Paper 9
`Date: February 18, 2016
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ENDOLOGIX, INC.
`Petitioner,
`
`v.
`
`LIFEPORT SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01722
`Patent 8,192,482 B2
`____________
`
`Before JOSIAH C. COCKS, JAMES B. ARPIN, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`Date: February 18, 2016
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`
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`
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`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ENDOLOGIX, INC.
`Petitioner,
`
`v.
`
`LIFEPORT SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01722
`Patent 8,192,482 B2
`____________
`
`Before JOSIAH C. COCKS, JAMES B. ARPIN, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2015-01722
`Patent 8,192,482 B2
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`I. INTRODUCTION
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`
`
`Endologix, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`
`requesting inter partes review of claims 1–9, 12, 13, 21, 22, and 30 of U.S.
`Patent No. 8,192,482 B2 (Ex. 1001, “the ’482 patent”). LifePort Sciences
`LLC (“Patent Owner”) did not file a Preliminary Response. We have
`jurisdiction under 35 U.S.C. § 314.
`To institute an inter partes review, we must determine that the
`
`information presented in the Petition shows “a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we
`conclude that the information presented in the Petition establishes a
`reasonable likelihood that Petitioner will prevail in showing that claims 1–9,
`12, 13, 21, 22, and 30 of the ’482 patent are unpatentable. Pursuant to 35
`U.S.C. § 314, we hereby institute an inter partes review as to claims 1–9, 12,
`13, 21, 22, and 30.
`
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to patentability of the claims for which inter partes review is
`instituted. Our final decision will be based on the entire record, as
`developed during trial.
`
`A. Related Matters
`
`The ’482 patent is the subject of litigation styled LifePort Sciences
`
`LLC v. Endologix, Inc., D. Del. No. 12-cv-1791. Pet. 1; Paper 6, 2.
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`B. The ’482 Patent (Ex. 1001)
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`
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`The ’482 patent is titled “Endoluminal Stent.” Ex. 1001, Title. The
`
`invention is described as providing “a stent connecting means for connecting
`two intraluminal stents one to the other to define a continuous lumen
`through the two stents.” Id. at 2:21–24. According to the ’482 patent, prior
`art stents and prostheses are “generally satisfactory for the treatment of
`aneurysms, stenosis and other angeological diseases at sites in continuous
`un-bifurcated portions of arteries or veins.” Id. at 1:60–63. The ’482 patent,
`however, proceeds to discount the known stents and prostheses as “not
`wholly satisfactory” in situations “where the site of desired application of
`the stent or prosthesis is juxtaposed or extends across a bifurcation in an
`artery or vein such, for example, as the bifurcation in the mammalian aortic
`artery into the common iliac arteries.” Id. at 1:64–2:1.
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`Figures 1A and 4A of the ’482 patent are reproduced below.
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`
`
`Figure 1A depicts “a front view of a bifurcated intraluminal stent in
`accordance with the present invention constituting part of an endoluminal
`prosthesis.” Ex. 1001, 7:33–35. Figure 4A depicts a side view of a “part of
`the bifurcated stent of FIG. 1a opened up to show its construction.” Id. at
`7:44–45. As depicted in Figure 1A, bifurcated stent 10 is composed of a
`wire skeleton that is constructed of four separate parts: proximal part 12,
`frustoconical part 14, first distal part 16, and second frustoconical part 18.
`Id. at 8:33–35. As depicted in Figure 4A, the stent includes hoops 20
`formed of nitinol wire that “follows a sinuous path to define a plurality of
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`circumferentially spaced apices 22.” Id. at 8:51–55. The ’482 patent also
`explains that “juxtaposed apices 22 of neighboring hoops 20 are secured
`together by securing means 99.” Id. at 9:22–25.
`
`
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`C. Illustrative Claims
`
`Claims 1 and 30 are independent. Claims 2–9, 12, 13, 21, and 22
`
`ultimately depend from claim 1. Claims 1 and 30 are illustrative of the
`claimed subject matter, and are reproduced below:
`
`1. A stent comprising:
`a plurality of hoops aligned along a common axis, each of
`said hoops being non-helical and oriented in a plane substantially
`perpendicular to the longitudinal axis of the stent, and each of
`said hoops including a plurality of elongate elements joined to
`one another and forming apices that point in a direction along the
`longitudinal axis of the stent, and wherein at least one elongate
`element in each hoop is a continuation of an elongate element of
`an adjacent hoop; and
`means for securing an apex of one hoop to an abutting a
`juxtaposed apex of a neighboring hoop.
