- Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 3, 2021 · IPR2021-01107 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 4–6 and 10–12 under § 325(d), finding the same or substantially the same arguments had been presented and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“As such, we find that Petitioner has failed to show (1) the ’768 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications in the’768 patent family did not properly incorporate by reference Chu ’886, and (3) the amendments adding the subject matter from Chu ’886 improperly introduced new matter. Pet. 36−49.” slip op. at 22
§ 102 anticipationDiscretionary denialPatents in suitUS 9,529,768 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 2, 2021 · IPR2021-01111 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same arguments were previously presented and Petitioner did not show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“For the foregoing reasons, the ’882 application identified Chu ’886 with particularity and would have directly led an ordinarily skilled artisan to 18 the document intended to be incorporated. Accordingly, we determine that Petitioner fails to show that the Examiner erred in determining that the ’882 application (Chu ’330) incorporated Chu ’886 by reference. In addition, as discussed above, Petitioner admits that the ’758 application (the initial parent application) incorporated by reference the ’882 application. Pet. 25; see also Ex. 1013, 4:50−53. It also is undisputed that each subsequent application in the priority chain identified each preceding application as required by 35 U.S.C. § 120 and incorporated by reference the prior applications and the ’882 application. See, e.g., Ex. 1001, 1:13−37, 9:66−10:2; Ex. 1008, 1:12−27, 9:27−29. As such, we also find that Petitioner has failed to show (1) the ’750 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications did not properly incorporate by reference Chu ’886, and (3) the amendments adding the subject matter from Chu ’886 improperly introduced new matter. Pet. 17−31.” slip op. at 18
§ 102 anticipationDiscretionary denialPatents in suitUS 9,703,750 - Volkswagen Group Of America, Inc. v. Stratosaudio, Inc.Institution deniedPTAB · Nov 12, 2021 · IPR2021-00717 · APJ Kevin C Trock · IPR · Institution
The Board denied institution on all challenged claims: Grounds 1–3, 6, and 7 failed the institution threshold, and Grounds 4 and 5 were denied under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“the list of cited references of the ’203 Patent. Ex. 1001, 2; Ex. 1002, 430. Because the same reference was cited during prosecution, there is no material difference between Christensen and the prior art involved during examination. Given these facts, we need not further evaluate factor (b), whether Christensen is cumulative, nor factor (d), the extent of overlap in arguments regarding Christensen. Thus, we find that the same reference was previously presented to the Office, and we move on to the second part of the Advanced Bionics framework.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account Patent Owner’s Preliminary Response, we conclude that the Petition does not establish there is a reasonable likelihood Petitioner would prevail in establishing at least one of Challenged Claims of the ’203 Patent as unpatentable under certain grounds presented in the Petition, and that the remaining asserted grounds should be denied pursuant to our delegated discretion under 35 U.S.C. § 325(d). Accordingly, we do not institute an inter partes review as to any of the challenged claims of the ’203 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that “[a] person of ordinary skill in the art (‘POSITA’) would have had at least a B.S. in computer science, electrical engineering, or a related field, and three years of experience working in the communications- or Internet-related industries” and that “[m]ore education or skill might make up for less experience, and vice-versa.” C. Pet. 5 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute this level of skill. See generally Prelim. Resp. Petitioner’s description of the level of ordinary skill appears to be generally consistent with the subject matter of the ’203 Patent. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We are not persuaded by Petitioner that the recited database system should be given no patentable weight. The Federal Circuit explains that [p]roduct-by-process claims are not specifically discussed in the patent statute. The practice and governing law have developed in response to the need to enable an applicant to claim an otherwise patentable product that resists definition by other than the process by which it is made. For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). With respect to patentability, “[i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Id. The Federal Circuit has clearly stated that “[i]n determining validity of a product-by-process claim, the focus is on the product and not the process of making it.” Purdue Pharma, 811 F.3d at 1354 (quoting Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012)). “That is because of the . . . longstanding rule that an old product is not patentable even if it is made by a new process.” Id. Generally, therefore, the recited process steps in a product-by-process claim are not accorded patentable weight. See In re Nordt Development Co., LLC, 881 F.3d 1371, 1375 (Fed. Cir. 2018) (“[T]he Board typically will not accord patentable weight to a process limitation in a product-by-process claim.”) (citing Thorpe, 777 F.2d at 697).