Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: February 24, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`TELEFLEX LIFE SCEINCES LIMITED,
`Patent Owner.
`
`IPR2020-01344
`Patent RE46,116 E
`
`Before SHERIDAN K. SNEDDEN, JAMES A. TARTAL, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2020-01344
`Patent RE46,116 E
`
`I.
`
`INTRODUCTION
`
`Medtronic, Inc., and Medtronic Vascular, Inc. (“Petitioner”) filed a
`
`Petition pursuant to 35 U.S.C. §§ 311–319 requesting an inter partes review
`
`of claims 25–55 (“the Challenged Claims”) of U.S. Patent No. RE46,116 E
`
`(Ex. 1401, “the ’116 patent”). Paper 1 (“Pet.”). Teleflex Life Sciences
`
`Limited (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`
`Resp.”).
`
`We have authority to determine whether to institute an inter partes
`
`review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter
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`partes review may not be instituted “unless . . . the information presented in
`
`the petition . . . shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the
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`Preliminary Response, and the evidence of record, we conclude that the
`
`information presented shows a reasonable likelihood that Petitioner would
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`prevail in showing the unpatentability of at least one of the Challenged
`
`Claims. Accordingly, we authorize an inter partes review to be instituted as
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`to the Challenged Claims of the ’116 patent on the grounds raised in the
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`Petition. Our factual findings and conclusions at this stage of the proceeding
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`are based on the evidentiary record developed thus far (prior to Patent
`
`Owner’s Response). This is not a final decision as to patentability of claims
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`for which inter partes review is instituted. Any final decision will be based
`
`on the record, as fully developed during trial.
`
`II.
`
`BACKGROUND
`
`A.
`
`The ’116 Patent
`
`The ’116 patent, titled “Coaxial Guide Catheter for Interventional
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`Cardiology Procedures,” issued August 23, 2016, from Application
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`2
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`

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`IPR2020-01344
`Patent RE46,116 E
`
`No. 14/195,435, filed March 3, 2014. Ex. 1401, codes (21), (22), (45), (54).
`
`The ’116 patent is a reissue of U.S. Patent No. 8,292,850 (“the ’850 patent”)
`
`from Application No. 13/359,059 (“the ’059 application”) filed on
`
`January 26, 2012, which the ’116 patent states is a continuation of an
`
`application filed on November 1, 2013 (issued as U.S. Patent
`
`No. RE45,380), which is an application for the reissue of U.S. Patent
`
`No. 8,292,850, which is a division of an application filed on June 28, 2010
`
`(issued as U.S. Patent No. 8,142,413), which is a division of an application
`
`filed on May 3, 2006 (issued as U.S. Patent No. 8,048,032). Id. codes (60),
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`(64). The ’116 patent is directed to “methods and apparatus for increasing
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`backup support for catheters inserted into the coronary arteries from the
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`aorta.” Id. at 1:38–40.
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`The ’116 patent explains, as background, that in “[i]nterventional
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`cardiology procedures,” guidewires or other instruments, such as balloon
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`catheters and stents, are often inserted through guide catheters into coronary
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`arteries that branch off from the aorta. Id. at 1:44–50. In coronary artery
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`disease, “the coronary arteries may be narrowed or occluded by
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`atherosclerotic plaques or other lesions” in a phenomenon known as
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`stenosis. Id. at 1:50–54. In treating the stenosis, “a guide catheter is
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`inserted through the aorta and into the ostium of the coronary artery,”
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`sometimes with the aid of a guidewire, and is passed beyond the occlusion
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`or stenosis. Id. at 1:59–65. However, “[c]rossing tough lesions can create
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`enough backward force to dislodge the guide catheter from the ostium of the
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`artery being treated,” which can make it difficult or impossible for the
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`interventional cardiologist to treat certain forms of coronary artery disease.
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`Id. at 1:66–2:3.
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`3
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`

