In Medronic, Inc. v. Teleflex Life Sciences Limited, 2022-1721, 2022-1722 (Fed. Cir. Nov. 16, 2023), the Federal Circuit considered whether U.S. Patent RE46,116 (“the ’116 patent”) was entitled to an alleged priority date sufficient to moot Medtronic’s asserted pre-AIA §102(e) prior art reference, which depended on whether Medtronic had waived its challenged to Teleflex’s asserted priority date by attempting to incorporate those arguments by reference in its Inter Partes Review (“IPR”) petitions, and whether the USPTO Patent Trial and Appeal Board (“PTAB”) correctly found that Teleflex sufficiently demonstrated not only the date of conception, but also that the inventors had diligently reduced the claimed invention to practice.

Background

Medtronic filed two IPR petitions challenging certain claims in Teleflex’s ’116 patent. In the IPRs, Medtronic asserted that the “Itou” reference qualified as prior art under the pre-AIA § 102(e). Teleflex claimed that Itou was not prior art because the invention claimed in the ’116 patent was conceived before Itou’s critical date and was either actually reduced to practice before the critical date or diligently pursued until its constructive reduction to practice. The Board agreed with Teleflex that Itou did not qualify as prior art 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.” Medtronic appealed.

Under pre-AIA 25 U.S.C. § 102(e), patent owner may antedate an asserted prior art patent by showing conception of the claimed invention prior to the critical date and either actual reduction to practice prior to the reference’s critical date or “reasonably continuous diligence” in reducing the invention to practice until its effective filing date. Here, Medtronic did not contest that the claimed invention was conceived before Itou’s filing date but argued that (1) in vivo testing was required for actual reduction to practice, and (2) patentee did not exercise reasonably continuous diligence until constructive reduction to practice. Medtronic asked the Federal Circuit to reach this issue by considering the arguments it made in a separate appeal.

Issues

(1) whether or not in vivo testing was required for actual reduction to practice and (2) whether or not the patentee exercised reasonably continuous diligence until constructive reduction to practice.

Holdings

The Federal Circuit held that Medtronic had waived any challenge regarding the diligence issue by attempting to improperly incorporate its arguments by referring to the Board’s judgment in a separate, related IPR, but choosing not to include arguments on diligence in its opening brief. The panel rejected Medtronic’s incorporation-by-reference bid, stating that trying to “incorporate by reference twenty pages from another brief in another case, amounting to over 4,000 extra words” was “a clear violation of both the motion’s panel’s order [denying Medtronic’s motion for leave to expand its brief to 20,000 words] and our rules”.

Reasoning

Since Medtronic did not include arguments in its IPR petition contesting that the claimed invention was conceived before Itou’s filing date and challenge to constructive reduction to practice was deemed waived, the Federal Circuit affirmed the PTAB’s decision that Itou did not qualify as prior art. Since either actual or constructive reduction to practice was sufficient to uphold the PTAB’s decision, the Federal Circuit refused to decide whether in vivo testing was required for actual reduction to practice.