`Tel: 571-272-7822
`
`
`
`
`Paper 41
`Entered: July 21, 2021
`
`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.
`_______________
`
`Case IPR2020-01341 (Patent 8,142,413)
`Case IPR2020-01343 (Patent RE 46,116)1
`_______________
`
`
`Before SHERIDAN K. SNEDDEN and CHRISTOPHER G. PAULRAJ,
`Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Motion for Additional Discovery
`37 C.F.R. §§ 42.5, 42.51
`
`
`
`
`
`1 This Order addresses issues that are identical in each of the
`above-captioned proceedings. We therefore exercise our discretion to issue
`one Order to be filed in each proceeding. The proceedings have not been
`consolidated, and the Parties are not authorized to use this style heading in
`any subsequent papers.
`
`
`
`IPR2020-01341 (Patent 8,142,413)
`IPR2020-01343 (Patent RE 46,116)
`
`I. INTRODUCTION
`With our authorization, Petitioner filed a Motion for Additional
`Discovery (Paper 36,2 “Motion” or “Mot.”) in the instant proceedings, and
`Patent Owner filed an Opposition (Paper 40, “Opp.”). For the reasons stated
`below, Petitioner’s Motion is denied.
`
`II. DISCUSSION
`A party in a contested case may apply to a United States District
`Court for a subpoena to compel testimony. 35 U.S.C. § 24. A party seeking
`to compel testimony must first obtain authorization from the Board. 37
`C.F.R. § 42.52(a). “[I]n inter partes review, discovery is limited as
`compared to that available in district court litigation.” Garmin Int’l, Inc. v.
`Cuozzo Speed Tech. LLC, IPR2012-00001, Paper 26, 5 (PTAB Mar. 5,
`2013) (informative). Additional discovery must be “necessary in the interest
`of justice.” 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2). In determining
`whether additional discovery in an inter partes review proceeding is
`necessary in the interest of justice, the Board considers the following factors:
`(1) the request is based on more than a mere possibility of finding something
`useful; (2) the request does not seek the litigation positions of the other
`party; (3) the information is not reasonably available through other means;
`(4) the request is easily understandable; and (5) the request is not overly
`burdensome to answer. Garmin, Paper 26 at 6–7.
`In its Motion, Petitioner requests additional discovery in the form of
`cross-examination of “three non-party witnesses: Jim Kauphusman, a former
`
`
`2 Redacted public version available at Paper 37.
`
`2
`
`
`
`IPR2020-01341 (Patent 8,142,413)
`IPR2020-01343 (Patent RE 46,116)
`
`VSI engineer; Katie Mytty, a former VSI technician; and Jeff Welch, a
`named inventor on the patents-in-suit and former VSI employee.” Mot. 2.
`Petitioner contends, “Kauphusman, Mytty, and Welch have unique, first-
`hand knowledge of whether VSI reduced the claimed inventions to practice
`via assembly and testing of GuideLiner RX prototypes” and that the record
`contains sufficient evidence “tending to show beyond speculation that
`Kauphusman, Mytty, and Welch will testify they did not build or test RX
`prototypes during the relevant period.” Id. at 2–3. More specifically,
`Petitioner contends,
`
`Kauphusman, Mytty, and Welch led RX engineering efforts and
`assembled and
`tested GuideLiner prototypes. But
`their
`laboratory notebooks reveal that at most, they performed only
`OTW work during the relevant period. Thus, Petitioner has
`evidence tending to show beyond speculation that Kauphusman,
`Mytty, and Welch will testify they did not build or test RX
`prototypes during the relevant period.
`Id. at 3–4.
`Specific to the cross-examination of Mr. Kauphusman, Petitioner
`contends,
`
`Kauphusman led critical engineering and prototype work, but the
`evidence more than suggests that Kauphusman did not perform
`that work during the relevant period. Kauphusman’s laboratory
`notebook shows that he worked on only OTW prototypes in 2005
`and 2006. Ex-1760, 86-87, 91-93 (300-centimeter, 0.014”
`guidewire indicating OTW, not RX, prototype). And a VSI
`“Special Work Order Number Assignment Log” shows that in
`December 2005, VSI cancelled and could not complete
`GuideLiner design verification testing, due to a “design change.”
`Ex-1768, 14. “Jim K.”—Kauphusman—requested that work and
`then cancelled it. This evidence more than suggests that he will
`
`3
`
`
`
`IPR2020-01341 (Patent 8,142,413)
`IPR2020-01343 (Patent RE 46,116)
`
`
`have information regarding why VSI could not complete that
`work.
