United States Court of Appeals 

for the Federal Circuit ______________________ 

MEDTRONIC, INC., MEDTRONIC VASCULAR, 

INC.,

Appellants

v.

TELEFLEX INNOVATIONS S.A.R.L.,

Appellee

______________________ 

2021-2359, 2021-2362, 2021-2366

______________________ 

Appeals from the United States Patent and Trademark 

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

00129, IPR2020-00134, IPR2020-00138.

______________________ 

Decided: June 5, 2023

______________________ 

JENNIFER L. GRABER, Wilmer Cutler Pickering Hale 

and Dorr LLP, Washington, DC, argued for appellants. 

Also represented by BRITTANY BLUEITT AMADI; TASHA JOY 

BAHAL, MARK CHRISTOPHER FLEMING, HANNAH ELISE 

GELBORT, MADELEINE C. LAUPHEIMER, Boston, MA. 

 JOSEPH W. WINKELS, Carlson, Caspers, Vandenburgh 

& Lindquist PA, Minneapolis, MN, argued for appellee. 

Also represented by PETER M. KOHLHEPP, TARA CATHERINE 

NORGARD, J. DEREK VANDENBURGH. 

 ______________________ 

Case: 21-2359 Document: 59 Page: 1 Filed: 06/05/2023
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. RE45,380; RE45,760; and RE47,379 (the 

patents-in-suit). Medtronic also appeals the Board’s decisions granting Teleflex Innovation S.à.r.l’s (Teleflex) motion to amend certain claims of the ’379 patent. 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 ’380 patent at 1:48–49.1 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 1:39–52. 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 1:53–59. Interventional devices 

can then be inserted into the proximal opening of the catheter, advanced through the lumen of the catheter using a 

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

For simplicity, all citations to the written description will 

refer to the ’380 patent.

Case: 21-2359 Document: 59 Page: 2 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 3

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 1:59–

63, 4:56–62. 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 1:59–67. 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 2:40–51; see J.A. 2276–80 (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. ’380 patent at 2:51–56. 

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 2:9–27, 4:56–5:27. In a preferred 

embodiment, the disclosed extension catheter includes 

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

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

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. 1952 ¶ 50.

Case: 21-2359 Document: 59 Page: 3 Filed: 06/05/2023
4 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

flexible tip 16 (pink). See id. at 6:31–7:15; 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 10:1–20. 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 3:28–

49. 

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. 

7,604,612 (Ressemann), which discloses an evacuation 

sheath assembly with a distal side opening used to aspirate

embolic material while occluding blood flow using sealing 

balloons, in view of various combinations of secondary references. The secondary references included: (1) U.S. Patent No. 5,439,445 (Kontos), which discloses a support 

catheter for delivering angioplasty balloons; (2) U.S. Patent 

Application Publication No. 2005/0015073 (Kataishi), 

Case: 21-2359 Document: 59 Page: 4 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 5

disclosing a suction catheter designed to remove thrombi 

in blood vessels; and (3) Takahashi. 

The Board instituted each petition and issued final 

written decisions holding some claims unpatentable and 

others not. Medtronic, Inc. v. Teleflex Innovations S.à.r.l., 

No. IPR2020-00129, 2021 WL 2524890 (P.T.A.B. June 17, 

2021) (’380 Decision); Medtronic, Inc. v. Teleflex Innovations S.à.r.l., No. IPR2020-00134, Paper No. 122 (P.T.A.B. 

June 7, 2021) (’760 Decision); Medtronic, Inc. v. Teleflex Innovations S.à.r.l., IPR2020-00138, Paper No. 104 (P.T.A.B. 

June 7, 2021) (’379 Decision).4,5 In addition, the Board 

granted Teleflex’s contingent motion to amend certain 

claims of the ’379 patent and determined the amended 

claims were not unpatentable. ’379 Decision, at J.A. 133–

64.

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

we adopt for our analysis. The One-French Claims are 

claims 32 and 33 of the ’380 patent; claims 48 and 51–53 of 

the ’760 patent; and claims 46–51 of the ’379 patent. The 

Double-Incline Claims are claim 27 of the ’380 patent and 

claims 44, 46–48, and 51 of the ’379 patent. Lastly, the 

Substitute Claims are claims 46, 47, and 49–51 of the ’379

patent.

DISCUSSION

Medtronic appeals the Board’s determination that 

Medtronic failed to prove the One-French and Double-Incline Claims would have been obvious. It also challenges 

the Board’s decision granting Teleflex’s motion to introduce 

4 The ’760 Decision is included in the Joint Appendix 

at J.A. 53–77.

5 The ’379 Decision is included in the Joint Appendix 

at J.A. 78–167.

