`Tel: 571-272-7822
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`
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`
`
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`Paper: 92
`Entered: February 16, 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.À.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)
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JON B. TORNQUIST, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`TORNQUIST, Administrative Patent Judge.
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. §§ 42.5, 42.70
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`
`I. ORAL ARGUMENT
`Petitioner and Patent Owner both request oral argument. Paper 99
`(Patent Owner’s Request); Paper 100 (Petitioner’s Request).1 The parties’
`requests for oral argument are granted. Oral argument will commence at
`9:00 AM ET on March 8, 2021, by video, and will follow the format
`discussed below.2 The Board will provide a court reporter for the hearing,
`and the reporter’s transcript will constitute the official record of the hearing.
`
`A. Time and Format of the Hearing
`In their requests, the parties disagree as to how much time should be
`allotted for the hearing. In addition, Patent Owner seeks to present live
`testimony from inventor Howard Root at the hearing, directed to the issues
`of conception and reduction to practice. Paper 99, 1–2.3 We address these
`issues below.
`
`1. Live Testimony
`In IPR2020-00126, -00128, -00129, -00132, -00134, -00135,
`and -00137, Patent Owner argues that the subject matter of the challenged
`claims was conceived and reduced to practice prior to the September 23,
`2005, effective filing date of U.S. Patent No. 7,736,355 (“Itou”), thereby
`
`
`1 For convenience, we cite to Papers and Exhibits filed in IPR2020-00128.
`Similar Papers and Exhibits were filed in each of the above-captioned cases.
`2 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least ten (10) business
`days before the hearing date.
`3 On February 2, 2021, a teleconference was held with the parties to discuss
`Patent Owner’s request to present live testimony of Mr. Root at the oral
`hearing. A transcript of this call is in the record. Ex. 1920.
`2
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`removing this reference as prior art under 35 U.S.C. § 102(e). Paper 39, 1.
`In support of its arguments regarding conception and reduction to practice,
`Patent Owner relies on the testimony of inventor Howard Root (Ex. 2118),
`as well as documentary and testimonial evidence that it contends
`corroborates Mr. Root’s testimony. Paper 39, 2.
`Patent Owner acknowledges that Petitioner does not dispute that
`“Patent Owner’s testimonial and documentary evidence is truthful.” Paper
`99, 2; Paper 97, 1. Nevertheless, Patent Owner contends live testimony
`from Mr. Root will be helpful because “Petitioner has put Mr. Root’s
`credibility at issue by arguing that his testimony is not sufficiently
`corroborated and by contending that certain documentary evidence he relies
`on may actually be related to other products.” Paper 99, 2 (citing
`MPOWERED Inc. v. LuminAID Lab, IPR2018-01524, Paper 40 at 4 (PTAB
`Nov. 1, 2019)). Patent Owner further contends that “if the Board were to
`reject Petitioner’s argument that Mr. Root’s declaration lacks sufficient
`corroboration, this case may well turn on Mr. Root’s credibility.” Id. at 2–3.
`“Live testimony will be necessary only in limited circumstances and
`requests for live testimony will be approached by the Board on a case-by-
`case basis.” Consolidated Trial Practice Guide 32 (“CTPG”).4 Factors to be
`considered in allowing live testimony are 1) “the importance of the witness’s
`testimony to the case, i.e., whether it may be case-dispositive” and
`2) whether the witness is a fact witness where credibility may turn on the
`
`
`4 Patent Trial and Appeal Board Consolidated Trial Practice Guide,
`available at https://www.uspto.gov/TrialPracticeGuide
`Consolidated.
`
`3
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`witness’s demeanor. K-40 Elecs., LLC v. Escort, Inc., IPR2013-00203,
`Paper 34 at 3 (PTAB May 21, 2014) (precedential) (identifying factors to
`consider in allowing live testimony).
