• Netflix, Inc. v. Robocast, Inc.Institution denied
  PTAB · May 11, 2023 · IPR2023-00081 · APJ David C Mckone · IPR · Institution

  The Board denied institution because Netflix had not shown a reasonable likelihood of proving claims 1, 2, 37, or 38 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an 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.” For the reasons explained below, we decline to institute an inter partes review of the ’451 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not see a substantial difference between the parties’ proposals. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). However, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “we consider whether that construction was intended to encompass varying durations during the creating step or the displaying step. In its opinion, the Microsoft court observed that the defendants in that case argued that “before created,” and that “the ‘duration information’ is a parameter that the user can then interact with in order to vary the display of each resource.” Ex. 1014, 22. Patent Owner, the court continued, argued that “all that is required is for the user to maintain control over the actual presentation of the resource during the ‘displaying’ step, and that no duration information need be provided during the ‘creating a show structure of nodes’ step.” Id. at 22–23. The Microsoft court “agree[d] with [Patent Owner] that the user should be able to vary the duration of the content during show structure playback. This is the ‘interactive’ component of the claim.” Id. at 23; see also Prelim. Resp. 29 (arguing that this reasoning supports Patent Owner’s position that “the claim language expressly requires that the end user be able to ‘vary said duration’ for how long resource content currently ‘is being displayed’ to the user in ‘accordance with said show structure’ to which the resource belongs”). Here, the Microsoft court expressly states that the duration is varied during show structure playback, which is a clear reference to claim 1’s step of “displaying a content corresponding to each of said resources automatically in accordance with said show structure.” The Microsoft court “also finds that some duration information must be provided when the show structure of nodes is created,” that “‘parameter’ is a helpful concept for construction,” and that “the ‘duration information’ may be understood to be synonymous with a ‘parameter,’ as that timing information is the variable that will specify how long a particular content will be displayed.” Ex. 1014, 23. Thus, the Microsoft court construed claim 1 to require providing a variable duration parameter in the creating” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “As noted above, the Microsoft court construed “interactively variable duration information” to mean “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22. The construction itself suggests that the duration information is varied during display, because it is in the context of resources being displayed sequentially and “the viewer of the content can change the parameter.” As to Escobar, Petitioner contends that “[w]hen playing decision lists/timelines in the authoring tool using Button 174 (invoking subroutine E), the user is the viewer of the content.” Pet. 49 (citing Ex. 1004, 6:40–45). Thus, Petitioner appears to contend that, during the process of creating a show structure, the creator is a viewer if the creator can view the edited content corresponding to a node as the show structure is being created. Here, Petitioner would satisfy the “viewer” aspect of the Microsoft court’s construction by pointing to a creator viewing a piece of the show structure during the creating step, although Escobar does not teach that the creator can vary the duration of content while viewing it or that durations can be varied while a show structure (as opposed to a node being created) is being displayed in the displaying step, as discussed in more detail below.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,155,451
• Apotex Inc. v. Regeneron Pharmaceuticals, Inc.Institution denied
  PTAB · Mar 10, 2023 · IPR2022-01524 · APJ Ryan H Flax · IPR · Institution

  Institution denied because Petitioner did not show a reasonable likelihood that claims 1–14 and 26–30 were unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “APPLICABLE LEGAL STANDARDS “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). An inter partes review may be instituted if the information presented by Petitioner in the Petition, in view of Patent Owner’s Preliminary Response and the preliminary record, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314.” slip op. at 19

