• Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Aortic Innovations LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01151 · APJ Timothy G Majors · IPR · Institution

  The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood that any challenged, undisclaimed claim was unpatentable.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For reasons discussed below, we do not institute review of claims 2, 9, 17, and 18 of the ’834 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that the person of ordinary skill in the art (“POSA”) in November 2012 “would have been an interventional cardiologist with a working knowledge of heart valve designs and endovascular prostheses. This [POSA] would, where necessary, work with a medical device engineer to experiment with or manufacture a prosthetic heart valve.” Pet. 21 (citing Ex. 1003 ¶ 49). Patent Owner does not expressly contest Petitioner’s proposed definition. For this Decision, we apply Petitioner’s proposed POSA level, which appears to be consistent with the level of skill shown in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). This POSA level is also consistent with the level the Board applied in earlier decisions involving the same parties and related patents. See, e.g., Ex. 2124, 11; Ex. 1120, 11–12.” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “during prosecution. Pet. 18, 99. According to Petitioner, Spenser II never describes its compressible material as including “tightly knitted fibers” and a POSA would, instead, have understood Spenser II’s compressible material as comprising “loose, porous materials.” Pet. 18, 99. We agree with Petitioner that the phrases “tightly knitted” and “tightly knitted fibers” do not appear in Spenser II. At the same time, neither does Spenser II describe its compressible material as being “loose” and “porous.” Notably, in prior proceedings before the Board, Petitioner’s declarant Dr. Buller testified that Spenser II’s compressible material “includes a plurality of PET fibers on the inward-facing surface of the compressible material” (i.e., the “base layer” and alleged “second plurality” of fibers here; Paper 9, 5), that is “sufficiently dense to prevent blood from leaking through the cloth/fabric.” Ex. 2128 ¶ 222; see also Ex. 2122, 20:2–22:18 (testifying that “nonporous” as used in the Specification means “that fluid would not pass through it” and such fluid includes “all components of blood”). We find that Dr. Buller’s description of Spenser II as having a dense, blood impermeable base layer is, on balance, more consistent with applicant’s characterization of Spenser II as having an arrangement of “tightly-knitted fibers”—even if some imagined or microscopic spaces between fibers might still exist in a base layer. Ex. 2128 ¶ 222; see also Ex. 2002 (Brecker testimony) ¶¶ 42–45 (testifying, inter alia, that the description of a “tight fitted outer seal is . . . consistent with Spenser II’s Figure 22” and “knitted” is consistent with Buller’s testimony describing Spenser II’s compressible material as “velour-like woven or knitted” PET (citing Ex. 1003 ¶ 162; Ex. 2134 ¶ 56). We are, thus, unpersuaded on this record that applicant mischaracterized Spenser II.” slip op. at 38

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

    “Altogether, the parties’ alleged “plain meaning” yet otherwise undefined interpretation of the “spacing” limitations leaves the Board with insufficient clarity about what the claimed “spacing” means in the affirmative. Paper 9, 3 (arguing “plain meaning”); Paper 11, 3 (arguing applicant’s arguments are in “full harmony with the plain meaning”). The intrinsic evidence is minimally helpful: the Specification does not use the term “spacing” in relation to the positioning of adjacent fibers; the drawings might be helpful but neither party proposes a specific construction that is reliant on them.15 The prosecution history provides clues, but portions of the prosecution record are arguably confounding. The applicant distinguished 15 For example, Dr. Brecker, in support of Patent Owner’s argument, identifies several of the patent drawings and testifies that, “as is particularly clear in Figure 13 (but also present elsewhere), there are gaps and spaces between the fibers that extend to the frame” and then proceeds to testify that prior art, like Spenser II’s compressible material, “bears no resemblance” to the “exemplary” spacings identified in prosecution. See, e.g., Ex. 2002 ¶¶ 42–43. Dr. Brecker’s articulation of a “spacing” does not seem to add anything meaningful beyond the language of the claim as written. And, simply comparing the patent drawings to the prior art drawings presumes a sort of “know-it when you see it” interpretation—it is not an affirmative construction for a “spacing” as claimed. the claimed “spacings” from “tightly knitted fibers.” Ex. 1002, 1001. At what point, however, does a cloth of “tightly knitted fibers” qualify as more “loosely defined” and come within the scope of the claimed “spacing?”16 Id. The applicant also described the “spacing” in semi-functional terms based on “advantages” provided by the claim feature. See, e.g., id. (asserting, e.g., that the spacing permits “expansion and contraction” with “lesser rigidity”); see also id. at 1133, 1140 (asserting, e.g., “reduce[d] restrictions” and avoidance of “restrained valve foreshortening” with the then-claimed “openings”). It is not, however, evident where the Specification supports such “advantages”—no citations were given in prosecution. And, in prosecution of related applications, applicant argued, for example, that “[w]hile all fibers have some degree of being spaced-apart, the construction from Applicant’s claimed invention clearly requires some level more spacing.” Ex. 1149, 13–14 (assertion differences over “Dehdashtian” (alias to Spenser II)) (emphasis added). On this record, what would suffice as “some level more spacing” is unclear. Id.” slip op. at 39

