Trials@uspto.gov Paper No. 44
`571-272-7822 Entered: February 2, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MEDTRONIC, INC., and
`MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`ENDOTACH LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00100
`Patent 5,593,417
`____________
`
`Held: November 20, 2014
`____________
`
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J.
`FITZPATRICK, and HYUN J. JUNG, Administrative Patent Judges.
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JAMES S. BARUFKA, ESQ.
`
`
`NGAI ZHANG, ESQ.
`
`
`Pillsbury Winthrop Shaw Pittman LLP
`
`
`1650 Tysons Boulevard, 14th Floor
`
`
`McLean, Virginia 22102-4856
`
`
`
`571-272-7822 Entered: February 2, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MEDTRONIC, INC., and
`MEDTRONIC VASCULAR, INC.,
`Petitioner,
`
`v.
`
`ENDOTACH LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00100
`Patent 5,593,417
`____________
`
`Held: November 20, 2014
`____________
`
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J.
`FITZPATRICK, and HYUN J. JUNG, Administrative Patent Judges.
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JAMES S. BARUFKA, ESQ.
`
`
`NGAI ZHANG, ESQ.
`
`
`Pillsbury Winthrop Shaw Pittman LLP
`
`
`1650 Tysons Boulevard, 14th Floor
`
`
`McLean, Virginia 22102-4856
`
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`JONATHAN T. SUDER, ESQ.
`
`
`BRETT M. PINKUS, ESQ.
`
`
`Friedman, Suder & Cooke
`
`
`Tindall Square Warehouse No. 1
`
`
`604 East 4th Street, Suite 200
`
`
`Fort Worth, Texas 76102
`
`
`
`
`
`
`
`
`
`and
`
`MATTHEW C. PHILLIPS, ESQ.
`Renaissance IP Law Group LLP
`9600 SW Oak Street, Suite 560
`Portland, Oregon 97223
`
`
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`23
`
`24
`
`The above-entitled matter came on for hearing on Thursday,
`November 20, 2014, commencing at 10:00 a.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`
` P R O C E E D I N G S
`
`- - - - -
`
`JUDGE BONILLA: All right, we will go on the record.
`
`25
`
`This is a hearing for IPR2014-00100, between Petitioner, Medtronic,
`
`26
`
`Incorporated, and Medtronic Vascular, Incorporated, and the owner of
`
`27
`
`U.S. patent Number 5,593,417, Endotach, LLC.
`
`28
`
`We'll go through a few administrative matters before we
`
`29
`
`begin. As you can tell, Judge Fitzpatrick is joining us remotely from
`
`30
`
`Chicago. Please note that the camera is, right now is right up there, so
`
`
`
`
`
` 2
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`you want to keep in mind when you are speaking to him that you will
`
`to speak to the camera so that he can see you.
`
`Also, as a reminder, if you wish to discuss any
`
`demonstratives today, please make sure that you refer to the slide
`
`number, that will make it easier when we go through the transcript.
`
`As you know, per our order, each party has 45 minutes to
`
`present their argument. Because the Petitioner, Medtronic, has the
`
`burden to show unpatentability of the challenged claims, Petitioner
`
`will proceed first, followed by Patent Owner. Petitioner may reserve
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`some rebuttal time; however, you may only use that time to rebut
`
`11
`
`Patent Owner's arguments.
`
`12
`
`At this time, we would like counsel to introduce
`
`13
`
`themselves and who you have with you, beginning with Petitioner.
`
`14
`
`MR. BARUFKA: Petitioner, Jack Barufka, I'm counsel
`
`15
`
`for Medtronic, I have here with me Ngai Zhang, he's back-up counsel,
`
`16
`
`and with Medtronic we have David Ruschke and Ted Lopez.
`
`17
`
`18
`
`JUDGE BONILLA: For Patent Owner?
`
`MR. SUDER: Good morning, Your Honor, John Suder
`
`19
`
`along with Brett Pinkus, my partner, and with us is Matt Phillips, who
`
`20
`
`is co-counsel in this matter, and our client representative is Kristen
`
`21
`
`Wagner.
