Case: 19-1413    Document: 60     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        NOTE: This disposition is nonprecedential.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
              ______________________

                   2019-1413, 2019-1422
                  ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 00135.
                  ______________________

                  Decided: April 30, 2020
                  ______________________

     JEFFRY M. NICHOLS, Brinks Gilson & Lione, Chicago,
 IL, argued for appellants. Also represented by SARAH
 GOODMAN, LAURA A. LYDIGSEN, 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.
 PROST, Chief Judge.
     Cook Group Inc. and Cook Medical LLC (collectively
 “Cook”) petitioned for inter partes review (“IPR”) of several
 claims of U.S. Patent No. 8,974,371 (“the ’371 patent”). The
 Patent Trial and Appeal Board (“Board”) delivered a mixed
 result finding Cook had met its burden of showing that
 some claims are unpatentable as obvious, but that Cook
 had not met its burden of showing that other claims are
 unpatentable as either anticipated or obvious.
      Cook appeals the Board’s finding that claims 11–13, 15,
 and 17 are not unpatentable as either anticipated or obvi-
 ous over the cited prior art. Boston Scientific Scimed, Inc.
 (“Boston”) cross-appeals the Board’s finding that claims 1,
 3–5, and 10 are unpatentable as obvious over the cited
 prior art. With respect to Cook’s appeal, we conclude that
 the Board’s determination as to claims 11, 15, and 17 must
 be reversed due to an erroneous claim construction, but we
 affirm the Board’s determination as to claims 12 and 13.
 On Boston’s cross-appeal, we find no error in the Board’s
 decision and affirm.
                               I
                              A
     The ’371 patent generally relates to hemostatic clips
 that are used to stop bleeding during surgical procedures.
 Claim 11 is representative for the purposes of this appeal:
     11. An apparatus for applying clips to tissue within
     a living body, comprising:
     a capsule;
     a clip assembly housed within the capsule for
     movement between an insertion configuration in
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 COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,        3
 INC.


     which first and second arms of the clip assembly
     are drawn toward one another and an expanded
     configuration in which the first and second arms
     are separated from one another to receive tissue
     therebetween;
     a control element including a connector element,
     extending between a proximal end which, during
     use, remains outside the body accessible to a user
     and a distal end removably connected to the clip
     assembly via the connector element, wherein the
     control element detaches from the connector ele-
     ment via a frangible link; and
     a sheath extending from a proximal to a distal end
     and covering a portion of the control element,
     wherein the distal end of the sheath is releasably
     coupled to the capsule.
 ’371 patent claim 11.
                               B
     Relevant to our decision, Cook’s petition for IPR as-
 serted that claims 11 and 15 are anticipated under
 35 U.S.C. § 102(b) 1 by “Adams” 2 and that claim 17 is ren-
 dered obvious under 35 U.S.C. § 103 by Adams combined
 with “Sackier.” 3 Adams is directed to a “[m]edical device
 used to cause hemostasis of blood vessels using a clip ar-
 rangement delivered to a target region through an endo-
 scope.”   J.A. 374.      Among a variety of alternative



     1   The claims at issue in this case have effective filing
 dates prior to March 16, 2013. We therefore apply pre-AIA
 § 102(b).
     2   U.S. Patent No. 8,685,048 B2, issued Apr. 1, 2014.
 See J.A. 374–411.
     3   U.S. Patent No. 5,749, 881, issued May 12, 1998.
 See J.A. 229–47.
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 4    COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                       INC.


