Medtronic, Inc. and Medtronic Vascular, Inc.v.Lifeport Sciences LLC

Patent Trial and Appeal Board

Jul 22, 2014

08420623 (P.T.A.B. Jul. 22, 2014)

Trials@uspto.gov Paper 15
571-272-7822 Entered: July 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MEDTRONIC, INC. AND MEDTRONIC VASCULAR, INC.,
Petitioner,
v.
LIFEPORT SCIENCES LLC,
Patent Owner.
____________

Case IPR2014-00284
Patent 5,562,728
____________

Before LORA M. GREEN, SCOTT E. KAMHOLZ, and
BARBARA A. BENOIT, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71

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INTRODUCTION
Medtronic, Inc. and Medtronic Vascular, Inc. (collectively,
“Petitioner”) filed a corrected Petition (Paper 7, “Pet.”) requesting an inter
partes review of claims 1-5, 9-18, 23, 27-31, and 33-35 of U.S. Patent
No. 5,562,728 (Ex. 1001, “the ’728 patent”). The Board issued a decision
instituting inter parties review of claims 1-3, 9-18, 23, 27-31, and 33-35.
Paper 10 (“Inst. Dec.”). The Board, however, denied institution of claims 4
and 5. Id. at 18-22. Petitioner has filed a corrected motion requesting
rehearing of the denial to institute. Paper 14 (“Req.”).
For the reasons that follow, the request for rehearing is denied.
ANALYSIS
When rehearing a decision on institution, the Board will review the
decision for an abuse of discretion. 37 C.F.R. § 42.71(c). A request for
rehearing must identify specifically all matters the party believes the Board
misapprehended or overlooked. 37 C.F.R. § 42.71(d).
Claims 4 and 5 depend, directly or indirectly, from claim 3, which, in
turn, depends from independent claim 1. In its Petition, Petitioner asserted
claims 1, 4, and 5 would have been obvious over five combinations of
references: Lawrence1 and Charnsangavej2; Choudhury3 or Kornberg4, and

1 DAVID D. LAWRENCE ET AL., Percutaneous Endovascular Graft:
Experimental Evaluation, RADIOLOGY, Vol. 163, No. 2, pp. 357-60,
published May 1987 (Ex. 1003) (“Lawrence”).
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Lawrence; and Kornberg or Choudhury, and Charnsangavej. None of the
various combinations of references asserted against claims 4 and 5, however,
addressed the limitation “coil spring means formed at each apex serving to
expand the vees in an outward direction along the plane of each of the vees,”
as additionally recited by claim 3 on which each claim 4 and 5 depend.
As we acknowledged in our decision, the Petitioner asserted that the
additional limitation recited in claim 3 is found in Dotter,5 which is a
reference that was not asserted in any ground against claims 4 and 5. Inst.
Dec. 19-20. We did not institute inter partes review of claims 4 and 5 for
any ground asserted against those claims because the Petition was
insufficient to establish a reasonable likelihood that claims 4 and 5 are
obvious in view of the references asserted against claims 4 and 5. Inst.
Dec. 21.
Petitioner requests rehearing of our decision denying inter partes
review of claims 4 and 5. Req. 2. Petitioner contends that the Petition
includes all the references, combinations, and arguments needed to

