- Collegium Pharmaceutical, Inc. v. Purdue Pharma L.P., Purdue Pharmaceuticals L.P., And The P.F. Laboratories Inc.All claims unpatentablePTAB · Nov 19, 2021 · PGR2018-00048 · APJ Devon Zastrow Newman · PGR · Final written decision
Claims 1–17 are unpatentable for lack of written description and anticipation by the ’943 Publication; indefiniteness and lack of enablement were not shown.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“We are not persuaded that exclusion of the cited portions of Dr. Chambliss’ testimony or Exhibits 1073, 1074, 1075, 1082, 1083, 1084, 1085, 1086, 1088, and 1090 is warranted. While the parties disagree on the merits of Dr. Chambliss’ testimony as to whether PGGs were known to be gelling agents by persons of ordinary skill in the art at the time of the Priority Applications, Patent Owner does not persuade us that Dr. Chambliss fails to support his testimony with any reasonable logical or scientific basis. The exhibits that Patent Owner seeks to exclude, which include a patent, technical references, and a journal article, are relevant to the inquiry Dr. Chambliss performed in forming his opinion. We therefore do not see a basis for exclusion under FRE 702/703 or 37 C.F.R. § 42.64(c). Moreover, we find this evidence both admissible and relevant as it concerns a fundamental issue for our patentability analysis. Thus, we decline to exclude the evidence under FRE 401 or 402.” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“would have possessed “a degree in one or more fields of medicine, chemical engineering, chemistry, pharmaceutical science, and/or pharmacology and a number of years of industry training or experience in one or more of those fields.” Pet. 21 (citing Ex. 1002 ¶ 82). Petitioner further proposes that “[i]f the degree is a Ph.D[.], then the required industry experience need not be significant, e.g., two years or more, but if the technical degree is a B.S. or M.S., then the industry experience would be more significant, e.g., five years or more.” Id. We preliminarily adopted Petitioner’s definition of a POSA’s skill level in our Institution Decision as it was undisputed at the time and consistent with the evidence of record. Inst. Dec. 7–8. Neither Patent Owner nor Petitioner addresses the level of ordinary skill in the art in the post-institution briefing. We continue to adopt Petitioner’s proposed skill level for a POSA herein and have also taken into account the level of skill reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Applying this level of skill, we find that Dr. Chambliss and Dr. Constantinides are qualified to provide opinions as to the perspective and knowledge of a POSA. See Ex. 1002 ¶¶ 81–83; Ex. 2030 ¶¶ 58–63.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Patent Owner that the challenged claims recite methods of making formulations using recited features and ingredients. In addition, as we stated in our Decision on Institution, “[t]he claims define abuse deterrence in terms of when the dosage form is ‘subjected to t[a]mpering comprising heating at a temperature greater than about 45° C.’” Inst. Dec. 19 (quoting Ex. 1001, 41:50–52). Additionally, the claims and specification identify specific ingredients that can purportedly help achieve this abuse deterrence functionality. Id. Given these conclusions, further construction of “abuse deterrent,” which both parties generally agree relates to methods of making the drug dosage form less likely to be abused, is not necessary to resolve the issues before us.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateUnpatentable
“Notwithstanding these individual teachings, we find that the specification fails to demonstrate that the inventors of the ’961 patent possessed a dosage form comprising a combination of the recited components that also satisfied the recited functionality. We are persuaded that the specification fails to provide sufficient guidance that would have led the POSA to create the recited dosage form. See Fujikawan 93 F.3d at 1571; In re Ruschig, 379 F.2d 990, 995 (CCPA 1967). Rather, “one is left to select[] from the myriads of possibilities encompassed by the broad disclosure, with no guide indicating or directing that this particular selection should be made rather than any of the many others which could also be made.” Ruschig, 379 F.2d at 995.” slip op. at 34
Patent outcomesUS 9,693,961 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites NautilusPatents in suitUS 9,693,961 - Medivators Inc. v. Arc Medical Design LimitedInstitution deniedPTAB · Sep 17, 2021 · IPR2021-00707 · APJ John G New · IPR · Institution
