Case: 22-1605 Document: 61 Page: 1 Filed: 03/21/2024
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`
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`MEDTRONIC, INC., MEDTRONIC VASCULAR,
`INC.,
`Appellants
`
`v.
`
`TELEFLEX LIFE SCIENCES LIMITED,
`Appellee
`______________________
`
`2022-1605, 2022-1606
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2020-
`01341, IPR2020-01342.
`______________________
`
`Decided: March 21, 2024
`______________________
`
`BRITTANY BLUEITT AMADI, Wilmer Cutler Pickering
`Hale and Dorr LLP, Washington, DC, argued for appel-
`lants. Also represented by JENNIFER L. GRABER; TASHA JOY
`BAHAL, MARK CHRISTOPHER FLEMING, HANNAH ELISE
`GELBORT, MADELEINE C. LAUPHEIMER, JEFFREY SOLLER,
`Boston, MA.
`
` SANJIV P. LAUD, McCurdy, LLC, Minneapolis, MN, ar-
`gued for appellee.
` Also represented by PETER M.
`
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`MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED
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`KOHLHEPP, TARA CATHERINE NORGARD, J. DEREK
`VANDENBURGH, JOSEPH W. WINKELS, Carlson, Caspers,
`Vandenburgh & Lindquist PA, Minneapolis, MN.
` ______________________
`
`Before LOURIE, PROST, and CHEN, Circuit Judges.
`PROST, Circuit Judge.
`Medtronic, Inc. and Medtronic Vascular, Inc. (collec-
`tively, “Medtronic”) filed two inter partes review (“IPR”) pe-
`titions asserting that claims 1, 2, 4, 5, and 7–14 of U.S.
`Patent No. 8,142,413 (“the ’413 patent”), owned by Teleflex
`Life Sciences Ltd. (“Teleflex”), are unpatentable. The
`Board concluded in two decisions that the ’413 patent was
`not shown to be unpatentable over the asserted prior art.
`Medtronic, Inc. v. Teleflex Innovations S.À.R.L., No.
`IPR2020-01341, 2022 WL 443889 (P.T.A.B. Feb. 7, 2022)
`(“’1341 Decision”); Medtronic, Inc. v. Teleflex Life Scis. Ltd.,
`No. IPR2020-01342, 2022 WL 444084 (P.T.A.B. Feb. 7,
`2022) (“’1342 Decision”). Medtronic appeals, and we affirm.
`BACKGROUND
`I
`The ’413 patent is directed to methods of using a coax-
`ial guide catheter in interventional cardiology procedures.
`See ’413 patent Abstract, claim 1. The particular “inven-
`tion relates to methods and apparatus[es] for increasing
`backup support for catheters inserted into coronary arter-
`ies from the aorta.” Id. at col. 1 ll. 14–17. The ’413 patent
`describes a typical procedure of inserting a guide catheter
`“through the aorta and into the ostium of the coronary ar-
`tery” for treatment. Id. at col. 1 ll. 35–36. “[T]ough lesions”
`in coronary arteries “can create enough backward force to
`dislodge the guide catheter from the ostium of the artery
`being treated,” which “can make it difficult or impossible
`. . . to treat certain forms of coronary artery disease.” Id.
`at col. 1 ll. 42–45. Per the ’413 patent, “the presence of the
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`coaxial guide catheter provides additional backup support
`to m ake it less likely that t he coaxial guide catheter [an d]
`guide catheter combination will be dislodged from t he os(cid:173)
`tium of the coronar y arter y while directing t he coronar y
`therapeutic device past a tou gh lesion such as a st enosis or
`a chronic arterial occlusion." Id. at col. 4 11. 38-44.
`
`The coaxial guide catheter "is deliver able t hrou gh
`st andar d guide catheters by utilizing a guidewire rail seg(cid:173)
`ment to permit delivery withou t blocking use of the guide
`cathet er ." Id. at col. 2 11. 59- 62. This coaxial guide cathe(cid:173)
`t er "includes a tip portion, a r einfor ced port ion, and a sub(cid:173)
`st antially rigid portion." Id. at col. 3 11. 35- 36. The tip
`port ion is distal, or further in the body, to the substan tially
`r igid por tion, which is "typically located at the most proxi(cid:173)
`mal en d [closest to the entrance into the body] of t he coaxial
`guide catheter ." Id. at col. 3 11. 66-67; see col. 6 11. 15-16.
