• Risen (Suzhou) Pharma Tech. Co. Ltd. v. Alzheon, Inc.Institution denied
  PTAB · Jan 13, 2023 · PGR2022-00051 · APJ Jamie T Wisz · PGR · Institution

  The Board denied institution on all challenged claims, finding no reasonable likelihood of unpatentability under §§ 101 and 112(a), and denying Grounds 4–6 under § 325(d).

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the arguments and evidence, we determine that the information presented fails to demonstrate it is more likely than not that at least one of the challenged claims of the ’742 patent is unpatentable for ineligibility, lack of written description, or non-enablement. We also exercise our discretion to deny institution of post-grant review under 35 U.S.C. § 325(d). slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “tramiprosate “showed a significant overall treatment effect” in “an APOE4+ sub-group,” including APOE4 homozygotes; “therapeutic interventions applied earlier in the course of AD more likely might achieve the goal of disease modification;” and that “AD would be optimally treated before significant cognitive impairment, during its pre-symptomatic or pre-clinical stages …”) (emphases removed). Accordingly, Caltagirone was previously presented to the Office and we also find that Caltagirone’s disclosures are substantially similar to, or cumulative of, other references previously considered by the Examiner.” slip op. at 49

  • Adverse judgmentAdverse judgmentOther

    “D. Statutory Disclaimer After the filing of the Petition in this proceeding, Patent Owner filed a statutory disclaimer, disclaiming claims 9 and 11–15 of the ’742 patent, effective October 7, 2022. Prelim. Resp. 12; Ex. 2001, 1. “No post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.207(e). We do not analyze the validity of claims 9 and 11–15 based on Petitioner’s challenges (e.g., Grounds 2 and 3) because these claims have been statutorily disclaimed.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at least an M.D. or Ph.D. degree in a biomedical science or equivalent field. They would also have several years of clinical experience treating and/or conducting clinical trials of drugs for AD patients, or professional experience working in clinical trial design and execution related to drugs for AD or supervising such work. Pet. 14–15 (citing Ex. 1003 ¶ 62) (internal citation omitted). Patent Owner does not contest the characterization offered by Petitioner. Prelim. Resp. 12–13. For purposes of this Decision, we adopt Petitioner’s characterization as it is consistent with the level of skill in the art at the time of the invention as reflected by the ’742 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9

  Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Graham
  Patents in suitUS 11,191,742
• Viken Detection Corporation v. American Science And Engineering, Inc.Institution denied
  PTAB · Dec 16, 2022 · PGR2022-00047 · APJ Carl M Defranco · PGR · Institution

  The Board denied institution because Viken did not show that any of claims 1–22 was more likely than not unpatentable for lack of written description or enablement.

  RulingsInstitution decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “We apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13; see also 37 C.F.R. § 42.200(b). Viken asserts that “the only terms that need construction are ‘a first X-ray source,’ ‘a second X-ray source,’ and ‘a third X-ray source’ of claim 1.” Pet. 20. According to Viken, the “X-ray sources of claim 1 should be construed to be ‘a first backscatter X-ray source,’ ‘a second backscatter X-ray source,’ and ‘a third backscatter X-ray source,’ respectively,” because one skilled in the art “would understand these sources to be backscatter sources in view of the intrinsic evidence (claims and specification).” Id. at 21 (citing Ex. 1012 ¶ 95). In particular, Viken asserts “[t]he only sources paired with backscatter detectors in the ’783 patent are backscatter sources.” Id. at 22 (citing Ex. 1012 ¶¶ 88, 95). We disagree, as discussed below in connection with Viken’s first ground.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Viken asserts that a person having ordinary skill in the art would be “a person with [a] Ph.D. in physics or similar discipline and at least two years of experience working with an interdisciplinary team designing and creating systems involving penetrating radiation sources and detectors.” Pet. 9 (citing Ex. 1012 ¶ 20). At this stage, ASE does not contest that formulation of the level of skill in the art. Nor do we discern any reason to question Viken’s formulation, as it appears consistent with the level of skill reflected in the ’783 patent and the prior art of record. We, therefore, apply Viken’s formulation for purposes of determining whether to institute.” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “Viken is mistaken on both counts. First, we disagree with Viken’s assertion that the claims are limited to a backscatter-only imaging system. Nor do we agree with Viken’s assertion that the Specification is limited to describing only a combined transmission/backscatter imaging system. We address each of these assertions in turn.” slip op. at 9

