- Peloton Interactive, Inc. v. Ifit, Inc.InstitutedPTAB · Apr 22, 2022 · IPR2022-00029 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1, 3–5, 8–11, 15, 16, 21–23, 26–28, 30, 36, 38, 40, 45, 46, and 48 on all petition grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Second Part of Advanced Bionics—Studor Having found Studor was considered during prosecution of the” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the present Petition, may have gained a tactical advantage by being able to review the patent owner response in IPR2021-00342. However, based on the present record, it appears that the principal reason behind Petitioner’s delay was to wait until Patent Owner identified the claims at issue in the District Court Litigation, rather than filing serial petitions to test theories in an initial petition and adapt accordingly in a later petition. Further, Petitioner had the patent owner response in hand for only a few weeks (September 30 to October 13) before filing the present Petition. In light of these overall circumstances, the potential tactical advantage gained by Petitioner does not merit a discretionary denial of institution.” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“before the court’s scheduled trial date. We agree with our colleagues’ conclusion that “this factor favors denial if trial precedes the Board’s Final Written Decision and favors institution if the opposite is true,” “due to the 35 U.S.C. 315(e)(2) estoppel provision.” Huawei Techs. Co., Ltd. v. WSOU Invs., LLC, IPR2021-00225, Paper 11 at 13–14 (PTAB June 14, 2021); see also Google LLC v. Parus Holdings, Inc., IPR2020-00846, Paper 9 at 20–21 (PTAB Oct. 21, 2020) (“Petitioner is the defendant in the parallel proceeding. This fact could weigh either in favor of, or against, exercising discretion to deny institution, depending on which tribunal was likely to address the challenged patent first.”).” slip op. at 48
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires the Petition to demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute, on behalf of the Director (37 C.F.R. § 42.4(a)), an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that the challenged claims are unpatentable, considering the two grounds asserted in the Petition.” slip op. at 2
Claim constructionDiscretionary denialcites KSR · GrahamPatents in suitUS 7,166,062 - Restem, LLC. v. Jadi Cell, LLCInstitutedPTAB · Apr 20, 2022 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–15 over all asserted grounds, finding a reasonable likelihood that Petitioner would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). 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.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we authorize an inter partes review to be instituted as to the Challenged Claims of the ’176 patent on the grounds raised in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as to patentability of claims for which inter partes review is instituted. Any final decision will be based on the record, as fully developed during trial.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 15 (citing Ex. 1007 ¶¶ 19–24). Patent Owner does not comment on the characterization offered by Petitioner or offer one of its own. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s characterization as it is consistent with the level of skill in the art at the time of the invention as reflected by the ’176 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Prelim. Resp. 16. Patent Owner cites Ex. 1001 6:32–34, noting that the patent specification “expressly defines ‘isolated cell’ as ‘[referring] to a cell that has been isolated from the subepithelial layer of a mammalian umbilical cord.’” Id. As neither party references any prosecution history related to interpretation of this claim term, we look only to the claim itself and the specification as intrinsic evidence. DePuy Spine, 469 F.3d at 1014. Claim 1 recites “an isolated cell prepared by a process comprising . . . ” Ex. 1001 at 19:6. As Patent Owner notes, the patent specification states “the term ‘isolated cell’ refers to a cell that has been isolated from the subepithelial layer of a mammalian umbilical cord.” Id. at 6:32–34. The remainder of the citations Petitioner cites relate to additional steps for isolating the cell, or characteristics of the cell, such as the markers expressed or not expressed, but do not further elucidate the meaning of “an isolated cell” itself. Dr. Olsen’s testimony reiterates the content of these citations but does not add any additional information or explanation. Ex. 1007 ¶¶ 67–68. Given the definition provided in the specification, we interpret “an isolated cell,” consistent with Patent Owner’s definition, to mean “one or more cells isolated from the subepithelial layer of a mammalian umbilical cord.”” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInstituted
