PTAB

IPR2021-01532

Medtronic Vascular Inc v. TMT Systems Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Percutaneous Endovascular Apparatus for Repair of Aneurysms and Arterial Blockages
  • Brief Description: The ’393 patent discloses an attachment device for securing an endovascular apparatus, such as a stent graft, to the interior wall of a blood vessel. The device comprises a plurality of "telescoping arms" configured to form the shape of an "M" to provide fixation.

3. Grounds for Unpatentability

Ground I: Obviousness over Quiachon in view of Lazarus - Claims 1, 2, 4, 11, and 26 are obvious over Quiachon in view of Lazarus.

  • Prior Art Relied Upon: Quiachon (Patent 5,824,044) and Lazarus (Patent 6,165,214).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Quiachon disclosed an attachment system for an endovascular graft comprising a wire frame with struts forming a repeating M-shaped pattern to secure the graft against a vessel wall. Petitioner contended that while Quiachon taught the M-shaped structure, it did not teach that the individual struts telescope. Lazarus, however, explicitly disclosed an endovascular graft with longitudinal support structures that are "telescopically positioned relative to each other" to provide an optimal and adjustable fit within a vessel. Petitioner asserted that combining Quiachon’s M-shaped struts with the telescoping functionality taught by Lazarus would result in the claimed invention.
    • Motivation to Combine: A POSITA would combine these references to improve the functionality of Quiachon's M-shaped stent. The motivation was to incorporate the known benefit of adjustability from Lazarus's telescoping arms into Quiachon's fixation device. This would yield the predictable result of an M-shaped stent that could be better compressed for delivery and adjusted in length for a more customized fit in a patient’s anatomy. Petitioner noted that the PTO and the Board had already affirmed this exact combination as obvious during the prosecution of a related continuation-in-part application.
    • Expectation of Success: A POSITA would have had a high expectation of success because both references are directed to the same technology—endovascular stent grafts for treating abdominal aortic aneurysms (AAA). The combination involved the simple substitution of a known element (telescoping arms) for another (non-telescoping struts) to achieve a predictable improvement in function.

Ground II: Obviousness over Quiachon, Lazarus, and Lau - Claim 10 is obvious over Quiachon in view of Lazarus in further view of Lau.

  • Prior Art Relied Upon: Quiachon (Patent 5,824,044), Lazarus (Patent 6,165,214), and Lau (Patent 5,919,225).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground I to address the limitation of claim 10, which required the arms to be made of a "nickel-titanium alloy" (i.e., nitinol). Petitioner argued that while Quiachon taught using a cobalt-chromium-nickel alloy (ELGILOY) for its struts, Lau explicitly disclosed that nitinol is a "preferabl[e]" material for stents due to its "super-elastic" or "pseudo-elastic" shape recovery properties.
    • Motivation to Combine: A POSITA would be motivated to use nitinol in the Quiachon/Lazarus device because Lau taught that nitinol and ELGILOY were interchangeable materials for stents. A POSITA would substitute nitinol to gain its well-known advantages of superior springiness and shape memory, or as a simple alternative design choice based on material availability or existing manufacturing supply chains.
    • Expectation of Success: Success was predictable, as nitinol was a well-known and extensively studied material for use in endovascular stent grafts at the time of the invention, and its properties were well understood.

Ground III: Obviousness over Hartley in view of Lazarus - Claims 1, 2, 4, 10, 11, and 26 are obvious over Hartley in view of Lazarus.

  • Prior Art Relied Upon: Hartley (WO 99/29262) and Lazarus (Patent 6,165,214).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative to Ground I, using Hartley as the primary reference. Petitioner argued that Hartley, like Quiachon, disclosed a prosthesis with Z-stents sutured to a graft, with the arms of the stents forming an M-shape. Hartley's M-shaped stents provided radial force to hold the graft against the aortic wall. As in Ground I, Lazarus supplied the teaching of making the stent arms individually telescoping to improve adjustability and fit.
    • Motivation to Combine: The motivation was identical to that in Ground I: to combine a known M-shaped fixation stent (Hartley) with a known technique for providing adjustability (Lazarus's telescoping arms). This would predictably result in a device with the benefits of both references—secure M-shaped fixation and improved, customizable fit.
    • Expectation of Success: A POSITA would have expected success for the same reasons as in Ground I, as both Hartley and Lazarus were directed to endovascular stent grafts and the combination represented a simple substitution of known components to achieve a predictable functional improvement.

4. Key Claim Construction Positions

  • "telescoping arm" / "telescoping arms" (claims 1, 2, 26): This term was central to the petition.
    • Petitioner's proposed construction: "an arm that telescopes" / "more than one telescoping arm." Petitioner argued that the plain meaning and the intrinsic evidence (e.g., the specification's reference to an "expandable presentation pointer") required that each individual arm must be capable of telescoping.
    • Importance: Petitioner argued this construction was critical because the primary prior art references (Quiachon, Hartley) disclosed M-shaped arms but not individually telescoping arms, necessitating the combination with Lazarus. Petitioner contended that Patent Owner advocated for a broader construction where the arms as a group expand radially (like an accordion), which would improperly read the "telescoping" limitation out of the claims.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was not warranted. In the parallel district court litigation, no trial date was set, no Markman hearing had been scheduled, and fact discovery was in its early stages. Petitioner asserted that pending motions to dismiss and transfer created further uncertainty regarding the trial timeline, weighing against denial. Petitioner also stipulated that if the IPR was instituted, it would not pursue the same invalidity grounds in the district court proceeding.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 4, 10, 11, and 26 of Patent 7,101,393 as unpatentable under 35 U.S.C. §103.