 embodiments, Adams discloses two embodiments that are
 relevant to this appeal: the “J-Hook Embodiment,” and the
 “Ball-and-Socket Embodiment.”
      The J-Hook Embodiment includes a clip 101 having
 clip legs 102 and 103. J.A. 405 at col. 5 ll. 21–23; see also
 id. Figs. 1–7. As shown in Figure 3, the embodiment is fur-
 ther characterized by having cut-out 106 on the proximal
 end of clip 101. J.A. 405 at 378 (Fig. 3); see also id. col. 5 ll.
 26–27. And as further shown in Figure 2, j-hook 107, which
 is formed on the distal terminal end of control wire 108, is
 inserted into cut-out 106. J.A. 405 at 377 (Fig. 2); see also
 id. col. 5 ll. 26–29. To permanently deploy clip 101, among
 other steps, j-hook 107 is pulled from cut-out 106 on the
 proximal side of clip 101. J.A. 405 at col. 5 ll. 52–59. Con-
 trol wire 108 is then removed, leaving clip 101 in place.
 J.A. 405 at col. 5 ll. 59–63.
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 J.A. 377.




 J.A. 378.
      The Ball-and-Socket Embodiment includes clip 1201.
 J.A. 407 at col. 9 ll. 46–64; see also id. at 390 (Figs. 12A &
 12B). This embodiment is characterized by a ball 1202 that
 fits into a socket defined by socket tabs 1203. J.A. 407 at
 col. 9 ll. 47–49. Ball 1202 attaches the control wire 1207 to
 the clip 1201. J.A. 407 at col. 9 ll. 47–49. To release clip
 1201, ball 1202 is pulled with the control wire 1207 from
 socket tabs 1203. J.A. 407 at col. 9 ll. 56–62.
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 6   COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                      INC.




 J.A. 390.
                              C
      When Cook petitioned for IPR of the ’371 patent, it al-
 leged eleven grounds of unpatentability for various claims.
 Cook Grp. Inc. v. Boston Scientific Scimed, Inc.,
 No. IPR2017-00135, Paper 1 (P.T.A.B. Oct. 27, 2016) (“Pe-
 tition”). Initially, the Board instituted on two grounds.
 However, following the Supreme Court’s decision in SAS
 Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), which oc-
 curred after oral hearing but before the final written deci-
 sion, the Board instituted on all petitioned grounds. The
 parties subsequently agreed to limit the proceeding to only
 certain grounds. Relevant to this appeal, the Board con-
 sidered the following five grounds: (1) claims 11 and 15 are
 anticipated by Adams; (2) claim 17 is rendered obvious by
 Adams combined with Sackier; (3) claims 11, 15, and 17 are
 anticipated by Sackier; (4) claims 11–13 are anticipated by
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 COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,      7
 INC.


 “Kimura” 4; (4) claims 1 and 3–5 are rendered obvious by
 Kimura; and (5) claim 10 is rendered obvious by Kimura
 combined with Sackier.
      The Board permitted supplemental briefing and held a
 second oral hearing. In the final written decision, the
 Board delivered a mixed result, finding that Cook had met
 its burden of showing that claims 1, 3–5, and 10 are un-
 patentable as obvious, but that Cook had failed to meet its
 burden of showing that claims 11, 15, and 17 are either an-
 ticipated or obvious over any ground. Cook Grp. Inc. v. Bos-
 ton Scientific Scimed, Inc., No. IPR2017-00135, Paper 82
 (P.T.A.B. Nov. 15, 2018) (“Board Decision”).
     The parties timely appealed. We have jurisdiction un-
 der 28 U.S.C. § 1295(a)(4)(A).
                              II
     We review the Board’s factual findings for substantial
 evidence and the Board’s legal conclusions, including claim
 construction, de novo. IPCom GmbH & Co. v. HTC Corp.,
 861 F.3d 1362, 1369 (Fed. Cir. 2017). “Substantial evi-
 dence . . . 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
      Cook appeals the Board’s determination that Cook
 failed to show that claims 11–13, 15, and 17 are unpatent-
 able as either anticipated or obvious over the cited prior
 art. We conclude the Board’s determination that claims 11
 and 15 are not anticipated by Adams, and that claim 17 is
 not obvious over Adams in view of Sackier, was based on
 erroneous claim construction and must be reversed. Be-
 cause we conclude that, under a proper claim construction,


    4   U.S. Patent Pub. No. 2002/0045909, published Apr.
 18, 2002. See also J.A. 289–334.
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 8   COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                      INC.