`The '413 pat ent also discloses "car diac tr eatment de(cid:173)
`vice[s]," or interventional cardiology devices ("I CDs"), t hat
`"may be passed through the coaxial guide cathet er within
`the guide catheter and into t he cor onary artery." Id. at
`col. 4 11. 35-38.
`
`Figures 8 and 9 illustrat e the cathet ers in the body.
`
`Fig. 8
`
`Fig. 9
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`Id. at Figs. 8, 9 (showing guide catheter 56 and coaxial
`guide catheter 12).
`
`An embodiment specifies the following ordered steps
`when using a coaxial guide catheter:
`In operation, a guide catheter 56 is inserted into a
`major blood vessel in the body such as aortic arch
`58 over guidewire 64 and the distal end 68 of guide
`catheter 56 is brought into proximity of ostium 60
`of a smaller branch blood vessel, such as coronary
`artery 62, that it is desired to enter. Coaxial guide
`catheter 12, with tapered inner catheter 14, is in-
`serted through guide catheter 56 and over guide-
`wire 64. Guide catheter 56, guidewire 64, coaxial
`guide catheter 12, and tapered inner catheter 14
`are manipulated to insert tapered inner catheter
`tip 42 into the ostium 60 of the blood vessel that
`branches off from the major blood vessel. The
`bump tip 22 of coaxial guide catheter 12 is inserted
`with tapered inner catheter tip 42 well into ostium
`60 of coronary artery 62 or other blood vessel until
`bump tip 22 of coaxial guide catheter 12 achieves a
`deep seated position. Tapered inner catheter 14 is
`then withdrawn from the lumen of coaxial guide
`catheter 12. An interventional cardiology treat-
`ment device such as a catheter bearing a stent or a
`balloon (not shown) is then inserted through the lu-
`men of coaxial guide catheter 12 which remains in-
`side guide catheter 56.
`Id. at col. 9 l. 51–col. 10 l. 3.
`Claim 1, the sole independent claim, is representative
`and recites:
`A method of providing backup support for an [ICD]
`for use in the coronary vasculature, the [ICD] being
`adapted to be passed through a standard guide
`catheter, the standard guide catheter having a
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`continuous lumen extending for a predefined
`length from a proximal end at a hemostatic valve
`to a distal end adapted to be placed in a branch ar-
`tery, the continuous lumen of the guide catheter
`having a circular cross-sectional inner diameter
`sized such that [ICDs] are insertable into and
`through the lumen, the method comprising:
`[1.a] inserting the standard guide catheter into a
`first artery over a guidewire, the standard guide
`catheter having a distal end;
`[1.b] positioning the distal end of the standard
`guide catheter in a branch artery that branches off
`from the first artery;
`[1.c] inserting a flexible tip portion of a coaxial
`guide catheter defining a tubular structure having
`a circular cross-section and a length that is shorter
`than the predefined length of the continuous lumen
`of the standard guide catheter, into the continuous
`lumen of the standard guide catheter, and,
`[1.d] further inserting a substantially rigid portion
`that is proximal of, operably connected to, and
`more rigid along a longitudinal axis than the flexi-
`ble tip portion, into the continuous lumen of the
`standard guide catheter, the substantially rigid
`portion defining a rail structure without a lumen
`and having a maximal cross-sectional dimension at
`a proximal portion that is smaller than the cross-
`sectional outer diameter of the flexible tip portion
`and having a length that, when combined with the
`length of the flexible distal tip portion, defines a to-
`tal length of the device along the longitudinal axis
`that is longer than the length of the continuous lu-
`men of the guide catheter;
`[1.e] advancing a distal portion of the flexible tip
`portion distally beyond the distal end of the
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`standard guide catheter and into the second artery
`such that the distal portion extends into the second
`artery and such that at least a portion of the prox-
`imal portion of the substantially rigid portion ex-
`tends proximally through the hemostatic valve;
`and
`[1.f] inserting the [ICD] into and through the con-
`tinuous lumen of the standard guide catheter along-
`the substantially rigid portion and
`side of
`advancing the [ICD] through and beyond a lumen
`of the flexible tip portion into contact with or past
`a lesion in the second artery.
