- PTAB · Dec 12, 2017 · IPR2017-01029 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place the denials of institution because the petitions did not sufficiently support their obviousness challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“There is no express disclosure from Aboul-Hosn identified by Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 9), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,327,068 - PTAB · Dec 12, 2017 · IPR2017-01028 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution because Petitioner did not show a reasonable likelihood of success on its asserted challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“There is no express disclosure from Aboul-Hosn identified by Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 9), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other in Aboul-Hosn. But, in context, the meaning is different. Figure 23 is a different embodiment than Figure 24.” Id. The entire sentence spanning lines 20–21 on page 30 of Aboul-Hosn reads: “Figures 23 and 24 illustrate two different embodiments of the present invention.” Ex. 1004, 30:20–21. We are not persuaded that we misread that sentence. That sentence specifically references Figures 23 and 24 as two different embodiments, meaning that Figures 23 and 24 are each different embodiments, not only with respect to one another, but also with respect to the other embodiments disclosed.8” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,327,068 - Abiomed, Inc. / Abiomed R&D, Inc. v. Maquet Cardiovascular, LLCInstitution deniedPTAB · Nov 7, 2017 · IPR2017-01208 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 7–9 and 11–15 were obvious over either asserted combination.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION Petitioner and Patent Owner propose that we construe the terms “distal” and “proximal.” Pet. 23–26; Prelim. Resp. 13–14. For purposes of this Decision, we need not construe any terms expressly. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy).” slip op. at 7
- Skill levelSkill level board ownOther
“For the purposes of this Decision, we determine that no express finding is necessary on this record and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Ultimately, the Petition is deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul-Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of showing that claims 7–9 and 11–15 would have been obvious over the combination of (1) Aboul-Hosn, Jegaden, Siess, and Wampler; or (2) Aboul-Hosn, Yock, Siess, and Wampler. Conclusion For the foregoing reasons, on this record, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 7–9 and 11–15 of the ’437 patent are unpatentable. IV. ORDER Accordingly, it is: ORDERED that the Petition is denied as to the challenged claims of the ’437 patent; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. With respect to the recitation “an intravascular blood pump adapted to be guided to a predetermined location within the circulatory system of a patient by a guide wire and configured to provide left-heart support,” for example, the Petition relies upon modifying the axial flow pump of Aboul-Hosn to remove its reverse flow features and modifying the blood pump system of Figures 1–13 for percutaneous access. See, e.g., Pet. 28–29 (discussing an axial flow pump configuration without the reverse flow features). In short, in attempting to map Aboul-Hosn onto the challenged claims, Petitioner provides the following: “The pump 420 could also be configured without the reverse flow feature of the pump system of FIGS. 1–13.” Id. at 18 (citing Ex. 1002 ¶ 145; Ex. 1004, 31:6–9). Petitioner goes on to discuss various modifications required to achieve that result. Id. at 18–19. Dr. Collins’s Declaration testimony is similar. See, e.g., Ex. 1002 ¶¶ 145–147. Neither Petitioner nor Dr. Collins, however, provides any reason as to why one of ordinary skill in the art would modify Aboul-Hosn’s teachings as they propose.1” slip op. at 11
Claim construction§ 103 obviousnessPatents in suitUS 9,597,437 - Abiomed, Inc. / Abiomed R&D, Inc. v. Maquet Cardiovascular, LLCInstitution deniedPTAB · Nov 7, 2017 · IPR2017-01209 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 5, 10, 16, and 25 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.108(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. With respect to the recitation “an intravascular blood pump adapted to be guided to a predetermined location within the circulatory system of a patient by a guide wire and configured to provide left-heart support,” for example, the Petition relies upon modifying the axial flow pump of Aboul-Hosn to remove its reverse flow features and modifying the blood pump system of Figures 1–13 for percutaneous access. See, e.g., Pet. 32–33 (discussing an axial flow pump configuration without the reverse flow features). In short, in attempting to map Aboul-Hosn onto the challenged claims, Petitioner provides the following: “The pump 420 could also be configured without the reverse flow feature of the pump system of FIGS. 1–13.” Id. at 20 (citing Ex. 1002 ¶ 145; Ex. 1004, 31:6–9). Petitioner goes on to discuss various modifications required to achieve that result. Id. at 20–21. Dr. Collins’s Declaration testimony is similar. See, e.g., Ex. 1002 ¶ 145. Neither Petitioner nor Dr. Collins, however, provides any reason as to why one of ordinary skill in the art would modify Aboul-Hosn’s teachings as they propose.1 Ultimately, the Petition is deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul-Hosn’s various” slip op. at 12
