Paper No. 40
`Trials@uspto.gov
`571.272.7822 Filed: July 9, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACCLARENT, INC.,
`Petitioner,
`
`v.
`
`FORD ALBRITTON, IV,
`Patent Owner.
`____________
`
`Case IPR2017-00498
`Patent 9,011,412 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BEVERLY M. BUNTING, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`

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`IPR2017-00498
`Patent 9,011,412 B2
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`
`I. INTRODUCTION
`Acclarent, Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–7 and 14–20 of U.S. Patent No. 9,011,412 B2 (Ex. 1001, “the
`’412 patent”). Paper 1 (“Pet.”), 19. Ford Albritton, IV (“Patent Owner”)
`filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). We instituted
`trial as to all of the claims challenged by Petitioner, claims 1–7 and 14–20,
`and on all grounds set forth in the Petition. Paper 12 (“Institution Decision”
`or “Inst. Dec.”). After institution of trial, Patent Owner filed a Patent
`Owner’s Response (Paper 20, “PO Resp.”), and Petitioner filed a Petitioner’s
`Reply (Paper 22, “Pet. Reply”). Patent Owner further filed a Motion to
`Exclude Evidence (Paper 29), and Petitioner filed an Opposition to the
`Motion (Paper 32). Oral argument was conducted on April 24, 2018. Paper
`39 (“Tr.”). After oral argument, the parties submitted briefs on the issue of
`whether any challenged claims cover Figure 2 of the ’412 patent. Papers 37,
`38.1
`
`We have jurisdiction under 35 U.S.C. §§ 6(b) and 318(a). Having
`considered the evidence and arguments of both parties, we conclude that
`Petitioner has not met its burden of showing, by a preponderance of the
`evidence, that any of claims 1–7 and 14–20 are unpatentable.
`
`A. Related Matters
`Petitioner and Patent Owner identify the following proceeding in the
`U.S. District Court for the Northern District of Texas as a related matter:
`Dr. Ford Albritton IV v. Acclarent, Inc., No. 3:16-cv-03340-D (filed Dec. 1,
`
`1 We need not reach this issue, as the outcome in this Decision and analysis
`below in favor of Patent Owner remains the same even if the claims cover
`Figure 2 of the ’412 patent, as alleged by Petitioner. Paper 37, 1–3.
`2
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`IPR2017-00498
`Patent 9,011,412 B2
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`2016). Pet. 5; Paper 6, 2. Another proceeding, filed by Acclarent on
`December 1, 2016 and alleging invalidity of the ’412 patent, was dismissed
`without prejudice on December 2, 2016. Pet. 5; Acclarent Inc. v. Ford
`Albritton IV, No. 5:16-cv-06919 (N.D. Cal.). In addition, Petitioner filed
`IPR2018-00268, challenging claims 8–13 of the ’412 patent, which are not
`at issue here. Acclarent, Inc. v. Ford Albritton, IV, IPR2018-00268 (filed
`Dec. 1, 2017) (Paper 1). We denied institution in IPR2018-00268 on May
`31, 2018. See id. Paper 10. Petitioner filed a request for rehearing on June
`18, 2018, which remains pending. Id. at Paper 11.
`
`B. The ’412 Patent
`The ’412 patent is titled “APPARATUS, SYSTEM AND METHOD
`FOR MANIPULATING A SURGICAL CATHETHER AND WORKING
`DEVICE WITH A SINGLE HAND.” Ex. 1001, (54). The ’412 patent
`describes the functions performed by the handle structure in the following
`manner:
`The handle has a structure to allow a position of the guide
`catheter to be controlled by some or all of three fingers of one
`hand of an operator of the handle. The structure of the handle is
`adapted to permit the operator to position a thumb and index
`finger of the hand to manipulate a working device inserted into
`the lumen of the guide catheter, where the working device is
`manipulable via a portion of the working device immediately
`adjacent to the handle.
`Id. at Abstract.