The Board denied institution on both obviousness grounds because the cited art did not teach or suggest the claimed projecting elements extending beyond the cover and medical scoping device.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review to be instituted unless … 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.” Upon consideration of the Petition and Preliminary Response, Petitioner’s Reply (Paper 13), Patent Owner’s Sur-Reply (Paper 14), and the evidence of record, we determine that the evidence presented fails to demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’142 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentable
“In sum, Hitoshi teaches that the situation depicted in Figure 21, in which the fin-shaped projections are deflected so as to “point towards a distal end of the cover,” as recited in claim 1, is one to be avoided because “during a pulling operation the effect of the aforementioned endoscope insertion assistance tool 3 in pressing on the intestinal wall would be lost and, furthermore, even in the case of insertion by a pressing-in operation, ease of insertion would deteriorate, due to increase in diameter of the insertion portion.” Hitoshi ¶ 78. We conclude that a person of ordinary skill in the art would consequently be “discouraged from following the path set out in the reference.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As such, we conclude that Hitoshi teaches away from the third position in which: [O]ne or more of the tips of the projecting elements of the distal ring point towards a distal end of the cover, and wherein, when coupled to the medical device shaft and in the third position, the one or more of the tips of the projecting element are sized and configured to extend distally further than the distal end of the cover and the distal end of the medical scoping device shaft,” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“With respect to the teachings of Reydel as supporting this limitation, we find Petitioner’s argument to be almost entirely devoid of any factual basis in the evidentiary record. Nowhere does Reydel expressly teach that the apparently hair-like protrusions of its surface film are capable of extending distally further than the distal end of the cover and the distal end of the medical scoping device to facilitate withdrawal of the medical scoping device. Indeed, Figures 15–18 appear to demonstrate that the textured coating is such that the projections imparting the directionally-dependent frictional properties are not long enough to project distally past the end of either the cover or the medical scoping device, but serve only to create a bidirectional coefficient for the device. Moreover, Patent Owner’s argument that that Reydel’s teaching that “the different bidirectional coefficient of friction which impedes the spontaneous withdrawal of the device and/or instrument is not extreme enough to traumatize the canal walls, and therefore egress is not significantly more uncomfortable than with conventionally surfaced devices and/or instruments” (see Pet. 69), somehow teaches that the projections of the bidirectional coating are capable of extending distally beyond the end of the cover or the scoping device, is similarly without factual basis. To the contrary, Reydel teaches that: The patient’s comfort is also an objective of this invention, which is enhanced by simpler and less traumatic ingress methods. The different bidirectional coefficient of friction which impedes the spontaneous withdrawal of the device and/or instrument is not extreme enough to traumatize the canal walls, and therefore egress is not significantly more uncomfortable than with conventionally surfaced devices and/or instruments. Ex. 1006, 8. The plain language of this passage states merely that, due to the properties of the instrument cover, there are different coefficients of friction for distal and proximal movement of the endoscope, but that the difference between the frictional coefficients is not so great as to damage or traumatize the walls of the colon. Petitioner’s contention that this is caused by forward deflection of the projections of the cover in the distal direction, such that they extend beyond the end of the cover or of the scoping device, is mere conjecture and attorney argument to which we accord little probative weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). In short, we conclude that Petitioner has failed to meet the burden of demonstrating a reasonable likelihood of prevailing at trial because neither Reydel nor Hitoshi teaches or suggests the limitations of claim 1 reciting “the projecting elements deflect so that the tips of the projecting elements extend distally further than the distal end of the cover and the distal end of the medical scoping device to facilitate withdrawal of the medical scoping device.”” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the field of the ‘142 patent would be “a physician specializing in gastroenterology or a GI surgeon having an interest in colonoscopy or bowel cancer prevention. The POSA may be such a person working with members of a development team for devices to be used with colonoscopes.” Pet. 16 (citing Ex. 1001 ¶ 17). Patent Owner does not contest this definition in its Preliminary Response, and we consequently adopt Petitioner’s definition for the purposes of this Decision.” slip op. at 10