Case: 21-2359 Document: 59 Page: 5 Filed: 06/05/2023
6 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

substitute claims in the ’379 patent. We address each issue 

in turn.

I 

We first address Medtronic’s arguments that the Board 

erred in determining the One-French and Double-Incline

Claims are not unpatentable as obvious.6 Obviousness is a 

question of law based on underlying facts. In re Gartside, 

203 F.3d 1305, 1316 (Fed. Cir. 2000). We review the 

Board’s ultimate determination of obviousness de novo and 

its underlying findings of fact for substantial evidence. Id. 

A. ONE-FRENCH CLAIMS

Claim 48 of the ’760 patent is representative of the 

One-French Claims. It recites:

48. A system comprising:

a guide catheter configured to be advanceable through a main blood vessel to a position adjacent to an ostium of a coronary 

artery, the guide catheter having a lumen 

extending from a hemostatic valve at a 

6 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 . . . .”). 

Case: 21-2359 Document: 59 Page: 6 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 7

proximal end of the guide catheter to a distal end of the guide catheter that is adapted 

to be positioned adjacent to the ostium of 

the coronary artery;

a guide extension catheter configured to be 

partially advanceable through the guide 

catheter and into the coronary artery, the 

guide extension catheter having a length 

such that the distal end of the guide extension catheter is extendable through the lumen and beyond the distal end of the guide 

catheter, and a proximal end of the guide 

extension catheter is extendable through 

the hemostatic valve at the proximal end of 

the guide catheter;

the guide extension catheter including, in a 

proximal to distal direction, a substantially 

rigid segment, a segment defining a side 

opening, and a tubular structure defining a 

lumen coaxial and in fluid communication 

with the lumen of the guide catheter, the 

lumen of the tubular structure having a 

length that is shorter than the length of the 

lumen of the guide catheter and having a 

uniform cross-sectional inner diameter that 

is not more than one French size smaller 

than the cross-sectional inner diameter of 

the lumen of the guide catheter, the side 

opening extending for a distance along the 

longitudinal axis of the segment defining 

the side opening and accessible from a longitudinal side defined transverse to the longitudinal axis, and the side opening and 

the lumen of the tubular structure configured to receive one or more stents or balloon catheters when the segment defining 

the side opening and a proximal end 

Case: 21-2359 Document: 59 Page: 7 Filed: 06/05/2023
8 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

portion of the tubular structure are positioned within the lumen of the guide catheter and the distal end of the guide 

extension catheter extends beyond the distal end of the guide catheter;

wherein the segment defining the side 

opening comprises a portion of the guide 

extension catheter that is more rigid than 

a distal end portion of the tubular structure. 

’760 patent at claim 48 (emphasis added).

As relevant on appeal, Medtronic asserted the OneFrench Claims would have been obvious over Ressemann

in view of Takahashi. ’380 Decision, at *3; ’760 Decision,

at J.A. 59; ’379 Decision, at J.A. 88. Medtronic argued a 

skilled artisan would have been motivated to modify 

Ressemann by removing its sealing balloons and replacing 

its inflation lumen with a pushrod or wire so that it could 

be used as an extension catheter. See, e.g., ’380 Decision, 

at *16. Medtronic alleged a skilled artisan would be motivated to remove the sealing balloons and inflation lumen 

used to aspirate emboli because, inter alia, Ressemann 

teaches its device can also be used to deliver certain interventional cardiological devices such as stents or angioplasty balloons. Id. It further alleged a skilled artisan 

would be motivated to incorporate Takahashi’s five-in-six 

system into Ressemann as modified to achieve the increased back-up support touted by Takahashi. Id.

Teleflex responded that Medtronic’s modifications 

would not have been obvious because they would render 

Ressemann inoperable as a catheter capable of providing 

embolic protection (i.e., preventing embolic debris from escaping down the bloodstream while the embolism is being 

removed), which Teleflex alleged was the entire purpose of 

Ressemann. Id. Teleflex further argued the modifications 

were based on hindsight and that the alleged benefits could 

Case: 21-2359 Document: 59 Page: 8 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 9

not be achieved without further modifications not detailed 

in the petitions. See, e.g., ’379 Decision, at J.A. 118–19. In 

reply, Medtronic argued removing Ressemann’s sealing 

balloons would not render it inoperable for embolic protection because other non-occlusive, distal protection devices 

could be used instead. ’380 Decision, at *16.