“the Wharton’s Jelly, epithelium, etc.” and that, without evidence that the recited markers are expressed/not expressed as recited, there is no inherent disclosure. Prelim. Resp. 22, 25, 28–29 (citing Ex. 2022 ¶ 162). Patent Owner is correct that an ultimate finding of anticipation requires such confirmation, but, for purposes of institution, our standard is a reasonable likelihood. 35 U.S.C. § 314(a). Due to the breadth of claim 1, Majore’s method must produce only one cell having the recited limitations to anticipate. Petitioner’s expert testifies that production of such cells would be inherent by Majore. See Ex. 1007 ¶ 97 (“Majore’s protocol would produce a population of adherent cells that necessarily and inevitably comprise the cells of the subepithelial layer.”). And, although we recognize that the burden of persuasion does not rest on Patent Owner, Dr. Burger’s testimony, which focuses heavily on the differences in methodology between Majore and the ’176 patent disclosure and Petitioner’s alleged failure of proof, is not persuasive at this stage to overcome the evidence presented by Petitioner. See Ex. 2002 ¶¶ 137–163. Indeed, both Majore and the ’176 patent disclose umbilical cord tissue cut into sections and placed into environments fostering cell culture and replication. Ex. 1011 at 18, Ex. 1001 at 13:57–14:5. Both methods encourage and result in adherent cells growing on a plastic growth surface awash in culture media. Id. On this record, Petitioner has provided sufficient factual basis to establish a reasonable likelihood that Majore’s explant method of dissecting umbilical cord, culturing cells, and growing adherent cells would have produced (or did produce) at least one cell with the recited limitations. In this regard, we credit the testimony of Dr. Olsen that the isolated cells disclosed in Majore are MSCs cultured from umbilical cord tissues including the subepithelial layer, which have migrated to the periphery of the cut tissue and adhered to the tissue culture vessel. Ex. 1007 ¶¶ 95–97. That Majore discloses genetic markers with similar expression/non-expression to the markers recited in claim 1 is further evidence that at least some cells were cultured from the subepithelial layer. Id. ¶ 99. Moreover, even if we gave weight to the process limitations construed as requested by Patent Owner (Prelim. Resp. 13–20), the limitations are sufficiently broad as to read on Majore with the exception of the express/non-expressed markers. With regard to markers not examined by Majore, we credit Dr. Olson’s statement that “the cells obtained by Majore’s protocol necessarily and inevitably comprise the same cells produced by the process steps of claim 1[A] and 1[B]” and that the skilled artisan would have understood that the marker expression pattern would be identical for those cells. Id. ¶ 101.16 The evidence on this issue is subject to final determination on a more complete record developed through trial.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,803,176 - PTAB · Dec 10, 2021 · IPR2021-01051 · APJ James A Worth · IPR · Institution
The Board instituted IPR on claims 1–10 on every asserted ground, finding a reasonable likelihood that claim 1 is anticipated by Goldfarb ’267 (Embodiment B).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of claims 1–10 would have been unpatentable, and we institute an inter partes review of claims 1–10 based on the grounds set forth in the Petition. B.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Legal Standards A “prior art reference—in order to anticipate under 35 U.S.C. § 102— must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps.” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012). A reference can anticipate a claim even if it “d[oes] not expressly spell out” all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would “at once envisage” the claimed arrangement or combination. Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Claim Construction We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Petitioner requests that we construe the term “clip” to mean “a device that grips or holds.” Pet. 16. Citing dictionary definitions, Petitioner argues that the ordinary meaning of “clip” is “a device, typically flexible or worked by a spring, for holding an object or objects together or in place.” Id. (citing Ex. 1009; Ex. 1010). Petitioner argues that the Specification is consistent with the ordinary meaning. Id. (citing Ex. 1001, 7:35–39, 9:9–17, 27:27–39). Given the lack of dispute on this record, and in view of the Specification and the proffered dictionary definitions, for the purposes of this Decision we construe “clip” to mean “a device that grips or holds.” Ex. 1001, 7:35–39, 9:9–17; Ex. 1009; Ex. 1010.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art (POSITA) at the relevant time would have been either: (1) a mechanical or biomedical engineer with at least three years of experience in designing or developing medical devices who would, where necessary or desired, work or consult with others including a physician to develop such a medical device; or (2) an interventional cardiologist or cardiac surgeon with at least three years of experience developing and/or using medical devices in the heart, and who would, where necessary, work or consult with others including an engineer to develop such a medical device. Pet. 15–16 (citing Ex. 1003 ¶ 32). On the record at this stage of the proceeding, we adopt Petitioner’s undisputed definition of the ordinarily skilled artisan. C.” slip op. at 12
