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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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 INNOVATIONS S.A.R.L.
`Patent Owner.
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`Case IPR2020-01343
`Patent RE46,116
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`ADDITIONAL DISCOVERY
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`Having lost its argument in the related IPRs that Itou is prior art, Petitioner
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`now asks the Board to license a fishing expedition for new and entirely speculative
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`evidence from three non-declarant third parties whom Petitioner could have, but did
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`not, seek to depose before. This is precisely the type of burdensome, costly, and
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`unfocused discovery that IPRs were designed to eliminate.
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`There are many reasons why Petitioner’s request should be denied. Among
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`them: (1) Petitioner had the same motive and opportunity to seek these depositions
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`in the prior, related IPRs, but determined this discovery was not necessary; (2)
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`Petitioner’s motion is based on pure conjecture as to what these third parties would
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`say; (3) Petitioner sidesteps the substantial evidence (and the Board’s prior finding)
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`regarding reduction to practice; and (4) Petitioner ignores the burdens that its request
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`would place on the deponents, Patent Owner, and the IPR schedule. For these and
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`the additional reasons set forth below, the Board should deny Petitioner’s motion.
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`I.
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`PETITIONER ALREADY DECIDED THAT THE DEPOSITIONS IT
`SEEKS NOW ARE NOT “IN THE INTERESTS OF JUSTICE”
`Because Petitioner seeks to depose third parties who did not submit affidavits
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`or declarations, it must show the discovery is “in the interests of justice.” 37 C.F.R.
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`§ 42.51(b)(1)-(2); Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001,
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`Paper 26 at 5-6 (PTAB March 5, 2013) (precedential) (“Garmin”). The Board’s
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`analysis is guided by the recognition that IPR discovery “is significantly different
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`from the scope of discovery generally available under the Federal Rules of Civil
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`1
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`Procedure,” and Congress’s intent for the Patent Office to “be conservative in its
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`grants of discovery.” Garmin at 5.
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`Petitioner’s argument is based principally on the contents of these third
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`parties’ lab notebooks, and the testimony of Root, Sutton, and Erb. E.g., Mot. at 4-
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`9. Petitioner had the same information—and every motivation—in the prior IPRs to
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`seek the additional discovery it requests now. Petitioner had the lab notebooks and
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`documents it cites before it even filed its first round of IPRs. See, e.g. IPR2020-
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`00126, Exs. 1758 (Welch notebook), 1760 (Kauphusman notebook), 1761 (Mytty
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`notebook), 1774 (Mytty notebook), 1768 (Special Work Order Log) (all showing
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`district court bates numbers beginning “VSIMDT”). And in the course of those
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`earlier IPR proceedings, Petitioner took several depositions regarding conception
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`and reduction to practice, including those of Root, Sutton, and Erb. See, e.g.
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`IPR2020-00126, Exs-1756, 1757, 1762. In short, the evidence related to the roles of
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`Kauphusman, Welch, and Mytty was available and well-known to Petitioner in the
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`IPRs where the Board found conception and reduction to practice before Itou. Yet at
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`no point did Petitioner seek to depose these individuals.
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`Petitioner does not cite a single new piece of information that now makes it
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`necessary to depose these third parties. The only new fact is that Petitioner failed in
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`the first IPRs to show that Itou was prior art. The Board disfavors “second bites at
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`the apple” intended to supplement the record based on the outcomes of prior, related
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`2
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`proceedings. See, e.g. General Plastic Indus. Co. v. Canon Kabushiki Kaisha,
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`IPR2016-01357, Paper 19 at 17 (PTAB Sept. 6, 2017) (precedential) (“[F]ollow-on
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`petitions would allow petitioners . . . to strategically stage their . . . arguments in
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`multiple petitions, using our decisions as a roadmap, until a ground is found that
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`results in the grant of review.”); see also id. at 17-18, n.14. Petitioner’s efforts to do
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`that here should not be rewarded.1
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`II. THE GARMIN FACTORS SHOW THAT THE ADDITIONAL
`DISCOVERY IS NOT IN THE INTERESTS OF JUSTICE
`A. Garmin Factor 1: Petitioner Only Speculates as to What the
`Requested Depositions Would Yield, and They Would Be Futile
`Garmin factor 1 requires Petitioner to show “more than a possibility and mere
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`allegation” that useful information will be discovered. Garmin at 6. “The party
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`requesting discovery should already be in possession of evidence tending to show
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`beyond speculation that in fact something useful will be uncovered.” Id.
