UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
`
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.
`
`Patent Owner
`
`_____________________________
`
`Cases IPR2020-01344
`U.S. Patent No. RE46,116
`______________________________
`
`PETITIONERS’ EXPLANATION OF MATERIAL DIFFERENCES
`BETWEEN PETITIONS AND PETITION RANKING FOR
`U.S. PATENT NO. RE46,116
`
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.
`
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.À.R.L.
`
`Patent Owner
`
`_____________________________
`
`Cases IPR2020-01344
`U.S. Patent No. RE46,116
`______________________________
`
`PETITIONERS’ EXPLANATION OF MATERIAL DIFFERENCES
`BETWEEN PETITIONS AND PETITION RANKING FOR
`U.S. PATENT NO. RE46,116
`
`
`
`IPR2020-01344
`Patent RE46,116
`Medtronic, Inc. and Medtronic Vascular, Inc. (“Petitioners”) filed two
`
`petitions for inter partes review against U.S. Pat. No. RE46,116 (“the ’116
`
`Patent”). Petitioners ask the Board to consider and institute both petitions.
`
`1. Priority date disputes warrant two petitions.
`
`The Board’s Consolidated Trial Practice Guide provides that “more than one
`
`petition may be necessary” when, as here, “there is a dispute about priority date
`
`requiring arguments under multiple prior art references.” Consolidated Trial
`
`Practice Guide (Nov. 2019) at 59.1 Petitioners filed two petitions, advancing
`
`arguments under multiple prior art references, to address two priority date disputes.
`
`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.
`
`1 https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
`
`1
`
`
`
`IPR2020-01344
`Patent RE46,116
`First, the petitions rely on different primary references to cover an
`
`anticipated swear-behind dispute. The ʼ116 Patent claims priority to U.S. Pat. No.
`
`8,048,032, which, on its face, is entitled to a priority date of May 3, 2006. (Ex-
`
`1401.) Petition 1 asserts Itou as its primary reference (filed September 23, 2005).
`
`(Ex-1407.) But Petitioners anticipate that Patent Owner may allege that the ’116
`
`Patent inventors conceived of and reduced to practice the underlying invention
`
`earlier than September 23, 2005. (Ex-1484.) So Petitioners filed Petition 2 to
`
`challenge the same claims but asserting Kontos as the primary reference. Kontos
`
`issued on August 8, 1995. (Ex-1409.) Patent Owner may try to swear behind Itou;
`
`it cannot swear behind Kontos. Each petition presents unique, non-duplicative
`
`challenges in response to a priority date dispute.
`
`In addition, Petition 2 advances a unique argument related to a second
`
`priority date dispute. With the Kontos grounds, Petitioners contend that the
`
`challenged claims are not entitled to claim priority to May 2006, based on a lack of
`
`written description support, and incorporate an intervening art argument unique to
`
`Petition 2. See Petition 2 at Sections X-XII. This priority date dispute is separate
`
`from, and in addition to, the Itou swear-behind dispute.
`
`The Board has already instituted two petitions challenging a related patent
`
`based on the Itou swear-behind dispute. See IPR2020-00135, Paper 22; IPR2020-
`
`00136, Paper 20. The ’135 petition asserted grounds based on Itou; the ’136
`
`2
`
`
`
`IPR2020-01344
`Patent RE46,116
`petition asserted grounds based on Kontos. See, e.g., IPR2020-00136, Paper 20 at
`
`37. The Board determined that two petitions were justified because of the potential
`
`swear-behind issue: “Given the possibility that we may determine that Itou does
`
`not qualify as prior art after fully considering Patent Owner’s priority date
`
`arguments, we determine that Petitioner provides a sufficient explanation as to why
`
`it was necessary to rely upon the obviousness challenges presented [in the second
`
`petition] as an alternative basis for unpatentability. Indeed, this is precisely one of
`
`the circumstances . . . in which more than one petition may be necessary.” Id. at
`
`39. Petitioners were entitled to rely on Itou as prior art and protect against a
`
`potential swear behind with Kontos. Id. Further, the Board determined that the
`
`petitions presented unique, non-duplicative challenges—“the prior art and issues to
`
`be decided do not significantly overlap with each other.” Id. at 40.
`
`For these exact reasons, two petitions are justified here. As in the ’135 and
`
`’136 proceedings, Petitioners rely on Itou in their first petition and on Kontos in
`
`their second, because of a priority date dispute that will determine whether Itou is
`
`prior art.
