Medtronic, Inc. v. Teleflex Innovations S.À.R.L., No. 21-2356 (Fed. Cir. 2023)Annotate this Case
The challenged patents, owned by Teleflex, all descend from a common application filed in 2006, share a common specification, and are directed to guide extension catheters that use a tapered inner catheter that runs over a standard coronary guidewire to reduce the likelihood that a guide catheter will dislodge from the coronary artery’s opening. According to Teleflex, the claimed invention was conceived in early 2005 and developed under the “GuideLiner” name. The “rapid exchange” (RX) version of GuideLiner practices the challenged patents. An “over-the-wire” (OTW) version of GuideLiner was similar to prior art guide extension catheters and does not practice the challenged patents. The RX GuideLiner entered the market in 2009. Medtronic filed 13 petitions for inter partes review (IPR). five of which are consolidated in this appeal and asserted Itou as the primary prior art reference under pre-AIA 35 U.S.C. 102(e).
The Federal Circuit affirmed the Patent Board, finding that Medtronic did not establish that the challenged claims were unpatentable. The claimed inventions were conceived by August 2005, before Itou’s filing date, and either actually reduced to practice for their intended purpose before that date, or were diligently worked on toward constructive reduction to practice on the challenged patents’ effective filing date. The intended purpose of the claimed inventions was to provide improved backup support for the guide catheter, so Itou did not qualify as prior art.