In an IPR proceeding, the PTAB made a final finding that the petitioner Trivascular had failed to meet its burden of proving the claims at issue (directed to inflatable stents) were invalid as being obvious. Trivascular appealed on two grounds: (1) that the PTAB had erred in construing the term “circumferential ridges” to exclude discontinuous points; and (2) that the PTAB had erred in its final decision in finding the claims not invalid, especially in light of its institution of the IPR on the ground of obviousness.
On the claim construction issue, the court reiterated the broadest reasonable interpretation as follows: “words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history.” It is unreasonable to construe individual words of a claim without considering the context in the written description and therefore it is the use of the words in that context that accurately reflects the ordinary and customary meaning of claim terms. Here, the ordinary meaning of “ridges” does not include “discontinuous points, and, regardless, the term “discontinuous” does not inform the meaning of the term “circumferential ridge.” The court held that the PTAB’s reliance on the dictionary definition when considered in the context of the written description and plain language of the claims was proper. The court further rejected Trivascular’s argument that the prosecution history should alter the meaning of “circumferential ridges,” because Trivascular held failed to prove a clear and unmistakable disclaimer, because the record showed that the examiner did not rely on the applicant’s statements for patentability.
On the obviousness issue, the court held that the alleged references could be combined to arrive at the invention, because such a substitution would destroy the basic objective of one of the references. Further, the PTAB is not bound at all by any findings in its decision to institute the IPR, because it lacks the full record at that time and it decides the institution question under a different standard (reasonable likelihood of success).
Trivascular, Inc. v. Samuels, Case No. 2015-1631 (February 5, 2016); Opinion by: O’Malley, joined by Moore and Wallach; Appealed From: Patent Trial and Appeal Board. Read the full opinion here.