Rowe v. Dror

• Decision Date: 21 April 1997
• Docket Number: No. 96-1304,96-1304
• Citation: 42 USPQ2d 1550,112 F.3d 473
• Parties: Stanton J. ROWE, Appellant, v. Michael DROR and Paul Trescony, Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 473

112 F.3d 473

42 U.S.P.Q.2d 1550

Stanton J. ROWE, Appellant, v. Michael DROR and Paul Trescony, Appellees.

No. 96-1304.

United States Court of Appeals Federal Circuit.

April 21, 1997.

George H. Gerstman, Gerstman, Ellis & McMillin, Ltd., Chicago, Illinois, argued for appellant. With him on the brief was Terrence W. McMillin.

Bruce M. Collins, Mathews, Woodbridge & Collins, P.A., Princeton, New Jersey, argued for appellees. Of counsel were Ronald Gould, Glen E. Books, Scott N. Bernstein, Mathews, Woodbridge & Collins, P.A., and Daniel W. Latham, Medtronic, Inc., Minneapolis, Minnesota.

Before LOURIE, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and RADER, Circuit Judge.

RADER, Circuit Judge.

This is an appeal from a final decision in Interference No. 103,157. The interference involves United States Patent Application No. 07/865,781, filed by Stanton J. Rowe (Rowe) with a priority date of March 14, 1989 and assigned to Cordis Corp. (Rowe application), and United States Patent No. 5,102,402, issued to Michael Dror and Paul Trescony (collectively, Dror) based on an application filed on January 4, 1991 and assigned to Medtronic, Inc. (Dror patent). The Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) found that Jerome H. Lemelson's United States Patent No. 4,900,303 (Lemelson patent) anticipated both parties' claims corresponding to the count. Because the Board clearly erred in finding anticipation, this court reverses and remands.

BACKGROUND

The subject matter of this interference relates generally to balloon angioplasty catheters. These catheters include a balloon that inflates within a blood vessel to reduce internal blockage and allow blood to flow freely. In particular, the balloon catheters aid angioplasty procedures by treating an area of stenosis, or accumulated plaque along the inner walls of a blood vessel. See generally C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 671, 15 USPQ2d 1540, 1541 (Fed.Cir.1990) (describing angioplasty procedures). In such a procedure, the balloon catheter inflates radially in the area of stenosis, thereby compressing the plaque against the blood vessel walls.

The balloon angioplasty catheters in this case have a covering of microcapsules on the outer surface of the balloon. These microcapsules can administer a medicinal or diagnostic substance during the angioplasty procedure. The action of the balloon inflating against the inner wall of a vessel ruptures the microcapsules and releases the substance. The microcapsules may administer, for example, a chemical that will cause the accumulated plaque to harden and maintain its dilated shape, or a chemical that will cause dissolution of the plaque.

Figure 3 of the Rowe application illustrates a balloon catheter used in an angioplasty operation. The illustration shows an angioplasty catheter (14) with a balloon section (16) in an area of stenosis (12) in a coronary artery (10). The balloon has expanded the stenosis and, simultaneously, deposited a therapeutic agent (20).

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Similarly, Figures 1 and 3 of the Dror patent illustrate a balloon catheter (10) having an inflatable balloon (12) covered with microcapsules (16).

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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Although Rowe is the senior party in this Interference, the Dror patent issued before completion of the examination of the Rowe application, which is still pending. When the Dror patent issued, Rowe copied several claims from the Dror patent into his application. The PTO declared an interference and designated the first copied claim as the sole interference count. That count, which corresponds to claims 53-66 of the Rowe application and claims 1-8, 10-15 and 17-21 of the Dror patent, reads:

1. In a balloon angioplasty catheter of the type comprising a catheter body and a balloon positioned along the length of the catheter body, said balloon including means for remotely inflating and deflating said balloon; the improvement comprising:

(a) a plurality of microcapsules on the exterior of said balloon, each of said microcapsules carrying a drug or combination of drugs for treatment or diagnostics within a body lumen when said catheter is positioned and inflated therewithin such that the drug or drugs may be released from said microcapsules.

(Emphasis added to show disputed passages).

