`571.272.7822
`
`
`Paper No. 11
`
` Entered: September 22, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`C.R. BARD, INC.,
`Petitioner,
`
`v.
`
`MEDICAL COMPONENTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01660
`Patent 8,257,325 B2
`____________
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`C.R. Bard, Inc. (“Petitioner”) timely filed a request for rehearing
`(“Rehearing Request” or “Request”) of our decision on institution of inter
`partes review (“Institution Decision” or “Decision”). Paper 10 (“Req.”).
`The Request seeks rehearing of our determination to deny institution of inter
`partes review of claims 1, 2, 5–13, 15–19, 21, and 22 (collectively, “the
`challenged claims”) of U.S. Patent No. 8,257,325 B2 (Ex. 1001, “the
`
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`IPR2015-01660
`Patent 8,257,325 B2
`’325 patent”) on the asserted grounds of obviousness over (1) PORTS,1
`Powers,2 PowerPort,3 and Hickman,4 (2) PORTS, Powers, Sayre,5 and
`Hickman, and (3) PORTS, Powers, Meyer,6 and Hickman. Paper 9 (“Inst.
`Dec.”). For the reasons given below, we deny the Rehearing Request.
`LEGAL STANDARDS
`When rehearing a decision whether to institute inter partes review, we
`review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The
`burden of showing [the] decision should be modified lies with the party
`challenging the decision.” 37 C.F.R. § 42.71(d). The request for rehearing
`“must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in” the petition. Id.
`ANALYSIS
`In the Institution Decision, we denied institution of inter partes
`
`review based on our determination that the Petition does not “provide[]
`adequate reasoning with rational underpinning for combining the asserted
`references to reach the venous access port recited” in each challenged claim.
`Inst. Dec. 9, 11, 14; see id. at 14–19. We found the Petition’s proffered
`multi-step obviousness analysis to reach the limitation of independent
`claim 1 reciting “the flange further comprising X-ray discernable indicia
`
`
`1 BARD ACCESS SYSTEMS, PORTS (2003) (EX. 1002, “PORTS”).
`2 U.S. Patent No. 7,785,302 B2 (Ex. 1003, “Powers”).
`3 BARD ACCESS SYSTEMS, POWERPORT: GUIDELINES FOR CT
`TECHNOLOGISTS (2007) (Ex. 1004, “PowerPort”).
`4 BARD ACCESS SYSTEMS, HICKMAN® SUBCUTANEOUS PORTS &
`HICKMAN®/BROVIAC® CATHETERS (1992) (Ex. 1017, “Hickman”).
`5 U.S. Patent No. 6,826,257 B2 (Ex. 1007, “Sayre”).
`6 French Patent No. 1,509,165 (Ex. 1005, “Meyer”).
`
`
`
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`2
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`IPR2015-01660
`Patent 8,257,325 B2
`configured to indicate, under X-ray examination, that the port assembly is
`rated for power injection” and the corresponding limitations of independent
`claims 12 and 17 to be deficient for several reasons. See id. at 8–19.
`In particular, “[f]irst, we agree[d] with Patent Owner that the Petition
`does not provide adequate reasoning with rational underpinning for why it
`would have been obvious in view of Powers to modify the Titanium
`Implanted Port of PORTS—which Petitioner does not allege is indicated for
`power injection—to be rated for power injection,” according to the first step
`of Petitioner’s proposed obviousness analysis. Id. at 11–12. “Second, we
`also” found that “the Petition fails to explain sufficiently why it would have
`been obvious to modify the flange of the Titanium Implanted Port of PORTS
`to have X-ray discernable indicia in the form of voids configured to indicate
`that the port assembly is rated for power injection, as alleged in the
`Petition.” Id. at 12–14. Specifically, “[w]e agree[d] with Patent Owner that
`Petitioner has not shown sufficiently that the suture slots and orientation
`holes in the flange of the Titanium Implanted Port of PORTS function as
`X-ray discernable indicia.” Id. at 12–13. Moreover, “we agree[d] with
`Patent Owner that Petitioner has not provided adequate reasoning based on
`Powers and [either] PowerPort[, Sayre, or Meyer] for modifying the
`Titanium Implanted Port of PORTS to include X-ray discernable indicia of
`power injection capability in the flange.” Id. at 13–14, 16–19.
