Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 10
`Entered: March 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ABIOMED, INC., ABIOMED R&D, INC., and
`ABIOMED EUROPE GMBH,
`
`Petitioner,
`v.
`MAQUET CARDIOVASCULAR, LLC,
`Patent Owner.
`_______________
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`_______________
`
`
`Before BART A. GERSTENBLITH, JEREMY M. PLENZLER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a) and 325(d); 37 C.F.R. § 42.108
`Dismissing Petitioner’s Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 10
`Entered: March 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ABIOMED, INC., ABIOMED R&D, INC., and
`ABIOMED EUROPE GMBH,
`
`Petitioner,
`v.
`MAQUET CARDIOVASCULAR, LLC,
`Patent Owner.
`_______________
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`_______________
`
`
`Before BART A. GERSTENBLITH, JEREMY M. PLENZLER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a) and 325(d); 37 C.F.R. § 42.108
`Dismissing Petitioner’s Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`
`
`I. INTRODUCTION
`A. Background
`Abiomed, Inc., Abiomed R&D, Inc., and Abiomed Europe GmbH
`(collectively, “Petitioner”) filed Petitions to institute an inter partes review
`of various claims (the “challenged claims”) from U.S. Patent No. 9,327,068
`B2 (“the ’068 patent”) and U.S. Patent No. 8,888,728 B2 (“the ’728
`patent”). IPR2017-02150, Paper 2 (“’2150 Pet.”)1; IPR2017-02151, Paper 2
`(“’2151 Pet.”)2; IPR2017-02152, Paper 2 (“’2152 Pet.”)3; IPR2017-02153,
`Paper 2 (“’2153 Pet.”)4. Petitioner filed Motions for Joinder in each of those
`proceedings concurrent with the filing of the respective Petitions. IPR2017-
`02150, Paper 3 (“’2150 Mot.”); IPR2017-02151, Paper 3 (“’2151 Mot.”);
`IPR2017-02152, Paper 3 (“’2152 Mot.”); IPR2017-02153, Paper 3 (“’2153
`Mot.”).
`We review the Petitions according to 35 U.S.C. § 314, which provides
`that an inter partes review may not be instituted “unless . . . there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” Under 35 U.S.C. §§ 314(a) and
`325(d), and 37 C.F.R. § 42.108(a), we have discretion regarding whether to
`institute trial. Based on the particular circumstances of the proceedings
`addressed in this Decision, we exercise our discretion to deny the petitions in
`each of IPR2017-02150, -02151, -02152, and -02153. Petitioner’s motions
`for joinder in each of those proceedings are dismissed.
`
`
`1 The ’2150 Petition challenges claims 1, 5, 7, and 9 of the ’068 patent.
`2 The ’2151 Petition challenges claims 10, 13–15 and 20 of the ’068 patent.
`3 The ’2152 Petition challenges claims 1 and 6–8 of the ’728 patent.
`4 The ’2153 Petition challenges claims 10 and 15–17 of the ’728 patent.
`
`2
`
`
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`
`
`B. Related Proceedings
`Petitioner and Patent Owner identify a number of proceedings related
`to the ’068 patent and the ’728 patent, including IPR2017-01026, -01027, -
`01028, and -01029. ’2150 Pet. 1–2; ’2151 Pet. 1–2; ’2152 Pet. 1–2; ’2153
`Pet. 1–2; ’2150 Paper 5, 1–2; ’2151 Paper 5, 1–2; ’2152 Paper 5, 1–2; ’2153
`Paper 5, 1–2.
`C. Asserted Grounds of Unpatentability and Evidence of Record
`Petitioner contends that the challenged claims are unpatentable as set
`forth below (’2150 Pet. 4–5, 30–94; ’2151 Pet. 4, 28–87; ’2152 Pet. 4–5,
`29–88; ’2153 Pet. 4, 28–82).5
`
`’068 Patent
`
`Basis Claim(s)
`Reference(s)
`§ 103 1 and 5
`Aboul-Hosn6 and Siess7
`§ 103 7
`Aboul-Hosn, Siess, and Sammler8
`§ 103 9
`Aboul-Hosn, Siess, and Wampler9
`§ 103 1 and 5
`Sammler, Rau10, Aboul-Hosn, and Siess
`Sammler, Rau, Aboul-Hosn, Siess, and Wampler § 103 9
`Aboul-Hosn and Sammler
`§ 103 10 and 13–15
`Aboul-Hosn
`§ 102 20
`
`
`5 Exhibit numbers for the asserted references are those used in IPR2017-
`02150.
