`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`STRYKER CORPORATION,
`Petitioner,
`
`v.
`
`ORTHOPHOENIX, LLC,
`Patent Owner
`_________
`
`Case IPR2014‐01519
`Patent 6,623,505 B2
`
`DECLARATION OF NEIL J. SHEEHAN
`
`STRYKER EXHIBIT 1002, pg. 1
`
`STRYKER CORPORATION v. ORTHOPHOENIX, LLC
`
`IPR2014-01519
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION .............................................................................................. 1
`BACKGROUND AND QUALIFICATIONS ........................................................... 2
`II.
`DOCUMENTS CONSIDERED IN FORMING MY OPINIONS ............................... 3
`III.
`BACKGROUND OF THE ART ............................................................................ 4
`IV.
`BRIEF DESCRIPTION OF THE ’505 PATENT ................................................... 12
`V.
`PERSON OF ORDINARY SKILL IN THE ART ..................................................... 15
`VI.
`CLAIM CONSTRUCTION ................................................................................ 15
`VII.
`VIII. CLAIMS 1‐12 OF THE ’505 PATENT ARE ANTICIPATED OR OBVIOUS IN
`VIEW OF THE PRIOR ART .............................................................................. 18
`A.
`Comparison Of Claims 1, 3, 5, 7, 9, And 11 To Pathak ....................... 19
`B.
`Comparison Of Claims 1, 3, 5, 7, 9, And 11 To Barbere ..................... 30
`C.
`Comparison Of Claims 1‐12 To Valley ................................................ 39
`D.
`Comparison Of Claims 2, 4, 6, 8, 10, And 12 To Pathak And
`Valley ................................................................................................. 54
`1.
`Dependent Claims 2, 6, And 10 Compared To Pathak And
`Valley ....................................................................................... 55
`Dependent Claims 4, 8, And 12 Compared To Pathak And
`Valley ....................................................................................... 56
`Comparison Of Claims 1‐12 To Reiley And Andersen ........................ 58
`Comparison Of Claims 1‐12 To Valley With The Knowledge Of A
`Person Of Ordinary Skill In The Art .................................................... 74
`SECONDARY CONSIDERATIONS ................................................................... 75
`CONCLUSION ............................................................................................... 76
`
`2.
`
`E.
`F.
`
`IX.
`X.
`
`
`i
`
`STRYKER EXHIBIT 1002, pg. 2
`
`
`
`Declaration of Neil J. Sheehan
`
`I, Neil J. Sheehan, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained as an expert witness on behalf of Stryker
`
`Corporation (“Stryker”) for the above captioned inter partes review (“IPR”). I am
`
`being compensated for my time in connection with this IPR at my standard
`
`consulting rate, which is $600.00 per hour, plus expenses. My compensation is
`
`not dependent upon the outcome of this matter.
`
`2.
`
`I understand that the Stryker petition for IPR concerns U.S. Patent
`
`No. 6,623,505 (“the ’505 patent”) (Ex. 1001) and requests that the United States
`
`Patent and Trademark Office (“USPTO”) cancel claims 1‐12 of the ’505 patent. I
`
`further understand that the ’505 patent is currently owned by Orthophoenix, LLC
`
`(“Orthophoenix”). I am also providing a Declaration for a related inter partes
`
`review of U.S. Patent No. 6,280,456, which is related to the ’505 patent.
`
`3.
`
`The ’505 patent is directed to expandable structures, which, in use,
`
`are deployed in interior body regions of humans and other animals. (Ex. 1001,
`
`1:12‐14.) The claims of the ’505 patent describe a catheter carrying an
`
`expandable or inflatable structure, such as a typical balloon catheter. ( Id. at
`
`15:61‐18:7 (Claims 1‐12).) The ’505 patent claims priority to U.S. Patent No.
`
`5,972,015, which was filed on August 15, 1997.
`
` ‐ 1 ‐
`
`STRYKER EXHIBIT 1002, pg. 3
`
`
`
`Declaration of Neil J. Sheehan
`
`
`4.
`
`Throughout this declaration, the field of catheters carrying an
`
`expandable or inflatable structure, such as a typical balloon catheter, is referred
`
`to as the relevant field or the relevant art.
`
`5.
