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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.,
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`Petitioner,
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`v.
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`TELEFLEX LIFE SCIENCES LIMITED,
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`Patent Owner.
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`PETITIONER’S RESPONSIVE BRIEF ON COLLATERAL ESTOPPEL
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`Case IPR2020-01341
`U.S. Patent No. 8,142,413
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`Case IPR2020-01342
`U.S. Patent No. 8,142,413
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`Case IPR2020-01343
`U.S. Patent No. RE 46,116
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`Case IPR2020-01344
`U.S. Patent No. RE 46,116
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`III.
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`The Board’s First Set of IPR Decisions are not Final. .................................... 1
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`The Board Must Address New Reduction-to-Practice Issues. ........................ 3
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`PO’s Other Issues Were Not Essential to the Final Decision, and
`Petitioner Did not have a Full and Fair Opportunity to Litigate. .................... 4
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`ii
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`B&B Hardware, Inc. v. Hargis Indus.,
`575 U.S. 138 (2015) .............................................................................................. 1
`MaxLinear, Inc. v. CF CRESPE LLC,
`880 F.3d 1373 (Fed. Cir. 2018) ........................................................................... 1
`Mobile Tech, Inc. v. Invue Security Prods. Inc.,
`IPR2019-00481, Paper 29 (PTAB July 16, 2019) ................................................ 2
`Mylan Pharm. Inc. v. Saint Regis Mohawk Tribe,
`IPR2016-01129, Paper 154 (PTAB Sept. 27, 2019) ............................................ 1
`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013) ............................................................................ 4
`Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., Inc.,
`924 F.3d 1243 (Fed. Cir. 2019) ............................................................................ 1
`Taskett v. Dentlinger,
`344 F.3d 1337 (Fed. Cir. 2003) ............................................................................ 4
`VirnetX Inc. v. Apple, Inc.,
`909 F.3d 1375 (Fed. Cir. 2018) ........................................................................... 1
`Webpower, Inc. v. Wag Acquisition, LLC,
`IPR2016-01239, Paper 21 (PTAB Dec. 26, 2017) ............................................... 2
`XY, LLC v. Trans Ova Genetics,
`890 F.3d 1282 (Fed. Cir. 2018) ............................................................................ 3
`Statutes
`35 U.S.C. § 318(b) ................................................................................................. 1, 2
`Other Authorities
`37 C.F.R. § 42.80 ....................................................................................................... 2
`Restatement (Second) of Judgments § 83 .................................................................. 2
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`iii
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`Patent Owner’s (“PO”) carefully worded brief attempts to mask that
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`collateral estoppel cannot, and should not, apply to these proceedings. The Board’s
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`prior decisions are not final, do not address identical issues, and did not rely upon
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`those issues. The Board should not apply collateral estoppel.
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`I.
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`The Board’s First Set of IPR Decisions are not Final.
`PO concedes that collateral estoppel does not attach while an appeal is
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`pending. See PO Brief at 4-5. Indeed, a final written decision is not final until
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`either the time for appeal elapses or the Federal Circuit affirms the Board’s
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`decision. See 35 U.S.C. § 318(b) (issuance of certificate of (un)patentability proper
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`only after appeal time expires or appeal exhausted). Here, Petitioner appealed the
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`previous IPR decisions—none are final, and collateral estoppel does not attach.
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`PO’s argument that the first set of IPR decisions are “sufficiently final” is
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`misleading at best and incorrect at worst. PO relies on cases in which there was no
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`appeal or the appeal had already concluded. See B&B Hardware, Inc. v. Hargis
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`Indus., 575 U.S. 138, 146-48 (2015) (no appeal); Papst Licensing GMBH & Co.
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`KG v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1249 (Fed. Cir. 2019) (appeal
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`dismissed); VirnetX Inc. v. Apple, Inc., 909 F.3d 1375, 1378 (Fed. Cir. 2018)
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`(appeal affirmed); MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376
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`(Fed. Cir. 2018) (appeals affirmed); Mylan Pharm. Inc. v. Saint Regis Mohawk
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`Tribe, IPR2016-01129, Paper 154 (PTAB Sept. 27, 2019) (appeals affirmed);
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`1
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`Webpower, Inc. v. Wag Acquisition, LLC, IPR2016-01239, Paper 21 (PTAB Dec.
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`26, 2017) (no appeal). Indeed, PO cites no case in which collateral estoppel
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`attached during the pendency of an active appeal.1
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`PO’s other argument—that collateral estoppel can apply when a district
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`court decision is pending on appeal—is similarly inapplicable. PO Brief at 2-3.
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`Importantly, a final written decision by the Board is not a decision by a district
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`court. As the Restatement notes, “[t]o determine finality [of agency decisions],
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`reference must be made to the procedures of the agency that specify what official
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`has authority to decide and the point at which the decision becomes effective.”
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`Restatement (Second) of Judgments § 83 cmt e. And the procedures of the Patent
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`Office specify that its determinations on patentability are not implemented by
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`publication of a certificate until “the time for appeal has expired or any appeal has
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`terminated.” 37 C.F.R. § 42.80; 35 U.S.C. § 318(b). Finality of a Board decision,
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`then, requires finality of appellate process. Petitioner’s Opening Brief at 3-4.
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`1 PO cites Mobile Tech, Inc. v. Invue Security Prods. Inc., IPR2019-00481, Paper
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`29 at 33 (PTAB July 16, 2019) for the proposition that a pending appeal does not
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`prevent the application of collateral estoppel. PO Brief at 4. Not only was this
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`statement dicta—the PTAB addressed the issues on the merits—but eight of the
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`eleven appeals were already complete. Mobile Tech, Paper 29 at 7.
