{"id":502,"date":"2013-09-17T16:35:30","date_gmt":"2013-09-17T20:35:30","guid":{"rendered":"https:\/\/aia.harnessip.com\/?p=502"},"modified":"2013-09-27T16:36:22","modified_gmt":"2013-09-27T20:36:22","slug":"boards-claim-construction-limited-to-what-it-needed-to-initiate-ipr-trial","status":"publish","type":"post","link":"https:\/\/aia.harnessip.com\/?p=502","title":{"rendered":"Board\u2019s Claim Construction Limited to What it Needed To Initiate IPR Trial"},"content":{"rendered":"

In an interesting decision, the Board limited its claim construction analysis to whether a compound found in the prior art was covered by the claims, as opposed to coming to a determination of what were the full metes and bounds of the claim limitation\u2019s meaning, in instituting an inter partes <\/em>review in St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the Univ. of Michigan<\/a><\/em>(IPR2013-00041), involving U.S. Pat. No. 5,746,775.\u00a0 All six challenged claims were put into the trial and the University did not file a preliminary patent owner response.<\/p>\n

The \u2018775 patent relates to methods of exposing biomaterial for implantation in a living being to an alcohol to inhibit in vivo calcification. More precisely, the invention relates to contacting the biomaterial with a greater than 50% by volume solution of an alcohol for a period of time sufficient to render the tissue resistant to in vivo calcification. The solution may optionally contain additional anti-calcification agents, such as a soluble salt of a metallic cation like Al+3<\/sup> or Fe+3<\/sup>.<\/p>\n

In a practical claim construction ruling, the Board determined that the claim limitation \u201cC1-C3 aliphatic alcohol\u201d covered glycerol, because that is the alcohol that is disclosed in the prior art at issue.\u00a0 In coming to its decision, the Board looked to dictionary definition of \u201calcohol,\u201d as well as the specification of the \u2019775 patent.<\/p>\n

The Board followed the brief claim construction analysis by determining the effective filing date of the \u2018775 patent to determine the whether a reference cited by Patent Challenger qualified as prior art. Patent Challenger argued that the \u2018775 patent, a continuation-in-part, was not entitled to its ancestor\u2019s filing date because the earlier-filed application did not provide adequate written description support for the limitations in the challenged claims. The Board agreed with Patent Challenger inadequate support was provided in the ancestor patent documents to the \u2019775 patent for at least two limitations of the subject claims.\u00a0 As such, the \u2018775 patent was entitled to only its own filing date as a priority date, thereby qualifying the reference in question as prior art.<\/p>\n

In view of these findings, the Board had the ammunition it needed to grant Patent Challenger\u2019s Petition for inter partes review as to all 6 challenged claims in the \u2018775 patent based on obviousness grounds.<\/p>\n","protected":false},"excerpt":{"rendered":"

In an interesting decision, the Board limited its claim construction analysis to whether a compound found in the prior art was covered by the claims, as opposed to coming to a determination of what were the full metes and bounds … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":12,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"jetpack_post_was_ever_published":false,"_jetpack_newsletter_access":"","_jetpack_dont_email_post_to_subs":false,"_jetpack_newsletter_tier_id":0,"_jetpack_memberships_contains_paywalled_content":false,"_jetpack_memberships_contains_paid_content":false,"footnotes":"","jetpack_publicize_message":"","jetpack_publicize_feature_enabled":true,"jetpack_social_post_already_shared":false,"jetpack_social_options":{"image_generator_settings":{"template":"highway","default_image_id":0,"font":"","enabled":false},"version":2}},"categories":[4],"tags":[22,19,16,25],"class_list":["post-502","post","type-post","status-publish","format-standard","hentry","category-ipr","tag-claim-construction","tag-institution-of-trial","tag-inter-partes-review","tag-priority-date"],"jetpack_publicize_connections":[],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"jetpack_shortlink":"https:\/\/wp.me\/p4ZIpB-86","_links":{"self":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/502","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/12"}],"replies":[{"embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=502"}],"version-history":[{"count":1,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/502\/revisions"}],"predecessor-version":[{"id":503,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/502\/revisions\/503"}],"wp:attachment":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=502"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=502"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=502"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}