`’413 patent claim 1 (emphasis added).1
`For ease of comprehension, we refer to the claimed
`steps using the following shorthand:
`1.a: inserting the standard guide catheter;
`1.b: positioning the standard guide catheter;
`1.c: inserting a coaxial guide catheter;
`1.d: inserting a substantially rigid portion;
`1.e: advancing the flexible tip portion;
`1.f: inserting and advancing the ICD.
`II
`Medtronic filed two petitions for IPR of claims 1, 2, 4,
`5, and 7–14 of the ’413 patent. One petition asserted un-
`patentability over Itou2 and Ressemann.3 ’1341 Decision,
`2022 WL 443889, at *6. The other asserted obviousness
`
`
`1 We adopt the Board’s labelling of the claimed steps.
`2 U.S. Patent No. 7,736,355 (“Itou”).
`3 U.S. Patent No. 7,604,612 (“Ressemann”).
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`over Kontos4 and Adams.5 ’1342 Decision, 2022 WL
`444084, at *5.
`The Board determined that the ’413 patent was not
`shown to be unpatentable over the asserted prior art. In
`reaching this conclusion, the Board first construed claim 1
`to require performing the claimed steps in the recited or-
`der. ’1341 Decision, 2022 WL 443889, at *8–10; ’1342 De-
`cision, 2022 WL 444084, at *6–8. Addressing Itou and
`Ressemann, the Board concluded that Itou does not antici-
`pate claim 1, that claim 1 is not obvious over Itou, and that
`a skilled artisan would not have been motivated to combine
`Itou and Ressemann. ’1341 Decision, 2022 WL 443889, at
`*14–25. Addressing Kontos and Adams, the Board con-
`cluded that claim 1 was not shown to be unpatentable as
`obvious over Kontos and that a skilled artisan would not
`have been motivated to combine Kontos and Adams. ’1342
`Decision, 2022 WL 444084, at *10–13.
` Medtronic timely appealed both decisions. We have ju-
`risdiction under 28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`Medtronic argues that the Board erred by (1) constru-
`ing claim 1 to require sequential performance of the recited
`steps and (2) concluding that claim 1 was not shown to be
`obvious over the asserted prior art. We first address claim
`construction and then address the Board’s conclusions of
`nonobviousness.
`
`I
`We review the Board’s ultimate claim construction and
`determinations based on intrinsic evidence de novo and
`any subsidiary factual findings for substantial evidence.
`
`4 U.S. Patent No. 5,439,445 (“Kontos”).
`5 U.S. Patent App. Pub. No. 2004/0010280 (“Ad-
`ams”).
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`MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED
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`Personalized Media Commc’ns, LLC v. Apple Inc., 952 F.3d
`1336, 1339 (Fed. Cir. 2020).
`Medtronic argues that the Board improperly construed
`claim 1 to require performing the claimed steps in the re-
`cited order. Medtronic and Teleflex broadly agree that
`most recited steps must be performed in order. They nar-
`rowly dispute when inserting the ICD occurs during the
`performance of claim 1’s recited steps. Teleflex argues that
`inserting the ICD can occur only after advancing the flexi-
`ble tip portion. Medtronic argues that claim 1 is broader
`and also permits simultaneously inserting the ICD and a
`coaxial guide catheter. For the reasons that follow, we af-
`firm the Board’s construction.
`“As a general rule, unless the steps of a method claim
`actually recite an order, the steps are not ordinarily con-
`strued to require one.” Mformation Techs., Inc. v. Rsch. in
`Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (cleaned
`up). “However, a claim requires an ordering of steps when
`the claim language, as a matter of logic or grammar, re-
`quires that the steps be performed in the order written, or
`the specification directly or implicitly requires an order of
`steps.” Id. (cleaned up). We interpret a claim in view of
`the claim language, the specification, the prosecution his-
`tory, and, where relevant, extrinsic evidence. Phillips v.
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc).
`We start with the claim language. Our focus is on the
`inserting and advancing the ICD step (step 1.f), which re-
`cites, in part, “inserting the [ICD] into and through the con-
`tinuous lumen of the standard guide catheter alongside of
`the substantially rigid portion.” ’413 patent claim 1. This
`language demonstrates that the flexible tip portion is ad-
`vanced (step 1.e) before inserting the ICD. The claim lan-
`guage suggests this order by reciting inserting the ICD
`“alongside of the substantially rigid portion.” Id. (emphasis
`added). Although not an ironclad rule, when the current
`step of a method claim refers to a previous step using the
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`definite article “the,” the claim language indicates that the
`previous step occurs sequentially before the current step.
