- Penumbra, Inc. v. Rapidpulse, Inc.InstitutedPTAB · Mar 14, 2022 · IPR2021-01466 · APJ Jamie T Wisz · IPR · Institution
The Board instituted IPR on claims 1–18 and all four § 103 grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all challenged claims of the ’883 patent, based on all of the grounds identified in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Mr. Brown, contends that a person of ordinary skill in the art (“POSA” or “POSITA”) as of the relevant date would be either: (1) a person with a B.S. in engineering or an equivalent field, with two to four years of academic or industry experience in aspiration embolectomy and thrombectomy or comparable industry experience who would, where necessary or desired, work or consult with others, including a physician, to develop embolectomy or thrombectomy devices; or (2) an interventional neurosurgeon with at least three years of experience developing and/or using medical devices in embolectomy or thrombectomy procedures, and who would, where necessary, work or consult with others, including an engineer, to develop such a medical device. Pet. 15 (citing Ex. 1005 ¶ 48). Petitioner also contends that, “[a] person with less education but more relevant practical experience, or more relevant education but less practical experience, may also meet this standard.” Id. Patent Owner does not address the definition of a POSA in its Preliminary Response.6 See Prelim. Resp. Because Petitioner’s proposed definition is unopposed at this stage and is consistent with the level of skill reflected in the cited prior art, we adopt it for the purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides proposed constructions for the terms, “the change in the level of vacuum at the distal end is greater than approximately [15]/[20]/[25] in Hg and no greater than approximately [50]/[30]/[20] ms.” Pet. 21–23. Patent Owner does not address claim construction in its Preliminary Response.7 See Prelim. Resp. Upon review of the parties’ arguments and the evidence of record, we determine that the terms provided by Petitioner do not require express 6 The Declaration of Dr. Finol expresses some disagreement with Petitioner’s definition of a POSA; however, the Preliminary Response does not address the definition nor does it cite to the discussion of a POSA in the Finol Declaration. See Ex. 2001 ¶¶ 38–39. 7 The Declaration of Dr. Finol does not dispute the constructions proposed by Petitioner, but Patent Owner does not cite this testimony or otherwise address claim construction in the Preliminary Response. See Ex. 2001 ¶¶ 34–36. construction for purposes of this Decision. We do, however, construe the term “forward flow” in the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Next, in analyzing whether Teigen and Grey disclose limitation [1i], we find it useful to construe the term, “forward flow,” as recited in claim 1 of the ’833 patent. The ’833 patent defines forward flow as “an amount of liquid in the lumen . . . that exits the distal end . . . in the distal direction” and “is defined as greater than 6 microliters of fluid.” Ex. 1001, 36:18–22. With this definition in mind, we turn to the disclosures from Teigen and Grey relied on by Petitioner to show obviousness of “prevent[ing] forward flow of the distal portion out from the distal end during each cycle.”10 Claim 1 of Teigen recites that “the controller [is] configured to cyclically open and close the vacuum valve and the vent valve to: . . . control flow of the distal portion in and out from the distal end during each cycle.” Ex. 1007, 23:28–33. Further, Teigen discloses a controller configured to cyclically open and close its vacuum and fluid injection valves to change a level of vacuum at the distal end of the catheter during each extraction cycle in order to more effectively digest blood clots at the distal end of the” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,531,883 - Apotex Inc. / Apotex Corp. v. Auspex Pharmaceuticals, Inc.Institution deniedPTAB · Mar 9, 2022 · IPR2021-01507 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of review of claims 1–3 under § 325(d), finding the petition relied on substantially the same art or arguments previously presented and did not show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of the prior art or arguments. Id. In general, only if the same, or substantially the same, art or arguments previously were presented to the Office, do we turn to whether Petitioner has established a material error. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 24
Discretionary denialPatents in suitUS 8,524,733 - Coloplast A/S. v. Pamarope Pty Ltd.InstitutedPTAB · Mar 4, 2022 · IPR2021-01437 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–4, 6, 7, 9–14, 16, 17, 19, and 20 are unpatentable under either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition and all supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute inter partes review.” slip op. at 2
- BurdenInstituted
