Cook Group Incorporated v. Boston Scientific Scimed, Inc. ( 2020 )

Case: 19-1370 Document: 57 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NOTE: This disposition is nonprecedential.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
______________________
2019-1370, 2019-1372, 2019-1375, 2019-1377
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
00133, IPR2017-00134.
______________________
Decided: April 30, 2020
______________________
LAURA A. LYDIGSEN, Brinks Gilson & Lione, Chicago,
IL, argued for appellants. Also represented by JEFFRY M.
NICHOLS, SARAH GOODMAN, 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,
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Before PROST, Chief Judge, DYK and O’MALLEY, Circuit
Judges.
O’MALLEY, Circuit Judge.
This case arises from the final written decisions of the
Patent Trial and Appeal Board (“Board”) in two related in-
ter partes reviews (“IPRs”). Cook Group Inc. and Cook
Medical LLC (collectively “Cook”) appeal the Board’s find-
ing that Cook failed to demonstrate by a preponderance of
the evidence the unpatentability of claims 4–6, 15, and 20
of U.S. Patent No. 8,709,027 (“’027 patent”). Cook Grp. Inc.
v. Bos. Sci. Scimed, Inc., No. IPR2017-00133, 2018 Pat.
App. LEXIS 10662 (P.T.A.B. Nov. 3, 2018); Cook Grp. Inc.
v. Bos. Sci. Scimed, Inc., No. IPR2017-00134, 2018 Pat.
App. LEXIS 10663 (P.T.A.B. Nov. 3, 2018). Boston Scien-
tific Scimed, Inc. (“Boston”) cross-appeals the Board’s find-
ing that claims 1–3, 7–14, and 16–19 of the ’027 patent are
unpatentable. Because the Board erred in its analysis of
claims 4–6, 15, and 20, we vacate and remand to the Board
for further consideration of those claims. On Boston’s
cross-appeal, we find no error in the Board’s decision and
affirm.
I. BACKGROUND
A. The ’027 Patent
The ’027 patent issued to Boston on April 29, 2014. It
discloses a reversibly closeable compression clip for endo-
scopically stopping bleeding of blood vessels along the gas-
trointestinal tract. ’027 patent, col. 2, ll. 59–63. Claims 1
and 20 are representative of the claims at issue on appeal:
1. A medical device, comprising:
a clip having a first clip leg having a first
inner surface and a second clip leg having
a second inner surface;
a control member extending from a proxi-
mal actuator to the clip; and
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a linkage operably associated with the con-
trol member to spread the first and second
clip legs apart from one another into a tis-
sue-receiving configuration as the control
member is moved distally relative to the
clip, the linkage contacting the inner sur-
faces of the first and second clip legs to
drive the first and second clip legs radially
outward as the control member is moved
distally relative to the clip.
***
20. A method, comprising:
inserting into a body a medical device com-
prising a clip having a first clip leg having
a first inner surface and a second clip leg
having a second inner surface, a control
member extending from a proximal actua-
tor to the clip and a linkage coupled to the
control member;
positioning the medical device at a desired
deployment location;
moving the control member distally to
cause the clip to move distally relative to a
sleeve housing at least a portion of the clip
therein, the movement causing the linkage
to contact the first and second inner sur-
faces to drive the first and second clip legs
radially outward to a tissue-receiving con-
figuration;
adjusting a position of the clip so that tar-
get tissue is received between the first and
second clip legs;
drawing the control member proximally
relative to the sleeve to draw the clip into
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the sleeve to receive the target tissue be-
tween the first and second clip legs; and
applying a proximal tensile force of at least
a threshold level to the control member to
separate a link coupling the control mem-
ber to the clip.
Id. at col. 15, l. 33– col. 17, l. 6.
B. Prior Art
Cook’s petitions asserted several grounds of unpatent-
ability based on the following prior art references.
