Blog Tag: Inter Partes Review
On November 9, 2018, Cook Medical LLC filed a petition with the Patent Trial and Appeal Board requesting inter partes review (IPR) of U.S. Patent No. 6,306,141, assigned to Medtronic Vascular, Inc. The ‘141 Patent is entitled “Medical Devices Incorporating SIM Alloy Elements.” The ‘141 Patent states that it relates to “a medical device containing a shape memory alloy element.”
The ‘141 patent discloses using stress and temperatures below body temperature to restrain a metal alloy. The alloy expands to its original shape after being released from its restraint and exposed to body temperature. In one example, the ‘141 Patent describes that the disclosed device enables doctors to treat damaged or diseased heart valves with a less invasive transcatheter heart valve procedure. Figures 3 and 4 of the ‘141 Patent, shown below, illustrate a “side elevation view of a partial section of a catheter” in stressed (Figure 3) and unstressed (Figure 4) configurations.
The petition seeks to review all claims of the ‘141 Patent. Cook Medical’s petition submits two grounds on which the claims of the ‘141 Patent should be found invalid due to obviousness. The status of the proceeding can be examined by searching for the patent on the Patent Trial and Appeal Board website.
This is not the first time that the ‘141 patent has been subject to a petition for inter partes review. On January 17, 2014, Edwards Lifesciences Corporation filed a petition with the Patent Trial and Appeal Board requesting inter partes review of the patent for review of all claims of the ‘141 Patent. According to a Medtronic press release, on May 20, 2014, Medtronic and Edwards reached a “global settlement agreement” to “dismiss all of the pending litigation matters and patent office actions between them.”
In May 2013, Lombard Medical filed a petition for inter partes review of Claims 1-10 and 18-22 of the ‘141 Patent. Lombard Medical’s products, according to its website, include the AORFIX™ endovascular stent graft. According to a Lombard press release, on October 17, 2013, Lombard was granted a non-exclusive license by Medtronic to the ‘141 Patent, and Lombard formally requested a withdrawal of its inter partes review petition with the USPTO.
The ‘141 Patent has also been previously litigated. The ’141 Patent, among others, was previously asserted by Medtronic against W.L. Gore & Associates, Inc. in 2006; Gore’s EXCLUDER® AAA, TAG, and VIABAHN SFA® endoprosthesis devices were at issue. The parties entered into a confidential settlement in 2009.
Medtronic also previously asserted the ’141 Patent, among others, against AGA Medical in 2007. AGA’s AMPLATZER® Septal Occluder, Duct Occluder, and Vascular Plug devices were at issue. The parties entered into a settlement in 2010 in which AGA received a non-exclusive license to patents including the ’141 Patent in exchange for $35 million. AGA Medical was subsequently purchased by St. Jude Medical in October 2010 for $1 billion.
Sportbrain Holdings LLC (“Sportbrain”) is a company that was previously engaged in the business of selling fitness trackers. Sportbrain recently sued eight smartwatch manufacturers for alleged infringement of its U.S. Patent No. 7,454,002 (“the ’002 patent”), which describes a method of capturing and analyzing personal data of a user and providing feedback to the user based on the analysis. FIGS. 1B and 3 of the ’002 patent are reproduced below. These defendants included Jawbone, Frédérique Constant, Apple, Michael Kors, HP, BLOCKS Wearables, Razer, and New Balance. The complaint in each case identified a smartwatch or fitness tracker (having an accelerometer, motion sensor, pedometer, calorie counter, and/or gyroscope) and its companion app as the accused product.
A day after Sportbrain filed its most recent lawsuit, the Patent Trial and Appeal Board (PTAB) granted a petition for inter partes review (IPR) of the ’002 patent. The IPR petition had been filed on July 22, 2016 by Unified Patents. According to its website, Unified Patents is a member-based organization seeking to deter non-practicing entity activity in specific technology areas. Unified Patents argued in its petition that the claims of the ’002 patent were obvious over four different combinations of prior art references.
In instituting the IPR proceeding, the PTAB concluded that the petitioner’s evidence established a reasonable likelihood that the combinations of prior art references would render all of the claims of the ’002 patent obvious.
The ’002 patent is now the subject of over 40 active cases brought by Sportbrain.
