United States Court of Appeals 

for the Federal Circuit ______________________ 

MEDTRONIC, INC., MEDTRONIC VASCULAR, 

INC.,

Appellants

v.

TELEFLEX INNOVATIONS S.A.R.L.,

Appellee

______________________ 

2021-2357, 2021-2360, 2021-2364

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2020-

00127, IPR2020-00130, IPR2020-00136.

______________________ 

Decided: June 5, 2023

______________________ 

BRITTANY BLUEITT AMADI, Wilmer Cutler Pickering 

Hale and Dorr LLP, Washington, DC, argued for appellants. Also represented by JENNIFER L GRABER; TASHA JOY 

BAHAL, MARK CHRISTOPHER FLEMING, HANNAH ELISE GELBORT, MADELEINE C. LAUPHEIMER, Boston, MA.

 SANJIV P. LAUD, McCurdy LLC, Minneapolis, MN, argued for appellee. Also represented by PETER M. KOHLHEPP, TARA CATHERINE NORGARD, J. DEREK VANDENBURGH,

JOSEPH W. WINKELS, Carlson, Caspers, Vandenburgh & 

Lindquist PA, Minneapolis, MN. 

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2 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

 ______________________ 

Before MOORE, Chief Judge, LOURIE and DYK, Circuit 

Judges. 

MOORE, Chief Judge. 

Medtronic, Inc. and Medtronic Vascular, Inc. (collectively, Medtronic) appeal inter partes review decisions of 

the Patent Trial and Appeal Board holding Medtronic 

failed to establish the unpatentability of various claims of 

U.S. Patent Nos. 8,048,032; RE45,380; and RE45,776 (the 

patents-in-suit). Medtronic also appeals the Board’s decisions granting Teleflex Innovation S.à.r.l’s (Teleflex) motions to amend certain claims of the ’032 and ’380 patents. 

For the following reasons, we affirm.

BACKGROUND

Coronary artery disease, in which plaque buildup narrows the lumen (i.e., the tubular cavity) of a patient’s artery and obstructs blood flow, affects millions of Americans. 

Cardiologists refer to this narrowing of a patient’s artery 

as stenosis. See ’032 patent at 1:25–26.1 For decades, cardiologists have used devices known as guide catheters to 

deliver interventional cardiology devices (e.g., guidewires, 

stents, balloon catheters) designed to alleviate stenoses. 

Id. at 1:15–29. Treatment typically involves inserting the 

guide catheter into the patient’s femoral or radial artery 

and guiding the catheter to the patient’s aorta until the distal tip of the catheter reaches the ostium (i.e., opening) of 

the coronary artery. Id. at 1:30–36. Interventional devices 

can then be inserted into the proximal opening of the 

1 The patents-in-suit share a common specification. 

For simplicity, all citations to the written description will 

refer to the ’032 patent.

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catheter, advanced through the lumen of the catheter using 

a guidewire, and delivered past the stenosis.2 Id. 

These procedures involved certain challenges and 

risks. For example, “[c]rossing tough lesions can create 

enough backward force to dislodge the guide catheter from 

the ostium of the artery being treated,” disrupting the procedure and potentially harming the patient. Id. at 1:36–

40, 4:40–46. This problem drove practitioners to seek new 

catheter designs and methods with increased “back-up support” that would prevent backward dislodgment of the 

catheter. Id. at 1:36–44. For example, one method disclosed in a prior art journal article (Takahashi) involves a 

“mother-and-child” technique in which a standard 5 

French guide catheter is inserted into a 6 French guide 

catheter and advanced until its distal tip is deep within the 

patient’s ostium, a technique known as deep seating.3 Id.

at 2:17–29; see J.A. 2172–76 (Takahashi). However, deep 

seating using standard guide catheters in the mother-andchild technique also involved risks, including that the stiff 

distal end of the inner catheter could damage the coronary 

artery when deeply embedded. ’032 patent at 2:28–44.

The patents-in-suit, owned by Teleflex, sought to address these problems by using a coaxial extension catheter 

insertable into standard guide catheters that offered increased back-up support and the ability to deep seat without the attendant drawbacks of traditional mother-andchild systems. See id. at 2:53–3:4, 4:33–5:3. In a preferred 

embodiment, the disclosed extension catheter includes 

three parts: (1) a proximal substantially rigid portion 20

2 The proximal and distal ends of a catheter respectively refer to the ends nearest to and farthest from the

treating physician.

3 One French is the standard unit of measurement 

for catheter diameters. One French equals one third of a 

millimeter. See J.A. 1886 ¶ 46.

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4 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

(yellow); (2) a reinforced portion 18 (blue); and (3) a distal 

flexible tip 16 (pink). See id. at 6:9–54; see also id. at Fig. 

4 (reproduced below as annotated by Medtronic’s expert). 

The proximal end of the guide extension catheter includes 

a “side opening,” i.e., a partially cylindrical region (red circle), which permits the extension catheter to receive and 

deliver interventional cardiological devices while it is 

within the guide catheter. Id. at 9:44–63. As depicted in 

Figure 4, the side opening may include multiple inclined 

regions separated by a non-inclined region, a structure referred to herein as a double-inclined side opening. The patents-in-suit also disclose and claim embodiments in which 

the diameter of the extension catheter is no more than one 

French smaller than the diameter of the guide catheter, 

thereby preserving maximal volume within the coaxial lumen for receiving interventional devices. See id. at 3:5–20.

In 2009, Teleflex introduced a series of guide extension 

catheters embodying claims of the patents-in-suit and marketed as the GuideLiner V1, GuideLiner V2, and GuideLiner V3 (collectively, the GuideLiner). Those products 

enjoyed undisputed commercial success and industry 

praise and were eventually followed by multiple, competing 

guide extension catheters, including Medtronic’s Telescope 

product, introduced in 2019.

PROCEDURAL HISTORY

In November of 2019, Medtronic petitioned for inter 

partes review of the patents-in-suit, alleging the challenged 

claims would have been obvious over U.S. Patent No. 

5,439,445 (Kontos), which discloses a support catheter for 

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delivering angioplasty balloons, in view of various combinations of secondary references. The secondary references 

included: (1) U.S. Patent Application Publication No. 

2004/0010280 (Adams), disclosing a catheter assembly 

with a distal side opening for removing embolic debris 

while occluding blood flow during treatment; (2) U.S. Patent No. 7,604,612 (Ressemann), disclosing an evacuation 

sheath assembly with a distal side opening used to remove 

embolic material while occluding blood flow using sealing 

balloons; (3) U.S. Patent Application Publication No. 

2005/0015073 (Kataishi), disclosing a suction catheter designed to remove thrombi in blood vessels; and (4) 

Takahashi. 

The Board instituted each petition and issued final 

written decisions holding some claims unpatentable and 

others not. See Medtronic, Inc. v. Teleflex Innovations 

S.à.r.l., No. IPR2020-00127, 2021 WL 2518685 (P.T.A.B. 

June 7, 2021) (’032 Decision); Medtronic, Inc. v. Teleflex Innovations S.à.r.l., No. IPR2020-00130, 2021 WL 2524006 

(P.T.A.B. June 17, 2021) (’380 Decision); Medtronic, Inc. v. 

Teleflex Innovations S.à.r.l., No. IPR2020-00136, 2021 WL 

2524191 (P.T.A.B. June 17, 2021) (’776 Decision). In addition, the Board granted Teleflex’s contingent motions to 

amend certain claims of the ’032 and ’380 patents and determined the amended claims were not unpatentable.

