Medtronic, Inc., et al. v. Teleflex Life Sciences Ltd., Nos. 2022-1721, -1722 (Fed. Cir. (PTAB) Nov. 16, 2023). Opinion by Lourie, joined by Prost and Chen.

Medtronic filed two IPR petitions challenging certain claims in a patent owned by Teleflex. In the IPRs, Medtronic asserted that the “Itou” reference qualified as prior art under pre-AIA § 102(e). Teleflex argued that Itou was not prior art because the invention claimed in Teleflex’s 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 Patent Trial and Appeal Board agreed with Teleflex that Itou did not qualify as prior art. Medtronic appealed.

After briefing was completed in the appeal, the Federal Circuit issued several related decisions involving overlapping issues. The parties agreed that those related decisions foreclosed many of their arguments, but not whether Teleflex had diligently pursued work on its invention until its constructive reduction to practice.

Addressing the question of diligence, the Federal Circuit ruled that Medtronic waived its arguments. In Medtronic’s opening appeal brief, Medtronic argued that the Board had adopted its erroneous diligence analysis from a related IPR and “if this Court vacates the Board’s diligence holding in [the appeal of the related IPR], it should likewise vacate the Board’s decision here.” In the related appeal, however, the Federal Circuit did not vacate the Board’s diligence holding, “so Medtronic’s condition precedent has therefore not been met.” The Federal Circuit thus ruled that Medtronic’s approach “constitutes a clear waiver of its diligence argument.”

Medtronic still asked the Federal Circuit to reach the issue by considering the arguments made in the separate appeal, but the Federal Circuit refused. Doing so would involve “improper incorporation by reference” in violation of Federal Rule of Appellate Procedure 28(a)(6) and the Federal Circuit’s word limits for briefs. And a motions panel had denied Medtronic’s motion to enlarge the word limit. In the end, the court determined that “Medtronic chose to make certain strategic decisions concerning what material to include in its opening brief,” and “it cannot now undo those decisions.”

Thus, the Federal Circuit affirmed the Board’s finding that Itou is not prior art to the challenged claims. And because Itou is not prior art, the Board correctly ruled that Medtronic did not demonstrate that the challenged claims are unpatentable.

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