Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 15
`Entered: March 25, 2014
`
`
`
`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
`____________
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 15
`Entered: March 25, 2014
`
`
`
`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
`____________
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`I.
`
`
`
`INTRODUCTION
`A. Background
`Petitioner Medtronic, Inc. and Medtronic Vascular, Inc. (“Medtronic”) filed
`a corrected Petition (Paper 5, “Pet.”) to institute an inter partes review of claims 1,
`2, 9, 10, and 13 of U.S. Patent No. 5,593,417 (Ex. 1001, “the ’417 patent”),
`pursuant to 35 U.S.C. § 311. Patent Owner Endotach LLC (“Endotach”) did not
`file a Preliminary Response. We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides:
`THRESHOLD—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`For the reasons set forth below, we conclude that Medtronic has shown that,
`under 35 U.S.C. § 314(a), there is a reasonable likelihood that it would prevail with
`respect to at least one of the challenged claims. We institute an inter partes review
`of claims 1, 2, 9, 10, and 13 of the ’417 patent.
`B. Related Matters
`Medtronic indicates that Endotach asserted the ’417 patent against it in
`Endotach LLC v. Medtronic, Inc. and Medtronic Vascular, Inc., No. 5:13-cv-
`03292-EJD (N.D. Cal.). Pet. 1. In its Mandatory Notices, Endotach identifies two
`other cases that may affect or be affected by this proceeding: Endotach LLC v.
`Cook Medical Inc., No. 1:13-cv-1135 (S.D. Ind.) and Endotach LLC v. W.L. Gore
`& Associates, Inc., No. 3:12-cv-00308 (N.D. Fla.). Paper 10, 2-3.
`
` 2
`
`
`
`
`
`
`
`
`
`Case IPPR2014-00100
`
`
`
`
`Patent 55,593,417
`
`
`C T
`
`
`
`C. The ’4177 Patent (EEx. 1001)
`
`
`
`
`
`
`The ’417 paatent relatees to an intraluminal mmedical deevice, suchh as an
`Ex. 1001,
`
`
`endovasscular grafft or stent.
`3:45-48.
`
`
`The patentt discussess U.S. Pat.
`No.
`
`
`
`5,122,154 (Ex. 10008, “Rhoddes ’154”), also relatiing to an inntralumina
`
`l graft. Exx.
`
`
`
`1001, 2
`
`
`
`
`
`
`
`:64-3:27. The ’417 ppatent statees the preseent graft ddevice “is cconstructedd in
`
`
`
`
`
`
`accordaance with thhe teachinggs of my aaforementiooned patennt [Rhodes
`
`’154], exccept
`i.e.,
`
`
`
`
`
`
`
`for the mmeans for fixedly holding it in place withhin the vesssel, duct, oor lumen,”
`
`the “ancchoring meeans.” Id.
`at 5:10-17
`
`.
`
`
`
`
`
`
`
`
`FFigures 2, 33, 7, and 8 of the ’4177 patent arre reproducced below.
`
`
`
`
`
`
`
`
`
`
`
`
`
` Id. at 4:4
`
`7-52. Figuure
`
`
`
`
`
`Figure 22 depicts aa portion off an endovaascular byppass graft.
`th
`
`
`
`
`
`
`
`3 depictts an enlargged view oof the portiion in Figuure 2 designnated as “FFIG. 3” wi
`
`
`
`
`
`
`broken lines. Id. aat 4:53-55.. Figure 7 depicts annother embbodiment o
`
`f a graft. IId.
`
` 3
`
`
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`at 4:65-67. Figure 8 depicts an enlarged sectional view taken along line 8-8 of
`Figure 7. Id. at 5:1-2.
`In Figure 2, the graft comprises tubular member 24 having a plurality of
`expandable, ring-like, stent members 26. Id. at 5:54-59. Each stent member 26
`comprises a plurality of links 30, where each link is joined to another link by joint
`32. Id. at 6:21-32. “In order to help hold or secure the graft in position in the
`artery (or lumen or duct) once the graft has been expanded,” the graft includes
`anchoring means comprising projections 40. Id. at 7:9-13. Figure 3 shows details
`of an embodiment of “arrow head” projections 40 on joint 32. Id. at 7:60-63. Each
`projection “includes a leading edge 42 defining the ‘tip’ of the ‘arrow-head,’”
`where “leading edge 42 extends upward at an acute angle to the exterior surface of
`the stent and terminates at the top surface 44 of the projection.” Id. at 7:63-67; see
`also Fig. 4. The projections also include trailing edges 48, 50, and 52, each of
`which “inclines upward in the direction of the blood flow to terminate at the top
`surface 44.” Id. at 8:2-6.
