Medtronic, Inc.v.Troy Norred

Patent Trial and Appeal Board

Dec 8, 2014

09712121 (P.T.A.B. Dec. 8, 2014)

Trials@uspto.gov Paper 12
Tel: 571-272-7822 Entered: December 8, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MEDTRONIC, INC., MEDTRONIC VASCULAR, INC., AND
MEDTRONIC COREVALVE, LLC,
Petitioner,

v.

TROY R. NORRED, M.D.,
Patent Owner.
_______________

Case IPR2014-00823
Patent 6,482,228 B1
_______________
Before SHERIDAN K. SNEDDEN, BARRY L. GROSSMAN, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge SNEDDEN.

Opinion Concurring filed by Administrative Patent Judge WEATHERLY.

SNEDDEN, Administrative Patent Judge.

DECISION
Denying Motion for Joinder,
and Denying Institution of Inter Partes Review
37 C.F.R. §§ 42.108, 42.122

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I. INTRODUCTION
Medtronic, Inc., Medtronic Vascular, Inc., and Medtronic Corevalve,
LLC (collectively “Medtronic” or “Petitioner”) filed a petition (Paper 3,
“Petition” or “Pet.”) requesting an inter partes review of claims 20–24 (the
“challenged claims”) of U.S. Patent 6,482,228 B1 (Ex. 1001, “the ’228
patent”). See 35 U.S.C. § 311. Troy R. Norred, M.D. (“Patent Owner”) did
not file a Patent Owner Preliminary Response.
Concurrently with the filing of the Petition, Petitioner filed a motion
for joinder pursuant to 35 U.S.C. § 315(c). Paper 2, 1 (the “Mot. for
Joinder” or “Joinder Motion”). Specifically, Medtronic moves “for Joinder
of the Second Petition for Inter partes Review of U.S. Patent No. 6,482,228
. . ., with the instituted inter partes review, Medtronic, Inc., et al. v. Troy R.
Norred, Case No. IPR2014-00111, pursuant to 35 U.S.C. § 315(c) and 37
C.F.R § 42.122.” Id. Thus, Medtronic seeks to consolidate issues presented
in the Petition with issues on which we have instituted review in Medtronic,
Inc. v. Norred, Case IPR2014-00111 (“the ’111 IPR”). Petitioner timely
filed its Joinder Motion within one month after institution of a trial in
IPR2014-00111, as required by 37 C.F.R. § 42.122(b). Patent Owner filed
an Opposition to Motion for Joinder (Paper 7, “Opp. to Joinder”). Petitioner
filed a Reply to Opposition to Motion for Joinder (Paper 11, “Reply”). We
have jurisdiction under 35 U.S.C. § 314.
For the reasons provided below, we exercise our discretion under
35 U.S.C. § 315(c) and deny Petitioner’s Motion to join the Petition to the
’111 IPR. We also deny the Petition and do not institute an inter partes
review of the ’228 patent based on the Petition.
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II. ANALYSIS
A. Law of Joinder
The statutory provision governing joinder of inter partes review
proceedings is § 315(c), which provides as follows:
(c) JOINDER.—If the Director institutes an inter partes review,
the Director, in his or her discretion, may join as a party to that
inter partes review any person who properly files a petition
under section 311 that the Director, after receiving a
preliminary response under section 313 or the expiration of the
time for filing such a response, determines warrants the
institution of an inter partes review under section 314.
Section 315(c) references § 311, which provides that “a person who is
not the owner of a patent may file with the Office a petition to institute an
inter partes review of the patent.” Section 315(c) refers also to § 314, which
allows the Director to institute an inter partes review if there is a reasonable
likelihood that the petitioner would prevail with respect to at least one of the
claims challenged in the petition.
The Petition was filed on May 27, 2014. Petitioner acknowledges
that, more than one year before filing the Petition, it was served with a
complaint alleging infringement of the ’228 patent in Norred v. Medtronic,
Inc., No. 2:13-cv-02061. Pet. 1, 6. Section315(b) bars institution of inter
partes review when the petition is filed more than one year after the
petitioner is served with a complaint alleging infringement of the patent. 35
U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The one-year time bar, however,
does not apply to a request for joinder. 35 U.S.C. § 315(b) (final sentence);
37 C.F.R. § 42.122(b). Thus, absent joinder of this proceeding to IPR2014-
00111, the Petition is barred under § 315(b).
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The decision to grant joinder is discretionary. 35 U.S.C. § 315(c); 37
C.F.R. § 42.122(b). When exercising that discretion, the Board is mindful
that our rules, including the rules for joinder, must be construed to secure the
just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R.
§ 42.1(b).
B. Decision on Motion for Joinder
Petitioner challenges claims 20–24 of the ’228 patent on the following
grounds. Pet. 8–14.
Reference[s] Basis Claims challenged
Figulla
1
§ 102(b) 20–24
Figulla and Shu
2
§ 103(a) 20–24

