UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.,
`
`Petitioner,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`
`Patent Owner.
`
`Case IPR2020-01341
`Case IPR2020-01343
`U.S. Patent No. 8,142,413
`U.S. Patent No. RE 46,116
`
`PETITIONER’S MOTION FOR ADDITIONAL DISCOVERY:
`MOTION FOR LEAVE TO SUBPOENA NON-PARTY WITNESSES
`(FILED WITH BOARD AUTHORIZATION)
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`REDACTED
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.,
`
`Petitioner,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.,
`
`Patent Owner.
`
`Case IPR2020-01341
`Case IPR2020-01343
`U.S. Patent No. 8,142,413
`U.S. Patent No. RE 46,116
`
`PETITIONER’S MOTION FOR ADDITIONAL DISCOVERY:
`MOTION FOR LEAVE TO SUBPOENA NON-PARTY WITNESSES
`(FILED WITH BOARD AUTHORIZATION)
`
`REDACTED
`
`
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`Pursuant to 35 U.S.C. § 316(a)(5) and 37 C.F.R. § 42.51(b)(2), Petitioner
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`moves for leave to serve subpoenas for testimony on three non-party witnesses:
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`Jim Kauphusman, a former VSI engineer; Katie Mytty, a former VSI technician;
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`and Jeff Welch, a named inventor on the patents-in-suit and former VSI employee.
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`As the Board knows, conception and reduction to practice is a critical,
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`dispositive issue in these proceedings.1 The conception and reduction to practice
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`record will dictate whether one of Petitioner’s references, Itou, is prior art. The
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`limited record in these proceedings shows that Kauphusman, Mytty, and Welch
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`have unique, first-hand knowledge of whether VSI reduced the claimed inventions
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`to practice via assembly and testing of GuideLiner RX prototypes. Yet we have not
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`heard from these individuals. By all accounts, they are the ones who would have
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`led and performed the engineering and prototype work required to reduce to
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`practice. Petitioner seeks their testimony because it has evidence that these
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`1 To the extent Patent Owner argues that the Board already decided conception and
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`reduction to practice in the related set of IPRs, Petitioner submits that the patents at
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`issue here recite method claim and, thus, change the character of the reduction-to-
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`practice analysis. Patent Owner will need to show that VSI performed the claimed
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`processes, making the details of the testing and, as a result, the individuals who
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`purportedly performed that testing, all the more significant.
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`1
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`REDACTED
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`individuals did not perform RX prototype work during the relevant period, before
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`Itou. Kauphusman’s and Mytty’s laboratory notebooks show that they worked on
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`only OTW (prior art)—not RX (patented)—prototypes during the relevant period.
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`Welch’s notebook does not mention GuideLiner until years after the Itou reference.
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`Root tries to offer an explanation for the conspicuous discrepancy in the
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`record. See Ex-2118 ¶ 94 (arguing that the Kauphusman and Mytty notebooks
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`“show VSI’s testing of GuideLiner OTW in preparation for submitting our
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`application to the FDA for regulatory clearance, not for purposes of confirming the
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`device would work”). But the record contains no evidence that VSI sought
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`regulatory clearance for or commercialized its OTW device. A more plausible
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`explanation for the absence of RX notebook entries (based not on inventor say-so
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`but on the evidentiary record) is that the key engineering witnesses did not
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`assemble and test RX prototypes until after Itou. Petitioner moves the Board for
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`leave to get that explanation into the record. This case turns on whether VSI
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`performed the requisite engineering work; the requested testimony is crucial.
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`The Garmin factors favor granting additional discovery and determining,
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`from the key sources, whether Patent Owner can swear behind Itou.
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`I.
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`Legal Standard
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`“Under the Leahy-Smith America Invents Act, discovery is available for . . .
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`‘what is otherwise necessary in the interest of justice.’” Garmin Int’l, Inc. v.
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`2
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`REDACTED
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`
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`Cuozzo Speed Techs. LLC, IPR2021-00001, Paper 26 at 5 (PTAB Mar. 5, 2013)
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`(precedential) (quoting 35 U.S.C. § 316(a)(5)); see also 37 C.F.R. § 42.51(b)(2)
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`(“The moving party must show that such additional discovery is in the interests of
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`justice . . . .”).