Malecki. U.S. Patent No. 5,626,607 (“Malecki”) issued
on May 6, 1997. J.A. 169. Malecki discloses a clamp that
can be used to clamp blood vessels or other body parts dur-
ing medical procedures. J.A. 201. Two Malecki embodi-
ments are relevant to this appeal. Embodiment #2 is
depicted in Figure 25:
J.A. 186. Figure 25 shows a clamp 304B and a clamp posi-
tioner 306B. J.A. 207. The clamp 304B engages with the
clamp positioner 306B via engagement between square
opening 384 on the clamp positioner and the square outer
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surface 392 of jaw extension 320B. J.A. 208. In Malecki
Embodiment #2, the operator turns the hollow drive body
346B using handle 394 while the stabilizing rod 378 is pre-
vented from rotating via handle 380. Id. The rotation
causes jaw extension 320B and actuator housing 324B to
engage, further causing the actuator housing 324B to move
relative to the jaws 308B, 310B. Id.Malecki Embodiment #1 is Depicted in Figure 28A:
J.A. 189. The clamp of Malecki Embodiment #1 is applied
using a clamp positioner similar to clamp positioner 306B
seen in Figure 25. J.A. 208. In Embodiment #1, hex-head
400 is rotated while base 396 is kept stable by the clamp
positioner. Id.Sackier. U.S. Patent No. 5,749,881 (“Sackier”) issued
on May 12, 1998 for a “Laparoscopic Surgical Clamp.” J.A.
229. Sackier discloses a clamp that can be moved between
a free (open) state and operable (closed) state for use in oc-
cluding portions of the body during laparoscopic surgery.
The device is designed to fit within the trocar used to per-
form the surgery. J.A. 238. Sackier also discloses a clamp
applier that contains a means to engage and disengage the
clamp jaws. J.A. 242. The relevant aspects of Sackier are
depicted in Figures 15–17:
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J.A. 9771. 1
Nishioka. U.S. Patent No. 5,843,000 (“Nishioka”) is-
sued on December 1, 1998 for “Optical Biopsy Forceps and
Method of Diagnosing Tissue.” J.A. 215. Nishioka dis-
closes an integrated optical biopsy forceps device. Id. The
device includes a pair of cutting jaws that are drawn to-
gether via control links. J.A. 225–26.
Matsuno. U.S. Patent No. 5,766,189 (“Matsuno”) is-
sued on June 16, 1998 for a “Clip Device.” J.A. 256.
Matsuno discloses a medical clip device with a clip that is
biased toward the open position but can be closed by a clip
squeezing ring. J.A. 265.
Shinozuka. Japanese Patent Application No.
S58-211381 (“Shinozuka”) is an unexamined patent filed
on November 10, 1983, and published on June 8, 1985, for
a “Biotissue Clip Device.” J.A. 252. Shinozuka discloses a
1 The ’027 patent issued with some figures that do
not have reference numbers. See J.A. 235–37. For conven-
ience, we include the numbered figures submitted by Bos-
ton during prosecution, rather than the figures from the
issued patent.
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clip device that can be inserted into the body, along with a
control wire, during an endoscopy. J.A. 252–53. Once the
clip is closed by a clip-tightening ring, it can be disengaged
from the control wire via jiggling and left within the body.
J.A. 254.
C. IPR Proceedings
Cook filed IPR2017-00133 and IPR2017-00134 on Oc-
tober 27, 2016. J.A. 564, 2405. The two IPRs contained a
combined seven grounds of unpatentability and raised
challenges to every claim of the ’027 patent. J.A. 517, 2317.
In May 2017, the Board issued institution decisions, insti-
tuting on only two grounds. J.A. 656, 2513. Cook re-
quested reconsideration of the Board’s decision not to
institute on claim 20 in IPR2017-00134 and the Board later
granted that request. J.A. 2529–39, 2712–24. The Board
held two hearings in February and April 2018. J.A. 1337–
429, 3704–94.
While the Board’s decision was pending, the Supreme
Court issued SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348(2018). Pursuant to SAS, the Board instituted on all pre-
viously uninstituted grounds. J.A. 1440–47, 3795–802.
The Board held a third hearing in September 2018 and is-
sued its final written decisions on November 3, 2018. J.A.
1, 47, 1869–947.
IPR2017-00133. The Board considered three grounds
for finding unpatentability of the claims of the ’027 patent
in IPR2017-00133: (1) claims 1–3 and 7–12 as anticipated
by Nishioka; (2) claims 13–14 and 16–19 as obvious in view
of Nishioka and Shinozuka; and (3) claims 4–6 and 13–20
as obvious in view of Nishioka and Matsuno.