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,337,834
• Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution denied
  PTAB · Aug 20, 2020 · IPR2020-00605 · APJ Michael L Woods · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable under any of its three obviousness grounds.

  RulingsInstitution decision

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

    “B. Principles of Law “In an . . . [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner’s challenges are based on obviousness. Pet. 17. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter 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). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed

    “the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (“Hulu”).5 5 The Decision to Institute in IPR2019-00919, in which many of the references cited in the present case also were at issue, was entered before the Board’s precedential decision in Hulu. Compare IPR2019-00919, Paper 9 (dated Oct. 8, 2019), with Hulu, Paper 29 (dated Dec. 20, 2019). Here, we assess the sufficiency of Petitioner’s evidence as to whether APA, StoGuard- 2001, and StoGuard-2003 qualify as printed publications in view of the guidance provided in Hulu. We note that the Petition was filed on February 19, 2020, such that Petitioner also had the benefit of the guidance provided in Hulu when filing its Petition.” slip op. at 14

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

    “Petitioner submits that the ordinary and customary meaning applies to the claimed terms and does not propose construction of any particular claim term. See Pet. 24. Patent Owner, on the other hand, proposes that the term “the first/second structural/OSB panel comprises a bulk water resistant and water vapor permeable barrier” requires construction. Prelim. Resp. 14. For purposes of this decision, we discern no need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Skill levelSkill level board ownDecided for patent owner

    “The parties propose to adopt the same definition that we applied in co-pending IPR2019-00919. See Pet. 24; see also Prelim. Resp. 13. Based on our review of the ’140 patent, the types of problems and solutions described in the ’140 patent and applied prior art, for purposes of this decision, we agree with the parties and determine that a person having ordinary skill in the art would have had degree in civil engineering or building, material or wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein. See IPR2019-00919, Paper 9, 14.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,702,140
• Louisiana-Pacific Corporation v. Huber Engineered Woods LLCInstitution denied
  PTAB · Aug 20, 2020 · IPR2020-00604 · APJ Michael L Woods · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any of claims 1–20 was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that the record does not demonstrate a reasonable likelihood that Petitioner will prevail with respect to any claim challenged in the Petition. We, therefore, do not institute inter partes review of the ’159 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that, no inter partes review is instituted.” slip op. at 38

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “1 Because we deny institution upon consideration of the merits of Petitioner’s challenges (see infra Part II), Patent Owner’s argument that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under the factors set forth in the recent precedential Order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (see Prelim. Resp. 17–18) is moot and we do not address it in this Decision.” slip op. at 2

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

    “For purposes of this decision, we discern no need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Skill levelSkill level board ownDecided for petitioner

    “The parties propose to adopt the same definition that we applied in co-pending IPR2019-00919. See Pet. 24–25; see also Prelim. Resp. 13. Based on our review of the ’159 patent, the types of problems and solutions described in the ’159 patent and applied prior art, for purposes of this decision, we agree with the parties and determine that a person having ordinary skill in the art would have had degree in civil engineering or building, material or wood science, or other degree, if such other degree required coursework or experience in the pertinent technology and two years of industry experience or equivalent therein. See IPR2019-00919, Paper 9, 14.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,689,159
• Red Hat, Inc. / Dell Inc. et al. v. Electronics & Telecommunications Research InstituteInstitution denied
  PTAB · Jul 10, 2019 · IPR2019-00467 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims 1–14 because the petition did not show a reasonable likelihood of unpatentability on any asserted obviousness ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that 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.” 35 U.S.C. § 314(a). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–14. Accordingly, the Petition is denied, and no inter partes review is” slip op. at 2

