Applicant Admitted Prior Art Can (Sometimes) Show Obviousness

SHOCKWAVE MED., INC., V. CARDIOVASCULAR SYS., INC.

Before Lourie , Dyk, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019-00405.

Summary : In inter partes review proceedings, applicant admitted prior art may be used as evidence of the background knowledge of a person of ordinary skill in the art, and that background knowledge can be used to supply missing claim limitations in an obviousness combination.

Cardiovascular Systems (“CSI”) filed an IPR petition challenging a Shockwave patent directed to angioplasty catheters used to break up plaque in blood vessels. CSI argued that the challenged claims would have been obvious in view of a European patent publication, “Levy,” modified in view of the applicant’s admitte