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On the first ground (anticipation by Nishioka), the
Board found claims 1–3 and 7–12 unpatentable as antici-
pated by Nishioka Figure 8:
J.A. 20, 35. Boston argued before the Board that Nishioka
does not disclose a clip. J.A. 21. The Board construed “clip”
to mean, “a device having compression legs and capable of
applying a pinching pressure.” J.A. 11. Boston argued that
Nishioka’s jaws applied a shear force, not a compression
force. J.A. 21. The parties presented conflicting expert tes-
timony on the question. J.A. 21–22. The Board credited
Cook’s expert’s testimony and found that Nishioka dis-
closes a clip within the claim construction. J.A. 22.
Boston further disputed whether Nishioka discloses
the claimed “linkage contacting the inner surfaces of the
first and second clip legs.” J.A. 17. Cook relied on Figure
8 and the testimony of its expert to support its argument
that Nishioka discloses the limitation. Boston argued, in
response, that Figure 8 shows the linkages attached to the
sidewalls of the device. Once again, the Board credited
Cook’s position. It found that Nishioka discloses the dis-
puted limitation. J.A. 27–28.
On the second ground (obviousness over Nishioka and
Shinozuka), the Board found Cook had failed to carry its
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burden to prove the challenged claims unpatentable as ob-
vious in view of Nishioka and Shinozuka. J.A. 40. The
Board explained that Cook had failed to establish that a
person of ordinary skill in the art (“POSA”) would have
been motivated to combine the two references. J.A. 38–40.
Similarly, on the third ground, the Board found Cook had
failed to establish a motivation to combine Nishioka and
Matsuno. The Board explained that the combinations
would result in the loss of key functions of Nishioka. J.A.
40–42.
IPR2017-00134. The Board considered four grounds
for finding unpatentability of the claims of the ’027 patent
in IPR2017-00134: (1) claims 1, 3–6, 13–15, 17, and 20 as
anticipated by Sackier; (2) claims 1–20 as obvious over of
Sackier and Nishioka; (3) claims 1, 3–11, and 20 as antici-
pated by Malecki; and (4) claims 1 and 3–11 as obvious over
Malecki.
On the first ground (anticipation by Sackier), the Board
found that Cook had failed to prove the challenged claims
unpatentable. As to independent claim 1, it found that
Sackier does not disclose moving the control member rela-
tive to the clip, as required by claim 1. J.A. 66. On inde-
pendent claim 20, it found that Cook failed to establish
anticipation because its argument combined aspects of two
different embodiments in Sackier. J.A. 73.
On the second ground (obviousness over Sackier and
Nishioka), the Board agreed with Cook that claims 1–3, 7–
14, and 16–19 were unpatentable as obvious over the as-
serted combination. It found that the references disclose
each limitation of the claims. As in IPR2017-00133, the
Board found that Nishioka discloses the “linkage contact-
ing the inner surfaces of the first and second clip legs” lim-
itations of the claims. J.A. 81–82, 100–01. The Board
found that a POSA would have been motivated to combine
the two references with a reasonable expectation of suc-
cess. J.A. 82–87.
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On the second ground (obviousness over Sackier and
Nishioka), the Board further found that Cook failed to
prove the unpatentability of claims 4–6, 15, and 20. Each
of these claims include a “frangible link” limitation. The
Board construed “frangible link” to mean a “link between
at least two components that become unlinked when a ten-
sile load is applied.” J.A. 55. Boston relied on the specifi-
cation and expert testimony to contend that Sackier’s
clamp disconnects from the clamp applier via a lateral
opening, rather than via a frangible link. J.A. 92–93. Con-
trary to Boston’s position, Cook argued that Sackier dis-
closes an annular snap connection, a type of frangible link.
J.A. 93. The Board found the evidence on this point “evenly
divided” and concluded that Cook had not carried its bur-
den to prove obviousness of the claims with the “frangible
link” limitations. J.A. 93–94, 102–103, 105–106. The
Board declined to consider Boston’s Preliminary Patent
Owner Response, where Boston had advocated Cook’s un-
derstanding of the reference. See J.A. 2445
On the third and fourth grounds, the Board found that
Cook failed to carry its burden to prove any of the chal-
lenged claims unpatentable as anticipated by or obvious
over Malecki. Malecki discloses two distinct embodiments.