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,200,203 - Johnson & Johnson Surgical Vision, Inc. v. Alcon, Inc.Institution deniedPTAB · Nov 9, 2021 · IPR2021-00899 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR on claims 1–17 under § 325(d), finding substantially the same art or arguments had been presented to the Office and no material examination error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“discretion and deny a petition as authorized under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. If either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 8. A non-exclusive list of factors, set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph), guides our application of that two-part framework. Advanced Bionics, Paper 6 at 9. Those factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Based on the information presented, we find the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we adopt Petitioner’s definition because, on this record, it appears consistent with the disclosures of the asserted prior art and the written description of the invention provided in the ’036 patent. Pet. 17 (Petitioner’s asserted definition of the ordinarily skilled artisan); see Prelim. Resp. 20 (reciting that definition without adopting it or proposing an alternative definition).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe terms in controversy only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party proposes an express construction for any claim term. See Pet. 17; Prelim. Resp. 61–62. We find no claim term requires express construction in order to resolve whether to exercise our discretion and deny the Petition under Section 325(d). We discuss the scope of certain claim terms as necessary to our analysis of that issue, however, which we turn to in the next section.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In this Decision, we assess the asserted obviousness grounds only to the extent necessary to resolve Patent Owner’s request that we exercise our discretion and deny the Petition under Section 325(d).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,849,036 - Volkswagen Group Of America, Inc. v. Stratosaudio, Inc.Institution deniedPTAB · Oct 25, 2021 · IPR2021-00718 · APJ Hyun J Jung · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of success on the Levy grounds and § 325(d) warranted denial of the Christensen ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied 325dInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response and for the reasons explained below, we do not institute an inter partes review of claims 10, 11, 13, and 15 of the ’843 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is permitted, but never compelled, to institute an [inter partes review] proceeding.”). Pursuant to 35 U.S.C. § 325(d), in determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In evaluating the exercise of discretion to deny institution under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider several non- exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”). Factors (a), (b), and (d) of the Becton, Dickinson factors relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Based on our review of Petitioner’s relied-upon portions of Levy, Levy uses an extracted identifier, such as a broadcaster ID, and “context information” to identify an audio object. Ex. 1005 ¶¶ 15, 56. Thus, if we accepted Petitioner’s position that obtaining Levy’s “object identifier” discloses “acquir[ing] encoded third party data associated with the reception of the specific instance of the media segment in the electronic transmission,” Petitioner does not explain sufficiently how context information that is extracted and forwarded with the broadcaster ID to obtain the “object identifier” can disclose “generat[ing] data that enables the unique identification of the specific instance of acquisition of the encoded third party data.” See Pet. 57–60; Ex. 1003 ¶¶ 181–194. Petitioner does not identifier” can be acquired and generated in the manner argued by Petitioner. See Pet. 57–60; Ex. 1003 ¶¶ 181–194; see also Prelim. Resp. 36–37 (contending that Petitioner’s anticipation challenges lack particularity). As argued by Patent Owner, claim 10 requires that “generat[ing] data that enables the unique identification of the specific instance of acquisition of the encoded third party data” occur either after or at the same time as “acquir[ing] encoded third party data associated with the reception of the specific instance of the media segment in the electronic