`E.g., Wi-Lan, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir.
`2016). Here, the antecedent basis for the substantially
`rigid portion in the inserting and advancing the ICD step
`(step 1.f) is the substantially rigid portion in the inserting
`a substantially rigid portion and advancing the flexible tip
`portion steps (steps 1.d and 1.e). Thus, the logic of claim 1
`demonstrates that the inserting and advancing the ICD
`step follows the advancing the flexible tip portion step.
`The physical requirements of the substantially rigid
`portion confirm our understanding of the proper order of
`claim 1’s steps. The step of inserting a substantially rigid
`portion (step 1.d) recites that the substantially rigid por-
`tion is “proximal of” and “operably connected to” the “flexi-
`ble tip portion.” ’413 patent claim 1. Because the two parts
`are “operably connected,” inserting the substantially rigid
`portion (step 1.d) cannot happen without first inserting the
`flexible tip portion of the coaxial guide catheter (step 1.c).
`The advancing the flexible tip portion step (step 1.e) also
`suggests that the substantially rigid portion is not in its
`final position until completion of this step because the flex-
`ible tip portion is advanced “such that at least a portion of
`the proximal portion of the substantially rigid portion ex-
`tends proximally through the hemostatic valve.” Id.
`It is important when the substantially rigid portion is
`in its final position because inserting the ICD “into and
`through” the standard guide catheter occurs “alongside of
`the substantially rigid portion.” Id. (emphasis added). The
`use of “into and through” indicates that the ICD moves
`through the standard guide catheter during the inserting
`and advancing the ICD step. This movement, which is
`“alongside of” the substantially rigid portion, cannot logi-
`cally occur “alongside of” unless the substantially rigid por-
`tion is already positioned inside the standard guide
`catheter. Since the substantially rigid portion is not in its
`final position until completion of the advancing the flexible
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`tip portion step (step 1.e), the logic of claim 1 suggests that
`the inserting and advancing the ICD step must occur after
`advancing the flexible tip portion.
`Our conclusion that claim 1 requires performing its
`steps in the recited order is consistent with the specifica-
`tion. The specification discloses an ordered performance of
`the recited steps in claim 1. ’413 patent col. 4 ll. 17–38; id.
`at col. 9 l. 51–col. 10 l. 3.6
`The specification also touts the advantages of perform-
`ing claim 1’s steps in the recited order. Claim 1 recites “[a]
`method of providing backup support.” The specification
`states that “the interventional cardiology art would benefit
`from the availability of a system that would be deliverable
`through standard guide catheters for providing backup
`support by providing the ability to effectively create deep
`seating in the ostium of the coronary artery.” ’413 patent
`col. 2 ll. 51–55. The ’413 patent specifies that “the presence
`of the coaxial guide catheter provides additional backup
`support to make it less likely that the coaxial guide cathe-
`ter [and] guide catheter combination will be dislodged from
`the ostium while directing the coronary therapeutic device
`past a tough lesion such as a stenosis or a chronic arterial
`occlusion.” Id. at col. 4 ll. 38–44. The ’413 patent thus im-
`plies that the benefit of backup support during delivery of
`an ICD occurs when the coaxial guide catheter is appropri-
`ately positioned, which is after the flexible tip portion is
`advanced. These statements provide additional support for
`our conclusion that claim 1 requires inserting and advanc-
`ing the ICD after advancing the flexible tip portion.
`
`
`6 Although this embodiment also discloses the inter-
`mediate steps of inserting and removing a tapered inner
`catheter, claim 1, as a comprising claim, is embodied even
`with the performance of additional, unclaimed steps.