`In another embodiment, shown in Figures 7 and 8, projections 70 are
`“wedge” shaped. Id. at 8:54-56. Leading surface 72 defines “the ‘front face’ of
`the ‘wedge,’” and “extends upward at an acute angle to the exterior surface of the
`stent and terminates at the top surface 74.” Id. at 8:56-58. The projections also
`include “trailing surface 76 which inclines upward in the direction of the blood
`flow to terminate at the top surface 74 in a penetration edge 78,” and “are
`preferentially oriented at an acute angle to the direction of blood flow.” Id. at
`8:58-67.
`D. Illustrative Claim
`Claim 1, the only challenged independent claim, is reproduced below.
`
` 4
`
`
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`
`1. An intraluminal medical device for securement within a vessel, duct, or
`lumen of a living being, the vessel, duct, or lumen having an interior surface,
`said device comprising a tubular member and anchoring means,
`said tubular member having a passageway extending therethrough and
`an outer periphery, said tubular member being arranged to have a body fluid
`flow through said passageway in a first direction when said device is located
`within the vessel, duct, or lumen, whereupon a force is applied to said
`tubular-member,
`said anchoring means being located adjacent said outer periphery of
`said tubular member and comprising plural projections arranged for
`engagement with the interior surface of the vessel, duct, or lumen,
`each of said projections having a leading portion located in the
`upstream direction of the fluid flow and a trailing portion located in the
`downstream direction thereof, said trailing portion including at least one
`surface preferentially oriented to extend at an acute angle to the first
`direction,
`whereupon the force applied to said tubular member by the fluid
`flowing through said passageway produces on each of said projections a
`force component to cause said at least one surface to tightly engage the
`interior surface of the vessel, duct, or lumen to fixedly secure said device in
`place.
`
`Id. at 9:23-45 (paragraph indentation and emphasis added).
`E. Prior Art Relied Upon
`Medtronic relies upon the following prior art references:
`Lazarus, U.S. Pat. No. 5,104,399, issued Apr. 14, 1992 (“Lazarus”) (Ex. 1005);
`
`Kornberg, U.S. Pat. No. 4,562,596, issued Jan. 7, 1986 (“Kornberg”) (Ex.1006);
`
`Marin, U.S. Pat. No. 5,397,355, issued Mar. 14, 1995 (“Marin”) (Ex. 1007); and
`
`Rhodes, U.S. Pat. No. 5,122,154, issued Jun. 16, 1992 (“Rhodes ’154”) (Ex.
`1008).
`
` 5
`
`
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`F. Alleged Grounds of Unpatentability
`Medtronic contends that the challenged claims of the ’417 patent are
`unpatentable under 35 U.S.C. § 102 and § 103 based on the following grounds.
`Pet. 8.
`
`
`
`Reference(s)
`
`Lazarus
`
`Kornberg
`
`Marin
`
`Rhodes ’154 and Lazarus
`
`Rhodes ’154 and Kornberg
`
`Rhodes ’154 and Marin
`
`II.
`
`Basis
`
`§ 102
`
`§ 102
`
`§ 102
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claims Challenged
`
`1, 2, 9, 10, and 13
`
`1, 2, 9, 10, and 13
`
`1, 2, 9, 10, and 13
`
`1, 2, 9, 10, and 13
`
`1, 2, 9, 10, and 13
`
`1, 2, 9, 10, and 13
`
`ANALYSIS
`A. Claim Construction
`Consistent with the statute and legislative history of the America Invents
`Act, the Board interprets claims using the “broadest reasonable construction in
`light of the specification of the patent in which [they] appear[].” 37 C.F.R.
`§ 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,766 (Aug. 14, 2012). There is a “heavy presumption” that a claim term carries
`its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288
`F.3d 1359, 1366 (Fed. Cir. 2002).
