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In the Final Written Decision Medtronic, Inc. et al. v. Lifeport Sciences LLC., IPR2014-00288 (Paper 34, April 21, 2015), the Patent Trial and Appeal PTAB (PTAB) reversed its position and determined that the claims of the Lifeport’s patent involved in the inter partes review (IPR) were not unpatentable.

Medtronic, the Petitioner, filed a Petition for inter partes review of U.S. Patent No. 7,147,662 (“the ‘662 patent”), which relates to a hook for attaching a stent within an artery. Referring to FIG. 1 of the ‘662 application reproduced above, the hook is a member 26 attached to a frame 22. The key feature at issue is the recitation that a hook has a “permanent” curve.  Although the specification does not specifically define what constitutes a “permanent” curve, the Examiner’s Statement of Reasons for Allowance refers to a “permanent” curve as being “a preset curve that … maintains a permanent curve regardless of what configuration the device is in.” Id., at page 7.

Lifeport, the Patent Owner, did not file a Preliminary Response, and the PTAB instituted inter partes review of claims 1-5, 7-13, 15, and 16 of the ‘662 patent as being unpatentable based on multiple grounds. Lifeport filed a Patent Owner Response. Both parties relied on experts’ declarations.

The PTAB and the parties agreed that the Examiner’s construction of “permanent curve” as “a preset curve that … maintains a permanent curve regardless of what configuration the device is in” is correct.  However, the parties disagreed as to whether, under this construction, “a permanent curve encompasses a resilient member which maintains some degree of curvature- even though the arc of the curve may change due to compressive forces – or whether it more narrowly demands a fixed arc that does not vary during use.” Id., at page 8. Medtronic, relying on the testimony of its expert, advocated that a “permanent curve” would include a resilient member.  Lifeport disagreed, with Lifeport’s expert testifying that a material having a shape memory, in which the curve itself changes but that resiliently returns to its shape, cannot meet this feature because it is the opposite of a “permanent” curve. Id., at page 9.

The PTAB agreed with Lifeport that a “permanent curve” must be fixed rather than “resiliently flexible,” relying on the testimony of Lifeport’s expert and the patent’s specification.  For example, the specification discloses that a “permanently deformed” hook may be compressed into alignment “without losing the present curve.” Id., at pages 10-11.

This inter partes review proceeding is a good example of a Patent Owner strategically waiving its right to submit a Preliminary Response. The PTAB instituted the review when presented with only the Petitioner’s arguments and evidence but reversed its position when the Patent Owner provided a more nuanced explanation of the invention.  As it stands, the Petitioner will be estopped from challenging the invalidity of the reviewed claims on the grounds that the Petitioner “reasonably could have raised during [the] inter partes review” under 35 U.S.C. § 315(e). If the Patent Owner had instead included the same arguments in a Preliminary Response, the review might not have been instituted, but estoppel would not have applied.