“deemed to not explicitly teach or render obvious adjusting the tension by moving the second portion through the aperture of the second anchor so that the central portion provides at least a sling-like support for the urethra between the first and second locations,” Benderev teaches such a technique. Pet. 16–17. In support of this assertion, the Petition provides multiple reasons in support of the proposed combination, including a desire a) towards “achieving proper support of the urethra,” b) to “allow a medical practitioner to tacitly determine whether the anchor was properly engaged in the implant location to provide adequate fixation of that anchor,” c) to “allow a medical practitioner to implant the anchors without interference from the attached sutures,” and d) recognition by a POSITA “that applying Bendrev’s tensioning technique would have led to predictable results without significantly altering or hindering the Neisz’s method of providing support for the urethra to treat female urinary incontinence.” Id. at 17–21 (citing Ex. 1003 ¶ 61). Accordingly, on this record, we find Petitioner has sufficiently shown that Neisz in combination with Benderev suggests and expectation of success.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’715 patent would have had a doctor of medicine (M.D.) in an area emphasizing female pelvic surgery, or an equivalent field, 1 Neisz et al., US Patent Application No. 2002/0161382 A1, published October 31, 2002 (Ex. 1004) (“Neisz”). 2 Benderev et al., US Patent No. 6,500,194 B2, issued December 31, 2002 (Ex. 1005) (“Benderev”). 3 Brenneman et al., International Patent Application Publication No. WO 98/19606, published May 14, 1998 (Ex. 1006) (“Brenneman”). 4 Kovac, US Patent No. 6,039,686, published March 21, 2000 (Ex. 1010) (“Kovac”). reconstructive surgery, or an equivalent field or a bachelor of science and/or an advanced degree in an academic area emphasizing biomedical engineering, bioengineering, mechanical engineering, medical device design, or an equivalent field. Pet. 9 (citing Ex. 1003 ¶¶ 41–43). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We also find that Petitioner’s expert Dr. Erickson is qualified to opine on the issues in this proceeding from the perspective of one of ordinary skill in the art. Ex. 1011 (Dr. Erickson’s CV); see Kyocera Senco Indus. Tools Inc. v. Int'l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case . . . a witness must at least have ordinary skill in the art.”).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits constructions for several claim limitations “as being consistent with the plain meaning of the terms.” Pet. 8. Except to the extent we explain how we interpret the claims in the analysis below, we decline to otherwise expressly construe any claim terms at this time. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs in the context of an inter partes review).” slip op. at 5
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,925,715 - Petitioner v. Dana-Farber Cancer Institute, Inc.Institution deniedPTAB · Mar 2, 2022 · PGR2021-00115 · APJ Cynthia M Hardman · PGR · Institution
The Board denied institution of PGR on all challenged claims because the patent owner disclaimed every claim, and declined to enter adverse judgment.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we must deny institution of the requested post-grant review. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (designated precedential on Sept. 9, 2019) (denying institution of inter partes review under analogous rule 37 C.F.R. § 42.107(e) based on disclaimer) (“General Electric”).” slip op. at 2
- Adverse judgmentAdverse judgmentDecided for patent owner
“construed Rule 42.73(b) to permit the Board to enter adverse judgment when a patent owner cancels all claims prior to institution. Id. However, we do not read Arthrex or Rule 42.73(b) as requiring us to enter adverse judgment in this context. Here, consistent with Rule 42.207(e) and the Board’s precedential General Electric decision, we determine that a denial of institution is sufficient to dispose of this case. See also General Elec. Co. v. United Techs. Corp., IPR2019-01489, Paper 11 at 4–5 (Dec. 10, 2019) (denying institution based on disclaimer and declining authorization to file motion for adverse judgment); Google LLC v. Jenam Tech LLC, PGR2021- 00082, Paper 8 at 2 n.1 (Nov. 17, 2021) (denying institution based on disclaimer and declining petitioner’s request to file additional briefing regarding adverse judgment).” slip op. at 3
NonePatents in suitUS 10,849,980 - Medtronic, Inc. / Medtronic Vascular, Inc. v. Teleflex Life Sceinces LimitedNo claims unpatentablePTAB · Feb 23, 2022 · IPR2020-01344 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 25–55 were not determined unpatentable: the Board found the obviousness showing deficient, found Root was not prior art, and credited objective evidence of nonobviousness.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention would have been either: (1) a medical doctor who would have had “(a) a medical degree; (b) completed a coronary intervention training program, and (c) experience working as an interventional cardiologist;” or (2) an engineer who “would have had (a) an undergraduate degree in engineering, such as mechanical or biomedical engineering; and (b) at least three years of experience designing medical devices, including catheters or catheter-deployable devices.” Pet. 11–12. Additionally, Petitioner contends “[e]xtensive experience and technical training might substitute for education, and advanced degrees might substitute for experience.” Id. at 12. Further, according to Petitioner, a person of ordinary skill in the art “with a medical degree” and a person of ordinary skill in the art “with an engineering degree” may have had access to each other. Id. (citing Ex. 1405 ¶ 27; Ex. 1442 ¶¶ 24-25). