- L’Oréal USA, Inc. v. Liqwd, Inc.Some claims unpatentablePTAB · Jul 30, 2019 · PGR2018-00025 · APJ Timothy G Majors · PGR · Final written decision
Claims 1–13, 19–23, 29, and 30 are unpatentable as obvious; claims 14–16, 18, and 24–28 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“combination of Pratt and Tanabe teaches or suggests all of claim 1’s limitations, and that the skilled artisan had a sufficient reason to combine the art as proposed with a reasonable expectation of success in arriving at the bleaching method that is claimed. Before reaching a conclusion of obviousness, however, we consider the parties’ argument and evidence related to alleged objective indicia of nonobviousness. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).” slip op. at 35
- ExcludeMotion to exclude, deniedMixed
“those exhibits) as discussed above in the context for which they were offered (objective indicia of nonobviousness as to alleged unexpected results and industry skepticism). We gave the exhibits little weight on those issues for the reasons explained, and ultimately found in Petitioner’s favor—that objective indicia of nonobviousness did not outweigh the evidence of obviousness on this record. Thus, excluding this evidence would not change the result. Accordingly, we dismiss Petitioner’s motion to exclude Exhibits 2038 and 2041 as moot.” slip op. at 85
Patent outcomesUS 9,668,954 mixed§ 103 obviousnesscites KSRPatents in suitUS 9,668,954 - Pharmacosmos A/S v. Luitpold Pharmaceuticals, Inc.Some claims unpatentablePTAB · Jan 4, 2017 · IPR2015-01490 · APJ Lora M Green · IPR · Final written decision
Claims 1–3, 10–15, 23, 25, 27, 30, and 41–43 are unpatentable; claims 17 and 47 were not shown unpatentable; claims 28 and 29 were cancelled.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“based on the complex as a whole, rather than just the carbohydrate component, as Fishbane related to iron dextran complexes. Reply 10. We agree with Petitioner that the language of the term “substantially non-immunogenic carbohydrate component” itself only requires an assessment of the immunogenicity of the carbohydrate component, and disagree with Patent Owner that the claims require an assessment of the immunogenicity of the iron carbohydrate complex as a whole. In that regard, we note that the Specification of the ’702 patent supports our construction that the “substantially non-immunogenic carbohydrate component” is limited to the carbohydrate component as opposed to the iron carbohydrate complex as a whole. Specifically, the Specification teaches in the background section that previously available iron dextran products suffered from a “high incidence of anaphylactoid reactions . . . believed to be caused by the formation of antibodies to the dextran moiety,” while “[o]ther parenteral iron products (e.g., iron sucrose and iron gluconate) do not contain the dextran moiety, and the incidence of anaphylaxis with these products is markedly lower.” Ex. 1001, 1:53–57; see also id. at 11:3‒4 (“non-immunogenic carbohydrate component; no cross reactivity with anti-dextran antibodies”). Moreover, the language of independent claim 1 itself does not require a non-immunogenic complex, but only specifies that the “iron carbohydrate complex has a substantially non-immunogenic carbohydrate component.” Moreover, we decline to limit the term “substantially non- immunogenic carbohydrate complex” to require an incidence level of lower than 0.6%. Rather, what is supported by the claim language and the Specification is a low risk such that the incidence of adverse events of the carbohydrate complex is lower than dextran. See, e.g., Tr. 53‒54 (counsel for Patent Owner acknowledging that Fishbane was not incorporated by reference, and that it was only cited as a “see generally”).” slip op. at 10
- Skill levelOther
“We do not find a significant different between the requirements for the ordinary artisan proposed by Petitioner and Patent Owner. We agree with Petitioner (Pet. 14) that the best evidence of the level of skill in the art are the references themselves, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001), and, thus, we need not explicitly adopt either Petitioner’s or Patent Owner’s characterization of the level of skill in the art. Moreover, we note that the result of the analysis regarding the patentability of the claims would be the same under the requirements for the ordinary artisan proposed by either Petitioner or Patent Owner.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInherency foundUnpatentable
“Petition (Pet. 22–27), we find that Petitioner has demonstrated by a preponderance of the evidence that Geisser teaches all the limitations of claim 1, either inherently or explicitly. That is, we agree with Petitioner that Geisser teaches a method of treating a disease characterized by an iron deficiency, specifically iron deficiency anemia (Pet. 23; Ex. 1003, Abstract, 1:4‒7, 2:4‒7, 9:30‒31). We further agree that Geisser teaches a method of administering an iron carbohydrate complex, that is, iron carboxymaltose, in a single dosage form of at least 0.6 grams of elemental iron, as Geisser teaches administering iron carbohydrate complexes as a single dose of 500‒ 1000 mg of iron. Pet. 23 (citing Ex. 1003, 1:26‒4:1, 8:7-10, 10:14‒17). In that regard, we credit the testimony of Dr. Linhardt that Geiser discloses iron carboxymaltose, and that Geisser describes a general synthetic method that is nearly identical to the method described in the ʼ702 patent. Ex. 1005 ¶¶ 8‒10, 13. In addition, as Geisser teaches one of the iron carbohydrate complexes explicitly recited by claim 1, that is, iron carboxymaltose, it would inherently meet the limitation that the carbohydrate component is substantially non-immunogenic and would have substantially no cross-reactivity with anti-dextran antibodies. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“Products of identical chemical composition can not have mutually exclusive properties.”). The teachings of Geisser support that finding, as Geisser specifically teaches that the complexes have low toxicity and a reduced danger of anaphylactic shock. Pet. 23 (citing Ex. 1003, 1:26‒ 2:1, 8:7‒10); see also Ex. 1001, 12:12‒14 (noting that as “[t]he iron carboxymaltose complex (e.g., VIT-45) generally does not contain dextran and [it] does not react with dextran antibodies.”).” slip op. at 18