The parties organize the claims determined not unpatentable into four (overlapping) sets, a categorization we 

adopt for our analysis. The Side Opening Claims are

claims 3, 4, 9, 13, and 18 of the ’032 patent; claims 3, 4, 9, 

14, and 19 of the ’380 patent; and claims 25–27, 29, 33, 35–

37, 39, 41–49, and 52 of the ’776 patent. The One-French 

Claims are claims 8 and 17 of the ’032 patent; claims 8 and 

18 of the ’380 patent; and claims 30–32 and 53–56 of the 

’776 patent. The Double-Incline Claims are claims 52–56 

of the ’776 patent. Lastly, the Substitute Claims are claims 

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6 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

23–25 of the ’032 patent and claims 43 and 44 of the ’380 

patent.4

DISCUSSION

Medtronic appeals the Board’s determination that 

Medtronic failed to prove the Side Opening, One-French, 

and Double-Incline Claims would have been obvious. It 

also challenges the Board’s decision granting Teleflex’s motion to introduce substitute claims. We address each issue 

in turn.

I 

We first address Medtronic’s arguments that the Board 

erred in determining the Side Opening, Double-Incline, 

and One-French Claims are not unpatentable as obvious.5 

Obviousness is a question of law based on underlying facts. 

WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1326 (Fed. Cir. 

2016). We review the Board’s ultimate determination of 

4 Though delineated separately, the One-French and 

Double-Incline Claims of the ’776 patent, as well as the 

Substitute Claims, also recite a side opening.

5 Teleflex contends Medtronic forfeited various arguments by failing to raise them in its Requests for Director 

Rehearing made pursuant to 37 C.F.R. § 42.71(d), which 

requires the petitioning party to “specifically identify all 

matters the party believes the Board misapprehended or 

overlooked.” Specifically, Teleflex argues Medtronic’s alleged failure to comply with § 42.71(d), while not a jurisdictional bar to our review, grants us discretion to find 

unraised issues forfeited. We need not resolve this question. Even if Medtronic forfeited these arguments, an issue 

we do not decide, we have the discretion to reach them on 

appeal. Ciena Corp. v. Oyster Optics, LLC, 958 F.3d 1157, 

1161 (Fed. Cir. 2020) (“[I]t is a discretionary decision to forgive waivers of non-jurisdictional challenges . . . .”). 

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obviousness de novo and its underlying findings of fact for 

substantial evidence. Id. 

A. SIDE OPENING CLAIMS

Claim 3 of the ’032 patent is representative of the Side 

Opening Claims. It recites:

3. The device of claim 2 wherein the proximal portion of the tubular structure further 

comprises structure defining a proximal 

side opening extending for a distance along 

the longitudinal axis, and accessible from a 

longitudinal side defined transverse to the 

longitudinal axis, to receive an interventional cardiology device into the coaxial lumen while the proximal portion remains 

within the lumen of the guide catheter.

’032 patent at claim 3 (emphasis added).

As relevant here, Medtronic’s petitions asserted two

obviousness grounds against the Side Opening Claims: (1) 

Kontos in view of Adams, asserted against the claims of the 

’032 and ’380 patents, and (2) Kontos in view of 

Ressemann, asserted against the claims of the ’776 patent. 

See ’032 Decision, at *4; ’380 Decision, at *3; ’776 Decision, 

at *3. Each ground relied on modifying Kontos’ extension 

catheter by removing a funnel portion at the proximal end 

of the catheter and replacing it with the distal side openings disclosed in either Adams or Ressemann. Medtronic 

contended a skilled artisan would be motivated to make its 

proposed modifications for four separate reasons related to 

alleged improvements in the ease and scope of use of Kontos’ modified device.

In response, Teleflex argued Medtronic’s proposed 

modifications were unsupported by evidence, based on 

hindsight, and/or would not achieve the benefits Medtronic 

alleged without additional modifications not disclosed in 

Medtronic’s petition. In addition, Teleflex introduced 

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8 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

evidence of objective indicia of nonobviousness tied to its 

GuideLiner products, which are undisputedly embodiments of the Side Opening Claims. This included evidence 

that the GuideLiner was commercially successful, solved 

long-felt but unsolved needs, garnered industry praise, and 

was copied by competitors, including Medtronic.

Medtronic’s reply acknowledged additional modifications were necessary to achieve some of the alleged benefits 

but argued these modifications would not have deterred a 

skilled artisan because each was within the level of ordinary skill. It also disputed Teleflex’s evidence of objective 

indicia, arguing the evidence lacked a nexus with the Side 

Opening Claims and denying it had copied the GuideLiner 

in developing the Telescope. 

In its final written decisions, the Board held Medtronic 

failed to establish the Side Opening Claims would have 

been obvious. See ’032 Decision, at *21; ’380 Decision, at 

*21; ’776 Decision, at *16. The Board first determined the 

parties’ arguments regarding the references’ disclosures 

and motivations to combine presented a “close case.” ’032 

Decision, at *20; ’380 Decision, at *14; ’776 Decision, at *9. 

To resolve that close prima facie case, the Board then 

turned to Teleflex’s objective evidence, which it found had 

a nexus with the Side Opening Claims. Weighing these 

competing considerations, the Board ultimately determined Teleflex’s “strong objective evidence of nonobviousness” overcame the close prima facie case and that 

Medtronic had failed to prove the Side Opening Claims unpatentable. ’032 Decision, at *21; ’380 Decision, at *21; ’776 

Decision, at *16. 

On appeal, Medtronic contends the Board committed a 

host of legal errors in its analysis of Teleflex’s objective evidence and the parties’ prima facie arguments. For the reasons given below, we conclude that the Board did not err in 

its analysis and that its findings are supported by substantial evidence. We therefore affirm the Board’s

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determination that Medtronic failed to establish the Side 

Opening Claims would have been obvious.

1. NEXUS 

Medtronic first argues the Board committed legal error 

when it found a nexus between Teleflex’s objective evidence 

and the Side Opening Claims. Specifically, it contends the 

Board erred by finding nexus based on “three specific features [of the GuideLiner]—(1) rapid exchange functionality, i.e. ̧ having a relatively short lumen at the distal end of 

the catheter; (2) increased back-up support; and (3) a side 

opening”—that were collectively disclosed in a single prior 

art reference, namely Ressemann, and therefore are not indicative of nonobviousness. Appellant’s Opening Br. at 68. 

We do not agree. 

As an initial matter, it is undisputed that a presumption of nexus applies in this case because Teleflex’s “asserted objective evidence is tied to a specific product [i.e., 

the GuideLiner] and that product is the invention disclosed 

and claimed” by the patents-in-suit. See, e.g., ’032 Decision, at *19 (internal quotation marks omitted) (quoting 

WBIP, 829 F.3d at 1329). As the Board explained, Medtronic could rebut this presumption by showing Teleflex’s 

objective evidence resulted from features that were known, 

as a combination, in the prior art rather than the claimed 

invention as a whole. Id. The Board did not err in finding

Medtronic failed to make such a showing here. 

The Board acknowledged Medtronic showed every element of the Side Opening Claims was individually known 

in the prior art but correctly concluded this did not preclude nexus where the evidence was “tied to the combination of features as a whole” and the combination was not 

previously known. Id. (citing WBIP, 829 F.3d at 1331–32). 

