Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 8
`
` Entered: September 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COOK MEDICAL LLC,
`Petitioner,
`
`v.
`
`STONE BASKET INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00713
`Patent 6,551,327 B1
`____________
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 8
`
` Entered: September 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COOK MEDICAL LLC,
`Petitioner,
`
`v.
`
`STONE BASKET INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00713
`Patent 6,551,327 B1
`____________
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-00713
`Patent 6,551,327 B1
`
`I.
`
`INTRODUCTION
`
`Cook Medical LLC (“Petitioner”) filed a Petition (Paper 2, “Pet.”),
`requesting institution of an inter partes review of claims 1–8 of
`U.S. Patent No. 6,551,327 B1 (Ex. 1001, “the ’327 patent”). Stone Basket
`Innovations LLC (“Patent Owner”) timely filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`Upon consideration of the Petition and the Preliminary Response, and
`for the reasons explained below, we determine that Petitioner has shown that
`there is a reasonable likelihood that it would prevail with respect to at least 1
`of the challenged claims of the ’327 patent. We thus institute an inter partes
`review.
`
`A. Related Proceedings
`As a related proceeding, the parties indicate that the ’327 patent is
`currently at issue in Stone Basket Innovations LLC v. Cook Medical LLC,
`Case No. 2:15-cv-00464, pending in the United States District Court for the
`Eastern District of Texas. Pet. 1–2; Paper 5, 2.
`
`B. The ’327 Patent (Ex. 1001)
`The ’327 patent issued on April 22, 2003, from an application filed on
`January 17, 2001, and names Avtar S. Dhindsa as its sole inventor. Ex.
`1001, Title Page. The ’327 patent relates generally to an endoscopic stone
`extraction device including a handle that supports a movable sheath, a
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`filament such as a wire slidably disposed in the sheath, and a stone
`extraction basket attached to one end of the filament. Id., Abstract; Fig. 1.
`
`An embodiment of the endoscopic stone extraction device is shown in
`Figure 1 of the ’327 patent, reproduced below:
`
`
`
`As depicted above, Figure 1 shows a perspective view of endoscopic stone
`extraction device 10 that includes handle 12 that in turn includes grip 14 and
`slide 16, which is mounted to slide longitudinally along the length of the
`grip. Ex. 1001, 1:63–65, 2:19–24. Tubular sheath 18, which defines lumen
`19, is secured to slide 16. Id. at 2:25–26. The device also includes filament
`22 having first end 24 (not shown) that is rotatably secured to grip 14, and
`second end 26 that supports stone extraction basket 28. Id. at 2:31–34.
`
`Figure 10 of the ’327 patent, reproduced below, shows an
`embodiment of the stone extraction basket for use with the device:
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`As depicted above, Figure 10 shows an enlarged perspective view of stone
`extraction basket 28' with stone entrance region 100' positioned adjacent to
`second end 26 of filament 22, and stone retention region 102' positioned
`opposite second end 26. Id. at 2:13–15, 5:1–5.
`
`The ’327 patent teaches that “[t]he stone extraction devices described
`[therein] can be used with the widest variety of endoscopes, including
`uretoscopes, nephroscopes and other endoscopic devices.” Id. at 5:51–54.
`The ’327 patent further teaches that “[a]s used herein, the term ‘stone’ is
`intended to broadly encompass a wide variety of biological stones, calculus
`and the like, including fragments” thereof. Id. at 5:55–59.