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`The Board’s precedential Garmin decision identifies five factors “important”
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`to deciding whether to allow additional discovery: (1) more than a possibility and
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`mere allegation; (2) litigation positions and underlying basis; (3) ability to generate
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`equivalent information by other means; (4) easily understandable instructions; and
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`(5) requests not overly burdensome to answer. Garmin, Paper 26 at 6.
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`II.
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`
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`First Garmin factor: The record demonstrates more than a possibility or
`mere allegation that Kauphusman, Mytty, and Welch will provide
`useful testimony that will allow Petitioner to rebut Patent Owner’s
`reduction-to-practice arguments.
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`Under the first Garmin factor, “[t]he party requesting discovery should
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`already be in possession of evidence tending to show beyond speculation that in
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`fact something useful will be uncovered.” Garmin, Paper 26 at 6. “Useful” means
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`“favorable in substantive value to a contention of the party moving for discovery.”
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`Id. at 7. Here, laboratory notebooks and other VSI engineering documents,
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`declarations, and deposition testimony more than suggest that Kauphusman, Mytty,
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`and Welch will provide useful, favorable testimony.
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`Unlike the witnesses that Patent Owner offers, Kauphusman, Mytty, and
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`Welch led RX engineering efforts and assembled and tested GuideLiner
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`3
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`REDACTED
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`
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`prototypes. But their laboratory notebooks reveal that at most, they performed only
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`OTW work during the relevant period. Thus, Petitioner has evidence tending to
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`show beyond speculation that Kauphusman, Mytty, and Welch will testify they did
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`not build or test RX prototypes during the relevant period. That testimony will
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`undermine Patent Owner’s reduction-to-practice narrative and support Petitioner’s
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`contention that VSI did not perform critical prototype work sufficient to swear
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`behind Itou.
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`VSI engineering documents, declarations, and deposition testimony confirm
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`that Kauphusman led VSI’s RX engineering and prototype work. Inventor Gregg
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`Sutton testified that Kauphusman was “the primary engineer working on the rapid
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`exchange version” in 2005. Ex-1757, 33:11-15; see also Ex-1794, 47:23-48:8
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`(Sutton identifying Kauphusman as “
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`. Sutton could not remember specifics, but he was “sure” that he met
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`with Kauphusman “to discuss development of the GuideLiner rapid exchange
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`device.” Ex-1757, 34:7-20. Sutton and Kauphusman discussed “problem areas”—
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`including “making the—what we called at the time the backbone”—and other
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`engineering issues, including “what materials to use, where to get them, how to
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`make them, [and] how to design them.” Id., 34:21-35:15. Kauphusman—and only
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`Kauphusman, as far as Petitioner can tell—led RX engineering efforts during the
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`4
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`REDACTED
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`
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`relevant period. See also id., 36:3-8, 71:25-72:14. Indeed, Kauphusman’s name
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`appears on the component parts engineering drawings that Patent Owner cites to
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`argue that VSI assembled RX prototypes in mid-2005. See Ex-2122 ¶¶ 14-18
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`(citing Ex-2089, Ex-2092, Ex-2113, and Ex-2114 and explaining that Kauphusman
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`drew the engineering drawings for the parts orders).
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`Kauphusman led critical engineering and prototype work, but the evidence
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`more than suggests that Kauphusman did not perform that work during the
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`relevant period. Kauphusman’s laboratory notebook shows that he worked on only
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`OTW prototypes in 2005 and 2006. Ex-1760, 86-87, 91-93 (300-centimeter, 0.014”
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`guidewire indicating OTW, not RX, prototype). And a VSI “Special Work Order
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`Number Assignment Log” shows that in December 2005, VSI cancelled and could
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`not complete GuideLiner design verification testing, due to a
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`
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`Ex-1768, 14. “Jim K.”—Kauphusman—requested that work and then cancelled it.
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`This evidence more than suggests that he will have information regarding why VSI
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`could not complete that work.
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`Mytty worked alongside Kauphusman and should provide similar testimony.
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`Sutton identified Mytty as one of the “main individuals working with Mr.
