Friday, February 05, 2016

Trivascular loses appeal of IPR decision at CAFC

Of the "broadest reasonable interpretation" standard:

In construing claim terms, the Board must determine the scope of the claims by giving them their broadest reasonable construction in light of the specification as they would be interpreted by one of ordinary skill in the art. Cuozzo, 793 F.3d at 1279-80; compare Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history. Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed. Cir. 2015).

While the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); see In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1148-50 (Fed. Cir. 2012) (finding the Patent Office’s construction unreasonably broad because it was “unreasonable and inconsistent with the language of the claims and the specification”). Construing individual words of a claim without considering the context in which those words appear is simply not “reasonable.” Instead, it is the “use of the words in the context of the written description and customarily by those of skill in the relevant art that accurately reflects both the ‘ordinary’ and ‘customary’ meaning of the terms in the claims.” Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). 2

The decision discusses the Blue Ridge Mountains:

TriVascular alleges that the Board’s construction is contrary to the plain meaning of the claim term. In support of its argument, TriVascular asserts that the Board’s construction is unreasonably narrow in light of the common definition of a topological “ridge.” TriVascular points to the Blue Ridge Mountains in the Appalachian Mountain Range, which TriVascular alleges constitute “discontinuous” protrusions that collectively form the mountain ridge. Appellant’s Br. 31-32. We find TriVascular’s arguments to be unpersuasive. First, we note that TriVascular does not explain why the Board should have resorted to a topological or cartographical definition of “ridge,” over a general dictionary definition that is consistent with both the specification’s teachings and the remaining claim limitations. And, even resorting to the topological definition of ridge, TriVascular has failed to explain why such a topological definition would encompass discontinuous peaks in a mountain range, when mountain ranges typically consist of adjacent, continuous mountain peaks.1 To adopt TriVascular’s definition and construe “circumferential” to include discontinuous points would be to adopt an unreasonably broad construction.

Footnote 1 states:

TriVascular’s utilization of the Blue Ridge Mountains as an exemplary mountain ridge is particularly unsupportive of their position. In fact, the National Park Service has noted that the Blue Ridge Mountains were so named because “hydrocarbons released into the atmosphere by the forest contribute to the characteristic haze on these mountains and to their distinctive color.” National Park Service, Blue Ridge Mountains, Frequently Asked Questions, at (last visited January 8, 2016). The eponymous blue haze of the mountain range constitutes a continuous ridge bridging the range’s mountain peaks. Thus the word “Blue” modifies the term “Ridge”; the term “Ridge” is not intended to modify the word “Mountains

And footnote 2:

Because TriVascular argues for a broader construction than the one the Board employed rather than a narrower one, the Supreme Court’s grant of certiorari to consider the propriety of the broadest reasonable interpretation standard in IPRs will not impact our decision to affirm the Board’s claim construction and nonobviousness conclusion here. Cuozzo, 793 F.3d 1268, cert. granted, Cuozzo Speed Techs., LLC v. Lee, No. 15-446, 2016 WL 205946 (U.S. Jan. 15, 2016). Accordingly, we need not delay deciding this case pending the Supreme Court decision in Cuozzo.

Of estoppel issues:

TriVascular nonetheless argues that there must be “written evidence” to contradict an applicant’s concessions made in an amendment, and that “[w]here the record is devoid of any written documentation, no inferences can be made as to what the examiner relied upon or understood.” Appellant’s Br. 36. TriVascular contends that this proposition flows from three cases, Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), Genzyme Corp. v. Transkaryotic Therapies, Inc., 346 F.3d 1094 (Fed. Cir. 2003), and Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556 (Fed. Cir. 1983). TriVascular’s reliance on these cases is misplaced. First, TriVascular argues that this court explained in Litton that failure to document the results of an interview with the examiner estopped the applicant from later contending that the “prosecution record is not true.” Appellant’s Br. 37 (citing Litton, 728 F.2d at 1439). Litton involved a case where an applicant elected to continue prosecution by filing a continuation application. Litton then had an examiner interview, the results of which were not documented. After the examiner interview, Litton filed an amendment clarifying that the continuation application was a continuation in part (“CIP”). Subsequently in litigation, Litton attempted to argue that, in the undocumented examiner interview, the examiner accepted Litton’s explanation that the continuation application did not contain new matter, and therefore should be entitled to the continuation application’s filing date. A review of the prosecution history in each case is necessarily context-specific. Unlike the present case, the examiner in Litton accepted Litton’s written filing, which characterized the application as a CIP.

Of relevance to the recent J&J/Ethicon decision:

TriVascular next contends that the Board’s conclusion of nonobviousness is inconsistent with the Board’s findings in its Institution Decision, since the Board found that TriVascular had initially demonstrated a reasonable expectation of success in demonstrating obviousness. TriVascular argues that the Board should not have changed its view of the patent’s validity without clearly explaining why it had done so. In fact, this misguided theme pervades TriVascular’s briefs. Contrary to TriVascular’s assertions, the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong. To conclude otherwise would collapse these two very different analyses into one, which we decline to do


TriVascular’s argument also fails to appreciate that there is a significant difference between a petitioner’s burden to establish a “reasonable likelihood of success” at institution, and actually proving invalidity by a preponderance of the evidence at trial. Compare 35 U.S.C. § 314(a) (standard for institution of inter partes review), with 35 U.S.C. § 316(e) (burden of proving invalidity during inter partes review). The Board’s findings in its Final Written Decision were thus not inconsistent with those in its Institution Decision; they were made under a qualitatively different standard.


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