transmission.” Ex. 1001, 36:28–33. Claim 10 recites a “specific instance of acquisition of the encoded third party data” that apparently refers to the earlier-recited “acquire encoded third party data associated with the reception of the specific instance of the media segment in the electronic transmission,” and Petitioner does not address the interpretation of “acquisition” in view of the previously recited “acquire.” See Pet. 9–10, 57–60. Additionally, Petitioner’s declarant testimony does not explain further the arguments or evidence presented in the Petition and does not provide additional evidence beyond that cited in the Petition. See Ex. 1003 ¶¶ 181–194. Thus, for the reasons above, Petitioner fails to show that Levy discloses all the limitations of independent claim 10. 3. Dependent Claims 11, 13, and 15 Petitioner argues that Levy anticipates dependent claims 11, 13, and 15 with citations to the record. Pet. 65–69. Petitioner’s arguments and relied upon evidence for these claims do not remedy the deficiencies discussed above for independent claim 10. that Levy discloses all the limitations of dependent claims 11, 13, and 15 and, therefore, fails to show that Levy anticipates these claims.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“4. Asserted Obviousness in view of Levy and Finley Petitioner argues that: [t]o the extent . . . that Levy does not anticipate the Challenged Claims because Levy does not disclose the complete details of the claimed database (in other words, that the difference between each claim as a whole and the prior art as a whole is the explicit recitation of the claimed database), it would have been obvious to store the object ID lookup information or purchase transaction tracking information. Pet. 69 (citing Ex. 1003 ¶ 227); see also id. (contending that Levy teaches storing a transaction log in a log file of a database). Petitioner’s arguments that Levy and Finley would have rendered obvious claims 10, 11, 13, and 15 do not further address the limitations we discussed above for claim 10, and Petitioner’s proposed modification of Levy in view of Finley does not remedy the deficiencies of Petitioner’s arguments that Levy discloses all the limitations of claim 10. Thus, for the reasons discussed above for claim 10, Petitioner fails to show that Levy and Finley teach or suggest all the limitations of claims 10, 11, 13, and 15 and, therefore, fails to show that Levy and Finley would have rendered obvious these claims. 5. Petitioner Fails to Show a Reasonable Likelihood of Prevailing As discussed above, Petitioner’s arguments and evidence fail to show that Levy anticipates claims 10, 11, 13, and 15 and fail to show that Levy and Finley would have rendered obvious these claims. Petitioner, therefore, fails to show a reasonable likelihood of prevailing in its challenges based on Levy.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,584,843 - PTAB · Oct 7, 2021 · IPR2021-00607 · APJ Joni Y Chang · IPR · Institution
The Board denied institution for claims 14–38 under § 325(d), finding the same or substantially the same arguments were previously presented and Petitioner failed to show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“[U]nder § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. If the petitioner fails 7 to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). 1. Part I – whether the same or substantially the same arguments previously were presented to the Office slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Fourth, Petitioner argues that, because the subject matter added from Chu ’886 was not included in any of the applications in the ’140 patent’s priority chain before it was added by amendment in the ’138 application and then filed with the U.S. Application No. 13/294,108 (“the ’108 application”), the earliest possible priority date for any of the ’140 patent claims relying on this subject matter for written description support under 35 U.S.C. § 112, ¶ 1, is the date of filing the ’108 application, November 10, 2011. Pet. 14−17. However, the amendments to the ’138 application were proper because, as discussed above, “[w]hen claims were added to the ’138 application that transformed previously non-essential material into allegedly essential material, Patent Owner submitted an amendment to explicitly set forth the material in the specification,” in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p), 8th Ed. Rev. 8 (July 2010). See Prelim. Resp. 26−30. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’140 patent’s priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’140 patent is November 10, 2011. For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that “the Examiner erred by not realizing that Chu 21 ’330 and Chu ’886 qualify as prior art under 35 U.S.C. § 102(b) and are material to the patentability of the claims in the ’140 Patent.” Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics, Paper 6 at 8; see also Becton, Dickinson, Paper 8, 24.” slip op. at 21