`C. Illustrative Claims
`Petitioner challenges claims 1–8 of the ’327 patent. Independent
`claim 1 is illustrative of the claimed subject matter, and is reproduced below:
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`1. An endoscopic stone-extraction device comprising:
`a support filament comprising a first end portion and a second
`end portion;
`a sheath comprising a lumen, the support filament disposed in
`the lumen such that the sheath is slideable with respect to the
`support filament;
`a collapsible stone-extraction basket carried by the first end
`portion of the support filament and receivable within the
`lumen of the sheath;
`a handle comprising a sheath movement element, wherein
`movement of the sheath movement element in a first
`direction advances the sheath and causes the basket to at
`least partially collapse inside the lumen of the sheath, and
`wherein movement of the sheath movement element in a
`second direction retracts the sheath and causes the basket to
`expand to an operational shape outside the lumen of the
`sheath;
`the basket, when expanded to the operation shape outside the
`lumen of the sheath, comprising a stone-entrance region and
`a stone-retention region, the stone-entrance region
`comprising a first opening sized to admit a stone into the
`basket, the stone-retention region comprising a plurality of
`second openings, all of the second openings being smaller
`than the first opening;
`the first opening facing the first end portion of the support
`filament, the stone-retention region positioned on a side of
`the basket opposite the first end portion of the support
`filament;
`wherein the basket comprises a set of longitudinal basket
`filaments radiating from the first end portion of the support
`filament and a set of lateral basket filaments extending
`between the longitudinal basket filaments, the lateral basket
`filaments positioned substantially entirely in the stone-
`retention region of the basket.
`
`D. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the claims of the ’327 patent
`on the following grounds:
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`Basis
`§ 103
`
`Claim(s) challenged
`1–8
`
`References
`Tsugita1 and any of the Sheath
`Movement Element (SME)
`Prior Art2
`Leslie and any of Tsugita,
`Bates II, or Bates IV
`Bates I and either Tsugita or
`Bates IV3
`Petitioner relies upon the Declaration of Robert H. Wagoner, Ph.D.
`
`(Ex. 1028) in support of its patentability challenges.
`II. ANALYSIS
`
`§ 103
`
`§ 103
`
`1–8
`
`1–8
`
`A. Claim Construction
`
`We interpret claims using the “broadest reasonable construction in
`light of the specification of the patent in which [they] appear[].” 37 C.F.R.
`§ 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016) (affirming applicability of broadest reasonable construction
`standard to inter partes review proceedings). Under the broadest reasonable
`construction standard, claim terms are generally given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`
`
`1 Tsugita et al., U.S. Patent 6,165,200, issued Dec. 26, 2000 (Ex. 1003,
`“Tsugita”).
`2 Petitioner identifies the following references collectively as “SME Prior
`Art”: a) Leslie et al., U.S. Patent 6,168,603 B1, issued Jan. 2, 2001 (Ex.
`1004, “Leslie”); b) Bates et al., U.S. Patent 5,496,330, issued Mar. 5, 1996
`(Ex. 1005, “Bates I”); c) Bates et al., U.S. Patent 6,099,534, issued Aug. 8,
`2000 (Ex. 1006, “Bates II”); d) Boston Scientific Microvasive Publication
`(Ex. 1008); e) Cook Atlas Extractor Publication (Ex. 1009); and f) Cook
`Market Information Bulletin (Ex. 1010).
`3 Bates et al., U.S. Patent 6,179,859 B1, issued Jan. 30, 2001 (Ex. 1013,
`“Bates IV”).
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`art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). “Absent claim language carrying a narrow meaning,
`the PTO should only limit the claim based on the specification . . . when [it]
`expressly disclaim[s] the broader definition.” In re Bigio, 381 F.3d 1320,
`1325 (Fed Cir. 2004). “Although an inventor is indeed free to define the
`specific terms used to describe his or her invention, this must be done with
`reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`1. “Endoscopic” (Preamble)
`Patent Owner asserts that the term “endoscopic,” as used in the
`preamble’s recitation of “an endoscopic stone-extraction device,” is a
`limitation of claim 1. Prelim. Resp. 8–10. Patent Owner asserts that “[t]he
`Federal Circuit has repeatedly held that a preamble term is a limitation when
`the intrinsic evidence emphasizes the importance of the term” and “[t]he
`Federal Circuit has also found a preamble term to be a limitation when the
`importance of the term is underscored in the patent by, for example, use of
`the term in the title, abstract, summary or the specification.” Id.
`We are not persuaded, based on the present record, that the term
`“endoscopic” recited in the preamble is a limitation. Generally, the Federal
`Circuit has held that the preamble limits a claim only if it recites essential
`structure or is otherwise “necessary to give life, meaning, and vitality” to the
`claim, and that the preamble is not limiting when the claim body defines a
`structurally complete invention and the preamble states only a purpose or
`intended use. See Pitney Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d
`1298, 1305 (Fed.Cir.1999) (citing Kropa v. Robie, 38 CCPA 858, 187 F.2d
`150, 152 (1951)), Rowe v. Dror, 112 F.3d 473, 478 (Fed.Cir.1997).