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledNot shown unpatentable

    “G. Ground 5 – Enablement of System that is not a Combination Viken asserts that “claims 1–22 of the ’783 patent are invalid for failing to comply with the enablement requirement of 35 U.S.C. § 112(a) because the specification does not enable a two-plane backscatter-only system.” Pet. 41. Viken’s non-enablement assertions fail for the simple reason that they are premised on the same improper assumptions discussed above with respect to Viken’s assertions that claim 1 is limited to a backscatter-only imaging system. As discussed above in section II.C., the claims of the ’783 patent are not so limited. Also, as discussed above in section II.D, the Specification of ’783 patent provides adequate written description support for an X-ray imaging system that includes two planes. Given the high level of skill in the art based on Viken’s formulation—“a person with [a] Ph.D. in physics or similar discipline and at least two years of experience working with an interdisciplinary team designing and creating systems involving penetrating radiation sources and detectors” (Pet. 9 )— and given Viken’s improper reading of limitations into the claims in alleging lack of enablement, we are not persuaded that one skilled in the art would be unable to make or use the invention as claimed.” slip op. at 20

  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 11,143,783
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution denied
  PTAB · Dec 6, 2022 · PGR2022-00035 · APJ Ken B Barrett · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–17 was unpatentable on the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “A post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that, if unrebutted, it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’580 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have a Bachelor of Science in Electrical Engineering, Computer Science, or another degree related to electromechanical systems, as well as at least 3 years of academic or industry experience in electronic payment systems.” Pet. 25–26 (citing Ex. 1003 ¶ 22). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner states that, “[u]nless otherwise noted, Petitioners submit that the claim terms should be given their plain and ordinary meaning since the claim terminology appears to be the same as that used in the [Multi-Drop Bus] protocol.” Pet. 28. Patent Owner does not propose any constructions, asserting that “the Board need not reach any claim constructions in order to deny this petition.” Prelim. Resp. 12. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “in Anderson of a mobile device making, or the receipt from a mobile device of, a request to access peripheral device-generated signals. See Prelim. Resp. 17–24; see, e.g., id. at 17 (“Petitioners point to no evidence that any external device in Anderson ever requests access to the signals generated by the peripheral.”). We find this argument persuasive. Petitioner, in the section for “receiving” limitation 1.5(f), cites paragraph 44 of Anderson several times. See Pet. 36–39. That paragraph concludes with the statement: The IC 125 may also include a modem (not shown) to display content on external devices such as cellular phones via cellular network or any other network know[n] in the art. Thus, in one implementation, a user may receive nutritional information or balance information on his cell phone. Ex. 1005 ¶ 44. That is a disclosure of data flowing to the cell phone in the form of content to display, and it is ambiguous as to what component could be said to have requested that data flow. Limitation 1.5(f) recites data flow in the opposite direction, from the mobile device, and pertains to a specific message—“a request to access signals generated by the first peripheral device.” Ex. 1001, 53:22–24. Petitioner does not explain adequately how the disclosure in Anderson’s paragraph 44 could support a finding that there was received, from the cell phone, a request to access signals generated by a peripheral device. See, e.g., Pet. 36–37 (quoting Anderson’s paragraph 44).” slip op. at 13

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,074,580
• Sandoz Inc. v. Boehringer Ingelheim International GmbHInstitution denied
  PTAB · Nov 7, 2022 · PGR2022-00037 · APJ Devon Zastrow Newman · PGR · Institution

