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In Trivascular, Inc. v. Shaun L.W. Samuels (IPR2013-00493, Paper No. 45, December 3, 2014), the PTAB held that Trivascular (Petitioner)  had not proved that any of the instituted claims in the inter parties review (IPR) of US Patent 6,007,575 are unpatentable.  It is interesting to note that while the Patent Owner, Shaun L.W. Samuels , submitted two expert declarations, the Petitioner, Trivascular, did not submit an expert declaration.

The ‘575 Patent is directed to an inflatable intraluminal stent. A relevant portion of claim 1 is reproduced below:

An inflatable intraluminal stent…comprising: a) an inflatable and deflatable cuff ofgenerally hollow cylindrical continuation having a collapsible lumen, an inner surface,an inlet, an outlet and a friction enhancing outer surface, said friction-enhancingsurface featuring inflatable protrusion(s) including at leastone circumferential ridge disposed about the inflatable cuff….

The Petitioner requested inter parties review of claims 1-24 of the ‘575 Patent based on eight grounds and  numerous prior art references (see IPR2013-00493, Paper No. 1). However, PTAB instituted trial for only two grounds: claims 1, 2, 6-15, and 18-24 over Samuels and Todd and claims 1, 4-6, 9-11, 13, 14, 16, 17, and 19-21 as obvious over Lazarus and Todd (Paper No. 10).

The central issue in the decision whether to institute the IPR was the construction of the claim term “circumferential ridge disposed about the inflatable cuff and whether Todd discloses this feature (Paper No. 45, page 7-10). “ (Paper No. 10, pages 8-9 and 22-25). The Petitioner argued that this term should be construed as “an elevated part of the outer surface disposed about the inflatable cuff,” while the Patent Owner argued that this proposed construction ignored the plan meaning “circumferential” as set forth in the specification (Id. at 8-9).  The PTAB rejected the Petitioner’s proposed construction of this term (as well as the Patent Owner’s proposed construction) and instead construed the term as “a raised strip disposed circumferentially about an outer surface of the inflatable cuff.” (Id.  See also circumferential ridges shown in FIG. 1 of the ‘575 Patent above.) As a result of this construction, the PTAB instituted trial for only the two grounds.

The central issues in the instituted petition were the construction of the term “inflatable protrusion(s)”  (a term that Petitioner did not propose a construction for in its Petition) and whether Todd discloses this feature (Paper No. 45, page 7-10).

The Patent Owner, supported by their expert declarations, contended that “inflatable protrusion(s)” are protrusions that contain fluid and are themselves inflatable (Id.at 2 and 7) The Petitioner argued, without the support of a declaration, that the “inflatable protrusion(s) can be ‘solid’ structures such as barbs, or in the case of some of the prior art examples, solid circumferential ridges (Id. at 7). The PTAB rejected the Petitioner’s assertion and held that “applying the standard of broadest reasonable interpretation consistent with the Specification, we determine that “inflatable protrusions” are protrusions that are themselves inflatable, i.e., expandable by being filled with fluid.” (Id. at 7-10).

The Petitioner had relied on a single sentence of Todd (i.e., “When inflated, the spiral ridge 48 contacts and tightly grips the walls of a body passageway in which it is inserted.”) to teach  that the ridge is an “inflatable protrusion(s).” (Id. at 15).  Read in a vacuum, this disclosure of Todd may imply that the ridges 48 are inflatable; however, the PTAB rejected the Petitioner’s assertion, and noted that the Petitioner “has not provided a declaration, or any other evidence, to establish that a person of ordinary skill in the art would understand Todd to disclose protuberances that are hollow, and themselves inflatable.” (Id.). Further, the PTAB looked to the remainder of Todd and noted that “Other than that isolated statement, there is no suggestion, indication, or hint in Todd that any of the disclosed protuberances is hollow such that it can be filled with fluid and inflated.” (Id. at 15-17). Accordingly, the PTAB held, citing several times to the Patent Owner’s declaration(s), that the Petitioner had not proved that any of the instituted claims are unpatentable (seeId at 15-20).

In the decision, the PTAB seems to suggest that a declaration would have helped the Petitioner. Given the importance of supporting factual declarations in IPR proceedings and in view of the small number of patents that have escaped an IPR proceeding unscathed, one has to wonder if the PTAB might have reached a different conclusion if the Petitioner had provided a properly supported factual declaration.

Moreover, a Petitioner is better off not obtaining institution of an IPR then gaining institution only to obtain a negative Final Written Decision.   The Patent Owner could not rely on declaratory evidence in its Preliminary Response before institution of the IPR.  But once the Patent Owner presented expert testimony, the PTAB ultimately found that the claims were not met by the asserted references