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. PO Resp. 7. We adopt Petitioner’s proposed level of ordinary skill in the art as it is undisputed and consistent with the level of skill reflected in the prior art and the specification of the ‘413 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In view of the issues we address below, we determine it is not necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). C. Scope and Content of the Prior Art” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“catheter or stent . . . . through the side opening.” E.g., Ex. 1401, 14:16–25. The parties do not dispute that Kontos does not teach the claimed “segment defining a side opening” as required by independent claims 25 and 52. Pet. 18; PO Resp. 12. As set forth above, the Petition provides multiple reasons why one of ordinary skill in the art would have wanted to remove the funnel of Kontos and provide a partially cylindrical opening proximal of the tubular structure, as taught by Ressemann. Patent Owner provides several arguments in response as to why the modifications suggested by Petitioner are grounded in hindsight. Upon review of the parties’ arguments and supporting evidence, we agree with Patent Owner that Petitioner fails to establish why a person of ordinary skill in the art would have substantially redesigned Kontos (including removing the funnel portion) to provide the side opening configuration of independent claims 25 and 52 and the “one French size” differential of independent claim 25. We agree with Patent Owner, for the reasons Patent Owner provides as summarized above, that Petitioner’s rationale is insufficient, and adopt Patent Owner analysis, as supported by the cited evidence, as our own. Furthermore, while Petitioner may have established that side openings were known in the art, they appear in devices intended to receive an interventional cardiology device when positioned within a guide catheter. Switching to a side opening in Kontos to beneficially increase the available real estate within the catheter or to reduce the size of the guide catheter would require extensive modifications. Reply 5. To that point, we agree with Patent Owner that Petitioner fails to establish that a person of ordinary skill in the art would have been “motivated to completely redesign Kontos, with at least six additional changes,” including (1) “recess[ing]” Kontos’s marker bands; (2) attaching the distal soft tip in-line rather than with overlapping structure; (3) removing Kontos’s base portion 18; (4) “taper[ing] the pushrod” down to less than 0.005 inches; (5) “attach[ing]” the thin-tapered pushrod to Kontos’s tube wall without base portion 18, and (6) “increase[ing]” the diameter of “tube 16.” Sur-reply 3–6. We further note that the funnel portion of Kontos appears to be crucial to the device’s ability to receive and facilitate exchange of balloon catheters:” slip op. at 36
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia with nexusDecided for patent owner
“products had on the field of interventional cardiology, but contends that prior art devices, including those taught by Itou, Kontos, and Ressemann, “are RX, configured to deliver a wide variety of IVCDs, and provide increased backup support when extended partially past the end of a [guide extension catheter].” Reply 25. The evidence of record persuasively demonstrates, however, that the long-felt need for improved backup support was unresolved in the art prior to introduction of the GuideLiner devices. As noted by Petitioner, Kontos and Ressemann both provide some level of backup support, but there is no persuasive evidence that either of these products resolved the long-felt need in the art for a device that would avoid backout problems when difficult lesions are encountered during a procedure. See Ex. 2151 ¶¶ 8–9. And although mother-and-child devices were known to provide additional backup support, Patent Owner’s declarants persuasively demonstrate that a mother-and-child approach was not a safe or time- and cost-effective solution to the backout problem addressed by the GuideLiner products. PO Resp. 63–64; Ex. 2151 ¶¶ 6–8; Ex. 2145 ¶¶ 69– 75; Ex. 2215 ¶¶ 16–19 (Dr. Thompson testifying that the problems related to the mother-and-child approach led to very limited use of this technique). Indeed, in view of its inherent limitations, the mother-and-child approach was rarely, if ever, used by interventional cardiologists. Ex. 2145 ¶ 75 (Dr. Graham testifying that the mother-and-child approach “had many significant drawbacks” and he was “not aware of any instances in which a mother-andchild system was successfully marketed.”); Ex. 2215 ¶ 16 (“The mother-andchild approach was rarely, if at all, used by interventional cardiologist for a number of reasons.”). In view of the foregoing, we credit the testimony of Drs. Graham, Thompson, and Azzalini and find that the GuideLiner products solved a long-felt but unmet need in the art, allowing physicians to perform previously impossible coronary procedures.” slip op. at 42
