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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
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`v.
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`TELEFLEX LIFE SCIENCES LIMITED,
`Patent Owner.
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`Case IPR2020-01342
`Patent 8,142,413
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`PATENT OWNER’S CONSOLIDATED BRIEF ADDRESSING THE
`APPLICABILITY OF COLLATERAL ESTOPPEL / ISSUE PRECLUSION
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`THE PRIOR, RELATED IPRS MAY TRIGGER COLLATERAL
`ESTOPPEL/ISSUE PRECLUSION ................................................................ 1
`A. Final Written Decisions in the Prior IPRs Are Sufficiently Final ........ 2
`B. The PTAB Has Applied Collateral Estoppel in IPRs But Has Also
`Reached the Merits When the Final Written Decision is on Appeal .... 4
`Issues Must Be Materially Identical, Not Patents or Claims ................ 5
`C.
`SEVERAL ISSUES COULD BE DECIDED IN PATENT OWNER’S
`FAVOR VIA COLLATERAL ESTOPPEL .................................................... 5
`A. RE46,116 Is Not Subject to the AIA First-To-File Rule
`(IPR -01343) .......................................................................................... 6
`B. Written Description Support for A Side Opening Not Claimed as
`Part of a Substantially Rigid Segment (IPR -01344, Grounds 4, 5) ..... 6
`C. Conception and Reduction to Practice (IPR -01341 and
`IPR -01343) ........................................................................................... 7
`D. Modifying Kontos in View of Takahashi to Arrive at a “one French”
`Limitation (IPR -01342, Ground 2) or “one French size” limitation
`(IPR -01344, Ground 2) ........................................................................ 8
`E. Modifying Itou or Kontos to Arrive at a Side Opening with Two
`Inclines (IPR -01343, Grounds 2 and 3 and IPR -01344, Grounds 2
`and 3) ..................................................................................................... 9
`F. Modifying Kontos in View of Adams or Ressmann to Arrive at a
`Side Opening Limitation (IPR -01342, Ground 1 and IPR -01344,
`Ground 2) ............................................................................................10
`CERTIFICATION OF SERVICE............................................................................12
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`i
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`TABLE OF AUTHRORITES
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`Cases
`B&B Hardware, Inc. v. Hargis Indus.,
`575 U.S. 138 (2015) ............................................................................................1, 2
`Compare Vardon Golf Co. v. Karsten Mfg. Corp.,
`294 F.3d 1330 (Fed. Cir. 2002) .............................................................................. 3
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013) .............................................................................. 3
`Hawkins v. Risley,
`984 F.2d 321 (9th Cir. 1993) .................................................................................. 2
`Intellectual Ventures I LLC v. Capital One Fin. Corp.,
`850 F.3d 1332 (Fed. Cir. 2017) .............................................................................. 2
`MaxLinear, Inc. v. CF CRESPE LLC,
`880 F.3d 1373 (Fed. Cir. 2018) .............................................................................. 2
`Miller Brewing Co. v. Jos. Schlitz Brewing Co.,
`605 F.2d 990 (7th Cir. 1979) .................................................................................. 3
`Mobile Tech, Inc. v. Invue Security Prods. Inc.,
`IPR2018-00481, Paper 29 (PTAB July 16, 2019) ..............................................4, 5
`Mylan Pharms. Inc. v. Saint Regis Mohawk Tribe,
`IPR2016-01129, Paper 154 (PTAB Sept. 27, 2019) ............................................... 4
`Nestlé USA, Inc. v. Steuben Foods, Inc.,
`884 F.3d 1350 (Fed. Cir. 2018) .............................................................................. 5
`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013) .............................................................................. 5
`Papst Licensing GMBH & Co. v. Samsung Elecs. Am., Inc.,
`924 F.3d 1243 (Fed. Cir. 2019) .............................................................................. 2
`Rice v. Dep’t of Treasury,
`998 F.2d 997 (Fed. Cir. 1993) ................................................................................ 4
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`ii
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`Samsung Elecs. America, Inc. v. Uniloc 2017 LLC,
`IPR2017-01800, Paper 34 ....................................................................................... 5
`VirnetX Inc. v. Apple, Inc.,
`909 F.3d 1375 (Fed. Cir. 2018) .............................................................................. 2
`Webpower, Inc. v. Wag Acquisition, LLC,
`IPR216-01239, Paper 21 (PTAB Dec. 26, 2017) ................................................... 4
`Williams v. Commissioner,
`1 F.3d 502 (7th Cir. 1993) ...................................................................................... 3
`Statutes
`35 U.S.C. § 315(e)(1) ................................................................................................. 3
`Other Authorities
`Restatement (Second) of Judgments § 13 .................................................................. 3
`Restatement (Second) of Judgments § 27 .................................................................. 1
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`iii
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`There is a tremendous amount of overlap between the factual and legal
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`issues in this set of IPRs and the prior, related IPRs that the Board already has
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`ruled on. Those prior decisions should be persuasive as the Board addresses the
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`issues raised in the present IPRs. Further, there are several specific issues where
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`the Board likely can apply the doctrine of collateral estoppel. However, consistent
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`with the Board’s prior practice, Patent Owner suggests that, to the extent the Board
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`chooses to rely on collateral estoppel, out of an abundance of caution it should also
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`address the issues on the merits and/or adopt its prior findings. Regardless of
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`whether the Board decides to apply collateral estoppel to any particular issue, the
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`Board’s prior Final Written Decisions are highly relevant, persuasive authority.