Citing testimony from three of Teleflex’s experts, the Board

found “it was the GuideLiner devices as a whole that resulted in the evidence of secondary considerations, not any 

individual feature in isolation.” Id. (emphasis added); see 

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10 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

’380 Decision, at *20; ’776 Decision, at *15. The Board credited this testimony as showing that “[w]hen the various 

features of the prior art were combined to form the GuideLiner device . . . the result was a new, market-making, commercially successful product that provided significant 

benefits over prior art devices, received praise in the art, 

and was copied by competitors.” ’032 Decision, at *19 (emphasis added). The Board thus explicitly grounded its 

nexus finding on a combination of GuideLiner features it 

found were not disclosed, at least as a combination, in the 

prior art. We detect no legal error in this analysis. 

Medtronic accuses the Board of legal error because, in 

its view, Ressemann discloses the combination of features 

upon which Teleflex and the Board relied in its nexus analysis. While styled as a dispute of law, Medtronic’s argument is merely disagreement with the Board’s fact 

findings. See, e.g., Med. Instrumentation & Diagnostics 

Corp. v. Elekta AB, 344 F.3d 1205, 1221 (Fed. Cir. 2003) 

(“The question of what a reference teaches and whether it 

describes every element of a claim is a question for the 

finder of fact.”); WBIP, 829 F.3d at 1331 (“Questions of 

nexus are highly fact-dependent . . . .”). Medtronic asserts 

Teleflex attributed the GuideLiner’s success to its combination of rapid exchange functionality, increased back-up 

support, and “a side opening.” This is a mischaracterization. Teleflex and its experts did not attribute the GuideLiner’s success to a side opening in combination with the 

improved functionalities. Rather, Teleflex argued the 

GuideLiner was successful because, in addition to offering 

increased back-up support and rapid exchange functionality, it could advantageously “receive the full array of interventional cardiology devices,” an ability it grounded in “the 

claimed requirement that the tubular structure have a ‘coaxial lumen’ (which facilitates maximizing ‘real estate’) . . . 

combined with a side opening that facilitates entry of . . . 

[an] interventional cardiology device into the tubular portion.” J.A. 17611 (emphasis added); see also J.A. 23676–67 

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(explaining the ability to receive the full array of cardiological devices is “reflected in the claimed requirement for a 

single lumen, as well as [a side opening]” (emphasis 

added)). 

Teleflex, and the Board, thus clearly relied not just on 

the presence of a side opening, as Medtronic contends, but 

on a side opening together with coaxial lumens. Indeed,

Teleflex’s expert Dr. Graham clearly explained that both

the coaxial lumen and proximal side opening are critical to 

the GuideLiner’s ability to receive the full array of interventional cardiology devices. The proximal side opening 

allows the GuideLiner to “receive interventional cardiology 

devices . . . while the proximal opening was deep inside the 

guide catheter,” and the coaxial lumen “allow[s] the usable 

real estate inside the guide extension catheter to be maximized.” J.A. 10302 ¶ 81. Thus, even if Medtronic’s allegation that Ressemann discloses a device with a side opening, 

rapid exchange functionality, and increased back-up support were true, it does not show the features driving the 

GuideLiner’s success were disclosed in the prior art.

Medtronic contends the Board’s reliance on the coaxial 

lumens touted by Teleflex’s experts is irrelevant because 

“the Board never made any finding distinguishing the 

claimed side opening from Ressemann.” Appellant’s Reply 

Br. at 27. Medtronic misunderstands the applicable burdens. In an inter partes review, “the petitioner shall have 

the burden of proving a proposition of unpatentability by a 

preponderance of the evidence.” 35 U.S.C. § 316(e). The 

absence of a finding that Ressemann does not have a coaxial lumen therefore cannot establish Ressemann in fact has 

those features.6 Medtronic also points to the Board’s 

6 Medtronic’s assertion that the Board did not make 

any findings distinguishing the claimed side opening from 

Ressemann is also incorrect. In discussing Teleflex’s evidence of copying, the Board rejected Medtronic’s argument 

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12 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

finding in a related proceeding that Ressemann anticipates 

claims 25, 26, 28–31, 34–37, and 39 of the ’380 patent. See 

Medtronic, Inc. v. Teleflex Innovations S.à.r.l., No. 

IPR2020-00129, 2021 WL 2524890, at *11 (P.T.A.B. June 

17, 2021). However, as the Board noted in that decision, 

those claims do not recite coaxial lumens. Id. at *7 n.9. 

The Board’s finding that Ressemann anticipates those

claims therefore implies nothing about whether 

Ressemann discloses the coaxial lumens recited by the Side 

Opening Claims. 

We conclude the Board did not err in finding a nexus 

between Teleflex’s objective evidence and the Side Opening 

Claims. Medtronic does not otherwise argue that the 

Board’s finding, if legally proper, is not supported by substantial evidence. Accordingly, we affirm the Board’s finding of nexus. 

2. COPYING

Medtronic next challenges the Board’s finding that 

Medtronic copied the GuideLiner in developing its own 

guide extension catheter, the Telescope. See ’032 Decision, 

at *20; ’380 Decision, at *21; ’776 Decision, at *16. The 

Board found Medtronic copied the GuideLiner based on its 

findings that (1) Medtronic had access to the GuideLiner 

that Teleflex could not show copying of the GuideLiner, as 

opposed to the prior art, because Ressemann is also “a 

rapid exchange device and has a side opening.” ’032 Decision, at *21. The Board found this argument unavailing 

because the copying product “did not merely apply the idea 

of rapid exchange or the use of a side opening,” as taught 

by Ressemann, but instead “reproduce[d] the entire combination of features that were assembled for the first time by 

the GuideLiner products.” Id. The Board thus rejected any 

contention that Ressemann disclosed the full combination 

of features utilized by the GuideLiner.

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while it was developing the Telescope and the products 

have substantially similar designs, and (2) there was “direct evidence” Teleflex had copied “at least a portion of the 

GuideLiner device.” See, e.g., ’032 Decision, at *20. Medtronic argues the Board’s reliance on substantial similarity 

between the GuideLiner and Telescope products to infer 

copying evinces legal error. In Medtronic’s view, evidence 

of substantial similarity is “irrelevant” because it does not 

show that Medtronic “actually copied” the GuideLiner 

when developing the Telescope. Appellant’s Opening Br. 

at 64. Under a correct view of the law, Medtronic argues, 

the Board “identified no evidence of actual copying efforts” 

and therefore its finding of copying must be reversed. Id.

“It is well established that copying by a competitor is a 

relevant consideration in the objective indicia analysis” 

and therefore “may be evidence that the patented invention 

is nonobvious.” Liqwd, Inc. v. L’Oreal USA, Inc., 941 F.3d 

1133, 1137 (Fed. Cir. 2019). The fact that a competitor copied the patentee’s invention, rather than one within the 

public domain, is probative of nonobviousness because it 

suggests the competitor saw value in the invention that he 

could not achieve without copying. See, e.g., Diamond Rubber Co. of N.Y. v. Consol. Rubber Tire Co., 220 U.S. 428, 441

(1911). “Copying may indeed be another form of flattering 

praise for inventive features” of a patented product, Crocs, 

Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1311 (Fed. Cir. 

2010), but one undertaken at the risk of infringement.