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`Medtronic presents several arguments against this
`conclusion. Medtronic first argues that “alongside of” sug-
`gests a broader meaning than the meaning we adopt. Ac-
`cording to Medtronic, inserting the ICD can be “alongside
`of” the substantially rigid portion when both the ICD and
`a coaxial guide catheter are inserted simultaneously. Ap-
`pellants’ Br. 35–36. Medtronic references two cars pulling
`up to a stoplight “alongside of” each other, which suggests
`simultaneity. While Medtronic’s argument presents a
`plausible meaning of “alongside of” in a vacuum, for the
`reasons discussed above, Medtronic’s construction is not a
`persuasive reading in the context of the claim language and
`the specification. After all, “[t]he only meaning that mat-
`ters in claim construction is the meaning in the context of
`the patent.” Trs. of Columbia Univ. v. Symantec Corp., 811
`F.3d 1359, 1363 (Fed. Cir. 2016). In context, the anteced-
`ent basis language and the physical requirements of the
`substantially rigid portion require that inserting the ICD
`occurs after the substantially rigid portion is already posi-
`tioned inside the standard guide catheter.
`Additionally, Medtronic agrees that most steps in
`claim 1 must be performed in order. Medtronic does not
`dispute that inserting and positioning the standard guide
`catheter (steps 1.a and 1.b) must occur before inserting a
`coaxial guide catheter and substantially rigid portion
`(steps 1.c and 1.d) and advancing the flexible tip portion
`(step 1.e). Medtronic also acknowledges that advancing
`the ICD cannot occur until after advancing the flexible tip
`portion.7 The fact that all other steps must be performed
`in order, while not dispositive, suggests that claim 1
`
`
`7 Before the Board, Medtronic’s expert agreed during
`deposition that the only disputed step, the step of inserting
`the ICD, “has to take place after the prior steps that are
`recited” in claim 1, including the advancing the flexible tip
`portion step. J.A. 12529.
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`requires performance of its steps in the recited order. See
`Mformation Techs., 764 F.3d at 1399–1400 (“Further, we
`note that the other sub-steps in claim 1 inherently require
`an order-of-steps.”). But cf. Niazi Licensing Corp. v. St.
`Jude Med. S.C., Inc., 30 F.4th 1339, 1351–53 (Fed. Cir.
`2022) (construing some steps to have a required order but
`permitting sequential or simultaneous performance for
`other steps based on embodiments in the specification);
`Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
`1345 (Fed. Cir. 2008) (reaching a similar conclusion based
`on claim differentiation). Without any basis in the claim
`language or the specification, it would indeed be unnatural
`to read every part of the claimed method to require an or-
`dered performance except for one half of one step (inserting
`the ICD).
`Medtronic further argues that dependent claims 6, 10,
`and 11 indicate that claim 1 should not be read to require
`an ordered performance. Claim 6 depends from claim 1 and
`recites the additional steps of inserting and removing a ta-
`pered inner catheter. ’413 patent claim 6. Claims 10 and
`11 depend from claim 9, which recites the additional step
`of “extending the [ICD] through a proximal side opening”
`of the flexible tip portion. Id. at claim 9. Claims 10 and 11
`recite additional requirements for extending the ICD
`through the proximal side opening. Medtronic argues that
`these claims mean claim 1 cannot be read in the order writ-
`ten because reading the dependent claims together with
`the independent claim in the order written would result in
`nonsensical interpretations of the dependent claims. Ap-
`pellants’ Br. 37–38, 38 n.4; Reply Br. 11–13. Medtronic’s
`argument appears to rest on the assumption that a require-
`ment to perform the claimed steps in the recited order man-
`dates blindly reading the dependent claims to require
`performing all six steps of claim 1 in order and then, after
`completing the steps of claim 1, performing the steps of the
`dependent claims in the recited order. But this argument
`has no support in our reasoning here or the logic and
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`grammar of the claims. When the dependent claim steps
`may occur in the overall context of claim 1 is a matter of
`the logic and grammar of the dependent claims, read in
`light of the specification (and the claim(s) from which they
`depend). The dependent claims here do not illuminate
`when the specific steps in claim 1 must be performed. Med-
`tronic’s reliance on them is unpersuasive.
`For the foregoing reasons, we affirm the Board’s con-
`struction of claim 1.
`
`II
`We now turn to Medtronic’s challenges to the Board’s
`conclusions that a skilled artisan would not have combined
`Itou and Ressemann, that Kontos does not render claim 1
`unpatentable for obviousness, and that a skilled artisan
`would not have combined Kontos and Adams.8 What the
`prior art discloses and the presence or absence of a motiva-
`tion to combine are factual questions that we review for
`substantial evidence. Intel Corp. v. PACT XPP Schweiz
`AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023). “Substantial ev-
`idence is such relevant evidence as a reasonable mind
`might accept as adequate to support a conclusion.” Novar-
`tis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324 (Fed.
