Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 16
`Entered: March 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HALYARD HEALTH, INC.,
`Petitioner,
`
`v.
`
`KIRN MEDICAL DESIGN, L.L.C.,
`Patent Owner.
`____________
`
`Case IPR2017-01990
`Patent 6,631,715 B2
`____________
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
` Paper 16
`Entered: March 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HALYARD HEALTH, INC.,
`Petitioner,
`
`v.
`
`KIRN MEDICAL DESIGN, L.L.C.,
`Patent Owner.
`____________
`
`Case IPR2017-01990
`Patent 6,631,715 B2
`____________
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314 and 37 C.F.R. § 42.108
`
`
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`IPR2017-01990
`Patent 6,631,715 B2
`
`
`I. INTRODUCTION
`Halyard Health, Inc. (“Petitioner”)1 filed a Petition (Paper 3, “Pet.”)
`requesting an inter partes review of claim 18 of U.S. Patent
`No. 6,631,715 B2 (Ex. 1001, “the ’715 patent”). Kirn Medical Design, LLC
`(“Patent Owner”)2 filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
`Pursuant to our authorization via email, Petitioner filed a Reply to
`Preliminary Response (Paper 11, “Reply”). Also pursuant to our
`authorization (see Ex. 2009), Patent Owner filed a Sur-Reply to Petitioner’s
`Reply (Paper 14, “Sur-Reply”).
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108(a). Under the circumstances of this case, for
`the reasons explained below, we exercise our discretion to not institute an
`inter partes review as to claim 18 of the ’715 patent.
`
`II. BACKGROUND
`A. Related Matters
`The parties indicate that the ’715 patent is at issue in the following
`related case: Applied Med. Tech., Inc. v. Corpak Medsystems, Inc.,
`
`
`1 Halyard Health, Inc. is the sole remaining Petitioner in this proceeding.
`Corpak Medsystems, Inc., an original Petitioner, dissolved as of December
`31, 2017, thereby ending its involvement in this proceeding. See Paper 12, 1.
`2 The Mandatory Notices provided by Applied Medical Technology, Inc.
`(“AMT”) identify Kirn Medical Design, L.L.C. (“Kirn”) as the owner of the
`’715 patent and AMT as the exclusive licensee of the ’715 patent, and both
`entities as real parties-in-interest in this proceeding. Paper 5, 2. In addition,
`AMT has provided a statement from Kirn confirming that AMT is the
`exclusive licensee of the ’715 patent and consenting to AMT defending the
`’715 patent in this proceeding. Id. at 6. Both AMT and Kirn have given
`power of attorney to counsel of record. Paper 6, Paper 13.
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`No. 1:16-cv-02190 (N.D. Ohio). Pet. 9; Paper 5, 2. Claim 18 of the ’715
`patent was challenged in IPR2017-00646—an earlier-filed inter partes
`review proceeding in which the Board denied institution. Pet. 13–14; see
`also Ex. 1013 (providing the Decision on Institution for IPR2017-00646).
`B. The ’715 patent
`The ’715 patent, titled “Magnetic Nasal Tube Bridle System and
`Related Method,” issued on October 14, 2003. Ex. 1001, (45), (54). The
`’715 patent “relates generally to systems for placing and securing a nasal
`tube; and more particularly to such a system which utilizes magnets in the
`placement of a bridle used in combination with a receiver to secure the nasal
`tube.” Id. at 1:8–12.
`In one embodiment, flexible member 10 is used to secure a nasal tube
`in a patient. Id. at 4:16–17. Flexible member 10 is a soft, flexible tube
`having magnet 13 attached to end portion 12. Id. at 4:23–26, Fig. 1. In
`addition, flexible member 10 is long enough to be able to loop around the
`patient’s nasal septum so that each end of flexible member 10 extends
`through a respective nare or nostril of the patient. Id. at 4:17–21, Fig. 7d.
`Magnetic probe 20 is inserted into a nare to attract magnet 13 and
`retrieve end portion 12 of flexible member 10. Id. at 4:54–56. Magnetic
`probe 20 is a rigid or semi-rigid cylinder having magnet 21 attached to first
`end portion 22. Id. at 4:57–61, Fig. 3. The polarity of magnet 21 is opposite
`the polarity of magnet 13 so that the two magnets attract. Id. at 5:1–4.