`
`22
`
`JUDGE BONILLA: Petitioner, would you like to reserve
`
`23
`
`some rebuttal time?
`
`24
`
`25
`
`
`
`
`
`MR. BARUFKA: Yes, Your Honor, 10 minutes, please.
`
`JUDGE BONILLA: All right, you may begin.
`
` 3
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MR. BARUFKA: May it please the Board, Jack Barufka
`
`for Petitioner Medtronic. This is a simple and straightforward case of
`
`unpatentability made much more complicated by Patent Owner's
`
`strained arguments. Simply stated, the '417 patent never should have
`
`issued. The '417 spec and file history make very clear that the only
`
`reason the '417 patent ever issued is because the examiner was led to
`
`believe that the claimed acutely angled projections defined over the
`
`prior art.
`
`Clearly that is not the case, as the sole claim at issue here
`
`10
`
`is clearly anticipated by Kornberg and rendered obvious over Rhodes
`
`11
`
`in view of Kornberg.
`
`12
`
`In my first five minutes I will plainly and simply explain
`
`13
`
`what this case is about, and I will provide very specific and clear
`
`14
`
`reasons as to exactly why I'm right. This is a case all about claim
`
`15
`
`interpretation. The sole patent claim at issue here has two parts to it,
`
`16
`
`the structural part and the results part, in the whereby clause appearing
`
`17
`
`at the end of the claim.
`
`18
`
`The structural part of the claim essentially calls for a
`
`19
`
`device that can be implemented on a vessel -- in a vessel. The device
`
`20
`
`has a tubular member with a plurality of projections and those
`
`21
`
`projections have a trailing surface extending at an acute angle. The
`
`22
`
`structural part of the claim also states that the projections are
`
`23
`
`"arranged for engagement" with the interior surface of the vessel, duct
`
`24
`
`or lumen.
`
`
`
`
`
` 4
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`So, I'm going to simply represent this by holding one of
`
`my hands straight up, and sticking one of my fingers downwardly,
`
`showing that the projection has a trailing surface at an acute angle.
`
`And the projection is sticking out so as to be arranged for engagement
`
`or available for engagement. That is the structural part of the claim.
`
`Now I get to the whereupon clause, where I put the
`
`device in an environment after it has been implanted in a patient. So,
`
`now I'm holding up my second hand, which is essentially the vessel,
`
`and that's the surface of the vessel. So, I'm holding up both hands,
`
`10
`
`right now I'm holding them against one another, palms together, the
`
`11
`
`projection from the tubular device, hand, is projecting into or against
`
`12
`
`the other hand, or the surface of the vessel.
`
`13
`
`The whereupon clause says clearly that the force applied
`
`14
`
`to the tubular member by a fluid flowing through the passageway in
`
`15
`
`the device produces on each projection a force that causes the acute
`
`16
`
`surface on the projection to tightly engage the lumen surface to
`
`17
`
`fixedly secure it in place.
`
`18
`
`So, now my device hand, and its rejection, is being
`
`19
`
`forced against the vessel hand. This whereupon clause merely states
`
`20
`
`that the inherent result is that the device will experience -- it's
`
`21
`
`basically what the device will experience after implantation. Blood
`
`22
`
`forces will inherently be applied downwardly and radially so that the
`
`23
`
`angle of projection trailing surface is tightly engaged with the vessel
`
`24
`
`so it is secured. The claim speaks nothing as to whether any
`
`
`
`
`
` 5
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`penetration of the projection occurs, nor how much penetration would
`
`occur if it did occur.
`
`The claim also speaks nothing as to when the tight
`
`engagement occurs, only that it occurs as a result of blood force acting
`
`on the projections. This interpretation is entirely consistent with the
`
`file history and specification. And without proper interpretation and
`
`understanding of the claim, there's no question that this claim is
`
`unpatentable.
`
`You will hear the Patent Owner make numerous
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`arguments, none of which are supported by the '417 specification, but
`
`11
`
`only by expert testimony, and you will hear words like "active" and
`
`12
`
`"passive" fixation, which have no basis in the specification. And then
`
`13
`
`you will hear the Patent Owner attempt to construe the claim terms in
`
`14
`
`some form of method of implanting a known device, whereas the
`
`15
`
`claims here are to a device. And that claim device is well known in
`
`16
`
`the prior art.
