Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 46
`Entered: July 21, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`TELEFLEX LIFE SCIENCES LIMITED,
`Patent Owner.
`_______________
`
`Case IPR2020-01341 (Patent 8,142,413)
`Case IPR2020-01343 (Patent RE 46,116)1
`_______________
`
`
`Before SHERIDAN K. SNEDDEN and CHRISTOPHER G. PAULRAJ,
`Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Motion for Additional Discovery
`37 C.F.R. §§ 42.5, 42.51
`
`
`
`
`
`1 This Order addresses issues that are identical in each of the
`above-captioned proceedings. We therefore exercise our discretion to issue
`one Order to be filed in each proceeding. The proceedings have not been
`consolidated, and the Parties are not authorized to use this style heading in
`any subsequent papers.
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 46
`Entered: July 21, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`TELEFLEX LIFE SCIENCES LIMITED,
`Patent Owner.
`_______________
`
`Case IPR2020-01341 (Patent 8,142,413)
`Case IPR2020-01343 (Patent RE 46,116)1
`_______________
`
`
`Before SHERIDAN K. SNEDDEN and CHRISTOPHER G. PAULRAJ,
`Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Motion for Additional Discovery
`37 C.F.R. §§ 42.5, 42.51
`
`
`
`
`
`1 This Order addresses issues that are identical in each of the
`above-captioned proceedings. We therefore exercise our discretion to issue
`one Order to be filed in each proceeding. The proceedings have not been
`consolidated, and the Parties are not authorized to use this style heading in
`any subsequent papers.
`
`
`
`IPR2020-01341 (Patent 8,142,413)
`IPR2020-01343 (Patent RE 46,116)
`
`I. INTRODUCTION
`With our authorization, Petitioner filed a Motion for Additional
`Discovery (Paper 36,2 “Motion” or “Mot.”) in the instant proceedings, and
`Patent Owner filed an Opposition (Paper 40, “Opp.”). For the reasons stated
`below, Petitioner’s Motion is denied.
`
`II. DISCUSSION
`A party in a contested case may apply to a United States District
`Court for a subpoena to compel testimony. 35 U.S.C. § 24. A party seeking
`to compel testimony must first obtain authorization from the Board. 37
`C.F.R. § 42.52(a). “[I]n inter partes review, discovery is limited as
`compared to that available in district court litigation.” Garmin Int’l, Inc. v.
`Cuozzo Speed Tech. LLC, IPR2012-00001, Paper 26, 5 (PTAB Mar. 5,
`2013) (informative). Additional discovery must be “necessary in the interest
`of justice.” 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2). In determining
`whether additional discovery in an inter partes review proceeding is
`necessary in the interest of justice, the Board considers the following factors:
`(1) the request is based on more than a mere possibility of finding something
`useful; (2) the request does not seek the litigation positions of the other
`party; (3) the information is not reasonably available through other means;
`(4) the request is easily understandable; and (5) the request is not overly
`burdensome to answer. Garmin, Paper 26 at 6–7.
`In its Motion, Petitioner requests additional discovery in the form of
`cross-examination of “three non-party witnesses: Jim Kauphusman, a former
`
`
`2 Redacted public version available at Paper 37.
`
`2
`
`
`
`IPR2020-01341 (Patent 8,142,413)
`IPR2020-01343 (Patent RE 46,116)
`
`VSI engineer; Katie Mytty, a former VSI technician; and Jeff Welch, a
`named inventor on the patents-in-suit and former VSI employee.” Mot. 2.
`Petitioner contends, “Kauphusman, Mytty, and Welch have unique, first-
`hand knowledge of whether VSI reduced the claimed inventions to practice
`via assembly and testing of GuideLiner RX prototypes” and that the record
`contains sufficient evidence “tending to show beyond speculation that
`Kauphusman, Mytty, and Welch will testify they did not build or test RX
`prototypes during the relevant period.” Id. at 2–3. More specifically,
`Petitioner contends,
`
`Kauphusman, Mytty, and Welch led RX engineering efforts and
`assembled and
`tested GuideLiner prototypes. But
`their
`laboratory notebooks reveal that at most, they performed only
`OTW work during the relevant period. Thus, Petitioner has
`evidence tending to show beyond speculation that Kauphusman,
`Mytty, and Welch will testify they did not build or test RX
`prototypes during the relevant period.
`Id. at 3–4.
`Specific to the cross-examination of Mr. Kauphusman, Petitioner
`contends,
`
`Kauphusman led critical engineering and prototype work, but the
`evidence more than suggests that Kauphusman did not perform
`that work during the relevant period. Kauphusman’s laboratory
`notebook shows that he worked on only OTW prototypes in 2005
`and 2006. Ex-1760, 86-87, 91-93 (300-centimeter, 0.014”
`guidewire indicating OTW, not RX, prototype). And a VSI
`“Special Work Order Number Assignment Log” shows that in
`December 2005, VSI cancelled and could not complete
`GuideLiner design verification testing, due to a “design change.”