`A method of placing and securing a nasal tube in a patient includes
`inserting the tube into a nare of the patient’s nose, inserting end portion 12
`of flexible member 10 into a first nare, inserting magnetic probe 20 into a
`second nare to attract end portion 12, and removing magnetic probe 20 so as
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`to retrieve end portion 12 through the second nare. Id. at 6:19–28, Figs. 7a–
`7c. Specifically, end portion 12 (and thus magnet 13) is inserted into the
`first nare beyond the posterior border of nasal septum N through the choanal
`aperture. Id. at 6:34–40, Fig. 7b. When magnetic probe 20 is inserted
`similarly into the second nare, it attracts and connects with magnet 13 of
`flexible member 10, thus allowing end portion 12 to be retrieved through the
`second nare. Id. at 6:47–52. That is, magnetic probe 20 is withdrawn from
`the second nare, thereby pulling magnetically coupled flexible member 10
`“into the first nare and out through the second nare.” Id. at 6:60–64, Fig. 7c.
`This process results in flexible member 10 being looped posteriorly
`around nasal septum N (id. at 6:64–66), as shown in Figure 7d of the ’715
`patent, which is reproduced below.
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`Figure 7d depicts flexible member 10 looped posteriorly around nasal
`septum N and magnetic probe 20 separated from end potion 12. Id. at 6:64–
`7:2. Receiver 243 is secured to end portions 11, 12 of flexible member 10
`and to nasal tube T1, which is inserted into one of the patient’s nares. Id. at
`7:3–13, Fig. 7d.
`Figures 4 and 5 of the ’715 patent are reproduced below.
`
`
`
`Figures 4 and 5 depict receiver 24 for securing nasal tube T1 and end
`portions 11, 12 of flexible member 10, with Figure 4 showing receiver 24 in
`an open position for receiving the nasal tube and the flexible member ends.
`Id. at 3:56–58, 5:8–10. Receiver 24 comprises two members 25, 26
`pivotally connected by living hinge 27. Id. at 5:11–15, Fig. 4. Snap-type
`locking hooks 28 extend from member 25, and mating holes 29 are formed
`in member 26 for firmly securing the members together over nasal tube T1
`and end portions 11, 12. Id. at 5:15–19, Fig. 4.
`Receiver 24 includes first channel 30 formed in member 25 for
`receiving nasal tube T1. Id. at 5:23–24, Figs. 4, 5. Channel 30 preferably
`
`
`3 The receiver is misidentified in Figure 7d with reference numeral 4.
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`5
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`includes an opening that is smaller than the outer diameter of tube T1 so as
`to allow tube T1 to be snapped into place. Id. at 5:25–30. Mating channel
`31 may be formed in member 26, such that channels 30, 31 form a hole
`through receiver 24 for firmly grasping nasal tube T1. Id. at 5:32–35, Figs.
`4, 5. Receiver 24 further includes two sets of channels 32, 33 for receiving
`and securing end portions 11, 12 of flexible member 10. Id. at 5:37–43,
`Figs. 4, 5.
`
`C. Illustrative Claim
`Claim 18, the sole challenged claim of the ’715 patent, is reproduced
`below.
`
`18. A method of placing and securing at least one tube
`through a nose into a patient comprising:
`inserting the at least one tube into a first or second nare of
`the nose;
`inserting an end portion of a flexible member having a
`magnet attached thereto into a first nare of the nose;
`inserting a magnetic probe into a second nare of the nose
`for attracting said magnet and said end portion of said flexible
`member;
`removing said probe from the second nare of the nose
`thereby retrieving said end portion of said flexible member
`through the second nare of the nose; and
`snapping the at least one tube into a channel formed in a
`receiver.
`Ex. 1001, 9:8–21.
`
`D. The Prior Art
`Petitioner’s grounds of unpatentability rely on the following prior art
`references:
`
`1. U.S. Patent No. 5,185,005, issued Feb. 9, 1993
`(Ex. 1002, “Ballantyne”);
`
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`2. U.S. Patent No. 5,752,511, issued May 19, 1998
`(Ex. 1007, “Simmons”);
`3. U.S. Patent No. 5,097,827, issued Mar. 24, 1992
`(Ex. 1008, “Izumi”); and
`4. PCT International Application Publication No.
`WO 99/20334 A1, published Apr. 29, 1999 (Ex. 1011,
`“Bierman”).