The Board agreed with Teleflex and held Medtronic 

failed to establish the One-French Claims would have been 

obvious. ’380 Decision, at *16–17; ’760 Decision, at J.A. 71–

72; ’379 Decision, at J.A. 119–21. Contrary to Medtronic’s 

position that Ressemann is a multi-purpose device, the 

Board found Ressemann’s “entire premise” was to provide 

embolic protection using sealing balloons and that Medtronic’s “extensive” modifications would eliminate “the capability of Ressemann’s aspiration catheter to act as an 

aspiration catheter.” ’379 Decision, at J.A. 120; ’380 Decision, at *16 (finding Medtronic’s “intended-purpose-destroying modification counsels strongly against an 

obviousness determination”); ’760 Decision, at J.A. 71–72 

(same). The Board rejected Medtronic’s argument that embolic protection could be preserved through other means, 

noting Medtronic did not raise these arguments in its petitions and that the additional extensive modifications were 

further evidence of hindsight bias. E.g., ’380 Decision, at 

*17.

On appeal, Medtronic argues the Board legally erred 

by focusing on the detrimental effects of Medtronic’s modifications to one of Ressemann’s intended purposes (embolic 

protection) to the neglect of Ressemann’s other purpose of 

delivering interventional cardiological devices. According 

to Medtronic, the Board’s reasoning conflicts with our decision in Intel Corp. v. Qualcomm Inc., in which we held the 

“intended purpose of [a reference] does not control” the obviousness inquiry. 21 F.4th 784, 800–01 (Fed. Cir. 2021). 

We do not agree. 

Case: 21-2359 Document: 59 Page: 9 Filed: 06/05/2023
10 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

Medtronic’s argument, although styled as a legal challenge, is premised on an assertion of fact contrary to the 

Board’s findings, namely that Ressemann is suitable for 

procedures that do not employ occlusive sealing balloons. 

The Board did not find that Ressemann’s device was intended to function for any purpose, including delivering interventional devices, in the absence of sealing balloons. 

Rather, it found Ressemann’s “entire premise” was to use 

sealing balloons to prevent embolic flow and that removing 

the balloons would “render Ressemann completely inoperable for its stated purpose of embolic protection.” ’379 Decision, at J.A. 120 (emphasis added) (adopting Teleflex’s 

positions). That finding is supported by substantial evidence, including Teleflex’s expert testimony that 

“Ressemann’s sealing balloons are critical to [its] goal of allowing a lesion to be treated without embolic debris being 

carried downstream” and Ressemann’s own disclosures 

emphasizing the role of sealing balloons for embolic protection. Id. (citing J.A. 20596–97 ¶ 148; J.A. 2240–43 

(Ressemann) at 8:12–15, 12:31–53, 13:15–14:39). Medtronic’s experts also acknowledged Ressemann is “directed 

to an embolic protection device” and that Ressemann’s 

sealing balloons were a “necessary part” of that function. 

J.A. 12192 at 396:20–397:20; see also ’379 Decision, at J.A. 

118 (citing Medtronic’s expert testimony that “[i]f a 

POSITA desired to only use Ressemann for delivering therapy devices, . . . Ressemann’s device would be simplified to

eliminate the features necessary for evacuating emboli,” including sealing balloons). 

Medtronic contends this finding is inconsistent with 

Ressemann’s disclosures that its device can be used in 

other surgical procedures, including to deliver interventional devices. See J.A. 2239 at 6:25–34 (describing 

Ressemann’s device “is contemplated for use . . . in other 

procedures . . . where reduction or removal of a blockage in 

a blood vessel is beneficial”); J.A. 2248 at 23:8–20 (disclosing Ressemann’s evacuation sheath is “designed to allow 

Case: 21-2359 Document: 59 Page: 10 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 11

for the passage of interventional devices”). Teleflex’s experts, however, explained that sealing balloons would still 

be used during such procedures to occlude blood flow. J.A. 

20597 ¶ 148; see also J.A. 2243 (Ressemann) at 13:15–14:39 

(discussing the use of sealing balloons to occlude blood flow 

during stent delivery). Medtronic relies on other disclosures indicating an elastomeric tube could be used in lieu 

of sealing balloons, see J.A. 2240 at 8:41–44, but this does 

not lead to a conclusion that the Board’s finding is not supported by substantial evidence.7 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.”); Velander v. 

Garner, 348 F.3d 1359, 1378 (Fed. Cir. 2003) (“If the evidence will support several reasonable but contradictory 

conclusions, we will not find the Board’s decision unsupported by substantial evidence simply because the Board 

chose one conclusion over another plausible alternative.”). 