`
`In preparing this Declaration, I have reviewed the ’505 patent and
`
`considered each of the documents cited in Section III, in light of the general
`
`knowledge of a person of ordinary skill in the relevant art. In forming my
`
`opinions, I have relied upon my experience as an engineer and consultant with
`
`extensive experience with various medical devices – including catheter and
`
`balloon devices.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`6. My field of expertise in this matter is medical products or devices. A
`
`copy of my current Curriculum Vitae is attached, providing a comprehensive
`
`description of my academic and employment history, among other things.
`
`7.
`
`I received my Bachelor of Science in Mechanical Engineering, summa
`
`cum laude, from Villanova University in 1968. I was the recipient of their 1993
`
`Alumni Achievement Award for my work in the medical device field. I took
`
`graduate courses in the department of Engineering and Applied Physics at
`
`Harvard University in 1968‐1969. I also studied biology, biochemistry, and organic
`
`chemistry at the University of California at Berkeley in 1974‐1975.
`
` ‐ 2 ‐
`
`STRYKER EXHIBIT 1002, pg. 4
`
`
`
`Declaration of Neil J. Sheehan
`
`
`8.
`
`I have nearly forty years of experience in medical device design and
`
`development, with roles ranging from that of an individual contributor to that of a
`
`Vice President of Engineering and Manufacturing.
`
`9.
`
`I have been directly involved in the design, development, and
`
`manufacture of medical devices since 1975, both as an employee and as a
`
`consultant.
`
`10.
`
`I am a named inventor on 39 patents in the medical device field
`
`covering a broad range of products.
`
`11.
`
`In addition, I have designed, worked with, and consulted on
`
`hundreds of medical devices, including catheter and balloon devices and devices
`
`used in bone, and the like.
`
`III. DOCUMENTS CONSIDERED IN FORMING MY OPINIONS
`
`12.
`
`In forming my opinions, I have considered at least the following
`
`documents:
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`Description
`U.S. Patent No. 6,623,505 (“the ’505 patent”)
`Curriculum Vitae
`WO 94/24962 (published Nov. 10, 1994) (“Pathak”)
`European Patent No. 0405831 (issued Jun. 7, 1995) (“Barbere”)
`U.S. Patent No. 4,706,670 (issued Nov. 17, 1987) (“Andersen”)
`WO 95/20362 (published Aug. 3, 1995) (“Reiley”)
`U.S. Patent No. 5,766,151 (filed Jun. 7, 1995) (issued Jun. 16, 1998)
`(“Valley”)
`
` ‐ 3 ‐
`
`STRYKER EXHIBIT 1002, pg. 5
`
`
`
`Declaration of Neil J. Sheehan
`
`
`Exhibit
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`
`Description
`U.S. Patent No. 4,024,873 (issued May 24, 1977) (“Antoshkiw”)
`U.S. Patent No. 4,490,421 (issued Dec. 25, 1984) (“Levy”)
`U.S. Patent No. 5,108,404 (issued Apr. 28, 1992) (“Scholten 404”)
`U.S. Patent No. 5,547,378 (issued Aug. 20, 1996) (“Linkow”)
`U.S. Patent No. 5,849,014 (filed Mar. 20, 1997) (issued Dec. 15,
`1998) (“Mastrorio”)
`U.S. Patent No. 281,043 (issued Jul. 10, 1883 to Finney)
`U.S. Patent No. 397,060 (issued Jan. 29, 1889 to Knapp)
`
`
`IV.
`
`
`BACKGROUND OF THE ART
`
`13. Catheters carrying inflatable structures for deployment in interior
`
`body regions
`
`(including catheters employing an
`
`inner and outer tube
`
`configuration) have been used by physicians for many decades for a variety of
`
`applications. For example, balloon catheters have been known for many years in
`
`urinary and vaginal applications, in the vasculature for applications such as
`
`angioplasty and stent delivery, and in bone for compressing cancellous bone and
`
`adjusting fractures. U.S. Patent No. 281,043 (issued on Jul. 10, 1883) discloses a
`
`urinary catheter with an inflatable balloon attached to an inner and outer tube.
`
`(See Ex. 1013, Fig. 3, 1:38‐43, 2:90‐3:4.) U.S. Patent No. 397,060 (issued Jan. 29,
`
`1889) discloses a device with an inflatable structure used to expand the folds of
`
`the vaginal wall. (See Ex. 1014, Fig. 2, 1:25‐2:62.)