`A.
`In the Rehearing Request, Petitioner challenges our determination in
`the Institution Decision that “the Petition does not provide adequate
`reasoning with rational underpinning” for the first step of Petitioner’s
`proffered obviousness analysis, namely “modify[ing] the Titanium
`Implanted Port of PORTS . . . to be rated for power injection.” Id. at 11; see
`3
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`Req. 1–8. Petitioner’s arguments focus on our underlying reasoning and
`findings, which found the Petition’s assertion and the cited testimony of
`Petitioner’s declarant, Mr. Steven J. Tallarida, alleging that one of ordinary
`skill would have known that the Titanium Implanted Port “could be”
`constructed and would have been modified to handle power injection to be
`conclusory and unsupported. Inst. Dec. 11–12; see Req. 1–8. Petitioner also
`objects to our reasoning that the Petition and the cited testimony “do not
`explain how the Titanium Implanted Port of PORTS would have been
`modified so as to be rated for power injection, nor do they point to any
`disclosure in Powers that would have suggested how such a modification
`would have been made.” Inst. Dec. 12; see Req. 1–8.
`In the Request, Petitioner argues that power injectable ports, as well
`as rating of ports as power injectable, “were clearly known at the time the
`application for the [’]325 patent was filed” and, thus, “it was well within the
`knowledge of a [person of ordinary skill in the art] how to construct” such a
`port. Req. 2–3, 5. According to Petitioner, the ’325 patent provides
`evidence that the construction of power injectable ports was within the skill
`of the art, because the specification does not disclose how to construct
`access ports or power injectable ports, and does not distinguish between
`power and non-power injectable ports other than explaining that it is
`desirable to identify a port as rated for power injection. Id. at 4–6. As
`support, Petitioner cites to the written description and enablement
`requirements of 35 U.S.C. § 112 and precedent holding that a patent need
`not teach what was well known in the art. Id. at 2, 4–6. In addition,
`Petitioner—citing paragraph 165 of Mr. Tallarida’s declaration—argues that
`a person of ordinary skill would have known that the Titanium Implanted
`Port of PORTS could be constructed to handle power injection, because
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`IPR2015-01660
`Patent 8,257,325 B2
`power and non-power injectable ports comprise “similar structures” and “the
`Titanium Implanted Port has the same structural elements as a power
`injectable port.” Id. at 3–4, 8. Thus, according to Petitioner, the Board
`overlooked and misapprehended the limited disclosure of the ’325 patent
`and the knowledge of a person of ordinary skill in the art. Id. at 3, 6.
`Petitioner further argues that the Board erred in giving Mr. Tallarida’s
`testimony little to no weight and quotes testimony from paragraphs 148, 149,
`151, 165, 196, 198, and 199 of his declaration. Id. at 6–7.
`Petitioner’s assertions of error are not persuasive. The only evidence
`cited in the Petition to support Petitioner’s assertion that a person of ordinary
`skill would have known that the Titanium Implanted Port of PORTS “could
`be” constructed and “would” have been modified in view of Powers to
`handle power injection—the first step of Petitioner’s proposed obviousness
`analysis—are paragraphs 147 and 148 of Mr. Tallarida’s declaration. See
`Pet. 31 (citing Ex. 1009 ¶¶ 147–48), 41–42 (no citation), 51 (no citation), 56
`(no citation). In paragraph 147 of the declaration, Mr. Tallarida
`acknowledges that the Titanium Implanted Port is not power injectable—but
`does not explain how or why it would have been modified to be power
`injectable. See Ex. 1009 ¶ 147. As to paragraph 148, the Institution
`Decision expressly addressed this paragraph, finding it conclusory and
`lacking adequate explanation and any supporting citations. Inst. Dec. 11–12.
