- Cimbria Srl v. 3u Vision SrlInstitutedPTAB · Sep 20, 2024 · PGR2024-00018 · APJ Kevin W Cherry · PGR · Institution
The Board instituted PGR on claims 1–15 and all petitioned grounds, finding a reasonable likelihood that claims 1–3, 6, and 10 are obvious over ElMasry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’947 patent is eligible for post-grant review, and has shown it is more likely than not that at least one challenged claim of the ’947 patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’947 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have a B.S. degree in Electrical Engineering, Physics, Chemistry, or an equivalent field, and at least 2-3 years of academic or industry experience in engineering related to optical sorting systems.” Pet. 17 (citing Ex. 1009 ¶ 21). Patent Owner did not file a Preliminary Response to the Petition and, therefore, at this point, does not contest Petitioner’s definition for one of ordinary skill in the art. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’947 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (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)No construction neededNot reached
“Having considered the record, we determine that no express claim construction is necessary for any claim terms for the purposes of rendering a decision to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). At this stage, we find it unnecessary to resolve whether “electronic control unit” and “processing module” should be construed as mean plus function limitations under § 112(f), because it is possible to address the obviousness grounds presented whether or not these limitations are so construed, and even if the claims were indefinite in the manner Petitioner contends. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (noting indefiniteness of a means-plus-function limitation does not always render it impossible to adjudicate a prior-art challenge). We direct the parties to address the construction of these claim terms and Petitioner’s interpretation during trial.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We have reviewed Petitioner evidence and citations and, on the current record, we find that Petitioner has shown that it is more likely than not that ElMasry teaches all the limitations of claim 1, without need for any modification. Thus, we find that Petitioner has shown that it is more likely than not that claim 1 would have been unpatentable as obvious over ElMasry.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,666,947 - PTAB · Sep 18, 2024 · IPR2024-00690 · APJ Matthew S Meyers · IPR · Institution
Instituted IPR of claims 1–28 on all asserted grounds; the Board found a reasonable likelihood that Peter and Neroni render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not 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 [one] of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of all challenged claims on all asserted grounds pursuant to 35 U.S.C. § 314. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–1360 (2018) (requiring institution on all claims, if any); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019) (“Trial Practice Guide”) (providing guidance in view of SAS).1” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of invention. Graham, 383 U.S. at 17. Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Further, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that one of ordinary skill in the art (“POSITA” or “POSA”) would have had a bachelor’s degree in mechanical engineering or a similar field and 2–3 years of experience in fluid dynamics and/or machine design for devices related to fluid dynamics, such as vacuum cleaners. Additional education could offset less experience and vice versa, and a POSA could have also obtained similar knowledge and experience through other means. Pet. 11. At this stage of the proceeding, “Patent Owner does not challenge Petitioners’ proposed definition of a POSITA,” but “reserves the right to provide an alternative definition of a POSITA if IPR is instituted.” Prelim. Resp. 3. On the current record, we determine that Petitioner’s definition of a person of ordinary skill in the art is consistent with the scope and content of the ’550 patent and the asserted prior art, and, at this stage, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Petitioner “do[es] not believe any claim construction is necessary to resolve the parties’ controversy in this Petition, and the claims should be given their plain and ordinary meaning for purposes of this IPR.” Pet. 11. “Patent Owner does not submit any terms for construction,” but “reserves the right to subsequently submit claim terms for construction should the Board institute IPR.” Prelim. Resp. 3. We agree with the parties that, at this stage, no terms require explicit construction to resolve the issues presented by the arguments and evidence of record to reach a decision on institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On the current record, we find that the Petition provides sufficient rationale to modify Peter in view of Neroni. See Pet. 68–73 (citing Ex. 1002 ¶¶ 278–287). For example, Petitioner contends that one of ordinary skill in the art would have been motivated to incorporate Neroni’s teachings of a power cleaning tool adaptor into Peter’s cleaning tool in order to “improve cleaning . . . by agitating the surface being cleaned.” Pet. 71–72 (citing Ex. 