- Facebook, Inc. v. Thaddeus GabaraInstitution deniedPTAB · May 25, 2021 · IPR2021-00200 · APJ Frederick C Laney · IPR · Institution
Institution was denied on all challenged claims because the petition did not show that Kim, alone or in combination, disclosed or suggested the required stationary map.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the following reasons, we find Patent Owner’s assertions have merit because Petitioner has not carried its burden of showing Kim discloses or suggests a background image of a stationary map, which is a necessary limitation in each of the challenged independent claims. Because this deficiency is dispositive and leads us to the conclusion that the Petition fails to demonstrate a reasonable likelihood Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’545 patent, our discussion below focuses on Petitioner’s contentions regarding Kim’s disclosure of a stationary map.” slip op. at 12
- Other 314aNot reached
“V. 35 U.S.C. § 314(a) Patent Owner contends that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a). Prelim. Resp. 3–12. Petitioner opposes Patent Owner’s argument. See Paper 12 (Decision Denying Petitioner’s Request to File Preliminary Replies to Patent Owner’s Preliminary Responses), 3 (noting that Petitioner requested authorization to file a preliminary reply to respond to Patent Owner’s argument regarding 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 ’545 patent is unpatentable, we need not reach the issue of discretionary denial pursuant to § 314(a).” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’545 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNot reached
“Additionally, only terms that are in controversy need to be construed, and these need be construed 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) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). At this stage of the proceeding, the parties agree that the claim terms should be given their plain and ordinary meaning. Pet. 15; Prelim. Resp. 28. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,620,545 - Platform Science, Inc. v. Omnitracs, LLCInstitution deniedPTAB · Apr 13, 2021 · IPR2020-01613 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–3 and 5–15 unpatentable over Milewski, or claims 1–3, 7–9, and 12 obvious over Milewski and Heijden.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“analysis. Petitioner maps the action message shown in Milewski’s Figure 4 to the recited “formatted message” (see, e.g., Pet. 32 (“Figure 4 shows an exemplary screen display of an action message (the ‘formatted message’) presented to the recipient at the receiver communication station.”)), while also mapping Figure 4 to the recited “response message” (see, e.g., id. at 37 (identifying Figure 4 as the “completed reply form (response message)”)). Milewski describes Figure 4 as both the action message and reply form. Compare Ex. 1007, 7:38–39 (“FIG. 4 is a screen of the action message 400 displayed by the controller at the recipient’s station.” (emphasis added)), with id. at 9:11–15 (“In an operation 803, the controller renders the action message body in a reply form shown in FIG. 4 to the recipient using standard World Wide Web protocols and processes (HyperText Transaction Protocols-HTTP; HyperText Mark Up Language-HTML).” (emphasis added)). Milewski appears to explain the basis for its terminology by stating that “[t]hroughout the description, structured responses may also be classified as an ‘action message’ as more descriptive of the reply sought by a sender.” See id. at 5:56–59. The problem Patent Owner identifies with Petitioner’s analysis, however, is that Petitioner fails to explain where Milewski indicates copying information from the action message to the reply form when the action message and reply form appear to be the same. In support of its argument regarding copying, Petitioner cites to column 7, lines 44 through 52, of Milewski. That section states the following: Upon marking the selected response, the recipient completes the response to the action message. In the present instance, the recipient has marked the “other” response and provides text in a field 408 as a response to the text in field 402. A field 410 is available for additional comments which the sender authorized to be entered by checking the field 212 in template 200. In this case, the recipient has chosen not to provide any additional comments. Ex. 1007, 7:44–52. We find that there is nothing in this section that expressly supports Petitioner’s contention that information is copied from the action message to the reply form, especially in light of Milewski’s indication that the action message is the reply form. Furthermore, Petitioner fails to explain sufficiently why a skilled artisan would view this passage as describing the alleged copying.” slip op. at 29