`
`Figure 3 of the ’412 patent is reproduced below:
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`IPR2017-00498
`Patent 9,011,412 B2
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`
`
`Figure 3 shows surgical catheter 300 having handle 350 and guide 302. Id.
`at 3:51–56. Handle 350 includes opening 318, through which working
`devices, such as “an endoscope, guidewire or other working device, may be
`inserted.” Id. at 4:4–9. Attaching a suction source at handle coupling 320
`provides suction at the distal end of guide 302. Id. at 4:12–15. Opening 354
`on handle 350 allows “the user to control the amount of suction present at
`the distal end of the guide 302.” Id. at 4:18–21.
`The specification explains that the user holds handle 350 using “some
`or all of the small finger, the ring finger and the middle finger,” while “[t]he
`fore finger and thumb are left free to manipulate a working device into the
`opening 318.” Id. at 4:62–5:3. The upper and lower portions of handle 350
`form an angle that facilitates manipulation of the working device while
`simultaneously allowing the remaining fingers to control the position of
`guide 302. Id. at 5:8–18, 5:23–33.
`
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`IPR2017-00498
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`
`C. Claims
`Of the challenged claims, claims 1 and 14 are independent. Claim 1 is
`illustrative and is reproduced below:
`1. A system, comprising:
`a guide catheter insertable through an external body passage of a
`subject, said guide catheter having a substantially rigid shaft,
`a proximal opening, a distal opening and a lumen extending
`between the proximal opening and the distal opening;
`a handle coupled to the guide catheter, the handle having a handle
`opening, a handle coupling and a structure, wherein the
`structure is configured to allow a position of the guide
`catheter to be controlled by some or all of three fingers of one
`hand of an operator of the handle, and wherein the handle
`coupling is configured to couple a source of suction to the
`lumen; and
`a working device adapted to be insertable through the handle
`opening into the lumen of the guide catheter,
`wherein the structure of the handle is adapted to permit the
`operator to position a thumb and index finger of the hand to
`manipulate the working device via a portion of the working
`device immediately adjacent to the handle opening and to
`control, by one of the thumb or index finger, an amount of
`suction coupled to the distal opening of the lumen.
`Ex. 1001, 5:57–6:12.
`
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`IPR2017-00498
`Patent 9,011,412 B2
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`
`Reference(s)
`
`D. Instituted Grounds of Unpatentability
`We instituted inter partes review to determine whether claims 1–7 and
`14–20 are unpatentable under the following grounds (Inst. Dec. 5, 28):
`Ground
`No.
`
`Basis
`
`Challenged Claims
`
`1
`
`2
`
`3
`
`4
`
`5
`
`Goldfarb2
`
`Goldfarb
`
`McCabe3
`
`Makower4
`
`§ 102
`
`1–5, 7, 14–18, and 20
`
`§ 103
`
`§ 102
`
`§ 102
`
`6 and 19
`1, 2, 4–7, 14, 15, and
`17–20
`1, 2, 7, 14, 15, and 20
`
`Makower and Jones5
`
`§ 103
`
`4–6 and 17–19
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`
`2 U.S. Patent No. 8,747,389 B2 issued to Goldfarb et al. on June 10, 2014
`(“Goldfarb”) (Ex. 1005).
`3 U.S. Patent No. 5,562,640 issued to McCabe et al. on October 6, 1996
`(“McCabe”) (Ex. 1006).
`4 U.S. Patent Pub. No. 2006/0063973 A1 issued to Makower et al., published
`on March 23, 2006 (“Makower”) (Ex. 1009).
`5 U.S. Patent No. 4,915,691 issued to Jones et al. on April 10, 1990
`(“Jones”) (Ex. 1007).