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`Here, the body of claim 1 recites a structurally complete invention,
`and the term “endoscopic” appears to be merely an intended use recitation
`that does not add any further structural requirements to the claimed device.
`Indeed, while arguing that the term should be treated as a limitation, Patent
`Owner itself indicates that it “does not believe ‘endoscopic’ requires
`construction, but to the extent the Board believes the term requires
`construction, it should be construed to mean, ‘configured for use with an
`endoscope.’” Prelim. Resp. 10. Patent Owner, however, does not explain
`what type of structure is required by a device that is “configured for use with
`an endoscope.” Nor has Patent Owner explained how the term “endoscopic”
`gives life, meaning, and vitality to the claim. Accordingly, we do not
`consider the term to be a limitation in our preliminary analysis for purposes
`of institution.
`2. “Sheath Movement Element”
`Claim 1 of the ’327 Patent states that “movement of the sheath
`movement element in a first direction advances the sheath and causes the
`basket to at least partially collapse inside the lumen of the sheath” and that
`“movement of the sheath movement element in a second direction retracts
`the sheath and causes the basket to expand to an operational shape outside of
`the lumen of the sheath.” Ex. 1001, 6:19–27.
`Petitioner argues that, under its broadest reasonable construction, the
`term “sheath movement element” means “any part of the device that can be
`used to move the sheath to open and close the basket.” Pet. 10 (Citing Ex.
`1028, ¶¶ 77–78). Patent Owner contends that the term “sheath movement
`element” does not require construction, but to the extent the Board construes
`the term, it should mean “an element on the handle for sliding the sheath
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`relative to the support filament.” Prelim. Resp. 11. Patent Owner asserts
`that this construction appropriately reflects the express claim language that
`“the sheath is slideable with respect to the support filament” and the “handle
`compris[es] a sheath movement element.” Id.
`On this record, we adopt Petitioner’s proposed construction of “sheath
`movement element” in our preliminary analysis for purposes of institution.
`However, we do not perceive any meaningful dispute over the construction
`of this term. For example, Patent Owner has not argued that any of the prior
`art does not teach or suggest a “sheath movement element” under its
`proposed construction. Nonetheless, we agree with Patent Owner that the
`claims require that the “the sheath is slideable with respect to the support
`filament” and the “handle compris[es] a sheath movement element,” and
`have taken those express claim recitations into account as part of our
`analysis of Petitioner’s patentability challenges.
`3. Other Claim Terms
`We determine that no other claim term requires express construction
`for purposes of deciding whether to institute a review in this case. See, e.g.,
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
`(“[C]laim terms need only be construed ‘to the extent necessary to resolve
`the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`The claim constructions in this Decision are preliminary
`determinations. They do not preclude the parties from asserting their
`proposed constructions of the claims during trial. Indeed, the claim
`construction issues discussed in the Petition, Preliminary Response, and this
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`Decision put the parties on notice that claim construction, in general, is an
`issue to be addressed at trial.
`
`B. Prior Art Relied Upon
`Petitioner relies upon the following prior art references in its
`patentability challenges. In addition to these references, Petitioner also
`describes several other prior art references as background information
`1. Tsugita (Ex. 1003)
`Tsugita is directed to percutaneous catheter and guidewire having
`filter and medical device deployment capabilities. Ex. 1003, Title. The
`device taught by Tsugita is used for treating plaque depositions and
`occlusions within major blood vessels. Id. at 1:15–23 (Field of the
`Invention).
`Tsugita’s catheter includes filter device 30 that generally comprises
`introducer sheath 32, guidewire 40, and expandable filter assembly 50. Id.
`at 7:52–55. “The sheath 32 has a proximal end 34 and a distal end 36,” and
`“[t]he guidewire 40, typically a flexible, substantially resilient wire, having a
`distal end 42 and a proximal end 44, is inserted into the proximal end 34 of
`the sheath 32 through a lumen.” Id. at 7:58–63. Additionally, expandable
`filter assembly 50 is attached on or near distal end 42 of guidewire 40. Id. at
`7:66–67.
