The Regents of the University of Colorado

Patent Trials and Appeals Board

Aug 12, 2021

PGR2021-00026 (P.T.A.B. Aug. 12, 2021)

Trials@uspto.gov Paper: 14
571-272-7822 Date: August 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSURGICAL TECHNOLOGY, INC.,
Petitioner,

v.

THE REGENTS OF THE UNIVERSITY OF COLORADO,
Patent Owner.
____________

PGR2021-00026
Patent 10,786,391 B2
____________

Before LYNNE H. BROWNE, TIMOTHY J. GOODSON, and
JAMIE T. WISZ, Administrative Patent Judges.

WISZ, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing of Decision on Institution
37 C.F.R. § 42.71(d)

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Patent 10,786,391 B2

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I. INTRODUCTION
MicroSurgical Technology, Inc. (“Petitioner”) requests rehearing of
the Board’s Decision (Paper 12) (“Decision”) denying institution of post-
grant review of claims 1–20 (“the challenged claims”) of U.S. Patent
No. 10,786,391 B2 (Ex. 1001, “the ’391 patent”). Paper 13 (“Request for
Rehearing” or “Req. Reh’g”). For the reasons that follow, Petitioner’s
Request for Rehearing is denied.
II. ANALYSIS
Pursuant to 37 C.F.R. § 42.71(d):
A party dissatisfied with a decision may file a single request for
rehearing without prior authorization from the Board. The
burden of showing a decision should be modified lies with the
party challenging the decision. The request must specifically
identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously
addressed in a motion, an opposition, or a reply.
When reconsidering a decision on institution, we review the decision
for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion
exists where a “decision [i]s based on an erroneous conclusion of law or
clearly erroneous factual findings, or . . . a clear error of judgment.” PPG
Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed.
Cir. 1988). A rehearing request is not an opportunity for the requesting
party to reargue its case or merely to express disagreement with the
underlying decision. Nor is it an opportunity for the moving party to present
new arguments that were not in its original submissions.
Petitioner contends that we (1) erred in according the challenged
claims the benefit of the priority date of U.S. Provisional Application
No. 61/637,611 (“the ’611 provisional”) and (2) improperly shifted the
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burden to Petitioner in violation of Dynamic Drinkware v. Nat’l Graphics,
Inc., 800 F.3d 1375 (Fed. Cir. 2015). Req. Reh’g 1–11. We consider
Petitioner’s arguments below.
A. Priority Date of the Challenged Claims
According to Petitioner, our conclusion that claims 1–20 of the ’391
patent have written description support in the ’611 provisional should be
reconsidered because “it depends solely on the clearly erroneous finding that
a ‘line/border between the sides and top of the distal member’ (as the Board
construed the term ‘edge’) extends rearward from the distal end of the tip of
the device disclosed in the ’611 Provisional.’” Req. Reh’g 1. Petitioner
asserts that the “beveled platform 5 . . . does not embody a ‘line/border
between the sides and top’ on either the right or left side of the device tip”
because “[t]he beveled nature of these elements defies the identification of a
singular line/border between the sides and top that runs contiguously
rearward from the distalmost end of the ‘a first end/ beveled platform tip/
insertion blade tip 6.’” Id. at 4.
Petitioner further contends that we erroneously relied on figures
provided by Patent Owner that masked the “true surfaces of the beveled tip
and falsely portrays an ‘edge’ according to the Board’s construction” and
that “[t]he figures in the ’391 patent and ’611 Provisional make clear that no
singular ‘line/border between the sides and top’ may be found on either the
right or left side that runs contiguously rearward from the distalmost end of
the ‘first end/ beveled platform tip/ insertion blade tip 6.’” Req. Reh’g 4, 6.
According to Petitioner, “[t]o the extent that the Board’s construction of the
term ‘edge’ does not require a singular ‘line/border between the sides and
top,’ then the beveled device tip as construed must manifest multiple edges,
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which contravenes the recitations of ‘a right edge’ and ‘a left edge’ in the
Challenged Claims.” Id. at 6.
Petitioner also argues that there is no support in the ’611 provisional
for the limitation that the width between the right and left edges increases as
they extend rearward. Req. Reh’g 6. According to Petitioner, Patent
Owner’s arguments regarding the width “are based on the same faulty
annotated drawings that mask the fact that the tip of the distal member is
beveled and thus has no ‘edge.’” Id. at 7.
We find these argument unpersuasive in showing an abuse of
discretion. We construed the term “edge” to mean “the line/border between
the sides and top of the distal member.” Decision 9–13. As stated in our
Decision, this construction is consistent with the Specification and claims of
the ’391 patent which require that the “right edge” and “left edge” “extend[]
towards the rearward end from the tip.” Id. at 11 (citing Ex. 1001, 3:58–60,
25:35–36, 26:43–44).
Petitioner has not shown that we erred in finding that a singular
line/border (and thus an edge) runs rearward from the distalmost end of the
“first end/ beveled platform tip/ insertion blade tip 6.” As our Decision
states, although the adopted claim construction of “edge” “requires edges
that encompass two different portions of the distal member (i.e., the lateral
elements/cutting blades and the ramp), as Petitioner acknowledged, ‘the ’391
Patent figures all consistently show the tip, ramp and lateral elements
sequentially adjoined along the lateral direction,’” thus forming a line/border
between the sides and top of the distal member. Decision 13 (citing Pet. 17
(citing Ex. 1001, Figs. 4, 8–19)).
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Further, as discussed in our Decision, we found support for such
edges in the ’611 provisional application:
The ’611 provisional application discloses a first side
(8) and a second side (9) of the beveled platform (5)/distal
member wherein the first lateral blade (10) and the second
lateral blade (11) are “along the sides of said beveled platform.”
Ex. 1007, 38. As shown in the annotated figures below, the
’611 provisional application depicts right and left edges, which
are the lines/borders between the sides (8, 9) and top of the
distal member, wherein these edges extend towards the
rearward end from the tip (6).