`6 WO 99/02204 A1, pub. Jan. 21, 1999 (Ex. 1004, “Aboul-Hosn”).
`7 U.S. Pat. No. 5,921,913, iss. July 13, 1999 (Ex. 1005, “Siess”).
`8 DE 19821307, pub. Oct. 21, 1999 (Ex. 1045, “Sammler”).
`9 Wampler et al., Clinical Experience with the Hemopump Left Ventricular
`Assist Device, Supported Complex and High Risk Coronary
`Angioplasty, Ch. 14, 231–49 (Springer 1st ed. 1991) (Ex. 1008, “Wampler”).
`10 WO 97/37696 A1, pub. Oct. 16, 1997 (Ex. 1046, “Rau”).
`
`3
`
`
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`
`
`
`’728 Patent
`
`Basis Claim(s)
`References
`§ 103 1 and 7
`Aboul-Hosn and Siess
`§ 103 6
`Aboul-Hosn, Siess, and Sammler
`§ 103 8
`Aboul-Hosn, Siess, and Wampler
`§ 103 1 and 7
`Sammler, Rau, Aboul-Hosn, and Siess
`Sammler, Rau, Aboul-Hosn, Siess, and Wampler § 103 8
`Aboul-Hosn and Sammler
`§ 103 10 and 15–17
`
`
`
`II. ANALYSIS
`A. Motions for Joinder
`“If the Director institutes an inter partes review, the Director, in his or
`her discretion, may join as a party to that inter partes review any person who
`properly files a petition under section 311 that the Director . . . determines
`warrants the institution of an inter partes review under section 314.” 35
`U.S.C. § 315(c). Petitioner’s motions for joinder do not identify an inter
`partes review to join for which trial has been instituted. See ’2150 Mot. 1
`(seeking to join IPR2017-01028); ’2151 Mot. 1 (seeking to join IPR2017-
`01029); ’2152 Mot. 1 (seeking to join IPR2017-01026); ’2153 Mot. 1
`(seeking to join IPR2017-01027).11
`Accordingly, independent of our decision to deny institution,
`discussed further below, we dismiss as moot Petitioner’s Motions for
`Joinder.
`
`
`11 The Petitions were denied in each of those proceedings, as were
`Petitioner’s Requests for Rehearing.
`
`4
`
`
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`
`
`B. Challenges
`At the outset, we note that Petitioner acknowledges that the IPR2017-
`02150 “Petition relies on substantially overlapping prior art to challenge the
`same ’068 patent as in IPR2017-01028” (’2150 Mot. 4), the IPR2017-02151
`“Petition relies on substantially overlapping prior art to challenge the same
`’068 patent as in IPR2017-01029” (’2151 Mot. 4), the IPR2017-02152
`“Petition relies on substantially overlapping prior art to challenge the same
`’728 patent as in IPR2017-01026” (’2152 Mot. 4), and the IPR2017-02153
`“Petition relies on substantially overlapping prior art to challenge the same
`’728 patent as in IPR2017-01027” (’2153 Mot. 4).
`1. § 325(d)
`Under 35 U.S.C. § 325(d), “the Director may take into account
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`There can be no dispute that Aboul-Hosn, Siess, and Wampler are “the same
`. . . prior art . . . previously . . . presented to the Office.” Indeed, Petitioner,
`itself, presented the asserted art in the previously denied Petitions in
`IPR2017-01026, -01027, -01028, and -01029.12 Each of the claims
`
`
`12 With respect to Sammler, Patent Owner notes that “[t]he Sammler
`reference that is cited herein is identical to and in the chain of priority of the
`U.S. Sammler reference cited in the previously denied IPR.” ’2150 Prelim.
