Case: 19-1370    Document: 57     Page: 1   Filed: 04/30/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                  ______________________

 COOK GROUP INCORPORATED, COOK MEDICAL
                  LLC,
                Appellants

                             v.

         BOSTON SCIENTIFIC SCIMED, INC.,
                  Cross-Appellant
              ______________________

       2019-1370, 2019-1372, 2019-1375, 2019-1377
                ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2017-
 00133, IPR2017-00134.
                  ______________________

                  Decided: April 30, 2020
                  ______________________

     LAURA A. LYDIGSEN, Brinks Gilson & Lione, Chicago,
 IL, argued for appellants. Also represented by JEFFRY M.
 NICHOLS, SARAH GOODMAN, ANDREW MCELLIGOTT, JASON
 WAYNE SCHIGELONE.

    DAVID A. CAINE, Arnold & Porter Kaye Scholer LLP,
 Palo Alto, CA, argued for cross-appellant. Also represented
 by MATTHEW WOLF, Washington, DC.
                   ______________________
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 2     COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                        INC.


     Before PROST, Chief Judge, DYK and O’MALLEY, Circuit
                            Judges.
 O’MALLEY, Circuit Judge.
      This case arises from the final written decisions of the
 Patent Trial and Appeal Board (“Board”) in two related in-
 ter partes reviews (“IPRs”). Cook Group Inc. and Cook
 Medical LLC (collectively “Cook”) appeal the Board’s find-
 ing that Cook failed to demonstrate by a preponderance of
 the evidence the unpatentability of claims 4–6, 15, and 20
 of U.S. Patent No. 8,709,027 (“’027 patent”). Cook Grp. Inc.
 v. Bos. Sci. Scimed, Inc., No. IPR2017-00133, 2018 Pat.
 App. LEXIS 10662 (P.T.A.B. Nov. 3, 2018); Cook Grp. Inc.
 v. Bos. Sci. Scimed, Inc., No. IPR2017-00134, 2018 Pat.
 App. LEXIS 10663 (P.T.A.B. Nov. 3, 2018). Boston Scien-
 tific Scimed, Inc. (“Boston”) cross-appeals the Board’s find-
 ing that claims 1–3, 7–14, and 16–19 of the ’027 patent are
 unpatentable. Because the Board erred in its analysis of
 claims 4–6, 15, and 20, we vacate and remand to the Board
 for further consideration of those claims. On Boston’s
 cross-appeal, we find no error in the Board’s decision and
 affirm.
                        I. BACKGROUND
                       A. The ’027 Patent
     The ’027 patent issued to Boston on April 29, 2014. It
 discloses a reversibly closeable compression clip for endo-
 scopically stopping bleeding of blood vessels along the gas-
 trointestinal tract. ’027 patent, col. 2, ll. 59–63. Claims 1
 and 20 are representative of the claims at issue on appeal:
       1. A medical device, comprising:
          a clip having a first clip leg having a first
          inner surface and a second clip leg having
          a second inner surface;
          a control member extending from a proxi-
          mal actuator to the clip; and
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 COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,      3
 INC.


        a linkage operably associated with the con-
        trol member to spread the first and second
        clip legs apart from one another into a tis-
        sue-receiving configuration as the control
        member is moved distally relative to the
        clip, the linkage contacting the inner sur-
        faces of the first and second clip legs to
        drive the first and second clip legs radially
        outward as the control member is moved
        distally relative to the clip.
                          ***
    20. A method, comprising:
        inserting into a body a medical device com-
        prising a clip having a first clip leg having
        a first inner surface and a second clip leg
        having a second inner surface, a control
        member extending from a proximal actua-
        tor to the clip and a linkage coupled to the
        control member;
        positioning the medical device at a desired
        deployment location;
        moving the control member distally to
        cause the clip to move distally relative to a
        sleeve housing at least a portion of the clip
        therein, the movement causing the linkage
        to contact the first and second inner sur-
        faces to drive the first and second clip legs
        radially outward to a tissue-receiving con-
        figuration;
        adjusting a position of the clip so that tar-
        get tissue is received between the first and
        second clip legs;
        drawing the control member proximally
        relative to the sleeve to draw the clip into
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 4    COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                       INC.