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`reasonable interpretation standard). Consistent with the broadest reasonable
`construction, claim terms are presumed to have their ordinary and customary
`meaning as understood by a person of ordinary skill in the art in the context
`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`1. “configured to” and “adapted to”
`Independent claims 1 and 14 each recite a handle “structure” that is:
`(1) “configured to allow a position of the guide catheter to be controlled by
`some or all of three fingers of one hand” (“the positioning limitation”); (2)
`“adapted to permit the operator to position a thumb and index finger of the
`hand to manipulate” a working device such as a guidewire (“the
`manipulating limitation”); and (3) “adapted to permit” (claim 1) or
`“configured to permit” (claim 14) the operator to control, by one of the
`thumb or index finger, an amount of suction” (“the suction control
`limitation”). Ex. 1001, 5:65–6:12, 7:13–8:1 (emphasis added). The claims
`refer to the fingers and thumb of the same “hand” throughout. See id. Both
`parties treat the limitations together, and do not argue for a construction for
`“configured to” that differs from “adapted to.” See Pet. 24–25, 28–29; Pet.
`Reply 4–10; PO Resp. 5–10.
`In the Institution Decision, and based on the record at that time, we
`applied “the implicit construction used by Petitioner” in the Petition, and
`construed the “configured to” and “adapted to” limitations “to require
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`structure that is capable of performing the claimed functions.” Inst. Dec. 8.6
`Now, with the complete record before us, we revisit our initial construction.
`a. Intended Use
`Petitioner first argues that these limitations merely recite intended
`uses and “therefore cannot be used to differentiate the claimed apparatus
`from the prior art.” Pet. 24–25; see also id. at 28, 43, 46, 57, 59; Pet. Reply
`5–7. Petitioner contends that the claimed handle structure “allows” and
`“permits” certain functionality that amount to intended uses, and the handle
`structure is not further defined by the claims. Pet. Reply 6. Petitioner also
`contends that the claims are “limited to how a user would hold the device,
`and not to any specific function of the device itself.” Id. According to
`Petitioner, the specification further supports the interpretation that the
`limitations amount to mere intended use because it “lacks any meaningful
`discussion of the handle structure.” Id. at 7. Petitioner argues that the
`“specification fails to identify any particular structure that allows/permits the
`handle to be used in the claimed manner, and only discloses an intended use
`which cannot confer patentability to the claims.” Id. (citing Catalina Mktg.
`Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed Cir. 2002); In re
`Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)).
`Patent Owner argues that terms such as “‘configured to,’ ‘handle,’ and
`‘adapted to’ constitute structural limitations rather than an intended use.”
`
`
`6 Although Petitioner contended that these limitations are entitled to no
`patentable weight and appeared to use a “capable of” construction as a
`fallback position, neither party provided an express construction of these
`terms prior to the Institution Decision. Inst. Dec. 8. We invited the parties
`to address the issue further during trial, and cited to several potentially
`relevant cases that may bear on the construction of these terms. Id.
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`PO Resp. 8. Patent Owner also contends that the fact that the terms describe
`an interplay between components does not render the limitations intended
`use, and such terms can be used to differentiate the prior art. Id. at 8–10.
`According to Patent Owner, appearance of the limitations in the body of the
`claim, rather than the preamble, reinforces the conclusion that the limitations
`are not intended use and should not be rendered superfluous by not giving
`them patentable weight. Id. at 10.
`We do not agree with Petitioner that these limitations should be given
`no patentable weight because they merely recite intended uses. First, we
`disagree with Petitioner’s position that the claims simply relate to “how a
`user would hold the device,” and not the structure or function of the device
`itself. Pet. Reply 6. Here, the claims specifically require a “handle . . .
`structure,” not merely a user performing functions. The fact that the claims
`go on to specify functions that the structure enables, does not render the
`claims directed purely to user actions that provide no patentable weight to
`the claims. Second, we disagree with Petitioner’s contention that the
`“specification fails to identify any particular structure that allows/permits the
`handle to be used in the claimed manner.” Pet. Reply 7. The specification
`explains that the user holds handle 350 using “some or all of the small
`finger, the ring finger and the middle finger,” while “[t]he fore finger and
`thumb are left free to manipulate a working device into the opening 318.”
