Denying Institution Where Claim Terminology is Construed as Defined in the Specification IPR2015-00675


Takeaway: The Board will construe claim terminology consistent with the definition of such terminology as provided in the specification.

In its Decision, the Board denied Petitioner’s request for an inter partes review as to each of challenged claims 1-6, 8, and 9 of the ‘530 patent. Thus, a trial was not instituted.

The ‘530 patent relates to a so-called “intelligent camera head” in a video imaging system which permits “interchangeable use of a variety of intelligent camera heads with a single camera control unit, and allows the utilization of new camera heads with new functions as they become available without having to replace the existing CCU.” Petitioner challenged claims 1-6, 8, and 9 of the ‘530 patent as being unpatentable due to obviousness under 35 U.S.C. § 103 in view of the following combinations of references: (1) Eto and Okada (claims 1-6); (2) Eto, Okada, and Adler (claims 8 and 9); (3) Eto, Okada, and TI-LVDS (claims 8 and 9); (4) Eto, Okada, and King (claims 1-6); (5) Nakamura and Okada (claims 1-6); (6) Nakamura, Okada, and Adler (claims 8 and 9); and (7) Nakamura, Okada, and TI-LVDS.

The Board determined that the preamble of claim 1, which recites a “video imaging system,” is non-limiting. Also, the Board construed the recited term “camera head” to mean “an endoscopic video camera, which is a video camera that includes or is adapted to be connected to an endoscope.” Petitioner had argued that the recited “camera head” was not limited to an endoscopic video camera, but the Board ultimately agreed with Patent Owner that the recited “camera head” was limited in this respect because the specification had defined “camera head” as an endoscopic video camera.

Relying on these constructions, the Board proceeded to conclude that Petitioner had not established a reasonable likelihood of prevailing in showing that the challenged claims are unpatentable as having been obvious over the various proposed combinations of references. Among the various positions that it relied on, the Board noted that while certain primary references taught a camera, these references did not teach the recited “camera head” which the Board had construed to mean “an endoscopic video camera.” Moreover, the Board found that Petitioner had not provided sufficient rationale as to why it would have been obvious to combine the applied references in the manner proposed. Thus, the Board “[was] not persuaded that Petitioner had demonstrated a reasonable likelihood that it would prevail on any of the challenges to patentability of the ‘530 patent set forth in the Petition.”

Stryker Corporation v. Karl Storz Endoscopy-America, Inc., IPR2015-00675
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: August 3, 2015
Patent: 7,821,530 B2
Before: Bryan F. Moore, Barry L. Grossman, and Michelle N. Wormmeester
Written by: Wormmeester
Related Proceedings: Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., Case No. 3:14-cv-00876-RS (N.D. Cal., Feb. 26, 2014); the parties also identified seven other pending requests for inter partes review involving the ’530 patent or a related patent