Trials@uspto.gov Paper 7
`Tel: 571-272-7822
`
`
` Entered: February 23, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`W. L. GORE & ASSOCIATES, INC.,
`Petitioner,
`
`v.
`
`LIFEPORT SCIENCES LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01319
`Patent 6,117,167
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`

`
`IPR2014-01319
`Patent 6,117,167
`
`
`I. INTRODUCTION
`
`W. L. Gore & Associates, Inc. (“Petitioner”) filed a Petition requesting an
`
`inter partes review of claims 1–82 (all the claims) of U.S. Patent No. 6,117,167
`
`(“the ’167 patent”). Paper 1 (“Pet.”). Patent Owner, LifePort Sciences LLC
`
`(“Patent Owner”), did not file a Preliminary Response. We have jurisdiction under
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`35 U.S.C. § 314, which provides that an inter partes review may not be instituted
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`“unless . . . there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.”
`
`Upon consideration of the Petition, based on the evidence and arguments
`
`before us, and for purposes of this Decision to institute an inter partes review, we
`
`determine that there is a reasonable likelihood that the petitioner will prevail in
`
`establishing that claims 1–82 are not patentable.
`
`A. Related Proceedings
`
`Petitioner states that the ’167 patent is involved in a pending district court
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`case, LifePort Sciences LLC v. W.L. Gore & Associates Inc., No. 1:12-cv-01792
`
`(D. Del. 2012). Pet. 1.
`
`Patent Owner also identifies as a related proceeding a pending district court
`
`case titled Lifeport Sciences LLC v. Endologix, Inc., No. 1:12-cv-01791 (D. Del.
`
`2012)1. Paper 6, 2.
`
`Petitioner also has filed another petition seeking inter partes review of the
`
`’167 patent on grounds and references different from those in this proceeding. The
`
`other petition is assigned case IPR2014-01320.
`
`
`1 Based on the Amended Complaint filed by LifePort Sciences LLC on August 12,
`2014, and the original Complaint filed by LifePort Sciences LLC on December 28,
`2012, the ’167 patent also is involved in this district court case.
`
`
`
`2
`
`

`
`IPR2014-01319
`Patent 6,117,167
`
`
`B. The ’167 Patent
`
`The ’167 patent is titled “Endoluminal Prosthesis and System for Joining.”
`
`The invention disclosed in the ’167 patent relates to a bifurcated endoluminal
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`prosthesis for use in a bifurcated blood vessel, such as the infrarenal portion of a
`
`mammalian aortic artery where it bifurcates to the common iliac arteries. Ex.
`
`1001, col. 1, ll. 18–21. The disclosed invention also includes a connecting
`
`structure for connecting, for example, a stent that forms part of an endoluminal
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`prosthesis to another stent. Id. at col. 1, ll. 21–24. Figures 1A and 1B are
`
`reproduced below.2
`
`Figure 1A illustrates a bifurcated intraluminal stent; Figure 1B
`illustrates another stent, which is adapted to be connected to the
`bifurcated stent in Figure 1A.
`
`
`
`As shown in Figure 1A , and as described in the Specification (see Ex. 1001,
`
`col. 8, ll. 50–54) bifurcated stent 10 comprises a wire skeleton constructed in four
`
`2 The Figures use the designation “1A” and “1B” while the description in the
`Specification refers to these Figures as “1a” and “1b.”
`
`
`
`3
`
`