`Cir. 2017) (cleaned up).
`
`A
`We first address Medtronic’s challenge to the Board’s
`finding in the ’1341 Decision that a skilled artisan would
`not have combined Itou and Ressemann.
`
`
`8 Because Medtronic argues that Itou anticipates
`claim 1 only if we construe claim 1 not to require a specific
`order, Reply Br. 27–28, we do not address Medtronic’s an-
`ticipation argument. Medtronic also does not appeal the
`Board’s conclusion that claim 1 would not have been obvi-
`ous over Itou.
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`Itou discloses “an intravascular foreign matter suction
`assembly” designed to suck, sample, and remove “foreign
`matter such as a thrombus or an embolus” from a blood
`vessel. J.A. 1488. Ressemann discloses emboli protection
`devices that occlude blood flow with an inflatable seal to
`facilitate removal of particulates released while treating a
`lesion. J.A. 1493, 1569, 1571. Medtronic proposed insert-
`ing an ICD, like “a stent or balloon catheter, such as that
`taught by Ressemann,” “into and through the continuous
`lumen of Itou’s [general catheter] (1) and suction catheter
`(2).” J.A. 15093. Medtronic’s articulated motivation to
`combine, based on the background knowledge of its expert,
`was that it would be beneficial to remove emboli while de-
`livering a stent and more convenient to use one device for
`embolic removal and ICD delivery. J.A. 15093–94. The
`Board rejected Medtronic’s articulated motivation to com-
`bine because, among other reasons, “inserting an [ICD]
`through Itou’s lumen would block Itou’s distal tip from
`properly interacting with and aspirating a thrombus or em-
`bolus” and because introducing an ICD into a suction cath-
`eter “creates a real risk of pushing out smaller, more
`mobile pieces of residual thrombotic material from the
`catheter and embolizing these further into the vascular
`system being treated.” ’1341 Decision, 2022 WL 443889, at
`*24.
`Medtronic presents three primary reasons why the
`Board erred. First, Medtronic argues that the Board failed
`to properly analyze Medtronic’s proposed combination,
`seizing on the Board’s statements that the exact contours
`of Medtronic’s proposed combination were unclear. Id. at
`*21. We reject this argument. Medtronic proposed meet-
`ing claim 1’s inserting and advancing the ICD step by in-
`serting an ICD through a suction catheter like Itou’s.
`J.A. 15093. The Board analyzed exactly this combination.
`’1341 Decision, 2022 WL 443889, at *21–24.
`Second, Medtronic argues that the Board ignored Med-
`tronic’s evidence as to why a skilled artisan would have
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`MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED
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`combined Itou and Ressemann. But the Board did not ig-
`nore Medtronic’s evidence. Contrary to Medtronic’s asser-
`tion, the Board compared Medtronic’s arguments and
`evidence for why a skilled artisan would have combined
`Itou and Ressemann to Teleflex’s arguments and evidence
`for why a skilled artisan would not make Medtronic’s pro-
`posed combination and found Teleflex’s arguments more
`persuasive. ’1341 Decision, 2022 WL 443889, at *22–24.
`The Board, relying on the testimony of Teleflex’s expert,
`found that inserting an ICD, as taught by Ressemann,
`through a suction catheter like Itou’s “would block Itou’s
`distal tip from properly interacting with and aspirating a
`thrombus or embolus” and would create a risk of patient
`harm. Id. at *23–24. Substantial evidence supports this
`finding. J.A. 10491–92 ¶¶ 198–99, 201 (Teleflex’s expert
`explaining that inserting a device into Itou’s suction cath-
`eter before suction would interfere with suction and impair
`the functioning of Itou); J.A. 10813–15 ¶¶ 132–34 (Tele-
`flex’s expert explaining that inserting a device into Itou’s
`suction catheter after suction creates a risk of dislodging
`thrombi, which can cause strokes or heart attacks). The
`Board properly “weighed the competing evidence regarding
`the relevant tradeoffs” and concluded that the drawbacks
`“would have outweighed any reason to combine.” Intel
`Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021).