  • BurdenDecided for patent owner

    “As an initial matter, we find Petitioner has insufficiently addressed the issue of inherent anticipation by Dixon (or any other prior art) and has done so in a merely conclusory manner. There is no dispute that Dixon (as well as the other asserted prior art) discloses angiogenic eye disorder treatment using the same drug (aflibercept), at the same dose (2 mg), administered in the same way (intravitreal injection), and administered at the same dosing regimen (an initial, a secondary, and a tertiary dose), as required by all challenged claims. See generally Pet.; Prelim. Resp. Petitioner relies on these facts, and the results of a phase 2 clinical trial that followed a different dosing protocol (one not claimed) to establish that the results limitations of claims 1, 26, and 29 are inherent to the phase 3 clinical trials (VIEW 1 and 2) with a dosing regimen that is claimed. See Pet. 38–39. Petitioner calls the claimed results limitations mere newly discovered results of a known process. Id. (citing Montgomery, 677 F.3d at 1381). As Patent Owner identifies, it is not so simple. The evidence of the results of the VIEW 1 and 2 trials itself (found in the ’572 patent) shows that some, but not all, patients treated with the claimed dosing regimen achieved “a gain in visual acuity” as recited by claim 1, “a gain in visual acuity” that is “as effective” “as monthly administration of 0.5 mg of ranibizumab” as recited by claim 26, or “maintaining visual acuity” “as effective[ly]” “as monthly administration of 0.5 mg of ranibizumab” as recited by claim 29. See Ex. 1001, 13:5–38 (Table 1). As Patent Owner points out, the ’572 patent’s described studies 1 and 2, when following the claimed dosing regimen (2Q8), were not always effective treatments––achieving mere maintenance (as opposed to improvement or “gains”) of vision 95.1% and 95.6% (respectively) of the time. Id.; see Prelim. Resp. 34–37 (citing Ex. 1001, 13:8–27; Ex. 1014, 4, 6; Ex. 1030, 9; Ex. 2021 ¶¶ 109–111; Ex. 2022). Thus, the evidence shows that, although most would, about 4–5% of patients (or, possibly, an even higher number based on Patent Owner’s cited evidence––Ex. 1030, 9) would not see the gains in visual acuity required by claims 1 and 26 or the maintenance in visual acuity required by claim 29. It is well established that “[i]nherency . . . may not be established by probabilities or possibilities” and “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re. Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). Here, the evidence shows that the claimed results limitations may typically flow from the claimed method, but not necessarily.” slip op. at 33

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Relating to the claim construction, the Federal Circuit found that patent at issue was “clear” that the tissue fibrosis, recited by the claim as arrested or regressed by the otherwise recited treatment, was not the same as and did not necessarily accompany the symptom of erectile disfunction (taught in and the focus of the relied-upon prior art), although the former (fibrosis) may frequently result in the latter (disfunction). Id. at 1059. The Federal Circuit held that the “arresting or regressing” clause was more than a mere statement of intended result, but was a limitation carrying patentable weight because the phrase was drafted as a part of a separate step of the method rather than of the preamble, the “arresting or regressing” language demanded efficacy, and the efficacy was linked to specific treatment minimum duration and dosage. Id. at 1060–61. The patients exhibiting these two issues were not necessarily the same. In part because the Board did not consider the arresting/regressing result limitation in its unpatentability analysis, the Federal Circuit agreed with the patent owner that the Board’s findings were insufficient. Id. at 1064, 1067. The Federal Circuit found that that prior art reference relied upon in the Board’s decision for teaching the claimed treatment, and also relied upon to link the condition of fibrosis with the symptom of erectile dysfunction, did not teach treating a population of patients suffering from erectile dysfunction only because of a fibrosis condition and, even though such patients may have had fibrosis, it was not certain; and further found that other cited prior art did not make certain a link between fibrosis and such dysfunction. Id. at 1065–66. This, the Federal Circuit found, was error. We find in agreement with Patent Owner that the results limitations of the challenged claims are limitations and must be given patentable weight for the same reasons arresting or regressing a tissue fibrosis was a limitation in Los Angeles Biomed. Similarly, here the claims are directed to expressly required results of the administration of aflibercept to patients at 2 mg at an initial dose, in at least one secondary dose 4 weeks later, and in at least one tertiary dose 8 weeks later. Therefore, we find that in claim 1, “wherein the patient achieves a gain in visual acuity within 52 weeks following the initial dose,” is a limitation. Further, in claim 26, “wherein the method is as effective in achieving a gain in visual acuity as monthly administration of 0.5 mg of ranibizumab by intravitreal injection in human subjects with age-related macular degeneration at 52 weeks following the initial dose,” is a limitation. And, in claim 29, “wherein the method is as effective in maintaining visual acuity as monthly administration of 0.5 mg of ranibizumab by intravitreal injection in human subjects with age-related macular degeneration at 52 weeks following the initial dose,” is a limitation.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “A prior art reference without express reference to a claim limitation may anticipate by inherency. See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). “Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” Id. (quoting MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)).” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,253,572
• Unified Patents, LLC v. Robocast, Inc.Institution denied
  PTAB · Jan 20, 2023 · IPR2022-01125 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over Henley or Shoham and Richardson.

