-
The Federal Circuit Affirms Patentability Of Teleflex Patents And Confirms Low Bar For Corroboration Of Prior Inventorship
06/13/2023On May 24, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion affirming the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that U.S. Patent 7,736,355 to Itou, et al. (“Itou”) could not be used as prior art to invalidate five Teleflex Innovations S.à.R.L. (“Teleflex”) patents, which were on appeal. Medtronic, Inc. v. Teleflex Innovations S.à.R.L., No. 2021-2356, 2023 WL 3606143 (Fed. Cir. May 24, 2023).
The Teleflex patents descend from a common application filed on May 3, 2006, and share a common specification. They are directed to guide extension catheters that use a tapered inner catheter that runs over a standard coronary guidewire, reducing the likelihood that the guide catheter will dislodge from the coronary artery’s opening.
Medtronic, Inc. and Medtronic Vascular, Inc. (collectively, “Medtronic”), in their IPRs and on appeal, argued that Itou is prior art to the Teleflex patents, under pre-AIA 35 U.S.C. § 102(e). Teleflex responded by arguing that Itou does not qualify as prior art because the claimed inventions were (1) conceived prior to Itou’s September 23, 2005, filing date, i.e., the critical date, and (2) (a) were actually reduced to practice for their intended purpose before the critical date or (b) were diligently pursued until their constructive reduction to practice through their effective filing in May 2006.
The Board, in five Final Written Decisions, found that the claimed inventions were (1) conceived no later than August 2005, i.e., before the critical date, and (2) either (a) actually reduced to practice for their intended purpose, i.e., providing improved backup support for the guide catheter, in April and July 2005, prior to the critical date or (b) diligently worked on toward constructive reduction to practice on May 3, 2006, i.e., the Teleflex patents’ effective filing date.
On appeal, Medtronic did not challenge the Board’s findings of conception prior to the critical date, but argued that: (1) the Board erred in determining a broad intended purpose of the claimed inventions; (2) even if the Board’s determination of the intended purpose was correct, the Board erred by not requiring comparative testing to show reduction to practice for that purpose; and (3) the Board erred in relying solely on uncorroborated inventor testimony, as evidence of actual reduction to practice. Medtronic also challenged the Board’s findings of diligence.
The Federal Circuit consolidated and affirmed the Board’s five Final Written Decisions.
The Federal Circuit held that the Board did not err in determining the intended purpose of the claimed inventions and rejected Medtronic’s argument that the intended purpose of the claimed inventions should be narrower than the Board’s determination. The Federal Circuit explained that an invention’s intended purpose is a legal issue reviewed de novo. See z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340 1352 (Fed. Cir. 2007) (affording no deference to district court’s reading of patents’ language to “define[] the ‘intended purpose’ of the invention”). It found that the Teleflex patents’ specifications themselves recognize a broader purpose than Medtronic suggests when discussing the field and background of the inventions. It then stated that, although that intrinsic evidence is sufficient to support the Board’s determination of intended purpose, the Board’s determination was further supported by both expert and inventor testimony.
Next, the Federal Circuit held that the Board did not err when it did not require comparative testing to show reduction to practice. The Federal Circuit explained that sufficiency of the testing required to show an invention worked for its intended purpose is a question of fact reviewed for substantial evidence. See id. at 1352 (“[T]he necessity and sufficiency of such testing are factual issues.”); Scott v. Finney, 34 F.3d 1058, 1061–62 (Fed. Cir. 1994) (“[T]he testing requirement depends on the particular facts of each case.”). The Federal Circuit found that the inventors’ tests were sufficient to show that the claimed invention worked for its intended purpose, as determined by the Board. It stated that the Board’s determination of intended purpose did not mandate a 1:1 comparison or quantitative assessment that the claimed invention would work for its intended purpose; rather, a test for intended purpose simply requires that an inventor would observe the test and understand that the test indicates that the claimed inventions worked for their intended purpose.
Last, the Federal Circuit held that the Board did not rely on uncorroborated inventor-testimony as evidence of actual reduction to practice. The Federal Circuit found that the inventors’ testimonies regarding reduction to practice were sufficiently corroborated under the “rule of reason” standard by documentary evidence and non-inventor testimony. The Federal Circuit explained that corroborating evidence is evaluated under the “rule of reason,” considering all pertinent evidence. See Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998). The Federal Circuit also explained that the law does not impose an impossible standard of “independence” on corroborative evidence. That is, the law does not require every point of a reduction to practice to be corroborated by evidence having a source totally independent of the inventor; indeed, such a standard is the antithesis of the “rule of reason.” The Federal Circuit stated that the corroborating evidence simply needs to be sufficient to support the credibility of the inventors’ story. Here, for example, where the Board found reports and invoices and the testimony of former coworkers corroborating the inventors’ testimony of actual reduction to practice, the Federal Circuit held that such evidence was indeed corroborating.
Because the Federal Circuit found that the claimed inventions were reduced to practice prior to Itou, there was no need to reach the issue of whether diligence was exercised.
Judge Dyk dissented from the majority opinion. He contended that the evidence the majority opinion held to be corroborating was insufficient. He concluded that Itou was prior art to the Teleflex patents and therefore could support a determination of anticipation or obviousness.