The Board’s analysis focused exclusively on Malecki Em-
bodiment #1. See J.A. 107–112. The Board found no distal
movement of stabilizing rod 378 in that embodiment, as re-
quired by the claims. J.A. 111. The Board did not, how-
ever, separately consider Malecki Embodiment #2 in its
final written decision, despite the fact that Cook had ar-
gued in its petition and during oral argument that Malecki
Embodiment #2, not Malecki Embodiment #1, anticipated
claim 20. See J.A. 2390–96, 4352.
The parties timely appealed the Board’s final decisions.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
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II. DISCUSSION
Our review is limited in an appeal from the Board. We
review the Board’s factual findings for substantial evidence
and the Board’s legal conclusions de novo. IPCom GmbH
& Co. v. HTC Corp., 861 F.3d 1362, 1369 (Fed. Cir. 2017).
“Substantial evidence . . . 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. The Board Erred in Its Anticipation
Analysis of Claim 20 Over Malecki
Cook argues that the Board committed two legal errors
in its analysis of claim 20: (1) it failed to address Malecki
Embodiment #2, the basis of Cook’s anticipation argument
on claim 20 and, (2) it misunderstood claim 20 as including
a limitation not found in the claim. Appellant’s Br. 31–40.
The relevant limitation of claim 20 provides: “moving the
control member distally to cause the clip to move distally
relative to a sleeve housing at least a portion of the clip
therein . . . .” ’027 patent, col. 16, ll. 60–62.
Cook argued in its petition that claim 20 is anticipated
by Malecki Embodiment #2. J.A. 2390–96. In the final
written decision, the Board did not address Malecki Em-
bodiment #2, considering only Embodiment #1 when ad-
dressing Cook’s arguments. See J.A. 107–12.
Cook argues that the Board’s failure to address Mal-
ecki Embodiment #2 was a violation of the Board’s obliga-
tion to address all ground of unpatentability raised in the
petition. Appellant’s Br. 33 (citing AC Techs. S.A. v. Ama-
zon.com, Inc., 912 F.3d 1358, 1364 (Fed. Cir. 2019)). Cook
further argues that the Board’s failure to address Embodi-
ment #2 contravenes the requirement of the APA that the
“agency tribunal must present a full and reasoned expla-
nation of its decision.” Appellant’s Br. 33 (quoting In re
Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002)). Thus, Cook
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argues that the Board’s decision is not in accordance with
the law and should be vacated. Boston does not dispute
Cook’s contention that the Board’s failure to address Em-
bodiment #2 was error. See Appellee’s Br. 43–45. We agree
that the Board’s failure to address Cook’s Embodiment #2
arguments was error. The only question remaining is
whether this error was harmless.
Cook argues that the Board’s failure to address Mal-
ecki Embodiment #2 was not harmless error. Appellant’s
Br. 36–38. Boston responds that the Board’s error was
harmless because the Board found that stabilizing rod 378,
which appears in both embodiments, does not move dis-
tally. Appellee’s Br. 44 (citing J.A. 111). Specifically, the
Board, relying on the portion of the specification Cook ar-
gues discloses the key aspect of Embodiment #2, found that
the specification “does not describe any distal movement of
stabilizing rod 378, but rather ‘rotation of the actuator
housing 324B,’which ‘moves the actuator housing 324B rel-
ative to the jaws 308B, 310B.’” J.A. 111 (citing J.A. 208,
col. 17, ll. 7–10). According to Boston, given this citation
to the correct portion of the specification, the Board’s anal-
ysis of stabilizing rod 378 in the context of Embodiment #1
applies equally to Embodiment #2. Appellee’s Br. 44.
Cook responds that the Board’s analysis of Embodi-
ment #1 is insufficient to support its conclusion as to Em-
bodiment #2 because the two embodiments work
oppositely. Appellant’s Reply Br. 9–14. In Embodiment
#1, the operator turns the inner shaft, via handle 380, to
effectuate opening and closing of clip 302C. J.A. 208, col.
17, ll. 55–57. In Embodiment #2, the operator turns the
hollow drive body 346B using handle 394 while stabilizing
the inner shaft against movement. Id. at col. 17, ll. 30–34.
Cook additionally argues that the Board based its deci-
sion on a legally erroneous interpretation of claim 20. Ap-
pellant’s Br. 38–40. According to Cook, in its final written
decision, the Board mistakenly considered whether claim
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20’s control member moves “distally relative to the clip.”