These rationales only apply, of course, if the alleged 

copyist has in fact copied the patented product rather than 

independently arrived at a similar design. Indeed, a competitor’s independent and contemporaneous development 

of a similar product may, in some cases, even suggest the 

patented product would have been obvious. Lindemann 

Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 

F.2d 1452, 1460 (Fed. Cir. 1984) (“[T]he possibility of near 

simultaneous invention by two or more equally talented inventors working independently . . . may or may not be an 

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14 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

indication of obviousness when considered in light of all the 

circumstances.”). It is also clear that the copying inquiry 

involves a comparison of the competitor’s product with the

allegedly copied patented product, rather than the patent’s 

claims, lest the “separate infringement and copying inquiries [collapse] into a single analysis.” Liqwd, 941 F.3d at

1137; see also Iron Grip Barbell Co. v. USA Sports, Inc., 392 

F.3d 1317, 1325 (Fed. Cir. 2004) (“[C]opying requires the 

replication of a specific product.”). To that end, we have 

recognized copying must be supported by “actual evidence 

of copying efforts as opposed to mere allegations regarding

similarities between the accused product and a patent.” 

Liqwd, 941 F.3d at 1337–38.

We have never held, however, that copying cannot be 

established through evidence of access to and substantial 

similarity with a patented product. Indeed, in Liqwd, the 

very case Medtronic cites for the proposition that substantial similarity is irrelevant, we expressly recognized that 

“[e]vidence of copying may include . . . access and similarity 

to a patented product.” Id. at 1337; see also Cable Elec. 

Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. 

Cir. 1985) (“Access in combination with similarity can create a strong inference of copying.”), overruled on other 

grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 

175 F.3d 1356 (Fed. Cir. 1999). That same standard is also 

universally applied in the copyright context, which likewise requires actual copying of a copyrighted work rather 

than similarity by happenstance. See, e.g., Walker v. Time 

Life Films, Inc., 784 F.2d 44, 48 (2d Cir. 1986) (“Copying 

may be inferred where a plaintiff establishes that the defendant had access to the copyrighted work and that substantial similarities exist as to protectible material in the 

two works.”).

Medtronic’s contention that the Board identified no evidence of actual copying is at odds with this precedent. Evidence of access and substantial similarity is evidence of 

copying. Medtronic’s argument is tantamount to requiring 

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that copying can be proven only by direct evidence “such as 

photos of patented features or disassembly of products,” 

Liqwd, 941 F.3d at 1137, rather than circumstantial evidence such as access and similarity. Our case law has 

never drawn any such distinction, nor would such a distinction be consistent with basic principles of evidence and inference. Circumstantial evidence is just that—evidence. It 

establishes that a given fact is more likely to be true than 

one would otherwise believe in the absence of the evidence. 

Nor is circumstantial evidence second-class to direct evidence: “Circumstantial evidence is not only sufficient, but 

may also be more certain, satisfying and persuasive than 

direct evidence.” Michalic v. Cleveland Tankers, Inc., 364 

U.S. 325, 330 (1960) (citation omitted). 

Here, there is more than sufficient circumstantial evidence to support the Board’s finding of copying.7 See

WBIP, 829 F.3d at 1336 (“Copying is a question of fact” reviewed for substantial evidence). Teleflex’s experts “persuasively demonstrate[d] that the . . . Telescope products, 

when considered as a whole, are substantially similar in 

design to then-existing GuideLiner products on the market, including the combined use of a flexible tip, reinforced 

portion, angled opening, pushrod, and rounded push tab.” 

’032 Decision, at *20 (citing J.A. 10052–57 ¶¶ 231–39). 

Medtronic contends the Board disregarded differences between the GuideLiner and Telescope in finding substantial 

similarity. Not so. The Board acknowledged the Telescope 

“differs from the GuideLiner V3 in its use of a hydrophilic 

coating and a round pushwire, and the ‘half pipe’ design of 

the two products is not identical.” Id. It simply found, 

again crediting Teleflex’s expert, that these differences

7 It is undisputed that the GuideLiner was publicly 

available on the market and accessible to Medtronic while 

it was developing the Telescope. 

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16 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

were not so significant as to preclude substantial similarity

and the corresponding inference that Medtronic copied. Id. 

Medtronic’s argument that the Board committed legal 

error by relying on evidence of substantial similarity is 

meritless.8 Because the Board’s finding that Medtronic 

copied is supported by substantial evidence, we affirm its 

finding that Medtronic’s copying is indicative of nonobviousness.

3. ADDITIONAL OBJECTIVE INDICIA

In addition to Medtronic’s copying, the Board relied on 

multiple other objective indicia of nonobviousness, including evidence the GuideLiner was copied by other competitors, enjoyed “a high level of commercial success,” “received 

significant praise in the industry,” and solved long-felt 

needs within the medical community for catheters with increased back-up support.9 See, e.g., ’032 Decision, at *16–

20. Medtronic does not challenge any of these findings on 

appeal. Thus, having affirmed the Board’s findings of 

nexus and Medtronic’s copying, the Board’s findings related to objective indicia remain entirely intact. 

The Board’s findings related to Teleflex’s objective evidence played a critical role in its determination that the 

Side Opening Claims are not unpatentable. The Board expressly turned to that “strong evidence” in order to resolve 

8 Medtronic also disputes the Board’s finding of “direct evidence” of copying on the same grounds that it disputes the Board’s finding of substantial similarity: that the 

evidence is insufficient to show actual copying. See, e.g., 

’032 Decision, at *20. We reject those arguments for the 

same reasons. 9 The Board also considered Teleflex’s evidence that 

competitors licensed the patents-in-suit but found this evidence to have limited probative value. ’032 Decision, at 

*17. We therefore do not consider this evidence on appeal.

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the parties’ close prima facie arguments and, on that basis, 

found Medtronic had failed to establish the obviousness of 

the Side Opening Claims. E.g., ’032 Decision, at *21. While 

we review the ultimate question of obviousness de novo, the

Board’s finding that the objective evidence carried significant weight is entitled to deference. In re Inland Steel Co., 

265 F.3d 1354, 1366 (Fed. Cir. 2001) (“[W]e give the Board 

broad deference in its weighing of the [objective] evidence

before it.”); see also Bristol-Myers Squibb Co. v. Teva 

Pharms. USA, Inc., 752 F.3d 967, 978 (Fed. Cir. 2014) (“We 

give deference to a lower court’s factual findings regarding 

evidence of secondary considerations.”).

“Weighing this objective evidence along with all the 

other evidence relevant to obviousness,” we agree with the 

Board’s determination that Medtronic failed to prove the 

Side Opening Claims obvious by a preponderance of the evidence. See Transocean Offshore Deepwater Drilling, Inc. 

v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1355 (Fed. 

Cir. 2012) (concluding claims were nonobvious despite

prima facie showing of obviousness). Even accepting Medtronic’s arguments concerning the prior art’s disclosures 

and motivations to combine, the unusually strong objective 

evidence in this case strongly supports a determination of 

nonobviousness. See Stratoflex, Inc. v. Aeroquip Corp., 713 

F.2d 1530, 1538–39 (Fed. Cir. 1983) (“[E]vidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an 

invention appearing to have been obvious in light of the 

prior art was not.”). 