`E. Asserted Grounds of Unpatentability
`Petitioner challenges claim 18 of the ’715 patent on the following
`grounds:
`References
`Ballantyne and Simmons
`
`Basis Claim Challenged
`§ 103
`18
`
`Ballantyne and Izumi
`
`§ 103
`
`Ballantyne, Simmons, and Bierman § 103
`
`18
`
`18
`
`Pet. 16. In support of these asserted grounds of unpatentability, Petitioner
`relies on the Declaration of Terry Layton, Ph.D. (Ex. 1004).
`F. Procedural History of the ’715 Patent at the Board
`On January 19, 2017, Petitioner filed a petition (“the First Petition”)
`in IPR2017-00646 requesting an inter partes review of claim 18 of the ’715
`patent. See Ex. 1014 (providing the Petition for IPR2017-00646). In the
`First Petition, Petitioner asserted the following grounds of unpatentability:
`Reference(s)
`Basis Claim Challenged
`Ballantyne
`§ 102
`18
`
`Ballantyne
`
`§ 103
`
`18
`
`
`
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`Reference(s)
`Ballantyne and the ’448 patent4
`
`Basis Claim Challenged
`§ 103
`18
`
`18
`
`§ 103
`
`Ballantyne, the ’199 patent,5 and
`the ’538 patent6
`Id. at 12.
`On April 28, 2017, Patent Owner filed its Preliminary Response in
`IPR2017-00646. See Ex. 1015 (providing the Preliminary Response for
`IPR2017-00646). On July 26, 2017, the Board determined the First Petition
`did not demonstrate a reasonable likelihood of success in proving claim 18
`unpatentable, and did not institute an inter partes review as to claim 18 of
`the ʼ715 patent. Ex. 1013, 21.
`On August 29, 2017, which was thirty-two days after the Decision on
`Institution in IPR2017-00646 was entered, Petitioner filed its Petition (“the
`Second Petition”) in this proceeding requesting an inter partes review of
`claim 18 of the ’715 patent.
`
`III. ANALYSIS
`A. Discretionary Non-Institution Under 35 U.S.C. § 314(a)
`Patent Owner asserts that the Board should exercise its discretion
`under 35 U.S.C. § 314(a) and deny institution of the Second Petition.
`Prelim. Resp. 5–12.
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`
`
`4 U.S. Patent No. 4,778,448, issued Oct. 18, 1988.
`5 U.S. Patent No. 6,173,199 B1, issued Jan. 9, 2001.
`6 U.S. Patent No. 5,492,538, issued Feb. 20, 1996.
`
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`37 C.F.R. § 42.108(a) (stating “the Board may authorize the review to
`proceed”) (emphasis added); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is
`permitted, but never compelled, to institute an IPR proceeding”). When
`determining whether to exercise our discretion under § 314(a), we consider
`the following non-exhaustive factors:
`1. whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner knew
`of the prior art asserted in the second petition or should have
`known of it;
`3. whether at the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary response to the
`first petition or received the Board’s decision on whether to
`institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the filing
`of the second petition;
`5. whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the
`same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357,
`slip op. 15–16 (PTAB Sept. 6, 2017) (Paper 19) (precedential)7 (hereinafter,
`“General Plastic”) (citing NVIDIA Corp. v. Samsung Elecs. Co., Case
`IPR2016-00134, slip op. 6–7 (PTAB May 4, 2016) (Paper 9)).
`
`
`7 General Plastic was designated precedential on October 18, 2017.
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`A central issue addressed by the General Plastic factors is balancing
`the equities between a petitioner and a patent owner when information is
`available from prior Board proceedings for a subsequent proceeding.
`General Plastic, slip op. at 15–19. Accordingly, we use the non-exhaustive
`General Plastic factors as a framework for assessing, under the specific
`circumstances of this case, the equities of allowing the Second Petition filed
`by the same Petitioner that challenges claims of the same patent having
`essentially the same scope as the claims challenged in the First Petition to
`proceed to trial. We address each of these factors in turn, but note that not
`all the factors need to weigh against institution for us to exercise our
`discretion under § 314(a).
