- Fitbit, Inc. v. Philips North America LLCInstitution deniedPTAB · Oct 30, 2020 · IPR2020-00782 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Philips had recorded a statutory disclaimer of all challenged claims 15–17.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” (Emphasis added.) A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5
Discretionary denialPatents in suitUS 6,976,958 - SHDS, Inc. / Galderma Laboratories, L.P. v. Truinject Corp.Institution deniedPTAB · Apr 14, 2020 · IPR2020-00042 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving the claims obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the ’836 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Mukherjee, Petitioner submits that a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, robotics engineering, mechatronics, or a similar field, or, alternatively, may have had a lesser degree in one of those fields accompanied by practical experience in designing medical training or similar systems. Pet. 17–18 (citing Ex. 1002 ¶ 27). Petitioner further submits that a person of ordinary skill in the art would have an in-depth working knowledge of machine vision, three-dimensional tracking systems, microprocessors, signal processing, sensors, computer programming, or a combination thereof. Id. at 18 (citing Ex. 1002 ¶ 27). In addition, Petitioner submits that a person of ordinary skill in the art would have experience in designing and producing realistic anatomical models or lifelike mannequins and would have a strong working knowledge of mannequin design, computer-aided design and manufacturing (CAD and CAM), materials selection, human anatomy, and related special effects, and may have collaborated with others of skill in the art, such that the individual or the team collectively would have had experience and/or knowledge of medical simulators. Id. (citing Ex. 1002 ¶ 28). Patent Owner does not dispute this contention at this stage of the proceeding, nor does Patent Owner offer its own definition of the level of ordinary skill in the art. We find, based on our review of the record before us, that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence at this stage of the proceeding, including the asserted prior art and, for the purposes of this Decision only, we adopt Petitioner’s definition.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We are not persuaded that Petitioner has demonstrated sufficiently that one of ordinary skill in the art would have been led to modify Goldstein’s blinded breast model 6 by combining it with the larger torso body form of Lacey. First, neither the Petition nor Dr. Mukherjee adequately explains why the proposed modification would provide a simulation of human tissues for training that is more realistic than Goldstein’s training apparatus. Dr. Mukherjee’s testimony merely repeats the Petition’s assertion and does not offer objective evidence or analysis to support the assertion. See Ex. 1002 ¶ 75. For this reason, we do not credit the testimony of Dr. Mukherjee on this point. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We are not persuaded that Petitioner has demonstrated sufficiently that one of ordinary skill in the art would have been led to modify Goldstein’s blinded breast model 6 by combining it with the larger torso body form of Lacey. First, neither the Petition nor Dr. Mukherjee adequately explains why the proposed modification would provide a simulation of human tissues for training that is more realistic than Goldstein’s training apparatus. Dr. Mukherjee’s testimony merely repeats the Petition’s assertion and does not offer objective evidence or analysis to support the assertion. See Ex. 1002 ¶ 75. For this reason, we do not credit the testimony of Dr. Mukherjee on this point. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Second, we do not agree that one of ordinary skill in the art would have considered combining Goldstein’s model with a torso body form useful or desirable given the nature of Goldstein’s training process. That is, Goldstein’s training technique relies on the trainee palpating the breast model to locate the target lesion and to guide the aspiration needle to the target. Ex. 1004, 3:53–59. Thus, “[t]he lifelike characteristics of the breast model provide tactile training of these events and allow the trainee to accumulate sensory knowledge of successful technique.” Id. at 3:60–62 (emphasis added). Petitioner fails to explain adequately why including a human torso form would have made palpating the breast model more realistic or otherwise enhanced this technique in any way. Furthermore, Goldstein states that a benefit of the disclosed breast models is “their small size and simplicity which encourage their availability and use.” Id. at 5:13–15. Petitioner’s proposed modification, however, would result in a larger, more expensive training apparatus that would defeat Goldstein’s stated benefit. As such, we are not persuaded that one of ordinary skill in the art would have been led to modify Goldstein’s training apparatus in the manner proposed by Petitioner. For the reasons discussed above, we find that Petitioner has not met its burden to show a reasonable likelihood that claim 1 is unpatentable over the combination of Goldstein and Lacey. 