  • Parallel petitionsNot reached

    “35 U.S.C. § 314(a) to not institute review in this case, because Petitioner has filed, simultaneously, two petitions for inter partes review of the same claims of the ’436 patent. Prelim. Resp. 33–35. According to Patent Owner, “[m]ultiple simultaneous petitions can pose more harassment risks than ones spread out over time as they multiply the patent owner’s work and expense in the compressed time frames of IPR proceedings.” Id. at 34. Patent Owner argues that multiple simultaneously filings amount to paying more to argue more, which is contrary to “the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete [review] proceedings.” Id. (citing 35 U.S.C. § 316(b)). We do not reach the issue of discretionary denial of the Petition, because, as discussed above, Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any claim.” slip op. at 39

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Level of Ordinary Skill in the Art Petitioner asserts that the level of ordinary skill in the art corresponds to “at least an undergraduate degree or equivalent academic or professional training in computer science or computer engineering, or a related field, and two years of industry experience in the field of data storage systems.” Pet. 7 (citing Ex. 1003 ¶ 11). Patent Owner has not offered an articulation of the level of ordinary skill in the art. We adopt the level of ordinary skill as articulated by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. Degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. C.” slip op. at 11

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

    “Petitioner proposes a construction for the claims terms “disk partition” and “extent.” Pet. 9–11. Patent Owner does not disagree with Petitioner’s proposed constructions of “disk partition” and “extent.” It is not necessary in this Decision, however, to construe the term “extent.” Petitioner proposes that “disk partition” means “one of a plurality of disks or portions of a disk that form a logical volume.” Pet. 9. We have reviewed the specification and the prosecution history of record, and have no reason to disagree with Petitioner’s construction of “disk partition,” with the understanding that “form a logical volume” refers to actual storage space allocated exclusively to a logical volume. The specification of the ’436 patent does not indicate any overlap in the disk partitions of separate logical volumes. Petitioner also has not explained how such an overlap could be permitted without creating usage conflicts between logical volumes that would render the data unreliable. Petitioner’s articulation plus our additional clarification is consistent with the specification, particularly the illustration shown in Figure 2 reproduced above. Each of the first quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 1. Each of the second quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 2. Each of the third quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 3. Each of the fourth quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 4. Each of the whole of disks 5, 6, 7, and 8 is a disk partition forming logical volume 4. D.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 6,718,436
• Wilson Electronics, LLC v. Cellphone-Mate, Inc.Institution denied
  PTAB · Apr 18, 2019 · IPR2018-01774 · APJ Neil T Powell · IPR · Institution

  The Board denied institution on all challenges because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsInstitution decision

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

    “On the whole, Petitioner’s arguments and evidence demonstrate no more than the possibility that a person of ordinary skill in the art could have modified Layne, without providing sufficient reasoning or evidence as to why a person of ordinary skill in the art would have modified Layne to meet the claimed invention. Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). Consequently, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claim 1 would have been obvious over Layne, Sahota, and “alternatively” McKay. See Metalcraft, 848 F.3d at 1366 (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Id. at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” (quoting KSR, 550 U.S. at 420–21)). Petitioner’s arguments and evidence regarding independent claim 19 suffer from the same problems. See Pet. 38. And Petitioner’s treatment of dependent claims 2–4, 6, 8, 20, and 24 does not cure the deficiencies in the challenges of claims 1 and 19. See Pet. 29–36, 42–44.” slip op. at 19

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

    “in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent. 37 C.F.R. § 42.100(b) (2016).8 Consistent with that standard, we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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)).” slip op. at 8