`
`
`30. A stent comprising a tubular member having a
`plurality of hoops aligned adjacent one another along the
`longitudinal axis of said tubular member, each of said hoops
`comprising a plurality of elongate elements, with pairs of said
`elongate elements meeting one another and forming vertices
`axially pointing in a direction along the longitudinal axis of the
`stent, wherein at least some of said vertices axially abut and are
`individually connected to oppositely pointed vertices of elongate
`elements of an adjacent hoop, wherein the vertices of each hoop
`pointed
`in
`the axial direction
`lie
`in a common plane
`perpendicular to the longitudinal axis of the tubular member, and
`wherein at least one elongate element in each hoop is a
`continuation of an elongate element of an adjacent hoop.
`
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`D. References Relied Upon
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`
`
`The Petition relies on the following references:
`Ryan
`US 8,317,854 B1 Nov. 27, 2012
`Cragg
`US 5,405,377
`Apr. 11, 1995
`Porter
`US 5,064,435
`Nov, 12, 1991
`MacGregor
`US 4,994,071
`Feb. 19, 1991
`Hillstead
`US 5,135,536
`Aug. 4, 1992
`Palmaz
`US 4,733,665
`Mar. 29, 1988
`Fontaine
`US 5,370,683
`Dec. 6, 1994
`Schnepp-Pesch US 5,707,386
`Jan. 13, 1998
`Lau
`US 5,421,955
`June 6, 1995
`Andersen
`US 5,234,457
`Aug. 10, 1993
`
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`Ex. 1013
`
`
`
`
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`E. The Alleged Grounds of Unpatentability
`
`Petitioner contends that claims 1–9, 12, 13, 21, 22, and 30 of the ’482
`
`patent are unpatentable under 35 U.S.C. on the following grounds:
`
`
`Reference(s)
`
`Ryan
`Ryan
`Ryan and Cragg
`Ryan and Porter
`Ryan and MacGregor
`Hillstead
`Hillstead and Palmaz
`Hillstead, Palmaz, and
`Ryan
`
`Claims challenged
`1–9, 12, 13, 21, 22, and 30
`1–9, 12, 13, 21, 22, and 30
`1–9, 12, 13, 21, 22, and 30
`2–4, 6, 7, and 12
`2, 5, and 7–9
`1–3, 5, 6, 12, 13, 21, and 30
`1–3, 5, 6, 12, 13, 21, and 30
`1–9, 12, 13, 21, 22, and 30
`
`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`§ 103
`§ 102
`§ 103
`§ 103
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`II. ANALYSIS
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`A. Claim Construction
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`1. Standard of Claim Construction
`
`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.
`See In re Rambus, Inc., 753 F.3d 1253, 1255–56 (Fed. Cir. 2014) (“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)” (en banc)).
`
`Citing to 35 U.S.C. § 154(a), Petitioner contends that “the ’482 Patent
`expired on September 27, 2014.” Pet. 19. In a Notice filed January 28,
`2016, Patent Owner represented that the ’482 patent has expired, but
`contends that the date of expiration was September 1, 2015. Paper 8, 2.1
`Thus, although the parties disagree as to the correct date, there is no dispute
`that the ’482 patent has now expired.2 For purposes of this Decision, we
`will construe claim terms under the principles in Phillips, 415 F.3d at 1312–
`13 (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
`
`
`1 Patent Owner’s Notice was requested by the panel in an Order dated
`January 28, 2016. See Paper 7.
`2 We do not discern that it is necessary, at this time, to resolve the dispute
`between the parties as to the correct expiration date.
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`the time of the invention). We, however, will not apply a rule of
`construction that claims should be construed to preserve their validity. See,
`e.g., Google Inc. v. Createads LLC, 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 burden of proving a
`proposition of unpatentability by a preponderance of the evidence. See 35
`U.S.C. § 316(e).
