Trials@uspto.gov Paper No. 10
`571-272-7822 Entered: November 29, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`NEVRO CORP.,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC NEUROMODULATION CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00147
`Patent 8,650,747 B2
`____________
`
`
`
`Before HUBERT C. LORIN, MICHAEL W. KIM, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
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`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
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`Patent 8,650,747 B2
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`I.
`INTRODUCTION
`Nevro Corp. (“Petitioner”) filed a Petition requesting an inter partes review
`of claims 1–19 (“the challenged claims”) of U.S. Patent No. 8,650,747 B2
`(Ex. 1001, “the ’747 patent”). Paper 2 (“Pet.”). Boston Scientific
`Neuromodulation Corp. (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). On May 3, 2018, the Board did not institute an inter partes
`review with respect to any of claims 1–19. Paper 7 (“Dec.”; “Decision”).
`On June 4, 2018, Petitioner filed a Request for Rehearing of the Decision. Paper 8
`(“Req.”).
`For the reasons that follow, the Request for Rehearing is denied.
`
`
`II. ANALYSIS
`A request for rehearing must identify specifically all matters that the
`requesting party believes the Board misapprehended or overlooked. 37 C.F.R.
`§ 42.71(d). When rehearing a decision on institution, the Board will review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c).
`
`The Request states that
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`[t]he Board denied institution because it concluded that Nevro
`did not sufficiently prove that it would have been obvious to modify
`Stolz to fill the “unoccupied portions” of its conductor lumens. Inst.
`Dec. at 18–20. That conclusion was based on [three] subsidiary
`findings regarding the Stolz, Ormsby, and Black references that lack
`substantial evidence.
`
`Req. 3. According to the Request, the Board’s “denial is predicated on three
`subsidiary factual findings for which there is no substantial evidence, combined
`with legal error in the Board’s evaluation of obviousness” (Req. 1).
`
`First, the Board’s finding that “Stolz does not disclose filling an
`‘unoccupied portion’ of the conductor lumen, as claimed” lacks
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`substantial evidence. Second, the Board’s rejection of Nevro’s
`motivation to modify Stolz lacks substantial evidence. Third, the
`Board’s finding that Black does not disclose filling an unoccupied
`portion of the conductor lumen when it melts its oversized spacers into
`unoccupied portions of the lumen lacks substantial evidence.
`Req. 1. And, “the Board used the wrong standard in considering obviousness.”
`Req. 1.
`
`“A. The Board’s finding that Stolz does not fill an unoccupied portion of its
`conductor lumen is not supported by substantial evidence.” Req. 3.
`
`The issue was “whether it would have been obvious to one of ordinary skill
`in the art, at the time of the invention, to provide ‘a solid, nonconductive material
`disposed, at least in part, radially underneath [ ] conductive contacts and filling
`[an] unoccupied portion of at least one [ ] conductor lumen[ ]’ (claim 1), ‘wherein
`each conductor lumen comprises an occupied portion within which at least one [ ]
`conductor wire[ ] is disposed and an unoccupied portion in which none of the
`conductor wires is disposed, the unoccupied portion extending from an end of the
`conductor lumen’ (claim 1) over the combined disclosures of Stolz, Ormsby, and
`Black.” Dec. 8.
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`Before delving into the merits of Petitioner’s assertion, we summarize the
`analysis that went into arriving at our determination on the above issue. We begin
`with the Petition, which cites two disclosures in Stolz (Ex. 1005) for this issue.
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`The first Stolz disclosure centered on Figs. 8 and 9 of Stolz (Ex. 1005),
`reproduced below.
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`According to the Petition, “Stolz [ ] discloses solid, non-conductive [sic]
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`disposed in a conductor lumen 102, e.g., to seal it. . . . Stolz thus fills, at least in
`part, an unoccupied portion of at least one of the conductor lumens.” Pet. 36. The
`Petition explained that “[t]his is accomplished when ‘[t]he heat conducted from the
`mold to the lead distal tip 300 melts the surrounding material into the conductor
`lumen 102 and into the stylet lumen 100, completely sealing them from the
`outside.’ Id., [0036].” Pet. 36.
`
`The Petition acknowledged, however, that “[t]he solid distal tip 300 thus
`‘penetrates the lumens 100, 102 of the lead body . . . [and] reaches no further into
`the lumens than making contact to the enclosed conductors.’ Id., [0035].” Pet. 36.
`See Dec. 12–13.
`Stolz’s sealing the end of the implantable lead with its distal tip does
`have some potential disadvantages.