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

    “paths have the same configuration of circuitry. Pet. 24. We find this unavailing. Patent Owner persuades us that Layne discloses separate paths for its two downlink channels, and that the circuits for the uplink paths have significantly different configurations from the circuit for the uplink paths. Prelim. Resp. 16–18. Thus, not all uplink and downlink paths have the same configuration of circuitry. Without addressing the different circuit configurations of Layne’s uplink and downlink paths, Petitioner and Dr. Ralston cite McKay as disclosing an example with uplink and downlink paths having similar or the same configuration. Pet. 24 (citing Ex. 1007 ¶ 110); Ex. 1002 ¶ 50 (citing Ex. 1007 ¶ 110). In view of Layne, Dr. Ralston’s testimony and McKay demonstrate, at most, that the circuit configurations of uplink and downlink paths could be the same. Demonstrating that uplink and downlink paths could be the same does not demonstrate why a person of ordinary skill in the art would have modified Layne. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[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”). Petitioner’s citation of the ’190 patent as evidence of obviousness is” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “Contrary to Petitioner’s assertion, it is not clear to us that the cited disclosure teaches identity between the circuitry of uplink and downlink paths. Additionally, assuming the cited disclosure does demonstrate some similarity between amplifying uplink and downlink channels, Petitioner again fails to provide sufficient persuasive evidence or reasoning as to why a person of ordinary skill in the art would have modified Layne. Moreover, we agree with Patent Owner that Petitioner’s reliance on the cited portion of the ’190 patent is impermissible hindsight. See Prelim. Resp. 20–21. Pet. 30. “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Thus, we find that Petitioner’s allegation of what is allegedly known now (after seeing the disclosure of the ’190 patent) does not support an assertion of unpatentability under 35 U.S.C. § 103, which precludes patentability “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention” (emphasis added).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,402,190
• Securus Technologies, Inc. v. Global Tel*link CorporationInstitution denied
  PTAB · Oct 11, 2017 · IPR2017-01177 · APJ Kevin F Turner · IPR · Institution

  Instituted review of claims 1–20: claims 1–6 and 8–15 on obviousness over Otto, and claims 7 and 16–20 on obviousness over Otto, Gainsboro, and San Martin.

  RulingsInstitution decision

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

    “III. CONCLUSION For the foregoing reasons, we conclude that there is a reasonable likelihood that Petitioner would prevail in showing that claims 1–20 of the ’250 Patent are unpatentable. The Board has not made a final determination with respect to the patentability of these claims. The Board’s final determination will be based on the record as developed fully during trial.” slip op. at 25

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

    “As quoted by Patent Owner, 35 U.S.C. § 325(d) addresses whether “the same or substantially the same prior art or arguments previously were presented to the Office.” To evaluate this criterion, we examine what arguments and art were presented to and considered by the Examiner during prosecution. Although Otto was considered by the Examiner (Ex. 1004, 243 indicates Otto was included in an Information Disclosure Statement by the Applicant), the Examiner did not rely on Otto in any rejection of the issued claims in view of Otto. We are further persuaded that the Examiner has not been shown to have considered Otto in the instant context, i.e., with claims 10 being argued as being obvious over Otto and with declaration testimony opining that the claims would have been obvious over Otto (Ex. 1002). Patent Owner also faults Petitioner for not distinguishing Otto from San Martin (Prelim. Resp. 7), but it is not necessarily incumbent on a petitioner to distinguish the disclosures of newly applied and previously applied prior art references. Patent Owner points out similarities in the disclosures of Otto and San Martin (id. at 6–7), but does not demonstrate what similar portions of Otto and San Martin would have been considered in finding certain claims allowable. See Ex. 1004, 219. Such a consideration is important because Patent Owner incorporated the allowable subject matter into the independent claims to gain allowance. See Ex. 1004, 290. At this stage of the proceedings, we are persuaded that that there is a reasonable likelihood that Petitioner would prevail in showing the subject matter of the independent claims are taught or suggested by Otto, and as discussed below, we are not persuaded that the disclosures of Otto and San Martin are necessarily cumulative.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “With respect to the level of ordinary skill in the art, Petitioner asserts that such a person “would have held at least a bachelor’s degree in electrical engineering, computer engineering, or a similar field, and had at least two years of experience (or the academic equivalent) working with speaker-dependent voice recognition in the context of telecommunications.” Pet. 7 (citing Ex. 1002 ¶¶ 38–41). Patent Owner does not offer an alternate characterization at this time. As such, we adopt Petitioner’s statement of the level of ordinary skill in the art for purposes of this decision.” slip op. at 7

