Trials@uspto.gov
`571.272.7822
`
`
`
`Paper No. 11
`Filed: October 25, 2017
`
`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 IPR2017-01297
`Patent 6,712,827 B2
`____________
`
`
`Before JAMES A. TARTAL, MICHAEL L. WOODS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`IPR2017-01297
`Patent 6,712,827 B2
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`
`INTRODUCTION
`I.
`Edwards Lifesciences Corporation (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting inter partes review of claims 1–3 and 5–20 of
`U.S. Patent No. 6,712,827 B2 (“the ’827 patent”). Pet. 1. Boston Scientific
`Scimed, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 10,
`“Prelim. Resp.”) in response to the Petition, contending that the Petition
`should be denied as to all challenged claims. Prelim. Resp. 1.
`We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted unless the
`information presented in the Petition “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Having considered the arguments and the
`evidence presented, for the reasons described below, we do not institute an
`inter partes review of any of the challenged claims.
`A. Related Proceedings
`Petitioner represents that the ’827 patent is at issue in Boston
`Scientific Corp. & Boston Scientific SciMed Inc. v. Edwards Lifesciences
`Corp., No. 16-cv-730 (C.D. Cal.). Pet. 82.
`B. The ’827 Patent (Ex. 1001)
`The ’827 patent, titled “Stent Delivery System,” is “directed to
`improved arrangements for releasably attaching [a] stent.” Ex. 1001, 2:11–
`13. The ’827 patent describes that the “stent is held in place on [a] catheter
`by means of an enlarged body carried by the catheter shaft within [a]
`balloon[,] to which the stent and balloon are fitted.” Id. at 2:14–16.
`
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`Patent 6,712,827 B2
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`
`To illustrate an embodiment of the ’827 patent’s catheter, we
`reproduce Figure 2 of the ’827 patent, below:
`
`
`
`According to the ’827 patent, Figure 2 depicts a stent delivery system
`with balloon 14 at distal end portion 16 of a balloon catheter. Id. at 2:47–49.
`The ’827 patent further describes mounting body 30 within balloon 14 “to
`provide a cushion and/or substrate of enlarged diameter . . . to support and
`hold the stent [18] and secure it during crimping and the delivery
`procedure.” Id. at 3:33–37. Mounting body 30 is cylindrical in form and
`takes the shape of a sleeve carried on inner lumen 26. Id. at 3:41–43.
`Mounting body 30 is preferably made of an elastomer material, and more
`preferably, a resilient elastomer material, such as lower durometer silicone.
`Id. at 3:55–59. In operation, the catheter is advanced and positioned through
`a patient’s vasculature until the stent is adjacent to the portion of the vessel
`where treatment is desired. Id. at 3:65–4:2. Once positioned, balloon 14 is
`inflated to expand stent 18 to a desired diameter, after which balloon 14 is
`deflated and the catheter is removed, leaving stent 18 in place. Id. at 4:2–5.
`C. Illustrative Claim
`Claims 1, 16, and 17 are independent, with claims 2–15 depending
`from claim 1, and claims 18–20 depending from claim 17. Id. at 4:56–6:47.
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`IPR2017-01297
`Patent 6,712,827 B2
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`Claim 1 is illustrative of the subject matter at issue and is reproduced below,
`with emphases and indentations added for clarity in our Decision:
`1. A balloon catheter for dilating vascular constrictions
`and for simultaneously introducing a deformable stent into a
`vessel to be dilated in order to stabilize the vessel in the dilated
`condition, wherein a distal region of the catheter, which is
`intended to receive the deformable stent, comprises:
`an inner tube that is surrounded and crimped onto by the
`deformable stent;
`a balloon arranged between the deformable stent and the
`inner tube;
`a pair of longitudinally spaced image sensitive marking
`sleeves carried on the inner tube within the balloon such that
`there is a longitudinal space on the inner tube extending between
`the pair of marking sleeves and such that the deformable stent is
`substantially centered there-between;
`an outer tube disposed between the inner tube and the
`balloon as an intermediate layer,
`wherein the intermediate layer substantially covers the
`longitudinal space on the inner tube between the image sensitive
`marking sleeves,
`the intermediate layer having an outer diameter,
`wherein the outer diameter of the intermediate layer is
`substantially constant between the pair of marking sleeves.