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6. Petitioner contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 3–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner, supported by Mr. Andrews’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had at least a Bachelor of Science degree (or equivalent) in electrical engineering, computer engineering, computer science, or a related technical field, and at least 2–3 years of experience in the fields of messaging systems, and wireless communication devices, or an equivalent advanced education in the field of messaging systems, including wireless communication devices. Pet. 12 (citing Ex. 1003 ¶ 28). Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. Prelim. Resp. 8. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“analysis. Petitioner maps the action message shown in Milewski’s Figure 4 to the recited “formatted message” (see, e.g., Pet. 32 (“Figure 4 shows an exemplary screen display of an action message (the ‘formatted message’) presented to the recipient at the receiver communication station.”)), while also mapping Figure 4 to the recited “response message” (see, e.g., id. at 37 (identifying Figure 4 as the “completed reply form (response message)”)). Milewski describes Figure 4 as both the action message and reply form. Compare Ex. 1007, 7:38–39 (“FIG. 4 is a screen of the action message 400 displayed by the controller at the recipient’s station.” (emphasis added)), with id. at 9:11–15 (“In an operation 803, the controller renders the action message body in a reply form shown in FIG. 4 to the recipient using standard World Wide Web protocols and processes (HyperText Transaction Protocols-HTTP; HyperText Mark Up Language-HTML).” (emphasis added)). Milewski appears to explain the basis for its terminology by stating that “[t]hroughout the description, structured responses may also be classified as an ‘action message’ as more descriptive of the reply sought by a sender.” See id. at 5:56–59. The problem Patent Owner identifies with Petitioner’s analysis, however, is that Petitioner fails to explain where Milewski indicates copying information from the action message to the reply form when the action message and reply form appear to be the same. In support of its argument regarding copying, Petitioner cites to column 7, lines 44 through 52, of Milewski. That section states the following: Upon marking the selected response, the recipient completes the response to the action message. In the present instance, the recipient has marked the “other” response and provides text in a field 408 as a response to the text in field 402. A field 410 is available for additional comments which the sender authorized to be entered by checking the field 212 in template 200. In this case, the recipient has chosen not to provide any additional comments. Ex. 1007, 7:44–52. We find that there is nothing in this section that expressly supports Petitioner’s contention that information is copied from the action message to the reply form, especially in light of Milewski’s indication that the action message is the reply form. Furthermore, Petitioner fails to explain sufficiently why a skilled artisan would view this passage as describing the alleged copying.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Platform Science, Inc. v. Omnitracs, LLCInstitution deniedPTAB · Apr 13, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Coffee, alone or with Heijden, rendered any challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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(a) (2018). For the reasons given below, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’308 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6. Petitioner contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. Prelim. Resp. 8. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 13
- BurdenNot shown unpatentable
“analysis. Even if we assume that Coffee discloses and/or renders obvious “field-mapping information for indicating information to be copied from said formatted message to a response message,”7 Petitioner has not shown that it is “based on which one of said pre-defined formatted messages was received.” Rather, whatever information Coffee may copy appears to be the same from each formatted message (as shown in Petitioner’s comparison of 7 For purposes of this Decision, we need not decide whether Coffee in fact discloses or renders obvious this recitation of claim 1. Coffee’s Tables 58 and 63) and not based on which pre-defined formatted message was received.8 Additionally, Petitioner’s alternative arguments as to whether Coffee discloses (explicitly or inherently) and/or renders obvious field-mapping information that is stored on the MDT do not address the specific deficiency identified above and do not provide an alternative basis for finding that Coffee discloses and/or renders obvious field-mapping information for indicating information to be copied from said formatted message to a response message based on which one of said pre-defined formatted messages was received. See Pet. 33–35 (discussing explicit, inherent, and obvious alternatives). Accordingly, based on the record before us, Petitioner has not shown sufficiently that Coffee discloses and/or renders obvious limitation 1d.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Fresenius Kabi USA, LLC / Fresenius Kabi Swissbiosim GmbH v. Coherus Biosciences, Inc.Rehearing deniedPTAB · Jan 27, 2021 · PGR2019-00064 · APJ Christopher G Paulraj · PGR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place denial of institution based on the merits of the written-description and enablement challenges.