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

    “Hence, we determine that “match” would have been understood as determining whether two data items are identical or finding a data item that is identical to a key. See Ex. 3001. Furthermore, we determine that “substantially” would have been understood as to a great or significant extent, or for the most part or essentially. See Ex. 3002. Therefore, we determine that the broadest reasonable construction, consistent with and in 7 the context of the specification, of “substantially matches” is “determining whether two data items are for the most part or essentially identical.” See also Verve v. Crane Cams, 311 F.3d 1116, 1120 (Fed. Cir. 2002) (“Expressions such as “substantially” are used in patent documents when warranted by the nature of the invention, in order to accommodate the minor variations that may be appropriate to secure the invention.”)); see, e.g., Ecolab Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001) (explaining that “like the term ‘about,’ the term ‘substantially’ is a descriptive term commonly used in patent claims to avoid a strict numerical boundary to the specified parameter”) (citation omitted). Although Petitioner does not proffer an explicit construction for the claim term “substantially matches,” Petitioner does argue that the prior art discloses “both exact matches and matches that deviate from exact matches by predetermined amounts.” Pet. 29 (citing Ex. 1002 ¶ 74). Therefore, we are persuaded that Petitioner is implicitly applying a claim construction of “substantially matches” that comports with the broadest reasonable construction determined herein.” slip op. at 7

  Claim construction§ 103 obviousnessDiscretionary denialcites Nautilus
  Patents in suitUS 9,521,250
• Resmed Limited / Resmed Inc., And Resmed Corp v. Fisher & Paykel Healthcare LimitedInstitution denied
  PTAB · Mar 9, 2017 · IPR2016-01723 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation or obviousness grounds.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute a trial under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may be instituted only if “the information presented in the petition . . . and any 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). We are persuaded there is not a reasonable likelihood that Petitioner would prevail in showing that the challenged claims are unpatentable. Pursuant to 35 U.S.C. § 314, we do not institute an inter partes review as to claims 1–7, 10 and 11 of the ’345 patent1.” slip op. at 2

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Patent Owner’s argument fails. Prior Board decisions have consistently interpreted 35 U.S.C. § 315(a)(1) as not barring inter partes 2 Claims 8 and 9 were disclaimed and have therefore been omitted from this listing. review if the previously filed civil action was dismissed without prejudice, as is the case here. See, e.g., Microsoft Corp. v. Parallel Networks Licensing, LLC, Case IPR2015-00486, slip op. at 6–7 (PTAB Jul. 15, 2015) (Paper 10); Oracle Corp. v. Click-to-Call Techs. LP, Case IPR2013-00312, slip op. at 12–13 (PTAB Oct. 28, 2014) (Paper 52).” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Patent Owner responds that the “Petition should be denied because it fails to provide the required evidence necessary to establish the prior art status of [the MR810] technical manual.” Prelim. Resp. 25. Patent Owner asserts “[w]hether a reference has been established as prior art is not merely an evidentiary matter, but a substantive element of Petitioner’s prima facie case of invalidity.” Id. Patent Owner responds to the proofs that its own manual was published by April 2004, including the issue date appearing in the Manual itself, by challenging them as “unclear”: In attempting to establish the prior art status of the MR810 Manual, i.e., that it was “published in April 2004,” the Petition purports to rely on an “April 2004” “Date Issued” date corresponding to Revision C on page 6 of the MR810 Manual. Pet. at 6; Ex. 1006 at 6. But it is unclear from the document what this means, or to whom the document was actually “issued.” Id. at 27–28. We do not find this argument, coming from the party that produced the Manual and presumably knows when it was published, to be credible. Instead, on this record, we determine that Petitioner’s showing that the MR810 Manual was published in April 2004 is sufficient at this stage. Nor do we agree with Patent Owner’s suggestion that the determination whether the Manual qualifies as prior art is not “evidentiary.” See Fed. R. Evid. 104(b) (“When the relevance of evidence depends on whether a fact exists, proof must be introduced sufficient to support a finding that the fact does exist.”)” slip op. at 8