The Board found four distinct objective factors support 

nonobviousness, the majority of which Medtronic did not 

even attempt to dispute below or on appeal. These include 

the Board’s finding that the GuideLiner enjoyed a “high 

level of commercial success” and that Teleflex’s licensees 

“had essentially 100% of the U.S. guide extension catheter 

market.” ’032 Decision, at *16 (citing J.A. 10533–40 (confidential documents demonstrating the GuideLiner’s 

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18 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

commercial success)). Indeed, Medtronic’s own internal 

documents concede the GuideLiner “created the market” 

for guide extension catheters and enjoyed substantial market share. J.A. 10858. The GuideLiner’s considerable commercial success clearly supports a determination of 

nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1391 (Fed. Cir. 1988) (“The 

commercial response to an invention is significant to determinations of obviousness, and is entitled to fair weight.”). 

The Board also relied on extensive praise within the industry, which touted the GuideLiner as “an elegant method to 

overcome” problems the industry previously considered 

“impossible despite the use of a highly supporting guiding 

catheter.” ’032 Decision, at *17 (citing J.A. 10588–843); see

also ’380 Decision, at *16 (discussing evidence the GuideLiner solved the long-felt but unmet need for a catheter 

that could avoid backout problems and “allow[ed] physicians to perform previously impossible coronary procedures”). That the GuideLiner solved problems the industry 

previously considered “impossible” is also strongly suggestive of nonobviousness. WBIP, 829 F.3d 1335 (“If industry 

participants or skilled artisans are skeptical about whether 

or how a problem could be solved . . . it favors nonobviousness.”). Teleflex’s experts similarly testified the GuideLiner was “a transformational and enabling device” that 

provided an “elegant” and “completely new” solution to 

problems the industry had attempted to solve for decades 

without success. See J.A. 10292 ¶¶ 69, 70 (Dr. Graham); 

J.A. 11158–64 ¶¶ 7, 9–20 (Dr. Thompson); J.A. 10487–92 

¶¶ 4–10, 12 (Dr. Azzalini). 

Additionally, like the Board, we find particularly persuasive the Board’s finding that multiple competitors copied the GuideLiner in developing their own guide extension 

catheters. WBIP, 829 F.3d at 1336 (“The fact that a competitor copied technology suggests it would not have been 

obvious.”). This finding was based not only on Teleflex’s 

expert testimony that the GuideLiner and competing 

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products were substantially similar, but also direct evidence showing competitors actively sought to emulate the 

GuideLiner. For example, Medtronic’s design documents 

demonstrate Medtronic purchased and tested the GuideLiner while developing the Telescope, J.A. 10899–90, and 

concede it was seeking to “build its own ‘Half Pipe’ design,” 

J.A. 10848, “Half Pipe” being a marketing term used by Teleflex to describe the GuideLiner’s side opening, J.A. 

10565. See also J.A. 11317–33 (confidential documents

comparing the GuideLiner and Telescope). Other documents and testimony show other competitors likewise 

sought to reproduce the claimed beneficial features of the 

GuideLiner. See, e.g., J.A. 10887 (Boston Scientific characterizing its GuideZilla product as “incorporate[ing] substantially equivalent device materials and design . . . [and] 

fundamental technology . . . as the GuideLiner V2”); J.A. 

10052 ¶¶ 232–39 (Teleflex expert opining the GuideZilla 

and GuideLiner are substantially similar). 

The Board’s findings support the conclusion that Medtronic failed to carry its burden to show obviousness. We 

see no legal error in the Board’s conclusion that Medtronic 

failed to prove the Side Opening Claims would have been 

obvious by a preponderance of the evidence. While we have 

acknowledged “[a] strong case of prima facie obviousness . 

. . cannot be overcome by a far weaker showing of objective 

indicia of nonobviousness,” Tokai Corp. v. Easton Enters., 

Inc., 632 F.3d 1358, 1371 (Fed. Cir. 2011), this case presents the opposite scenario. The Board found Medtronic 

presented a “close” prima facie case, but that this showing 

was overcome by Teleflex’s “strong” objective evidence. We 

agree. 

4. THE BOARD’S PRIMA FACIE ANALYSIS

Medtronic’s remaining arguments regarding the Side 

Opening Claims take issue with the Board’s exemplary reasons for finding the parties’ prima facie arguments 

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20 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

presented a close case. Medtronic argues these reasons reflect legal errors in the Board’s analysis. We are not persuaded. 

Medtronic first contends the Board erred by allegedly 

ignoring two of Medtronic’s proposed motivations to combine. Medtronic’s petition contended a skilled artisan 

would be motivated to make its proposed modifications for 

four reasons, namely to (1) allow the outer diameter of Kontos’ assembly to be reduced without reducing entry area; 

(2) facilitate smoother insertion of interventional cardiology devices into the extension catheter; (3) reduce the force 

necessary to advance the extension catheter through the 

guide catheter while in tortuous vasculature; and (4) permit smoother reentry of the proximal end of the extension 

catheter into the guide catheter if it was extended beyond 

the distal tip of the guide catheter. Medtronic asserts the 

Board legally erred by failing to consider the latter two reasons in its decisions. 

Contrary to Medtronic’s arguments, the Board’s decisions do not suggest the Board ignored any proposed motivations to combine. The Board expressly and accurately 

recounted each of Medtronic’s proposed motivations and 

Teleflex’s responses before concluding that “upon review of 

the . . . arguments and supporting evidence,” the parties 

had presented a close case. ’032 Decision, at *20; ’380 Decision, at *14; ’776 Decision, at *9. The Board’s express 

statement that it “review[ed]” and weighed the arguments 

it had just recounted belies Medtronic’s contention that 

those arguments were simply ignored. 

Medtronic infers the Board ignored these motivations 

because they do not appear in the Board’s exemplary reasons for finding the parties’ arguments presented a close 

prima facie case. See ’032 Decision, at *20 (providing “example[s]” of deficiencies in Medtronic’s arguments); ’380 

Decision, at *14 (same); ’776 Decision, at *9 (same). Medtronic’s inference is not warranted. That the Board did not 

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explicitly address some of Medtronic’s proposed motivations in its exemplary reasons does not imply the Board ignored those motivations, especially where, as here, the 

Board had just enumerated the arguments. Nothing in the 

Board’s decisions suggests its examples were intended as 

an exhaustive list of arguments the Board considered or 

rejected. Indeed, if any inference is to be drawn from the 

absence of the allegedly ignored motivations in the Board’s

exemplary criticisms, it is that the Board considered those 

motivations and found them more persuasive than those it 

explicitly decried—precisely the opposite of what Medtronic suggests. 

Medtronic also suggests that, even if the Board in fact

considered each motivation in reaching its determination, 

its failure to explicitly address every motivation in its written decisions is inconsistent with its obligations under the 

Administrative Procedure Act. We do not agree. While we 

have acknowledged “it is not adequate [for the Board] to 

summarize and reject arguments without explaining why 

[it] accepts the prevailing argument,” In re Nuvasive, Inc., 

842 F.3d 1376, 1383 (Fed. Cir. 2016), we have also repeatedly explained “the Board is not require[d] . . . to address 

every argument raised by a party or explain every possible 

reason supporting its conclusion,” Yeda Rsch. v. Mylan 

Pharms. Inc., 906 F.3d 1031, 1046 (Fed. Cir. 2018). The 

central inquiry is whether we can “reasonably discern that 

[the Board] followed a proper path, even if that path is less 

than perfectly clear.” Ariosa Diagnostics v. Verinata 

Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015) (citing 

Bowman Transp., Inc. v. Arkansas-Best Freight Sys., Inc., 

419 U.S. 281, 285–86 (1974)). 

The Board’s path in this case is discernible. The Board 

accurately recounted the parties’ prima facie arguments 

and evidence and noted those arguments made for a close 

case, suggesting it considered and weighed all of the arguments it had just recounted. The Board then went on to 

expressly identify the prevailing argument driving its 

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22 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

decision, namely the strong objective evidence of nonobviousness, which it turned to “in order to resolve this close 

case of obviousness.” ’032 Decision, at *20; see also ’380 

Decision, at *14; ’776 Decision, at *10. While the Board’s 

decision could have been more detailed, “we do not require 

perfect explanations.” In re Nuvasive, 842 F.3d at 1382. 