§ 103 obviousnesscites PhillipsPatents in suitUS 9,808,142 - Medivators Inc. v. Arc Medical Design LimitedInstitution deniedPTAB · Sep 17, 2021 · IPR2021-00706 · APJ John G New · IPR · Institution
The Board denied institution on all grounds because Hitoshi teaches away from the claimed distal projection position, and Axon and Reydel do not overcome that teaching.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review to be instituted unless … 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.” Upon consideration of the Petition and Preliminary Response, Petitioner’s Reply, and Patent Owner’s Sur-Reply, and the evidence of record, we determine that the evidence presented fails to demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’103 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away found
“In sum, Hitoshi teaches that the situation depicted in Figure 21, in which the fin-shaped projections are deflected so as to “point towards a distal end of the cover,” as recited in claim 1, is one to be avoided because “during a pulling operation the effect of the aforementioned endoscope insertion assistance tool 3 in pressing on the intestinal wall would be lost and, furthermore, even in the case of insertion by a pressing-in operation, ease of insertion would deteriorate, due to increase in diameter of the insertion portion.” Hitoshi ¶ 78. We conclude that a person of ordinary skill in the art would consequently be “discouraged from following the path set out in the reference.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As such, we conclude that Hitoshi teaches away from the third position in which: [O]ne or more of the tips of the projecting elements of the distal ring point towards a distal end of the cover, and wherein, when coupled to the medical device shaft and in the third position, the one or more of the tips of the projecting element are sized and configured to extend distally further than the distal end of the cover and the distal end of the medical scoping device shaft, as recited in claim 1.” slip op. at 23
- Expert testimonyPetitioner expert discountedOther
“The testimony of Petitioner’s Declarant, Dr. East, fails to squarely address this teaching away by Hitoshi. Dr. East attests merely that “Hitoshi discloses an embodiment where the tips of the projecting elements extend distally further than the distal end of the endoscope cover in Figure 21, extending past projection 26” and that: A POSA would immediately envisage that the hood of Hitoshi is adapted for one or more of the tips of the projecting elements to be sized and configured to extend distally further than the distal end of the cover and endoscope given the Figures and disclosure. … A POSA viewing Figures 7 and 8 would understand that given the disclosed length and flexibility of the projecting elements 32 of the hood, as well as the teaching of positioning the projecting elements in any position along the endoscope cover, the device of Hitoshi could readily be adapted such that at least some of the projecting elements 32 of the distal ring extend further distally than the end of hood 31 and the distal end of the medical scoping device 21. East Decl. ¶¶ 182–183. Dr. East does not mention that Hitoshi teaches that the situation depicted in Figure 21, in which the fin-like projections are deflected to point distally, is a situation that Hitoshi expressly warns is to be avoided, and to which Hitoshi teaches preventative structural elements. See Hitoshi ¶ 80. Nor does Petitioner, or Dr. East, point to any teaching in Axon that would negate this teaching away in Hitoshi.” slip op. at 24
§ 103 obviousnesscites PhillipsPatents in suitUS 10,722,103 - BJ Energy Solutions, LLC v. Yantai Jereh Petroleum Equipment & Technologies Co., Ltd.Institution deniedPTAB · Sep 7, 2021 · PGR2021-00060 · APJ Ryan H Flax · PGR · Institution
