- Viasat, Inc. v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00795 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place denial of institution on claims 1–9, 13–21, 29–50, 67–82, 104, 105, 107, and 110 because it had not shown motivation to combine Norand with the Eng …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that “[t]he disclosed communication protocols of the Eng Patent could be readily applied to the communications systems disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 20–21.” slip op. at 3
§ 103 obviousnessPatents in suitUS 6,445,777 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00796 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place the denial of institution because the petition did not show that combining Norand with the Eng references would have been obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that “[t]he disclosed communication protocols of the Eng Patent could be readily applied to the communications systems disclosed by Norand.” Pet. 26–27. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 21–22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“that a benefit of TCP/IP networks is that ‘there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Req. Reh’g. 14 (citing Ex. 1004, 3:52–54). Petitioner does not identify where in the Petition it made such an argument. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . where each matter was previously addressed in a motion”). Petitioner did not explain in the Petition how the cited portion of the Eng patent describes a “benefit” of “TCP/IP networks.” Indeed, this is a new argument improperly raised for the first time in the Request. See id. When read with its surrounding context, the Eng patent discloses that in “TCP/IP networks, there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Ex. 1004, 3:52–54. Petitioner did not explain sufficiently how this teaches any “benefits” of using TCP/IP, or how this demonstrates motivation to combine the Eng references with Norand.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,445,777 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00629 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place the denial of institution because ViaSat did not show that combining Norand with the Eng references would have been obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, and opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Petition, Petitioner’s arguments that Norand and the Eng references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 22–23.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 22–23.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner also contends that the Eng patent “clearly teaches that a benefit of TCP/IP networks is that ‘there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Req. Reh’g. 14 (citing Ex. 1004, 3:52–54). Petitioner does not identify where in the Petition it made such an argument. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . where each matter was previously addressed in a motion”). Indeed, this is a new argument improperly raised for the first time in the Request. See id. Petitioner did not explain in the Petition how the cited portion of the Eng patent describes a “benefit” of TCP/IP newtowrks.” When read with its surrounding context, the Eng patent discloses that in “TCP/IP networks, there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Ex. 1004, 3:52–54. Petitioner did not explain sufficiently how this teaches any “benefits” of using TCP/IP, or how this demonstrates motivation to combine the Eng references with Norand.” slip op. at 6
§ 103 obviousnessPatents in suitUS 5,960,074 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00628 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving the denial of institution on claims 1–13, 28–37, 41–61, 91–107, 123, 126, 128–157, 160–167, 169, and 171 unchanged because the petition did not show motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 24. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 21–22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“explain[ed] sufficiently why a person of skill in the art would have used the TCP/IP protocols with the network architecture taught in Norand” overlooks “the prior art and evidence of record which provides ample explanation as to ‘why’ a POSITA would find incorporating TCP/IP into Norand desirable.” Req. Reh’g. 14. With respect to this assertion, Petitioner does not identify the place in the Petition where Petitioner previously addressed such matters pursuant to 37 C.F.R. § 42.71(d), other than the matter we addressed above, namely that Norand and Eng share a common goal of linking together mobile users. Id. at 14–15. slip op. at 6
§ 103 obviousnessPatents in suitUS 5,960,074 - Amerigen Pharmaceuticals Limited v. Shire LLCRehearing deniedPTAB · Dec 28, 2016 · IPR2015-02009 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Amerigen’s rehearing request, leaving claims 1–3, 5, 8, 9, and 11 uninstituted because Mehta did not disclose the claimed release limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Amerigen’s arguments with these principles in mind.