Takeaway: A request for rehearing will be successful when the Board misplaces a decimal point, and that distinction affects a material finding in the decision.

In its Decision, the Board granted Petitioner’s request for rehearing of the denial of institution as to claims 1-20 of the ’563 Patent, and instituted inter partes review.

The Board began by noting that the panel reviews the decision for abuse of discretion, which occurs when a decision was based on an erroneous conclusion of law or clearly erroneous factual finding, or a clear error of judgment. In the Decision, the Board concluded that the ’563 Patent was entitled to benefit from the filing date of the ’261 Application, and therefore that KenKnight ’967 is not prior art to the ’563 Patent.  In making that determination, the Board examined the disclosure of the ’261 Application and determined that the implantable cardiac defibrillation device described therein was configured to deliver the type of antitachycardia pacing later claimed in the ’563 Patent.  However, Petitioner noted, and Patent Owner agrees, that the Decision misplaced the decimal point in stating the energy identified by Petitioner’s declarant as the energy of a typical pacing pulse.  In view of this corrected value, the Board re-analyzed the remaining issues.

The Board then turned to claim construction, and addressed the meaning of “antitachycardia pacing” and “ventricles.” The Board interpreted the claims according to the broadest reasonable construction in light of the specification.  Regarding “antitachycardia pacing,” the parties set forth similar constructions, but differed in the energy in Joules required.  The Board construed the term to mean “pulses of electrical energy that stimulate the heart when in a state of tachycardia with the intent to terminate the arrhythmia,” and credited the testimony of Petitioner’s expert as to how much energy is required.  Regarding “ventricles,” Patent Owner argued that under the principle of claim differentiation, “ventricles” in dependent claims 2, 8, and 15 refers to both the left and right ventricle.  However, the Board found that Patent Owner’s argument depended upon an interpretation of claim 1 that was inconsistent with the language of the claim.  The Board then determined that it would not construe “ventricles” at this time.

Next, the Board reviewed the priority date of the ’563 Patent, and found that the auxiliary pulse of the ’261 application is greater than the value of a typical pacing pulse. The Board was also not persuaded by the remaining arguments by Patent Owner supporting the claim that the priority date of the ’563 Patent should relate back to the ’261 Application.  However, the Board recognized that Patent Owner did not have an opportunity to introduce testimonial evidence regarding the disclosure in the ’261 Application.  The Board therefore found that at this stage of the proceeding, Petitioner had shown a reasonable likelihood that the claims of the ’563 Patent cannot benefit from the priority of the ’261 Application.

The Board then reviewed whether the challenged claims are anticipated by KenKnight ’967. The Board reviewed Petitioner’s arguments and found that they supported a finding that there is a reasonable likelihood that KenKnight ’967 would anticipate the challenged claims.  The Board further stated that Patent Owner’s arguments were based on its proposed construction of “ventricles,” and noted that should the Board adopt Patent Owner’s construction, Petitioner’s requirement of proof will be greater.

Boston Scientific Corporation v. UAB Research Foundation, IPR2015-00918

Paper 14: Decision on Petitioner’s Request for Rehearing

Dated: March 7, 2016

Patent 6,266,563 B1

Before: Phillip J. Kauffman, Benjamin D.M. Wood, James A. Worth

Written by: Worth