The Board denied institution because the petition did not show claims 1–7 likely unpatentable, and a possible § 112(a) issue for claims 8–9 did not justify instituting on all claims and grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not demonstrated with particularity that it is more likely than not that most claims challenged in the petition are unpatentable under the asserted grounds. Although there is a reasonable argument that claims 8 and 9 may be unpatentable under 35 U.S.C. § 112(a), as discussed above, this analysis is applicable to only these two dependent claims under a single ground for unpatentability, leaving Petitioner’s other ten grounds insufficient regarding independent claim 1 and dependent claims 2–7. As discussed above, instituting trial under these circumstances would not be an efficient use of the Board’s or the parties’ time and resources. See Chevron, IPR2018- 00923, Paper 9, 10–11; Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 41–43 (PTAB Jan. 24, 2019) (informative). Our decision at this stage derives from our review of the record presented. In accordance with the Court’s decision in SAS (138 S. Ct. at 1359– 60) and Office guidance, we deny institution of a post-grant review of the challenged claims of the ’631 patent on any grounds alleged by Petitioner. This decision does not reflect a final determination on the patentability of any claim.” slip op. at 66
- Other 314aInstitution denied discretionary otherInstitution denied
“Even when a petitioner satisfies the minimum statutory institution standard (e.g., demonstrating a reasonable likelihood of prevailing with respect to one or more claims in an inter partes review or that it is more likely than not that at least one claim is unpatentable in a post-grant review), institution of review remains discretionary. SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.”). Under such circumstances, the Board takes into account other considerations, including efficiency and fundamental fairness for all parties. See Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative); see also Consolidated Trial Practice Guide, 84 FR 64280, 53– 63 (2019) (addressing various considerations at institution phase, including efficiency and fundamental fairness for all parties).1 We conclude that Petitioner has not demonstrated in the petition that it is more likely than not that challenged claims 1–7 are unpatentable under any asserted grounds for unpatentability. Although it is a closer question as to whether Petitioner has demonstrated it is more likely than not that dependent claims 8 and 9 are unpatentable based on a single asserted unpatentability ground under § 112, we determine based on the record here that instituting a trial with respect to all challenged claims under all eleven asserted grounds for unpatentability is not an efficient use of the Board’s or the parties’ time and resources. Therefore, we do not institute post-grant review pursuant to 35 U.S.C. § 324. See SAS, 138 S. Ct. at 1359–60 (requiring institution on all claims, if any); see also Consolidated Trial Practice Guide, 55 (providing guidance in view of SAS).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“to read the concept of “flush with” into the claims. We agree with Petitioner’s position that such an interpretation is not supported by the ’631 patent’s written description, which illustrates and describes two embodiments, each having a turbine engine and reduction gearbox configured to be flush with one another, but refers to only the configuration of Embodiment 1 as being “directly connected” and refers to the configuration of Embodiment 2 as being merely “connected.” See Ex. 1001, 5:27–28, 5:62–6:2, Figs. 2, 3; see also Ex. 2001 ¶ 63 (Patent Owner’s expert witness confirming there is a difference between merely “connected” and “directly connected”). Thus, the intrinsic record supports a conclusion that the concept of “directly connected” is not related to whether one component is “flush with” another component. This disclosure of the ’631 patent also illuminates the meaning of “directly connected.” As shown in Embodiment 2, something may be connected with another thing even if there are intervening components, e.g., a transmission shaft or coupling; however, as shown in Embodiment 1, the ’631 patent uses the term “directly connected” only where no such intervening components are disclosed. Ex. 1001, 5:15– 6:19, Figs. 2, 3. Besides the guidance provided with respect to the embodiments discussed above, the ’631 patent does not otherwise expressly define the term “directly connected.” See generally Ex. 1001. Thus, we consider what the ordinarily skilled artisan would consider to be its ordinary and customary meaning. In this respect, Patent Owner also uses the word “uninterrupted” to describe “directly connected.” See Prelim. Resp. 6; see also Ex. 2001 ¶¶ 61–71. We conclude based on this record that the concept of “uninterrupted” is more apt than the concept of “flush with,” and find it to be