  RulingsInstitution decision

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

    “establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). While the elements must be arranged in the same way as is recited in the claim, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990). Identity of terminology between the anticipatory prior art reference and the claim is not required. Prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Certain terms recited in the challenged claims were construed during prior litigation of the ’451 patent, i.e., the parent of the challenged ’932 patent. Ex. 1011 (claim construction order in cases involving Microsoft and Apple); Ex. 2009, 5 (clarification of certain claim constructions on summary judgment). Patent Owner advocates that we adopt such prior constructions in this proceeding, and Petitioner “does not dispute” such constructions. Pet. 10–13; Prelim. Resp. 6–8. We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1011, 16–17; Pet. 12; Prelim. Resp. 7. Second, we construe “show structure of nodes,” which is recited in challenged independent claims 1 and 22, as well as in challenged dependent claim 4, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1011, 2–13; Pet. 11–12; Prelim. Resp. 7. Third, we construe “interactively variable duration information,” which is recited in challenged independent claim 1, as well as challenged dependent claims 2 and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1011, 22–23; Pet. 13; Prelim. Resp. 7.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience working with computer networks and the accessing and presentation of networked resources to users in the 1996 timeframe.” Pet. 10 (citing Ex. 1012 ¶ 51). Petitioner adds that “[t]his description is approximate, and a higher level of education or specific skill might make up for less experience and vice-versa.” Id. Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. (citing Ex. 2005 ¶ 28). Both parties support their proposals with testimony by their respective experts. See Ex. 1012 ¶ 51; Ex. 2005 ¶ 28. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “distinction. See Ex. 2005 ¶ 30 (“Henley discloses a ‘video optimized stream server system 10,’ also referred to as ‘media streamer,’ for use by broadcasters to deliver content to end users, or viewers.”). In particular, Dr. Almeroth observes that, in Figure 1 of Henley, reproduced above, system controller 64 is illustrated graphically as connected to multiple user controls 65, but is shown connected only to a single display 66. Id. ¶ 31. This structure, in combination with Henley’s description of the drawing, leads Dr. Almeroth to conclude that user control 65 “corresponds to a ‘set top box[]’” for an end user, and that system controller 64 corresponds to a separate “‘user interface’ for the operator.” Id. Specifically, Dr. Almeroth points to Henley’s description of system controller 64 as “respond[ing] to inputs from user control set top boxes 65 to cause commands to be generated that enable media streamer 10 to access a requested video presentation.” Id.; Ex. 1013, 8:30–32 (emphasis added). Dr. Almeroth also notes Henley’s explanation that “[s]ystem controller 64 is further provided with a user interface and display facility 66 which enables a user to input commands, such as by hard or soft buttons, and other data to enable an identification of video presentations, the scheduling of video presentations, and control over the playing of a video presentation.” Ex. 2005 ¶ 31; Ex. 1013, 8:33–38. These disclosures by Henley support Dr. Almeroth’s conclusion that “[t]his ‘user interface and display facility 66’ is for an operator—not an end user.” See Ex. 2005 ¶ 31. Dr. Almeroth provides additional reasoning to support this conclusion. For example, Henley explains that “[s]ystem controller 64 responds to inputs from user control set top boxes 65 to cause commands to be generated that enable media streamer 10 to access a requested video presentation.” Ex. 1013, 8:30–32. In light of this, because an end user would interact with the set-top box shown as user control 65, Dr. Almeroth reasons that “it would make no sense” for display 66 to be for the end user. Ex. 2005 ¶ 32. We agree with this reasoning. In addition, Dr. Almeroth observes that Henley describes two types of interfaces for media streamer 10, a command line interface and a graphical user interface. Id. ¶ 33 (citing Ex. 1013, 18:47–50). Because the command line interface can be used for “batch” functionality, Dr. Almeroth reasons, and we agree, that the command line interface is for broadcast operators, rather than for end users. Id. With respect to the graphical user interface shown in Figure 8, reproduced above, Dr. Almeroth further reasons that a person of skill in the