`
`17
`
`It is a fundamental axiom of patent law that a known
`
`18
`
`device cannot be patented based upon a new method of using it. That
`
`19
`
`would require a method patent.
`
`20
`
`JUDGE BONILLA: Now, as you discussed in your reply
`
`21
`
`that the whereupon clause in claim 1 is not a limitation because it just
`
`22
`
`recites an intended use.
`
`23
`
`24
`
`MR. BARUFKA: Yes, Your Honor.
`
`JUDGE BONILLA: Is that something you talked about
`
`25
`
`in your petition or is it raised for the first time in the reply?
`
`
`
`
`
` 6
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MR. BARUFKA: We did not raise it in our initial
`
`petition explicitly in those terms, but what we did say, Your Honor,
`
`clearly is that we believe that the limitations contained in that
`
`whereupon clause were inherent, and the reason why the whereupon
`
`clause would not be a limitation is because when everything in that
`
`whereupon clause --
`
`JUDGE BONILLA: Did you say it was inherent in what
`
`was disclosed in the prior art or what was disclosed in the claim itself?
`
`MR. BARUFKA: We believe it's the same, because it's
`
`10
`
`an inherent principle of nature. What's inherent in the device would
`
`11
`
`necessarily be -- in the prior art would necessarily be inherent in the
`
`12
`
`patent as well, Your Honor. That's a principle of inherency. But there
`
`13
`
`is no method claim at issue here and this is not a method patent.
`
`14
`
`Turning to the '417 patent as shown in Exhibit 1001,
`
`15
`
`slide 1, the background of the invention makes clear that the believed
`
`16
`
`novelty of the '417 patent was an improvement of the means used in
`
`17
`
`the prior art '154 patent. As stated in this exhibit, while the '154
`
`18
`
`anchors were effective for their intended purpose, they, those anchors,
`
`19
`
`were amenable to improvement. As shown in Exhibit 1001, slide 2,
`
`20
`
`the '417 patent also makes clear that the patented device is constructed
`
`21
`
`in accordance with the teachings of the '154 patent, except for the
`
`22
`
`anchoring means used.
`
`23
`
`What was believed to be different about the anchoring
`
`24
`
`means of projections of the '417 patent? Exhibit 1001, slide 3, shows
`
`25
`
`that it was only that they were oriented to extend at a subacute angle,
`
`
`
`
`
` 7
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`size and shape were not meaningful as they can take numerous other
`
`sizes and shapes, so long as they're acute.
`
`The file history shown in Exhibit 1002, slide 4,
`
`emphasizes this point, and is very clear about it. The only argument
`
`made by the applicant during prosecution was that although the '154
`
`patent disclosed a similar device, with anchoring means, it did not
`
`disclose the anchoring means now being claimed.
`
`Specifically, as illustrated in Exhibit 1002, slide 5, the
`
`shape of the projections with the trailing surface oriented to be acute
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`to the direction of blood flow was the only point argued to be novel.
`
`11
`
`Importantly, it was also pointed out that this specific acute angle, or
`
`12
`
`orientation, was what enabled the projections to "tightly engage the
`
`13
`
`vessel wall under the force of blood to perform the results of the
`
`14
`
`whereupon clause."
`
`15
`
`This case begins and ends with this Exhibit 1002. It
`
`16
`
`provides clear intrinsic evidence that succinctly sums up the issues of
`
`17
`
`the case.
`
`18
`
`JUDGE BONILLA: Can we talk a little bit about the
`
`19
`
`specification, the Patent Owner points us to, and it's also discussed in
`
`20
`
`the district court litigation, there's a part of the specification at column
`
`21
`
`3, lines 53 through 58, that says it's an object of the invention to
`
`22
`
`provide an anchoring means that does not pose a significant threat of
`
`23
`
`perforating the tissue of the vessel.
`
`
`
`
`
` 8
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`Is that basically telling us the entire object, the whole
`
`point of this thing is that the anchoring means don't perforate the
`
`vessel?
