January 8, 2014
Inherency Argument Comes Up Short in Inter Partes Review Petition
Despite having multiple grounds denied, Becton, Dickinson and Company was able to get 8 challenged claims of a One Stockduq Holdings patent into a trial for inter partes review, in a case styled as Becton, Dickinson and Co. v. One StockDuq Holdings, LLC (IPR2013-00235), involving U.S. Pat. No. 5,704,914. Of interest in the decision is the Board’s decision that a prior art reference at issue did not inherently disclose a flexible catheter.
The ‘914 patent relates to a unique catheter assembly which attempts to remedy the widely-recognized problem of accidental needle sticks related to the catheter needle being exposed during the process. More specifically, the ‘914 patent describes three essential parts of the invention: a catheter, catheter hub, and needle body.
The Board its analysis by construing several claim terms. First, the Board referred to a conventional, online dictionary to assist in the construction of the term “flexible catheter.” To that end, the Board interpreted “flexible” to mean “capable of bending easily without breaking.” Next, the Board construed the term “flexible resilient diaphragm” to mean a “thin sheet of material forming a partition which is capable of bending or being penetrated by a needle easily without breaking and able to spring back into shape after being penetrated” after consulting the same online dictionary. Thirdly, the Board defined the term “between” (as it relates to the invention parts) as “at, into, or across the space separating (two objects or regions).” Again, the Board relied upon an online dictionary for this definition.
Other than a conventional patentability analysis, of interest in the Board’s decision was its consideration of Petitioner’s argument that a prior art reference disclosed a “flexible catheter” by disclosing that the catheter may be made from several materials, including PTFE. Petitioner’s expert even conclusorily stated that PTFE “is commonly known in the medical community as a flexible material.” Order at 22. The Board rejected this argument, though, finding that “[t]o show inherency, [Petitioner] would need to prove that a catheter made of PTFE would necessarily be flexible.” Id. (emphasis in original). As such, the expert testimony was not specific enough, for failing to state that PTFE is necessarily or always used in flexible form in the medical community.
In the end, despite this failing relating to one of the references, Petitioner was able to get 8 challenged claims of the ‘914 patent into a trial for inter partes review.