`
`14.
`
`In addition, inflatable balloon catheters have long been used in
`
`angioplasty. (See e.g, Ex. 1009 at 1:5‐23.) Since the advent of angioplasty
`
` ‐ 4 ‐
`
`STRYKER EXHIBIT 1002, pg. 6
`
`
`
`Declaration of Neil J. Sheehan
`
`catheters, angioplasty balloon catheters have been used to compress plaque
`
`(including calcified lesions) in arteries and deliver stents. (See, e.g., Ex. 1009 at
`
`1:19‐20; Ex. 1007, Andersen, 1:11‐14; Ex. 1003, Pathak, 1; see also Ex. 1004, 3:22‐
`
`30.
`
`15. With the increase in angioplasty and stent procedures there has been
`
`a proliferation of balloon catheter designs. Skilled artisans contemplating the
`
`design of a balloon catheter would have considered angioplasty and other
`
`cardiovascular catheters. As one patent explained, “[b]alloon catheters are not
`
`limited in their use to the relief of arterial stenosis but have been found useful in
`
`many medical applications involving not only insertion into blood vessels but also
`
`involving insertion into a variety of body cavities.” (Ex. 1009 at 1:19‐23 (emphasis
`
`added).)
`
`16.
`
`Specifically, with the advent of balloon‐assisted vertebroplasty, or
`
`vertebral kyphoplasty, in the late 1980s,1 it became well‐known (and even the
`
`’505 patent specification recognizes) that balloon catheter designs originally
`
`
`1 Balloon‐assisted vertebroplasty is a procedure involving injecting bone cement
`
`into a vertebral body after creating a cavity in the bone using a balloon catheter.
`
`(See, e.g., Ex. 1010 (U.S. Patent No. 5,108,404 (issued Apr. 28, 1992).))
`
`
`
` ‐ 5 ‐
`
`STRYKER EXHIBIT 1002, pg. 7
`
`
`
`Declaration of Neil J. Sheehan
`
`conceived for cardiovascular purposes could be used in bone. (Ex. 1001 at 1:17‐
`
`24 (“The deployment of expandable structures into interior body regions is well
`
`known. For example, expandable structures, generically called ‘balloons,’ are
`
`deployed during angioplasty to open occluded blood vessels. As another
`
`example, U.S. Patent Nos. 4,969,888 and 5,108,404 disclose apparatus and
`
`methods the [sic] use of expandable structures for the fixation of fractures or
`
`other osteoporotic and non‐osteoporotic conditions of human and animal
`
`bones.”); Ex. 1006 at p. 4 ll. 21‐25, p. 5 ll. 29‐33.)
`
`17.
`
`The Pathak publication (see table in ¶12 for identification of
`
`references described by name), which disclosed balloon catheters used for
`
`implanting polymeric materials in the form of a stent, focused on cardiovascular
`
`applications but also explained how the catheter could be used “[i]n other
`
`therapeutic applications, (i.e., tracheal [sic], urinary, bronchial, bone lumens and
`
`the like) . . . .” (Ex. 1003 at p. 15 ll. 15‐16 (emphasis added).) Additionally,
`
`Linkow, which disclosed an inflatable balloon used to create a cavity into which
`
`bone fragments are inserted for fusing with each other and surrounding bone,
`
`explained that “[t]here are catheters used for balloon angioplasty which are ideal
`
`for use in the present invention.” (Ex. 1011, 4:46‐47, Abstract.) Likewise,
`
`Mastrorio described creating a cement plug in a bone cavity by using an
`
` ‐ 6 ‐
`
`STRYKER EXHIBIT 1002, pg. 8
`
`
`
`Declaration of Neil J. Sheehan
`
`angioplasty balloon catheter. (Ex. 1012, 3:10‐13 (“In an exemplary embodiment,
`
`the conduit [] and inflatable body [] are provided by a catheter of the type useful
`
`in angioplasty procedures.”).)
`
`18.
