November 19, 2013
PTAB Claim Construction Ruling Wipes out Half of Challenged Grounds, But Trial Still Initiated
In a case marked by a great number of grounds of unpatentability, Covidien was able to get 14 challenged claims of an Ethicon Endo-Surgery patent into a trial for inter partes review in a case styled as Covidien LP v. Ethicon Endo-Surgery, Inc. (IPR2013-00209), involving U.S. Pat. No. 8,317,070.
The â070 patent relates to surgical stapling devices which are âcapable of producing staples of different formed lengthâ when applied to tissue.
After listing the prior art references relied upon by Patent Challenger, the Board listed the 36 alleged grounds of unpatentability, stretching nearly two pages of the decision. Following, the Board conducted a detailed claim construction analysis, beginning with the phrase âtwo prongs extending non-paralelly from the main portion.â The Boardâs claim construction mimicked that of a typical district court claim construction analysis, including citations to the claims, specification and file history. Ultimately, the Board agreed with Patent Owner.
Then, the Board moved to analyze the alleged grounds of unpatentability, beginning by noting that 18 of the 36 grounds of unpatentability alleged by Patent Challenger relied on a construction of âextending non-parallelyâ which was inconsistent with the Boardâs interpretation. The Board accordingly declined to analyze these grounds. Of the remaining 18 grounds which relied on a construction consistent with the Boardâs definition of the limitation, all relied at least in part on one reference which accounts for the âextending non-parallelyâ feature.
Patent Challenger combined this reference with three other references, all of which disclosed a type of surgical stapler, to form several obviousness grounds. Relying on the three references, as well as expert testimony, Patent Challenger showed that the reference taught all limitations of the challenged claims, including the âanvilâ and âformed staple lengthâ limitations. Completing a lengthy, but straightforward obviousness analysis, the Board granted the Petition as to several obviousness grounds.
Despite having half of its numerous alleged grounds of unpatentability doomed by reliance on inconsistent claim construction, Covidien was able to get 14 challenged claims of the â070 patent into a trial for inter partes review.