Obviousness – TRIVASCULAR, INC. v. SAMUELS

In 2013, Dr. Samuels filed a patent infringement action against TriVascular alleging infringement of patent ‘575, which claims inventions in the field of intraluminal stent technology. TriVasucular filed a petition for inter partes review (“IPR”) for obviousness pursuant to 35 U.S.C. § 103

In conjunction with the argument that appellee’s patent was obvious, TriVascular argues that the Board erred in the claim construction requiring the term “circumferential ridges” to mean a “raised strip disposed circumferentially about the outer surface of the inflatable cuff”. The court looks to the broadest reasonable interpretation here, which states the words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history. This rule however, does not give the Board the license to disregard the full claim language and written description when looking at words in a claim. Such disregard would lead to an unreasonable interpretation.

An interpretation is found to be reasonable when “the use of the words in the context of the written description and customarily by those of skill in the relevant art that accurately reflects both the ‘ordinary’ and ‘customary’ meaning of the terms in the claims”. Here, the Board used the definition of ‘ridge’ from a general purpose dictionary which considered in the context of the written description and plain language of the claims, was found to be proper by the court.

TriVascular then argued Appellee’s Patent to be invalid for obviousness. A patent may be found invalid as obvious if “there are a finite number of identified, predictable solutions, and a person of ordinary skill has good reason to pursue the known options within his or her technical grasp”. Because obviousness is a question of law based on underlying facts, the court takes a look at the patents in question side by side.

The Court found that while both patents were directed at stent technology, appellee’s patent teaches the use of inflatable, circumferential ridges that do not penetrate the vessel wall, unlike the prior art, which has the ridges designed to penetrate the vessel wall. ‘

TriVascular argues it would have been obvious to substitute these two versions of ridges, but the Court finds this unpersuasive and finds that this difference in these versions of ridges in appellee’s patent would destroy the basic objective of the barbs in the prior art.  Therefore, the Court affirmed the Board’s findings regarding the lack of a sufficient motivation to combine and the lack of a reasonable expectation of success in combining the prior art. The court found no error in the Boards claim construction or its judgment that TriVascular failed to meet its burden of demonstrating that the asserted claims are invalid as obvious.  Affirmed.

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