Medtronic Inc v. Teleflex Life Sciences Ltd

1. Case Identification

• Case #: IPR2020-01341
• Patent #: 8,142,413
• Filed: July 30, 2020
• Petitioner(s): Medtronic, Inc., and Medtronic Vascular, Inc.
• Patent Owner(s): Teleflex Innovations S.À.R.L.
• Challenged Claims: 1-2, 4-5, and 7-14

2. Patent Overview

• Title: Coaxial Guide Catheter for Interventional Cardiology Procedures
• Brief Description: The ’413 patent describes a catheter assembly for interventional cardiology procedures. The assembly includes a standard guide catheter and a "coaxial guide catheter" (an extension catheter) that is inserted through the guide catheter to provide enhanced "backup support" and prevent the guide catheter from dislodging from a coronary artery during a procedure.

3. Grounds for Unpatentability

Ground 1: Anticipation by Itou - Claims 1-2, 4, and 7-14 are anticipated by Itou.

• Prior Art Relied Upon: Itou (Patent 7,736,355).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Itou, which discloses a catheter assembly for alleviating blood flow obstruction, teaches every limitation of the challenged claims. Itou’s assembly includes a guide catheter (GC) and a suction catheter insertable through the GC. Petitioner contended that Itou’s suction catheter is the claimed "coaxial guide catheter." This suction catheter was described as having a proximal "solid wire-like portion" (the claimed "substantially rigid portion") and a distal, shorter tubular portion (the claimed "flexible tip portion"). Petitioner asserted that Itou discloses positioning its GC in a coronary artery and advancing the suction catheter through and beyond the GC, thereby providing the claimed method of backup support. The argument extended to dependent claims, mapping Itou’s features such as a side opening, radiopaque marker, and specific dimensional relationships to the corresponding claim limitations.
  • Key Aspects: The core of this ground relied on recharacterizing Itou’s "suction catheter" as the ’413 patent’s "coaxial guide catheter," arguing that despite a different stated purpose (suction vs. support), the structure and method of use disclosed in Itou were identical to those claimed.

Ground 2: Obviousness over Itou and POSITA Knowledge - Claims 1-2, 4-5, and 7-14 are obvious over Itou in view of the common knowledge of a POSITA.

• Prior Art Relied Upon: Itou (Patent 7,736,355) and the common knowledge of a Person of Ordinary Skill in the Art (POSITA).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative, asserting that even if Itou did not explicitly disclose every limitation, any missing elements would have been obvious to a POSITA. Specifically, Itou discloses its suction catheter and a "protective catheter" (an interventional device) as being pre-assembled before insertion. Petitioner argued that a POSITA would have found it obvious to perform these steps sequentially—inserting the suction catheter first, followed by the interventional device.
  • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to use a sequential insertion method for several known reasons: it was the routine, step-wise fashion for performing percutaneous coronary interventions (PCI), it provided greater trackability and flexibility for the extension catheter, and it reduced the risk of air embolism.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as this was a standard, well-established clinical technique that combined known elements for their predictable functions.

Ground 3: Obviousness over Itou and Ressemann - Claims 1-2, 4-5, and 7-14 are obvious over Itou in view of Ressemann and the common knowledge of a POSITA.

• Prior Art Relied Upon: Itou (Patent 7,736,355) and Ressemann (Patent 7,604,612).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Itou discloses all elements of the claims except for an explicit teaching of passing a therapeutic interventional device (like a stent or balloon catheter) through its suction catheter after placement. Ressemann was cited to supply this teaching. Ressemann discloses a similar "mother-and-child" catheter assembly and explicitly teaches advancing a therapeutic device, such as a stent delivery system, through its extension catheter after the extension catheter has been positioned beyond the guide catheter.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Itou and Ressemann because both references addressed the same problem of treating coronary occlusions using an extension catheter. It was known to be beneficial to perform aspiration (as taught by Itou) in conjunction with stenting (as taught by Ressemann) to remove embolic debris created during stent delivery. Combining the teachings would allow a single procedure to achieve both objectives, a logical and predictable improvement.
  • Expectation of Success (for §103 grounds): Success was expected because combining the known aspiration function of a catheter like Itou's with the known therapeutic delivery method of Ressemann's system used conventional components and techniques to achieve a predictable result.

4. Key Claim Construction Positions

• "interventional cardiology device(s)": Petitioner argued this term should be construed to mean "at least two types of devices selected from the group that includes, but is not limited to, guidewires, balloon catheters, stents, and stent catheters." This construction, adopted by the Board in related IPRs, prevents the Patent Owner from arguing the prior art must teach that all four enumerated devices are insertable.
• "standard guide catheter": Petitioner proposed this means "one of a variety of catheters used to guide devices or smaller catheters from the site of insertion into the coronary vasculature." This construction asserts the term is a generic descriptor and not limited to a specific length, diameter, or rigidity.
• "placed in a branch artery": Petitioner contended this phrase includes "placement in the ostium of a coronary artery." This was based on the patent’s own description and figures, which show the guide catheter seated in the ostium (the opening) of the coronary artery.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §314(a) based on Fintiv factors. The primary reasons cited were that the parallel district court litigation had been stayed pending resolution of previously filed IPRs on related patents, and it was unlikely the stay would be lifted before a final written decision in this IPR. Furthermore, the Patent Owner had only asserted 3 of the 12 challenged claims in the district court, meaning the IPR offered a more efficient and complete resolution of the patentability dispute.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 4-5, and 7-14 of the ’413 patent as unpatentable.