`Id. at 4:62–5:3. The specification also describes the angle formed between
`the upper and lower portions of handle 350 that facilitates manipulation of
`the working device while simultaneously allowing the remaining fingers to
`control the position of guide 302. Id. at 5:8–18, 5:23–33. The
`accompanying figures disclose the corresponding structure that achieves
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`these goals. Id. at Figs. 3–5. Petitioner’s argument that the specification
`fails to disclose the structure that performs the claimed functions is
`unavailing because it overlooks these descriptions of the handle structure
`and their role in enabling the claim limitations. See Pet. Reply 7.
`In addition, Petitioner does not direct us to cases addressing similar
`claim language to that at issue here that were not given patentable weight.
`The cases Petitioner relies on stand for the position that recitation of a new
`intended use for an old product does not make a claim to that old product
`patentable. See Pet. Reply 5–7; Catalina Mktg., 289 F.3d at 809; Schreiber,
`128 F.3d at 1477; In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). Those
`cases do not support construing “configured to” and “adapted to,” as a
`matter of claim construction, as having no patentable weight.
`The language at issue here more closely tracks that at issue in In re
`Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). In Giannelli, the claim
`required a “first handle portion adapted to be moved from a first position to
`a second position by a pulling force.” Id. (emphasis added). The Board
`“noted that the recitation of a new intended use for an old product did not
`make a claim to that old product patentable,” and determined that the claim
`contemplated a new use for a prior art product. Id. The Board also focused
`on whether the prior art was “capable of” performing the “adapted to”
`function. Id. The Federal Circuit reversed, holding that the Board erred in
`focusing on the “new intended use of the prior art apparatus” inquiry to
`conclude that “mere capability” of the prior art to perform the claimed
`function was sufficient to satisfy the claim limitation. Id. at 1380. The
`Federal Circuit did not construe the “adapted to” limitation as mere intended
`use that cannot differentiate the claim from the prior art, and instead
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`construed the “adapted to” language as meaning “made to, designed to, or
`configured to.” Id. (quotation omitted).
`Petitioner does not even cite to Giannelli much less distinguish it,
`even though we expressly invited the parties to address Giannelli in our
`Institution Decision. Inst. Dec. 8. Petitioner therefore provides no avenue to
`reconcile any tension between the “intended use” case law it relies upon and
`Giannelli’s rejection of that approach in the context of the “configured to”
`and “adapted to” claim limitations at issue here.
`Based on the foregoing, Petitioner’s arguments and evidence do not
`persuade us that the “configured to”/“adapted to” limitations are mere
`intended use limitations, not entitled to patentable weight.
`b. “Capable of” vs. “Made to, Designed to, or Configured to”
` Petitioner argues another possible interpretation of these claim
`limitations—that the limitations should be construed as functional
`limitations that merely require structures “capable of” performing the
`claimed functions. Pet. Reply 4, 7–11. Petitioner acknowledges that phrases
`such as “adapted to” and “configured to” “can be given a broader meaning
`(‘capable of’ or ‘suitable for’) or a narrower meaning (‘designed to’ or
`‘constructed to’).” Id. at 7. Petitioner contends that the complete claim
`limitations—“configured to allow” and “adapted/configured to permit”—
`“remove any doubt that if the Board construes them as functional, the terms
`should be given the broader constructions.” Id. at 8. Petitioner further
`contends that neither the claims nor the specification “disclose any particular
`structure that allows a user to meet the functional language,” and that the
`references such as the handle angle are too broad to provide adequate
`direction or guidance. Id. at 9. Petitioner also dismisses Patent Owner’s
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`argument that the specification focuses on the advantages of single-handed
`use, finding those arguments failing “to reference any structure enabling
`such use.” Id.