`Medtronic offers express constructions for the terms “projection,” “leading
`portion,” and “trailing portion,” recited in claim 1, as well as “stent” recited in
`claims 9, 10, and 13. Pet. 9-12. Those terms carry their ordinary and customary
`meaning and do not need further construction at this stage of the proceeding.
`
` 6
`
`
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`B. Anticipation by Kornberg
`Medtronic argues that Kornberg anticipates claims 1, 2, 9, 10, and 13. Pet.
`8, 19-22.
`
`
`
`1. Kornberg (Ex. 1006)
`Kornberg describes a tubular graft comprising “a plurality of struts or stays
`equipped with hooks for rapid and secure attachment within the desired location of
`the damaged artery.” Ex. 1006, 2:15-19. Figures 1 and 2 of Kornberg are
`reproduced below.
`
`
`
`
`Figure 1 depicts an aortic bifurcation graft equipped with a circumferential row of
`hooks 14 and a plurality of longitudinal struts 12. Id. at 2:23-27. Figure 2 depicts
`an enlarged view of the upper end of a single strut 12 with hook 14. Id. at 2:28-29.
`Kornberg states that graft 10 “must have support along its length, so that the
`blood flow does not dislodge it,” but the graft “is sufficiently flexible to be capable
`of conforming to the interior contour of the wall portion of the artery into which it
`is inserted.” Id. at 2:56-62. Graft 10 “is a generally cylindrical, hollow, bifurcated
`sleeve with longitudinal supporting and reinforcing members called struts 12
`
` 7
`
`
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`running along the major axis of the cylindrical sleeve.” Id. at 2:62-65. For
`instance, as shown in Figure 1, struts 12 run along the length of legs (10A and
`10B) of graft 10 and “assure proper orientation of the graft within the artery.” Id.
`at 2:62-68; 4:17-20. As described in Kornberg, “the number of circumferential
`located strengthening struts or ribs 12 attached or formed in the wall of the graft
`may vary from a minimum of four up to twelve or more, preferably eight.” Id. at
`3:1-5. Graft 10 also includes flexible ring 16 at the upper end of the graft. Id. at
`4:6-9.
`Hooks 14 are located at the upper end of each strut 12, and a “row of hooks
`14 forms a ring around the outer circumference of graft 10 and are oriented
`downwardly at an angle of about 10º˗45º C. with respect to the vertical.” Id. at
`3:60-65; see also 4:28-30 (stating that hook 14 is at an angle of about 30º in Figure
`2). As described in Kornberg, “[e]ach hook 14 has a barb 15 located at the lower
`end of the hook so as to inhibit upward movement which might tend to dislodge
`the graft after it is positioned and attached to the aorta wall.” Id. at 3:66-4:1.
`2. Analysis
`Medtronic contends that Kornberg discloses each and every element of
`claim 1, referring to annotated versions of Figures 1, 2, and 9 in Kornberg and
`disclosures in the reference, as well as a claim chart and a Declaration by Travis
`Rowe. Pet. 19-22, Appx. A2, pp. 5-9; Ex. 1003 ¶¶ 22-26. For example, Medtronic
`points to disclosure in Kornberg as corresponding to certain elements in claim 1 as
`follows:
`
`Element in claim 1
`
`Disclosure in Kornberg
`
`“intraluminal medical device”
`
`Graft 10
`
`“tubular member”
`
`Struts 12 and ring 16
`
` 8
`
`
`
`
`
`
`
`Case IPPR2014-00100
`
`
`
`
`Patent 55,593,417
`
`
`
`
`
`Elemennt in claim 1
`
`
`
`sure in Koornberg
`
`Disclo
`
`
`
`
`
`
`
`“anchorring meanss” comprisiing “plurall Hookss 14
`
`
`
`
`projectiions”
`
`
`
`Pet. 20, Appx. A22, pp. 5-7.
`
`
`
`
`
`
`
`
`
`Inn relation tto the “leadding portioon” and “trrailing porttion” of thee projectioons
`
`
`
`
`
`
`recited iin claim 1,, Medtronic provides annotatedd figures froom Kornb
`
`erg, includding
`
`
`
`
`annotateed Figure 22, reproducced below..