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`IPR2020-01344
`Patent RE46,116 E
`
`The ’116 patent discusses four categories of previous “attempts to
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`provide support to the guiding catheter to prevent backward dislodgement
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`from the coronary ostium (referred to as ‘backup support’).” Id. at 2:4–7.
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`One category of guiding catheters “are configured to draw backup support
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`from engaging the wall of the aortic arch opposing the ostium of the
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`coronary artery that is being accessed.” Id. at 2:8–11. A second category
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`are “guiding catheters that include a retractable appendage. Id. at 2:25–26.
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`A third category are “guide catheters that have a portion that seeks to expand
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`laterally to grip the interior wall of the ostium.” Id. at 2:36–41. A fourth
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`category, or “technique,” of the prior attempts “includes the placement of a
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`smaller guide catheter within a larger guide catheter in order to provide
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`added support for the crossing of lesions or for the distal delivery of balloons
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`and stents.” Id. at 2:50–53. The ’116 patent states this fourth technique was
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`described in Takahashi,1 which uses a guide catheter inserted “more deeply
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`into the ostium of the coronary artery than typically has been done before.”
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`Id. at 2:53–62. The ’116 patent states that such “deep seating” by this
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`technique “creates the risk that the relatively stiff, fixed curve, guide catheter
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`will damage the coronary artery.” Id. at 2:63–65.
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`The ’116 patent purports to resolve issues identified with the prior
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`procedures by using “a coaxial guide catheter that is deliverable through
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`standard guide catheters by utilizing a guidewire rail segment to permit
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`delivery without blocking use of the guide catheter.” Ex. 1401, 3:20–23.
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`According to the ’116 patent, the coaxial guide catheter “preferably includes
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`a tapered inner catheter that runs over a standard 0.014 inch coronary
`
`
`1 Saeko Takahashi, et al., New Method to Increase a Backup Support
`of a 6 French Guiding Coronary Catheter, 63 CATHETERIZATION AND
`CARDIOVASCULAR INTERVENTIONS 452–456 (2004) (Ex. 1410, “Takahashi”).
`
`4
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`

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`IPR2020-01344
`Patent RE46,116 E
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`guidewire to allow atraumatic placement within the coronary artery,” and
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`this feature allows removal of the tapered inner catheter after the coaxial
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`guide catheter is in place. Id. at 3:23–28.
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`Figures 1 and 2, reproduced below, show a coaxial guide catheter and
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`a tapered inner catheter in accordance with the invention described in
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`the ’116 patent:
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`
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`Figure 1 is a schematic depiction of the coaxial guide catheter and tapered
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`inner catheter separately, and Figure 2 depicts those two elements assembled
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`together. Id. at 5:51–56; Figs. 1 and 2. As shown above, “coaxial guide
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`catheter assembly 10” includes coaxial guide catheter 12 and tapered inner
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`catheter 14. Id. at 6:42–44. Coaxial guide catheter 12 includes tip
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`portion 16, reinforced portion 18, and rigid portion 20. Id. at 6:45–46.
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`Tapered inner catheter 14 “includes tapered inner catheter tip 42.” Id.
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`at 7:26–27. Tapered inner catheter tip 42 includes tapered portion 46 at a
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`distal end thereof, and straight portion 48. Id. at 7:30–31. Both tapered
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`portion 46 and straight portion 48 are pierced by lumen 50 (not labeled in
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`figures above). Id. at 7:31–32. “Tapered inner catheter 14 may also include
`
`5
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`