`As noted above, Mr. Root submitted testimony relating to conception
`and reduction to practice. To be persuasive, an inventor’s testimony of
`conception and reduction to practice must be corroborated. See Kolcraft
`Enterprises, Inc. v. Graco Children’s Prods., Inc., 927 F.3d 1320, 1324
`(Fed. Cir. 2019); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169–70
`(Fed. Cir. 2006). Corroborating evidence may consist of “testimony of a
`witness, other than the inventor,” or “evidence of surrounding facts and
`circumstances independent of information received from the inventor.”
`Medichem, 437 F.3d at 1171. Here, the parties’ dispute generally focuses on
`whether the inventor’s testimony of conception and reduction to practice is
`sufficiently corroborated, and not whether Mr. Root’s testimony is credible.
`Thus, although we recognize the importance of Mr. Root’s testimony as a
`fact witness in support of Patent Owner’s arguments for conception and
`reduction to practice, unlike in the K-40 case, we are not persuaded that the
`credibility of Mr. Root’s testimony is at issue in this proceeding such that an
`assessment of his demeanor would be helpful or required.
`Despite the fact that the credibility of Mr. Root is not in question,
`Patent Owner argues that “it is still important to hear from Mr. Root”
`regarding how the invention was conceived and reduced to practice and why
`this testimony is corroborated by the documents and declarations submitted
`in this case. Ex. 1920, 7:11–8:21 (transcript of teleconference). Dr. Root’s
`testimony on these points, however, is in the record and the sufficiency of
`
`4
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`the submitted evidence to corroborate Mr. Root’s testimony does not, and
`indeed may not, rest on Mr. Root’s credibility alone. See Cooper v.
`Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998) (“In order to establish an
`actual reduction to practice, an inventor’s testimony must be corroborated by
`independent evidence.”); Medichem, 437 F.3d at 1171–72 (“Even the most
`credible inventor testimony is a fortiori required to be corroborated by
`independent evidence, which may consist of documentary evidence as well
`as the testimony of non-inventors.”). Accordingly, we do not authorize live
`testimony from Mr. Root at the oral hearing.
`
`2. Time Allotted for Oral Argument
`In each of the above-captioned cases, the parties address
`unpatentability under 35 U.S.C. § 102 and/or § 103. In addition, per our
`Consolidated Scheduling Order, the parties separately briefed the issue of
`conception and reduction to practice (“RTP”) in IPR2020-00126, -00128, -
`00129, -00132, -00134, -00135, and -00137. Paper 26, 2–3. Patent Owner
`also filed a contingent motion to amend (“MTA”) in each of the above-
`captioned cases. See Paper 38.
`Petitioner requests 180 minutes and Patent Owner requests
`210 minutes of argument time at the hearing to address the three issues
`outlined above, divided as shown in the chart below
`
`5
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`
`Petitioner
`None
`30 min/side
`120 mins/side
`30 mins/side
`
`Patent Owner
`30 min/side
`60 mins/side
`90 mins/side
`30 mins/side
`
`Issue
`Live Testimony
`Conception/RTP
`102/103
`MTA
`Paper 99; Paper 100.
`
`Upon review of the record and the parties’ requests, we grant each
`party a total of 180 minutes to present argument during the hearing. Each of
`the three distinct issues briefed by the parties shall be argued according to
`the following schedule and, as set forth above, no live testimony will be
`heard:5
`Issue
`Conception/RTP
`102/103
`MTA
`
`Allotted Time
`60 min/side
`90 mins/side
`30 mins/side
`
`For the issues of conception and reduction to practice, Patent Owner
`will open by presenting its case regarding these issues. Thereafter,
`Petitioner will respond to Patent Owner’s arguments. For the issues of
`anticipation/obviousness and the motion to amend, Petitioner will open by
`presenting its case regarding the challenged claims for which the Board
`instituted trial. Thereafter, Patent Owner will respond to Petitioner’s
`arguments. For each of the three issues addressed during the hearing, the
`
`
`5 The panel contemplates taking a short break after each issue is argued.