Petitioner, however, is currently a party in the following instituted
inter partes review proceedings involving the ’228 patent: IPR2014-00111
and IPR2014-00395. These two cases are on-going and were instituted with
the following grounds:
Reference[s] Basis Claims challenged Case No.
Schreck
3
§ 102(e) 20–24 IPR2014-00111
Schreck and Shu § 103(a) 22–23 IPR2014-00111

1
Figulla, DE App. No. 195 46 692, published Jul. 6, 2000. Ex. 1003 (The
English translation is provided as Ex. 1004).
2
Shu, US 6,139,575, issued Apr. 2, 1999. Ex. 1005.
3
Schreck, US 6,454,799 B1, issued Apr. 6, 2000.
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Reference[s] Basis Claims challenged Case No.
Leonhardt
4
§ 102(b) 16 and 19–24 IPR2014-00395
Bailey
5
§ 102(e) 16 and 19–24 IPR2014-00395

The Board determines whether to grant joinder on a case-by-case
basis, taking into account the particular facts of each case. Here, we
determine that Petitioner’s stated reasons for allowing joinder do not
outweigh meaningful reasons not to allow joinder. Petitioner sought inter
partes review based on Figulla and Shu by filing a new petition, rather than
seeking rehearing under 37 C.F.R. § 42.71(d)(1) of the decision in the ’111
IPR not to institute review based on these two references. We, however,
already have determined that Petitioner has demonstrated a reasonable
likelihood that it would prevail in its challenges to claims 20–24 and we
decline to consider modifying the schedule in the ’111 IPR at a late stage in
that proceeding to add additional challenges based on prior art references we
already have considered. Absent granting the Joinder Motion, the Petition is
barred under § 315(b).
Petitioner recognizes that the grounds herein essentially duplicate the
grounds presented in the ’111 IPR Petition. Mot. for Joinder 4–5 (“the
Board should also consider the grounds based on Figulla initially raised in
the First [’111] Petition and raised again in this Second Petition”) (emphasis
added). Additionally, Petitioner asserts that joinder is warranted because
“Patent Owner has already considered and responded to these grounds