` Ex. 1003, ¶¶ 135-138.
`Specifically, the reflowed portion of Stolz’s distal tip may not penetrate
`very far into the stylet lumen or the conductor lumens. Specifically,
`Stolz teaches that the distal tip material “penetrates the most distal end
`of the stylet lumen 100 by about 0.15 cm (0.059 inch) into the stylet
`lumen 100 of the lead beginning from the most distal end of the hemi-
`spherical distal tip 300.” Ex. 1005, [0038]. Stolz discloses that the
`distal tip may make contact with the enclosed conductors see, e.g., id.,
`[0035]. But given the distance that the distal tip material penetrates the
`stylet lumen, some conductor lumens—e.g., especially those that
`service electrodes that are furthest from the distal tip—may still have a
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`long, unoccupied space between the distal tip and the conductor. See
`Ex. 1003, ¶ 139.
`Pet. 38–39; see also Dec. 13.
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`Consistent with the Petitioner’s “acknowledge[ment] that ‘ . . . the reflowed
`portion of Stolz’s distal tip may not penetrate very far into the stylet lumen or the
`conductor lumens’” (Dec. 13, quoting Pet. 38)), the Board determined that “Stolz
`does not disclose a solid, non-conductive material filling an unoccupied portion of
`a conductor lumen as claimed.” Dec. 18–19.
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`The second disclosure centered on Figs. 12 and 13 of Stolz (Ex. 1005),
`reproduced below.
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`The Petition stated, in total, that “Stolz discloses that the isolation space 506
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`can include a ‘fill material’ (such as epoxy)—which a POSA would have
`understood to be nonconductive—further filling an unoccupied portion of the
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`conductor lumen that is radially underneath the conductive contacts. Id. [0046].”
`Pet. 37.
`
`But Petitioner admitted that “Stolz’s disclosure of filling the isolation space
`with filling material (e.g., epoxy) similarly may not be sufficient to expressly teach
`the feature of ‘filling the unoccupied portion of at least one of the conductor
`lumens.’” Pet. 39 (quoted at Dec. 12, fn. 1).
`
`Given only the above statement from the Petition about Stolz, and
`Petitioner’s admission that “filling the isolation space with filling material . . . may
`not be sufficient ” (Dec. 12, fn. 1, quoting Pet. 39)), the Board determined that
`“Figure 13 of Stolz does not show the ‘solid, non-conductive material . . . filling
`[an] unoccupied portion of at least one [ ] conductor lumen[ ]’ (claim 1), the
`unoccupied portion being that ‘in which none of the conductor wires is disposed,
`the unoccupied portion extending from an end of the conductor lumen’ (claim 1).”
`Dec. 11.
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`The Board further noted that Fig. 13 shows “coupling 112 forms a barrier
`that prevents lumen 102 from communicating with isolation space 506. Coupling
`112 therefore surrounds the isolation space.” Dec. 12. “[A]lthough Stolz discloses
`isolation space 506 within coupling 112 could be filled with a non-conductive
`material and which, upon being filled, would appear to dispose a non-conductive
`material ‘radially underneath’ the conductive contacts, Stolz does not disclose
`filling an ‘unoccupied portion’ of the conductor lumen, as claimed.” Dec. 12.
`
`Thus, as with the first disclosure, the Board determined that the second
`disclosure also “does not disclose filling an ‘unoccupied portion’ of the conductor
`lumen, as claimed.” Dec. 12.
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`Neither of the two Stolz disclosures that the Petition relied upon provided
`sufficient evidence that Stolz discloses “a solid, non-conductive material . . . filling
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`an unoccupied portion of at least one of the conductor lumens” (claim 1), as
`claimed.
`
`With that background, we turn back to the Request. According to the
`Request, “contact coupling 502 and isolation space 506 are unambiguously in a
`portion of the lumen that is not occupied by conductor wire 34 . . . .” Req. 4.
`“[A]ll of this described structure—the coupling 112 with its conductor coupling
`500, contact coupling 502, and isolation space 506—is disposed within a conductor
`lumen 102 that extends from the proximal to the distal end of the lead,” Req. 4
`(emphasis original).
`That contact coupling 502 may have a barrier that prevents completely
`filling conductor lumen 102 is irrelevant. What is important, and what
`the Board may have failed to recognize, is that Stolz discloses filling at
`least part of the unoccupied portion of the conductor lumen with
`nonconductive material, both radially underneath the conductive
`contact at isolation space 506, and at the distal end. Ex. 1005, [0046],
`[0035], [0036]; Pet. at 4, 24, 36–38.
