`
`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.
`
`
`
`
`PETITIONER’S RESPONSIVE BRIEF ON COLLATERAL ESTOPPEL
`
`
`
`
`
`
`
`
`
`Case IPR2020-01341
`U.S. Patent No. 8,142,413
`
`Case IPR2020-01342
`U.S. Patent No. 8,142,413
`
`Case IPR2020-01343
`U.S. Patent No. RE 46,116
`
`Case IPR2020-01344
`U.S. Patent No. RE 46,116
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`The Board’s First Set of IPR Decisions are not Final. .................................... 1
`
`The Board Must Address New Reduction-to-Practice Issues. ........................ 3
`
`PO’s Other Issues Were Not Essential to the Final Decision, and
`Petitioner Did not have a Full and Fair Opportunity to Litigate. .................... 4
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`B&B Hardware, Inc. v. Hargis Indus.,
`575 U.S. 138 (2015) .............................................................................................. 1
`MaxLinear, Inc. v. CF CRESPE LLC,
`880 F.3d 1373 (Fed. Cir. 2018) ........................................................................... 1
`Mobile Tech, Inc. v. Invue Security Prods. Inc.,
`IPR2019-00481, Paper 29 (PTAB July 16, 2019) ................................................ 2
`Mylan Pharm. Inc. v. Saint Regis Mohawk Tribe,
`IPR2016-01129, Paper 154 (PTAB Sept. 27, 2019) ............................................ 1
`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013) ............................................................................ 4
`Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., Inc.,
`924 F.3d 1243 (Fed. Cir. 2019) ............................................................................ 1
`Taskett v. Dentlinger,
`344 F.3d 1337 (Fed. Cir. 2003) ............................................................................ 4
`VirnetX Inc. v. Apple, Inc.,
`909 F.3d 1375 (Fed. Cir. 2018) ........................................................................... 1
`Webpower, Inc. v. Wag Acquisition, LLC,
`IPR2016-01239, Paper 21 (PTAB Dec. 26, 2017) ............................................... 2
`XY, LLC v. Trans Ova Genetics,
`890 F.3d 1282 (Fed. Cir. 2018) ............................................................................ 3
`Statutes
`35 U.S.C. § 318(b) ................................................................................................. 1, 2
`Other Authorities
`37 C.F.R. § 42.80 ....................................................................................................... 2
`Restatement (Second) of Judgments § 83 .................................................................. 2
`
`
`
`iii
`
`
`
`
`
`Patent Owner’s (“PO”) carefully worded brief attempts to mask that
`
`collateral estoppel cannot, and should not, apply to these proceedings. The Board’s
`
`prior decisions are not final, do not address identical issues, and did not rely upon
`
`those issues. The Board should not apply collateral estoppel.
`
`I.
`
`
`The Board’s First Set of IPR Decisions are not Final.
`PO concedes that collateral estoppel does not attach while an appeal is
`
`pending. See PO Brief at 4-5. Indeed, a final written decision is not final until
`
`either the time for appeal elapses or the Federal Circuit affirms the Board’s
`
`decision. See 35 U.S.C. § 318(b) (issuance of certificate of (un)patentability proper
`
`only after appeal time expires or appeal exhausted). Here, Petitioner appealed the
`
`previous IPR decisions—none are final, and collateral estoppel does not attach.
`
`
`
`PO’s argument that the first set of IPR decisions are “sufficiently final” is
`
`misleading at best and incorrect at worst. PO relies on cases in which there was no
`
`appeal or the appeal had already concluded. See B&B Hardware, Inc. v. Hargis
`
`Indus., 575 U.S. 138, 146-48 (2015) (no appeal); Papst Licensing GMBH & Co.