`
`
`
`(shown preeviously),
`
`
`
`
`
`Pet. 20. Annotateed Figure 22 depicts Fiigure 2 of KKornberg
`
`
`
`
`
`
`with addded designnations inclluding “Leeading Porttion,” “Uppstream,” “
`Trailing
`
`
`
`
`
`
`
`Portion,,” “Acute AAngle,” “DDownstreamm,” and ann arrow inddicating “FFluid Flow
`
`(‘First DDirection’)).” Id.
`
`
`
`
`
`
`
`
`
` Id.
`
`
`
`
`
`of the tuubular memmber (strutts 12 and riing 16) in KKornberg’
`s graft 10.
`a “leading
`portion,”
`
`as designaated
`
`
`
`
`Accordiing to Meddtronic, eacch hook 144 includes a
`rection of
`
`
`fluid flow,, as recitedd in
`
`
`
`
`in annottated Figurre 2, locateed in the uppstream dir
`
`
`
`
`
`
`
`claim 1. Id. Meddtronic furthher contennds that eacch hook inccludes a “ttrailing
`
`
`
`
`
`portion,,” as also ddesignated in annotated Figure 22, located
`
`in the dowwnstream
`
`MMedtronic ccontends thhat hooks 14 are locaated adjaceent to the oouter periphhery
`
` 9
`
`
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`direction of fluid flow, which includes a portion that is oriented to extend at an
`acute angle to the fluid flow, as also recited in claim 1. Id. at 20-21.
`In relation to the last “whereupon” clause in claim 1, Medtronic also
`contends, relying on the Rowe Declaration, that
`force applied to the manually-anchored tubular member (“struts 12 and ring
`16”) of Kornberg by fluid flowing through the interior passageway thereof
`inherently produces on each of the projections (“hooks 14”) a force
`component that causes at least one surface of the trailing portion to tightly
`engage the interior surface of the vessel, duct, or lumen to fixedly secure the
`device (“graft 10”) in place.
`
`Id. at 21 (citing Ex. 1003 ¶¶ 22-26). Medtronic also points us to Kornberg’s
`Abstract, which describes “struts having angled hooks with barbs at their upper
`ends, the upper ends of the struts extending beyond the upper end of the tubular
`material, thus allowing the graft to be securely attached to the inside of the aorta.”
`Ex. 1006, Abstract; Pet. Appx. A2, pp. 7-8.
`Based on the record before us, Medtronic reasonably identifies where
`Kornberg describes, expressly or inherently, every element of claim 1. Pet. 19-21,
`Appx. A2, pp. 5-8. We are persuaded that Medtronic has demonstrated that there
`is a reasonable likelihood that it would prevail on the ground that claim 1 is
`anticipated by Kornberg.
`In addition, Medtronic reasonably identifies where Kornberg describes the
`elements of dependent claims 2, 9, 10, and 13. Pet. 21-22, Appx. A2, pp. 8-9. In
`relation to claim 2, Medtronic contends that, in Kornberg, “at least one surface of
`the trailing portion is inclined upward in the first direction (‘fluid flow direction’)
`when the device (‘graft 10’) is placed in a vessel, duct, or lumen,” as depicted in
`annotated Figure 2 above. Pet. 21, Appx. A2, p. 8.
`
`
`10
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`
`In relation to claims 9 and 10, Medtronic contends that Kornberg describes a
`graft comprising a tubular member (struts 12 and ring 16) that is an expandable
`stent, i.e., “longitudinal supporting and reinforcing members called struts 12
`running along the major axis of the cylindrical sleeve,” where ring 16
`“[f]unction[s] to keep the graft fully expanded.” Pet. 21-22, Appx. A2, p. 8; Ex.
`1006, 2:62-65, 6:35-37. Medtronic further points to where Kornberg describes
`ring 16 in a “compressed, or partially open state prior to positioning in the
`damaged artery,” and that “[o]nce in place, the ring will spring open and snug up
`against the walls of the artery covering the punctures in the arterial wall made by
`the hooks 14.” Pet. Appx. A2, pp. 8-9; Ex. 1006, 4:6-15. In relation to claim 13,
`Medtronic contends that Kornberg describes an endovascular graft (graft 10) that
`comprises a graft sleeve (“cylindrical, hollow, bifurcated sleeve”) that is coupled to
`the expandable stent (struts 12 and ring 16, as discussed above), where blood flow
`applies pressure to projections (hooks 14). Pet. 22, Appx. A2, p. 9; Ex. 1006, 2:62-
`65.