§ 102 anticipationDiscretionary denial - PTAB · Sep 15, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same arguments had been presented before and Petitioner failed to show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“Institution of an inter partes review may not be authorized “unless . . . 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). For the reasons stated below, we decline to institute an inter partes review of the challenged claims of the ’654 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“3. § 325(d) Conclusion For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’654 Patent claims. Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics at 8; see also Becton, Dickinson, Paper 8, 24. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny institution of an inter partes review. 26 IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 26
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Chu ’886 was not included in any of the applications in the ’654 patent priority chain before the amendments in the ’138 application, the earliest possible priority date for any of the ’654 patent claims relying on this subject matter for written description support under § 112, ¶ 1, is the filing date of the ’108 application, i.e., November 10, 2011, “the earliest possible priority date for any of the ’654 Patent claims relying on this subject matter.” Pet. 15−17. However, the amendments to the ’138 application were proper because, as discussed above, when claims were added to the ’138 application that transformed previously non-essential material into allegedly essential 25 material, Patent Owner submitted an amendment to explicitly set forth the material in the specification in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p) (8th Ed. Rev. 8 July 2010). See Prelim. Resp. 28−33. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’654 patent priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’654 patent is November 10, 2011.” slip op. at 25
§ 102 anticipation§ 103 obviousnessDiscretionary denial - Intel Corp. v. Health Discovery Corp.Institution deniedPTAB · Sep 14, 2021 · IPR2021-00553 · APJ Per Curiam · IPR · Institution
The Board denied institution because Intel did not show a reasonable likelihood that claims 1, 5–7, 13, 18, 22, and 32 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“been obvious over Mukherjee and Platt. Pet. 20–68. As explained below, we find Petitioner has not shown a reasonable likelihood that it would prevail in its obviousness challenge based on Mukherjee and Platt.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 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). For the reasons set forth below, we deny institution of inter partes review under 35 U.S.C. § 325(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“feature weights because Mukherjee instead “only computes pattern weights, expressed as 𝛼𝛼s.” Prelim Resp. 25. We agree with Patent Owner that Petitioner has not adequately bridged the gap between the claimed feature weight and Mukherjee’s pattern weight. Although Petitioner’s expert contends that feature weight and pattern weight “are [] equivalent,” he implicitly concedes they are not in his additional assertion that they are “related and can be derived from one another.” See Ex. 1003 ¶ 92 n.14. We are also not persuaded by Petitioner’s argument that “a relationship exists between feature weight vectors, 𝒘𝒘, and pattern weight vectors, 𝜶𝜶, such that one can be mathematically derived and calculated from the other.” Pet. 30. Even if correct, Petitioner’s argument falls short because Petitioner offers no explanation as to why a skilled artisan would have done so. As Patent Owner notes, “a conclusion of obviousness is not dependent upon what a person of ordinary skill in the art could do, but rather what the hypothetical individual would do, and there was no motivation for Mukherjee or any person of ordinary skill in the art to [compute feature weights].” Prelim. Resp. 26. In short, we find that Petitioner has not produced the required “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Therefore, Petitioner has not shown a reasonable likelihood that it would prevail in establishing independent claims 1, 7, 13, 18, 22, or 32 (or claims 5 and 6 which depend from claim 1) would have” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Skill in the Art Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’483 patent (a “POSITA”) would have had “at least a Master’s degree in electrical engineering, computer science, or the equivalent with three years of experience in machine learning and data-analysis techniques.” Pet. 19 (citing Ex. 1003 ¶ 15). Further, Petitioner asserts that “[a]dditional education could substitute for professional experience, and vice versa.” Id. Patent Owner does not contest that a skilled artisan would have this kind of background knowledge and experience; nor does Patent Owner suggest that Petitioner’s proposed level of skill leads to an improper understanding of the prior art or an improper patentability analysis. See generally Prelim. Resp. At this stage in the proceeding, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is supported by Dr. Evgeniou’s testimony and appears commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’483 patent.” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,095,483 - Triplet Therapeutics, Inc. v. Board Of Supervisors Of Louisiana State University And Agricultural And Mechanical CollegeInstitution deniedPTAB · Sep 8, 2021 · PGR2021-00059 · APJ Devon Zastrow Newman · PGR · Institution