Claim construction§ 102 anticipationcites Phillips · GrahamPatents in suitUS 10,702,385 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01710 · APJ Jennifer Meyer Chagnon · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding it had not overlooked or misapprehended the arguments for supplemental Arthrex briefing or a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing 2 For convenience, we refer herein to Papers and Exhibits filed in IPR2018-01422. Substantially the same documents have been filed in each of the captioned proceedings. 3 Patent Owner also requested Precedential Opinion Panel (POP) review of the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s request for POP review has been denied. See Paper 77. “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. With this in mind, we address the arguments presented by Patent Owner. III.” slip op. at 2
NonePatents in suitUS 8,586,045 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01427 · APJ James A Worth · IPR · Rehearing
The Board denied Teva’s rehearing request, finding it had not overlooked or misapprehended arguments when it declined supplemental Arthrex briefing and denied a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing 2 For convenience, we refer herein to Papers and Exhibits filed in IPR2018-01422. Substantially the same documents have been filed in each of the captioned proceedings. 3 Patent Owner also requested Precedential Opinion Panel (POP) review of the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s request for POP review has been denied. See Paper 77. “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. With this in mind, we address the arguments presented by Patent Owner. III.” slip op. at 2
NonePatents in suitUS 8,597,649 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01425 · APJ James A Worth · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended arguments in denying supplemental briefing and a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Teva authorization to file supplemental briefing addressing Arthrex and a motion to stay (Ex. 2274 at 1), the panel misapprehended or overlooked the limitations of [the] Arthrex remedy and the constitutional issues that remain to be addressed.” Req. Reh’g 5. We disagree that we overlooked Patent Owner’s argument in this regard. Instead, we declined to consider Patent Owner’s constitutional arguments, as the issue has been addressed by the Federal Circuit in Arthrex. See Ex. 2274, 1. Additional briefing from the parties was not necessary to come to the decision to decline consideration of these constitutional arguments.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Teva authorization to file supplemental briefing addressing Arthrex and a motion to stay (Ex. 2274 at 1), the panel misapprehended or overlooked the limitations of [the] Arthrex remedy and the constitutional issues that remain to be addressed.” Req. Reh’g 5. We disagree that we overlooked Patent Owner’s argument in this regard. Instead, we declined to consider Patent Owner’s constitutional arguments, as the issue has been addressed by the Federal Circuit in Arthrex. See Ex. 2274, 1. Additional briefing from the parties was not necessary to come to the decision to decline consideration of these constitutional arguments.” slip op. at 3
NonePatents in suitUS 9,890,210 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01424 · APJ James A Worth · IPR · Rehearing
The Board denied Teva’s rehearing request, finding it had not misapprehended or overlooked arguments when it declined supplemental briefing on Arthrex and denied a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing 2 For convenience, we refer herein to Papers and Exhibits filed in IPR2018-01422. Substantially the same documents have been filed in each of the captioned proceedings. 3 Patent Owner also requested Precedential Opinion Panel (POP) review of the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s request for POP review has been denied. See Paper 77. “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. With this in mind, we address the arguments presented by Patent Owner. III.” slip op. at 2
- Other 314aOther