`The Rehearing Request shows no error in our determinations regarding the
`defects in the Petition’s reasoning and the cited portions of Mr. Tallarida’s
`declaration testimony. Nor does the Request show that we overlooked
`arguments made, or supporting evidence cited in, the Petition, as required on
`rehearing. See 37 C.F.R. § 42.71(d).
`
`
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`
`Petitioner’s attempt to rely on paragraphs 146, 149, 151, 165, 196–99,
`228, and 249 of Mr. Tallarida’s declaration—which were not cited in
`support of the Petition’s arguments on the issue of whether it whether it
`would have been obvious to modify the Titanium Implanted Port of PORTS
`to be power injectable—to support its arguments on the issue in its
`Rehearing Request is improper. See 37 C.F.R. § 42.71(d). In addition, we
`note that several of these paragraphs, including paragraphs 146, 149, 197,
`199, 228, and 249, are not relevant to the issue. See Ex. 1009 ¶¶ 146, 149,
`197, 199, 228, 249.
`
`Moreover, Petitioner’s argument that power injectable ports, as well
`as ratings of ports as power injectable, were known is misplaced. The
`Institution Decision recognized that power injectable ports, and indicia
`thereof, were known. See, e.g., Inst. Dec. 7 (“Powers describes an access
`port with a feature structured to identify the port as being rated for power
`injection after subcutaneous implantation”) (PowerPort’s “Bard Access
`System’s PowerPort implanted port . . . is indicated for power injection of
`contrast media”). The Decision’s reasoning makes clear that the issue with
`Petitioner’s showing is not whether power injectable ports, or indicia
`thereof, were known but instead is the absence of any explanation and
`support for the Petition’s assertions, and the cited supporting testimony of
`Mr. Tallarida, as to why a person of ordinary skill would have known that
`the Titanium Implanted Port of PORTS, specifically, could have been
`modified to be power injectable and how a person of ordinary skill would
`have done so. See id. at 11–12. Accordingly, the Rehearing Request’s
`assertions that power injectable ports were known and citations to
`paragraphs 151, 196, and 198 of Mr. Tallarida’s declaration, in which he
`
`
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`IPR2015-01660
`Patent 8,257,325 B2
`opines that Powers and PowerPort disclose power injectable ports, show no
`error in the Decision’s reasoning or conclusions. See Req. 2–3, 5, 7.
`
`With respect to the Request’s more specific argument that the
`’325 patent specification’s alleged omission of an explanation as to how to
`construct power injectable ports demonstrates that such ports were within
`the knowledge in the art, even if Petitioner were to establish that the
`’325 patent omits such explanation and that the reason for the omission is or
`should be presumed to be that power injectable ports were known, the
`argument is misplaced for the reasons given above—namely, the fact that
`power injectable ports were known does not cure the deficiencies the
`Decision found in Petitioner’s obviousness showing. Moreover, the Request
`does not identify where the Petition made this particular argument regarding
`disclosures allegedly omitted from the ’325 patent. See id. at 1–6. Based on
`our review of the Petition, this argument was not articulated in the Petition.
`Thus, it is not properly raised on rehearing. See 37 C.F.R. § 42.71(d).
`
`The Rehearing Request’s argument that because power and
`non-power injectable ports comprise “similar structures” and “the Titanium
`Implanted Port has the same structural elements as a power injectable port,”
`a person of ordinary skill would have known that the Titanium Implanted
`Port could be constructed to handle power injection suffers from several
`deficiencies. See Req. 3–4, 8. The Request cites as support paragraph 165
`of Mr. Tallarida’s declaration, in which he opines: “Additionally, as both
`PORTS and Powers disclose venous access ports comprising a housing, a
`base, a discharge port, a reservoir and a septum, a person of ordinary skill in
`the art would have known that the Titanium Implanted Port could be
`constructed to handle power injection as taught by Powers. Exhibit 1002,
`p. 10; Exhibit 1003.” Ex. 1009 ¶ 165; see Req. 3–4, 8.
