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Ethicon Endo-Surgery, Inc. v. Covidien LP

Ethicon Endo-Surgery, Inc. v. Covidien LP

United States Court of Appeals for the Federal Circuit

January 13, 2016, Decided

2014-1771

Opinion

 [***1640]  [*1025]   DYK, Circuit Judge.

Ethicon Endo-Surgery, Inc. ("Ethicon") owns U.S. Patent No. 8,317,070 ("the '070 patent"). Covidien LP ("Covidien") petitioned the United States Patent and Trademark Office ("PTO") for [**2]  inter partes review of claims 1-14 of the '070 patent. The PTO, through a panel of the Patent Trial and Appeals Board ("PTAB" or "Board"), granted the petition. On the merits, the same Board panel found all challenged claims invalid as obvious over  [*1026]  the prior art. Ethicon appeals, asserting that the Board's final decision is invalid because the same Board panel made both the decision to institute and the final decision. Ethicon also asserts that the Board erred in finding the claims obvious.

We first hold that 35 U.S.C. § 314(d) does not preclude us from hearing Ethicon's challenge to the authority of the Board to render a final decision. On the merits we hold that neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination. We also find no error in the Board's determination that the '070 patent claims would have been obvious over the prior art. Accordingly, we affirm.

 [***1641]  Background

The claims of the '070 patent are directed to a surgical device used to staple, secure, and seal tissue that has been incised. As the specification describes, a typical embodiment can both make the incision and simultaneously apply lines of staples on [**3]  opposing sides of the incision. '070 Patent col. 7 ll. 5-31. As is commonly done during endoscopic procedures, a surgeon will insert the device into the patient and will pull a trigger to latch onto a desired tissue. Once attached, the surgeon will then pull another trigger, which causes a blade to move, cutting the desired tissue. Simultaneously, rows of staples on either side of the cutting blade are actuated against a staple forming surface, both securing and sealing the newly-cut tissue.

Claim 1 is representative of the claimed invention:

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812 F.3d 1023 *; 2016 U.S. App. LEXIS 473 **; 117 U.S.P.Q.2D (BNA) 1639 ***

ETHICON ENDO-SURGERY, INC., Appellant v. COVIDIEN LP, Appellee

Subsequent History: Rehearing, en banc, denied by Ethicon Endo-Surgery, Inc. v. Covidien LP, 826 F.3d 1366, 2016 U.S. App. LEXIS 11296 (Fed. Cir., 2016)

US Supreme Court certiorari denied by Ethicon Endo-Surgery, Inc. v. Covidien LP, 2017 U.S. LEXIS 427 (U.S., Jan. 9, 2017)

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00209.

Covidien LP v. Ethicon Endo-Surgery, Inc., 2014 Pat. App. LEXIS 3596 (Bd. Pat. App. & Interferences, June 9, 2014)

CORE TERMS

staples, patent, delegate, inter partes, proceedings, Invents, final decision, prior art, heights, functions, argues, combining, post-grant, merits, tissue, instituted, features, rulemaking, district court, adjudicatory, non-parallel, determines, products, staplers, legs, due process violation, legislative history, subordinate, bifurcated, challenges

Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings, Patent Law, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence, Reexamination Proceedings, Subject Matter Jurisdiction, Subject Matter Jurisdiction, Appeals, Civil Procedure, Disqualification & Recusal, Grounds for Disqualification & Recusal, Extrajudicial Conduct, Administrative Law, Separation of Powers, Legislative Controls, Implicit Delegation of Authority, Nonobviousness, Elements & Tests, Elements & Tests, Graham Test, Secondary Considerations