 Cook met its burden of showing that claims 11, 15, and 17
 are anticipated by Adams, or obvious over Adams in view
 of Sackier, we do not reach Cook’s argument that claims
 11, 15, and 17 are anticipated by Sackier. With respect to
 claims 12 and 13, which Cook challenged as anticipated by
 Kimura, we affirm the Board’s decision as supported by
 substantial evidence and as in accordance with the law.
     We now specifically address the Board’s determination
 that claims 11 and 15 are not unpatentable over Adams
 and that claim 17 is not unpatentable over Adams and
 Sackier. In its petition, Cook argued that the J-Hook Em-
 bodiment disclosed in Adams anticipates or renders obvi-
 ous certain claims of the ’371 patent. Petition at 26–31, 44.
 In relevant part, Cook argued that the “control element”
 and the “connector element” required by claim 11 are met
 respectively by j-hook 107 and cut-out 106. The Board,
 however, disagreed and found that the claims are not un-
 patentable over Adams because cut-out 106 is not a “con-
 nector element” within the context of claim 11.
     First, the Board quoted the relevant limitation of claim
 11, which recites:
     a control element including a connector element,
     extending between a proximal end which, during
     use, remains outside the body accessible to a user
     and a distal end removably connected to the clip
     assembly via the connector element where in the
     control element detaches from the connector ele-
     ment via a frangible link. . . .
 Board Decision at 24 (citing ’371 patent col. 18 ll. 10–15).
 The Board then considered the prosecution history of that
 limitation. The Board noted that during prosecution, the
 examiner cited Adams, and specifically its Ball-and-Socket
 Embodiment, as prior art. Applicants overcame the rejec-
 tion by amending the claims to require “a control element
 including a connector element” wherein “the control ele-
 ment detaches from the connector element via a frangible
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 INC.


 link.” Id. at 27. In arguments submitted with the amend-
 ment, the applicants differentiated the claimed invention
 from Adams’s Ball-and-Socket Embodiment based on the
 failure of Adams’s ball 1202 (i.e., the connector element) to
 be separated from the control wire 1207 (i.e., the control
 element) when the control element is released from the
 clip. Applicants argued that because the control element
 and the connector element were not separated, Adams did
 not disclose a control element having a frangible link as
 required by the claim language that issued as claim 11.
     Based on these prosecution statements related to Ad-
 ams’ Ball-and-Socket Embodiment, the Board found that
 cut-out 106 in the J-Hook Embodiment does not teach a
 connector element as recited by claim 11. The Board stated
 that “the statements in the prosecution history distinguish
 the claimed invention from the prior art on the basis of the
 location of the frangible link in relation to the control ele-
 ment and the connector element” and therefore concluded
 that “the connector element is not part of the clip arms.”
 Board Decision at 28. Because cut-out 106 is located at the
 proximal end of the clip, the Board concluded that it did not
 disclose the recited connector element. Id. at 27–28. The
 Board also noted that because the claim language requires
 that the control and connector elements detach, then it
 could infer that those elements must first be attached. Id.
 at 29. The Board did not discuss whether the control ele-
 ment and the connector element in Adams’s J-Hook Em-
 bodiment are attached when j-hook 107 is inserted into cut-
 out 106.
     On appeal, Cook argues that the Board erred in con-
 cluding that the connector element could not be located on
 the clip. Cook argues that no limitation in claim 11, nor
 any description in the specification, restricts the location of
 the connector element with respect to the clip. Cook fur-
 ther argues that nothing in the prosecution history, includ-
 ing the excerpts relied on by the Board, describe the
 location of the connector element with respect to the clip.
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 10   COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                       INC.


