NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

BOSTON SCIENTIFIC SCIMED, INC.,

Appellant

v.

COOK GROUP INCORPORATED, COOK MEDICAL 

LLC,

Cross-Appellants

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________

2019-1594, 2019-1604, 2019-1605

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2017-

00435, IPR2017-00440.

______________________

Decided: April 30, 2020

______________________

DAVID A. CAINE, Arnold & Porter Kaye Scholer LLP, 

Palo Alto, CA, argued for appellant. Also represented by 

MATTHEW WOLF, Washington, DC. 

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 LAURA A. LYDIGSEN, Brinks Gilson & Lione, Chicago, 

IL, argued for cross-appellants. Also represented by 

JEFFRY M. NICHOLS, SARAH GOODMAN, ANDREW 

MCELLIGOTT, JASON WAYNE SCHIGELONE. 

 SARAH E. CRAVEN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

intervenor. Also represented by THOMAS W. KRAUSE,

ROBERT J. MCMANUS, FARHEENA YASMEEN RASHEED. 

 ______________________

Before PROST, Chief Judge, DYK and O’MALLEY, Circuit 

Judges.

DYK, Circuit Judge.

Boston Scientific Scimed, Inc. (“Boston”) appeals from 

the final written decisions of the Patent Trial and Appeal 

Board (“Board”) in two related inter partes reviews 

(“IPRs”), Nos. 2017-00435 and -00440, finding that claims 

1–4, 6–7, 9–16, 18, and 20 and proposed amended claims 

21, 30, and 38 of U.S. Patent No. 9,271,731 (“the ’731 patent”) are unpatentable. Cook Group Inc. and Cook Medical LLC (collectively, “Cook”) cross-appeal from the Board’s 

finding that Cook failed to demonstrate by a preponderance of the evidence the unpatentability of claims 5, 8, 17, 

and 19 of the ’731 patent. The Director of the U.S. Patent 

& Trademark Office (“government”) intervened for the limited purpose of determining “whether the Board, after deciding that the petitioner has prevailed on all its 

challenged claims, must decide [any] additional grounds 

[raised in the petition under] 35 U.S.C. § 318(a) and SAS 

Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).” U.S. Br. 1. 

Because the Board erred in its analysis of claims 8 and 20,

we vacate and remand to the Board for further consideration of those claims. On all other grounds, we find no error 

in the Board’s decision and affirm.

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BACKGROUND

I

The ’731 patent discloses a reversibly closeable compression clip for endoscopically stopping bleeding of blood 

vessels along the gastrointestinal tract. Claims 1 and 20

are representative of the claims at issue on appeal:

1. A medical device, comprising:

a clip including first and second clip arms, the clip 

being movable between an open tissue receiving 

configuration in which the first and second arms 

are separated from one another by a distance selected to receive tissue there between and a closed 

configuration in which the first and second arms 

are moved inward to capture the tissue received 

therebetween; and

an opening element engaging inner walls of the 

first and second clip arms, the opening element 

urging the first and second clip arms away from 

one another into the open tissue-receiving configuration, wherein the opening element is movable between an expanded configuration and a retracted 

configuration to correspond to a movement of the 

clip between the open tissue receiving configuration and the closed configuration.

J.A. 172 at 15:36–52.1 

20. A method for capturing tissue, comprising:

inserting a medical device comprising a clip having 

first and second clip arms to a target tissue site, the 

1 Independent claim 12 further includes “a control 

wire coupled to a proximal end of the clip and operable to 

move the clip between the open and closed configurations.” 

J.A. 172 at 16:40–42. 

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clip including an opening element engaging inner 

walls of the first and second clip arms and urging 

the clip to an 5 open tissue receiving configuration;

moving a control wire coupled to a proximal end of 

the clip distally to move the first and second clip 

arms away from one another to the open tissue receiving configuration;

moving the control wire proximally to move the 

first and 10 second clip arms toward one another to 

a closed tissue capturing configuration; and 

applying a proximal tensile force exceeding a 

threshold level to the control wire to separate the 

control wire from the clip. 

J.A. 173 at 17:1–15.

II

Cook’s petitions asserted several grounds of unpatentability, challenging claims 1–20 of the ’731 patent based on

U.S. Patent No. 5,626,607 (“Malecki”), U.S. Patent No. 

5,749,881 (“Sackier”), U.S. Patent No. 5,843,000 (“Nishioka”), and Japanese Patent Application No. S58-211381 

(“Shinozuka”). The Board found claims 1–3, 10–16, and 18 

unpatentable as anticipated by and obvious over Nishioka

and claims 1–2, 4, 6–7, 9–10, 12–13, and 20 unpatentable

as obvious over Shinozuka and Sackier. The Board found 

that Cook failed to carry its burden to prove claim 17 unpatentable as anticipated by or obvious over Malecki and 

to prove claim 8 unpatentable as obvious over Sackier and

Shinozuka. The Board also rejected Boston’s proposed 

amended claims 21, 30, and 38 as obvious over a new 

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combination of references—Sackier and U.S. Patent No.