`
`Indeed, Reiley disclosed using a balloon catheter to compress
`
`cancellous bone in balloon‐assisted vertebroplasty and for addressing bone
`
`fractures in long bones. (Ex. 1006 at Abstract, p. 6 ll. 17‐21, p. 19 ll. 17‐35, pp. 24‐
`
`28.) Reiley disclosed “[a] balloon (10) for use in compressing cancellous bone and
`
`marrow (also known as medullary bone and trabecular bone) against the inner
`
`cortex of bones whether the bones are fractured or not.” (Id. at Abstract.) Reiley
`
`taught advancing a catheter with a balloon at its distal end through a cannula in
`
`order to compress cancellous bone upon expansion of the balloon in, for example,
`
`the vertebra (as shown in Figure 2 of Reiley). (Id. at Fig. 2.) Reiley also praised
`
`the design of balloon catheters used in angioplasty, including the Andersen design
`
`(see Figure below ¶19), which it described as a “coaxial catheter with inner and
`
`outer tubing . . . .” (Id. at p. 4 ll. 21‐25.) After discussing the current state of the
`
`art regarding angioplasty balloon catheters, Reiley disclosed what was well‐known
`
`in the art, i.e., that “current medical balloons can compress bone . . . .” (Id. at p.
`
`5 l. 29, see also id. at p. 3 l. 13 – p. 5 l. 33.)
`
`19. Also, even prior to and certainly by the 1990s, catheters having two
`
` ‐ 7 ‐
`
`STRYKER EXHIBIT 1002, pg. 9
`
`
`
`Declaration of Neil J. Sheehan
`
`concentric tubes with the inner tube (shown in green below) extending distally
`
`beyond the outer tube (shown in red below) and an inflatable structure such as a
`
`balloon (shown in blue below) distally attached to the inner tube and proximally
`
`attached to the outer tube (as claimed in the ’505 patent) were standard and
`
`well‐known in the art. It was also well‐known to use the passage (shown in
`
`orange below) between the inner and outer catheter tubes to convey an inflation
`
`medium to inflate the balloon. As shown below and as will be discussed in
`
`greater detail, Pathak (published in 1994), Andersen (issued in 1987), Antoshkiw
`
`(issued in 1977), Valley (filed in 1995, issued in 1998), and Barbere (issued in
`
`1995) disclose such catheters in various applications including bone.
`
` ‐ 8 ‐
`
`STRYKER EXHIBIT 1002, pg. 10
`
`
`
`Declaration of Neil J. Sheehan
`
`
`
`
`20. One of the earlier catheter design references, Antoshkiw, issued on
`
`May 24, 1977. ( See Ex. 1008.) Antoshkiw discloses a multi‐component flow
`
`directed balloon catheter system for use in the determination of physiological
`
`parameters in the vascular system. (Id. at Abstract, 1:5‐14.) Antoshkiw discloses
`
`a balloon catheter assembly with “an inner tube 24 [shown in green] having an
`
`open distal end 26 and an open proximal end 28.” (Id. at 3:17‐18, 1:30‐32.) A
`
`concentric outer tube 30 (shown in red) is positioned “so that the inner tube 24
`
`extends distally and proximally from the ends of the outer tube 30.” (Id. at 3:19‐
`
` ‐ 9 ‐
`
`STRYKER EXHIBIT 1002, pg. 11
`
`
`
`Declaration of Neil J. Sheehan
`
`23.)
`
`
`“An inflatable balloon portion 38 [shown in blue] is attached to both
`
`
`
`21.
`
`the inner and outer tubes.” (Id. at 3:28‐29.) Like other prior art catheters, “[t]he
`
`distal end 40 of the balloon portion is affixed to the outer surface of the distal end
`
`of the inner tube and the proximal end 42 of the inflatable portion 38 is attached
`
`to the outer surface of the distal end of the outer tube 30.” (Id. at 3:28‐33.) “By
`
`sealing both ends of the balloon portion 38 to the tubes 24 and 30, an inner
`
`chamber 44 is formed in the balloon portion with the only access to inner
`
`chamber 44 being through the annular passageway 36 between the tubes.” (Id.
`
`at 3:40‐44, 1:32‐37.) “[T]o inflate the balloon portion 38, a suitable inflation
`
`medium such as a gas like air or carbon dioxide or a liquid can be passed in a
`
`conventional manner through the opening 34 at the proximal end of outer tube
`
`30, through annular passageway 36 and into chamber 44 to thereby expand the
`
`flexible balloon 38.” (Id. at 3:45‐51; see also id. at 3:24‐27, 3:40‐44.)