`7
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`IPR2015-01660
`Patent 8,257,325 B2
`First, the Request does not identify where this specific argument was
`made or where paragraph 165 of Mr. Tallarida’s declaration was cited in the
`Petition. Moreover, based on our review of the Petition, this argument was
`not made and as noted above, this paragraph was not cited in support of
`Petitioner’s argument that a person of ordinary skill would have known that
`the Titanium Implanted Port of PORTS could be constructed to handle
`power injection and would have done so. See Pet. 31 (citing Ex. 1009
`¶¶ 147–48), 41–42 (no citation), 51 (no citation), 56 (no citation).
`Accordingly, the Request does not identify where the “matter was previously
`addressed” in the Petition—as required in a rehearing request under
`37 C.F.R. § 42.71(d). Therefore, we need not consider on rehearing this
`argument or paragraph 165 of Mr. Tallarida’s declaration.
`Second, Petitioner’s attempt in its Rehearing Request to rely on
`paragraph 165 of Mr. Tallarida’s declaration to proffer a new argument not
`made in the Petition is impermissible for an additional reason—it constitutes
`incorporation by reference, which our rules prohibit. See 37 C.F.R.
`§ 42.6(a)(3) (“Arguments must not be incorporated by reference from one
`document into another document.”); Cisco Sys., Inc. v. C-Cation Techs.,
`LLC, IPR2014-00454, slip op. at 10 (PTAB Aug. 29, 2014) (Paper 12)
`(informative). Based on our review of the Petition, this paragraph of
`Mr. Tallarida’s declaration was cited only once as part of the conclusion of
`the Petition’s analysis of independent claim 1 in a citation to forty-four
`paragraphs of the declaration, which span eight pages of testimony. See
`Pet. 34 (citing Ex. 1009 ¶¶ 122–65). Arguments and information that are not
`presented and developed in the Petition, and instead are incorporated by
`reference to Mr. Tallarida’s declaration, are not entitled to consideration.
`
`
`
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`IPR2015-01660
`Patent 8,257,325 B2
`Third, even if we were to consider the new argument and testimony in
`paragraph 165 of Mr. Tallarida’s declaration, we find both conclusory and
`lacking adequate supporting reasoning and evidence. That power injectable
`ports, such as that disclosed in Powers, and non-power injectable ports, such
`as the Titanium Implanted Port in PORTS, have similar components,
`including “a housing, a base, a discharge port, a reservoir and a septum”—
`without more—is insufficient to explain why a person of ordinary skill
`would have known that the Titanium Implanted Port could be modified to be
`power injectable, or to explain how such a person would have modified it to
`be power injectable. In other words, a superficial reference to basic
`common elements of power and non-power injectable ports is not sufficient.
`Also, Mr. Tallarida’s declaration cites as support the entirety of Powers
`(Exhibit 1003)—a 45-page exhibit—and, thus, does not comply with the
`particularity and specificity that our governing statute and rules require of
`evidence supporting a petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R.
`§ 42.104(b)(4)–(5).
`In conclusion, the Request shows no error, including any matter raised
`in the Petition that was overlooked or misapprehended, in the Institution
`Decision’s determination that the Petition lacks adequate reasoning for why
`it would have been obvious, in view of Powers, to modify the Titanium
`Implanted Port of PORTS to be rated for power injection.
`B.
`We turn to the Rehearing Request’s arguments regarding the
`
`Institution Decision’s determination that the “Petition fails to explain
`sufficiently why it would have been obvious to modify the flange of the
`Titanium Implanted Port of PORTS to have X-ray discernable indicia in the
`form of voids configured to indicate that the port assembly is rated for power
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`IPR2015-01660
`Patent 8,257,325 B2
`injection, as alleged in the Petition” and the underlying findings and reasons
`given for this determination. See Inst. Dec. 12–14; Req. 9–15.