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`IPR2020-01344
`Patent RE46,116 E
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`clip 54 at a proximal end thereof to releasably join tapered inner catheter 14
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`to coaxial guide catheter 12.” Id. at 7:35–37. “The tapered inner catheter
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`provides a gradual transition from the standard 0.014 inch diameter
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`guidewire to the diameter of the coaxial guide catheter which is typically
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`five to eight French.” Id. at 3:28–31. The coaxial guide catheter is made in
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`at least three sizes corresponding to sizes commonly used in interventional
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`cardiology procedures. Id. at 3:39–42.
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`Figure 4, reproduced below, shows a coaxial guide catheter in
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`accordance with the invention described in the ’116 patent:
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`
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`Figure 4 is a sectional view of the coaxial guide catheter with tip portion 16
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`depicted on the left side of the figure (rather than on the right side as shown
`
`in Figures 1 and 2). Ex. 1401, 5:60; Fig. 4. As shown above, coaxial guide
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`catheter 12 has a rigid portion 20, which “includes first full circumference
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`portion 34, hemicylindrical portion 36, arcuate portion 38, and second full
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`circumference portion 40” (second full circumference portion 40 is shown in
`
`Figure 3). Id. at 7:7–10.
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`In operation, a guide catheter and a guidewire are used along with the
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`coaxial guide catheter and the tapered inner catheter. Ex. 1401, 8:20–22.
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`Figure 8, reproduced below, shows the operation of the coaxial guide
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`6
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`IPR2020-01344
`Patent RE46,116 E
`
`catheter assembly in accordance with the invention described in the ’116
`
`patent:
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`
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`Figure 8 is a schematic view of a guide catheter and a guide wire in use with
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`the coaxial guide catheter assembly within the aortic arch and coronary
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`artery. Id. at 6:5–8; Fig. 8. First, guidewire 64 is inserted and passed
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`through aortic arch 58 into ostium 60 of coronary artery 62. Id. at 7:65–66.
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`Guide catheter 56 is then passed over guidewire 64 until the distal end of
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`guide catheter 56 is seated in ostium 60. Id. at 8:4–6. Next, coaxial guide
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`catheter 12 with tapered inner catheter 14 is passed through guide
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`catheter 56 and over guidewire 64 into coronary artery 62. Id. at 8:22–24.
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`The presence of coaxial guide catheter 12 within guide catheter 56 “provides
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`stiffer back up support than guide catheter 56 alone.” Id. at 8:38–40. “Once
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`the coaxial guide catheter-tapered inner catheter combination has been
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`inserted sufficiently into the ostium of the coronary artery to achieve deep
`
`seating the tapered inner catheter may be removed.” Id. at 4:58–62; see also
`
`id. at 8:30–32. Thereafter, coaxial guide catheter 12 can “accept a treatment
`
`7
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`IPR2020-01344
`Patent RE46,116 E
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`catheter such as a stent or a balloon catheter.” Id. at 8:33–34. “[T]he
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`presence of coaxial guide catheter provides additional backup support to
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`make it less likely that the coaxial guide catheter guide catheter combination
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`will be dislodged from the ostium of the coronary artery while directing the
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`coronary therapeutic device past a tough lesion.” Id. at 5:2–5:6. “[T]he
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`invention is deliverable through an existing hemostatic valve arrangement on
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`a guide catheter without preventing injections through existing Y adapters.”
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`Id. at 5:42–44.
`
`B.
`
`Illustrative Claim
`
`Petitioner challenges claims 25–55 of the ’116 patent. Pet. 1.
`
`Claims 25, 43, 51, and 52 are independent. Ex. 1401, 13:62–14:25, 15:51–
`
`16:15, 16:53–18:10. Claims 26–42 and 44–50 depend from claim 25,
`
`claim 46 depends from claim 43, and claims 53–55 depend from claim 52.
`
`Id. at 14:62–18:26. Claim 25 is illustrative of the claimed subject matter and
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`is reproduced below.
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`25. A method, comprising:
`
`advancing a distal end of a guide catheter having a lumen through
`a main blood vessel to an ostium of a coronary artery;
`advancing a distal end of a guide extension catheter through, and
`beyond the distal end of, the guide catheter, including
`advancing a distal end portion of a tubular structure of the
`guide extension catheter beyond the distal end of the guide
`catheter while a segment defining a side opening of the
`guide extension catheter remains within the guide catheter
`the side opening extending for a distance along a
`longitudinal axis of the guide extension catheter and
`accessible from a longitudinal side defined transverse to
`the longitudinal axis, the tubular structure having a cross-
`sectional inner diameter that is not more than one French
`size smaller than a cross-sectional inner diameter of the
`lumen of the guide catheter;
`
`8
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`

