NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

SNYDERS HEART VALVE LLC,

Appellant

v.

ST. JUDE MEDICAL, LLC,

Appellee

UNITED STATES,

Intervenor

______________________

2019-2111

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2018-

00107.

______________________

Decided: October 5, 2021

______________________

MATTHEW JAMES ANTONELLI, Antonelli, Harrington & 

Thompson, LLP, Houston, TX, for appellant. Also represented by ZACHARIAH HARRINGTON, LARRY D. THOMPSON,

JR.; SARAH RING, Daniels & Tredennick, Houston, TX. 

 JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington, 

DC, for appellee. Also represented by HANNAH LAUREN 

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2 SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC

BEDARD, JASON M. WILCOX; BRYAN SCOTT HALES, KRISTINA 

NICOLE HENDRICKS, Chicago, IL. 

 MELISSA N. PATTERSON, Appellate Staff, Civil Division, 

United States Department of Justice, Washington, DC, for 

intervenor. Also represented by JEFFREY B. CLARK,

COURTNEY DIXON, SCOTT R. MCINTOSH; THOMAS W.

KRAUSE, ROBERT MCBRIDE, FARHEENA YASMEEN RASHEED, 

Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA.

 ______________________

Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.

O’MALLEY, Circuit Judge. 

This is the second time we have considered this appeal. 

We previously vacated and remanded the inter partes review (“IPR”) at issue in this appeal for rehearing by the Patent Trial and Appeal Board (“Board”) pursuant to our 

opinion in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 

1320 (Fed. Cir. 2019). Snyders Heart Valve LLC v. St. Jude 

Med., LLC, 825 F. App’x 888 (Fed. Cir. 2020), cert. granted, 

judgment vacated sub nom. Iancu v. Fall Line Pats., No. 

20-853, 2021 WL 2637823 (U.S. June 28, 2021). In that 

opinion, we reached only Snyders Heart Valve LLC’s 

(“Snyders”) arguments under the Appointments Clause. 

We did not address the merits of the Board’s decision. The 

United States of America, which intervened in the appeal, 

sought certiorari to challenge our remand. After its decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 

(2021), the Supreme Court vacated and remanded the matter to us for reconsideration in light of its decision. Iancu, 

2021 WL 2637823. On remand, Snyders waives its Appointments Clause challenge and asks that we address its 

appeal on the merits. We do so and reverse the Board’s determination that the challenged claims are unpatentable 

because that finding rests on an erroneous claim construction.

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SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC 3

I. BACKGROUND

In October 2016, Snyders sued St. Jude Medical, LLC 

(“St. Jude”) in the Eastern District of Texas. It alleged that 

St. Jude had infringed two patents directed to “artificial 

heart valves for repairing damaged heart valves”: U.S. Patent No. 6,540,782 and U.S. Patent No. 6,821,297. ’782 patent, col. 1 ll. 15–16; ’297 patent, col. 1 ll. 15–16. In October 

2017, St. Jude filed four IPR petitions challenging claims 

of the two patents. 

At issue in this appeal is IPR2018-00107 (“IPR-107”), 

in which St. Jude challenged claims 1–3, 8, 9, 22, 23, 31–35, 

37–39, and 45 of the ’297 patent. The key prior art in this 

appeal is U.S. Patent No. 5,855,601 (“Bessler”). Bessler discloses an artificial heart valve and a method and device for 

installing that valve. ’601 patent, col. 2 ll. 55–67.

In its final written decision in IPR-107, the Board 

found all challenged claims of the ’297 patent unpatentable 

as either anticipated by Bessler or obvious over Bessler in 

combination with other prior art references. St. Jude Med., 

LLC v. Snyders Heart Valve LLC, IPR2018-00107, 2019 

WL 1978347 (P.T.A.B. May 2, 2019). Snyders appealed to 

this court. In its appeal, it raised, inter alia, an Appointments Clause challenge and challenges to the Board’s final 

written decision on the merits. We vacated the Board’s decision and remanded for a new hearing in compliance with 

this court’s decision in Arthrex. The United States petitioned the Supreme Court for a writ of certiorari. After the 

Supreme Court devised a new remedy for the Appointments Clause violation in United States v. Arthrex, Inc., 

141 S. Ct. 1970 (2021), it granted the United States’ petition, vacated, and remanded to this court for further consideration in light of its Arthrex decision. 

