The Creative POSITA

• Published date: 26 August 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Melissa Santos, Brooke M. Wilner, Amanda K. Murphy, Stacy Lewis and Thomas L. Irving

Holding

In CR Bard v. Medline Indus., Nos. 20-1900, -1905, -1908, -1910 (Fed. Cir. Aug. 13, 2021) (unpublished), the Court of Appeals for the Federal Circuit ('Federal Circuit') issued mixed decisions in the appeals of four inter partes review final written decisions: IPR2019-0035, IPR2019-00036, IPR2019-00109 and IPR2019-00223. The Federal Circuit affirmed-in-part, vacated-in-part, and remanded the cases for further proceedings.

Background

The patents at issue, U.S. Pat. 9,745,088 ('the '088 patent'), U.S. Pat. 9,808,596 ('the '596 patent'), and U.S. Pat. 9,795,761 ('the '761 patent') are owned by Medline and relate to storage trays for catheterization tools. Bard filed petitions for inter partes review (IPR) of Medline's patents based on different combinations of four prior art references: Solazzo, Serany, Disston, and Imai. The Patent Trial and Appeal Board ('the Board') held that Bard failed to show the challenged claims were unpatentable for obviousness.

Regarding the '088 patent, the Board held the challenged claims were not unpatentable for obviousness. Specifically, the Board held that Solazzo's disclosure of two syringes did not render obvious certain claims in the '088 patent requiring 'a first syringe and a second syringe disposed within the first compartment' because Solazzo did not ''expressly describe[]' placing two syringes together in one compartment.' Id. at *11.

Similarly, the Board held that Solazzo's disclosure of a tray having a non-constant bottom in which lubricant is stored above an inflation syringe, in accordance with their order of use, did not render obvious other claims of the '088 patent that required a tray with two syringes positioned at different heights according to their order of use. Nor did Imai's teaching of arranging syringes at different heights render the claims obvious, the Board found.

Like the '088 patent, the Board concluded that certain claims of the '596 patent were also not unpatentable as obvious. One claim required a fluid receptacle 'between the second compartment base member and the Foley catheter.' According to the Board, Serany failed to 'expressly describe or illustrate a fluid receptacle that is wholly located between the bottom of the container and the catheter.' Id. at *17 (emphasis in original). Another claim required the tray's first compartment to 'receive the lubricating jelly.' The Board concluded Solazzo's compartment would be 'too deep' to 'facilitate lubricant application.' Id. at *19.

The...