`Id. at 4:56–5:7 (emphases and indentations added).
`
`
`D. References Relied Upon
`The Petitioner relies in relevant part on the following references:
`Name
`Reference
`Ex. No.
`Olympus
`Japanese Pub. No. H4-64367, published Feb.
`Ex. 1015
`28, 1992, including its English translation
`US 5,026,377, issued June 25, 1991
`Burton
`Fischell ’507 US 4,768,507, issued Sept. 6, 1998
`Fischell ’274 US 5,639,274, issued June 17, 1997
`Williams
`US 5,437,083, issued Aug. 1, 1995
`Jendersee
`US 5,836,965, issued Nov. 17, 1998
`
`Ex. 1014
`Ex. 1010
`Ex. 1013
`Ex. 1024
`Ex. 1016
`
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`Patent 6,712,827 B2
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`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`E. Alleged Grounds of Unpatentability
`Petitioner contends that claims 1–3 and 5–20 of the ’580 patent are
`unpatentable under the following grounds:
`References
`Olympus, Burton, Fischell ’507, Fischell ’274,
`Williams, and knowledge of a person of
`ordinary skill in the art
`Fischell ’274, Burton, Williams, and knowledge
`of a person of ordinary skill in the art
`
`Claims
`1–3, 5–14,
`and 16–20
`
`1–3, 5, 7–9,
`11–14, and
`16–20
`13 and 15
`
`References relied on in the above grounds and
`further in view of Jendersee
`Pet. i–ii.1
`Petitioner also relies on the declaration testimony of Thomas Trotta
`(Ex. 1003) in support of its Petition.
`
`§ 103(a)
`
`
`1 The Petition appears to lack the particularity and specificity required by 35
`U.S.C § 312(a)(3) and 37 C.F.R. § 42.104(b)(2). Petitioner’s allegation that
`the challenged “claims are taught by the references identified below, alone
`or in combination with each other” (see Pet. 30) and Petitioner’s
`identification of the grounds as outlined above, amounts to multiple distinct
`combinations of references. See also id. at 31 (the ground based on
`Olympus, Burton, Fischell ’507, Fischell ’274, Williams, and knowledge of
`a person of ordinary skill in the art ), 59 (the ground based on Fischell ’274,
`Burton, Williams, and knowledge of a person of ordinary skill in the art),
`and 79 (the ground based on the first two grounds and further in view of
`Jendersee). The function of the Board is not to comb through Petitioner’s
`arguments in order to decipher the strongest argument or to determine the
`strongest combination of references to challenge the claims. See generally
`LG Elecs., Inc. v. Rosetta-Wireless Corp., Case IPR2016-01516 (PTAB
`Apr. 3, 2017) (Paper 25). As such, for each identified ground, we exercise
`our discretion and consider all of the references in combination as one
`ground of unpatentability, as this is the most consistent reading of the
`Petition and claim charts.
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`II. ANALYSIS
`A. Claim Construction
`The parties agree that the ’827 patent has expired. Pet. 28 (“the ’827
`patent has expired”); Prelim. Resp. 6 (agreeing that the patent has expired).
`“[T]he Board’s review of the claims of an expired patent is similar to that of
`a district court’s review.” In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir.
`2012). Therefore, we apply the principles set forth by the Court of Appeals
`for the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc). Accordingly, the “words of a claim ‘are generally given
`their ordinary and customary meaning’” as understood by a person of
`ordinary skill in the art at the time of the invention. Id. at 1312.
`Further, neither Petitioner nor Patent Owner propose particular
`constructions for any claim terms. Pet. 29 (“Petitioner is not offering
`constructions for any claim terms in this IPR Petition”); see also Prelim.
`Resp. 6 (proffering no interpretation of any claimed limitation).
`We determine that no terms require express construction for the
`purposes of this Decision. See 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)).
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject 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
`
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`(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) objective evidence of nonobviousness,
`i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016). This burden never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17.