`Figure 8A of Tsugita, reproduced below, shows an embodiment of the
`filter assembly used for the catheter:
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`As depicted in longitudinal view above, filter assembly 50 comprises a
`plurality of struts 54 having filter mesh 60 attached thereon, wherein “the
`struts 54 are shown having a radiused shape bias to expand radially when the
`filter assembly 50 is first introduced into the blood vessel.” Id. at 6:41–43,
`12:48–56. Tsugita teaches that an exemplary embodiment of the mesh has a
`“pore size” of 60–100 µm. Id. at 9:5–8. The “[f]ilter mesh is attached
`typically between the intermediate region and the distal ends of the struts,
`thereby defining a substantially hemispherical or conical shaped filter
`assembly.” Id. at 3:61–64.
`2. Leslie (Ex. 1004)
`Leslie teaches a “surgical extractor for removing objects from a body
`including, for example, calculi, such as kidney stones and gall stones.” Ex.
`1004, Abstract. The surgical extractor “includes a retrieval basket with
`distal and proximal ends and a retractable sheath,” wherein “[t]he retractable
`sheath in a first position retains the retrieval basket in a compact condition
`and in a second position frees the retrieval basket for expansion to form an
`enlarged basket that comprises a plurality of wires extending between the
`distal and proximal ends of the basket.” Id. at 4:36–44. Leslie further
`
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`teaches that the sheath connects to a slider for axial displacement. Id. at
`4:59–63, 5:7–13.
`Figures 1 and 4 of Leslie are reproduced below:
`
`
`
`
`
`Figure 1 shows a plan view of a surgical extractor with a handle at the
`proximal end and an expanded retrieval basket at the distal end. Id. at 5:23–
`25. Figure 4 shows an enlarged view of the distal end of the extractor with
`the retrieval basket in a compact form inside the sheath. Id. at 5:32–34.
`During operation,
`a physician will introduce the extractor 10 with its distal end 16
`in the form shown in FIG. 4 so the sheath 17 retains the
`retrieval basket 15 in its compact form. When the distal end 16
`is positioned proximate at calculi or any other object to be
`retrieved, the physician moves the slider 14 from position 14B
`to the position 14 in FIG. 1. This retracts the sheath 17 and
`exposes the second and third sections 20 and 21 of the basket
`assembly 18. The wires return to their original shape as shown
`in FIG. 2 thereby to dilate surrounding tissue and to provide a
`structure that can be manipulated to capture calculi within the
`confines of the retrieval basket 15.
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`Id. at 6:52–63.
`3. Bates I (Ex. 1005)
`Bates I teaches a surgical extractor with a similar structure and
`manner of operation to the device disclosed in Leslie, as discussed above.
`See Ex. 1005, Abstract; Fig. 1; 3:36–50, 4:22–38.
`4. Bates II (Ex. 1006)
`Bates II teaches a medical retrieval device that includes a basket used
`to retrieve material (e.g., a urinary stone) from a body. Ex. 1006, Abstract.
`The retrieval device “includes basket 10, a catheter or sheath 18 for
`introduction of the basket 10 into a tract, and at least one cable 20 extending
`and moveable within the sheath 18.” Id. at 5:12–15. Bates II further teaches
`that
`
`the device also includes a proximal handle 9 at the proximal
`end of the sheath 18, and this handle typically includes one or
`more actuating mechanisms (e.g., a slide, a knob, a dial, etc.)
`coupled to the sheath 18 and/or the cable 20 for causing the
`sheath 18 and the basket 10, under operator control, to move
`relative to each other to move the basket from a collapsed
`position within the sheath to an extended position outside of the
`sheath.
`
`Id. at 5:16–24.
`5. Boston Scientific Microvasive Publication (Ex. 1008)
`Ex. 1008 appears to be a marketing publication describing Boston
`Scientific’s Microvasive line of stone extractors. It includes the following
`figure:
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`Ex. 1008, 5–9. The figure above depicts a “French Segura BasketsTM”
`device, and the corresponding description notes that “2.4 French sheath
`advances easily through flexible ureteroscope working channels and
`maximizes irrigation capability.” Id.
