PTAB

IPR2018-01099

HyperBranch Medical Technology, Inc. v. Confluent Surgical, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Silicone Spray Tip
  • Brief Description: The ’021 patent is directed to an applicator assembly for mixing and spraying two or more components, such as bioadhesives. The technology features a spray tip assembly with an internal mixing chamber containing a recessed insert designed to create turbulence for mixing.

3. Grounds for Unpatentability

Ground 1: Claims 14 and 15 are obvious over Spero in view of Haber

  • Prior Art Relied Upon: Spero (Application # 2003/0069537) and Haber (Patent 5,341,993).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Spero discloses a laparoscopic spray device for multiple components that meets all limitations of claim 14 except for the specific insert structure. Spero's device includes a spray tip with a mixing chamber and an insert (spray regulator 104). Haber was cited for its teaching of a topical sprayer with a cylindrical swirl atomizer insert that contains recesses (ring and spoke channels) on its distal end to create a swirling, atomized spray. Petitioner contended that replacing Spero’s simple insert with Haber’s advanced swirl atomizer insert would result in the claimed invention.
    • Motivation to Combine: The primary motivation asserted was to improve the mixing and atomization performance of the Spero device. Spero itself suggested that alternative spray tips could be used. A person of ordinary skill in the art (POSITA) would recognize that Spero's depicted spray regulator was a suboptimal design for mixing. A POSITA would have been motivated to substitute it with a known, superior technology like Haber's swirl atomizer to achieve the well-understood benefits of better mixing and atomization (e.g., a more uniform sealant layer, reduced waste), which are particularly desirable for bioadhesives.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because combining the references involved a simple substitution of one known component for another to achieve a predictable result. The function of swirl atomizers was well-understood, and implementing Haber's insert into Spero's device would require only basic engineering principles and minimal modification.

Ground 2: Claims 14 and 15 are obvious over Capozzi

  • Prior Art Relied Upon: Capozzi (Patent 5,116,315).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Capozzi, a single reference, discloses a biological syringe system for delivering a mixed composition that meets nearly all limitations of the challenged claims. Capozzi teaches a spray assembly with a mixing chamber and a cylindrical insert (extension 77). Critically, Capozzi creates a swirling flow using swirl-inducing recesses (channels 118) located on the inner wall of the nozzle body, not on the insert itself. Petitioner asserted that it would have been obvious for a POSITA to relocate these swirl-inducing recesses from the nozzle wall to the distal end of the insert.
    • Motivation to Combine: The motivation for this modification was presented as a routine design choice. A POSITA would know that swirl-inducing recesses could be formed on either the insert or the adjoining nozzle wall to achieve the same function. Moving the channels to the insert would be an obvious alternative, potentially to simplify the mold for the nozzle body or to use different materials for the nozzle and the insert. This was framed not as an inventive step, but as a choice between two equally effective and well-known options.
    • Expectation of Success: Success was expected because the modification was a simple transposition of a known feature between adjacent, interacting components without changing the fundamental principle of operation.

Ground 3: Claims 14 and 15 are anticipated by Voegele

  • Prior Art Relied Upon: Voegele (Application # 2008/0121657).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Voegele discloses every element of claims 14 and 15, thereby anticipating them under 35 U.S.C. §102. Voegele describes a surgical device for dispensing a dual-component adhesive. The device includes a dispensing tip (294) that houses an insert (mixer 293). Petitioner contended that Voegele’s mixer 293 is an insert disposed within the mixing chamber, includes cylindrical portions, and has a recess on its distal end. Further, Petitioner argued that the outer diameter of the mixer 293 is uniform along its entire length, thus also anticipating the additional limitation of dependent claim 15.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 14-15 are obvious over Spero in view of Kitabayashi (Japanese Utility Model Publication No. 3-32959) and over Dodge (Patent 7,037,289) in view of Haber. These grounds relied on similar arguments about substituting or modifying known spray tip inserts to improve mixing and atomization.

4. Key Claim Construction Positions

  • Petitioner argued for a broad construction of the term "a first end" as simply meaning "an end" of the insert. This construction is central to the invalidity arguments, as it allows the required "recess" to be located on either the proximal or the distal end of the prior art insert. Petitioner supported this by noting that the patentee used more specific terms like "proximal" and "distal" for other components, but chose broader, non-limiting language for the insert, implying a broader scope was intended.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 14 and 15 of the ’021 patent as unpatentable.