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`Here, Petitioner’s analysis of factor 1 rests principally on lab notebooks,
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`1 Petitioner’s apparent effort to use the Board’s decisions in the first set of IPRs
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`finding that Itou was not prior art as a roadmap to mount a second-bite attack
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`would be even more unjust here, where Patent Owner had to file its Responses in
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`this second set of IPRs before the Board issued its decisions in the first set of IPRs,
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`while Petitioner will be filing its Replies after receiving those decisions.
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`3
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`which Petitioner alleges show no work on the RX GuideLiner in 2005 or 2006. Mot.
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`at 4-8. Petitioner posits that the notebooks “more than suggest[] that Kauphusman,
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`Mytty, and Welch will testify that they do not remember working on RX prototypes
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`in 2005-2006 and that, if they had, they would have written it down in their
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`notebooks.” Mot. at 8; see also id. at 5. This is a huge, unfounded logical leap that
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`is contradicted by actual evidence.
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`Nothing in these individuals’ lab notebooks or other documentation negates
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`the ample evidence showing that the inventors and others reduced the invention to
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`practice before Itou. Indeed, as the Board already found, “more detailed evidence
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`with regard to the OTW GuideLiner . . . [does not] detract[] from or otherwise
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`contradict[] the evidence presented for the RX GuideLiner.” E.g. IPR2020-00126,
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`Paper 129 at 49. Petitioner presents no evidence that Kauphusman, Welch, and
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`Mytty “do not remember working on RX prototypes in 2005-2006.” Mot. at 4-8. In
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`fact, the very evidence presented by Petitioner contradicts its own conclusion.
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`Regarding Kauphusman, Petitioner acknowledges that his name appears on
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`component part drawings, but then casts them aside in favor of notebooks to support
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`the hypothesis that he did not perform engineering and prototype work during the
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`relevant period. Mot. at 5. The documentation Petitioner acknowledges, dated well-
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`before Itou’s critical date, does not merely bear Kauphusman’s name, it shows he
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`was engaged in the details of designing and ordering customized components for the
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`4
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`April and July 2005 GuideLiner RX prototypes, as well as the August 1, 2005
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`assembly drawing, which the Board already found was “strongly corroborative of an
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`assembled device.” E.g. Ex-2089 at 5, 7 (detailed quote addressed to Kauphusman
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`dated Feb. 11, 2005), 8 (drawing listing Kauphusman dated Feb. 2005); Ex-2092 at
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`5, 8 (drawing sent to MED from Kauphusman in April 2005); Ex-2113 (drawing
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`listing Kauphusman dated Feb. 2005); Ex- 2114 (drawing listing Kauphusman dated
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`June 2005); IPR2020-00126, Paper 129 at 50, Ex-2022 (August 1, 2005 drawing).
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`Medtronic’s suggestion that Kauphusman only performed OTW work is plainly
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`contradicted by these contemporaneous RX documents, as well as the testimony of
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`Root and Sutton. E.g., Ex-2118, ¶¶ 28, 33, 37; Ex-1757, 33:11-15.
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`Petitioner only amplifies its conjecture with regard to Mytty by speculating—
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`with no evidence whatsoever—that she “should provide similar testimony” to the
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`theoretical testimony Petitioner argues Kauphusman would provide. Mot. at 5
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`(emphasis added).
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`Petitioner stretches even further with regard to Welch, alleging that because
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`his lab notebook does not show a GuideLiner entry until 2010, “VSI did not complete
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`critical RX prototype work or reduce its inventions to practice” before Itou. Id. at 6.