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`I.
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`THE PRIOR, RELATED IPRS MAY TRIGGER COLLATERAL
`ESTOPPEL/ISSUE PRECLUSION
`“When an issue of fact or law is actually litigated and determined by a valid
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`and final judgment, and the determination is essential to the judgment, the
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`determination is conclusive in a subsequent action between the parties, whether on
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`the same or a different claim.” B&B Hardware, Inc. v. Hargis Indus., 575 U.S.
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`138, 148 (2015) (quoting Restatement (Second) of Judgments § 27). Collateral
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`estoppel applies if: (1) a prior action presents an identical issue; (2) the prior action
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`actually litigated and adjudged that issue; (3) the judgment in that prior action
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`necessarily required determination of the identical issue; and (4) the prior action
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`featured full representation of the estopped party. VirnetX Inc. v. Apple, Inc., 909
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`1
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`F.3d 1375, 1377 (Fed. Cir. 2018). A Final Written Decision by the PTAB can
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`trigger collateral estoppel in subsequent PTAB trials. Papst Licensing GMBH &
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`Co. v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1250-51 (Fed. Cir. 2019);
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`MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018).
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`Final Written Decisions in the Prior IPRs Are Sufficiently Final
`A.
`The weight of authority holds that collateral estoppel/issue preclusion
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`applies once a court or agency issues a final decision, notwithstanding the presence
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`of pending or possible appeal(s). E.g., B&B Hardware, Inc., 135 S. Ct. at 1303
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`(determining that issue preclusion may apply based on a prior determination of the
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`USPTO’s Trademark Trial and Appeals Board on the issue of likelihood of
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`confusion); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
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`1342 (Fed. Cir. 2017) (“partial summary judgment order [from a different case]
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`met the finality prong for the purposes of collateral estoppel”) (Federal Circuit
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`applying 4th Circuit law); Hawkins v. Risley, 984 F.2d 321, 324 (9th Cir. 1993)
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`(“the preclusive effects of a lower court judgment cannot be suspended simply by
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`taking an appeal that remains undecided”).
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`In addition, the Supreme Court has said it regularly turns to the Restatement
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`(Second) of Judgments when analyzing the ordinary elements of issue preclusion.
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`B&B Hardware, Inc., 575 U.S. at 148. The Restatement explains: “for purposes of
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`issue preclusion (as distinguished from merger and bar), ‘final judgment’ includes
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`2
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`any prior adjudication of an issue in another action that is determined to be
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`sufficiently firm to be accorded conclusive effect.” Restatement (Second) of
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`Judgments § 13. Comment g to section 13 explains that it may be “the wisest
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`course . . . to regard the prior final decision of the issue as final for the purpose of
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`issue preclusion without awaiting the end judgment.” Id., cmt g. This is also
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`consistent with the IPR estoppel statute, which states that statutory estoppel
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`attaches following “a final written decision.” 35 U.S.C. § 315(e)(1) (emphasis
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`added).1
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`1 While the weight of authority supports this view, there are exceptions and some
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`potentially conflicting authority. For example, the Federal Circuit has created the
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`Fresenius exception to general principles of collateral estoppel. Fresenius USA,
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`Inc. v. Baxter Int’l, Inc., 721 F.3d 1330 (Fed. Cir. 2013). In addition, the Seventh
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`Circuit appears to have made potentially inconsistent statements in deciding when
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`to apply collateral estoppel. Compare Vardon Golf Co. v. Karsten Mfg. Corp., 294
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`F.3d 1330, 1333-34 (Fed. Cir. 2002) (citing Miller Brewing Co. v. Jos. Schlitz
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`Brewing Co., 605 F.2d 990 (7th Cir. 1979) (holding that for an order to be “final”
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`for the sake of collateral estoppel, it must be “immune . . . to reversal or
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`amendment”)) with Williams v. Commissioner, 1 F.3d 502, 504 (7th Cir. 1993) (“a
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`3
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`B.
