Board’s Claim Construction Limited to What it Needed To Initiate IPR Trial

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’s meaning, in instituting an inter partes review in St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the Univ. of Michigan (IPR2013-00041), involving U.S. Pat. No. 5,746,775.  All six challenged claims were put into the trial and the University did not file a preliminary patent owner response.

The ‘775 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 or Fe+3.

In a practical claim construction ruling, the Board determined that the claim limitation “C1-C3 aliphatic alcohol” covered glycerol, because that is the alcohol that is disclosed in the prior art at issue.  In coming to its decision, the Board looked to dictionary definition of “alcohol,” as well as the specification of the ‘775 patent.

The Board followed the brief claim construction analysis by determining the effective filing date of the ‘775 patent to determine the whether a reference cited by Patent Challenger qualified as prior art. Patent Challenger argued that the ‘775 patent, a continuation-in-part, was not entitled to its ancestor’s 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 ‘775 patent for at least two limitations of the subject claims.  As such, the ‘775 patent was entitled to only its own filing date as a priority date, thereby qualifying the reference in question as prior art.

In view of these findings, the Board had the ammunition it needed to grant Patent Challenger’s Petition for inter partes review as to all 6 challenged claims in the ‘775 patent based on obviousness grounds.