`
`Factor 1: Whether Petitioner Previously Filed a Petition Directed to the
`Same Claims of the Same Patent
`As discussed above, Petitioner’s First Petition challenged claim 18 of
`the ’715 patent. Ex. 1014, 12. The Second Petition also challenges claim
`18. Pet. 16. Thus, as acknowledged by Petitioner (see Reply 1), Petitioner
`challenges the exact same claim in the Second Petition that it challenged in
`the First Petition. Accordingly, this factor strongly weighs against
`institution.
`
`Factor 2: Whether Petitioner Knew or Should Have Known of the Prior Art
`Asserted in the Second Petition When It Filed the First Petition
`As discussed above, the Second Petition relies on four references:
`Ballantyne, Simmons, Izumi, and Bierman. Petitioner knew of Ballantyne
`when it filed the First Petition because, as discussed above, the First Petition
`asserted grounds involving Ballantyne. In fact, Ballantyne is the primary
`reference asserted in both Petitions.
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`Petitioner argues that it was not aware of Simmons, Izumi, and
`Bierman at the time of filing the First Petition. Reply 1. Rather, Petitioner
`asserts it discovered Bierman on August 3, 2017, and Simmons and Izumi
`on August 9, 2017. Id. at 1–2. Petitioner further asserts it “engaged a prior
`art search firm for the first Petition, and that search, despite the exercise of
`reasonable diligence, failed to locate [Simmons, Izumi, and Bierman].” Id.
`at 2. According to Petitioner, the “much different” primary classification of
`Simmons and Izumi (Class 128/Subclass 207.18) with respect to Ballantyne
`(Class 604/Subclass 174) and the other references relied on in the First
`Petition made “identification more difficult for a reasonably diligent prior art
`search, despite their relevance to nasogastric tubes.” Id. Petitioner says
`nothing about whether it reasonably should have known about Bierman or
`why it could not have presented Bierman in the First Petition.
`Patent Owner argues that in “explaining the apparent difficulty that
`the search firm faced in finding the new references of Simmons and Izumi,”
`Petitioner fails to mention whether it “actually instructed the search firm to
`search for the [snapping the at least one tube into a channel] limitation” and,
`thus, “also has not adequately explained whether it should have known of
`these references, and if not, why.” Sur-Reply 3.
`We are not persuaded by Petitioner’s argument that the primary
`classification of Simmons and Izumi is “much different” than that of
`Ballantyne. As noted by Petitioner, the primary U.S. classification of both
`Simmons and Izumi is Class 128/Subclass 207.18. Ex. 1007, [52]; Ex. 1008,
`[52]. The primary U.S. classification of Ballantyne, on the other hand, is
`Class 604/Subclass 174. Ex. 1002, [52]. Ballantyne, however, has a
`secondary classification of Class 128/Subclass 207.18, the same class and
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`subclass of Simmons and Izumi. Id. The Examiner’s field of search for
`Ballantyne included various subclasses in Class 128 and Class 604. Id. at
`[58]. Similarly, the field of search for Simmons covered Class 128 and
`Class 604, while the field of search for Izumi covered Class 128 and Class
`606. Ex. 1007, [58]; Ex. 1008, [58]. Class 128 and Class 604 are both titled
`“Surgery,” and the class schedule for Class 604 states “Class 604 is
`considered to be an integral part of Class 128.” Ex. 3001, 1; Ex. 3002, 1. In
`addition, the three references have similar International classifications. Ex.
`1002, [51]; Ex. 1007, [51]; Ex. 1008, [51].
`Thus, rather than being “much different,” the classifications of
`Simmons and Izumi are similar to that of Ballantyne. As such, we are not
`persuaded that discovering Simmons and Izumi through a reasonably
`diligent prior art search would have been difficult or unlikely.
`Although there is not sufficient evidence in the record before us that
`Petitioner was aware of Simmons, Izumi, or Bierman at the time of filing the
`First Petition, Petitioner’s explanation regarding whether it reasonably
`should have known about these prior art references when it filed its First
`Petition is not persuasive. Accordingly, this factor weighs against
`institution.
`
`Factor 3: Whether Petitioner Had Patent Owner’s Preliminary Response
`and the Board’s Institution Decision on the First Petition When Petitioner
`Filed the Second Petition
`Patent Owner filed its Preliminary Response to the First Petition on
`April 28, 2017. Ex. 1015. We issued our Decision on Institution addressing
`the First Petition on July 26, 2017. Ex. 1013. Hence, when Petitioner filed
`the Second Petition on August 29, 2017, Petitioner had both Patent Owner’s
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`Preliminary Response to the First Petition and the Board’s Decision on
`whether to institute review of the First Petition. Consequently, this factor
`weighs against institution.
