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Becton, Dickinson and Co. v. B. Braun Melsungen AG

Paper No. 8, Dec. 15, 2017

IPR2017-01586 (Patent 8,328,762 B2)

FACTS

Petitioner Becton, Dickinson and Company filed an inter partes review Petition for review of claims 18, 22, and 25 of the ‘762 patent for a “Catheter Insertion Device.” See Paper 8, p. 2. Patent Owner B. Braun Melsungen AG filed a Preliminary Response to have the Petition denied with respect to all of the challenged claims. Id.

HOLDING

Since the PTAB determined that there was a reasonable likelihood that Petitioner would prevail on at least one alleged ground of unpatentability with respect to each of claims 18, 22, and 25 of the ‘762 patent, the PTAB granted Petitioner’s Petition for inter partes review, over the Preliminary Response of the Patent Owner. See Paper 8, p. 38.

TAKEAWAY

Claim 18 of the ‘762 patent is independent, and claims 22 and 25 depend directly on claim 18. See Paper 8, p. 4. Petitioner advanced an argument that the language used in claims 18 and 25, reciting a “needle protection device,” should be construed as a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6. See Paper 8, p. 7. Patent Owner claimed that the language used indicated that the term was structural. Id. The PTAB was not convinced that the term “needle protection device” should be construed as a means-plus-function term; the word “means” was not used, and the presumption is that the limitation is not subject to 35 U.S.C. § 112 ¶ 6. Petitioner failed to overcome this presumption.

Petitioner challenged claims 18, 22, and 25 on the basis of obviousness under 35 U.S.C. § 103(a). See Paper 8, p. 9. The PTAB first determined who the relevant PHOSITA would be, basing the decision in part on Petitioner and Patent Owner’s expert witnesses. The PHOSITA would be either a medical practitioner with some experience with vascular catheter devices or a person with, at a minimum, an associates degree in engineering or physics, having at least some experience with vascular catheter devices. See Paper 8, p. 10.

Petitioner claimed that claims 18, 22, and 25 are unpatentable over the Woehr and Tauschinski patents. See Paper 8, p. 11. The Woehr patent describes a “Spring Clip Safety IV Catheter,” and the Tauschinski patent describes a “Self-Sealing Connector for Use with Plastic Cannulas and Vessel Catheters.” Id. Petitioner argued that a PHOSITA would have found it obvious to improve the Woehr patent by adding elements of the Tauschinski patent to it, and that combination would effectively render claim 18 of the ‘762 patent obvious. See Paper 8, p. 15-16. Patent Owner argued that the PTO had already considered both of those patents in connection with the ‘339 patent, the parent patent of the ‘762 patent. See Paper 8, p. 16-17. While the PTO had not considered the combination of the Woehr and Tauschinski patents, the Examiner had considered combinations of those patents with other, substantially similar patents. See Paper 8, p. 16. The PTAB, noting that the institution of inter partes review is discretionary, cited to 35 U.S.C. § 325(d) and said that the PTO had already addressed the obviousness issues raised by Petitioner here, and Patent Owner had overcome the obviousness issues enough for an Examiner to allow the patent to be issued. See Paper 8, p. 27-28.

Petitioner claimed that claims 18 and 22 are unpatentable over the Van Heugten patent. See Paper 8, p. 28. The Van Heugten patent describes a “Catheter with Controlled Valve.” Id. Petitioner argued that the Van Heugten patent discloses all the method and step limitations of claims 18 and 22. See Paper 8, p. 30. Patent Owner argued that the Van Heugten patent does not disclose a needle protective device, lined up with its catheter hub. Id. The PTAB determined that there was a reasonable likelihood that claims 18 and 22 would have been obvious in light of the Van Heugten patent. See Paper 8, p. 31-32.

Petitioner claimed that claim 25 is unpatentable over the Van Heugten and Lynn patents. See Paper 8, p. 32. Petitioner argued that the combination of the Van Heugten and Lynn patents was something that a PHOSITA would understand to be known elements functioning for their intended results, predictably. See Paper 8, p. 34. Patent Owner argued that Petitioner did not explain how this combination might be accomplished. Id. The PTAB determined that Petitioner had shown sufficiently that claim 25 would have been obvious over the Van Heugten and Lynn patents. See Paper 8, p. 35.

Petitioner claimed that claim 22 is unpatentable over the Van Heugten and Tauschinski patents. See Paper 8, p. 35. The PTAB determined that Petitioner had put forth sufficient evidence to show that claim 22 would have been obvious over the Van Heugten and Tauschinski patents. See Paper 8, p. 37.

 

A copy of the PTAB order can be found here.