Docket No. 2015-1631
MOORE, O’MALLEY, WALLACH
February 5, 2016
Brief Summary: Board claim construction correct (e.g., no “clear and unmistakable” disclaimer during prosecution) and decision of no obviousness affirmed (e.g., substitution “would destroy the basic objective of [Todd’s] barbs”).
Summary: TriVascular appealed PTAB judgment that it failed to show Dr. Samuel’s US 6,007,575 relating to intraluminal stents is invalid as obvious. Dr. Samuels sued TriVascular for infringement of the ‘575 patent in May, 2013 and Tristar filed a petition for IPR in August, 2013. The review was instituted in February, 2014 on two grounds: obviousness over Samuel’s US 5,423,851 patent and US 5,243,745 (“Todd”); and, obviousness over US 5,693,088 (“Lazarus”) and Todd. The Board construed the phrase “circumferential ridge disposed about the inflatable cuff” to mean “raised strip disposed circumferentially about the outer surface of the inflatable cuff”, and found a reasonable likelihood of success because neither “demonstrated that the Samuels ‘851 patent teaches away from the substitution of the penetrating anchoring barbs taught in the reference, nor…establish[ed] that removing the bards would destroy the objective of the reference.” In its final decision, “the Board adopted Samuels’ construction of ‘inflatable protrusions,’ as ‘protrusions that are themselves inflatable, i.e., expandable by being filled with fluid’” and that these were not disclosed by the prior art (and neither were the “circumferential ridges”). TriVascular argued the Board erred in construing “circumferential ridges” and that the definition should require the cuff to be “either continuous or discontinuous”. The opinion explains the Board’s standard is “the broadest reasonable construction in light of the specification as they would be interpreted by one of ordinary skill in the art” (In re Cuozzo, FC 2015; Straight Path, FC 2015 (under BRI, “words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification oand prosecution history”)). BRI, though, “does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description” (In re Suitco Surface, FC 2010 and In re Abbot Diabetes, FC 2012). The FC panel found that “the Board found support for its construction in the written description” and “a general purpose dictionary”, and that TriVascular had not met “its burden of demonstrating the existence of a ‘clear and unmistakable’ disclaimer” during prosecution (amendment to include “continuous” in claims during prosecution was later rescinded and not part of the granted claims). The FC panel also found no error with the Board’s decision that the claims would not have been obvious “since TriVascular’s proposed substitution” of the protruding barbs of Todd with the recessed barbs of Samuel ‘851 since doing so “would destroy the basic objective of [Todd’s] barbs, which is to penetrate surrounding tissue”. In addition, “the protuberances taught in Todd were not inflatable, as recied in the asserted claims” and “there was an insufficient motivaton to substitute just the barbs of Samuel ‘851 with the protuberances of Todd.” The opinion also explained that “the Board is not bound by any findings made in its Institution Decision” and “is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong” (comparing § 314(a) (instituting IPR) and § 316(e) (proving invalidity)). Thus, the Board decision was affirmed.