1007, 1–2; Ex. 1002 ¶ 285). Petitioner explains that Neroni establishes that “powered cleaning tools were common” in the prior art (id. at 72 (citing Ex. 1011, 1:17–49; Ex. 1002 ¶ 285)), and relying on the declaration testimony of Dr. Giachetti, argues that one of ordinary skill in the art would have “understood the well-known benefits of a powered floor tool and would’ve been motivated to incorporate Neroni’s electrical system into Peter to achieve these benefits” (id. (citing Ex. 1002 ¶ 286). Patent Owner argues that one of ordinary skill in the art would not have been motivated to combine the vacuums taught by Peter and Neroni because they “are directed to different types of vacuum cleaners” and “each [is concerned with] solving different problems with their respective vacuum cleaners.” Prelim. Resp. 19. However, other than pointing out that the vacuum cleaners in Peter and Neroni are different, Patent Owner itself provides conclusory statements, and fails to adequately explain what these differences are, or why they would deter one of ordinary skill in the art from combining the two references with a reasonable expectation of success. Patent Owner does not argue, and we see no reason to believe, that incorporating Neroni’s teachings of a power cleaning tool adaptor into Peter’s cleaning tool is not within the ability of one of skill in the art. See KSR Int’l Co., 550 at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Accordingly, on the current record, we determine that Petitioner has provided sufficient arguments and evidence to support its assertion that one of ordinary skill in the art would have been motivated to combine Peter and Neroni. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,117,550 - Orthocision, Inc. v. PTL Opco LLCNo claims unpatentablePTAB · Sep 18, 2024 · IPR2023-00625 · APJ Ryan H Flax · IPR · Final written decision
Claims 1, 2, 9, and 10 were not shown unpatentable under any asserted § 103 ground because Petitioner did not adequately explain how or why the prior art would be combined.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not specifically address Petitioner’s proposed definition. See generally Resp. Patent Owner’s witness, Dr. Bovinet, uses a slightly different, but not materially so, definition of the ordinarily skilled artisan than Petitioner. See Ex. 2005 ¶ 13. Thus, the parties appear to agree on who the person of ordinary skill in the art would have been in terms of education and field of work experience. We accept and adopt Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’129 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Summary on Claim Construction We maintain our earlier constructions of “open tip” and “releasing means . . . .” See DI 16–24. We determine that no other express construction of any claim term is necessary for purposes of rendering this Decision. See Nidec Motor Corp., 868 F.3d at 1017. Although we maintain here our constructions of “open tip” and “releasing means . . . ,” we do so only for the sake of completeness. These claim constructions, ultimately, are not determinative of the outcome of this proceeding because, regardless of the meaning of any claim term, including these disputed terms, we find that Petitioner fails to adequately explain why any claim would have been obvious under the asserted grounds. We explain this in detail below. C.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Ex. 1001, 6:28–38 (emphasis added). However, the language of claim 1 is very clear on the functionality of the “open tip,” expressly reciting that “the open tip cuts bone tissue away from the sacrum or the ilium.” Id. at 13:19– 20. Thus, the claim language itself provides the required functionality of the “open tip,” and we do not agree with Petitioner that additional functionality relating to where bone tissue might go once cut, as discussed in the Specification, should be read into the claims as a limitation. Patent Owner’s newly proposed interpretation is similar to Petitioner’s in that it requests addition of functionality discussed as an example in the Specification, but not recited in the claim’s expressly recited functional language relating to the “open tip.” We disagree with Patent Owner that the concept of dislodged tissue entering a void defined by the open tip is necessary to understanding the claim element. And, once more, Patent Owner reads too much structure from the written description into the claim language as a limitation because it is not apparent that the recited “open tip” language requires that we further clarify that any interior void defined by the open tip is on the interior of the abrading head, and behind the exterior abrading surfaces, or between interior surfaces of a first pair of opposing sides, as proposed by Patent Owner. “[W]hile it is true that claims are to be interpreted in light of the specification . . . , it does not follow that limitations from the specification may be read into the claims. . . . [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988).” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“A claim limitation is presumed to invoke 35 U.S.C. § 112(f) (or pre- AIA § 112 ¶ 6) if, as here, it explicitly uses the term “means” and includes functional language; this presumption is overcome if the limitation further includes the structure, material, or acts necessary to perform the recited function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Here, the word “means” is recited, followed by functional language, and the claim recites no structure associated with the means or function. Moreover, the parties agree that this is a means plus function limitation. See Pet. 19–20; Resp. 9. We find “releasing means” is a means plus function limitation and, based on the plain language of the claim, the recited “releasing means” is a part of the also recited “slide hammer assembly,” as the above-quoted claim language defines. Ex. 1001, 13:10–17. Construing a claim term under 35 U.S.C. § 112(f) involves two steps: (1) identifying the claimed function; and then (2) determining what structure, if any, disclosed in the Specification corresponds to the claimed function. Williamson, 792 F.3d at 1351. In conducting this analysis, we may not incorporate structure from the written description beyond that which is necessary to perform the claimed function. See Micro Chemical, Inc. v. Great Plains Chemical Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).” slip op. at 20
Patent outcomesUS 11,020,129 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,020,129 - PTAB · Sep 18, 2024 · IPR2024-00670 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–25 and all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim would have been obvious over the prior art. See 35 U.S.C. § 314(a).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention (“POSA”). Id. at 13, 17. Petitioner’s declarant asserts that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or a similar field and 2-3 years of experience in machine design, including machines that include fluid dynamics or fluid paths, such as vacuum cleaners. Additional education could offset less experience and vice versa, and a POSA could have also obtained similar knowledge and experience through other means. Ex. 1002 ¶ 41; see also Pet. 12 (making the same assertion without citation to declarant). Patent Owner does not contest the level of skill. Prelim. Resp. 3. We are persuaded, on the present record, that the proposal of Petitioner’s declarant is consistent with the problems and solutions in the ’407 patent and prior art of record. We adopt the above definition of the level of skill for the purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner asserts that no terms require express construction. Pet. 12– 13. Likewise, Patent Owner states that no terms require express construction. Prelim. Resp. 3. Patent Owner does provide a definition from Merriam-Webster Online Dictionary of the word “door.” Id. at 12n.1 (citing Ex. 2002). Viewing this definition, Petitioner asserts that Patent Owner seeks to construe the term “door.” Paper 8, 1. Patent Owner responds that a construction of the term “door” is unnecessary to resolve the issues at this stage. Paper 9, 1–2. We agree that no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner’s first reason why one of skill in art would combine Conrad335’s “cyclone separator” with IPVG’s stick or hand vacuum, is Conrad335’s explicit teaching that it is directed to “a ‘stick’ or ‘hand vacuum.’” Pet. 26 (quoting Ex. 1005 ¶ 376), 27–28, 29–30; Ex. 1002 ¶¶ 144, 149–153. Specifically, Conrad335 states that “the cyclonic embodiments described herein may be used in conjunction with . . . a stick vacuum cleaner, . . . a hand vacuum, . . . or any other type of vacuum cleaner.” Ex. 1005 ¶ 376. Conrad335’s explicit teaching provides a motivation to combine the teachings of Conrad335’s cyclonic embodiments with IPVG’s stick or hand vacuum. KSR Int’l, 550 U.S. at 418–419 (teaching in the art can show combination is obvious). Petitioner also argues that: A POSA would have understood that cyclonic filtration had certain advantages over dust-bag filtration, including (1) no bag needs to be replaced, reducing recurring costs; (2) unlike cyclonic cleaners, dustbag cleaners lose suction as they fill; and (3) cyclonic cleaners give the user a visual indication of how full the container is and when to empty. Pet. 30 (citing Ex. 1002 ¶¶ 150–53). This argument is supported by Petitioner’s declarant, and by citations to and a discussion of two prior art references, in addition to the teachings of Conrad335. Pet. 30–31 (citing Ex. 1002 ¶¶ 150–53; Ex. 1010, 1; Ex. 1016, 1:5–10; Ex. 1005 ¶¶ 2, 112. In view of the above and the evidence of record, we find Petitioner’s arguments sufficiently supported to show a reasonable likelihood that this claim limitation is unpatentable.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,607,407 - Apotex Inc. v. Novo Nordisk A/SInstitutedPTAB · Sep 11, 2024 · IPR2024-00631 · APJ Susan L C Mitchell · IPR · Institution
The Board instituted review of claims 1–10 on all petitioned grounds, finding a reasonable likelihood of unpatentability, and granted Apotex’s motion to join the Mylan IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016); see also 35 U.S.C. § 314(a). In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), the Board set forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. These factors are as follows: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 5–6. In evaluating these factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. at 6. The Director has also issued interim guidance to the Board on applying the factors. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). 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).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Under 37 C.F.R. § 42.5(b), we “may waive or suspend a requirement of [part 42 of the Board’s rules] and may place conditions on the waiver or suspension.” Here, we agree with Petitioner that it has shown sufficient reason for us to waive the one-month from institution joinder motion deadline. See 37 C.F.R. § 42.122(b). Petitioner waited until it had a sufficient business reason to file this Petition, and subsequently promptly filed its Petition and Motion for Joinder. Most critically, Petitioner raises no new unpatentability grounds, the trial schedule for the Mylan IPR need not be adjusted, and Petitioner agrees to serve in a silent understudy role. We determine that joinder with the Mylan IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 13
