Paper No. 12
`Trials@uspto.gov
`571.272.7822 Filed: January 31, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACCLARENT, INC.,
`Petitioner,
`
`v.
`
`FORD ALBRITTON, IV,
`Patent Owner.
`____________
`
`Case IPR2018-00268
`Patent 9,011,412 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BEVERLY M. BUNTING, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822 Filed: January 31, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACCLARENT, INC.,
`Petitioner,
`
`v.
`
`FORD ALBRITTON, IV,
`Patent Owner.
`____________
`
`Case IPR2018-00268
`Patent 9,011,412 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BEVERLY M. BUNTING, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2018-00268
`Patent 9,011,412 B2
`
`
`INTRODUCTION
`
`Acclarent, Inc. (“Petitioner”) timely filed a Request for Rehearing
`
`(Paper 11, “Reh’g Req.”) of our Decision denying institution of inter partes
`
`review (Paper 10, “Decision” or “Dec.”) of claims 8–13 of U.S. Patent No.
`
`9,011,412 B2 (Ex. 1001, “the ’412 patent”). Petitioner’s stated basis for
`
`rehearing is that we “made both a legal error by applying an incorrect
`
`standard for obviousness, and a factual error by overlooking and
`
`misapprehending Petitioner’s evidence.” Reh’g Req. 1. We deny
`
`Petitioner’s Request for Rehearing for the reasons set forth below.
`
`STANDARD OF REVIEW
`
`When reconsidering a decision on institution, the Board reviews the
`
`decision for an abuse of discretion. 37 C.F.R § 42.71(c). “The burden of
`
`showing a decision should be modified lies with the party challenging the
`
`decision.” 37 C.F.R. § 42.71(d). In its request for rehearing, the dissatisfied
`
`party “must specifically identify all matters the party believes the Board
`
`misapprehended or overlooked, and the place where each matter was
`
`previously addressed.” Id. We address Petitioner’s arguments with these
`
`principles in mind.
`
`Arguments Regarding Ressemann1 and Goldfarb2
`
`ANALYSIS
`
`In our Decision, we denied institution with respect to Petitioner’s
`
`Ground 1, which alleged that claims 8 and 11–13 are unpatentable based on
`
`
`
`1 U.S. Patent Pub. No. 2007/0250105 A1 issued to Ressemann et al.
`(“Ressemann”) (Ex. 1006).
`2 U.S. Patent No. 8,747,389 B2 issued to Goldfarb et al. (“Goldfarb”)
`(Ex. 1007).
`
`2
`
`
`
`IPR2018-00268
`Patent 9,011,412 B2
`
`Ressemann and Goldfarb under 35 U.S.C. § 103(a). Dec. 11–17. We found
`
`that the Petition did not establish “sufficiently how Ressemann and Goldfarb
`
`would have been combined to arrive at the claimed invention, and why one
`
`of skill in the art would have made the combination in a manner that renders
`
`the claimed method obvious.”3 Id. at 13. We focused on two limitations of
`
`claim 8, “coupling a source of suction to the lumen through the handle” and
`
`“controlling . . . the guide catheter . . . while substantially simultaneously
`
`controlling, by one of the thumb or index finger, an amount of suction.” Id.
`
`Petitioner raises arguments regarding both limitations, which we address in
`
`turn below.
`
`As to the “coupling a source of suction to the lumen through the
`
`handle” limitation, Petitioner asserts two arguments. First, Petitioner argues
`
`that we were improperly “led to attempt to bodily incorporate the structure
`
`of Goldfarb into Ressemann,” as evidenced by our statement that “it is not
`
`apparent how Petitioner proposes to add Goldfarb’s suction tube 54 to
`
`Ressemann’s structure.” Reh’g Req. 4–5; Dec. 14. Petitioner argues that
`
`“[t]he fact that the precise location of the suction hole and technique for
`
`coupling a source of suction to the lumen are not provided in the Petition
`
`does not give rise to patentability” and that “the expectation of success need
`
`only be reasonable.” Reh’g Req. 5.
`
`
`
`3 For purposes of our Decision, we adopted Petitioner’s proposed level of
`ordinary skill in the art, namely, as having “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 (M.D.) and at least 2 years of experience with laparoscopic or
`endoscopic surgical procedures.” Dec. 6 (citing Pet. 13).