Patent outcomesUS RE46,116 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Medtronic, Inc. And Medtronic Vascular, Inc. v. Teleflex Life Sciences LimitedSome claims unpatentablePTAB · Feb 23, 2022 · IPR2020-01343 · APJ James A Tartal · IPR · Final written decision
Claims 52 and 53 are unpatentable as anticipated by Ressemann; the other challenged claims were not shown unpatentable because Itou is not prior art.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Documents are authenticated by evidence “sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a); see Fox Factory v. SRAM, LLC, IPR2016-01876, Paper 59 at 63 (PTAB Apr. 2, 2018) (quoting same). “Authenticity is, therefore, not an especially high hurdle for a party to overcome.” Fox Factory, Paper 59 at 63 (citing United States v. Patterson, 277 F.3d 709, 713 (4th Cir. 2002)). We determine that Exhibit 2024 has been authenticated under the low bar required under Federal Rule of Evidence 901 based on the evidence provided by Petitioner. See Mot. Opp. 2–11. In addition, Petitioner’s arguments go to the weight of the evidence and not its admissibility. Accordingly, we deny Petitioner’s Motion to Exclude. We note, however, that even if we were to exclude Exhibit 2024, it would not change the outcome or our general analysis of this case.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention would have been either: (1) a medical doctor who would have had “(a) a medical degree; (b) completed a coronary intervention cardiologist;” or (2) an engineer who would have had “(a) an undergraduate degree in engineering, such as mechanical or biomedical engineering; and (b) at least three years of experience designing medical devices, including catheters or catheter-deployable devices.” Pet. 13–14. Additionally, Petitioner contends “[e]xtensive experience and technical training might substitute for education, and advanced degrees might substitute for experience.” Id. at 14. Further, according to Petitioner, a person of ordinary skill in the art “with a medical degree” and a person of ordinary skill in the art “with an engineering degree” may have had access to each other. Id. (citing Ex. 1005 ¶ 31; Ex. 1042 ¶¶ 18–19). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. PO Resp. 5. We adopt Petitioner’s proposed level of ordinary skill in the art as it is undisputed and consistent with the level of skill reflected in the prior art and the specification of the ’116 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“Petitioner proposes the following constructions: (1) “substantially rigid” as “rigid enough to allow the device to be advanced within the guide catheter,” (2) “side opening” needs no construction and should be given its plain and ordinary meaning, (3) “lumen” as “the cavity of a tube,” and (4) “flexural modulus” as “[a] measure of resistance . . . to bending.” 7 Patent Owner argues that Dr. Hillstead does not meet the definition of a person of ordinary skill in the art because he lacks a four-year undergraduate degree in engineering. PO Resp. 5 n.1 (citing, e.g., Ex. 2137, 462:8–13). As noted above, however, it is undisputed that “[e]xtensive experience and technical training might substitute for education.” Pet. 14. Patent Owner does not address Dr. Hillstead’s significant professional experience, which we find sufficient to show he is qualified to opine on the issues in this proceeding from the perspective of a person of ordinary skill in the art. See Ex. 1043 (curriculum vitae of Dr. Hillstead). does not dispute at this stage of the proceeding Petitioner’s proposed construction of these terms. See generally PO Resp. In view of the issues we address below, we determine it is not necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Ressemann. Pet. 23–31. Petitioner provides a detailed explanation of how it contends Ressemann discloses each of the limitations of claims 52 and 53. Id. In particular, Petitioner explains how Ressemann’s disclosures of the use of features including guide catheter 160, evacuation sheath assembly 100, intermediate shaft portion 120, distal shaft portion 130, lumen 140, and stent delivery system 194 correspond to the recited methods of claims 52 and 53. Id. Petitioner’s contentions are supported by Dr. Brecker and Dr. Hillstead. Ex. 1005 ¶¶ 164–174; Ex. 1042 ¶¶ 36–39, 58–62. Patent Owner does not dispute that claims 52 and 53 are anticipated by Ressemann. See generally PO Resp; PO Sur-reply; see also Pet. Reply 2 (Petitioner arguing that Patent Owner did not dispute that Ressemann anticipates claims 52 and 53). After reviewing the record, we find Petitioner shows by a preponderance of the evidence that Ressemann discloses each limitations (Pet. 23–31) as our own findings. Accordingly, Petitioner shows by a preponderance of the evidence that Ressemann anticipates claims 52 and 53 of the ’116 patent.” slip op. at 26
Patent outcomesUS RE46,116 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Unified Patents, LLC v. Justservice.Net LLCSome claims unpatentablePTAB · Feb 16, 2022 · IPR2020-01258 · APJ Christopher G Paulraj · IPR · Final written decision
