Ex Parte 6,475, 195 B1 et al

Patent Trial and Appeal Board

Mar 28, 2014

95001693 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,693 07/20/2011 6,475, 195 B1 1737.427REX0 6104
23370 7590 03/31/2014
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/31/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Inter Partes Reexamination

JAN K. VODA
Patent Owner, Appellant

v.

MEDTRONIC, INC.
Third Party Requester, Cross-Appellant
____________________

Appeal 2013-010569
Reexamination Control 95/001,693
US Patent No. 6,475,195 B11
Technology Center 3900
____________________

Before: JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 US Patent 6,475,195 B1 (hereinafter "the '195 patent") was issued to Jan
Voda on November 5, 2002.
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STATEMENT OF THE CASE
Patent Owner/Appellant appeals under 35 U.S.C. §§ 134(b) and 315
from the Examiner’s rejection of claims 1-6. Third Party Requester/Cross-
Appellant appeals the non-adoption of the proposed rejection of claims 1-6
as anticipated by Rizzo. We have jurisdiction under 35 U.S.C. §§ 134(b)
and 315. Oral arguments were heard on January 8, 2013.
The '195 patent was also subject to an infringement action, which is
said to be completed. Voda v. Cordis Corp., Case No. 03-1512-L, W.D.
Okla., 506 F.Supp.2d 868 (W.D. Okla. 2007), aff'd 536 F.3d 1311 (Fed. Cir.
2008).
We AFFIRM.

THE INVENTION
Appellant’s invention is directed to a "catheter having an improved
distal end portion for more precise location in the particular artery of the
cardiovascular system." The '195 patent col. 1, ll. 18-20. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An assembly for guiding the path of a therapeutic
catheter, comprising:
an elongate tubular member including a proximal shaft
portion, a profiled portion, and a substantially straight tip
portion;
the profiled portion comprising, in order from the
proximal shaft portion to the tip portion, a first bend, a first
substantially straight leg, a second bend, a second substantially
straight leg, and a third bend;
the first bend, the first substantially straight leg, the
second bend, the second substantially straight leg, and the third
bend being disposed within a chamber of an aorta;
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a distal end of the tip portion being disposed within an
ostium defined by the aorta;
the first substantially straight leg seating against a wall of
the aorta opposite the ostium of the coronary artery; and
the elongate tubular member defining a lumen extending
from a distal end of the elongate tubular member to a proximal
end of the elongate tubular member, wherein the lumen is
constructed and arranged to receive the therapeutic catheter.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sylvanowicz
Enger
US 5,267,982
US 5,980,486
Dec. 7, 1993
Nov. 9, 1999

