• Lumenis Be Ltd. v. BTL Healthcare Technologies A.S.Institution denied
  PTAB · Mar 21, 2022 · IPR2021-01279 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–13 obvious over any asserted ground.

  RulingsInstitution decision

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

    “The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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 (2019); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’895 patent. Accordingly, we do not grant Petitioner’s request and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts the following: On or before 5/10/2016, a [person of ordinary skill in the art] POSITA would have had a bachelor’s degree in biomedical engineering, electrical engineering, physics, or [a] related field, and two or more years of professional experience working with the design, development, and/or use of devices that apply electromagnetic energy to stimulate biological tissue. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 9–10 (citing Ex. 1002 ¶¶ 1–36). Patent Owner does not provide a response on this issue. See generally Prelim. Resp. We find Petitioner’s proposal that the skilled artisan would have had “two or more” years of experience to be too vague as it encompasses skill levels beyond the proposal level without a defined limit. We adopt Petitioner’s proposal except we do not adopt the “or more” terminology above. We determine that with our changes Petitioner’s proposal is consistent with the level of skill reflected in the ’895 patent Specification” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction We construe the challenged claims by applying the standard used in federal courts, in other words, “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Neither party seeks claim construction other than the plain and ordinary meaning of claim terms. See Pet. 10; see generally Prelim. Resp. Petitioner states “[p]ursuant to §42.104(b)(3), regarding the term ‘control unit,’ the Board has denied institution on Allergan’s PGRs of related patents (sharing substantially the same specification) determining that the term is not indefinite and does not invoke §112(f).” Pet. 10 (citing Allergan, Inc. et al v. BTL Healthcare Technologies A.S., PGR2021-00017, Paper 16 (PTAB, Filed Dec. 14, 2020) (“Allergan-17,” Paper 16); Allergan, Inc. et al v. BTL Healthcare Technologies A.S., PGR2021-00021, Paper 17 (PTAB, Filed Dec. 14, 2020)). The decision denying institution in Allergan-17 states the following: Consistent with Patent Owner’s contentions, the Specification does not treat the “control unit” as simply a black box recitation of any structure capable of performing the claimed function, but rather treats the term as referring to known structures such as a personal computer, a human machine interface includ[ing] or alternatively, a “PD and/or PID controller.” Ex. 1005, 8:57–9:5, 14:34–48, 75:18–20. Consistent with this, Figures 5a and 5b depict control unit 115 as a physical structure positioned between the power supply and switch. Ex. 1005, Figs. 5a, 5b. Because the term “control unit” refers to these known structures it is not a means plus function claim limitation. processing unit” was not a means plus function limitation where the term referred to “a class of known structures – central processing units – that could be found in any general-purpose computer”). Allergan-17, Paper 16, 13. Our Decision here is consistent with that prior determination.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Element 1.q requires “applying the first time-varying magnetic field . . . to a muscle fiber, a neuromuscular plate, or muscle within the body region of the patient.” Ex. 1001, 109:6–13. In other words, the magnetic field is applied within bodily tissue. Also, element 1.q requires that the application of the first time-varying magnetic field is “such that a muscle contraction within the body region is caused by each of the first, the second, and the third pluralities of the pulses of the first time-varying magnetic field.” Id. In other words, the magnetic field produces the effect. Consistent with Patent Owner’s arguments, Simon describes that its device is an improvement over conventional magnetic stimulators that operate differently. Simon describes conventional magnetic stimulators as having disadvantages. Ex. 1004 ¶ 19 (describing conventional magnetic stimulators as “generally complex and expensive”), ¶ 20 (describing that conventional magnetic stimulators “overheat when used over an extended period of time”), ¶ 21 (describing that conventional magnetic stimulators cause “unpleasantness or pain”). Simon describes that its stimulation devices overcome problems with conventional magnetic stimulators. See, e.g., id. ¶ 37 (describing that Simon’s stimulators have “virtually no unpleasant peripheral nerve stimulation” and “produce virtually no heating”).” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,709,895
• Lumenis Be Ltd. v. BTL Healthcare Technologies A.S.Institution denied
  PTAB · Mar 11, 2022 · IPR2021-01273 · APJ David Cotta · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted grounds.

