IPR anticipation finding affirmed as negative limitation lacks support; refusal to enter amended claims as anticipated reversed due to improper analysis

Ethicon LLC v. Intuitive Surgical, Inc.

Docket No. 2020-1600 (IPR2018-00936) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1600.OPINION.3-15-2021_1747758.pdf) (Non-Precedential)

O’MALLEY, CLEVENGER, STOLL

March 15, 2021

Brief Summary:  IPR finding of anticipation based on claim construction affirmed (e.g., negative limitation not supported); reversed and remanded as to proposed amended claims because Board “did not correctly identify the portions of Shelton I that Intuitive relied on”.

Summary:  Ethicon appealed IPR FWD finding claims 1-14 of US 9,585,658 relating to surgical staplers invalid as anticipated and the denial of its motion to amend to substitute proposed claims 20-21.  The Board construed the terms “rotary drive member”, “rotary member”, and “rotatably drive member” as “a component that rotates to drive another component” which ‘does not exclude a component regarded as a gear or a trigger’”.  Based on this construction, the Board held the claims to be anticipated by Wales (US 6,981,628).  Intuitive had proposed alternative grounds for invalidation of proposed claims 20 and 21 but the Board did not reach those arguments.  Ethicon argued to the Board and appeal that the rotary limitation should exclude “a gear or trigger” but the FC panel disagreed (e.g., “the rather generic terms…do not on their face exclude a trigger” and the specification shows “no intent by the inventors to exclude a trigger”, “the fact that every embodiment in the specification depicts a particular arrangement or structure does not necessarily support reading that arrangement or structure into the claims absent express claim language requiring as much” (Aventis, FC 2012); Innova/Pure Water, FC 2004 (“[P]articular embodiments appearing in the written description will not be used to limit claim language that has broader effect.”); Liebel-Flarsheim, FC 2004).  The FC panel also found this to be “especially true here, where Ethicon’s proposed construction includes a negative limitation”, which “must find support either in “the words of the claim” or through an “express disclaimer or independent lexicography in the written description that would justify adding that negative limitation” (Omega Eng’g, FC 2003; Vehicle IP, FC 2014).  The Board’s construction and anticipation findings were therefore affirmed. 

The Board denied Ethicon’s request to add substitute claims for being invalid under 102(e) over Shelton I as Intuitive argued, which Ethicon argued was erroneous “because it was not invented ‘by another’”.  Ethicon cited Duncan Parking (FC 2019) which held that a joint inventor must “contribute in some significant manner”, “make a contribution…that is not insignificant”, and “do more than merely explain to the real inventors well-known concepts and/or the current state of the art”.  Duncan also held that the Board must “determine what portions of the reference patent were relied on”, evaluate whether those parts “were conceived ‘by another’”, and “device whether that other person’s contribution is significant enough”.  The FC panel found that the Board “did not correctly identify the portions of Shelton I that Intuitive relied on” and reversed its finding that the proposed substitute claims are anticipated, reversing and remanding this part of the decision.

This entry was posted in Anticipation (35 USC 102), Claim Construction, Inter Parties Review (IPR), IPR. Bookmark the permalink.

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