Federal Circuit Discusses “Motivation to Combine” in Medtronic Case
January 19th, 2024
The Federal Circuit has addressed the weight the Patent Trial and Appeal Board (PTAB or Board) should give to the intended purpose of a primary reference when evaluating the motivation of a “Person of Ordinary Skill in the Art” (POSITA) to combine that primary reference with secondary references.
As the court explained,
Coronary artery disease, in which plaque buildup narrows the lumen (i.e., the tubular cavity) of a patient’s artery and obstructs blood flow, affects millions of Americans. Cardiologists refer to this narrowing of a patient’s artery as stenosis. … For decades, cardiologists have used devices known as guide catheters to deliver interventional cardiology devices (e.g., guidewires, stents, balloon catheters) designed to alleviate stenoses….. Treatment typically involves inserting the guide catheter into the patient’s femoral or radial artery and guiding the catheter to the patient’s aorta until the distal tip of the catheter reaches the ostium (i.e., opening) of the coronary artery. …Interventional devices can then be inserted into the proximal opening of the catheter, advanced through the lumen of the catheter using a guidewire, and delivered past the stenosis.
The patents-in-suit, owned by Teleflex, sought to address problems with this technology.
by using a coaxial extension catheter insertable into standard guide catheters that offered increased back-up support and the ability to deep seat without the attendant drawbacks of traditional mother-and-child systems.
In November of 2019, Medtronic petitioned for inter partes review of the Teleflex patents-in-suit, alleging the challenged claims would have been obvious over U.S. Patent No. 7,604,612 (Ressemann), in view of various combinations of secondary references: Kontos, Kataishi, and Takahashi.
The PTAB found some claims unpatentable and others not.
Medtronic appealed the Board’s determination that Medtronic failed to prove certain claims would have been obvious to a POSITA familiar with catheter technology.
Medtronic argued a POSITA would have been motivated to modify Ressemann by removing its sealing balloons and replacing its inflation lumen with a pushrod or wire so that it could be used as an extension catheter. Medtronic also alleged a POSITA would be motivated to remove the sealing balloons and inflation lumen used to aspirate emboli because Ressemann teaches its device can also be used to deliver interventional cardiological devices such as stents or angioplasty balloons. It further alleged a POSITA would be motivated to incorporate Takahashi’s system into Ressemann as modified to achieve the increased backup support touted by Takahashi.
Teleflex responded that Medtronic’s modifications would not have been obvious because they would render Ressemann inoperable as a catheter capable of providing embolic protection. Teleflex also argued the modifications were based on hindsight and that the alleged benefits couldn’t be achieved without further modifications.
In response, Medtronic argued removing Ressemann’s sealing balloons would not render it inoperable for embolic protection because other non-occlusive, distal protection devices could be used instead.
The court concluded that the PTAB didn’t err in finding no motivation for a POSITA to combine Ressemann with Takaheshi, where the proposed combination would have rendered Ressemann inoperable for Ressemann’s stated purpose.
The Federal Circuit had previously held in the 2021 case of Intel Corp. v. Qualcomm Inc. that the intended purpose of a prior art reference doesn’t control the obviousness inquiry. However, the intended purpose of that reference may be probative in considering a POSITA’s motivation to combine references.