`Req. 4–5 (emphasis original).
`
`The assertion is misplaced, because the Decision did not find that Stolz does
`not disclose filling at least part of the unoccupied portion of the conductor lumen
`with nonconductive material. The Decision repeatedly stated that Stolz does not
`disclose “filling an ‘unoccupied portion’ of the conductor lumen, as claimed” (e.g.,
`Dec. 12 (emphasis added)), that is, an unoccupied portion “in which none of the
`conductor wires is disposed, the unoccupied portion extending from an end of the
`conductor lumen” (claim 1). In fact, in the Petition, Petitioner acknowledged that
`“Stolz’s disclosure of filling the isolation space with filling material (e.g., epoxy)
`similarly may not be sufficient to expressly teach the feature of ‘filling the
`unoccupied portion of at least one of the conductor lumens.’” Pet. 39.
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`For the foregoing reasons, we are unpersuaded of legal error in the Board’s
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`finding that “Petitioner has not shown that Stolz discloses a material filling an
`unoccupied portion of a conductor lumen as claimed.” Dec. 15.
`
`“B. The Board’s rejection of Nevro’s motivation to modify Stolz lacks
`substantial evidence.” Req. 5.
`
`Having acknowledged that “Stolz’s disclosure of filling the isolation space
`with filling material (e.g., epoxy) similarly may not be sufficient to expressly teach
`the feature of ‘filling the unoccupied portion of at least one of the conductor
`lumens’” (Pet. 39), the Petition went on to explain that “[b]y January 2005,
`however, a POSA would have recognized that leaving long, empty portions of a
`conductor lumen could be an undesirable condition, depending on the application.”
`Pet. 39. “To prevent [ ] potential problems, a POSA would therefore have
`searched for other known techniques for filling the unoccupied portions of the
`conductor lumens.” Pet. 39–40. “The prior-art Ormsby reference (Ex. 1006)
`meets that need . . . .” Pet. 40. “Black also discloses filling the unoccupied
`portion of a conductor lumen and it provides a different technique for doing so.”
`Pet. 41.
`The Board found that
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`[i]n citing Ormsby and Black, Petitioner has identified “suitable
`methods for filling lumens and other spaces within elongate structures
`having conductive wires therein.” Pet. 40. But Petitioner has not
`presented sufficient evidence that it would have been obvious to fill an
`unoccupied portion of a conductor lumen, as claimed.
`Dec. 17 (emphasis original).
`
`The Request states that “the fact that Ormsby discloses filling a conductor
`lumen that has wires disposed in it, but is otherwise empty, is of no moment.”
`Req. 5.
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`As Nevro explained, Ormsby “teaches that it is desirable to fill lumen
`spaces to prevent kinking or crushing, if stressed.” Pet. at 25. That
`teaching is not impacted in any way by the fact that Ormsby has wires
`in its otherwise empty conductor lumen. The wires do not impact one
`iota the reasons Ormsby gives for filling the conductor lumen.
`Ormsby’s thin wires do not provide radial or axial stability, and they
`thus cannot prevent crushing, or perforation, or kinking. Neither the
`Board nor the Petitioner have provided evidence to the contrary.
`Req. 5–6.
`We disagree that it is of no moment that Ormsby discloses filling a conductor
`lumen that has wires disposed in it.
`
`Claim 1 specifically requires “filling the unoccupied portion of at least one
`of the conductor lumens” “in which none of the conductor wires is disposed, the
`unoccupied portion extending from an end of the conductor lumen.” Claim 1.
`
`Given the determination that Stolz does not disclose “a solid, non-
`conductive material . . . filling the unoccupied portion of at least one of the
`conductor lumens” (claim 1), as claimed, it was incumbent on Petitioner to show
`how one of ordinary skill in the art would have been led to modify Stolz so as to
`fill an unoccupied portion of a conductor lumen, that is, a conductor lumen “in
`which none of the conductor wires is disposed, the unoccupied portion extending
`from an end of the conductor lumen” (claim 1), and to thereby reach what is
`claimed. Ormsby is not helpful because it discloses filling a conductor lumen that
`has wires disposed in it, which Petitioner concedes. Without sufficient guidance
`by Petitioner, we read Ormsby as doing precisely the opposite of what claim 1
`requires and, thus, concluded that would not lead one of ordinary skill in the art to
`modify Stolz so as to fill an unoccupied portion of a conductor lumen as claimed.