`IPR2020-01344
`Patent RE46,116 E
`
`maintaining the distal end portion of the tubular structure of the
`guide extension catheter in position beyond the distal end
`of the guide catheter; and
`while maintaining the distal end of the guide extension catheter
`positioned beyond the distal end of the guide catheter
`advancing a balloon catheter or stent at least partially
`through the guide catheter and the guide extension catheter
`and into the coronary artery, including advancing the
`balloon catheter or stent through a hemostatic valve
`associated with a proximal end of the guide catheter, along
`a substantially rigid segment of the guide extension
`catheter, through the side opening, and through the tubular
`structure.
`Id. at 13:62–14:25.
`
`C.
`
`Asserted Grounds of Unpatentability
`
`Petitioner asserts that the Challenged Claims are unpatentable based
`
`on the following grounds:
`
`Claim(s)
`Challenged
`
`35
`U.S.C. §
`
`52, 53
`
`25–40, 42, 44–48
`
`45
`
`25–55
`
`45, 46
`
`Pet. 8.
`
`103
`
`103
`
`103
`
`103
`
`103
`
`References/Basis
`
`Kontos,2 Ressemann3
`
`Kontos, Ressemann, Takahashi
`
`Kontos, Ressemann, Takahashi, Kataishi4
`
`Root5
`
`Kontos, Ressemann, Takahashi, Root
`
`
`2 U.S. Patent No. 5,439,445, issued August 8, 1995 (Ex. 1409, “Kontos”).
`3 U.S. Patent No. 7,604,612 B2, issued October 20, 2009 (Ex. 1408,
`“Ressemann”).
`4 US 2005/0015073 A1, published January 20, 2005 (Ex. 1425, “Kataishi”).
`5 US 2007/0260219 A1, published November 8, 2007 (Ex. 1512, “Root”)
`(publication of App. No. 11/416,629 (Ex. 1500), filed May 3, 2006, issued
`as U.S. Patent No. 8,048,032).
`
`9
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`

`

`IPR2020-01344
`Patent RE46,116 E
`
`Petitioner relies on the supporting Declarations of Jon David
`
`Brecker, M.D., dated July 31, 2020 (Ex. 1405), and Richard A. Hillstead,
`
`Ph.D., dated July 30, 2020 (Ex. 1442).
`
`D.
`
`Related Proceedings
`
`The parties identify the ’116 patent as a subject of: (1) Vascular
`
`Solutions LLC, et al. v. Medtronic, Inc., et al., No. 19-cv-01760 (D. Minn.),
`
`and (2) QXMedical, LLC v. Vascular Solutions, LLC, No. 17-cv-01969
`
`(D. Minn.). Pet. 5; Paper 4, 2. Patent Owner states that both of these
`
`district court proceedings are currently stayed. Paper 4, 2. The parties
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`further state that the ’116 patent is a reissue of the ʼ850 patent and that the
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`ʼ850 patent was previously the subject of: (1) Vascular Solutions, Inc. v.
`
`Boston Scientific Corp., No. 13-cv-01172 (D. Minn.), and (2) Boston
`
`Scientific Corp. v. Vascular Solutions, Inc., IPR2014-00762, IPR2014-
`
`00763 (PTAB, terminated). Pet. 5–6.
`
`Petitioner challenges claims 25–40, 42, 44–48, 52, and 53 of the
`
`’116 patent in IPR2020-01343 through another petition filed concurrently
`
`with the Petition in this case, which we address further below. Pet. 6
`
`Additionally, Petitioner identifies the following patents related to
`
`the ’116 patent that are the subject of inter partes review proceedings
`
`initiated by Petitioner: U.S. Patent Nos. 8,048,032 (IPR2020-00126;
`
`IPR2020-00127), RE45,830 (IPR2020-00128; IPR2020-00129; IPR2020-
`
`00130), RE45,760 (IPR2020-00132; IPR2020-00134), RE45,776 (IPR2020-
`
`00135; IPR2020-00136), RE47,379 (IPR2020-00137; IPR2020-00138), and
`
`8,142,413 (IPR2020-01341; IPR2020-01342). Id.
`
`E.
`
`Real Parties in Interest
`
`Petitioner identifies itself and Medtronic Vascular, Inc., as real
`
`parties in interest and notes “Medtronic plc is the ultimate parent of
`
`10
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`