4,733,664 (“Kirsch”).2

The parties timely appealed the Board’s final decisions. 

We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

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). 

I

On appeal, Boston challenges the Board’s finding that 

claims 1–3, 10–16, and 18 unpatentable as anticipated by 

and obvious over Nishioka and that claims 1–2, 4, 6–7, 9–

10, 12–13, and 20 unpatentable as obvious over Shinozuka 

and Sackier. Boston also challenges the Board’s rejection 

of proposed amended claims 21, 30, and 38 as obvious over 

Sackier and Kirsch. 

On cross-appeal, Cook challenges the Board’s finding 

that claim 8 is non-obvious over Shinozuka and Sackier

and that claim 17 is not anticipated by Malecki. Cook also 

argues that it was error for the Board to not find claims 5, 

8, 17, and 19 obvious over Sackier and Kirsch in view of its 

decision finding proposed amended claims 21, 30, and 38

obvious over these references. 

We have considered Boston’s and Cook’s arguments on 

appeal and cross-appeal. We conclude that the Board’s decisions of patentability as to claims 1–4, 6–7, 9–16, 18, and 

proposed amended claims 21, 30, and 38 are in accordance 

with the law and supported by substantial evidence. We 

2 We describe the proceeding below only as it relates 

to the claims at issue on appeal. 

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therefore affirm as to all anticipation and obviousness issues related to these claims.

Two remaining issues require discussion: the Board’s 

inconsistent analysis of claims 8 and 20, and Cook’s argument as to claims 5, 8, 17, and 19.

A

Both parties argue that the Board’s conclusions as to 

claim 8 and claim 20 are internally inconsistent. The 

Board found claim 8 not unpatentable over Shinozuka and 

Sackier while finding claim 20 unpatentable over the same 

references. 

Claim 8 requires that the “application of a proximal 

tensile force greater than the predetermined threshold

value causes the control wire to disengage from the clip.” 

J.A. 172 at 16:4–6. Claim 20 requires “applying a proximal 

tensile force exceeding a threshold level to the control wire 

to separate the control wire from the clip.” J.A. 173 at 

17:13–15. Thus, as the parties acknowledge, both claim 8 

and claim 20 are directed to a clip detachable or separable

via tensile force from a control wire. 

The prior art Sackier reference discloses a clamp that 

can be moved between a free (open) state and operable 

(closed) state for use in occluding portions of the body during laparoscopic surgery. Sackier also discloses a clamp 

applier that contains a means to engage and disengage the 

clamp jaws. The relevant aspects of Sackier are depicted 

in Figures 15–17: 

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J.A. 3694.3 

Shinozuka discloses a clip device that can be inserted 

into the body, along with a control wire, during an endoscopy. Once the clip is closed by a clip-tightening ring, it can 

be disengaged from the control wire via jiggling, in the 

plane defined by axes a-b, as shown below, and left within 

the body.

3 The Sackier patent issued with some figures that 

do not have reference numbers. See J.A. 3387. For convenience, we include the numbered figures submitted by Boston during prosecution, rather than the figures from the 

issued patent. 

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J.A. 3407.

For claim 8, the Board found that neither Sackier nor 

Shinozuka discloses disengaging the clip with tensile force,

and the claim is thus not obvious over this combination of 

references. It explained that “Sackier’s existing ball and 

socket clamp is not detachable through the application of a 

proximal tensile force,” J.A. 55, and that, in Shinozuka,

“[t]he movement in the ‘a’ or ‘b’ direction or a combination 

of these directions allows for the claw to essentially be ‘jiggled’ or shaken off, but not pulled by a tensile load,” J.A. 

54. Since claim 20, just as claim 8, requires a control wire 

with a connection breakable from a tensile force, the 

Board’s conclusion that claim 20 is obvious over the same 

set of references is inconsistent, and a remand is required 

to address the inconsistency.

On remand, the Board must consider the patentability 

of claim 8 without relying on its decision in IPR2017-00135 

(IPR ’135). J.A. 55 (citing Cook Grp. Inc. v. Bos. Sci. 

Scimed, Inc., No. IPR2017-00135, 2018 Pat. App. LEXIS 

10664 (P.T.A.B. Nov. 15, 2018)). In finding claim 8 not unpatentable in view of Sackier and Shinozuka, the Board referred to IPR ’135 that analyzed Sackier in relation to a 

similar claim limitation, in claims 11, 15, and 17 of U.S.

