• Hugel, Inc. v. Medytox Inc.Institution denied
  PTAB · Aug 28, 2023 · IPR2023-00604 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution: Ground 1 did not show claims 1–9 likely obvious over Jung and Ton; it denied Ground 2 under § 325(d).

  RulingsInstitution decision

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

    “Petitioner “has the burden from the outset to show with particularity why the patent it challenges is unpatentable.” Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); see also SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018) (“in an inter partes review, the petitioner is the master of its complaint”). A petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify, “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). What is missing from both the Petition and the supporting testimony is an adequate explanation of how or why a POSA would have understood that Jung teaches the isolation of a botulinum toxin type A macro complex in particular, when Jung is silent as to the form of the toxin being produced. In this case, it is not enough to simply cite evidence; an explanation of the significance of that evidence is necessary. Based on our review of the record, we find that there is insufficient explanation and insufficient supporting evidence that Jung teaches isolating a botulinum toxin type A macro complex. Petitioner’s statements, and Dr. Bates’s testimony, that Jung teaches isolating a botulinum toxin, and that botulinum toxins “naturally comprise[] a complex with a variety of non-toxic proteins bound thereto” that can be intermediate, large, or macro in size, are conclusory because they do not explain why the form of toxin ultimately isolated in Jung is a macro complex. Therefore, Petitioner does not sufficiently show that the combination of Jung and Ton discloses “[a] method of isolating a botulinum toxin type A macro complex from a botulinum containing solution” or “separating the botulinum toxin type A macro complex from the cation exchange chromatography medium” as required by claim 1 of the ’598 patent.” slip op. at 13

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

    “the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments 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 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) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson10 factors that address discretion to deny institution when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “To support a conclusion of obviousness when combining the teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.” (citation and internal quotation marks omitted)). Here, the Petition lacks an adequate explanation as to why a POSA reading Kim ’741 would have looked to Jung for its teachings regarding anion exchange chromatography, and how a POSA would have combined the teachings of Kim ’741 and Jung in the manner claimed. Because we are not persuaded that Petitioner sufficiently establishes a motivation to combine Kim ’741 and Jung with respect to the anion exchange chromatography limitation of claim 1, we are not persuaded that Petitioner’s alternative assertion of Jung for this limitation warrants reconsideration of the prior art and arguments previously considered by the Office. Accordingly, we find that the Examiner’s failure to consider Jung in combination with Kim ’741 with respect to the anion exchange chromatography limitation of claim 1 is not an error that weighs in favor of institution.” slip op. at 29

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the graduate degree.” Pet. 17 (citing Ex. 1021 ¶ 22). Patent Owner states that, for purposes of its Preliminary Response, it does not challenge Petitioner’s proposed definition of a POSA. Prelim. Resp. 20. For purposes of this Decision, and based on the current record, we adopt the uncontested assessment offered by Petitioner.” slip op. at 6

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR
  Patents in suitUS 11,331,598
• Risen (Suzhou) Pharma Tech. Co. Ltd. v. Alzheon, Inc.Institution denied
  PTAB · Jan 9, 2023 · IPR2022-01200 · APJ Devon Zastrow Newman · IPR · Institution

  The Board denied institution for claims 1–14 under § 325(d), finding the petition relied on substantially the same art and arguments previously presented and did not show material examiner error.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “ApoE4+ patient with AD using tramiprosate over the Caltagirone reference, which disclosed treatment of ApoE4+ “all-comers” (containing at least one ApoE4 allele, either heterozygous or homozygous) with tramiprosate. See, e.g., Ex. 1002, 204–208. When Patent Owner responded to the Examiner by highlighting data (i.e., Figure 8 of the specification giving rise to the ’029 patent) showing a notable increase in cognitive function in patients with two ApoE4 alleles (homozygous) who were administered tramiprosate as compared to the ApoE4 “all-comers” (mixed homozygous/heterozygous population), the Examiner suggested narrowing the pending claims to treatment of ApoE4 homozygotes. Ex. 1002, 342. Patent Owner submitted amended claims requiring selection of patients for treatment who were homozygous for ApoE4, and argued: The presently amended claims . . . select only ApoE4 homozygotes for treatment with tramiprosate or a prodrug thereof, necessarily omitting ApoE4 heterozygotes from such treatment. . . . Caltagirone fails to teach or suggest a patient selection strategy that would limit tramiprosate treatment to patients having two ApoE4 alleles and, in fact, teaches away from such selection. Kong fails to contradict or overcome these deficiencies in Caltagirone. Kong does not refer to any patient selection strategy, much less one that would limit tramiprosate prodrug treatment to ApoE4 homozygotes. The Office's reliance on Kong is solely for its teaching of a tramiprosate prodrug. Thus, the combination of Caltagirone and Kong, taken under the Office’s interpretation, suggests treatment of all ApoE4+ patients with a prodrug of tramiprosate. This falls far short of suggesting the presently claimed patient selection and treatment strategy which selects only ApoE4 homozygotes for treatment and does not treat ApoE4 heterozygotes. Id. at 338–39 (emphasis added). The Examiner acknowledged the” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (“skilled artisan”) at the time of the invention would have had 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. 19 (citing Ex. 1003 ¶¶ 52–53). Patent Owner does not contest the characterization offered by Petitioner. Prelim. Resp. 14–15. 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 ’029 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 12

