IPR2015-01274 (U.S. Pat. No. 7,887,536 B2)
Final Written Decision
November 30, 2016
Brief Summary: Ethicon’s IPR Petition against Covidien’s US 7,887,536B2 found to show by a preponderance of the evidence that the claims would have been obvious.
Summary: Ethicon’s IPR Petition against Covidien’s US 7,887,536B2 relating to an “electrosurgical instrument for use in open surgery” was instituted on December 17, 2015. Ethicon alleged obviousness in view of three (claims 1-4 and 7-13) or four (claims 5-6) references, relying in part on a declaration by expert witnesses. The PTAB construed the claim term “effect a tissue seal” under the broadest reasonable interpretation standard (“BRI”; In re Cuozzo, US 2016; In re Translogic Tech., FC 2007; (“Under that standard, and absent any special definitions, we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure.”)) of IPR proceedings as “liquefy the collagen in the tissue so that it reforms into a fused mass” as requested by Covidien, but also “clarif[ied] that the tissue is not limited either by its type or its size.” Covidien argued for that limitation but the PTAB found that “according to the ‘536 patent, sealing can be used to close small vessels” (“neither the claim nor the specification focuses on vessel sealing…none of the claims even recites ‘vessel’…[i]nstead, the claims repeatedly refer to ‘tissue’ and ‘tissue sealing’…the Summary and Detailed Description sections of the specification use the term ‘vessel’ only once [but] discusses tissue sealing throughout…we certainly will not read limitations into the claims from the patent title” (Pitney Bowes, FC 1999)). The decision reviewed the art against claims 1-4 and 7-13, adopted Ethicon’s definition of the level of ordinary skill in the art as “at least a bachelor’s degree in a relevant field of engineering”, and concluded Ethicon had shown obviousness by a preponderance of the evidence (e.g., “both Witt and Yates teach the knife…Tetzlaff teaches the stop member for controlling the gap distance…and Yates teaches the pressure range” and a motivation to combine the same was present (e.g., “Witt’s explicit recognition that Tetzlaff discloses subject matter pertinent to Witt’s teaching would motivate those of skill in the art to consider Tetzlaff when reading Witt.”) The decision also explained that the obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim” and “background knowledge in the field” as well “demands known to the design community or present in the marketplace” are also considered. In addition, “[t]he test for obviousness is not whether the features of one reference may be bodily incorporated into the structure of the other reference, but rather ‘what the combined teachings would have suggested to those of ordinary skill in the art’” (Keller, CCPA 1981) and “the modifications that one skilled in the art would make to a device borrowed from the prior art” cannot be ignored (In re ICON, FC 2007). And only “some technological incompatibility that prevented [the] combination” of prior art is relevant, not “economic reasons” (Orthopedic Equip., FC 1983). For similar reasons, the PTAB also found Ethicon showed the obviousness of claims 5 and 6 by a preponderance of the evidence.