Ex Parte 7947022 et al

Patent Trial and Appeal Board

Jan 28, 2019

95002090 (P.T.A.B. Jan. 28, 2019)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,090 08/20/2012 7947022 99821.009US2 4355
109545 7590 01/28/2019
C.R. Bard, Inc.
c/o Greenblum & Bernstein, P.L.C.
1950 Roland Clarke Place
Reston, VA 20191
EXAMINER
WILLIAMS, CATHERINE SERKE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/28/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

ANGIODYNAMICS, INC.
Respondent, Requester

v.

Patent of C.R. BARD, INC.
Appellant, Patent Owner
________________

Appeal 2015-004554
Inter Partes Reexamination Control 95/002,090
United States Patent 7,947,022 B21
Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION AFTER REMAND

1 Issued May 24, 2011 to Amin et al. (“the ’022 patent”).
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Patent US 7,947,022 B2

STATEMENT OF THE CASE
The present Decision After Remand is necessitated by the Federal
Circuit’s recent decision, which Affirmed-In-Part, Vacated-In-Part,
Reversed-In-Part, and Remanded, an earlier Board’s Decision on Appeal2 in
the subject reexamination. C.R. Bard, Inc. v. AngioDynamics, Inc., ---
Fed.Appx. --- (Fed. Cir. 2018); 2018 WL 4677441.
The Board’s Decision decided the Patent Owner’s appeal of the
Examiner’s rejections of claims 1–20 of the ’022 patent as follows:
1. Affirmed the Examiner’s decision rejecting claims 1, 2, 6, 8,
and 9 under §102(b) as being anticipated by IsoMed3 (Grounds A and
C). Angiodynamics, Inc. v. C.R. Bard, Inc., 2016 WL 1239176 *2
(PTAB 2016).
2. Declined to reach Grounds D and E as applied to claims 1, 2, 6,
8, and 9. Id. Ground D proposed that claims 1–20 be rejected under
35 U.S.C. § 103(a) as being unpatentable over IsoMed. Id. Ground E
proposed that claims 1–20 be rejected under 35 U.S.C. § 103(a) as
being unpatentable over IsoMed, Jones, 4 and “well-known techniques
in the analogous prior art to convey to a practitioner various
information.” Id.
3. Affirmed the Examiner’s decision rejecting claims 3–5, 7, and
10–20 under Ground E as being unpatentable over IsoMed, Jones, and

2 AngioDynamics, Inc. v. C.R. Bard, Inc., 2016 WL 1239176 (PTAB 2016)
(“Board’s Decision”). The Board also issued Decision on Request for
Rehearing with respect to this reexamination. 2017 WL 766740 (PTAB
2017).
3 Document entitled Medtronic, Inc., IsoMed Constant-Flow Infusion
System (bearing a 2000 copyright notice and the legend “Revised Sept.
2000”).
4 Jones et al., US 6,287,293 B1, issued Sept. 11, 2001 (“Jones”).
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“well-known techniques in the analogous prior art to convey to a
practitioner various information.” Id.
4. Declined to reach Ground D as applied to claims 3–5, 7, and
10–20 in view of their rejection as unpatentable over IsoMed and
Jones (Ground E). Id.

After issuance of the Board’s Decision on Request for Rehearing, the
Patent Owner appealed the Board’s decision to the Federal Circuit.

THE COURT’S REMAND
In its decision, the court:
1. Vacated the Board’s finding that IsoMed qualifies as a printed
publication, and remanded for the Board to clarify its factual findings
with respect to IsoMed. 2018 WL 4677441 *5, *10.
2. Reversed the Board’s anticipation finding of claims 1, 2, 6, 8,
and 9, determining that the Board erred in its interpretation of the
claim language that the alphanumeric message “identif[ies] the access
port as a power-injectable port,” and construing this language to mean
“that the claimed access port is power injectable.” Id. at *1, *5, *10.
3. Vacated the Board’s obviousness conclusion regarding the
remaining reexamined claims of the ’022 patent, and remanded the
issue to the Board to “determine whether under a correct construction
requiring the ports to be power injectable, whether, these claims are
obvious in view of the prior art of record.” Id. at *10; see also id. at
*6.

As noted above, the court reversed the Board’s anticipation finding of
claims 1, 2, 6, 8, and 9, and vacated the Board’s obviousness conclusion
regarding the remaining reexamined claims of the ’022 patent, disagreeing
with the Board’s claim construction as to the limitation that the alphanumeric
message “identif[ies] the access port as a power-injectable port” recited in
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independent claims 1, 10, and claim 16. The court interpreted the limitation
to mean “that the claimed access port is power injectable.” Id. at *5; see also
id. at **6, 10.
The court’s claim interpretation is dispositive to the present Decision
After Remand. Each of the rejections proposed by the Requester, and adopted
by the Examiner, was premised on a claim interpretation that did not require
the access port to have “power injectable” capability. Indeed, while the
court’s decision is clear “that the claimed access port is power injectable,” our
review of the record does not indicate that the IsoMed, or any of the other
references relied upon in the proposed and adopted rejections, disclose a
power injectable access port. Prior art evidence as to a power injectable access
port is missing from the rejections at issue. Therefore, in view of the court’s
claim construction, we reverse the Examiner’s rejections of claims 1–20 under
Grounds A and C–E.
Finally, the issue noted in the court’s decision as to whether the
IsoMed publication is moot because, as noted above, there is no indication
that IsoMed, or any other prior art relied upon, discloses a power injectable
access port.

DECISION
We REVERSE the Examiner’s rejections of claims 1–20.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

REVERSED
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Patent Owner:

C.R. BARD, INC.
C/O GREENBAUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191

Third Party Requester:

CADWALADER, WICKERSHAM & TAFT LLP
ONE WORLD FINANCE CENTER
NEW YORK, NY 10281