UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`Patent Owner.
`
`Case IPR2020-00136
`Patent RE 45,776
`
`PETITIONER’S MOTION TO COMPEL OR AUTHORIZE DEPOSITION
`OF AMY WELCH
`(FILED WITH AUTHORIZATION OF THE BOARD)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`Patent Owner.
`
`Case IPR2020-00136
`Patent RE 45,776
`
`PETITIONER’S MOTION TO COMPEL OR AUTHORIZE DEPOSITION
`OF AMY WELCH
`(FILED WITH AUTHORIZATION OF THE BOARD)
`
`
`
`IPR2020-00136
`Patent RE 45,776
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`
`Petitioner respectfully requests leave to take the deposition of Patent
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`Owner’s declarant, Ms. Amy Welch, in this proceeding. Ms. Welch is the Director
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`of Sales-East for Patent Owner-related entity Teleflex Incorporated. Patent Owner
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`cited Ms. Welch’s declaration in support of its Patent Owner Response (“POR”) on
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`October 1, 2020. Ms. Welch’s declaration is the same declaration that was filed in
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`the now-stayed related district court litigation in connection with Patent Owner’s
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`motion for a preliminary injunction. See Ex. 2043/2044.1 In the district court, Ms.
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`Welch’s declaration was submitted in support of allegations of “irreparable harm.”
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`Here, in its POR, Patent Owner submits (and cites) Mrs. Welch’s deposition in
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`support of its arguments regarding secondary considerations of non-obviousness.
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`See POR at 53-54, 60-63, 65-66, 69 (citing Welch decl. (Ex. 2044)). Ms. Welch
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`has not been deposed specifically regarding secondary considerations topics, and
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`Petitioner seeks to depose her regarding the basis for her cited statements and
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`potential related omitted information that may refute or undercut Patent Owner’s
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`arguments regarding alleged secondary considerations.
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`A deposition or “[c]ross examination of affidavit testimony prepared for the
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`proceeding is authorized” as part of “routine” discovery. 37 C.F.R.
`
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`1 The declaration of Ms. Welch was filed under seal as Ex. 2043 and a redacted
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`version was filed as Ex. 2044.
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`1
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`IPR2020-00136
`Patent RE 45,776
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`§ 42.51(b)(1)(ii). In certain non-precedential and non-informative decisions the
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`Board has, however, ruled “that depositions are not available as routine discovery
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`when the witness’s testimony was prepared for or given in a different proceeding
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`and then later filed in an inter partes review.” Taylor Made Golf Co., Inc. v.
`
`Parsons Xtreme Golf, LLC, IPR2018-00675, Paper No. 50 (PTAB Jan. 11, 2019)
`
`(citing Nestle Healthcare Nutrition, Inc. v. Steuben Foods, Inc., Case IPR2015-
`
`00249, Paper 107 at 3–4 (PTAB Oct. 29, 2018); 1964 Ears, LLC v. Jerry Harvey
`
`Audio Holdings, LLC, IPR2016-00494, Paper 40 at 5-6 (PTAB Jan. 30, 2017)); see
`
`also Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., IPR2013-
`
`00576, Paper 29 (PTAB Aug. 15, 2014). Citing these decisions, Patent Owner has
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`refused to produce Ms. Welch for a deposition in this proceeding. The parties
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`participated in a telephonic hearing before the Board on November 9, 2020, and
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`the Board authorized submission of the instant motion. See Ex. 1505. As detailed
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`below, the deposition of Ms. Welch should be compelled as “routine discovery” or
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`allowed as “additional” discovery pursuant to 37 C.F.R. § 42.51(b).
`
` MS. WELCH’S DEPOSITION SHOULD BE COMPELLED AS
`“ROUTINE” DISCOVERY.
`
`Congress provided that discovery of relevant evidence, including
`
`
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`specifically “the deposition of witnesses submitting affidavits or declarations,”
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`should be allowed in inter partes review proceedings. 35 U.S.C. § 316(a)(5).
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`Congress indicated that depositions of declarants are “necessary in the interest of
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`2
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`IPR2020-00136
`Patent RE 45,776
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`justice.” See id. (allowing for other discovery that is also “otherwise necessary in
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`interest of justice” (emphasis added)).
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`Petitioner submits that that the Steuben Foods line of decisions are wrongly
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`decided. 37 C.F.R. § 42.51(b)(ii) was amended in 2015 to add the words “prepared
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`for this proceeding.” E.g., Nestle, Paper 107 at 4 n.3 (citing 80 FR 28,561, 28,565
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`(May 19, 2015)). However, no commentary in making this “clarifying” amendment
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`was provided by the Office. See 80 FR 28,563. Nothing indicates that the Office
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`intended to preclude depositions of witnesses whose declarations or affidavits were
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`prepared as an exhibit for, submitted in, and specifically relied on by a party in
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`presenting its arguments in a particular inter partes review proceeding.
