UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
`
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`
`Patent Owner
`
`_____________________________
`
`Cases IPR2020-01341
`U.S. Patent No. 8,142,413
`______________________________
`
`PETITIONERS’ EXPLANATION OF MATERIAL DIFFERENCES
`BETWEEN PETITIONS AND PETITION RANKING FOR
`U.S. PATENT NO. 8,142,413
`
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
`
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`
`Patent Owner
`
`_____________________________
`
`Cases IPR2020-01341
`U.S. Patent No. 8,142,413
`______________________________
`
`PETITIONERS’ EXPLANATION OF MATERIAL DIFFERENCES
`BETWEEN PETITIONS AND PETITION RANKING FOR
`U.S. PATENT NO. 8,142,413
`
`
`
`IPR2020-01341
`Patent 8,142,413
`
`Medtronic, Inc. and Medtronic Vascular, Inc. (“Petitioners”) filed two
`
`petitions for inter partes review against U.S. Pat. No. 8,142,413 (“the ’413
`
`Patent”). (Ex-1001). The Board should consider and institute both petitions
`
`because a priority date dispute warrants two petitions.
`
`The Board’s Consolidated Trial Practice Guide provides that “more than one
`
`petition may be necessary” when, as here, “there is a dispute about priority date
`
`requiring arguments under multiple prior art references.” Consolidated Trial
`
`Practice Guide (November 2019) at 59.1 Petitioners filed two petitions challenging
`
`the ’413 Patent for this exact reason.
`
`Itou-Based Petition
`Ground 1: Claims 1-2, 4, and 7-14 as anticipated by U.S. Patent
`Petition 1
`IPR2020-
`No. 7,736,355 (“Itou”).
`01341
`
`Ground 2: Claims 1-2, 4-5, and 7-14 as obvious over Itou in
`view of the knowledge of a POSITA.
`
`Ground 3: Claims 1-2, 4-5, and 7-14 as obvious over Itou in
`view of U.S. Patent No. 7,604,612 (“Ressemann”) and/or the
`knowledge of a POSITA.
`Kontos-Based Petition
`Ground 1: Claims 1-2, 4-5, 7-12, and 14 as obvious over U.S.
`Petition 2
`IPR2020-
`Patent No. 5,439,445 (“Kontos”) in view of U.S. Patent Pub.
`01342
`2004/0010280 (“Adams”), and/or the knowledge of a POSITA
`
`Ground 2: Claim 13 as obvious over Kontos in view of Adams,
`Takahashi et al., New Method to Increase a Backup Support of a
`6 French Guiding Coronary Catheter, published in 2004
`(“Takahashi”), and/or the knowledge of a POSITA
`
`1 https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
`
`1
`
`
`
`IPR2020-01341
`Patent 8,142,413
`
`The petitions cite different prior art references to cover an anticipated
`
`priority date dispute. The ʼ413 Patent claims priority to U.S. Pat. No. 8,048,032,
`
`which, on its face, is entitled to a priority date of May 3, 2006. (Ex-1001.) Petition
`
`1 asserts Itou as its primary reference (filed September 23, 2005). (Ex-1007.) But
`
`Petitioners anticipate that Patent Owner may allege that the ’413 Patent inventors
`
`conceived of and reduced to practice the underlying invention earlier than
`
`September 23, 2005. (Ex-1084.) So Petitioners filed Petition 2 to challenge the
`
`same claims but asserting Kontos as the primary reference. Kontos issued on
`
`August 8, 1995. (Ex-1009.) Patent Owner may try to swear behind Itou; it cannot
`
`swear behind Kontos. Each petition presents unique, non-duplicative challenges in
`
`response to a priority date dispute.
`
`The Board has already instituted two petitions challenging a related patent
`
`for this exact reason. See IPR2020-00126, Paper 22; IPR2020-00127, Paper 20.
`
`The ’126 petition asserts grounds based on Itou; the ’127 petition asserts grounds
`
`based on Kontos. See, e.g., IPR2020-00127, Paper 20 at 10. Citing its Consolidated
`
`Trial Practice Guide, the Board determined that two petitions were “justified” as a
`
`result of the potential swear-behind issue: “Given the possibility that we may
`
`determine that Itou does not qualify as prior art after fully considering Patent
`
`Owner’s priority date arguments, this is precisely one of the circumstances . . . in
`
`which more than one petition may be necessary.” Id. at 10-11. For this exact
`
`2
`
`
`
`IPR2020-01341
`Patent 8,142,413
`
`reason, two petitions are justified here. As in the ’126 and ’127 proceedings,
`
`Petitioners rely on Itou in their first petition and on Kontos in their second, because
`
`of a priority date dispute that will determine whether Itou is prior art.
`
`The Board’s decision in Microsoft Corp. v. IPA Technologies, Inc., is also
`
`instructive. IPR2019-00810, Paper 12 (PTAB Oct. 16, 2019). There, as here, the
`
`Patent Owner raised a priority date issue necessitating “arguments under multiple
`
`prior art references.” Id. at 15. There, the priority date dispute concerned a prior art
`
`reference. Here, the priority date dispute is more fundamental—Patent Owner has
`
`raised a priority date issue regarding the challenged patent. Were the Board to deny
`
`institution of Petition 2 under § 314(a)—and were Patent Owner to successfully
`
`swear behind Itou—the decision would prejudice Petitioners.
`
`Accordingly, the Board should consider and institute Petition 1 and Petition
`
`2. Petitioners request that the Board consider its petitions in the following order:
`
`Petition 1 (IPR2020-01341), followed by Petition 2 (IPR2020-01342).
`
`RESPECTFULLY SUBMITTED,
`
`ROBINS KAPLAN LLP
`
`Date: July 30, 2020
`800 LaSalle Ave, Suite 2800
`Minneapolis, MN 55402
`612.349.8500
`
`/ Cyrus A. Morton /
`Cyrus A. Morton
`
`Attorney for Petitioners
`Medtronic, Inc. and
`Medtronic Vascular, Inc.
`
`3
`
`
`
`IPR2020-01341
`Patent 8,142,413
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that PETITIONERS’ EXPLANATION OF
`
`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
`
`RANKING FOR U.S. PATENT NO. 8,142,413 was served on July 30, 2020, by
`
`Federal Express mail to the USPTO correspondence address of record listed below:
`
`Paul Onderick
`PATTERSON THUENTE PEDERSEN, P.A.
`80 South 8th Street
`4800 IDS Center
`Minneapolis, MN 55402-2100
`
`Courtesy copies were also sent to IPR counsel in the related proceedings at
`
`the following email addresses:
`
`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
`
`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
`
`/ Cyrus A. Morton /
`
`Cyrus A. Morton
`Registration No. 44,954
`Robins Kaplan LLP
`cmorton@robinskaplan.com
`
`Attorney for Petitioners
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