Boston Scientific Corporation (“Boston Scientific”) filed a petition with the Patent Trial and Appeal Board on April 10, 2015 requesting inter partes review of U.S. Patent No. 6,266,563 (“the ’563 Patent”). The petition states that the ’563 Patent is owned by the UAB Research Foundation. The petition has been assigned Case No. IPR2015-01038.
The ’563 Patent is entitled “Method and Apparatus for Treating Cardiac Arrhythmia,” and lists as inventors Bruce H. KenKnight, Raymond E. Ideker, Robert S. Booker, III, and Stephen J. Hahn. The ’563 Patent states that it “relates to methods and an implantable apparatus for treating cardiac arrhythmia, particularly ventricular fibrillation.” Figure 1 from the ’563 Patent is shown below.
The petition seeks review of all twenty of the ’563 Patent’s claims “as obvious under 35 U.S.C. § 103 based on U.S. Patent No. 5,181,511 (‘Nickolls’), U.S. Patent No. 5,433,729 (‘Adams’), and the knowledge of a person of ordinary skill in the art.”
The petition states that the ’563 Patent has been asserted by the Board of Trustees of the University of Alabama at Birmingham and the UAB Research Foundation against Boston Scientific and Cardiac Pacemakers, Inc. in a lawsuit filed on September 22, 2014 in the U.S. District Court for the Northern District of Alabama. The complaint alleges that Boston Scientific and Cardiac Pacemakers, Inc., a wholly owned subsidiary of Boston Scientific, infringe the ’563 Patent by making, using, offering to sell or selling cardiac resynchronization therapy defibrillators (“CRT-Ds”), “including but not limited to the Incepta, Enrgen, Cognis, and Livian CRT-Ds . . . .”
The petition also states that Boston Scientific previously filed a petition requesting inter partes review of the ’563 Patent, alleging that all twenty claims were invalid as anticipated under 35 U.S.C. § 102(b) by U.S. Patent No. 5,797,967 to KenKnight. The prior petition was filed on March 23, 2015, and was assigned Case No. IPR2015-00918.
The Patent Trial and Appeals Board (the “Board”) recently issued Final Written Decisions disposing of two inter partes reviews that NuVasive filed in mid-2013 regarding U.S. patent number 8,444,696 (the ’696 Patent). The ’696 Patent is entitled “Anatomic spinal implant having anatomic bearing surfaces” and, according to its abstract, “is directed to an interbody spinal implant having a structural configuration that provides for maintaining the normal anatomic relationship of two adjacent vertebrae of the spine.” According to the USPTO Assignment Database, the patent application that later became the ’696 patent was assigned on May 17, 2005 by its inventor to SDGI Holdings, Inc., then was assigned on April 28, 2006 by SDGI Holdings, Inc. to Warsaw Orthopedic, Inc.
In its recent Final Written Decision disposing of IPR2013-00395, the Board determined that NuVasive showed by a preponderance of the evidence that claims 1–6 of the ’696 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of three references, Michelson, Wagner, and Brantigan. In its recent Final Written Decision disposing of IPR2013-00396, the Board determined that NuVasive showed by a preponderance of the evidence that claims 7-12 of the ’696 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over a different combination of three references, including Steffee, Michelson, and Kim.
On August 17, 2012, Warsaw Orthopedic, Medtronic Sofamor Danek, Medtronic Puerto Rico, and Osteotech filed a complaint against NuVasive alleging infringement of U.S. patents numbers 8,021,430 and 5,676,146. In its two petitions for inter partes review, NuVasive stated that Warsaw Orthopedic asked the Court for permission to add the ’696 patent to the lawsuit. On July 24, 2013 Warsaw’s request was granted.
Tissue Transplant Technology Ltd. and Human Biologics of Texas Ltd. (“the Petitioners”) recently filed a petition with the Patent Trial and Appeal Board requesting inter partes review of U.S. Patent No. 8,597,687 (“the ’687 Patent”). The petition states that the ’687 Patent is owned by MiMedx Group, Inc. (“MiMedx”). According to the USPTO Assignment Database, the ’687 Patent was assigned to MiMedx by Surgical Biologics, LLC. on May 10, 2013.