          the sleeve to receive the target tissue be-
          tween the first and second clip legs; and
          applying a proximal tensile force of at least
          a threshold level to the control member to
          separate a link coupling the control mem-
          ber to the clip.
 Id. at col. 15, l. 33– col. 17, l. 6.
                            B. Prior Art
     Cook’s petitions asserted several grounds of unpatent-
 ability based on the following prior art references.
     Malecki. U.S. Patent No. 5,626,607 (“Malecki”) issued
 on May 6, 1997. J.A. 169. Malecki discloses a clamp that
 can be used to clamp blood vessels or other body parts dur-
 ing medical procedures. J.A. 201. Two Malecki embodi-
 ments are relevant to this appeal. Embodiment #2 is
 depicted in Figure 25:




 J.A. 186. Figure 25 shows a clamp 304B and a clamp posi-
 tioner 306B. J.A. 207. The clamp 304B engages with the
 clamp positioner 306B via engagement between square
 opening 384 on the clamp positioner and the square outer
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 INC.


 surface 392 of jaw extension 320B. J.A. 208. In Malecki
 Embodiment #2, the operator turns the hollow drive body
 346B using handle 394 while the stabilizing rod 378 is pre-
 vented from rotating via handle 380. Id. The rotation
 causes jaw extension 320B and actuator housing 324B to
 engage, further causing the actuator housing 324B to move
 relative to the jaws 308B, 310B. Id.
     Malecki Embodiment #1 is Depicted in Figure 28A:




 J.A. 189. The clamp of Malecki Embodiment #1 is applied
 using a clamp positioner similar to clamp positioner 306B
 seen in Figure 25. J.A. 208. In Embodiment #1, hex-head
 400 is rotated while base 396 is kept stable by the clamp
 positioner. Id.
     Sackier. U.S. Patent No. 5,749,881 (“Sackier”) issued
 on May 12, 1998 for a “Laparoscopic Surgical Clamp.” J.A.
 229. Sackier discloses a clamp that can be moved between
 a free (open) state and operable (closed) state for use in oc-
 cluding portions of the body during laparoscopic surgery.
 The device is designed to fit within the trocar used to per-
 form the surgery. J.A. 238. Sackier also discloses a clamp
 applier that contains a means to engage and disengage the
 clamp jaws. J.A. 242. The relevant aspects of Sackier are
 depicted in Figures 15–17:
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 6       COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                          INC.




 J.A. 9771. 1
     Nishioka. U.S. Patent No. 5,843,000 (“Nishioka”) is-
 sued on December 1, 1998 for “Optical Biopsy Forceps and
 Method of Diagnosing Tissue.” J.A. 215. Nishioka dis-
 closes an integrated optical biopsy forceps device. Id. The
 device includes a pair of cutting jaws that are drawn to-
 gether via control links. J.A. 225–26.
     Matsuno. U.S. Patent No. 5,766,189 (“Matsuno”) is-
 sued on June 16, 1998 for a “Clip Device.” J.A. 256.
 Matsuno discloses a medical clip device with a clip that is
 biased toward the open position but can be closed by a clip
 squeezing ring. J.A. 265.
     Shinozuka.      Japanese Patent Application No.
 S58-211381 (“Shinozuka”) is an unexamined patent filed
 on November 10, 1983, and published on June 8, 1985, for
 a “Biotissue Clip Device.” J.A. 252. Shinozuka discloses a


     1   The ’027 patent issued with some figures that do
 not have reference numbers. See J.A. 235–37. For conven-
 ience, we include the numbered figures submitted by Bos-
 ton during prosecution, rather than the figures from the
 issued patent.
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 COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,        7
 INC.


