• 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

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