`
`2. Specific Constructions
`
`Although, as noted above, we construe the claim terms of the ’482
`
`patent in accordance with Phillips, only terms that are in controversy in this
`proceeding need to be construed, and then only to the extent necessary to
`resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, we
`determine that it is necessary only to make explicit a construction for the
`following terms/phrases: (1) “a plurality of hoops aligned along a common
`axis, each of said hoops . . . oriented in a plane substantially perpendicular to
`the longitudinal axis of the stent”; (2) “segment”; and (3) “means for
`securing.”
`
`a. “a plurality of hoops aligned along a common axis, each of
`said hoops . . . oriented in a plane substantially
`perpendicular to the longitudinal axis of the stent”
`This phrase is recited in claim 1. Petitioner did not offer a
`construction for the phrase, however, we construe it expressly below. In the
`context of the Specification of the ’482 patent, the disclosed stents are, by
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`and large, tubular or somewhat cylindrical in shape. Figure 2B of the ’482
`patent is reproduced below (as annotated by the panel for explanatory
`purposes):
`
`
`
`
`Figure 2B depicts mandrel 46 used to form a stent of the ’482 patent.
`
`As depicted in Figure 2B, a plurality of hoops (e.g., 20a and 20b) are formed
`from winding wire around mandrel 46. A stent so formed, thus, would have
`a series of hoops forming rings that are positioned along the longitudinal
`axis of a stent. With the above in mind, we conclude that the hoops oriented
`in a plane substantially perpendicular to the longitudinal axis of a stent,
`means that with respect to the reproduced annotated Figure 2B above, the
`hoops are oriented in at least one plane extending into and out of the page,
`which are represented by the solid vertical lines added by the panel.
`
`b. “segment”
`
`Petitioner contends the following with respect to the construction of
`the term “segment”:
`Petitioner submits that the claim term “segment” (see Claims 2-
`5, 8-9, and 12) means “portion.” The ‘482 Patent makes clear that
`those terms are synonymous when used to describe a segment or
`portion of a stent: “straight stent 400 comprises proximal stent
`portion (or segment) 401, distal stent portion 402, and an
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`intermediate portion 403.” ‘482 Patent at 16:33-35 (emphasis
`added).
`Pet. 20.
`
`Thus, in the context of the ’482 patent, Petitioner proposes that the
`term “segment” and “portion” are synonymous, when used to describe a part
`of a stent.
`
`At this time, we are satisfied that the ordinary meaning of “segment”
`with respect to the stents set forth in the ’482 patent conveys that a
`“segment” of a stent also is understood as a “portion” of a stent.
`Accordingly, for purposes of this Decision, we accept the construction of
`“segment” advanced by Petitioner.
`
`c. “means for securing”
`
`Claim 1 recites “means for securing an apex of one hoop to an
`abutting a juxtaposed apex of a neighboring hoop.” A claim limitation that
`uses the word “means” invokes a rebuttable presumption that § 112, sixth
`paragraph applies.3 CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1369 (Fed. Cir. 2002). Further, the limitation describes the “means” in
`terms of the function it performs, i.e., “securing.” The presumption that
`§ 112, sixth paragraph, applies is not rebutted in this case because there is
`insufficient structure recited in the claim to perform the recited function.
`Thus, we conclude that this limitation is recited in a mean-plus-function
`format.
`
`
`3 Paragraph six of 35 U.S.C. § 112 was replaced with newly designated
`§ 112(f) when § 4(c) of the America Invents Act (AIA), Pub. L. No. 112–29,
`took effect on September 16, 2012. Because the application resulting in the
`’482 patent was filed before that date, we refer to the pre-AIA version of
`§ 112.
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`Such a limitation is “construed to cover the corresponding structure,
`material, or acts described in the specification and equivalents thereof.” 35
`U.S.C. § 112, sixth paragraph; see Lockheed Martin Corp. v. Space
`Systems/Loral, Inc. 324 F.3d 1308, 1318 (Fed. Cir. 2003). Here, Petitioner
`contends that the claimed function is “securing the apex of one hoop to a
`juxtaposed apex of a neighboring loop.” Pet. 19–20. Petitioner contends
`that the following structure corresponds to that function:
`(1) loop formed of thermoplastic material; (2) a suture; (3) bead
`formed of a thermoplastic material; (4) loop formed of wire; (5)
`ring formed of wire; and (6) staple formed of wire; and
`equivalents.
`Pet. 20.
