Trials@uspto.gov
`571.272.7822
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` Paper No. 7
`October 13, 2017
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`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 IPR2017-01301
`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 Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
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` Paper No. 7
`October 13, 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 IPR2017-01301
`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 Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2017-01301
`Patent 6,915,560 B2
`
`
`
`INTRODUCTION
`I.
`On April 19, 2017, Edwards Lifesciences Corporation (“Petitioner”)
`filed a Petition (Paper 1, “Pet.”) requesting institution of inter partes review
`of claims 1, 2, 6, 8–11, 14, 15, 17–19, 23, 25–28, 31, 33–35, 37, 39, and 40
`(the “Challenged Claims”) of U.S. Patent No. 6,915,560 B2 (Ex. 1201,
`“the ’560 patent”). Boston Scientific Scimed, Inc. (“Patent Owner”) filed a
`Preliminary Response (Paper 6, “Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`be instituted “unless . . . the information presented in the petition . . . 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.” See also
`37 C.F.R. § 42.4(a).
`The Petition is the third petition filed by Petitioner challenging the
`same claims of the ’560 patent. Petitioner filed its first petition against the
`Challenged Claims of the ’560 patent on October 14, 2016, in IPR2017-
`00072 (“IPR-072”). Edwards Lifesciences Corp. v. Boston Scientific
`Scimed, Inc., Case IPR2017-00072, Paper 1 (the “IPR-072 Petition”), 44–93.
`Petitioner filed its second petition on December 7, 2016, against the
`Challenged Claims of the ’560 patent in IPR2017-00444 (“IPR-444”).
`Edwards Lifesciences Corp. v. Boston Scientific Scimed, Inc.,
`Case IPR2017-00444, Paper 1 (the “IPR-444 Petition”), 49–97.
`On April 21, 2017, we declined institution of inter partes review of
`the Challenged Claims of the ’560 patent in IPR-072. IPR-072, Paper 8 (the
`“IPR-072 Institution Decision”), 11. On June 29, 2017, we instituted inter
`partes review of the Challenged Claims of the ’560 patent in IPR-444.
`
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`IPR2017-01301
`Patent 6,915,560 B2
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`IPR-444, Paper 9 (the “IPR-444 Institution Decision”), 25. Oral argument in
`IPR-444, if requested by the parties, is scheduled for March 15, 2018.
`IPR-444, Paper 8, 8.
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108(a). For the reasons explained below, we
`exercise our discretion to not institute inter partes review on any of the
`Challenged Claims of the ’560 patent in this case.
`BACKGROUND
`II.
`A.
`The ’560 Patent
`The ’560 patent, titled “Apparatus for Contracting, Loading or
`Crimping Self-Expanding and Balloon Expandable Stent Devices,” issued
`July 12, 2005, from U.S. Application No. 10/444,807 (the ’807 application),
`filed May 23, 2003. Ex. 1201. The ’807 application was a division of U.S.
`Application No. 09/966,686, filed on October 1, 2001 (issued as U.S. Patent
`No. 6,823,576), which was a continuation of U.S. Application
`No. 09/401,218 (the ’218 application), filed on September 22, 1999 (issued
`as U.S. Patent No. 6,360,577). Id. The ’560 patent generally relates to a
`device “capable of crimping a stent uniformly while minimizing the
`distortion of and scoring and marking of the stent due to crimping.” Id. at
`2:26–29.
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`IPR2017-01301
`Patent 6,915,560 B2
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`Figure 4A of the ’560 patent is reproduced below.
`
`
`Figure 4A illustrates “a partial front view of an embodiment of the inventive
`apparatus.” Ex. 1201, 4:1–2. Actuation device 138 includes rotatable
`actuation plate 142 and eight coupled blades 106 disposed about reference
`circle 114 to form aperture 118. See id. at 4:46–49. “Each blade 106 is
`engaged to actuation plate 142 via a cam follower bearing 150 disposed in
`radial slot 146 and attached to mounting means in slotted end 134.” Id. at
`5:19–21. “Each bearing 150 extends from a linear slide 154.” Id. at 5:22.
`“In use, as actuation plate 142 is rotated in a clockwise direction, the
`clockwise motion of the actuation plate is translated into linear motion of
`each linear slide 154 and blade 106 via bearing 150.” Id. at 5:46–49. “Each
`blade 106 moves outward in a direction parallel to the
`radius 126 . . . resulting in the opening of aperture 118.” Id. at 5:49–52.
`
`4
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`IPR2017-01301
`Patent 6,915,560 B2
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`Illustrative Claim
`B.
`Challenged claims 1, 10, 18, 27, 37, 39, and 40 are independent.
