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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
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`v.
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`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
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`Case IPR2020-00136
`U.S. Patent No. RE45,776
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`PATENT OWNER’S PAPER AUTHORIZED BY JANUARY 5, 2021
`ORDER
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`Pursuant to the Board’s authorization provided via a January 5, 2021
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`telephonic hearing (Ex-2233), Patent Owner Teleflex identifies the following
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`arguments and evidence outside the scope of a proper reply:
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`1)
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`Petitioner’s new theory that Ressemann’s collar component 2141
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`has “three inclines” is outside the scope of a proper reply because the Petition
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`argued a “two incline” theory that relied on the angle at the tip of Ressemann’s tab
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`as one of the two required inclines (labeled “1”):
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`Petition theory:
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`New “three inclines” theory:
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`The following arguments and evidence correspond to this improper new theory:
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`Reply (Paper 69), pages 15-18 (Section IV(A)); Ex-1806 ¶¶82-91, 119-124, 196-
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`200; Ex-1807, ¶¶50, 132, 192-195, 200-206.
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`2)
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`Petitioners new theory relying on extensive, additional
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`modifications to material aspects of Kontos (at least six new modifications) is
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`outside the scope of a proper reply:
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`2
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`Petition theory:
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`New theory in reply:
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`The following arguments and evidence correspond to this improper new theory:
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`Reply (Paper 69), pages 7-8 (“recess Kontos’s marker bands”), 7 n.2, 13-15
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`(Section IV(A)), 20-21 (Section IV(C)); Ex-1806, ¶¶173 (“embed” distal marker
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`band), 182, 190-192; Ex-1807, ¶¶174-182; 190, 194-195.
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`3)
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`Petitioner’s new motivation that a POSITA would replace
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`Kontos’s funnel with a side opening to “maximize the usable real estate,”
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`based on the benefits of the GuideLiner invention, is outside the scope of a proper
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`reply because the Petition did not rely on this motivation. The following
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`arguments and evidence correspond to this improper new motivation: Reply (Paper
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`69), pages 5-8 (Section IV(A)); Ex-1806, ¶¶169-173; and Ex-1807, ¶¶164-182.
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`4)
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`Petitioner’s new theory for how a POSITA would purportedly
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`expect to successfully combine Ressemann’s collar with Kontos is outside the
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`scope of a proper reply, as the Petition and supporting evidence relied on “how”
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`Ressemann taught to incorporate the collar tab. The following arguments and
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`evidence correspond to this improper new theory: Reply (Paper 69), page 13-14
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`(Section IV(A)); and Ex-1807, ¶¶67-96; 130-131, 188-191.
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`3
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`Dated: February 1, 2021
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`Respectfully submitted,
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`/J. Derek Vandenburgh /
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`J. Derek Vandenburgh (Lead Counsel)
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh
` & Lindquist, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`Email:
`DVandenburgh@carlsoncaspers.com
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`Lead Counsel for Patent Owner
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`4
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned certifies that on February 1, 2021, a true and correct copy of the
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`foregoing Patent Owner’s Paper Authorized by January 5, 2021 Order
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`was served via electronic mail upon the following:
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`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`William E. Manske
`Emily J. Tremblay
`Robins Kaplan LLP
`800 LaSalle Avenue, Suite 2800
`Minneapolis, MN 55401
`Phone: 349-8500
`Fax: 612-339-4181
`Email: Cmorton@robinskaplan.com
`Email: Sroberg-perez@robinskaplan.com
`Email: Cpinahs@robinskaplan.com
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`/J. Derek Vandenburgh/
`J. Derek Vandenburgh
`(Lead Counsel for Patent Owner)
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`5
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