art would understand that it relates to operator controls, rather than end-user controls, because Henley specifically describes it as showing keys “used to operate the media streamer.” Id. ¶ 34; Ex. 1013, 4:5– 6. In other words, according to Dr. Almeroth, “[t]he graphical user interface corresponds to the command line interface.” Ex. 2005 ¶ 34. Dr. Almeroth’s reasoning is compelling. Notably, Figure 8 shows “Batch” button 130 and “Import/Export” button 132 to “move video data into and out of the media streamer.” See Ex. 1013, 19:20–22, 19:30–31. As Dr. Almeroth testifies, these are not functions that a person of ordinary skill in the art would understand to be available for end users, but are appropriate for broadcast operators: “None of these commands are consistent with those that would be available to an end user of, e.g., a set top box or pay-per-view system.” Ex. 2005 ¶ 35. In light of this compelling testimony, we agree with Patent Owner and find that “Henley . . . does not describe . . . the end user’s interface or controls.” See Prelim. Resp. 22.” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,965,932
• Lassen Therapeutics 1, Inc. v. Singapore Health Services Pte Ltd., And National University Of SignaporeInstitution denied
  PTAB · Feb 6, 2020 · PGR2019-00053 · APJ Jamie T Wisz · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that claims 1–10 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Applying that standard, and upon consideration of the information presented in the Petition and the Preliminary Response, we determine that the information presented fails to demonstrate it is more likely than not that at least 1 of the challenged claims of the ’603 patent is unpatentable. Accordingly, we deny institution of post-grant review of claims 1–10 of the ’603 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states that, for purposes of the preliminary response only, it does not challenge Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19. Based on the current record and for the purposes of this Decision, we adopt Petitioner’s proposed description of the person of ordinary skill in the art. Furthermore, we find that the prior art of record reflects this level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that “Interleukin 11 receptor α (IL- 11Rα) antibody” should not be construed to include antibodies that bind to IL-11Rα of non-human species but not to the human version of this protein because such a construction does not comport with the language of claim 1, which is clearly directed to treating a human subject. See Pause Tech. v. TiVo, 419 F.3d 1326, 1331 (Fed. Cir. 2005) (rejecting interpretation of claim element that ignored “other language appearing later in the claim” in stating that ‘“[p]roper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.’”) (citing Hockerson– Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed.Cir.1999)). Construing this term to include antibodies that bind solely to non-human IL- 11Rα would be inconsistent with a claim directed to treatment of a human. Accordingly, for purposes of this decision, we construe “Interleukin 11 receptor α (IL-11Rα) antibody” to mean “any natural or synthetic, monoclonal or polyclonal antibody made using any animal system including phage, or fragment or derivative thereof, that binds to human IL-11Rα.”” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “We agree with Patent Owner that Petitioner appears to have overlooked the ’603 patent Specification’s disclosure of anti-IL-11Rα antibodies. Specifically, the ’603 patent lists “monoclonal antibody clone 025 (Sino Biological), clone EPR5446 (Abcam), clone 473143 (R & D Systems), clones 8E2 and 8E4 described in US 2014/0219919 A1 [Edwards] and the monoclonal antibodies described in Blanc et al (J. Immunol Methods. 2000 Jul. 31; 241(1–2); 43–59).” Ex. 1001, 18:41–46; Ex. 1003 ¶ 176.6 Edwards, which Petitioner relies on for its obviousness and anticipation grounds, is directed to antibodies “that bind to IL-11Rα and neutralize IL-11 signaling.” Ex. 1008 ¶ 13. Table 1 of Edwards lists clones 8E2 and 8E4 and sixty-three other antibodies (including variants of 8E2) as “exemplary IL-11Rα-binding proteins.” Id. ¶ 362. Table 1 of Edwards also includes the sequence ID numbers for the heavy and light chains of the variable regions of each of these sixty-five clones and the amino acid sequences for each are disclosed in the sequence listing. Id. ¶ 362, p. 46– 104.7” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,106,603
• Nichia Corporation / Osram Opto Semiconductors, Inc. v. Lighting Science Group Corp.Institution denied
  PTAB · Jan 15, 2020 · IPR2019-01260 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any anticipation or obviousness challenge to claims 1, 2, 6, and 10.

