Medtronic, Inc. et al. v. Teleflex Life Sciences Limited
Docket No. 2022-1721, -1722 (IPR2020-01343, -01344 (https://cafc.uscourts.gov/opinions-orders/22-1721.OPINION.11-16-2023_2223230.pdf)
LOURIE, PROST, CHEN
November 16, 2023
Brief Summary: Board finding of no obviousness affirmed based on pre-AIA constructive reduction to practice. Summary: Medtronic appealed two final written decisions (FWDs) holding it had not shown Teleflex’s RE46,116 claiming 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” to be unpatentable. The application leading to the ‘116 patent was filed on May 3, 2006 and Teleflex argued that “VSI conceived the claimed invention in early 2005 and then worked to develop it under the ‘GuideLiner’ name”, of which “the ‘rapid exchange’ or ‘RX’ version of the GuideLiner, when used, was an embodiment of the ’116 patent.” Medtronic’s allegedly infringing “Telescope” “guide extension catheter product” was launched in 2019. In two IPRs, Medtronic alleged anticipation by a US patent (Ressemann), obviousness in view combinations of US patents (Ressemann and Itou, or also including Kataishi; Ressemann and Root). “Medtronic asserted that Itou was prior art under pre-AIA § 102(e)” but Teleflex argued its claimed method was “(1) conceived prior to Itou’s filing date of September 23, 2005 (i.e., the critical date), and (2) was either (a) actually reduced to practice before the critical date or (b) diligently pursued until its constructive reduction to practice through its effective filing in May 2006.” Medtronic did not objected to “Teleflex’s demonstration of conception…but challenged Teleflex’s alleged showings of both actual reduction to practice and diligence until constructive reduction to practice.” The USPTO Board found two claims anticipated by Resseman (not appealed) and that “Itou did not qualify as prior art to the ’116 patent under pre-AIA first-to-invent provisions” because “(1) the claimed invention was conceived before the critical date of Itou…; (2) the claimed invention was actually reduced to practice before the critical date of Itou…; and (3) the patent owner diligently pursued work on the invention until its constructive reduction to practice through its effective filing in May 2006” based in part on prior Medtronic v. Teleflex decisions (IPR 2020-00132; FC 2023). “Unique to this case, however,” the FC panel wrote, “was the question whether or not in vivo testing was required for actual reduction to practice because the claims at issue are method claims”, and the Board found that testing not to be required (e.g., Medtronic could not identify precedent, “the viability of the claimed method can be verified using a physical model that replicates the anatomy in which the method would likewise be performed in vivo”). In the IPR relating to the combination of Ressemann and Root, the Board found “found a lack of motivation to combine the references”, “a nexus to secondary considerations that weighed in favor of nonobviousness”, and “that Root did not qualify as prior art” based on the ‘116 patent priority date. Following briefing in this case, the FC panel issued other decisions (Medtronic, FC 2021 and FC 2023), leaving only the in vivo testing issue for this appeal. And it affirmed the “the Board’s finding of constructive reduction to practice and [did] not reach the issue of actual reduction to practice” (citing Perfect Surgical, FC 2016 (“An asserted prior art reference can be antedated based on a constructive reduction to practice by a showing of (1) conception prior to the filing date of the asserted reference and (2) reasonably continuous diligence from just before the date the asserted reference was filed until the date that the patent owner filed its priority application.”); stating: “a patent owner may antedate an asserted reference based on prior conception and either actual reduction to practice or constructive reduction to practice.”)