`Patent Owner argues that both “configured to” and “adapted to”
`should be construed to mean “configured to” or “designed or configured to
`accomplish the specified objective, not simply that they can be made to
`serve that purpose.” PO Resp. 5–6 (quotation omitted). According to Patent
`Owner, the claims are “configured to” accomplish single-handed operation
`by requiring the same hand to control the device as well as manipulate the
`working device. Id. at 6. Patent Owner also contends that the specification
`shows that the narrower definition controls because it emphasizes single-
`handed use over the prior art’s two-handed operation. Id. at 6–7.
`Patent Owner argues persuasively that the narrower construction,
`rather than the broad “capable of” construction advocated by Petitioner,
`applies. Controlling case law strongly supports this result here. First, in
`Giannelli, as discussed above, the Federal Circuit reversed the Board’s
`construction of an “adapted to” limitation as requiring mere capability to
`perform the claimed function. Giannelli, 739 F.3d at 1379–80. The court
`looked to the specification, which made clear that the claimed rowing
`machine was “designed or constructed to be used” in the manner claimed.
`Id.
`
`Similarly, in Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672
`F.3d. 1335, 1349 (Fed. Cir. 2012), the court considered whether to construe
`an “adapted to” limitation using the broader “capable of”/“suitable for”
`construction or the narrower “made to, designed to, or configured to”
`construction. Id. (quotation omitted). The court reasoned that “the phrase
`
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`‘adapted to’ is most naturally understood to mean that” the claimed
`structures “are designed or configured to accomplish the specified objective,
`not simply that they can be made to serve that purpose.” Id. The court also
`viewed the specification as suggesting that the structures “are meant” to
`perform the claimed function, “not simply that they are capable of doing so.”
`Id.
`
`The Federal Circuit again construed “adapted to” in the narrower
`sense to mean “made or designed” to perform the claimed functions in In re
`Man Machine Interface Technologies LLC, 882 F.3d 1282, 1286 (Fed. Cir.
`2016). In Man Machine Interface, the claim required “a body adapted to be
`held by the human hand.” Id. at 1284. The court found that the
`specification supported the narrower interpretation by describing a
`“preferably elongated and rounded” body to be held in the hand, how the
`device is held in the hand, and how the hand-held device differed from prior
`art desk-bound devices. Id. at 1286; see also In re Chudik, 851 F.3d 1365,
`1373 n.3 (Fed. Cir. 2017) (construing “arranged to” as “analogous to
`‘adapted to,’ which means ‘made to,’ designed to,’ or ‘configured to.’”
`(quoting Man Machine Interface, 822 F.3d at 1286)).
`The cases discussed above all construed the pertinent terms in the
`narrower sense. Petitioner did not cite to any controlling case law where
`either “configured to” or “adapted to” was construed in the broad manner
`advocated by Petitioner to mean “capable of.” Petitioner also failed to cite
`to or address Giannelli or Aspex Eyewear, despite our invitation to do so,
`which speaks volumes regarding Petitioner’s ability to distinguish those
`cases and escape their holdings, and supports applying the narrower
`construction to “configured to” and “adapted to” here. See Inst. Dec. 8.
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`
`Moreover, the facts here fit comfortably within the precedent rejecting
`the “capable of” construction in favor of the narrower construction. First,
`the claim language itself supports the narrower construction by using the
`“configured to” and “adapted to” language. The precedent makes clear that
`the “configured to” phrase itself connotes the narrower meaning and simply
`presumes this is the case—the closer issue under discussion was whether
`“adapted to” can be read more broadly. For example, in Aspex Eyewear, the
`court treated “configured to” as synonymous with the narrower “made to”
`and “designed to” phrases, and only left the possibility that “adapted to”
`could have a broader meaning. Aspex Eyewear, 672 F.3d at 1349 (“In
`common parlance, the phrase ‘adapted to’ is frequently used to mean ‘made
`to,’ ‘designed to,’ or ‘configured to,’ but it can also be used in a broader
`sense to mean ‘capable of’ or ‘suitable for.’”); see also Giannelli, 739 F.3d
`at 1379 (same); Man Machine Interface, 882 F.3d at 1286 (same). Petitioner
`never adequately explains how “configured to” can be construed as requiring
`a mere capability under this precedent.7 We agree with Patent Owner that
`the most natural reading of “configured to” in the claims at issue here
`requires structure designed to accomplish the claimed objectives.
