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`___________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________________
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`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
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`Petitioners,
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`v.
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`TELEFLEX INNOVATIONS S.À.R.L.
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`Patent Owner
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`_____________________________
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`Cases IPR2020-01343
`U.S. Patent No. RE46,116
`______________________________
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`PETITIONERS’ EXPLANATION OF MATERIAL DIFFERENCES
`BETWEEN PETITIONS AND PETITION RANKING FOR
`U.S. PATENT NO. RE46,116
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`
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`IPR2020-01343
`Patent RE46,116
`Medtronic, Inc. and Medtronic Vascular, Inc. (“Petitioners”) filed two
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`petitions for inter partes review against U.S. Pat. No. RE46,116 (“the ’116
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`Patent”). Petitioners ask the Board to consider and institute both petitions.
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`1. Priority date disputes warrant two petitions.
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`The Board’s Consolidated Trial Practice Guide provides that “more than one
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`petition may be necessary” when, as here, “there is a dispute about priority date
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`requiring arguments under multiple prior art references.” Consolidated Trial
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`Practice Guide (Nov. 2019) at 59.1 Petitioners filed two petitions, advancing
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`arguments under multiple prior art references, to address two priority date disputes.
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`Itou-Based Petition
`Ground 1: Ressemann anticipates claims 52 and 53.
`Petition 1
`Ground 2: Itou renders claims 25-40, 42, 44-48, 52, and 53 obvious
`IPR2020-
`01343
`in view of Ressemann and the knowledge of a POSITA.
`Ground 3: Itou renders claim 45 obvious in view of Ressemann,
`Kataishi, and the knowledge of a POSITA.
`Kontos-Based Petition
`Ground 1: Kontos renders claims 52-53 obvious in view of
`Petition 2
`Ressemann and the knowledge of a POSITA.
`IPR2020-
`Ground 2: Kontos renders claims 25-40, 42, and 44-48 obvious in
`01344
`view of Ressemann, Takahashi, and the knowledge of a POSITA.
`Ground 3: Kontos renders claim 45 obvious in view of Ressemann,
`Takahashi, Kataishi, and the knowledge of a POSITA.
`Ground 4: Root renders claims 25-55 obvious in view of the
`knowledge of a POSITA.
`Ground 5: Kontos renders claims 45-46 obvious in view of
`Ressemann, Takahashi, Root, and the knowledge of a POSITA.
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`1 https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
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`1
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`IPR2020-01343
`Patent RE46,116
`First, the petitions rely on different primary references to cover an
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`anticipated swear-behind dispute. The ʼ116 Patent claims priority to U.S. Pat. No.
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`8,048,032, which, on its face, is entitled to a priority date of May 3, 2006.
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`(Ex-1001.) Petition 1 asserts Itou as its primary reference (filed September 23,
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`2005). (Ex-1007.) But Petitioners anticipate that Patent Owner may allege that the
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`’116 Patent inventors conceived of and reduced to practice the underlying
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`invention earlier than September 23, 2005. (Ex-1084.) So Petitioners filed Petition
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`2 to challenge the same claims but asserting Kontos as the primary reference.
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`Kontos issued on August 8, 1995. (Ex-1009.) Patent Owner may try to swear
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`behind Itou; it cannot swear behind Kontos. Each petition presents unique, non-
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`duplicative challenges in response to a priority date dispute.
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`In addition, Petition 2 advances a unique argument related to a second
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`priority date dispute. With the Kontos grounds, Petitioners contend that the
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`challenged claims are not entitled to claim priority to May 2006, based on a lack of
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`written description support, and incorporate an intervening art argument unique to
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`Petition 2. See Petition 2 at Sections X-XII. This priority date dispute is separate
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`from, and in addition to, the Itou swear-behind dispute.
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`The Board has already instituted two petitions challenging a related patent
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`based on the Itou swear-behind dispute. See IPR2020-00135, Paper 22; IPR2020-
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`00136, Paper 20. The ’135 petition asserted grounds based on Itou; the ’136
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`2
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`IPR2020-01343
`Patent RE46,116
`petition asserted grounds based on Kontos. See, e.g., IPR2020-00136, Paper 20 at
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`37. The Board determined that two petitions were justified because of the potential
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`swear-behind issue: “Given the possibility that we may determine that Itou does
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`not qualify as prior art after fully considering Patent Owner’s priority date
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`arguments, we determine that Petitioner provides a sufficient explanation as to why
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`it was necessary to rely upon the obviousness challenges presented [in the second
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`petition] as an alternative basis for unpatentability. Indeed, this is precisely one of
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`the circumstances . . . in which more than one petition may be necessary.” Id. at
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`39. Petitioners were entitled to rely on Itou as prior art and protect against a
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`potential swear behind with Kontos. Id. Further, the Board determined that the
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`petitions presented unique, non-duplicative challenges—“the prior art and issues to
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`be decided do not significantly overlap with each other.” Id. at 40.