Claims 1–6, 8, 10, 13–16, 19, and 20 are unpatentable as obvious; claims 11, 12, 17, and 18 were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“We declined to decide whether Dropbox should have been named an RPI in the Petition in the Institution Decision. Inst. Dec. 2–4. Patent Owner did not raise the RPI issue in its post-institution Response. We agree with Petitioner that Patent Owner has thus forfeited any RPI arguments. Reply at 24 (citing Unified Patents, LLC v. Mobility Workx, LLC, IPR2018- 00150, Paper 26 at 3 (PTAB Dec. 2, 2019) (RPI arguments waived if not in Response)). Therefore, we need not address this issue further.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Institution Decision, we adopted Patent Owner’s definition as being consistent with the level of skill in the art reflected by the prior art. Dec. 10–11; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State 6 Patent Owner also submitted a supplemental declaration by Dr. Brogioli (Ex. 2031) with its Sur-Reply. We expunged that document from the record along with certain other exhibits (Exs. 2023–2030) as untimely presented under 37 C.F.R § 42.23(b). Paper 37. Therefore, we do not take those documents into consideration for our analysis in this Decision. Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We continue to apply that same definition for our analysis in this Final Written Decision. We note, however, that there does not appear to be a significant difference between the parties’ respective definitions, so our analysis would not substantially differ under Petitioner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Additionally, we are not persuaded by Patent Owner’s argument that Walker is not enabled, or that a POSITA would not have a reasonable expectation of success in combining Prust with Walker, because those arguments focus on features not required by the challenged claims of the ’868 patent. See Raytheon Tech. Corp. v. General Electric Co., 993 F.3d 1374) (Fed. Cir. 2021) (“In general, a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be ‘self-enabling,’ to be relevant to the obviousness inquiry.”). Dr. Brogioli acknowledged that he never even analyzed whether the features of Walker that he argues are not enabling are required in the claims of the ’868 patent. Ex. 1032, 84:1-85:22 (testifying that he did not recall performing an analysis about whether the claims of the ’868 patent required allowing users to edit different parts of the same file at the same time, user collaboration, concurrency among user actions and editing, or locking a document). Moreover, other than pointing to the allegedly deficient teachings of Walker itself, Dr. Brogioli cites to no evidence of record in support of his testimony that a POSITA would not have a reasonable expectation of success in implementing Walker. See Ex. 2022 ¶¶ 66–74. But Walker itself is presumed to be enabling for what it teaches. See In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (“[A] prior art printed publication . . . is presumptively enabling barring any showing to the contrary by [the] patentee.”). Rather than the unsupported testimony of Dr. Brogioli, we credit the testimony of Dr. Long, which is corroborated by other prior art, that the concepts disclosed in Walker, such as indicating that downloaded files are currently locked and unavailable to other users and multi-user editing, would have been familiar to programming students before 2005, and a POSITA would have been able to apply these well-known techniques with a reasonable expectation of success. Ex. 1008 ¶¶ 36–40, 67 (citing Ex. 1011–1017); Ex. 1033 ¶¶ 4–5.” slip op. at 39
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“we are not persuaded by Patent Owner’s claim construction position that the claims require the virtual server to transmit information about files locally stored on the client device (in addition to virtual server files) as part of the fourth claim element. With regard to the claim language, we agree with Patent Owner that “the one or more files associated with the particular user storage account” recited in the fifth claim element finds antecedent basis in the prior recitation of “information relating to one or more files associated with the particular user storage account” in the fourth claim element. By its plain language, what this means is that at least some of the “information” that is transmitted from the virtual server under the fourth element must be related to the “userselected file” that is subsequently uploaded from the client device under the fifth element. Cf. Yamaha Corp. v. ESS Tech., Inc., 82 F.3d 435, 1996 WL 146499, *3 (Fed. Cir. 1996) (“By using a definite article ‘the’ to describe ‘output’ in the last phrase, Yamaha raises the inference that the term refers to the same value as in the first step.”). Thus, contrary to Petitioner’s arguments, we are not of the view that files referenced in the fourth and fifth elements are completely “distinct.” But this does not necessarily imply, as Patent Owner suggests, that the virtual server must already be in possession of information relating to locally stored files at the point of the transmitting step of the fourth element and prior to the uploading step of the fifth element. Indeed, there is nothing recited in the claims to suggest how the virtual server would come to know about files stored on the client device.” slip op. at 16