`
`MR. BARUFKA: Your Honor, that just says that it does
`
`not pose a significant risk of perforating, but nevertheless, recognizes
`
`that a risk is possible, as there are in all of these devices, as expressly
`
`testified to by Patent Owner's expert, and I will talk about that very
`
`specifically in detail.
`
`So, as pointed out in the prosecution, the preferentially
`
`10
`
`oriented angle is the structure recited in the claim that brings about the
`
`11
`
`desired result, and, make no mistake, is directed to a desired result and
`
`12
`
`not some functional attribute or hidden structure or difference.
`
`13
`
`As such, the whereupon clause is not a limitation because
`
`14
`
`it states merely the result of the angle of projections and adds nothing
`
`15
`
`to the substance of the claim. And this slide shows that.
`
`16
`
`JUDGE BONILLA: How do you respond to the
`
`17
`
`argument that it does add something because it defines a little bit of
`
`18
`
`the structure and defines it to be tightly engaged, i.e. it doesn't
`
`19
`
`perforate the vessel?
`
`20
`
`MR. BARUFKA: The only structure in the claim or even
`
`21
`
`the specification, Your Honor, is that the projections are at an angle,
`
`22
`
`at an acute angle. There's no other structure at all in the specification
`
`23
`
`that provides, or -- and particularly in the claim, that would enable
`
`24
`
`that.
`
`
`
`
`
` 9
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`The only thing that does that, Your Honor, is how the
`
`practitioner using the device would actually employ it. Or other
`
`factors and other variables, but nothing relating to the structure of the
`
`device. The Patent Owner has not pointed to anything structurally,
`
`other than its acute angle that appears in the claim.
`
`If there were ever a set of facts where this rule of law
`
`should apply, this is it. Aside from the angle, there's no other
`
`structure or functional attribute disclosed in the specification to give
`
`the desired result, and thus the limitation should not be given
`
`10
`
`patentable weight.
`
`11
`
`Thus the cases are very simple because Kornberg teaches
`
`12
`
`each and every limitation of claim 1. In fact, it actually teaches the
`
`13
`
`specific ranges for the angle whereas the patent at issue doesn't -- is
`
`14
`
`silent as to that point. In addition, Rhodes '154 teaches each and
`
`15
`
`every limitation but is silent as to the specific angle measurement.
`
`16
`
`However, the claimed acute angle is only one of three options, acute,
`
`17
`
`obtuse and perpendicular, and obvious to try, as admitted by Patent
`
`18
`
`Owner's own expert.
`
`19
`
`Moreover, it's clearly obvious over Kornberg, which
`
`20
`
`expressly teaches the angle.
`
`21
`
`Your Honor, with the whereupon clause not needing
`
`22
`
`construction, the case is essentially over, however, even entertaining
`
`23
`
`Patent Owner's view of the whereupon clause as a limitation, the
`
`24
`
`claim is still unpatentable because the '417 patent does not claim or
`
`
`
`
`
` 10
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`even disclose anything that is different from the prior art, in the
`
`patentable sense.
`
`Faced with this, the contention that the whereupon clause
`
`somehow salvages patentability, the Patent Owner takes a simple,
`
`unsupported interpretation of the term "tightly engaged" rather than
`
`giving it its plain and ordinary meaning, which requires no special
`
`definition.
`
`Specifically, the Patent Owner expert offered two
`
`definitions of tightly engaged, one requires a very specific
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`interpretation imposing various timing and penetration depth
`
`11
`
`requirements found nowhere in the specification, and the other
`
`12
`
`provides his view under a plain and ordinary meaning where it is
`
`13
`
`"very securely attached." Exhibit 1014, slide 7 shows that.
`
`14
`
`When asked to distinguish between the term "engaged"
`
`15
`
`and "tightly engaged," the Patent Owner expert explained that
`
`16
`
`engaged would mean the device is in contact with a vessel wall, while
`
`17
`
`tightly engaged meant it was very securely attached to the vessel wall
`
`18
`
`and even more unlikely to move. This is in spite of the fact that
`
`19
`
`there's no support in the specification that the term "engaged" means
`
`20
`
`contact, particularly in view of the fact that the claim says that the
`
`21
`
`projections are simply arranged for engagement, and not even
`
`22
`
`engaged or touching.