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`Petitioner appears to be arguing that because Welch’s lab notebook does not include
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`a GuideLiner entry until 2010, he must not have completed critical reduction to
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`practice work until then. The undisputed facts show otherwise, not the least of which
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`5
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`is that GuideLiner was commercialized in 2009. E.g., Ex-2118, ¶¶ 4, 90; see also
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`Ex-1001; Ex-2118, ¶ 80 (first GuideLiner patent filed in 2006). Moreover, the Board
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`already found in the earlier IPRs that the invention of the GuideLiner patents was
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`conceived and reduced to practice before the critical date. E.g., IPR2020-00126,
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`Paper 129.
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`Petitioner’s arguments based on GuideLiner’s regulatory history also fail.
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`Root testified that because FDA clearance would be faster for OTW, the company
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`originally planned to advance OTW through the regulatory process first, explaining
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`why some 2005-06 lab notebook entries show detailed testing for OTW, but not yet
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`RX. Mot. at 2. Petitioner tries to side-step this testimony with the red herring that
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`“the record contains no evidence that VSI sought regulatory clearance for or
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`commercialized its OTW device.” Id. There is no dispute that Patent Owner later
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`changed course and decided not to seek regulatory approval for OTW, after all. That
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`does not change the historical fact that the company pursued the testing reflected in
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`the notebooks to support its original plan. E.g., Ex-2118, ¶¶ 67-68, 85-87, 94-95;
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`Ex-2099; Ex-2130; Ex-2100.
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`Petitioner argues that “a more plausible explanation for the absence of RX
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`notebook entries . . . is that the key engineering witnesses did not assemble and test
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`RX prototypes until after Itou.” Mot. at 2. “Plausibility” is not a basis for additional
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`discovery. E.g., Garmin at 6. Moreover, Petitioner’s argument is contrary to
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`6
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`overwhelming evidence, the Board’s conclusions in the prior IPRs, and Petitioner’s
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`own expert, who testified that it “doesn’t make a lot of sense” for VSI to have
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`purchased RX GuideLiner components but then not assemble them. E.g., IPR2020-
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`00126, Paper 129 at 46-51; Ex-2118; Ex-2119; Ex-2122; Ex-2237, 208:10-25.
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`Finally, the Board’s Final Written Decisions in the prior IPRs found that
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`Patent Owner had shown both actual and constructive reduction to practice. E.g.,
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`IPR2020-00126, Paper 129 at 46-71. Petitioner’s arguments in the present motion
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`only relate to actual reduction to practice. Nothing in Petitioner’s motion addresses,
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`much less refutes, the ample evidence (and the Board’s earlier finding) of diligence
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`and constructive reduction to practice, which independently establishes that Itou is
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`not prior art. Therefore, not only is the additional discovery Petitioner seeks not in
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`the interests of justice, it is futile.
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`B. Garmin Factor 2: At Most This Factor Is Neutral
`Petitioner states that Garmin factor 2 “weighs in favor of allowing the
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`depositions” because it is not asking for litigation positions. Mot. at 7. Even if
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`Petitioner would not seek litigation positions, that does not mean factor 2 “weighs
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`in favor” of the depositions. At most this factor is neutral. See Garmin at 6.
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`C. Garmin Factor 3: Petitioner Has Substantial Information
`Regarding Reduction to Practice
`Garmin factor 3 asks whether Petitioner has the ability to generate equivalent
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`information by other means. Id. at 6. Petitioner argues that the information it “seeks
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`7
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`is non-public and in only Kauphusman’s, Mytty’s, and Welch’s possession.” Mot.
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`at 7-8. But Patent Owner has not relied on testimony from these individuals to show
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`reduction to practice prior to Itou, and as explained above, it is pure speculation that
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`their depositions would provide anything useful to Petitioner’s cause.