Patent outcomesUS 10,476,868 mixedClaim construction§ 103 obviousnessPatents in suitUS 10,476,868 - Medtronic, Inc. / Medtronic Vascular, Inc. v. Teleflex Innovations S.à.R.L.No claims unpatentablePTAB · Feb 7, 2022 · IPR2020-01341 · APJ James A Tartal · IPR · Final written decision
Claims 1, 2, 4, 5, and 7–14 were not proven unpatentable because Itou did not disclose the claimed ordered method, and Petitioner did not establish a sufficient reason to modify or combine the references.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Ex. 1001, 10:28–11:6; see also, supra, Section I.D. (reproducing claim 1 and labeling six steps [1.a] to [1.f]). Whether the steps recited in a method claim must be performed in a particular order is properly a part of claim construction. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1371–72 (Fed. Cir. 2003). Steps in a method claim need not necessarily be performed in the order they are written, but if grammar, logic, the specification, or the prosecution history require the steps to be performed sequentially, then the claims are so limited. Id. at 1369; see also Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999) (“Although not every process claim is limited to the performance of its steps in the order written, the language of the claim, the specification and the prosecution history support a limiting construction in this case.”). “Interactive Gift recites a two-part test for determining if the steps of a method claim that do not otherwise recite an order, must nonetheless be performed in the order in which they are written.” Altiris, 318 F.3d 1369 (citing Interactive Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). “First, we look to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written.” Id. “If not, we next look to the rest of the specification to determine whether it directly or implicitly requires such a narrow construction.” Id. at 1370 (citation omitted).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We find an express construction of “interventional cardiology device” is not required for purposes of this Decision because, even if we assume Petitioner shows that the asserted art discloses an “interventional cardiology device,” Petitioner has not shown by a preponderance of the evidence the unpatentability of any of the Challenged Claims for the reasons detailed below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). 3. Other Claim Terms We find no other claim term requires an express construction for purposes of this Decision.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention would have been either: (1) a medical doctor who would have had “(a) a medical degree; (b) completed a coronary intervention training program, and (c) experience working as an interventional cardiologist;” or (2) an engineer who would have had (a) an undergraduate degree in engineering, such as mechanical or biomedical engineering; and (b) at least three years of experience designing medical devices, including catheters or catheter-deployable devices.” Pet. 11–12. Additionally, Petitioner contends “[e]xtensive experience and technical training might substitute for education, and advanced degrees might substitute for experience.” Id. at 12. Further, according to Petitioner, a person of ordinary skill in the art “with a medical degree” and a person of ordinary skill in the art “with an engineering degree” may have had access to each other. Id. (citing Ex. 1005 ¶ 31; Ex. 1042 ¶¶ 18–19). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. PO Resp. 6. We adopt Petitioner’s proposed level of ordinary skill in the art as it is undisputed and consistent with the level of skill reflected in the prior art and the specification of the ’413 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 16
- ExcludeDenied
“II. MOTION TO EXCLUDE The party moving to exclude evidence bears the burden of proving that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence (“FRE”). See 37 C.F.R. §§ 42.20(c), 42.62(a) (2019). In an inter partes review in which we both decide admissibility and serve as the fact-finder, we are wellpositioned to determine and assign appropriate weight to evidence presented, and we recognize that a complete record of the evidence is preferable to facilitate public access as well as appellate review. See, e.g., Sony Computer Entm’t Am. LLC v. Game Controller Tech. LLC, IPR2013-00634, Paper 32 at 31 (PTAB Apr. 14, 2015); see also Gnosis S.p.A. v. S. Alabama Med. Sci. Found., IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014) (citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941)” slip op. at 13