`In addition, although the cases note that “adapted to” can be read
`more broadly, they consistently hold the opposite view, and read “adapted
`to” as most naturally having the narrower meaning. See id. We see no
`reason to depart from that approach here. That is, the claims use
`
`
`7 Because Patent Owner argues “configured to” and “adapted to” together as
`if they have the same meaning, the failure of Petitioner to separately argue
`“adapted to” tends to support applying the same, narrower construction to
`“adapted to” that applies to “configured to.”
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`“configured to” and “adapted to” in a manner that requires structure that
`performs specific functions (e.g., positioning the device, manipulating the
`working device, controlling suction) using the same hand. The claim
`language does not suggest that it covers a device not made to or designed to
`perform these functions, but rather that could be made to do so. See Aspex
`Eyewear, 672 F.3d at 1349 (“[T]he phrase ‘adapted to’ is most naturally
`understood to mean that” the claimed structures “are designed or configured
`to accomplish the specified objective, not simply that they can be made to
`serve that purpose.”).
`Finally, contrary to Petitioner’s position, the specification supports the
`narrower construction by describing the structure necessary to perform the
`claimed functions and stressing the importance of the single-handed
`operation over the prior art. As noted above, the specification explains how
`the user holds handle 350 using “some or all of the small finger, the ring
`finger and the middle finger,” while “[t]he fore finger and thumb are left free
`to manipulate a working device into the opening 318.” Id. at 4:62–5:3. The
`specification also describes the structure necessary to allow these functions
`to be performed, including the angle formed between the upper and lower
`portions of handle 350, and the location of opening 318 used to insert a
`working device and opening 354 that controls suction. Id. at 4:61–5:33,
`Figs. 3–5. The orientation and size of the handle, combined with the
`location of openings 318, 354, allows the user to manipulate the working
`device with thumb and index finger and control suction using the same hand
`that positions the device. Id. The specification also distinguishes this
`improved, single-handed operation, from the two-handed operation
`necessary using prior art devices. Id. at 1:42–53, 5:23–33. The
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`specification’s description of the structure required to perform the claimed
`functions and the importance of that structure to the goal of the claimed
`invention, reinforces a construction of “configured to” and “adapted to” that
`requires structure made to or designed to accomplish the claimed functions.
`See Man Machine Interface, 882 F.3d at 1286 (relying in part on distinction
`over prior art in the specification as reason to construed “adapted to” more
`narrowly).
` Based on the foregoing, Patent Owner presents persuasive arguments
`and credible evidence to support a finding that “configured to” and “adapted
`to” should be construed narrowly. As such, we construe the terms
`“configured to” and “adapted to” as “requiring structure designed to or
`configured to accomplish the specified objective, not simply that they can be
`made to serve that purpose.” PO Resp. 5–6 (quoting Aspex Eyewear, 672
`F.3d at 1349).
`2. Other Claim Terms
`In addition, Petitioner proposes explicit constructions for several other
`terms, including “guide catheter,” “handle coupling,” “coupled,” and
`“structure.” Pet. 13–16. The parties also propose competing constructions
`for “external body passage.” PO Resp. 4–5; Pet. Reply 11–12. We need not
`provide an explicit construction for these claim terms in order to resolve the
`issues presented in the Petition. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
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`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).8
`
`B. Person of Ordinary Skill in the Art
`In our Institution Decision, we initially determined that “a person of
`ordinary skill in the art at the time of the invention would have had at least a
`bachelor’s degree in either electrical engineering or mechanical engineering,
`or equivalent, with at least four years’ experience designing surgical
`instruments or a doctor of medicine (MD) and at least 2 years of experience
`with laparoscopic or endoscopic surgical procedures.” Inst. Dec. 9–10.