“overlooked that a brief stay until the Arthrex mandate issues will conserve agency resources, and will avoid taking further steps in this proceeding while an Appointments Clause violation still exists.” Req. Reh’g 5, 14–15. Regarding Patent Owner’s request for a stay of the proceedings, we disagree that we overlooked Patent Owner’s arguments. Instead, we note that except in cases involving the unique nature of the sovereign immunity right of the States, see, e.g., Taiwan Semiconductor Manufacturing Co. v. STC.UNM, IPR2019-01410, Paper 8 at 2–3 (PTAB Oct. 11, 2019) (cited by Patent Owner at Req. Reh’g 14–15), the Board generally declines to stay proceedings pending an appeal to the Federal Circuit or the Supreme Court. See, e.g., Askeladden LLC v. Purple Leaf, LLC, IPR2016-01720, Paper 22 at 2 (PTAB Sept. 11, 2017) (denying authorization to file a motion to stay pending the outcome of an appeal to the Supreme Court).4 The present proceedings simply do not fall within the narrow category of cases in which the Board generally entertains a stay pending Federal Circuit review.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“Teva authorization to file supplemental briefing addressing Arthrex and a motion to stay (Ex. 2274 at 1), the panel misapprehended or overlooked the limitations of [the] Arthrex remedy and the constitutional issues that remain to be addressed.” Req. Reh’g 5. We disagree that we overlooked Patent Owner’s argument in this regard. Instead, we declined to consider Patent Owner’s constitutional arguments, as the issue has been addressed by the Federal Circuit in Arthrex. See Ex. 2274, 1. Additional briefing from the parties was not necessary to come to the decision to decline consideration of these constitutional arguments.” slip op. at 3
Discretionary denialPatents in suitUS 9,346,881 - Controls Southeast, Inc. v. Qmax Industries, LLCRehearing deniedPTAB · May 30, 2018 · IPR2017-00977 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of review of claim 3 under § 103 over Malone, Bilbro, and Mizuno in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 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). We further note that 37 C.F.R. § 42.71(d) states: 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.” slip op. at 2
- Expert testimonyNot reached
“Regarding Petitioner arguing, with respect to claim 1, that it would have been obvious to one of ordinary skill in the art “to form metal foil 9 of Malone from the rigid metal used for channel member 10 [of Bilbro]” in order to meet the limitation of the heat transfer element physically protecting the tracer tubing (Pet. 24 (citing Ex. 1014 ¶ 160)), we determined that this argument was an alternative to Petitioner’s argument that Malone’s foil 9, unmodified, physically protects heating cable 8, and expressly did not rely on this alternative argument with respect to claim 3. Dec. 23. In addition, we noted that Petitioner’s expert, Dr. Abraham, testified in connection with claim 3 that one of ordinary skill in the art would be motivated to form foil 9 into a rigid structure (see Ex. 1014 ¶¶ 310, 313, 314), but found it unnecessary to rely on this testimony. Dec. 23 n.7. As such, we did not determine that the Petition was ambiguous and did not “piece together support” for Petitioner’s unpatentability theory, as alleged by Patent Owner. See Reh. Req. 5.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Regarding Petitioner arguing, with respect to claim 1, that it would have been obvious to one of ordinary skill in the art “to form metal foil 9 of Malone from the rigid metal used for channel member 10 [of Bilbro]” in order to meet the limitation of the heat transfer element physically protecting the tracer tubing (Pet. 24 (citing Ex. 1014 ¶ 160)), we determined that this argument was an alternative to Petitioner’s argument that Malone’s foil 9, unmodified, physically protects heating cable 8, and expressly did not rely on this alternative argument with respect to claim 3. Dec. 23. In addition, we noted that Petitioner’s expert, Dr. Abraham, testified in connection with claim 3 that one of ordinary skill in the art would be motivated to form foil 9 into a rigid structure (see Ex. 1014 ¶¶ 310, 313, 314), but found it unnecessary to rely on this testimony. Dec. 23 n.7. As such, we did not determine that the Petition was ambiguous and did not “piece together support” for Petitioner’s unpatentability theory, as alleged by Patent Owner. See Reh. Req. 5.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,662,156 - PTAB · Sep 30, 2016 · IPR2015-00841 · APJ James P Calve · IPR · Rehearing
