Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 54
`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
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. §§ 42.5, 42.70
`
`
`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.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 54
`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
`
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. §§ 42.5, 42.70
`
`
`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)
`
`
`I. ORAL ARGUMENT
`Petitioner and Patent Owner both request oral argument. Paper 69
`(Patent Owner’s Request); Paper 70 (Petitioner’s Request).2 The parties’
`requests for oral argument are granted. Oral argument will commence at
`1:00 PM ET on November 18, 2021, by video, and will follow the format
`discussed below.3 The Board will provide a court reporter for the hearing,
`and the reporter’s transcript will constitute the official record of the hearing.
`
`A. Time and Format of the Hearing
`In their requests, the parties disagree as to how much time should be
`allotted between the patentability issues and conception and reduction to
`practice issues disputed by the parties during the course of this proceeding.
`Specifically, in each of the above-captioned cases, the parties address
`unpatentability under 35 U.S.C. § 102 and/or § 103. In IPR2020-01341 and
`IPR2020-01343, Patent Owner argues that the subject matter of the
`challenged claims was conceived and reduced to practice prior to the
`September 23, 2005, effective filing date of U.S. Patent No. 7,736,355
`(“Itou”), thereby removing this reference as prior art under 35 U.S.C. § 102.
`Paper 24, 17–37.
`In its Request, Petitioner “requests a total of five hours for a one-day
`hearing to be evenly split per side to address: (1) the consolidated
`
`
`2 For convenience, we cite to Papers and Exhibits filed in IPR2020-00141.
`Similar Papers and Exhibits were filed in each of the above-captioned cases.
`3 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least ten (10) business
`days before the hearing date.
`
`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)
`
`conception and reduction to practice issues for the patents challenged in
`IPR2020-01341, and -01343; and (2) the instituted grounds of invalidity in
`all four instituted IPRs in IPR2020-01341, -01342, -01343, and -01344.”
`Paper 70, 1.
`Patent Owner requests 30 minutes of argument time per side to
`address the conception and reduction to practice issues and additionally 45
`minutes per side to address unpatentability under 35 U.S.C. § 102 and/or
`§ 103. Paper 69, 1.
`
`Upon review of the record and the parties’ requests, we grant each
`party a total of 90 minutes to present argument during the hearing, those 90
`minutes to be allocated between the conception and reduction to practice
`issues and other issues briefed by the parties during the course of the
`proceeding according to the following schedule:4
`Issue
`Petitioner
`Conception/RTP
`30 mins
`Other issues raised by
`60 mins
`the parties
`
`For the issues of conception and reduction to practice, Patent Owner
`will open by presenting its case regarding these issues. Thereafter,
`Petitioner will respond to Patent Owner’s arguments. As the opening party,
`Patent Owner may reserve rebuttal time and Petitioner may, in accordance
`
`Patent Owner
`30 mins
`60 mins
`
`
`4 The panel contemplates taking a short break after each issue is argued.
`
`
`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)
`
`with the Consolidated Trial Practice Guide, request to reserve time for a
`brief sur-rebuttal. See CTPG 83.
`For the remaining issues, Petitioner will open by presenting its case
`regarding the challenged claims for which the Board instituted trial.
`Thereafter, Patent Owner will respond to Petitioner’s arguments. As the
`opening party, Petitioner may reserve rebuttal time and Patent Owner may,
`in accordance with the Consolidated Trial Practice Guide, request to reserve
`time for a brief sur-rebuttal.
`The parties may request a pre-hearing conference in advance of the
`hearing. See id. at 82. “The purpose of the pre-hearing conference is to
`afford the parties the opportunity to preview (but not argue) the issues to be
`discussed at the oral hearing, and to seek the Board’s guidance as to
`particular issues that the panel would like addressed by the parties.” Id. If
`either party desires a pre-hearing conference, the parties should jointly
`contact the Board at Trials@uspto.gov at least seven (7) business days
`before the hearing date to request a conference call for that purpose.
`
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`opposing counsel at least seven (7) business days before the hearing date and
`filed at least two days before the hearing.5 Additionally, in regard to filing
`demonstrative exhibits, and in contrast to what is expressly stated in
`
`5 The parties may stipulate to an alternative schedule for serving and filing
`demonstratives, and request that the Board modify the schedule for filing
`and serving demonstratives at least seven (7) business days before the
`hearing date.
`
`4
`
`
`
`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)
`
`§ 42.70(b), the parties shall file the demonstrative exhibits no later than two
`business days before the hearing to allow the panel sufficient time to review
`the materials.
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives also are not evidence, and will not be relied upon as
`evidence. Rather, demonstratives are visual aids to a party’s oral
`presentation regarding arguments and evidence previously presented and
`discussed in the papers. Accordingly, demonstratives shall be clearly
`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
`1369 (Fed. Cir. 2018) (holding that the Board is obligated under its own
`regulations to dismiss untimely argument “raised for the first time during
`oral argument”). “[N]o new evidence may be presented at the oral
`argument.” CTPG 85-86; see also St. Jude Med., Cardiology Div., Inc. v.