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Decision 39–40 (citing Prelim. Resp. 21, 45–46 (citing Ex. 1007, Figs. 1,
3)). Annotated Figures 1 and 3 include added lines and labels indicating the
edges of the distal member.
Petitioner’s argument appears to hinge on the contention that the
beveled nature of the platform prevents it from being an edge. See Req.
Reh’g 4, 6. However, Petitioner provides no persuasive arguments or
evidence for this contention. We understand that Petitioner disagrees with
the Board’s assessment, but simple disagreement is not effective to
demonstrate an abuse of discretion.
Because there was no clear error in our finding that the ’611
provisional application discloses a continuous edge that runs rearward from
the distalmost end of the “first end/ beveled platform tip/ insertion blade tip
6,” there is also no clear error in finding that the ’611 provisional application
supports the width limitations. As stated in our Decision, the edges shown
in the annotated figure below have a width between them that increases as
they extend rearward.
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Decision 40 (citing Prelim. Resp. 22, 52 (citing Ex. 1007, Fig. 6)). The
annotated figure above includes added lines demarcating the edges and a
label indicating that the width between the edges increases from the forward
end to the rearward end. Petitioner contends that Patent Owner only argued
that the ramp, and not the tip, increases in width. See Req. Reh’g 7 (citing
Prelim. Resp. 51). However, the ramp is part of the distal member so an
increase in width of the ramp provides evidence of an increase in width
between the right and left edges as they extend rearward.
Thus, Petitioner has not demonstrated that we erred in finding that
claims 1–2, 4–9, 11–14, 16–17, and 19–201 of the ’391 patent have written
description support in the ’611 provisional.
B. Burden Shifting
Petitioner also contends that “[t]he Board’s denial of institution was
also based on an erroneous conclusion of law that misapprehended the two
different burdens of proof—persuasion and production—in a post grant
review that a petitioner and a patent owner must satisfy.” Req. Reh’g 8

1 Our Decision found that at least one of disclaimed claims 3, 10, 15, or 18
cannot claim priority to the ’611 provisional. Decision 24.
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(citing Dynamic Drinkware, 800 F.3d 1375). According to Petitioner,
“Petitioner satisfied its burden of production by coming forward with
Baerveldt, whose February 16, 2017 priority date predates the November 8,
2019 filing date of the ’391 patent.” Id. at 9. Petitioner contends that the
“burden then should have shifted to Patent Owner to establish whether the
’391 patent can claim priority to the ’611 provisional.” Id. at 10 (citing
Dynamic Drinkware, 800 F.3d at 1379–80; In re NTP, Inc., 654 F.3d 1268,
1276 (Fed. Cir. 2011)).
Petitioner further argues that “Patent Owner failed to establish that it
could actually claim priority to the ’611 provisional, or any other priority
application, and thus the burden never shifted back to Petitioner.” Req.
Reh’g 10. According to Petitioner:
Patent Owner focused only on three claim terms (only the terms
raised by Petitioner) and only contended that these terms were
supported by the ’391 patent disclosure and offered certain
conclusory remarks that disclosures in certain prior
applications—other than the ’611 Provisional application—
when viewed “in combination with” the new matter that was
added late during prosecution of the ’391 patent also provide
support.
Id. at 10–11 (citing Prelim. Resp. 60–66). Petitioner concludes that “Patent
Owner thus failed to demonstrate that the Challenged Claims find support in
the ’611 Provisional or any other priority application” and that “the Board
effectively presumed priority and erroneously shifted the burden with
respect to the effective filing date of the ’391 patent to Petitioner.” Id. at 11.
We are not persuaded by Petitioner’s arguments. Contrary to
Petitioner’s assertions, Patent Owner’s arguments regarding the claim terms
raised by Petitioner were not limited to only showing support in the ’391
patent. In fact, Patent Owner’s Preliminary Response discusses in detail
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where these claim terms are supported in the ’611 provisional application.
See Prelim. Resp. 12–24, 39–41, 43–59.
We also disagree with Petitioner’s contention that Patent Owner only
provided “conclusory remarks” that the challenged claims were supported by
priority applications other than the ’611 provisional. Req. Reh’g 11. For
example, the Preliminary Response discusses how the challenged claim
terms are supported by U.S. Patent No. 15/207,329 (“the ’329 application”).
See Prelim. Resp. 24–27, 61, 63–64. Further, as noted in our Decision,
Patent Owner also submitted a claim chart providing exemplary excerpts
from the ’611 provisional, the ’329 application, and the ’391 patent to
establish support for all elements of several exemplary challenged claims.
See Decision 26 n.4 (citing Prelim. Resp., Appx. A).
Petitioner has not demonstrated that we improperly shifted the burden
to Petitioner. Instead, we concluded that the record before us supported
Patent Owner’s contention that the non-disclaimed ’391 patent claims should
receive priority to the ’611 provisional application. Decision 42.
III. CONCLUSION
For the reasons given, Petitioner has not demonstrated that we abused
our discretion in denying institution of a post-grant review of claims 1–20 of
the ’391 patent.
IV. ORDER
Accordingly, it is
ORDERED that Petitioner’s Request for Rehearing is denied.

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FOR PETITIONER:
Lawrence Sung
Mary Sylvia
WILEY REIN LLP
lsung@wileyrein.com
msylvia@wileyrein.com

FOR PATENT OWNER:
Todd Tucker
Kyle Deighan
CALFEE, HALTER & GRISWOLD LLP
ttucker@calfee.com
kdeighan@calfee.com