The ’687 Patent is entitled “Methods For Determining The Orientation Of A Tissue Graft,” and the sole listed inventor is John Daniel. The ’687 Patent states that it “relates generally to tissue allografts and, in particular, to placental membrane tissue grafts (amnion and chorion) and methods of preparing, preserving, and medical uses for the same.” Figure 5 from the ’687 Patent is shown to the right.
The petition seeks review of all seven of the ’687 Patent’s claims. The petition discloses that the ’687 Patent has been asserted by MiMedx against the Petitioners in a lawsuit filed on May 16, 2014 in the U.S. District Court for the Western District of Texas. The first amended complaint, filed on June 26, 2014, alleges that the Petitioners infringe the ’687 Patent, as well as U.S. Pat. No. 8,709,494 by making, using, offering to sell or selling the SteriShield™ and/or Cygnus Solo™ tissue graft products.
On June 6, 2014, Wright Medical Technology, Inc. (“WMT”) filed first and second petitions with the Patent Trial and Appeal Board requesting inter partes review of both U.S. Patent No. 6,440,138 (“the ‘138 Patent”) to Reiley et al., and U.S. Patent No. 6,863,672 (“the ‘672 Patent”) to Reiley et al. According to the ‘672 Patent’s New Application Transmittal at page 9, the ‘672 Patent is a divisional of the ‘138 Patent.
According to the U.S. Patent and Trademark Office assignment database, the ‘138 and ‘672 Patents were previously assigned to Kyphon Inc., which was acquired by Medtronic in 2007 for $3.9 billion. The database also includes a recorded assignment, executed on April 25, 2013, from Medtronic, Inc., Kyphon SARL, and Warsaw Orthopedic, Inc. to Orthophoenix, LLC. Orthophoenix’s signatory was Erich Spangenberg (listed as the CEO). Spangenberg is also the owner and founder of IPNav, according to IPNav’s website. IPNav describes itself as a patent monetization firm.
The ‘138 Patent is entitled “Structures and Methods for Creating Cavities in Interior Body Regions.” According to the ‘138 Patent, it relates to tools that carry structures that are deployed inside bone and, when manipulated, cut cancellous bone to form a cavity. Figure 1 of the ‘138 Patent, described as a side view of a rotatable tool having a loop structure capable of forming a cavity in tissue, with the loop structure deployed beyond the associated catheter tube, is shown below left:
The ‘672 Patent is also entitled “Structures and Methods for Creating Cavities in Interior Body Regions.” According to the ‘672 Patent, it relates to tools that carry structures that are deployed inside bone and, when manipulated, cut cancellous bone to form a cavity. Figure 27 of the ‘672 Patent, described as a side view of a vertebra with the tool deployed to cut cancellous bone by moving the blade structure in a linear path to form a cavity, is shown below right:
The petition regarding the ‘138 Patent relies on a single prior art reference: U.S. Patent No. 5,015,255 to Kuslich, which the petition alleges was not before the Examiner during prosecution of the ‘138 patent. The petition seeks review of Claims 1-26 (all claims) of the ‘672 Patent and requests cancellation of each Claim. By contrast, the petition regarding the ‘672 Patent relies on two separate prior art references: U.S. Patent No. 5,439,464 to Shapiro and U.S. Patent No. 6,371,968 to Kogasaka et al. The petition alleges that neither prior art reference was before the Examiner during prosecution of the ‘672 Patent. The petition seeks review of Claims 1-12 (all claims) of the ‘138 Patent and requests cancellation of each Claim.
The petitions disclose that Orthophoenix has sued WMT in the U.S. District Court for the District of Delaware. Orthophoenix, LLC v. Wright Medical Tech., Inc., Civil Action No. 13-10007-LPS (D. Del.). Orthophoenix filed its complaint on June 5, 2013 alleging direct and indirect patent infringement of both the ‘138 and ‘672 Patents (the “Patents in Suit”) by WMT.
On April 25, 2014, Medtronic, Inc. and Medtronic Vascular, Inc. (“Medtronic”) filed a second petition (the ’695 Petition) with the Patent Trial and Appeal Board requesting inter partes review of U.S. Patent No. 5,593,417 (“the ’417 Patent”). Medtronic concurrently filed a motion requesting joinder of the ’695 Petition and Medtronic’s previously filed first petition requesting inter partes review of the ’417 Patent (the ’100 Petition).