`Petitioner argues that neither Patent Owner’s Preliminary Response
`nor the Board’s Decision in IPR2017-00646 “addresses the prior art
`combinations at issue in the second Petition.” Reply 2 (citing Exs. 1013,
`1015). This argument, however, is not pertinent to the question of whether
`the Preliminary Response or the Board’s Decision were available at the time
`the Second Petition was filed. Furthermore, there is no reason for either the
`Preliminary Response or the Board’s Decision to have addressed these new
`prior art combinations because they were not raised in the First Petition.
`Petitioner also argues that the Board’s Decision merely indicated that
`Ballantyne did not disclose snapping a tube into a channel, “without
`providing a ‘roadmap’ of any sort.” Reply 3. We disagree. First, at the
`time the Second Petition was filed, Petitioner had Patent Owner’s
`Preliminary Response to the First Petition for four months, and our Decision
`on Institution addressing the First Petition for slightly over one month.
`Thus, Petitioner not only had the relevant materials from Patent Owner and
`the Board when it filed its Second Petition, but had ample time to take
`advantage of those materials in crafting its arguments in the Second Petition.
`Second, Petitioner has not explained the circumstances that led to the
`discovery of Simmons, Izumi, and Bierman. Petitioner states it did not
`search for the new prior art “until the Board filed its institution decision in
`the first Petition” (Reply 4), but fails to explain why the additional searching
`was undertaken. Petitioner does not argue that there were any changed
`circumstances that reasonably justified a new prior art search. Based on the
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`record before us, it would appear that a new search was done in response to
`the Decision in IPR2017-00646 to find new prior art that would overcome
`the deficiencies identified in the Decision.
`Another indication that the Board’s Decision was used as a roadmap
`to cure the deficiencies of the First Petition is the frequent references to
`these deficiencies in the Second Petition. For example, after noting that the
`Board’s Decision determined Ballantyne did not disclose snapping a tube
`into a channel, Petitioner argues that the Second Petition “presents different
`combinations of references, grounds and arguments to demonstrate that a
`claim that recites ‘snapping the at least one tube into a channel formed in a
`receiver’ would have been obvious.” Pet. 5. Also, in arguing that Simmons
`discloses this claim limitation, Petitioner argues “[t]he diameter of the
`interior openings of the retainer clips taught by Simmons mirrors the
`explanation of snapping put forth by [Patent Owner] in their previous
`Preliminary Reply and adopted by the Board in the Final Decision.”8 Id. at
`46.
`
`Contrary to what Petitioner argues, the petition in IPR2017-00646 was
`deficient, and Petitioner used our earlier Decision as a roadmap to cure the
`deficiencies.
`
`Factor 4: The Length of Time That Elapsed Between the Time the Petitioner
`Learned of the Prior Art Asserted in the Second Petition and the Filing of
`the Second Petition
`As noted above, Petitioner asserts it discovered Bierman on August 3,
`2017, and Simmons and Izumi on August 9, 2017. Reply 1–2. The Second
`
`
`8 Although Petitioner refers to a “Final Decision,” it appears Petitioner is
`referencing the Decision on Institution in IPR2017-00646.
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`Petition was filed on August 29, 2017, less than one month after discovering
`the new prior art. Petitioner asserts “[t]his is a speedy timeframe for preparing
`an IPR petition” and the filing of the Second Petition “is not a case where
`Petitioner knew of the art and strategically delayed filing the Petition.” Reply
`3.
`
`Based on the record before us, we conclude that this factor weighs
`against exercising our discretion.
`
`Factor 5: Whether Petitioner Has Provided Adequate Explanation
`The fifth General Plastic factor is “whether the petitioner provides
`adequate explanation for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent.” General Plastic,
`slip op. at 9, 16. A closely related factor often considered when determining
`whether to exercise our discretion under § 314(a) is “whether the petitioner
`provides adequate explanation why we should permit another attack on the
`same claims of the same patent.” Akamai Techs., Inc. v. Limelight
`Networks, Inc., Case IPR2017-00358, slip op. at 9 (PTAB May 2, 2017)
`(Paper 9); Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-
`00034, slip op. at 7–8 (PTAB Apr. 13, 2017) (Paper 9).
