Case: 19-1594   Document: 69     Page: 1   Filed: 04/30/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

        BOSTON SCIENTIFIC SCIMED, INC.,
                   Appellant

                            v.

 COOK GROUP INCORPORATED, COOK MEDICAL
                   LLC,
              Cross-Appellants

     ANDREI IANCU, UNDER SECRETARY OF
   COMMERCE FOR INTELLECTUAL PROPERTY
    AND DIRECTOR OF THE UNITED STATES
      PATENT AND TRADEMARK OFFICE,
                   Intervenor
             ______________________

            2019-1594, 2019-1604, 2019-1605
                ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2017-
 00435, IPR2017-00440.
                  ______________________

                 Decided: April 30, 2020
                 ______________________

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




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

     SARAH E. CRAVEN, Office of the Solicitor, United States
 Patent and Trademark Office, Alexandria, VA, argued for
 intervenor. Also represented by THOMAS W. KRAUSE,
 ROBERT J. MCMANUS, FARHEENA YASMEEN RASHEED.
                 ______________________

     Before PROST, Chief Judge, DYK and O’MALLEY, Circuit
                            Judges.
 DYK, Circuit Judge.
     Boston Scientific Scimed, Inc. (“Boston”) appeals from
 the final written decisions of the Patent Trial and Appeal
 Board (“Board”) in two related inter partes reviews
 (“IPRs”), Nos. 2017-00435 and -00440, finding that claims
 1–4, 6–7, 9–16, 18, and 20 and proposed amended claims
 21, 30, and 38 of U.S. Patent No. 9,271,731 (“the ’731 pa-
 tent”) are unpatentable. Cook Group Inc. and Cook Medi-
 cal LLC (collectively, “Cook”) cross-appeal from the Board’s
 finding that Cook failed to demonstrate by a preponder-
 ance of the evidence the unpatentability of claims 5, 8, 17,
 and 19 of the ’731 patent. The Director of the U.S. Patent
 & Trademark Office (“government”) intervened for the lim-
 ited purpose of determining “whether the Board, after de-
 ciding that the petitioner has prevailed on all its
 challenged claims, must decide [any] additional grounds
 [raised in the petition under] 35 U.S.C. § 318(a) and SAS
 Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).” U.S. Br. 1.
 Because the Board erred in its analysis of claims 8 and 20,
 we vacate and remand to the Board for further considera-
 tion of those claims. On all other grounds, we find no error
 in the Board’s decision and affirm.
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                           BACKGROUND
                                I
     The ’731 patent discloses a reversibly closeable com-
 pression clip for endoscopically stopping bleeding of blood
 vessels along the gastrointestinal tract. Claims 1 and 20
 are representative of the claims at issue on appeal:
     1. A medical device, comprising:
     a clip including first and second clip arms, the clip
     being movable between an open tissue receiving
     configuration in which the first and second arms
     are separated from one another by a distance se-
     lected to receive tissue there between and a closed
     configuration in which the first and second arms
     are moved inward to capture the tissue received
     therebetween; and
     an opening element engaging inner walls of the
     first and second clip arms, the opening element
     urging the first and second clip arms away from
     one another into the open tissue-receiving configu-
     ration, wherein the opening element is movable be-
     tween an expanded configuration and a retracted
     configuration to correspond to a movement of the
     clip between the open tissue receiving configura-
     tion and the closed configuration.
 J.A. 172 at 15:36–52. 1
     20. A method for capturing tissue, comprising:
     inserting a medical device comprising a clip having
     first and second clip arms to a target tissue site, the


     1   Independent claim 12 further includes “a control
 wire coupled to a proximal end of the clip and operable to
 move the clip between the open and closed configurations.”
 J.A. 172 at 16:40–42.
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                                               INCORPORATED


