Ex Parte 7785302 et al

Patent Trial and Appeal Board

Jan 28, 2019

95002089 (P.T.A.B. Jan. 28, 2019)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,089 08/20/2012 7785302 99821.009US1 8848
109545 7590 01/28/2019
C.R. Bard, Inc.
c/o Greenblum & Bernstein, P.L.C.
1950 Roland Clarke Place
Reston, VA 20191
EXAMINER
WILLIAMS, CATHERINE SERKE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/28/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

ANGIODYNAMICS, INC.
Respondent, Requester

v.

Patent of C.R. BARD, INC.
Appellant, Patent Owner
________________

Appeal 2015-001533
Inter Partes Reexamination Control 95/002,089
United States Patent 7,785,302 B21
Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION AFTER REMAND

1 Issued August 31, 2010 to Kelly B. Powers (“the ’302 patent”).
Appeal 2015-001533
Reexamination Control 95/002,089
Patent US 7,785,302 B2
STATEMENT OF THE CASE
The present Decision After Remand is necessitated by the Federal
Circuit’s recent decision, which Affirmed-In-Part, Vacated-In-Part,
Reversed-In-Part, and Remanded, an earlier Board’s Decision on Appeal2 in
the subject reexamination. C.R. Bard, Inc. v. AngioDynamics, Inc., ---
Fed.Appx. --- (Fed. Cir. 2018); 2018 WL 4677441.
The Board’s Decision decided the Patent Owner’s appeal of the
Examiner’s rejections of claims 1–10 of the ’302 patent as follows:
1. Affirmed the Examiner’s decision rejecting claims 5, 6, and 8–
10 under §102(b) as being anticipated by IsoMed3 (Grounds A and C).
AngioDynamics v. C.R. Bard, 2016 WL 923521 *2.
2. Declined to reach Grounds D and E as applied to claims 5, 6,
and 8–10. Id. Ground D proposed that claims 1–10 be rejected under
35 U.S.C. § 103(a) as being unpatentable over IsoMed. Id. Ground E
proposed that claims 1–10 be rejected under 35 U.S.C. § 103(a) as
being unpatentable over IsoMed, Jones,4 and “the representative
knowledge of radiopaque alphanumeric markers.” Id.
3. Reversed the Examiner’s decision rejecting claim 7 under
§ 102(b) as being anticipated by IsoMed (Grounds A and C). Id.
4. Affirmed the Examiner’s decision rejecting claim 7 under
§ 103(a) as being unpatentable over IsoMed and Jones (Ground E).
Id.

2 AngioDynamics, Inc. v. C.R. Bard, Inc., 2016 WL 923521 (PTAB 2016)
(“Board’s Decision”). The Board also denied rehearing requests of the
parties in Decision on Request for Rehearing. 2017 WL 542597 (PTAB
2017).
3 Document identified as Medtronic, Inc., IsoMed Constant-Flow Infusion
System (bearing a 2000 copyright notice and the legend “Revised Sept.
2000”).
4 Jones et al., US 6,287,293 B1, issued Sept. 11, 2001 (“Jones”).
Appeal 2015-001533
Reexamination Control 95/002,089
Patent US 7,785,302 B2

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5. Declined to reach Ground D as applied to claim 7. Id.
6. Reversed the Examiner’s decision rejecting claims 1–4 under
§ 103(a) as being unpatentable over IsoMed in view of either Jones
(Ground E) or the knowledge of one of ordinary skill in the art
(Ground D). Id.

After issuance of the Board’s Decision on Request for Rehearing, the
Patent Owner appealed the Board’s decision as to the rejected claims to the
Federal Circuit, and the Requester cross-appealed as to claims 1–4, which
the Board determined to be patentable.

THE COURT’S REMAND
In its decision, the court rejected the Requester’s cross-appeal,
agreeing with the Board’s Decision. C.R. Bard v. AngioDynamics, 2018 WL
4677441 **7–10. However, as to the Patent Owner’s appeal, the court:
1. Vacated the Board’s finding that IsoMed qualifies as a printed
publication, and remanded for the Board to clarify its factual findings
with respect to IsoMed. Id. at **5, 10.
2. Reversed the Board’s anticipation finding of claims 5, 6, and 8–
10, determining that the Board erred in its interpretation of the claim
language that the alphanumeric message “indicate[s] that the assembly
is power injectable,” and construing this, and similar language to
mean “that the claimed access port is power injectable.” Id. at **1, 5,
10.
3. Vacated the Board’s obviousness conclusions regarding claim
7, and remanded the issue to the Board to “determine whether, under a
correct construction requiring the ports to be power injectable,
whether, [] claims [5–10] are obvious in view of the prior art of
record.” Id. at *10; see also id. at *6.

Appeal 2015-001533
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Patent US 7,785,302 B2

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ANALYSIS
As noted above, the court reversed the Board’s anticipation finding of
claims 5, 6, and 8–10, and vacated the Board’s obviousness conclusion
regarding claim 7, disagreeing with the Board’s claim construction as to the
limitation “the alphanumeric message indicating that the assembly is power
injectable” recited in independent claim 5, and similar limitation in
independent claim 8. The court interpreted such limitations to mean “that the
claimed access port is power injectable.” Id. at *5; see also id. at **6, 10.
The court’s claim interpretation is dispositive to the present Decision
After Remand. Each of the rejections proposed by the Requester, and adopted
by the Examiner, was premised on a claim interpretation that did not require
the access port to have “power injectable” capability. Indeed, while the
court’s decision is clear “that the claimed access port is power injectable,” our
review of the record does not indicate that the IsoMed, or any of the other
references relied upon in the proposed and adopted rejections, disclose a
power injectable access port. Prior art evidence as to a power injectable access
port is missing from the rejections at issue. Therefore, in view of the court’s
claim construction, we reverse the Examiner’s rejections of claims 1–10 under
Grounds A and C–E.
Finally, the issue noted in the court’s decision as to whether IsoMed
was a printed publication as of the effective date is moot because, as noted
above, there is no indication that IsoMed, or any other prior art relied upon,
discloses a power injectable access port.

DECISION
We REVERSE the Examiner’s rejections of claims 1–10.
Appeal 2015-001533
Reexamination Control 95/002,089
Patent US 7,785,302 B2

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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

REVERSED

Patent Owner:

C.R. BARD, INC.
C/O GREENBAUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191

Third Party Requester:

CADWALADER, WICKERSHAM & TAFT LLP
ONE WORLD FINANCE CENTER
NEW YORK, NY 10281