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`The PTAB Has Applied Collateral Estoppel in IPRs But Has Also
`Reached the Merits When the Final Written Decision is on Appeal
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`The PTAB has consistently applied collateral estoppel/issue preclusion at
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`least where appeals in an earlier proceeding have been exhausted. E.g., Mylan
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`Pharms. Inc. v. Saint Regis Mohawk Tribe, IPR2016-01129, Paper 154 (PTAB
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`Sept. 27, 2019) (applying collateral estoppel in an IPR when the issue had
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`previously been decided in a district court and appeals were exhausted);
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`Webpower, Inc. v. Wag Acquisition, LLC, IPR2016-01239, Paper 21 (PTAB Dec.
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`26, 2017) (applying collateral estoppel in an IPR when the issue had previously
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`been decided in a different IPR and that IPR was not appealed).
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`The Board cases are mixed when the first Final Written Decision is on
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`appeal. In Mobile Tech, Inc. v. Invue Security Prods. Inc., the Board stated that
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`“[t]he fact that an appeal is pending does not prevent the application of collateral
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`estoppel.” IPR2018-00481, Paper 29 at 33 (PTAB July 16, 2019) (citing Rice v.
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`Dep’t of Treasury, 998 F.2d 997, 999 (Fed. Cir. 1993)). However, the Board ruled
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`that “[o]ut of an abundance of caution” it would not apply collateral estoppel to the
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`claim and instead address the issue on the merits. Id. Another PTAB panel
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`suggested that a pending appeal prevented application of collateral estoppel.
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`judgment final in the trial court may have collateral estoppel effect even though the
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`loser has not exhausted his appellate remedies”).
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`4
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`Samsung Elecs. America, Inc. v. Uniloc 2017 LLC, IPR2017-01800, Paper 34 at 4
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`(“At the time of issuing this Final Written Decision, the appeal filed [in a prior,
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`related IPR] is unresolved. Therefore, we do not apply collateral estoppel . . . .”).
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`Issues Must Be Materially Identical, Not Patents or Claims
`C.
`The present IPRs concern different patents with different claims, and Patent
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`Owner does not concede a lack of patentable difference for any of the claims at
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`issue. However, “collateral estoppel is not limited ‘to patent claims that are
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`identical.’” Nestlé USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1352 (Fed.
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`Cir. 2018) (quoting Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342
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`(Fed. Cir. 2013)). Rather, issue preclusion can be appropriate when the particular
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`issue previously litigated is materially identical, even if the patents and claims are
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`different. Id. Further, perfect identity of issues is not required—the issues must
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`only be materially identical. Id.; Ohio Willow Wood, 735 F.3d at 1342 (“If the
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`differences between the unadjudicated patent claims and adjudicated patent claims
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`do not materially alter the question of invalidity, collateral estoppel applies.”).
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`II.
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`SEVERAL ISSUES COULD BE DECIDED IN PATENT OWNER’S
`FAVOR VIA COLLATERAL ESTOPPEL
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`Below is a discussion of specific issues that Patent Owner believes could be
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`subject to collateral estoppel, at least in part. But if the Board does apply collateral
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`estoppel, the Board should also address the overlapping issues on the merits (e.g.
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`substantively adopt prior analysis), as it did in the Mobile Tech case. To the extent
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`5
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`there are issues that are not materially identical but nonetheless very similar, the
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`Board should consider its prior Final Written Decisions to be highly persuasive.