Certainly, nothing suggests the Board “entirely failed to 

consider an important aspect of the problem” before it. Motor Vehicle Mfrs. Ass’n of U.S., Inc. v. State Farm Mut. 

Auto. Ins. Co., 463 U.S. 29, 43 (1983). Accordingly, we conclude the Board adequately explained the grounds for its 

decisions. See SEC v. Chenery Corp., 318 U.S. 80, 94 (1932) 

(“[T]he orderly functioning of the process of review requires 

that the grounds upon which the administrative agency 

acted [are] clearly disclosed and adequately sustained.”). 

Medtronic also argues the Board erred in its analysis 

of the motivations. In each decision, the Board noted that 

replacing Kontos’ funnel to reduce the diameter of the catheter and increase the interior volume would require several 

additional modifications absent from Medtronic’s petition, 

including at least one modification that the Board found 

“may not have been possible in the relevant time period.” 

’032 Decision, at *20; ’380 Decision, at *14; ’776 Decision, 

at *9.10 Although the Board did not indicate it gave these 

observations particular weight in its analysis or that they 

led it to ultimately find a skilled artisan would not have 

had a reasonable expectation of success, Medtronic contends the Board erred in “doubting” that success. Appellant’s Opening Br. at 40–45. Specifically, Medtronic argues 

the Board’s supposed finding that a skilled artisan would 

not have had a reasonable expectation of success is not 

10 The Board’s observation that one modification may 

have been impossible was not included in the ’776 Decision, 

although Medtronic relied on the same modification in that 

proceeding. 

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supported by substantial evidence because each modification would have been routine and within the level of ordinary skill.

The Board’s “doubts” regarding Medtronic’s proposed 

modifications do not indicate the Board found a skilled artisan would not have had a reasonable expectation of success. Indeed, had the Board made such a finding, there 

would have been no need for it to rely on Teleflex’s objective 

evidence to resolve the case because the absence of a reasonable expectation of success defeats obviousness. Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 

1291 (Fed. Cir. 2018) (“An obviousness determination requires finding that a person of ordinary skill in the art 

would have been motivated to combine or modify the . . . 

prior art and would have had a reasonable expectation of 

success in doing so.” (emphasis added and citation omitted)). We understand the Board’s decision as concluding 

that, even if a skilled artisan would have been motivated to 

make and reasonably expected success in making the proposed modifications, Medtronic had not established obviousness in view of Teleflex’s strong objective evidence.11 

Medtronic’s assertion that the Board’s doubts demonstrate 

legal error or constitute unsupported findings is thus unpersuasive.

Next, Medtronic argues the Board erred as a matter of 

law by discounting prior art side openings intended to receive interventional cardiological devices as rare. See, e.g., 

’032 Decision, at *20 (noting in its exemplary criticisms 

that side openings used to receive interventional devices 

while the catheter was still in vasculature were “rare” in 

the prior art). We do not agree. In the circumstances of 

11 To the extent the Board did make such a finding, it 

is supported by substantial evidence for the same reasons 

discussed below with respect to the One-French Claims. 

See infra Section I.B.

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24 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

this case, the Board, as the trier of fact, could consider a 

feature’s rarity in finding whether there was a motivation 

to combine the prior art, itself a factual inquiry.12 See, e.g., 

WBIP, 829 F.3d at 1327.

Medtronic contends our decision in Cree precludes the 

Board from “dismiss[ing]” prior art disclosures because of 

their rarity. Appellant’s Opening Br. at 36–37 (citing In re 

Cree, Inc., 818 F.3d 694, 700–01 (Fed. Cir. 2016)). As an 

initial matter, the Board’s decisions do not suggest they 

“dismissed” the prior art disclosures. Rather, those decisions prove the Board considered the disclosures but found, 

as a factual matter, that their relative rarity weighed 

against a motivation to combine. See, e.g., ’032 Decision, at 

*20. In any event, the Board’s analysis is consistent with 

Cree. There, Cree argued the Board erred by relying on 

expert testimony to support a finding that a process was 

known in the prior art because the experts had also testified the process was disfavored. 818 F.3d at 700. We rejected that argument because the testimony plainly cut 

against Cree’s contention that the process was “unknown” 

and instead supported the Board’s finding that the process 

was known, even if disfavored. Id. This case presents the 

inverse scenario, but the Board’s reliance on Teleflex’s expert testimony was no less proper. Medtronic’s petition 

contended that side openings were “well known” in the 

prior art and identified several purported examples. J.A. 

17064. Teleflex responded with expert testimony explaining why Medtronic’s cited examples did not in fact use side 

openings in the manner claimed and opining such side 

12 Medtronic did not raise any argument, below or on 

appeal, that rarity was not probative because it was due to 

factors unrelated to potential motivations to combine. Instead, it argued only that the rarity of a feature is categorically irrelevant to whether a skilled artisan would have 

been motivated to incorporate it into a new design. 

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openings were “not well-known.” The Board did not err in 

taking this testimony into account when assessing the 

strength of Medtronic’s evidence. Testimony that a prior 

art feature was rare is plainly relevant to whether it was 

in fact well known, as Medtronic contended. Thus, the 

Board did not “dismiss explicit prior art” disclosures because of their rarity. Appellant’s Opening Br. at 36. Instead, it reasonably discounted Medtronic’s argument that 

the prevalence of side openings in prior art interventional 

cardiology devices contributed to a motivation to combine. 

See, e.g., ’032 Decision, at *15, *20.

Finally, with respect to the Side Opening Claims of the 

’776 patent, Medtronic contends the Board legally erred by 

crediting Teleflex’s expert testimony that a skilled artisan 

would not be motivated to replace Kontos’ funnel with 

Ressemann’s side opening because of significant problems 

it would create. See ’776 Decision, at *9. Medtronic’s accusation of legal error is yet again mere disagreement with 

the Board’s fact finding. Teleflex’s expert explained that 

simply slicing off Kontos’ funnel, as proposed, would introduce a gap between Kontos’ support catheter and the inner 

wall of the guide catheter, exposing an interior spring coil 

and significantly increasing the likelihood of the device 

catching. J.A. 10009–11 ¶¶ 157–59. This is consistent with 

Ressemann’s own disclosure that “[s]tent delivery catheters . . . are particularly subject to hanging-up on the proximal end” of the disclosed side opening, a problem 

Ressemann addresses in other embodiments. See J.A. 2145 

at 25:17–29. Medtronic ignores the Board’s express reliance on Teleflex’s expert and asserts the Board instead 

came to its conclusion by erroneously focusing on 

Ressemann’s hang-up-mitigating embodiments to the detriment of the side opening embodiment. The Board did not 

ignore Ressemann’s side opening embodiment; it merely 

found Teleflex’s expert testimony more persuasive than 

Medtronic’s. That is not legal error. 

