Precedential Federal Circuit Opinions
1. MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. [OPINION] (21-2359, 21-2362, 21-2366, Moore, Lourie, and Dyk)
Moore, Chief J. The Court affirmed a PTAB decision (1) finding the at-issue claims were not unpatentable as obvious and (2) granting the issuance of substitute claims. On appeal, appellant first asserted “the Board legally erred by focusing on the detrimental effects of [appellant]’s modifications to” one of a prior art reference’s “intended purposes . . . to the neglect of [that reference]’s other purpose.” The Court held the prior art’s “‘entire premise’ was to use [certain technology] and that removing [part of that technology] would ‘render [the prior art] completely inoperable for its stated purpose[.]” The Court explained “the Board found that removing [one of the reference]’s [features] would undermine a goal it shares with the challenged claims—safely advancing interventional devices to treat cardiac lesions.” Second, “[d]uring the inter partes review proceedings” appellee “filed a contingent motion to amend claims of the patent proposing certain substitute claims.” Appellant argued those “[s]ubstitute [c]laims lacked adequate written description in the original application to which the [at-issue] patent claims priority.” The Board “determined the Substitute Claims had adequate written description support and would not have been obvious[.]” On appeal, the Court affirmed the Board’s “granting issuance of the [s]ubstitute [c]laims.”
WilmerHale represented the appellant in this case.
2. MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. [OPINION] (21-2357, 21-2360, 21-2364, Moore, Lourie, and Dyk)
Moore, Chief J. The Court affirmed a PTAB decision finding (1) that appellant “failed to establish the unpatentability of various claims”; and (2) that the PTAB correctly granted appellee’s motion to amend to substitute certain independent claims. On appeal, appellant argued that “the Board erred by finding nexus based on ‘three specific features’” of the products embodying claims of the patents-in-suit “that were collectively disclosed in a single prior art reference.” The Court held that “the Board did not err in finding a nexus[.]” Second, the Court explained that appellant “raised identical written description arguments” regarding the issue of substitute claims to those made in Medtronic, Inc. v. Teleflex Innovations S.à.r.l., Nos. 21-2359, 21-2362, 21-2366 (Fed. Cir. June 5, 2023). The Court explained it “affirmed the Board’s written description finding in that appeal, which resolves this issue.”
WilmerHale represented the appellant in this case.
3. YITA LLC v. MACNEIL IP LLC [OPINION] (21-1373, Taranto, Chen, and Stoll)
Taranto, J. The Court reversed in part and affirmed in part two consolidated appeals from the PTAB. First, in IPR 2020-01139, the Board rejected the obviousness challenge “despite determining that a relevant artisan would have been motivated with a reasonable expectation of success to combine the teachings of [the references] to arrive at the claimed inventions—solely because it found” secondary consideration evidence “compelling.” The Court reversed stating “although a relevant artisan would have been motivated to combine, and had a reasonable expectation of success in combining, the teachings of the asserted prior art references to arrive at each challenged claim” the “evidence of secondary considerations was indicative of nonobviousness . . . [and] objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was ‘known in the prior art.’” Second, the Court affirmed the PTAB’s decision in IPR 2020-01142 upholding the Board’s decision that the claims were unpatentable as obvious. Appellant asserted that “the Board abused its discretion by declin[ing] to consider [its] argument” that was “presented too late” in a footnote in appellant’s reply brief. The Court explained that because the appellant was the “master of its complaint” and “could have ‘present[ed] [its reply] argument in its petition[] but chose not to” and “the patent owner’s response did not justify the new argument in reply” there was “no abuse of discretion in the Board’s decision not to consider the new argument.”
