Board IPR obviousness decision vacated-in-part and remanded due to incorrect claim construction

TalexMedical, LLC v. Becon Medical Limited, et al.

Docket No. 2021-2069-70, 2021-2109-10 (IPR2020-0028, -00030) ( (Non-Precedential)


July 22, 2022

Brief Summary:   Board IPR obviousness decision vacated-in-part and remanded due to incorrect claim construction. Summary:  TalexMedical appealed two USPTO (“Board”) IPR decisions holding claims 4-7 of US 8,167,942 and claim 16 of US 8,853,277 (both Becon patents) relating to “correcting misshaped ears using a molding device” not unpatentable for obviousness.  Becon cross-appealed decisions of holding claims 1-3 and 9 of the ‘942 patent and claims 1-2 and 9-10 of the ‘277 patent invalid for obviousness.  The FC panel explained the Board “declined Becon’s request to construe ‘mold’ and ‘molding device’ to require reshaping an ear” and found , “construed ‘scaphal mold’ to mean ‘mold at the end of the one or more braces that is positionable in the scaphal area’”, “construed the ‘reversibly engage’ limitation to mean ‘to engage a surface on a reverse side facing away from the ear’”, and applied these constructions to its conclusions regarding obviousness or non-obviousness (e.g., “Dancey and Yotsuyanagi each independently disclose an ear molding device as recited in the ’942 patent claims and the ’277 patent claims”, “Talex failed to show that Dancey’s foot member includes a ‘broad flat surface’”, Dancy does not disclose the “reversibly engage” limitation).  The Board also “concluded that Becon failed to establish that it was entitled to a nexus between secondary considerations and the asserted claims, or a presumption of a nexus, for any of the challenged claims” (““[Becon’s] briefing and cited evidence lack sufficient specificity”) and “even if Becon had established a nexus, the Board would have found the strength of the obviousness allegations greater than the indicia of nonobviousness (e.g., copying and industry praise).”  The FC panel reviewed the Board’s obviousness decision (legal) de novo (In re Elsner, FC 2004; Graham, US 1966; Meiresonne, FC 2017; Apple, FC 2016 (en banc); In re Mouttet, FC 2012) and the factual findings for substantial evidence (In re Gartside, FC 2000; Consol. Edison, US 1938; In re Warsaw Orthopedic, FC 2016).  It first found that the Board could not discern whether the prior art showed the “semi-cylindrical extension” limitation of ‘277 claim 16 and Talex “did not use the opportunity to address its confusing annotations in its reply before the Board.”  The FC panel similarly found substantial evidence supporting the Board’s conclusion regarding ‘942 claim 4 (e.g., “Talex failed to show that the portion of Dancey’s foot adjacent to the patient’s head is broad or flat.”)  The FC panel found the Board erred in construing “reversibly engage” by failing to “consider the possibility that both [parties’] constructions are inconsistent with the intrinsic evidence” (Phillips, FC 2005; Hill-Rom Servs., FC 2014; Thorner, FC 2012; Liebel-Flasheim, FC 2004 (Embodiments cannot limit the scope of the claims absent the patentee’s “words or expressions of manifest exclusion or restriction.”))  The FC panel agreed with the Board’s construction of the “mold” limitation as not “require[ing] reshaping” and its obviousness conclusion.  The FC panel also agreed that Becon did not show a nexus between the success of its EarWell product and the claims (Henny Penny, FC 2019; Fox, FC 2019; Polaris, FC 2018).  It also found the Board did not err in denying Becon’s motion to amend its claims.  The Board’s decisions were therefore affirmed-in-part, vacated-in-part (patentability of ‘942 claims 5-7), and remanded.

This entry was posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations). Bookmark the permalink.

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