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Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Medtronic, Inc. v. Teleflex Life Sciences Ltd., No. 22-1721 (Nov. 16, 2023), affirming the Patent Trial and Appeal Board’s determination that a Teleflex patent was not unpatentable.

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Teleflex is the assignee of U.S. Patent RE46,116, directed to a method for using a guide extension catheter. Medtronic petitioned for inter partes review of the ’116 patent and asserted that a reference to Itou was prior art under pre-AIA § 102(e). Teleflex argued that Itou was not prior art because the claimed invention was conceived before Itou’s filing date and was either actually reduced to practice before the critical date or diligently pursued until its constructive reduction to practice through its effective filing date.

The Board found that Itou did not qualify as prior art, so Medtronic had not shown certain challenged claims to be unpatentable. Specifically, the Board found that the claimed invention was conceived before Itou’s critical date, the claimed invention was actually reduced to practice before Itou’s critical date, and the patent owner diligently pursued work on the invention until its constructive reduction to practice through its effective filing date. In its decision, the Board incorporated its analysis from another decision on a related patent where it addressed whether Itou was prior art to similar claims with the same priority date. Medtronic appealed.

The Federal Circuit affirmed. The Court determined that the two sentences on diligence in Medtronic’s opening brief was an improper incorporation by reference that constituted a waiver of Medtronic’s diligence argument. The Court further noted that Medtronic attempted to incorporate by reference twenty pages from another brief, which would have vastly exceeded the word limit. The Court recognized that the Board can incorporate by reference analyses from other decisions, but an appellant is not entitled to do so and violate the Court’s rules in the process.

Therefore, because Medtronic waived any challenges to the Board’s diligence finding, and did not contest conception, the Court affirmed the Board’s finding that Itou was not prior art based on Teleflex’s constructive reduction to practice. The Court did not reach the issue of actual reduction to practice since it affirmed on constructive reduction to practice. Additionally, because the Court agreed that Itou was not prior art, it affirmed the Board’s decision that the challenged claims were not unpatentable.

CAFC Affirms PTAB Decision of Patentability After Improper Incorporation by Reference

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