J.A. 107–12. Cook argues that the Board’s failure to con-
sider the actual language of claim 20 in making its decision
requires that the decision be vacated and remanded. Ap-
pellant’s Br. 39–40. Boston responds that the Board’s mis-
characterization was harmless because, although the claim
does not require that the control member move distally rel-
ative to the clip, it does require that the control member
“move distally.” Appellee’s Br. 44–45. The Board expressly
found that the portion of the specification Cook relied on
did not disclose “any distal movement of the stabilizing
rod.” J.A. 111. Thus, Boston argues that any mischarac-
terization by the Board was immaterial.
It is not possible for us to discern, on this record,
whether the Board’s failure to consider Malecki Embodi-
ment #2, and its failure to evaluate the actual language of
claim 20, were harmless. To do so would require us to, in
the first instance, construe the language of claim 20’s “dis-
tal movement” limitation and to decide, as a factual matter,
how the two Malecki embodiments operate. Those deter-
minations are properly put to the Board. We therefore va-
cate the Board’s decision that Cook failed to prove that
Malecki anticipates claim 20. We remand to the Board for
it to consider whether, given the claim’s actual language,
Malecki Embodiment #2 anticipates claim 20.
B. The Board Erred in Refusing to Consider
Boston’s Preliminary Patent Owner Response
Cook argues that the Board erred in finding that Cook
did not meet its burden of proving obviousness of claims 4–
6, 15, and 20 over Sackier combined with Nishioka. Appel-
lant’s Br. 41–62. Each of those claims require that the clip
detach from the control member via the application of
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tensile force. 2 The Board found the evidence was “evenly
divided” on whether Sackier discloses a frangible link (i.e.
one that separates via tensile force) or a connection
wherein the clamp applier engages laterally with the clip
via a lateral opening. J.A. 93.
The parties’ dispute centers on the nature of the rela-
tionship between the ball of Sackier Figure 15 and the
socket of Sackier Figure 16. Cook’s position is that Sackier
discloses a clip/control member combination that connect
and disconnect via a snap-fit connection (e.g., the way a
ballpoint pen’s lid connects to the pen). Boston Scientific’s
position is that Sackier discloses a clip/control member
combination wherein the ball engages with the socket from
the side and thus cannot be disengaged via tensile force.
Cook argues that the Board’s finding that the evidence was
“evenly divided” between the parties’ two theories is not
supported by substantial evidence. Appellant’s Br. 43–48.
In reaching its conclusion, the Board relied on three
pieces of evidence as support for the plausibility of Boston’s
position: (1) Sackier at column 1, lines 54–57 (J.A. 238),
(2) Sackier at column 10, lines 22–24 (J.A. 242), and
(3) paragraph 95 of Boston’s expert’s declaration (J.A.
14807–08). See J.A. 91–94. The first citation comes from
the “Background of the Invention” and provides that, in
laparoscopic surgery, undesirable separation of the clamp
from the applier cannot be tolerated. J.A. 238, col. 1, ll. 54–
57. The second citation provides that the dimensions of
Sackier’s ball are greater than the socket but that the
socket portion can open laterally to receive the ball:
2 Most claims expressly require “tensile force.” See
’027 patent, col. 15, l.33–col.17, l. 6. Others require a “fran-
gible link,” which the Board construed as “becom[ing] un-
linked when a tensile load is applied.” J.A. 91.
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In this embodiment the cylinder 174 has an inside
diameter which is greater than the diameter of the
ball 163. The flange 176 has an inside diameter
greater than the recess 161, but less than the di-
ameter of the ball 163.
Both of the cylinders 170 and 174 can be configured
to open laterally in order to permit the associated
flanges 172 and 176 to engage the recesses 165 and
161. In this operative position illustrated in F1G.
17, the shaft 58a can be moved relative to the tube
23a to engage the slide 47a and move it relative to
the supporting structure 34a and the jaws 36a, 38a.
J.A. 242, col. 10, ll. 20–31. The third citation is to Boston’s
expert’s testimony that Sackier is designed to prevent un-
linking via the application of a tensile load. J.A. 1407–08,
¶ 95. The Board found Boston’s evidence credible. J.A. 93.
The Board also considered Cook’s argument that, gram-
matically, Sackier says the flanges “open laterally” (verb
form of “open”), not that the clamp and applier engage via
“lateral openings” (noun form of “opening”). J.A. 93. And
the Board dismissed Cook’s examples of annular snap con-
nections as unrelated to medical devices. Id. The Board
did not address statements Boston made in its Preliminary
Patent Owner Response. During the hearing, the Board
explained that it would not consider such statements. 3 J.A.