5.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,792,836 - Tesla, Inc. v. Nikola CorporationInstitution deniedPTAB · Mar 27, 2020 · IPR2019-01646 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on all challenged claims because Tesla did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Patent Owner’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–26 of the ’084 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’084 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that an ordinarily skilled artisan at the time of the invention of the ’084 patent would have had the following education and experience, a “Bachelor of Science degree in an industrial design field and two years of experience in automotive design.” Pet. 13 (citing, Ex. 1002 ¶ 17). Patent Owner does not dispute this level of skill. Prelim. Resp. 17. For purposes of this Decision, we adopt Petitioner’s proposal.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“electric drive train.” See Pet. 8–13. In its Preliminary Response, Patent Owner asserts that no claim construction is necessary, but if construction of 9 The Partner of Choice, MAN SE 2012 Annual Report (Exhibit 1013) (“MAN Annual Report”). 10 Josef Loczi, Ergonomics Program at Freightliner, Society of Automotive Engineers, Inc., Journal of Commercial Vehicles, Section 2 – Volume 109, SAE 2000, pp. 462‒69 (Exhibit 1014) (“Freightliner”). “adjacent to” is necessary, Petitioner’s construction should not be used because it is too narrow. Prelim. Resp. 8–17. We determine that for the purposes of this Decision, it is unnecessary to expressly construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy must be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs in the context of an inter partes review). slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“[t]he following annotated Figure 1 of Modec shows that “at least a portion of the door [yellow]” is “positioned behind the seat [green] and at least a portion of the seat [green] is disposed to be forward of a line defining the rearmost portion of the wheel well [blue line extended from rearmost edge].” Ex. 1002 ¶ 82. Mr. Baker’s testimony simply repeats the conclusions articulated in the Petition with no further explanation or support. Compare id. with Pet. 39. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” See 37 C.F.R. § 42.65(a). Thus, neither Petitioner nor its declarant supports its conclusion with sufficient rationale, explanation, or evidence. Consequently, Petitioner has not sufficiently shown that a person of skill in the art would have understood Modec’s Figure 1 to disclose “at least a portion of the seat is disposed to be forward of a line defining the rearmost portion of the front wheel well” recited in claim 1. In reviewing the record, we are mindful of the principle that patent drawings are not working drawings and we must not disregard things clearly shown in patent drawings. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). However, our reviewing court “has repeatedly cautioned against overreliance on drawings that are neither expressly to scale nor linked to quantitative values in the specification.” Krippelz v. Ford Motor Co., 667 F.3d 1261, 1268 (Fed. Cir. 2012). Here, even with Petitioner’s annotations, it is not clear whether Modec’s Figure 1 shows a portion of the green seat in front of Petitioner’s blue line. Thus, we are not persuaded by Petitioner’s unsupported arguments, which would require us to speculate on the contents of a patent drawing.” slip op. at 19
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,077,084 - Firstspear, LLC v. Lineweight, LLCRehearing deniedPTAB · Mar 25, 2020 · IPR2019-01170 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show that combining Fegen and Stevens would have made the claimed openings compatible with the asserted properties.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“37 C.F.R. § 42.71(d), which provides: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. 