[Copyrighted Material Omitted]
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00493.
DAVID K.S. CORNWELL, Sterne Kessler Goldstein & Fox, PLLC, Washington, DC, argued for appellant. Also represented by PAULINE PELLETIER, RICHARD D. COLLER, III.
JAMES D. PETRUZZI, Petruzzi Law Firm, Houston, TX, argued for appellee. Also represented by EVERETT G. DIEDERIKS, JR., NICHOLAS SPENCER WHITELAW, Diederiks & Whitelaw PC, Woodbridge, VA.
Before MOORE, O'MALLEY, and WALLACH, Circuit Judges.
[117 U.S.P.Q.2d 1804] O'Malley, Circuit Judge.
TriVascular, Inc. (" TriVascular" ) appeals the judgment of the Patent Trial and Appeal Board (" the Board" ) holding that TriVascular failed to satisfy its burden of proving that the challenged claims of U.S. Patent No. 6,007,575 (" the '575 patent" ) are invalid as obvious. For the reasons below, we affirm.
The '575 patent claims inventions in the field of intraluminal stent technology. One type of intraluminal stent is a vascular stent. Vascular stents are used to treat medical conditions wherein a vascular wall is unduly constricted, as in the case of vascular stenosis, or unduly enlarged, as in the case of aneurysm. Either of these medical conditions poses an unacceptable risk of insufficient blood flow or vascular rupture.
The Patent in Suit
The '575 patent was filed on June 6, 1997, and lists a sole inventor, Dr. Shaun L.W. Samuels. The '575 patent generally claims intraluminal stents that can be affixed to a vascular wall via the use of " an inflatable and deflatable cuff" without penetrating the vessel wall. '575 patent, col. 6 ll. 47-67. These " inflatable and deflatable cuffs" are depicted by the number 17 in Figure 1 of the '575 patent below, and can be inflated by introduction of a fluid into each of the " circumferential ridges" 25.
Id. at fig. 1.
Claim 1 of the '575 patent is illustrative and recites:
1. An inflatable intraluminal stent adapted to be secured to the interior of a tubular structure within the human body comprising:
a) an inflatable and deflatable cuff of generally hollow cylindrical continuation having a collapsible lumen, an inner surface, an inlet, an outlet and a friction enhancing outer surface, said friction-enhancing outer surface featuring inflatable protrusion(s) including at least one circumferential ridge disposed about the inflatable cuff, said friction-enhancing outer surface engaging the interior of the tubular structure without penetration to prevent the cuff from moving in a longitudinal direction with respect to the tubular structure when said cuff is in a fully inflated condition;
b) means for injecting an inflation material into said cuff to inflate it; and
c) a valve integral with the inflatable cuff for permitting entry of the inflation material [117 U.S.P.Q.2d 1805] from the means for injecting and thereafter sealing said cuff to prevent deflation.
Id. at col. 6 ll. 47-67 (emphasis added). TriVascular disputes the Board's construction of the claim term " circumferential ridge," which appears in part (a) of the claim.
In 2013, Dr. Samuels sued TriVascular alleging infringement of the '575 patent. Samuels v. TriVascular Corp., Case No. 3:13-cv-02261 (N.D. Cal. May 17, 2013). TriVascular filed a petition for inter partes review (" IPR" ) on August 5, 2013. The Board instituted review on February 4, 2014. Joint Appendix (" JA" ) 168. In its Institution Decision, the Board explained that it was instituting IPR on the following two grounds: (1) obviousness over Samuel's U.S. Patent No. 5,423,851 (" Samuels '851" ) and U.S. Patent No. 5,423,745 to Todd et al. (" Todd" ); and (2) obviousness over U.S. Patent No. 5,693,088 to Lazarus et al. (" Lazarus" ) and Todd. JA 184. In its Institution Decision, the Board construed the phrase " circumferential ridge disposed about the inflatable cuff" to mean " raised strip disposed circumferentially about the outer surface of the inflatable cuff." JA 175-76. Applying its claim construction, the Board then found that " on the present record," Samuels had not demonstrated that the Samuels '851 reference teaches away from the substitution of the penetrating anchoring barbs taught in the reference, nor did Samuels establish that removing the barbs would destroy the objective of the reference. JA 183. Accordingly, the Board explained that TriVascular had established a reasonable likelihood of success on two potential grounds.
The parties subsequently introduced their respective expert reports regarding the instituted grounds. The IPR proceeded to trial, and the Board issued a final decision on December 13, 2014, holding that TriVascular failed to meet its burden of demonstrating that the challenged claims were unpatentable over the applied art. JA 24. In its Final Written Decision, the Board adopted Samuels' construction of " inflatable protrusions," as " protrusions that are themselves inflatable, i.e., expandable by being filled with fluid." JA 10. The Board found that, inter alia, the '575 patent's " inflatable protrusions" were not disclosed by the prior art, nor would a skilled artisan have been motivated to combine the prior art in a manner that would read on the claims of the '575 patent. The Board also found that the prior art did not teach the " circumferential ridges" taught in the '575 patent at issue,
based on its claim construction at institution, which did not permit the " circumferential ridges" to be made up of a series of discontinuous inflatable protrusions formed ...