Discretionary denialPatents in suitUS 10,335,462 - PTAB · Sep 10, 2024 · IPR2024-00563 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1, 12, and 28 because Petitioner showed a reasonable likelihood of prevailing on obviousness over Gil, Norden, Dean, Alphagan, and Federal Register.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential). “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the District of New Jersey is more than three years, argues that “a trial may not be held until 2026—well after a FWD would be expected in this proceeding.” Pet. 15 (citing Ex. 1027, 2); Reply 8. Based on this evidence of the median time to trial in the district, we find factor 2 weighs in favor of institution. See Fintiv Memo 3 (“[W]hen considering the proximity of the district court’s trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.”)” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingOther
“guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d 1314. Claim 1 is directed to “[a] method for reducing eye redness in a human subject having ocular hyperemia.” The preamble is limiting because (1) it provides the antecedent bases for “said human” and “said reduction of eye redness” recited in the body of the claim; and (2) “it is a statement of the intentional purpose for which the method must be performed.” See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1341–43 (Fed. Cir. 2021). The preamble, however, does not require that eye redness is actually reduced. Id. Nor does the body of the claim recite any efficacy requirement.” slip op. at 24
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“In claim construction, “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d 1314. Claim 1 is directed to “[a] method for reducing eye redness in a human subject having ocular hyperemia.” The preamble is limiting because (1) it provides the antecedent bases for “said human” and “said reduction of eye redness” recited in the body of the claim; and (2) “it is a statement of the intentional purpose for which the method must be performed.” See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1341–43 (Fed. Cir. 2021). The preamble, however, does not require that eye redness is actually reduced. Id. Nor does the body of the claim recite any efficacy requirement.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,596,600 - PTAB · Aug 22, 2024 · IPR2024-00580 · APJ Susan L C Mitchell · IPR · Institution
The Board instituted review of claims 1, 3–6, and 8 on all asserted grounds, finding a reasonable likelihood that at least claim 1 would be shown obvious over the ’772 Publication and Snowdy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Beginning with independent claim 1, we determine that Petitioner has met its burden for institution. Based on the current record, Petitioner has shown a reasonable likelihood of succeeding in establishing that the combination of the ’772 Publication and Snowdy renders at least claim 1 obvious.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“Pet. 12 (citing Ex. 1005 ¶¶ 111–115). Patent Owner states that it does not dispute this definition for purposes of the Preliminary Response. Prelim. Resp. 16. On the current record, and for the purposes of this decision, we accept Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’462 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art (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)No construction neededOther
“Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“We agree with Patent Owner on the record before us that Petitioner does not appear to offer sufficient evidence and reasoning as to why a POSA would have modified AAVrh.10 at position 665 as described as opposed to other modifications based solely on the disclosure of the ’772 Publication. We do agree with Petitioner, however, that on the record before us, Snowdy provides such sufficient evidence and reasoning. See Pet. 47–52.” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,680,274 - PTAB · Aug 22, 2024 · IPR2024-00521 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on all grounds challenging claims 13 and 29, finding a reasonable likelihood that both claims would be shown unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“the prior art asserted in Petition 3 at the time it filed Petition 1, and had in hand both Patent Owner’s preliminary response to Petition 1 and the Board’s institution decision on Petition 1. See, e.g., Pet. 9; Prelim. Resp. 7–8. Nevertheless, we find that factors 2 and 3, considered in combination with factor 1, do not favor discretionary denial. See Code200, Paper 18, 5 (“General Plastic factor 1 must be read in conjunction with factors 2 and 3.”). We agree with Petitioner that the grounds and arguments presented by Petition 3 are not informed by the Board decisions or Patent Owner arguments in the first two IPRs. Petitioner’s arguments are unchanged as to the overlapping claim elements found in claim 1, from which challenged claims 13 and 29 depend. As to those overlapping elements, Petitioner repeats without substantive modification the mapping from Ground 1 of Petition 1 and is using neither the Petition 1 POPR [Patent Owner Preliminary Response] nor the institution decision to modify arguments that were previously unsuccessful, nor shifting its prior art arguments for this petition. Pet. 11. Stated differently, we find no “road-mapping” concerns or “shifts in the prior art asserted and the related arguments” in the later petition, like those found in General Plastic. See General Plastic at 17.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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”)). Petitioner ultimately bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. 35 U.S.C. § 314(a).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a Bachelor of Science degree in biomedical engineering, or a similar field, such as electrical, or software, or computer engineering, and two years of industry experience or research working with medical devices and systems for measuring biomedical signals. Such systems might include those for determining levels of blood analytes, such as glucose, in a 9 See infra Section III.B. 10 Patent Owner does not presently assert any objective indicia of nonobviousness. See generally Prelim. Resp. 11 For purposes of this Decision, we apply a priority date in the 2009–2010 timeframe. See supra page 3 n.1. On the present record, it does not appear that the level of ordinary skill changed during this timeframe. patient and transmitting indications of such levels to a receiving device for reporting the measurements. Additional education, such as a Master’s degree could substitute for the industry experience, or vice versa. Pet. 23 (citing Ex. 1208 (Gross Decl.) ¶ 51).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having reviewed the arguments and evidence of record, we determine that no construction of any claim term is needed to decide whether to institute this Petition. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Any final written decision entered in this case may include express claim constructions, or may include discussion of claim scope that differs from that provided in our analysis below. Any final claim constructions will be based on the full trial record. Should the parties argue for any specific claim interpretations at trial, they should do so in a separately designated section of their briefing to highlight their proposed claim interpretations. See, e.g., Consolidated Trial Practice Guide (Nov. 21, 2019), 44–49.12 Claim construction arguments should not be merely asserted within arguments over the merits of patentability challenges.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,298,056 - PTAB · Aug 13, 2024 · IPR2024-00467 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on all challenged claims based on the asserted obviousness ground over Gil, Norden, Dean, Alphagan, and Federal Register.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Advanced Bionics, 8. As explained above, during prosecution of the ’245 patent, the examiner issued a nonstatutory double patenting rejection because the claims were “not patentably distinct from” the ’742 patent claims.13 See supra Section I.H (citing Ex. 1010, 96). Petitioner argues that “[i]t was material error for the Examiner to both acknowledge that the ’245 claims were patentably indistinct from the ’742 claims and yet ignore the FWD and allow the claims despite the Board’s prior findings.” We find Petitioner’s argument persuasive. To determine whether Petitioner has sufficiently shown material error, we look at, for example, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Advanced Bionics, 9 (citing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 10–11 (Dec. 15, 2017)). Petitioner asserts Gil, Norden, Dean, Alphagan, and Federal Register in this” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“previously denied its motion to stay. Ex. 2029. Thus, factor 1 weighs in favor of denying institution.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Patent Owner. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to expressly construe any claim term. Patent Owner appears to suggest, although it does not explicitly argue, that the claims require “a single drop of [0].025% brimonidine.” See Prelim. Resp. 6; see also id. at 27 (arguing Gil is “with multi-dosed 0.03% brimonidine”); id. at 28 (arguing Dean is with “multi-dosed concentrations”). To the extent our understanding is correct, Patent Owner should expressly discuss at trial any construction that would so limit the claim. Such discussion should be set forth in a separate section of a response, if filed, designated for claim construction; claim construction positions should not be merely included in arguments over the merits on patentability.