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, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“motivated to adhere Fegen’s exterior garment layer to a substrate in order to provide a substrate material having water-proofing or scent blocking properties as taught by Stevens.” Pet. 31–32 (citing Ex. 1002 ¶ 55; Ex. 1006, 2:1–4, 3:50–53). In addition, the Petition asserts that one of ordinary skill in the art “would understand that the slits in Fegen extend all the way through the exterior layer and the substrate in order to permit attachments to be more easily secured to Fegen’s garment.” Id. at 35 (citing Ex. 1002 ¶ 62; Ex. 1005, Fig. 3). In the Decision, we determined that Petitioner had failed to establish sufficiently that it would have been obvious to one of ordinary skill in the art to combine Fegen and Stevens in the manner proposed. Dec. 14–16. In particular, we determined that providing slits or openings in the substrate of the proposed combination of Fegen and Stevens “would defeat, or at least greatly diminish, any water-proofing or scent blocking properties of the substrate.” Id. at 15. Thus, we disagreed with Petitioner’s contention that one of ordinary skill in the art would have been motivated to add a substrate to Fegen’s garment for the purpose of providing water-proofing or scent blocking properties. Id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We disagree with this broad assertion because the Petition does not demonstrate sufficiently why providing openings in the substrate, as the claims require, would not have led one of ordinary skill in the art to consider such openings detrimental to the rationale of providing water-proofing or scent blocking properties. Petitioner’s assertion also ignores the fact that the corresponding openings in the substrate would allow sweat and odor to pass through freely, thereby decreasing the effectiveness of water-proofing and scent blocking properties. Although no evidence of record appears to state expressly that openings of the size claimed would allow sweat and odor to pass freely through the substrate, this fact would have been readily apparent to one of ordinary skill in the art. Thus, the Rehearing Request fails to demonstrate that a reasonable fact finder could not have arrived at this fact, such that our determination is supported by substantial evidence. See OSI Pharm., 939 F.3d at 1381–82.” slip op. at 4
- BurdenDecided for patent owner
“Petitioner also argues that “[t]here is no evidence supporting a difference in effectiveness of the water-proofing and scent blocking properties of the substrate whether the substrate is a solid sheet of material or the substrate contains slots or openings in the same location as the exterior layer.” Reh. Req. 3. This argument, however, attempts to improperly shift the burden of persuasion away from Petitioner. “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) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion rests with Petitioner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Thus, Petitioner has the burden of presenting evidence supporting its assertion that there is no difference in effectiveness of the water-proofing and scent blocking properties of the substrate with or without openings.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,173,436 - Unified Patents Inc. v. American GNC CorporationRehearing deniedPTAB · Mar 17, 2020 · IPR2019-00505 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Unified Patents’ rehearing request and left institution denied because it had not shown JSC was reasonably likely to qualify as a publicly accessible printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. 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, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“likelihood” standard applicable to decisions to institute an inter partes review. We agree with Petitioner that the “reasonable likelihood” standard applies to the issue of whether a reference asserted in a petition for inter partes review qualifies as a prior art printed publication. See id. at 3. As the Board held in a recent precedential decision, “at the institution stage, 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).” slip op. at 4
- BurdenInstitution denied meritsDecided for patent owner
“are factual disputes that reach beyond the ‘reasonable likelihood’ standard and are more appropriately developed during an instituted trial.” Id. We disagree with this broad assertion because it ignores the fact that, in this case, as explained on pages 15‒16 of the Decision, Petitioner’s evidence does not meet a minimum threshold showing to even present a factual dispute as to availability and dissemination of the reference. See Hulu, Paper 29 at 13 (establishing that the Petition must identify, with particularly, evidence sufficient to establish a reasonable likelihood of public accessibility before the critical date).” slip op. at 5