 clip device that can be inserted into the body, along with a
 control wire, during an endoscopy. J.A. 252–53. Once the
 clip is closed by a clip-tightening ring, it can be disengaged
 from the control wire via jiggling and left within the body.
 J.A. 254.
                     C. IPR Proceedings
     Cook filed IPR2017-00133 and IPR2017-00134 on Oc-
 tober 27, 2016. J.A. 564, 2405. The two IPRs contained a
 combined seven grounds of unpatentability and raised
 challenges to every claim of the ’027 patent. J.A. 517, 2317.
 In May 2017, the Board issued institution decisions, insti-
 tuting on only two grounds. J.A. 656, 2513. Cook re-
 quested reconsideration of the Board’s decision not to
 institute on claim 20 in IPR2017-00134 and the Board later
 granted that request. J.A. 2529–39, 2712–24. The Board
 held two hearings in February and April 2018. J.A. 1337–
 429, 3704–94.
     While the Board’s decision was pending, the Supreme
 Court issued SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348
 (2018). Pursuant to SAS, the Board instituted on all pre-
 viously uninstituted grounds. J.A. 1440–47, 3795–802.
 The Board held a third hearing in September 2018 and is-
 sued its final written decisions on November 3, 2018. J.A.
 1, 47, 1869–947.
      IPR2017-00133. The Board considered three grounds
 for finding unpatentability of the claims of the ’027 patent
 in IPR2017-00133: (1) claims 1–3 and 7–12 as anticipated
 by Nishioka; (2) claims 13–14 and 16–19 as obvious in view
 of Nishioka and Shinozuka; and (3) claims 4–6 and 13–20
 as obvious in view of Nishioka and Matsuno.
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 8   COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                      INC.


     On the first ground (anticipation by Nishioka), the
 Board found claims 1–3 and 7–12 unpatentable as antici-
 pated by Nishioka Figure 8:




 J.A. 20, 35. Boston argued before the Board that Nishioka
 does not disclose a clip. J.A. 21. The Board construed “clip”
 to mean, “a device having compression legs and capable of
 applying a pinching pressure.” J.A. 11. Boston argued that
 Nishioka’s jaws applied a shear force, not a compression
 force. J.A. 21. The parties presented conflicting expert tes-
 timony on the question. J.A. 21–22. The Board credited
 Cook’s expert’s testimony and found that Nishioka dis-
 closes a clip within the claim construction. J.A. 22.
      Boston further disputed whether Nishioka discloses
 the claimed “linkage contacting the inner surfaces of the
 first and second clip legs.” J.A. 17. Cook relied on Figure
 8 and the testimony of its expert to support its argument
 that Nishioka discloses the limitation. Boston argued, in
 response, that Figure 8 shows the linkages attached to the
 sidewalls of the device. Once again, the Board credited
 Cook’s position. It found that Nishioka discloses the dis-
 puted limitation. J.A. 27–28.
    On the second ground (obviousness over Nishioka and
 Shinozuka), the Board found Cook had failed to carry its
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 COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,        9
 INC.


 burden to prove the challenged claims unpatentable as ob-
 vious in view of Nishioka and Shinozuka. J.A. 40. The
 Board explained that Cook had failed to establish that a
 person of ordinary skill in the art (“POSA”) would have
 been motivated to combine the two references. J.A. 38–40.
 Similarly, on the third ground, the Board found Cook had
 failed to establish a motivation to combine Nishioka and
 Matsuno. The Board explained that the combinations
 would result in the loss of key functions of Nishioka. J.A.
 40–42.
      IPR2017-00134. The Board considered four grounds
 for finding unpatentability of the claims of the ’027 patent
 in IPR2017-00134: (1) claims 1, 3–6, 13–15, 17, and 20 as
 anticipated by Sackier; (2) claims 1–20 as obvious over of
 Sackier and Nishioka; (3) claims 1, 3–11, and 20 as antici-
 pated by Malecki; and (4) claims 1 and 3–11 as obvious over
 Malecki.
     On the first ground (anticipation by Sackier), the Board
 found that Cook had failed to prove the challenged claims
 unpatentable. As to independent claim 1, it found that
 Sackier does not disclose moving the control member rela-
 tive to the clip, as required by claim 1. J.A. 66. On inde-
 pendent claim 20, it found that Cook failed to establish
 anticipation because its argument combined aspects of two
 different embodiments in Sackier. J.A. 73.
     On the second ground (obviousness over Sackier and
 Nishioka), the Board agreed with Cook that claims 1–3, 7–
 14, and 16–19 were unpatentable as obvious over the as-
 serted combination. It found that the references disclose
 each limitation of the claims. As in IPR2017-00133, the
 Board found that Nishioka discloses the “linkage contact-
 ing the inner surfaces of the first and second clip legs” lim-
 itations of the claims. J.A. 81–82, 100–01. The Board
 found that a POSA would have been motivated to combine
 the two references with a reasonable expectation of suc-
 cess. J.A. 82–87.
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 10   COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                       INC.


