In its Final Written Decision, the Board held that all challenged claims of the ‘070 patent were unpatentable. The challenged claims were claims 1-14, each directed to a surgical stapling device. Each of the claims was challenged as being unpatentable as being obvious under 35 U.S.C. § 103.
The Board first addressed claim construction, noting that claims in an unexpired patent are given their broadest reasonable construction in light of the specification. For the phrase “two prongs extend non-parallelly from the main portion,” Petitioner had argued that the Board’s initial construction should be modified because it was not supported by the specification. The Board disagreed; in doing so, it identified two different figures in the ‘070 patent that aligned with the Board’s interpretation. In construing the phrase “ formed staple length,” the Board found that the terms “height” and “length” were used to designate the same dimension throughout the specification. Neither party challenged any other construction that the Board had previously made. Thus, all constructions adopted by the Board in its Decision to Institute were retained.
Addressing the challenge to claims 1-14 based on alleged obviousness over references including Viola, Pruitt, and/or Green, the Board was not persuaded by Patent Owner’s reply to Petitioner’s contention that the challenged claims would have been obvious. On this point, the Board found that Patent Owner’s argument was contradictory compared to Patent Owner’s characterization of Viola in a proceeding before the European Patent Office, and that during oral hearing, Patent Owner’s own counsel had admitted that all recited elements of the challenged claims were found in the asserted prior art.
In addressing Patent Owner’s argument that there was no reason to combine the cited references, the Board noted that while Mr. Ortiz, expert for Patent Owner, had testified that alternate methods existed for retaining staples in a staple cartridge, he had not used the alternate methods himself. Instead, Mr. Ortiz testified that in his practice he had used non-parallel staples approximately 50 to 75 percent of the time. Additionally, Mr. Kelly, Patent Owner’s expert in a lawsuit in Germany, had testified a problem in the art was generally solved by using staple legs that are non-parallel. Moreover, Petitioner’s expert Mr. Bolanos testified that he routinely used staples with non-parallel legs in his practice, and testified as to the reasons one skilled in the art would have been motivated to do so. Because the Board found that the testimony of Patent Owner’s experts contradicted Patent Owner’s argument that non-parallel staples were not beneficial and would not be used by one skilled the art, the Board agreed with Petitioner and found that Patent Owner’s evidence was entitled to less weight than Petitioner’s evidence on this point.
Patent Owner also argued that the prior art taught away from using non-parallel staples. The Board disagreed. Among other things, the Board noted that while Viola and Pruitt did not teach the use of staples with non-parallel legs, these references did not teach away from the use of staples with non-parallel legs.
The Board further noted that it would have been obvious to try non-parallel staples when designing staple devices, such as those disclosed by Viola and Pruitt, because of the prevalence of non-parallel staples at that time, and the fact that only two choices for staple designs were available. As for Patent Owner’s argument that objective indicia of non-obviousness such as commercial success and satisfaction of long-felt but unresolved need evidence that the claimed subject matter would not have been obvious, the Board found that Patent Owner had not established the required nexus between the purported objective indicia and the claimed subject matter and that Patent Owner’s arguments did not overcome Petitioner’s showing of obviousness.
Covidien LP v. Ethicon Endo-Surgery, Inc., IPR2013-00209
Paper 29: Final Written Decision
Dated: June 9, 2014
Patent 8,317,070
Before: Sally C. Medley, Josiah C. Cocks, and Georgianna W. Braden
Written by: Braden