`
`22. Antoshkiw discloses that the tubes are moveable in relation to each
`
` ‐ 10 ‐
`
`STRYKER EXHIBIT 1002, pg. 12
`
`
`
`Declaration of Neil J. Sheehan
`
`other (see, e.g., Figures 2 and 3). Antoshkiw teaches that “the inflated balloon 38
`
`can be altered in configuration, as desired, by merely shifting the relative axial
`
`position between the inner tube 24 and the outer tube 30 as depicted in Fig. 3
`
`[see red arrow] where the inner tube has been withdrawn rearwardly toward the
`
`outer tube thereby causing the affixed balloon to deform outwardly into
`
`engagement with the walls of the vessel 22.” (Id. at 3:53‐59; see also id. at 1:26‐
`
`29, 1:47‐52.)
`
`
`
`23. Antoshkiw further discloses that, although the catheter is primarily
`
`used
`
`in the human vascular system, the catheter assembly has various
`
`applications and can be utilized “in other areas of the body.” (Id. at 2:6‐14.)
`
`24. Accordingly, a person of skill in the art looking to design a balloon
`
` ‐ 11 ‐
`
`STRYKER EXHIBIT 1002, pg. 13
`
`
`
`Declaration of Neil J. Sheehan
`
`catheter
`
`for bone applications would consider angioplasty and other
`
`cardiovascular catheters. As Levy explains, “[b]alloon catheters are not limited in
`
`their use to the relief of arterial stenosis but have been found useful in many
`
`medical applications involving not only insertion into blood vessels but also
`
`involving insertion into a variety of body cavities.” (Ex. 1009 at 1:19‐23; see also
`
`Ex. 1003 at p. 15 ll. 15‐16; Ex. 1011 at Abstract, 4:46‐47; Ex. 1012 at 3:10‐13; Ex.
`
`1006 at Abstract, p. 19 ll. 17‐35, pp. 24‐28.)
`
`25.
`
`It was also well‐known to design a balloon catheter so that it could
`
`pass through a cannula when the balloon was deflated and to make the inner and
`
`outer catheter tubes moveable in relation to each other to change the shape of
`
`the balloon. (See, e.g., Ex. 1007, 22:7‐9, 24:35‐44; Ex. 1006 at p. 7 ll. 1‐5, p. 4 ll.
`
`31‐33; Ex. 1008 at Figs. 1‐3, 3:53‐59; 1:26‐29, 1:47‐52.) It was also known to
`
`provide balloons of different shapes and sizes so, for example, the balloons could
`
`inflate asymmetrically to conform to asymmetric cavities. (See, e.g., Ex. 1007 at
`
`31:7‐10; Ex. 1006 at Figs. 10‐12, 14‐15, 17A; Ex. 1010 at 2:31‐32 (“gourd‐shaped
`
`inflatable device”).)
`
`V.
`
`
`BRIEF DESCRIPTION OF THE ’505 PATENT
`
`26.
`
`The ’505 patent was filed on July 31, 2001, and claims priority to U.S.
`
`Patent No. 5,972,015, which was filed on August 15, 1997. The ’505 patent is
`
` ‐ 12 ‐
`
`STRYKER EXHIBIT 1002, pg. 14
`
`
`
`Declaration of Neil J. Sheehan
`
`directed to “expandable structures, which, in use, are deployed in interior body
`
`regions of humans and other animals.” (Ex. 1001 at 1:12‐14.) Specifically, the
`
`specification of the ’505 patent focuses on purportedly solving problems arising
`
`from using expandable structures such as balloons in asymmetric applications:
`
`The deployment of expandable structures into interior body
`regions
`is well known.
` For example, expandable structures,
`generically called “balloons,” are deployed during angioplasty to
`open occluded blood vessels. As another example, U.S. Pat. Nos.
`4,969,888 and 5,108,404 disclose apparatus and methods the [sic]
`use of expandable structures for the fixation of fractures or other
`osteoporotic and non‐osteoporotic conditions of human and animal
`bones.