`
`Although Petitioner makes no citation to the Specification of the ’482
`patent in support of its contention, we observe that that Specification
`provides support for Petitioner’s contention. In particular, the Specification
`describes securing means 99 that operates to secure together juxtaposed
`apices 22 of neighboring hoops 20 (Ex. 1001, 9:21–30), and also states the
`following:
`
`In addition to polypropylene filaments, the securing means
`may comprise a loop element 99a of a suture material, for
`example, to tie the juxtaposed apices together, as shown in FIG.
`4(b). The securing means may also comprise bead 99b formed
`of a thermoplastic material around juxtaposed apices, as shown
`in FIG. 4(c). Also alternatively, the securing means may be a
`loop 99c, ring 99d, or staple 99e formed of wire such as nitinol,
`as shown in FIGS. 4(d), 4(e), and 4(f) respectively.
`Id. at 9:31–38.
`The Specification, thus, sets forth concrete structures operable to perform
`the securing function required by claim 1. Accordingly, for purposes of this
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`Decision, we regard the above-noted structures, and their equivalents, as
`constituting the pertinent structures covered by claim 1.
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`B. Anticipation by Ryan
`
`Petitioner contends that claims 1–9, 12, 13, 21, 22, and 30 are
`
`anticipated by Ryan. Anticipation requires that each and every element in a
`claim, arranged as is recited in the claim, must be found in a single prior art
`reference. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
`(Fed. Cir. 2001).
`
`1. Overview of Ryan
`
`Ryan is titled “Apparatus and Methods for Endoluminal Graft
`Placement.” Ex. 1004, Title. Ryan describes its disclosed invention as
`being “for the endoluminal placement of intraluminal grafts for the treatment
`of disease conditions, particularly aneurysms.” Ex. 1004, 2:31–33. Ryan’s
`Figure 2 is reproduced below:
`
`Figure 2 is a “side view of a radially compressible perforate tubular
`frame.” Id. at 4:45–47. Figure 2 depicts tubular frame 14 which includes “a
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`plurality of radially compressible band members 11, each of which
`comprises a zig-zag or Z-shaped element which forms a continuous circular
`ring.” Id. at 7:49–52. The figure also depicts bridge elements 13. Id. at 54–
`57. The ’482 explains that “[a]djacent band members 11 are preferably
`spaced-apart from each other by a short distance d and are joined by bridge
`elements 13.” Id.
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`
`
`2. Discussion - Ryan
`
`Petitioner lays out in detail where it believes Ryan discloses all the
`elements of the above-noted claims. Pet. 21–36.4 For instance, with respect
`to claim 1, Petitioner identifies the claim as having elements designated 1.0–
`1.5 and relies on an annotated version of Ryan’s Figure 2 setting forth where
`Petitioner believes those elements are disclosed. Petitioner’s claim chart for
`claim 1, which includes that annotated figure, is reproduced below:
`
`
`4 Petitioner also relies on the Declaration of Dr. Richard A. Hillstead (Ex.
`1002).
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`13
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`Pet. 22.
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`As shown in the claim chart reproduced above, Petitioner makes
`explicit reference to portions of Ryan’s Figure 2 in urging that all of the
`elements of claim 1 are disclosed by Ryan. In connection with the elements
`designated 1.0–1.4, we are satisfied, at this time, that they are disclosed by
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`Ryan.5 In connection with the “means for securing” limitation of claim 1
`(identified as claim element 1.5), Petitioner draws attention to Ryan’s
`bridging elements 13. Id. As noted above, bridging elements 13 are
`structural components that function to join adjacent band members 11.
`Petitioner urges that bridging elements 13 perform the “securing” function
`recited by claim 1. Pet. 25. Petitioner also contends that the bridging
`elements constitute “equivalent structure” to that covered by the claim. 6 Id.
`On the record before us, we are persuaded that Ryan’s bridging elements 13
`account for the “means for securing” recited in claim 1.