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 1-6 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Enger. RAN 7.
2. Claims 1-6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Sylvanowicz. Id.
ANALYSIS
The Examiner rejected claims 1-6 as anticipated by each of Enger and
Sylvanowicz as noted above. Both of the adopted rejections rely upon a
claim construction employed by the Examiner and contested by the Patent
Owner, who asserts that "[t]he Examiner erred in finding that 'there is no
language in the claim that would lead one to believe that the claimed
profiled portion has the specific shape in a relaxed condition outside the
body.'" PO App. Br. 7 (citing RAN 14). Appellant further asserts that the
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claims "are the primary support for the proper construction and is further
confirmed by the specification." Id. According to the Patent Owner, the
claims each have two components; "[t]he first is a recitation of the physical
features of the catheter before insertion into the patient's body and the
second is a recitation of how the features of the catheter interact once
inserted in to the patient's body with the relevant portions of the anatomy."
Id.
According to the Patent Owner, the first two subparagraphs of each of
claims 1, 2, and 4 "do not mention . . . the tubular member being located
within the aorta." PO App. Br. 8. Patent Owner makes similar arguments
with respect to claims 3, 5, and 6. See PO App. Br. 12-13. Patent Owner
then argues that "if the patentee had intended the description of the shape of
the tubular member to be limited to its shape in the patient's body, it would
have specifically said so." PO App. Br. 8. The Patent Owner further argues
that these first two subparagraphs should be juxtaposed with the third
through fifth subparagraphs, which discuss elements "and specify that those
requisite geometric structures must engage the anatomy in the recited
fashion." Id.
A look at the Specification of the '195 patent shows that the Patent
Owner often was explicit as to the location of the catheter when describing
the shape. For example, the '195 patent states that "[t]he guide catheter of
the present invention in a relaxed state prior to insertion within the
cardiovascular has a configuration . . . ." Col. 8, ll. 23-25 (emphasis added).
Here, the Patent Owner makes clear that the shape being described is when
the guide catheter is outside the body. In contrast, the claims do not provide
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the same, or any, level of detail as to location in reciting the catheter shape.
In view thereof, we find it unreasonable, in the absence of claim language
specifying a location, to interpret the claims as somehow being limited to a
specific location at which the catheter takes on its recited configuration,
namely, as Patent Owner argues, when outside of the body. Also, we find
this bifurcated claim mapping to be an attempt to read language from the
Specification into the claims that simply does not appear in the claims as
written. The actual language is broad enough to cover the shape either
inside or outside of the body, or possibly both.
Patent Owner also argues that the term "profiled portion" clearly
means a "pre-configured" shape outside of the body and that we should
construe "profiled portion" such that the catheter has the recited bends and
legs when outside of the body. See PO App. Br. 10-12. The only time the
term "profiled" appears in the '195 patent is in the claims. There is no
guidance in the Specification to explain what "profiled" refers to and
whether it has any specific meaning regarding whether a shape exists either
inside or outside of the body.
Again, as detailed by Patent Owner in attempting to support this
argument, the language used in the Specification is clear when describing
whether the catheter is inside or outside of the body. App. Br. 11-12 ("[t]he
guide catheter of the present invention in a relaxed state prior to insertion,"
col. 8, ll. 23-26; "(when in the aortic complex) result directly from the
configuration of the guide catheters when in a relaxed state prior to insertion
in the cardiovascular system," col. 9, ll. 11-15; "the basic configuration of
the guide catheter (in its relaxed state)," col. 9, ll. 54-60). According to the
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language used in the Specification to describe the invention, it is clear that
the patentee understood how to inform one of skill in the art, in describing
the shape of the catheter, as to the point of reference or location of the
catheter, whether outside or inside the body. That the patentee chose to be
less specific in the claims and chose a term that appears nowhere else in the
Specification, seems to suggest that the claims have a broader meaning,
under the broadest reasonable interpretation standard applied during
reexamination, than that presently argued.
Finally, as pointed out by the Third Party Requester, in explaining its
infringement theory regarding an accused product, Patent Owner used a
marked up copy of the accused product showing the catheter in place in the
circulatory system, that is, inside the body. Req. Resp. Br. 9-10. The device
in question, however, when outside of the body merely has a continuous
curve and lacks the claimed shape. Id. While not dispositive, in
ascertaining the broadest reasonable interpretation of the claims, we find it
notable that, when alleging infringement, even the Patent Owner refers only
to the shape in the body and ignores the fact that the particular accused
device lacks the claimed shape outside of the body. Furthermore, the fact
that Third Party Requester's device is said to achieve the claimed profile in
the body while not having the shape outside the body seems to contradict
Patent Owner's repeated assertion that accomplishing this shape in the body
practically requires the catheter to have the claimed shape outside the body.
Accordingly, we conclude that the language at issue in each of claims
1-6 is sufficiently broad to cover a shape of a catheter either inside or
outside of the body. Patent Owner's arguments essentially rely on
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acceptance of the narrow construction of the claimed shape being "pre-
configured" outside of the body and Patent Owner does not argue that either
of Enger or Sylvanowicz fails to teach the claimed catheter configuration
inside the body as asserted by both the Examiner and the Third Party
Requester. "The Examiner has erroneously and unjustifiably expanded the
construction of the claims by only focusing on the shape of the catheter in
vivo to encompass prior art [that] has a continuous curve but does not have
the bends and straight portions required by the claims." PO App. Br. 14.
Because we disagree that focus on the shape in vivo only is erroneous and it
is clear that both Enger and Sylvanowicz teach the claimed shape in vivo, we
sustain the Examiner's rejections of claims 1-6 as anticipated by each of
Sylvanowicz and Enger.
Because the affirmed Examiner's rejections constitute an affirmance
of all of the claims, we will not reach the Third Party Requester's contention
that the Examiner should have also adopted the proposed rejection of claims
1-6 as anticipated by Rizzo.2 Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed.
Cir. 2009).

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1-6.

2 Thomas F. Rizzo et al, "Use of the Arani Guiding Catheter with a Twist,"
Catheterization and Cardiovascular Diagnosis 20:257-260 (1990)
(hereinafter "Rizzo").

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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

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For PATENT OWNER:

KILPATRICK TOWNSEND & STOCKTON LLP
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309

For PETITIONER:

MEDTRONIC CARDIOVASCULAR
c/o IP Legal Department
3576 Unocal Place
Santa Rosa, CA 95403