• CSL Behring GmbH / CSL Behring LLC v. Shire Viropharma Inc.Institution denied
  PTAB · Dec 7, 2017 · IPR2017-01512 · APJ Lora M Green · IPR · Institution

  Institution was denied for claims 1-18: Schranz was not shown to be prior art, and the Jiang ground was denied under §325(d) because the same art and arguments were previously presented.

  RulingsInstitution decision

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

    “may request to cancel . . . claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Before considering the ground before us based on Schranz, we must address whether Petitioner has provided a sufficient threshold showing that Schranz constitutes prior art under 35 U.S.C. § 102—a legal question based on underlying factual determinations. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As was the case in Dep’t of Justice, the use of a joint declaration “invites innumerable practical difficulties in cross-examining the witnesses, in assessing the reliability of the statements made, and in evaluating the weight to be accorded to the opinions expressed.” Dep’t of Justice 10. For example, Dr. Machnig and Mr. Waldhauser declare in “our recollection.” Ex. 1013-A ¶ 4. It is unclear how two different declarants can have the same “recollection.” In addition, the declarants state that “[h]andouts of the poster . . . [were] picked up by us.” Id. ¶ 5. It is unclear from the Joint Declaration, however, if both declarants were together when the hand-out was picked-up, or if each declarant picked up the handout at separate times. We, therefore, afford the Joint Declaration of Dr. Machnig and Mr. Waldhauser little weight. See Dep’t of Justice 11. As it is the primary evidence on which Petitioner relies to demonstrate that Schranz is prior art, we determine that Petitioner has not made a threshold showing that Schranz is prior art to the ’111 patent. As Petitioner has not sufficiently demonstrated that Schranz is prior art to the ’111 patent, we determine that the Petition does not demonstrate a reasonable likelihood that challenged claims 1‒18 are rendered obvious by the combination of Schranz (as evidenced by Cinryze Label and Bock), Gatlin, Pharming, and Levi.” slip op. at 9

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

    “In the instant proceeding, we agree with Patent Owner that Petitioner is essentially making the same arguments as to obviousness over Jiang that the Examiner already considered. The prosecution history demonstrates that the Examiner considered many of the same issues with respect to the Schranz Declaration as Petitioner is arguing here. Although the Examiner noted in allowing the claims that Applicant Shire had established the secondary consideration of long-felt need and failure of others, the Examiner also stated that the art did not suggest the claimed dosage. We determine, therefore, that the Examiner did address the Schranz Declaration, and the Examiner’s concerns are similar to those raised by Petitioner in the instant proceeding. That is, as the Examiner stated: The Examiner has considered the arguments found in Dr. Schranz’s declaration concerning difficulty in higher concentration formulation. However, Dr. Schranz’s declaration provides little more than an assertion that it is difficult to reach such a concentration formulation, as opposed to actual evidence establishing that this (1) was a recognized problem in the art and (2) was generally not achievable via other means. Ex. 1001-B, 3041. Thus, the Examiner did acknowledge the lack of supporting evidence in the Schranz Declaration demonstrating that it was difficult to reach the claimed concentration.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “As was the case in Dep’t of Justice, the use of a joint declaration “invites innumerable practical difficulties in cross-examining the witnesses, in assessing the reliability of the statements made, and in evaluating the weight to be accorded to the opinions expressed.” Dep’t of Justice 10. For example, Dr. Machnig and Mr. Waldhauser declare in “our recollection.” Ex. 1013-A ¶ 4. It is unclear how two different declarants can have the same “recollection.” In addition, the declarants state that “[h]andouts of the poster . . . [were] picked up by us.” Id. ¶ 5. It is unclear from the Joint Declaration, however, if both declarants were together when the hand-out was picked-up, or if each declarant picked up the handout at separate times. We, therefore, afford the Joint Declaration of Dr. Machnig and Mr. Waldhauser little weight. See Dep’t of Justice 11. As it is the primary evidence on which Petitioner relies to demonstrate that Schranz is prior art, we determine that Petitioner has not made a threshold showing that Schranz is prior art to the ’111 patent. As Petitioner has not sufficiently demonstrated that Schranz is prior art to the ’111 patent, we determine that the Petition does not demonstrate a reasonable likelihood that challenged claims 1‒18 are rendered obvious by the combination of Schranz (as evidenced by Cinryze Label and Bock), Gatlin, Pharming, and Levi.” slip op. at 9

  § 102 anticipationDiscretionary denial
  Patents in suitUS 9,616,111
• Juniper Networks, Inc. / Brocade Communications Sys., Inc. et al. v. Mobile Telecommunications Technologies, LLCInstitution denied
  PTAB · Jul 27, 2017 · IPR2017-00642 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution: it declined the Jasinski-based grounds under § 325(d) and found no reasonable likelihood that claim 10 was obvious over Thro.

  RulingsInstitution decision

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

    “When evaluating whether the same or substantially the same prior art or arguments previously were presented to the Office under section 325(d), we have considered some of the following non-exclusive factors: 1) The similarity of the asserted art and the prior art involved during examination; 2) The extent to which the asserted art was considered during examination, including whether the prior art was the basis for rejection; 3) The cumulative nature of the asserted art and the prior art considered during examination; 4) Whether Petitioner has pointed out sufficiently how the Examiner erred in its consideration of the asserted prior art; 5) The extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or the applicant’s arguments during examination; and 6) The extent to which additional evidence and facts presented in the” slip op. at 8

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

    “58−86. We do not agree with Petitioner at least with regard to the “dynamically reassigning” limitation. The claim requires that the recited reassignment is made “as a function of the messages to be communicated in an area.” Ex. 1001, 34:52−53. Petitioner points to Thro’s disclosure of “where-are-you” messages as teaching the limitation. Pet. 84. According to Petitioner, a dynamic reassignment is triggered in Thro “via ‘where-are-you’ messages sent to exemplary remote stations A and B to [e]nsure remote station location information does not become stale.” Id. This contention is not supported sufficiently by the record.” slip op. at 13