`
`KG v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1249 (Fed. Cir. 2019) (appeal
`
`dismissed); VirnetX Inc. v. Apple, Inc., 909 F.3d 1375, 1378 (Fed. Cir. 2018)
`
`(appeal affirmed); MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376
`
`(Fed. Cir. 2018) (appeals affirmed); Mylan Pharm. Inc. v. Saint Regis Mohawk
`
`Tribe, IPR2016-01129, Paper 154 (PTAB Sept. 27, 2019) (appeals affirmed);
`
`
`
`1
`
`
`
`
`
`Webpower, Inc. v. Wag Acquisition, LLC, IPR2016-01239, Paper 21 (PTAB Dec.
`
`26, 2017) (no appeal). Indeed, PO cites no case in which collateral estoppel
`
`attached during the pendency of an active appeal.1
`
`
`
`PO’s other argument—that collateral estoppel can apply when a district
`
`court decision is pending on appeal—is similarly inapplicable. PO Brief at 2-3.
`
`Importantly, a final written decision by the Board is not a decision by a district
`
`court. As the Restatement notes, “[t]o determine finality [of agency decisions],
`
`reference must be made to the procedures of the agency that specify what official
`
`has authority to decide and the point at which the decision becomes effective.”
`
`Restatement (Second) of Judgments § 83 cmt e. And the procedures of the Patent
`
`Office specify that its determinations on patentability are not implemented by
`
`publication of a certificate until “the time for appeal has expired or any appeal has
`
`terminated.” 37 C.F.R. § 42.80; 35 U.S.C. § 318(b). Finality of a Board decision,
`
`then, requires finality of appellate process. Petitioner’s Opening Brief at 3-4.
`
`
`1 PO cites Mobile Tech, Inc. v. Invue Security Prods. Inc., IPR2019-00481, Paper
`
`29 at 33 (PTAB July 16, 2019) for the proposition that a pending appeal does not
`
`prevent the application of collateral estoppel. PO Brief at 4. Not only was this
`
`statement dicta—the PTAB addressed the issues on the merits—but eight of the
`
`eleven appeals were already complete. Mobile Tech, Paper 29 at 7.
`
`
`
`2
`
`
`
`
`
`
`
`The Federal Circuit ultimately recognizes and applies the rule that a Board
`
`decision is not final until appeals conclude. It is only “affirmance [that] renders
`
`final a judgment on the invalidity” of a patent, and only affirmance that “has an
`
`immediate issue-preclusive effect on any pending or co-pending actions involving
`
`the patent.” XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018).
`
`Until each party, “having been afforded the opportunity to exhaust his remedy of
`
`appeal . . . has had his ‘day in court,’” a Board decision is not final. Id. at 1294.
`
`
`
`The Board’s previous IPR determinations are not final because the appeals
`
`are pending. Therefore, the Board should not apply collateral estoppel.
`
`II. The Board Must Address New Reduction-to-Practice Issues.
`The Board cannot adopt its findings from the first set of IPRs, wholesale, to
`
`resolve the reduction-to-practice issues in these IPRs. PO concedes that these IPRs
`
`created new reduction-to-practice issues, specifically, whether VSI performed the
`
`claimed methods, and whether those methods require using the claimed guide
`
`extension catheter in vivo. The intended purpose inquiry has new dimensions, too:
`
`the Board must consider whether VSI performed testing sufficient to demonstrate
`
`the methods’ intended purpose, which Petitioner contends requires (1) simulating
`
`the methods using a guide catheter and, separately, a guide catheter plus guide
`
`extension catheter, and (2) comparing the results. The Board has yet to consider
`
`whether the intended purpose—to provide increased backup support—required
`
`
`
`3
`
`
`
`
`
`comparative testing. Finally, though PO produced no new evidence to prove
`
`diligence, the Board must consider whether that evidence shows reasonably
`
`continuous diligence in reducing to practice the new inventions reciting more than
`
`a guide extension catheter.
`
`Issues are identical when a new patent does not “materially alter the
`
`question.” Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir.