`
`We are persuaded that Medtronic has demonstrated that there is a reasonable
`likelihood that it would prevail on the ground that dependent claims 2, 9, 10, and
`13 are anticipated by Kornberg.
`C. Obviousness over Rhodes ’154 and Kornberg
`Medtronic contends that claims 1, 2, 9, 10, and 13 would have been obvious
`over Rhodes ’154 and Kornberg. Pet. 8, 27-29. We discuss Kornberg above.
`1. Rhodes ’154 (Ex. 1008)
`Rhodes ’154 describes an endovascular graft. Figure 1 in Rhodes ’154 (Ex.
`1008) and Figure 1 in the ’417 patent (Ex. 1001) are reproduced below.
`
`
`
`11
`
`
`
`
`
`Case IPPR2014-00100
`
`
`
`
`Patent 55,593,417
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Figure 11 in Rhodees ’154 (topp) and Figuure 1 in thee ’417 pateent (bottomm) both deppict
`
`
`
`
`a sectional view oof an arteryy with an exxpandable
`
`
`
`intraluminnal vasculaar bypass ggraft.
`
`
`
`
` Ex. 10008, 4:58-622; Ex. 10011, 4:46-50.
`
`
`
`
`AAs stated inn the ’417 ppatent, Rhoodes ’154
`
`
`
`
`
`
`
`expandaable sleevee (a tubularr member) having exxpandable pplural stentts, where
`
`
`
`
`
`
`
`
`
`
`
`“[e]ach stent is a ggenerally rring-like mmember formmed a plurrality of intterconnectted
`movabl
`
`
`
`
`
`
`
`e links andd is mounteed about thhe peripherry of a surfface, e.g., iinner or ouuter,
`
`
`
`
`
`
`
`of the slleeve at selected poinnts along thhe sleeve tto form resspective sppaced first
`
`12
`
`describes aa graft commprising ann
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`sleeve sections.” Ex. 1001, 2:64-3:20; Ex. 1008, 5:62-66. In addition, as stated in
`the ’417 patent, the graft in Rhodes ’154 “makes use of some anchoring means,
`e.g., small dome shaped projections, for aiding in the securement of the graft in
`place within the vessel, duct, or lumen,” although the anchoring means are
`“amenable to improvement insofar as graft retention is concerned.” Ex. 1001,
`3:21-26; see also Ex. 1008, 7:18-24 (describing a “plurality of protuberances 50
`projecting slightly outward from the outer surface of the graft . . . [that] help
`impact the graft into the arterial wall to maintain a fixed position therein . . . [and]
`are preferably located at the joints 34”).
`2. Analysis
`Medtronic contends that Rhodes ’154 discloses all elements of the
`challenged claims except “the specific orientation of the intraluminal medical
`device’s projections – that the projections be oriented to extend at an acute angle to
`the direction of fluid flow,” citing Rhodes ’154, the ’417 patent and its prosecution
`history, and the Rowe Declaration. Pet. 27-28, Appx. A5, pp. 19-24; see also Ex.
`1002, 48-49; Ex. 1003 ¶¶ 22, 23, 28. Medtronic relies on Kornberg as disclosing a
`relevant device “comprising projections (‘hooks 14’) where the trailing portion
`(‘downstream portions’) of each projection (‘hooks 14’) has at least one surface
`that is preferentially oriented to extend at an acute angle to the fluid flow
`direction.” Pet. 28, Appx. A5, pp. 20-21. Regarding dependent claim 2,
`Medtronic contends that Kornberg discloses at least one surface of the trailing
`portion of each projection (hook 14) as being inclined upward in the first direction
`(fluid flow direction). Id. at Pet. Appx. A5, pp. 22-23. Regarding dependent
`claims 9, 10, and 13, Medtronic reasonably points to where Rhodes ’154 and
`Kornberg each disclose the recited elements. Id. at Pet. Appx. A5, pp. 23-24.