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`A. RE46,116 Is Not Subject to the AIA First-To-File Rule (IPR -
`01343)
`Petitioner argues that the ʼ116 patent is subject to the AIA first-to-file rule
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`because it contains a lack of written description and it claims priority to RE45,380,
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`which Petitioner argues is subject to the first-to-file rule. IPR2020-01343, Paper 1
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`at 12-13. The Board already found that the AIA first-to-file rules does not apply to
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`the ʼ380 patent. E.g., IPR2020-00128, Paper 129 at 9-10 (analyzing and rejecting
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`this argument). Thus, the Board may apply collateral estoppel to this issue.
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`B. Written Description Support for A Side Opening Not Claimed as
`Part of a Substantially Rigid Segment (IPR -01344, Grounds 4, 5)
`Grounds 4 and 5 of the -01344 Petition are premised in part on Petitioner’s
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`argument that there is no written description support for a claim that recites a side
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`opening without requiring that it be part of the substantially rigid segment.
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`IPR2020-01344, Paper 1 at 62-76; IPR2020-01344, Paper 21 at 50-59. This issue
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`is ripe for collateral estoppel. The Board already found in one of the prior, related
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`IPRs that a claimed side opening need not be limited to the substantially rigid
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`portion. IPR2020-00138, Paper 104 at 62-70. The patent at issue in that IPR has
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`materially the same specification as that of the ʼ116 patent at issue in the -01344
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`IPR. Thus, the Board may apply collateral estoppel and should also adopt its prior
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`6
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`findings to hold that there is written description support for claims with a side
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`opening that is not recited to be part of the substantially rigid segment.
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`C. Conception and Reduction to Practice (IPR -01341 and IPR -
`01343)
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`In the prior, related IPRs the Board found that Itou was not prior art because
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`Patent Owner successfully demonstrated conception and both actual and
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`constructive reduction to practice. E.g. IPR2020-00126, Paper 129 at 12-71. In
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`the current IPRs -01341 and -01343, Patent Owner again argues that the inventions
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`of ʼ413 and ʼ116 patents (respectively) were conceived and actually and
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`constructively reduced to practice so as to remove Itou as prior art. E.g., IPR2020-
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`01341, Paper 23 at 17-37, Paper 67 at 1-20.
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`Several of the issues relating to CRTP are materially identical to those
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`actually litigated and adjudicated in the prior IPRs. Id.; see, e.g., IPR2020-00126,
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`Paper 129 at 17-34, 62-71. This includes, for example, prior conception (which
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`Petitioner does not challenge in this set of IPRs) and diligence leading to
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`constructive reduction to practice. The Board’s prior findings on these issues were
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`necessary to determining that the challenged patents were not unpatentable in light
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`of Itou. Moreover, those findings alone are sufficient for the Board to find that
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`Itou is not prior art. Thus, the Board could rule that Itou is not prior art in the
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`-01341 and -01343 IPRs on this basis alone.
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`Regarding actual reduction to practice, the issues in the -01341 and -01343
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`7
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`IPRs are nearly identical to those litigated and adjudicated in the prior IPRs, with
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`the possible exception being the issue of whether actual reduction to practice of the
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`method claims requires that the testing have been done in vivo, rather than in a
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`heart model. With the exception of this issue, the Board could apply collateral
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`estoppel on the issue of actual reduction to practice as well.
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`On all of these issues, however, out of an abundance of caution, Patent
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`Owner recommends that the Board alternatively adopt the numerous findings that
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`are clearly identical between the prior IPRs and the -01341 and -01343 IPRs (e.g.
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`that the April and July 2005 prototypes were made and tested sufficiently to show
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`that they would work for their intended purpose), and then conclude anew that
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`Patent Owner has successfully sworn behind the Itou reference.
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`D. Modifying Kontos in View of Takahashi to Arrive at a “one
`French” Limitation (IPR -01342, Ground 2) or “one French size”
`limitation (IPR -01344, Ground 2)
`Petitioner argues that claim 13 of the ʼ413 patent and claims 25-40, 42, and
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`44-48 of the ʼ116 patent are obvious in view of Kontos and Takahashi (plus Adams
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`in the ʼ413 and Ressemann in the ʼ116) because the combination with Takahashi
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`achieves the claimed “one French” and “one French size” differences. IPR2020-
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`01342, Paper 1 at 72-74 (“one French”); IPR2020-01344, Paper 1 at 34-58 (“one
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`French size”). This issue is ripe for collateral estoppel.