`
`IPR2014-01319
`Patent 6,117,167
`
`separate parts: proximal part 12; first frustoconical part 14; first distal part 16; and
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`second frustoconical part 18. Proximal part 12, first and second frustoconical parts
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`14, 18, and first distal part 16 may each be covered with a tubular graft layer of a
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`biocompatible woven fabric, as shown in Figures 5, 6 and 7, for use as an
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`endoluminal prosthesis. Id. at col. 8, ll. 54–58; col. 10, ll. 30–33.
`
`In medical uses where it is required, a second prosthesis comprising second
`
`stent 40, as shown in Figure 1B, may be used. The second stent 40 includes a wire
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`skeleton comprising proximal frustoconical part 42 and distal part 44. Distal part
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`44 of second stent 40 also may be covered with a tubular graft layer of a
`
`biocompatible fabric. Ex. 1001, col. 11, ll. 15–23. Frustoconical proximal part 42
`
`may be formed with circumferentially spaced barbs or hooks 43, as shown in
`
`Figure 1B, which engage in the wire skeleton of the second frustoconical part 18 of
`
`the bifurcated stent 10. Id. at col. 11, ll. 44–48. Both stent 10 and stent 40 may be
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`made from a shape memory alloy. E.g., id. at col. 8, ll. 64–66.
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`In use, the second prosthesis is compressed radially inwards and is inserted
`
`into position using a catheter. Id. at col. 11, ll. 31–33. Frustoconical proximal part
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`42 is guided, in the radially compressed state, into second frustoconical part 18 of
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`bifurcated stent 10. The catheter is then withdrawn allowing second stent 40 to re-
`
`expand towards its remembered configuration until distal part 14 engages the
`
`endoluminal surface of the other common iliac artery, and the outer surface of
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`frustoconical proximal part 42 engages the interior surface of second frustoconical
`
`part 18 of bifurcated stent 10. Id. at col. 11, ll. 31–42. In this connected position,
`
`stent 10 and stent 40 are locked together to define a continuous lumen through the
`
`two stents and resist longitudinal separation. Id. at col. 11, ll. 52–54.
`
`
`
`4
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`

`
`IPR2014-01319
`Patent 6,117,167
`
`
`C. Representative Claim
`
`The’167 Patent contains 82 claims. Claims 1–5, 13, 31–33, 51, 52, 71 and
`
`72 are independent claims. Independent claims 1–5 and 72 claim a “stent joining
`
`means for adjoining a first endoluminal stent to a second endoluminal stent to
`
`define a continuous lumen through the first and second endoluminal stents.”
`
`Independent claims 13, 31, 32, 52 and 71 claim an “endoluminal prosthesis
`
`system.” Independent claims 33 and 51 claim a “system for joining endoluminal
`
`prosthesis segments in a vessel.”
`
`Claim 1 is representative of the claimed invention and is reproduced below.
`
`1. A stent joining means for joining a first endoluminal stent
`
`to a second endoluminal stent to define a continuous lumen
`through the first and second endoluminal stents, said stent
`joining means comprising:
`
`a male engaging portion on said first endoluminal stent
`which has an outer surface and can be compressed radially
`inwardly, wherein said male engaging portion is flared radially
`outwardly towards a proximal end; and
`
`a female portion on said second endoluminal stent
`cooperating with said male engaging portion, said female portion
`having an inner surface;
` wherein said first endoluminal stent and said second
`endoluminal stent consist of a shape memory alloy and the male
`engaging portion can be entered into the female portion in a
`radially compressed state and thereafter expanded in the female
`portion and wherein said outer surface of the male engaging
`portion and said inner surface of the female portion are inter-
`engaged to resist longitudinal movement to prevent separation of
`the first and second endoluminal stents in service.
`
`
`5
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`
`
`
`
`

`
`IPR2014-01319
`Patent 6,117,167
`
`
`D. References Relied Upon
`
`Petitioner relies upon the following prior art references:
`
`Reference
`
`Date Issued
`
`Exhibit
`Number
`June 26, 2012 1002
`
`Ryan,
`U.S. Pat. No. 8,206,427 B1.
`Martin,
`U.S. Pat. No. 5,575,817.
`Wolff,
`U.S. Pat. No. 4,830,003.
`Pinchuk,
`U.S. Pat. 5,226,913.
`
`1003
`
`Nov. 19,
`1996
`May 16, 1989 1004
`
`July 13, 1993 1005
`
`E. The Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability:
`
`Claim(s) Challenged
`
`Statutory Basis
`
`References
`
`102(e)
`
`102(e)
`
`2, 4–6, 8, 10–18, 24, 26,
`28–31, 51–58, 64, 66,
`and 68–77
`13, 18–22, 24–29, 31,
`33, 38–42, 44–49, 51,
`52, 58–62, 64–69, 71,
`72, 77–80, and 82
`
`1–3, 5–10, 12, 34–37
`and 50
`
`103
`
`Ryan
`
`Martin
`
`Martin and Ryan
`
`23, 32, 43, 63, and 81
`
`103
`
`Martin and Wolff
`
`3
`
`1–82
`
`
`
`103
`
`Interference estoppel
`
`Martin, Ryan, and
`Pinchuk
`Interference No. 104,192
`(April 23, 1998) (Ex.
`1007–1009
`
`6
`
`