`
`The Board’s decision in Microsoft Corp. v. IPA Technologies, Inc., is also
`
`instructive. IPR2019-00810, Paper 12 (PTAB Oct. 16, 2019). There, as here, the
`
`Patent Owner raised a priority date issue necessitating “arguments under multiple
`
`prior art references.” Id. at 15. There, the priority date dispute concerned a prior art
`
`3
`
`
`
`IPR2020-01344
`Patent RE46,116
`reference. Here, the priority date disputes are more fundamental, relating to the
`
`challenged patent. Were the Board to deny institution of Petition 2 under
`
`§ 314(a)—and were Patent Owner to successfully swear behind Itou—the decision
`
`would prejudice Petitioners. Thus, the Board should consider and institute Petition
`
`1 and Petition 2.
`
`2. The length and number of challenged claims warrant two petitions.
`
`Petitioners challenge claims 25-40, 42, 44-48, 52, and 53 of the ’116 Patent
`
`in Petition 1 and claims 25-55 in Petition 2. Reciting the challenged claims
`
`requires nearly 1500 words, which additionally warrants two petitions.
`
`Petitioners must challenge these claims to preserve their right to do so in the
`
`event that Patent Owner asserts them in litigation.2 Here, Patent Owner has, to
`
`date, asserted only one claim of the ’116 Patent against Petitioners. But Patent
`
`Owner may assert additional claims later by seeking to amend its infringement
`
`contentions (Ex-1118). More significantly, it may assert additional claims against
`
`Petitioners in a second case, against a new product. Petitioners will not have the
`
`opportunity to challenge additional claims later if their one-year period to do so—
`
`triggered by the pending litigation—expires before then. See 35 U.S.C. § 315(b).
`
`The Board strictly enforces its one-year time bar to petition for IPR. See, e.g.,
`
`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.
`
`4
`
`
`
`IPR2020-01344
`Patent RE46,116
`Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1330 (Fed. Cir. 2018)
`
`(“Simply put, § 315(b)’s time bar is implicated once a party receives notice
`
`through official delivery of a complaint in a civil action, irrespective of subsequent
`
`events.”). Indeed, the Federal Circuit has encouraged petitioners to challenge
`
`“hundreds of claims” to “ensure that their IPRs will challenge each of the
`
`eventually asserted claims.” Facebook, Inc. v. Windy City Innovations, LLC, 953
`
`F.3d 1313, 1327 (Fed. Cir. 2020).
`
`Here, Petitioners cannot fit their arguments covering 31 claims into a single
`
`petition. Especially considering that Petitioners intend to address two priority date
`
`disputes, as discussed above.
`
`3. The Board should consider and institute both petitions, beginning
`with Petition 1 and then Petition 2.
`
`Petitioners respectfully request consideration and institution of both Petition
`
`1 and Petition 2. Petitioners request that the Board consider its petitions in the
`
`following order: Petition 1 (IPR2020-01343), followed by Petition 2 (IPR2020-
`
`01344).
`
`5
`
`
`
`IPR2020-01344
`Patent RE46,116
`
`RESPECTFULLY SUBMITTED,
`
`ROBINS KAPLAN LLP
`
`
`Date: July 31, 2020
`800 LaSalle Ave, Suite 2800
`Minneapolis, MN 55402
`612.349.8500
`
`
`
`
`
`
`
`
`
`
`
`
`/ Cyrus A. Morton /
`Cyrus A. Morton
`
`Attorney for Petitioners
`Medtronic, Inc. and
`Medtronic Vascular, Inc.
`
`
`
`6
`
`
`
`IPR2020-01344
`Patent RE46,116
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that PETITIONERS’ EXPLANATION OF
`
`
`
`
`MATERIAL DIFFERENCES BETWEEN PETITIONS AND PETITION
`
`RANKING FOR U.S. PATENT NO. RE46,116 was served on July 31, 2020, by
`
`Federal Express mail to the USPTO correspondence address of record listed below:
`
`Paul Onderick
`PATTERSON THUENTE PEDERSEN, P.A.
`80 South 8th Street
`4800 IDS Center
`Minneapolis, MN 55402-2100
`
`Courtesy copies were also sent to IPR counsel in the related proceedings at
`
`the following email addresses:
`
`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
`
`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
`
`/ Cyrus A. Morton /
`
`Cyrus A. Morton
`Registration No. 44,954
`Robins Kaplan LLP
`cmorton@robinskaplan.com
`
`7
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`
`
`
`
`
`
`
`
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