  RulingsInstitution decision

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

    “Corp. (“Patent Owner”) filed a Preliminary Response. Paper 21 (“Prelim. Resp.”). Pursuant to our authorization, Petitioner filed a Reply and Patent Owner filed a Sur-Reply. Papers 23, 24. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 100(b); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner proposes that the term “base,” recited in independent claim 1 as well as dependent claim 6, be construed to mean “support or foundation,” and that the phrase “integral part of,” recited in dependent claim 2, be construed to mean “a part of a whole.” Pet. 20–24. Patent Owner contends that we “need not rule on Petitioners’ proposed claim constructions, because construction of those terms is not necessary in order to resolve the parties’ dispute.” Prelim. Resp. 8. Although we agree with Patent Owner that resolution of the parties’” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “dispute does not require construction of “base” or “integral part of,” we find it necessary, in light of the parties’ arguments, to consider the meaning of a “thermally conductive region in solderable thermal contact with the thermally conducting base,” recited in independent claim 1. Neither party addresses this phrase as a matter of claim construction, but both parties implicitly proffer a proposed construction in their arguments. See Pet. 41– 43; Prelim. Resp. 35–40. In particular, Petitioner takes the position that “the term ‘solderable’ does not mean that the ‘thermally conductive region’ is to be ‘solderable’ to the ‘thermally conducting base’; rather, ‘solderable’ requires the thermally conductive region to be ‘solderable’ to another structure outside the assembly.” Pet. 41–42. Conversely, Patent Owner contends that “the modifier ‘solderable’ in ‘solderable thermal contact’ . . . applies to the relationship between (1) the ‘thermally conductive region’ and (2) the ‘thermally conducting base.’” Prelim. Resp. 36. First, we find that the plain meaning of the phrase supports Patent Owner’s proposal. The adjectives “solderable” and “thermal” are grammatically parallel in the phrase, and there is no apparent reason why those adjectives do not each equivalently modify the noun “contact,” such that the “contact” between the thermally conductive region and the thermally conducting base must be both “solderable” and “thermal.” See Prelim. Resp. 35–36 (Patent Owner asserting that “[t]his term plainly requires ‘solderable” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,528,421
• Nichia Corporation / Osram Opto Semiconductors, Inc. v. Lighting Science Group Corp.Institution denied
  PTAB · Jan 15, 2020 · IPR2019-01487 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution on claim 7 because Petitioner did not show a reasonable likelihood that Andrews anticipated or rendered the claim obvious.

  RulingsInstitution decision

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

    “But this argument is not commensurate with the scope of the claim as we have construed it. In particular, in advancing this contention, Petitioner does not present any argument or evidence that thermal contact pad 36 of Andrews is in “solderable thermal contact” with the combination of plate 51 and insulating film 49. Rather, because we agree with Patent Owner that “‘solderable thermal contact’ requires solderability between the region and the base, not some other unclaimed structure,” we also agree with Patent Owner that “the Petition fails to show that Andrews teaches a ‘thermally conducti[ve] region’ solderable to a ‘thermally conducting base.’” Prelim. Resp. 30. In addition, Patent Owner specifically addresses the possibility that Andrews’s thermal contact pad 36 and insulating film 49 are in solderable contact, notwithstanding the omission of such an argument in the Petition. See id. at 30–31. Patent Owner observes that the bottom layer of what Petitioner identifies as the recited “thermally conducting base” is an electrically insulating film, and what Petitioner identifies as the recited “thermally conductive region” is an electrical conductor, “such as gold, silver, [or] tin.” Id. at 31 (quoting Ex. 1008 ¶ 70). Patent Owner asserts that “[i]t is not possible to solder a conductor such as gold, silver, or tin to a nonconductive insulating film.” Id. at 31. That assertion is consistent with a technical dictionary’s definition of “solderability” as “[t]hat property of a metal surface to be readily wetted by molten solder.” See Ex. 3001 (definition by The Authoritative Dictionary of IEEE Standards Terms) (emphasis added). In light of these considerations, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claim 7 as anticipated by Andrews.” slip op. at 16