      On the second ground (obviousness over Sackier and
 Nishioka), the Board further found that Cook failed to
 prove the unpatentability of claims 4–6, 15, and 20. Each
 of these claims include a “frangible link” limitation. The
 Board construed “frangible link” to mean a “link between
 at least two components that become unlinked when a ten-
 sile load is applied.” J.A. 55. Boston relied on the specifi-
 cation and expert testimony to contend that Sackier’s
 clamp disconnects from the clamp applier via a lateral
 opening, rather than via a frangible link. J.A. 92–93. Con-
 trary to Boston’s position, Cook argued that Sackier dis-
 closes an annular snap connection, a type of frangible link.
 J.A. 93. The Board found the evidence on this point “evenly
 divided” and concluded that Cook had not carried its bur-
 den to prove obviousness of the claims with the “frangible
 link” limitations. J.A. 93–94, 102–103, 105–106. The
 Board declined to consider Boston’s Preliminary Patent
 Owner Response, where Boston had advocated Cook’s un-
 derstanding of the reference. See J.A. 2445
     On the third and fourth grounds, the Board found that
 Cook failed to carry its burden to prove any of the chal-
 lenged claims unpatentable as anticipated by or obvious
 over Malecki. Malecki discloses two distinct embodiments.
 The Board’s analysis focused exclusively on Malecki Em-
 bodiment #1. See J.A. 107–112. The Board found no distal
 movement of stabilizing rod 378 in that embodiment, as re-
 quired by the claims. J.A. 111. The Board did not, how-
 ever, separately consider Malecki Embodiment #2 in its
 final written decision, despite the fact that Cook had ar-
 gued in its petition and during oral argument that Malecki
 Embodiment #2, not Malecki Embodiment #1, anticipated
 claim 20. See J.A. 2390–96, 4352.
    The parties timely appealed the Board’s final decisions.
 We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
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                       II. DISCUSSION
     Our review is limited in an appeal from the Board. We
 review the Board’s factual findings for substantial evidence
 and the Board’s legal conclusions de novo. IPCom GmbH
 & Co. v. HTC Corp., 861 F.3d 1362, 1369 (Fed. Cir. 2017).
 “Substantial evidence . . . means such relevant evidence as
 a reasonable mind might accept as adequate to support a
 conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229
 (1938).
           A. The Board Erred in Its Anticipation
             Analysis of Claim 20 Over Malecki
      Cook argues that the Board committed two legal errors
 in its analysis of claim 20: (1) it failed to address Malecki
 Embodiment #2, the basis of Cook’s anticipation argument
 on claim 20 and, (2) it misunderstood claim 20 as including
 a limitation not found in the claim. Appellant’s Br. 31–40.
 The relevant limitation of claim 20 provides: “moving the
 control member distally to cause the clip to move distally
 relative to a sleeve housing at least a portion of the clip
 therein . . . .” ’027 patent, col. 16, ll. 60–62.
     Cook argued in its petition that claim 20 is anticipated
 by Malecki Embodiment #2. J.A. 2390–96. In the final
 written decision, the Board did not address Malecki Em-
 bodiment #2, considering only Embodiment #1 when ad-
 dressing Cook’s arguments. See J.A. 107–12.
     Cook argues that the Board’s failure to address Mal-
 ecki Embodiment #2 was a violation of the Board’s obliga-
 tion to address all ground of unpatentability raised in the
 petition. Appellant’s Br. 33 (citing AC Techs. S.A. v. Ama-
 zon.com, Inc., 912 F.3d 1358, 1364 (Fed. Cir. 2019)). Cook
 further argues that the Board’s failure to address Embodi-
 ment #2 contravenes the requirement of the APA that the
 “agency tribunal must present a full and reasoned expla-
 nation of its decision.” Appellant’s Br. 33 (quoting In re
 Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002)). Thus, Cook
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 12   COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                       INC.