`
`23
`
`In addition, there's no explicit support for the expert's
`
`24
`
`definition of "very securely attached."
`
`
`
`
`
` 11
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`JUDGE BONILLA: What are you suggesting the plain
`
`and ordinary meaning of "engage" is? Not that it --
`
`MR. BARUFKA: We believe that it should be given its
`
`plain and ordinary meaning and not need additional construction. It's
`
`very tightly engaged, under the force of blood flow.
`
`JUDGE BONILLA: Meaning it does perforate?
`
`MR. BARUFKA: It does not need to perforate, the depth
`
`of penetration is not relevant to this claim because the specification
`
`clearly says that it need not perforate, it can perforate, and -- well, we
`
`10
`
`should say there's two different things, penetrate, it need not even
`
`11
`
`penetrate, it can penetrate to some extent, if desired, and has a risk,
`
`12
`
`some risk of perforation. Under the broadest reasonable
`
`13
`
`interpretation, the depth or extent of penetration or perforation cannot
`
`14
`
`be imposed as a limitation on this claim.
`
`15
`
`JUDGE BONILLA: Well, we interpret claims based on
`
`16
`
`the ordinary meaning in view of the specification, the specification
`
`17
`
`here has this bit that says that objects of the invention is that it doesn't
`
`18
`
`pose a risk of perforating the tissue, and then it goes through a bunch
`
`19
`
`of examples of how it could work, and only go through the internal
`
`20
`
`layer versus the outside layer.
`
`21
`
`Is there any teaching in the specification where they do
`
`22
`
`show an example where it would pierce a hole through the vessel?
`
`23
`
`MR. BARUFKA: Your Honor, it just doesn't say that it
`
`24
`
`would not perforate, it says that it reduces the risk that it would
`
`25
`
`perforate. And the projections, for example, in Kornberg, are the
`
`
`
`
`
` 12
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`exact same size in several embodiments as that here in the '417 patent,
`
`and so to the extent that one would say that the projections in the '417
`
`patent would not perforate, the same would be true for the same
`
`device in Kornberg. It would be highly dependent upon how the
`
`practitioner operated it, and natural phenomenon within the body.
`
`JUDGE BONILLA: Well, Kornberg clearly does show
`
`one that's piercing through, right?
`
`MR. BARUFKA: It clearly does, Your Honor, yes, and
`
`it also has several embodiments that have projection heights that are
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`squarely within the range, clearly and squarely within the range of the
`
`11
`
`heights used in the '417 patent, and even projections that are below
`
`12
`
`that.
`
`13
`
`JUDGE BONILLA: Well, let me ask you a question.
`
`14
`
`The parties seem to agree that the hook 14 is 2 to 8 millimeters in
`
`15
`
`Kornberg, but when I read the sentence in Kornberg, it says the barb
`
`16
`
`15 at the end of the hook 14 is only a fraction of the length of the
`
`17
`
`hook, typically 2 to 8 millimeters. I was wondering if the barb 15
`
`18
`
`itself is the thing that is 2 to 8 millimeters.
`
`19
`
`MR. BARUFKA: The experts believe that it was the
`
`20
`
`hook that was the 2 to 8, that it was the 2 to 8 millimeters and the barb
`
`21
`
`was a small fraction of that, that was the reasonable way of construing
`
`22
`
`it.
`
`23
`
`24
`
`25
`
`record.
`
`
`
`
`
`JUDGE BONILLA: And there was in the record?
`
`MR. BARUFKA: Yes, Your Honor, that is on the
`
` 13
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`JUDGE BONILLA: Now, Patent Owner argues that
`
`Kornberg isn't specific enough in terms of the lengths and the angles
`
`to lead one to pick one that wouldn't perforate in light of everything
`
`that's taught in Kornberg, which clearly talks about perforating and
`
`having this barb that protects it from going into organs and things like
`
`that. How do you respond to that?