`We also are persuaded, at this time, that Petitioner has shown where
`the remaining features of claim 1 are found in Ryan, as well as the features
`of claims 2–9, 12, 13, 21, 22, and 30. See Pet. 21–36. For instance, we are
`persuaded that Ryan discloses “at least one stent segment in combination
`with one or more additional stent segments,” as required by claim 2. See
`Pet. 25–26 (citing Ryan 6:62–7:39; Ex. 1002 ¶ 60–62). We also are
`persuaded that Ryan discloses: (1) that its stent segments may be axially
`aligned (claims 3, 4), or arranged “axially parallel to, but non-common
`coaxial with” one another (claim 8); (2) the use of fabric components as a
`
`
`5 With respect to element 1.2, we regard the required “perpendicular plane”
`as being a plane that extends into and out of the page. See supra Section
`II.A.2.a.; contra Pet. 22 (highlighted plane parallel to longitudinal axis,
`depicted in claim chart). We understand Ryan’s hoops 11 as oriented in
`such a plane.
`6 With respect to § 112, sixth paragraph, “an equivalent results from an
`insubstantial change which adds nothing of significance to the structure,
`material, or acts disclosed in the written description.” See Valmont
`Industries, Inc. v. Reinke Manufacturing Company, Inc., 983 F.2d 1039,
`1043 (Fed Cir. 1993).
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`part of the stent (claims 4, 22); (3) the presence of various hoop connection
`configurations (claims 5, 12, 21, 30); and (4) the presence of adjacent hoops
`having the same (claim 6) and different (claim 7) diameters.
`Having evaluated the Petition, and its supporting evidence, we are
`persuaded, for purposes of this Decision, that Petitioner has shown a
`reasonable likelihood of prevailing in its challenge to claims 1–9, 11, 12, 21,
`22, and 30 as anticipated by Ryan.
`
`
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`C. Obviousness Based on Ryan
`
`Petitioner proposes the following grounds of obviousness based on
`Ryan: (1) claims 1–9, 12, 13, 21, 22, and 30 as unpatentable over Ryan taken
`alone; (2) claims 1–9, 12, 13, 21, 22, and 30 as unpatentable over Ryan and
`Cragg; (3) claims 2–4, 6, 7, and 12 as unpatentable over Ryan and Porter;
`and (4) claims 2, 5, and 7–9 as unpatentable over Ryan and MacGregor.
`The Supreme Court has made clear that “[t]he combination of familiar
`elements according to known methods is likely to be obvious when it does
`no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 416 (2007). To reach that conclusion, however, requires more
`than a mere showing that the prior art includes separate references covering
`each separate limitation in a claim under review. Unigene Labs., Inc. v.
`Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “Rather, obviousness
`requires the additional showing that a person of ordinary skill at the time of
`the invention would have selected and combined those prior art elements in
`the normal course of research and development to yield the claimed
`invention.” Id. Indeed, in many cases a person of ordinary skill, who is also
`a person of ordinary creativity, “will be able to fit the teachings of multiple
`patents together like pieces of a puzzle.” KSR, 550 U.S. at 420.
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`Furthermore, the question of obviousness is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art7; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). Against that general background, we
`consider the references, other evidence, and arguments on which Petitioner
`relies.
`
`1. Ryan Taken Alone
`
`Petitioner also proposes a ground of obviousness applied to claims 1–
`
`9, 12, 13, 21, 22, and 30 based on Ryan taken alone. In that respect,
`Petitioner contends that, even if Ryan’s bridging elements 13 are not
`considered equivalent structures to the securing means structures disclosed
`in the Specification of the ’482 patent, those claims remain unpatentable.
`
`At the outset, we observe that a disclosure that anticipates under 35
`U.S.C. § 102 also generally renders the claim unpatentable under 35 U.S.C.
`§ 103, because anticipation is the epitome of obviousness. Jones v. Hardy,
`727 F.2d 1524, 1529 (Fed. Cir. 1984). As discussed above, on this record,
`we are persuaded that Petitioner has established a reasonable likelihood of
`prevailing in showing that Ryan anticipates claims 1–9, 12, 13, 21, 22, and
`30. Thus, we also are persuaded that Petitioner has established a reasonable
`likelihood of prevailing in showing that Ryan renders those claims obvious.
`
`
`7 Petitioner proposes a definition for a person of ordinary skill in the art.
`Pet. 18–19 (citing Ex. 1002 ¶¶ 19, 20). Patent Owner does not yet propose
`an alternative definition. To the extent necessary and for purposes of this
`Decision, we accept Petitioner’s definition.