`
`3
`
`
`
`IPR2018-00268
`Patent 9,011,412 B2
`
`
`Petitioner’s argument does not persuade us that we misapprehend or
`
`overlooked any evidence. In the Petition, Petitioner recognizes that
`
`Ressemann does not teach the use of suction, arguing that “it would have
`
`been obvious to modify Ressemann in view of Goldfarb to couple a source
`
`of suction to the lumen through the handle for suctioning fluid through the
`
`lumen of the guide catheter.” Pet. 26. Our statement regarding Goldfarb’s
`
`suction tube 54 was an example of the lack of explanation in the Petition,
`
`along with the absence of any teaching regarding the proposed suction hole
`
`location, in Petitioner’s proposed combination. Dec. 14. As we noted in our
`
`Decision, Goldfarb does not disclose the location the hole in its drawings,
`
`and the Petition fails to specify the location of the suction hole in the
`
`modified version of Ressemann as well as the suction tube 54 of Goldfarb.
`
`Id. Our statements regarding the lack of teaching in the Petition do not
`
`amount to a mandate to bodily incorporate Goldfarb’s suction tube; they
`
`merely point out the lack of detail provided in the Petition itself regarding
`
`the proposed combination, given that the Petition expressly relies on
`
`Goldfarb’s suction tube when addressing this limitation. See Pet. 26, 28.
`
`
`
`Second, Petitioner argues that we were improperly led to overlook
`
`“explicit teachings of the references.” Reh’g Req. 5. Petitioner alleges that
`
`“Ressemann’s disclosure of a hub 22 is akin to head 44 of Figure 3 of
`
`Goldfarb” and that “[a]dding a suction sidearm to such a hub was common,
`
`as evidenced by hub 14 and sidearm 16 in Figs. 4, 6A, and 7A of
`
`Ressemann.” Id. Petitioner also alleges that we overlooked Goldfarb’s
`
`teachings and use of its hub 22 when coupling suction. Id. Similarly,
`
`Petitioner argues that we overlooked expert testimony regarding methods of
`
`4
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`
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`IPR2018-00268
`Patent 9,011,412 B2
`
`adding suction to Ressemann, primarily focusing on the use of sidearms. Id.
`
`at 6–8.
`
`
`
`We are not persuaded that we overlooked these teachings, because we
`
`could not have overlooked these explanations when they were not included
`
`in the Petition. Petitioner provides no citations to the Petition or expert
`
`reports explaining the similarities between Ressemann’s hub 22 and
`
`Goldfarb’s head 44, or that adding a suction sidearm was common, or
`
`referencing the use of Ressemann’s sidearm 16 in any way in the proposed
`
`combination. Reh’g Req. 5. It appears that the Petition contains no
`
`reference at all to these teachings. See Pet. 26–31. The portions of the
`
`Petition that Petitioner cites in its Request merely refer to Goldfarb’s suction
`
`hole and suction tube and related structures in isolation, not as part of a
`
`modified version of Ressemann. Reh’g Req. 5 (citing 26–28). Similarly, we
`
`did not overlook the analogous nature of Ressemann’s hub 22 with
`
`Goldfarb’s head 44, or the possibility of adding suction via Ressemann’s
`
`sidearm 16, because these allegations were never made in the Petition.
`
`Moreover, the cited portions of the expert submissions do not appear to
`
`reference “sidearms” by name at all. At most, Petitioner’s expert established
`
`that using suction ports or vents to control suction was well known, but this
`
`fact does not establish where and how one would have added such a port to
`
`Ressemann, which impacts the ability of the proposed combination to carry
`
`out the claimed method. See Ex. 1005 ¶¶ 51–54. Although several of the
`
`prior art references in the record may disclose sidearms, the Board is not
`
`required to be an archeologist of the record in search of pertinent facts,
`
`including structures that may be modified in a manner that results in a
`
`structure that might be capable of performing the claimed method, when that
`
`5
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`
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`IPR2018-00268
`Patent 9,011,412 B2
`
`explanation is lacking in the Petition. See 37 C.F.R. § 42.104(b)(5) (content
`
`of petition must include a statement identifying “the relevance of the
`
`evidence to the challenge raised, including identifying specific portions of
`
`the evidence that support the challenge”); see also 37 C.F.R. § 42.6(a)(3)
`
`(“Arguments must not be incorporated by reference from one document to
`
`another document.”).
`
`
`
`Petitioner’s arguments in its Request for Rehearing regarding the
`
`manner in which the prior art may be combined are not only new, they
`
`undermine the positions taken in the Petition. The claim requires “coupling
`
`a source of suction to the lumen through the handle,” and the Petition
`
`proposes adding Goldfarb’s suction hold “to the handle of Ressemann.”
