Trivascular, Inc. v. Samuels
812 F.3d 1056
| Fed. Cir. | 2016Background
- The dispute concerns U.S. Patent No. 6,007,575, which claims an intraluminal vascular stent secured by an "inflatable and deflatable cuff" with "inflatable protrusion(s) including at least one circumferential ridge."
- TriVascular petitioned for inter partes review (IPR) challenging the patent as obvious over prior art, principally Samuels '851 and Todd; the Board instituted IPR on those grounds.
- At institution the Board adopted a claim construction for "circumferential ridge" as a "raised strip disposed circumferentially about the outer surface of the inflatable cuff."
- After trial, the Board adopted a narrower construction of "inflatable protrusions" (protrusions that are themselves inflatable) and concluded TriVascular failed to prove the claims obvious; TriVascular timely appealed.
- TriVascular argued the Board erred by construing "circumferential ridges" to require continuous raised strips and by rejecting prosecution-history disclaimer; it also argued the combination of Samuels '851 and Todd rendered the claims obvious.
- The Federal Circuit affirmed, holding the Board’s claim construction and factual findings (lack of motivation to combine and lack of reasonable expectation of success) were supported by substantial evidence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of "circumferential ridges" | TriVascular: term should cover continuous or discontinuous elevated parts (broader) | Samuels: plain meaning and specification support continuous raised strip (narrower) | Court: Affirms Board — "circumferential ridges" reasonably construed as continuous raised strip |
| Prosecution-history disclaimer | TriVascular: applicant surrendered broader meaning during prosecution (added then removed "continuously") | Samuels: proposed amendment wasn’t adopted; examiner allowed claims without "continuously" so no clear disclaimer | Court: No clear and unmistakable disclaimer; Board reasonably relied on complete prosecution history |
| Obviousness over Samuels '851 + Todd | TriVascular: skilled artisan would replace Samuels' penetrating inflatable barbs with Todd's nonpenetrating protuberances, making claims obvious | Samuels: prior art teach different objectives; Todd's protuberances are noninflatable and replacement would defeat Samuels' purpose | Court: Affirmed — Board’s findings (lack of motivation to combine; lack of reasonable expectation of success) supported by substantial evidence |
| Reliance on Institution Decision | TriVascular: Board contradicted its institution finding that petitioner had reasonable likelihood of success | Samuels: institution is preliminary and uses a different standard than final decision | Court: Board may change view after full record; institution findings not binding on final decision |
Key Cases Cited
- In re Cuozzo Speed Techs., 793 F.3d 1268 (Fed. Cir.) (B.R.I. standard and review framework for PTO claim construction)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S.) (flexible obviousness framework; caution against hindsight)
- Graham v. John Deere Co., 383 U.S. 1 (U.S.) (Graham factual inquiries for obviousness)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim construction principles; use of specification and prosecution history)
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (U.S.) (prosecution history estoppel / disclaimer principles)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (obviousness is a legal conclusion based on underlying facts)