In other cases where we have received similar remands 

from the Supreme Court, we have remanded to the Patent 

Office for the Director to review the Board’s decision. But, 

in this case, all parties agree that Snyders has waived its 

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4 SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC

Appointments Clause challenge and that remand to the Patent Office for Director review is not proper. Snyders argues that we should reverse the Board’s unpatentability 

decision on the merits in light of our intervening decision 

reversing portions of the Board’s decision in one of the ’782 

patent IPR proceedings. St. Jude contends that reversal is 

not appropriate and that we should, instead, remand to the 

Board for reconsideration in light of our intervening decision concerning the ’782 patent. 

We agree with Snyders’ argument and find that, on this 

record, reversal is the appropriate course of action. For the 

same reasons that we reversed the Board’s unpatentability 

decisions as to claims 1, 2, 6, and 8 in the ’782 patent IPR 

proceedings, we reverse the Board’s unpatentability decisions as to claims 1–3, 8, 9, 22, 23, 31–35, 37–39, and 45 of 

the ’297 patent. 

The ’782 Patent IPR Proceedings 

In IPR2018-00106 (“IPR-106”), the Board ruled that St. 

Jude had shown by a preponderance of the evidence that 

claims 1, 2, 6, and 8 of the ’782 patent were unpatentable 

but had failed to establish unpatentability of all other challenged claims. St. Jude Med., LLC v. Snyders Heart Valve 

LLC, IPR2018-00106, 2019 WL 1975349 (P.T.A.B. May 2, 

2019). St. Jude appealed some of the Board’s findings and 

Snyders cross-appealed the Board’s unpatentability findings as to claims 1, 2, 6, and 8. We affirmed the Board’s 

findings that certain claims were not shown unpatentable 

but reversed the Board’s finding that claims 1, 2, 6, and 8 

are unpatentable. St. Jude Med., LLC v. Snyders Heart 

Valve LLC, 977 F.3d 1232 (Fed. Cir. 2020). Our opinion as 

to claims 1, 2, 6, and 8 focused on the limitation “a flexibly 

resilient frame sized and shaped for insertion in a position 

between the upstream region and the downstream region,” 

and, particularly, the “sized and shaped” requirement. We 

held that the Board erred in construing the “sized and 

shaped” limitation of ’782 patent claim 1. Id. at 1240. We 

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SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC 5

reversed the Board’s finding that Bessler anticipated 

claims 1, 2, 6, and 8 because it was based on the Board’s 

erroneous construction of the “sized and shaped” limitation 

and because St. Jude had not preserved any argument that 

Bessler disclosed the “sized and shaped” limitation as 

properly construed. Id. at 1242.

The Board did not expressly construe the “sized and 

shaped” limitation in IPR-106. But, in finding that Bessler 

anticipated claims 1, 2, 6, and 8, it determined that “[t]he 

claim language does not require the frame be sized and 

shaped for insertion into a damaged heart valve,” but “only 

that the frame is sized and shaped for insertion in a position between the upstream region and the downstream region.” St. Jude, 2019 WL 1975349 at *9. The Board 

rejected Snyders’ argument that Bessler could not read on 

the limitation because Bessler’s valve is inserted in a 

“much larger space left following the excision and removal 

of a damaged heart valve.” Id. Thus, the Board concluded, 

Bessler satisfied the claim 1 limitation of a “frame sized 

and shaped for insertion between the upstream region and 

the downstream region.” Id. at *9. 