`
`Many interior regions of the body, such as the vasculature and
`interior bone, possess complex, asymmetric geometries. Even if an
`interior body region is somewhat more symmetric, it may still be
`difficult to gain access along the natural access of symmetry.
`(Id. at 1:17‐30.)
`
`27. As shown by Figures 12 and 23 reproduced below, the ’505 patent
`
`purported to solve this problem with asymmetric balloon shapes.
`
` ‐ 13 ‐
`
`STRYKER EXHIBIT 1002, pg. 15
`
`
`
`Declaration of Neil J. Sheehan
`
`
`
`
`
`
`28. While the specification focuses on designs to address the asymmetry
`
`issue, the specification identifies certain catheter designs for use in the claimed
`
`invention including those that were known in the prior art. For example, as
`
`shown below, Figure 20 depicts a tubular balloon 110 bonded to the distal end of
`
`an outer catheter tube 118 and to the distal end of an inner catheter tube 120.
`
`(Id. at 10:14‐29.)
`
`
`
` ‐ 14 ‐
`
`
`
`STRYKER EXHIBIT 1002, pg. 16
`
`
`
`Declaration of Neil J. Sheehan
`
`VI.
`
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`29.
`
`I understand that a person of ordinary skill in the art is a hypothetical
`
`person who is presumed to be aware of all pertinent art, possesses conventional
`
`wisdom in the art, and is a person of ordinary creativity. I understand that this
`
`hypothetical person is considered to have the normal skills and knowledge of a
`
`person in a certain technical field.
`
`30.
`
`I have been asked to analyze the ’505 patent and the references
`
`discussed herein from the perspective of such a person at the time of invention. I
`
`understand that, for the purposes of this IPR, the date of invention is assumed to
`
`be August 15, 1997.
`
`31. A person of ordinary skill in the relevant art would have a mechanical
`
`engineering degree, industrial design degree, or similar technical degree, or
`
`equivalent work experience, and at least 5 years of working in the area of medical
`
`device design, including experience with catheters carrying an expandable or
`
`inflatable structure, such as a typical balloon catheter.
`
`VII. CLAIM CONSTRUCTION
`
`32.
`
`I understand that claim construction is the interpretation of the
`
`meaning of patent claims. I also understand that claims in an IPR proceeding are
`
`given their broadest reasonable construction.
`
` ‐ 15 ‐
`
`STRYKER EXHIBIT 1002, pg. 17
`
`
`
`Declaration of Neil J. Sheehan
`
`
`33.
`
`I understand that many sources can be used to assist
`
`in
`
`understanding the meaning of a claim including the claims themselves, the
`
`specification, the prosecution history of the patent, as well as extrinsic evidence
`
`concerning the meaning of technical terms and the state of the art.
`
`34.
`
`I have been asked to review the claims and ascertain the meaning of
`
`the claims from the perspective of one of ordinary skill in the art as of August 15,
`
`1997. The meanings for certain claim terms expressed in this declaration are
`
`consistent with my understanding as stated above with regards to this IPR. The
`
`meaning of the claims to a person of ordinary skill in the art can be ascertained by
`
`referring to the language of the claims themselves and does not require any
`
`special redefinition. In other words, the ordinary meaning is understood by
`
`reading the claims. However, I offer clarifications regarding certain terms so that
`
`the application of those certain claim terms is understood.
`
`35.
`
`Independent claims 1 and 5 disclose “[a] device for deployment into
`
`bone.” Independent claim 9 discloses “[a] system for treating bone.” (Ex. 1001 at
`
`15:61‐18:7.) I understand that these terms are part of the preamble and that a
`
`preamble is not limiting when the claim body describes a structurally complete
`
`invention such that deletion of the preamble does not affect the structure or
`
`steps of a claimed invention. I also understand that preamble language that
`
` ‐ 16 ‐
`
`STRYKER EXHIBIT 1002, pg. 18
`
`
`
`Declaration of Neil J. Sheehan
`
`merely states the purpose or intended use of an invention is generally not treated
`
`as limiting the scope of the claim. A person of skill in the art would understand
`
`that the elements set forth in the claim bodies describe structurally complete
`
`inventions such that deletion of the preambles, “[a] device for deployment into
`
`bone” and “[a] system for treating bone,” would not affect the structure of the
`
`claimed inventions. Similarly, a person of skill in the art would understand that
`
`“[a] device for deployment into bone” and “[a] system for treating bone” merely
`
`state the purpose or intended use of the claims of the ’505 patent.
