“The Board is certainly entitled to incorporate by reference analyses from other decisions, but that does not entitle an appellant to violate our rules when it argues before us.” – CAFC
The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today affirming the Patent Trial and Appeal Board’s (PTAB’s) finding that Medtronic failed to prove the challenged claims of Teleflex’s catheter patent unpatentable.
In several previous precedential decisions issued this year, the CAFC similarly upheld the PTAB’s determinations. In May, the court said that Medtronic failed to show the challenged claims of five catheter patents unpatentable because the primary prior art reference cited by Medtronic did not qualify as prior art under pre-America Invents Act (AIA) first-to-invent provisions. Judge Dyk dissented. And in June, the court found in two separate rulings issued the same day that Teleflex’s objective evidence supported a presumption of nexus, that Medtronic copied Teleflex’s product and that Teleflex’s substitute claims did not lack adequate written description.
The decision issued today concerned Medtronic’s appeals from two PTAB final written decisions on U.S. Patent RE46,116, which is directed to a method for using a guide extension catheter with a guide catheter. The PTAB ultimately rejected Medtronic’s arguments in both inter partes reviews (IPRs), and on appeal the CAFC And the parties agreed that many of the arguments briefed in the case were foreclosed by the previous CAFC decisions from May and June. The CAFC determined that “[t]he only issues potentially remaining relate to [asserted reference U.S. Patent 7,736,355] Itou’s status as prior art: (1) whether or not in vivo testing was required for actual reduction to practice and (2) whether or not the patentee exercised reasonably continuous diligence until constructive reduction to practice.”
Turning first to Medtronic’s diligence argument, the CAFC said that Medtronic had waived it by stating in its opening brief that “In addressing diligence, the Board simply adopted its earlier erroneous diligence analysis in IPR2020-00132. Appx61–62. Therefore, if this Court vacates the Board’s diligence holding in No. 21-2356, it should likewise vacate the Board’s decision here.” Since the court did not vacate the Board’s diligence holding in that case, “Medtronic’s condition precedent has therefore not been met,” wrote the court, constituting waiver of the argument. While Medtronic urged the court in its Response to decide the diligence issue nonetheless, since it did not address it in its previous decisions, the CAFC said “That is no argument. It is an improper incorporation by reference.” Furthermore, Medtronic admitted its argument amounted to an incorporation by reference, but said the court should still allow it “because the Board incorporated its analysis by reference.” The CAFC explained:
“That argument has no merit. The Board is certainly entitled to incorporate by reference analyses from other decisions, but that does not entitle an appellant to violate our rules when it argues before us.”
Additionally, Medtronic’s proposed incorporation by reference would require exceeding the word limit on briefs before the court by more than 4,000 words, despite its motion to extend the limit by 6,000 words, to 20,000, having already been denied. “In pursuing this appeal, Medtronic chose to make certain strategic decisions concerning what material to include in its opening brief, and it affirmatively chose not to include developed arguments on diligence,” wrote the court. “It cannot now undo those decisions.” The court therefore found that Itou is not prior art to the challenged claims and affirmed the PTAB’s holdings that Medtronic did not demonstrate by a preponderance of the evidence that the challenged claims of the ’116 patent are unpatentable.
Medtronic also argued that the PTAB erred in finding that there was an actual reduction to practice prior to the filing of Itou, but the CAFC said “a patent owner may antedate an asserted reference based on prior conception and either actual reduction to practice or constructive reduction to practice.” The Board found the patent owner had demonstrated both and the CAFC explained that it only needed to affirm on one or the other. Since the court affirmed on constructive reduction to practice, it did not need to reach the issue of actual reduction to practice “including the question of whether or not in vivo testing was required.”
The remaining arguments were dropped in light of the court’s previous decisions.
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