Federal Circuit Affirms Medtronic Failed to Prove Teleflex Claims Unpatentable

The Federal Circuit has affirmed a finding by the Patent Trial and Appeal Board (PTAB or Board) that Medtronic failed to prove that challenged claims of a Teleflex catheter patent were unpatentable.

The ’116 patent is directed to a method for using a guide extension catheter with a guide catheter.

A key portion of a representative method claim from that patent reads as follows:

25. A method, comprising: advancing a distal end of a guide catheter having a lumen through a main blood vessel to an ostium of a coronary artery;…

Medtronic filed two petitions for inter partes review (IPR) of the ’116 patent. It argued that certain claims of the patent were anticipated or obvious in light of prior art.

The issues before the court related to a prior art patent reference called “Itou”:

1. whether or not in vivo testing was required for actual reduction to practice and
2. whether or not the patentee exercised reasonably continuous diligence until constructive reduction to practice.

Teleflex argued

that Itou was not prior art because the claimed invention was (1) conceived prior to Itou’s filing date of September 23, 2005 (i.e., the critical date), and (2) was either (a) actually reduced to practice before the critical date or (b) diligently pursued until its constructive reduction to practice through its effective filing in May 2006.

The court noted that

the question [was] whether or not in vivo testing was required for actual reduction to practice because the claims at issue are method claims reciting “advancing . . . a guide catheter . . . through a main blood vessel to an ostium of a coronary artery.”

The court explained that

In considering whether or not a reference qualifies as prior art under pre-AIA 35 U.S.C. § 102(e), we must consider whether or not “the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.” A patent owner may antedate an asserted prior art patent by showing conception of the claimed invention prior to the critical date and either actual reduction to practice prior to the reference’s critical date or “reasonably continuous diligence” in reducing the invention to practice until its effective filing date.

The Board had found that such testing wasn’t required and that that Medtronic “was unable to identify any legal precedent requiring in vivo performance of a claimed in vivo method to show actual reduction to practice.”

The court noted that

An asserted prior art reference can be antedated based on a constructive reduction to practice by a showing of (1) conception prior to the filing date of the asserted reference and (2) reasonably continuous diligence from just before the date the asserted reference was filed until the date that the patent owner filed its priority application.

The court found that Medtronic had waived the diligence argument because in its opening brief it affirmatively chose not to include developed arguments on diligence.

The court concluded:

Because we agree with the Board that Itou does not qualify as prior art, we likewise affirm the Board’s holdings … that Medtronic did not demonstrate by a preponderance of the evidence that the challenged claims of the ’116 patent are unpatentable.