`
`36. Claims 3, 5, 7, 9, and 11 claim that the inflatable structure is
`
`“adapted and configured to compress cancellous bone upon inflation of the
`
`inflatable structure in bone” or “sized and configured for passage within a [or the]
`
`cannula into bone.” (Ex. 1001 at 15:61‐18:7.) For each of these claim limitations,
`
`a person of skill in the art would understand that the claimed structure is capable
`
`of performing the recited function. Specifically, “sized and configured for passage
`
`within a [or the] cannula into bone” means that the claimed structure is of a size
`
`and configuration capable of passing within a cannula into bone, e.g., when the
`
`inflatable structure is in a collapsed condition. Similarly, “adapted and configured
`
`to compress cancellous bone upon inflation . . .” means that the inflatable
`
`structure is of an adaptation and configuration such that it is capable of
`
` ‐ 17 ‐
`
`STRYKER EXHIBIT 1002, pg. 19
`
`
`
`Declaration of Neil J. Sheehan
`
`compressing cancellous bone upon inflation. (See, e.g., id. at 4:36‐40, 4:41‐11:49
`
`(deployment in bone), 11:50‐12:25 (deployment in the vasculature), 12:64‐13:1‐4
`
`(material selection irrespective of use).)
`
`VIII. CLAIMS 1‐12 OF THE ’505 PATENT ARE ANTICIPATED OR OBVIOUS IN VIEW
`OF THE PRIOR ART
`
`
`
`37.
`
`I understand that a patent claim is invalid if the claim is “anticipated”
`
`by the prior art. I understand that anticipation occurs when a single piece of prior
`
`art describes every element of the claimed invention, either expressly or
`
`inherently, arranged in the same way as in the claim. I understand that, for
`
`inherent anticipation to be found, it is required that the missing descriptive
`
`material is necessarily present in the prior art. I understand that, for the purpose
`
`of an IPR, prior art that anticipates a claim can include both patents and printed
`
`publications from anywhere in the world.
`
`38.
`
`I understand that a patent claim is invalid if the subject matter of the
`
`claim as a whole would have been obvious to a person of ordinary skill in the art
`
`of the claimed subject matter as of the time of the invention at issue. I
`
`understand that the following factors must be evaluated to determine whether
`
`the claimed subject matter is obvious: (1) the scope and content of the prior art;
`
`(2) the difference or differences, if any, between each claim of the patent and the
`
` ‐ 18 ‐
`
`STRYKER EXHIBIT 1002, pg. 20
`
`
`
`Declaration of Neil J. Sheehan
`
`prior art; (3) the level of ordinary skill in the art at the time of invention; and (4)
`
`objective indicia of non‐obviousness. I understand that obviousness may be
`
`shown by considering more than one prior art reference.
`
`39.
`
`I understand that so‐called objective indicia of non‐obviousness, also
`
`known as “secondary considerations,” are to be considered, if present, when
`
`assessing obviousness.
`
` These
`
`include commercial success,
`
`long‐felt but
`
`unresolved needs, failure of others to solve the problem that the inventor solved,
`
`unexpected results, copying of the invention by others, and industry recognition
`
`or expressions of disbelief by experts in the field of the claimed invention. I also
`
`understand that a nexus, i.e., a tie, must exist between objective indicia of non‐
`
`obviousness and the novel aspects of the claimed subject matter.
`
`40.
`
`In addition to having my own knowledge of the art, I have evaluated
`
`the scope and content of the prior art. Prior art references relied upon in my
`
`opinions are listed in Section III. Below is a comparison of certain prior art
`
`references to the claims of the ’505 patent.
`
`41. Claims 1‐12 of the ’505 patent are all invalid as either anticipated or
`
`obvious in view of the prior art.
`
`
`
`A.
`
`Comparison Of Claims 1, 3, 5, 7, 9, And 11 To Pathak
`
`42. Pathak was published on November 10, 1994. Pathak, which
`
` ‐ 19 ‐
`
`STRYKER EXHIBIT 1002, pg. 21
`
`
`
`Declaration of Neil J. Sheehan
`
`describes the use of a balloon catheter in various applications including bone,
`
`anticipates claims 1, 3, 5, 7, 9, and 11 of the ’505 patent.
