Medtronic, Inc., Medtronic Vascular, Inc. v. Teleflex Life Sciences Limited

N OTE: This disposition is nonprecedential.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 A MADI, Wilmer Cutler Pickering
Hale and Dorr LLP, Washington, DC, argued for appel-
lants. Also represented by J ENNIFER L. G RABER ; T ASHA J OY
BAHAL , MARK CHRISTOPHER F LEMING, HANNAH ELISE
G ELBORT , MADELEINE C. L AUPHEIMER , J EFFREY SOLLER,
Boston, MA.
SANJIV P. L AUD, McCurdy, LLC, Minneapolis, MN, ar-
gued for appellee. Also represented by P ETER M.
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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 2
K OHLHEPP , T ARA CATHERINE N ORGARD, J. D EREK
VANDENBURGH , J OSEPH W. WINKELS , Carlson, Caspers,
Vandenburgh & Lindquist PA, Minneapolis, MN.
______________________
Before L OURIE, P ROST , and CHEN, Circuit Judges.
P ROST , 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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MEDTRONI C, INC. v . TELEFLEX LIFE SCIENCES LIMITED 3
coaxial guide catheter provi des additiona l b ackup sup p ort
to m ake it l ess likely t hat t h e coaxial gui de catheter [an d]
guide catheter comb in a tion will be di slodged from t h e os-
tium of t he cor ona r y ar ter y while direct in g t h e corona r y
t hera p eutic device past a tou gh l es ion su ch as a st enos is or
a c hronic arterial occlusion." Id. at col. 4 11. 38-4 4.
T he coaxial guide catheter "is de liver a ble t hrou gh
st an dar d g ui de cathete r s by utili zi ng a gui dewir e ra il seg -
ment to pe rmit de livery w itho u t bloc ki ng u se of t he guide
ca t he t er ." Id. at col. 2 11. 59- 62. This coaxial guide ca t he -
t er "i nclu d es a t ip portion, a r e infor ced port ion, and a sub -
st ant ia lly ri gid portion ." Id. at col. 3 11. 35- 36. T he t ip
port i on is di sta l, or furthe r in t he body, to th e su bsta n tia lly
r igid por tion, which is "typi ca lly l ocated at th e m ost proxi-
ma l en d [closest to t he entrance in to the b ody] of t h e coaxial
guide cath ete r ." I d. at col. 3 11 . 66-67; see co l. 6 11 . 15-1 6.
T he '4 13 pat ent also di scloses "car di ac tr eatment de-
vice[s]," or inte r vention al ca rdi ology devices ("I CDs"), t h at
"m ay be p asse d t hrough t he coaxial guide ca t he t er w ithi n
t he g ui de catheter a nd in to t h e cor on ary artery ." I d. at
col. 4 11. 35-38.
Fi gures 8 and 9 illu st ra t e t he ca t he t er s in th e body.
Fig. 8 Fig. 9
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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 4
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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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 5
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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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 6
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-
side of the substantially rigid portion and
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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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 7
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).
D ISCUSSION
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 8
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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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 9
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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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 10
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, INC. v. TELEFLEX LIFE SCIENCES LIMITED 11
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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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 12
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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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 13
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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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 14
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 15
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 16
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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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 17
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
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 Kontos discloses insert-
ing the ICD after advancing the flexible tip portion. The
Board’s error is therefore harmless.
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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 18
disclosures of Kontos teach claim 1. See Netflix, Inc. v.
DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023) (“[T]he
Board should also not have to decode a petition to locate
additional arguments beyond the ones clearly made.”). The
Board thus did not ignore critical portions of Kontos’s dis-
closure.
Medtronic also argues that the Board applied the
wrong obviousness standard by focusing on Kontos’s ex-
press disclosures rather than the broader teachings of Kon-
tos and a skilled artisan’s creativity and common sense.
But the Board did not evaluate obviousness with an overly
restricted view of the prior art. Instead, it evaluated the
obviousness arguments Medtronic presented over Kontos
alone, which were based on the express teachings of Kon-
tos. The Board did not err. Cf. Yita LLC v. MacNeil LLC,
69 F.4th 1356, 1366–67 (Fed. Cir. 2023) (no error where the
Board addresses only what a prior-art reference “teaches”
and not “what a relevant artisan would have found obvious
to modify” where the petition did not fairly present a mod-
ification argument).
We thus affirm the Board’s conclusion that claim 1 was
not shown to be unpatentable for obviousness over Kontos
alone.
C
We finally turn to Medtronic’s challenge to the Board’s
finding in the ’1342 Decision that a skilled artisan would
not have combined Kontos and Adams.
