Medtronic, Inc. et al. v. Teleflex Innovations S.À.R.L
Docket Nos. 2021-2357, -2360, -2364 (IPR2020-00127, -00130, -00136) (https://cafc.uscourts.gov/opinions-orders/21-2357.OPINION.6-5-2023_2137084.pdf)
MOORE, LOURIE, DYK
June 5, 2023
Brief Summary: Board IPR decisions finding Medtronic failed to show Teleflex’s amended claims to be obvious, and allowing the amendment, affirmed. Summary: Medtronic appealed Board IPR decisions finding Medtronic failed to show certain of Teleflex’s claims to coaxial extension catheters insertable into standard guide catheters to be obvious. The patents-in-suit are US 8,048,032; RE45,380; and RE45,776 and relate to Teleflex’s GuideLiner products. Claims of the ‘032 and ‘382 patents were amended and found not to be unpatentable for obviousness. The disputed claims are grouped into “Side Opening Claims” including “a proximal side opening”, “One-French Claims”, “Double-Incline Claims”, some of which are “Substitute Claims” (amended during IPR). Regarding the Side Opening Claims, “Teleflex argued Medtronic’s proposed modifications” to the prior art “were unsupported by evidence, based on hindsight, and/or would not achieve the benefits Medtronic alleged without additional modifications not disclosed in Medtronic’s petition” and “introduced evidence of objective indicia of nonobviousness tied to its GuideLiner products” (“commercially successful, solved long-felt but unsolved needs, garnered industry praise, and was copied by competitors, including Medtronic”). The FC panel affirmed the Board’s decision as it was based on correctly finding a nexus between the Side Opening Claims and the GuideLiner products (“a combination of GuideLiner features it found were not disclosed, at least as a combination, in the prior art”), correctly found Medtronic copied the GuideLiner (Liqwd, FC 2019; Diamond Rubber, US 1911; Crocs, FC 2010; Lindemann, FC 1984; Michalic, US 1960 (“Circumstantial evidence is not only sufficient, but may also be more certain, satisfying and persuasive than direct evidence.”)), and correctly analyzed the secondary considerations (In re Inland Steel, FC 2001; Bristol-Myers, FC 2014; Transocean, FC 2012; Stratoflex, FC 1983 (“may often be the most probative and cogent evidence”); Demaco, FC 1988 (“commercial response”); Tokai, FC 2011 (“[a] strong case of prima facie obviousness . . . cannot be overcome by a far weaker showing of objective indicia of nonobviousness”)). Medtronic also unsuccessfully argued the Board ignored its proposed motivations to combine the prior art, but the FC panel disagreed (e.g., its failure to address some of Medtronic’s “exemplary reasons does not imply the Board ignored those motivations” (In re Nuvasive, FC 2016 (must explain why); Yeda, FC 2018 (“not require[d]…to address every argument raised by a party or explain every possible reason supporting its conclusion”); Ariosa, FC 2015 (“reasonably discern that [the Board] followed a proper path”); SEC, US 1932). Medtronic also argued the Board erred “by discounting prior art side openings intended to receive interventional cardiological devices as rare” (In re Cree, FC 2016), but the FC panel disagreed the Board did so, or erred in favoring Teleflex’s expert testimony. The FC panel similarly rejected Medtronic’s arguments regarding the One-French Claims and the Double-Incline Claims. Medtronic also argued the Substitute Claims lacked written description in the original application, but the FC panel disagreed, citing its June 5, 2023 Medtronic decision.