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 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner’s arguments are unpersuasive because our construction of “stable” does not exclude the preferred embodiments. As Petitioner acknowledges, “[t]he Board did not construe ‘stable’ to be limited to formulations that are as stable as Humira or lose 20% of activity upon storage.” Id. at 3. Although our construction encompasses the “most” preferred embodiment (e.g., those that do not lose more than 5% of their activity during two years of long-term storage), it also encompasses other embodiments that are considered less preferred but nonetheless within the scope of what is defined to be “stable” in the specification, i.e., compositions that do “not lose more than 20%, or more preferably 15%, or even more preferably 10%” of activity. Ex. 1001, 9:28–33. Furthermore, consistent with the specification, our construction of “stable” encompasses embodiments in which stability is determined by comparison to the commercial formulation of adalimumab known in the prior art, i.e., Humira. Decision 8–9. We find no basis to construe “stable” to be limited to the only most preferred embodiment by requiring a loss of no more than 5% activity. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (stating “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 3
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“These arguments are also unpersuasive. As stated in the Decision: [W]e find that the specification provides a detailed disclosure of the testing used to assess stability (using Humira as the control), and identifies specific ingredients to be included and excluded from the claimed composition, and further identifies the pH that is necessary to achieve the claimed stability. Although there may be certain concentrations of adalimumab or certain types of buffers and sugars that may render the compositions more difficult to stabilize, Petitioner does not explain sufficiently why a POSA would not have known how to adjust or select those ingredients in order to achieve the claimed stable aqueous pharmaceutical composition. Decision 17. As further stated in the Decision: Moreover, even if a POSA would have needed to test whether a particular composition was stable, “[t]he fact that some experimentation is necessary does not preclude enablement; what is required is that the amount of experimentation ‘must not be unduly extensive.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996) (citing Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984)). Indeed, even “a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the invention claimed.” Id. (citing Ex parte Jackson, 217 USPQ 804, 807 (BPAI 1982)). Id. at 17–18. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of enablement ground for claims 1–12.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“the specification identifies with sufficient clarity each of the ingredients that must be included as part of the claimed composition (i.e., adalimumab, a buffer, polysorbate 80, and a sugar) and further provides a reason to exclude the ingredients that must not be included in theclaimed composition (i.e., mannitol, a citrate/phosphate buffer combination, and sodium chloride). Id. at 13–14. The Decision also explained how one of ordinary skill in the art would recognize that the inventors possessed the claimed invention: Patent Owner identifies teachings in the specification indicating the structural features required for achieving a stable adalimumab composition, which include: 1) avoiding the citrate/phosphate buffer combination in favor of another more stable buffer (such as an acetate buffer); 2) including polysorbate 80 as a stabilizer; 3) removing sodium chloride (NaCl) from the formulation; 4) using a sugar or polyol as the tonicity modifier in place of mannitol/NaCl; and 5) maintaining a pH of at least 5 (with an optimal pH near 5.2). Id. at 60 (citing Ex. 1001, 5:42–44, 21:40–47, 37:25–38:4, 38:1–7, 61:24–25). Patent Owner further asserts, and we agree, that the specification “provides working examples that demonstrate comparable or superior stability to the commercial Humira® formulation” and that Petitioner fails to demonstrate why a POSA would doubt that the formulations that demonstrated improved stability relative to Humira would be stable. Id. at 60–61. Id. at 14. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of written description ground for claims 1–12.” slip op. at 7
Claim construction§ 112 disclosurePatents in suitUS 10,155,039 - PTAB · Jun 30, 2020 · IPR2019-01517 · APJ Jennifer Meyer Chagnon · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show a reasonable likelihood that claims 21–28 and 31 were obvious over Voyksner, Watson, and Rainbow.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). III. ANALYSIS” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“precursor of 25-hydroxvitamin D2 having a molecule weight of 412.7 g/mol.” Id. (citing Pet. 27; Ex. 1002 ¶ 57). Petitioner’s arguments explain what a skilled artisan could have done, i.e., select an appropriate precursor ion. However, as discussed in the Decision, the Petition, even when considered along with Dr. Fitzgerald’s testimony, “does not describe specifically why one of ordinary skill in the art would have selected the specific precursor ion” (Dec. 19), when as discussed above, multiple precursors are possible.5 See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“prior art teaches determining the presence or amount of 25-hydroxyvitamin D2 in a sample. However, as discussed in the Decision, claim 21 “requires more than merely determining the presence or amount of 25-hydroxyvitamin D2 in a sample.” Id. at 18. Petitioner does not argue that