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

    “58−86. We do not agree with Petitioner at least with regard to the “dynamically reassigning” limitation. The claim requires that the recited reassignment is made “as a function of the messages to be communicated in an area.” Ex. 1001, 34:52−53. Petitioner points to Thro’s disclosure of “where-are-you” messages as teaching the limitation. Pet. 84. According to Petitioner, a dynamic reassignment is triggered in Thro “via ‘where-are-you’ messages sent to exemplary remote stations A and B to [e]nsure remote station location information does not become stale.” Id. This contention is not supported sufficiently by the record.” slip op. at 13

  § 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 5,590,403
• 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
• Front Row Technologies, LLC v. MLB Advanced Media, L.P.Institution denied
  PTAB · Mar 25, 2016 · IPR2015-01932 · APJ Scott A Daniels · IPR · Institution

  The Board denied institution on all challenged claims, finding substantially the same art and arguments had been considered under § 325(d) and the remaining obviousness grounds lacked a sufficient combination analysis.

  RulingsInstitution decision

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

    “It is uncontroverted that the same prior art references, Brett and Silberschatz, were presented to and considered by the Office. See Ex. 3007; see also Pet. 18 (“The August 2, 2013 Final Rejection maintained the Examiner’s rejection of claims 1, 3–4, 6–10, 12–15, 17–18, and 20–22 as being unpatentable over Silberschatz in view of Brett.”). The question resolves, therefore, on whether the Examiner overlooked certain disclosures in Brett that, in combination with Silberschatz, are relevant to and render obvious the definition for a best unassigned seat being “set by the ticket seller,” as recited in the independent claims.” slip op. at 11

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

    “. . . with particularity . . . the grounds on which the challenge to each claim is based.” 35 U.S.C. § 312(a)(3). Petitioner has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The Petition must include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence. 37 C.F.R. § 42.22(a). The Petition must include a statement of the relevance of the evidence to the challenge raised. 37 C.F.R. § 104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. “Thus, we will address only the basis, rationale, and reasoning put forth by the Petitioner in the petition, and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 10 (PTAB Oct. 25, 2012) (Paper 8). It is Petitioner’s responsibility “to explain specific evidence that support its arguments, not the Board’s responsibility to search the record and piece together what may support Petitioner’s arguments.” Dominion Dealer Solutions, LLC v. Autoalert, Inc., Case IPR2013-00225, slip op. at 4 (PTAB Oct. 10, 2013) (Paper 15).” slip op. at 21

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

    “Brett and Silberschatz. Pet. 26–27, 43–45. Petitioner does not identify in the Petition, however, any differences between the prior art including Austin, and the claims at issue, or provide a substantive analysis of why or how a person of ordinary skill in the art would have modified the prior art to render the claims obvious. See Unigene Labs., 655 F.3d at 1360. As a basis for the combination with Austin, Petitioner asserts that “it would have been obvious . . . to utilize a ticket selling device in place of a ticket seller.” Pet. 26. This is not persuasive reasoning or even a motivation to combine Austin because Brett already utilizes various ticket selling devices such as internet servers and internet sites that communicate with a user via personal computers, telephones, televisions, and satellite communications. Ex. 1005 ¶ 0078, Fig. 1. With respect to Petitioner’s assertion that “ticket brokers” are “ticket sellers” who can determine a “best available seating arrangement” (Ex. 1007, 1:13), Brett already teaches that a seller is capable of ranking priority rights to seats and then selling the seats based on such ranking. See id. ¶ 0009. Petitioner’s nomenclature comparison is not persuasive of a substantive difference between the prior art references nor a sufficient articulated reason based on evidentiary underpinnings to combine the references. Moreover, Petitioner’s contentions are directed to what Austin purportedly discloses and do not compensate for the lack of meaningful analysis of the differences between the prior art and the claims at issue. See Pet. 26–27. We are not apprised by a brief summary of Austin of any persuasive evidence that a person of ordinary skill at the time of the invention would have modified, selected and/or combined prior art elements in the normal course of research and development to yield the claimed invention. The Petition provides simply that “it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine the seat selection algorithm and user constraints described in Silberschatz as modified by Brett with Austin’s ticket selling device used to define the best available seats.” Pet. 27. Even if Petitioner has pointed to persuasive evidence in Austin with respect to determining a “best unassigned seat” according to a definition “set by a ticket seller”—and we are not persuaded that it has—this is not sufficient for a proper obviousness analysis. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. . . . This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–19. This is not a sufficient fact-based analysis to persuade us that it would have been obvious to a person of ordinary skill to combine Silberschatz, Brett, and Austin.” slip op. at 17

  • Obviousness (§103) › Analogous artOther

    “purported teachings, alleges that Brett, Silberschatz, Austin, Nakfoor, Gathman, and Nestor are analogous art and in the same field of endeavor. Pet. 43–45. The fact that the cited references are “analogous art” (Pet. 43) and “are all in the same field of endeavor as the claimed invention” (id.) does not, by itself, however, establish that it would have been obvious to combine their features. Petitioner must show some reason why a person of ordinary skill in the art would have thought to combine particular available elements of knowledge, as evidenced by the prior art, to reach the claimed invention. KSR, 550 U.S. at 418. These conclusory labels and brief summaries of the prior art reference teachings do not substitute for a fact-based analysis in the Petition establishing what is being modified and why, based on the differences between the prior art and the claimed invention, it would have been obvious to a person of ordinary skill to make the modification.” slip op. at 20

  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,121,872

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.