`Petitioner relies upon the Trotta Declaration (Ex. 1003) and contends
`that a person of ordinary skill in the art (“POSITA”) would have “an
`undergraduate degree in science in mechanical, manufacturing, or material
`science engineering, as well as at least five years’ experience in designing
`minimally invasive catheter-based interventions,” or “an undergraduate
`degree in a different subject matter . . . [and] five to ten years of experience
`in the industry in designing minimally invasive catheter-based
`interventions.” Pet. 28 (citing Ex. 1003 ¶ 86). Patent Owner does not
`provide an assessment of a relevant skill level. See generally Prelim. Resp.
`Based on our review of the ’827 patent, the types of problems and
`solutions described in the ’827 patent and applied prior art, and the
`
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`testimony of Mr. Trotta, we apply Petitioner’s assessment for purposes of
`this Decision. Further, the applied prior art reflects the appropriate level of
`skill at the time of the claimed invention. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001).
`D. Cited Art
`Olympus (Ex. 1015)
`1.
`Olympus is a Japanese Publication that discloses an “expansion tool
`for biological ducts.” Ex. 1015, 16. In particular, Olympus discloses a
`balloon dilator for expanding a blood vessel and deploying a stent. See id. at
`16–17. To illustrate a particular embodiment of Olympus’s expansion
`tool—which Petitioner itself relies upon (Pet. 32)—we reproduce Figures
`28–32, below:
`
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`
`According to Olympus, these figures depict mesh-shaped stent 1
`mounted ono the outer periphery of balloon 4 of balloon dilator 3, and
`positioned within biological duct 7. Ex. 1015, 24. In order to prevent any
`sharp edges from stent 1 from damaging the inner surface of duct 7, a ring-
`shaped thermal softening material 21 is provided over stent 1. Id. This
`thermal softening material 21 may be composed of polyurethane
`thermoplastic elastomer. Id.
`Burton (Ex. 1014)
`2.
`Burton is a U.S. Patent titled “Stent Placement Instrument and
`Method.” Ex. 1014, [54]. Figures 1 and 3 of Burton are reproduced below:
`
`
`
`
`
`According to Burton, Figure 1 depicts an instrument for holding and
`deploying self-expanding stent 10, wherein the instrument includes grip
`member 9, one embodiment of which is depicted in greater detail in Figure
`3. Id. at [57], 5:11–12, 5:15–16. As shown in Figure 3, Burton explains that
`grip member 9 engages stent 10 with a high-friction surface material. Id. at
`3:48–56, 5:46–48.
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`
`Fischell ’507 (Ex. 1010)
`3.
`Fischell ’507 is a U.S. Patent titled “Intravascular Stent and
`Percutaneous Insertion Catheter System for the Dilation of an Arterial
`Stenosis and the Prevention of Arterial Restenosis.” Ex. 1010, [54]. To
`illustrate Fischell ’507’s insertion catheter, we reproduced Figure 3, below:
`
`
`According to Fischell ’507, Figure 3 depicts the distal end of insertion
`catheter 20, including inner core 22 and outer cylinder 24. Id. at 3:47–49.
`Core 22 includes spiral grooves 26 into which coil spring 10 is placed. Id. at
`3:49–51. Coil spring 10 is an intravascular stent that is placed at a dilation
`site immediately after balloon dilation. Id. at 3:33–35.
`Fischell ’274 (Ex. 1013)
`4.
`Fischell ’274 is a U.S. Patent titled “Integrated Catheter System for
`Balloon Angioplasty and Stent Delivery.” Ex. 1013, [54]. Figure 2A of
`Fischell ’274 is reproduced below.
`
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`Patent 6,712,827 B2
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`
`Figure 2A depicts a longitudinal cross section of a preferred integrated
`catheter system 60, which includes balloon angioplasty catheter 20, with
`inflatable balloon 23, and stent catheter 65 with stent 15 retained in
`containment cavity 69. Id. at 3:29–30, 4:50–57; see also id. at Fig. 1
`(depicting a “simplified form of the integrated catheter system”). Outer tube
`31 (numbered in Fig. 1) is provided to enclose a self-expanding or balloon
`expandable stent 15. Id. at 4:45–47.