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

    “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 (Advanced Bionics, Paper 6 at 10). 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 (Advanced Bionics, Paper 6 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” (Advanced Bionics, Paper 6 at 9).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached

    “Babic ascertained that “different effects of a drug could be observed in different subpopulations of patients based on ApoE4 carrier status”” and that “drug effects in homozygous carriers could be greater than those in the heterozygous carriers and non-carriers who did not respond to the drug.” Ex. 1003 ¶ 107. As stated, this testimony does not support Petitioner’s contention that an ordinary artisan would have been motivated “to select homozygous ApoE4 carriers for treatment with any drug for which response has been correlated to ApoE4 carrier status.” See Pet. 41 (emphasis added). In particular, we find an insufficient factual basis for Petitioner’s contention that results obtained for galantamine, an acetylcholinesterase inhibitor (Ex. 1003 ¶ 105) would have motivated an ordinary artisan to replace the galantamine taught in Babic with tramiprosate (homotaurine), a GABA receptor agonist that works by a different mechanism (Ex. 1007, 582). We have also considered Dr. Ruffalo’s testimony that the ordinary artisan would have been motivated to replace Babic’s galantamine with tramiprosate as taught in Caltagirone or Val-APS as taught in Kong. Ex. 1003 ¶¶ 276–277. Dr. Ruffalo posits that Babic’s disclosures would have motivated the ordinary artisan to analyze Caltagirone’s data to ascertain if tramiprosate is more effective in homozygotes, and to replace galantamine with tramiprosate or Val-APS as taught in Kong because of their improved safety profiles as compared to galantamine, and because the replacement drugs target the underlying disease and not symptom amelioration as does galantamine. Id. Dr. Ruffalo also posits that the prior art would have imparted the following knowledge to the ordinary artisan: because the effect of tramiprosate was dependent on the required ApoE4 allele, homozygotes having the highest number of ApoE4 allele copies would derive, at the very least, as much benefit as from the drug as the heterozygotes having only one copy of the allele, and most likely the homozygotes would have the greatest therapeutic response to tramiprosate since they have the maximum number of copies of the required allele. Having done this simple assessment, A POSA would conclude that tramiprosate would be expected to exhibit a greater therapeutic effect in homozygotes and thus would have been motivated to treat homozygotes with tramiprosate, including in an oral dosage form as taught by Aisen. Id. Dr. Ruffalo further posits that the skilled artisan would have had a reasonable expectation of success in administering tramiprosate to treat homozygous ApoE4 patients because they “would almost certainly have the greatest response to the drug.” Id. ¶ 286. Patent Owner argues that the Examiner previously examined the issue of whether ApoE4 genotypes in treatment decisions should be considered during prosecution, with respect to Caltagirone, where ApoE4 genotypes were included, and Sleegers (Ex. 1002, 685, 1137), where studies led away from such inclusion. Prelim. Resp. 30–31. We find Sleegers’ disclosure” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,471,029
• Google LLC v. Valtrus Innovations LimitedInstitution denied
  PTAB · Jan 3, 2023 · IPR2022-01197 · APJ Sheldon M Mcgee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the Ogawa grounds and § 325(d) barred the Vea grounds.