Even if Ressemann contemplates use cases without 

sealing balloons, the Board’s reasoning does not constitute 

legal error. Medtronic contends the Board’s finding is inconsistent with our holding in Intel that the intended purpose of a prior art device is not dispositive of whether a 

skilled artisan would have been motivated to modify it. See 

21 F.4th at 800–01. 

7 Teleflex argues Medtronic forfeited its argument 

that sealing balloons are not mandatory because they could 

be replaced by an elastomeric tube. It also disputes, as a 

factual matter, whether inflatable elastomeric tubes are 

meaningfully distinct from sealing balloons. We will not 

resolve this factual dispute on appeal. Even if Medtronic’s 

argument is not forfeited and has a reasonable basis in fact, 

it does not compel reversal of the Board’s finding.

Case: 21-2359 Document: 59 Page: 11 Filed: 06/05/2023
12 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

But there is no conflict. We read the Board as finding 

that Ressemann teaches against using its device without 

sealing balloons because doing so while advancing interventional cardiac devices like those contemplated for use 

with the challenged claims might produce safety concerns. 

See, e.g., ’380 Decision, at *8, *16 (finding that removing 

sealing balloons would undermine Ressemann’s ability to 

“capture particulate matter during a procedure,” for example “positioning and placing [a] stent”); J.A. 20565 ¶ 103, 

20597 ¶ 148 (Teleflex expert asserting that a person of ordinary skill in the art would not “insert and deploy a balloon or stent catheter through the Ressemann device 

without first using the balloons to occlude blood flow”); ’380 

patent at abstract & 1:42–44 (invention directed at extension catheter for use with interventional devices such as 

stents and balloon catheters). 

In other words, the Board found that removing 

Ressemann’s sealing balloons would undermine a goal it 

shares with the challenged claims—safely advancing interventional devices to treat cardiac lesions. See ’380 Decision, at *2 (finding that the ’380 patent is directed at guide 

catheters for advancing “a stent or balloon catheter” to 

treat a cardiac lesion); id. at *9 (finding that Ressemann 

allows surgeons to advance a “therapeutic device, such as 

a stent” to treat a cardiac lesion while collecting “dislodged 

material”); J.A. 2237 (Ressemann) (noting that procedures 

such as stent placement carry the risk “that some of the 

treated plaque will be disrupted,” and “if allowed to flow 

through the vascular system, may cause subsequent infarctions or ischemia”). Medtronic did not argue that the procedures contemplated in the challenged claims were free 

from such risks. See, e.g., J.A. 28399–400 (arguing instead

that Ressemann could retain the ability to catch loose 

plaque even if modified); J.A. 22129–130 (same). The 

Board reasonably recognized that modifying a device in a 

manner that would undermine a purpose it shares with the 

Case: 21-2359 Document: 59 Page: 12 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 13

challenged claims counsels against a motivation to make

such modifications. 

Intel is both consistent with the Board’s analysis and 

distinguishable from the facts at hand. In Intel, we rejected the Board’s reasoning that a proposed rationale for 

modifying a circuit was insufficient because it “would have 

resulted in the circuit not being suitable for its intended 

purpose.” 21 F.4th at 800. We explained this reasoning—

in which the intended purpose of the device was given controlling weight—was inconsistent with the Supreme 

Court’s recognition that “common sense teaches . . . that familiar items may have obvious uses beyond their primary 

purposes,” and with the reference’s express recognition of 

use cases compatible with the proposed modification to the 

circuit. Id. at 801 (quoting KSR Int’l Co. v. Teleflex Inc., 

550 U.S. 398, 420 (2007)). We did not hold, however, that 

a proposed modification’s destruction of a device’s primary 

purpose is always legally irrelevant to obviousness. Such 

a conclusion is equally at odds with common sense and 

gives in to the very hindsight bias the obviousness inquiry 

is designed to avoid. Indeed, we have held it was error for 

the Board to ignore evidence that a proposed modification 

would interfere with a reference’s stated purpose. See Polaris Indus. v. Arctic Cat, Inc., 882 F.3d 1056, 1061, 1067–

69 (Fed. Cir. 2018) (vacating Board decision that failed to 

consider whether modifying prior art reference would undermine its goal, shared with the challenged claims, of constructing stable all-terrain vehicles). 

The Board’s analysis was consistent with these principles. The Board found, in the context of these patents, that

the destruction of Ressemann’s “entire premise” “counsel[ed] strongly against” obviousness, not that it was determinative. See, e.g., ’032 Decision, at *16. The Board went 

on to consider Medtronic’s argument that embolic protection could be achieved without sealing balloons but found 

that argument unpersuasive because it was not presented 

in Medtronic’s petition and the extensive nature of the 

Case: 21-2359 Document: 59 Page: 13 Filed: 06/05/2023
14 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

additional proposed modifications was suggestive of hindsight.8 Id. Further, unlike in Intel, in which the reference 

contemplated use cases beyond the “intended purpose,” 21 

F.4th at 801, the Board found Ressemann’s “entire premise” was founded on the sealing devices Medtronic’s proposed modifications would remove. We conclude the Board 

did not err in determining the destruction of Ressemann’s 

entire purpose, shared with the challenged claims, was probative of whether Medtronic’s modifications would have 

been obvious.