`The integrated catheter system 60 is used as follows: (1) system 60 is
`advanced through an artery until balloon 23 lies within an arterial stenosis
`(id. at Fig. 7A); (2) balloon 23 is inflated and stent catheter 65 passes
`therethrough (id. at Fig. 7B); (3) balloon 23 is deflated (id. at Fig. 7C); (4)
`stent 15 is positioned over balloon 23 (id. at Fig. 7D); (5) balloon 23 is
`inflated minimally, which causes stent 15 to be retained on balloon 23, and
`the stent catheter is pulled back (id. at Fig. 7E); (6) stent 15 deploys, either
`through self-expansion (id. at Fig. 7E') or through inflation of the balloon at
`high pressure (id. at Fig. 7F); and (7) balloon 23 is deflated and retracted
`from the artery (id. at Fig. 7G). See also id. at 6:3–50.
`5. Williams (Ex. 1024)
`Williams is a U.S. Patent titled “Stent-Loading Mechanism” and
`discloses a device for loading a stent onto a catheter assembly. Ex. 1024,
`
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`[54], 1:48–50. Williams discloses that its device allows for stents to be
`crimped onto the outside of the catheter. Id. at 2:16–22.
`Jendersee (Ex. 1016)
`6.
`Jendersee is a U.S. Patent titled “Stent Delivery and Deployment
`Method.” Ex. 1016, [54]. Jendersee discloses a stent device for
`implantation within the vascular system, including a balloon adhered to a
`wire-like stent. Id. at [57].
`E. Olympus, Burton, Fischell ’507, Fischell ’274, Williams, and
`knowledge of a person of ordinary skill in the art
`Petitioner contends that claims 1–3, 5–14, and 16–20 are unpatentable
`over Olympus, Burton, Fischell ’507, Fischell ’274, Williams, and the
`knowledge of a person of ordinary skill in the art. Pet. 31; see infra n.1.
`Petitioner’s Challenge
`1.
`Petitioner submits that Olympus discloses a balloon-expandable stent
`delivery catheter that utilizes a balloon to simultaneously dilate a blood
`vessel and deploy a balloon-expandable stent. Pet. 31 (citing Ex. 1015, 1,
`8). In addressing the claimed “intermediate layer,” Petitioner submits
`annotated versions of Olympus’s Figures 30 and 31, which we reproduce
`below (id. at 31–32):
`
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`According to Petitioner, Olympus’s “thickened section of catheter 5”
`is an “intermediate layer” under balloon 4, and supports stent 1 (illustrated in
`the unannotated version of Figure 30, reproduced supra) while the stent is
`advanced on the balloon and to implantation site 8. Id. at 31–32 (emphasis
`added).
`Petitioner also relies on Burton in addressing the claimed
`“intermediate layer,” providing an annotated version of Burton’s Figure 3,
`which we reproduce, below (Pet. 33):
`
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`
`Burton describes Figure 3 as depicting grip member 9 “made from a
`high friction material” around the periphery of outer hollow core 5 and in
`direct contact with stent 10. Ex. 1014, 5:13–48. According to Petitioner,
`Burton teaches that its “grip member” is designed to securely hold a
`compacted stent during delivery, and prevents the stent from slipping off the
`grip member. Pet. 34 (citing Ex. 1014, 2:20–32, 4:67–5:2).
`In combining Olympus with Burton, Petitioner proposes to “modify
`the Olympus device to have a separate intermediate layer because the
`modification would improve the manufacturability of the device” and that a
`person having ordinary skill in the art “would have considered an
`intermediate layer like Burton’s” grip member. Pet. 35 (citing Ex. 1014,
`2:21–23). Petitioner further reasons that Burton’s grip member “should be
`mounted underneath the balloon, allowing them to work in conjunction with
`the balloon to secure the stent.” Id. at 35 (citing Ex. 1003 ¶¶ 131, 133)
`(emphases added).
`Analysis
`2.
`Patent Owner argues that Petitioner has not shown sufficiently that a
`person of ordinary skill in the art would have modified Olympus to arrive at
`the claimed invention. See Prelim. Resp. 15–20. We agree.
`
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`
`Petitioner’s proposed modification of Olympus places Burton’s grip
`member 9 underneath Olympus’s balloon, purportedly to “secure the stent.”
