- Padagis Israel Pharmaceuticals Limited / Padagis US LLC et al. v. Bausch Health Ireland LimitedInstitution deniedPTAB · Jan 12, 2024 · IPR2023-01114 · APJ Michael A Valek · IPR · Institution
The Board denied institution of IPR challenging claims 1–11 because substantially the same art and arguments were previously considered, and Petitioner did not show material error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“factors. In the first part, we consider factors (a), (b), and (d) to determine 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, 8–10. “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 we advance to the second part of the analysis to determine “whether the petitioner has demonstrated a material error by the Office” in view of factors (c), (e), and (f). Id. Advanced Bionics instructs that “[i]f 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.” slip op. at 12
Discretionary denialPatents in suitUS 11,311,482 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 8, 2022 · IPR2022-00963 · APJ Susan L C Mitchell · IPR · Institution
The Board denied institution of IPR on claims 1–27 under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“substantially the same as those previously presented to the Office. Advanced Bionics, 8–10. “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 we advance to the second part of the analysis to determine “whether the petitioner has demonstrated a material error by the Office” in view of factors (c), (e), and (f). Id. Advanced Bionics instructs that “[i]f 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 9–10.” slip op. at 10
Discretionary denialPatents in suitUS 9,421,199 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 7, 2022 · IPR2022-00965 · APJ Michael A Valek · IPR · Institution
The Board denied institution on claims 1–20 under § 325(d), finding substantially the same art and arguments had been considered during prosecution and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“For these reasons, we determine that both the art and the arguments presented in the Petition are substantially the same as those previously presented to the Examiner.” slip op. at 21
Discretionary denialPatents in suitUS 10,076,515 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 7, 2022 · IPR2022-00964 · APJ Michael A Valek · IPR · Institution
The Board denied institution of inter partes review of claims 1–19 under § 325(d), finding the art and arguments substantially similar to those previously presented and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We again determine that Patent Owner has the better position. As explained above, the Examiner considered substantially the same art during prosecution. Although there was no rejection issued over the particular references cited in the Petition, those references were either before the Examiner (Siegel) or are cumulative of references (Chua & Tan and Lund) before the Examiner. There is no evidence that suggests the Examiner overlooked the most pertinent teachings in the art presented during prosecution. Indeed, the Teva rejection presented substantially the same arguments as the grounds in the Petition, including Patent Owner’s argument that there was “insufficient rationale to combine Teva and other references to produce a D2O-based formulation in which atropine is the monotherapeutic agent because atropine and its derivatives are specifically recognized as stable in ordinary water.” Ex. 2003, 69, 87–88. The Examiner credited this argument by withdrawing the Teva rejection and allowing the ’447 patent. Thus, we do not agree with Petitioner’s argument that the Examiner failed to consider whether it would have been “obvious to improve low-concentration atropine with D2O as a monotherapy for treating myopia.” See Pet. 63.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“D. Conclusion Based on the foregoing, we determine that the circumstances of this case warrant the exercise of discretion under 35 U.S.C. § 325(d) and therefore deny institution. ORDER After due consideration of the record before us, and for the foregoing reasons, it is: ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 25
Discretionary denialPatents in suitUS 9,770,447 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 7, 2022 · IPR2022-00966 · APJ Jamie T Wisz · IPR · Institution
The Board denied institution of inter partes review of claims 1–13, 15–27, and 29–30 under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“For these reasons, we determine that both the art and the arguments presented in the Petition are substantially the same as those previously presented to the Examiner.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“D. Conclusion Based on the foregoing, we determine that the circumstances of this case warrant the exercise of discretion under 35 U.S.C. § 325(d) and therefore deny institution. ORDER After due consideration of the record before us, and for the foregoing reasons, it is: ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 26
Discretionary denialPatents in suitUS 10,201,534 - 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
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.