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`Petitioner’s claim that “only Kauphusman, Mytty, and Welch were working
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`on relevant prototypes,” (id. at 8), is plainly contradicted by the record (e.g., Exs-
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`2118, 2119, 2120, 2121, 2122), and the evidence Petitioner provides in support of
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`its theory is misleading. For example, Petitioner states that “Erb’s role was limited
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`to making early components,” (Mot. at 8), when in fact Erb submitted sworn
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`testimony that he “personally was involved in” testing of GuideLiner prototypes and
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`he helped to assemble some of the later, more formal GuideLiner prototypes. E.g.,
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`Ex-2122, ¶¶ 12, 19. Root and Sutton also provided extensive testimony regarding
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`conception and the building and testing of prototypes. E.g., Exs-2118, 2119.
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`Petitioner deposed Root, Sutton, and Erb in the prior IPRs, and Petitioner has noticed
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`the depositions of Root and Erb in the present IPRs, as well. Exs-1756, 1757, 1762.
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`The Board has previously denied similar requests for additional discovery
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`when there already was significant evidence of conception and reduction to practice
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`in the record. Arkema France v. Honeywell Int’l Inc., IPR2015-00915, Paper 35 at
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`4-5 (PTAB Apr. 1, 2016) (finding significant evidence of reduction to practice, and
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`noting that just because the requested deponent authored documents does not mean
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`8
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`that his deposition was necessary). It should do the same here.
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`D. Garmin Factor 4: At Most This Factor Is Neutral
`Garmin Factor 4 asks whether the party seeking additional discovery has
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`provided “easily understandable instructions” and questions. Garmin at 6. Petitioner
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`has not offered the subpoenas it would issue for review. At most this factor is
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`neutral—it does not favor the depositions.
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`E. Garmin Factor 5: The Additional Discovery Would Be a
`Substantial Burden
`Garmin factor 5 asks whether the requested additional discovery would be
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`overly burdensome. Id. at 7. “The burden includes financial burden, burden on
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`human resources, and burden on meeting the time schedule” of IPRs. Id. Petitioner’s
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`rosy view of the burden here entirely ignores the real-world toll these depositions
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`would take on the personal and professional lives of these third parties—and others.
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`These third parties have not worked for Patent Owner for years and did not
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`submit declarations in these matters. Mot. at 9. It would be unquestionably
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`burdensome for them to be pulled away from their current lives and forced to sit for
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`a deposition that is nothing more than a fishing expedition. Moreover, the requested
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`deposition of Kauphusman would extend the burden to yet another third party. Patent
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`Owner understands that Kauphusman is currently employed by Boston Scientific, a
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`licensee to the disputed patents. His deposition may well require the involvement of
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`counsel for Boston Scientific. Thus, a deposition of Kauphusman not only would
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`9
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`impose a significant burden on him personally and professionally, it would impose
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`a burden on his employer, as well.
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`Patent Owner would also bear additional burden. It has already been forced to
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`expend time and resources responding to what it believes to be a baseless request for
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`additional discovery in this already expansive series of IPRs filed by Petitioner. If
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`the Board were to authorize the depositions Petitioner now seeks, Patent Owner
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`would be forced to dedicate even more time and resources to participate in them.
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`Finally, the requested additional discovery would burden the Board’s IPR
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`schedule. Patent Owner filed its Response on May 14, 2021, yet Petitioner waited
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`until July 1, 2021 to file its motion for additional discovery (presumably because it
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`was waiting for the Board’s decision in the first round of IPRs). Petitioner’s Reply
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`in these IPRs is due August 6, 2021. Even if the Board were to grant Petitioner’s
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`motion (it should not), there would be little time to take the depositions of these non-
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`declarant third parties under the current IPR schedule.
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`III. CONCLUSION
`For all of these reasons, Petitioner’s motion should be denied.
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`10
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`Dated: July 9, 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
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`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 July 9, 2021, a true and correct copy of the foregoing
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`Patent Owner’s Opposition to Petitioners’ Motion for Additional Discovery was
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`served via electronic mail upon the 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)
`William E. Manske
`Emily J. Tremblay
`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
`Email: Wmanske@robinskaplan.com
`Email: Etremblay@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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