a better description for the ordinary and customary meaning of “directly connected.” For example, the ’631 patent describes, in Embodiment 1, “the turbine engine 19 is connected to the plunger pump 18.” Ex. 1001, 5:26–27 (emphasis added). However, it is without question that Embodiment 1 positions a reduction gearbox between the turbine engine and plunger pump; thus, the engine and pump may be connected, but they are not directly connected. See, e.g., Fig. 2. On the other hand, regarding this same Embodiment 1, the ’631 patent describes that “the turbine engine 19 is directly connected to an input end of the reduction gearbox 24,” and there are no components illustrated or described as being between the turbine engine and reduction gearbox. Id. at 5:28–30 (emphasis added), Fig. 3. The connection between the turbine engine and reduction gearbox shown in Embodiment 1 is more aptly described as being uninterrupted. Thus, this illuminates the meaning of “directly connected.” In view of the above, we ascribe to the term “directly connected” its ordinary and customary meaning as it would have been understood by a person of ordinary skill in the art, and we find that ordinary and customary meaning to require that the turbine engine and reduction gearbox are connected with nothing intervening there-between so that their connection is uninterrupted.” slip op. at 29
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s evidence shows that the Apollo 1 apparatus has two gearboxes and a clutch between its turbine engine and plunger pump, thus the Apollo 1 does not meet the claim limitation “the plunger pump is a plunger pump integrated with a reduction gearbox, the turbine engine is directly connected to an input end of the reduction gearbox integrated on the plunger pump.” Ex. 1001, 6:51–54. Petitioner’s Exhibit 1017 is explained by Mr. Zhang11 as having these two gearboxes and clutch, where at least one of the gearboxes and the clutch forecloses the system from having a single reduction gearbox that is both integrated on a pump and directly connected to a turbine engine. Ex. 2010 ¶¶ 8–12. Petitioner presents no evidence contradicting Mr. Zhang’s understanding of the Apollo 1 configuration and, notably never attempted to explain exactly what is shown in the above-reproduced photograph from its own Exhibit 1017, even when given the opportunity to address Mr. Zhang’s testimony in its Reply. See generally Reply.” slip op. at 50
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 10,865,631 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01603 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource’s rehearing request, finding no overlooked or misapprehended arguments or evidence that warranted changing the final written decision on claims 1–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- BurdenNot shown unpatentable
“In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 5–6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“The Petition discusses Grounds I and II on pages 27–30 of the Petition. Ground I challenges the patentability of claims 1–20 as anticipated by Christopher and Ground II challenges the patentability of claims 1–20 as anticipated and/or obvious over Christopher. Reading pages 27–30 it is plainly evident that it is focused on making the case that Christopher discloses all that is claimed. It is devoid of any reasoning with respect to the obviousness of the claims over Christopher. The Graham factors are not addressed. See Graham v. John Deere Co., 383 U.S. 1 (1966). The differences between the claimed invention and Christopher are not identified and no rationale as to why one of ordinary skill would have been led to modify Christopher to reach the claimed subject matter is provided. Rather, the entire discussion goes to explaining why, in fact, Christopher discloses all that is claimed. The Board was consistent with that position. Petitioner cites page 12–14 of the Reply as evidence that an obviousness challenge was presented. We disagree. The Reply does not add anything significant to the obviousness challenge presented in the Petition. The Reply is likewise devoid of any reasoning with respect to the obviousness of the claims over Christopher. It repeats that “Christopher teaches using air oxidation and pH modification to selectively precipitate silica, iron, and other heavy metals from a Salton Sea geothermal brine” (Reply 13, emphasis added), where “a POSITA could readily ‘tune’ these parameters to produce the desired results if such were not obtained immediately.” Id. The Board addressed that argument. See Dec. 17.” slip op. at 14
- Expert testimonyOther