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`Nevertheless, even were we not persuaded that Petitioner has
`established a reasonable likelihood of prevailing in showing that Ryan
`anticipates claims 1–9, 12, 13, 21, 22, and 30, and, in particular, that Ryan’s
`bridging means 13 do not constitute equivalent structures to the securing
`means in the ’482 patent, we are persuaded that Petitioner has established
`reasonably that structures corresponding to the “means for securing” were
`known in the art. In making that determination at this stage, we are
`cognizant of Dr. Hillstead’s testimony to that effect (see Ex. 1002 ¶¶ 85, 86).
`In that regard, the record demonstrates that Dr. Hillstead has considerable
`experience in the pertinent field and meets or exceeds Petitioner’s definition
`of a person of ordinary skill in the art. Ex. 1002 ¶¶ 1–20; Ex. 1003. We also
`observe that Dr. Hillstead is the named inventor of U.S. Patent No.
`5,135,536 (Ex. 1008),8 which is titled “Endovascular Stent and Method” and
`describes that “welding, soldering, tying or suturing” were known means for
`attaching portions of stents to one another. Ex. 1008, 3:28–36. Thus, Dr.
`Hillstead’s recognition in 1992 that suturing was a known means of
`attachment in the field of stents supports his testimony that, at the time of the
`invention of the’482 patent, “sutures” were well known structures for
`securing neighboring loops in a stent. See Ex. 1002 ¶ 86.
`For the foregoing reasons, we are persuaded that Petitioner has shown
`a reasonable likelihood of prevailing in its challenge that claims 1–9, 12, 13,
`21, 22, and 30 are unpatentable, as rendered obvious over Ryan.
`
`
`8 U.S. Patent No. 5,135,536, issued August 4, 1992.
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`2. Ryan and Cragg
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`Petitioner also proposes that claims 1–9, 12, 13, 21, 22, and 30 are
`unpatentable over Ryan and Cragg. Cragg is titled “Intraluminal Stent.” Ex.
`1005, Title. Cragg’s Figure 1 is reproduced below:
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`Cragg’s Figure 1 is described as “a perspective view of the
`intraluminal stent of the present invention.” Ex. 1005, 2:10–11. Cragg
`explains that its stent 10 includes wire body 11 having “a sinuous or zig-zag
`configuration and defining a continuous helix with a series of connected
`spirals or hoops.” Id. at 2:40–45. Cragg further explains that “loop
`members 12” connect adjacent apices of adjacent helix hoops to help define
`the tubular stent.” Id. at 2:45–47. Cragg also discloses that “sutures” may
`be so used for the purpose, and “other connecting means such as staples and
`rings made of metal or plastic” may be used. Id. at 3:1–4. Structures such
`as a “loop,” “suture,” “ring,” or “staple” are those identified in the ’482
`patent as constituting a securing means. Ex. 1001, 9:31–38. Petitioner
`contends that one of ordinary skill in the art would have appreciated that
`known securing structures, such as Cragg’s loop members, sutures, rings, or
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`staples, may be used in place of Ryan’s bridging elements 13 to secure
`adjacent hoops to one another in a stent. Pet. 39–40; see id. at 37–38.
`
`In considering the Petition, and its supporting evidence, we are
`persuaded that Petitioner has shown a reasonable likelihood of prevailing in
`its assertion that claims 1–9, 12, 13, 21, 22, and 30 are unpatentable, as
`rendered obvious over Ryan and Cragg.
`
`
`
`3. Obviousness Based on Ryan and Porter
`Petitioner contends that claims 2–4, 6, 7, and 12 are unpatentable on a
`ground based on Ryan and Porter. In connection with that ground, Petitioner
`contends that, “[t]o the extent any claims is not anticipated by Ryan alone, it
`is at least rendered obvious by Ryan in view of Porter.” Pet. 40 (citing Ex.
`1002 ¶¶ 94–103). In that respect, although noting that Ryan discloses stents
`incorporating “segments,” as required by the above noted claims, Petitioner
`reasons that “one of skill in the art would have also known that the stents
`described in Ryan could be used in the alternative segmented structures
`disclosed by Porter.” Id.
`Petitioner, thus, offers its ground based on Ryan and Porter contingent
`on a determination that Ryan does not anticipate claims 2–4, 6, 7, and 12.