`6. Cook Publications (Exs. 1009, 1010)
`The Cook Publications describe a stone extractor with a “Unidex”
`handle that “facilitates easy one-handed operation.” Ex. 1009, 2; Ex. 1010,
`2–3. The Cook Stone Extractor Publication notes that “[t]he basket itself
`remains immobile. It is the sheath that is pulled back to reveal the basket.
`This enhances placement and decreases the likelihood that the stone will
`become dislodged while closing the basket.” Ex. 1010, 2.
`7. Bates IV (Ex. 1013)
`Bates IV teaches an emboli filtration apparatus having a filter
`element, as shown in Figure 2A, reproduced below:
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`As depicted above,
`filter element 30 comprises funnel-shaped filter sac 31 coupled
`to a plurality of self-expanding struts 32 at proximal end 33 and
`soft elastomer cone 34 at distal end 35. Struts 32 are affixed to
`capture ring 36, and self-expand from a contracted state, when
`filter element is disposed in lumen 24 of catheter 21, and a
`deployed state, when filter element is ejected from delivery
`sheath 20. In the deployed state, struts 32 extend outward to
`urge the perimeter of sac 31 into engagement with the walls of a
`vessel.
`
`Ex. 1013, 4:10–19.
`
`C. Patentability Challenges
`1. Obviousness Based on Tsugita in View of Sheath Movement
`Element (SME) Prior Art
`
`Petitioner asserts that claims 1–8 are obvious over Tsugita in view of
`any one of the “SME Prior Art” references (i.e., Leslie, Bates I, Bates II, the
`Boston Scientific Microvasive Publication, or the Cook Publications). Pet.
`19–20; 24–26. Specifically, Petitioner asserts that Tsugita teaches all the
`requirements of claim 1, with the exception of a “sheath movement
`element.” Id. at 24. Petitioner asserts that “a handle comprising a sheath
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`movement element was well-established in the prior art,” and that “each of
`the stone extraction devices in the SME Prior Art . . . disclosed a ‘handle
`comprising a sheath movement element’ that caused the basket to open and
`close by moving the sheath backward or forward.” Id. at 25. Petitioner
`further asserts that, “in the related district court litigation, the named
`inventor admitted at his deposition that the addition of a handle comprising a
`sheath movement element did not confer any novelty on the claimed
`invention.” Id. (citing Ex. 1011, 142). Petitioner contends that the skilled
`artisan would have been motivated to combine Tsugita’s disclosures “(which
`focused on capturing emboli within blood vessels) with any one of the stone
`extraction devices disclosed in the SME Prior Art Patents” a) because the
`references address the “common problem of capturing and removing objects
`from body passageways,” and b) in order “to address the problem of
`captured stones becoming dislodged when the physician moved the basket in
`an effort to close it.” Id. at 28–29. Petitioner cites to the Wagoner
`Declaration (Ex. 1028) as support for these motivations. Id.
`With respect to dependent claim 2, Petitioner asserts that Tsugita
`discloses a concave surface meeting the claim’s requirements, as shown in
`Figure 8A. Id. at 29–30. With respect to the size requirements of dependent
`claims 3, 4, and 6, Petitioner asserts that “Tsugita discloses the use of mesh
`with holes (second openings) at 0.06–0.10 mm in dimension, which is
`smaller than 2 mm (Claim 3) and 5 mm (Claim 6).” Id. at 30 (citing Ex.
`1003, 9:5–8). Additionally, Petitioner asserts that the skilled artisan would
`have found it obvious to design a basket with holes within the claimed
`ranges because “[i]t was well known in 2001 that the diameter of fragmented
`kidney stones ranged from 2–10 mm.” Id. at 30–31 (citing Ex. 1007, 8:59–
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`60; Ex. 1028, ¶¶ 134–137). Petitioner also asserts that Tsugita or any one of
`the SME Prior Art references discloses the requirement in dependent claim 5
`that the support filament and basket are free of attachment to the sheath,
`such that the entire basket is movable into the lumen of the sheath. Id. at 31.
