Accused Infringer Turns PTAB Lemons to Trial Court Lemonade

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.



Josh Sandberg

Josh Sandberg is the President and CEO of Ortho Spine Partners and sits on several company and industry related Boards. He also is the Creator and Editor of OrthoSpineNews.

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