`

`IPR2020-01344
`Patent RE46,116 E
`
`Medtronic, Inc.” Pet. 5. Patent Owner identifies itself, Vascular Solutions
`
`LLC, Arrow International, Inc., and Teleflex LLC as real parties in interest.
`
`Paper 4, 2. Patent Owner also notes “Teleflex Incorporated is the ultimate
`
`parent of the entities listed above.” Id.
`
`III. ANALYSIS
`
`A. Discretionary Denial of the Petition Under 35 U.S.C. § 314(a)
`
`Patent Owner argues we should exercise our discretion
`
`under 35 U.S.C. § 314(a) to deny institution due to the common issues being
`
`litigated in parallel district court cases. Prelim. Resp. 1–8. Patent Owner
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`also argues we should exercise our discretion and deny institution because
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`Petitioner has not justified multiple petitions challenging the ’116 patent. Id.
`
`at 7.
`
`1.
`
`Parallel Litigation
`
`Petitioner and Patent Owner present arguments about our discretion
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`under 35 U.S.C. § 314(a). Pet. 13–14; Prelim. Resp. 5–8. Under 35 U.S.C.
`
`§ 314(a), the Director has discretion to deny institution of an inter partes
`
`review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`
`Patent Office’s discretion.”); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356
`
`(2018) (“[Section] 314(a) invests the Director with discretion on the
`
`question whether to institute review.” (emphasis omitted)); Harmonic v.
`
`Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`
`permitted, but never compelled, to institute an IPR proceeding.”).
`
`In determining whether to exercise discretion to deny institution
`
`under 35 U.S.C. § 314(a), the Board considers an early trial date in related
`
`litigation as part of an assessment of all relevant circumstances of the case,
`
`including the merits, in an effort to balance considerations such as system
`
`11
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`

`

`IPR2020-01344
`Patent RE46,116 E
`
`efficiency, fairness, and patent quality. Apple Inc. v. Fintiv, Inc., IPR2020-
`
`00019, Paper 11, 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”); see
`
`also NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8,
`
`19–20 (PTAB Sept. 12, 2018) (precedential) (denying institution relying, in
`
`part, on § 314(a) because the parallel district court proceeding was
`
`scheduled to finish before the Board reached a final decision).
`
`In considering whether to institute trial when there is a parallel, co-
`
`pending litigation, the Board evaluates the following factors (“Fintiv
`
`factors”):
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`3. investment in the parallel proceeding by the court and the
`parties;
`
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Fintiv, 5–6. In evaluating these factors, “the Board takes a holistic view of
`
`whether efficiency and integrity of the system are best served by denying or
`
`instituting review.” Id. at 6. We have considered the circumstances and
`
`facts before us in view of the Fintiv factors and determine that the
`
`circumstances presented here weigh against exercising discretion under
`
`§ 314(a) to deny institution of inter partes review.
`
`Relevant to Fintiv factors 1 and 2, the parties acknowledge that the
`
`parallel district court proceeding is stayed. Pet. 13; Prelim. Resp. 1;
`
`12
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`