`
`MR. BARUFKA: Your Honor, there are clear
`
`embodiments, several of them that fall squarely within the range, and,
`
`in fact, if you were to take Kornberg's expressly disclosed angle of 10
`
`10
`
`degrees, irrespective of the length, the maximum height it could
`
`11
`
`achieve would be 1.389 millimeters, which is --
`
`12
`
`JUDGE BONILLA: So, even if it were 8 millimeters at
`
`13
`
`the 10 degrees, it would still be too short?
`
`14
`
`MR. BARUFKA: Correct. Correct, Your Honor. And,
`
`15
`
`indeed, the Patent Owner does not even argue that Kornberg fails to
`
`16
`
`disclose any structural limitations and incorporates exclusively on the
`
`17
`
`whereupon clause. And specifically, the blood forces in Kornberg
`
`18
`
`will cause its annular surfaces to be tightly engaged to the same extent
`
`19
`
`as it would in the '417 patent.
`
`20
`
`JUDGE BONILLA: Now, they make the argument that
`
`21
`
`when you deploy this thing in Kornberg that it's fully engaged, so
`
`22
`
`there's nothing about the blood that's making it -- helping it engage.
`
`23
`
`How do you respond to that?
`
`24
`
`MR. BARUFKA: Your Honor, Kornberg does not say
`
`25
`
`that in the first instance. Secondly, that would be purely as a function
`
`
`
`
`
` 14
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`of what the doctor would do when deciding to employ it in place.
`
`Applying a force to that device and if he's careful enough or doesn't
`
`want to perforate, he doesn't need to.
`
`The same thing would be true in the '417, because
`
`structurally, they're the same. There's nothing in the '417 patent that
`
`says how you would avoid perforation if you were to take that '417
`
`structure and a doctor would get behind it, and expand it very hard
`
`and very radially outward, it, too, would perforate. It would have to,
`
`if in the same conditions as the Kornberg situation, where you would
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`have the same height angles.
`
`11
`
`JUDGE BONILLA: Well, the thing I'm trying to get at is
`
`12
`
`something in the whereupon clause where it talks about the force
`
`13
`
`applied to the member by the fluid, the blood flow, produces a force
`
`14
`
`to cause at least one of the surface to tightly engage with the interior.
`
`15
`
`So, it makes it sound like it's the blood force itself that's causing it to
`
`16
`
`tightly engage, as opposed to the doctor going in and manually
`
`17
`
`making it happen. And that's what I'm trying to figure out where that
`
`18
`
`is in Kornberg.
`
`19
`
`MR. BARUFKA: Your Honor, so the term "tightly
`
`20
`
`engaged" means that -- that limitation is basically talking about the
`
`21
`
`force of the blood, certainly the force of the blood --
`
`22
`
`JUDGE BONILLA: That the force is causing it to
`
`23
`
`engage?
`
`24
`
`MR. BARUFKA: The force is causing it to tightly
`
`25
`
`engage, but the claim does not say that somehow it's engaged and then
`
`
`
`
`
` 15
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`it's tightly engaged. The claim does not say that. The claim says that
`
`the projection is tightly engaged as a result of the blood forces acting
`
`on it, through the angle of the hook, but there's nothing -- but there's
`
`nothing there that says that it has to cause some sort of movement or
`
`something different to happen. It's open ended.
`
`JUDGE BONILLA: So, it is your position that it does
`
`both, the doctor and the blood flow cause it to engage?
`
`MR. BARUFKA: There are -- well, the claim is directed
`
`to the force of blood, acting, right, and the force of blood can act on
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`that, whether we're out here, whether we're fully penetrated, the force
`
`11
`
`of blood is still causing that tight engagement. There's no --
`
`12
`
`JUDGE BONILLA: Well, they're suggesting that the
`
`13
`
`doctor makes it tightly engaged and then it doesn't move beyond that
`
`14
`
`when the blood flow gets there.
`
`15
`
`MR. BARUFKA: That -- it would be possible, it would
`
`16
`
`be possible, I would imagine, that a doctor could decide to somehow
`
`17
`
`expand it so much that it wouldn't move any further, but the same
`
`18
`
`would be exactly true with the '417 patent. That's -- Your Honor, so
`
`19
`
`they're characterizing it in terms of a method of how a doctor would
`
`20
`
`use it, and we believe that that's inappropriate when the structures are
`
`21
`
`exactly the same.