`
`Pet. 31. The Petition relies on Ressemann’s “wire movement guide 130 as
`
`the handle,” which has an open, half-moon shape. See Pet. 32 (“Ressemann
`
`teaches a ‘wire movement guide 130 [that] may be formed as a recessed
`
`handle or the like’. . . . The handle (wire movement guide 130) . . . .”);
`
`Ressemann, Fig. 11D. In the Request for Rehearing, Petitioner suggests
`
`using sidearm 16 on Ressemann’s hub 22, which would not need to extend
`
`through Ressemann’s wire movement guide 130, and Petitioner does not
`
`allege that one would be motivated to do so. Reh’g Req. 5. In short, neither
`
`the Petition nor the additional explanation provided in the Request for
`
`Rehearing explains adequately why one would be motivated to couple a
`
`suction source through the handle, how one would do so, and what the
`
`resulting structure would look like. Without those details, we are
`
`unpersuaded by Petitioner’s argument that it would have been obvious to
`
`make such a modification of Ressemann.
`
`6
`
`
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`IPR2018-00268
`Patent 9,011,412 B2
`
`
`
`As to the “controlling . . . an amount of suction” limitation, Petitioner
`
`argues that we “misapprehended the nature of suction ports that promote
`
`one-handed use, as Goldfarb’s hole and suction capability would have done
`
`to Ressemann.” Reh’g Req. 9. Petitioner contends that Goldfarb teaches
`
`placing the suction hole strategically on the handle, and that Petitioner’s
`
`experts persuasively argued that one of skill in the art would have sought to
`
`preserve Ressemann’s one-handed functionality. Id. at 10.
`
`
`
`We are not persuaded that we misapprehended the nature of suction
`
`ports that promote one-handed use. Here, the lack of specificity regarding
`
`the coupling of a suction source through the handle, discussed above,
`
`permeates the lack of explanation regarding this limitation. Without
`
`knowing how and where the suction is coupled through Ressemann’s handle,
`
`it is not apparent whether one would still be able to simultaneously control
`
`suction with one of the thumb and index finger while also controlling the
`
`position of the guide catheter using the handle. As noted in our Decision,
`
`the opinion of Petitioner’s expert, that the suction hole could be placed
`
`“anywhere” on Ressemann’s handle, does not establish adequately that one
`
`would have picked a particular location that would also enable the user to
`
`perform the claimed method. See Dec. 15. Even now, the allegations
`
`amount to little more than an opinion that one would have combined the
`
`references in a manner to allow performance of the claimed method step,
`
`without sufficient guidance as to how and why one of skill in the art would
`
`do so. Reh’g Req. 9–10. Nonetheless, it appears that one could provide a
`
`suction hole on Ressemann’s hub 22 without creating a suction hole through
`
`handle 130 at all because handle 130 is open on one side. Given that
`
`possibility, Petitioner’s mere references to a desire to maintain Ressemann’s
`
`7
`
`
`
`IPR2018-00268
`Patent 9,011,412 B2
`
`one-handed use does not suggest or dictate a specific location for the suction
`
`source through the handle that we could then evaluate. We maintain our
`
`prior position, that the Petition lacks adequate explanation and evidence to
`
`support the proposed obviousness ground based on Ressemann and
`
`Goldfarb.
`
`Arguments Regarding Makower4 and Jones5
`
`In our Decision, we denied institution with respect to Petitioner’s
`
`Ground 2, which alleged that claims 8–13 are unpatentable based on
`
`Makower and Jones under 35 U.S.C. § 103(a). Dec. 19–23. We found that
`
`the Petition did not explain adequately why it would have been obvious to
`
`one of skill in the art to add the thumb hole of Jones to Makower, “when
`
`Makower already allows for suction without a thumb hole.” Dec. 21. We
`
`noted that the figures Petitioner relied on in Makower did not allow for
`
`suction, and those that did included a guidewire running through the same
`
`lumen that would presumably be used for suction. Id. at 21–22. Without
`
`adequate explanation in the Petition, or from the accompanying expert
`
`reports, regarding the proposed placement of the suction hole, we were not
`
`able to sufficiently assess the workability of the proposed combination,
`
`given the existing Makower suction structure the Petition relied upon. Id. at
`
`21–23.
`
`Petitioner first argues that we were “misled by [Patent Owner] into
`
`applying a narrow reading of Jones to conclude that the hole must be placed
`
`at an inoperable location at the back of Makower’s device.” Reh’g Req. 12.
`
`
`
`4 U.S. Patent Pub. No. 2006/0063973 A1 issued to Makower et al.