`
`IPR2014-01319
`Patent 6,117,167
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`1. Claim Construction of an Expired Patent
`
`The Petition in this proceeding was filed on August 18, 2014. Shortly
`
`thereafter, the ’167 patent expired. Pet. 15.3 In an inter partes review, a claim in
`
`an unexpired patent is given its broadest reasonable construction in light of the
`
`specification of the patent in which it appears. 37 C.F.R. § 42.100(b). The
`
`Board’s review of the claims of an expired patent, however, is similar to that of a
`
`district court’s review. In re Rambus, Inc., 753 F.3d 1253, 1255–56 (Fed. Cir.
`
`2014) (involving an inter partes reexamination) (“If, as is the case here, a
`
`reexamination involves claims of an expired patent, a patentee is unable to make
`
`claim amendments and the PTO applies the claim construction principles outlined
`
`by this court in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)”); see also
`
`In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (involving an ex parte
`
`reexamination) (“the Board's review of the claims of an expired patent is similar to
`
`that of a district court's review”). Accordingly, in this proceeding, the claims in the
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`now-expired ’167 patent will be construed under the principles in Phillips v. AWH
`
`
`3 Petitioner asserts the ’167 patent expired on September 27, 2014, based on its
`lineage to a priority claim as a “continuation-in-part” (CIP) of an application filed
`on September 27, 1994. A patent application is entitled to the benefit of the filing
`date of an earlier filed application only if the disclosure of the earlier application
`provides support for the claims of the later application, as required by 35 U.S.C.
`§ 112. 35 U.S.C. § 120. Mendenhall v. Cedarapids Inc., 5 F.3d 1557, 1566
`(Fed.Cir.1993), see also Litton Sys., Inc. v. Whirlpool Corp.,728 F.2d 1423, 1437–
`1438 (Fed.Cir.1984) (discussing filing dates of CIP applications). Thus, the
`’167 patent is entitled to the filing date of the application filed on September 27,
`1994 only if that application discloses the subject matter now claimed by the
`’167 patent. We need not decide this issue because, even if not entitled to the
`September 27, 1994 filing date, the ’167 patent expired on October 4, 2014, based
`on a priority claim of October 4, 1994.
`
`
`
`7
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`

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`IPR2014-01319
`Patent 6,117,167
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`Corp., 415 F.3d 1303, 1312–1313 (Fed. Cir. 2005) (en banc) (words of a claim
`
`“are generally given their ordinary and customary meaning” as understood by a
`
`person of ordinary skill in the art in question at the time of the invention). 4 We
`
`will not apply a rule of construction that claims should be construed to preserve
`
`their validity.5 See also, e.g., Google Inc. and Yahoo! Inc. v. Createads LLC, Case
`
`IPR2014-00200, slip op. at 2, (PTAB July 16, 2014) (Paper 19) (“[n]o presumption
`
`of validity is applied” to interpreting claims in an expired patent.)
`
`The different standard we use in construing the claims in an expired patent
`
`does not change the statutory requirement in this proceeding that Petitioner has the
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`burden of proving a proposition of unpatentability by a preponderance of the
`
`evidence. 35 U.S.C. § 316(e).
`
`2. Means Plus Function in the Preamble
`
`Petitioner notes that the preamble of claims 1–12 and 72–82 each recite
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`“stent joining means for joining . . .” Pet. 15. It is Petitioner’s position that the use
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`of the “means” phrase in the preamble of the claims “appears directed to stating the
`
`intended use of the claimed invention,” and thus Petitioner concludes that Section
`
`112, paragraph 6 does not apply to the interpretation of claims 1–12 and 72–82.
`
`Id. For purposes of this Decision, we agree with Petitioner’s position.
`
`
`4 Petitioner states that “it is unclear whether the broadest reasonable construction or
`the Phillips standard applies to this proceeding.” Pet. 15. We disagree; the
`standard we use in interpreting the claims of an expired patent has been well-
`established by the Board and our reviewing Court.
`5 “While we have acknowledged the maxim that claims should be construed to
`preserve their validity, we have not applied that principle broadly, and we have
`certainly not endorsed a regime in which validity analysis is a regular component
`of claim construction.” Phillips, 415 F.3d at 1327.
`
`
`
`8
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`

