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Boston Sci. Scimed, Inc. v. Cook Grp., Inc.

United States Court of Appeals for the Federal Circuit

April 30, 2020, Decided

2019-1594, 2019-1604, 2019-1605

Opinion

Dyk, Circuit Judge.

Boston Scientific Scimed, Inc. ("Boston") appeals from the final written decisions of the Patent Trial and Appeal Board ("Board") in two related inter partes reviews ("IPRs"), Nos. 2017-00435 and -00440, finding that claims 1-4, 6-7, 9-16, 18, and 20 and proposed amended claims 21, 30, and 38 of U.S. Patent No. 9,271,731 ("the '731 patent") are unpatentable. Cook Group Inc. and Cook Medical LLC (collectively, "Cook") cross-appeal from the Board's finding that Cook [*2]  failed to demonstrate by a preponderance of the evidence the unpatentability of claims 5, 8, 17, and 19 of the '731 patent. The Director of the U.S. Patent & Trademark Office ("government") intervened for the limited purpose of determining "whether the Board, after deciding that the petitioner has prevailed on all its challenged claims, must decide [any] additional grounds [raised in the petition under] 35 U.S.C. § 318(a) and SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 200 L. Ed. 2d 695 (2018)." U.S. Br. 1. Because the Board erred in its analysis of claims 8 and 20, we vacate and remand to the Board for further consideration of those claims. On all other grounds, we find no error in the Board's decision and affirm.

Background

The '731 patent discloses a reversibly closeable compression clip for endoscopically stopping bleeding of blood vessels along the gastrointestinal tract. Claims 1 and 20 are representative of the claims at issue on appeal:

1. A medical device, comprising:

a clip including first and second clip arms, the clip being movable between an open tissue receiving configuration in which the first and second arms are separated from one another by a distance selected to receive tissue there between and a closed configuration in which the first and second arms are moved inward to capture [*3]  the tissue received therebetween; and

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2020 U.S. App. LEXIS 13946 *; 2020 U.S.P.Q.2D (BNA) 10458

BOSTON SCIENTIFIC SCIMED, INC., Appellant v. COOK GROUP INCORPORATED, COOK MEDICAL LLC, Cross-Appellants, ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor

Notice: THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

Prior History:  [*1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017-00435, IPR2017-00440.

Disposition: AFFIRMED IN PART AND VACATED AND REMANDED IN PART.

CORE TERMS

clip, unpatentable, tensile, control wire, configuration, Patent, tissue, arms, first and second, discloses, references, proximal, amended claim, detachable, grounds, cross-appeal, anticipated, opening, clamp

Patent Law, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence, Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings, Evidence, Types of Evidence, Judicial Admissions