PTAB

IPR2019-00483

Ivantis, Inc. v. Glaukos Corporation

Case #: Unassigned (Refiled after IPR2018-01180 was denied institution on procedural grounds)
Patent #: 9,827,143
Filed: December 19, 2018
Petitioner(s): Ivantis, Inc.
Patent Owner(s): Glaukos Corp.
Challenged Claims: 1-42

Title: Shunt Device and Method for Treating Ocular Disorders
Brief Description: The ’143 patent describes ocular implants (shunts or stents) and surgical methods for treating glaucoma. The implants are designed to be placed in Schlemm's canal to drain aqueous humor from the anterior chamber of the eye, thereby reducing intraocular pressure. A key aspect of the claimed invention is that the shunt body is "non-tubular," "non-luminal," or has a channel that is "partially open."

Prior Art Relied Upon: Grieshaber (Australian Patent Application Publication AU 199876197).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Grieshaber discloses all limitations of the independent claims. Grieshaber teaches an indwelling ocular implant for glaucoma, configured to maintain the patency of Schlemm's canal. Petitioner contended that Grieshaber’s implant embodiment in Figures 9 and 10, which comprises longitudinal "webs" connecting two end rings with open "recesses" between them, meets the key limitations of being "non-tubular" and "non-luminal" (as construed by Petitioner) because it is not fully enclosed along its length. The recesses constitute openings that facilitate the passage of aqueous humor, and the overall structure is curved to match the anatomy of Schlemm's canal.
- Key Aspects: The argument hinges on Petitioner's proposed constructions of "non-tubular" and "non-luminal" to mean not fully enclosed, which allows Grieshaber's web-and-recess design to read on the claims. Grieshaber also discloses the use of biocompatible materials, including metal, and a size appropriate for Schlemm's canal, allegedly anticipating or rendering obvious various dependent claims.

Prior Art Relied Upon: Grieshaber (Australian Application # AU 199876197) and Spiegel (Detlev Spiegel, Surgical Treatment of Glaucoma).
Core Argument for this Ground:
- Prior Art Mapping: This ground addresses method claims and claims requiring a portion of the implant to be positioned in the anterior chamber. Grieshaber taught an implant for placement within Schlemm's canal. Spiegel taught a method for treating glaucoma by bypassing the trabecular meshwork, creating a direct connection from the anterior chamber into Schlemm's canal using a silicone tube.
- Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would be motivated to combine these teachings to improve the efficacy of Grieshaber's stent. Since the known cause of elevated pressure is fluid buildup in the anterior chamber, a POSITA would modify Grieshaber’s device based on Spiegel’s method to extend it across the trabecular meshwork and into the anterior chamber, creating a direct drainage conduit.
- Expectation of Success: The combination was presented as a predictable joining of known elements, as both references address the same problem (improving aqueous humor outflow) in analogous ways. A POSITA would have a reasonable expectation of success in creating a more effective implant.

Prior Art Relied Upon: Grieshaber (Australian Application # AU 199876197) and Minckler (Michael J. Wilcox and Donald S. Minckler, “Hypothesis for Improving Accessory Filtration by Using Geometry”).
Core Argument for this Ground:
- Prior Art Mapping: This ground targets claim 30, which depends from claim 24 and requires the stent to have a cross-section that is "approximately semi-circular." Grieshaber's implant (Figs. 9-10) has multiple webs and recesses. Minckler taught a non-tubular, "C-shaped trough-like" shunt to prevent occlusion and fibrous tissue build-up.
- Motivation to Combine: A POSITA would be motivated to modify Grieshaber's design by either using only two webs spaced far apart (creating a semi-circular opening) or by incorporating Minckler's explicit teaching of a semi-circular cross-section. The motivation was to improve drainage and prevent occlusion, a known problem that Minckler was designed to solve.
- Expectation of Success: Modifying the cross-section of Grieshaber’s stent to be semi-circular as taught by Minckler was argued to be a straightforward design choice for a POSITA seeking to enhance fluid flow.

"Non-tubular" (claims 1, 12, 21, 24): Petitioner proposed this term means "not enclosed along its length." This construction is critical because it allows Grieshaber's implant, which has longitudinal openings ("recesses"), to be considered "non-tubular," even though it has a generally cylindrical shape.
"Non-luminal" (claims 32, 38): Petitioner proposed this term means "not having an enclosed space or cavity." This is used to argue that Grieshaber's web-and-recess structure lacks a fully enclosed lumen and therefore meets this limitation.
"Portal" (claims 5, 7-8, 38-40): Petitioner proposed this term simply means an "opening." This broad construction allows the "recesses" in Grieshaber to be considered "portals."

Priority Date Challenge: A central argument was that the ’143 patent is not entitled to its claimed April 26, 1999 priority date. Petitioner contended that the provisional application did not provide written description support for the key "non-tubular," "non-luminal," or "partially open" limitations. Petitioner asserted the earliest effective filing date is April 26, 2000, when these concepts first appeared. This later priority date makes Grieshaber (published Feb. 25, 1999) and Spiegel (published 1998) valid §102(b) prior art.

Petitioner argued extensively that the Board should not exercise its discretion to deny institution under §314(a) or §325(d). This petition was a refiling of a previous petition (IPR2018-01180) that was denied institution solely because Petitioner had inadvertently cited the wrong version of the Grieshaber reference (a granted patent instead of the prior-art application). Petitioner asserted that since the Board never reached the substantive merits of the prior art, and this petition corrected the procedural defect and relies on the same substantive arguments, institution is appropriate and consistent with the General Plastic factors for follow-on petitions.

Petitioner requested institution of an inter partes review and cancellation of claims 1-42 of the ’143 patent as unpatentable under 35 U.S.C. §102 and/or §103.