“Petitioner cites footnote 3 [sic. 1] in the Petition but it merely states “mg/kg=(g/L*1000)/1.18kg/L due to the density of Salton Sea geothermal brines.” There is no evidence cited to support it. Petitioner cites “Reply, 3; Ex. 2025, 337:5-9” and “337:5-13” (Req. 6) but the Reply does not cite to those lines in Dr. Gallup’s Declaration. See Pet. Reply 3 (“Ex. 2025, 336:3-5-337:2”). We were unable to locate these lines of testimony in the Reply. The Board could not have misapprehended or overlooked evidence demonstrating Petitioner’s 1.18 kg/L density that was not before it.” slip op. at 11
§ 103 obviousnesscites GrahamPatents in suitUS 9,644,126 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01602 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource Minerals’ rehearing request, leaving undisturbed the final written decision that claims 1–18 were not shown unpatentable on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“to ppm by weight” (Req. 8) was not before us, therefore, we could not have overlooked it. Nevertheless, even if we take account of this new argument, the discussion on page 4 of the Reply does not support Petitioner’s position that one ordinary skill in the art reading Christopher would have no other choice but to understand “1.0” “PPM” (Ex. 1006, 42) to mean parts–per– weight. This is so because Petitioner concedes that “ppm can generally be reported as either by weight or by volume.” Req. 8. This is consistent with Dr. Gallup’s testimony. See Dec. 18: According to Patent Owner, “Dr. Gallup explained [that] ppm may be reported as ppm by weight or ppm by volume. (Ex. 2025, 119:16-25; Ex. 2002, ¶64).” Id. [PO Resp. 20] Because we are directed to no evidence contradicting it, we credit Dr. Gallup’s testimony that ppm can be reported by weight or by volume. Given this, one of ordinary skill in the art reading that iron is at a concentration of “1.0 ppm” for stream 3 in Figure 20 may understand it to refer to ppm by volume. Notwithstanding the discussion on page 4 of the Reply that the “general convention” for ppm is that it is weight based, the evidence before us showed, as Petitioner concedes, that ppm can “generally be reported” (Req. 8) by weight or volume. Thus, as we determined, it is possible that one of ordinary skill in the art may understand “ppm” in Figure 20 to “refer to ppm by volume” (Dec. 18).” slip op. at 12
- Strike new argumentNew argument disregardedOther
“Regarding Petitioner’s assertion that “[d]uring these proceedings, Petitioner has submitted that when Christopher reduces silica, it necessarily also reduces the elemental components of silicon (Si) and oxygen (O2)” (Req. Sur–Reply 1), this is not a position that Petitioner had previously taken. Rather, Petitioner’s position was only that “Christopher states the silica concentration is reduced.” Pet. 23; cf. Pet. Reply 8–9. A rehearing request is not an opportunity to raise new arguments. We could not have overlooked or misapprehended an argument not raised prior to our decision.” slip op. at 6
- BurdenNot shown unpatentable
“brine (Pet. 22; Dec. 7), Petitioner had to show that “the brine of Table 1 must ‘have been processed such that the concentration of at least one metal or elemental component has been reduced in the brine.’ Ex. 1001, 7:18–21.” Dec. 9 (emphasis added). As noted in our Decision: In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
NonePatents in suitUS 9,650,555 - Neumodx Molecular, Inc. v. Handylab, Inc.Rehearing grantedPTAB · Aug 6, 2021 · IPR2020-01133 · APJ Jo-Anne M Kokoski · IPR · Rehearing
Granted Petitioner’s rehearing request and instituted review of claims 1–15 on all asserted grounds because the Petition showed a reasonable likelihood of unpatentability.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Rehearing Request and conclude that we misapprehended the law of incorporation by reference when evaluating the grounds based on Ganesan- Publ’424, and that the Petition sets forth sufficient grounds and evidence to justify institution of trial.8 We, therefore, grant Petitioner’s Rehearing 8 Because our determination that we misapprehended the law of incorporation by reference is dispositive, we need not address Petitioner’s other arguments in the Rehearing Request. Request and institute an inter partes review of claims 1–15 of the ’103 patent on all the grounds asserted in the Petition.