Federal Circuit Weighs in on Relevance of Primary Reference’s Intended Purpose to a POSITA’s Motivation to Combine | Sheppard Mullin Richter & Hampton LLP
In Medtronic, Inc., Medtronic Vascular, Inc., v. Teleflex Innovations S.A.R.L., the case addresses the weight the Patent Trial and Appeal Board (PTAB) should give to the intended purpose of a primary reference when evaluating a Person of Ordinary Skill in the Art’s (POSITA) motivation to combine that primary reference with secondary references.
Background
Teleflex Innovation S.A.R.L. (Teleflex) owns multiple patents to a dual catheter design, wherein an extension catheter is disposed within a larger guide catheter coaxially. This coaxial orientation allows the larger guide catheter to remain relatively stationary and secure within a patient’s artery while the extension catheter within is free to extend through the guide catheter into the patient. Teleflex’s patent is specific to the context of delivering interventional cardiology devices (e.g., guidewires, stents, stents, balloon catheters) into a patient’s coronary artery. The opinion provides Fig. 4 from one of Teleflex’s patents for describing the extension catheter in Teleflex’s invention:
Pink region 16, indicated at the extension catheter’s distal end, comprises a flexible tip, such that the distal end’s imposition with a coronary artery is less likely to cause damage. Blue region 18 is disclosed as reinforced, such that it can actuate through the more rigid guide catheter without kinking. Yellow region 20 is disclosed as a “substantially rigid” portion located at the extension catheter’s proximal end (the end disposed outside the patient, where the physician would introduce interventional cardiology devices). Teleflex’s patents include limitations to the angled “side opening” design (circled in red), allowing for a greater “entry area” (i.e., the area where a physician can insert devices).
Medtronic, Inc. and Medtronic Vascular, Inc. (collectively, Medtronic) filed IPR petitions, challenging the Teleflex patents on obviousness grounds. Medtronic asserted Ressemann, which discloses a device for evacuating embolic material while occluding blood flow using sealing balloons, in combination with multiple secondary references, including Takahashi. Takahashi discloses a dual catheter design for delivering interventional cardiology devices into a patient’s coronary artery, which is a purpose shared with the Teleflex patents.
The PTAB issued final written decisions holding some claims unpatentable as obvious and others not unpatentable. The PTAB reasoned that some claims are not unpatentable because Medtronic’s proposed modifications of Ressemann with Takaheshi would have rendered Ressemann “completely inoperable” for its stated purpose. In addition, the PTAB granted Teleflex’s contingent motion to amend certain claims, and also determined that the substitute claims were not unpatentable. Medtronic appealed the determination of patentability and the substitute claims to the Federal Circuit.
Issue(s)
Did the PTAB err in finding no motivation to combine Ressemann with Takaheshi, where the proposed combination would have rendered Ressemann completely inoperable for Ressemann’s stated purpose?
Holding(s)
The PTAB did not err in finding no motivation for a POSITA to combine Ressemann with Takaheshi, where the proposed combination would have rendered Ressemann completely inoperable for Ressemann’s stated purpose. Notably, even though the Federal Circuit had previously held in Intel Corp. v. Qualcomm Inc., 21 F. 4th 784, 800-01 (Fed. Cir. 2021) that the intended purpose of a reference does not control the obviousness inquiry, the intended purpose of that reference may nonetheless be probative in considering a motivation to combine. As such, the PTAB did not err in considering the proposed combination’s conflict with Ressemann’s intended purpose when finding no motivation to combine. The PTAB’s findings of non-invalidity are affirmed.
Reasoning
The Intel case stands for the proposition that the intended purpose of a reference is not dispositive of whether a POSITA would have had motivation to combine the reference. Intel does not stand for the proposition that the intended purpose of a reference is legally irrelevant to obviousness.
Here, the intended purpose of the primary reference, Ressemann was relevant because, in forming the proposed combination with Takeshi, one would have been required to modify Ressemann in a manner that would have destroyed Ressemann’s entire purpose and potentially introduced safety concerns. As such, the proposed combination was simply not feasible.