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`IPR2014-01319
`Patent 6,117,167
`
`
`3. Specific Claim Terms
`
`Petitioner proposes specific construction for several claim terms. Pet. 16.
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`For this Decision, we determine that construction of the specific terms proposed by
`
`Petitioner is unnecessary.
`
`B. Asserted Grounds of Unpatentability
`
`1. Anticipation Based on Ryan
`
`Petitioner asserts that claims 2, 4–6, 8, 10–18, 24, 26, 28–31, 51–58, 64, 66,
`
`and 68–77 are anticipated by Ryan. Pet. 21.
`
`“A claim is anticipated only if each and every element as set forth in the
`
`claim is found, either expressly or inherently described, in a single prior art
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`reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987)
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`The elements must be arranged as required by the claim, but this is not an
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`ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910
`
`F.2d 831, 832 (Fed. Cir. 1990).
`
`Petitioner provides a detailed general discussion of Ryan (Pet. 17) and a
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`specific discussion of where each and every element as set forth in the challenged
`
`claims is found in Ryan (Pet. 21). Throughout these discussions of the Ryan
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`disclosure, Petitioner cites and relies on the Declaration of Enrique Criado, M.D.
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`(Ex. 1019). E.g., Pet. 20 (citing Ex. 1019 ¶¶ 57–59, 75), 22 (citing Ex. 1019
`
`¶¶ 104 and 105), 23 (citing Ex. 1019 ¶¶ 105 106). Dr. Criado has over 20 years of
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`academic and professional experience in vascular surgery and endovascular
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`interventions. Ex. 1019 ¶ 3. Dr. Criado has experience in both developing and
`
`making stent grafts, in the surgical placement of grafts, and in the endovascular
`
`placement of stent grafts and stents. Id. Petitioner also provides a claim chart
`
`further identifying where Ryan discloses the elements of the challenged claims.
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`Pet. 25.
`
`
`
`9
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`

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`IPR2014-01319
`Patent 6,117,167
`
`
`Based on the evidence and arguments in the Petition, and for purposes of
`
`this Decision, we are persuaded that there is a reasonable likelihood that the
`
`Petitioner will prevail in establishing that claims 2, 4–6, 8, 10–18, 24, 26, 28–31,
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`51–58, 64, 66, and 68–77 are anticipated by Ryan.
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`2. Anticipation Based on Martin
`
`Petitioner asserts that claims 13, 18–22, 24–29, 31, 33, 38–42, 44–49, 51,
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`52, 58–62, 64–69, 72, 77–80, and 82 are anticipated by Martin. Pet. 30.
`
`Similar in format to its discussion of Ryan, Petitioner provides a detailed
`
`general discussion of Martin (Pet. 30) and a specific discussion of where each and
`
`every element as set forth in the challenged claims is found in Martin (Pet. 35).
`
`Throughout these discussions of the Martin disclosure, Petitioner cites and relies
`
`on the Declaration of Dr. Criado. Petitioner also provides a claim chart further
`
`identifying where Martin discloses the elements of the challenged claims. Id. at
`
`39.
`
`Based on the evidence and arguments in the Petition, and for purposes of
`
`this Decision, we are persuaded that there is a reasonable likelihood that the
`
`Petitioner will prevail in establishing that claims 13, 18–22, 24–29, 31, 33, 38–42,
`
`44–49, 51, 52, 58–62, 64–69, 72, 77–80, and 82 are anticipated by Martin.
`
`3. Obviousness Based on Martin and Ryan
`
`Petitioner asserts that claims 1–3, 5–10, 12, 34–37, and 50 would have been
`
`obvious over Martin in view of Ryan. Pet. 44–45.
`
`The Supreme Court has made clear that we apply “an expansive and flexible
`
`approach” to the question of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 415 (2007). Whether a patent claiming the combination of prior art elements
`
`is obvious is determined by whether the improvement is more than the predictable
`
`use of prior art elements according to their established functions. Id. at 417. As
`
`
`
`10
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`