Adams describes an emboli protection system that oc-
cludes blood flow. J.A. 2457. It discloses a method of de-
ploying a filter to catch dislodged emboli. J.A. 2478. This
method teaches advancing guide catheter 10 to the ostium
of an artery, then advancing sealing device 20 until the
sealing device extends beyond the guide catheter, then ad-
vancing distal protection device 15 through the lumen of
sealing device 20, then withdrawing sealing device 20, and
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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 19
then inserting a treatment device like a stent or a balloon.
J.A. 2483. Sealing device 20 occludes blood flow during the
advancement of the distal protection device. J.A. 2483. As
Adams observes, other approaches to protecting from em-
bolisms, like a balloon approach to seal a vessel, “can be
problematic because no blood is flowing through the vessel
during use of the treatment device and ischemia can de-
velop quickly, particularly in saphenous vein grafts. The
procedure must be conducted swiftly to prevent undue pa-
tient pain.” J.A. 2477.
Medtronic’s petition proposed modifying Kontos “to, as
provided by Adams, maintain the distal end of the exten-
sion catheter beyond the distal end of the guide catheter,
and then advance the interventional device into the coro-
nary artery alongside the substantially rigid portion.”
J.A. 18062. Medtronic based this proposed modification on
Adams’s teaching of “advancing guide catheter 10 to the
ostium, whereupon the sealing device 20 (extension cathe-
ter) is advanced until the distal portion extends beyond the
guide catheter. Thereafter, the distal protection device 15
(interventional device) is advanced through the lumen of
the sealing device 20 and to a location distal to the treat-
ment device.” J.A. 18061 (cleaned up). Medtronic also as-
serted that combining Kontos and Adams “would have been
nothing more than combining prior art elements according
to known methods to yield predictable results” and pre-
sented several reasons why a skilled artisan would make
the Kontos-Adams combination. J.A. 18062–63.
The Board found that a skilled artisan would not have
combined Kontos and Adams. In doing so, the Board noted
that, in Adams, sealing device 20 is withdrawn before in-
serting a treatment device like a stent or a balloon because
occluding blood flow, which sealing device 20 does, is unde-
sirable. ’1342 Decision, 2022 WL 444084, at *12. The
Board cited Teleflex’s expert testimony in support of this
finding. J.A. 10461 ¶ 144 (“Adams emphasizes that occlud-
ing blood flow is undesirable, and therefore teaches that
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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 20
the guide seal is deployed only during deployment of the
filter and not during the subsequent delivery of [ICDs] such
as balloons and stents.” (citing J.A. 2477, 2483)). By mak-
ing this finding, the Board concluded that Adams under-
mined what Medtronic proposed—keeping sealing device
20 in guide catheter 10 during the insertion of a treatment
device like Kontos’s balloon catheter.
Medtronic raises two primary arguments against this
conclusion. First, Medtronic argues that the Board did not
analyze the proposed combination Medtronic presented in
its petition. We disagree. The Board analyzed the argu-
ment Medtronic presented in its petition and found that
Adams did not teach advancing a treatment device, like the
balloon in Kontos, through sealing device 20. While Adams
does disclose advancing distal protection device 15 through
sealing device 20, substantial evidence supports the
Board’s finding that Adams suggests drawbacks from ad-
vancing the types of treatment devices disclosed in Kontos
through sealing device 20, which are different kinds of de-
vices from distal protection device 15. J.A. 2477 (Adams
explaining that occluding blood flow during treatment has
patient drawbacks); J.A. 10461 ¶ 144 (Teleflex’s expert ex-
plaining the same). Adams itself recognizes the difference
between distal protection device 15 and other devices like
stents and balloons. E.g., J.A. 2478 (distinguishing the dis-
tal sealing device from a different “vascular treatment de-
vice,” like Kontos’s balloon catheter); J.A. 2483 (same).
Second, Medtronic argues that the Board too narrowly as-
sessed Adams’s functionality, noting that a prior-art refer-
ence only needs to be suitable for a given function. This
argument is inapposite. The Board examined Adams’s en-
tire disclosure and, in light of the drawbacks of Medtronic’s
proposed combination, found that a skilled artisan would
not combine Kontos and Adams as Medtronic proposed.
’1342 Decision, 2022 WL 444084, at *11–13. Medtronic has
not shown error in this analysis.
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MEDTRONIC, INC. v. TELEFLEX LIFE SCIENCES LIMITED 21
We thus affirm the Board’s finding that a skilled arti-
san would not have combined Kontos and Adams (and the
overall conclusion of nonobviousness based on that find-
ing).
CONCLUSION
We have considered Medtronic’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm the Board’s decisions.
AFFIRMED
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