The ’417 Patent is entitled “Intravascular Stent With Secure Mounting Means,” and lists a single inventor, Valentine J. Rhodes. The ’417 Patent states that it relates to “expandable grafts and methods of use for opening restrictions therein, e.g., revascularizing stenotic arteries.” Figures 1-3 from the ’417 Patent are shown below:
The ’695 Petition seeks review of claims 1, 2, 9, 10, and 13 of the ’417 Patent, the same claims challenged by the ’100 Petition. The ’695 Petition discloses that one or more claims of the ’417 Patent have been asserted against Medtronic by Endotach LLC (“Endotach”) in a lawsuit filed in the U.S. District Court for the Northern District of California. Endotach’s first amended complaint, filed on October 22, 2013, alleges that Acacia Patent Acquisition LLC assigned its rights in the ‘417 Patent to Endotach. The complaint further alleges that “at least the Endurant AAA Stent Graft and Endurant II AAA Stent Graft. . .” infringe “at least claims 1, 2, and 13 of the ’417 Patent. . . .” On April 24, 2014, the lawsuit was stayed by order of the court pending final resolution of the inter partes review proceedings.
According to the ’695 Petition, Endotach is also asserting the ’417 Patent against Cook Medical Inc. in Endotach LLC v. Cook Medical Inc., No. 1:13-cv-1135 (S.D. Ind.) and W.L. Gore & Associates, Inc. in Endotach LLC v. W.L. Gore & Associates, Inc., No. 3:12-cv-00308 (N.D. Fla.).
On October 30, 2013, Zimmer Holdings, Inc. and Zimmer, Inc. filed a petition with the Patent Trial and Appeal Board requesting inter partes review of U.S. Patent No. 7,837,736, assigned to Bonutti Skeletal Innovations, LLC.
The ‘736 Patent is entitled “Minimally Invasive Surgical Systems and Methods.” The ‘736 Patent states that it relates to a method “for performing a total knee arthroplasty.” Figure 90 from the ‘736 Patent, described as “a schematic illustration of a tibial component of a knee implant[,]” is shown below:
The petition seeks to review claims 15-28 and 31-36 of the ‘736 Patent. The petition discloses that Bonutti Skeletal has accused Zimmer of infringing the ‘736 Patent in a lawsuit filed in the U.S. District Court for the District of Delaware. Bonutti Skeletal filed an amended complaint in that lawsuit on January 15, 2013. In addition to the ‘736 Patent, the amended complaint also alleges infringement of U.S. Patents 6,702,821, 7,749,229, 7,806,896, 7,959,635, and 8,133,229.
On August 5, 2013, TriVascular, Inc. filed a petition with the Patent Trial and Appeal Board requesting inter partes review of U.S. Patent No. 6,007,575 owned by named inventor Dr. Shaun L.W. Samuels.
The ’575 Patent is entitled “Inflatable Intraluminal Stent and Method for Affixing Same Within the Human Body.” The ’575 Patent states that it relates to “[a]n inflatable intraluminal stent for attachment to the interior surface of a tubular structure within the human body” featuring “a cuff having an inflatable chamber and a friction-enhancing outer surface” that “engages the interior surface of the tubular structure without penetration when the inflatable cuff is in an inflated condition.” Figure 1 from the ’575 Patent is shown below:
The petition seeks review of all 24 of the ’575 Patent’s claims. The petition discloses that the ’575 Patent has been asserted by Dr. Samuels against TriVascular in a lawsuit filed in the U.S. District Court for the Northern District of California. The complaint, filed on May 17, 2013, alleges that TriVascular’s “Ovation Prime™ Abdominal Stent Graft System” infringes the ’575 Patent.
On June 27, 2013, NuVasive, Inc. filed two petitions with the Patent Trial and Appeal Board requesting inter partes review of Warsaw Orthopedic, Inc.’s U.S. Patent No. 8,444,696.