our interpretation of the plain meaning of claim 21 is incorrect or that we should disregard the step of generating “protonated and dehydrated precursor ion of said 25-hydroxyvitamin D2 with a mass to charge ratio (m/z) of 395.30±0.5.” See id. Accordingly, we are not persuaded that we overlooked Petitioner’s arguments. Further, we agree with Patent Owner that the Petition lacks sufficient explanation of why a person of ordinary skill in the art “would have chosen to [specifically] investigate 25-hydroxyvitamin D2 using Voyksner’s methods in the first place, particularly since Voyksner only discusses ‘dihydroxyvitamin D3’ for the purposes of evaluating the orientation of certain mass spectrometry equipment.” Opp. 5 (citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362–63 (Fed. Cir. 2016) (noting that it is error to accept general knowledge in the art without evidence on the record for limitations that are “not evidently and indisputably within the common knowledge of those skilled in the art”) (emphasis in original)).” slip op. at 9
§ 103 obviousnessPatents in suitUS 7,972,867 - PTAB · Mar 9, 2020 · IPR2019-01517 · APJ Jennifer Meyer Chagnon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the claimed precursor ion would have been selected.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have an advanced degree (e.g., M.S. or Ph.D.) in chemistry or a related discipline, such as pharmacology or biochemistry, and at least 2–3 years of experience in a clinical or research laboratory.” Pet. 18; see Ex. 1002 ¶ 12. Petitioner further contends that a person of ordinary skill in the art would typically have experience with MS and HPLC, and would have knowledge regarding the suitable parameters for optimizing MS and HPLC laboratory tests. See Pet. 18–19.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any specific claim construction. See generally Pet. Patent Owner states that the “claim terms may be afforded their plain and ordinary meaning.” Prelim. Resp. 9. Patent Owner further notes, however, that “the term ‘precursor ion’ is interchangeable with ‘parent ion,’ which can then be fragmented to yield one or more ‘fragment ions,’ also known as ‘daughter ions’ or ‘product ions,’” indicating that this “distinction between ‘precursor/parent’ ions . . . and ‘fragment/daughter/product’ ions . . . is important to both a proper reading of the claims as well as the scope and content of the prior art.” Id. (citing Ex. 1001, 8:60–66). After reviewing the parties’ arguments and evidence, we determine that it is not necessary to expressly construe any term or phrase in order to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Claim 21, however, requires more than merely determining the presence or amount of 25-hydroxyvitamin D2 in a sample. The claimed method also requires the generation of a “protonated and dehydrated precursor ion of said 25-hydroxyvitamin D2 with a mass to charge ratio (m/z) of 395.30±0.5.” Patent Owner argues that none of Voyksner, Watson, or Rainbow discloses this limitation of claim 21. Prelim. Resp. 19–20. We agree with Patent Owner that Petitioner does not explain sufficiently why a person of ordinary skill in the art would specifically choose the protonated, dehydrated 25-hydroxyvitamin D2 as a precursor for the tandem mass spectrometry described in Voyksner, as required by claim 21. According to Patent Owner, “25-hydroxyvitamin D2 can be converted to a variety of different precursor ions, only some of which may be useful in a mass spectrometric method.” Prelim. Resp. 22 (citing Ex. 1001, 10:60–11:1, 11:46–12:30). The ’867 patent confirms the importance of the specific precursor in the preferred embodiments. As described in the ’867 patent, “[g]enerally, the fragment ions that represent dehydrations or deaminations of the precursor ion are not specific fragment ions for a particular analyte. . . . Accordingly, in preferred embodiments of the invention, MS/MS is performed such that at least one fragment ion of a vitamin D metabolite is detected that does not represent only a loss of one or more water molecules and/or a loss of one or more ammonia molecules from the precursor ion.” Ex. 1001, 10:58–60, 11:2–6. It is not in dispute that none of the cited references include the claimed protonated and dehydrated precursor ion of 25-hydroxyvitamin D2 with a m/z ratio of 395.30±0.5. Petitioner asserts that “the selection of precursor and fragment ions was often simply determined by the selected equipment, the conditions for ionization, and the relative abundance of the ions and the specificity of the ions for the analyte of interest.” Pet. 29. (citing Ex. 1005, 10; Ex. 1002 ¶¶ 59–61). Petitioner, however, does not describe specifically why one of ordinary skill in the art would have selected the specific precursor ion as claimed. See Magnum Oil, 829 F.3d at 1380 (Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.”); NuVasive, 842 F.3d at 1382 (Petitioner must articulate a reason why a person of ordinary skill in the art would have modified the prior art references.); see also Metalcraft, 848 F.3d at 1366 (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden, 805 F.3d at 1073 (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” (internal citations omitted)). Without an explanation as to the reasons for selecting the specific claimed precursor ion, Petitioner appears to rely on nothing more than impermissible hindsight to arrive at the claimed invention. See W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher.”). For at least these reasons, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of success in showing that claim 21 would have been obvious in view of Voyksner, Watson, and Rainbow.