UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
`
`v.
`
`TELEFLEX LIFE SCIENCES LIMITED,
`Patent Owner.
`
`
`
`
`Case IPR2020-01342
`Patent 8,142,413
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S CONSOLIDATED RESPONSE TO PETITIONER’S
`OPENING BRIEF ON COLLATERAL ESTOPPEL
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
`
`v.
`
`TELEFLEX LIFE SCIENCES LIMITED,
`Patent Owner.
`
`
`
`
`Case IPR2020-01342
`Patent 8,142,413
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S CONSOLIDATED RESPONSE TO PETITIONER’S
`OPENING BRIEF ON COLLATERAL ESTOPPEL
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`PETITIONER’S BRIGHT LINE RULE FOR FINALITY IS
`WRONG .......................................................................................................... 1
`
`PETITIONER’S BRIGHT LINE RULE FOR IDENTITY HAS
`BEEN SQUARELY REJECTED BY THE FEDERAL CIRCUIT ................ 3
`
`III. SEVERAL ISSUES ARE IDENTICAL AND COULD BE
`RESOLVED VIA COLLATERAL ESTOPPEL ............................................ 3
`
`A.
`
`Conception and Reduction to Practice .................................................. 3
`
`B. Anticipation and Obviousness Grounds ................................................ 5
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`B & B Hardware, Inc. v. Hargis Indus., Inc.,
`135 S. Ct. 1293 (2015) ............................................................................................ 5
`
`Mobile Tech, Inc. v. Invue Security Prods. Inc.,
`IPR2018-00481, Paper 29 (PTAB July 16, 2019) .................................................. 3
`
`Nestlé USA, Inc. v. Steuben Foods, Inc.,
`884 F.3d 1350 (Fed. Cir. 2018) .............................................................................. 3
`
`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013) .............................................................................. 3
`
`Pharmacia & Upjohn Co. v. Mylan Pharm., Inc.,
`170 F.3d 1373 (Fed. Cir. 1999) .............................................................................. 2
`
`Trustid, Inc. v. Next Caller Inc.,
`2021 U.S. Dist. LEXIS 134010 .............................................................................. 2
`
`Statutes
`
`35 U.S.C. § 318 .......................................................................................................... 2
`
`
`
`
`
`ii
`
`
`
`Petitioner portrays the application of collateral estoppel as a series of bright
`
`line rules that come out in its favor. This is incorrect. Whether the prior, related
`
`IPRs are sufficiently final so as to trigger collateral estoppel is not nearly so clear.
`
`Petitioner’s citations to an unrelated statute and non-binding district court decision
`
`(which itself admits of ambiguity), do not support Petitioner’s bright line.
`
`Some issues are the same and could be decided on the basis of collateral
`
`estoppel. For example, on conception and reduction to practice, Petitioner does not
`
`challenge conception, and does not argue that the issue of constructive reduction to
`
`practice is any different than in the prior IPRs.
`
`Nonetheless, because of ambiguity in the law Patent Owner requests that the
`
`Board not rely solely on collateral estoppel and, as other Board panels have done,
`
`also address the arguments on the merits and/or substantively adopt its prior
`
`findings where appropriate. And whether or not collateral estoppel applies, the
`
`Board may and should view the prior Final Written Decisions as highly relevant,
`
`persuasive authority.
`
`I.
`
`PETITIONER’S BRIGHT LINE RULE FOR FINALITY IS
`WRONG
`
`Petitioner argues that because it appealed the prior IPRs, they are not final
`
`and cannot be the basis for collateral estoppel. Pet. Br., 2-4. This bright line rule
`
`is wrong. Such a rule would mean a party could always prevent the application of
`
`collateral estoppel simply by appealing a related decision. That runs counter to
`
`1
`
`
`
`general principles and purposes of collateral estoppel. E.g., Pharmacia & Upjohn
`
`Co. v. Mylan Pharm., Inc., 170 F.3d 1373, 1381 (Fed. Cir. 1999) (“The law is well
`
`settled that the pendency of an appeal has no effect on the finality or binding effect
`
`of a trial court's holding.”).
`
`Petitioner cites 35 U.S.C. § 318 for the proposition that IPRs are not final
`
`until the time for appeals has expired or any appeals have terminated. Pet. Br., 3.
`
`But the language Petitioner cites simply explains when the Director should issue a
`
`certificate cancelling or confirming claims. 35 U.S.C. § 318(b). Clearly a
`
`certificate does not issue from an IPR until appeals have been exhausted, but the
`
`statute says nothing about the finality of fully litigated and decided issues for the
`
`purpose of collateral estoppel.
`
`Petitioner also cites the non-binding Trustid case from the District of
`
`Delaware, for an apparent bright line rule that “the Board’s final written decisions
`
`‘do[] not have preclusive effect until that decision is either affirmed or the parties
`
`waive their appeal rights.” Pet. Br., 3 (quoting 2021 U.S. Dist. LEXIS 134010, at
`
`*8-9 (D. Del. July 6, 2021)). But Petitioner did not provide the whole quotation—
`
`the District of Delaware acknowledged ambiguity when it found Federal Circuit
`
`case law only “suggests” such a rule. 2021 U.S. Dist. LEXIS 134010, at *8-9.