`
`22
`
`JUDGE BONILLA: Well, one of the things you're
`
`23
`
`arguing in your petition is that this is -- was inherently present in
`
`24
`
`Kornberg. So, it means it needs to necessarily be there, not that it
`
`25
`
`might be there.
`
`
`
`
`
` 16
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`MR. BARUFKA: That's correct.
`
`JUDGE BONILLA: So, I'm trying to figure out how
`
`Kornberg necessarily discloses that the blood flow is what's causing it
`
`to be tightly engaged, even if it's only part of the way.
`
`MR. BARUFKA: Because the blood flow -- because the
`
`tight engagement just means that it's tightly in this relationship, and
`
`the blood flow -- imagine if the blood flow weren't there, right, then I
`
`could -- much easily -- more easily take this away, right? The blood
`
`flow is forcing it, it's maintaining force so that it's tightly engaged. If
`
`10
`
`I took it away, it wouldn't be that way. It's kind of like thinking about
`
`11
`
`a picture hanger in a wall, it can be -- it can be all the way through the
`
`12
`
`wall. Now, if -- you know, penetrating through the wall.
`
`13
`
`If I put a very heavy, you know, picture on there, now
`
`14
`
`that is going to be acting like a force, like a blood force, pushing it
`
`15
`
`tightly into the wall, under that force. It doesn't matter as to what the
`
`16
`
`level of penetration is, even if it's punctured, it's still going to be
`
`17
`
`applied inherently to Kornberg, whether the doctor penetrates it fully
`
`18
`
`or does not, and, Your Honor, Kornberg does not say that it must
`
`19
`
`penetrate. In instances in Kornberg it says that the hook is engaged in
`
`20
`
`the tissue, certainly it discloses that it can be perforated, but it doesn't
`
`21
`
`require it anywhere. And, in fact, it provides a sealing ring in the
`
`22
`
`instance in which perforation does occur, to help mitigate whatever
`
`23
`
`damage might happen, but also contemplates that the sealing ring can
`
`24
`
`be omitted, and the experts testified that that is an indication that the
`
`25
`
`perforation -- complete perforation is not required in Kornberg.
`
`
`
`
`
` 17
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`JUDGE BONILLA: Can we do something just to make
`
`sure that we're all on the same page? In Kornberg, I want to make
`
`sure that we all understand where exactly the leading portion in versus
`
`the trailing portion and where the one surface preferentially oriented
`
`to extend an acute angle is in the Kornberg device.
`
`MR. BARUFKA: So, Your Honor, this entire back
`
`surface here.
`
`JUDGE BONILLA: So, the entire --
`
`MR. BARUFKA: Correct.
`
`JUDGE FITZPATRICK: Are you looking at figure 5?
`
`MR. BARUFKA: I'm sorry, figure 2, Your Honor.
`
`JUDGE FITZPATRICK: Figure 2? Thank you.
`
`MR. BARUFKA: Yes, this entire back surface here
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`would be that trailing surface.
`
`15
`
`JUDGE BONILLA: So, the entire surface is the one
`
`16
`
`surface? Or could part of that be the one surface?
`
`17
`
`MR. BARUFKA: It's the entire surface. Can I see the
`
`18
`
`back slides? This was -- in explaining that, the Patent Owner's expert
`
`19
`
`showed what that would look like.
`
`20
`
`JUDGE FITZPATRICK: Mr. Barufka, can I ask you to
`
`21
`
`refrain from arguing until you're back at the podium?
`
`22
`
`23
`
`24
`
`MR. BARUFKA: Okay, I'm sorry.
`
`JUDGE BONILLA: And which slide is this?
`
`MR. BARUFKA: This is slide 36. You will see, Your
`
`25
`
`Honor, the Patent Owner's expert labeled EE as the trailing surface
`
`
`
`
`
` 18
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`and highlighted that, and it's the full -- he highlighted it so it's the full
`
`extent of that surface. That is what the trailing surface is.
`
`JUDGE BONILLA: And just to be clear, the barbs 15
`
`are not part of that trailing surface?