`
`43.
`
`Pathak discloses a dilatation catheter that uses an
`
`inflatable
`
`structure (i.e., a balloon) to implant polymeric materials such as a stent. (Ex. 1003
`
`
`
`at pp. 1, 5.)
`
`44.
`
` Specifically, as shown in Figure 2A, Pathak discloses a balloon
`
`catheter with “an outer elongated flexible tube 20 [shown in red] (i.e., a catheter)
`
`and an inner elongated flexible tube 22 [shown in green] positioned within the
`
`lumen of the outer tube 20.” (Id. at p. 21.) “The inner tube 22 is longer than the
`
`outer tube 20 so as to cause its distal end 23 to extend distally beyond the distal
`
`end of the outer tube 20.” ( Id.) An “article shaping element,” such as an
`
`inflatable balloon [shown in blue], “is mounted on the distal end of the device
`
` ‐ 20 ‐
`
`STRYKER EXHIBIT 1002, pg. 22
`
`
`
`Declaration of Neil J. Sheehan
`
`such that the proximal end of the balloon 24 is secured near the distal end of the
`
`outer tube, and the distal end of the balloon is secured near the distal end of the
`
`inner tube.” (Id.) “The annular space formed between the inner wall of the outer
`
`tube and the outer wall of the inner tube forms an inflation lumen 25 [shown in
`
`orange] through which the balloon may be inflated and expanded.” ( Id.) The
`
`inflation lumen allows the balloon to be inflated by an appropriate inflation
`
`medium. (Id. at pp. 20, 24.)
`
`45. Pathak discloses that its balloon catheter assembly can be used in a
`
`variety of medical procedures including the treatment of bone. (Id. at p. 15 (“In
`
`other therapeutic applications (i.e., tracheal [sic], urinary, bronchial, bone lumens
`
`and the like) shorter or longer periods may be appropriate.”) (emphasis added),
`
`p. 37 (“For example, within a bone lumen, a coating thickness of up to 5 mm may
`
`be beneficial.”) (emphasis added), pp. 9, 35‐36.)
`
`46. Claim 1 is compared to Pathak in the following chart (color added):
`
`Claim Limitations
`
`Pathak
`
`1. A device for deployment
`into bone comprising
`an outer
`catheter
`having a distal end,
`
`tube
`
`limiting.
`is not
`The preamble of Claim 1
`However, Pathak discloses that the device can
`be deployed in various applications including
`bone. (Ex. 1003 at pp. 9, 15, 35‐37.)
`Fig. 2A shows an outer catheter tube having a
`distal end. (Id. at Fig. 2A.)
`
` ‐ 21 ‐
`
`STRYKER EXHIBIT 1002, pg. 23
`
`
`
`Declaration of Neil J. Sheehan
`
`
`Claim Limitations
`
`Pathak
`
`tube
`catheter
`inner
`an
`extending at
`least
`in part
`within the outer catheter
`tube and having a distal end
`region that extends at least
`in part beyond the distal end
`of the outer catheter tube,
`
`
`
`“The device 21 comprises an outer elongated
`flexible tube 20 (i.e., a catheter) and an inner
`elongated flexible tube 22 positioned within the
`lumen of the outer tube 20.” (Id. at p. 21.)
`
`
`“The device 21 comprises an outer elongated
`flexible tube 20 (i.e., a catheter) and an inner
`elongated flexible tube 22 positioned within the
`lumen of the outer tube 20. The inner tube 22
`is longer than the outer tube 20 so as to cause
`its distal end 23 to extend distally beyond the
`distal end of the outer tube 20.” (Id.)
`
`an inflatable structure having
`a proximal end secured to
`the outer catheter tube and
`a distal end secured to the
`inner catheter
`tube,
`the
`inflatable
`structure
`extending
`outside
`and
`beyond the outer catheter “An article shaping element, for example a
`
` ‐ 22 ‐
`
`STRYKER EXHIBIT 1002, pg. 24
`
`
`
`Declaration of Neil J. Sheehan
`
`
`Claim Limitations
`tube and at least partially
`enclosing the inner catheter
`tube,