  The Board denied institution because Petitioner did not show that the patent was eligible for post-grant review; the challenged claims were entitled to the pre-AIA priority date.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Accordingly, we find that Petitioner has not identified any challenged claim that has an effective filing date on or after March 16, 2013. For this reason, we find that Petitioner has not shown sufficiently that the ’265 patent is eligible for post-grant review. IV. CONCLUSION After considering the evidence and arguments presently before us, we determine Petitioner has not shown that the ’265 patent is eligible for post-grant review. Accordingly, we do not institute a post-grant review. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 324(d), the Petition is denied.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “To interpret “stable,” we begin with how the term is used in independent claims 7 and 19. Both terms recite “stable” in relation to the pharmaceutical formulation as a whole by reciting “wherein the formulation is stable.” Ex. 1001, 189:62–190:27. From this, we conclude that the ordinary artisan, as defined above to have a relevant advanced degree and at least two years of experience in development or manufacture of therapeutic protein formulations, would have understood that the components of a “stable” formulation would maintain their integrity and desired function following preparation, including when stored as described. This meaning is supported by the following language in the specification pertaining to the disclosed pharmaceutical compositions: Pharmaceutical compositions according to the present invention are described in further details hereinbelow. In one aspect, the pharmaceutical compositions disclosed herein are physico-chemically stable and maintain the integrity of an antibody comprised in said pharmaceutical composition, for example when stored for 8 weeks at 40° C. as shown hereinbelow. Ex. 1001, 84:20–26. We also note, as Petitioner argued, that the prosecution history supports that the formulation components needed to remain functional during storage, and that Patent Owner cited to formulation integrity after a storage period of 8 weeks at 40° C as evidence of such integrity. Ex. 1004, 7380. As disclosed in the ’265 patent, Examples 9 and 12 measure function and identity of the components following storage to confirm formulation stability.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable

    “burden of showing that claim 7 or 14 lacks written description support in the priority application, which Petitioner has conceded provides the same support as the ’265 patent specification. In this regard, we agree that the reasoning in Fresenius likewise applies: there is no legal requirement that a patent specification must include test results or working examples demonstrating stability for every possible composition that is covered by the claims. Fresenius at 13, citing Ariad Pharms., 598 F.3d at 1352 (stating that “the written description requirement does not demand either examples or an actual reduction to practice”). Formulations 2 and 3, disclosed in the ’265 patent specification, which Petitioner acknowledges falls within the scope of claims 7 and 14 (Pet. 26–27 (citing Ex. 1002 ¶¶ 134, 135)), were shown to be stable for 8 weeks in a syringe. Moreover, the ordinary artisan was provided with guidance in making such formulations from the teachings of the specification and has additional knowledge from the art. See Ex. 1001, 85:32–94:35. Claims 7 and 14 identify specific structures (risankizumab) and required excipients within a defined pH range, which are stable as confirmed by testing results presented in the specification. Prelim. Resp. 33; Ex. 1001, 94:14–36. On this record, we conclude that the evidence presented does not establish that it is more likely than not that an ordinarily skilled artisan would not have reasonably believed that the inventors of the ’265 patent possessed the claimed subject matter, each limitation of which is demonstrated as supported in the specification. As we have interpreted the claim term “wherein the formulation is stable” to mean “wherein the formulation maintains the functional integrity of the antibody and other components, for example when stored for 8 weeks at 40° C,” the specification supports maintenance of functional integrity as shown by the stability of Formulations 2 and 3, including when stored for a period of time. For this reason, we find that Petitioner has not shown that the ordinary artisan would not have understood the inventors of the ’265 patent possessed the subject matter of claims 7 and 14 as of the filing date of the priority application.” slip op. at 23

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable

    “We acknowledge that in the Fresenius case, the extensive testing disclosed in that specification supported the ordinary artisan’s ability to formulate stable compounds using such guidance, and that the specification here discloses less testing. See, e.g., Sur-Reply. 8–9. Nevertheless, it is Petitioner’s burden on this issue, and we are not persuaded that the concerns raised by Dr. Klibanov provide sufficient evidence of actual instability to justify institution on this record. See, e.g., Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1577 (Fed. Cir. 1984) (finding lack of evidence that district court erred in upholding claims as enabled where defendant did not identify inoperable embodiments despite extensive testing). In particular, we are persuaded that, on this record, Petitioner’s lack of evidence of instability of any formulation falling within the limitations of claim 14 indicates that Petitioner has not established sufficiently, for purposes of trial institution, that it is more likely than not that an ordinarily skilled artisan would not have been able to practice the full scope of claim 14 invention based on the teachings of the specification.” slip op. at 28

  Claim construction§ 112 disclosurecites Phillips
  Patents in suitUS 11,078,265
• Microsoft Corporation v. Throughputer, Inc.Institution denied
  PTAB · Oct 11, 2022 · IPR2022-00758 · APJ Matthew S Meyers · IPR · Institution