§ 103 obviousnessPatents in suitUS 9,597,437 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00493 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because the Petition failed to identify corresponding structure and show the prior art disclosed the same or equivalent structures.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous We did not undertake an analysis to determine whether the equivalent structure was shown in the prior art because Petitioner failed to do so in the first instance: “By not identifying a corresponding structure, material, or acts in the ’542 patent specification, Petitioner does not show where that structure, material, or acts or its equivalent is disclosed by Maresh-I.” Dec. 18 (citing 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art . . . relied upon.”)). conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In particular, we first construed “right means,” “left means,” “second end portion support,” “first support,” “second support,” “first member,” and “second member” as invoking § 112, ¶ 6, because none of the terms has a sufficiently definite meaning as a name for structure. Dec. 7–15. Second, with respect to independent claims 1, 46, 75, and 86, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing each of the recited functions. See id. at 17–18 (discussing Maresh-I), 19–21 (discussing Stearns). With respect to independent claims 91, 94, 97, and 100, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without identifying and addressing the corresponding structure. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns).1” slip op. at 2
- BurdenNot shown unpatentable
“We disagree. Petitioner did not do either. First, Petitioner did not identify any portion of the specification describing corresponding structure in the Petition. Second, there is no mention of tracks or swing arms in the discussion of Maresh-I and Stearns at pages 14, 15, and 40 of the Petition, let alone any argument that the structures identified in either reference are equivalent. See Pet. 14, 15, 40. Accordingly, we did not misapprehend or overlook whether Petitioner complied with these requirements for means-plus-function claim terms; Petitioner did not. Petitioner’s Alleged Analysis and Evidence Regarding the Same or Equivalent Structures” slip op. at 7
Claim constructionPatents in suitUS 7,341,542 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00490 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, finding no overlooked or misapprehended matter in its § 112, ¶ 6 construction and its determination that Petitioner’s prior-art analysis was deficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In particular, we first construed “second portion support” as invoking § 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2
- BurdenNot shown unpatentable
“§ 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2
Claim constructionPatents in suitUS 6,689,019 - Abiomed, Inc. / Abiomed R&D, Inc. et al. v. Maquet Cardiovascular, LLCInstitution deniedPTAB · Sep 26, 2017 · IPR2017-01025 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 16–18 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of claims 16–18 of the ’100 patent. Accordingly, we do not institute an inter partes review of the ’100 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. With respect to the recitations “an intravascular blood pump having a cannula coupled thereto” and “a guide mechanism adapted to guide said intravascular blood pump and cannula to a predetermined location within the circulatory system of a patient,” for example, the Petition relies upon modifying the axial flow pump of Aboul-Hosn to remove its reverse flow features and modifying the blood pump system of Figures 1–13 for percutaneous access. See, e.g., Pet. 34 (discussing an axial flow pump configuration without the reverse flow features), 37 (discussing modifications to the blood pump system of Figures 1–13). In short, in attempting to map Aboul-Hosn onto the challenged claims, Petitioner provides the following: “A POSITA would have readily understood that the pump 420 could also be configured without the reverse flow feature of the pump system of FIGS. 1–13 and delivered by a similar over-the-wire guide mechanism.” Pet. 24 (citing Ex. 1002 ¶ 113; Ex. 1004, 31:6–9). Petitioner goes on to discuss various modifications required to achieve that result. Id. at 24–25. Dr. Collins’s Declaration testimony is similar. See, e.g., Ex. 1002 ¶¶ 113–120. Neither Petitioner nor Dr. Collins, however, provides any reason as to why one of ordinary skill in the art would modify Aboul-Hosn’s teachings as they propose.1 Ultimately, the Petition is deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul-Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The cited portions of the Collins Declaration also fail to support sufficiently Petitioner’s contentions. For example, in paragraph 129, Dr. Collins’ opines that “pump 420 could include a variety of known blood pumps, including the pump system of FIGS. 1–13,” and, in paragraph 130, he opines that “pump 420 would flexibly accommodate the pump described in FIGS. 1–13.” Dr. Collins’ opinions as to what pump 420 could include or would accommodate, however, is not the same as what Aboul-Hosn expressly teaches.” slip op. at 9