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,972,867 - Eis GmbH v. Novoluto GmbHInstitution deniedPTAB · Feb 10, 2020 · IPR2019-01444 · APJ John E Schneider · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–6 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). 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.” Upon considering the Petition and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we deny the Petition and decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in mechanical engineering, biomechanical engineering, or the equivalent, and three or more years of experience in fluid mechanics and pump-based medical devices.” Pet. 4; Ex. 1002 ¶¶ 18–22. Petitioner also contends that “practical experience could qualify one not art], while a higher level of education could offset lesser experience.” Pet. 4; Ex. 1002 ¶¶ 18–22. Patent Owner contends that a person of ordinary skill in the art would have had “a bachelor’s degree or equivalent practical experience in mechanical engineering, biomechanical engineering, biomedical engineering, sexual health or human sexuality, or the equivalent, and three or more years of experience in research, development, or design of devices that interact with the human female body (and specifically the vulva).” Prelim. Resp. 1–2. Patent Owner also contends “[e]xperience in fluid mechanics and pump-based medical devices, though helpful, is not necessary. More practical experience could offset less education and vice versa.” Id. at 2. We have considered the contentions of the parties, and for purposes of this decision, we apply Petitioner’s definition of a person of ordinary skill in the art. Although the invention generally relates to a device for stimulating female erogenous zones, as seen from the discussion below, the design and operation of the device largely relate to issues of mechanical engineering and fluid flow. Thus, we conclude that experience in developing devices that interact with the female body is not needed to define a person of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b); effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Under this standard, we construe 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.” Id. Furthermore, at this stage in the proceeding, we need only construe the claims to the extent necessary to determine whether to institute inter partes review. See 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))). Both the Petitioner and Patent Owner contend that no claim construction is needed at this stage of the proceeding. Pet. 4; Prelim. Resp. 7. As both parties appear to agree as to the meaning of “reference pressure” that is at the heart of the controversy here, we need not expressly construe the claim term here. See Ex. 1002, ¶ 28; Ex. 2001 ¶ 34.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Guan’s bag would result in a negative pressure is based on unsupported assumptions as to how the device of Guan works. For example, Dr. Pisco opines that the rubber mouth described in Guan forms a largely air-tight seal. See Ex. 1002 ¶ 92. Dr. Prisco based this opinion on Guan’s teaching that the rubber mouth comes into contact with the body. Id. As Patent Owner’s declarant, Dr. Jansen, points out, merely bringing the mouth into contact with a body does not teach or imply that an air-tight seal is formed. Ex. 2001 ¶ 109. Other than the reference to the mouth contacting a body, nothing in Guan teaches or suggests an air-tight seal. See Ex. 1004, 3. Similarly, Dr. Prisco opines in detail as to how the device in Guan operates based on a supposition that appears to be guided by the disclosure in the ’851 patent. Ex. 1002 ¶¶ 89–92; see Ex. 2001 ¶¶ 97–108. Guan, however, only describes the different elements present in the disclosed device and provides no explicit discussion as to how those elements operate. opinions that the elements operate in the manner he describes. See Ex. 1002 ¶¶ 89–92. Based on the foregoing, we afford Dr. Prisco’s opinions little weight. Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 (Fed. Cir. 1994). (“An expert opinion is no better than the soundness of the reasons supporting it.”).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,763,851 - Edwards Lifesciences Corp. And Edwards Lifesciences LLC v. Evalve, Inc.Institution deniedPTAB · Jan 16, 2020 · IPR2019-01301 · APJ Susan L C Mitchell · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have the authority and discretion to determine whether to institute an inter partes review. 35. U.S.C. § 314; 37 C.F.R. § 42.4. We may not institute an inter partes review “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 that the Petitioners have not satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Therefore, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We find, for purposes of this decision, that “an actuation mechanism coupled to the fixation elements adapted to move the fixation elements between the closed position and the [first open (claim 1)/inverted (claim 20)] position” requires adaptation to move the fixation elements from the closed to the first open/inverted position and from the first open/inverted position to the closed position, i.e. adapted for back-and-forth movement. As we have discussed above when describing the ’493 Patent, the fixation device is delivered through the catheter in the closed position and then moved by the actuation mechanism to the open position to engage the leaflets of the mitral valve to repair it. See supra I.D. As Patent Owner points out, the Specification of the ’493 Patent specifically contemplates “repositioning and optional removal of a fixation device prior to fixation to ensure optimal placement,” which requires movement from a closed to an open position and optionally an inverted position. Ex. 