     clip including an opening element engaging inner
     walls of the first and second clip arms and urging
     the clip to an 5 open tissue receiving configuration;
     moving a control wire coupled to a proximal end of
     the clip distally to move the first and second clip
     arms away from one another to the open tissue re-
     ceiving configuration;
     moving the control wire proximally to move the
     first and 10 second clip arms toward one another to
     a closed tissue capturing configuration; and
     applying a proximal tensile force exceeding a
     threshold level to the control wire to separate the
     control wire from the clip.
 J.A. 173 at 17:1–15.
                              II
     Cook’s petitions asserted several grounds of unpatent-
 ability, challenging claims 1–20 of the ’731 patent based on
 U.S. Patent No. 5,626,607 (“Malecki”), U.S. Patent No.
 5,749,881 (“Sackier”), U.S. Patent No. 5,843,000 (“Nish-
 ioka”), and Japanese Patent Application No. S58-211381
 (“Shinozuka”). The Board found claims 1–3, 10–16, and 18
 unpatentable as anticipated by and obvious over Nishioka
 and claims 1–2, 4, 6–7, 9–10, 12–13, and 20 unpatentable
 as obvious over Shinozuka and Sackier. The Board found
 that Cook failed to carry its burden to prove claim 17 un-
 patentable as anticipated by or obvious over Malecki and
 to prove claim 8 unpatentable as obvious over Sackier and
 Shinozuka. The Board also rejected Boston’s proposed
 amended claims 21, 30, and 38 as obvious over a new
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 combination of references—Sackier and U.S. Patent No.
 4,733,664 (“Kirsch”). 2
    The parties timely appealed the Board’s final decisions.
 We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
                         DISCUSSION
     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).
                               I
     On appeal, Boston challenges the Board’s finding that
 claims 1–3, 10–16, and 18 unpatentable as anticipated by
 and obvious over Nishioka and that claims 1–2, 4, 6–7, 9–
 10, 12–13, and 20 unpatentable as obvious over Shinozuka
 and Sackier. Boston also challenges the Board’s rejection
 of proposed amended claims 21, 30, and 38 as obvious over
 Sackier and Kirsch.
     On cross-appeal, Cook challenges the Board’s finding
 that claim 8 is non-obvious over Shinozuka and Sackier
 and that claim 17 is not anticipated by Malecki. Cook also
 argues that it was error for the Board to not find claims 5,
 8, 17, and 19 obvious over Sackier and Kirsch in view of its
 decision finding proposed amended claims 21, 30, and 38
 obvious over these references.
      We have considered Boston’s and Cook’s arguments on
 appeal and cross-appeal. We conclude that the Board’s de-
 cisions of patentability as to claims 1–4, 6–7, 9–16, 18, and
 proposed amended claims 21, 30, and 38 are in accordance
 with the law and supported by substantial evidence. We




     2    We describe the proceeding below only as it relates
 to the claims at issue on appeal.
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 6              BOSTON SCIENTIFIC SCIMED, INC. v. COOK GROUP
                                               INCORPORATED


 therefore affirm as to all anticipation and obviousness is-
 sues related to these claims.
     Two remaining issues require discussion: the Board’s
 inconsistent analysis of claims 8 and 20, and Cook’s argu-
 ment as to claims 5, 8, 17, and 19.
                              A
     Both parties argue that the Board’s conclusions as to
 claim 8 and claim 20 are internally inconsistent. The
 Board found claim 8 not unpatentable over Shinozuka and
 Sackier while finding claim 20 unpatentable over the same
 references.
     Claim 8 requires that the “application of a proximal
 tensile force greater than the predetermined threshold
 value causes the control wire to disengage from the clip.”
 J.A. 172 at 16:4–6. Claim 20 requires “applying a proximal
 tensile force exceeding a threshold level to the control wire
 to separate the control wire from the clip.” J.A. 173 at
 17:13–15. Thus, as the parties acknowledge, both claim 8
 and claim 20 are directed to a clip detachable or separable
 via tensile force from a control wire.
     The prior art Sackier reference discloses a clamp that
 can be moved between a free (open) state and operable
 (closed) state for use in occluding portions of the body dur-
 ing laparoscopic surgery. Sackier also discloses a clamp
 applier that contains a means to engage and disengage the
 clamp jaws. The relevant aspects of Sackier are depicted
 in Figures 15–17:
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 J.A. 3694. 3
     Shinozuka discloses a clip device that can be inserted
 into the body, along with a control wire, during an endos-
 copy. Once the clip is closed by a clip-tightening ring, it can
 be disengaged from the control wire via jiggling, in the
 plane defined by axes a-b, as shown below, and left within
 the body.




     3   The Sackier patent issued with some figures that
 do not have reference numbers. See J.A. 3387. 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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                                               INCORPORATED