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26 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

For the reasons given, we affirm the Board’s holding 

that Medtronic failed to establish that the Side Opening 

Claims are unpatentable as obvious.

B. ONE-FRENCH CLAIMS

Claim 8 of the ’032 patent is representative of the OneFrench Claims. It recites:

8. The device of claim 1 wherein the crosssectional inner diameter of the coaxial lumen of the tubular structure is not more 

than one French smaller than the cross-sectional inner diameter of the guide catheter.

’032 patent at claim 8 (emphasis added).

Medtronic asserted two obviousness grounds against 

the One-French Claims: (1) Kontos in view of Adams and 

Takahashi, asserted against the claims of the ’032 and ’380 

patents, and (2) Kontos in view of Ressemann and 

Takahashi, asserted against the claims of the ’776 patent. 

’032 Decision, at *21; ’380 Decision, at *21; ’776 Decision, 

at *16. As it did for the Side Opening Claims, Medtronic

posited the desire for increased back-up support would motivate a skilled artisan to replace Kontos’ proximal funnel 

with the distal side openings of Adams and Ressemann. 

Medtronic reasoned this modification would allow a skilled 

artisan to incorporate Takahashi’s five-in-six system, in 

which a 5-French inner catheter is inserted into a 6-French

guide catheter. Teleflex opposed on the same grounds it 

opposed Medtronic’s arguments concerning the Side Opening Claims, including by identifying objective evidence of 

the nonobviousness of the ’776 patent One-French Claims, 

which also recite a side opening. It also argued removing 

Kontos’ funnel would result in a greater than one-French

gap between the inner extension catheter and guide catheter because of Kontos’ protruding marker band and base. 

See, e.g., ’032 Decision, at *22. In reply, Medtronic argued 

a skilled artisan could account for that gap by making 

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additional modifications not proposed in its petition, including by recessing Kontos’ marker band. Id.

The Board held Medtronic failed to establish the OneFrench Claims would have been obvious. E.g., ’032 Decision, at *22. In doing so, the Board invoked the same reasons it gave for concluding the Side Opening Claims were 

not unpatentable, namely that Medtronic failed to establish it would have been obvious to replace Kontos’ proximal 

funnel with a side opening and that Medtronic’s reliance on 

new, extensive modifications in reply was more suggestive 

of hindsight than obviousness. Id. Additionally, with respect to the One-French Claims of the ’776 patent, the 

Board found Teleflex’s objective evidence was indicative of 

nonobviousness. ’776 Decision, at *18.

On appeal, Medtronic argues the Board’s decision must 

be reversed for the same reasons it contends the Board’s 

analysis of the Side Opening Claims was legally erroneous. 

We reject those arguments for the reasons already given. 

Additionally, we hold the Board’s finding that Medtronic failed to establish a reasonable expectation of success to modify Kontos to achieve the One-French Claims

was neither legally erroneous nor unsupported by substantial evidence. See PAR Pharm., Inc. v. TWI Pharms., Inc., 

773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or absence of a reasonable expectation of success is . . . a question of fact,” reviewed for substantial evidence). The Board 

observed that replacing Kontos’ funnel with a side opening 

would “require[] significant modifications to Kontos’ device, modifications that were not proposed in the Petition.” 

’032 Decision, at *22; ’380 Decision, at *22; ’776 Decision, 

at *20. The Board explained “[t]he extensive need to modify Kontos’ device in a way not suggested in the Petition 

supports [Teleflex’s] argument that the proposed modifications are based on a hindsight desire to recreate the 

claimed invention, as opposed to a known need in the art 

for such a device.” Id. The Board did not err in discounting 

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28 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

modifications not presented in Medtronic’s petition as indicative of hindsight. It was within the Board’s discretion 

not to consider these untimely raised modifications. See 

Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 

F.3d 1359, 1369 (Fed. Cir. 2016) (“Once the Board identifies new issues presented for the first time in reply, neither 

this court nor the Board must parse the reply brief to determine which, if any, parts of that brief are responsive and 

which are improper.”). 

Further, the Board explained one of the modifications 

not raised in Medtronic’s petition (recessing Kontos’ 

marker band) “may not have been possible in the relevant 

time period.” See, e.g., ’032 Decision, at *20. That is consistent with Teleflex’s expert testimony explaining recessing the marker band as proposed was not a realistic option 

as of the patents’ priority date because it would reduce the 

mechanical integrity of Kontos’ device and weaken the attachment of Kontos’ distal tip. See J.A. 5318. This is substantial evidence supporting the Board’s finding. We 

therefore affirm the Board’s determination that Medtronic 

failed to prove the One-French Claims would have been obvious by a preponderance of the evidence.

C. DOUBLE-INCLINE CLAIMS

Claim 52 of the ’776 patent is representative of the 

Double-Incline Claims. It recites:

52. A guide extension catheter for use with 

a guide catheter, comprising:

a substantially rigid segment;

a tubular structure defining a lumen and 

positioned distal to the substantially rigid 

segment; and

a segment defining a partially cylindrical 

opening positioned between a distal end of 

the substantially rigid segment and a 

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proximal end of the tubular structure, the 

segment defining the partially cylindrical 

opening having an angled proximal end, 

formed from a material having a greater 

flexural modulus than a flexural modulus 

of the tubular structure, and configured to 

receive one or more interventional cardiology devices therethrough when positioned 

within the guide catheter,

wherein a cross section of the guide extension catheter at the proximal end of the 

tubular structure defines a single lumen;

wherein the segment defining the angled 

proximal end of the partially cylindrical 

opening includes at least two inclined regions. 

’776 patent at claim 52 (emphasis added).

Medtronic asserted the Double-Incline Claims would 

have been obvious over Kontos and Ressemann, which it 

argued together would have taught a catheter with a proximal side opening in view of Kataishi, which discloses a 

suction catheter with a distal tip with two inclined regions. 

’776 Decision, at *18. Medtronic argued a skilled artisan 

would have been motivated to include Kataishi’s doubleinclined opening to improve crossability and reduce 

kinking and because the double incline would increase the 

entry area of the side opening for receiving interventional 

devices. Id. Teleflex argued the combination would not 

have been obvious for the same reasons it opposed Medtronic’s Side Opening Claims grounds. Id. Teleflex further 

contended a skilled artisan would not have been motivated 

to substitute Kataishi’s distal tip, designed to flexibly conform to and remove thrombi, with the proximal side opening of the proposed Kontos-Ressemann combination, 

designed to receive interventional cardiological devices. 

Amongst other things, Teleflex submitted expert testimony 

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30 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

explaining such a substitution would increase kinking, not 

improve crossability, and have no impact on entry area, 

contrary to Medtronic’s proposed motivations. See, e.g.,

J.A. 12021 ¶ 81; J.A. 16668–72 ¶¶ 212–17. 

The Board held Medtronic failed to prove the DoubleIncline Claims unpatentable. ’776 Decision, at *19. The 

Board first found Medtronic failed to provide a reasoned 

explanation for substituting Kataishi’s suction-improving 

distal tip at the proximal opening of Kontos. Id. Even 

granting such a reason, however, the Board found Teleflex’s expert testimony regarding the increased chance of 

kinking, together with Teleflex’s objective evidence, defeated Medtronic’s obviousness arguments. Id. 

