St. Jude Medical, LLC v. Snyders Heart Valve LLC (USPTO as Intervenor)
Docket No. 2019-2108-9, -2140 (IPR2018-00105-00106)
PROST, REYNA, TARANTO
October 15, 2020
Brief Summary: Board anticipation finding of certain claims reversed based on FC panel’s revised claim construction (claims “interpreted with an eye toward giving effect to all terms in the claim”).
Summary: St. Jude appealed Board IPR-105 and IPR-106 final written decisions (FWDs) finding St. Jude had not established unpatentability (anticipation) of some of the challenged claims of SHV’s US 6,540,782 directed to an artificial hear valve and system for inserting the valve.
In IPR-105, “the Board essentially adopted St. Jude’s proposed claim construction of ‘band’” (“a band attached to the frame limiting spacing between adjacent anchors”, broadest reasonable construction (BRC)) as “a structure generally in the shape of a closed strip or ring,’ which slightly broadened St. Jude’s language by replacing St. Jude’s ‘circular’ with ‘closed’ (thereby including ovals, for example)” and found the prior art reference (Leonhardt) did not anticipate the claims because it disclosed “a ‘sleeve’…not a ‘strip’ or ‘ring’.” The FC panel found no error with the Board’s anticipation conclusion, rejecting St. Jude’s claim construction arguments that “a dictionary definition of ‘band’” as “[a] thin strip of flexible material” and the “explicit disclaim[er]” of “any restriction on the length of the band” (e.g., “dictionary definition does not exclude any width constraint from being part of the relevant understanding”, “the specification does not affirmatively specify any particular limit on a band’s width”, St. Jude did “not address the terms ‘srip’ or ‘ring’”).
In IPR-106, the Board found anticipation of ‘782 claims 1, 2, 6, and 8 but not claim 28 (“St. Jude did not prove that Bessler discloses the ‘manipulation’ required by the claim”). SHV appealed the anticipation finding, successfully arguing the Board erroneously construed the claim term “sized and shaped” limitation (“a flexibly resilient frame sized and shaped for insertion in a position between the upstream region and the downstream region”). The FC panel agreed with SHV due to the claim language that “provides some support for the reading advanced by Snyders in preference to the Board’s construction” (Wasica, FC 2017 (“highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous”); Bicon, FC 2006 (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”)) The FC panel also found support in the specification which includes “passages” that “make it unreasonable” to read it another way (BRC “in light of the specification” (37 CFR 42.100(b); Phillips, FC 2005 (“specification ‘is the single best guide’”)). The FC panel also found that during the IPR St. Jude “relied only on its claim-construction argument that the ‘782 claims cover the situation of a removed native valve” and “did not dispute the express assertion by Snyders that Bessler ‘requires removal of the native heart valve” and did not “preserve any” other argument (Novartis, FC 2017; In re Baxter, FC 2012). Based on its claim construction, the FC panel reversed the Board’s conclusion of anticipation of claims 1, 2, 6 and 8 and affirmed the finding of no anticipation of claim 28. The FC panel also rejected St. Jude’s challenge of the Board’s conclusion that certain claims were not shown to be obvious because it “failed to prove that a relevant artisan would have made the particular combination St. Jude proposed”, finding the Board “did not lack substantial-evidence support” (Arctic Cat, FC 2017; 35 USC 316(e); In re Magnum Oil, FC 2016).