  RulingsInstitution decision

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

    “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). The findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has not met that standard on this record. slip op. at 7

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

    “framework set forth under Advanced Bionics, LLC v. Med-El Electromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Under that framework, we must first determine whether the same or substantially the same art or arguments previously were presented to the Office. If so, we must then determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8.” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references.” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “12 Dr. Madisetti’s testimony here is entitled to little to no weight as it merely parrots the Petition. 37 C.F.R. § 42.65(a).” slip op. at 19

  § 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 6,816,809
• Volkswagen Group Of America, Inc. v. Stratosaudio, Inc.Institution denied
  PTAB · 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 · Graham
  Patents in suitUS 8,200,203
• Volkswagen Group Of America, Inc. v. Stratosaudio, Inc.Institution denied
  PTAB · 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 · Graham
  Patents in suitUS 9,584,843
• Intel Corp. v. Health Discovery Corp.Institution denied
  PTAB · 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 denial
  Patents in suitUS 8,095,483
• Universal Imaging Industries, LLC v. Lexmark International, Inc.Institution denied
  PTAB · Feb 27, 2020 · IPR2019-01383 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution of IPR on claims 1–22, finding the Adkins ground warranted denial under § 325(d) and the other obviousness grounds lacked a reasonable likelihood of success.

  RulingsInstitution decision

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

    “As we explain in detail below, Petitioner has not demonstrated a reasonable likelihood of prevailing on its other asserted grounds of unpatentability. Because each of Petitioner’s grounds should be denied, either for an inadequate showing on the merits or pursuant to our discretion under § 325(d), we exercise our discretion to deny the Petition under §§ 314(a) and 325(d).” slip op. at 21

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

    “Weighing each of the factors, we conclude that the circumstances of this case, on the record presented, warrant exercise of our discretion to deny institution based on § 325(d). Patent Owner identified the Adkins application as “related” to the ’079 patent, made statements in the Specification attempting to distinguish the ’079 patent’s invention from Adkins, and cited the ’021 patent in an IDS. Further, the Examiner already was familiar with Adkins given that the same Examiner examined both the ’021 patent and the ’079 patent. We infer from these circumstances that the Examiner considered the substance of Adkins and Patent Owner’s statements regarding the disclosure of Adkins and problems with its approach, despite the lack of an express rejection over Adkins. Petitioner has not presented a convincing case that the Examiner erred in allowing the claims of the ’079 patent and Dr. Direen’s testimony does not provide persuasive support for Petitioner’s arguments.” slip op. at 20

  • BurdenNot shown unpatentable

    “limitation that the plurality of address change requests occurs “substantially immediately following a predetermined event.”6 Prelim. Resp. 42. We agree. In its analysis of claim 7, Petitioner does not identify any “event” at all or explain how such an event would be “predetermined” or why the alleged address change requests in Mayer or I2C Spec would occur “substantially immediately following” such an event. See Pet. 21–24. Indeed, the “substantially immediately following a predetermined event” claim language does not even appear in Petitioner’s arguments. See id. 6 Patent Owner makes a number of other arguments regarding the asserted combinations with I2C Spec in its Preliminary Response, including that Petitioner has not shown sufficiently that I2C Spec is a prior art printed publication under 35 U.S.C. § 102(b). See Prelim. Resp. 26–30, 36–37, 43–48. We need not reach these issues, however, because Petitioner has not shown a reasonable likelihood of prevailing on the asserted grounds for the reasons explained herein. Although Petitioner does not identify a “predetermined event” in its Petition, Dr. Direen appears to opine that a “power-on reset process” would trigger the plurality of address change requests. Ex. 1002, App. 1002-A, 14. Dr. Direen states that “[i]t is well understood in the electronic industry and by [persons of ordinary skill in the art] that complex devices such as a microprocessor or I2C slave device will go through a power-on reset process to ensure internal states are at known states. This is inherent device operation.” Id. Dr. Direen, however, cites no support for this opinion and does not explain in any detail what a power-on reset process would entail or why a plurality of address change requests in either Mayer or I2C Spec would occur “substantially immediately following” a power-on reset process. See id. Moreover, to the extent Dr. Direen bases his opinion on inherency, Petitioner does not assert that theory in its Petition.7 See Pet. 21–24. Petitioner has not shown sufficiently that Mayer and I2C Spec teach a “dynamic address generator” wherein “substantially immediately following a predetermined event and in a continual series of a plurality of address change requests received by the interface and corresponding acknowledgements sent thereby in reply, for each address change request received the dynamic address generator generates a new component address,” as recited in claim 7.” slip op. at 24