The Board denied institution on claims 1–15: grounds 2–5 lacked a supported reason to combine, and ground 1 repeated arguments considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have the authority and discretion to determine whether to institute a post grant review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a) (2021). We may not institute a post-grant review 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). After considering the briefing and the evidence of record, we conclude that Petitioner has failed to establish a reasonable likelihood of prevailing in demonstrating that the challenged claims are unpatentable over the cited prior art in asserted grounds 2–5. With regard to ground 1, Petitioner’s written description ground, we determine that Petitioner’s arguments are substantially the same as those previously presented to and considered by the Office, and we exercise our discretion under 35 U.S.C. § 325(d) and decline to institute post-grant review of the ’542 patent on that ground alone.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We agree with Patent Owner that Petitioner’s arguments regarding whether the ’542 patent provides § 112 written description support for the challenged claims are substantially the same as those considered by the Examiner during the prosecution of the ’542 patent. As set forth above, the Examiner repeatedly rejected the pending claims because (1) the claims were overly broad in light of the guidance provided in the specification that was limited to the working examples specific to exon 7 of a gene encoding a MLH3 subunit (Ex. 1006, 623–24); (2) the claims did not enable the oligonucleotides to “hybridize[] to a complementary target nucleic acid sequence of a gene or gene product to modulate the expression of a component of a mismatch repair (MMR) complex” based on the disclosure of the specification, which was limited to the working examples (id.); and (3) the claims did not enable a pharmaceutical composition of the recited nucleotide base length range for the entire scope of the claims based on the disclosure of the specification, which was limited to the working examples (id. at 1183–84). The rejections were based on a broad reading of the claims as interpreted by the ordinarily skilled artisan, and required analysis of whether there is sufficient support in the specification for the entire scope of the claims. Applicant overcame these issues by narrowing the claims until the Examiner agreed that the support present was sufficient.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found
“We agree with Patent Owner that Petitioner’s allegations regarding the skilled artisan’s reasons to combine are conclusory and insufficiently supported by evidence. Petitioner cites Dr. Wood’s testimony to explain why the skilled artisan would have understood that Fuselier’s suggestion to “switch[] isoforms of MLH3” could be accomplished by manipulating pre-mRNA splicing to delete exon 7. Petitioner’s discussion on pages 59–60 quotes phrases from Dr. Wood’s referenced testimony, see Ex. 1002, ¶¶ 213–216, but the rationale appearing in the Petition merely comprises repetitive generalized statements akin to “Morcos is a powerful tool that can accomplish what Fuselier suggested.” See Pet. 59–60. Dr. Wood’s underlying testimony lacks key explanation as to the understanding of the ordinary artisan at the time of the invention. What Petitioner has not provided, as Patent Owner argues, are the reasons 1) why Fuselier’s suggestion to “switch[] isoforms” would have led the artisan to pursue deletion of exon 7; and 2) why the artisan would have selected Morcos’ time. See Prelim. Resp. 55–56.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“invention in the field of antisense technology “would have had knowledge of the scientific literature and have skills relating to approaches for utilizing synthetic oligonucleotides to manipulate gene expression” and “have been well-experienced in laboratory techniques and strategies for designing and making SSOs, conducting in vitro and in vivo testing, and application of SSOs in research.” Pet. 18 (citing Ex. 1002 ¶¶ 30, 31). Petitioner adds that the artisan “would have had knowledge of laboratory techniques and strategies in creating nuclease-resistant SSOs, and using such SSOs to manipulate gene expression to force expression of selected isoforms of a M.D. or a Ph.D. in physiological science, biochemistry, molecular biology, chemistry, or a related discipline, with at least five years of experience in SSOs design and manipulation” and may have “worked as part of a multidisciplinary team” to permit input by others on the team with specialized skills to assist in solving problems. Id. Patent Owner does not contest the skill level provided by Petitioner for the purpose of deciding institution (Prelim. Resp. 4), and we adopt it as reasonably consistent with the level of skill represented by the ’542 patent and the art of record.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,669,542 - Supercell OY v. Gree, Inc.Institution deniedPTAB · Nov 12, 2020 · PGR2020-00063 · APJ Lynne H Browne · PGR · Institution