Patent outcomesUS 8,142,413 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,142,413 - Medtronic, Inc., And Medtronic Vascular, Inc. v. Teleflex Life Sciences LimitedNo claims unpatentablePTAB · Feb 7, 2022 · IPR2020-01342 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1, 2, 4, 5, and 7–14 were not shown unpatentable because the asserted combinations did not establish the claimed ordered method steps.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In determining whether steps of a method must be performed in order, we must first look to the claim language to determine whether, “as a matter of logic or grammar,” the method steps must be performed in the order written. See Altiris, 318 F.3d at 1369. Patent Owner argues, and we agree, that the method of claim 1 “only makes sense if the steps take place in order.” PO Resp. 13. As Patent Owner explains, step 1b (positioning the standard guide catheter) cannot logically occur until after step 1a (inserting the standard guide catheter), steps 1c–1e (inserting various parts of the coaxial guide catheter) must occur in sequence, and step 1e (advancing the coaxial guide catheter beyond the standard guide catheter) necessarily (citing Ex. 1401, 10:39–67; Ex. 2138 ¶ 102; Ex. 2145 ¶¶ 102–106; Ex. 2244, 61:24–62:3; Ex. 2245, 87:24–88:14, 89:21–90:3, 90:13–23). As to the disputed step 1f, Patent Owner further explains, and we agree, “as a matter of logic and grammar, . . . claim 1 requires that step 1.f (insertion and advancement of the ICD) occur after steps 1.c-1.e. (insertion of the coaxial guide catheter in the guide catheter).” Id. at 16. Specifically, Patent Owner shows “the ICD would not be inserted ‘into and through’ the lumen of the guide catheter ‘alongside of’ the substantially rigid portion of the coaxial guide catheter unless the coaxial guide catheter is already in the guide catheter.” Id. at 14 (citing Ex. 2138 ¶ 103; Ex. 2145 ¶ 103). That is, in the context of the claim, “inserting an ICD ‘alongside of the substantially rigid portion’ means that the substantially rigid portion is already in place inside the guide catheter, and when the ICD is inserted into the guide catheter it moves ‘alongside’ the already positioned substantially rigid portion.” Id. at 14–15 (citing Ex. 2138 ¶ 103; Ex. 2145 ¶ 103). Furthermore, as Patent Owner notes, “Petitioner’s own expert, Dr. Hillstead, agrees that ‘alongside’ in this context means that the substantially rigid portion is already in place in the guide catheter when the ICD is inserted ‘alongside’ of it.” Id. at 15 (citing Ex. 2244, 63:6–64:1).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“above, and are not persuaded that Petitioner has established by a preponderance of evidence that a person of ordinary skill in the art would have combined the disclosures of Kontos and Adams to achieve the claimed method. We begin by noting that, while Adams discloses the use of guide seal 20 and delivery catheter 17, those devices are described as having limited functionality related to the specific deployment of distal protection device 15. As noted by Patent Owner, the next figure in the series of illustrations provided by Adams, is Figure 2F (reproduced below). Ex. 1435, Fig. 2F; PO Resp. 11. Figure 2F shows that mesh guide seal 20 has been “withdrawn . . . out of the guide catheter,” thereby “resulting in the deployment of distal protection device 15.” Ex. 1435 ¶ 64. Then, after the guide seal has been removed from the guide catheter, a “treatment device” such as a “balloon” or “stent . . . may be advanced . . . to the treatment site.” Id.; see also Ex. 2138 ¶ 142 (same), ¶ 144 (“Adams emphasizes that occluding blood flow is undesirable, and therefore teaches that the guide seal is deployed only during deployment of the filter and not during the subsequent delivery of interventional cardiology devices such as balloons and stents.”). Thus, the positioning of guide seal 20 distal to guide catheter 10 for the subsequent delivery of an ICD, such as Konto’s PTCA catheter, is not disclosed by Adams. In this regard, Petitioner’s discussion of Adams motivated a person of ordinary skill in the art to advance an ICD into an already-positioned extended coaxial guide catheter as required by the claims. We also note Petitioner’s contention that, “[t]o the extent not taught by Kontos, a POSITA would have been motivated to, as provided by Adams, maintain the distal end of the extension catheter beyond the distal end of the guide catheter, and then advance the interventional device into the coronary artery alongside the substantially rigid portion.” Pet. 51 (citing Ex. 1405 ¶ 203). To that point, however, we are persuaded by Patent Owner’s contentions, in the specific context of the step recited in element 1f, that [T]here are numerous fundamental differences between Kontos and Adams, which Petitioner’s experts acknowledge. For example, Kontos discloses a support catheter assembly to protect a fragile balloon catheter. E.g., Ex. 1409, 1:9-16, 1:30-37, 5:52- 56; Ex-2244, 103:12-15; Ex-2245, 129:7-11; Ex-2138, ¶¶122, 212; Ex-2145, ¶¶146-47. Adams, on the other hand, is a device whose sole purpose is to temporarily create stasis (by occluding blood flow) during delivery of an embolic protection filter. E.g., Ex-1435, Abstract; Ex-2145, ¶155; Ex-2244, 110:14-23; Ex- 2245, 143:11-15, 144:4-7. PO Resp. 20. The discussion set forth in the Petition fails to account for those differences. Pet. 50–52. That is, even assuming that the proposed combination is technically possible and a person of ordinary skill in the art could have combined the disclosures in the manner proposed by Petitioner, the record lacks sufficient guidance as to why a person of ordinary skill in the art would have been motivated to make the changes necessary to achieve the claimed sequence of steps required by claim 1.” slip op. at 27