`
`
`13
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`
`Medtronic further contends that a person of ordinary skill in the art would
`have had reason to use the projections (hooks 14) of Kornberg with the device of
`Rhodes ’154 (in place of Rhodes ’154’s projections) “to provide an intraluminal
`medical device with improved anchoring capabilities for securing the device in
`place within a vessel, duct, or lumen,” and “to prevent migration of the
`intraluminal medical device,” citing a Declaration by Atul Gupta in support. Id. at
`28-29 (citing Ex. 1004 ¶¶ 30-33).
`Rhodes ’154 discloses the use of projections (protuberances 50), located at
`on the outer periphery of a tubular member at stent joints in a relevant device,
`where those protuberances act as “small pressure points” to help a graft “maintain
`a fixed position” in an artery wall. Ex. 1008, 7:18-26; Figures 8 and 9. Kornberg
`describes attaching a graft to the inside wall of an aorta using hooks 14, which
`“inhibit upward movement which might tend to dislodge the graft,” as discussed
`above. Ex. 1006, 3:60-4:1. Based on the record before us, we are persuaded that
`Medtronic reasonably contends that a person of ordinary skill in the art would have
`had reason to use the hooks disclosed in Kornberg in place of protuberances 50 in
`the device of Rhodes ’154.
`Medtronic has demonstrated that there is a reasonable likelihood that it
`would prevail on the ground that claims 1, 2, 9, 10, and 13 of the ’417 patent
`would have been obvious over Rhodes ’154 and Kornberg.
`D. Remaining Ground of Unpatentability
`In addition to the grounds of unpatentability discussed above, Medtronic
`also alleges other grounds with respect to the challenged claims. Upon review of
`those grounds, we conclude that they are redundant in light of the grounds on the
`basis of which we institute inter partes review of the same claims. We do not
`
`
`14
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`authorize an inter partes review on those redundant grounds. See 37 C.F.R.
`§ 42.108(a).
`
`III. CONCLUSION
`
`For the foregoing reasons, we are persuaded that Medtronic has
`demonstrated that there is a reasonable likelihood that it would prevail on the
`grounds that Kornberg anticipates, and Rhodes ’154 and Kornberg rendered
`obvious, claims 1, 2, 9, 10, and 13 of the ’417 patent. The Board has not made a
`final determination on the patentability of the challenged claims.
`
`IV. ORDER
`
`For the reasons given, it is
`ORDERED that the Petition is granted with respect to the alleged
`
`ground, under 35 U.S.C. § 102, that Kornberg anticipates claims 1, 2, 9, 10, and 13
`of the ’417 patent;
`FURTHER ORDERED that the Petition is granted with respect to the
`alleged ground, under 35 U.S.C. § 103, that claims 1, 2, 9, 10, and 13 of the ’417
`patent would have been obvious over Rhodes ’154 and Kornberg;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ʼ417 patent is hereby instituted commencing on the entry date
`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is
`hereby given of the institution of a trial;
`
`FURTHER ORDERED that the other grounds presented in
`Medtronic’s Petition are denied, and no ground other than that specifically granted
`above is authorized for the inter partes review as to claims 1, 2, 9, 10, and 13; and
`
`FURTHER ORDERED that an initial conference call with the Board
`is scheduled for 11:00 AM Eastern Time on April 17, 2014. The parties are
`
`15
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`directed to the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,765-66, for
`guidance in preparing for the initial conference call, and should be prepared to
`discuss any proposed changes to the Scheduling Order entered herewith and any
`motions the parties anticipate filing during the trial.
`
`
`
`PETITIONER:
`
`
`Jack Barufka
`Pillsbury Winthrop Shaw Pittman LLP
`barufka@pillsburylaw.com
`
`Ngai Zhang
`Pillsbury Winthrop Shaw Pittman LLP
`ngai.zhang@pillsburylaw.com
`
`
`
`
`
`PATENT OWNER:
`
`
`Matthew Phillips
`Renaissance IP Law Group LLP
`matthew.phillips@renaissanceiplaw.com
`
`Brett M. Pinkus
`Friedman, Suder & Cooke
`pinkus@fsclaw.com
`
`Jonathan T. Suder
`Friedman, Suder & Cooke
`jts@fsclaw.com
`
`
`16
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
