IP Law Daily Patent examiner erred in finding MedTronic’s annuloplasty ring patent invalid as anticipated
Friday, May 6, 2016

Patent examiner erred in finding MedTronic’s annuloplasty ring patent invalid as anticipated

By Jody Coultas, J.D.

The Patent Trial and Appeal Board has reversed a patent examiner’s rejection of claims of MedTronic, Inc.’s patent claims related to an annuloplasty ring device and method (Edwards LifeSciences Corporation v. MedTronic, Inc., May 5, 2016, Song, D.). MedTronic’s patent claims were not anticipated by prior art references, as determined by the examiner.

U.S. Patent No. 7,691,143 B2 (the ‘143 patent) is directed to an annuloplasty ring holder and a method for releasing an annuloplasty ring. MedTronic argued on appeal that the patent examiner erred in interpreting the claim terms “fully releasing” and “opposite,” and erred in rejecting claims 35 and 36 as anticipated.

Claim interpretation. The court found that the issue of claim construction was not dispositive, but revised the examiner’s claim construction to make it clearer. The examiner construed the limitation “fully releasing” as meaning “completely or entirely setting free or disassociated.” MedTronic disagreed that the limitation included “disassociated.” The Board noted no significant difference between the constructions submitted by MedTronic and the examiner, but found that the examiner’s construction was confusing because it used a term explicitly recited in a subsequent step in the claims. Therefore, the Board construed “fully releasing” to mean completely or entirely stop holding.

The examiner construed the term “opposite” as any direction other than the upper surface. MedTronic argued that this interpretation was unreasonably broad. The Board agreed, finding no reasonable basis to read the term to mean “any direction other than the upper surface.” A person of ordinary skill in the art would understand that the ordinary meaning of the term “opposite” is applicable so that the annuloplasty ring receiving surface must be positioned across, and at the other end/side of the spokes’ upper surface.

Anticipation. The examiner erred in finding that claims 35 and 36 of the ‘143 patent were anticipated by two prior art references. The examiner found that a person of ordinary skill in the art “would have understood that the single suture provides the removable attachment of the ring to the receiving surface.” The Examiner held that U.S. Patent No. 5,350,420 (Cosgrove) anticipated claim 35 because it “severs a single suture 70 to fully release the annuloplasty ring [] and then the annuloplasty ring 10 is disassociated from the annuloplasty ring holder 18.” Based on the construction of the term “opposite,” the examiner found that the spokes of the device of Cosgrove have an upper surface and an annuloplasty ring receiving surface opposite thereto. However, the ‘143 patent specifically departs and explicitly disparaged the type of holder disclosed in Cosgrove. Construing a claim to encompass a device explicitly disparaged and distinguished by the patent is unreasonable. Also, the Board noted its disagreement with the examiner’s construction of the term “opposite.” The groove of Cosgrove did not face “opposite the upper surface” as required by claim 35.

U.S. Patent No. 6,319,280 B1 (Schoon) did not anticipate claims 35 and 36 of the ‘143 patent, according to the Board. Even after suture 58 is cut, prosthetic ring 50 would likely not be fully released from the annuloplasty ring receiving surface as required by claim 35. The examiner’s finding to the contrary was speculative. Also, the Board disagreed with the examiner’s construction of the term “opposite.” MedTronic persuasively argued that “Schoon teaches an annuloplasty ring mounted about a circumferential groove and against circumferential flanges of the holder. This is the type of holder from which the ’143 specifically departs and explicitly disparages.”

The case is Appeal No. 2015-007911.

Attorneys: (Kilpatrick Townsend & Stockton LLP) for Edwards LifeSciences Corporation. MedTronic Vascular, Inc. IP Legal Department for MedTronic, Inc.

Companies: Edwards LifeSciences Corporation; MedTronic, Inc.

MainStory: TopStory Patent USPTO

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