`i.
`The Rehearing Request disputes the Board’s determination in the
`
`Decision that “Petitioner has not shown sufficiently that the suture slots and
`orientation holes in the flange of the Titanium Implanted Port of PORTS
`function as X-ray discernable indicia.” Inst. Dec. 12; see Req. 9–11.
`Specifically, the Request argues that the Board overlooked the testimony of
`Mr. Tallarida, including paragraph 65 of his declaration, opining that
`“orientation holes are X-ray discernable indicia configured to indicate, under
`X-ray examination, the orientation of the assembly.” Req. 9–10 (citing
`Ex. 1009 ¶¶ 60, 62–67, 91, 133); Ex. 1009 ¶ 65. The Request also asserts
`that the Board “misapprehended the inherent function of orientation holes in
`the Titanium Implanted Port,” namely to indicate the “orientation of the
`assembly” under X-ray examination. Req. 10–11. In addition, the Request
`argues that “the Board overlooked and/or misapprehended that the
`orientation holes on the Titanium Implanted Port are voids extending
`through a titanium flange that are X-ray discernable.” Id. at 10.
`
`Petitioner’s arguments are not persuasive. The Request merely
`repeats numerous assertions made in the Petition, including those from its
`discussion of the alleged teachings of PORTS and its proffered obviousness
`analysis. The Institution Decision, however, considered the arguments made
`and weighed the evidence cited in the Petition—including PORTS and the
`cited declaration testimony of Mr. Tallarida—and determined that they were
`insufficient to show sufficiently that the orientation holes of the Titanium
`Implanted Port of PORTS function as X-ray discernable indicia, as asserted
`in the Petition. Inst. Dec. 12–13. In other words, we did not overlook or
`10
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`IPR2015-01660
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`misapprehend Petitioner’s assertions on the issue; rather, we disagreed that
`Petitioner submitted evidence sufficient to substantiate them.
`In particular, we did not overlook the relevant testimony of
`Mr. Tallarida cited in the Petition. Instead, the Institution Decision
`expressly addressed his testimony on the issue—with a citation to exemplary
`paragraphs containing relevant testimony, “See, e.g., Ex. 1009 ¶¶ 64–65,
`150, 157, 159, 163, 183”—and concluded that the testimony is entitled to
`little to no weight because it is conclusory and lacks adequate explanation
`and support. Inst. Dec. 13. We explained that “[t]he only supporting
`citation Mr. Tallarida provides for his testimony is to the entirety of PORTS,
`a seventeen-page exhibit.” Id.; see also 35 U.S.C. § 312(a)(3); 37 C.F.R.
`§ 42.104(b)(4)–(5). In its Rehearing Request, Petitioner quotes paragraph 65
`of Mr. Tallarida’s testimony, one of the paragraphs expressly addressed in
`the Decision. Req. 9–10. Petitioner’s quoting the paragraph, however, does
`not show any error in our determination. In addition, the Institution
`Decision need not refer explicitly to each potentially relevant paragraph of
`Mr. Tallarida’s declaration testimony, yet we note that the paragraphs of
`Mr. Tallarida’s declaration cited in the Request that were not referenced
`expressly in the Decision, including paragraphs 60, 62, 63, 66, 67, and 133,
`also suffer from the deficiencies explained in the Decision.
`
`In addition, Petitioner appears to be attempting to raise an inherency
`argument for the first time in its Rehearing Request, arguing that the “Board
`misapprehended the inherent function of the orientation holes” in the
`Titanium Implanted Port as indicating orientation under X-ray examination
`and a person of ordinary skill would have known that the orientation holes
`are “inherently” X-ray discernable indicia. Req. 10–11. The cited pages of
`the Petition do not make such an inherency argument. See id. at 9–11 (citing
`11
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`Pet. 12, 18–19, 28, 30, 32); Pet. 12, 18–19, 28, 30, 32. Accordingly,
`Petitioner has not shown “where [this] matter was previously addressed” in
`the Petition, as required by 37 C.F.R. § 42.71(d), and it is an improper new
`argument on rehearing. Even if we were to consider Petitioner’s new
`inherency argument, it fails for the same reasons the Decision found the
`similar argument made in the Petition—namely, that the orientation holes of
`the Titanium Implanted Port function as indicia of orientation under X-ray
`examination—to be deficient as lacking sufficient support in the evidence
`cited in the Petition. See Inst. Dec. 10, 12–13.