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`IPR2020-01344
`Patent RE46,116 E
`
`Paper 4, 2. The granting of a stay pending inter partes review has weighed
`
`strongly against exercising discretion to deny institution as it is a strong
`
`indication that the district court has a preference to wait for the Board’s final
`
`resolution of the patentability issues raised in the petition before proceeding
`
`with the parallel litigation. See Fintiv at 6–7. Accordingly, consideration of
`
`the first and second Fintiv factors weighs strongly against exercising
`
`discretion to deny institution.
`
`The third Fintiv factor provides that a petitioner’s diligence or delay
`
`in filing a petition may be relevant. See Fintiv at 11–12. If the evidence
`
`shows that a petitioner filed its petition expeditiously, such as promptly after
`
`becoming aware of the claims being asserted, this fact has weighed against
`
`denying institution. See id. at 11 (citing Intel Corp. v. VLSI Tech. LLC,
`
`IPR2019-01192, Paper 15 at 12–13 (PTAB Jan. 9, 2020); Illumina Inc. v.
`
`Natera, Inc., IPR2019-01201, Paper 19 at 8 (PTAB Dec. 18, 2019)). If,
`
`however, the evidence shows that the petitioner did not file its petition
`
`expeditiously, such as at or around the same time that the patent owner
`
`responded to the petitioner’s invalidity contentions, or even if a petitioner
`
`cannot explain the delay in filing its petition, these facts have favored denial.
`
`See Fintiv at 11–12 (citing Next Caller, Inc. v. TRUSTID, Inc., IPR2019-
`
`00961, Paper 10 at 16 (PTAB Oct. 16, 2019)).
`
`Patent Owner states that Petitioner had “knowledge of the ’116 patent
`
`since at least February 2019” and that it “informed Petitioner of its plan to
`
`assert the ’116 patent on January 24, 2020,” three weeks before Patent
`
`Owner filed its Amended Complaint. Prelim. Resp. 5–7. Patent Owner
`
`argues that Petitioner unjustifiably delayed filing the Petition until nine
`
`months after Petitioner filed petitions challenging related patents on similar
`
`art and arguments. Prelim. Resp. 5–6 (identifying the following proceedings
`
`13
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`

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`IPR2020-01344
`Patent RE46,116 E
`
`between the parties in which Kontos, Ressemann, Takahashi, and/or
`
`Kataishi are relied upon by Petitioner: IPR2020-00127 (Kontos and
`
`Takahashi), IPR2020-00129 (Ressemann, Takahashi, and Kataishi),
`
`IPR2020-00130 (Kontos and Takahashi), IPR2020-00131 (Kontos,
`
`Takahashi, and Kataishi), IPR2020-00133 (Ressemann, Takahashi, and
`
`Kataishi), IPR2020-00136 (Kontos, Ressemann, Takahashi, and Kataishi),
`
`IPR2020-00138 (Ressemann, Takahashi, and Kataishi)). Patent Owner
`
`argues that Petitioner’s “unjustified delay” in filing the Petition prejudices
`
`Patent Owner. Prelim. Resp. 7. In particular, Patent Owner contends as
`
`follows:
`
`Petitioner has already relied on the present IPR petitions as a
`basis to seek an unprecedented extension of the one year
`statutory deadline in the eleven pending IPRs, even though it
`expressly and repeatedly relied on that one year deadline to
`convince the district court to stay the litigation. See, e.g.,
`IPR20[20]-00126, Paper Nos. 56 and 61. If the present IPR
`petitions are granted, Petitioner will undoubtedly continue such
`delay tactics, such as by asking the district court to maintain the
`stay as to all patents in view of the present Petition.
`
`Prelim. Resp. 7–8.
`
`
`
`Petitioner explains the 9-month difference in its filing of the current
`
`Petition by noting as follows:
`
`When Petitioner filed IPR Petitions against related patents in
`Fall 2019, Patent Owner had not yet asserted the ʼ116 patent. As
`a result, Petitioner did not file an IPR at that time. Then, on
`February 14, 2020, Patent Owner filed an Amended Complaint
`asserting the ʼ116 patent. Ex-1514. Thereafter, Petitioner
`diligently prepared its IPRs and filed this Petition roughly five
`months later and more than seven months before the statutory
`deadline.
`
`Pet. 14.
`
`14
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`