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“These arguments are not persuasive. First, Petitioner cites no authority for the proposition that a generic disclosure, such as that discussed above, is an express disclosure of every possible permutation of that generic disclosure. Second, even if we were to accept, for the sake of argument, that Mehta’s combined disclosures constitute an express disclosure of a composition capable of delayed release of “essentially all [of the drug] . . . within about 60 minutes,” non-instituted claims 1–3, 5, 8, 9, and 11 further require that the delayed release is enteric (i.e., the composition releases the second dose of the drug in the intestines, not the stomach). As we noted in the Decision, however, Mehta does not use the word “enteric,” nor does Mehta discuss delivery of the delayed dose to the intestines. Dec. 28. Nevertheless, we considered the possibility that Mehta might inherently disclose a composition that releases into the intestine not less than 80% of the second dose of the drug within about 60 minutes of the delayed release. Accordingly, we turned to Mehta’s Examples 1–5, but determined that not one of the exemplified delayed release compositions achieved a release of “essentially all” of the drug from a delayed release coating within about 60 minutes—regardless of whether the delay was long enough to be considered enteric.3 Id. at 24. As we noted in the Decision,” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“This argument is not persuasive. We considered, for example, Dr. Elder’s testimony that one of ordinary skill in the art would expect “that the number of variables and number of experimental runs to optimize the coating for the amphetamine would present no unusual problems of technology or expense” because one “can use statistical experimental design to optimize a formulation within the 21 trials that Mehta discloses to design one for amphetamine salts” (Ex. 1005 ¶ 471), as well as Dr. Elder’s testimony that one would expect “that routine optimization of the coating using the parameters identified by Mehta would provide enough guidance for controlling the release timing” (id. ¶ 512). Nevertheless, we found the actual results reported by Mehta to be more compelling. As we stated in the Decision: [N]one of Mehta’s delayed release formulations that could be considered to be enteric by virtue of their delay periods (i.e., those with delays of 4 or 5 hours) had release rates of “essentially all” of the drug anywhere near the required time period. Even if Mehta could be read to suggest that a delay of 4 or 5 hours followed by a release of essentially all of the delayed dose within 60 minutes would be desirable, we are not persuaded that Mehta’s disclosure that “the amount of drug released is influenced by: amount of coating, ratio of the two 4 Amerigen supported its challenges with the Declaration of Edmund J. Elder, Jr., Ph.D., R.Ph., executed September 30, 2015 (“Elder Declaration”) (Ex. 1005). polymers, amount of talc, and curing time” is adequate guidance for one of ordinary skill in the art to achieve such a dosage form. In general, Mehta demonstrates that longer delays are accompanied by longer release times, with formulations that could be considered to provide enteric release (i.e., a release after a 4 or 5 hour [delay]) having 85% release times of 8 or more hours. Dec. 33–34 (citing Ex. 1003, Table 1).” slip op. at 8
§ 102 anticipation§ 103 obviousness - PTAB · Dec 28, 2016 · IPR2015-01037 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing in both proceedings because Petitioner did not show that Su was publicly accessible by the critical date or that the Board overlooked or misapprehended a petition argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner fails to recognize that our Decision was based on Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The sole evidence cited in the Petition is a print-out of a record created in 2008 by Theses Canada. Ex. 1013 (“TH-Su”). As we noted in our Decision Denying Institution, TH-Su includes an active PDF link to Su, identifies Su as resident on two microfiches, indicates the publisher is the Ottawa: National Library of Canada [1999], and includes an abstract. Dec. Denying Inst. 7. TH-Su also includes an AMICUS No. (20672380)1, an international standard book number (ISBN 0612312569), a Canadian Number (992099080) and the following information “Copies: NL Stacks – Mic. TJ- 31256.” Id. at 7-8. However, TH-Su is a document created and modified on July 18, 2008, not in 1999. Id. at 7–8. Petitioner failed to tie 3 We agree with Petitioner’s assertion that it did not concede any of the argument set forth in Patent Owner’s Preliminary Response. Req. Reh’g. 6, fn 4. However, our inquiry during the conference of August 4, 2016 concerned facts and evidence. any of these numerical designations in TH-Su to public accessibility prior to 2008. Thus, Petitioner failed to meet its burden to demonstrate that Su was publically accessible in 1999.” slip op. at 4
§ 102 anticipationPatents in suitUS 8,122,141 - PTAB · Dec 28, 2016 · IPR2015-01033 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing of the institution denials because Petitioner did not show that Su was publicly accessible before the patents’ critical dates.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition or reply. Id. For the reasons discussed below, the Request for Rehearing is DENIED.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