`
`
`6
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`opening party may reserve rebuttal time and the responding party may, in
`accordance with the Consolidated Trial Practice Guide, request to reserve
`time for a brief sur-rebuttal. See CTPG 83.
`
`The parties may request a pre-hearing conference in advance of the
`hearing. See id. at 82. “The purpose of the pre-hearing conference is to
`afford the parties the opportunity to preview (but not argue) the issues to be
`discussed at the hearing, and to seek the Board’s guidance as to particular
`issues that the panel would like addressed by the parties.” Id. If either party
`desires a pre-hearing conference, the parties should jointly contact the Board
`at Trials@uspto.gov at least seven (7) business days before the hearing date
`to request a conference call for that purpose.
`
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`opposing counsel at least seven (7) business days before the hearing date and
`filed at least two days before the hearing.6
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives also are not evidence, and will not be relied upon as
`evidence. Rather, demonstratives are visual aids to a party’s oral
`presentation regarding arguments and evidence previously presented and
`discussed in the papers. Accordingly, demonstratives shall be clearly
`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`
`
`6 The parties may stipulate to an alternative schedule for serving and filing
`demonstratives, and request that the Board modify the schedule for filing
`and serving demonstratives at least seven (7) business days before the
`hearing date.
`
`7
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
`1369 (Fed. Cir. 2018) (holding that the Board is obligated under its own
`regulations to dismiss untimely argument “raised for the first time during
`oral argument”). “[N]o new evidence may be presented at the oral
`argument.” CTPG 85; see also St. Jude Med., Cardiology Div., Inc. v. The
`Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB
`Jan. 27, 2014) (explaining that “new” evidence includes evidence already of
`record but not previously discussed in any paper of record).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, it is strongly recommended that
`each demonstrative include a citation to a paper in the record, which allows
`the Board to easily ascertain whether a given demonstrative contains “new”
`argument or evidence or, instead, contains only that which is developed in
`the existing record.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`involving the Board, the Board does not anticipate that objections to
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`party objects to the propriety of any demonstrative, the parties shall meet
`and confer in good faith to resolve any objections to demonstratives prior to
`filing the objections with the Board. If such objections cannot be resolved,
`the parties may file any objections to demonstratives with the Board no later
`than the time of the hearing. The objections shall identify with particularity
`which portions of the demonstratives are subject to objection (and should
`include a copy of the objected-to portions) and include a one (1) sentence
`
`8
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider any objections, and may
`reserve ruling on the objections.7 Any objection to demonstratives that is
`not timely presented will be considered waived.
`Finally, the parties are reminded that each presenter should identify
`clearly and specifically each paper (e.g., by slide or screen number for a
`demonstrative) referenced during the hearing to ensure the clarity and
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`
`C. Presenting Counsel
`The Board generally expects lead counsel for each party to be present
`at the hearing. See CTPG 11. Any counsel of record may present the
`party’s argument as long as that counsel is present by video.
`
`D. Video Hearing Details8
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five (5) business days prior to the
`hearing date to receive video set-up information. As a reminder, all
`arrangements and the expenses involved with appearing by video, such as
`the selection of the facility from which a party will attend by video, must be
`
`
`7 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`8 USPTO facilities remain closed to the public. If and when conditions
`allow in-person hearing attendance, the parties will be notified and will be
`permitted to submit a joint request to convert the current video hearing to an
`in-person hearing. The requests will be considered on a case-by-case basis,
`and subject to resource availability.
`
`9
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`borne by that party. If a video connection cannot be established, the parties
`will be provided with dial-in connection information, and the hearing will be
`conducted telephonically.
`If one or both parties would prefer to participate in the hearing
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`least five (5) business days prior to the hearing date to receive dial-in
`connection information.
