Docket No. 2015-2043 (IPR2014-00233)
MOORE, SCHALL, O’MALLEY
November 15, 2016
Brief Summary: PTAB IPR decision of no “continuous exercise of reasonable diligence” vacated and remanded as the standard is only “reasonable”, not “continuous”. Claim construction determination also vacated and remanded because “[t]he patentee is free to define or limit a term used in a patent” and did so here.
Summary: PST appealed PTAB IPR decision invalidating many claims of US 6,030,384 relating to “bipolar surgical instrument[s]” for anticipation or obviousness. The Board rejected PST’s argument that a Japanese prior art application (“JP ‘551”) could not be relied on because Olympus “failed to translate the bibliographic page containing the publication date”. The panel agreed with the Board because its acceptance of the reference was not “anything other than harmless error.” The PTAB also determined that “PST failed to antedate JP ‘551 [102(g)] because it had not proven that the ‘384 inventor was reasonably diligenet in reducing his invention to practice.” The ‘384 inventor’s patent attorney sent him a draft application on Jan. 28, 1998 and it was filed on May 1, 1998; JP ‘551 published between those dates. The inventor needed to show reasonable diligence “during the critical period, which began on February 9, 1998, one day prior to the JP ‘551’s publication date, and ended on May 1, 1998, the date the invention was constructively reduced to practice by filing the application”. The FC panel noted that the “Board repeatedly” and incorrectly “characterized PST’s burden as requiring proof of…‘continuous exercise of reasonable diligence’” since only “reasonably continuous diligence” is required (Tyco, FC 2014). “[T]he point of the diligence analysis…is to assure that…‘the invention was not abandoned or unreasonably delayed.’” And, unlike In re Mulder (FC 1983) in which the patent owner did not produce any evidence of diligence, such evidence was provided and the Board was found to have erroneously failed to consider the patent attorney’s activities and “did not make a fact finding that any [of the gaps in activity] would be sufficient to establish a lack of diligence for the entire critical period.” The Board decision was therefore vacated and remanded on this issue (Judge Schall dissented on this point). The FC panel also considered the Board’s construction of the term “perforated” which was determined under its broadest reasonable interpretation (BRI) to mean “at least one jaw [of the device] has one or more perforations or passages form therethrough, so that steam generated between the jaw and tissue is released” and “perforate” to mean “to pierce, punction, or make any hole”, citing the specification and extrinsic definitions for support. PST argued that “the description in the specification that the device ‘may be perforated or otherwise provided with passages’ evidences a difference in meaning between passages and perforations” and the FC panel agreed since “[t]he patentee is free to define or limit a term used in a patent” (Thorner, 2012). It concluded that since “[t]he patentee claimed only jaws that are ‘perforated’”, the “claim does not extend to passages” and “the Board’s finding that JP ‘551 disclosed at least one ‘perforated’ jaw because JP ‘551 referenced a passage cannot be supported”. The decision was therefore vacated and remanded on this additional point.