 argues that the Board’s decision is not in accordance with
 the law and should be vacated. Boston does not dispute
 Cook’s contention that the Board’s failure to address Em-
 bodiment #2 was error. See Appellee’s Br. 43–45. We agree
 that the Board’s failure to address Cook’s Embodiment #2
 arguments was error. The only question remaining is
 whether this error was harmless.
      Cook argues that the Board’s failure to address Mal-
 ecki Embodiment #2 was not harmless error. Appellant’s
 Br. 36–38. Boston responds that the Board’s error was
 harmless because the Board found that stabilizing rod 378,
 which appears in both embodiments, does not move dis-
 tally. Appellee’s Br. 44 (citing J.A. 111). Specifically, the
 Board, relying on the portion of the specification Cook ar-
 gues discloses the key aspect of Embodiment #2, found that
 the specification “does not describe any distal movement of
 stabilizing rod 378, but rather ‘rotation of the actuator
 housing 324B,’which ‘moves the actuator housing 324B rel-
 ative to the jaws 308B, 310B.’” J.A. 111 (citing J.A. 208,
 col. 17, ll. 7–10). According to Boston, given this citation
 to the correct portion of the specification, the Board’s anal-
 ysis of stabilizing rod 378 in the context of Embodiment #1
 applies equally to Embodiment #2. Appellee’s Br. 44.
     Cook responds that the Board’s analysis of Embodi-
 ment #1 is insufficient to support its conclusion as to Em-
 bodiment #2 because the two embodiments work
 oppositely. Appellant’s Reply Br. 9–14. In Embodiment
 #1, the operator turns the inner shaft, via handle 380, to
 effectuate opening and closing of clip 302C. J.A. 208, col.
 17, ll. 55–57. In Embodiment #2, the operator turns the
 hollow drive body 346B using handle 394 while stabilizing
 the inner shaft against movement. Id. at col. 17, ll. 30–34.
     Cook additionally argues that the Board based its deci-
 sion on a legally erroneous interpretation of claim 20. Ap-
 pellant’s Br. 38–40. According to Cook, in its final written
 decision, the Board mistakenly considered whether claim
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 20’s control member moves “distally relative to the clip.”
 J.A. 107–12. Cook argues that the Board’s failure to con-
 sider the actual language of claim 20 in making its decision
 requires that the decision be vacated and remanded. Ap-
 pellant’s Br. 39–40. Boston responds that the Board’s mis-
 characterization was harmless because, although the claim
 does not require that the control member move distally rel-
 ative to the clip, it does require that the control member
 “move distally.” Appellee’s Br. 44–45. The Board expressly
 found that the portion of the specification Cook relied on
 did not disclose “any distal movement of the stabilizing
 rod.” J.A. 111. Thus, Boston argues that any mischarac-
 terization by the Board was immaterial.
      It is not possible for us to discern, on this record,
 whether the Board’s failure to consider Malecki Embodi-
 ment #2, and its failure to evaluate the actual language of
 claim 20, were harmless. To do so would require us to, in
 the first instance, construe the language of claim 20’s “dis-
 tal movement” limitation and to decide, as a factual matter,
 how the two Malecki embodiments operate. Those deter-
 minations are properly put to the Board. We therefore va-
 cate the Board’s decision that Cook failed to prove that
 Malecki anticipates claim 20. We remand to the Board for
 it to consider whether, given the claim’s actual language,
 Malecki Embodiment #2 anticipates claim 20.
        B. The Board Erred in Refusing to Consider
       Boston’s Preliminary Patent Owner Response
     Cook argues that the Board erred in finding that Cook
 did not meet its burden of proving obviousness of claims 4–
 6, 15, and 20 over Sackier combined with Nishioka. Appel-
 lant’s Br. 41–62. Each of those claims require that the clip
 detach from the control member via the application of
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 14       COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                           INC.