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`IPR2014-01319
`Patent 6,117,167
`
`the Supreme Court recognized, in many cases a person of ordinary skill “will be
`
`able to fit the teachings of multiple patents together like pieces of a puzzle,”
`
`recognizing that a person of ordinary skill “is also a person of ordinary creativity,
`
`not an automaton.” Id. at 420–21.
`
`According to Petitioner, Martin discloses every claim limitation of the
`
`challenged claims,
`
`with the possible exception of explicitly disclosing (1) a shape
`memory alloy that is thermally induced to expand or a stent that
`expands by thermal transformation, as required by claims 1–3,
`5–10, and 12; (2) a graft layer attached to the stent by a filament,
`as recited in claim 34; (3) that the stent defines hoops having a
`common axis, as required by claim 35; and (4) that the hoops
`have a plurality of apices alternatingly pointing in opposite axial
`directions, and a connecting or extending member, as required by
`claims 36 and 37.
`
`Pet. 45–46 (footnote omitted). Dr. Criado states the same conclusion. Ex. 1019
`
`¶ 113.
`
`With respect to claims 1–3, 5–10 and 12, Petitioner asserts that it would
`
`have been obvious to apply Ryan’s explicit teaching of a memory shape alloy to
`
`the medical grade, super alloy, stainless steel mesh support disclosed in Martin.
`
`Pet 46 (citing Ex. 1019 ¶¶ 114–115). Petitioner bases this assertion on the
`
`testimony of Dr. Criado, who opines that a person of ordinary skill “would be
`
`motivated to swap the existing self-expanding stent in Martin with the self-
`
`expanding shape memory stent in Ryan, which is also used in a bifurcated stent
`
`graft.” Ex. 1019 ¶ 115. The rationale for this motivation, according to Dr. Criado,
`
`is that “as of September 1994, a person of ordinary skill would have been
`
`motivated to swap the self-expanding shape memory stent of Ryan’s bifurcated
`
`stent graft to the self-expanding mesh support disclosed in Martin’s bifurcated
`
`stent graft in order to achieve superior elasticity and fatigue resistance.” Id.
`
`
`
`11
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`

