
`U.S. Patent No. RE 45,776
`______________________________
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`Petitioners’ Motion for Good Cause Extension Pursuant
`to 37 C.F.R. § 42.100(c)
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`IPR2020-00135
`Patent RE 45,776
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`Medtronic submits this Motion for a Good Cause Extension Pursuant to 37
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`§ C.F.R. § 42.100(c). Specifically, Medtronic requests that the Chief
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`Administrative Judge (i) determine that good cause exists to extend the one-year
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`period for issuing a Final Written Decision and (ii) authorize the Board to extend
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`the date for the Oral Hearing by three months.
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`I.
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`The Scope of This IPR is Unprecedented.
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`It is not hyperbole to say that these IPRs—in light of Teleflex’s POR
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`submissions—have ballooned to such an extent that the current IPR schedule is
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`unworkable. The typical IPR schedule for the parties and the Board did not
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`contemplate this situation. A good-cause extension is warranted.
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`In November 2019, Medtronic filed its IPR Petitions. Teleflex had almost a
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`full year—its PORs were filed on October 1—until Due Date 2. In conjunction
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`with that due date, Teleflex submitted its (i) PORs, including its alleged secondary
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`indicia of nonobviousness, (ii) separate briefing attempting to antedate Medtronic’s
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`prior art by establishing an earlier conception and reduction to practice date
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`(“CRTP”), and (iii) eleven Motions to Amend.
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`In support of its PORs, Teleflex submitted four expert declarations and four
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`fact declarations. For CRTP, Teleflex submitted more than sixty-five documents
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`and seven declarations (one expert and six fact declarations). In support of its
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`Motions to Amend, Teleflex submitted up to eight amended claims and a separate
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`1
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`IPR2020-00135
`Patent RE 45,776
`expert declaration in support of each proposed amendment. Finally, Teleflex
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`submitted nine fact declarations attempting to authenticate its exhibits. In sum, in
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`conjunction with Due Date 2, in addition to its briefing, Teleflex submitted up to
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`215 exhibits, six expert declarations, and twenty fact declarations per IPR.
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`Medtronic’s opposition to Teleflex’s CRTP brief and its opposition to the
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`Motion to Amend are due on December 17 and its Reply to the Petition is due on
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`December 21. Based on the current schedule, Medtronic has less than three
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`months—despite Teleflex having had nearly a year to prepare its POR
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`submissions—to analyze Teleflex’s arguments, complete its depositions, and
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`prepare fulsome responses. In the “typical” IPR context, three months provides
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`sufficient time, but this is not the typical—rather, this is the extraordinary—IPR.
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`To prepare its Replies to the POR, Medtronic must review and analyze more
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`than 16,000 documents submitted in the district court in order to respond to
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`Teleflex’s CRTP arguments and alleged secondary indicia of non-obviousness.1
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`And in conjunction with the Motions to Amend, Medtronic must not only analyze
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`and apply the prior art to the proposed claim amendments, but also prepare Section
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`101 and 112 defenses (that were not previously within the scope of these IPRs).
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`1 Teleflex submitted four expert declarations and cites three fact declarants in
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`support of its alleged secondary indicia of non-obviousness.
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`2
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`IPR2020-00135
`Patent RE 45,776
`Medtronic has less than three months to take numerous depositions, and
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`develop declarations for numerous responsive witnesses, for both the current and
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`proposed substitute claims. The parties will then have about two months, January
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`and February, for numerous additional depositions, sur-replies, and the rest of the
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`motion to amend process, which is likely to involve more declarations and
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`depositions. And the Board will have to extend the hearing anyway if Patent
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`Owner chooses—which Petitioner believes is necessary—to file Amended Motions
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`to Amend. Accordingly, a good cause extension under § 42.100(c) is warranted.
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`II. A Three-Month Extension Will Not Prejudice Teleflex.