The Board denied institution of PGR on claims 1–9, finding the § 101 arguments previously presented to the Office and the other grounds insufficient to show likely unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. The Board recently explained a two-part framework that the Board uses under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or 4 “ObjectLabel” (Ex. 1007, “ObjectLabel”). 5 US 2015/0153913 A1, issued June 4, 2015 (Ex. 1008, “Ballard”). substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The Board further explained that “[i]f a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute.” Id. at 8–9. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. The Becton, Dickinson6 factors, which address discretion to deny when a Petition presents the same or substantially the same prior art or arguments previously presented to the Office, are instructive. Id. (“[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” (Footnote omitted)).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“the ’432 patent”). Supercell Oy (“Supercell”) filed a petition requesting post-grant review of claims 1–9 of the ’432 patent. Paper 2 (“Pet.”). GREE, in turn, filed a preliminary response. Paper 8 (“Prelim. Resp.”). After considering the petition and the preliminary response, as well as all supporting evidence, we determine the petition does not demonstrate that it is more likely than not that at least one of the challenged claims of the ’432 patent is unpatentable. 35 U.S.C. § 324(a). Thus, we do not institute post-grant review of claims 1–9 of the ’432 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“‘“the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.’” Prelim. Resp. 11 (citing Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). “Rather, ‘the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had ‘possession’ of the claimed subject matter as of the filing date.’” Id. (citing Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“information.” Id. at 7:34–41. In particular, Ross explains that “[t]he user may interact with the secondary, tertiary, etc., virtual reality content and then return his view back to the movie wherein the movie has been adjusted to reflect the user’s interaction with the secondary, tertiary, etc., virtual reality content.” Id. at 7:41–45. Ross explains further that “while a user views primary virtual reality content, system 10 may be configured to display a ‘pop-up’ cue indicating that additional virtual reality content (e.g., additional characters) is available in a different (e.g., secondary, tertiary, etc.) content area.” Id. at 7:46–50. Thus, we understand Ross to disclose a system wherein a user can turn their gaze from a primary area to a secondary, tertiary, etc., area to view content related to the content in the primary area. See Ross, 7:21–33 (“Responsive to the user turning his view from the primary virtual reality content . . . a sensory cue comprising . . . secondary, tertiary, etc., . . . may be displayed to the user.”). Further, we understand Ross to disclose a system wherein the user’s focus on an item in the primary area may activate a “popup” cue in the primary area directing the user to additional virtual reality content in a secondary, tertiary, etc., area. See id. at 7:46–50 (“[W]hile a user views primary virtual reality content, system 10 may be configured to display a ‘pop-up’ cue indicating that additional virtual reality content . . . is available in a different (e.g., secondary, tertiary, etc.) content area.”). We do not, however, understand Ross’ “pop-up” cue to be activated in a secondary, tertiary, etc. area based on the user’s gaze position moving to the second area from the first area as required by claims 1, 8, and 9. See id. Therefore, because Ross describes displaying a “pop-up” cue while a user is viewing primary virtual reality content (see Ross, 7:46–50), Petitioner does not show persuasively that Ross discloses that “a gaze position moving to the second area from the first area” is an “information providing condition.” Furthermore, Petitioner’s cited testimonial evidence does not explain sufficiently how Ross discloses the recited “information providing condition.” See Ex. 1003 ¶ 73. For the reasons above, Petitioner does not show adequately that Ross discloses an “information providing condition [that] is a condition of a gaze position moving to the second area from the first area.”” slip op. at 18
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,406,432
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