- Skill levelSkill level board ownOther
“For the purposes of this Decision, we determine that no express finding is necessary on this record and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,022,100 - Abiomed, Inc. / Abiomed R&D, Inc. et al. v. Maquet Cardiovascular, LLCInstitution deniedPTAB · Sep 20, 2017 · IPR2017-01028 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied both petitions and instituted no review because Petitioner failed to show a reasonable likelihood that claims 1–22 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“over Aboul-Hosn and Siess under 35 U.S.C. § 103(a). ’1028 Pet. 32–86; ’1029 Pet. 30–89. We have reviewed Petitioner’s challenge, as well as Patent Owner’s preliminary response to that challenge and the evidence relied on in those papers. Based on our review of the record before us, we determine that Petitioner has failed to establish a reasonable likelihood of prevailing at trial on the issue of whether claims 1–5, 7, 8, 10, and 12–22 would have been obvious over Aboul-Hosn and Siess.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“embodiments as teaching various claim features. ’1028 Pet. 32–68 (citing the embodiments of Figures 1–13 and 23 in Aboul-Hosn). Patent Owner contends that Petitioner has failed to establish sufficiently that the features of those different embodiments are interchangeable or provide sufficient rationale to combine the teachings of those different embodiments. See, e.g., ’1028 Prelim. Resp. 20–40. We agree.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The cited portions of the Collins Declaration also fail to support sufficiently Petitioner’s contentions. For example, paragraph 154 of the Collins Declaration states that “pump 420 could include a variety of known blood pumps, including the pump system of FIGS. 1–13” and paragraph 155 states that “pump 420 would flexibly accommodate the pump described in FIGS. 1–13.” Dr. Collins’ opinion as to what pump 420 could include or would accommodate, however, is not the same as what Aboul-Hosn teaches.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A. Claim Construction Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We construe the claims using the broadest reasonable construction in light of the ’068 patent Specification. See 37 C.F.R. § 42.100(b). Applying that standard, we generally interpret the claim terms of the ’068 patent according to their ordinary and customary meaning in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor is entitled to be his or her own lexicographer of patent claim terms by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, however, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner and Patent Owner each propose constructions for multiple terms. ’1028 Pet. 28–31; ’1029 Pet. 26–29; ’1028 Prelim. Resp. 68–70; ’1029 Prelim. Resp. 68–70. For purposes of this Decision, we determine that no term requires express construction.” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 9,327,068 - Abiomed, Inc. / Abiomed R&D, Inc. et al. v. Maquet Cardiovascular, LLCInstitution deniedPTAB · Sep 20, 2017 · IPR2017-01029 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. With respect to the recited step of “advancing the blood pump system along the guide wire to the predetermined location,” for example, the Petition simply alleges that “[t]his method step is also conventionally taken in any method of delivering an intravascular blood pump to the vasculature using a guide wire,” discusses the features of the embodiments shown in Aboul-Hosn’s Figures 1–13 (referencing page 22 of Aboul-Hosn), and then concludes that “Fig. 23 illustrates the predetermined location to which Aboul-Hosn guides his blood pump system with the aid of the guide wire” without further explanation or citation to supporting evidence. ’1028 Pet. 66–67. Ultimately, the ’1028 and ’1029 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul- Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of success of showing that claims 1, 10, and 20, and” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. With respect to the recited step of “advancing the blood pump system along the guide wire to the predetermined location,” for example, the Petition simply alleges that “[t]his method step is also conventionally taken in any method of delivering an intravascular blood pump to the vasculature using a guide wire,” discusses the features of the embodiments shown in Aboul-Hosn’s Figures 1–13 (referencing page 22 of