`In sum, the Request shows no error, including any matter that was
`overlooked or misapprehended, in the Decision’s determination that the
`Petition fails to show sufficiently that the orientation holes in the Titanium
`Implanted Port of PORTS function as X-ray discernable indicia.
`ii.
`The Rehearing Request also challenges the Institution Decision’s
`
`determination that the Petition does not “provide adequate reasoning based
`on Powers and [either] PowerPort,” Sayre, or Meyer “for modifying the
`Titanium Implanted Port of PORTS to include X-ray discernable indicia of
`power injection capability in the flange.” Id. at 13–19; see Req. 11–14. The
`Request argues that this determination is incorrect because it overlooks
`and/or misapprehends Mr. Tallarida’s testimony, in paragraphs 210 and
`214–219 of his declaration, that a person of ordinary skill would have
`modified the flange of the Titanium Implanted Port to include alphanumeric
`voids. See Req. 12–14 (citing and quoting Ex. 1009 ¶¶ 210, 214–19).
`Petitioner also argues that we misapprehended the Petition’s arguments
`regarding PowerPort, Sayre, and Meyer, which the Petition cites as
`“examples of voids in the shape of alphanumeric characters.” Req. 11–12.
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`
`Petitioner’s argument that we misapprehended and overlooked the
`Petition’s assertions regarding PowerPort, Sayre, and Meyer is without
`merit. The Institution Decision explicitly acknowledged that the Petition
`proffers PowerPort, Sayre, and Meyer as disclosing voids in the form of
`alphanumeric characters and PowerPort as further disclosing voids shaped as
`the letters “C” and “T” to identify the port as rated for power injection. E.g.,
`Inst. Dec. 9–10 (“Petitioner cites PowerPort for disclosing [a port] with the
`characters ‘C’ and ‘T’ formed as voids to identify the port as rated for power
`injection under X-ray examination.”); id. at 16 (“Petitioner argues . . .
`‘Sayre, like PowerPort, teaches indicia in the form of alphanumeric
`character cutouts (voids).’”); id. at 17–18 (“Petitioner argues . . . ‘Meyer,
`like PowerPort and Sayre, teaches indicia in the form of alphanumeric
`characters (voids).’”). The Decision considered and addressed these
`arguments in the analysis. Having concluded that the Petition does not make
`a sufficient showing that the orientation holes in the flange of the Titanium
`Implanted Port of PORTS function as X-ray discernable indicia—addressed
`above—the Decision considered the Petition’s arguments and supporting
`evidence regarding Powers, together with each of PowerPort, Sayre, and
`Meyer, and found they lacked adequate reasoning to support the proposed
`modification of the Titanium Implanted Port to include X-ray discernable
`indicia in the flange. See id. at 13–14, 16–19. The Rehearing Request
`shows no error in these determinations. See id. at 13–19.
`
`Nor did the Institution Decision overlook and misapprehend
`Mr. Tallarida’s testimony, as the Request argues. Rather, in the Decision,
`we considered the declaration testimony cited in the Petition and found it
`insufficient to support the Petition’s assertions. See, e.g., id. at 12–13.
`Paragraphs 210 and 214–19 of Mr. Tallarida’s declaration, cited in the
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`Request, are part of Mr. Tallarida’s discussion of independent claim 12.