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “F. Summary Because we conclude that the Petition does not present a reasonable likelihood of demonstrating that any challenged claim is unpatentable, we also deny the Motion for Joinder. See 35 U.S.C. § 315(c) (permitting joinder only where a properly filed petition “warrants the institution of an inter partes review under section 314”). We need not reach Patent Owner’s argument that the Petition should be denied under 35 U.S.C. § 314(a). See Prelim. Resp. 47–56. III. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied and no trial is instituted; and FURTHER ORDERED that the Motion for Joinder is denied.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that the level of skill in the art is apparent from the cited art and that such a person “would have had at least a B.S. in mechanical or electrical engineering or a related field, and four years’ experience designing semiconductor—including LED—packages.” Pet. 10 (citing Ex. 1003 ¶¶ 31–33). Patent Owner does not dispute this articulation, which we adopt for this Decision. See Prelim. Resp. 8.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “First, we find that the plain meaning of the phrase supports Patent Owner’s proposal. The adjectives “solderable” and “thermal” are grammatically parallel in the phrase, and there is no apparent reason why those adjectives do not each equivalently modify the noun “contact,” such that the “contact” between the thermally conductive region and the thermally conducting base must be both “solderable” and “thermal.” See Prelim. Resp. 25 (Patent Owner asserting that “[t]his term plainly requires ‘solderable thermal contact between a thermally conductive region and the thermally conductive base’”). Second, we find that the prosecution history of the ’421 patent also supports Patent Owner’s proposal. Although both parties cite the same relevant aspect of that prosecution history, they interpret it differently. See Pet. 33–34; Prelim. Resp. 26–29. When the application that matured into the ’421 patent was originally filed, independent claim 1 did not include the word “solderable,” but instead recited only that a bottom surface of the LED assembly include “a thermally conductive region in thermal contact with the thermally conducting base, for spreading heat transmitted to the base from the one or more LED die.” Ex. 1002, 21. After the Applicant successfully traversed an obviousness rejection based on a combination of U.S. Patent Nos. 5,847,935 (“Thaler”) and 6,565,239 (“Rizkin”), the Examiner rejected claim 1 as anticipated by U.S. Patent Publ. No. 2003/0189830 (Ex. 1011, “Sugimoto”). Id. at 109. Sugimoto describes a light-source apparatus using an LED in which light-emission efficiency is improved to achieve greater light-output intensity, operational life, and mechanical strength. Ex. 1011 ¶¶ 1, 17. In responding to the anticipation rejection during prosecution to distinguish Sugimoto, the Applicant made two amendments to independent claim 1. First, the claim was amended to add the last limitation of the issued claim (“further comprising an LED assembly mount selected from the group consisting of an electrically insulated fastener and a solderable bonding pad”). Ex. 1002, 124. Second, the claim was amended to add the word “solderable” in the limitation at issue, thereby requiring that the “thermally conductive region [be] in solderable thermal contact with the thermally conducting base” (emphasis added). Id. Both of these aspects of Applicant’s amendments were identified by the Examiner in the reasons for allowance as not disclosed by Sugimoto. Id. at 167.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,528,421
• Envirologix Inc. v. Ionian Technologies, Inc.Rehearing denied
  PTAB · Oct 11, 2018 · IPR2018-00406 · APJ Ulrike W Jenks · IPR · Rehearing

  The Board denied EnviroLogix’s rehearing request, leaving institution denied because Ehses did not show a reasonable likelihood of proving any challenged claim anticipated.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is” slip op. at 2

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

    “anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 20 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 49).” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 20 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 49).” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “zero when fluorescence begins to increase and continues during the reaction. Req. Reh’g 12. Petitioner has not challenged our determination that Ehses Dissertation fails to qualify as prior art, nor otherwise explained why the Ehses Dissertation reflects the understanding of those of ordinary skill at the relevant time. See Decision 15 (“Petitioner has [not] made a threshold showing that the Ehses Dissertation was sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b)”). Moreover, Petitioners did not previously rely upon any teachings of Ehses Dissertation, particularly Figure 3.4, to support an inherency argument for Ehses anticipation grounds in the Petition. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. Accordingly, we are not persuaded by Petitioner’s assertion that we overlooked or misapprehended Petitioner’s anticipation arguments in light of the newly cited disclosure of the Ehses Dissertation.” slip op. at 6