On appeal, Snyders argued that the Board’s construction was incorrect because it covers frames sized and 

shaped for installation with the native valve removed, rather than only with the native valve in place. We agreed. 

We found support for Snyders’ construction in the language of the ’782 claims and written description. Claim 1 

of the ’782 patent recites an “artificial heart valve for repairing a damaged heart valve having a plurality of cusps, 

separating an upstream region from a downstream region 

. . . comprising . . . a flexibly resilient frame sized and 

shaped for insertion between the upstream region and the 

downstream region.” ’782 patent, col. 10 ll. 22–27. We 

found that “[t]he requirement that the frame be ‘sized and 

shaped’ a certain way suggests a focus on how the frame is 

fitted to the surrounding material (which depends on 

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6 SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC

whether the native valve remains), a focus that goes beyond mere ‘linear’ position between two regions[.]” St. 

Jude, 977 F.3d at 1240. We also found that the Board’s 

construction would render claim 1’s reference to the damaged heart valve “having a plurality of cusps” superfluous 

because it would include instances where the damaged 

heart valve and its cusps are removed. Id. at 1240–41.

We then found evidence in the ’782 specification that 

“resolves the interpretive question” under the applicable 

broadest reasonable interpretation standard.1 Id. The ’782 

specification states that “the frame is sized and shaped for 

insertion between the plurality of cusps C of the damaged 

heart valve in a position between an upstream region and 

a downstream region.” ’782 patent, col. 5 ll. 48–51 (emphasis added). We found that this language “indicates that 

‘sized and shaped’ is not meant to refer only to placement 

in a position between the upstream and downstream regions, but also to fitting between the cusps of the intact native valve.” St. Jude, 977 F.3d at 1241. The specification 

also stresses that the claimed artificial heart valve can be 

inserted without removing the native valve—an improvement over prior art heart valves. See ’782 patent, col. 1 ll.

37–42 (‘‘[M]any [previous] valves also require the damaged 

native heart valve to be removed prior to implanting the 

artificial valve.’’); id., col. 1 ll. 40–42 (‘‘Removing the native 

valve increases the risk that a portion of the valve will migrate through the body and block vessels downstream from 

the heart.’’); id., col. 2 ll. 21–25 (‘‘Among the several objects 

and features of the present invention may be noted the 

1 Challenged claims in IPR petitions filed prior to 

November 13, 2018 are construed under the broadest reasonable interpretation standard. 37 C.F.R. § 42.100(b) 

(2016); St. Jude, 977 F.3d at 1238 n.3. IPR-106 and IPR-107 

were both filed in 2017, so the broadest reasonable interpretation standard applies. 

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SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC 7

provision of an artificial heart valve which accommodates 

implantation without removing the damaged native heart 

valve . . . .’’). Finally, the specification states that the 

Bessler heart valve poses problems which the claimed 

valve overcomes because the procedure disclosed in Bessler 

includes invasive “excision, vacuum removal of the native 

valve, cardiopulmonary bypass and backflushing of the coronary arterial tree.’’ Id., col. 2 ll. 14–20 (emphasis added). 

We concluded that these specification passages “make it 

unreasonable to read the ‘sized and shaped for insertion’ 

claim language as covering an artificial valve fitted for the 

place left after removing the native valve.” St. Jude, 977 

F.3d at 1241. 

II. DISCUSSION

A. Similarities Between the ’782 and ’297 Patents

St. Jude asks that we remand IPR-107 to the Board rather than outright reverse the Board’s unpatentability 

finding because of differences between the ’782 and ’297 

patents. We disagree. The claims and written descriptions 

in the two patents are the same in all relevant respects. 

Thus, our claim construction holding concerning the ’782 

patent’s “sized and shaped” limitation forecloses a different 

construction for the “sized and shaped” limitation in the 

’297 patent. 