`
`Beyond the one (inapplicable) statute and one (misquoted and non-binding)
`
`district court case, Petitioner only provides a list of “see” cites. Pet. Br. 3-4.
`
`2
`
`
`
`Clearly, no such bright line rule exists. Rather, as Patent Owner explained, while
`
`there is some ambiguity the weight of authority suggests the Final Written
`
`Decisions in the prior IPRs can trigger collateral estoppel. PO Br., 1-5. Indeed,
`
`the Board itself has stated that “[t]he fact that an appeal is pending does not
`
`prevent the application of collateral estoppel.” Mobile Tech, Inc. v. Invue Security
`
`Prods. Inc., IPR2018-00481, Paper 29 at 33 (PTAB July 16, 2019) (but reaching
`
`the merits out of an “abundance of caution”).
`
`II.
`
`PETITIONER’S BRIGHT LINE RULE FOR IDENTITY HAS BEEN
`SQUARELY REJECTED BY THE FEDERAL CIRCUIT
`
`Petitioner proposes another (incorrect) bright line rule that prior decisions on
`
`different patents or claims cannot trigger collateral estoppel. Pet. Br., 4. But this
`
`has been squarely rejected by the Federal Circuit. Nestlé USA, Inc. v. Steuben
`
`Foods, Inc., 884 F.3d 1350, 1352 (Fed. Cir. 2018). “Our precedent makes clear
`
`that collateral estoppel is not limited ‘to patent claims that are identical. Rather, it
`
`is the identity of the issues that were litigated that determines whether collateral
`
`estoppel should apply.’” Id. (quoting Ohio Willow Wood Co., 735 F.3d at 1342)
`
`(emphasis in original).
`
`III. SEVERAL ISSUES ARE IDENTICAL AND COULD BE RESOLVED
`VIA COLLATERAL ESTOPPEL
`
`A. Conception and Reduction to Practice
`
`Petitioner does not challenge conception in the present IPRs, and in its
`
`3
`
`
`
`estoppel brief, does not argue that constructive reduction to practice presents any
`
`new issues. Pet. Br., 5-7. These issues are thus clearly ripe for collateral estoppel.
`
`Regarding actual reduction to practice, Petitioner argues that it requires
`
`“limitation-by-limitation performance of the claimed method.” Id., 6. Patent
`
`Owner submitted limitation-by-limitation analysis specifically for the patents
`
`challenged in the current IPRs. E.g., IPR2020-01341, Paper 67 at 12-13; Ex-2118,
`
`App’x A-B. But Petitioner submitted a declaration from its expert that
`
`incorporated a limitation-by-limitation rebuttal of the prior, related patents. E.g.,
`
`IPR2020-01341, Paper 51 (citing Ex-1755, which resubmits claim-by-claim
`
`rebuttals for the prior, related patents). Either Petitioner thought this limitation-by-
`
`limitation analysis of the prior, related patents was sufficient (in which case
`
`Petitioner’s present estoppel argument is contradictory), or Patent Owner’s
`
`evidence on the current patents stands unrebutted and the Board should reach that
`
`decision on the merits.
`
`Regarding in vivo testing, as explained in Patent Owner’s brief, the issues on
`
`reduction to practice are nearly identical to those litigated and adjudicated in the
`
`prior IPRs, with the possible exception being whether actual reduction to practice
`
`of the method claims requires that the testing have been done in vivo, rather than in
`
`a heart model. PO Br., 7-8. On this particular issue, the Board at a minimum
`
`should view its prior Final Written Decisions as highly relevant, persuasive
`
`4
`
`
`
`authority and find in Patent Owner’s favor.
`
`Finally, Petitioner argues that the Board’s prior decisions “provide no basis”
`
`for determining whether the rapid exchange GuideLiner prototypes were tested to
`
`meet their intended purpose of provided increased backup support. Pet. Br., 6-7.
`
`Petitioner is wrong. While the particular patents and claims are different in the
`
`present IPRs, the issue of testing for increased backup support is materially
`
`identical to the prior IPRs, in which the Board already found the prototypes were
`
`tested and understood to work for their intended purpose of providing increased
`
`backup support. E.g., IPR2020-00126, Paper 129 at 52-62.
`
`B. Anticipation and Obviousness Grounds
`
`Patent Owner does not dispute that there are some new issues in the present
`
`IPRs that should be analyzed on the merits.
`
`However, on the issue of whether Petitioner should be permitted tore-argue
`
`issues that the Board found unpersuasive in the prior IPRs (see Pet. Br., 8), this is
`
`exactly the kind of second chance litigation that collateral estoppel is meant to
`
`prevent. E.g., B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1303
`
`(2015)) (“a losing litigant deserves no rematch after a defeat fairly suffered”). The
`
`Board should not indulge this second chance litigation tactic, and should adopt its
`
`prior decisions where appropriate, and at a minimum view its prior decisions as
`
`highly relevant, persuasive authority.
`
`5
`
`
`
`
`
`Dated: November 17, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/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
`
`6
`
`
`
`CERTIFICATION OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
`
`undersigned certifies that on November 17, 2021, a true and correct copy of the
`
`foregoing Patent Owner’s Consolidated Response to Petitioner’s Opening Brief on
`
`Collateral Estoppel was served via electronic mail upon the following:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel for Patent Owner)
`
`7
`
`
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