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

    “We are persuaded by Petitioner’s argument that their construction is correct as to some, but not all challenged claims. Specifically, claim 1 identifies the “heater wire” and “identification elements” as separate elements. “Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention.” Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1253 (Fed. Cir. 2010) (internal quotation marks and alterations omitted). Furthermore, we agree with Patent Owner that the ’345 patent specification “consistently teaches that the heater wire is a separate component connected in series with the identification element.” Prelim. Resp. 34–37. As the Federal Circuit said in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), “[t]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation.” (internal quotation marks omitted). Further, the Court stated: “Even under the broadest reasonable interpretation, the Board’s construction cannot be divorced from the specification and the record evidence.” Id. (internal quotation marks omitted). We conclude, therefore, that the terms “heater wire” and “identification element” in challenged claim 1 and its dependent claims 2 and 4–7 should be construed as requiring separate elements. Claims 10 and 11 present a different situation. These claims depend from claim 8. That claim, directed to a method for identifying a conduit attached to an apparatus, recites the following step: “attaching a conduit comprising a heater wire including an identification element to said apparatus.” (emphasis added). In the context of these claims, and based on the language of the claims themselves, we conclude that “a heater wire including an identification element” could reasonably be construed to encompass a heater wire that is also the identification element.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,186,345
• Microsoft Corporation v. Bradium Technologies LLCInstitution denied
  PTAB · Dec 23, 2015 · IPR2015-01434 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “to institute an inter partes review of claims 1–20 (the “challenged claims”) of U.S. Patent No. 7,908,343 B2 (“the ’343 Patent”). 35 U.S.C. § 311. Bradium Technologies LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that 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.”” slip op. at 2

  • BurdenOther

    “map each claim element to a particular teaching of an asserted reference. In particular, Patent Owner notes that, rather than state the claim language in the Petition, Petitioner provides Exhibit 1013, which breaks the claims into specific phrases and assigns each phrase a designation, e.g., 1.A, 1.B. Prelim. Resp. 32. Patent Owner argues that Petitioner’s approach improperly incorporates the claims by reference and that no relief can be granted unless the arguments in the Petition itself, of which the claims are an essential part, support granting the relief. Id. at 33. We agree that Petitioner’s use of an Exhibit to specify the claim elements and its failure to include the claim language anywhere in the Petition is an improper incorporation by reference. Nevertheless, although the claim language is not repeated in the Petition, the Petition contains a paragraph for most, if not all the claim element designations. Therefore, we do not dismiss the Petition on this basis alone.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “specification, neither “data parcel” nor “update data parcel” is defined explicitly in the ’343 Patent. The ’343 Patent refers to “source image data” being processed to obtain a series of K1-N derivative images of progressively lower image resolution. Ex. 1001, col. 6, ll. 6–6. The ’343 Patent also discloses the source image data corresponding to the series image K0 being subdivided into a regular array such that each resulting “image parcel” of the array has, for example, 64 by 64 pixel resolution, where the “image data” has a color or bit per pixel depth of 16 bits, which represents a “data parcel” size of 8 K bytes. Ex. 1001, col. 6, ll. 6–11. Thus, an image parcel is an element of a source image array that defines a source image and a data parcel is data that corresponds to an image parcel. In view of this disclosure, we construe “data parcel” to mean data that corresponds to an element of a source image array. We agree that no other specific claim construction is required and we accord the claim terms their ordinary meaning as used in the ’343 Patent specification.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artReference not prior artMixed

    “REFERENCES ARGUED AS NOT APPLICABLE PRIOR ART Patent Owner contends that Petitioner has failed to demonstrate that Potmesil (Ex. 1002) and Lindstrom (Ex. 1004) constitute applicable prior art references. Prelim. Resp. 3–12. We addressed the same arguments as those advanced by Patent Owner in this proceeding in our Decision to Institute in related proceeding Microsoft Corp. v. Bradium Technologies LLC, Case IPP2015-01432, slip op. at 10–14 (PTAB Dec. 23, 2015)(Decision to Institute)3 and Microsoft corp. v. Bradium Technologies LLC, Case IPR2015-01435, slip op. at 8–16 (PTAB Dec. XX, 2015)4. We arrive at the same result in this proceeding and find that, although Petitioner has established that Potmesil is applicable as prior art, Petitioner has not established Lindstrom is prior art that may be applied in Petitioner’s challenge.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,908,343
• Dr. Reddy’S Laboratories, Inc. v. Pozen Inc.Institution denied
  PTAB · Oct 9, 2015 · IPR2015-00802 · APJ Susan L C Mitchell · IPR · Institution