4
Leonhardt, US 5,957,949, issued Sept. 38, 1999.
5
Bailey, 6,458,153 B1, issued Oct. 1, 2002.
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[Figulla and Figulla combined with Shu] in the Patent Owner’s Response to
the First Petition.” Mot. for Joinder 8. This is incorrect. Patent Owner did
not respond to asserted grounds based on Figulla and Figulla combined with
Shu in Patent Owner’s Response in the ’111 IPR, Paper 15. If we allowed
joinder of the Petition herein with the ’111 IPR, Patent Owner would be
entitled to respond to the new references and new grounds being joined.
In IPR2014-00111, which Petitioner seeks to join, Patent Owner has
filed a Patent Owner Response (Paper 15) and a Motion to Amend the
claims (Paper 18). Petitioner has filed a Reply to the Patent Owner
Response (Paper 25) and an Opposition to the Motion to Amend. Three
depositions have been noticed (Papers 19, 20, 21) and at least two
depositions have been taken (Papers 23, 24). The oral argument in the ’111
IPR has been combined with the oral arguments in related cases IPR2014-
00110 and IPR2014-00395 and is scheduled for January 27, 2015 (Paper
28). Thus, adding additional grounds raised in the Petition could impose
significant delays in the ’111 IPR. Additional responses and replies would
be required. Additional depositions of witnesses already deposed also may
be required.
Petitioner also asserts, incorrectly, that joinder is warranted because
the Petition herein “involves the same patent, the same claims, the same
parties, and a subset of the same prior art references as in IPR2014-00111.”
Mot. for Joinder 7. The Petition herein does not involve a “subset of the
same prior art references as in IPR2014-00111.” The inter partes review in
the ’111 IPR involves only the patentability of claims 20–24 under 35
U.S.C. § 102 as anticipated by Schreck; and the patentability of claims 22
and 23 under 35 U.S.C. § 103 for obviousness over Schreck and Shu.
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Decision to Institute, ’111 IPR, 20. The Petition herein is not a subset of the
references or grounds involved in the pending ’111 IPR.
Petitioner argues that, if we were to deny the Joinder Motion, and if
Patent Owner were to prevail with respect to Schreck in the ’111 IPR, and if
Patent Owner were to argue in the co-pending district court litigation that 35
U.S.C. § 315(e)(1) estops Petitioner from relying on Figulla, and if the
district court were to find estoppel, then Petitioner would be prejudiced.
Mot. for Joinder 5–6. This series of contingencies is too hypothetical to
outweigh the immediate and real prejudice that will result from joinder.
Based on the analysis above, on the record before us, Petitioner has
not shown that joinder is justified.
C. Response to the Concurrence
We write further to address the interpretation of § 315(c) set forth in
the concurring opinion.
Unlike the concurrence, we conclude that § 315(c) encompasses both
party joinder and issue joinder, and as such, permits the joinder of any
person who properly files a petition under § 311, including a petitioner who
is already a party to the existing inter partes review. We reach this
conclusion because § 315(c) permits the joinder of any person who properly
files a petition under § 311. The only person excluded unambiguously from
the scope of “any person” under § 315(c) is the patent owner, because the
patent owner cannot file a petition under § 311 (“. . . a person who is not the
owner of a patent may file with the Office a petition to institute an inter
partes review of the patent”).
Furthermore, joinder, as used in § 315(c), does not unambiguously
refer solely to the joinder of a party, but rather, includes language related to
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the joinder of issues presented in the petition that accompanies the request
for joinder—that is, a request for joinder under § 315(c) requires a new
petition. A decision on joinder follows consideration of the new petition and
any preliminary response, and follows a determination that the new petition,
on its own merits, warrants institution of an inter partes review under § 314
of the statute.
Section 315(c) thus permits any person to file a petition for review by
the Director, and gives the Director discretion to join the petition to an
existing inter partes review if it is determined that the threshold of § 314 is
met. The limitation of § 314 is that the information presented in the petition
must show that there is a reasonable likelihood that the petitioner would
prevail with respect to at least 1 of the claims challenged in the petition. 35
U.S.C. § 314(a). If the potential for adding new issues by way of joinder
were not possible, there is no reason why the Director would need to
determine whether inter partes review under § 314 is warranted based on the
petition and any preliminary response that may be filed.
The joinder provision does not limit the scope of issues that can be
raised in the petition, and does not require the scope of issues raised to be
identical to issues in the existing inter partes review.
6
Rather, § 315(c)
permits the joinder of any issue related to a ground of unpatentability shown
by any person to be reasonably likely to prevail with respect to at least 1 of
the claims challenged. In other words, the statute provides the Director
discretion to join the new petition of any party to an existing inter partes

6
If only identical petitions could be joined to an existing inter partes review,
there would be no need for substantive review under § 314.
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review, once it is determined that that the procedural limitation of § 314 is
met, which is a finding that the petition is likely to prevail on its merits.
The concurrence cites to the majority opinion in Target Corp. v.
Destination Maternity Corp., Case IPR2014-00508 (PTAB Sept. 25, 2014)
(Paper 18), and the reasons expressed therein, as the basis for denying
Medtronic’s motion for joinder. In reaching the decision to deny joinder, the
majority in Target concluded that 35 U.S.C. § 315(c) does not permit issue
joinder, rather it refers to joining a party and a party cannot be joined to a
proceeding to which it is already a party. Target, Paper 18 at 3–5. We note
that Target is not a precedential decision. We also note that views differing
from those in Target were stated in other Board decisions. See, e.g., Ariosa
Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022 (PTAB Sept. 2,
2014) (Paper 166).
In reaching this conclusion, the majority in Target found that the use
of the word “any” did not render the statute ambiguous, and concluded that
the language in § 315(c) excludes from “any person” at least two persons
from among those who may be joined to a proceeding. Specifically, the
phrase “who properly files a petition under section 311” excludes the patent
owner, and “as a party,” excludes persons who are already a party. Target,
Paper 18 at 5. n.2. The phrase “as a party,” however, does not render the
joinder provision of § 315(c) unambiguous. The only person excluded
unambiguously from the scope of “any person” under § 315(c) is the patent
owner, via reference to § 311. Otherwise, § 315(c) simply is labeled
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“Joinder”
7
—as opposed to “Joinder of parties” as in 35 U.S.C. § 299—and,
while the phrase “join as a party” is used, § 315(c) also contains language
that suggests that the decision on whether to join is made after consideration
of issues presented in a petition.
The concurring opinion would have us render a decision on the
request for joinder prior to considering the merits of the petition, which is
contrary to the language of § 315(c). Section 315(c), via reference to § 314,
only includes language referring to challenges of patent claims and makes no
reference to other procedural requirements discussed in Target.
8
In any case,
the statute does not clearly guide us away from considering challenges to the
claims of the patent. On the contrary, § 315(c) asks the Director to consider
whether the petition contains information showing that the petitioner would
prevail with respect to at least one claim, and gives the Director discretion to
join the party if there is merit to the information presented in the petition.
The majority in Target further reasoned that the one-year time bar
under § 315(b) does not apply “to a request for joinder,” such that a time-
barred petitioner may be permitted to join an existing inter partes review,
but may not successfully petition for inter partes review. Target, Paper 18
at 10. In reaching this conclusion, the Target majority reads the request for
joinder as a separate filing, one that does not require a petition. Again,