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the hearing, the parties are reminded to identify clearly and specifically each
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`benefit of all participants appearing electronically. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the hearing may also result in an audio lag, and thus the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`If at any time during the hearing, counsel encounters technical or
`other difficulties that fundamentally undermine counsel’s ability to
`adequately represent its client, please let the panel know immediately, and
`adjustments will be made.9
`
`
`9 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`10
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`E. Remote Attendance Requests
`Members of the public may request to listen to this hearing. If
`resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board at PTABHearings@uspto.gov at least ten (10) business days prior to
`the hearing date.
`
`F. Audio/Visual Equipment Requests
`Any special requests for audio-visual equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`related to appearing at a video hearing, such as a request to accommodate
`visual or hearing impairments, and indicate how the PTAB may
`accommodate the special request. Any special requests must be presented in
`a separate communication at least five (5) business days before the hearing
`date.
`
`G. Legal Experience and Advancement Program
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`argue before the Board to develop their skills. The Board defines a LEAP
`practitioner as a patent agent or attorney having three (3) or fewer
`substantive oral arguments in any federal tribunal, including PTAB, and
`seven (7) or fewer years of experience as a licensed attorney or agent.10
`
`10 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
`basis with considerations to include, for example, the amount of time that
`11
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`
`The parties are encouraged to participate in the Board’s LEAP
`program. Either party may request that a qualifying LEAP practitioner
`participate in the program and conduct at least a portion of the party’s oral
`argument. The Board will grant up to fifteen (15) minutes of additional
`argument time to that party, depending on the length of the proceeding and
`the PTAB’s hearing schedule. A party should submit a request, no later than
`at least five (5) business days before the oral hearing, by email to the Board
`at PTABHearings@uspto.gov.11
`The LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`a meaningful and substantive opportunity to argue before the Board. The
`party has the discretion as to the type and quantity of oral argument that will
`be conducted by the LEAP practitioner.12 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`more experienced counsel to provide some assistance to the LEAP
`practitioner, if necessary, during oral argument, and to clarify any statements
`on the record before the conclusion of the oral argument. Importantly, the
`
`
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`11 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`12 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of non-
`obviousness.
`
`12
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`Board does not draw any inference about the importance of a particular issue
`or issues, or the merits of the party’s arguments regarding that issue, from
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`In instances where an advocate does not meet the LEAP eligibility
`requirements, either due to the years of experience as a licensed
`attorney/patent agent or the number of “substantive” oral hearing arguments,
`but nonetheless has a basis for considering themselves to be in the category
`of advocates that this program is intended to assist, the Board encourages
`argument by such advocates during oral hearings. Even though additional
`argument time will not be provided when the advocate does not qualify for
`LEAP, a party may share argument time among counsel and the Board will
`permit the more experienced counsel to provide some assistance, if
`necessary, during oral argument, and to clarify any statements on the record
`before the conclusion of the oral argument.
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent.
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for IPR2020-00126, IPR2020-00127,
`IPR2020-00128, IPR2020-00129, IPR2020-00130, IPR2020-00132,
`IPR2020-00134, IPR2020-00135, IPR2020-00136, IPR2020-00137, and
`IPR2020-00138 shall commence at 9:00 AM ET on March 8, 2021, by
`video, and proceed in the manner set forth herein.
`
`13
`
`
`
`IPR2020-00126; IPR2020-00127; IPR2020-00128; IPR2020-00129;
`IPR2020-00130; IPR2020-00132; IPR2020-00134; IPR2020-00135;
`IPR2020-00136; IPR2020-00137; IPR2020-00138
`
`FOR PETITIONER:
`
`Cyrus Morton
`Sharon Roberg-Perez
`Christopher Pinahs
`William E. Manske
`ROBINS KAPLAN LLP
`Cmorton@robinskaplan.com
`Sroberg-perez@robinskaplan.com
`cpinahs@robinskaplan.com
`wmanske@robinskaplan.com
`
`
`FOR PATENT OWNER:
`
`Derek Vandenburgh
`Dennis Bremer
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`Dvandenburgh@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`
`14
`
`