`571-272-7822
`
`Paper 65
`Date: September 23, 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.
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`
`
`
`
`
`
`
`
`
`Before JAMES A. TARTAL and CHRISTOPHER G. PAULRAJ,
`Administrative Patent Judges.
`TARTAL, Administrative Patent Judge.
`ORDER1
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`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 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`In each of these proceedings, Teleflex Life Sciences Limited (“Patent
`Owner”) seeks to file a motion to strike certain portions of the Reply of
`Medtronic, Inc., and Medtronic Vascular, Inc. (“Petitioner”), as well as
`certain evidence relied on by Petitioner, as purportedly improper new
`arguments and evidence, or “in the alternative to file a paper that identifies
`improper new evidence and argument.” See Ex. 3001 (email from counsel
`for Patent Owner dated September 14, 2021). Patent Owner represents that
`it has conferred with Petitioner, and Petitioner opposes the request. See id.
`Upon consideration, Patent Owner’s request for authorization to file a
`motion to strike is denied. As the Consolidated Trial Practice Guide
`(“CTPG”)2 explains, “[i]n most cases the Board is capable of identifying
`new issues . . . when weighing the evidence at the close of trial, and
`disregarding any new issues . . . that exceed[] the proper scope of reply or
`sur-reply,” and as such, “striking the entirety or a portion of a party’s brief is
`an exceptional remedy that the Board expects will be granted rarely.”
`CTPG, 80−81.
`Patent Owner, however, is authorized to file in each proceeding a
`paper titled “Patent Owner’s List of Improper Reply Arguments and
`Evidence,” which shall be in the form of a numbered, itemized list that
`provides the paper, page, and line number location only of the portions of
`Petitioner’s Reply, or the Exhibit Number, that Patent Owner asserts exceed
`the scope of a proper reply.
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`We also authorize Petitioner to file in each proceeding “Petitioner’s
`Response to Patent Owner’s List of Improper Reply Arguments and
`Evidence.” If Petitioner chooses to file such a response, Petitioner shall
`identify, corresponding in the same numbering and itemized manner to
`Patent Owner’s List, what Petitioner regards as support from the Petition
`(by paper, page, and line number only), and/or the Patent Owner Response
`(by paper, page, and line number only) to show that each portion of
`Petitioner’s Reply or evidence does not exceed the scope of a proper reply.
`Petitioner’s paper shall not contain any substantive arguments.
`The propriety or impropriety of the identified portions of the reply or
`evidence will be addressed, to the extent necessary, in a later order or in our
`final written decision for each proceeding. To the extent we determine that
`any item identified by Patent Owner warrants additional briefing, an
`additional order will be issued, providing such instruction to the parties.
`Accordingly, it is in each of the above identified proceedings:
`ORDERED that Patent Owner’s request for leave to file a motion to
`strike portions of Petitioner’s Reply and related evidence is denied;
`FURTHER ORDERED that Patent Owner is authorized to file “Patent
`Owner’s List of Improper Sur-reply Arguments and Evidence,” as described
`above, by October 1, 2021, and;
`FURTHER ORDERED that Petitioner is authorized to file
`“Petitioner’s Response to Patent Owner’s List of Improper Reply Arguments
`and Evidence,” as described above, by October 8, 2021.
`
`3
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`PETITIONER:
`Cyrus A. Morton
`Sharon Roberg-Perez
`Christopher A. Pinahs
`ROBINS KAPLAN LLP
`Cmorton@RobinsKaplan.com
`Srobergperez@robinskaplan.com
`Cpinahs@RobinsKaplan.com
`
`PATENT OWNER:
`
`J. Derek Vandenburgh
`Dennis C. Bremer
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`dvandenburgh@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`
`4
`
`
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