`Mot. 6.
`Regarding the cross-examination of Mr. Mytty, Petitioner contends
`that Mytty worked alongside Kauphusman and that
`
`Sutton identified Mytty as one of the “main individuals working
`with Mr. Kauphusman on the RX version.” Ex-1757, 33:23-34:6.
`Yet Mytty’s two laboratory notebooks indicate that she worked
`on only OTW prototypes in 2005 and 2006. Ex-1761, 107-13;
`Ex-1774, 10-12.
`Mot. 6.
`Regarding the cross-examination of Mr. Welsh, Petitioner contends
`that Mr. Welch’s notebook only shows notes related to GuideLiner dated in
`2010 (Mot. 7 (citing Ex-1758, 12-14), which is in contrast to Patent Owner’s
`contention that Mr. Welch built and tested relevant RX prototypes within the
`relevant timeframe (Mot. 7 (citing Ex. 2118, ¶ 15; Ex. 1756, 62:3–63:20,
`67:20–69:11).
`We are not persuaded that Petitioner has shown a basis for granting its
`request to obtain subpoenas from the district court to compel the requested
`testimony. Rather, for the reasons stated in Patent Owner’s Opposition at
`pages 3 to 8, which we adopt as our own, Petitioner has not demonstrated a
`sufficient showing that there is more than a mere possibility that the
`requested testimony will be useful to our determination of the patentability
`of the challenged claims. In particular, we agree with Patent Owner that
`
`lab notebooks or other
`individuals’
`these
`in
`Nothing
`documentation negates the ample evidence showing that the
`inventors and others reduced the invention to practice before
`Itou. Indeed, as the Board already found, “more detailed
`evidence with regard to the OTW GuideLiner . . . [does not]
`
`4
`
`
`
`IPR2020-01341 (Patent 8,142,413)
`IPR2020-01343 (Patent RE 46,116)
`
`
`detract[] from or otherwise contradict[] the evidence presented
`for the RX GuideLiner.” E.g. IPR2020-00126, Paper 129 at 49.
`Petitioner presents no evidence that Kauphusman, Welch, and
`Mytty “do not remember working on RX prototypes in 2005-
`2006.” Mot. at 4–8.
`Opp. 4. For example,
`
`The documentation Petitioner acknowledges, dated well-before
`Itou’s critical date, does not merely bear Kauphusman’s name, it
`shows he was engaged in the details of designing and ordering
`customized components for the April and July 2005 GuideLiner
`RX prototypes, as well as the August 1, 2005 assembly drawing,
`which the Board already found was “strongly corroborative of an
`assembled device.” E.g. Ex-2089 at 5, 7 (detailed quote
`addressed to Kauphusman dated Feb. 11, 2005), 8 (drawing
`listing Kauphusman dated Feb. 2005); Ex-2092 at 5, 8 (drawing
`sent to MED from Kauphusman in April 2005); Ex-2113
`(drawing listing Kauphusman dated Feb. 2005); Ex-2114
`(drawing listing Kauphusman dated June 2005); IPR2020-
`00126, Paper 129 at 50, Ex-2022 (August 1, 2005 drawing).
`Medtronic’s suggestion that Kauphusman only performed OTW
`work is plainly contradicted by these contemporaneous RX
`documents, as well as the testimony of Root and Sutton. E.g.,
`Ex-2118, ¶¶ 28, 33, 37; Ex-1757, 33:11-15.
`Opp. 4–5.
`Furthermore, we note that Patent Owner has not relied on testimony
`from these individuals to show reduction to practice prior to Itou, and agree
`that Petitioner only relies upon speculation that their depositions would be
`useful to our determination of the patentability of the challenged claims.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion for Additional Discovery is
`denied.
`
`5
`
`
`
`IPR2020-01341 (Patent 8,142,413)
`IPR2020-01343 (Patent RE 46,116)
`
`PETITIONER:
`
`Cyrus A. Morton
`Sharon Roberg-Perez
`Christopher A. Pinahs
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`sroberg-perez@robinskaplan.com
`cpinahs@robinskaplan.com
`
`
`PATENT OWNER:
`
`J. Derek Vandenburgh
`Dennis C. Bremer
`Megan E. Christner
`Shelleaha L. Jonas
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
`dvandenburgh@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`mchristner@carlsoncaspers.com
`sjonas@carlsoncaspers.com
`
`
`
`6
`
`