`
`2013). Here, the method-of-use claims change the reduction-to-practice analysis.
`
`PO does not explain, legally or factually, how the issues here—regarding VSI’s
`
`activity related to separate inventions subject to different reduction-to-practice
`
`standards—are identical to those that the Board resolved in the first set of IPRs.
`
`Even if the Board adopts previous fact findings, it must consider anew whether
`
`those facts are sufficient to prove reduction to practice of the new inventions. PO
`
`may have assembled largely the same record here as it did in the first set of IPRs.
`
`But the Board must compare that evidence to new patents—claim by claim,
`
`limitation by limitation. See Taskett v. Dentlinger, 344 F.3d 1337, 1340-41 (Fed.
`
`Cir. 2003).
`
`III. PO’s Other Issues Were Not Essential to the Final Decision, and
`Petitioner Did not have a Full and Fair Opportunity to Litigate.
`The Board cannot apply collateral estoppel to the patentability issues
`
`
`
`identified by PO because (i) no issue was essential to the Board’s decision, and/or
`
`(ii) Petitioner did not have a full and fair opportunity to litigate the issue.
`
`
`
`4
`
`
`
`
`
`For example, as to whether it was obvious to modify Kontos to replace its
`
`funnel with a side opening, the Board did not address Petitioner’s argument that
`
`doing so would facilitate smooth passage of catheters or allow advancement of
`
`therapy catheters into distal locations of the coronary vasculature. Compare, e.g.,
`
`IPR2020-00127, FWD (Paper 105) at 31-48, 68-73 with IPR2020-01343, Petition
`
`(Paper 1) at 75-76. Further, with respect to the side opening limitation, the “one
`
`French” limitation, and the double-incline limitation, the Board based its decision,
`
`in part, on PO’s argument that Petitioner raised improper reply arguments.2 See,
`
`e.g., IPR2020-00127, FWD (Paper 105) at 46, 50-52 (noting that the Petitions did
`
`not discuss recessing marker bands); IPR2020-00129, FWD (Paper 125) at 33
`
`(double-incline). Further, in the Itou-based IPRs, the Board did not reach
`
`Petitioner’s unpatentability arguments. See, e.g., IPR2020-00129, FWD (Paper
`
`125) at 48 (finding Itou not prior art). For these additional reasons, collateral
`
`estoppel does not attach.
`
`
`
`2 Petitioner notes that the Board’s non-obviousness determination on certain issues
`
`was premised, at least in part, on PO’s showing of secondary considerations. In
`
`these IPRs, PO does not practice claim 25 of the ʼ116 patent and thus cannot
`
`demonstrate nexus. See, e.g., IPR2020-00127, Reply (Paper 37) at 25-27. The
`
`claims are not identical.
`
`
`
`5
`
`
`
`
`
`Dated: November 17, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`Attorney for Petitioner
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on November
`
`17, 2021, a copy of PETITIONER’S RESPONSIVE BRIEF ON COLLATERAL
`
`ESTOPPEL was served by electronic mail on Patent Owner’s counsel at the
`
`following addresses indicated in Patent Owner’s Mandatory Notices:
`
`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
`
`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
`
`Joseph W. Winkels
`jwinkels@carlsoncaspers.com
`
`Peter M. Kohlhepp
`pkohlhepp@carlsoncaspers.com
`
`Alexander S. Rinn
`arinn@carlsoncaspers.com
`
`Megan E. Christner, Reg. No. 78,979
`mchristner@carlsoncaspers.com
`
`Shelleaha L. Jonas
`sjonas@carlsoncaspers.com
`
`Tara C. Norgard
`tnorgard@carlsoncaspers.com
`
`
`Dated: November 17, 2021
`
`
`Respectfully submitted,
`
`
`
`/Cyrus A. Morton/
`Cyrus A. Morton
`Registration No. 44,954
`Attorney for Petitioner
`
`
`
`
`
`7
`
`
`
`