During the motion period before the PTO, Dror filed a motion seeking judgment against Rowe on the ground that the Lemelson patent anticipated some of Rowe's claims corresponding to the count. See 37 C.F.R. § 1.633(a) (1996).

The Lemelson patent describes a general purpose catheter with a swab or balloon (with microcapsules) for applying medicine into a body duct. Figure 12 of the Lemelson patent shows the head of a catheter with a tubular catheter sidewall (137) surrounding a medicated swab (144). The medicated swab (144) may extend out the end of the catheter (by the pushing action of a piston (140)) to apply medicine to internal body tissue. The reference teaches as well that the swab (144) could carry the medicine in microcapsules.

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Although the Lemelson patent does not illustrate a balloon catheter, it teaches that the medicated swab (144) in Figure 12 "may be replaced by an inflatable enclosure, such as a rubber finger or balloon, which is controllably inflated from within the catheter chamber or upon being projected therefrom as described."

Acting on Dror's motion, the administrative patent judge found that the Lemelson patent anticipates all of Rowe's and Dror's claims corresponding to the count. ¹ The Board upheld the decision of the administrative patent judge and entered final judgment against both Rowe and Dror. Rowe filed this appeal. On appeal Rowe contends that the Board erred by failing to treat "angioplasty" as a claim limitation. Rowe further argues that the Lemelson patent cannot anticipate his claims because it discloses neither "a balloon positioned along the length of the catheter body" nor a "means for remotely inflating and deflating said balloon."

DISCUSSION

The PTO may, during the course of an interference, determine the patentability of any claim involved in the interference. See 37 C.F.R. § 1.633(a) (1996) (allows a party to an interference to move for judgment against the other party on the grounds that the count is not patentable to that party for any reason other than priority or derivation); see also 37 C.F.R. § 1.641 (1996) (allows administrative patent judge to raise the issue of patentability sua sponte ). In such cases, the PTO is passing on the patentability of claims, not counts. See In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.Cir.1993). Thus, the PTO must separately determine the patentability of each claim in the interference, just as it would in an ex parte prosecution. See Eiselstein v. Frank, 52 F.3d 1035, 1037, 34 USPQ2d 1467, 1468-69 (Fed.Cir.1995); Van Geuns, 988 F.2d at 1186; see also PTO Notice of Final Rule, Patent Appeal and Interference Practice, 60 Fed.Reg. 14488, 14506, 1173 Off. Gaz. Pat. Office 36, 51 (1995) ("There is no presumption in an interference that because one claim designated to correspond to a count is unpatentable over the prior art (35 U.S.C. 102(a), (b) and (e)), that all claims are unpatentable over the same prior art."); 37 C.F.R § 1.633(a) (1996) (requiring motions filed after April 21, 1995, to "separately address each claim alleged to be unpatentable"). However, where the party urging patentability does not separately address the patentability of each claim corresponding to a count, the Board has reason to treat all claims together. See Van Geuns, 988 F.2d at 1186. In such cases, all claims corresponding to the count stand or fall together. See id.; see also In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed.Cir.1986) (dependent claims stand or fall with independent claims unless argued separately). Because Rowe did not separately argue the patentability of his various claims before the administrative patent judge or the Board, this court need not treat those claims separately either.

This court reviews the Board's finding of anticipation as a question of fact subject to the clear error standard. See id. at 1326. "A finding is 'clearly erroneous' when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948).

A prior art reference anticipates a claim only if the reference discloses, either expressly or inherently, every limitation of the claim. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.Cir.1987). "[A]bsence from the reference of any claimed element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed.Cir.1986).

This appeal depends on whether the claim phrase "balloon angioplasty catheter," which appears only in the claim preamble, is or is not an affirmative limitation of the claim. The Board interpreted the claim as "drawn to the subject matter of a balloon catheter of general utility" and gave no meaning to the word "angioplasty." On this basis, the Board concluded that the Lemelson patent, which admittedly discloses only a general purpose catheter, anticipated Rowe's claims. Rowe urges that the Board erred in failing to limit the claims at issue to angioplasty catheters.

"[A] claim preamble has the import that the claim as a whole suggests for it." Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed.Cir.1995). Where a patentee uses the claim preamble to recite structural limitations of...