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`Kauphusman on the RX version.” Ex-1757, 33:23-34:6. Yet Mytty’s two
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`laboratory notebooks indicate that she worked on only OTW prototypes in 2005
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`and 2006. Ex-1761, 107-13; Ex-1774, 10-12. Therefore, Petitioner possesses
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`5
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`REDACTED
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`
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`evidence that tends to show beyond speculation that Mytty will provide useful,
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`favorable testimony: that VSI did not complete critical RX prototype work or
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`reduce its inventions to practice when its less-knowledgeable witnesses claim.
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`Patent Owner contends that Welch built and tested relevant prototypes, too.
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`See Ex-2118 ¶ 15 (Root declaration stating, “I recall Mr. Sutton and Mr. Welch
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`(another of the named inventors) leading the efforts to make the first [RX]
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`prototype”); Ex-1756, 62:3-63:20 (Erb testifying that Welch “was heavily involved
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`in the testing”), 67:20-69:11 (Erb testifying that “it probably would have been Jeff
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`Welch” performing material prototype testing). Yet, like Kauphusman and Mytty,
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`Welch’s notebook tells a different story:
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`
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` Ex-1758, 12-14. Thus, like Kauphusman and Mytty,
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`Petitioner possesses evidence that tends to show beyond speculation that Welch
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`will provide useful, favorable testimony: that VSI did not complete critical RX
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`prototype work or reduce its inventions to practice when its less-knowledgeable
`
`witnesses claim.
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`To Petitioner’s knowledge, the Board has not had the opportunity to address
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`additional discovery related to rebutting reduction-to-practice arguments. But the
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`substantive value of the testimony that Petitioner seeks is not unlike the value of
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`additional discovery that the Board has allowed. For example, the Board
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`recognized that evidence “relevant to determining whether [an asserted reference]
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`6
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`REDACTED
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`
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`qualifies as prior art” is useful. Canon Inc. v. Avigilon Fortress Corp., IPR2019-
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`00311, 2019 WL 4239623, at *2 (PTAB Sept. 6, 2019). Here, Petitioner’s ability to
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`rebut Patent Owner’s reduction-to-practice arguments will determine whether Itou
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`is prior art. Existing evidence more than suggests that Kauphusman, Mytty, and
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`Welch will testify that they do not remember working on RX prototypes in 2005-
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`2006 and that, if they had, they would have written it down in their notebooks. That
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`testimony will help Petitioner argue that Patent Owner cannot swear-behind Itou.
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`The first Garmin factor weighs in favor of allowing the depositions.
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`III. Second Garmin factor: Petitioner does not seek any information
`regarding Patent Owner’s litigation positions.
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`
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`“Asking for the other party’s litigation positions and the underlying basis for
`
`those positions is not necessary in the interest of justice.” Garmin, Paper 26 at 6.
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`Petitioner does not seek any information regarding Patent Owner’s litigation
`
`positions. The second Garmin factor weighs in favor of allowing the depositions.
`
`IV. Third Garmin factor: Petitioner cannot otherwise obtain the
`information it seeks, including from witnesses that Patent Owner has
`made available.
`
`
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`“Information a party can reasonably figure out or assemble without a
`
`discovery request would not be in the interest of justice to have produced by the
`
`other party.” Garmin, Paper 26 at 6. The information that Petitioner seeks is non-
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`7
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`REDACTED
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`
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`public and in only Kauphusman’s, Mytty’s, and Welch’s possession.2 Indeed,
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`deposition testimony confirms that the witnesses that Patent Owner has chosen to
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`make available cannot provide the information. Sutton testified that he did not
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`keep notes tracking GuideLiner work; he relied on Kauphusman and Mytty to keep
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`notes, testifying that “[m]ost projects’ specific notes are kept by the engineers’
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`technicians.” Ex-1757, 35:16-36:2. Root indicated that he “[doesn’t] know
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`specifically who build all the prototypes,” but “[t]he people working on it were
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`Gregg Sutton, Jeff Welch, maybe Jim Kauphusman,” with “Steve Erb making
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`components” and “maybe Katie Mytty doing some of the testing.” Ex-1762, 82:19-
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`25. Sutton confirmed that he only oversaw and did not perform GuideLiner
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`prototype work. See, e.g., Ex-1757, 33:6-10 (“I wasn’t involved directly with either
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`of these [working on OTW or RX], other than oversight and direction . . . .”). Erb’s
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`role was limited to making early components. So according to Patent Owner’s
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`witnesses, only Kauphusman, Mytty, and Welch were working on relevant
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`prototypes. Thus, only they can provide testimony likely to undercut Patent
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`Owner’s reduction-to-practice narrative. Rather than offer the key VSI witnesses,
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`Patent Owner offers less-knowledgeable witnesses to corroborate its inventors.