7
35 U.S.C. § 315 uses the heading “Relation to other proceedings or
actions” and subsection § 315(c) is labeled “Joinder.”
8
The majority in Target noted that the filing of a petition by a prospective
party serves many purposes other than setting forth the challenges to claims
in a patent, purposes such as meeting the requirements of identifying real
parties-in-interest, related matters, lead and backup counsel, and service
information. Target, Paper 18 at 5–6.
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however, the joinder statute itself makes reference to both the petition and
preliminary response, indicating that the merits of the petition that
accompanies the request for joinder are to be considered—that is, a motion
for joinder must include a petition satisfying the threshold of § 314 before a
party successfully may be joined. The request for joinder cannot be treated
as a separate filing because a properly filed request for joinder must be
accompanied by a petition that meets the standard of § 314. Section 315(c)
gives discretion as to whether to join a person who properly files a petition,
and it is the Director’s discretion that guards against patent owner
harassment and/or over-burdening Office resources.
The concurrence also reasons that, in contrast to joinder under
§ 315(c), § 315(d) relates to the consolidation of issues. A review of the
legislative history of the America Invents Act
9
(“AIA”), however, does not
clearly lead one to conclude that Congress used “joinder” narrowly to refer
solely to party joinder. Rather, throughout the Senate Debates “joinder” is
used in the context of issue joinder. See e.g., 157 Cong. Rec. S 1376 (daily
ed. Mar. 8, 2011) (statement of Sen. Kyl) (“If a party seeking joinder also
presents additional challenges to validity that satisfy the threshold for
instituting a proceeding, the Office will either join that party and its new
arguments to the existing proceeding, or institute a second proceeding for
the patent.”); 157 Cong. Rec. S 9988 (daily ed. Sept. 27, 2008) (statement of
Sen. Kyl) (“[A]dditional petitions can be joined only if, among other things,
they are properly filed.”); id. (“[A] procedurally proper successive petition

9
Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011).
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for second-period review may be joined to a pending proceeding at the
discretion of the Director, even if the 329(b)(2) deadline has not been met,
so long as the Director determines that the petition satisfies the threshold set
in section 327(c).”) “Consolidation,” as used in § 315(d), on the other hand,
is used to refer to the consolidation of different proceeding before the Office.
See 157 Cong. Rec. S 9988 (daily ed. Sept. 27, 2008) (statement of Sen.
Kyl) (“Section 325(c) gives the PTO broad discretion to consolidate, stay, or
terminate any PTO proceeding involving a patent if that patent is the subject
of a postgrant review proceeding. It is anticipated, for example, that if a
second-period proceeding is instituted and reexam is sought, the Director
would be inclined to stay the postgrant review during exhaustion of the
reexam. On the other hand, if a postgrant review is near completion, the
Director may consolidate or terminate any other PTO proceeding that is
initiated with regard to that patent.”) Thus, the legislative history does not
unambiguously support a conclusion that Congress clearly intended to
address joinder of parties under § 315(c) and consolidation of issues under
§ 315(d).
III. CONCLUSION
We deny the Joinder Motion and, therefore, deny the Second Petition
because it was not filed within the time limits imposed under 35 U.S.C.
§ 315(b).
IV. ORDER
Accordingly, it is
ORDERED that Petitioner’s request for joinder is denied.
FURTHER ORDERED that the Petition for inter partes review of
claims 20–24 of the ’228 patent is denied.
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UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MEDTRONIC, INC., MEDTRONIC VASCULAR, INC., AND
MEDTRONIC COREVALVE, LLC,
Petitioner,

v.