§ 102 anticipationPatents in suitUS 8,327,011 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Dec 23, 2016 · IPR2016-01237 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–44 would have been obvious over Baker, Xu, and Hatke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of U.S. Patent No. 7,212,850 B2 (“the ’850 patent”). Paper 2 (“Pet.”). The Petition challenges the patentability of claims 1–44 of the ’850 patent on the grounds of obviousness under 35 U.S.C. § 103. Braemar Manufacturing, LLC (Patent Owner) filed a Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the 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.” After considering the information presented in the Petition, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the claims challenged in the Petition. Accordingly, we do not authorize an inter partes review to be instituted as to any challenged claim of the ’850 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Further, a patent claim composed of several elements is not proved obvious merely by demonstrating that each of its elements was known, independently, in the prior art. Id. at 418. Additionally, we determine Petitioner—by, inter alia, ambiguously referring to disclosures in multiple references individually and in combination—has failed to explain adequately how it is proposing to combine or modify the references’ teachings to arrive at the claimed subject matter of the forty-four challenged claims. See, e.g., Pet. 29 (“Baker or Xu alone, as well as in combination, disclose the broader claim feature and the narrower feature in claims 35 and 41.”) For these reasons, we determine Petitioner has not demonstrated there is a reasonable likelihood of establishing the unpatentability of the challenged claims.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’850 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 43–44. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’850 patent hints at hindsight. See Prelim. Resp. 31 (“Aside from a desire to recreate Figure 2 of the ’850 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’850 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’850 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’850 patent. Id. at 45–46. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 46; see also id. at 49 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’850 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’850 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 43–44. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’850 patent hints at hindsight. See Prelim. Resp. 31 (“Aside from a desire to recreate Figure 2 of the ’850 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’850 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’850 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’850 patent. Id. at 45–46. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 46; see also id. at 49 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’850 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 13
§ 103 obviousnesscites KSRPatents in suitUS 7,212,850 - Infobionic, Inc. v. Braemar Manufacturing, LLCInstitution deniedPTAB · Dec 23, 2016 · IPR2016-01236 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims 1–28 because Petitioner did not show a reasonable likelihood that the claims were obvious over Baker, Xu, and Hatke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation would have been obvious in view of the combination of Baker, Xu, and Hatke.”); id. at 26 (“Baker or Xu alone, as well as in combination, disclose the first claim limitation of independent claim 1 and 12.”). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Further, a patent claim composed of several elements is not proved obvious merely by demonstrating that each of its elements was known, independently, in the prior art. Id. at 418. Petitioner’s discussion of the “subset” feature is an example of a flawed analysis focused on individual elements rather than an ordered whole. Petitioner’s rationale for the combining of Baker and Xu is that Xu “provid[es] an efficient and accurate AF detection algorithm” (Pet. 24) and “because [Xu’s algorithm] has the desirable characteristics of rapidly and accurately detecting AF events with robust anti-noise performance and requires a short amount of computing time” (id. at 31). Although it is not clear as to how Petitioner proposes to modify Baker by Xu, it appears that Petitioner may be proposing to substitute that efficient, rapid, and accurate algorithm into Baker’s system. Xu’s algorithm is efficient and accurate when it is “ready to use.” See Pet. 21. According to Petitioner (see id.), human assessment ceases before the algorithm becomes “ready to use” because human assessment is used only to “train up” the algorithm. Accordingly, the use of Xu’s system, after having been trained up and ready to use, would not involve human assessment of any subset of events identified by the system. Thus, Petitioner’s identification of a “subset” as being that data apparently the subject of one hundred percent human review prior to being “ready to use” (Pet. 40) is inconsistent with Petitioner’s reason why one would have combined Baker and Xu. Further, Petitioner’s style of addressing claim terms in a vacuum leaves us unable to determine whether Petitioner has demonstrated a likelihood of proving the claimed subject matter as a whole would have been obvious. It is not enough for Petitioner to assert that one or more references disclose a human assessment of a subset of data. See Prelim. Resp. 40. In claim 1, for example, the “subset” is of the “identified AF events,” which ties the subset to the limitation directed to identifying AF events and to the “pictographically presenting” limitation, which is based on the human assessment of the subset of the identified AF events. Petitioner does not adequately explain why or how the three relied-upon references would have been combined or modified such that all of the limitations of the claimed subject matter would have been satisfied at the same time in the same related manner as in the claims. Accordingly, Petitioner does not persuasively articulate an adequate reason why and how the teachings of the three reliedupon references would have rendered obvious the claimed subject matter as a whole.