1380–81.
3 In a related IPR, the Board addressed the Sackier
attorney admission issue in its final written decision. Cook
Grp. Inc. v. Bos. Sci. Scimed, Inc., No. IPR2017-00135,
2018 Pat. App. LEXIS 10664, *67–68 (P.T.A.B. Nov. 15,
2018). The Board said that it had “considered Petitioner’s
argument that Patent Owner changed its position from the
Preliminary Response” and concluded that it “will not bind
Patent Owner to attorney arguments made in its
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Cook argues that the Board’s decision is not supported
by substantial evidence because the Board failed to con-
sider Boston’s Preliminary Patent Owner Response, in
which Boston explained:
Sackier teaches that the clamp applier in Figure 16
is opened laterally (i.e., widened) to attach the
clamp. Specifically, “[b]oth of the cylinders 170 and
174 can be configured to open laterally in order to
permit the associated flanges 172 and 176 to en-
gage the recesses 165 and 161.” By opening later-
ally, the cylinders are moved outwardly, thereby
widening the cylinder to fit the ball into the clamp
applier and permitting the flanges to engage the
associated recesses. In fact, Sackier teaches that
the lateral opening of the clamp applier is neces-
sary to engage the clamp because the flange 172
“has an inside diameter . . . less than the diameter
of the flange 167” and flange 176 “has an inside di-
ameter . . . less than the diameter of the ball 163.”
Thus, the ball will not fit into the clamp applier
without opening the clamp applier laterally.
J.A. 2445 (citations omitted). Cook argues that the Board
should have considered this admission and that, if the
Board had considered it, the Board could have reached only
one conclusion—that claims 4–6, 15, and 20 are obvious.
We agree that the Board should have considered Boston’s
admission, but we do not agree that fact necessarily
Preliminary Response.” Id. We understand the Board’s
statement in IPR2017–00135 as articulating the same
point it made during the hearing. That is, that the Board’s
view was that it was inappropriate to hold a party to attor-
ney statements made in a preliminary patent owner re-
sponse.
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requires a finding by us that Cook satisfied it burden to
prove the relevant claims unpatentable.
The Board erred in refusing to consider Boston’s Pre-
liminary Patent Owner Response admission when it was
weighing the evidence supporting each side’s understand-
ing of Sackier. This is not a question we have expressly
addressed before. It is well established, however, that a
statement made by a party in an individual or representa-
tive capacity may be offered as evidence against that party.
Oscanyan v. Arms Co., 103 U.S. 261, 263 (1880); Tyler Re-
frigeration v. Kysor Indus. Corp., 777 F.2d 687, 690 (Fed.
Cir. 1985); Fed. R. Evid. 801(d)(2)(A). We hold, therefore,
that an admission in a preliminary patent owner response
is evidence appropriately considered by a factfinder. The
amount of weight to give an admission is, however,
properly considered in the first instance by the factfinder.
A factfinder may give this admission great weight, some
weight, or zero weight, depending on the context. Accord-
ingly, we vacate the Board’s finding that Sackier and Nish-
ioka do not render claims 4–6, 15, and 20 obvious, and
remand for the Board to consider, in the first instance, Bos-
ton’s admission and the impact of that admission on the
balance of the evidence.
C. Substantial Evidence Supports the Board’s
Finding That Cook Failed to Prove
Claims 4–6, 15, and 20 Obvious
Over Nishioka and Matsuno
Cook argues that the Board erred when it found that
Cook did not meet its burden to establish that a POSA
would have been motivated to combine Nishioka with
Matsuno. Appellant’s Br. 63–76. After considering Cook’s
evidence and argument on motivation to combine, the
Board explained:
[W]e are left with the loss of the key functions of
the Nishioka device – to identify and excise tissue
samples. A conclusory statement that the person
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18 COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
INC.
of ordinary skill in the art could modify Nishioka to
obtain the same benefits for the Nishioka clip that
are disclosed in Matsuno fails to address motiva-
tion to make the combination in the first place.
Moreover, the loss of both functions in Nishioka
again is such that it would not satisfy its intended
purpose. We find this combination most likely mo-
tivated solely by impermissible hindsight.