The Board did not err in determining Medtronic failed 

to carry its burden to show the One-French Claims would 

have been obvious, and substantial evidence supports its 

underlying findings of fact. Accordingly, we affirm the 

Board’s holding that Medtronic failed to establish the OneFrench Claims are unpatentable. 

B. DOUBLE-INCLINE CLAIMS

Claim 27 of the ’380 patent is representative of the 

Double-Incline Claims. It recites:

8 Medtronic argues the Board legally erred and 

abused its discretion by “refusing to consider” these arguments because Medtronic properly raised them in reply to 

rebut Teleflex’s arguments. Appellant’s Opening Br. 39. 

The Board’s decisions make plain, however, that it considered Medtronic’s arguments. See ’032 Decision, at *17 (recounting and rejecting Medtronic’s reply arguments); ’760 

Decision, at J.A. 72 (same); ’379 Decision, at J.A. 121

(same). It simply found them unpersuasive because they 

relied on extensive modifications not discussed in the petition, suggesting they were “improperly based on a hindsight desire to recreate the inventions . . . and not a known 

need in the art for such a device.” ’379 Decision, at J.A. 

121.

Case: 21-2359 Document: 59 Page: 14 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 15

27. The system of claim 26, wherein the 

side opening includes at least two different 

inclined slopes. 

’380 patent at claim 27 (emphasis added).

Medtronic asserted the Double-Incline Claims would 

have been obvious over Ressemann and Kataishi. It argued a skilled artisan would have been motivated to incorporate the double-inclined shape of Kataishi’s distal tip

into Ressemann’s proximal side opening because doing so 

would increase entry area (i.e., the area in which to insert 

interventional devices into the extension catheter) and improve crossability (i.e., the ability to advance the extension 

catheter through the guide catheter and into vasculature). 

See ’032 Decision, at *13–14; ’379 Decision, at J.A. 124–26.

The Board found neither motivation persuasive and accordingly held Medtronic failed to prove the Double-Incline 

Claims are unpatentable. ’380 Decision, at *14–15; ’379 

Decision, at J.A. 127–29. Specifically, crediting Teleflex’s 

expert testimony, the Board found Medtronic failed to show 

a skilled artisan would be motivated to use the shape of 

Kataishi’s distal tip for Ressemann’s proximal side opening 

because opening area does not depend on having a doubleinclined opening and because using the shape of Kataishi’s 

distal tip in lieu of Ressemann’s proximal side opening may 

actually impair crossability by increasing the risk of 

kinking. ’380 Decision, at *14–15; ’379 Decision, at J.A. 

127–29.

On appeal, Medtronic argues the Board’s findings rest 

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

(1) concluding an alternative design choice to increase entry area negated its proposed motivation to combine, (2) 

reasoning the location of Kataishi’s tip vis-à-vis Ressmann’s side opening (i.e., distal vs. proximal) weighed 

against a motivation to combine, and (3) effectively requiring physical incorporation of Kataishi into Ressemann

Case: 21-2359 Document: 59 Page: 15 Filed: 06/05/2023
16 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

when it credited Teleflex’s expert that using Kataishi’s 

double-inclined tip would increase the risk of kinking.

Medtronic’s arguments are unavailing. First, the 

Board did not find a lack of motivation to use Kataishi’s 

double-inclined shape merely because entry area could be 

increased in other ways. The Board expressly found the 

use of a double-inclined opening is irrelevant to entry area 

because, as Teleflex’s expert testified, entry area depends 

only on the angle of the opening. See ’380 Decision, at *14 

(crediting expert testimony that “increased area is a function of how sharp one chooses to angle the opening and does 

not depend on having a complex, multi-angle shape like 

that of Kataishi”); ’379 Decision, at J.A. 128 (same). While 

Medtronic may be correct that the entry area of Kataishi’s 

double-inclined tip is larger than Ressemann’s side opening, the Board found this is not due to Kataishi’s tip being 

doubly-inclined and that Medtronic therefore failed to 

show increasing entry area would have motivated a skilled 

artisan to incorporate this feature into Ressemann. 

The Board’s reasoning does not rest upon the existence 

of alternative designs to achieve the same ends. It rests on 

the idea that the design feature Medtronic sought to incorporate—a double-inclined opening—does not achieve that 

end. Something else does, namely a sharper opening angle. 