 J.A. 3407.
      For claim 8, the Board found that neither Sackier nor
 Shinozuka discloses disengaging the clip with tensile force,
 and the claim is thus not obvious over this combination of
 references. It explained that “Sackier’s existing ball and
 socket clamp is not detachable through the application of a
 proximal tensile force,” J.A. 55, and that, in Shinozuka,
 “[t]he movement in the ‘a’ or ‘b’ direction or a combination
 of these directions allows for the claw to essentially be ‘jig-
 gled’ or shaken off, but not pulled by a tensile load,” J.A.
 54. Since claim 20, just as claim 8, requires a control wire
 with a connection breakable from a tensile force, the
 Board’s conclusion that claim 20 is obvious over the same
 set of references is inconsistent, and a remand is required
 to address the inconsistency.
      On remand, the Board must consider the patentability
 of claim 8 without relying on its decision in IPR2017-00135
 (IPR ’135). J.A. 55 (citing Cook Grp. Inc. v. Bos. Sci.
 Scimed, Inc., No. IPR2017-00135, 2018 Pat. App. LEXIS
 10664 (P.T.A.B. Nov. 15, 2018)). In finding claim 8 not un-
 patentable in view of Sackier and Shinozuka, the Board re-
 ferred to IPR ’135 that analyzed Sackier in relation to a
 similar claim limitation, in claims 11, 15, and 17 of U.S.
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 Patent No. 8,974,371, requiring a “control element” detach-
 able via tensile force. See Cook Grp., 2018 Pat. App. LEXIS
 10664, at *73–74. In finding here that “Sackier’s existing
 ball and socket clamp is not detachable through the appli-
 cation of a proximal tensile force” with respect to claim 8,
 the Board relied primarily on its reasoning in IPR ’135.
 J.A. 55. This was error because in IPR ’135 the Board took
 little or no account of the fact that “Patent Owner changed
 its position from the Preliminary Response” regarding
 whether Sackier discloses a clip with “a link . . . that be-
 come[s] unlinked when a tensile load is applied.” Cook
 Grp., 2018 Pat. App. LEXIS 10664, at *18, *67–68, *74. As
 discussed in our decision in Cook Group Inc. v. Boston Sci-
 entific Scimed, Inc., No. 2019-1370 (Fed. Cir. 2020) (Cook
 Group I), being issued contemporaneously, we hold that
 “an admission in a preliminary patent owner response, just
 like an admission in any other context, is evidence appro-
 priately considered by a factfinder.” Id., slip op. at 17. On
 remand, the Board thus cannot rely on its reasoning in IPR
 ’135 and must make a new determination about whether
 Sackier discloses a link detachable via tensile force in light
 of Boston’s admissions made in its preliminary patent
 owner responses in the proceedings addressed in Cook
 Group I and IPR ’135.
     In rendering a decision regarding whether Sackier dis-
 closes a link detachable via tensile force, the Board must
 be consistent with the decision it renders pursuant to
 IPR2017-00134, which is vacated and remanded in Cook
 Group I.
                               B
       On cross-appeal, Cook argues that because the origi-
 nal claims of the ’731 patent (including dependent claims
 5, 8, 17, and 19 not found unpatentable by the Board) con-
 tain the same limitations as the proposed amended claims
 21, 30, and 38, which the Board rejected over Sackier and
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 10             BOSTON SCIENTIFIC SCIMED, INC. v. COOK GROUP
                                               INCORPORATED


 Kirsch, the Board should have found the original claims
 unpatentable over those references as well.
      Cook never asserted that the ’731 patent claims were
 obvious over Sackier and Kirsch in its petitions. We have
 previously rejected the argument that Cook now makes in
 Sirona Dental Systems GmbH v. Institut Straumann AG,
 892 F.3d 1349 (Fed. Cir. 2018). In Sirona, the petitioner
 argued that the Board should apply its findings from a de-
 nial of patent owner’s motion to amend original claims 1–8
 to its analysis of a claim term of “similar scope” in original
 claims 9 and 10. Id. at 1357–58. We rejected this argu-
 ment because “[w]hen analyzing the contingent motion to
 amend, the Board considered multiple references . . . that
 were not asserted together in the petition.” Id. at 1358.
 Just as in Sirona, “Petitioners [here] are, in essence, at-
 tempting to add references to the ground of unpatentability
 put forth in their petition[s].” Id. Because Cook never as-
 serted that the ’731 patent claims are obvious over Sackier
 and Kirsch in its petitions, “[w]e see no error in the Board’s
 decision not to decide grounds of unpatentability not raised
 in the petition[s].” Id.
      Cook contended at oral argument that “if th[is] court
 doesn’t take action, . . . Boston is going to assert those
 claims [5, 8, 17, and 19 in an infringement proceeding] . . .
 and then point to [35 U.S.C. § 315(e)] of the Patent Act gov-
 erning Inter Partes Review and say[ Cook] can’t challenge
 [those claims] even though there’s a finding of invalidity
 [by the Board].” Oral Arg. 17:54–18:18, available at
 http://oralarguments.cafc.uscourts.gov/default.aspx?fl=
 2019-1594.mp3. But because this theory—i.e., that claims
 5, 8, 17, and 19 of the ’751 patent are invalid under a theory
 of collateral estoppel in a district court proceeding—is not
 one Cook “reasonably could have raised” in the IPR pro-
 ceeding, Cook may still assert this theory in district court.
 We of course do not address the merits of the collateral es-
 toppel theory.
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                              II
     In its opening cross-appeal brief, Cook argued that “the
 Board violated the Supreme Court’s mandate in SAS”
 when the Board declined to address Cook’s alternative ar-
 guments with respect to claims it found unpatentable on
 other grounds. Cook Op. Br. 84–86. The government in-
 tervened asking us to find that “[t]he Board has the discre-
 tion to decline to decide additional instituted grounds once
 the petitioner has prevailed on all its challenged claims.”
 U.S. Br. 3. Cook clarified at oral argument that it does not
 dispute that the Board has such discretion. We agree that
 the Board need not address issues that are not necessary
 to the resolution of the proceeding.
                        CONCLUSION
     We vacate and remand the Board’s decision on the pa-
 tentability of claims 8 and 20 over Shinozuka and Sackier.
 We affirm the Board’s decisions in all other respects.
      AFFIRMED IN PART AND VACATED AND
             REMANDED IN PART
                           COSTS
     Each party shall bear its own costs.
