Takeaway: If a due date that is stipulated by the parties falls on a federal holiday or weekend, the filing must be filed on that date, not on the next business day, in order to be timely.

In its Final Written Decision, the Board found that all of the challenged claims (1, 4-6, 8, 9, 11, 12, 38, 41-44, 46, 47, and 49) of the ’384 Patent are unpatentable. The ’384 Patent proposes to solve problems relating to current flux around tissue treated by electrosurgery and tissue heating. The Board began by construing the claims according to their broadest reasonable interpretation in light of the specification. The Board had provided constructions for various terms of the challenged claims in its Decision on Institution. Petitioner agreed with those constructions, but Patent Owner disagreed with the construction of the term “perforated.” Patent Owner argued that the phrase “to permit the release of steam during use” should be ignored in construing a limitation that includes the word “perforated” because it describes the function of the perforations. The Board disagreed. Patent Owner also argued that “perforations” do not include “passages,” but the Board found that Patent Owner had not explained adequately why a perforation excludes a passage.
The Board then turned to the grounds of unpatentability. The Board instituted review on the grounds that the challenged claims were anticipated by or rendered obvious over JP ’551 alone and that the challenged claims would have bene obvious over JP ’551 and FR ’149. Patent Owner argued that (1) Petitioner failed to demonstrate that JP ’551 is prior art because it did not provide a complete translation; (2) JP ’551 is not prior art because the inventors conceived of the invention and acted with reasonable diligence from before Feb. 10, 1998 through May 1, 1998; (3) JP ’551 does not disclose each of the elements of every challenged claim; and (4) Petitioner failed to demonstrate that a person of ordinary skill would have had motivation to combine JP ’551 and FR ’149.

Regarding the translation, Petitioner provided a Japanese language copy of JP ’551, an English translation of JP ’551, and a certification signed by the translator attesting to the accuracy of the English translation and stating that JP ’551 was published on Feb. 10, 1998. However, the English translation did not include a translation of the bibliographic information on the first page of JP ’551. Patent Owner argued that this omission makes the translation incomplete, and, therefore, Petitioner may not rely upon the translation. The Board noted that neither party disputes that JP ’551 was published on Feb. 10, 1998 and Patent Owner does not dispute the completeness of the translation of the remainder of JP ’551. Also, Patent Owner did not timely object to the completeness of the translation. Therefore, the Board found that Petitioner satisfied the requirements of 37 C.F.R. § 42.63(b), and that Patent Owner waived any objection thereto.

The Board then discussed Patent Owner’s argument that the instruments recited in the challenged claims were conceived prior to the publication date of JP ’551 (Feb. 10, 1998). The parties agree that the instruments were reduced to practice on May 1, 1998, and Patent Owner contends that the named inventor and his patent attorney exercised reasonable diligence from at least Feb. 10, 1998 through May 1, 1998 (“the critical period”), therefore, JP ’551 does not qualify as prior art under 35 U.S.C. § 102(a). The Board stated that because Petitioner offered evidence a publication that was published before the ’384 patent’s filing date, Patent Owner bears the burden of producing evidence supporting a date of invention before JP ’551’s publication date, and inventor’s testimony alone is insufficient to carry the burden with respect to conception and diligence. The party bearing the burden must show continued diligence during the critical period, and even a short period of unexplained activity, such as two days, can defeat a claim of diligence.

The Board noted Patent Owner’s evidence regarding the conception date, but found that even if it agreed with Patent Owner that conception occurred before at least Feb. 10, 1998. Patent Owner has not shown evidence to demonstrate continued diligence through the entire critical period. The Board noted that the inventor was unable to identify a single date on which he worked preparing the application for filing, or any date on which he was scheduled for surgery or had any other conflict that would have prevented him from working on the filing. The inventor was only able to identify two dates on which he took specific actions with respect to preparing the patent application. Therefore, the Board found that Patent Owner had not provided sufficient evidence of diligence during the entire critical period.

The Board then turned to its analysis of whether JP ’551 anticipates or renders obvious the challenged claims. The Board reviewed Petitioner’s evidence and found that Petitioner had demonstrated that the challenged claims are both anticipated by and obvious over JP ’551 alone. The Board specifically noted two of Patent Owner’s technical arguments, but found that those limitations are disclosed in JP ’551.

Next, the Board reviewed whether the challenged claims are obvious over JP ’551 and FR ’149. Patent Owner argued that one of ordinary skill in the art would not have a reason to combine the teachings of JP ’551 with FR ’149 because the combination would change the principle of operation of JP ’551, JP ’551 and FR ’149 target coagulation in areas different from that targeted by the bipolar surgical instrument of the ’384 Patent, and the device combining the teachings would not function. The Board was not persuaded by these arguments. The Board noted that Patent Owner’s first contention is based upon the description of the eighth embodiment of JP ’551, however, Petitioner relies upon the teachings of the first, second, and seventh embodiments of JP ’551. Patent Owner’s second contention also relies upon the eighth embodiment, but the Board found that it did not read limitations of that embodiment into the claims. Regarding Patent Owner’s last contention, the Board found that Petitioner relies upon the goals of the disclosures, and not that the two disclosures could be physically combined.

The Board then reviewed the motions to exclude. Petitioner filed a Motion to Exclude eight of Patent Owner’s exhibits. Exhibits 2002, 2003, and 2016 are scans of pages of the inventor’s notebooks. Because the Board found that Patent Owner had not shown diligence during the critical period, this Motion is moot. Exhibits 2004, 2006-08, and 2020 are communications between the inventor and his patent attorney, as well as copies of applications. The Board found that Petitioner had failed to identify a timely objection to Exhibit 2020, therefore, the Motion is denied regarding that exhibit. The Board also denied the Motion as to the remaining exhibits, finding that the documents were properly authenticated and not hearsay.

Regarding Patent Owner’s Motion to Exclude, the Board found it was untimely filed. The parties had stipulated to the due date as January 19, 2015, which was Martin Luther King Jr. Day, a federal holiday. Patent Owner filed its Motion on January 20, 2015. Because the parties had stipulated to the date and it was not set by statute, the Board found that the motions to exclude were due on January 19.

Finally, the Board addressed Petitioner’s demonstrative exhibits 1024-28. The Board noted that these exhibits contained improper argument. Further, the Board did not authorize filing of demonstrative exhibits. Therefore, the Board expunged these exhibits.

Olympus America Inc. and Olympus Medical Systems Corporation v. Perfect Surgical Techniques, Inc., IPR2014-00233
Paper 56: Final Written Decision
Dated: June 8, 2015
Patent 6,030,384
Before: Francisco C. Prats, Benjamin D.M. Wood, and James B. Arpin
Written by: Arpin