1001 2:20–23, 12:60–65. For instance, the ’493 Patent states: the fixation device 14 after the proximal elements 16, distal elements 18, or both have been deployed to capture the leaflets LF. Such repositioning or removal may be desired for a variety of reasons, such as to reapproach the valve in an attempt to achieve better valve function, more optimal positioning of the device 14 on the leaflets, better purchase on the leaflets, to detangle the device 14 from surrounding tissue such as chordae, to exchange the device 14 with one having a different design, or to abort the fixation procedure, to name a few. To facilitate repositioning or removal of the fixation device 14 the distal elements 18 are releasable and optionally invertible to a configuration suitable for withdrawal of the device 14 from the valve without tangling or interfering with or damaging the chordae, leaflets or other tissue. Id. at 14:1–16. Accordingly, for purposes of this decision and based on the current record, we conclude that back-and-forth movement is at least required for “an actuation mechanism . . . adapted to move the fixation elements between the closed and inverted position.” This determination is consistent with the District Court’s construction. See Ex. 2058. We find that no other claim terms need to be construed expressly.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner has not shown sufficiently why or how one of ordinary skill in the art would have been motivated to begin with Kuehn’s device as shown in Figures 14A–C to achieve a closed position wherein the engagement surfaces face each other. In explaining how and why one of skill in the art would be motivated to bias the spring-loaded action of this device to force the fixation elements to come together in a closed position such that the engagement surfaces face each other, Dr. Vesely opines that keeping the leaflets of a valve in a more naturally persuasive support from the art that such a goal would have caused one of ordinary skill in the art to make the proposed modification to the device shown in Kuehn’s Figure 14A–C. See Ex. 1002 ¶¶ 100–110.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,057,493 - Google LLC v. Ipa Technologies Inc.Institution deniedPTAB · Oct 16, 2019 · IPR2019-00736 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the asserted combinations taught the claimed conversational protocol.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in 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.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’128 patent is unpatentable. Accordingly, we do not institute an inter partes review.” slip op. at 2
- BurdenDenied
“event types” as recited in claim 1. See Pet. 12–13. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. Petitioner’s evidence and argument fails to persuasively and adequately explain how the speech acts or performatives as described in Nodine are the events recited in the challenged claims. Although both Finin and Bayardo define and disclose performatives (Ex. 1016, 297; Ex. 1017, 197), Petitioner does not discuss these disclosures or explain sufficiently how the speech acts/performatives in Nodine, Finin, and Bayardo alone or combination teach the “layer of conversational protocol defined by event types and parameter lists associated with one or more events, and wherein the parameter lists further refine the one or more events” limitation of claim 22 and 45. Petitioner asserts that “Nodine in combination with Steiner and Finin discloses or suggests this limitation” of claim 45 (Pet. 49), but Petitioner does not identify adequately any reliance on Steiner for this limitation (id. at 28–33, 49). slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in the art at the time of the invention of the ’128 patent would have had at least a Bachelor’s degree in computer science, electrical engineering, or a similar discipline, and one to two years of work experience in networked computer systems or a related area. Ex. 1002 ¶ 14; Pet. 4. At this stage of the proceeding, Patent Owner does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the art. Prelim. Resp. 6.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 12–13. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,036,128 - Google LLC v. Ipa Technologies Inc.Institution deniedPTAB · Oct 16, 2019 · IPR2019-00735 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted combinations rendered claim 1 and its dependent claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“35 U.S.C. § 325(d) because (1) it relies on similar art that applicant overcame during prosecution of the parent ’115 patent, and (2) it is duplicative of the co-pending petition in IPR2019-00733. Prelim. Resp. 48– 61. Because, for reasons discussed below, we deny the Petition on other grounds, we need not determine whether it also would be appropriate to deny the Petition pursuant to our discretion under § 325(d).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 14. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Pet. 25. Petitioner’s arguments offer conclusory statements that equate Nodine’s speech act/performative types to “event types” recited in the challenged claims, and the parameters associated with Nodine’s speech act/performatives with “one or more of the events” recited in the challenged claims. See id. Petitioner argues that Nodine thus discloses the conversational protocols defined by events. Id.; see Ex. 1002 ¶¶ 106–107. In sum, Petitioner maps Nodine’s “speech acts” or “performatives” to the “events” recited in claim 1. We note that Petitioner does not offer a construction for “event” or “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,036,128
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.