  The Board denied institution on claims 1–23 because Sandstrom-1 was not prior art in light of the patent’s priority date, so Petitioner did not meet the institution threshold.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’242 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “Office was satisfied that the ’731 application, which had issued as the ’953 patent, properly claimed priority to the preceding applications in the 2012 line, and that all intermediate applications also included proper priority claims. It thus follows that, absent any defects in the priority claims of the subsequent applications, including the application that issued as the ’242 patent, the remedial steps taken by the applicant and approved by the Office during prosecution and post-issuance of the ’953 patent also render proper the priority claims of the subsequent applications. Petitioner has not persuasively pointed us to any additional defects not addressed previously by the Office in the priority chain of the ’242 patent in the 2012 line. Nor has Petitioner identified legal authority for the Board to revisit the January 2021 Decision’s finding that the priority claims of the ’731 application met the relevant statutory and regulatory criteria. See Ex. 1008, 4 (“[T]he reference as set forth in the [second corrected ADS] filed March 19, 2018 complies with 35 U.S.C. §§ 120 and 119(e) and 37 [C.F.R.] §§ 1.78(d)(2) and 1.78(a)(3).”).” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “For these reasons, Petitioner has not persuaded us that there is a break in the priority chain of the ’242 patent in the 2012 line. As such, we find that the ’242 patent is entitled to a priority date at least as early as June 8, 2012. See Ex. 1001, code (60). Accordingly, we determine that Sandstrom-1 does not qualify prior art under pre-AIA 35 U.S.C. § 102(a) or (b) because Sandstrom-1’s publication date of May 29, 2014, is after the June 8, 2012, priority date from the 2012 line.6 Ex. 1001, code (60); Ex. 1004, code (43).” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “in the priority chain of the ’242 patent in the 2012 line. As such, we find that the ’242 patent is entitled to a priority date at least as early as June 8, 2012. See Ex. 1001, code (60). Accordingly, we determine that Sandstrom-1 does not qualify prior art under pre-AIA 35 U.S.C. § 102(a) or (b) because Sandstrom-1’s publication date of May 29, 2014, is after the June 8, 2012, priority date from the 2012 line.6 Ex. 1001, code (60); Ex. 1004, code (43).” slip op. at 22

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 10,430,242
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00701 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because JP029 supports claims 1–4 as of April 26, 2002, making the June 2002 Draft H.264 Standard unavailable as prior art for the asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’059 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’059 patent.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Ex. 2001 ¶ 46 (emphasis added) (citing Ex. 1004 (H.324, 1998), Fig. 1, 1–2). In other words, according to the testimony of Dr. Richardson, which the record supports and Petitioner does not dispute, the applicable standards, known to artisans of ordinary skill prior to the filing date of JP029, show multiplexing and demultiplexing the coded audio and video, thereby satisfying claim 1’s limitations for multiplexing and demultiplexing coded audio data, contrary to Patent Owner’s arguments. See Pet. 25.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner

    “argument, Petitioner has not shown that such a disclaimer exists in the prosecution history. The purported disavowal of claim scope with respect to the plain meaning of a claim term must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). Petitioner has not made such a showing. Rather, Petitioner points to language that was added to the claim during prosecution, namely, “performing arithmetic coding on a first bit of the binary data corresponding to each absolute value of the coefficients,” and concludes that this language requires coding a first bit separately from the remaining bits, using separate probability tables. Pet. Reply 10 (citing Ex. 1012, 656). We agree with Patent Owner, that the plain meaning of this claim language does not require coding a first bit separately from the remaining bits, using separate probability tables. Prelim. Resp. 57–58. Turning to the prosecution history, Petitioner does not explain how the applicant’s remarks to the Examiner in the prosecution history show a clear and unmistakable disavowal of claim scope. See Pet. Reply 9–10. Further, the applicant did not state to the Examiner that the claim requires coding a first bit separately from the remaining bits, using separate probability tables. See Ex. 1012, 662–664. On this limited record, it is not clear how the applicant’s arguments in the prosecution history persuasively show that the applicant made a clear and unmistakable disavowal of claim scope. Therefore, we construe the claim according to its plain and ordinary meaning, which does not require coding a first bit separately from the remaining bits using separate probability tables as alleged by Petitioner.” slip op. at 25