`Pet 35 (citing Ex. 1003 ¶¶ 131, 133). However, Burton explains that grip
`member 9 retains stent 10 due to physical contact between the grip member
`and the stent, for example, through a high-friction surface between the grip
`member and the stent. See, e.g., Ex. 1014, 5:46–47 (“grip member 9 made
`from a high friction material”); see also id. at 3:48–56 (“an important
`characteristic of the grip member is that it should be capable of gripping or
`holding a stent . . . it is necessary when the grip member is a sleeve of
`material, that said material has a surface which offers high resistance to
`sliding motion”); id. at Fig. 3. Neither Petitioner nor Mr. Trotta explain
`sufficiently how, in the proposed modification, Burton’s grip member would
`serve to retain Olympus’s stent when Olympus’s balloon is located between
`the grip member and the stent. See Pet. 33–35; Ex. 1003 ¶¶ 131, 133.
`In particular, we find nothing in the cited portion of Mr. Trotta’s
`declaration that addresses how Burton’s grip member would secure a stent
`under the proposed modification, namely, in the absence of direct contact
`between the stent and grip member. See, e.g., Ex. 1003 ¶¶ 130–133; see also
`37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is entitled to little or
`no weight.”). Rather, we find persuasive Patent Owner’s argument that
`Burton’s grip member would seemingly “be rendered ineffective if used in
`the balloon catheter of Olympus[,] . . . because, in Olympus, the stent is not
`in direct contact with the alleged intermediate layer (the balloon being
`between the stent and the alleged intermediate layer), whereas the operation
`of the grip member in Burton requires direct contact between the stent and
`
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`the grip member.” Prelim. Resp. 19 (citing Ex. 1015, Fig. 31; Ex. 1014,
`5:48–52). As such, we are not persuaded that Petitioner presents a sufficient
`rationale to show that it would have been obvious for a person of ordinary
`skill in the art to have combined Olympus and Burton to secure Olympus’s
`stent, as Petitioner contends. Pet. 35–36.
`Based on the record before us, we determine that Petitioner has not
`established a reasonable likelihood of prevailing on its contention that the
`combined teachings of Olympus, Burton, Fischell ’507, Fischell ’274,
`Williams, and the knowledge of a POSITA render obvious claims 1–3, 5–14,
`and 16–20.
`F. Fischell ’274, Burton, Williams, and knowledge of a
`person of ordinary skill in the art
`Petitioner contends that claims 1–3, 5, 7–9, 11–14, and 16–20 are
`unpatentable over Fischell ’274, Burton, Williams, and the knowledge of a
`person of ordinary skill in the art. Pet. 59; see infra n.1.
`Petitioner’s Challenge
`1.
`Petitioner contends that Fischell ’274 discloses a balloon-expandable
`stent delivery system substantially as claimed. Pet. 59. To help illustrate
`these findings, Petitioner relies on a copy of Figure 1 of Fischell ’274, which
`we reproduce, below (id. at 60):
`
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`
`According to Petitioner, the above Figure depicts, inter alia, a catheter
`having balloon 23 and with stent 15 “moved over the balloon for
`deployment by pusher tube 32.” Id. at 59 (citing, in part, Ex. 1013, 4:32–
`49).
`
`Petitioner acknowledges that “[a]lthough Fischell ’274’s delivery
`system relies primarily on the outer sheath [31] for securement, it also
`teaches that the balloon itself has some stent retention ability.” Id. at 60
`(citing Ex. 1013, 6:34–38). Petitioner argues that this teaching would have
`suggested to a person having ordinary skill in the art “to add an intermediate
`layer under the balloon to help secure the stent, thereby dispensing with the
`outer sheath structure, and improving profile, flexibility, and trackability.”
`Id. Petitioner further asserts a person having ordinary skill in the art would
`have considered and combined Burton’s “grip member,” discussed supra.
`See id. at 60–62.
`In summary, Petitioner proposes to modify the stent delivery system
`of Fischell ’274 by (1) dispensing with outer tube structure 31 (id. at 59, 62)
`and (2) adding Burton’s “grip member” 9 “underneath the balloon” “to
`secure the stent” (id. at 62 (citing Ex. 1003 ¶¶ 149–150)). Petitioner submits
`that this improved stent delivery system would “ensure stent securement,
`simplify delivery system operation, and decrease the overall profile of the
`delivery catheter.” Id. (citing Ex. 1003 ¶ 151).