The Board denied Wonderland’s rehearing request and declined to modify the final written decision finding claims 15–29 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party challenging a final written decision in a request for rehearing must identify all matters the party believes that the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging party bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“It is well-settled that “a” and “an” mean “one or more” unless a clear intent is evinced to limit those terms to just “one.” Dec. 17. In contrast to Patent Owner’s arguments in this proceeding (Req. 8–9), Patent Owner, in related district court action, repeatedly asserted that the term “an” in claim 8 can mean “one or more.” Ex. 1032, 6–7 (“it is generally accepted in patent parlance that ‘a’ or ‘an’ can mean ‘one or more.’”), 9 (“it is black-letter patent law that ‘an’ means ‘one or more’ in a patent claim.”).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“baby crib, wherein each of the upright tubes has an outer wall that defines an outer contour shape of the upright tube” in claim 15 consistent with the plain language of the claims in light of the ’919 Specification. Claim 15 recites “upright tubes defining corners of the baby crib, wherein each of the upright tubes has an outer wall that defines an outer contour shape of the upright tube.” Ex. 1001, 5:7–9. We found that Bidwell discloses retaining members 22 that satisfy these claimed features. Dec. 42.” slip op. at 27
Claim constructioncites Phillips - Boston Scientific Corporation v. Uab Research FoundationRehearing grantedPTAB · Mar 7, 2016 · IPR2015-00918 · APJ James A Worth · IPR · Rehearing
Rehearing was granted, and IPR was instituted on anticipation of claims 1–20 by KenKnight ’967; no other grounds were instituted.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“background art in which two other patents described “pacing or pretreatment pulses” delivered through the same electrodes as defibrillation. Id. (citing Ex. 1002, 7). We recognize that Patent Owner has not yet had an opportunity to introduce testimonial evidence as to whether a person of ordinary skill would understand the ’261 Application to disclose the use of pacing (in addition to pretreatment pulses) through an electrode with the claimed positioning. At this stage of the proceeding, we determine that Petitioner has shown a reasonable likelihood of prevailing on its assertion that the patentee was not in possession of the claimed configuration of electrodes at the time of the filing of the ’261 Application. As such, Petitioner has demonstrated a reasonable likelihood of prevailing on its related assertion that the claims of the ’563 patent cannot benefit from the priority from the ’261 Application. Thus, Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that KenKnight ’967 is prior art to the ’563 patent.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner
“Application (from .01 or .05 to 1 or 2 Joules) is greater than the value of a typical pacing pulse (0.000025 Joules). See Pet. 12; Ex. 1006 ¶¶ 132–133; compare Ex. 1002, 12:29–31, with Ex. 1006 ¶ 66). We credit Dr. Benditt’s testimony that the smallest disclosed energy for the auxiliary pulse in the ’261 Application is about ten thousand times stronger than a pacing pulse, and a person of ordinary skill in the art would understand that such a pulse does not correspond to a pacing pulse. Id. Based on this difference, and based on our claim construction, we conclude that Petitioner has established a reasonable likelihood that the “auxiliary” pulses disclosed in the ’261 Application are not antitachycardia pacing energies, and do not otherwise qualify as antitachycardia pacing. Patent Owner, nevertheless, asserts that the ’261 Application states the intent to treat ventricular tachycardia (see supra), i.e., “[t]he present invention may be used to treat all forms of cardiac tachyarrythmias, including ventricular fibrillation, with defibrillation (including cardioversion) shocks or pulses.” See Opposition 3 (quoting Ex. 1002, 7:4– 9). However, the intent to treat ventricular tachycardia by itself is not enough because the claims require antitachycardia pacing as the treatment for tachycardia. In this regard, Petitioner correctly observes that the disclosure of the ’261 Application describes in large part defibrillation in combination with cardioversion shocks, including in the above passage relied on by Patent Owner. In other words, the above passage discloses defibrillation and cardioversion but does not necessarily include pacing.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“D. Anticipation by KenKnight ’967 1. Claims 1, 3–7, 9–14, and 16–20 Relying on the Declaration of Dr. Benditt, Petitioner sets forth argument and evidence as to how KenKnight ’967 would anticipate each element of claims 1, 3–7, 9–14, and 16–20. Pet. 25–48. Patent Owner does not appear to dispute in its Preliminary Response that KenKnight ’967, if prior art, would anticipate claims 1, 3–7, 9–14, and 16–20. As above, we determine that there is a reasonable likelihood that KenKnight ’967 is prior art to the ’563 patent. Further, based on our own independent review of KenKnight ’967, we determine that Petitioner has shown a reasonable likelihood of prevailing on its assertion that KenKnight ’967 would anticipate claims 1, 3–7, 9–14, and 16–20.4” slip op. at 11
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,266,563
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.