`Third, Medtronic argues that the Board required a
`teaching, suggestion, or motivation from Itou in violation
`of KSR International Co. v. Teleflex Inc., 550 U.S. 398,
`418–19 (2007), “by adopting Teleflex’s argument that there
`is no reason why a skilled artisan would want or need to
`insert a device through Itou because Itou does not disclose
`doing so,” Appellants’ Br. 68 (cleaned up). Medtronic’s ar-
`gument and use of “because” does not accurately reflect the
`Board’s analysis, which stated that “there is no reason why
`a [skilled artisan] would want or need to insert a device
`through Itou, and Itou does not disclose doing so.” ’1341
`Decision, 2022 WL 443889, at *24 (emphasis added).
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`MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED
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`We thus affirm the Board’s finding that a skilled arti-
`san would not have combined Itou and Ressemann (and its
`overall conclusion of nonobviousness based on that find-
`ing).
`
`B
`We next address Medtronic’s challenge to the Board’s
`conclusion in the ’1342 Decision that Kontos alone does not
`render claim 1 unpatentable for obviousness.
`Kontos discloses a support catheter (what is mapped to
`claim 1’s coaxial guide catheter) that protects the fragile
`balloon of a balloon catheter (what is mapped to claim 1’s
`ICD) as the balloon passes through a guide catheter.
`J.A. 1590, 1601. Kontos allows a physician to deliver a bal-
`loon catheter into a coronary vessel with a “greatly reduced
`risk of bending or kinking.” J.A. 1598. Medtronic’s peti-
`tion asserted that Kontos met the inserting and advancing
`the ICD step of claim 1 because “Kontos explains that sup-
`port assembly 10 can be advanced first, followed by [bal-
`loon] catheter 40.” J.A. 18060 (citing J.A. 1601). The
`Board concluded that Kontos did not render claim 1 obvi-
`ous because no evidence met claim 1’s requirement of in-
`serting the ICD after advancing the flexible tip portion.
`’1342 Decision, 2022 WL 444084, at *11.
`Medtronic first argues that the Board ignored critical
`portions of Kontos’s disclosure in concluding that Kontos
`alone did not render claim 1 obvious. But the Board as-
`sessed the narrow presentation of the evidence in Med-
`tronic’s petition, which relied on certain express
`disclosures of Kontos. To meet the limitation of inserting
`and advancing the ICD under the construction the Board
`adopted (which we have affirmed), Medtronic’s petition
`cited one paragraph in Kontos’s disclosure and expert tes-
`timony addressing the combination of Kontos and Adams.
`J.A. 18060 (citing J.A. 1601, 14166–67 ¶¶ 201, 203). In its
`reply, Medtronic did not address this argument at all.
`J.A. 18574 (arguing only that Teleflex “incorrectly alleges
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`that the claims require a specific order of operations”). The
`Board concluded that although Medtronic offered evidence
`of Kontos advancing the ICD after advancing the flexible
`tip portion, Medtronic provided no evidence that Kontos
`disclosed a key aspect of claim 1: advancing the flexible tip
`portion beyond the distal end of the standard guide cathe-
`ter before inserting the ICD into the proximal end of the
`standard guide catheter. ’1342 Decision, 2022 WL 444084,
`at *10–11.9 Considering the lack of evidence presented to
`the Board, substantial evidence supports its conclusion.
`On appeal, Medtronic paints a picture of the record
`where the petition presented a clear argument for why a
`skilled artisan would have modified the teachings of Kon-
`tos based on Kontos alone and a skilled artisan’s
`knowledge. Appellants’ Br. 42–46. But a fair reading of
`the petition belies this assertion. The petition first ex-
`plained why the express disclosures of Kontos teach claim
`1 (which the Board found to be deficient). J.A. 18059–62.
`The petition then explained why, “[t]o the extent not
`taught by Kontos,” a skilled artisan would have modified
`Kontos “as provided by Adams.” J.A. 18062. The Board
`understood Medtronic’s arguments for modifying Kontos as
`relating solely to the combination of Kontos and Adams,
`and Medtronic has not shown error in the Board assessing
`the argument Medtronic fairly made—whether the express
`
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`9 The Board erroneously referred to “advancing the
`substantially rigid portion of the coaxial guide catheter” in-
`stead of the flexible tip portion when discussing claim 1 and
`its proper order. Medtronic argues that the Board’s erro-
`neous statement reflects a misunderstanding of claim 1’s
`scope. We disagree. The Board’s seemingly clerical error
`does not change the crux of its conclusion: that Medtronic
`cited no evidence establishing that