`Resp. 16 (citing IPR2017-01208, Ex. 1018). Exhibit 1018 from IPR2017-
`01208 is U.S. Pat. No. 6,544,216 B1. We note that patent is listed as a
`reference cited during prosecution of the application resulting in the ’068
`patent, which indicates that patent was cited by the Examiner. Further, as
`Petitioner acknowledges (see, e.g., ’2150 Pet. 20), Sammler expressly
`references Rau’s disclosure of an intravascular blood pump system (Ex.
`1045, 3).
`
`5
`
`
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`
`challenged in IPR2017-02150, -02151, -02152, and -02153 was already
`challenged in IPR2017-01026, -01027, -01028, or -01029.
`Patent Owner contends that it is an appropriate exercise of our
`discretion under 35 U.S.C. § 325(d) to deny Petitioner’s challenges. See,
`e.g., ’2150 Prelim. Resp. 15–17. We agree that it is appropriate to deny
`institution of at least the challenges based on Aboul-Hosn, Siess, and
`Wampler under 35 U.S.C. § 325(d).
`Petitioner contends that, subsequent to those earlier Petitions, it
`“received service of Patent Owner’s infringement contentions . . . and
`needed sufficient time to review, digest and formulate its views with respect
`to those positions that bear directly on the application of the language of the
`claims.” See, e.g., ’2150 Pet. 96. Petitioner, however, fails to address any
`particular claim construction affected by those litigation positions. See id. at
`25–27; ’2151 Pet. 23–25; ’2152 Pet. 24–26; ’2153 Pet. 22–25. We decline
`to revisit Petitioner’s challenges based on the same references
`unsuccessfully asserted by Petitioner in earlier proceedings directed to the
`’068 and ’728 patents. Accordingly, we exercise our discretion and deny
`those challenges under 35 U.S.C. § 325(d) and 37 C.F.R. § 108(a).
`2. § 314(a)
`Petitioner presents additional challenges based on Sammler and Rau,
`which were not asserted in IPR2017-01026, -01027, -01028, or -01029.
`Patent Owner contends that we should apply our discretion under 35 U.S.C.
`§ 314(a) to deny those challenges in addition to the others discussed above.
`See, e.g., ’2150 Prelim. Resp. 5–15. We agree.
`“The Director may not authorize an inter partes review to be instituted
`unless the Director determines . . . that there is a reasonable likelihood that
`
`6
`
`
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). This section grants the
`Board discretion to deny institution of a later-filed petition based on various
`factors, as set forth in General Plastic Indus. Co. v. Canon Kabushiki
`Kaisha, Case IPR2016–01357, slip op. 15−19 (PTAB Sept. 6, 2017) (Paper
`19) (precedential).
`The non-exhaustive factors are as follows:
`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.
`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).
`a) Whether the Petitions are Directed to the Same Claims
`As noted above, each of the claims challenged in IPR2017-
`02150, -02151, -02152, and -02153 was already challenged in one of
`
`7
`
`
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`
`IPR2017-01026, -01027, -01028, or -01029. IPR2017-01026 challenged
`claims 1–9 of the ’728 patent, IPR2017-01027 challenged claims 10–24 of
`the ’728 patent, IPR2017-01028 challenged claims 1–9 of the ’068 patent,
`and IPR2017-01029 challenged claims 10–22 of the ’068 patent.
`Accordingly, this factor weighs against institution.
`b) Whether Petitioner Knew or Should Have Known of the Newly
`Asserted Prior Art
`As noted above, Patent Owner states that “[t]he Sammler reference
`that is cited herein is identical to and in the chain of priority of the U.S.
`Sammler reference cited in the previously denied IPR.” ’2150 Prelim.
`Resp. 16 (citing IPR2017-01208, Ex. 1018). Exhibit 1018 from IPR2017-
`01208 is U.S. Patent No. 6,544,216 B1 (“the ’216 patent”). The ’216 patent
`lists Sammler (i.e., DE 19821307) as its foreign priority document, and our
`comparison of Sammler to the ’216 patent reveals those documents are
`virtually identical. Moreover, the ’216 patent is listed specifically on the
`’068 patent. The other newly asserted reference, Rau, is a PCT application,
`which was published in 1997. We are apprised of no reason that Petitioner
`did not know of these references when the earlier petitions were filed.