`The Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65, 2–3
`(PTAB Jan. 27, 2014) (explaining that “new” evidence includes evidence
`already of record but not previously discussed in any paper of record).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, it is strongly recommended that
`each demonstrative include a citation to a paper in the record, which allows
`the Board to easily ascertain whether a given demonstrative contains “new”
`argument or evidence or, instead, contains only that which is developed in
`the existing record.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`
`5
`
`
`
`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)
`
`involving the Board, the Board does not anticipate that objections to
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`party objects to the propriety of any demonstrative, the parties shall meet
`and confer in good faith to resolve any objections to demonstratives prior to
`filing the objections with the Board. If such objections cannot be resolved,
`the parties may file any objections to demonstratives with the Board no later
`than the time of the hearing. The objections shall identify with particularity
`which portions of the demonstratives are subject to objection (and should
`include a copy of the objected-to portions) and include a one (1) sentence
`statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider any objections, and may
`reserve ruling on the objections.6 Any objection to demonstratives that is
`not timely presented will be considered waived.
`Finally, the parties are reminded that each presenter should identify
`clearly and specifically each paper (e.g., by slide or screen number for a
`demonstrative) referenced during the hearing to ensure the clarity and
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`
`C. Presenting Counsel
`The Board generally expects lead counsel for each party to be present
`at the hearing. See CTPG 11. Any counsel of record may present the
`party’s argument as long as that counsel is present by video.
`
`
`6 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`6
`
`
`
`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)
`
`D. Video Hearing Details7
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five (5) business days prior to the
`hearing date to receive video set-up information. As a reminder, all
`arrangements and the expenses involved with appearing by video, such as
`the selection of the facility from which a party will attend by video, must be
`borne by that party. If a video connection cannot be established, the parties
`will be provided with dial-in connection information, and the hearing will be
`conducted telephonically.
`If one or both parties would prefer to participate in the hearing
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`least five (5) business days prior to the hearing date to receive dial-in
`connection information.
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the hearing, the parties are reminded to identify clearly and specifically each
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`benefit of all participants appearing electronically. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`
`
`7 USPTO facilities remain closed to the public. If and when conditions
`allow in-person hearing attendance, the parties will be notified and will be
`permitted to submit a joint request to convert the current video hearing to an
`in-person hearing. The requests will be considered on a case-by-case basis,
`and subject to resource availability.
`
`7
`
`
`
`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)
`
`remote nature of the hearing may also result in an audio lag, and thus the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`If at any time during the hearing, counsel encounters technical or
`other difficulties that fundamentally undermine counsel’s ability to
`adequately represent its client, please let the panel know immediately, and
`adjustments will be made.8
`
`E. Remote Attendance Requests
`Members of the public may request to listen to this hearing. If
`resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board at PTABHearings@uspto.gov at least ten (10) business days prior to
`the hearing date.
`
`F. Audio/Visual Equipment Requests
`Any special requests for audio-visual equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`related to appearing at a video hearing, such as a request to accommodate
`visual or hearing impairments, and indicate how the PTAB may
`accommodate the special request. Any special requests must be presented in
`a separate communication at least five (5) business days before the hearing
`date.
`
`8 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`8
`
`
`
`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)
`
`G. Legal Experience and Advancement Program
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`argue before the Board to develop their skills. The Board defines a LEAP
`practitioner as a patent agent or attorney having three (3) or fewer
`substantive oral arguments in any federal tribunal, including PTAB, and
`seven (7) or fewer years of experience as a licensed attorney or agent.9
`The parties are encouraged to participate in the Board’s LEAP
`program. Either party may request that a qualifying LEAP practitioner
`participate in the program and conduct at least a portion of the party’s oral
`argument. The Board will grant up to fifteen (15) minutes of additional
`argument time to that party, depending on the length of the proceeding and
`the PTAB’s hearing schedule. A party should submit a request, no later than
`at least five (5) business days before the oral hearing, by email to the Board
`at PTABHearings@uspto.gov.10
`The LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`
`
`9 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
`basis with considerations to include, for example, the amount of time that
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`10 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`9
`
`
`
`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)
`
`a meaningful and substantive opportunity to argue before the Board. The
`party has the discretion as to the type and quantity of oral argument that will
`be conducted by the LEAP practitioner.11 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`more experienced counsel to provide some assistance to the LEAP
`practitioner, if necessary, during oral argument, and to clarify any statements
`on the record before the conclusion of the oral argument. Importantly, the
`Board does not draw any inference about the importance of a particular issue
`or issues, or the merits of the party’s arguments regarding that issue, from
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`In instances where an advocate does not meet the LEAP eligibility
`requirements, either due to the years of experience as a licensed
`attorney/patent agent or the number of “substantive” oral hearing arguments,
`but nonetheless has a basis for considering themselves to be in the category
`of advocates that this program is intended to assist, the Board encourages
`argument by such advocates during oral hearings. Even though additional
`argument time will not be provided when the advocate does not qualify for
`LEAP, a party may share argument time among counsel and the Board will
`permit the more experienced counsel to provide some assistance, if
`necessary, during oral argument, and to clarify any statements on the record
`before the conclusion of the oral argument.
`
`
`11 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of non-
`obviousness.
`
`10
`
`
`
`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)
`
`
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent.
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for IPR2020-01341, IPR2020-01342,
`IPR2020-01343, and IPR2020-01344 shall commence at 1:00 PM ET on
`November 18, 2021, by video, and proceed in the manner set forth herein.
`
`11
`
`
`
`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
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