§ 102 anticipationPatents in suitUS 6,411,871 - BMW Of North America, LLC v. Carrum Technologies, LLCInstitution deniedPTAB · Nov 5, 2019 · IPR2019-00928 · APJ Lynne H Browne · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, relying on Winner’s existing methods for detecting turns.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an 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.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“6. Analysis We agree with Patent Owner. As Winner discloses methods for identifying when a vehicle has entered a curve (measuring transverse acceleration and using the forward facing radar), it is not evident why one of ordinary skill in the art would have looked to Fukada to obtain additional Petitioner is relying on alleged AAPA7 to provide reasoning in support of the proposed combination, we note that identification of a problem “is not an admission that this problem was known or appreciated by others.” Endo Pharm. Inc. v. Actavis LLC, 922 F.3d 1365, 1376 (Fed. Cir. 2019) (quoting Innogenics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008))). Thus, we are not persuaded by Petitioner’s argument.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In view of our analysis discussed below, we do not discern a need to construe explicitly any claim term of the ’416 patent, because construing these terms is not necessary for us to assess the asserted grounds of unpatentability. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“A person of ordinary skill in the art (“POSITA”) at the time the ’416 patent was filed would have a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two to three years of industry experience in the field of automotive control systems or automotive engineering, or equivalent experience, education, or both.” Pet. 9 (citing Ex. 1004 ¶ 22). Petitioner asserts further that “[t]he person would also have knowledge or familiarity with in-vehicle computing.” Id. Patent Owner “does not dispute Petitioner’s definition of a POSA.” Prelim. Resp. 2 (citing Pet. 9). Accordingly, for the purposes of this Decision, we 6 We note that at this time no objective evidence of nonobviousness has been presented by Patent Owner. consistent with the evidence at this stage of the proceeding, including the ’416 patent and the asserted prior art.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,925,416 - PTAB · Oct 10, 2019 · IPR2018-00991 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and left in place its discretionary denial of institution under § 314(a), concluding that the General Plastic factors supported denial.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. 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, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner
“between Petitioner and the Prior Petitioners. Unlike the Valve case, however, the majority opinion did not find that the first factor favors denying institution. Rather, the majority opinion determined that the first factor weighs against exercising discretion to deny institution, but only moderately because of the complete overlap in the challenged claims between the Petition and the petition in the 136 IPR, as well as the overlap of many issues and arguments raised by the Petition and the 136 IPR petition. Dec. 12–13. Petitioner’s arguments do not establish that we overlooked or misapprehended anything, or used unreasonable judgment, in determining that the first factor weighs only moderately against exercising discretion to deny institution. Furthermore, even if we were to determine that the first factor heavily weighs against exercising discretion to deny institution, as advocated by Petitioner, this determination would not alter our overall weighing of the General Plastic factors.” slip op. at 8
Discretionary denialPatents in suitUS 9,144,700 - Agamatrix, Inc. v. Dexcom, Inc.Institution deniedPTAB · Mar 13, 2019 · IPR2018-01718 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because AgaMatrix did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, there is not a reasonable likelihood that AgaMatrix would prevail with respect to the challenge to claim 14 in the Petition.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the related ITC proceeding, Dexcom submitted expert testimony of a slightly different level of ordinary skill in the art, but Dexcom argues in its Preliminary Response that at this stage in this proceeding, the differences between the proposed levels of skill in the art are “not material to the Board’s decision whether Petitioner has met its burden for institution of IPR.” Prelim. Resp. 5; see also Ex. 1016, 5 (Dexcom’s level of ordinary skill in the art as submitted in the ITC proceeding). We adopt AgaMatrix’s asserted level of ordinary skill in our determination of whether there is a reasonable likelihood that AgaMatrix would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“AgaMatrix submitted proposed interpretations for various claim terms based on either claim interpretations made by Judge Bullock in the related ITC proceeding, or claim interpretations stipulated to by the parties in the related ITC proceeding, or interpretations offered by Dexcom in the related ITC proceeding. Pet. 15‒16. AgaMatrix stated that “the broadest reasonable interpretation of the [listed] claim terms is at least as broad as the listed definitions.” Id. at 15. Dexcom does not dispute that the stipulated constructions and the constructions ordered by the ITC should control at this stage of the IPR proceedings. Prelim. Resp. 6. For purposes of this decision, we employ the claim constructions ordered by the ITC and stipulated to by the parties in the related ITC proceeding, as presented in the Petition.