`Analysis
`2.
`As with the prior ground, Patent Owner argues that Petitioner has not
`shown sufficiently that a person of ordinary skill in the art would have
`modified Fischell ’274 to arrive at the claimed invention. Prelim. Resp. 26.
`We agree.
`
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`
`Petitioner’s proposed modification to Fischell ’274 places Burton’s
`grip member 9 underneath Fischell ’274’s balloon 23, purportedly to “help
`secure the stent.” Pet 60; id. at 62 (citing Ex. 1003 ¶¶ 149–150). However,
`Burton explains that grip member 9 retains stent 10 due to physical contact
`between the grip member and the stent, for example, through a high-friction
`surface between the grip member and the stent. See, e.g., Ex. 1014, 5:46–47
`(“grip member 9 made from a high friction material”); see also id. at 3:48–
`56 (“an important characteristic of the grip member is that it should be
`capable of gripping or holding a stent . . . it is necessary when the grip
`member is a sleeve of material, that said material has a surface which offers
`high resistance to sliding motion”); id. at Fig. 3. As with the previous
`ground, neither Petitioner nor Mr. Trotta explain sufficiently how, in the
`proposed modification, Burton’s grip member would serve to retain Fischell
`’274’s stent when Fischell ’274’s balloon is located between the grip
`member and the stent. See Pet. 60–62; Ex. 1003 ¶¶ 149–150. In particular,
`we find nothing in the cited portion of Mr. Trotta’s declaration that
`addresses how Burton’s grip member would secure a stent under the
`proposed modification, namely, in the absence of direct contact between the
`stent and grip member. See, e.g., Ex. 1003 ¶¶ 149–151; see also 37 C.F.R. §
`42.65(a). Rather, we find persuasive Patent Owner’s argument that Burton’s
`grip member “would be rendered ineffective if used under the balloon of
`Fischell ’274, because the operation of the grip member requires direct
`contact between the stent and the grip member.” Prelim. Resp. 27. As such,
`we are not persuaded that a person of ordinary skill in the art would have
`had a reasonable expectation of success in combining Fischell ’274 and
`Burton to “help secure the stent,” as Petitioner contends. Pet. 60, 62.
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`Based on the record before us, we determine that Petitioner has not
`established a reasonable likelihood of prevailing on its contention that the
`combined teachings of Fischell ’274, Burton, Williams, and the knowledge
`of a POSITA render obvious claims 1–3, 5, 7–9, 11–14, and 16–20.
`G. Jendersee in various combinations with Olympus, Burton,
`Fischell ’507, Fischell ’274, Williams, and
`knowledge of a person of ordinary skill in the art
`Petitioner contends that dependent claims 13 and 15 are unpatentable
`over the references relied upon in the grounds discussed above—Olympus,
`Burton, Fischell ’507, Fischell ’274, and Williams—in further view of
`Jendersee. Pet. 79; see infra n.1.
`Claims 13 and 15 depend from claim 1 and recite, inter alia, a “stop
`carried by the inner tube inside the balloon” and “a pair of stops . . . carried
`by the inner tube inside the balloon,” respectively. Ex. 1001, 5:35–42.
`Petitioner relies on Jendersee for disclosing the claimed stops (Pet. 79), but
`otherwise relies on the same findings and reasoning applied in the grounds
`based on Olympus, Burton, Fischell ’507, Fischell ’274, and Williams
`discussed above (see id. at 79–81).
`For the same reasons that Petitioner has not established a reasonable
`likelihood of prevailing on its contentions under the grounds based on
`Olympus, Burton, Fischell ’507, Fischell ’274, and Williams, we also
`determine that Petitioner has not established a reasonable likelihood of
`prevailing on its contention that claims 13 and 15 are unpatentable over
`Jendersee and the other asserted references.
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`III. ORDER
`For the reasons given, it is
`ORDERED that no inter partes review is instituted.
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`IPR2017-01297
`Patent 6,712,827 B2
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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
`2jys@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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