• 10x Genomics, Inc. v. President And Fellows Of Harvard CollegeInstitution denied
  PTAB · Mar 7, 2024 · IPR2023-01299 · APJ Tina E Hulse · IPR · Institution

  Denied institution on claims 1–12 because the Petition failed to address a disputed § 112(f) construction and the Fintiv factors favored discretionary denial.

  RulingsInstitution decision

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

    “II. DENIAL UNDER 37 C.F.R. § 42.104(b)(3) Our rules require that a petition set forth “[h]ow the challenged claim is to be construed” and, “[w]here the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. [§] 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each function.” 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective March 16, 2013. Because the ’303 Patent has an effective filing date after March 16, 2013, the AIA version of §§ 102 and 103 apply. Our decision, however, would be the same under either version. 3 Fan et al., US 10,829,814 B2, issued Nov. 10, 2020. Ex. 1005 (“Fan”). 4 Gunderson et al., Decoding Randomly Ordered DNA Arrays, 14 GENOME 870–77 (2004). Ex. 1007 (“Gunderson”). 5 Larsson et al., In situ detection and genotyping of individual mRNA molecules, 7 NAT. METHODS 395–97 (2010). Ex. 1008 (“Larsson”). 6 Bo U. Curry, US 8,765,642 B2, issued Jul. 1, 2014. Ex. 1009 (“Curry”). 37 C.F.R. § 42.104(b)(3). The Consolidated Trial Practice Guide7 (“CTPG”), which provides guidance to practitioners on our rules, further instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for patent owner

    “Similarly, here, Petitioner asserts that the phrase “an error detection or correction system” is not governed by § 112(f) and that no construction is necessary. See Pet. 12 (“Solely for the purposes of this IPR, 10x applies Co- Plaintiff’s [(i.e., Vizgen’s)] interpretations of the 303 patent claims from the concurrent litigation.”); see also Ex. 2005, 7 (reciting Vizgen’s proposed construction: “This claim limitation is not governed by 35 U.S.C. § 112(f). No construction necessary”). Before the district court, however, Petitioner asserts that the claim phrase is subject to § 112(f), which the district court largely adopted.10 Ex. 1062, 34. Petitioner admitted the claim phrase was in dispute in the Joint Claim Construction Statement filed in district court. Ex. 2005, 4, 7 (identifying “an error detection or correction system” as a disputed claim term). Despite knowing the meaning of the claim phrase is in dispute, Petitioner did not offer a reasoned construction in the Petition. Thus, like the petitioner in Orthopediatrics, Petitioner should have provided reasons why the limitation is not governed by § 112(f) or provided an express construction of the claim phrase. See IPR2018- 01546, Paper 10 at 11. Because Petitioner has the burden to show a reasonable likelihood of prevailing in its assertion that at least one claim is unpatentable, our rules require that Petitioner substantively address any claim terms in dispute. Based on the circumstances presented here, by relying solely on Vizgen’s construction for “an error detection or correction system” that “no construction [is] necessary” without further explanation, Petitioner failed to satisfy its burden to set forth “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Thus, we find the Petition is deficient on its face under 37 C.F.R. § 42.104(b)(3), as merely stating “no construction [is] necessary”—while knowing the construction is actually disputed under § 112(f)—is not sufficient for purposes of institution.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “Given the coordinated schedule with the related cases, the prior denial of a motion to stay, and the lack of intent by either party to file a motion to stay, we agree with Patent Owner that it is unlikely the district court proceeding will be stayed. Thus, under the facts and circumstances of this case, we find this factor favors exercising our discretion to deny institution.” slip op. at 16

  Claim constructionDiscretionary denial
  Patents in suitUS 11,098,303

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.