This was not legal error. Indeed, to hold otherwise would 

countenance motivation arguments based on functionally 

irrelevant features of references that happen to exhibit a 

benefit for altogether different reasons, a recipe that would 

be ripe for hindsight abuse.

Second, the Board did not err in finding that the alleged benefits associated with Kataishi’s distal tip would 

not translate to Ressemann’s proximal opening. The Board 

relied on substantial evidence, including Teleflex’s expert 

testimony explaining that the ability of Kataishi’s tip to 

“cross tortuous vasculature is almost entirely driven by the 

design of its distal end, as that is the portion that interacts 

Case: 21-2359 Document: 59 Page: 16 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 17

with vasculature as it is being advanced” and that “[c]onsiderations for suctioning a thrombus into the distal opening of Kataishi, in a distal-to-proximal direction, would not 

apply to inserting interventional devices, in a proximal-todistal direction, into Ressemann’s proximal opening.” ’379 

Decision, at J.A. 127 (citing J.A. 20600 ¶ 153, J.A. 12931 ¶ 

193, and J.A. 12470 at 385:1–23). Given its finding that

the benefits of Kataishi’s distal tip were tied to its distal 

location and the “lack of any teaching suggesting any interventional devices being passed through Kataishi’s suction 

catheter,” the Board reasonably found Medtronic failed to 

carry its burden to establish a motivation to combine. Medtronic again points to its contrary expert testimony that 

Kataishi teaches its shape would improve crossability even 

if applied to a proximal opening because it would improve 

the proximal opening’s ability to smoothly navigate

through the guide catheter (as opposed to vasculature). 

But the Board’s decision to credit Teleflex’s experts over 

Medtronic’s does not render its finding unsupported by 

substantial evidence. In re Jolley, 308 F.3d 1317, 1329 

(Fed. Cir. 2002). 

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 decisions make no reference 

to Kataishi’s materials. Instead, the Board credited Teleflex’s expert testimony explaining that, because 

Ressemann’s device already has an angled side opening, no 

further benefits to crossability would accrue from using a 

double-inclined opening. ’380 Decision, at *15. The Board’s 

reasoning was thus explicitly focused on the shape of Kataishi’s distal tip, not its materials. The Board further 

found that utilizing that shape would disadvantageously 

increase flexibility at Ressemann’s proximal end, “thereby 

increasing the risk of kinking.” Id. (citing J.A. 12933 

Case: 21-2359 Document: 59 Page: 17 Filed: 06/05/2023
18 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

¶ 197). As Kataishi’s shape is the very feature Medtronic 

sought to incorporate into Ressemann, the Board’s decisions do not demonstrate that it improperly required physical incorporation of the references beyond that proposed 

by Medtronic. 

We conclude the Board did not err in its analysis and 

that substantial evidence supports its findings. We therefore affirm its determination that Medtronic failed to carry 

its burden to prove the Double-Incline Claims would have 

been obvious.

C. SUBSTITUTE CLAIMS

During the inter partes review proceedings for the ’379

patent, Teleflex filed a contingent motion to amend proposing certain substitute claims. Proposed substitute claim 

49, which amends claim 38, is representative of the Substitute Claims:

49. A method of forming a device adapted for use 

with a standard guide catheter having a continuous lumen extending for a predefined length, the 

method comprising:

providing a flexible tip segment having a lumen therethrough;

providing a reinforced segment including 

one or more metallic elements covered with 

a polymer and having a uniform, fixed 

outer diameter and a lumen for coaxial 

alignment a lumen for coaxial alignment 

with the lumen of the flexible tip segment, 

said flexible tip segment and reinforced 

segment defining a tubular structure with 

a single lumen that is configured to be coaxial with the continuous lumen of the 

guide catheter when positioned therein, 

wherein said tubular structure has an inner diameter that is not more than about 

Case: 21-2359 Document: 59 Page: 18 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 19

one French smaller than the continuous inner lumen of the guide catheter;

providing a substantially rigid segment defining a rail structure without a lumen extending from a proximal end portion to a 

distal end portion, wherein the substantially rigid segment is more rigid along a 

longitudinal axis than the flexible tip segment;

defining a side opening portion, including 

forming, in a proximal to distal direction, 

an arcuate cross-sectional shape and hemicylindrical cross-sectional shape, the side 

opening portion extending for a distance 

along a longitudinal axis of the device such 

that the side opening is accessible from a 

longitudinal side, defined transverse to the 

longitudinal axis, to receive a balloon catheter and stent; and

arranging, in a proximal to distal direction, 

the substantially rigid segment, the side 

opening portion, the reinforced segment, 

and the flexible tip segment such that when 

the flexible tip segment is extended distally 

of a distal end of the guide catheter, the 

proximal end portion of the substantially 

rigid segment extends proximally of a proximal end of the guide catheter and the side 

opening portion is positioned within the 

continuous lumen of the guide catheter, 

whereby the reinforced segment and substantially rigid segment are configured to 

resist forces exerted by the balloon catheter 

and stent that are passed through and beyond the coaxial lumen that would otherwise tend to dislodge the guide catheter 

Case: 21-2359 Document: 59 Page: 19 Filed: 06/05/2023
20 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

from a branch artery into which the reinforced segment has been advanced.