Patent outcomesUS 8,142,413 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,142,413 - PTAB · Jan 13, 2022 · IPR2021-01137 · APJ Christopher G Paulraj · IPR · Institution
Instituted inter partes review of claims 1 and 2 on the § 103 ground over Popplewell and Sazani because Petitioner showed a reasonable likelihood of proving the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Petitioner that the Office appears to have materially erred during prosecution insofar as there is no indication that the Examiner fully considered Popplewell’s teachings regarding PMO-A. As discussed below, Petitioner has demonstrated a reasonable likelihood of success in proving that the challenged claims of the ’106 patent would have been obvious based on a motivation to modify PMO-A with a reasonable expectation of success. In allowing the claims during prosecution, the Examiner appears to have focused only on Popplewell 212’s disclosures regarding PMO-G, and did not cite to any specific passages related to the viability of PMO-A. Ex. 1011, 31–36, 53–59. The Examiner did not otherwise explain why PMO-A would not have been considered in the obviousness analysis given that it has a sequence that is shifted by only one nucleotide base as compared to the claimed oligomer that is 100% complementary to the target sequence of SEQ ID NO: 124.” slip op. at 25
- Other 314aDecided for petitioner
“We have considered Patent Owner’s arguments related to the forum selection clause in the parties’ Agreement. We determine, however, that the particular facts of this case, including the District of Delaware’s denial of a preliminary injunction, do not warrant exercise our discretion to deny institution on this basis.” slip op. at 29
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that the challenged claims of the ’106 patent are unpatentable. We therefore institute trial on all challenged claims under the ground raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (Indicating that a decision whether to institute an inter partes review “require[s] a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.”); 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of any of the challenged claims.” slip op. at 45
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“twenty-four antisense oligomers targeting exon 53, Popplewell concludes that “the superiority of the PMOs targeting the sequence +30+65 (i.e. PMOs -A, - B, -G and -H) is strongly indicated.” Ex. 1021, 109. Although PMO-A showed the highest level of exon skipping in a human DMD mouse model, Popplewell identified “PMO-G as a potential clinical trial reagent of choice . . . . based primarily on its more persistent longevity of action.” Id. at 107, 109. Popplewell, nevertheless, characterized PMO-A and PMO-H as “viable alternatives.” Id. at 109. Considering the possibility of further improvement,” Popplewell suggests “that stepped base-by-base screening of AOs across the entirety of exon 53 . . . might reveal an AO with a better dose-response and longevity of action profile.” Id. at 108. Standing alone, the above facts would appear to identify PMO-A as a suitable target for further development. Patent Owner, however, argues that Petitioner’s focus on PMO-A amounts to impermissible hindsight and is contrary to Popplewell’s teaching that 30-mer oligos (e.g., PMO-G and PMO-H) were more bioactive than 25-mers such as PMO-A. See Prelim. Resp. 47. In particular, Popplewell states: that the 30 mer PMOs (-G, -H) were more bioactive than 25 mer PMO counterpart (-A) targeted to the same open/accessible sites on the exon, would suggest that strength of binding of PMO to the target site may be the most important factor in determining PMO bioactivity. The influence of AO length on bioactivity has been reported elsewhere, and is further confirmed in the present study; all 30mers tested were more bioactive relative to their 25 mer counterpart. Ex. 1021, 108 (internal footnote numbers omitted). Popplewell further notes that its best PMOs achieved greater skipping efficacy than shown by another research group using 2’OMe AOs, which might reflect the length of their nucleotide sequences and/or other factors. Id. at 109. Popplewell notes, however, that “[n]o direct comparison was made” between the two sets of AOs and, moreover, a “direct comparison would in fact be difficult as 2’Ome AOs are generally only 20 nucleotides long, whereas the PMOs used here were 25 and 30mers.” Id. Patent Owner’s argument that one of ordinary skill in the art would not select PMO-A for further development because it was a 25-mer thus finds some support in Popplewell. Such disclosure, however, is seemingly contradicted by Popplewell’s in vivo results showing that the 25-mer PMO- A resulted in higher levels of exon skipping than five different 30-mers— including PMO-G, and PMO-H. See Ex. 1021, 107, Table 1. We also consider Petitioner’s argument regarding the supposed practice and benefits of using shorter oligonucleotides. Pet. 17–18, 40–41 (citing Ex. 1043, 874, Table 1; Ex. 1098 ¶¶ 40–41, 44, 119). As such, the evidence for and against the selection of a PMO-A as a starting point is mixed and will benefit from further development at trial.” slip op. at 35
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,487,106
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.