Aboul-Hosn), and then concludes that “Fig. 23 illustrates the predetermined location to which Aboul-Hosn guides his blood pump system with the aid of the guide wire” without further explanation or citation to supporting evidence. ’1028 Pet. 66–67. Ultimately, the ’1028 and ’1029 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul- Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of success of showing that claims 1, 10, and 20, and” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The cited portions of the Collins Declaration also fail to support sufficiently Petitioner’s contentions. For example, paragraph 154 of the Collins Declaration states that “pump 420 could include a variety of known blood pumps, including the pump system of FIGS. 1–13” and paragraph 155 states that “pump 420 would flexibly accommodate the pump described in FIGS. 1–13.” Dr. Collins’ opinion as to what pump 420 could include or would accommodate, however, is not the same as what Aboul-Hosn teaches.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We construe the claims using the broadest reasonable construction in light of the ’068 patent Specification. See 37 C.F.R. § 42.100(b). Applying that standard, we generally interpret the claim terms of the ’068 patent according to their ordinary and customary meaning in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor is entitled to be his or her own lexicographer of patent claim terms by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, however, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner and Patent Owner each propose constructions for multiple terms. ’1028 Pet. 28–31; ’1029 Pet. 26–29; ’1028 Prelim. Resp. 68–70; ’1029 Prelim. Resp. 68–70. For purposes of this Decision, we determine that no term requires express construction.” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 9,327,068 - Abiomed, Inc. / Abiomed R&D, Inc. et al. v. Maquet Cardiovascular, LLCInstitution deniedPTAB · Sep 20, 2017 · IPR2017-01027 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution on all claims 1–24 because the petitions did not show a reasonable likelihood that the challenged claims were unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unpatentable over Aboul-Hosn and Siess under 35 U.S.C. § 103(a). ’1026 Pet. 34–81; ’1027 Pet. 31–87. We have reviewed Petitioner’s challenge, as well as Patent Owner’s preliminary response to that challenge and the evidence relied on in those papers. Based on our review of the record before us, we determine that Petitioner has failed to establish a reasonable likelihood of prevailing at trial on the issue of whether claims 1–4, 6, 7, 9– 11, 13, and 15–24 would have been obvious over Aboul-Hosn and Siess.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner also fails to provide a sufficient rationale to combine the teachings of Aboul-Hosn’s different embodiments. For example, Petitioner repeatedly asserts that certain features of the embodiments shown in Figures 1–13 and 23 may or can be used together, but fails to explain sufficiently why one skilled in the art would have found it obvious to combine those teachings. See, e.g., ’1026 Pet. 36 (“pump 420 [in FIG. 23] may also be configured without the reverse flow feature of the axial flow pump system of FIGS. 1–13), 57 (“the intravascular blood pump system shown in FIGS. 1–13 . . . may be adapted in a straight forward manner as the pump 420 in FIG. 23”), 61 (“With the guide wire 28 positioned in the desired location within the patient’s vasculature, such as within the left side of the heart as shown in FIG. 23, the distal end of the cannula 20 (or cannula 411) of the blood pump can be advanced by passing over the guide wire 28 via the central passages of the cannula, the drive unit 80 and the blood pump components (e.g., central passages 73 and 82) and through a lumen of the multilumen catheter 428.”). Ultimately, the ’1026 and ’1027 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein. Based on the record before us, we are left unpersuaded that the features of Aboul- Hosn’s various embodiments are interchangeable or that one skilled in the art would have combined those features in the manner proposed by Petitioner. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood of prevailing in showing that claims 1, 10, and 22, and claims 2–4, 6, 7, 9, 11, 13, 15–21, 23, and 24, which depend therefrom, are unpatentable over Aboul-Hosn and Siess.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“A. Claim Construction Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We construe the claims using the broadest reasonable construction in light of the ’728 patent Specification. See 37 C.F.R. § 42.100(b). Applying that standard, we generally interpret the claim terms of the ’728 patent according to their ordinary and customary meaning in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor is entitled to be his or her own lexicographer of patent claim terms by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, however, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 8,888,728
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.