Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: September 5, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00072
`Patent 6,915,560 B2
`____________
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Entered: September 5, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00072
`Patent 6,915,560 B2
`____________
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`IPR2017-00072
`Patent 6,915,560 B2
`
`
`I.
`INTRODUCTION
`Petitioner, Edwards Lifesciences Corporation, filed a Petition
`requesting an inter partes review of claims 1, 2, 6, 8–11, 14, 15, 17–19, 23,
`25–28, 31, 33–35, 37, 39, and 40 of U.S. Patent No. 6,916,560 B2
`(Ex. 1001, “the ’560 patent”). Paper 1 (“Pet.”). Patent Owner, Boston
`Scientific Scimed, Inc., filed a Corrected Preliminary Response. Paper 7
`(“Prelim. Resp.”). In our Decision dated April 21, 2017 (Paper 8,
`“Decision” or “Dec.”), we determined that the information presented in the
`Petition raised the same or substantially the same prior art or arguments as
`those previously presented to the Office, and exercised our discretion not to
`institute inter partes review of the ’560 patent on the grounds raised by
`Petitioner in this case.
`Petitioner requests rehearing (Paper 9, “Req. Reh’g.”) of our
`Decision, and, specifically, reconsideration of our determination not to
`institute inter partes review based on Petitioner’s contention that challenged
`claims of the ’560 patent would have been obvious over alleged Applicant
`Admitted Prior Art (“AAPA”), in combination with either (1) Sabbaghian,1
`(2) Sabbaghian and Morales,2 (3) Baker,3 or (3) Baker and Morales. Req.
`Reh’g. 1, 6–13. For the reasons that follow, Petitioner’s request for
`rehearing is denied.
`
`
`1 U.S. Patent No. 5,918,511, issued July 6, 1999 (Ex. 1006, “Sabbaghian).
`2 U.S. Patent No. 5,893,852, issued April 13, 1999 (Ex. 1007, “Morales”).
`3 U.S. Patent No. 4,308,744, issued January 5, 1982 (Ex. 1008, “Baker”).
`2
`
`
`
`IPR2017-00072
`Patent 6,915,560 B2
`
`
`II. ANALYSIS
`The applicable standard for a request for rehearing is set forth in
`37 C.F.R. § 42.71(d), which provides in relevant part:
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, opposition, or a reply.
`When reconsidering a decision on institution, we review the decision for an
`abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may
`be determined if a decision is based on an erroneous interpretation of law, if
`a factual finding is not supported by substantial evidence, or if the decision
`represents an unreasonable judgment in weighing relevant factors. See Star
`Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold
`P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203
`F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the
`burden of showing the decision should be modified, which includes
`specifically identifying all matters the party believes we misapprehended or
`overlooked. See 37 C.F.R. § 42.71(d).
`
`Petitioner contends that because “the Petition prior art combinations
`disclose claim limitations not disclosed by the Office prior art
`combinations,” our Decision to exercise discretion to deny the Petition was
`based on findings that “cannot be supported by substantial evidence and
`amount to an abuse of discretion.” Req. Reh’g. 1.
`
`As explained in the Decision, “[a]ccording to Petitioner, ‘[t]he only
`distinction between the AAPA and the challenged claims is the shape and
`3
`
`
`
`IPR2017-00072
`Patent 6,915,560 B2
`
`arrangement of the blades that form the claimed ‘polygonal aperture.’’”
`Dec. 7 (quoting Pet. 37 (citing Ex. 1011 ¶ 94)). Petitioner does not dispute
`that the alleged Applicant Admitted Prior Art and Morales were previously
`presented to the Office. See Dec. 9–10. With regard to Sabbaghian and
`Baker, the Decision further states:
`Sabbaghian, disclosing an adjustable socket wrench, and
`Baker, disclosing a tube pointer, were not considered during
`prosecution. See Pet. 37, 41. Petitioner relies on Sabbaghian and
`Baker as disclosing dies arranged to form a variable-sized
`polygonal aperture, the only claimed feature Petitioner argues is
`missing from the alleged Applicant Admitted Prior Art. Pet. 3–
`4, 37–43. According to Petitioner, “the polygonal-shaped die
`configuration is nothing new,” and “[f]or more than a century,
`skilled artisans have used such a configuration.” Id. at 4.
`Petitioner concedes that “[t]he die configuration disclosed in
`Sabbaghian and Baker is not unique. Such a die configuration is
`common in the prior art.” Id. at 93 (under the heading “The
`Claimed Die Configuration Was Ubiquitous In The Prior Art”).
`Although Sabbaghian and Baker were not considered, Petitioner
`notes that during examination Whitesell was applied as
`disclosing a crimper with a “substantially regular polygonal
`shape.” Pet. 22. Similarly, Tuberman was considered during
`prosecution as teaching a device with “an aperture of a
`substantially regular polygonal shape.” See Prelim. Resp. 19
`(quoting Ex. 1002, 45).
`For the foregoing reasons we determine that the alleged
`Applicant Admitted Prior Art and Morales were previously
`presented to the Office. Additionally, the Petition further
`presents information from Sabbaghian and Baker, generally
`described by Petitioner as “ubiquitous” in the prior art, which we
`find to be the same or substantially the same as information
`considered during prosecution in the context of other references,
`including Whitesell and Tuberman.