 Instead, these prosecution statements merely describe the
 relationship between the control element and the connector
 element by emphasizing that the control element and the
 connector element must at some point detach. According
 to Cook, if claim 11 is properly read to permit a connector
 element that is part of the clip, then there is no dispute
 that Adams’s J-Hook Embodiment discloses a connector el-
 ement as required by claim 11.
     In response, Boston argues that the plain language of
 claim 11 and the applicants’ statements in the prosecution
 history support the Board’s decision. Boston summarily ar-
 gues that the Board’s determination that the connector el-
 ement could not be a part of the clip is supported by
 claim 11’s language requiring the control element to be “re-
 movably connected to the clip assembly via the connector
 element” and also requiring that the connector element
 “detach[]” from the control element via a frangible link.
 Boston then argues that the ’371 patent’s prosecution his-
 tory supports the Board’s decision because in arguing that
 Adams’s Ball-and-Socket Embodiment did not include a
 “connector element,” “the applicants specifically referenced
 not only ball 1202 but also clip 1201.” Appellee’s Br. 45.
      We conclude that the Board erred in its construction of
 claim 11’s “connector element” when it determined that the
 element could not be a part of the clip arms. See Board
 Decision at 28. We agree with Cook that nothing in the
 plain language of claim 11, nor anything in the specifica-
 tion of the ’371 patent, preclude the “connector element”
 from being a part of the clip, whether the clip arms or the
 clip assembly. Indeed, claim 11 only requires that the con-
 trol element “include” a connector element that may be de-
 tached via a frangible link. Although the term “connector
 element” never appears in the ’371 patent’s specification,
 the express language of claim 11 clearly requires that the
 “connector element” connect the control element with the
 clip. The applicants’ statements during prosecution inform
 us that the “connector element” must detach from the
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 COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,     11
 INC.


 control element, but these statements are silent as to the
 connector element’s relationship to the clip.
     Adams’s disclosure of the J-Hook Embodiment is con-
 sistent with the plain language of claim 11 and the ’371 pa-
 tent’s prosecution history. In the J-Hook Embodiment, the
 control element is first attached to the connector element.
 Indeed, Adams clearly explains that in the J-Hook Embod-
 iment, control wire 108 is attached to the clip by insertion
 through cut-out 106. J.A. 405 at col. 5 ll. 27–28. And in
 the J-Hook Embodiment, the control element detaches
 from the connector element. As Adams also clearly ex-
 plains, in the J-Hook Embodiment, control wire 108 is de-
 tached from cut-out 106 when j-hook 107 is pulled from cut-
 out 106. J.A. 405 at col. 5 ll. 58–59.
     Without any disclosure in the ’371 patent’s claim lan-
 guage or prosecution history precluding the placement of
 the connector element as part of the clip, it was error for
 the Board to add such a limitation to claim 11’s connector
 element. Relying on this erroneous construction, the Board
 incorrectly determined that the J-Hook Embodiment dis-
 closed in Adams does not anticipate or render obvious
 claims 11, 15, and 17. Under the correct construction, we
 determine that Cook has met its burden to show that
 claims 11 and 15 are anticipated by Adams, and that that
 claim 17 is rendered obvious by Adams in view of Sackier.
 We therefore reverse the Board’s decision with respect to
 those claims. 5



     5    In a footnote, Boston argues that if we reverse the
 Board’s decision on claim 11, we should remand as to claim
 17. Even were a footnote sufficient to preserve Boston’s
 argument, which it is not, see SmithKline Beecham Corp.
 v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006), Bos-
 ton failed to point to any material disputed fact warranting
 remand.
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 12   COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
                                                       INC.


                               B
     Boston cross-appeals the Board’s determination that
 Cook met its burden of proving that claims 1 and 3–5 are
 unpatentable as obvious over Kimura and that claim 10 is
 unpatentable as obvious in view of Kimura and Sackier.
 We conclude that the Board’s decision as to these claims is
 in accordance with the law and supported by substantial
 evidence. We therefore affirm as to all issues raised in Bos-
 ton’s cross-appeal.
                              III
     In sum, we reverse the Board’s decision regarding the
 patentability of claims 11, 15, and 17. We affirm the
 Board’s decision in all other aspects.
   AFFIRMED IN PART AND REVERSED IN PART
                            COSTS
      The parties shall bear their own costs.
