Trials@uspto.gov Paper No. 12
`571.272.7822 Filed: March 25, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01294
`Patent 6,371,962 B1
`_______________
`
`
`Before JAMES T. MOORE, JAMES A. TARTAL,
`and AMANDA F.WIEKER, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`DECISION ON REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571.272.7822 Filed: March 25, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01294
`Patent 6,371,962 B1
`_______________
`
`
`Before JAMES T. MOORE, JAMES A. TARTAL,
`and AMANDA F.WIEKER, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`DECISION ON REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2017-01294
`Patent 6,371,962 B1
`
`
`A. Background
`
`Edwards Lifesciences Corporation (“Petitioner”) filed a corrected
`Petition requesting an inter partes review of claims 1–3, 6–13, 20–22, 25–
`30, 35, and 36 (“the challenged claims”) of U.S. Patent No. 6,371,962 B1
`(Ex. 1001, “the ’962 patent”). Paper 8 (“Pet”), 1. Boston Scientific Scimed,
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim.
`Resp.”). We denied institution October 25, 2017. Paper 10 (“Dec.”).
`Petitioner timely filed a request for rehearing. Paper 11.
`
`B. The Request for Rehearing
`
`Petitioner requests partial reconsideration of the Board’s decision to
`deny institution. Paper 11, 3. Specifically, Petitioner asserts that the Board
`overlooked corresponding structure for the means plus function limitation of
`claim 20. Id.
`C. Standard for Rehearing
`When reconsidering a decision on institution, the Board reviews the
`decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of
`discretion occurs if a decision is based on an erroneous interpretation of law,
`if a factual finding is not supported by substantial evidence, or if the
`decision represents an unreasonable judgment in weighing relevant factors.
`See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir.
`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of
`showing a decision should be modified lies with the party challenging the
`decision.” 37 C.F.R § 42.71(d); accord Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
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`IPR2017-01294
`Patent 6,371,962 B1
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`In its request for rehearing, the dissatisfied party must, in relevant
`part, “specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice
`Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with
`these principles in mind.
`D. Analysis
`Claim 20 reads as follows:
`20. A balloon catheter for intraluminal delivery of a stent,
`the catheter comprising a shaft having a diameter, a
`balloon associated with a distal portion of the shaft for
`receiving a stent, the stent having a first end and a second
`end and a contracted state and an expanded state, and
`means for inflating the balloon, the shaft including at
`least one mounting body radially carried on the shaft
`inside the balloon, whereby the diameter of the shaft is
`increased inside the balloon to facilitate mounting and
`retaining of a stent to the catheter over the balloon, the at
`least one mounting body being positioned on the shaft
`such that when the stent is loaded onto the inflatable
`means and the shaft in the stent's contracted state at least
`a portion of the at least one mounting body is under the
`stent and between the first and second ends of the stent,
`the at least one mounting body having a length and an
`outer surface diameter, wherein the outer surface
`diameter is substantially constant along the length.
`
`Ex. 1001 6:14–30 (emphases added).
`Petitioner is of the view that only the first emphasized means recited
`is a “means plus function” element – the “means for inflating the balloon.”
`Paper 11, 3. Contained in a footnote is the argument that:
`
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`IPR2017-01294
`Patent 6,371,962 B1
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`[w]hile claim 20 does recite an “inflatable means,” this appears to be a
`claim drafting error. There is no antecedent basis for the “inflatable
`means” in the claim language. Instead, in the context of the preceding
`claim language referencing “a balloon ... for receiving the stent,” it is
`obvious that ‘inflatable means’ should read ‘balloon.’ See, e.g., CBT
`Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed.
`Cir. 2011) (holding under the Phillips standard ‘a district court may
`correct an obvious error in a patent claim’). Taken in context, this
`limitation should therefore read “when the stent is loaded onto the
`[balloon],” which should be given its plain and ordinary meaning.
`Paper 11, 5 fn. 2.
`
`Petitioner does not inform us where this argument was made or this
`position was previously asserted. In an abundance of caution, we have
`carefully reviewed the Petition for this argument, and find it to be absent.