`We do not see how showing a known technique for filling an occupied conductor
`lumen (i.e., Ormsby) provides motivation for a POSA to fill an unoccupied portion
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`of a conductor lumen of Stolz, thereby reaching what is claimed. As we stated in
`the Decision,
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`[i]n citing Ormsby … , Petitioner has identified “suitable
`methods for filling lumens and other spaces within elongate structures
`having conductive wires therein.” Pet. 40. But Petitioner has not
`presented sufficient evidence that it would have been obvious to fill an
`unoccupied portion of a conductor lumen, as claimed.
`Dec. 17.
`
`Petitioner argued in the Petition that “a POSA would have recognized that
`leaving long, empty portions of a conductor lumen could be an undesirable
`condition, depending on the application” (Pet. 39) relying on Declarant’s testimony
`(Ex. 1003). The Request points out that
`Nevro’s expert testified that: “[A] POSA would recognize that having
`long portions of a conductor lumen remain empty (as opposed to a
`specifically designed, empty, non-conductor lumen) can be an
`undesirable condition, depending on the application. For example, a
`long and empty conductor lumen would be more susceptible to
`perforation, kinking, or other material damage, such as during insertion
`into the human body. Further, having empty conductor lumens of
`varying lengths could cause variations in the flexibility of the
`implantable lead.” Ex. 1003, ¶ 140; see Pet. at 25. To support his
`testimony, Nevro’s expert expressly relied on Ormsby’s disclosure,
`which fills its conductor lumen expressly to reduce kinking, to confirm
`his opinion. Ex. 1003, ¶¶ 141–144, see Pet. at 25.
`Req. 6–7.
`
`Actually, what the Declarant testified to is that “Ormsby teaches that ‘[i]n
`order to substantially increase the kink resistance of the flexible elongate tubular
`member 26, the lumen 29 therein can be filled with a filler 81 of a suitable
`material.’ (Id. at 7:3–5.)” Ex. 1003, para. 143 (emphasis added). Nevertheless, as
`we stated in the Decision, “there is insufficient evidence in this record showing
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`Stolz’s ‘unoccupied’ lumens exhibit any of the problems Declarant has attributed
`to long and empty lumens.” Dec. 18.
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`The Request further points out that
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`[b]eyond Ormsby, Nevro’s expert also expressly and extensively
`relied on the Verness reference (Ex. 1007) to support the motivation
`[to] modify Stolz. Ex. 1003, ¶¶ 145-148; see Pet. at 25, 41. As Nevro’s
`expert testified, “Verness summarizes reasons why a POSA would
`specifically want to fill lumen spaces in the area of implantable medical
`leads, particularly in the context of implantable medical leads for
`applying electrical stimulation to the body. (See Ex. 1007 at [0001],
`[0006]-[0010], [0012]-[0015].)” Ex. 1003, ¶ 45. Nevro’s expert also
`relied on the Rock (Ex. 1017) reference. Ex. 1003, ¶¶ 149; see Pet. at
`25, 41. The Board did not address Verness or Rock.
`Req. 7.
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`It is true that the Board did not address Verness or Rock. The reason for
`that, however, is that the Petition did not mention them. A party omits arguments
`at their own peril. See 37 C.F.R. § 42.6(a)(3).
`Even when those references are considered, however, we are unpersuaded
`that either Verness or Rock provides sufficient additional support for declarant’s
`statement that “a long and empty conductor lumen would be more susceptible to
`perforation, kinking, or other material damage, such as during insertion into the
`human body.” Ex. 1003, ¶¶ 141–144 and 200. Like Ormsby, Verness and Rock
`fill occupied lumens. Thus, similar to Ormsby, we are unpersuaded they provide
`sufficient support for Petitioner’s argument that “a POSA would have recognized
`that leaving long, empty portions of a conductor lumen could be an undesirable
`condition, depending on the application” (Pet. 39).
`
`The Request appears to take the position that it would have been obvious to
`fully fill the unoccupied portion of Stolz’s conductor lumen. The Request states:
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`Nevro relied on the testimony of its expert, with confirmation of that
`testimony by the Ormsby, Verness and Rock references, to provide the
`motivation to fully fill the unoccupied portion of Stolz’s conductor
`lumen 102. Pet. at 25. The Board’s rejection of Nevro’s motivation to
`combine the references is not supported by substantial evidence.
`Req. 5 (emphasis added).