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`Interpreting § 42.51(b)(ii) as not allowing for depositions of declarants
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`whose testimony was prepared as an exhibit for and submitted in the particular IPR
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`proceeding would be contrary to the governing statute. Indeed, the Board has at
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`least in some cases ordered, as “routine discovery,” depositions of a declarant
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`whose testimony was submitted and relied upon on in the Board proceeding, even
`
`though the declaration was prepared originally for use in a different proceeding.
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`E.g., IBG LLC v. Trading Techs. Int’l, Inc., CBM2015-00179, Paper 39 (Apr. 15,
`
`2016); Ikaria, Inc. v. Geno LLC, IPR2013-00253, Paper 20 at 2 (Apr. 1, 2014).
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`Not allowing a deposition here would subvert the interests of justice by
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`shielding direct testimony from cross-examination. “Cross-examination is the
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`3
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`IPR2020-00136
`Patent RE 45,776
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`principal means by which the believability of a witness and the truth of his
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`testimony are tested.” Davis v. Alaska, 415 U.S. 308, 316 (1974). Patent Owner
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`submitted Ms. Welch’s declaration, in full, in support of its arguments in its POR.
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`Ex. 2043/2044. A deposition should thus be allowed as cross-examination is a
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`traditional safeguard of due process that it should “be assumed that Congress ...
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`intended to afford.” Greene v. McElroy, 360 U.S. 474, 507-08 (1959).
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` MS. WELCH’S DEPOSITION IS IN THE INTERESTS OF JUSTICE
`In an inter partes review, a party seeking discovery beyond what is
`
`expressly permitted by rule must do so by motion, and must show that such
`
`additional discovery is “in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i); see
`
`also 35 U.S.C. § 316(a)(5)(B). The Board has set forth five factors—the so-called
`
`Garmin factors—to be considered in determining whether “additional discovery” is
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`in the interests of justice. The five Garmin factors are: (1) whether there exists
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`more than a possibility and mere allegation that something useful will be
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`discovered; (2) whether the requests seek the other party’s litigation positions and
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`the underlying basis for those positions; (3) whether the moving party has the
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`ability to generate equivalent information by other means; (4) whether the moving
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`party has provided easily understandable instructions; and (5) whether the requests
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`are overly burdensome. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-
`
`00001, Paper 26 at 6-7 (PTAB March 5, 2013) (precedential).
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`4
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`IPR2020-00136
`Patent RE 45,776
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`The Garmin factors were developed to consider whether various document
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`production requests and interrogatories were appropriate; not whether a deposition
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`of a declarant should be allowed. See Garmin, Paper 26. In Garmin, the Board
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`assumed that “[i]f and when Garmin presents affidavit or declaration testimony to
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`support any position it maintains,” the other party would have “an opportunity to
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`cross-examine the affiant or declarant with regard to the basis of the testimony.”
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`Id. at 13. Here, the Garmin factors weigh in favor of granting this motion.
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`
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`A. The deposition will likely produce useful information.
`
`The deposition is likely to produce information useful to challenging Patent
`
`Owner’s contentions as to secondary considerations of non-obviousness. Patent
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`Owner cites Ms. Welch’s declaration in support of a variety of arguments
`
`regarding secondary considerations of non-obviousness. POR at 53-54, 60-63, 65-
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`66, 69. Ms. Welch’s declaration is cited in support of four of the five secondary
`
`considerations factors Patent Owner alleges to be present. Id. Ms. Welch’s
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`declaration is cited for the proposition that the “tremendous” market success of
`
`Guideliner was due to the patent and not other factors such as market position of its
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`seller. POR at 60-61. Ms. Welch’s declaration is also cited to support the argument
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`that Guideliner was a “game changer” in the industry, as well as arguments
`
`regarding licensing and copying by competitors. Id. at 63, 65, 69.
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`Information is “useful” in the context of Garmin if it is “favorable in
`
`5
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`IPR2020-00136
`Patent RE 45,776
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`substantive value to a contention of a party moving for discovery.” Garmin, Paper
`
`26 at 7. Patent Owner apparently finds Ms. Welch’s declaration useful in
`
`supporting its case, and thus any opportunity to cross-examine that same testimony
`
`would be useful and “favorable in substantive value” to Petitioner’s case. Id.;
`
`Davis, 415 U.S. at 316 (“Cross-examination is the principal means by which the
`
`believability of a witness and the truth of his testimony are tested.”). Without the
`
`deposition, Petitioner will be prejudiced in its ability to challenge the secondary
`
`considerations arguments presented by Patent Owner. Patent Owner submitted
`
`only two declarations from individuals employed by Patent Owner in support of
`
`secondary indicia —Ms. Welch and Patent Owner’s Senior Manager of Finance,
`
`Mr. Steve Jagodzinski.2 Mr. Jagodzinski’s declaration totals nine paragraphs and
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`reports sales volumes and revenue associated with Patent Owner’s Guideliner
`
`product. Ex. 2153. Ms. Welch’s declaration, on the other hand, purports to provide
`
`a historic view of Patent Owner’s Guideliner product, from its launch in 2009
`
`through all three versions of the product. See POR at 60-61 (citing Ex. 2044 ¶¶ 4,
`
`10, 12).
