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`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
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`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
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`Petitioners,
`
`v.
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`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
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`petitions for inter partes review against U.S. Pat. No. 8,142,413 (“the ’413
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`Patent”). (Ex-1001). The Board should consider and institute both petitions
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`because a priority date dispute warrants two petitions.
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`The Board’s Consolidated Trial Practice Guide provides that “more than one
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`petition may be necessary” when, as here, “there is a dispute about priority date
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`requiring arguments under multiple prior art references.” Consolidated Trial
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`Practice Guide (November 2019) at 59.1 Petitioners filed two petitions challenging
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`the ’413 Patent for this exact reason.
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`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=.
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`1
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`
`
`IPR2020-01341
`Patent 8,142,413
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`The petitions cite different prior art references to cover an anticipated
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`priority date dispute. The ʼ413 Patent claims priority to U.S. Pat. No. 8,048,032,
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`which, on its face, is entitled to a priority date of May 3, 2006. (Ex-1001.) Petition
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`1 asserts Itou as its primary reference (filed September 23, 2005). (Ex-1007.) But
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`Petitioners anticipate that Patent Owner may allege that the ’413 Patent inventors
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`conceived of and reduced to practice the underlying invention earlier than
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`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
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`August 8, 1995. (Ex-1009.) Patent Owner may try to swear behind Itou; it cannot
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`swear behind Kontos. Each petition presents unique, non-duplicative challenges in
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`response to a priority date dispute.
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`The Board has already instituted two petitions challenging a related patent
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`for this exact reason. See IPR2020-00126, Paper 22; IPR2020-00127, Paper 20.
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`The ’126 petition asserts grounds based on Itou; the ’127 petition asserts grounds
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`based on Kontos. See, e.g., IPR2020-00127, Paper 20 at 10. Citing its Consolidated
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`Trial Practice Guide, the Board determined that two petitions were “justified” as a
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`result of the potential swear-behind issue: “Given the possibility that we may
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`determine that Itou does not qualify as prior art after fully considering Patent
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`Owner’s priority date arguments, this is precisely one of the circumstances . . . in
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`which more than one petition may be necessary.” Id. at 10-11. For this exact
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`2
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`
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`IPR2020-01341
`Patent 8,142,413
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`reason, two petitions are justified here. As in the ’126 and ’127 proceedings,
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`Petitioners rely on Itou in their first petition and on Kontos in their second, because
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`of a priority date dispute that will determine whether Itou is prior art.
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`The Board’s decision in Microsoft Corp. v. IPA Technologies, Inc., is also
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`instructive. IPR2019-00810, Paper 12 (PTAB Oct. 16, 2019). There, as here, the
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`Patent Owner raised a priority date issue necessitating “arguments under multiple
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`prior art references.” Id. at 15. There, the priority date dispute concerned a prior art
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`reference. Here, the priority date dispute is more fundamental—Patent Owner has
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`raised a priority date issue regarding the challenged patent. Were the Board to deny
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`institution of Petition 2 under § 314(a)—and were Patent Owner to successfully
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`swear behind Itou—the decision would prejudice Petitioners.
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`Accordingly, the Board should consider and institute Petition 1 and Petition
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`2. Petitioners request that the Board consider its petitions in the following order:
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`Petition 1 (IPR2020-01341), followed by Petition 2 (IPR2020-01342).
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`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
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`
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`IPR2020-01341
`Patent 8,142,413
`
`CERTIFICATE OF SERVICE
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`The undersigned certifies that PETITIONERS’ EXPLANATION OF
`
`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
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`RANKING FOR U.S. PATENT NO. 8,142,413 was served on July 30, 2020, by
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`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
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`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
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`