Ex Parte 7,959,615 B2 et al

Patent Trial and Appeal Board

Jan 28, 2019

95002092 (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.
95/002,092 08/20/2012 7,959,615 B2 99821.009US3 1228
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 2015-004506
Inter Partes Reexamination Control 95/002,092
United States Patent 7,959,615 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 June 14, 2011 to Stats et al. (“the ’615 patent”).
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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 1–10 of the ’615 patent as follows:
1. Reversed the Examiner’s decision rejecting claims 1–5 and 8
under § 102(b) as being anticipated by Reuter3 (Grounds A and C).
AngioDynamics v. C.R. Bard, 2016 WL 1166545 *2 (PTAB 2016).
2. Affirmed the Examiner’s decision rejecting claims 1–5 and 8–
10 under § 103(a) as being unpatentable over Reuter in view of “well-
known general knowledge” as shown in Sanfilippo4 and Bunodiere5
(Ground D). Id.
3. Reversed the Examiner’s decision rejecting claims 6 and 7
under Ground D as being as being unpatentable over Reuter in view of
“well-known general knowledge.” Id.
4. Declined to reach Ground E as applied to claims 1–5 and 8–10
in view of their rejection under Ground D. Id.

2 AngioDynamics, Inc. v. C.R. Bard, Inc., 2016 WL 1166545 (PTAB 2016)
(“Board’s Decision”). The Board also issued Decision on Request for
Rehearing with respect to this reexamination on February 21, 2017 (Appeal
2015-004506 (PTAB 2017)).
3 Reuter et al., EP 1 238 682 A2, published Sept. 11, 2002 (“Reuter”).
4 Sanfilippo II, US 5,919,160, issued July 6, 1999.
5 Bunodiere et al., US 2005/0075614 A1, published Apr. 7, 2005
(“Bunodiere”).
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5. Reversed the Examiner’s decision rejecting claims 6 and 7
under Ground E as being unpatentable over Reuter in view of
Reinicke6 and “the representative knowledge of the ability to
recognize an access port by its shape after implantation.” Id.

After issuance of the Board’s Decision on Request for Rehearing, the
Patent Owner appealed the Board’s decision to the Federal Circuit, and the
Requester cross-appealed as to claims 6 and 7, which the Board determined
to be patentable.

THE COURT’S REMAND
In its decision, the court rejected the Requester’s cross-appeal,
agreeing with the Board’s Decision as to claims 6 and 7. C.R. Bard v.
AngioDynamics, 2018 WL 4677441 **8–10. As to the Patent Owner’s
appeal, the court:
1. Affirmed the Board’s conclusion of obviousness as to claims 1–
5 and 10. Id. at **5, 7, 10.
2. Vacated the Board’s obviousness conclusions regarding claims
8 and 9, determining that the Board erred in its interpretation of the
claim language “at least one structural feature of the access port
identifying the access port as being power injectable,” and construing
this language to mean “that the claimed access port is power
injectable.” Id. at **5–7, 10. The court 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.

6 US 4,626,244, issued Dec. 2, 1986.
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ANALYSIS
As noted above, the court vacated the Board’s obviousness conclusion
regarding claims 8 and 9, disagreeing with the Board’s claim construction as
to the limitation “at least one structural feature of the access port identifying
the access port as being power injectable,” recited in independent claim 8.
The court interpreted this 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, that are applicable to claims 8 and 9 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
Reuter, or any of the other references relied upon in the proposed and adopted
rejections of claims 8 and 9, 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 modify the
Board’s Decision to reverse the Examiner’s rejections of claims 8 and 9 under
Grounds D and E.

DECISION
We modify the Board’s Decision to REVERSE the Examiner’s
rejections of claims 8 and 9 under Grounds D and E.

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

AFFIRMED-IN-PART

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