  RulingsInstitution decision

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

    “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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Although Simon designates its devices as magnetic stimulation devices (Ex. 1004, Title, ¶ 2), it explains that the magnetic field of a toroidal magnetic stimulator remains essentially within the toroid, and that when referring to this device as a magnetic stimulator, it is in fact the electric fields and/or currents that are induced outside the stimulator that produce an effect in the patient, not the magnetic field. Id. ¶ 37 (emphasis added). Indeed, Simon emphasizes that “the magnetic stimulation device disclosed herein is not intended to generate a magnetic field within bodily tissue, so it would produce its effect through a different mechanism than conventional magnetic stimulation.” Id. ¶¶ 122, 140.” slip op. at 9

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

    “As explained above, because the magnetic field produced by Simon’s device does not effectively penetrate the patient’s tissue (Ex. 1004 ¶ 82), we determine Simon does not teach applying magnetic fields to a patient’s body, which is required in independent claims 1 and 23. See supra Section II.B.2. In contrast, Burnett ’870 teaches configuring the coils “to generate a magnetic field focused on a target nerve, muscle or other body tissues.” Ex. 1005 ¶ 21. Simon also describes the Burnett family of patent applications10 as disclosing “an unconventional adjustable coil that neither passes high current through the coil nor uses a core to increase the stimulus.” Ex. 1004 ¶¶ 166, 180. According to Simon, [Burnett] is therefore not designed to stimulate nerves or tissue as deeply or as powerfully as the device disclosed herein. Furthermore, as described above, the device disclosed herein is not intended to generate a magnetic field within bodily tissue, so use of the present invention would function differently than the one disclosed by BURNETT et al. Id. ¶ 180. Based on Simon’s teaching “highlight[ing] the fundamental differences between the devices disclosed in Simon and Burnett,” we agree with Patent Owner that an ordinarily skilled artisan “would not have looked to Burnett to modify Simon because their respective devices are different in structure and operation.” See Prelim. Resp. 54. Thus, we determine that” slip op. at 20

  § 103 obviousnesscites Phillips
  Patents in suitUS 10,478,634
• Lumenis Be Ltd. v. BTL Healthcare Technologies A.S.Institution denied
  PTAB · Mar 9, 2022 · IPR2021-01280 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution on all challenged claims 9–22 because Petitioner did not show a reasonable likelihood of proving any claim unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Although Simon designates its devices as magnetic stimulation devices (Ex. 1004, Title, ¶ 2), it explains that the magnetic field of a toroidal magnetic stimulator remains essentially within the toroid, and that when referring to this device as a magnetic stimulator, it is in fact the electric fields and/or currents that are induced outside the stimulator that produce an effect in the patient, not the magnetic field. Id. ¶ 37 (emphasis added). Indeed, Simon emphasizes that “the magnetic stimulation device disclosed herein is not intended to generate a magnetic 7 Petitioner also points to other teachings, including details relating to the operation of Simon’s device shown in Figure 1, which are not as pertinent to the question before us. See, e.g., Pet. 19–20 (citing, e.g., Ex. 1004 ¶¶ 60, 61, Fig. 2). field within bodily tissue, so it would produce its effect through a different mechanism than conventional magnetic stimulation.” Id. ¶¶ 122, 140.” slip op. at 9

