PTAB Issues Final Written Decisions Finding Most Claims of Tissue Capture Patent Invalid

On December 28, 2018, the USPTO’s Patent Trial and Appeal Board (“Board”) issued two final written decisions in inter partes review proceedings filed by Cook Group Incorporated and Cook Medical LLC (“Petitioner”): IPR2017-00435 relating to the patentability of claims 1–4, 6-18 and 20 of U.S. Patent No. 9,271,731 (“the ‘731 Patent”), and IPR2017-00440 relating to the patentability of claims 1-20 of the ‘731 Patent. The ‘731 Patent, which is owned by Boston Scientific Scimed, Inc., is drawn to a device and methods for capturing tissue.

In the IPR2017-00435 decision, the Board determined that Petitioner had not shown by a preponderance of the evidence that claims 1-4, 6, 9-18, 20 of the ‘731 Patent are unpatentable as anticipated over the Malecki patent reference under 35 U.S.C § 102, or that claims 1-4, 6-18 and 20 are unpatentable as obvious over the Malecki patent reference under 35 U.S.C § 103. Since the claims were not found to be unpatentable, the Board denied Boston Scientific’s motion to amend.

In the IPR2017-00440 decision, the Board determined that Petitioner had shown by a preponderance of the evidence that claims 1-3, 10-16, 18 of the ‘731 Patent are unpatentable as anticipated over the Nishioka patent reference under 35 U.S.C § 102, and that claims 1-4, 6, 7, 9-16, 18, and 20 are unpatentable as obvious over various patent references under 35 U.S.C § 103. Claims 5 and 8 were not found to be unpatentable under §§ 102 or 103. The Board denied Boston Scientific’s motion to amend because the proposed amended claims were unpatentable as obvious under § 103.

By:  April Breyer Menon

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