A Close Case: Federal Circuit Affirms Board Decision Finding Unusually Strong Objective Evidence of Nonobviousness

On June 5, the Federal Circuit issued two decisions affirming the Board’s findings of nonobviousness in Medtronic, Inc. v. Teleflex Innovations S.A.R.L, No. 2021-2357 (Fed. Cir. Jun. 5, 2023) and Medtronic, Inc. v. Teleflex Innovations S.A.R.L, No. 2021-2359 (Fed. Cir. Jun. 5, 2023).

Medtronic requested inter partes reviews of several Teleflex patents relating to cardiac catheters at the Patent Trial and Appeal Board. Relevant to No. 2021-2357, the Board held numerous claims not unpatentable after finding that Teleflex’s “strong objective evidence of obviousness” overcame Medtronic’s prima facie case of obviousness.

On appeal, Medtronic argued that the Board erred in crediting Teleflex’s secondary considerations and, among other things, “ignoring” Medtronic’s motivations to combine. The Federal Circuit disagreed, determining that the Board correctly found that a presumption of nexus applied and that Teleflex’s evidence of Medtronic having access to, and Medtronic’s competitor product being substantially similar to, Teleflex’s patented product was “more than sufficient” and “particularly persuasive” to support a finding of copying.

As to Medtronic’s prima facie case, the Federal Circuit concluded that the alleged legal errors were “mere[ly] disagreement with the Board’s fact finding.” Moreover, the court found that, “[e]ven accepting Medtronic’s arguments concerning the prior art’s disclosures and motivations to combine” as true, “the unusually strong objective evidence in this case strongly supports a determination of nonobviousness.”

The Federal Circuit took a similar approach in affirming the Board’s determination of nonobviousness in No. 2021-2359—finding that Medtronic’s arguments were “premised on an assertion of fact contrary to the Board’s findings” not legal error, and that the “Board’s decision to credit Teleflex’s experts over Medtronic’s does not render its finding unsupported by substantial evidence.”

In each appeal, Medtronic also argued that the Board erred in granting Teleflex’s motion to amend certain claims for lack of written description. Applying its holding in Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., the Federal Circuit explained in No. 2021-2359 that “the absence of embodiments” in the application “did not preclude written description” so long as a skilled artisan would reasonably conclude that the applicant possessed the subject matter of the amended claims.