`Tel: 571-272-7822
`
`
`
`
`
`
`Paper: 67
`Entered: November 3, 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.
`
`
`
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`
`
`
`Before SHERIDAN K. SNEDDEN, JAMES A. TARTAL, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.1
`
`PAULRAJ, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5
`
`
`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 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`
`
`In a prior set of cases, IPR2020-00126, -00127, -00128, -00129, -
`00130, -00132, -00134, -00135, -00136, -00137, and -00138, the Board
`issued final written decisions addressing the patentability of the claims of
`certain patents that are related to the challenged patents in these proceedings.
`In those prior decisions, the Board resolved the issue of whether U.S. Patent
`No. 7,736,355 B2 (“Itou”) qualified as prior art to the previously challenged
`patents (with the same priority date as the currently challenged patents), as
`well as patentability arguments based on other prior art references also at
`issue in the current proceedings. See, e.g., IPR2020-00126, Paper 127
`(determining that Itou did not qualify as prior art based on Patent Owner’s
`showing of prior conception and reduction to practice); IPR2020-00127,
`Paper 105 (addressing patentability arguments based on Kontos and Adams
`references, and Patent Owner’s secondary considerations arguments).
`The Board is interested in further briefing from the parties on the issue
`of whether the doctrine of collateral estoppel or issue preclusion applies to
`any issues that were previously addressed by the Board in the earlier set of
`related cases, including in particular the Board’s prior resolution of the
`conception/reduction to practice issue raised by Patent Owner and whether
`Itou qualifies as prior art. See Papst Licensing GMBH & Co. KG v.
`Samsung Elecs. Am., Inc., 924 F.3d 1243, 1251 (Fed. Cir. 2019) (holding
`that the issue preclusion doctrine can apply to prior Board decisions that
`have become final); MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373,
`1376 (Fed. Cir. 2018) (same).
`
`
`
`2
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`
`
`Accordingly, it is hereby:
`ORDERED that Petitioner and Patent Owner shall each
`simultaneously file a brief addressing the applicability of the collateral
`estoppel/issue preclusion doctrine to any issues to be addressed by the Board
`in these proceedings; such a brief shall be no longer than 10 pages in length
`and due no later than the close of business on November 12, 2021;
`FURTHER ORDERED that Petitioner and Patent Owner shall each
`file a responsive brief addressing the other party’s briefs on collateral
`estoppel/issue preclusion; such a responsive brief shall be no longer than 5
`pages in length and due no later than the close of business on November 17,
`2021;
`
`FURTHER ORDERED that no additional evidence shall be filed with
`the briefs authorized by this Order.
`
`
`
`3
`
`
`
`IPR2020-01341 (Patent 8,142,413 B2)
`IPR2020-01342 (Patent 8,142,413 B2)
`IPR2020-01343 (Patent RE46,116 E)
`IPR2020-01344 (Patent RE46,116 E)
`
`For PETITIONER:
`
`Cyrus Morton
`Sharon Roberg-Perez
`Christopher Pinhas
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`sroberg-perez@robinskaplan.com
`cpinhas@robinskaplan.com
`
`
`For PATENT OWNER:
`
`Derek Vandenburgh
`Dennis Bremer
`Meghan Christner
`Shelleaha Jonas
`CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.C.
`dvandenburgh@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`mchristner@carlsoncaspers.com
`sjonas@carlsoncaspers.com
`
`
`4
`
`
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