All challenged claims of the ’297 patent, like claims 1, 

2, 6, and 8 of the ’782 patent, require an “artificial heart 

valve for repairing a damaged heart valve having a plurality of cusps separating an upstream region from a downstream region . . . comprising . . . a flexibly resilient frame 

sized and shaped for insertion between the upstream region and the downstream region.” Compare ’782 patent, 

col. 10 ll. 22–27, with ’297 patent col. 19 ll. 11–16.

The two patents have similar, but not identical, written 

descriptions. But all portions of the ’782 written description which we found “resolve[] the interpretive question” of 

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8 SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC

the proper construction of the “sized and shaped” limitation 

appear in the ’297 patent’s written description. Compare

’782 patent, col. 5 ll. 48–51, with ’297 patent, col. 6 ll. 30–32 

(“[T]he frame 20 is sized and shaped for insertion between 

the plurality of cusps C of the damaged heart valve in a 

position between an upstream region and a downstream region.”); compare ’782 patent, col. 1 ll. 37– 42, with ’297 patent, col. 1 ll. 41–43 (‘‘[M]any [previous] valves also require 

the damaged native heart valve to be removed prior to implanting the artificial valve.’’); compare ’782 patent, col. 1 

ll. 40–42, with ’297 patent, col. 1 ll. 43–46 (‘‘Removing the 

native valve increases the risk that a portion of the valve 

will migrate through the body and block vessels downstream from the heart.’’); compare ’782 patent, col. 2 ll. 

21–25, with ’297 patent, col. 2 ll. 26–29 (‘‘Among the several 

objects and features of the present invention may be noted 

the provision of an artificial heart valve which accommodates implantation without removing the damaged native 

heart valve . . . .’’); compare ’782 patent, col. 2 ll. 14–20, 

with ’297 patent, col. 2 ll. 20–23 (“The Bessler procedure 

includes excision, vacuum removal of the native valve, cardiopulmonary bypass and backflushing of the coronary arterial tree.’’).

Based on these similarities between the ’782 and ’297 

patents, we hold that, in the ’297 patent, just as in the ’782 

patent, it is “unreasonable to read the ‘sized and shaped 

for insertion’ claim language as covering an artificial valve 

fitted for the place left after removing the native valve.” 

See St. Jude, 977 F.3d at 1241.

B. Similarities Between IPR-106 and IPR-107

St. Jude asks that we remand IPR-107 to the Board rather than reverse the Board’s unpatentability finding because of differences between IPR-106 and IPR-107. St. 

Jude avers that, in IPR-107, unlike in IPR-106, it argued 

that it would have been obvious to reduce Bessler’s size and 

that a second reference, U.S. Patent No. 4,339,831

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SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC 9

(“Johnson”), taught the “sized and shaped” limitation. St. 

Jude argues that the Board has not yet addressed those arguments and that it should be given the opportunity to do 

so. We disagree. We have reviewed St. Jude’s filings in 

IPR-107, and, just as we found in our review of IPR-106, 

“St. Jude relied only on its claim-construction argument 

that the [] claims cover the situation of a removed native

valve; it did not dispute the express assertion by Snyders 

that Bessler ‘requires removal of the native heart valve.’” 

See St. Jude, 977 F.3d at 1241 (quoting St. Jude, 2019 WL 

1975349 at *9). Thus, here, as there, “St. Jude therefore 

has not preserved any argument that Bessler taught a nonremoval alternative that satisfied the ‘sized and shaped’

limitation.” See id. at 1241–42.

The two purportedly different invalidity arguments St. 

Jude identifies are unhelpful to its cause. These arguments are either based on the rejected claim construction

or are directed to limitations other than the “sized and 

shaped” limitation. 