`Finally, Petitioner asserts that the SME Prior Art references teach the
`requirement in dependent claim 7 that movement of the sheath movement
`element in the first direction causes the basket to completely collapse inside
`the lumen of the sheath, as well as the requirement in dependent claim 8 that
`“the sheath movement element comprises a slide, wherein the handle
`comprises a grip, and wherein the slide is mounted for translation relative to
`the grip.” Id. at 32.
`Based on the current record, including the arguments and claim charts
`presented with the Petition, we preliminarily agree with Petitioner’s
`contention that claims 1–8 would have been obvious over Tsugita in view of
`any one of the SME Prior Art references. The only argument with respect to
`this challenge presented in Patent Owner’s Preliminary Response is that the
`Petition fails to show that the combination of Tsugita and the SME Prior Art
`references discloses “an endoscopic stone-extraction device” as required by
`claims 1–8. Prelim. Resp. 14–18. We are unpersuaded by this contention.
`As discussed above, we do not construe the recitation of “endoscopic” in the
`preamble as a structural limitation. Moreover, even if considered a
`limitation, Patent Owner has not convinced us on this record that Petitioner’s
`explanation as to why the Tsugita device or any of the SME Prior Art
`devices would satisfy the requirements of an “endoscopic stone-extraction
`device” is incorrect. Contrary to Patent Owner’s contention, Petitioner’s
`expert Dr. Wagoner has explained that “it would be obvious for a person of
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`ordinary skill in the art to use the device disclosed in Tsugita as ‘an
`endoscopic stone-extraction device’ as required by the preamble of Claim
`1.” Ex. 1028, ¶ 87. Dr. Wagoner further explains that “stone extractors [as
`described in the SME Prior Art] are percutaneous (endoscopic) minimally
`invasive devices.” Id. ¶ 113. Thus, we determine that Petitioner has shown
`a reasonable likelihood of prevailing with respect to this patentability
`challenge.
`
`2. Obviousness Based on Leslie in View of any of Tsugita,
`Bates II, or Bates IV
`
`Petitioner asserts that claims 1–8 are also obvious over Leslie in view
`of any of Tsugita, Bates II, or Bates IV. Specifically, with respect to claim
`1, Petitioner asserts that Leslie discloses each of the limitations of Claim 1
`of the ’327 Patent except for a basket comprised of a “set of longitudinal
`basket filaments radiating from the first end portion of the support filament
`and a set of lateral basket filaments extending between the longitudinal
`basket filaments,” with the lateral filaments positioned primarily in the
`stone-retention region. Pet. 36–37. Petitioner asserts that the prior art in
`2001 disclosed several examples of baskets with lateral and longitudinal
`filaments in their stone retention regions, including Tsugita, Bates II and
`Bates IV. Id. at 37. Petitioner contends that the skilled artisan would have
`been motivated generally to combine Leslie with any of Tsugita, Bates II, or
`Bates IV because “prior art patents routinely (1) disclosed devices with
`baskets used to remove objects from both blood vessels and the urinary tract
`system, or (2) cited to prior art in both areas.” Id. at 38 (citing Ex. 1015,
`3:9–16; Ex. 1023, 1:7–13). On a more specific level, Petitioner contends
`that a skilled artisan “would have been motivated to combine Leslie with
`
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`Patent 6,551,327 B1
`
`any of Tsugita, Bates II or Bates IV to solve the problem of entrapping
`smaller-sized stones and preventing them from becoming dislodged from the
`basket.” Id. Petitioner also cites to the Wagoner Declaration (Ex. 1028) as
`support for these motivations.
`With respect to dependent claim 2, Petitioner asserts that Leslie
`discloses a concave surface meeting the claim’s requirements, as shown in
`Figure 8. Id. at 39–40. Petitioner further asserts that the size requirements
`of dependent claims 3, 4, and 6 would have been obvious because “[i]t was
`well known in 2001 that the diameter of fragmented kidney stones ranged
`from 2–10 mm,” and because “[i]t was also well known that the openings in
`a basket or filter could be designed to capture ‘particles of a targeted size.’”