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`2 None of these witnesses currently work for Teleflex. And to Petitioner’s
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`knowledge, none have worked for VSI / Teleflex for many years.
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`8
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`REDACTED
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`
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`The third Garmin factor weighs in favor of allowing the depositions.
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`V. The fourth Garmin factor does not apply and, thus, does not weigh
`against the requested discovery.
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`The fourth Garmin factor considers instructions that accompany written
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`
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`discovery. See, e.g., Garmin, Paper 26 at 14 (considering interrogatory and
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`document request instructions). Here, Petitioner does not seek leave to serve
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`written discovery. Petitioner will serve only standard subpoenas for testimony.
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`Kauphusman, Mytty, and Welch will be responsible for testifying truthfully and
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`completely based on their personal knowledge. The fourth Garmin factor cannot
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`weigh against allowing the depositions.
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`VI. Fifth Garmin factor: The depositions will not be burdensome, and
`Petitioner is willing to limit each deposition to four hours.
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`Under the fifth Garmin factor, the Board considers “financial burden, burden
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`on human resources, and burden on meeting the time schedule of Inter Partes
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`Review.” Garmin, Paper 26 at 6. “Requests should be sensible and responsibly
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`tailored according to a genuine need.” Id.
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`The requested depositions will not be burdensome. As mentioned,
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`Kauphusman, Mytty, and Welch will be responsible for testifying truthfully and
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`completely based on their personal knowledge. The depositions will impose no
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`financial burden on the deponents, as Petitioner will travel to the deponents or
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`provide for remote depositions. Petitioner anticipates that the Board will have the
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`9
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`REDACTED
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`opportunity to rule on this motion in time for Petitioner to secure these depositions,
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`if allowed, before it submits its Reply, thereby meeting the schedule for this
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`proceeding.
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`Petitioner seeks targeted information from these witnesses related to a
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`particular time period and a particular project. Thus, Petitioner does not anticipate
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`that it will need more than four hours for each of the depositions that it seeks.
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`Further, if the Board does not believe that all three depositions are in the interests
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`of justice, Petitioner would rank them in the order of Kauphusman, Mytty, and
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`then Welch. Petitioner asks that Board grant leave to depose as least Kauphusman,
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`as the evidence suggests that he will have the most useful information.
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`The fifth Garmin factor weighs in favor of allowing the depositions.
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`*
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`*
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`*
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`Each Garmin factor weighs in favor of allowing these narrow depositions or
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`is neutral. Petitioner requests that the Board grant its motion for additional
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`discovery.
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`
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`Dated: July 1, 2021
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`Respectfully submitted,
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`
`10
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`REDACTED
`
`
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`Minneapolis, MN 55402
`Attorney for Petitioner
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`11
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`REDACTED
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`
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`CERTIFICATE OF SERVICE
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`I certify that on July 1, 2021, a copy of PETITIONER’S MOTION FOR
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`ADDITIONAL DISCOVERY: MOTION FOR LEAVE TO SUBPOENA NON-
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`PARTY WITNESSES (FILED WITH BOARD AUTHORIZATION) and all
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`supporting exhibits were served in their entirety by electronic mail on Patent
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`Owner’s counsel at the following addresses indicated in Patent Owner’s
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`Mandatory Notices:
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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
`
`Joseph W. Winkels
`jwinkels@carlsoncaspers.com
`
`Peter M. Kohlhepp
`pkohlhepp@carlsoncaspers.com
`
`Alexander S. Rinn
`pkohlhepp@carlsoncaspers.com
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`Megan E. Christner, Reg. No. 78,979
`mchristner@carlsoncaspers.com
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`Respectfully submitted,
`
`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Attorney for Petitioner
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`12
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`
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`Dated: July 1, 2021
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`REDACTED
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