 tensile force. 2 The Board found the evidence was “evenly
 divided” on whether Sackier discloses a frangible link (i.e.
 one that separates via tensile force) or a connection
 wherein the clamp applier engages laterally with the clip
 via a lateral opening. J.A. 93.
      The parties’ dispute centers on the nature of the rela-
 tionship between the ball of Sackier Figure 15 and the
 socket of Sackier Figure 16. Cook’s position is that Sackier
 discloses a clip/control member combination that connect
 and disconnect via a snap-fit connection (e.g., the way a
 ballpoint pen’s lid connects to the pen). Boston Scientific’s
 position is that Sackier discloses a clip/control member
 combination wherein the ball engages with the socket from
 the side and thus cannot be disengaged via tensile force.
 Cook argues that the Board’s finding that the evidence was
 “evenly divided” between the parties’ two theories is not
 supported by substantial evidence. Appellant’s Br. 43–48.
      In reaching its conclusion, the Board relied on three
 pieces of evidence as support for the plausibility of Boston’s
 position: (1) Sackier at column 1, lines 54–57 (J.A. 238),
 (2) Sackier at column 10, lines 22–24 (J.A. 242), and
 (3) paragraph 95 of Boston’s expert’s declaration (J.A.
 14807–08). See J.A. 91–94. The first citation comes from
 the “Background of the Invention” and provides that, in
 laparoscopic surgery, undesirable separation of the clamp
 from the applier cannot be tolerated. J.A. 238, col. 1, ll. 54–
 57. The second citation provides that the dimensions of
 Sackier’s ball are greater than the socket but that the
 socket portion can open laterally to receive the ball:




      2   Most claims expressly require “tensile force.” See
 ’027 patent, col. 15, l.33–col.17, l. 6. Others require a “fran-
 gible link,” which the Board construed as “becom[ing] un-
 linked when a tensile load is applied.” J.A. 91.
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     In this embodiment the cylinder 174 has an inside
     diameter which is greater than the diameter of the
     ball 163. The flange 176 has an inside diameter
     greater than the recess 161, but less than the di-
     ameter of the ball 163.
     Both of the cylinders 170 and 174 can be configured
     to open laterally in order to permit the associated
     flanges 172 and 176 to engage the recesses 165 and
     161. In this operative position illustrated in F1G.
     17, the shaft 58a can be moved relative to the tube
     23a to engage the slide 47a and move it relative to
     the supporting structure 34a and the jaws 36a, 38a.

 J.A. 242, col. 10, ll. 20–31. The third citation is to Boston’s
 expert’s testimony that Sackier is designed to prevent un-
 linking via the application of a tensile load. J.A. 1407–08,
 ¶ 95. The Board found Boston’s evidence credible. J.A. 93.
 The Board also considered Cook’s argument that, gram-
 matically, Sackier says the flanges “open laterally” (verb
 form of “open”), not that the clamp and applier engage via
 “lateral openings” (noun form of “opening”). J.A. 93. And
 the Board dismissed Cook’s examples of annular snap con-
 nections as unrelated to medical devices. Id. The Board
 did not address statements Boston made in its Preliminary
 Patent Owner Response. During the hearing, the Board
 explained that it would not consider such statements. 3 J.A.
 1380–81.



     3  In a related IPR, the Board addressed the Sackier
 attorney admission issue in its final written decision. Cook
 Grp. Inc. v. Bos. Sci. Scimed, Inc., No. IPR2017-00135,
 2018 Pat. App. LEXIS 10664, *67–68 (P.T.A.B. Nov. 15,
 2018). The Board said that it had “considered Petitioner’s
 argument that Patent Owner changed its position from the
 Preliminary Response” and concluded that it “will not bind
 Patent Owner to attorney arguments made in its
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 16   COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                       INC.