`Claim 1 is illustrative of the claimed subject matter and is reproduced below:
`1. A stent crimper comprising:
`a plurality of movable dies arranged to form an iris having a
`longitudinal axis, the iris defining an aperture, the dies
`disposed about the aperture and between stationary end-walls
`which are disposed about the longitudinal axis, at least one of
`the stationary end-walls operatively engaged to the dies at
`distinct connection locations such that the number of distinct
`connection locations and the number of dies are the same;
`each die having a first straight side and a second straight side, the
`first straight side and the second straight side conver[g]ing to
`form a tip; wherein a portion of the first straight side of each
`die faces the aperture, each first straight side parallel to the
`second side of an adjacent die.
`Ex. 1201, 10:8–22.
`
`Related Proceedings
`C.
`In addition to the inter partes review of the Challenged Claims of the
`’560 patent instituted in IPR-444 and the petition denied in IPR-072,
`discussed above, the parties indicate that the ’560 patent is asserted in the
`United States District Court for the Central District of California, in a case
`captioned Boston Scientific Corp. et al. v. Edwards Lifesciences Corp.,
`Case No. 8:16-cv-0730 (C.D. Cal.). Pet. 11; Paper 3, 2.
`Real Parties in Interest
`D.
`Petitioner identifies only itself as a real party in interest. Pet. 11.
`Patent Owner identifies itself and Boston Scientific Corp. as real parties in
`interest. Paper 3, 2.
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`Patent 6,915,560 B2
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`The Asserted Grounds of Unpatentability
`E.
`Petitioner challenges the patentability of claims 1, 2, 6, 8–11, 14, 15,
`17–19, 23, 25–28, 31, 33–35, 37, 39, and 40 of the ’560 patent on the
`following grounds:
`References
`Yasumi1 and Williams2
`
`Claims challenged
`Basis
`§ 103 1, 2, 6, 8–10, 14, 15, 18, 23,
`25, 27, 28, 31, 33, 37, and 40
`Yasumi, Williams, and Morales 23 § 103 11, 17, 19, 26, 34, 35, and 39
`
`Petitioner relies on the Declaration by Neil Sheehan, dated
`April 19, 2017, (Ex. 1205) as support for its challenge.
`III. ANALYSIS
`A. Discretionary Non-Institution Under 35 U.S.C. § 314(a)
`The Board has discretion not to institute an inter partes review.
`35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a); Harmonic Inc. v. Avid Tech, Inc.,
`815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but
`never compelled, to institute an IPR proceeding.”). When considering
`whether to exercise this discretion, we look to factors, including:
`1. whether the petitioner filed a prior petition directed to the same
`claims of the same patent;
`2. whether the petitioner filed the subsequent petition after the
`petitioner received the patent owner’s preliminary response to the
`prior petition or the Board’s institution decision on the prior petition;
`
`
`1 U.S. Patent No. 4,454,657, issued June 19, 1984 (Ex. 1203, “Yasumi”).
`2 U.S. Patent No. 5,437,083, issued August 1, 1995 (Ex. 1227, “Williams”).
`3 U.S. Patent No. 6,051,002, issued April 18, 2000 (Ex. 1218, “Morales 2”).
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`Patent 6,915,560 B2
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`3. whether the petitioner knew, or should have known, of the
`references newly asserted in the subsequent petition when the
`petitioner filed the prior petition, and the length of time from when the
`petitioner learned of the references newly asserted in the subsequent
`petition to when the subsequent petition was filed;
`4. whether the petitioner provided an adequate explanation for the
`time elapsed between filing the prior petition and the subsequent
`petition; and
`5. whether the subsequent petition weighs on the finite resources
`of the Board and the requirement, absent good cause, to issue a final
`determination not later than one year after the date on which the
`Director notices institution of review.
`See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357
`(PTAB Sept. 6, 2017) (Paper 19, 15–16) (informative) (“Gen. Plastic”).
`In applying these factors, we consider not only the congressional
`intent that inter partes review proceedings provide an effective and efficient
`alternative to district court litigation, but also the potential for abuse of the
`review process through repeated attacks by the same petitioner with respect
`to the same patent. See Gen. Plastic, slip. op. at 16–17 (citing H.R. Rep.
`No. 112-98, pt.1, at 40 (2011)). We address each of these factors in turn, but
`note that not all the factors need to weigh against institution for us to
`exercise our discretion under § 314(a).
`
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`IPR2017-01301
`Patent 6,915,560 B2
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`Whether Petitioner Previously Filed a Petition Directed to the Same Claims
`of the Same Patent
`The Challenged Claims of the ’560 patent that are the subject of the
`Petition are the same claims of the same patent that Petitioner challenged in
`its prior petitions in IPR-072 and IPR-444. IPR-072 Petition, 44–93;
`IPR-444 Petition, 49–97. Accordingly, this factor weighs against institution.
`Whether the Petition Was Filed after Petitioner Received Patent Owner’s
`Preliminary Response to the Prior Petition or the Board’s Institution
`Decision on the Prior Petition
`In IPR-072, Patent Owner’s preliminary response was filed on
`January 25, 2017. IPR-072, Paper 7, 45. In IPR-444, Patent Owner’s
`preliminary response was filed on April 4, 2017. IPR-444, Paper 7, 45.