`

`IPR2020-01344
`Patent RE46,116 E
`
`We determine the evidence does not support a finding that the Petition
`
`was filed with delay. Rather, the filing of the Petition was timely and in
`
`response to Patent Owner’s Amended Complaint adding the ʼ116 patent to
`
`the related litigation. We further find unsupported and not persuasive Patent
`
`Owner’s argument that “because Petitioner buried Itou and the other prior art
`
`it intended to rely on in its August 2019 discovery response,” it was
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`Petitioner’s fault Patent Owner amended its complaint to add the ’116 patent
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`when it did. Prelim. Resp. 6–7. No persuasive evidence suggests Petitioner
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`bears responsibility for Patent Owner’s knowledge of relevant prior art or for
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`Patent Owner’s determination of whether and when to amend its complaint.
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`With respect to Fintiv Factor 4 (overlap of issues) and Fintiv Factor 5
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`(whether the same parties are involved), we find there is an overlap of issues
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`and parties between the district court case and this proceeding. In Fintiv, the
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`Board noted “if the petition includes the same or substantially the same
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`claims, grounds, arguments, and evidence as presented in the parallel
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`proceeding, this fact has favored denial.” Fintiv, 12. In this case, however,
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`any concerns about inefficiency and the possibility of conflicting decisions
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`may be mitigated by the fact that the district court has stayed the parallel
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`litigation and thus will not reach the merits of Petitioner’s invalidity
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`defenses before we issue our final written decision.
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`Furthermore, the district court’s stay of the litigation pending denial
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`of institution or a final written decision allays concerns about inefficiency
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`and duplication of efforts. Id. To the contrary, exercising our discretion to
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`deny the Petition would force inefficiency and the possibility of conflicting
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`decisions because the district court would then have to resolve similar and
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`overlapping issues presented in the context of only the ’116 patent, one of
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`IPR2020-01344
`Patent RE46,116 E
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`several related patents being asserted by Patent Owner in the related
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`litigation.
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`Finally, under Fintiv Factor 6, we have taken into account the merits
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`of Petitioner’s challenges, as discussed below, and find this factor favors
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`institution. Balancing all of the Fintiv factors, on this record, we determine
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`the circumstances presented here weigh against exercising discretion under
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`§ 314(a) to deny institution of inter partes review.
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`2. Multiple Petitions
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`Petitioner challenges claims 25–40, 42, 44–48, 52, and 53 of the
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`’116 patent in IPR2020-01343 through another petition filed concurrently
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`with the Petition in this case. Pet. 6. In accordance with our Trial Practice
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`Guide, Petitioner provides an explanation of material differences between
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`the two petitions and seeks consideration of the petition in IPR2020-01343
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`prior to the Petition in this case. Paper 3. The petition in IPR2020-01343
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`relies on Ressemann, Itou,6 and Kataishi as the asserted prior art.
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`Concurrent with this Decision we enter a decision instituting inter partes
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`review in IPR2020-01343.
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`Patent Owner argues the Petition in this case “is merely a ‘backup’”
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`that gives Petitioner “another bite at the apple,” which compounds the
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`“inefficiency and unfairness that will result if any of Petitioner’s petitions
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`are instituted.” Prelim Resp. 7. Patent Owner further argues Petitioner
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`“made a deliberate choice . . . to rely on a §102(e) reference that Petitioner
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`knew was not prior art.” Id.
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`The Board’s Trial Practice Guide addresses the situation where there
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`are parallel petitions challenging the same patent, as here, and notes “[t]wo
`
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`6 U.S. Patent No. 7,736,355 B2, issued June 15, 2010 (Ex. 1407, “Itou”).
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`IPR2020-01344
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`or more petitions filed against the same patent at or about the same time
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`(e.g., before the first preliminary response by the patent owner) may place a
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`substantial and unnecessary burden on the Board and the patent owner and
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`could raise fairness, timing, and efficiency concerns” and that “multiple
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`petitions by a petitioner are not necessary in the vast majority of cases.”
