Accused Infringer Turns PTAB Lemons to Trial Court Lemonade

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By Peter Leung

May 9 — A defendant in a medical device patent trial used the Patent Trial and Appeals Board's reasoning for denying its petition to later successfully attack the same patent in court.

The U.S. District Court for the District of Arizona granted defendant MedShape Inc.'s partial motion for summary judgment May 6, finding that several claims in the asserted patent were invalid because of indefiniteness (Cayenne Med., Inc. v. MedShape, Inc., 2016 BL 146176, D. Ariz., No. 2:14-cv-0451-HRH, 5/6/16).

MedShape convinced the court to largely adopt the PTAB's analysis, even though board decisions are not binding on district courts. In fact, the court found the PTAB analysis provided “compelling evidence” in MedShape's favor.

The PTAB had declined to institute trial on MedShape's inter partes review petition against some of Cayenne Medical Inc.'s patent claims, finding them indefinite. It said that the term “substantially different” used in the claims could not be understood by a skilled artisan with reasonable certainty.

Inter partes review proceedings are used to challenge patent claims, but only on the grounds that they are obvious or lack novelty in light of the prior art. Because the challenged claims here were indefinite, the PTAB said it could not evaluate MedShape's novelty and obviousness arguments.

U.S. Patent No. 8,435,294 describes medical devices and methods for fixing tendons to bones. Cayenne sued MedShape for infringing claims 6-11, 13 and 16-18 of the patent.

After the PTAB declined to institute trial on claims 6-11 and 13 of the patent, MedShape moved for partial summary judgment at the district court, arguing that the term “substantially different” is indefinite.

The district court granted the motion. It explained that the PTAB's finding of indefiniteness should be “given great weight” even though it is not binding and considered it “compelling evidence.”

The court said the phrase “substantially different” is a “term of degree.” Terms of degree must provide enough certainty to one skilled in the art when read in the context of an invention.

Cayenne's arguments that the term “substantially different” is definite when read in context didn't sway the court. First, the court said a declaration from one of the named inventors is “particularly inappropriate” when evaluating whether a patent claim is too indefinite to one ordinarily skilled in the art.

The plaintiff's claim that the drawings in the patent provided examples that would make the term “substantially different” definite was also unconvincing.

Nothing in the specification would direct a skilled artisan to focus on those particular figures out of the 50 in the patent, the court said. And even if a skilled artisan focused on the drawings, nothing in them provides objective bounds to the meaning of “substantially,” nor anything that would allow one skilled in the art to determine with reasonable certainty when a difference is big enough to be substantial.

After analyzing the drawings, the skilled artisan would still be left to wonder what other possible features or other embodiments fall within the “substantially different” claim limitation, the court explained.

Similarly, the fact that the patent examiner withdrew his rejection for indefiniteness after the patentee added “substantially different” didn't convince the court. Neither that fact, nor anything else in the prosecution history, would make the term definite to a skilled artisan, it said.

Judge H. Russel Holland issued the ruling. Snell & Wilmer LLP and Knobbe Martens Olson & Bear LLP represented Cayenne. Osborn Maledon PA and Hoffmann & Baron LLP represented MedShape.

To contact the reporter on this story: Peter Leung in Washington at

To contact the editor responsible for this story: Mike Wilczek in Washington at

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