`
`The assertion is misplaced, because the Petition sought to show that one
`would have been led to fill an unoccupied portion of Stolz’s conductor lumen, not
`whether to fully fill it. According to the Petition,
`a POSA would have found it obvious to at least try various techniques
`to fill the spaces in Stolz’s conductor lumens that are unoccupied by the
`conductor wire to enhance the reliability of Stolz’s stimulation lead.
`Ex. 1003, ¶156. Ormsby and Black confirm this. Id. Thus Stolz’s
`stimulation lead, as modified by the above teachings of Ormsby, would
`disclose the stimulation lead assembly for a lead that includes all of the
`elements as arranged in the claims of the ’747 patent. See Ex. 1003,
`¶¶156.
`Pet. 44 (emphasis added). The Petition argued that “Ormsby (Ex. 1006) provides
`the motivation to fill the portion of Stolz’s conductor lumens that are not occupied
`by its conductive wires.” Pet. 25 (emphasis added). The full argument was
`reproduced in the Decision. See Dec. 13–14. Petitioner argued, inter alia, that
`[t]o prevent [ ] potential problems, a POSA would [ ] have searched for
`other known techniques for filling the unoccupied portions of the
`conductor lumens [of Stolz]. And to do so, a POSA would have thus
`considered other medical device references to identify suitable methods
`for filling lumens and other spaces within elongate structures having
`conductive wires therein
`Pet. 39–40, reproduced at Dec. 13-14 (emphasis added.) In that regard, “Petitioner
`cites Ormsby and Black as two such medical device references.” Dec. 14.
`
`The Decision clearly reflects the Petitioner’s position that Ormsby and Black
`are medical device references that a POSA would have considered upon searching
`for other known techniques for filling the unoccupied portions of a conductor
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`lumens to prevent certain problems, motivating a POSA to fill unoccupied portions
`of the conductor lumens in Stolz and so achieve filling an unoccupied portion of a
`conductor lumen as claimed. However, based on what Ormsby and Black in fact
`disclose (that is, they disclose filling an occupied portion of a conductor lumens),
`the Board determined that
`
`[i]n citing Ormsby and Black, Petitioner has identified “suitable
`methods for filling lumens and other spaces within elongate structures
`having conductive wires therein.” Pet. 40. But Petitioner has not
`presented sufficient evidence that it would have been obvious to fill an
`unoccupied portion of a conductor lumen, as claimed.
`Dec. 17.
`
`For the foregoing reasons, we find no legal error in the Board’s finding that
`“Petitioner has not presented sufficient evidence that it would have been obvious to
`fill an unoccupied portion of a conductor lumen, as claimed.” Dec. 17.
`
`“C. The Board’s finding that Black does not show filling the unoccupied
`portions of a conductor lumen lacks substantial evidence.” Req. 9.
`
`Turning now to Black, the Request argues that
`The Board failed to appreciate that Black thus teaches complete filling
`of its conductor lumen, including the unoccupied portions of Black’s
`toroidal lumen where there are no conductor wires—e.g., at the far
`distal end where only one conductor wire remains because the rest have
`been progressively attached to their respective electrodes. Pet. at 42–
`43; Ex. 1008 at 7:29–33. In the modified version of Black’s FIG. 3
`below, the area shown in green below is representative of the “fused
`matrix of material,” “free of any gaps or spaces between insulative
`material and conductive material.”
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`These facts, as described in the Petition, are at least sufficient to
`institute trial. Even the Patent Owner did not dispute this view of
`Black.
`Req. 11–12.
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`There are a number of difficulties with this argument.
`
`First, the Petition did not include an argument that “Black [ ] teaches
`complete filling of its conductor lumen, including the unoccupied portions of
`Black’s toroidal lumen where there are no conductor wires.” Req. 11. The
`Petition argued that Black disclosed “filling of regions between terminals
`16/electrodes 18 and stylet guide 24”—i.e., unoccupied portions or spaces in the
`conductor lumen. Ex. 1008, 7:13-16 (emphasis added)” (Pet. 42).
`
`Second, consistent with that argument made in the Petition, the Board agreed
`that “Black shows filling regions between terminals 16/electrodes 18 and stylet
`tubing 24 (to which ‘conductors 20 are secured’ (Ex. 1008, 6:5)) with insulative
`spacer material and fusing the material.” Dec. 16. However, the Board further
`found that
`[g]iven that conductor 20 is disposed within tubing 23, Black
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`insufficiently shows a “solid, non-conductive material . . . filling [an]
`unoccupied portion of at least one [ ] conductor lumen[ ]” (claim 1),
`the unoccupied portion being that “in which none of the conductor
`wires is disposed, the unoccupied portion extending from an end of
`the conductor lumen” (claim 1).