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. Petitioner’s claim construction regarding prosecution history disclaimer does not address “unanticipated and incorrect statements” made by Patent Owner “regarding the law with respect to written description and the disclosure of the subject patent and priority applications, to which Petitioners need to respond.” Ex. 1041. Specifically, Petitioner does not allege an incorrect statement in Patent Owner’s contention that “Petitioner admits that JP029 discloses performing the encoding on all bits of binary data, including the ‘first bit’ of data.” Prelim. Resp. 55 (citing Pet. 29). Nor does Petitioner allege an incorrect statement in Patent Owner’s contention that “Petitioner’s expert opines – with no explanation or citation – that the claims require ‘separately arithmetically encoding/decoding a first bit of binary data using a separate probability table from the probability table (or tables) used to encode/decode the remaining bits of binary data.’ Nothing in the claims require this.” Id. at 57 (citing Ex. 1003 ¶ 52). Instead, Petitioner, for the first time in its Reply, proposes construing the claim beyond its plain and ordinary meaning in order to rebut Patent Owner’s contention that the plain and ordinary meaning of the claim does not require coding a first bit separately from the remaining bits, using separate probability tables. Petitioner has not explained how Patent Owner made an incorrect statement, nor has Petitioner explained why Patent Owner’s construction of the claim based on the claim’s plain and ordinary meaning was unanticipated. See Pet. 7 (“[T]he Petition does not present any controversy over claim meaning and the Board need not construe any terms.”); see id. at 8 (“Petitioner maintains that the Challenged Claims would have been obvious under any reasonable construction.”). Petitioner’s new claim construction alleging prosecution history disclaimer, and Petitioner’s corresponding new argument based on the alleged disclaimer, are untimely.” slip op. at 24

  Claim construction§ 112 disclosurecites Graham
  Patents in suitUS 7,970,059
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00629 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because Patent Owner established claim 1’s priority to JP665, antedating the references relied on in both obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’878 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’878 patent.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “. . . each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. §112.” Lockwood, 107 F.3d at 1571. To satisfy this written description requirement, a priority application must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., 598 F.3d at 1351. “It is the specification itself that must demonstrate possession,” and “a description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1352.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on its expert, Dr. Schonfeld, Petitioner contends as follows: A POSITA at the time would have had at least an undergraduate degree in Electrical Engineering, Computer Science, Computer Engineering, or a related field (or equivalent work experience in the that field), and two or more years of experience with audio, image, or video coding. Ex. 1003, ¶ 24. The relevant experience would include a working understanding of the then-existing audio and video coding standards, including ongoing work on emerging standards. Id. Pet. 15 (citing Ex. 1003 ¶ 24). Dr. Schonfeld adds that “a POSITA would have a working understanding of the then existing audio and video encoding standards (e.g., H.263), as well as ongoing work on emerging standards (e.g., H.26L/H.264).” 1003 ¶ 24. Dr. Richardson, Patent Owner’s expert, agrees with, and applies, Dr. Schonfeld’s proposed level of ordinary skill. Ex. 2001 ¶ 30 (citing Ex. 1003 ¶ 24). Based on a review of the preliminary record, for purposes of the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, as agreed upon by Dr. Schonfeld and Dr. Richardson, because it is consistent with the evidence of record, including the asserted prior art and ’878 patent specification.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “As Petitioner argues, it is not necessary to explicitly construe any claim terms. See Pet. 7. Any construction would have no effect in the analysis of the dispositive priority issue here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  Claim construction§ 112 disclosurecites Graham
  Patents in suitUS 8,139,878
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00628 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because Patent Owner established priority to JP665, antedating the references asserted against sole challenged claim 1.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’238 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’238 patent.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 7,769,238
• Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc.Institution denied
  PTAB · Sep 15, 2022 · PGR2022-00025 · APJ Susan L C Mitchell · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–19 was unpatentable on the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of post-grant review is authorized by statute only when “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324; see 37 C.F.R. § 42.4. Upon considering the Petition and the cited evidence, we conclude that Petitioner has not satisfied its burden under 35 U.S.C. § 324 to show that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Therefore, we deny institution of a post-grant review.1” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the relevant art (“POSA”) “would have a medical degree or a Ph.D. in a field related to endocrinology, and would have knowledge of hormone regulation and disorders, as well as knowledge of the treatment regimens employed to treat such disorders . . . [and] would also have at least three years of experience conducting research concerning endocrine disorders, including CAH or other adrenal disorders.” Pet. 26–27 (citing Ex. 1005 ¶ 34 (Dr. Carey Declaration)). Patent Owner does not expressly contest this definition of a person of ordinary skill in the art in its Preliminary Response. Because Petitioner’s definition of a person of skill in the art appears commensurate with the level of skill reflected in the asserted art in this case as well as the ’201 patent itself, see, e.g., Exs. 1024, 1025, 2003, 2004, 2005, we apply Petitioner’s proposed level of ordinary skill in the art to determine whether it is more likely than not that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “The Specification expressly teaches that, with respect to the clinical phase 2 trial described in Example 4, “Patients will have overnight [pharmacokinetic/pharmacodynamics] PK/PD assessments performed at baseline, which include an [sic] pre-dose overnight assessment and a post-dose overnight assessment for PK/PD following administration of the first dose.” Ex. 1001[,] col. 42, ll. 12–16.6 This is the same quotation and clinical trial relied upon by Dr. Barnes in his Declaration [submitted by Patent Owner during prosecution], and is the only definition of a “baseline” in the ’908 patent. See Ex. 1002, 36–37. We note that placebos were evidently not employed in the phase 2 clinical study of Example 4. Given the sole exemplary description of “baseline” in Example 4 of the Specification, we construe the claim term reciting “reduced by at least 10% from baseline” as meaning “a reduction of at least 10% in the level of ACTH (claim 1) or 17-OHP (claim 11) compared to measurements of ACTH or 17-OHP made prior to, and/or at the beginning of, administration of the drug.”” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “From mere disclosure of crincerfont, Petitioner asks us to find a particular treatment protocol using this drug and the outcomes of such treatment as taught by non-prior art Auchus 2021 are inherent in the drug itself. Such outcomes of such treatment as is the subject of the challenged claims here may be inherent in a particular treatment regimen using a particular drug, but it is too far of a leap to say that disclosure of the drug itself would render inherent any treatment outcome using any treatment protocol. For the reasons set forth above, we determine that Petitioner has failed to establish that it is more likely than not that Grigoriadis anticipates claim 1 of the ’201 patent. Because the remaining claims challenged in this ground depend either directly or indirectly on claim 1, we similarly conclude that Petitioner has not established a likelihood of prevailing with respect to these dependent claims, claims 2–4, 7–9, 11–15, 18.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 11,007,201
• Ironridge, Inc. v. Pegasus Solar, Inc.Institution denied
  PTAB · Aug 10, 2022 · PGR2022-00024 · APJ Eric C Jeschke · PGR · Institution