`
`4
`
`
`
`IPR2017-00072
`Patent 6,915,560 B2
`
`
`Id. at 10–11. According to Petitioner, “[t]he only distinction between the
`AAPA and the challenged claims is the shape and arrangement of the blades
`that form the claimed ‘polygonal aperture.’” Pet. 37 (citing Ex. 1011 ¶ 94).
`Petitioner argues that Whitesell can be distinguished from the asserted prior
`art in this proceeding because it does not teach “the straight-sided
`die/polygonal aperture limitation.” Req. Reh’g. 7. However, Petitioner does
`not dispute that Tuberman discloses this feature. See id. at 7–8. Thus,
`Petitioner has not shown a substantial difference between the art previously
`considered by the Office and the alleged prior art asserted in the Petition.
`Instead, Petitioner argues that the Examiner did not apply Tuberman in
`combination with the alleged Applicant Admitted Prior Art. According to
`Petitioner, “the Examiner applied Tuberman individually as an anticipatory
`reference,” and “[i]t is irrelevant to speculate why the Examiner did not
`make a combination that is so readily apparent.” Req. Reh’g. 8, 11.
`As we explained in the Decision:
`In determining whether to institute inter partes review, we
`may “deny some or all grounds for unpatentability for some or
`all of the challenged claims.” 37 C.F.R. § 42.108(b); see 35
`U.S.C. § 314(a). Our discretionary determination of whether to
`institute review is guided by 35 U.S.C. § 325(d), which states, in
`relevant part, that “[i]n determining whether to institute or order
`a proceeding under this chapter, chapter 30, or chapter 31, the
`Director may take into account whether, and reject the petition
`or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” 35 U.S.C.
`§ 325(d) (emphasis added).
`Dec. 9. Our discretion under § 325(d) involves a balance between several
`competing interests. See Neil Ziegman, N.P.Z., Inc. v. Stephens, Case
`5
`
`
`
`IPR2017-00072
`Patent 6,915,560 B2
`
`IPR2015-01860, slip op. at 12–13 (PTAB Feb. 24, 2016) (Paper 11) (“While
`petitioners may have sound reasons for raising art or arguments similar to
`those previously considered by the Office, the Board weighs petitioners’
`desires to be heard against the interests of patent owners, who seek to avoid
`harassment and enjoy quiet title to their rights.”) (citing H.R. Rep. No. 112-
`98, pt. 1, at 48 (2011)). “On the one hand, there are the interests in
`conserving the resources of the Office and granting patent owners repose on
`issues and prior art that have been considered previously.” Fox Factory, Inc.
`v. SRAM, LLC, Case IPR2016-01876, slip op. 7 (PTAB Apr. 3, 2017) (Paper
`8). “On the other hand, there are the interests of giving petitioners the
`opportunity to be heard and correcting any errors by the Office in allowing a
`patent—in the case of an inter partes review—over prior art patents and
`printed publications.” Id.
`In this case, Petitioner contends that because the Office did not
`previously explicitly address a combination of the alleged Applicant
`Admitted Prior Art and Tuberman, which was expressly considered by the
`Examiner as an anticipatory reference, we abused our discretion by finding
`that the same or substantially the same prior art or arguments were
`previously presented to the Office.” We disagree. Under the circumstances
`presented in this case, we found that Petitioner’s substantial reliance on
`alleged Applicant Admitted Prior Art in the challenged patent, in
`combination with the disclosure of Sabbaghian and Baker of features
`disclosed at least by Tuberman, was appropriately a consideration in
`determining whether to institute a proceeding. We have considered anew
`Petitioner’s arguments and remain persuaded that the same or substantially
`
`6
`
`
`
`IPR2017-00072
`Patent 6,915,560 B2
`
`the same prior art or arguments asserted in the Petition previously were
`presented to the Office.
`
`III. CONCLUSION
`For the reasons above, we conclude that Petitioner has not met its
`burden of showing an abuse of discretion, or that we misapprehended or
`overlooked any of Petitioner’s arguments, either in our determination that
`the Petition raises the same or substantially the same prior art or arguments
`as those previously presented to the Office or in our exercise of discretion
`not to institute inter partes review of the ’560 patent pursuant to our
`authority arising under 35 U.S.C. §§ 314 and 325(d), and 37 C.F.R.
`§§ 42.4 and 42.108.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`7
`
`
`
`IPR2017-00072
`Patent 6,915,560 B2
`
`
`
`PETITIONER
`Craig S. Summers
`Brenton R. Babcock
`Christy G. Lea
`Cheryl T. Burgess
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2css@knobbe.com
`2brb@knobbe.com
`2cgl@knobbe.com
`2ctb@knobbe.com
`
`PATENT OWNERS
`Wallace Wu
`Jennifer A. Sklenar
`Nicholas M. Nyemah
`ARNOLD & PORTER LLP
`Wallace.Wu@aporter.com
`Jennifer.Sklenar@aporter.com
`nicholas.nyemah@aporter.com
`
`
`8
`
`
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