`(“Makower”) (Ex. 1008).
`5 U.S. Patent No. 4,915,691 issued to Jones et al. (“Jones”) (Ex. 1009).
`
`8
`
`
`
`IPR2018-00268
`Patent 9,011,412 B2
`
`Petitioner contends that “other suitable locations” would have been
`
`investigated, and that one of ordinary skill in the art would not have placed
`
`the thumb hole in an inoperable location and “would have considered all the
`
`potential options for suction.” Id. at 12–13.
`
` Petitioner’s argument mischaracterizes our discussion of the thumb
`
`hole location. We did not find that one “must” locate the thumb hole where
`
`Jones locates its thumb hole in the proposed location. See Dec. 21–22.
`
`Instead, our discussion in that portion of the Decision emphasized the lack of
`
`explanation in the Petition itself regarding the location of the thumb hole in
`
`Petitioner’s proposed combination, and how it would work with Makower’s
`
`existing suction control structure. See id. Nothing in that discussion
`
`suggests that we required a thumb hole location that was the same as that
`
`Jones discloses. Moreover, Petitioner’s argument that one would explore
`
`“other suitable locations” and “all the potential options” merely underscores
`
`the problems with the Petition—it does not explain the options, choose one
`
`specific option that meets the claim limitations, and explain why one of
`
`ordinary skill in the art would have been motivated to choose that option.
`
`See Reh’g Req. 12–13. The Petition merely asserts that the correct option
`
`would be chosen to meet the claim limitations, without describing
`
`sufficiently the details of the proposed combination. See Pet. 52.
`
`
`
`Petitioner also argues that we overlooked Makower’s existing suction
`
`structure, which led us to “erroneously conclude that it was unclear how to
`
`make accommodations for a suction hole.” Reh’g Req. 13–14. Petitioner
`
`contends that we disregarded certain teachings of Makower showing the use
`
`of suction sidearm 812 in Figure 25, which allegedly establish that suction
`
`9
`
`
`
`IPR2018-00268
`Patent 9,011,412 B2
`
`could be applied to the sidearm and suction controlled using “a thumb hole
`
`through the sidewall.” Id. at 14 (citing Makower, ¶ 10, Fig. 25).
`
`
`
`We are not persuaded that we overlooked Makower’s existing suction
`
`control structure. The Petition relied on Makower’s suction structure in the
`
`context of the embodiment shown in Figure 27B, and relied on Makower’s
`
`description of applying suction through the lumen. See Pet. 44. The Petition
`
`also relied on Makower’s Figures 27C and 27D showing insertion of the
`
`guidewire through that same lumen. Id. at 45–46. We merely referred to
`
`those same embodiments when discussing the relevant Makower structure in
`
`our Decision. See Dec. 22. Petitioner cannot reasonably fault the Decision
`
`for addressing the same structures Petitioner relied on in the Petition. In
`
`addition, Petitioner contends we should have relied on sidearm 812 and
`
`Figure 25 in our Decision, but Petitioner did not rely on sidearem 812 or
`
`Figure 25 in the Petition, and does not direct us to any discussion of those
`
`teachings in the Petition. See Reh’g Req. 14; 37 C.F.R. § 42.71(d)
`
`(rehearing request “must 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. § 42.104(b)(5) (content of petition
`
`must include a statement identifying “the relevance of the evidence to the
`
`challenge raised, including identifying specific portions of the evidence that
`
`support the challenge”). We cannot have overlooked arguments or evidence
`
`never set forth in the Petition.
`
`
`
`Based on the foregoing, we maintain our prior position, that the
`
`Petition lacks adequate explanation and evidence to support the proposed
`
`obviousness ground based on Makower and Jones.
`
`10
`
`
`
`IPR2018-00268
`Patent 9,011,412 B2
`
`
`CONCLUSION
`
`We have considered Petitioner’s request for rehearing, but are not
`
`persuaded that we abused our discretion, or misapprehended or overlooked
`
`the arguments and evidence presented by Petitioner, in declining to institute
`
`an inter partes review.
`
`
`
`ORDER
`
`Accordingly, it is
`
`ORDERED that Petitioner’s request for rehearing of the Decision
`
`denying institution of an inter partes review of claims 8–13 of the ’412
`
`patent is denied.
`
`
`
`
`
`For PETITIONER:
`
`Lisa Adams
`ladams@mintz.com
`
`Peter Cuomo
`pjcuomo@mintz.com
`
`For PATENT OWNER:
`
`Ashley Moore
`amoore@mckoolsmith.com
`
`
`
`11
`
`
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