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Relevant to factor (f), Petitioner offers the testimony of Dr. Direen, which was not available to the Examiner. However, Dr. Direen’s testimony is entitled to little weight because it consists primarily of quotations from Adkins, many of which are not cited in the Petition, and an unsupported inherency theory that is not argued in the Petition. See, e.g., Ex. 1002, App. 1002-C, 11–16 (testimony for claim 7). See 37 C.F.R. §§ 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”), 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Thus, Dr. Direen’s testimony does not provide persuasive evidentiary support for Petitioner’s arguments regarding Adkins. This factor is, at most, neutral.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,850,079
• Universal Imaging Industries, LLC v. Lexmark International, Inc.Institution denied
  PTAB · Feb 3, 2020 · IPR2019-01369 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, and § 325(d) also supported denying the claim 10 grounds based solely on Schön and Robb or …

  RulingsInstitution decision

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

    “each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). “Although the KSR test is flexible, the Board ‘must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (citation omitted). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal 3 Additionally, secondary considerations, such as “commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.” Graham, 383 U.S. at 17–18. Neither party, however, has presented any such evidence for us to consider. conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient articulation[] of motivation to combine”; “instead, the finding must be supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.”).” slip op. at 9

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

    “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 whether to exercise our discretion when the same or substantially the same prior art or arguments previously were presented to the Office under section 325(d), we have weighed some common non-exclusive factors, such as: (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”).” slip op. at 37

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the ’657 patent would have had “a bachelor’s degree in electrical and/or computer engineering with training and one or more years of experience in embedded systems including both hardware and embedded software design,” as well as “a working understanding of communication on an electronics bus.” Pet. 8 (citing Ex. 1002 ¶¶ 25–28). Patent Owner argues that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical and/or computer engineering with one or more years of work experience in printer design, including hardware and/or embedded software design for printer applications.” Prelim. Resp. 7–8 (citing Ex. 2001 ¶¶ 29–33). The parties’ proposed definitions differ in that Petitioner’s definition requires experience with “embedded systems” and “communication on an electronics bus,” whereas Patent Owner’s definition more specifically requires experience with “printer design.” The Specification of the ’657 patent states that the disclosure relates to “master and slave devices communicating on a shared bus,” and specifically, “addressing schemes to provide security to the system.” Ex. 1001, col. 1, ll. 15–19. The claims of the ’657 patent similarly each recite “slave circuitry” for communicating as a “slave device” and an “address generator” generating plural addresses. Based on the record presented, including our review of the ’657 patent and the types of problems and solutions described in the ’657 patent and cited prior art, we agree with and apply Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 10

  • Expert testimonyPatent owner expert creditedOther

    “combine Schön with I2C Spec. Prelim. Resp. 50–54. In particular, Patent Owner argues that Schön already discloses an address format, and neither Schön, I2C Spec, nor the Petition identifies any disadvantages with Schön’s address format that would have been improved by I2C Spec’s address format. Id. at 52. Patent Owner argues that Petitioner does not explain why an ordinarily skilled artisan would have replaced Schön’s exemplary 8-bit address format, which allows for up to 256 addresses, with I2C Spec’s 7-bit address format with a limited number of variable bits, allowing fewer addresses to be generated in response to an address generation command. Id. at 52–53. Dr. Folkins’s testimony supports Patent Owner’s arguments. See Ex. 2001 ¶¶ 101, 105‒113. In particular, Dr. Folkins testifies that replacing Schön’s addressing scheme with I2C Spec’s addressing would limit the flexibility of Schön’s addressing. Id. ¶¶ 105‒107. Dr. Folkins further testifies that I2C Spec’s addressing scheme would have caused inefficiencies in Schön’s system because a smaller pool of addresses would lead to more duplicate addresses, causing additional cycles of address generation. Id. ¶¶ 108‒111. We credit Dr. Folkins’s uncontroverted testimony. We recognize that, according to our rules, we “will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c). However, in this case, Dr. Folkins’s testimony does not implicate a genuine issue of material fact. Petitioner does not provide any argument or cite to any testimony regarding the advantages or disadvantages of using I2C Spec’s addressing scheme in place of Schön’s. See Pet. 15‒21. Petitioner merely asserts, without further explanation, that Schön teaches “generating slave addresses,” I2C Spec teaches one “addressing format[],” and a person of ordinary skill in the art would have been motivated to use the latter. Id. at 16. Dr. Direen’s testimony regarding combining the teachings of Schön and I2C Spec also makes no mention of advantages or disadvantages of replacing Schön’s addressing scheme with I2C Spec’s addressing scheme. See Ex. 1002, App. 1002-A, 7 (concluding that “[i]t would be natural for a [person of ordinary skill in the art] to combine the teaching of the I2C standard with [Schön’s] teachings as they both relate to similar computer bus systems,” without addressing advantages or disadvantages of the addressing schemes).” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,386,657
• Fustibal LLC v. Bayer Healthcare LLCInstitution denied
  PTAB · Feb 8, 2017 · IPR2016-01490 · APJ Robert A Pollock · IPR · Institution