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`2
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`The Federal Circuit ultimately recognizes and applies the rule that a Board
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`decision is not final until appeals conclude. It is only “affirmance [that] renders
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`final a judgment on the invalidity” of a patent, and only affirmance that “has an
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`immediate issue-preclusive effect on any pending or co-pending actions involving
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`the patent.” XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018).
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`Until each party, “having been afforded the opportunity to exhaust his remedy of
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`appeal . . . has had his ‘day in court,’” a Board decision is not final. Id. at 1294.
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`The Board’s previous IPR determinations are not final because the appeals
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`are pending. Therefore, the Board should not apply collateral estoppel.
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`II. The Board Must Address New Reduction-to-Practice Issues.
`The Board cannot adopt its findings from the first set of IPRs, wholesale, to
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`resolve the reduction-to-practice issues in these IPRs. PO concedes that these IPRs
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`created new reduction-to-practice issues, specifically, whether VSI performed the
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`claimed methods, and whether those methods require using the claimed guide
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`extension catheter in vivo. The intended purpose inquiry has new dimensions, too:
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`the Board must consider whether VSI performed testing sufficient to demonstrate
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`the methods’ intended purpose, which Petitioner contends requires (1) simulating
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`the methods using a guide catheter and, separately, a guide catheter plus guide
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`extension catheter, and (2) comparing the results. The Board has yet to consider
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`whether the intended purpose—to provide increased backup support—required
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`3
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`comparative testing. Finally, though PO produced no new evidence to prove
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`diligence, the Board must consider whether that evidence shows reasonably
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`continuous diligence in reducing to practice the new inventions reciting more than
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`a guide extension catheter.
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`Issues are identical when a new patent does not “materially alter the
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`question.” Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir.
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`2013). Here, the method-of-use claims change the reduction-to-practice analysis.
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`PO does not explain, legally or factually, how the issues here—regarding VSI’s
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`activity related to separate inventions subject to different reduction-to-practice
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`standards—are identical to those that the Board resolved in the first set of IPRs.
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`Even if the Board adopts previous fact findings, it must consider anew whether
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`those facts are sufficient to prove reduction to practice of the new inventions. PO
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`may have assembled largely the same record here as it did in the first set of IPRs.
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`But the Board must compare that evidence to new patents—claim by claim,
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`limitation by limitation. See Taskett v. Dentlinger, 344 F.3d 1337, 1340-41 (Fed.
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`Cir. 2003).
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`III. PO’s Other Issues Were Not Essential to the Final Decision, and
`Petitioner Did not have a Full and Fair Opportunity to Litigate.
`The Board cannot apply collateral estoppel to the patentability issues
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`identified by PO because (i) no issue was essential to the Board’s decision, and/or
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`(ii) Petitioner did not have a full and fair opportunity to litigate the issue.
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`4
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`For example, as to whether it was obvious to modify Kontos to replace its
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`funnel with a side opening, the Board did not address Petitioner’s argument that
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`doing so would facilitate smooth passage of catheters or allow advancement of
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`therapy catheters into distal locations of the coronary vasculature. Compare, e.g.,
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`IPR2020-00127, FWD (Paper 105) at 31-48, 68-73 with IPR2020-01343, Petition
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`(Paper 1) at 75-76. Further, with respect to the side opening limitation, the “one
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`French” limitation, and the double-incline limitation, the Board based its decision,
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`in part, on PO’s argument that Petitioner raised improper reply arguments.2 See,
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`e.g., IPR2020-00127, FWD (Paper 105) at 46, 50-52 (noting that the Petitions did
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`not discuss recessing marker bands); IPR2020-00129, FWD (Paper 125) at 33
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`(double-incline). Further, in the Itou-based IPRs, the Board did not reach
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`Petitioner’s unpatentability arguments. See, e.g., IPR2020-00129, FWD (Paper
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`125) at 48 (finding Itou not prior art). For these additional reasons, collateral
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`estoppel does not attach.
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`2 Petitioner notes that the Board’s non-obviousness determination on certain issues
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`was premised, at least in part, on PO’s showing of secondary considerations. In
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`these IPRs, PO does not practice claim 25 of the ʼ116 patent and thus cannot
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`demonstrate nexus. See, e.g., IPR2020-00127, Reply (Paper 37) at 25-27. The
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`claims are not identical.
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`5
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`Dated: November 17, 2021
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`Respectfully submitted,
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Reg. No. 44,954
`Robins Kaplan LLP
`2800 LaSalle Plaza
`800 LaSalle Avenue
`Minneapolis, MN 55402
`Attorney for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on November
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`17, 2021, a copy of PETITIONER’S RESPONSIVE BRIEF ON COLLATERAL
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`ESTOPPEL was served by electronic mail on Patent Owner’s counsel at the
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`following addresses indicated in Patent Owner’s Mandatory Notices:
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`J. Derek Vandenburgh, Reg. No. 32,179
`dvandenburgh@carlsoncaspers.com
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`Dennis C. Bremer, Reg. No. 40,528
`dbremer@carlsoncaspers.com
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`Joseph W. Winkels
`jwinkels@carlsoncaspers.com
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`Peter M. Kohlhepp
`pkohlhepp@carlsoncaspers.com
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`Alexander S. Rinn
`arinn@carlsoncaspers.com
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`Megan E. Christner, Reg. No. 78,979
`mchristner@carlsoncaspers.com
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`Shelleaha L. Jonas
`sjonas@carlsoncaspers.com
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`Tara C. Norgard
`tnorgard@carlsoncaspers.com
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`Dated: November 17, 2021
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`Respectfully submitted,
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`/Cyrus A. Morton/
`Cyrus A. Morton
`Registration No. 44,954
`Attorney for Petitioner
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`7
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