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`Petitioner has not shown that Black discloses a material filling
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`an unoccupied portion of a conductor lumen as claimed.
`Dec. 17. The Request does not affect that further finding. In fact, the Request
`includes a modified version of Black’s FIG. 3 that explicitly shows conductor (20)
`within tubing 23 that is being filled and thus supports the Board’s finding.
`
`Finally, the Request states that “the Patent Owner did not dispute this view
`of Black” (Req. 12), i.e., that “Black [ ] teaches complete filling of its conductor
`lumen, including the unoccupied portions of Black’s toroidal lumen where there
`are no conductor wires” (Req. 11). Actually, as indicated in the Decision, the
`Patent Owner argued that “Black does not disclose ‘filling the unoccupied portion
`of at least one of the conductor lumens.’” Dec. 16 (citing Prelim. Resp. 27).
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`For the foregoing reasons, we are unpersuaded of legal error in the Board’s
`finding that “Petitioner has not shown that Black discloses a material filling an
`unoccupied portion of a conductor lumen as claimed.” Dec. 17.
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`“D. The Board has used the wrong standard for finding obviousness.” Req. 13.
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`The Request argues that
`[b]y separately attacking each reference without considering what the
`teachings, taken in their totality, would have suggested to a POSA, and
`by effectively (but wrongly) requiring a single express teaching of
`“filling [an] unoccupied portion of at least one [ ] conductor lumen[ ],”
`the Board here misapplies the obviousness calculus.
`Req. 14.
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`We disagree that the Board “requir[ed] a single express teaching of ‘filling
`[an] unoccupied portion of at least one [ ] conductor lumen[ ].’” Req. 14.
`
`The issue was “whether it would have been obvious to one of ordinary skill
`in the art, at the time of the invention, to provide ‘a solid, nonconductive material
`disposed, at least in part, radially underneath [ ] conductive contacts and filling
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`[an] unoccupied portion of at least one [ ] conductor lumen[ ]’ (claim 1), ‘wherein
`each conductor lumen comprises an occupied portion within which at least one [ ]
`conductor wire[ ] is disposed and an unoccupied portion in which none of the
`conductor wires is disposed, the unoccupied portion extending from an end of the
`conductor lumen’ (claim 1) over the combined disclosures of Stolz, Ormsby, and
`Black.” Dec. 8.
`
`Petitioner showed that “Stolz discloses disposing a non-conductive material
`‘radially underneath’ the conductive contacts. But Stolz does not disclose a solid,
`non-conductive material filling an unoccupied portion of a conductor lumen as
`claimed. Ormsby and Black disclose filling an occupied lumen.” Dec. 18–19. We
`did not seek out “a single express teaching of ‘filling [an] unoccupied portion of at
`least one [ ] conductor lumen[ ]’” (Req. 14), but rather determined that “Petitioner
`has not presented sufficient evidence [i.e., Stolz, Ormsby, and Black] that it would
`have been obvious to fill an unoccupied portion of a conductor lumen, as claimed.”
`Dec. 17.
`
`For the forgoing reasons, we are unpersuaded as to error in the Board’s
`determination that “the fact of disposing a non-conductive material ‘radially
`underneath’ the conductive contacts (i.e., Stolz) and filling an occupied lumen (i.e.,
`Ormsby and Black) were known at the time of the invention is, in and of itself, a
`sufficient reason to render obvious the claimed method comprising providing a
`solid, non-conductive material disposed radially underneath conductive contacts
`and filling an unoccupied portion of a conductor lumen.” Dec. 19.
`
`
`III. CONCLUSION
`Petitioner’s Request for Rehearing is denied.
`
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`

`IPR2018-00147
`Patent 8,650,747 B2
`
`PETITIONER:
`
`Jon E. Wright
`jwright-PTAB@skgf.com
`Nirav Desai
`ndesai-PTAB@skgf.com
`Richard D. Coller III
`rcoller-PTAB@skgf.com
`Ian Soule
`isoule-PTAB@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`Ching-Lee Fukuda
`clfukuda@sidley.com
`SIDLEY AUSTIN LLP
`
`PATENT OWNER:
`
`David Caine
`david.caine@apks.com
`Wallace Wu
`wallace.wu@apks.com
`ARNOLD & PORTER KAYE SCHOLER LLP
`
`
`
`
`17
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