`Petitioner argues it “was not aware of the present art at the time that
`the first Petition was filed” and “did not search for this art until the Board
`filed its institution decision in the first Petition.” Reply 4. This explanation,
`however, does not justify permitting Petitioner to wait to file its Second
`Petition until after it has had the advantage of seeing our Decision on
`Institution addressing the First Petition. As discussed above, the record
`before us suggests that Petitioner engaged in further searching after our prior
`
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`Decision in order to find new prior art that would overcome the deficiencies
`identified in the Decision.
`Petitioner also argues that, as supported by its expert, it had
`reasonably interpreted “snapping the at least one tube into a channel formed
`in a receiver” to mean snapping the ends of the nasal bridle and tube into a
`receiver. Id. (citing Ex. 1018 ¶ 52).9 Patent Owner, however, argues that the
`First Petition “was deficient because it effectively ignored that claim 18
`requires snapping a tube into a channel, not snapping two pieces of a clip
`together.” Prelim. Resp. 8. According to Patent Owner, this deficiency was
`not reasonable as the express language of claim 18 requires snapping a tube
`into a channel. Id. at 9.
`Responding to Petitioner’s explanation, Patent Owner argues:
`But Petitioner merely points
`to
`the same
`unsupported reasoning
`that
`the Board rejected
`in
`Petitioner’s previous Petition. “Expert testimony that does
`not disclose the underlying facts or data on which the
`opinion is based is entitled to little or no weight.” 37
`C.F.R. § 42.65(a). The expert’s testimony relied upon by
`Petitioner was not supported by underlying facts or data.
`Instead, the expert’s testimony was an opinion that merely
`cited Ballantyne’s disclosure of an anchoring clip that
`comprises two pieces which are snap-fitted together upon
`the ends of a bridle and perhaps also upon a tube.
`Compare Ex. 1018, ¶ 52, with Ex. 1002 at col. 8, ll. 6–17.
`Petitioner does not provide any other explanation or
`support in its Reply for how its interpretation could have
`been reasonable. This is not an adequate explanation.
`Sur-Reply 2.
`
`
`9 Exhibit 1018 is a copy of Exhibit 1004 from IPR2017-00646, the
`Declaration of Terry Layton, Ph.D.
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`IPR2017-01990
`Patent 6,631,715 B2
`
`
`We agree with Patent Owner. Dr. Layton testifies that “Ballantyne
`discloses ‘snapping’ the ends of the nasal bridle and tube into a ‘receiver’
`just as Claim 18 and the specification of the ʼ715 patent disclose,” but fails
`to explain how Ballantyne’s disclosure of snapping two pieces of the
`receiver upon a tube is the same as snapping a tube into a channel. Ex. 1018
`¶ 52. Dr. Layton adds merely “[i]ndeed, the Abstract of the ʼ715 patent
`states that ‘[c]hannels are provided for receiving the nasal tube and flexible
`member in a snap-fit manner’” (id.), but this statement fails to explain how
`Ballantyne discloses the claim limitation. Neither Petitioner nor its expert
`provides sufficient rationale explaining why it was reasonable to ignore the
`language “into a channel” when construing claim 18. See Phillips v. AWH
`Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (“The construction
`that stays true to the claim language and most naturally aligns with the
`patent’s description of the invention will be, in the end, the correct
`construction.”).
`Furthermore, although Petitioner is now asserting that it reasonably
`relied on this “interpretation,” we note that Petitioner asserted in the First
`Petition that “[i]n the view of the Petitioners and their expert, Dr. Layton, the
`limitations of Claim 18 should be given their broadest reasonable
`interpretation in light of the specification of the ʼ715 patent” and “no terms
`or phrases require specific construction.” Ex. 1014, 10. This statement
`contradicts the current assertion that Petitioner relied on a particular
`construction for “snapping the at least one tube into a channel” that ignores
`the express language “into a channel.” For the above reasons, this
`explanation does not justify the delay in filing the Second Petition.