Although St. Jude submits that it presented a theory of 

obviousness over Bessler, review of the record reveals that 

St. Jude’s only obviousness theories involving Bessler are 

directed to limitations other than the “sized and shaped” 

limitation. St. Jude never argued that it would be obvious 

to modify Bessler to fit within a native valve rather than to 

replace a native valve. In its petition, in a section about 

the obviousness of all challenged claims over Bessler, but 

not directed to any specific limitations, St. Jude stated: “In 

this case, given Bessler’s use of the same types of components, organized and operating in the same way as 

claimed, and in view of the breadth of these claims, minor 

modifications to the stent and the [flexible valve element]

as Defined to achieve predictable improvements is the application of routine engineering, characteristic of obviousness; nothing more.” Petition at 49, St. Jude Med., LLC v. 

Snyders Heart Valve LLC, IPR2018-00107, Paper No. 3. 

St. Jude went on to address other limitations specifically 

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10 SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC

but did not address the “sized and shaped” limitation or 

whether Bessler could be modified for implantation without removal of the native valve. Id. In its Petitioner’s Reply, St. Jude merely reiterated those vague arguments. 

Petitioner’s Reply to Patent Owner’s Response at 11–12, 

St. Jude Med., LLC v. Snyders Heart Valve LLC, IPR2018-

00107, Paper No. 38. In its Petitioner’s Reply, St. Jude also 

asserted that a skilled artisan would have been motivated 

to combine the Bessler valve with aspects of a valve disclosed by Johnson, despite Snyders’ argument that such a 

combination would create a valve that was too large for 

transluminal2 delivery. Id. at 16. St. Jude argued that a 

skilled artisan would know that “achieving collapsibility to 

a desired size was a matter of routine engineering.” Id. 

But this argument was not directed to the “sized and 

shaped” limitation. It was directed to a separate limitation—claim 37’s requirement of an included “vascular catheter.” St. Jude never argued that a skilled artisan would 

modify Bessler to meet the “sized and shaped” limitation 

as properly construed. 

Similarly, St. Jude submits that it cited Johnson for the 

“sized and shaped” limitation, but review of the record reveals that St. Jude’s only unpatentability theory involving 

Johnson is an obviousness combination with Bessler in 

which St. Jude proposed inserting the valve structure of 

Johnson into the outer tubular structure of Bessler. Petition at 56, St. Jude, IPR2018-00107. In this proposed combination, the tubular structure of Bessler, which is “sized 

and shaped” to replace the native valve rather than sit 

within the native valve, “performs its known function of 

holding the entire structure within the anatomy.” Id. 

Thus, St. Jude’s arguments regarding Johnson incorporate 

2 “Transluminal” refers to passing through a lumen 

of a blood vessel (i.e., vasculature). Petition at 37, St. Jude,

IPR2018-00107.

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SNYDERS HEART VALVE LLC v. ST. JUDE MEDICAL, LLC 11

the error of its arguments regarding Bessler—they fail to 

meet the “sized and shaped” limitation as properly construed. That St. Jude’s invalidity theory incorporating 

Johnson suffers from the same flaw as its theories involving Bessler is confirmed by an argument St. Jude made in 

its Petitioner’s Reply: “The Bessler and Johnson frames 

are both individually sized and shaped for insertion in the 

native valve annulus, as would be the combination.” Petitioner’s Reply to Patent Owner’s Response at 17, St. Jude, 

IPR2018-00107. St. Jude never argued that Johnson met 

the “sized and shaped” limitation as properly construed.

III. CONCLUSION

We conclude that, as in St. Jude, 977 F.3d at 1242, our 

rejection of the Board’s claim construction of “sized and 

shaped for insertion” precludes an unpatentability finding 

as to the challenged claims of the ’297 patent. St. Jude relied only on its now rejected claim construction argument 

before the Board. It never disputed Snyders’ assertion that 

Bessler requires removal of the native valve before insertion of its valve. Thus, St. Jude has not preserved any argument on which it might prevail. Accordingly, we reverse

the Board’s unpatentability finding with respect to claims 

1–3, 8, 9, 22, 23, 31–35, 37–39, and 45 of the ’297 patent.

REVERSED

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