`For example, at page 46, dealing with this precise term, the Petition
`merely says “See 1.3.” Paper 8, 46. At 1.3, the following argument is made,
`and reproduced in its entirety:
`As seen in annotated Figure 31 below, Olympus’s has a length
`and an outer surface diameter, increasing the diameter of the shaft at
`the distal part for facilitating the mounting and retaining of the stent.
`See Ex. 1015 (Olympus) at 7.
`
`
`
`
`
`As seen in Figure 30 below, Olympus discloses that a majority
`of the mounting body is located under the stent, and between the stent
`and the shaft. See Ex. 1015 (Olympus) at 7. The compacted stent is
`mounted directly against the mounting body for delivery to the
`treatment site. (See id. at 7.) This allows the stent to be secured with
`less crimping, and therefore less risk of deformation, as well as
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`IPR2017-01294
`Patent 6,371,962 B1
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`allowing for a reduced diameter of the remainder of the catheter shaft,
`thereby improving the overall trackability and flexibility of the delivery
`system. Ex. 1003 (Trotta Decl.), ¶¶51, 54, 122
`
`
`
`
`
`
`To the extent that “carried on the shaft” requires the mounting
`body to be a separate component rather than integral with the shaft, this
`configuration was a well known design choice in catheter construction.
`Ex. 1003 (Trotta Decl.), ¶¶ 115-117. Furthermore, Burton expressly
`teaches that a mounting body surrounding the catheter shaft may be
`made as a separate sleeve or as an integral piece. See Ex. 1014 (Burton)
`at 2:21-23 (“[S]aid grip member being an integral portion of the core
`or a sleeve or coating attached around the periphery of the core.”),
`claim 7. Although Olympus does not expressly name the mounting
`body structure, a POSITA would understand the purpose of this
`structure as aiding in the securement of the stent. As seen in Figure 30
`below, the compacted stent is mounted directly against the mounting
`body for delivery to the treatment site. See Ex. 1015 (Olympus) at 7.
`This allows the stent to be secured with less crimping, and therefore
`less risk of deformation, as well as allowing for a reduced diameter of
`the remainder of the catheter shaft, thereby improving the overall
`trackability and flexibility of the delivery system. Ex. 1003 (Trotta
`Decl.) ¶¶122-24.
`
`
`Pet. 38–40.
`
`We have not found any location in which the language “inflatable
`
`means” is addressed to the Board, nor its meaning. As noted in our previous
`decision, our Rules require that if a challenged claim contains a means plus
`function limitation under 35 U.S.C. § 112 ¶ 6, Petitioner is required to
`construe the limitation and “must identify the specific portions of the
`
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`IPR2017-01294
`Patent 6,371,962 B1
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`specification that describe the structure, material, or acts corresponding to
`each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see
`Dec. 11–12.
`Petitioner now assets that the claim contains an error, and “inflatable
`means” is a “balloon,” when such an assertion had not been made before in
`the Petition. As this request is the first time the argument has been made, we
`cannot have overlooked this argument in the Petition.
`E. Conclusion
`For the foregoing reasons, we conclude that Petitioner has not shown
`
`where this matter was previously addressed, or consequently that the
`Institution Decision constitutes an abuse of discretion.
`F. Order
`Accordingly, it is
`ORDERED that Petitioner’s Request for Panel Rehearing is denied.
`
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`IPR2017-01294
`Patent 6,371,962 B1
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`PETITIONER:
`
`A. James Isbester
`KILPATRICK TOWNSEND & STOCKTON LLP
`jisbester@kilpatricktownsend.com
`
`Craig S. Summers
`Joshua Stowell
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2css@knobbe.com
`Joshua.Stowell@knobbe.com
`
`
`PATENT OWNER:
`
`Wallace Wu
`Jennifer A. Sklenar
`Nicholas M. Nyemah
`ARNOLD & PORTER KAYE SCHOLER LLP
`Wallace.Wu@apks.com
`Jennifer.Sklenar@apks.com
`Nicholas.Nyemah@apks.com
`
`
`
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