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Patent No. 8,974,371, requiring a “control element” detachable via tensile force. See Cook Grp., 2018 Pat. App. LEXIS 

10664, at *73–74. In finding here that “Sackier’s existing 

ball and socket clamp is not detachable through the application of a proximal tensile force” with respect to claim 8,

the Board relied primarily on its reasoning in IPR ’135.

J.A. 55. This was error because in IPR ’135 the Board took 

little or no account of the fact that “Patent Owner changed 

its position from the Preliminary Response” regarding

whether Sackier discloses a clip with “a link . . . that become[s] unlinked when a tensile load is applied.” Cook 

Grp., 2018 Pat. App. LEXIS 10664, at *18, *67–68, *74. As 

discussed in our decision in Cook Group Inc. v. Boston Scientific Scimed, Inc., No. 2019-1370 (Fed. Cir. 2020) (Cook 

Group I), being issued contemporaneously, we hold that 

“an admission in a preliminary patent owner response, just 

like an admission in any other context, is evidence appropriately considered by a factfinder.” Id., slip op. at 17. On 

remand, the Board thus cannot rely on its reasoning in IPR 

’135 and must make a new determination about whether 

Sackier discloses a link detachable via tensile force in light 

of Boston’s admissions made in its preliminary patent 

owner responses in the proceedings addressed in Cook 

Group I and IPR ’135. 

In rendering a decision regarding whether Sackier discloses a link detachable via tensile force, the Board must 

be consistent with the decision it renders pursuant to 

IPR2017-00134, which is vacated and remanded in Cook 

Group I.

B

 On cross-appeal, Cook argues that because the original claims of the ’731 patent (including dependent claims 

5, 8, 17, and 19 not found unpatentable by the Board) contain the same limitations as the proposed amended claims

21, 30, and 38, which the Board rejected over Sackier and 

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Kirsch, the Board should have found the original claims 

unpatentable over those references as well.

Cook never asserted that the ’731 patent claims were

obvious over Sackier and Kirsch in its petitions. We have 

previously rejected the argument that Cook now makes in 

Sirona Dental Systems GmbH v. Institut Straumann AG, 

892 F.3d 1349 (Fed. Cir. 2018). In Sirona, the petitioner 

argued that the Board should apply its findings from a denial of patent owner’s motion to amend original claims 1–8 

to its analysis of a claim term of “similar scope” in original 

claims 9 and 10. Id. at 1357–58. We rejected this argument because “[w]hen analyzing the contingent motion to 

amend, the Board considered multiple references . . . that 

were not asserted together in the petition.” Id. at 1358. 

Just as in Sirona, “Petitioners [here] are, in essence, attempting to add references to the ground of unpatentability 

put forth in their petition[s].” Id. Because Cook never asserted that the ’731 patent claims are obvious over Sackier 

and Kirsch in its petitions, “[w]e see no error in the Board’s 

decision not to decide grounds of unpatentability not raised 

in the petition[s].” Id. 

Cook contended at oral argument that “if th[is] court 

doesn’t take action, . . . Boston is going to assert those 

claims [5, 8, 17, and 19 in an infringement proceeding] . . . 

and then point to [35 U.S.C. § 315(e)] of the Patent Act governing Inter Partes Review and say[ Cook] can’t challenge

[those claims] even though there’s a finding of invalidity

[by the Board].” Oral Arg. 17:54–18:18, available at 

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=

2019-1594.mp3. But because this theory—i.e., that claims 

5, 8, 17, and 19 of the ’751 patent are invalid under a theory 

of collateral estoppel in a district court proceeding—is not 

one Cook “reasonably could have raised” in the IPR proceeding, Cook may still assert this theory in district court. 

We of course do not address the merits of the collateral estoppel theory. 

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II

In its opening cross-appeal brief, Cook argued that “the 

Board violated the Supreme Court’s mandate in SAS” 

when the Board declined to address Cook’s alternative arguments with respect to claims it found unpatentable on 

other grounds. Cook Op. Br. 84–86. The government intervened asking us to find that “[t]he Board has the discretion to decline to decide additional instituted grounds once 

the petitioner has prevailed on all its challenged claims.” 

U.S. Br. 3. Cook clarified at oral argument that it does not

dispute that the Board has such discretion. We agree that 

the Board need not address issues that are not necessary 

to the resolution of the proceeding.

CONCLUSION

We vacate and remand the Board’s decision on the patentability of claims 8 and 20 over Shinozuka and Sackier. 

We affirm the Board’s decisions in all other respects. 

AFFIRMED IN PART AND VACATED AND 

REMANDED IN PART

COSTS

Each party shall bear its own costs.

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