2 CHUSILP CHARNSANGAVEJ ET AL., Stenosis of the Vena Cava: Preliminary
Assessment of Treatment with Expandable Metallic Stents, RADIOLOGY,
Vol. 161, No. 2, pp. 295-98, published November 1986 (Ex. 1004)
(“Charnsangavej”).
3 U.S. Patent No. 4,140,126, issued Feb. 20, 1979 (Ex. 1005)
(“Choudhury”).
4 U.S. Patent No. 4,562,596, issued Jan. 7, 1986 (Ex. 1009) (“Kornberg”).
5 CHARLES T. DOTTER ET AL., Transluminal Expandable Nitinol Coil Stent
Grafting: Preliminary Report, RADIOLOGY, Vol. 147, pp. 259-60, published
Apr. 1983 (Ex. 1016) (“Dotter”).
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demonstrate claims 4 and 5 are unpatentable (Req. 5-11) and contends that
public policy favors institution (Req. 11-12).
Petitioner identifies disparate sections of the Petition as providing
information necessary to support its contention that claims 4 and 5 are
unpatentable. Req. 7-9. Petitioner, however, should not expect the Board to
search the record and piece together any evidence or arguments that may
support Petitioner’s ultimate conclusion. Cf. DeSilva v. DiLeonardi, 181
F.3d 865, 867 (7th Cir. 1999) (“A brief must make all arguments accessible
to the judges, rather than ask them to play archaeologist with the record.”).
Moreover, in its Request, Petitioner does not identify any reference that
discloses the coil spring means limitation other than Dotter, which is a
reference asserted against claim 3, but is not asserted against claims 4 and 5.
Petitioner also asserts that the dependency relationships6 recited by the
claim language reprinted in its claim charts for claims 4 and 5 indicated that
the arguments made with respect to claim 3 also should be considered with
regard to claims 4 and 5. Req. 7-8. Reprinting the text of claims 4 and 5 in
a claim chart is insufficient to advance the arguments made in contention
with claim 3, from which each of claims 4 and 5 depends directly or
indirectly. Further, Petitioner does not rely, elsewhere in the Petition, on the
reprinting of a dependency relationship recited by a claim to advance
arguments, but rather the Petitioner expressly indicates the references in
which all limitations of a claim purportedly are found. For example, the text

6 Claim 4 recites “[a] graft as in claim 3”; claim 5 recites “[a] graft as in
claim 4.”
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for claim 9, including its dependency from claim 1, is reprinted in a claim
chart, but the claim chart indicates the various references that purportedly
disclose all of the limitations in claim 1. Pet. 55. Similarly, for claim 10
that recites “[a] graft as in claim 9,” the claim chart includes the text of the
claim and also expressly refers to arguments regarding claim 9. Id. (“See
above discussion of claim 9.”).
Petitioner’s contentions are undermined further by Petitioner’s request
for inter partes review of claims 4 and 5 under 35 U.S.C. § 103 as obvious
over “(1) Lawrence, Charnsangavej, and Dotter; and (2) Kornberg,
Charnsangavej, and Dotter.” Req. 3, 12-13. Neither of these grounds was
asserted against claims 4 and 5 in the Petition. A rehearing request is not a
supplemental petition.
We recognize the public policy interest in an inter partes review that
results in canceling unpatentable claims in patents. SmithKline Beecham
Corp. v. Apotex Corp., 403 F.3d 1331, 1354 (Fed. Cir. 2005) (“Both this
court and the Supreme Court have recognized that there is a significant
public policy interest in removing invalid patents from the public arena.”).
We will not institute an inter partes review, however, for a ground not
asserted in the Petition and first raised in the Request for Rehearing.
Petitioner’s request to institute inter partes review of claims 4 and 5
as obvious over (1) Lawrence, Charnsangavej, and Dotter; and (2) Kornberg,
Charnsangavej, and Dotter is denied.
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CONCLUSION
For the foregoing reasons, Petitioner has not shown that the Board
abused its discretion when declining to institute inter partes review of claims
4 and 5 of the ’728 patent.
ORDER
Petitioner’s motion under 37 C.F.R. § 42.71(d) is denied.

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PETITIONER:
James Elacqua
Edward Tulin
Skadden, Arps, Slate, Meagher & Flom LLP
james.elacqua@skadden.com
edward.tulin@skadden.com

PATENT OWNER:
Cary Kappel
William Gehris
Davidson, Davidson & Kappel, LLC
ckappel@ddkpatent.com
wgehris@ddkpatent.com