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“‘generally incorporates’ Ganesan-Prov’264, and did not ‘identif[y] with particularity’ any specific subject matter from Ganesan-Prov’264 . . . misapprehended the law of incorporation by reference in a way that is contrary to both Federal Circuit precedent and other Board decisions.” Req. Reh’g 10 (citing Dec. 18; Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)). In particular, Petitioner argues that Advanced Display’s statement that “[t]o incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents” (212 F.3d at 1282) does not mean that the host document must identify some specific subject matter or subpart of the incorporated document (such as by page/line). Rather, the quoted statement simply means that the host document must clearly identify what is being incorporated and where it can be found—even when the incorporation applies to the entire document.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“with sufficient particularity such that the entirety of Ganesan-Prov’264 is incorporated therein, and Ganesan-Prov’264 forms a part of Ganesan- Publ’424 for purposes of anticipation. Ganesan-Prov’264 “relates generally to techniques for thermal control of microfluidic devices.” Ex. 1208, 2:29– 30. Ganesan-Prov’264 teaches that “heater/sensors in accordance with the invention may be integral with a microfluidic device or separate from a microfluidic device,” and “may be formed separately from the microfluidic device.” Id. at 12:16–21 (emphases added). Ganesan-Prov’264 further teaches that “one or more heater/sensors may be formed as part of a device configured to operatively receive a microfluidic device,” and “[t]he device may include one or more heater sensors positioned to be in thermal contact with portions of the operatively received microfluidic device.” Id. at 12:21– 26. Based on these teachings, Petitioner’s declarant, Dr. Mark Burns, testifies that “the heater array of Ganesan-Publ’424 may be formed integrally with the network-containing microfluidic substrate, or may be formed separately in a testing device into which the microfluidic substrate is placed or another part of the system.” Ex. 1101 ¶ 345 (citing Ex. 1109 ¶ 79; Ex. 1208, 12:20–25).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“to begin on April 11, 2022. Prelim. Resp. 45. We note, however, that the parties recently filed a Stipulation and Proposed Order to Extend Case Schedule, pushing the trial to December 2022, which the district court granted. Ex. 3001. Given the statutory deadlines, our latest possible date for issuance of a final written decision in this proceeding is in July, 2022, one year after we issue this decision instituting an inter partes review. 35 U.S.C. §§ 314(c), 316(a)(11); see also 37 C.F.R. § 42.100(c). Thus, our final written decision would issue at least four months before trial. “If the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution under NHK.” Fintiv Order 9. We find that this factor weighs strongly against exercising discretion to deny institution.” slip op. at 12
§ 102 anticipationDiscretionary denialPatents in suitUS 8,415,103 - 10x Genomics, Inc. v. Bio-Rad Laboratories, Inc.Institution deniedPTAB · May 14, 2021 · IPR2021-00132 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Hindson was not prior art; claims 1–26 were entitled to priority and were not shown likely unpatentable.
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 “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). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’115 patent is unpatentable.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“We have considered the parties’ arguments, summarized above, but determine that Patent Owner has the better position. In particular, we are not persuaded by Petitioner’s contentions that the claims fail the written description requirement for the claimed “partitions” because the term “gel beads” are not adequately described. Pet. 19–20. The claims do not recite the term “gel beads”. Ex. 1001, 49:2–50:41. Rather, the claims of the ’115 patent are directed to compositions (claim 1–13) and devices (clam 14–26) having a plurality of second partitions containing first partitions, wherein the second partitions may be droplets (claims 4–6 and 18–20). Id. To the extent that Petitioner contends that the ’115 patent does not provide adequate written description support for those elements of the challenged claims, we disagree. For example, claim 1 recites a composition “comprising a plurality of second partitions containing first partitions” where “first partitions are contained within the second partitions.” Support for those elements is found, for example, in the following portions of the ’115 patent:” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Accordingly, in view of the above, we are not persuaded by Petitioner’s arguments that the claims of the ’115 patent lack written description support and, thus, are not entitled to claim the benefit of priority to the ’121 application. Consequently, we determine that Hindson does not qualify as prior art to the ’115 patent and therefore cannot anticipate the claims of the ’115 patent.” slip op. at 12