On appeal, Medtronic argues the Board’s findings rest 

on legal error. In particular, it asserts the Board erred by 

(1) failing to address its argument that using Kataishi’s 

double incline would increase the entry area for receiving 

interventional devices, (2) reasoning the location of Kataishi’s tip vis-à-vis Kontos and Ressmann’s proposed side 

opening (i.e., distal vs. proximal) weighed against a motivation to combine, and (3) effectively requiring physical incorporation of Kataishi into Kontos when it credited 

Teleflex’s expert that using Kataishi’s double-inclined tip 

would increase the risk of kinking.

Medtronic’s arguments are unavailing. Even accepting 

Medtronic’s arguments concerning motivations to combine, 

we conclude, as above, that Teleflex’s objective evidence is 

sufficient to uphold the Board’s determination that Medtronic failed to prove the Double-Incline Claims unpatentable. 

We see no error in the Board’s prima facie analysis. 

First, with respect to Medtronic’s increased-area argument, the Board’s failure to explicitly address that argument does not show the Board failed to consider it. See 

Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328 

(Fed. Cir. 2017) (“[T]his court has said on multiple 

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occasions that failure to explicitly discuss every issue or 

every piece of evidence does not alone establish that the 

tribunal did not consider it.”). The Board’s alleged errors 

in failing to address that argument and doubting whether 

a skilled artisan would use Kataishi’s distal tip for a proximal side opening are immaterial. The Board expressly 

found, in the alternative, that Teleflex’s expert persuasively testified that using Kataishi’s distal tip would increase the risk of kinking and that a skilled artisan 

therefore would not have been motivated to use that structure. See ’776 Decision, at *19. Medtronic contends its expert testified otherwise, but the presence of conflicting 

evidence does not render the Board’s finding unsupported 

by substantial evidence. Consolo v. Fed. Mar. Comm’n, 383 

U.S. 607, 620 (1966) (“[T]he possibility of drawing two inconsistent conclusions from the evidence does not prevent 

an administrative agency’s finding from being supported 

by substantial evidence.”).

Lastly, Medtronic’s contention that the Board required 

physical incorporation of the references is without merit. 

Medtronic argues the Board’s finding that kinking would 

discourage skilled artisans from using Kataishi’s distal tip 

was improperly predicated on using the materials disclosed 

in Kataishi. Yet, the Board’s decision makes no reference 

to Kataishi’s materials. Instead, the Board credited Teleflex’s expert testimony explaining Kataishi’s tip is designed 

to be “highly flexible” and that high degree of flexibility 

“would increase the risk of kinking.” ’776 Decision, at *19 

(citing J.A. 12021 ¶ 81). The Board’s decision does not 

demonstrate that it improperly required physical incorporation.

We conclude the Board did not err in its analysis and 

that substantial evidence supports its findings. We therefore affirm the Board’s determination that Medtronic failed 

to carry its burden to prove the Double-Incline Claims 

would have been obvious. 

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32 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

D. SUBSTITUTE CLAIMS

During the inter partes review proceedings for the ’032 

and ’380 patents, Teleflex filed contingent motions to 

amend proposing certain substitute independent claims. 

Proposed substitute claim 23 of the ’032 patent is representative of the Substitute Claims:

23. A device for use with a standard 6 

French guide catheter, the standard guide 

catheter having a 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 artery, the continuous lumen of the guide 

catheter having a circular cross-sectional 

inner diameter sized such that interventional cardiology devices are insertable into 

and through the lumen to the branch artery, the device comprising, in a distal-toproximal direction:

a flexible tip portion 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 6 French guide catheter, the tubular structure having a cross-sectional 

outer diameter sized to be insertable 

through the cross-sectional inner diameter 

of the continuous lumen of the guide catheter and defining a coaxial lumen having a 

cross-sectional inner diameter of at least 

0.056 inches through which interventional 

cardiology devices are insertable; 

a substantially rigid side opening that includes a first inclined region, a second inclined region, and a non-inclined concave 

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MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 33

track between the first and second inclined 

regions; and

a substantially rigid portion proximal of 

and operably connected to, and more rigid 

along a longitudinal axis than, the flexible 

tip portion and 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 total length of the 

device along the longitudinal axis that is 

longer than the length of the continuous lumen of the guide catheter,

such that when at least a distal portion of 

the flexible tip is extended distally of the 

distal end of the guide catheter, at least a 

portion of the proximal portion of the substantially rigid portion extends proximally 

through the hemostatic valve in common 

with interventional cardiology devices that 

are insertable into the guide catheter.

See ’032 Decision, at *24–25 (emphases added). 

In each proceeding, Medtronic argued the proposed 

substitute claims lacked adequate written description in 

the original application to which the ’032 and ’380 patents 

claim priority. In particular, Medtronic contended the substitute claims encompass catheters with side openings

physically separate from the substantially rigid portion, 

whereas the written description only describes side openings that were part of the substantially rigid portion. In 

addition, Medtronic argued the substitute claims would 

have been obvious over Kontos, Kataishi, and Takahashi 

Case: 21-2357 Document: 61 Page: 33 Filed: 06/05/2023
34 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

on the same bases it argued the Double-Incline Claims 

would have been obvious.13

The Board determined the substitute claims had adequate written description support and would not have been 

obvious over Medtronic’s asserted grounds. ’032 Decision, 

at *26, 30–32; ’380 Decision, at *26, *30–32. On appeal, 

Medtronic argues the Board erred by failing to adequately 

address its written description arguments and by committing the same legal mistakes it allegedly made in analyzing 

the patentability of the Double-Incline Claims.

We reject Medtronic’s arguments concerning alleged 

errors in the Board’s analysis of Medtronic’s obviousness 

grounds for the same reasons we conclude the Board did 

not err in its analysis of the Double-Incline Claims. We 

further reject Medtronic’s arguments regarding lack of 

written description. In a parallel inter partes review proceeding against related U.S. Patent RE47,379, which 

claims priority to the same original application at issue 

here, Medtronic raised identical written description arguments. We today affirmed the Board’s written description 

finding in that appeal, which resolves this issue. See 

13 Medtronic also argued the substitute claims would 

have been obvious over U.S. Patent No. 7,736,355 (Itou) in 

view of Ressemann or Kataishi. On appeal, Medtronic argues the Board erred by failing to address the Itou-Kataishi grounds. In a separate decision, we affirmed the 

Board’s finding in a parallel proceeding that Itou postdates May 3, 2006, the priority date of the patents-in-suit, 

and consequently is not prior art. See Medtronic, Inc. v. 

Teleflex Innovations S.À.R.L., No. 2021-2356, 2023 WL 

3606143, at *1 (Fed. Cir. May 24, 2023). We therefore need 

not address the Board’s alleged failure to address this 

ground.

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MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 35

Medtronic, Inc. v. Teleflex Innovations S.à.r.l., Nos. 21-

2359, 21-2362, 21-2366 (Fed. Cir. June 5, 2023).

CONCLUSION

We have considered the parties’ other arguments and 

find them unpersuasive. For the reasons given, we affirm 

the Board’s decisions holding the Side Opening, Double-Incline, and One-French Claims not unpatentable and granting issuance of the Substitute Claims.

AFFIRMED

Case: 21-2357 Document: 61 Page: 35 Filed: 06/05/2023