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`IPR2014-01319
`Patent 6,117,167
`
`
`With respect to claims 34–37 and 50, Petitioner asserts it would have been
`
`obvious to apply the known stent configurations of Ryan to the flared embodiment
`
`of Martin, again relying on Dr. Criado’s testimony to provide supporting rationales
`
`for the proposed combination of references. Pet. 47 (citing Ex. 1019 ¶¶ 116–118).
`
`Based on the evidence and arguments in the Petition, and for purposes of
`
`this Decision, we are persuaded that there is a reasonable likelihood that the
`
`Petitioner will prevail in establishing that claims 1–3, 5–10, 12, 34–37, and 50
`
`would have been obvious over Martin and Ryan.
`
`4. Obviousness Based on Martin and Wolff
`
`Petitioner asserts that claims 23, 32, 43, 63, and 81 would have been obvious
`
`over Martin in view of Wolff. Pet. 52. These claims relate to monitoring
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`radiopaque markers wherein the image of said marker differs depending on the
`
`rotational orientation of said prosthesis segment so that said rotational orientation
`
`can be determined. Claim 32 also requires that portion having different radiopacity
`
`is configured in a “V” shape.
`
`According to Petitioner, Wolff discloses an intravascular stent having bends
`
`that form a “V” at each weld, and that the stent may be made of radiopaque
`
`material to facilitate precise location of the stent. Id. (citing Ex. 1004). Petitioner
`
`asserts that it would have been obvious to apply a V-shaped radiopaque section
`
`from Wolff’s stent to the platinum wire of Martin to more specifically determine
`
`the rotational orientation of the first and second prosthesis segments to further
`
`facilitate alignment and positioning. Id. at 53 (citing Ex. 1019 ¶ 119).
`
`Dr. Criado opines that Martin discloses all of the base features of the claims
`
`23, 32, 43, 63, and 81, and further discloses that both the first and second
`
`bifurcated graft sections may be marked with a platinum wire to enhance
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`fluoroscopic visibility to facilitate proper alignment or positioning of the sections.
`
`
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`12
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`IPR2014-01319
`Patent 6,117,167
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`Ex. 1019 ¶ 119. Dr. Criado also states that, in his opinion, it would have been
`
`obvious to apply a V-shaped radiopaque section from Wolff’s stent to the platinum
`
`wire of Martin to determine more specifically the rotational orientation of the first
`
`and second prosthesis segments to facilitate further alignment and positioning. Id.
`
`The stated rationale for the asserted combination of features from the references is
`
`that this allows physicians to visualize the device as they are delivering the device
`
`to the site of treatment. Id. Dr. Criado also opines that a person of ordinary skill
`
`would understand that the resulting fluoroscopic image of Wolff’s radiopaque, V-
`
`shaped section would differ depending on the rotational orientation of the stent,
`
`thus allowing rotational orientation to be determined during delivery.
`
`Based on the evidence and arguments in the Petition, and for purposes of
`
`this Decision, we are persuaded that there is a reasonable likelihood that the
`
`Petitioner will prevail in establishing that claims 23, 32, 43, 63, and 81 would have
`
`been obvious over Martin and Wolff.
`
`5. Obviousness Based on Ryan and Pinchuk
`
`Petitioner asserts that Claim 3 would have been obvious over Martin in view
`
`of Ryan and Pinchuk. Pet. 53–54. Claim 3 requires a male engaging portion with
`
`a frustoconical wall flaring outwardly; that both the first and second stents be made
`
`from a shape memory alloy, and that the outer surface of the male portion and the
`
`inner surface of the female portion be “inter-engaged.” Martin and Ryan have
`
`been discussed above. Petitioner asserts that Pinchuk discloses tapered, truncated
`
`cone-shaped stent designs in association with stainless steel or self-expanding,
`
`memory alloy stents for endovascular deployment. Pet. 54. Petitioner concludes it
`
`would have been obvious to a person of ordinary skill in the art to use Pinchuk’s
`
`frustoconical design as other means of attaching the second section to the first
`
`section of Martin, while employing a stent comprising a memory shape alloy, as
`
`
`
`13
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`

