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16 November 2016Americas

Federal Circuit remands surgical instrument decision to PTAB

The US Court of Appeals for the Federal Circuit yesterday remanded a case concerning surgical instruments back to the Patent Trial and Appeal Board (PTAB).

In a 2-1 decision, the court ordered the board to reconsider its inter partes review (IPR) decision which invalidated a number of the claims in a patent owned by Perfect Surgical Techniques.

The dispute centres on US patent number 6,030,384, called “Bipolar surgical instruments having focused electrical fields”.

The patent concerns the structure and use of bipolar forceps and other instruments for coagulating, cutting and necrosing tissue.

According to the PTAB, each of the claims at issue is “anticipated or would have been obvious” over Japanese application publication number H10- 33551 A.

Olympus America, a manufacturer of diagnostic and medical systems, brought the IPR petition.

During the IPR, Perfect’s argument that the board couldn’t rely on the ‘551 Japanese patent as filed, because the petitioners had failed to translate the bibliographic page containing the publication date, failed.

Second, the board determined that Perfect failed to “antedate JP ‘551 because it had not proven that the inventor of the ‘384 patent was reasonably diligent in reducing his invention to practice”.

On Perfect’s first argument, the Federal Circuit held that the board cannot disregard its own regulations which require a party relying on a non-English document to submit a translation of the document into English and an affidavit “attesting to the accuracy of the translation”.

However, it added that even if the board erred by accepting Olympus’ submission of the ‘551 patent, the “error is harmless”.

On the second argument, and the finding by the board that Perfect’s inventor failed to prove he came up with the invention first, the court said that “the standard demanded by the board is too exacting and in conflict with our precedent”.

The court remanded the board’s determination that Perfect failed to antedate JP ‘551 and vacated the decision invalidating claims 11, 38, 41–44, 46, 47 and 49 of the ‘384 patent.

Bob Freitas, partner at Freitas Angell & Weinberg, and the lawyer representing Perfect, said: "Perfect is very pleased with the court's well-written decision in its favour. We argued that the PTAB applied an erroneous standard, and the court has confirmed our position.”

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