`Id. As discussed above, however, we are persuaded that Petitioner has
`shown a reasonable likelihood of succeeding on its challenge that Ryan
`anticipates claims 2–4, 6, 7, and 12. See supra Section II.B. Petitioner also
`does not explain what perceived potential deficiency in Ryan that Porter is
`offered to cure. See Graham, 383 U.S. at 17–18 (the obviousness analysis
`includes any differences between the claimed subject matter and the prior
`art). To that end, Petitioner does not explain what claim features the
`“alternative segmented structures disclosed by Porter” address.
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`Whether to institute trial on a particular ground of unpatentability
`proposed is in our discretion. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a)
`(“When instituting inter partes review, the Board may authorize the review
`to proceed on all or some of the challenged claims and on all or some of the
`grounds of unpatentability asserted for each claim.”). We also observe that
`we construe our rules “to secure the just, speedy, and inexpensive resolution
`of every proceeding.” 37 C.F.R. § 42.1(b). The presence of additional,
`inadequately explained grounds as a part of a trial generally does not lend
`itself to that goal.
`We conclude that because: (1) Petitioner already has shown a
`reasonable likelihood of prevailing with respect to claims 2–4, 6, 7, and 12
`based on Ryan; (2) Petitioner does not explain what potential shortcomings
`in Ryan that Porter is offered to correct; (3) we have discretion with respect
`to grounds on which we institute; and (4) we construe our rules to secure the
`just, speedy, and inexpensive resolution of this proceeding, we decline to
`institute trial based on Ryan and Porter.
`
`4. Ryan and MacGregor
`
`Petitioner also urges that claims 2, 5, and 7–9 are unpatentable over
`Ryan and MacGregor. As with the ground based on Ryan and Porter,
`Petitioner contends that the Ryan and MacGregor ground is offered “[t]o the
`extent any claim is not anticipated by Ryan.” Pet. 43 (citing Ex. 1002
`¶¶ 104–111). In particular, Petitioner states the following:
`MacGregor discloses a non-helical “bifurcating stent for
`insertion into a bifurcating vessel such as a blood vessel” similar
`to that of Ryan. MacGregor at Abstract, Fig 1; Hillstead Decl.
`¶ 105. One of skill in the art would have known that
`MacGregor’s bifurcated stent design was an alternative to the
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`bifurcated stent design of Ryan and that it would have been a
`simple substitution to replace the fabric legs 26 and 28 of Ryan
`with the “cylindrical lattices 20, 22” of MacGregor to arrive at
`the predictable result of a branched prosthesis for “insertion into
`a branching blood vessel.” MacGregor at 2:50-52; Hillstead
`Decl. ¶ 105.
`Pet. 43.
`
`Thus, according to Petitioner, it would have been known to a skilled
`artisan to incorporated “MacGregor’s bifurcated stent design” (id.) into
`Ryan’s stent, yet, we observe that, while the ’482 describe bifurcated stents
`in its Specification, none of the claims involved in this proceeding includes
`recitation of a “bifurcated stent design.” Petitioner does not articulate what
`meaningful purpose MacGregor’s teachings of an “alternative” “bifurcated
`stent design” has vis-à-vis claims 2, 5, and 7–9 of the ’482 patent beyond the
`teachings of Ryan alone. In that respect, Petitioner does not explain
`adequately what circumstances here support institution of trial on a ground
`based on Ryan and MacGregor.
`
`On the record before us, we decline to institute trial based on Ryan
`and MacGregor.
`
`D. Anticipation by Hillstead
`Petitioner contends that claims 1–3, 5, 6, 12, 13, 21, and 30 are
`anticipated by Hillstead. Hillstead describes its invention as “[a] stent for
`reinforcing a vessel wall.” Ex. 1008, Abstract. In particular, Hillstead
`describes that stent 10 is formed from an elongated wire filament 17. Id. at
`3:14–16.
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`Hillstead’s Figures 6, 7, and 2 are reproduced below:
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`Figures 6 and 7 depict plan view of a filament wrapped around a
`mandrel. Ex. 1008, 2:49–53. Figure 2 depicts an elevation view of a stent
`according to the invention of Hillstead. Id. at 2:40–41. More particularly,
`filament 17 is rolled around mandrel 22 and is formed with a series of bends
`18 and ends 21. Id. at 3:14–27. Hillstead states that “[f]ilament portions at
`the each end 21 and location 24 are permanently adhered together to form
`junctions 26 to prevent the unrolling of the stent 10 up
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