`Id. at 40 (citing Ex. 1003, 8:59–61; Ex. 1007, 8:59–65; Ex. 1028, ¶¶ 186–
`193). Petitioner also asserts that the retrieval basket taught by Leslie meets
`the requirements of dependent claims 5 and 7. Id. at 41 (citing Ex. 1004,
`6:4–10, Fig. 4). Finally, Petitioner asserts that “Leslie discloses a device
`that has a base (grip) (13) and a slider (14) that the physician can move back
`and forth in order open and close the basket,” thereby meeting the
`requirements of dependent claim 8. Id. at 41 (citing Ex. 1004, 4:50–54,
`4:59–63, 5:7–13, 5:60–66).
`Based on the current record, including the arguments and claim charts
`presented with the Petition, we preliminarily agree with Petitioner’s
`contention that claims 1–8 would have been obvious over Leslie in view of
`any of Tsugita, Bates II, or Bates IV. The only argument with respect to this
`challenge presented in Patent Owner’s Preliminary Response is that the
`Petition fails to show that the combination discloses references discloses “an
`endoscopic stone-extraction device” as required by claims 1–8, which is
`
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`similar to the argument Patent Owner makes with respect to the challenge
`based on Tsugita in view of the SME Prior Art. Prelim. Resp. 18–20. We
`are unpersuaded by this contention for the reasons discussed above. Thus,
`we determine that Petitioner has shown a reasonable likelihood of prevailing
`with respect to this patentability challenge.
`
`3. Obviousness Based on Bates I in View of either Tsugita or
`Bates IV
`
`Petitioner asserts that claims 1–8 are also obvious over Bates I in view
`of either Tsugita or Bates IV. As noted above, Bates I teaches a surgical
`extractor with a similar structure and manner of operation to the device
`disclosed in Leslie. Furthermore, Petitioner asserts that “a person of
`ordinary skill in the art in 2001 would have had the same general and
`specific motivations to combine Bates I with either Tsugita or Bates IV that
`he had to combine Leslie with the same references.” Pet. 47. Based on the
`current record, including the arguments and claim charts presented with the
`Petition, we preliminarily agree with Petitioner’s contention that claims 1–8
`would have been obvious over Bates I in view of either Tsugita or Bates IV.
`Patent Owner’s argument regarding this challenge is similar to the
`arguments presented for Petitioner’s other patentability challenges, and we
`find that argument unpersuasive for same reasons. Prelim. Resp. 21–23.
`Accordingly, for the reasons discussed above, we determine that Petitioner
`has shown a reasonable likelihood of prevailing with respect to this
`patentability challenge.
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has
`demonstrated that the information presented in the Petition shows that there
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`Patent 6,551,327 B1
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`is a reasonable likelihood that Petitioner would prevail in proving the
`unpatentability of claims 1–8 based on the challenges presented in the
`Petition.
`
`At this stage of the proceeding, the Board has not made a final
`determination as to the patentability of any challenged claim or any
`underlying factual and legal issues.
`IV. ORDER
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1–8 of U.S. Patent No. 6,551,327 B1
`based on the following grounds of unpatentability:
`A. Claims 1–8 under 35 U.S.C. § 103(a) as obvious over Tsugita
`in view of any of the “SME Prior Art” references (i.e., Leslie,
`Bates I, Bates II, the Boston Scientific Microvasive Publication,
`or the Cook Publications);
`Claims 1–8 under 35 U.S.C. § 103(a) as obvious over Leslie in
`view of any of Tsugita, Bates II, or Bates IV;
`Claims 1–8 under 35 U.S.C. § 103(a) as obvious over Bates I in
`view of either Tsugita or Bates IV.
`FURTHER ORDERED that inter partes review commences on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the grounds of
`unpatentability listed above, and no other grounds of unpatentability are
`authorized for inter partes review.
`
`
`
`B.
`
`C.
`
`
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`IPR2016-00713
`Patent 6,551,327 B1
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`PETITIONER:
`Melissa A. Anyetei, manyetei@mayerbrown.com
`Chandra Critchelow, ccritchelow@mayerbrown.com
`Mayer Brown LLP
`
`PATENT OWNER:
`Albert B. Deaver, Jr., Esq., adeaver@smd-iplaw.com
`Jeffrey A. Andrews, Esq., jandrews@smd-iplaw.com
`Bruce J. Cannon, Esq., bcannon@smd-iplaw.com
`SUTTON MCAUGHAN DEVER PPLC
`
`
`
`
`22
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