By Matthew L. Cutler, Principal

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 ‘070 patent relates to surgical stapling devices which are “capable of producing staples of different formed length” 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 “two prongs extending non-paralelly from the main portion.” The Board’s 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 “extending non-parallely” which was inconsistent with the Board’s interpretation. The Board accordingly declined to analyze these grounds. Of the remaining 18 grounds which relied on a construction consistent with the Board’s definition of the limitation, all relied at least in part on one reference which accounts for the “extending non-parallely” 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 “anvil” and “formed staple length” 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 ‘070 patent into a trial for inter partes review.