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`Teleflex’s prejudice arguments were already rejected by the district court,
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`which found no irreparable harm absent an injunction and that Teleflex’s litigation
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`strategy created a delay that subsumes Petitioner’s requested extension. In denying
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`the Preliminary Injunction, the District Court explained that “Teleflex ha[d] failed
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`to make a particularly compelling case that it [wa]s threatened with ‘substantial
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`and immediate irreparable injury.’” Ex-1088, at 14. Thereafter, in granting
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`Medtronic’s stay of the district court litigation, the court found that any alleged
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`harm (if proven) could be compensated “by monetary damages.” Ex-1100, at 4; see
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`also Ex-1101, at 4 (noting that the “harm Teleflex may suffer is likely to be of the
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`reparable variety”). It is unlikely Teleflex will be able to demonstrate irrespirable
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`3
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`IPR2020-00135
`Patent RE 45,776
`harm, and thus an injunction under eBay Inc. v. MercExchange, L.L.C., 547 U.S.
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`388 (2006), is unlikely.
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`Even if Teleflex were able to obtain a permanent injunction, a three-month
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`extension in these IPRs will not delay that relief. These IPRs are more than nine
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`months ahead of co-pending IPRs asserted against related patents, which Teleflex
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`added to the district court litigation just this year (“New Patents”). Within less than
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`six months of Teleflex adding the New Patents, Medtronic filed additional IPRs
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`challenging those claims in July 2020. Assuming institution, a Final Written
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`Decision in the later-filed IPRs of the New Patents will not issue until March 2022.
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`Based on past practice, the district court is unlikely to lift the litigation stay until
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`the later-filed IPRs conclude. Thus, any minimal extension of these IPRs will not
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`delay the eventual district court trial date.
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`Only once—to the best of counsels’ knowledge—has Judge Schiltz assessed
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`a motion to lift a stay while post-grant proceedings were pending. In Horton, Inc.
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`v. Kit Masters, Inc., Civ. No. 08-6291 (D. Minn., filed Dec. 8, 2008), after ex parte
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`reexamination proceedings were initiated against two patents, Judge Schiltz stayed
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`the litigation. Patent owner subsequently sought to lift the stay while certain of the
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`reexamination proceedings were still pending. Id. Judge Schiltz denied the motion,
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`explaining that “[i]t would be inefficient for the Court to lift the stay with respect
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`to the ʼ415 patent until the pending [Patent Office] proceedings conclude[].” Ex-
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`4
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`IPR2020-00135
`Patent RE 45,776
`1102 at 2. There is no reason to believe Judge Schiltz will deviate from this
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`practice.
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`To be clear, any delay in resuming the district court litigation will be the
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`result, not of this Agency’s decision to grant a three-month extension, but because
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`of Teleflex’s tactical decision to add the New Patents to the district court litigation
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`more than seven months after it began. Indeed, when granting Medtronic’s Motion
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`to Stay, the Court noted that it would “not hold the fact that petitions have not yet
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`been filed with regard to the two newly added patents against Defendants as
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`Plaintiffs made the tactical decision to add those patents only after Defendants
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`filed the original 13 IPR petitions.” Ex-1100, at 3. Importantly, in assessing the
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`potential harm (or lack thereof), the Court stated that “the potential for additional
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`delay” as a result of Medtronic’s July IPR Petitions “is Plaintiffs’ own doing, as
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`they chose to amend their complaint after the original IPR petitions had been
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`filed.” Id. at 4. Teleflex will not be prejudiced by a three-month extension.
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`III. Conclusion.
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`Medtronic respectfully requests that the Commissioner determine that good
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`cause exists to extend the one-year period for issuing a Final Written Decision.
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`5
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`IPR2020-00135
`Patent RE 45,776
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`Dated: October 28, 2020
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`Respectfully submitted,
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`Attorney for Petitioner
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`6
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`IPR2020-00135
`Patent RE 45,776
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on October
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`28, 2020, a copy of PETITIONERS’ MOTION FOR GOOD CAUSE
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`EXTENSION was served in its entirety by electronic mail on Patent Owner’s
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`counsel at the following addresses indicated in Patent Owner’s Mandatory Notices:
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`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
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`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
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`Joseph W. Winkels
`jwinkels@carlsoncaspers.com
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`Peter M. Kohlhepp
`pkohlhepp@carlsoncaspers.com
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`Dated: October 28, 2020
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`Respectfully submitted,
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`Attorney for Petitioner
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`1
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