See ’379 Decision, at J.A. 137–38 (emphases added). 

Before the Board, Medtronic argued the Substitute 

Claims lacked adequate written description in the original 

application to which the ’379 patent claims priority, 

namely Application Serial No. 11/416,629. See J.A. 30456–

97 (’629 application). In particular, Medtronic contended 

the Substitute Claims encompass catheters with side openings separate from the substantially rigid segment, 

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

addition, as relevant on appeal, Medtronic argued the Substitute Claims would have been obvious over U.S. Patent 

No. 5,439, 445 (Kontos) in view of, inter alia, Kataishi and 

Takahashi.9

The Board determined the Substitute Claims had adequate written description support and would not have been 

obvious over Medtronic’s asserted grounds. ’379 Decision, 

at J.A. 139–47, J.A. 162–64. On appeal, Medtronic argues 

the Board erred by finding written description support 

based on the absence of any disclosure that the location of 

the side opening was critical to the invention and by 

9 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 ItouKataishi 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 ’379 patent, 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. 

Case: 21-2359 Document: 59 Page: 20 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 21

deferring to the examiner’s interpretation of the prosecution history. It also argues the Board committed legal error 

when it determined Medtronic failed to show the Substitute Claims would have been obvious. We are not persuaded.

Medtronic contends the Board failed to assess whether 

the disclosures of the ’629 application would have reasonably conveyed to a skilled artisan that the applicant possessed a catheter with a side opening separate from the 

substantially rigid segment, but this is precisely the inquiry the Board undertook. The Board acknowledged written description requires “the patent specification [to] 

describe an invention in sufficient detail that one skilled in 

the art can clearly conclude that the inventor invented 

what is claimed” and found, after “[h]aving reviewed the 

portions of the [s]pecification referenced by [Teleflex],” that 

the specification provided adequate support. ’379 Decision, 

at J.A. 145 (quoting Cordis Corp. v. Medtronic AVE, Inc., 

339 F.3d 1352, 1364 (Fed. Cir. 2003)). It then identified 

written disclosures and figures it found provided the necessary support, including the patent’s description that 

“[t]he rigid portion may include a cutout portion [i.e., a side 

opening] and a full circumference portion.” Id. (emphasis 

added) (quoting ’629 application at 8:18–21).

The Board further supported its finding by noting that 

the ’629 application’s specification “does not indicate that 

putting the side opening specifically in the substantially 

rigid portion is critical to the invention” and that the applicant never asserted the location of the side opening was a 

point of novelty during prosecution. J.A. 146. Applying our 

holding in Ethicon Endo-Surgery, Inc. v. U.S. Surgical 

Corp., the Board correctly determined the absence of embodiments in the ’629 application with a side opening separate from the rigid segment did not preclude written 

description. J.A. 146–47 (citing 93 F.3d 1572, 1582 n.7 

(Fed. Cir. 1997) (“If [the inventor] did not consider the precise location of the [feature] to be an element of his 

Case: 21-2359 Document: 59 Page: 21 Filed: 06/05/2023
22 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

invention, he was free to draft [the claims] broadly (within 

the limits imposed by the prior art) to exclude the lockout’s 

exact location as a limitation of the claimed invention.”)). 

As we explained in Ethicon, if the precise location of the 

side opening was not an element of the invention, claims 

that do not recite the location as a limitation are not “unsupported by the specification even though [they] would be 

literally infringed by undisclosed embodiments.” 93 F.3d 

at 1582 n.7; see In re Rasmussen, 650 F.2d 1212, 1215 

(CCPA 1981) (“[T]hat a claim may be broader than the specific embodiment disclosed in a specification is in itself of 

no moment. Indeed, the statutory provision for broadened 

claims in reissue applications is intended to meet precisely 

the situation in which a patentee has claimed ‘less’ than he 

had a right to claim.”). As the Board acknowledged, written description requires only that a skilled artisan would 

reasonably conclude, based on the patent’s disclosures and 

the knowledge of a person skilled in the art, that the applicant possessed catheters in which the side opening could be 

located outside the rigid segment. Ariad Pharms., Inc. v. 

Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en 

banc) (“[T]he test for sufficiency is whether the disclosure 

of the application relied upon reasonably conveys to those 

skilled in the art that the inventor had possession of the 

claimed subject matter as of the filing date.”). Medtronic 

has not demonstrated the Board’s findings in this regard 

constitute legal error.10

10 Medtronic’s argument that the Board erroneously 

deferred to the examiner’s acceptance of amendments directed to this issue, see J.A. 18718–19050, is without merit. 

The Board recounted, but did not rely, on the examiner’s 

allowance of the claim to find written description. ’379 Decision, at J.A. 143–44. Instead, it expressly based its finding on “portions of the specification . . . [that] adequately 

support[] the proposed substitute claims.” Id. at J.A. 145. 

Case: 21-2359 Document: 59 Page: 22 Filed: 06/05/2023
MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 23

Finally, Medtronic argues the Board erred in determining the Substitute Claims are not unpatentable because it 

made two findings that are inconsistent with other findings 

made in this and other inter partes reviews of related patents. First, Medtronic contends the Board contradicted its 

finding in this proceeding that Kataishi discloses a doubleinclined side opening. Compare ’379 Decision, at J.A. 162 

(“Kataishi fails to disclose the recited Complex Side Opening feature of the proposed substitute claims”), with id. at

J.A. 128 (“Kataishi discloses . . . [a] mutli-angled distal 

tip”). Read in context, the Board’s statements do not evince 

legal error. The Board’s full statement is as follows: “As 

discussed hereinabove in our analysis of [Medtronic’s] challenges to original claim 44, however, we determine Kataishi fails to disclose the recited Complex Side Opening 

feature of the proposed substitute claims.” Id. at J.A. 162. 

The Board’s “finding” must therefore be read in view of its 

discussion of claim 44, which it expressly incorporated in 

the very same sentence. Critically, in analyzing claim 44, 

the Board did not rely on Kataishi’s lack of disclosure to 

hold the claim not unpatentable,11 but instead relied on 

Medtronic’s failure to establish a motivation to incorporate 

Kataishi’s distal tip into Ressemann’s proximal side opening. See Section I.B supra. Understood in this context, the 

Board’s statement regarding Kataishi’s disclosure is best 

read to refer to the underlying lack of motivation to combine Kataishi with Kontos. We acknowledge the Board’s 

statement in this regard is imprecise. But, as we have explained many times, “we do not require perfect explanations” of the Board, In re Nuvasive, Inc., 842 F.3d 1376, 

1382 (Fed. Cir. 2016); rather, we only require that its path 

be reasonably discernible, Ariosa Diagnostics v. Verinata 

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

11 Indeed, in analyzing claim 44, the Board recognized Kataishi discloses a double-inclined distal tip. See 

J.A. 122–23. 

Case: 21-2359 Document: 59 Page: 23 Filed: 06/05/2023
24 MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. 

standard is satisfied here, where the allegedly contradictory phrase is prefaced by thorough analysis (incorporated 

by reference) elucidating the basis for the Board’s decision.

Second, Medtronic contends the Board contradicted its 

findings in other proceedings involving related patents 

that Kontos discloses a reinforced segment. Compare ’379 

Decision, at J.A. 163 (finding Medtronic’s Kontos/Kataishi 

combination “requires modifying Kontos to achieve . . . substitute claim 49’s limitation of ‘a reinforced segment’”), 

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

IPR2020-00127, 2021 WL 2518685, at *14 (P.T.A.B. June 

7, 2021) (finding “Kontos’s body 12 identified in Petitioner’s 

Reply are proximal to the flexible cylindrical distal tip portion and represent ‘cylindrical reinforced portions’”). This

argument is similarly unavailing. Even if true, this would 

not require vacatur because the Board provided an alternative ground for its determination that Medtronic failed 

to establish the unpatentability of proposed substitute 

claim 49, namely a lack of motivation to combine. The 

Board found Medtronic failed to establish a skilled artisan 

would have been motivated to combine Kataishi and Kontos because they disclose “different devices, used in different procedures, and directed to different problems that 

might be encountered during an interventional procedure.” 

‘379 Decision, at J.A. 163 (quoting J.A. 20749 ¶ 121). Medtronic does not challenge the factual bases for these findings. Accordingly, we affirm on this ground without 

deciding whether and to what effect the Board may have 

reached inconsistent findings.

CONCLUSION

We have considered the parties’ other arguments and 

find them unpersuasive. For the reasons given, we affirm 

the Board’s decisions holding the Double-Incline and OneFrench Claims not unpatentable and granting issuance of 

the Substitute Claims.

AFFIRMED

Case: 21-2359 Document: 59 Page: 24 Filed: 06/05/2023