J.A. 42. Cook argues that this was error because the Board:
(1) erred in finding no motivation to combine unless the
prior art reference retained its “key functions,” (2) errone-
ously failed to consider Cook’s post-institution evidence,
and (3) erred by failing to provide adequate reasons for re-
jecting the combination. Appellant’s Br. 64–73.
First, Cook argues, we have not required preservation
of all desirable properties of the prior art to find obvious-
ness. For example, we have affirmed the Board’s finding
of obviousness despite the fact that the proposed modifica-
tion to the primary prior art reference would render it in-
operable for its intended purpose. In re Urbanski, 809 F.3d
1237, 1242–43 (Fed. Cir. 2016).
The Board did not err as a matter of law when it ex-
plained that the loss of key functions in the primary refer-
ence here supports a finding of no motivation to combine.
Cook is correct that the loss of key functionality does not
necessitate a finding of nonobviousness where the pa-
tentee’s “claims do not require the [primary reference]’s
benefit that is arguably lost by the combination with [the
second reference].” See Urbanski, 809 F.3d at 1244 (ex-
plaining that loss of key functionality can be overcome by
evidence that a POSA would nevertheless be motivated to
combine references). In DePuy, however, we explained,
“[a]n inference of nonobviousness is especially strong
where the prior art’s teachings undermine the very reason
being proffered as to why a person of ordinary skill would
have combined the known elements,” i.e., where a prior art
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COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED, 19
INC.
reference “teaches away” from the proposed modification.
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1326 (Fed. Cir. 2009). Together, these cases
stand for the proposition that, where the motivation to
combine rests on a modification alleged to improve the pri-
mary reference, as is the case here, the Board may consider
whether the modification renders the reference inoperable
for its intended function in deciding whether a POSA would
have a motivation to combine the references, even if that
function is not a feature of the claimed device at issue. The
Board did not err in finding that this is not a situation
where “one of ordinary skill would have been motivated to
pursue the desirable properties taught by [the secondary
reference], even at the expense of foregoing the benefit
taught by [the primary reference].” Urbanski, 809 F.3d at
1243. The Board did not improperly expand that proposi-
tion to a per se rule in this case. Rather, the Board properly
weighed the loss of key functions as a relevant factor in the
motivation to combine analysis.
Second, Cook argues that the Board failed to consider
Cook’s post-institution evidence—including expert testi-
mony and medical articles. It is well established that the
Board must consider all record evidence in its final written
decision. See Genzyme Therapeutic Prod. Ltd. v. Biomarin
Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016). The
Board expressly considered only paragraphs 64–65 of
Cook’s expert’s declaration in the section of the final writ-
ten decision discussing the combination of Nishioka and
Matsuno. J.A. 41–42. The Board, however, considered
Cook’s post-institution evidence in its discussion of Nish-
ioka in combination with Shinozuka. J.A.38–39. The
Board cross-referenced that portion of the decision when
discussing the Nishioka/Matsuno combination. J.A. 42.
The Board therefore properly considered all the evidence
before it and did not err.
Third, Cook argues that the Board’s analysis is inade-
quate and therefore not in accordance with the law.
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20 COOK GROUP INCORPORATED v. BOSTON SCIENTIFIC SCIMED,
INC.
Appellant’s Br. 72–73. We do not agree. The Board fully
considered the record before it. We conclude that the
Board’s finding that a POSA would not be motivated to
combine Nishioka and Matsuno is supported by substantial
evidence.
D. Substantial Evidence Supports the Board’s
Finding that Claims 1–3, 7–14,
and 16–19 are Unpatentable
Boston cross-appeals the Board’s determination that
claim 1–3, 7–14, and 16–19 are unpatentable over Nishioka
and over Nishioka in combination with Sackier. We have
considered Boston’s arguments. We conclude that the
Board’s decision as to these claims is in accordance with
the law and supported by substantial evidence. We there-
fore affirm as to all issues raised in Boston’s cross-appeal.
III. CONCLUSION
In sum, we vacate and remand the Board’s decision on
the patentability of claim 20 over Malecki and on the pa-
tentability of claims 4–6, 15, and 20 over Sackier and Nish-
ioka. We affirm the Board’s decisions in all other respects.
AFFIRMED AS TO CASE NOS. 2019-1370, 2019-1375,
2019-1377; VACATED AND REMANDED AS TO
CASE NO. 2019-1372
COSTS
The parties shall bear their own costs.