`Accordingly, when Petitioner filed the Petition in this case on April 19,
`2017, Petitioner had Patent Owner’s preliminary responses addressing the
`prior petition in IPR-072 for nearly three months and the prior petition in
`IPR-444 for over two weeks.
`Although Petitioner did not have either our decision declining
`institution of inter partes review in IPR-072 or our decision instituting inter
`partes review in IPR-444 prior to filing the Petition, Petitioner had ample
`time to take advantage of Patent Owner’s Preliminary Responses to the prior
`petitions in crafting its arguments in the Petition. Indeed, the Petition
`suggests the grounds asserted in this case are intended to overcome
`arguments made by Patent Owner in response to the prior petitions.
`See Pet. 93–94 (Petitioner stating, for example, that Patent Owner’s
`argument in response to prior petition that alleged applicant admitted prior
`art is not prior art is inapplicable to Williams in this case). Consequently,
`this factor weighs against institution.
`
`8
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`IPR2017-01301
`Patent 6,915,560 B2
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`Whether Petitioner Knew, or Should Have Known, of the References
`Asserted in the Petition When It Filed the Prior Petition and the Length of
`Time Between Learning of the References and Filing the Petition
`Petitioner contends the Challenged Claims of the ’560 patent would
`have been obvious over Yasumi and Williams, with the addition of
`Morales 2 for certain claims. Pet. 26–27. Petitioner’s contentions in
`IPR-444 also relied on Yasumi. IPR-444 Petition, 30. Williams and
`Morales 2 are both expressly identified in the ’560 patent. Ex. 1201,
`References Cited. Thus, Petitioner knew or should have known of Yasumi,
`Williams, and Morales when it filed the prior petition in IPR-444.
`Petitioner’s filing of the Petition on April 18, 2017, in this case
`reflects a delay in excess of six months from when the prior petition was
`filed in IPR-072, and a delay in excess of four months from when the prior
`petition was filed in IPR-444. Accordingly, because Petitioner knew or
`should have known of the references it asserts in this case at least at the time
`it filed the prior petition in IPR-444, but waited over four months to file a
`third petition, this factor weighs against institution.
`Whether Petitioner Provided an Adequate Explanation for the Time Elapsed
`Between Filing the Petitions
`Petitioner does not provide a persuasive explanation for the time
`elapsed between filing the prior petitions in IPR-072 and IPR-444 and filing
`the Petition in this case. Petitioner primarily argues only that the grounds
`asserted in the Petition are not redundant to grounds asserted in the earlier
`petitions. Pet. 93–94. Even if the grounds asserted in the third petition are
`materially different from grounds asserted in the prior petitions, that does
`not explain or justify Petitioner’s decision to wait to file the subsequent
`petition on references Petitioner knew, or should have known of, when the
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`IPR2017-01301
`Patent 6,915,560 B2
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`prior petition was filed. In particular, Petitioner provides no explanation for
`its delay in relying on a reference in place of purported applicant admitted
`prior art when Patent Owner first raised its argument on that issue in its
`preliminary response in IPR-072 on January 25, 2017. IPR-072, Paper 7, 7–
`11. Consequently, this factor also weighs against institution.
`Board Resources and Issuance of a Final Determination
`Analysis of “multiple, staggered petition filings” is, in general, “an
`inefficient use of the inter partes review process and the Board’s resources.”
`Gen. Plastic, slip. op. 21. The final hearing in IPR-444 is scheduled for
`March 15, 2018. Proceeding with multiple challenges by the same Petitioner
`to the same patent on different schedules presents a burden on both Patent
`Owner and the Board, particularly in the absence of any reasoning from
`Petitioner for the substantial delay between filing the petitions. See IPR-
`444, Paper 8, 8. Thus, we consider this factor to favor non-institution.
`Conclusion
`B.
`For the reasons discussed above, we find that the factors we consider
`in determining whether to exercise our discretion not to institute an inter
`partes review favor non-institution in this case. Thus, we exercise our
`discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) not to
`institute review with respect to claims 1, 2, 6, 8–11, 14, 15, 17–19, 23,
`25–28, 31, 33–35, 37, 39, and 40 of the ’560 patent in this case.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’560 patent, and no trial is instituted.
`
`
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`IPR2017-01301
`Patent 6,915,560 B2
`
`
`Petitioner
`
`Craig S. Summers
`Brenton R. Babcock
`Christy G. Lea
`Cheryl T. Burgess
`KNOBBE, MARTENS, OLSON & BEAR
`2css@knobbe.com
`2brb@knobbe.com
`2cgl@knobbe.com
`2ctb@knobbe.com
`
`
`Patent Owner
`
`Wallace Wu
`Jennifer A. Sklenar
`Nicholas M. Nyemah
`ARNOLD & PORTER KAYE SCHOLER LLP
`xEDW_BSC_IPR01301@apks.co
`
`11
`
`
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