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that: A person of ordinary skill in the art (“POSA”) would have been a composite person (or team) that included a medical doctor and pharmaceutical formulator. EX-1014, ¶¶60-61; EX-1013, ¶¶16, 22-24. The medical doctor would be an ophthalmologist with at least three to four years of experience in clinical trials and FDA regulation of eye products and would have experience in the use of topical brimonidine and apraclonidine and topical vasoconstrictors such as naphazoline and tetrahydrozoline. EX-1014, ¶60. The pharmaceutical formulator would have a doctorate in pharmaceutics or a related degree and at least three to five years of experience developing eye drop formulations for clinical trial and regulatory approval. EX-1013, ¶16. Pet. 16–17. Patent Owner does not, at this point, dispute this proposed definition of the ordinarily skilled artisan. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the person of ordinary skill in the art as it appears consistent with the skill level reflected in the prior art of record and the disclosure of the ’245 patent.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,833,245 - Dexcom, Inc. v. Abbott Diabetes Care Inc.Institution deniedPTAB · Aug 8, 2024 · IPR2024-00520 · APJ John G New · IPR · Institution
The Board denied institution because Dexcom did not show a reasonable likelihood that claims 5–7 were unpatentable under either Stafford–Raymond ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Burden of Proof “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”)). Therefore, in an inter partes review, the burden of proof is on the Petitioner to show that the challenged claims are unpatentable; that burden never shifts to the patentee. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (citing Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)). At the institution stage, Petitioner must show a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We do not find these arguments persuasive. It may be so that Turner teaches that its recesses 77 receive rotation-restricting protrusions 71, which “extend[] into each recess 77 such that the recess side walls interfere with the protrusions to prevent rotation of the insertion device relative to body 20.” Ex. 1011 ¶ 69. And, it may also be so that Turner teaches this assembly as an advantage in that it prevents rotation of body 20. Id. However, Petitioner did not present this “design choice” theory of obviousness in the Petition. Petitioner first raises its “obvious design choice” argument with respect to Turner and Ground 2 in its Reply Brief; it is not to be found in its Petition.12 Petitioner cannot raise an argument in its” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In each of the ’335 Specification, Stafford, Raymond, and Turner, the OBU is universally depicted as having a circular perimeter oriented around a longitudinal axis, and possessing either a cylindrical shape (’335 patent, Stafford, Raymond) or a roughly domed shape, with a circular, circumferential collar. See, e.g., Ex. 1001, Figs. 8, 17, 52, 54; Ex. 1009, Figs 3A–C, 4A; Ex. 1010, Figs. 14–16, Ex. 1011, Figs. 2A–B, 5G, 7A-B, 9, 11, 13A–B, 14, 15, 19, 20, 21, 25, 29, 30, 37, 38. Moreover, in each description of the location of recesses 3766 in the ’335 Specification, the recesses are described as being located “on the side walls” of the OBU. See Ex. 1001, col. 44, ll. 8–12; col. 45, ll. 61–64. Given the circular perimeter of all of these embodiments of the disclosures of the ’335 Specification, the teachings of Petitioner’s cited references, the dictionary definition of “periphery” as being “the perimeter of a circle or other closed curve,” and the ordinary meaning that the terms would have had to a skilled artisan at the time of the invention, in view of the ’335 Specification and file history” (Phillips, 415 F.3d at 1312–13), we conclude that a person of ordinary skill in the art would understand that the “plurality of recesses disposed on a periphery of the on body electronics unit housing” would be located “on the circumference of the on-body housing,” as we concluded in the ’01396 IPR Decision. See Dec. 48; see also Ex. 1001, col. 44, ll. 9–14 (stating that “gripping arms 3762 [of medical device carrier 3730] are provided with engagement boss 3764 which are configured to engage with corresponding recesses 3766 provided on the side walls of the on body housing 322”).” slip op. at 38
- Strike new argumentNew argument disregardedDecided for patent owner
“However, Petitioner did not present this “design choice” theory of obviousness in the Petition. Petitioner first raises its “obvious design choice” argument with respect to Turner and Ground 2 in its Reply Brief; it is not to be found in its Petition.12 Petitioner cannot raise an argument in its 12 The Petition makes a design choice argument with respect to the teachings of Raymond on Ground 1, contending that “it would have been an obvious design choice to implement two spaced-apart plural recesses on the housing—one to engage the protrusions on each of the two arms taught by Raymond.” Pet. 38. However, Petitioner adduced no prior art teaching or evidence of record of “spaced-apart plural recesses on the housing” that Reply Brief if that argument could first have been raised in its Petition. 37 C.F.R. § 42.23(b); see also L’Oréal USA, Inc. v. Univ. of Massachusetts, 2018 WL 4278992, *5 n.4 (PTAB Sept. 7, 2018); Matterport, Inc. v. Appliance Comp. III, Inc., 2021 WL 6340164, *9–10 (PTAB Nov. 19, 2021).” slip op. at 32
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,266,335
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.