     Cook argues that the Board’s decision is not supported
 by substantial evidence because the Board failed to con-
 sider Boston’s Preliminary Patent Owner Response, in
 which Boston explained:
      Sackier teaches that the clamp applier in Figure 16
      is opened laterally (i.e., widened) to attach the
      clamp. Specifically, “[b]oth of the cylinders 170 and
      174 can be configured to open laterally in order to
      permit the associated flanges 172 and 176 to en-
      gage the recesses 165 and 161.” By opening later-
      ally, the cylinders are moved outwardly, thereby
      widening the cylinder to fit the ball into the clamp
      applier and permitting the flanges to engage the
      associated recesses. In fact, Sackier teaches that
      the lateral opening of the clamp applier is neces-
      sary to engage the clamp because the flange 172
      “has an inside diameter . . . less than the diameter
      of the flange 167” and flange 176 “has an inside di-
      ameter . . . less than the diameter of the ball 163.”
      Thus, the ball will not fit into the clamp applier
      without opening the clamp applier laterally.
 J.A. 2445 (citations omitted). Cook argues that the Board
 should have considered this admission and that, if the
 Board had considered it, the Board could have reached only
 one conclusion—that claims 4–6, 15, and 20 are obvious.
 We agree that the Board should have considered Boston’s
 admission, but we do not agree that fact necessarily




 Preliminary Response.” Id. We understand the Board’s
 statement in IPR2017–00135 as articulating the same
 point it made during the hearing. That is, that the Board’s
 view was that it was inappropriate to hold a party to attor-
 ney statements made in a preliminary patent owner re-
 sponse.
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 COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,      17
 INC.


 requires a finding by us that Cook satisfied it burden to
 prove the relevant claims unpatentable.
     The Board erred in refusing to consider Boston’s Pre-
 liminary Patent Owner Response admission when it was
 weighing the evidence supporting each side’s understand-
 ing of Sackier. This is not a question we have expressly
 addressed before. It is well established, however, that a
 statement made by a party in an individual or representa-
 tive capacity may be offered as evidence against that party.
 Oscanyan v. Arms Co., 103 U.S. 261, 263 (1880); Tyler Re-
 frigeration v. Kysor Indus. Corp., 777 F.2d 687, 690 (Fed.
 Cir. 1985); Fed. R. Evid. 801(d)(2)(A). We hold, therefore,
 that an admission in a preliminary patent owner response
 is evidence appropriately considered by a factfinder. The
 amount of weight to give an admission is, however,
 properly considered in the first instance by the factfinder.
 A factfinder may give this admission great weight, some
 weight, or zero weight, depending on the context. Accord-
 ingly, we vacate the Board’s finding that Sackier and Nish-
 ioka do not render claims 4–6, 15, and 20 obvious, and
 remand for the Board to consider, in the first instance, Bos-
 ton’s admission and the impact of that admission on the
 balance of the evidence.
       C. Substantial Evidence Supports the Board’s
            Finding That Cook Failed to Prove
             Claims 4–6, 15, and 20 Obvious
               Over Nishioka and Matsuno
     Cook argues that the Board erred when it found that
 Cook did not meet its burden to establish that a POSA
 would have been motivated to combine Nishioka with
 Matsuno. Appellant’s Br. 63–76. After considering Cook’s
 evidence and argument on motivation to combine, the
 Board explained:
     [W]e are left with the loss of the key functions of
     the Nishioka device – to identify and excise tissue
     samples. A conclusory statement that the person
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 18   COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                       INC.


