PTAB

IPR2018-01168

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

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1. Case Identification

2. Patent Overview

  • Title: SPRAY APPLICATOR
  • Brief Description: The ’453 patent is directed to a gas-assisted spray applicator assembly for mixing and applying dual-component solutions, such as bioadhesives. The disclosed device includes an elongated body with multiple lumens and a spray tip assembly containing an internal mixing chamber with an insert member that features radially extending slots on its ends.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, and 4 are obvious over Hoogenakker and Skorka.

  • Prior Art Relied Upon: Hoogenakker (Application # 2007/0005007) and Skorka (Patent 4,826,048).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hoogenakker disclosed all elements of the claimed spray assembly except for the specific insert member. Hoogenakker taught a gas-assisted spray applicator with a connector, an elongated member with separate lumens for two components and a pressurized gas, and a spray tip defining a mixing chamber. To supply the missing insert, Petitioner pointed to Skorka, which disclosed an insert for a nozzle with grooves on its end faces designed to induce a vigorous, swirling flow to "intensely mix" fluid components. Petitioner contended that Skorka's grooves are "slots" as claimed.
    • Motivation to Combine (for §103 grounds): Hoogenakker functionally described its spray tip as being "designed to create a vortex" but failed to disclose any specific structure to achieve this. A person of ordinary skill in the art (POSA) would have been motivated to look to known, effective structures for creating a swirling flow, such as the swirl atomizer insert taught by Skorka, to implement Hoogenakker's stated functional goal. Petitioner noted that Hoogenakker itself discussed Skorka, suggesting its relevance for mixing non-homogeneous fluids.
    • Expectation of Success (for §103 grounds): A POSA would have a reasonable expectation of success in combining the known elements, as modifying Hoogenakker's functionally-described tip to include Skorka's well-understood swirl atomizer insert would predictably result in the desired vortex for enhanced mixing and atomization.

Ground 2: Claims 1, 2, and 4 are obvious over Hoogenakker and Togashi.

  • Prior Art Relied Upon: Hoogenakker (Application # 2007/0005007) and Togashi (Application # 2008/0121738).
  • Core Argument for this Ground:
    • Prior Art Mapping: The argument relied on Hoogenakker for the overall applicator structure, as in Ground 1. Togashi was introduced to teach the claimed insert member. Togashi disclosed a spray nozzle with an insert (core 3) and expressly taught that recessed passages could be formed on both the proximal and distal ends of the insert to impart a turbulent, swirling motion to the fluid. These recessed passages, which function as radially extending slots, were argued to meet the limitations of claim 1[e].
    • Motivation to Combine (for §103 grounds): The motivation was identical to Ground 1: a POSA seeking to implement Hoogenakker's functional goal of creating a "vortex" would look to known swirl atomizer designs. Togashi provided another clear, well-understood example of a suitable insert with slots on both ends for creating a swirling flow, making it an obvious choice for modification.
    • Expectation of Success (for §103 grounds): As with Skorka, combining Hoogenakker's system with Togashi's well-understood insert would predictably achieve the desired swirling flow for mixing and atomizing, requiring only basic engineering principles.

Ground 3: Claims 1, 2, and 4 are obvious over Campbell in view of Spero and Kitabayashi.

  • Prior Art Relied Upon: Campbell (Application # 2006/0189944), Spero (Application # 2003/0069537), and Kitabayashi (Japanese Utility Model Application Publication No. 3-32959).

  • Core Argument for this Ground:

    • Prior art Mapping: This ground built the claimed invention in three steps. Campbell was argued to teach a basic spray apparatus with a connector and separate lumens for two components and pressurized gas. Petitioner then argued it would be obvious to modify Campbell by adding the detachable spray tip with an internal mixing chamber as taught by Spero. Finally, a POSA would replace Spero’s simple insert ("spray regulator 104") with the more effective swirl atomizer insert disclosed by Kitabayashi, which explicitly taught an insert with radially extending cut grooves on both its front and rear surfaces to create a swirling, atomized spray.
    • Motivation to Combine (for §103 grounds): A POSA would combine Campbell with Spero because Campbell incorporated by reference other patents (e.g., Sawhney) that taught the desirability of internal mixing chambers. A POSA would then modify the Spero tip by substituting Kitabayashi's insert because Spero's own "spray regulator" was depicted as a suboptimal, simple structure. Kitabayashi's swirl-inducing insert offered a known, superior technique for achieving the thorough mixing and atomization desired for dual-component bioadhesives.
    • Expectation of Success (for §103 grounds): A POSA would expect success, as replacing one known type of insert (Spero's) with another known, more effective type (Kitabayashi's) within a mixing tip was a routine design choice with predictable effects based on the well-understood principles of swirl atomizers.

  • Additional Grounds: Petitioner asserted additional obviousness challenges against claims 1, 2, and 4, including combinations of Hoogenakker in view of Kitabayashi, and Hoogenakker in view of Haber (Patent 5,341,993), which relied on similar theories of implementing Hoogenakker's functional "vortex" by incorporating known swirl atomizer insert designs.

4. Key Claim Construction Positions

  • The petition advanced a specific construction for the term "radially extending slot" as being central to its obviousness arguments.
    • Petitioner's Proposed Construction: "a slot with a length dimension that extends, at least in part, between the center and periphery of the end of the insert." Petitioner argued this construction was necessary to give meaning to "radially extending," as any other interpretation would render the phrase superfluous.
    • Relevance: This construction allowed Petitioner to argue that the straight or spiral grooves shown in prior art references like Skorka, Togashi, and Kitabayashi, whose primary orientation is radial, met the claim limitation. It contrasted this with the Patent Owner's alleged litigation position that any dimension of a slot (e.g., the depth of a longitudinal groove as it intersects an end face) could satisfy the limitation, a construction Petitioner argued was overly broad.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, and 4 of Patent 8,210,453 as unpatentable.