On April 25, 2014, Medtronic, Inc. and Medtronic Vascular, Inc. (“Medtronic”) filed a second petition (the ’695 Petition) with the Patent Trial and Appeal Board requesting inter partes review of U.S. Patent No. 5,593,417 (“the ’417 Patent”). Medtronic concurrently filed a motion requesting joinder of the ’695 Petition and Medtronic’s previously filed first petition requesting inter partes review of the ’417 Patent (the ’100 Petition).
The ’417 Patent is entitled “Intravascular Stent With Secure Mounting Means,” and lists a single inventor, Valentine J. Rhodes. The ’417 Patent states that it relates to “expandable grafts and methods of use for opening restrictions therein, e.g., revascularizing stenotic arteries.” Figures 1-3 from the ’417 Patent are shown below:
The ’695 Petition seeks review of claims 1, 2, 9, 10, and 13 of the ’417 Patent, the same claims challenged by the ’100 Petition. The ’695 Petition discloses that one or more claims of the ’417 Patent have been asserted against Medtronic by Endotach LLC (“Endotach”) in a lawsuit filed in the U.S. District Court for the Northern District of California. Endotach’s first amended complaint, filed on October 22, 2013, alleges that Acacia Patent Acquisition LLC assigned its rights in the ‘417 Patent to Endotach. The complaint further alleges that “at least the Endurant AAA Stent Graft and Endurant II AAA Stent Graft. . .” infringe “at least claims 1, 2, and 13 of the ’417 Patent. . . .” On April 24, 2014, the lawsuit was stayed by order of the court pending final resolution of the inter partes review proceedings.
According to the ’695 Petition, Endotach is also asserting the ’417 Patent against Cook Medical Inc. in Endotach LLC v. Cook Medical Inc., No. 1:13-cv-1135 (S.D. Ind.) and W.L. Gore & Associates, Inc. in Endotach LLC v. W.L. Gore & Associates, Inc., No. 3:12-cv-00308 (N.D. Fla.).