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

    “When a challenge is based on combining disclosures from multiple embodiments from a single reference, “there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2018). Given that Petitioner’s obviousness assertions rely on combining the teachings from multiple embodiments, Petitioner was required to provide some explanation of how those teachings fit together to teach or suggest a method employing all of the steps recited in the claims. This, Petitioner has not done. Absent persuasive evidence explaining how and why the embodiment of Figure 9B would be combined with the embodiment of Figure 35 with a reasonable expectation of success, it is not enough that Burnett ’870 separately teaches an embodiment disclosing the claimed positioning of the applicator and an embodiment disclosing cooling an applicator.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). The parties do not propose any claim construction. Pet. 9; see generally, Prelim. Resp. On this record and for purposes of this Decision, we see no need to construe any term expressly.” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,478,634
• Lumenis Be Ltd. v. BTL Healthcare Technologies A.S.Institution denied
  PTAB · Mar 4, 2022 · IPR2021-01283 · APJ David Cotta · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 16–29 were unpatentable on any of the three asserted obviousness grounds.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “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.” We have reviewed the arguments and evidence of record. Based on the preliminary record, we find that Petitioner has not established a reasonable likelihood that at least 1 of the challenged claims is unpatentable based on the grounds advanced in the Petition. Thus, for reasons explained below, we do not institute inter partes review of claims 16–29 of the ’575 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s definition of the POSA is consistent with the specification of the ’575 patent and the prior art currently of record. However, we find Petitioner’s contentions that the skilled artisan would have had “two or the proposal level without a defined limit. Accordingly, we adopt Petitioner’s proposal except we do not adopt the “or more” terminology above.9 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 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties do not propose a particular construction for any claim term. Pet. 10; see generally, Prelim. Resp. At this stage in the proceeding, we determine that no explicit construction of any claim term is necessary to resolve the issues necessary to determine whether to institute review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “to keep the same capacitor-to-coil 1:1 ratio in implementing the two-coiled embodiment of [the] Burnett- ’870 device.” Ex. 1002 ¶ 259. A mere design choice, which does not need to be shown explicitly in the prior art, is generally a minor and obvious choice that solves no stated problem. Cf. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“Use of such a means of electrical connection in lieu of those used in the references solves no stated problem and would be an obvious matter of design choice within the skill [in] the art.” (citations omitted)). Furthermore, a finding of obviousness based on design choice is precluded where the difference between the claimed feature and prior art results in a functional difference. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992). Here, the current record supports that adding a capacitor to the two- coiled embodiment of Burnett ’870 is not minor and would result in a functional difference. See e.g., Ex. 1001, 19:62–64 (teaching that an embodiment with multiple energy storage devices offers the benefit of “time independency of the impulses generated by the separate magnetic field generating devices”); 19:67–20:2 (teaching that an embodiment with treatments by a plurality of magnetic field generating devices”); 20:57–60 (disclosing that the “magnetic field generating circuit may include a plurality of energy storage devices providing energy to a magnetic field generating device in order to enable higher energy pulse”). Dr. Bikson’s testimony that “it would have been an obvious design choice to keep the same capacitor-tocoil 1:1 ratio in implementing the two-coiled embodiment of [the] Burnett- ’870 device” (Ex. 1002 ¶ 259) is conclusory and does not take into account whether such a change would result in a functional difference. In addition, Dr. Bikson cites Magstim as supporting a 1:1 capacitor-to-coil ratio, but does not address that Magstim discloses a single capacitor-to-multiple coil ratios, including, for example, a 1:2 capacitor-to-coil ratio. See, e.g., Ex. 1006, 9 (“Single Pulse Systems may be used for cortical or peripheral stimulation with either single circular or double figure of eight coils.”). Accordingly, we are not persuaded that the Petition establishes that the prior art supports maintaining a 1:1 capacitor-to-coil ratio or that doubling the capacitor would be an obvious design choice.” slip op. at 32

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,695,575
• Lumenis Be Ltd. v. BTL Healthcare Technologies A.S.Institution denied
  PTAB · Mar 4, 2022 · IPR2021-01276 · APJ David Cotta · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–15 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “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.” We have reviewed the arguments and evidence of record. Based on the preliminary record. We find that Petitioner has not established a reasonable likelihood that at least 1 of the challenged claims is unpatentable based on the grounds advanced in the Petition. Thus, for reasons explained below, we do not institute inter partes review of claims 1– 15 of the ’575 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner’s definition of the POSA is consistent with the specification of the ’575 patent and the prior art currently of record. However, we find Petitioner’s contentions that the skilled artisan would have had “two or the proposal level without a defined limit. Accordingly, we adopt Petitioner’s proposal except we do not adopt the “or more” terminology above.10 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 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties do not propose a particular construction for any claim term. Pet. 10; see generally, Prelim. Resp. At this stage in the proceeding, we determine that no explicit construction of any claim term is necessary to resolve the issues necessary to determine whether to institute review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Upon consideration of Burnett ’870, including Burnett ’870’s description of “activating two coils ‘differentially’” and the disclosures of Magstim and Burnett ’185 relied on by Petitioner, we are not persuaded that they support using two capacitors or energy storage devices. Instead, the disclosures of Burnett ’870, Burnett ’185, and Magstim are consistent with Patent Owner’s assertions that the Petition demonstrates a teaching of only a single capacitor.” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,695,575
• Applied Materials, Inc. v. Ocean Semiconductor LLCInstitution denied
  PTAB · Feb 23, 2022 · IPR2021-01348 · APJ John D Hamann · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 would have been obvious over Funk and Stoddard.