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Under the third theory (“Case 3”), the Petition asserts that in light of White’s and Beaty’s express teachings, a POSITA would have understood that an error condition can be reported and a glucose measurement can be discarded if an impedance value and/or the corresponding correction factor indicative of the effect of temperature, hematocrit, and/or another interfe[r]rent (i.e., the value associated with the severity of the erroneous signal) is too high (i.e., outside of) compared to a predetermined threshold value, such as that stored in a second look-up table in memory. Pet. 42–43 (citing Ex. 1003 ¶ 367). Dexcom disputes this assertion for three reasons. Prelim. Resp. 12–15. First, Dexcom contends “the Petition utterly fails to explain the purported combination or an alleged motivation for creating that combination.” Id. at 12. Dexcom adds that the Petition’s assertion of what “can” be done falls far short of the required showing that one of ordinary skill in the art would have been motivated to combine the references in a particular way that would have satisfied the claim. Id.at 12–13 (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)). Second, Dexcom argues that Case 3 fails to identify a “glucose measurement” in the alleged combination or explain how the proposed combination discards a glucose measurement. Id. at 13. Third, Dexcom argues that Case 3 rests on the unsupported and conclusory propositions of Case 1 and Case 2, and Case 1 and Case 2 both are deficient for the reasons argued earlier in its Preliminary Response. Id. at 14. We agree with Dexcom that the Petition fails to explain adequately how the proposed combination of White and Beaty would result in a device that discards a glucose measurement. As discussed above, AgaMatrix’s arguments that White and Beaty individually disclose discarding a glucose measurement are not persuasive. The Petition does not explain how combining these teachings would overcome those deficiencies. In addition, although the Petition provides a rationale for combining White and Beaty in general (Pet. 43–46), the Petition does not explain adequately why one of ordinary skill in the art would have been led to modify White in view of Beaty in the particular manner proposed for Case 3.” slip op. at 20
Claim construction§ 103 obviousnessPatents in suitUS 9,750,460 - Agamatrix, Inc. v. Dexcom, Inc.Institution deniedPTAB · Mar 13, 2019 · IPR2018-01717 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution of inter partes review of claims 14–69 under § 325(d), finding that the same prior art had previously been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Examiner found that the prior art, including Berner, failed to disclose applying a voltage to the electrochemical sensor, wherein applying the voltage comprises at least one process selected from the group consisting of switching, cycling, and pulsing a voltage applied to the electrochemical glucose sensor. Ex. 1002, 259. The Examiner explicitly found that Berner “teaches the switching of a voltage to the electrodes, but disclosed such a feature as part of an iontophoretic electrodes embodiment for collection purposes.” Id. AgaMatrix now relies on the same disclosure in Berner of application of a voltage to the iontophoretic electrodes as evidence of disclosure of the applying and the switching, cycling, and pulsing claim elements that the Examiner found missing in Berner.” slip op. at 14
Discretionary denialPatents in suitUS 9,750,460 - Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00744 · APJ Michael L Woods · IPR · Rehearing
The Board denied Fasteners for Retail’s rehearing request, leaving institution denied because it failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s argument is without merit because it mischaracterizes our Order. Contrary to Petitioner’s assertion (Request 5), our Order does not “instruct” or “direct” Petitioner to file a reply brief if it believes Olympus is not an unnamed RPI. Rather, our Order explicitly provides that if “Petitioner does not believe that Olympus is an unnamed real party in interest, in lieu of updating its mandatory notices, Petitioner may file a reply brief.” Order 3 (emphasis added). In other words, the Order does not state “Petitioner must file a reply brief,” as Petitioner’s argument would have us believe. The Order further provides:” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“We entered a decision denying institution (Paper 25, “DDI”), in which we explained that Petitioner failed to persuade us that Olympus was not an RPI. DDI 14.” slip op. at 2
Discretionary denialPatents in suitUS 9,635,957
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.