Patent outcomesUS 7,754,702 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,754,702 - Norman International, Inc v. Andrew J. Testamentary Trust, Russell L. Hinkley, Sr. (Co-Trustee), And Robert F. Miller (Co-Trustee)Some claims unpatentablePTAB · Jun 18, 2015 · IPR2014-00283 · APJ Toni R Scheiner · IPR · Final written decision
Claim 17 is unpatentable as anticipated by Tachikawa; Petitioner did not prove claim 26 obvious over Tachikawa and Todd because it did not explain how to combine the references.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In each instance, the specification of the ’192 patent uses the term “inertia” in the context of a window cover system that maintains the window cover at a desired position. We determine that the construction of “inertia” offered by Petitioner is consistent with the use of the word in the specification, and would be understood by one of ordinary skill in the art to mean: “a property of matter whereby it remains at rest or continues in uniform motion unless acted upon by some outside force.” Pet. 15. Moreover, as inertia is itself an attribute, or property, of matter, we determine that the word “inherent” does not contribute any additional meaning to the term, or change the way it would be understood by one of ordinary skill in the art.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“of Tachikawa’s spring drive for maintaining the position of the cover at different roll-up or roll-down positions.” Pet. Reply 3. In other words, Tachikawa’s spring drive, operating as a constituent element of the window covering system, functions to maintain the window cover at a desired position unless the system is acted on by some outside force. This finding is supported by substantial evidence. Specifically, as noted in the Petition, Tachikawa’s spring 17 constantly generates a torque in the opposite direction and identical to the torque on an operating shaft due to the load of the blinds acting upon the operating shaft, “which has the effect that the force for manipulating the operating shaft in order to perform roll-up and roll-down of the blinds can be a small constant force regardless of the position of the blinds” (Pet. 29; Ex. 1002, 209). Tachikawa teaches that this also has the effect that “the blinds do not fall spontaneously due to the weight of the blinds if roll-up is stopped mid-way, but are rather stopped at that position by the spring torque.” Ex. 1002, 209. We credit the testimony of Petitioner’s witness, Mr. Carlson, that “there are three factors that cause the blinds to ‘stop at the midway position’ (i.e. maintain the position of the cover): 1) the spring torque described above, 2) the inherent inertia necessarily present in all mechanical systems, and 3) the friction that is also inherently present in mechanical systems.” Ex. 1017 ¶ 35.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“conclude that Petitioner has failed to prove by a preponderance of the evidence that the window cover system of claim 26 would have been obvious over Tachikawa and Todd. Petitioner points to elements of both references, maps them to elements of claim 26, and argues that it would have been obvious to modify Tachikawa’s window cover system with a plurality of spring drives “depending on the weight and size of a window cover.” Pet. 31–36. Even if we consider this latter argument to be an adequate reason for combining the elements of the references, Petitioner does not explain how one of ordinary skill in the art would go about combining the elements, or what modifications one of ordinary skill in the art necessarily would have made in order to combine the elements. Nor does Petitioner—in the Petition—point to evidence establishing that modifying Tachikawa to have a plurality of spring drives would have been routine for one of ordinary skill in the art. What is missing from the Petition is explicit, “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d at 988; KSR, 550 U.S. at 418.” slip op. at 24
- ExcludeMotion to exclude, deniedMixed
“Patent Owner submitted during prosecution of a related application. Tr. 7:4– 17, 24:6–11. Nevertheless, we agree with Patent Owner that § 42.61(b) “does not obviate the requirement of an affidavit attesting to the accuracy of a foreign document under § 42.63(b).” Paper 45 (Reply to Petitioner’s Opposition to the Motion to Exclude Evidence), 2. Considering the totality of the circumstances, we concluded, as discussed during the oral hearing, that it would be appropriate, in this instance, to waive our rules to the extent we would allow Petitioner, within five days from the date of the oral argument, “to submit an affidavit attesting to the accuracy of the translation that was previously submitted” (Tr. 8:2–3), with the proviso that the affidavit “meet the requirement[s] of our rules,” specifically “[42 C.F.R. §§] 42.63, 42.2, and also 1.68” (id. at 8:2–5). Petitioner complied in a timely manner (Paper 50; Ex. 1021). Accordingly, Patent Owner’s Motion to Exclude is denied with respect to Exhibit 1002, and we shall admit and rely on the exhibit.” slip op. at 13
Patent outcomesUS 6,283,192 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,283,192
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.