`
`
`2 All other declarations Patent Owner submits in support of its secondary
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`consideration case are from physicians (Exhibits 2145, 2151, 2215) and its
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`technical expert, Mr. Keith (Exhibit 2138).
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`6
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`IPR2020-00136
`Patent RE 45,776
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`Patent Owner’s position is that Petitioner should be denied an opportunity to
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`take Ms. Walsh’s deposition because it seeks merely to “ask[] for the other party’s
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`litigation positions and the underlying basis for those positions.” Garmin, Paper 26
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`at 6. Not so. Petitioner wishes to depose Ms. Walsh to expose through
`
`cross-examination information omitted from Ms. Welch’s declaration that helps
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`refute those positions or shows lack of credibility. Patent Owner cannot have it
`
`both ways. Patent Owner cannot submit Ms. Welch’s declaration in its entirety and
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`refuse to produce its declarant for deposition. Garmin factor one thus weighs in
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`favor of granting the motion.
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`
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`B. Garmin factor two also favors granting the motion.
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`Moreover, the deposition is not an attempt to subvert the normal timing or
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`procedure for presentation of arguments and evidence, as Garmin factor two is
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`meant to consider. See id. at 6, 13. To the contrary, Petitioner merely seeks a
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`deposition of a declarant at the normal time frame of other depositions of declarant
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`witnesses. Garmin factor two thus weigh in favor of granting the motion.
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`
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`C. Equivalent information cannot be generated by other means
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`Ms. Welch was deposed in the underlying district court litigation. However,
`
`in the district court litigation Ms. Welch’s declaration was presented in the context
`
`of a motion for a preliminary injunction and cited in support of arguments
`
`regarding irreparable harm. See Ex. 1473 at 17-28. Patent Owner—not Petitioner—
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`7
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`IPR2020-00136
`Patent RE 45,776
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`chose to make Ms. Welch’s declaration part of this proceeding. The district court
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`litigation has now been stayed pending the outcome of this and the related IPR
`
`proceedings. Ex. 1500. Accordingly, Petitioner has no way to obtain the
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`information it seeks regarding Ms. Welch’s secondary considerations opinions
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`other than obtaining it through discovery in this proceeding. Garmin factor 3
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`weighs in favor of granting the motion.
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`
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`D.
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`The deposition request is simple and not unduly burdensome.
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`Petitioner seeks a deposition consistent with standard deposition procedures.
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`The request is easily understandable. Thus, Garmin factor four weighs in favor of
`
`granting the motion.
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`Garmin factor five also weighs in favor of granting the motion because the
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`requested discovery is discrete and not overly burdensome. Ms. Welch is employed
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`by a Teleflex entity in this country and it would be easy for Patent Owner Teleflex
`
`to produce her for a deposition. See Ex. 2043 ¶ 1; cf. Mexichem Amanco Holdings
`
`S.A. de C.V. v. Honeywell Int’l, Inc., IPR2013-00576, Paper 36 at 2 (PTAB Sept. 5,
`
`2014) (denying motion for deposition where witness was not under party’s control
`
`and a deposition may have required invoking the Hague Convention). Patent
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`Owner and Petitioner can confer on the timing and location of a deposition for Ms.
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`Welch to minimize burden. Indeed, any burden is minimal as Petitioner has stated
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`that Ms. Welch need only be produced for one half-day deposition—with a single,
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`8
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`IPR2020-00136
`Patent RE 45,776
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`consolidated deposition taken in relation to all related IPRs.
`
` CONCLUSION
`Petitioner respectfully requests that Patent Owner be ordered to produce Ms.
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`Welch for a deposition no later than December 14, 2020.
`
`Dated: November 17, 2020
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`Respectfully submitted,
`
`
`
`/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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`9
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`IPR2020-00136
`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
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`November 17, 2020, a copy of PETITIONERS’ MOTION FOR DEPOSITION OF
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`AMY WELCH 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:
`
`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
`
`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
`
`Joseph W. Winkels
`jwinkels@carlsoncaspers.com
`
`Peter M. Kohlhepp
`pkohlhepp@carlsoncaspers.com
`
`Dated: November 17, 2020
`
`Respectfully submitted,
`
`/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
`
`10
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