`Accordingly, this factor weighs against institution.
`c) Whether Information from Prior Proceedings was Available
`The Petitions for IPR2017-02150, -02151, -02152, and -02153 were
`filed on September 22, 2017. Patent Owner’s Preliminary Responses in
`IPR2017-01026, -01027, -01028, and -01029 were filed by June 30, 2017,
`and decisions denying institution in each of those proceedings were entered
`on September 20, 2017. Petitioner contends that these “Petition[s] [are] filed
`merely two days after the Board decision[s] denying institution” and, “[a]s
`such it has not, and as a practical matter could not have, been prepared using
`
`8
`
`
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`
`the Board’s decision[s] as a roadmap.” See, e.g., ’2150 Pet. 96.
`Nevertheless, Patent Owner’s Preliminary Responses from the prior
`proceedings were available for almost three months before filing of the
`instant Petitions. Accordingly, this factor weighs against institution.
`Elapsed Time
`d)
`Petitioner contends that it “filed the instant petition[s] without undue
`delay and without regard to the Board’s recent September 20, 2017
`decision[s].” See, e.g., ’2150 Pet. 96. The petitions in each of IPR2017-
`01026, -01027, -01028, and -01029 were filed on March 11, 2017, which is
`more than six months before the Petitions now before us. Petitioner does not
`allege that it was not aware of the newly asserted art at the time of those
`earlier petitions. Accordingly, this factor weighs against institution.
`e) Whether Petitioner Provides Adequate Explanation
`As noted above, over six months passed between the filings of the
`earlier petitions and those now before us. Petitioner contends that it
`“received service of Patent Owner’s infringement contentions on May 25,
`2017 and needed sufficient time to review, digest and formulate its views
`with respect to those positions that bear directly on the application of the
`language of the claims,” but offers no explanation as to how those
`contentions affect its challenges. See, e.g., ’2150 Pet. 96. We are not
`apprised of any circumstance that was unexpected or surprising to Petitioner.
`See General Plastic at 11 (“the shift in Petitioner’s challenges was not the
`consequence of a position that Patent Owner surprisingly advanced or the
`Board surprisingly adopted”). Accordingly, this factor weighs against
`institution.
`
`9
`
`
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`
`
`Board Resources and Final Determination
`f)
`At best, these factors are neutral, and certainly do not weigh in favor
`of Petitioner. See General Plastic at 21 (“multiple, staggered petition
`filings” is, in general, “an inefficient use of the inter partes review process
`and the Board’s resources”).
`
`Conclusion
`g)
`In view of the considerations noted above, we determine a majority of
`the General Plastic factors weigh strongly against institution in this case.
`Accordingly, we exercise our discretion to deny institution under 35 U.S.C.
`§ 314(a) and 37 C.F.R. § 42.108(a).
`
`III. ORDER
`For the foregoing reasons, it is
`ORDERED that Petitioner’s Motions for Joinder in each of IPR2017-
`02150, -02151, -02152, and -02153 are dismissed as moot;
`FURTHER ORDERED that the ’2150 Petition and the ’2151 Petition
`are denied as to all challenged claims of the ’068 patent; and
`FURTHER ORDERED that the ’2152 Petition and the ’2153 Petition
`are denied as to all challenged claims of the ’728 patent.
`
`
`
`
`
`
`
`
`
`10
`
`
`
`IPR2017-02150 and IPR2017-02151 (Patent 9,327,068 B2)
`IPR2017-02152 and IPR2017-02153 (Patent 8,888,728 B2)
`
`
`
`
`
`PETITIONER:
`David M. Tennant
`Charles D. Larsen
`Nathan Y. Zhang
`WHITE & CASE LLP
`dtennant@whitecase.com
`charles.larsen@whitecase.com
`nathan.zhang@whitecase.com
`
`
`PATENT OWNER:
`Michael S. Connor
`Christopher TL Douglas
`S. Benjamin Pleune
`Lauren E. Burrow
`ALSTON & BIRD LLP
`mike.connor@alston.com
`christopher.douglas@alston.com
`ben.pleune@alston.com
`lauren.burrow@alston.com
`
`
`
`
`11
`
`
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