`
`MR. BARUFKA: Correct, Your Honor.
`
`JUDGE BONILLA: And then just so we're clear, the
`
`leading surface is just the other side?
`
`MR. BARUFKA: Correct, Your Honor. And that
`
`trailing surface will always be engaged with the wall, that trailing
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`surface.
`
`11
`
`JUDGE BONILLA: And your position is that there's no
`
`12
`
`dispute in the record as to what the alleged trailing surface is?
`
`13
`
`14
`
`MR. BARUFKA: That's correct, Your Honor.
`
`JUDGE BONILLA: Now, let me ask another question.
`
`15
`
`In claim 1, it talks about -- it talks about the trailing portion located
`
`16
`
`downstream, including at least one surface preferentially oriented to
`
`17
`
`extend at an acute angle. What does the term "preferentially" mean in
`
`18
`
`your --
`
`19
`
`MR. BARUFKA: Your Honor, it's ambiguous, as far as
`
`20
`
`I'm concerned.
`
`21
`
`JUDGE BONILLA: Does that mean it's optional, or we
`
`22
`
`don't know?
`
`23
`
`MR. BARUFKA: It may be. I think that's a question
`
`24
`
`that we may need to address at some point, you know, if there's a 112
`
`25
`
`issue.
`
`
`
`
`
` 19
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`JUDGE BONILLA: Well, what's the plain and ordinary
`
`meaning? The plain and ordinary meaning would be optional, don't
`
`you think?
`
`MR. BARUFKA: Your Honor, we would suggest that
`
`that term is ambiguous and I think it -- maybe it's referring to the
`
`particular type of angle. It's -- I couldn't answer that question.
`
`JUDGE BONILLA: Okay.
`
`MR. BARUFKA: I think it's an ambiguity and there's no
`
`definition in the specification, there was no testimony from the Patent
`
`10
`
`Owner on that.
`
`11
`
`Let's go to slide 11. Expert Rowe testified that where the
`
`12
`
`Kornberg's anchors are partially penetrated or whether they perforate
`
`13
`
`the vessel, the force of blood will inherently drive the anchors to any
`
`14
`
`extent that would be the same as in the '417 patent.
`
`15
`
`This is not surprising, slide 12, as the driving force of
`
`16
`
`blood acting on the projections was a well-known phenomenon, well
`
`17
`
`before the '417 patent was filed. For example, Chuter reference
`
`18
`
`Exhibit 2009, slide 12, discloses a graph in which the barb tips will
`
`19
`
`become embedded in the wall through the driving action of spring
`
`20
`
`assembly 6 and pressure created by the flow of blood through the
`
`21
`
`graft.
`
`22
`
`JUDGE: Do you talk about these in your petition or are
`
`23
`
`you raising this for the first time in your reply?
`
`24
`
`MR. BARUFKA: These were raised by the Patent
`
`25
`
`Owner. Specifically. Chuter also speaks to the downward acute angle
`
`
`
`
`
` 20
`
`
`
`IPR2014-00100
`Patent 5,593,417
`
`of its tips would provide a more secure anchor in the direction of
`
`blood flow. Thus, Chuter clearly evidences, outside of any expert
`
`testimony that this phenomenon was well known and inherent and
`
`used in industry before the '417 patent.
`
`Similarly, Lazarus, Exhibit 2010, discloses acute staples
`
`or projections between 30 degrees and 60 degrees and indicates that
`
`the well-known inherent blood forces acting on a truly angled
`
`projection will drive them into vessels and hold them in place. Thus,
`
`Kornberg clearly anticipates "even if the claim is narrowly construed
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`in a manner unsupported by the specification" to require some sort of
`
`11
`
`movement because it will inherently achieve whatever essentially the
`
`12
`
`same structure of the '417 patent has.
`
`13
`
`Moreover, claim 1 is clearly obvious over Rhodes '154 in
`
`14
`
`view of Kornberg. As noted previously, the '154 device is identical to
`
`15
`
`the '417 except that it is silent as to the specific angle, and that angle is
`
`16
`
`well --
`
`17
`
`JUDGE BONILLA: Can I ask you a question about
`
`18
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