`Ex-1768, 14. “Jim K.”—Kauphusman—requested that work and
`then cancelled it. This evidence more than suggests that he will
`
`3
`
`
`
`IPR2020-01341 (Patent 8,142,413)
`IPR2020-01343 (Patent RE 46,116)
`
`
`have information regarding why VSI could not complete that
`work.
`Mot. 6.
`Regarding the cross-examination of Mr. Mytty, Petitioner contends
`that Mytty worked alongside Kauphusman and that
`
`Sutton identified Mytty as one of the “main individuals working
`with Mr. Kauphusman on the RX version.” Ex-1757, 33:23-34:6.
`Yet Mytty’s two laboratory notebooks indicate that she worked
`on only OTW prototypes in 2005 and 2006. Ex-1761, 107-13;
`Ex-1774, 10-12.
`Mot. 6.
`Regarding the cross-examination of Mr. Welsh, Petitioner contends
`that Mr. Welch’s notebook only shows notes related to GuideLiner dated in
`2010 (Mot. 7 (citing Ex-1758, 12-14), which is in contrast to Patent Owner’s
`contention that Mr. Welch built and tested relevant RX prototypes within the
`relevant timeframe (Mot. 7 (citing Ex. 2118, ¶ 15; Ex. 1756, 62:3–63:20,
`67:20–69:11).
`We are not persuaded that Petitioner has shown a basis for granting its
`request to obtain subpoenas from the district court to compel the requested
`testimony. Rather, for the reasons stated in Patent Owner’s Opposition at
`pages 3 to 8, which we adopt as our own, Petitioner has not demonstrated a
`sufficient showing that there is more than a mere possibility that the
`requested testimony will be useful to our determination of the patentability
`of the challenged claims. In particular, we agree with Patent Owner that
`
`lab notebooks or other
`individuals’
`these
`in
`Nothing
`documentation negates the ample evidence showing that the
`inventors and others reduced the invention to practice before
`Itou. Indeed, as the Board already found, “more detailed
`evidence with regard to the OTW GuideLiner . . . [does not]
`
`4
`
`
`
`IPR2020-01341 (Patent 8,142,413)
`IPR2020-01343 (Patent RE 46,116)
`
`
`detract[] from or otherwise contradict[] the evidence presented
`for the RX GuideLiner.” E.g. IPR2020-00126, Paper 129 at 49.
`Petitioner presents no evidence that Kauphusman, Welch, and
`Mytty “do not remember working on RX prototypes in 2005-
`2006.” Mot. at 4–8.
`Opp. 4. For example,
`
`The documentation Petitioner acknowledges, dated well-before
`Itou’s critical date, does not merely bear Kauphusman’s name, it
`shows he was engaged in the details of designing and ordering
`customized components for the April and July 2005 GuideLiner
`RX prototypes, as well as the August 1, 2005 assembly drawing,
`which the Board already found was “strongly corroborative of an
`assembled device.” E.g. Ex-2089 at 5, 7 (detailed quote
`addressed to Kauphusman dated Feb. 11, 2005), 8 (drawing
`listing Kauphusman dated Feb. 2005); Ex-2092 at 5, 8 (drawing
`sent to MED from Kauphusman in April 2005); Ex-2113
`(drawing listing Kauphusman dated Feb. 2005); Ex-2114
`(drawing listing Kauphusman dated June 2005); IPR2020-
`00126, Paper 129 at 50, Ex-2022 (August 1, 2005 drawing).
`Medtronic’s suggestion that Kauphusman only performed OTW
`work is plainly contradicted by these contemporaneous RX
`documents, as well as the testimony of Root and Sutton. E.g.,
`Ex-2118, ¶¶ 28, 33, 37; Ex-1757, 33:11-15.
`Opp. 4–5.
`Furthermore, we note that Patent Owner has not relied on testimony
`from these individuals to show reduction to practice prior to Itou, and agree
`that Petitioner only relies upon speculation that their depositions would be
`useful to our determination of the patentability of the challenged claims.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion for Additional Discovery is
`denied.
`
`5
`
`
`
`IPR2020-01341 (Patent 8,142,413)
`IPR2020-01343 (Patent RE 46,116)
`
`PETITIONER:
`
`Cyrus A. Morton
`Sharon Roberg-Perez
`Christopher A. Pinahs
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`sroberg-perez@robinskaplan.com
`cpinahs@robinskaplan.com
`
`
`PATENT OWNER:
`
`J. Derek Vandenburgh
`Dennis C. Bremer
`Megan E. Christner
`Shelleaha L. Jonas
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`dvandenburgh@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`mchristner@carlsoncaspers.com
`sjonas@carlsoncaspers.com
`
`
`
`6
`
`
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