`Ex. 1009 ¶¶ 201, 210, 214–19; see Req. 12–14 (citing and quoting Ex. 1009
`¶¶ 210, 214–19). For most of these paragraphs (paragraphs 210, 214, 215,
`and 218), the Institution Decision explicitly addressed the identical or nearly
`identical paragraphs of Mr. Tallarida’s testimony regarding independent
`claim 1 and found them to be entitled to little to no weight and insufficient to
`show that the flange of the Titanium Implanted Port of PORTS is a known
`location of X-ray discernable indicia. See Inst. Dec. 13 (citing, inter alia,
`Ex. 1009 ¶¶ 150, 157, 159, 163); compare Ex. 1009 ¶¶ 150, 157, 159, 163,
`with id. ¶¶ 214, 210, 215, 218. The Decision found the Petition’s assertions
`and evidence regarding claim 12 to be insufficient for the same reasons as
`claim 1. Inst. Dec. 14–15. Thus, the Request’s citation and quotation of this
`testimony directed to claim 12 does not undermine or show error in our
`conclusions in the Decision.
`
`The additional paragraphs of Mr. Tallarida’s declaration quoted in the
`Rehearing Request that the Decision did not refer to expressly (or refer to an
`equivalent paragraph)—namely paragraphs 216, 217, and 219—also show
`no error in the Decision. For example, these paragraphs do not contradict
`our conclusions that Mr. Tallarida’s testimony that the flange of the
`Titanium Implanted Port of PORTS is a known location for X-ray
`discernable indicia is conclusory and lacks adequate explanation and
`support, and that the Petition does not provide adequate reasoning based on
`Powers and either PowerPort, Sayre, or Meyer as to why one of ordinary
`skill would have “modif[ied] the Titanium Implanted Port . . . to include
`X-ray discernable indicia in the flange” specifically. See id. at 13–19.
`In conclusion, the Request shows no error, including any matter raised
`in the Petition that was overlooked or misapprehended, in the Institution
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`Decision’s determination that the Petition fails to provide adequate
`reasoning for modifying the Titanium Implanted Port of PORTS to include
`X-ray discernable indicia of power injection capability in the flange.
`C.
`More generally, the Rehearing Request argues that the Board
`
`overlooked Mr. Tallarida’s personal knowledge of the structure and
`functions of power and non-power injectable ports and, specifically, the
`Titanium Implanted Port in PORTS and the power injectable port in
`PowerPort. Req. 8–9. Regardless of an expert’s personal knowledge, a
`factfinder need not credit and give probative weight to the expert’s
`testimony where it is not explained and supported adequately. See 37 C.F.R.
`§ 42.65(a) (“Expert testimony that does not disclose the underlying facts or
`data on which the opinion is based is entitled to little or no weight.”); In re
`Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Rohm &
`Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). Petitioner
`has shown no error in the Institution Decision’s determinations to give little
`to no weight to portions of Mr. Tallarida’s testimony. See Inst. Dec. 11, 13.
`CONCLUSION
`We have reviewed all of the arguments in the Rehearing Request and
`find them to be without merit. Petitioner has not shown that the decision
`denying institution of inter partes review of the challenged claims of the
`’325 patent constituted an abuse of discretion.
`ORDER
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s Request for Rehearing Pursuant to
`
`37 C.F.R. § 42.71(d) (Paper 10) is denied.
`
`
`
`15
`
`
`
`IPR2015-01660
`Patent 8,257,325 B2
`PETITIONER:
`Michael J. Fink
`Arnold Turk
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 Roland Clarke Place
`Reston, VA 20191
`mfink@gbpatent.com
`aturk@gbpatent.com
`
`PATENT OWNER:
`Alfred W. Zaher
`Jonathan R. Bowser
`Roger H. Lee
`Shawn Li
`BUCHANAN INGERSOLL & ROONEY PC
`Two Liberty Place 50 S. 16th Street, Suite 3200
`Philadelphia, PA 19102-2555
`Alfred.Zaher@bipc.com
`Shawn.Li@bipc.com
`Jon.Bowser@bipc.com
`Roger.Lee@bipc.com
`
`
`
`
`
`16