TROY R. NORRED, M.D.,
Patent Owner.
_______________

Case IPR2014-00823
Patent 6,482,228 B1
_______________
Before SHERIDAN K. SNEDDEN, BARRY L. GROSSMAN, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

WEATHERLY, Administrative Patent Judge, concurring.
I concur with the majority in the results that the Joinder Motion and
the Petition are denied, but I would reach those results for different reasons.
I. THE JOINDER MOTION
I would deny the Joinder Motion based on the interpretation of 35
U.S.C. § 315(c) as set forth in the majority opinion in Target Corp. v.
Destination Maternity Corp., Case IPR2014-00508 (PTAB Sept. 25, 2014)
(Paper 18) (“the Target Decision”). Medtronic moves “for Joinder of the
Second Petition for Inter Partes Review of U.S. Patent No. 6,482,228 . . .,
with the instituted inter partes review, Medtronic, Inc., et al. v. Troy R.
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Norred, Case No. IPR2014-00111, pursuant to 35 U.S.C. § 315(c) and 37
C.F.R § 42.122.” Mot. for Joinder 2. Thus, Medtronic seeks to consolidate
issues presented in the Petition with issues on which we have instituted
review in the ’111 IPR. Under the interpretation of § 315(c) expressed in the
Target Decision, a party in an existing inter partes review may not be
“joined” to that review, and additional issues presented in a new petition
may not be “joined” to an existing inter partes review. For both reasons, I
would deny Medtronic’s Joinder Motion.
I also conclude that § 315(d) further supports the interpretation of
§ 315(c) that is set forth in the Target Decision. I consider the text of
§ 315(d) informative in interpreting § 315(c) because, “[i]n expounding a
statute, we must not be guided by a single sentence or member of a sentence,
but look to the provisions of the whole law, and to its object and policy.”
Kelly v. Robinson, 479 U.S. 36, 43 (1986) (quoting Offshore Logistics, Inc.
v. Tallentire, 477 U.S. 207, 222 (1986)).
To the extent that Medtronic seeks to present new issues in the
Petition and consolidate those issues with those already present in the ’111
IPR, Medtronic seeks relief under the wrong provision of § 315. Congress
granted authority to the Director to consolidate issues in one inter partes
review with issues in another inter partes review as follows in § 315(d),
which states in pertinent part:
(d) Multiple Proceedings.— . . . during the pendency of
an inter partes review, if another proceeding or matter involving
the patent is before the Office, the Director may determine the
manner in which the inter partes review or other proceeding or
matter may proceed, including providing for . . . consolidation
. . . of any such matter or proceeding.”
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35 U.S.C. § 315(d). The presence of § 315(d) further supports my
conclusion that Congress intended to distinguish joinder of persons under
§ 315(c) from consolidation of issues under § 315(d). In the Joinder Motion,
Medtronic seeks the relief that is potentially available under § 315(d) but
moves for that relief pursuant to § 315(c). I believe that the Board is not
authorized to grant the relief requested by Medtronic under § 315(c). For
these reasons alone, I concur in the result reached by the majority in denying
the Joinder Motion.
II. THE PETITION
I would deny the Petition solely based upon Medtronic having been
served with a complaint alleging infringement of the ’228 patent more than
one year before filing the Petition.
1
Section 315(b) states in pertinent part:
An inter partes review may not be instituted if the
petition requesting the proceeding is filed more than 1 year after
the date on which the petitioner, . . . is served with a complaint
alleging infringement of the patent. The time limitation set
forth in the preceding sentence shall not apply to a request for
joinder under subsection (c).
35 U.S.C. § 315(b). The one-year bar expressed in § 315(b) applies to all
petitions filed more than one year after the petitioner is served with a
complaint for infringement. The last sentence carves out an exception to the
one-year bar that applies solely to a “request for joinder.” This exception
does not apply to a petition that is filed concurrently with a request for
joinder. Thus, I do not consider the decision on the Joinder Motion to be

1
I disagree with the majority to the extent that it concludes that the denial of
the Joinder Motion is a condition precedent to the one-year bar in § 315(b)
precluding institution of inter partes review.
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relevant to whether the one-year bar in § 315(b) precludes institution of the
review requested in the Petition.
Medtronic acknowledges that it was served with a complaint alleging
infringement of the ’228 patent more than one year before it filed the
Petition. Pet. 6. I would find that the one-year bar set forth in § 315(b)
prevents the Board from instituting the inter partes review sought in the
Petition. For these reasons alone, I concur in the result reached by the
majority in denying institution of an inter partes review.
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PETITIONER:
Jack Barufka
Evan Finkel
PILLSBURY WINTHROP SHAW PITTMAN LLP
jack.barufka@pillsburylaw.com
evan.finkel@pillsburylaw.com
PATENT OWNER:
James J. Kernell
ERICKSON KERNELL DERUSSEAU & KLEYPAS, LLC
jjk@kcpatentlaw.com

David L. Marcus
BARTLE & MARCUS LLC
dmarcus@bmlawkc.com