The ’696 Patent is entitled “Anatomic Spinal Implant Having Anatomic Bearing Surfaces.” The ’696 Patent relates to “an interbody spinal implant having a structural configuration that provides for maintaining the normal anatomic relationship of two adjacent vertebrae of the spine.” Figure 1 from the ’696 Patent is shown below:
The ‘696 Patent has 19 issued claims. The first petition (IPR2013-00395) seeks review of claims 1-6, and the second petition (IPR2013-00396) seeks review of claims 7-12. The petitions also identify a lawsuit between NuVasive and Warsaw Orthopedic that is currently pending in the Southern District of California, and state that Warsaw Orthopedic has asked the Court for permission to add the ’696 Patent to that lawsuit. Warsaw’s original complaint in that lawsuit, filed on August 17, 2012, alleges infringement by NuVasive of U.S. Patent Nos. 8,021,430 and 5,676,146.
Cardiocom files for Inter Partes Review of University of Rochester’s Patient Monitoring and Treatment Patent
The ‘985 patent is entitled “Methods and System for Monitoring and Treating a Patient.” The patent specification states that the patent relates to “a method and system for monitoring and treating a patient who has one or more diagnosed conditions and is located at a remote location from a treatment processing system.”
The ‘985 patent is the subject of a lawsuit filed in the U.S. District Court for the Eastern District of Texas by University of Rochester and purported licensee My Health, Inc. against Cardiocom. The complaint refers to Cardiocom’s use of allegedly infringing “sales of products incorporating the University’s technology[,]” including “a unique technology that assists healthcare providers in monitoring and treating patients.”
Respironics, Inc., a subsidiary of Koninklijke Philips N.V., filed a petition last Friday with the Patent Trial and Appeal Board requesting inter partes review of ZOLL Medical Corporation’s U.S. Patent No. 6,681,003 to Linder et. al. The petition identifies Koninklijke Philips as a real party-in-interest.
The ‘003 patent is entitled “Data Collection and System Management for Patient-Word Medical Devices.” The ‘003 patent relates to “a method and system of monitoring information received from a patient-word medical device.”
The petition seeks review of nine of the patent’s 35 issued claims. Eight of these nine claims identified in the petition have been asserted by ZOLL Medical against Respironics in a lawsuit filed in the U.S. District Court of Delaware. The amended complaint, filed on January 9, 2013, alleges that Respironics’s “patient medical monitoring and treatment systems and methods” including positive airway pressure devices, infringe the ‘003 patent.
Atrium Medical filed four petitions with the Patent Trial and Appeals Board for inter partes review of C.R. Bard’s U.S. Patent No. 7,785,334. The ‘334 patent, entitled “Implantable Prosthesis” issued on August 31, 2010. According to the ‘334 patent, the patent relates to an “implantable prosthesis for repairing an anatomical defect, such as a tissue or muscle wall hernia” and “includes a patch and/or plug having a body portion that is larger than a portion of the opening or weakness so that placement of the body portion against the defect will cover or extend across that portion of the opening or weakness.” Figure 1 from the ‘334 patent is shown below:
Two of the four petitions are currently publicly available, seeking review of Claims 24-49 and Claims 99-126. The exhibit titles can be seen by visiting the Board’s website, searching for the ‘334 patent, and clicking on the Case Number link.
According to Atrium’s website, Atrium’s ProLite™ and ProLite Ultra™ brand polypropylene surgical mesh products are commonly used for soft tissue and hernia repair and employ Atrium’s C-QUR™ Mesh technology, which utilizes a proprietary, pharmaceutical grade Omega 3 Bioabsorbable Oil Fatty Acid (O3FA) coated surgical mesh.
Heart Failure Technologies, LLC filed a petition yesterday with the Patent Trial and Appeals Board for inter partes review of CardioKinetix, Inc.’s U.S. Patent No. 7,582,051. The ‘051 patent, entitled “Peripheral Seal For a Ventricular Partitioning Device,” issued on September 1, 2009. According to the ‘051 patent, the patent “relates generally to the field of treating heart disease, particularly congestive heart failure, and more specifically, to a device and method for partitioning a patient’s heart chamber and a system for delivering the treatment device.” Figure 11E from the ‘051 patent is shown below:
Although the petition is not yet publicly available, the titles of the exhibits to the petition reference U.S. Patent Nos. 6,152,144, 7,485,088, and 7,717,955, and U.S. Patent Publication Nos. 2003/0050685, 2002/0111647, and 2005/0137688. The exhibit titles can be seen by visiting the Board’s website, searching for the ‘051 patent, and clicking on the Case Number link.