  RulingsInstitution decision

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

    “Accordingly, Petitioner has not demonstrated a reasonable likelihood of success in challenging independent claim 1, as well as independent claim 10, which comprises limitations of commensurate scope, and for which Petitioner does not provide separate arguments. The remaining challenged claims (i.e., 2–9 and 11–19) depend from these independent claims, and Petitioner’s arguments for these dependent claims do not cure the above deficiencies of the independent claims. Pet. 51–65. Thus, Petitioner has not demonstrated a reasonable likelihood of success in challenging claims 1–19 as being rendered obvious by Funk and Stoddard.” slip op. at 15

  • PTAB / AIA Trials › Discretionary denialNot reached

    “presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim is unpatentable. Accordingly, we deny the Petition and do not institute inter partes review. 1 We do not reach the issue of discretionary denial under § 314(a) because we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’691 patent is unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention of the ’691 patent “would have at least a B.S. in mechanical engineering, electrical engineering, materials science engineering, or a related field, and four years of experience working with semiconductor manufacturing processes and measurement techniques.” Pet 17 (citing Ex. 1002 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’691 patent or identify any specific shortcoming in Petitioner’s formulation. See generally Prelim. Resp. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 17.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “The parties do not identify any claim terms for construction. Pet. 15; see Prelim. Resp. And we determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 6,836,691
• Lumenis Be Ltd. v. BTL Healthcare Technologies A.S.Institution denied
  PTAB · Feb 8, 2022 · IPR2021-01282 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 15–30 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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 (2019); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’321 patent. Accordingly, we do not grant Petitioner’s request and do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “IV. DISCRETIONARY DENIAL Patent Owner asserts we should exercise our discretion under 35 U.S.C. § 325(d) to deny inter partes review because the Petition presents the same or substantially the same prior art and arguments previously presented to the Office. We need not address Patent Owner’s contentions concerning discretionary denial under § 325(d) because Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’321 patent.” slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “art] POSITA would have had a bachelor’s degree in biomedical engineering, electrical engineering, physics, or [a] related field, and two or more years of professional experience working with the design, development, and/or use of devices that apply electromagnetic energy to stimulate biological tissue. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 8–9 (citing Ex. 1002 ¶¶ 1–36). Patent Owner does not provide a response on this issue. See generally Prelim. Resp. On the current record, we find Petitioner’s contentions that the skilled artisan would have had “two or more” years of experience to be too vague as it encompasses skill levels beyond the proposal level without a defined limit. We, therefore, adopt Petitioner’s proposal except we do not adopt the “or more” terminology above. We determine that with our changes Petitioner’s proposal is consistent with the level of skill reflected in the ’321 patent Specification and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction We construe the challenged claims by applying the standard used in federal courts, in other words, “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Neither party seeks claim construction other than the plain and ordinary meaning of claim terms. See Pet. 9; see generally Prelim. Resp. Petitioner states “[p]ursuant to §42.104(b)(3), regarding the term ‘control unit,’ the Board has denied institution on Allergan’s PGR 9 (citing Allergan, Inc. et al v. BTL Medical Technologies SRO et al, PGR2021-00017, Paper 16 (PTAB, Filed Dec. 14, 2020) (“Allergan, Paper 16”)). The decision denying institution includes the following: Consistent with Patent Owner’s contentions, the Specification does not treat the “control unit” as simply a black box recitation of any structure capable of performing the claimed function, but rather treats the term as referring to known structures such as a personal computer, a human machine interface includ[ing] or alternatively, a “PD and/or PID controller.” Ex. 1005, 8:57–9:5, 14:34–48, 75:18–20. Consistent with this, Figures 5a and 5b depict control unit 115 as a physical structure positioned between the power supply and switch. Ex. 1005, Figs. 5a, 5b. Because the term “control unit” refers to these known structures it is not a means plus function claim limitation. See Samsung, 948 F.3d at 1354 (finding that claimed “digital processing unit” was not a means plus function limitation where the term referred to “a class of known structures – central processing units – that could be found in any general-purpose computer”). Allergan, Paper 16, 13. Our Decision is consistent with that prior determination.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,632,321
• Lumenis Be Ltd. v. BTL Healthcare Technologies A.S.Institution denied
  PTAB · Feb 8, 2022 · IPR2021-01275 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution, finding the petition deficient on most challenged claims and declining review because it could at best succeed on two of fourteen claims and two of three grounds.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedOther

    “On the current record, we find Petitioner’s contentions that the skilled artisan would have had “two or more” years of experience to be too vague as it encompasses skill levels beyond the proposal level without a defined limit. We, therefore, adopt Petitioner’s proposal except we do not adopt the “or more” terminology above. We determine that with our changes Petitioner’s proposal is consistent with the level of skill reflected in the ’321 patent Specification and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “C. Claim Construction We construe the challenged claims by applying the standard used in federal courts, in other words, “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Neither party seeks claim construction other than the plain and ordinary meaning of claim terms. See Pet. 9; see generally Prelim. Resp.” slip op. at 10

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

    “to deny a petition “even when the petition includes at least one claim subject to a challenge that otherwise meets the criteria for institution.” Consolidated Trial Practice Guide11 at 64; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). The Petition consists of challenges to fourteen claims, each challenged under at least two different grounds of unpatentability, and a total of three grounds of unpatentability. See Pet. 6. For the reasons discussed above, Petitioner has not established a reasonable likelihood of prevailing in demonstrating (1) obviousness of claims 1–7 and 10–14 over Simon alone; (2) obviousness of claims 1–7 and 10–14 over the combination of Burnett ’870 and Magstim; and (3) obviousness of claims 10–14 over the combination of Simon and Burnett ’870. See supra §§ III.D–III.E. Assuming without deciding that Petitioner has demonstrated that there is a reasonable likelihood that claims 8 and 9 would have been obvious over Simon alone or Simon and Burnett ’870, Petitioner at best could succeed in two of fourteen challenged claims and in two of three grounds. Under the circumstances presented—where 11 Available at http://www.uspto.gov/TrialPracticeGuideConsolidated. grounds even though Petitioner could at best succeed in two of fourteen challenged claims and in two of three grounds—we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10– 11 (PTAB Nov. 7, 2018) (informative); see also Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative). Accordingly, we exercise discretion under 35 U.S.C. § 314(a) to decline to institute inter partes review.” slip op. at 33

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

    “Upon consideration of Burnett ’870, including Burnett ’870’s description of “activating two coils ‘differentially’” and the disclosures of Magstim relied on by Petitioner, we are not persuaded that they support using two capacitors or energy storage devices. Instead, the disclosures of Burnett ’870, Burnett ’185, and Magstim are consistent with Patent Owner’s assertions that the Petition demonstrates a teaching of only a single capacitor.” slip op. at 28

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,632,321
• SNF S.A. v. Solenis Technologies, L.P.Rehearing denied
  PTAB · Nov 4, 2021 · IPR2020-01730 · APJ David Cotta · IPR · Rehearing

  The Board denied rehearing and, despite finding a reasonable likelihood of obviousness for claims 12 and 13, denied institution because most challenged claims did not meet the threshold and review would be inefficient.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Obviousness (§103) › KSR rationalesNot reached

    “Petitioner offers to waive its arguments with respect to invalidity grounds 2 and 3 if we institute inter partes review. Id. This offer makes our exercise of discretion a closer call, but even absent grounds 2 and 3, granting institution would require that we institute on all claims. We have determined that, for a sizeable majority of challenged claims, Petitioner has not demonstrated a reasonable likelihood of prevailing. Under the circumstances presented here, we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron, Paper 9 at 10–11; Deeper, Paper 7. Accordingly, we exercise discretion under 35 U.S.C. § 324(a) to decline to institute post-grant review.” slip op. at 11