§ 102 anticipationPatents in suitUS 10,190,115 - Extrusion Group, LLC / Extrusion Group Services, LLC et al. v. Kimberly-Clark Global Sales, LLCInstitution deniedPTAB · May 12, 2021 · IPR2021-00202 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 5, 7, 9, and 18 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Osswald’s testimony, Petitioner contends that a person of ordinary skill in the art (“POSA”) would have had a Bachelor of Science degree in mechanical engineering, chemical engineering, fluid mechanics, and/or polymer processing or equivalent, and at least two years of practical experience working with dies and other equipment used in polymer processing, such as meltblowing dies, or in lieu of work experience, additional education and/or coursework exposing them to polymer processing and equipment, including meltblowing dies. Pet. 11; Ex. 1002” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For purposes of this proceeding, the parties do not dispute the meaning of any claim term. See Pet. 11–15 (for purposes of this proceeding, Petitioner adopts Patent Owner’s claim construction positions from the related district court litigation); Prelim. Resp. 11–14 (discussing claim construction and not disputing constructions on which Petition is based). Accordingly, we do not need to resolve any claim construction disputes for purposes of this Decision. 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., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of inter partes review).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“passages formed by the first side of the die tip and the first air plate, and (ii) a series of passages are formed by the second side of the die tip and the second air plate. For purposes of this proceeding, the parties agree that “series” means “two or more.” Pet. 14–15 (adopting Patent Owner’s claim construction positions from the related district court litigation, including Patent Owner’s contention that a “series” is “two or more” things); Prelim. Resp. 14.6 6 Patent Owner states: “For the purposes of this IPR proceeding, both parties have agreed that ‘series’ means ‘two or more.’” Prelim. Resp. 14. (citing Pet. 15). Patent Owner directs us to the district court’s claim construction order, which construes “series” as meaning “two or more.” Prelim. Resp. 14; Ex. 2009, 27, 37. The district court relied on dictionary definitions and “normal usage,” for example, in the context of baseball. Ex. 2009, 26–27. We note that the parties’ agreed construction is consistent with the claims of the ’104 Patent, which recite the word “series” in various contexts, including a “series of passages,” a “series of raised portions,” a “series of channels,” a “series of polymer ports,” and a “series of capillaries.” Ex. 1001, 12:19, 12:23, 12:31, 12:33, 12:42, 12:44, 12:64–65, 13:2–3, 13:20–14:1, 14:6, 14:11–13. In each case, the meaning “two or more” is consistent with the claim language. The parties’ agreed construction is also supported by the Specification, which shows and” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,972,104 - PTAB · Mar 4, 2021 · CBM2018-00040 · APJ Christopher G Paulraj · CBM · Rehearing
The Board denied Petitioner’s second rehearing request and left in place its denial of institution because the patent’s CBM review eligibility was not subject to judicial review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing of our denial of institution in this proceeding in light of the Federal Circuit’s decision in SIPCO, LLC v. Emerson Elec. Co., 939 F.3d 1301, 1313 (Fed. Cir. 2019). Paper 19. We also authorized Patent Owner to file an opposition to Petitioner’s second request for rehearing. Paper 20. Subsequently, the Supreme Court granted a petition for certiorari, vacated the Federal Circuit’s first opinion in the SIPCO case, and remanded the case “for further consideration in light of Thryv, Inc. v. Click-to-Call Technologies, LP,” 140 S. Ct. 1367 (2020). On remand, the Federal Circuit determined that the issue of whether a patent qualifies for CBM review is not subject to judicial review. SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 870 (Fed. Cir. 2020). Accordingly, because the circumstances that warranted further reconsideration of our denial of institution no longer hold true, we hereby decline to consider the second request for rehearing. For the foregoing reasons, Petitioner’s second request for rehearing is denied. Our original decision to deny institution based on lack of CBM review eligibility therefore stands.” slip op. at 2
NonePatents in suitUS 6,758,370
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.