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`IPR2014-01319
`Patent 6,117,167
`
`disclosed by Ryan. Id. at 55 (citing Ex. 1019 ¶ 120).
`
`Dr. Criado opines that by September 1994, a person of ordinary skill would
`
`have understood that there were multiple methods by which to anchor an
`
`endoprosthesis in a vessel, including by way of example based on cited data, hooks
`
`located at the upper end of each strut; radially outward flares; metal strand barbs,
`
`outward-facing hooks, or a friction fit. Ex. 119 ¶ 120. Dr. Criado also states that a
`
`person of ordinary skill would have understood that the frustoconical shape
`
`disclosed in Pinchuk would prevent separation of the two endoprosthesis sections
`
`in a similar manner to the tapered embodiment disclosed in Martin. Id.
`
`Based on the evidence and arguments in the Petition, and for purposes of
`
`this Decision, we are persuaded that there is a reasonable likelihood that the
`
`Petitioner will prevail in establishing that Claim 3 would have been obvious over
`
`Martin in view of Ryan and Pinchuk.
`
`6. Interference Estoppel
`
`Petitioner “requests that all claims 1–82 of the ’167 patent be canceled”
`
`based on the fact that “Patent Owner is not entitled to claims that are patentably
`
`indistinct from the claims involved in [Patent Interference No. 104,192.]”6
`
`Pet. 14, 15. The ’167 patent was not involved in Patent Interference No. 104,192
`
`(“the ’192 Interference”). The asserted relationship between the application
`
`involved in the ’192 Interference and the ’167 patent is that both claimed priority
`
`to the same parent application. Id. at 12. Based on this relationship and the
`
`determination in the ’192 Interference, Petitioner asserts “it is conclusive that the
`
`‘167 Patent cannot claim priority to EP 94400284 (‘EP ‘284’) or EP 94401306
`
`(‘EP ‘306’).” Id. In this asserted ground of unpatentability, Petitioner is relying on
`
`estoppel based on the judgment in the ’192 Interference, not on asserted
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`6 See Ex. 1007–1009.
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`14
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`IPR2014-01319
`Patent 6,117,167
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`unpatentability under 35 U.S.C. §§ 102, 103 based on prior art.
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`Under 35 U.S.C. § 311(b), a petitioner in an inter partes review “may
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`request to cancel as unpatentable 1 or more claims of a patent only on a ground
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`that could be raised under section 102 or 103 and only on the basis of prior art
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`consisting of patents or printed publications (emphasis added).” Petitioner has not
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`directed us to any authority that allows this Board to cancel claims in a patent
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`merely because the patent may not be entitled to the priority it claims, which is the
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`relief requested by Petitioner (see Pet. 14, 15). Accordingly, we do not institute an
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`inter partes review based solely on the alleged interference estoppel asserted by
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`Petitioner.
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`III. CONCLUSION
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`Upon consideration of the Petition, as discussed in this Decision, we are
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`persuaded that the record before us demonstrates a reasonable likelihood that
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`Petitioner will prevail in establishing that claims 1–82 of the ’167 patent are not
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`patentable based on the references asserted in the Petition.
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`We are not persuaded, however, that there is a reasonable likelihood that
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`Petitioner will prevail in establishing that claims 1–82 are not patentable merely
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`because they may not be entitled to the priority claimed in the patent.
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`This is a decision to institute an inter partes review under 35 U.S.C. § 314.
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`The Board has not made a final determination on the patentability of the
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`challenged claims.
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`IV. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted as to the following claims and grounds:
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`1. Claims 2, 4–6, 8, 10–18, 24, 26, 28–31, 51–58, 64, 66, and 68–77 of the
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`’167 patent as anticipated under 35 U.S.C. § 102(e) by Ryan;
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`
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`15
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`

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`2. Claims 13, 18–22, 24–29, 31, 33, 38–42, 44–49, 51, 52, 58–62, 64–69,
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`71, 72, 77–80, and 82 of the ’167 patent as anticipated by Martin under 35 U.S.C.
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`§ 102(e);
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`3. Claims 1–3, 5–10, 12, 34–37, and 50 of the ’167 patent as obvious under
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`35 U.S.C. § 103 in view of Martin and Ryan;
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`4. Claims 23, 32, 43, 63, and 81 of the ’167 patent as obvious under 35
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`U.S.C. § 103 in view of Martin and Wolff; and
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`5. Claim 3 of the ’167 patent as obvious under 35 U.S.C. § 103 in view of
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`Martin, Ryan, and Pinchuk;
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`FURTHER ORDERED that no ground other than that specifically granted
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`above is authorized for the inter partes review; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is hereby given of the institution of a trial commencing on the entry
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`date of this decision.
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`16
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`

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`17
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`IPR2014-01319
`Patent 6,117,167
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`FOR PETITIONER:
`
`Victor Jonas
`Joel D. Sayres
`Lauren Frank
`Faegre Baker Daniels LLP
`Victor.Jonas@FaegreBD.com
`Joel.Sayres@FaegreBD.com
`Lauren.Frank@FaegreBD.com
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`FOR PATENT OWNER:
`
`Robert W. Ashbrook, Jr.
`Kevin M. Flannery
`Dechert LLP
`robert.ashbrook@dechert.com
`kevin.flannery@dechert.com