      of ordinary skill in the art could modify Nishioka to
      obtain the same benefits for the Nishioka clip that
      are disclosed in Matsuno fails to address motiva-
      tion to make the combination in the first place.
      Moreover, the loss of both functions in Nishioka
      again is such that it would not satisfy its intended
      purpose. We find this combination most likely mo-
      tivated solely by impermissible hindsight.
 J.A. 42. Cook argues that this was error because the Board:
 (1) erred in finding no motivation to combine unless the
 prior art reference retained its “key functions,” (2) errone-
 ously failed to consider Cook’s post-institution evidence,
 and (3) erred by failing to provide adequate reasons for re-
 jecting the combination. Appellant’s Br. 64–73.
     First, Cook argues, we have not required preservation
 of all desirable properties of the prior art to find obvious-
 ness. For example, we have affirmed the Board’s finding
 of obviousness despite the fact that the proposed modifica-
 tion to the primary prior art reference would render it in-
 operable for its intended purpose. In re Urbanski, 809 F.3d
 1237, 1242–43 (Fed. Cir. 2016).
     The Board did not err as a matter of law when it ex-
 plained that the loss of key functions in the primary refer-
 ence here supports a finding of no motivation to combine.
 Cook is correct that the loss of key functionality does not
 necessitate a finding of nonobviousness where the pa-
 tentee’s “claims do not require the [primary reference]’s
 benefit that is arguably lost by the combination with [the
 second reference].” See Urbanski, 809 F.3d at 1244 (ex-
 plaining that loss of key functionality can be overcome by
 evidence that a POSA would nevertheless be motivated to
 combine references). In DePuy, however, we explained,
 “[a]n inference of nonobviousness is especially strong
 where the prior art’s teachings undermine the very reason
 being proffered as to why a person of ordinary skill would
 have combined the known elements,” i.e., where a prior art
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 COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,       19
 INC.


 reference “teaches away” from the proposed modification.
 DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
 F.3d 1314, 1326 (Fed. Cir. 2009). Together, these cases
 stand for the proposition that, where the motivation to
 combine rests on a modification alleged to improve the pri-
 mary reference, as is the case here, the Board may consider
 whether the modification renders the reference inoperable
 for its intended function in deciding whether a POSA would
 have a motivation to combine the references, even if that
 function is not a feature of the claimed device at issue. The
 Board did not err in finding that this is not a situation
 where “one of ordinary skill would have been motivated to
 pursue the desirable properties taught by [the secondary
 reference], even at the expense of foregoing the benefit
 taught by [the primary reference].” Urbanski, 809 F.3d at
 1243. The Board did not improperly expand that proposi-
 tion to a per se rule in this case. Rather, the Board properly
 weighed the loss of key functions as a relevant factor in the
 motivation to combine analysis.
     Second, Cook argues that the Board failed to consider
 Cook’s post-institution evidence—including expert testi-
 mony and medical articles. It is well established that the
 Board must consider all record evidence in its final written
 decision. See Genzyme Therapeutic Prod. Ltd. v. Biomarin
 Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016). The
 Board expressly considered only paragraphs 64–65 of
 Cook’s expert’s declaration in the section of the final writ-
 ten decision discussing the combination of Nishioka and
 Matsuno. J.A. 41–42. The Board, however, considered
 Cook’s post-institution evidence in its discussion of Nish-
 ioka in combination with Shinozuka. J.A.38–39. The
 Board cross-referenced that portion of the decision when
 discussing the Nishioka/Matsuno combination. J.A. 42.
 The Board therefore properly considered all the evidence
 before it and did not err.
    Third, Cook argues that the Board’s analysis is inade-
 quate and therefore not in accordance with the law.
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 20   COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                       INC.


 Appellant’s Br. 72–73. We do not agree. The Board fully
 considered the record before it. We conclude that the
 Board’s finding that a POSA would not be motivated to
 combine Nishioka and Matsuno is supported by substantial
 evidence.
        D. Substantial Evidence Supports the Board’s
               Finding that Claims 1–3, 7–14,
                and 16–19 are Unpatentable
     Boston cross-appeals the Board’s determination that
 claim 1–3, 7–14, and 16–19 are unpatentable over Nishioka
 and over Nishioka in combination with Sackier. We have
 considered Boston’s arguments. We conclude that the
 Board’s decision as to these claims is in accordance with
 the law and supported by substantial evidence. We there-
 fore affirm as to all issues raised in Boston’s cross-appeal.
                       III. CONCLUSION
     In sum, we vacate and remand the Board’s decision on
 the patentability of claim 20 over Malecki and on the pa-
 tentability of claims 4–6, 15, and 20 over Sackier and Nish-
 ioka. We affirm the Board’s decisions in all other respects.
  AFFIRMED AS TO CASE NOS. 2019-1370, 2019-1375,
    2019-1377; VACATED AND REMANDED AS TO
                 CASE NO. 2019-1372
                            COSTS
      The parties shall bear their own costs.