  § 102 anticipation
  Patents in suitUS 9,562,264
• Envirologix Inc. v. Ionian Technologies, Inc.Rehearing denied
  PTAB · Oct 11, 2018 · IPR2018-00405 · APJ Christopher G Paulraj · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution, finding no reasonable likelihood that Ehses anticipated any challenged claim.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is” slip op. at 2

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

    “In order to meet the claim requirements, however, Petitioner must first show that Ehses performed real-time detection in an assay that also omits the initial denaturation step. See Decision 11; see Prelim. Resp. 11 (“the petition provides no comparison of the reaction conditions disclosed in Ehses to the reaction conditions recited in the claims”). But Ehses does not teach omitting the denaturation step as part of its Standard and Nicking protocols. See Ehses 175 (2.1.2 Standard SDA and 2.1.3 Nicking SDA). Rather, in a single sentence, Ehses mentions the omission of a denaturation step only in comparison to the experimental protocols in which a denaturation step is expressly included, but even then cautions that such an omission tends to result in undesirable side reactions. Ehses 177. Thus, contrary to Petitioner’s arguments, we do not find that Ehses teaches real-time detection of target DNA within 10 minutes was necessarily performed using the TO-PRO-1 dye when “omitting the initial denaturation step.” Id.” slip op. at 4

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “We remain unpersuaded by this argument. As discussed in our Decision, anticipation by inherency requires that any missing material must be recognized by the POSITA as necessarily present. Decision 19 (citing In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)). In the Petition, Petitioner contends that Ehses discloses amplification of a target in real time based on Ehses’s teaching that “the increase in fluorescence intensity was monitored” and Dr. Edwards’ opinion that “[d]yes that bind DNA, like TO-PRO-1, generate a fluorescent signal upon binding that is detected in” real time. Pet. 21 (citing Ehses 175; Ex. 1008 (Edwards Decl.) ¶ 82). In order to meet the claim requirements, however, Petitioner must first show that Ehses performed real-time detection in an assay that also omits the initial denaturation step. See Decision 11; see Prelim. Resp. 11 (“the petition provides no comparison of the reaction conditions disclosed in Ehses to the reaction conditions recited in the claims”). But Ehses does not teach omitting the denaturation step as part of its Standard and Nicking protocols. See Ehses 175 (2.1.2 Standard SDA and 2.1.3 Nicking SDA). Rather, in a single sentence, Ehses mentions the omission of a denaturation step only in comparison to the experimental protocols in which a denaturation step is expressly included, but even then cautions that such an omission tends to result in undesirable side reactions. Ehses 177. Thus, contrary to Petitioner’s arguments, we do not find that Ehses teaches real-time detection of target DNA within 10 minutes was necessarily performed using the TO-PRO-1 dye when “omitting the initial denaturation step.” Id.” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “2 Although not established as prior art, the Ehses Dissertation indicates that TO- PRO-1 fluoresces in the presence of double stranded DNA, whereas SYBR Gold detects both double and single-stranded products. See Ex. 1004, 37. zero when fluorescence begins to increase and continues during the reaction. Req. Reh’g 12. Petitioner has not challenged our determination that Ehses Dissertation fails to qualify as prior art, nor otherwise explained why the Ehses Dissertation reflects the understanding of those of ordinary skill at the relevant time. See Decision 15 (“Petitioner has [not] made a threshold showing that the Ehses Dissertation was sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b)”). Moreover, Petitioners did not previously rely upon any teachings of Ehses Dissertation, particularly Figure 3.4, to support an inherency argument for Ehses anticipation grounds in the Petition. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. Accordingly, we are not persuaded by Petitioner’s assertion that we overlooked or misapprehended Petitioner’s anticipation arguments in light of the newly cited disclosure of the Ehses Dissertation.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,562,263
• LG Electronics, Inc. v. Broadcom CorporationInstitution denied
  PTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12

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

    “Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,284,844
• 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

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.