  The Board denied institution on claims 1–4, finding no reasonable likelihood of success because Plachetka was not prior art and the obviousness showing was deficient.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). Upon considering the Petition and Preliminary Response, we conclude that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim of the ’285 patent. Therefore, we do not authorize an inter partes review for any claim of the ’285 patent.” slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “For the reasons set forth above, Petitioner fails to convince us that the claims of the ’285 patent are not supported by at least the ’216 application. Therefore, the Plachetka Publication does not qualify as prior art under 35 U.S.C. § 102(b). Consequently, Petitioner has failed to establish a reasonable likelihood that it would prevail in showing that claims 1–4 are unpatentable as anticipated by the Plachetka Publication.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundDecided for patent owner

    “An enteric-coated dosage form of omeprazole must be perfectly coated and acid resistant, since, if any drug leaks out of the dosage form in the stomach, it is almost immediately degraded. The same is the case if an acidic medium can diffuse into the dosage form through pin-holes or damage in the enteric-coating. We agree with the Patent Owner that Pilbrant teaches away from the claimed combination. Prelim. Resp. 36 (“Petitioner’s failure to acknowledge the complete disclosure of Pilbrant, which negates any motivation to use the non-enterically coated form of esomeprazole, despite the testimony of Petitioner’s own expert, is an incurable flaw in the Petition”). When a prior art reference teaches away from combining known elements, discovery of a successful means of combining them is more likely to be nonobvious. See KSR Internat’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). A reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), cited in In re Mouttet, 686 F.3d 1322, 1333-34 (Fed. Cir. 2012). We disagree with Petitioner’s conclusion that although one of skill in the art “might have believed” that enteric coated esomeprazole was generally the better option, “that does not exclude the use of non-enteric coated esomeprazole as still ‘good enough’ to be obvious, at least in a combination product where all the esomeprazole needs to do is raise the stomach pH to 3.5.” Pet. 51. Here, the very statement that Petitioner relies upon from Pilbrant to support its rationale to combine concerning preabsorption degradation of omeprazole caused Pilbrant to rule out the use of conventional oral dosage forms without an enteric coating. We agree with the Patent Owner that Petitioner’s “[m]otivation to combine in the face of an express teaching away must be found in the prior art itself and reliance on the teachings of the ’285 patent is impermissible hindsight.” Prelim. Resp. 37.” slip op. at 25

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

    “Both parties acknowledge that the claim requires a therapeutically effective amount of naproxen must be surrounded by a coating. Pet. 27; Prelim. Resp. 7. Petitioner’s interpretation, however, turns this requirement on its head. As Patent Owner notes, using the transitional term “comprising” means that additional components may be present, but does not change the elements that are stated in the claim. Prelim. Resp. 8 (citing Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1305 (Fed. Cir. 2012)). Petitioner’s interpretation, however, would encompass a composition where the vast majority of the naproxen, i.e., a therapeutically effective amount, would be outside of the coating. This is not a reasonable interpretation of the claim. We agree with Patent Owner that the broadest reasonable interpretation of the term “comprising . . . naproxen surrounded by a coating” means “a therapeutically effective amount of naproxen is surrounded by a coating,” but do not agree with Patent Owner’s arguments that this claim term excludes any uncoated naproxen from the claim. As Petitioner notes, the Patent Owner has previously addressed the meaning of this limitation in response to invalidity contentions asserting lack of written description support and enablement, stating that the specification of the ’285 patent supports the interpretation “that, in addition to naproxen surrounded by a coating that inhibits its release unless the surrounding medium of the unit dosage form is at least 3.5, the disclosed dosage forms may include additional naproxen outside the coating.” Ex. 1010, 49 (Patent Owner’s responses to invalidity contentions for the ’285 patent) (relying on statements in the specification of the ’285 patent where the combination of an acid inhibitor and an NSAID may be in multi-layer tablet form and where the drug combinations may typically be prepared in admixture with conventional excipients). Patent Owner also has previously stated that the transitional term “comprising” does not exclude the presence of additional naproxen outside of the coating. Id. at 51. We agree. Although the claim term requires that a therapeutically effective amount of naproxen in a unit dosage form is surrounded by a coating, it does not exclude a unit dosage form that has an amount of naproxen outside of the coating that is not therapeutically effective. Therefore, we do not agree that the claims of the ’285 patent” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,557,285
• Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationInstitution denied
  PTAB · Jul 20, 2015 · IPR2015-00762 · APJ Patrick M Boucher · IPR · Institution