  The Board denied institution because Riedl was repeatedly considered during prosecution and the petition did not show a reasonable likelihood that claims 1–16 were unpatentable.

  RulingsInstitution decision

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

    “§ 314(a); 37 C.F.R. § 42.108. Our discretion on whether to institute is guided, in part, by 35 U.S.C. § 325(d), which states that “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.” Patent Owner requests that the Board exercise its discretion to deny institution with respect to Ground 1 because Riedl was expressly considered by the Examiner during the prosecution of the ’553 Patent. Prelim. Resp. 7–8. As noted in section I(E), above, in allowing claims 1–16 of the ’533 Patent, the Examiner expressly referred to Riedl as the closest prior art, yet found that it “fails to teach . . . the instant claimed compounds.” Ex. 2006, 913; see also Ex. 2005, 397, 569; Ex. 2006, 855 (same, with respect to similar claims).” slip op. at 11

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

    “As an initial matter, the above argument fails because, as discussed in section I(C)(iii), above, Riedl does not “expressly disclose[] the rografenib compound,” as Petitioner contends. We further agree with Patent Owner’s observation “that the Petition nowhere engages in a ‘lead compound’ analysis” and, at least with respect to Ground 2, “merely assumes—without explanation—that the POSA would select sorafenib for modification.” Prelim. Resp. 22–23. A lead compound comprises “a natural choice for further development efforts” (Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 1008 10 Petitioner provides similar arguments with respect to claims 1–12, 14, and 16. Id. at 22–25. (Fed. Cir. 2009)), i.e., a prior art compound “that would be most promising to modify in order to improve upon its . . . activity and obtain a compound with better activity” (Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007)). “In determining whether a chemist would have selected a prior art compound as a lead, the analysis is guided by evidence of the compound’s pertinent properties.” Otsuka Pharm., 678 F.3d at 1292. “Absent a reason or motivation based on such prior art evidence, mere structural similarity between a prior art compound and the claimed compound does not inform the lead compound selection.” Id. In setting forth Ground 2, Petitioner invokes a person of ordinary skill in the art “who was looking to modify sorafenib.” Prelim. Resp. 22. Neither Petitioner nor Petitioner’s expert address why a skilled artisan reading Riedl would select that compound for further development. Given that Riedl does not highlight any of the vast number of disclosed compounds as having particularly beneficial properties or present any enzymatic or biological data, we also do not discern from this reference why a person of ordinary skill in the art would have selected sorafenib as “a natural choice for further development efforts.”” slip op. at 17

  • Skill levelSkill level petitioner adoptedOther

    “Person of Ordinary Skill in the Art. Petitioner contends that a person of ordinary skill in the art “typically would have a PhD, MD, MS, or another degree relating to pharmaceutical chemistry (e.g. biology, chemistry, medicinal chemistry, medicine, pharmacology, or a closely related discipline), and . . . would have substantial familiarity, training, or experience with pharmaceutical compositions.” Pet. 6. Patent Owner has not challenged Petitioner’s proposed interpretation of a skilled artisan. We adopt Petitioner’s proposed interpretation for purposes of this opinion. See Prelim. Resp. 6 & n.1; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evident from the prior art). B.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Petitioner (correctly) contends that the ’553 Patent expressly defines the claim term “pharmaceutically acceptable salt” as “‘a relatively non-toxic, inorganic or organic acid addition salt of a compound of the present invention.’” Pet. 7 (quoting Ex. 1001, 9:56–62). Patent Owner does not presently object to this definition. Based on the specification’s express disclosure, we agree that the cited definition applies. See Prelim. Resp. 6 & n.2. The parties agree that all other terms should be accorded their ordinary and customary meaning. Id.; Pet. 6–7. Our reviewing court counsels that only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Accordingly, for purposes of this decision, we determine that no further construction is necessary. C.” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 8,637,553

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.