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“display of Hatke’s Figure 6 is “strikingly similar” to that of Figures 2 and 4 of the ’996 patent, with Hatke’s “detected events on top of the trend data instead of below it.” Pet. 41–42. We determine that Petitioner’s argument is insufficient because it primarily relies on the purported similarity in appearance of the figures and fails to articulate sufficiently how the prior art suggests the claim limitation. We also agree with Patent Owner that this use of the ’996 patent hints at hindsight. See Prelim. Resp. 29 (“Aside from a desire to recreate Figure 2 of the ’996 patent, Petitioner fails to explain why the skilled person would have wanted to do this.”). Additionally, we disagree with Petitioner’s assertion that Hatke’s figure is “strikingly similar” to that of the ’996 patent. At most, Hatke’s oxyhemoglobin saturation data has an I-beam shape like that of the ’996 patent’s heart rate. However, Hatke’s histogram showing the quantity of apnea events does not have the appearance of AF burden. Rather, Petitioner is forced to look to a separate figure in Hatke, Figure 7, to find what Petitioner calls “blocks” similar to those of the ’996 patent. Id. at 43–44. Petitioner then proposes modifying Hatke’s Figure 6 by “dumbing [it] down,” apparently proposing to convert the quantities of apnea events to blocks depicting apnea event duration, reasoning that drawing a line for time span was a well-known and intuitive technique to depict time span. Id. at 44; see also id. at 46 (Petitioner impliedly arguing that displaying AF burden merely is drawing AF event time spans as a line). We do not find this persuasive because the fact that one could depict duration as a line does not explain adequately why one would modify Figure 6, even in the context of apnea events. Further, even were we to accept that it first would have been obvious to modify a display related to sleep apnea to arrive at Petitioner’s proposed modified Figure 6, Petitioner fails to explain persuasively why one would have utilized that proposed modified display—which would show oxyhemoglobin saturation and respiratory effort—as the format to display heart rate and AF burden. Mere similarity of appearance—particularly assuming, as we must, that one of ordinary skill lacks the knowledge of the figures of the ’996 patent—does not point towards an eventual conclusion of obviousness of the claimed subject matter.” slip op. at 9
§ 103 obviousnesscites KSRPatents in suitUS 7,907,996 - Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution deniedPTAB · Dec 22, 2016 · IPR2016-01451 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution: it exercised discretion as to claims 43–46, 49, 50, 62–69, and 72, and found no reasonable likelihood of obviousness for claims 55–58.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“determining whether to institute or order a proceeding under this chapter . . . 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.” In light of § 325(d), we consider whether the reexamination contains the same or substantially the same art or arguments as presented in the Petition. Patent Owner argues that we should decline to institute inter partes review under 35 U.S.C. § 325(d) because the Petition raises the same or substantially the same prior art or arguments that were presented previously to the Office. Prelim. Resp. 19–26. In particular, Patent Owner contends that each of the claims in the reexamination was rejected based on Eddison, under either 35 U.S.C. § 102(b) and/or in combination with Jewkes under § 103(a), and that Petitioner relies upon Jewkes again under § 102(b) in its Petition. Id. at 23–26. Petitioner makes no attempt to explain why the references that form the bases for Petitioner’s challenge here are not the same or substantially similar prior art to that presented during the reexamination or why the arguments are not the same or substantially similar to those presented previously to the Office. Eddison and Jewkes were relied upon in the reexamination. See id. at 141–60 (Office Action (mailed Aug. 25, 2014)). Additionally, Tandberg was presented to the Office in conjunction with the original prosecution of the ’817 patent. See Ex. 2003; Prelim. Resp. 28.” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“Patent Owner makes a valid point. Section 1.530(k) of Title 37 of the Code of Federal Regulations provides: “Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.” This places us in a difficult position. If Patent Owner ultimately succeeds in the appeal of the reexamination, a certificate will issue and the amendments to claim 43 and its dependents will be “effective.” See id.; see Ex. 1007, 166 (showing the amendments to claim 43). Yet Petitioner provides no analysis of the amended limitations of claim 43. See, e.g., Pet. 16. Alternatively, if Patent Owner is unsuccessful in its appeal to the Federal Circuit, claim 43 and its dependents, as challenged in the reexamination, will be declared unpatentable. In either circumstance, any review we undertake of the unamended version of claim 43, and the claims depending therefrom, will be for naught. Accordingly, in light of the above circumstances, reviewing these claims on the record presented would waste judicial resources as well as the resources of the parties.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,732,817
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.