  The Board denied joinder and denied institution because the petition was time-barred under § 315(b), despite finding a reasonable likelihood that claims 1–3, 8, 9, 12, 16, and 19 were anticipated.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied

    “Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11

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

    “Section 315(c) provides: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. In our view, the phrase “join as a party” indicates that only a person who is not already a party to an instituted inter partes review can be joined to the proceeding. A person cannot be joined as a party to a proceeding in which it is already a party. That the statute uses the expansive term “any person” is of little moment because the overall language of the statute places unambiguous limits on the term. Specifically, the phrase “join as a party” excludes a person who is already a party.” slip op. at 12

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

    “We conclude that Petitioners have established a reasonable likelihood of prevailing on their contention that Hideji discloses performing sinewave commutation using independent values of Q and d axis currents in the manner recited in each of independent claims 1, 16, and 19. Thus, we conclude that Petitioners have established a reasonable likelihood of prevailing on their challenge of claims 1–3, 8, 9, 12, 16, and 19 as anticipated by Hideji. B. Time Bar Under 35 U.S.C. § 315(b) Section 315(b) provides: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “contention that Hideji discloses “performing sinewave commutation, using independent values of Q and d axis currents, in response to one or more control signals received from the system controller to produce continuous phase currents in the permanent magnet motor for driving the air-moving component,” recited in each of independent claims 1, 16, and 19. Pet. at 19– 26. Patent Owner contends that Hideji fails to disclose the use of independent values of Q and d axis currents: “In fact, Hideji discloses that it employs calculations in the rotating frame of reference in which Q and d axis currents depend on each other.” Prelim. Resp. 20. Petitioners observe that Figure 2 of Hideji illustrates that three-phase / two-phase coordinate conversion part 36 outputs separate values for Iq and Id, i.e. the Q and d axis currents.3 Pet. 23–24. Hideji discloses that 3 We note that the labels “Iq” and “Id” output from part 36 of Hideji are identified directly as such in the original Japanese reference. Ex. 1003, 8. [t]he three-phase/two-phase coordinate conversion part 36 converts the coordinates of the alternating current Iu and Iv introduced by the current input part 35 to a revolving coordination system (d-q coordination system) on the rotor of the brushless DC motor 30A, and calculates flux current Id (d-axis current) and torque current Iq (q-axis current). Ex. 1005 ¶ 35. Petitioners reason that such transformation results in separate, independent values of Q and d axis currents determined from control signals received from the system controller. Pet. 23. Petitioners support this reasoning with testimony by Dr. Ehsani. Ex. 1009 ¶ 38. Patent Owner responds that “the values coming from part 36 are at best a transform into the rotating frame of reference of actual measured currents” and that “[t]hey are not the demanded currents generated by the controller.” Prelim. Resp. 22. Notwithstanding the explicit identification of these values as “Iq” and “Id” in the original Japanese reference, Patent Owner also contends that they “are not values one of ordinary skill would refer to as Iq and Id.” Id. at 23. In addition, Patent Owner contends that “[i]t is the current control part 40 output that is used to create the continuous phase sine wave commutated currents for the motor after being transformed back out of the rotating frame of reference,” reasoning that “[i]f Iq and Id are not independent at this step, the ‘motor controller’ is not using ‘independent values of Q and d axis current’ to perform ‘sine wave commutation.’” Id. at 24. Patent Owner contends that such inputs are not independent, noting” slip op. at 9

  Claim construction§ 102 anticipationDiscretionary denial
  Patents in suitUS 7,626,349

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.