`Additionally, we noted that the prior art of record in this proceeding—
`namely, Goldfarb, McCabe, Makower, and Jones—is indicative of the level
`of ordinary skill in the art. See id.; Okajima v. Bourdeau, 261 F.3d 1350,
`1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995). The parties have not disputed this determination during trial. Thus,
`based on the full record, we find that the level of ordinary skill in the art
`used in addressing the issues in this Decision remains the same––namely a
`bachelor’s degree in either electrical engineering or mechanical engineering,
`or equivalent, with at least four years’ experience designing surgical
`
`
`8 Patent Owner argues that Petitioner’s “capability” approach to claim
`construction leads to other problems. PO Resp. 10–16. We need not
`address these concerns given our rejection of the “capable of” construction
`advanced by Petitioner. Petitioner argues that we should not adopt the
`narrower construction because to do so would allow Patent Owner to
`advocate a broader construction for purposes of infringement in related
`litigation. Pet. Reply 10–11. We need not determine whether Patent Owner
`can reasonably advocate a broader construction than we adopt here in any
`future district court litigation, and our resolution of the claim construction
`dispute here should not be interpreted as sanctioning such an approach.
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`instruments or a doctor of medicine (MD) and at least 2 years of experience
`with laparoscopic or endoscopic surgical procedures.
`
`C. Legal Principles
`We analyze the instituted grounds of unpatentability in accordance
`with the below-stated principles in mind.
`1. Burden of Proving Unpatentability
`In inter partes reviews, petitioner bears the burden of proving
`unpatentability of the challenged claims, and the burden of persuasion never
`shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding,
`Petitioner must support its challenges by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Accordingly, all of our findings
`and conclusions are based on a preponderance of the evidence.
`2. Anticipation
`A claim is anticipated if each limitation of the claim is disclosed in a
`single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
`VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “[A] reference can
`anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations
`arranged or combined as in the claim, if a person of skill in the art, reading
`the reference, would ‘at once envisage’ the claimed arrangement or
`combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
`1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681
`(CCPA 1962)).
`3. Obviousness
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
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`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`D. Petitioner’s Arguments and Evidence Under the Controlling
`Claim Construction
`As discussed above, we construe “configured to” and “adapted to” as
`“requiring structure designed to or configured to accomplish the specified
`objective, not simply that they can be made to serve that purpose.” The
`Petition never addresses whether the prior art discloses the relevant
`limitations if those limitations are construed in this manner. Instead, the
`arguments and evidence in the Petition consider two possibilities. First,
`Petitioner argued in the Petition that the claim limitations were mere
`“intended use” limitations that did not confer patentable weight at all. Pet.
`24–25, 28–29, 43, 46, 57, 59. Second, as a fallback position, Petitioner
`argued that “to the extent th[e] limitation[s] [are] given weight,” the prior art
`discloses structure that is “configured to” or “capable of” performing the
`claimed functions. See id. at 26, 30, 44, 46–47, 57. Although the Petition
`uses the claim term “configured to” at times to allege that the prior art
`discloses the limitation, the use of that phrase did not comport with the
`narrower meaning consistent with our claim construction. See id. Instead,
`Petitioner took the position that the prior art discloses the limitations in
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`question if it “can be” or “could be” used in the manner suggested by the
`claim language—i.e., the Petition relied on the argument that mere capability
`to perform the claimed function sufficed. See, e.g., id. at 30, 46 (“While
`McCabe does not teach holding the handle as required by claim 1, McCabe’s
`handle certainly has a structure that is capable of permitting the operator to
`position a thumb and index finger of the hand to manipulate the working
`device . . . .”). Petitioner’s approach was noted in our Institution Decision.
`Inst. Dec. 7–8.
`Now, based on the entire record, b