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`For these exact reasons, two petitions are justified here. As in the ’135 and
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`’136 proceedings, Petitioners rely on Itou in their first petition and on Kontos in
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`their second, because of a priority date dispute that will determine whether Itou is
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`prior art.
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`The Board’s decision in Microsoft Corp. v. IPA Technologies, Inc., is also
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`instructive. IPR2019-00810, Paper 12 (PTAB Oct. 16, 2019). There, as here, the
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`Patent Owner raised a priority date issue necessitating “arguments under multiple
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`prior art references.” Id. at 15. There, the priority date dispute concerned a prior art
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`3
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`IPR2020-01343
`Patent RE46,116
`reference. Here, the priority date disputes are more fundamental, relating to the
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`challenged patent. Were the Board to deny institution of Petition 2 under
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`§ 314(a)—and were Patent Owner to successfully swear behind Itou—the decision
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`would prejudice Petitioners. Thus, the Board should consider and institute Petition
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`1 and Petition 2.
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`2. The length and number of challenged claims warrant two petitions.
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`Petitioners challenge claims 25-40, 42, 44-48, 52, and 53 of the ’116 Patent
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`in Petition 1 and claims 25-55 in Petition 2. Reciting the challenged claims
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`requires nearly 1500 words, which additionally warrants two petitions.
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`Petitioners must challenge these claims to preserve their right to do so in the
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`event that Patent Owner asserts them in litigation.2 Here, Patent Owner has, to
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`date, asserted only one claim of the ’116 Patent against Petitioners. But Patent
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`Owner may assert additional claims later by seeking to amend its infringement
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`contentions (Ex-1118). More significantly, it may assert additional claims against
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`Petitioners in a second case, against a new product. Petitioners will not have the
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`opportunity to challenge additional claims later if their one-year period to do so—
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`triggered by the pending litigation—expires before then. See 35 U.S.C. § 315(b).
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`The Board strictly enforces its one-year time bar to petition for IPR. See, e.g.,
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`2 “[M]ore than one petition may be necessary . . . when the patent owner has
`asserted a large number of claims in litigation.” Consolidated Trial Practice Guide
`(Nov. 2019) at 59.
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`4
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`IPR2020-01343
`Patent RE46,116
`Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1330 (Fed. Cir. 2018)
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`(“Simply put, § 315(b)’s time bar is implicated once a party receives notice
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`through official delivery of a complaint in a civil action, irrespective of subsequent
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`events.”). Indeed, the Federal Circuit has encouraged petitioners to challenge
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`“hundreds of claims” to “ensure that their IPRs will challenge each of the
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`eventually asserted claims.” Facebook, Inc. v. Windy City Innovations, LLC, 953
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`F.3d 1313, 1327 (Fed. Cir. 2020).
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`Here, Petitioners cannot fit their arguments covering 31 claims into a single
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`petition. Especially considering that Petitioners intend to address two priority date
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`disputes, as discussed above.
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`3. The Board should consider and institute both petitions, beginning
`with Petition 1 and then Petition 2.
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`Petitioners respectfully request consideration and institution of both Petition
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`1 and Petition 2. Petitioners request that the Board consider its petitions in the
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`following order: Petition 1 (IPR2020-01343), followed by Petition 2 (IPR2020-
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`01344).
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`5
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`IPR2020-01343
`Patent RE46,116
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`RESPECTFULLY SUBMITTED,
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`ROBINS KAPLAN LLP
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`Date: July 31, 2020
`800 LaSalle Ave, Suite 2800
`Minneapolis, MN 55402
`612.349.8500
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`/ Cyrus A. Morton /
`Cyrus A. Morton
`
`Attorney for Petitioners
`Medtronic, Inc. and
`Medtronic Vascular, Inc.
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`6
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`IPR2020-01343
`Patent RE46,116
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that PETITIONERS’ EXPLANATION OF
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`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
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`RANKING FOR U.S. PATENT NO. RE46,116 was served on July 31, 2020, by
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`Federal Express mail to the USPTO correspondence address of record listed below:
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`Paul Onderick
`PATTERSON THUENTE PEDERSEN, P.A.
`80 South 8th Street
`4800 IDS Center
`Minneapolis, MN 55402-2100
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`Courtesy copies were also sent to IPR counsel in the related proceedings at
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`the following email addresses:
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`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
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`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
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`/ Cyrus A. Morton /
`
`Cyrus A. Morton
`Registration No. 44,954
`Robins Kaplan LLP
`cmorton@robinskaplan.com
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`7
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