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`Patent Trial and Appeal Board Consolidated Trial Practice Guide
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`(“Consolidated Practice Guide”) (Nov. 2019) 59; see also 84 Fed.
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`Reg. 64,280 (Nov. 21, 2019). “Nonetheless, the Board recognizes that there
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`may be circumstances in which more than one petition may be necessary,
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`including, for example, when the patent owner has asserted a large number
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`of claims in litigation or when there is a dispute about priority date requiring
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`arguments under multiple prior art references.” Id.
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`Petitioner states that Itou is the primary reference in IPR2020-01343
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`and that “Petitioner[] anticipate[s] that Patent Owner may allege that the
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`’116 Patent inventors conceived of and reduced to practice the underlying
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`invention” prior to the priority date of Itou. Paper 3, 2. Petitioner argues the
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`Board previously instituted inter partes review of a related patent in
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`proceedings between the parties based on two petitions in IPR2020-00135
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`and IPR2020-00136 under the same circumstances presented in this
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`proceeding. Id. at 2–3. Petitioner argues “two petitions are justified” for the
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`same reasons here, including because of the length and number of claims
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`asserted by Patent Owner in district court. Id. at 4–5.
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`We have considered the respective arguments of the parties and
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`determine the circumstances in this case support declining to exercise our
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`discretion under § 314(a) to deny the Petition for substantially the same
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`reasons set forth in IPR2020-00136. In that case, the Board declined to deny
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`institution of a second petition between the parties, explaining as follows:
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`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 here as an alternative basis for
`unpatentability.
` Indeed,
`this
`is precisely one of
`the
`circumstances recognized in our Trial Practice Guide “in which
`more than one petition may be necessary.” Consolidated Practice
`Guide at 59.
`Moreover, we find that the challenges presented in the two
`petitions are not excessive or duplicative. Although Petitioner
`challenges the same claims in each petition, the prior art and
`issues to be decided do not significantly overlap with each other.
`For instance, the obviousness challenges presented here require
`an assessment of the motivation to combine the teachings of
`Kontos and Ressemann, reasonable expectation of success, and
`secondary considerations that are not relevant to the anticipation
`challenge presented in [the related case challenging the same
`patent]. And although there were also obviousness challenges
`presented in the first petition that relied upon Ressemann or
`Kataishi for certain additional claims, the manner in which those
`references are relied upon in combination with Kontos in this
`second Petition is different. Finally, given the number and length
`of the 26 challenged claims (including 3 independent claims),
`which are all potentially the basis for Patent Owner’s
`infringement allegations in the parallel litigation, and the
`complexity of the arguments that have been raised by both parties
`for each challenge, we determine that it was appropriate for
`Petitioner to rely upon multiple petitions for its alternative
`challenges in light of the word count limits for each petition.
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`Medtronic, Inc. and Medtronic Vascular, Inc. v. Teleflex Innovations
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`S.À.R.L., IPR2020-00136, Paper 20, 39–40 (PTAB June 26, 2020).
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`Accordingly, for the same reasons, we decline to exercise our discretion
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`under § 314(a) in this proceeding to deny institution based on the multiple
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`petitions challenging the ’116 patent.
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`B.
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`Legal Standards
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`A claim is anticipated if a single prior art reference either expressly or
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`inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
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`Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). “A single prior art reference
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`may anticipate without disclosing a feature of the claimed invention if
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`such feature is necessarily present, or inherent, in that reference.”
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`Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014) (citing
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`Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).
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`A patent claim is unpatentable under 35 U.S.C. § 1037 if the
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`differences between the claimed subject matter and the prior art are such
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`that the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which
`
`said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`406 (2007). In Graham v. John Deere Co., 383 U.S. 1 (1966), the
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`Supreme Court set out a framework for assessing obviousness under § 103
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`that requires consideration of four factors: (1) the “level of ordinary skill
`
`in the pertinent art,” (2) the “scope and content of the prior art,” (3) the
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`“differences bet