`
`
`
`
`17
`
`
`
`IPR2017-01990
`Patent 6,631,715 B2
`
`
`Last, noting the one-year filing deadline under 35 U.S.C. § 315(b),
`Petitioner argues it sacrificed over seven months of the one-year period by
`filing the First Petition less than five months after being served with a
`complaint. Reply 4. According to Petitioner, denying institution in this
`proceeding would “amount[] to punishing Petitioner for speedily filing an
`IPR petition, before Petitioner had notice of [Patent Owner’s] validity and
`claim construction positions.” Id.
`We are not convinced that denying the Second Petition would
`“punish” Petitioner for filing the First Petition early in the one-year period
`provided by § 315(b). Filing the First Petition when it did was a decision
`freely made by Petitioner, and Petitioner does not persuade us that having
`prior notice of Patent Owner’s validity and claim construction positions in
`the district court proceeding would have allowed it to avoid the deficiencies
`of the First Petition.
`Nevertheless, we note that Congress included § 315(b) in the AIA
`statute as a safeguard to protect patent owners from harassing proceedings
`involving a patent, like the ’715 patent, that has been asserted in district
`court litigation. Section 315(b) provides a one-year time limit for a
`petitioner (or real party in interest or privy) who is served by a complaint
`alleging infringement of a patent to challenge the patent in an inter partes
`proceeding. Petitioner filed the Second Petition within that one-year
`window. As it is now more than one year from Petitioner being served with
`a complaint, § 315(b) shelters Patent Owner from additional petitions by
`Petitioner.
`
`
`
`
`18
`
`
`
`IPR2017-01990
`Patent 6,631,715 B2
`
`
`On balance, however, Petitioner’s arguments do not provide an
`adequate explanation for the time elapsed between the First and Second
`Petitions. Consequently, this factor weighs against institution.
`
`Factors 6 and 7: Board Considerations
`The sixth and seventh General Plastic factors consider “the finite
`resources of the Board” and “the requirement under 35 U.S.C. § 316(a)(11)
`to issue a final determination not later than 1 year after the date on which the
`Director notices institution of review.” General Plastic, slip op. at 9–10, 16.
`We conclude that these factors are not implicated under the
`circumstances of this case, and, therefore, do not weigh for or against
`exercising our discretion.
`
`Weighing the Factors for Discretionary Non-Institution under § 314(a)
`We view Petitioner’s strategy in this particular case as burdensome to
`Patent Owner and the Board. Additionally, Petitioner has not provided a
`persuasive explanation of why its challenges raised in the Second Petition
`should be allowed. And we find Petitioner’s explanation of why it chose to
`delay filing the Second Petition unpersuasive. We do not take lightly
`denying a petition on grounds unrelated to its substantive patentability
`challenges. Nor do we hold that multiple petitions against claims of the
`same patent that cover essentially the same scope are never permitted. Here,
`however, weighing the relevant factors under the circumstances of this case,
`most of which, as we explain above, favor exercising our discretion not to
`institute, we view the prejudice to Patent Owner to be greater than that to
`Petitioner. We, therefore, decline to institute inter partes review under 35
`U.S.C. § 314(a).
`
`
`
`
`19
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`IPR2017-01990
`Patent 6,631,715 B2
`
`
`B. Conclusion
`For all of the reasons discussed above, we exercise our discretion
`under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) not to institute review in
`this proceeding with respect to claim 18 of the ’715 patent.
`C. Pending Motion
`Patent Owner has filed a motion to file a corrected Patent Owner’s
`Preliminary Response to correct two clerical errors and to refile
`inadvertently misnumbered Exhibits. Paper 9.
`In light of the foregoing determination to exercise our discretion and
`not institute review in this proceeding, this motion is are dismissed as moot.
`
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and that we do not institute an
`inter partes review of any claim of the ’715 patent based on the grounds
`asserted in this Petition.
`
`
`
`
`20
`
`
`
`IPR2017-01990
`Patent 6,631,715 B2
`
`
`
`PETITIONER:
`
`Richard M. McDermott
`Jitendra Malik
`Alissa M. Pacchioli
`ALSTON & BIRD LLP
`rick.mcdermott@alston.com
`jitty.malik@alston.com
`alissa.pacchioli@alston.com
`
`
`PATENT OWNER:
`
`Gregory M. York
`Christopher T. Meta
`Steven J. Solomon
`PEARNE & GORDON LLP
`gyork@pearne.com
`cmeta@pearne.com
`ssolomon@pearne.com
`
`
`
`
`
`
`21
`
`
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