  The Board denied institution because the Petition did not show that any challenged claim 1–12 was more likely than not unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324. Upon consideration of the evidence and arguments in the record, for the reasons below we determine that the information presented does not show that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of post-grant review. See 37 C.F.R. § 42.208(b) (“At any time prior to institution of post-grant review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute post-grant review.”).” slip op. at 2

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Patent Owner’s counsel was sufficient to meet the service requirements of 37 C.F.R. § 42.205. Section (a) of that regulatory provision states that “[t]he petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent. The petitioner may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service.” Section (b) adds that, “[u]pon agreement of the parties, service may be made electronically.” 37 C.F.R. § 42.205(b) (emphasis added). Although Petitioner does appear to have emailed the Petition to persons satisfying the requirements in § 42.205(a), there is nothing in the record indicating an agreement between the parties that service may be made electronically, as required by § 42.205(b). See, e.g., Ex. 1020 at 1 (showing an attorney for Petitioner in this proceeding asking Mr. Holm if Patent Owner would “agree to electronic service” without any showing of a subsequent agreement). Without an agreement between the parties as to sufficiency of electronic service, we find Petitioner’s emailing of the Petition to Mr. Holm and Mr. Fisher insufficient to effect service.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denialNot reached

    “B. Discretion Under 35 U.S.C. § 324(a) and § 325(d) Patent Owner argues that we should exercise our discretion under § 324(a) and under § 325(d) to deny institution. See Prelim. Resp. 50–51 (discussing § 324(a)), 11–21 (discussing § 325(d)). Because we deny the Petition after considering the merits of each ground, we need not and do not reach Patent Owner’s arguments based on discretion.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree in mechanical engineering, structural engineering, or similar technical field, with at least three years of relevant (metal fabrication, aluminum extrusion, architectural glass structural) product design experience.” Pet. 36 (citing Cinnamon Decl. ¶ 51). Petitioner adds that “[a]n increase in experience could compensate for less education.” Id. (citing Cinnamon Decl. ¶ 51). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips
  Patents in suitUS 10,998,847

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.