  • Other 314aInstitution denied discretionary otherInstitution denied

    “reasons discussed herein and in the Decision, Petitioner has failed to demonstrate a reasonable likelihood that it will prevail with respect to challenged claims 1–11 and 14–21. However, based on the preliminary record, Petitioner has demonstrated a reasonable likelihood that claims 12 and 13 would have been obvious over the cited art. Accordingly, this case presents the question whether we should exercise our discretion to deny institution. Our decision as to whether discretionary denial is warranted is guided by Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Both of these cases explain that “the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).” Chevron, Paper 9 at 10–11; Deeper, Paper 7 at 42. In Chevron, the panel ultimately exercised discretion to deny institution where “Petitioner demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Chevron, Paper 9 at 12. Similarly, in Deeper, the panel exercised discretion to deny institution where Petitioner demonstrated a reasonable likelihood of prevailing with respect to only two out of twenty three challenged claims. Deeper, Paper 7 at 43.” slip op. at 10

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

    “art – selecting values within the ranges disclosed in the prior art to calculate a ratio – did not support institution because Petitioner never explained how or why it selected any of the specific values it used to calculate the claimed ratio. Dec. 13. We concluded that Petitioner’s second use of the ranges disclosed in the art – optimizing within the disclosed ranges – did not support institution because the prior art did not disclose that the ratio of WAMW to % DADMAC was a result effective variable (id. at 17) and because Petitioner had not shown that independently optimizing WAMW and % DADMAC would lead to copolymer having the claimed ratio (id. at 17–20).” slip op. at 4

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,644,320
• Quest Diagnostics Incorporated v. Ravgen, Inc.Institution denied
  PTAB · Oct 19, 2021 · IPR2021-00790 · APJ Timothy G Majors · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 8–13, 125, 139, and 140 were obvious over Adinolfi, Pertl, and Abbott.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “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.” Petitioner has not on this record established a reasonable likelihood of prevailing on the grounds advanced here. Thus, for reasons explained below, we do not institute inter partes review of claims 8–13, 125, 139, and 140 of the ’277 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends: A person of ordinary skill in the art (“POSA”) in the field of the ’277 Patent would be a Ph.D., M.D. or M.D./Ph.D., with a doctoral degree or Board certification in medical genetics, human genetics, molecular genetics, clinical genetics or related fields, and with 2-3 years of relevant research experience in an academic or industry setting in, e.g., the field of prenatal diagnosis or cancer diagnosis. Pet. 38 (citing Ex. 1202 ¶ 101). Patent Owner does not directly oppose this definition. Prelim. Resp. 31. Patent Owner’s proposal describes the fields of advanced study as including “area[s] such as genetics, biochemistry, molecular biology, cell biology, or microbiology.” Id. Patent Owner proposes that a POSA would have “at least one to two years of work” in those areas and, alternatively, that a POSA “could have a Bachelor’s degree in one of the foregoing areas and at least three to four years of work in” such areas. Id. (citing Ex. 2001 ¶ 19). Petitioner’s proposal of the POSA level is more precise and appears to be generally consistent with the prior art. Accordingly, we adopt it for purposes of this Decision. 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 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Patent Owner calls out in its papers: “quantitating a ratio of the relative amount of alleles at a heterozygous locus of interest in a mixture of template DNA, wherein said mixture comprises maternal DNA and fetal DNA . . . wherein said ratio indicates the presence or absence of a fetal chromosomal abnormality.” Prelim. Resp. 33; see supra Section I(D). On this record, considering this language in context and in view of the intrinsic evidence, especially the prosecution history, we determine that this claim language requires that the quantitated ratio is a ratio of alleles from both maternal and fetal DNA in the mixture. And it is that quantitated ratio that must “indicate[] the presence or absence of a fetal chromosomal abnormality.”” slip op. at 28

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

    “potential of quantitative analysis of fetal DNA in maternal plasma/serum using fluorescent PCR has still to be investigated.” Ex. 1211, 48 (emphasis added). This statement, coming three years after Adinolfi and made by one of Adinolfi’s co-authors, undermines Petitioner’s position that Adinolfi and Pertl would have been predictably combined with a reasonable expectation of success of arriving at the method as claimed. Ex. 1211, 45; Ex. 2001 ¶¶ 115–116. And Petitioner neither argues nor shows that Abbott includes any relevant teachings on quantitating ratios of alleles in a mixture of fetal” slip op. at 33

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,332,277

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.