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`As in prior IPRs, to meet a “one French” or “one French size” differential,
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`8
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`Petitioner argued among other things to remove Kontos’ funnel in favor of a side
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`opening. IPR2020-01342, Paper 1 at 74; IPR2020-01344, Paper 1 at 35. The
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`Board already found in prior IPRs that the extensive modifications to Kontos
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`required to meet the “one French” or “one French size” differential are hindsight-
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`driven and would not have been obvious. E.g., IPR2020-00136, Paper 106 at 41-
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`45 (“one French size”); IPR2020-00130, Paper 105 at 54-56 (“one French”).
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`E. Modifying Itou or Kontos to Arrive at a Side Opening with Two
`Inclines (IPR -01343, Grounds 2 and 3 and IPR -01344, Grounds
`2 and 3)
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`Petitioner argues that claim 45 of the ʼ116 patent is invalid on four separate
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`grounds: IPR -01343 Ground 2 (Itou, Ressemann); IPR -01343 Ground 3 (Itou,
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`Ressemann, Kataishi); IPR -01344 Ground 2 (Kontos, Ressemann, Takahashi); and
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`IPR -01344 Ground 3 (Kontos, Ressemann, Takahashi, Kataishi). IPR2020-01343,
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`Paper 1 at 64-67, 74-77; IPR2020-01343, Paper 21 at 42-59; IPR2020-01344,
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`Paper 1 at 51-53, 58-61; IPR2020-01344, Paper 21 at 32-50. This issue is ripe for
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`collateral estoppel.
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`The Board already resolved the issue of whether it would be obvious to add
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`a side opening having at least two inclined slopes in view of Resssemann or
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`Kataishi in the previous, related IPRs. E.g., IPR2020-00127, Paper 105 at 68-73;
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`IPR2020-00129, Paper 127 at 31-34, 38-39; IPR2020-00136, Paper 104 at 45-48.
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`If the Board finds that the prior IPRs were not materially identical to the present
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`9
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`cases, but only very similar, the Board should view its prior decisions as persuasive
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`authority and rule similarly.
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`F. Modifying Kontos in View of Adams or Ressmann to Arrive at a
`Side Opening Limitation (IPR -01342, Ground 1 and IPR -01344,
`Ground 2)
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`Petitioner argues that dependent claims 4, 9-12, and 14 of the ʼ413 patent
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`and independent claim 25 of the ʼ116 patent would have been obvious in view of
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`Kontos and Adams, and Kontos and Ressemann respectively, because Adams and
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`Ressemann provide motivation to add a side opening admittedly missing from
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`Kontos. IPR2020-01342, Paper 1 at 54-60, 64-72; IPR2020-01342, Paper 24 at
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`26-41, 47-71; IPR2020-01344, Paper 1 at 17-25, 32-34; IPR2020-0-1344, Paper 21
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`at 7-24, 61-82. This issue is ripe for collateral estoppel.
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`The Board already resolved the issue of whether it was obvious to modify
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`Kontos with Adams or Ressemann to achieve a side opening in favor of Patent
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`Owner, especially when viewed in light of the objective evidence of non-
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`obviousness. IPR2020-00127, Paper 105 at 31-48; IPR2020-00136, Paper 104 at
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`11-41. Patent Owner notes that the “nexus” portion of the objective evidence is
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`and should be specific to these method claims, though the Board’s prior
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`conclusions are relevant and persuasive. If the Board finds that the prior IPRs
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`were not materially identical to the present cases, but only very similar, the Board
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`should view its prior decisions as persuasive authority and rule similarly.
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`10
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`Dated: November 12, 2021
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`Respectfully submitted,
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`
`/J. Derek Vandenburgh /
`J. Derek Vandenburgh (Lead Counsel)
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh
` & Lindquist, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`Email:
`DVandenburgh@carlsoncaspers.com
`
`Lead Counsel for Patent Owner
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`11
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned certifies that on November 12, 2021, a true and correct copy of the
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`foregoing Patent Owner’s Consolidated Brief Addressing the Applicability of
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`Collateral Estoppel / Issue Preclusion was served via electronic mail upon the
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`following:
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`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`Robins Kaplan LLP
`800 LaSalle Avenue, Suite 2800
`Minneapolis, MN 55401
`Phone: 349-8500
`Fax: 612-339-4181
`Email: Cmorton@robinskaplan.com
`Email: Sroberg-perez@robinskaplan.com
`Email: Cpinahs@robinskaplan.com
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`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel for Patent Owner)
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`12
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