- Parse Biosciences, Inc. v. 10x Genomics, Inc.Rehearing grantedPTAB · Feb 5, 2024 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Rehearing
Rehearing was granted and IPR instituted on claims 1–28 because the petition showed a reasonable likelihood that claim 1 was obvious over Linnarsson, McCloskey, and ordinary skill.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. WHETHER REHEARING IS WARRANTED Petitioner argues that we misconstrued the claims “as requiring one to add tags in a way that can provide a distinction based on a ‘polynucleotide sequence.’” Req. 6 (quoting Dec. 14 (Petitioner’s emphasis)). Petitioner is correct. More specifically, we implicitly construed the claim language reciting “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell,” as requiring said “distinguishing” to be based on the sequences of the sample polynucleotides. See, e.g., Dec. 14 (“[E]ach strand of cDNA that is tagged in Linnarsson is tagged regardless of the polynucleotide sequence of the cDNA or its corresponding mRNA. Thus, Linnarsson’s tags do not distinguish between ‘sample polynucleotides,’ whether cDNA or mRNA, of different sequences.”). Based on that misunderstanding, we erroneously determined that the proposed modification could not achieve the claim language, stating the following: Petitioner’s proposal appears to defeat satisfaction of another portion of claim 1, namely a “second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.” Ex. 1001, 30:62–64. For if the second tag is “added to the CDS or TSO after extension,” as opposed to the sample polynucleotide, as Petitioner argues (Pet. 39 (emphasis added)), it would appear that the second tag would be incapable of distinguishing any sample polynucleotide from other sample polynucleotides. Rather, the second tag would be ligated to each and every extension product bearing a CDS or TSO without regard to the sequence of any sample polynucleotide. Dec. 16. We now reconsider whether to institute.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Cited”). Because we find that the same or substantially the same art was previously presented to the Office, we proceed to part two of the analysis. 2. Advanced Bionics Part Two Patent Owner argues that the Petition “fails to show any error in the Examiner’s application during prosecution of the prior art teachings Petitioner now purports to invoke from . . . McCloskey.” Prelim Resp. 23; see also id. at 24–25 (“Revisiting the same art and arguments already overcome during prosecution is a waste of the Board’s limited resources and would unfairly burden PO.”). However, Petitioner argued that “the Examiner committed major error in Examination by erroneously stating that the prior art fails to teach a dual tagging approach when, in fact, this approach is plainly taught in both McCloskey and McCloskey II.” Pet. 67. The record supports Petitioner’s position, and we agree that the error was material to patentability. See Ex. 1005, 131 (Notice of Allowance). Accordingly, and having considered all of the Becton, Dickinson factors, we do not exercise discretionary denial.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are persuaded there is a reasonable likelihood that Petitioner would prevail in demonstrating that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Linnarsson and McCloskey with the knowledge of a person of ordinary skill in the art to obtain the claimed subject matter. 8. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable.” slip op. at 21
- Obviousness (§103) › Analogous artNot reached
“the three references is analogous art to the ’013 patent as opposed to each other. Prelim. Resp. 46 (citing Pet. 35; Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1374 (Fed. Cir. 2023)). As Sanofi- Aventis holds, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, the Petition should not be denied for failing to state explicitly that the cited prior art references are analogous art to the ’013 patent. Rather, as Sanofi-Aventis further held: “A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to ‘respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.’” Sanofi-Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23). Accordingly, we need not address this issue for purposes of deciding whether to institute trial.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,697,013 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Rehearing grantedPTAB · Feb 5, 2024 · IPR2023-00955 · APJ Michael J Fitzpatrick · IPR · Rehearing
Rehearing granted and IPR instituted on claims 1–26; the Board found a reasonable likelihood that claim 1 would have been obvious over Linnarsson and McCloskey.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. WHETHER REHEARING IS WARRANTED Petitioner argues that we misconstrued the claims “as requiring one to add tags in a way that can ‘provide a distinction based on a polynucleotide’s sequence.’” Req. 6 (quoting Dec. 15 (Petitioner’s emphasis)). Petitioner is correct. More specifically, we implicitly construed the claim language reciting “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell,” as requiring said “distinguishing” to be based on the sequences of the sample polynucleotides. See, e.g., Dec. 14 (“[E]ach strand of cDNA that is tagged in Linnarsson is tagged regardless of the polynucleotide sequence of the cDNA or its corresponding mRNA. Thus, Linnarsson’s tags do not distinguish between ‘sample polynucleotides,’ whether cDNA or mRNA, of different sequences.”). Based on that misunderstanding, we denied the Petition because “adding a second tag sequence to Linnarsson’s CDS and/or TSO would do nothing to achieve such a distinction,” i.e., “a distinction based on a polynucleotide’s sequence.” Id. at 15. That was error. We now reconsider whether to institute.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“the ’197 patent. See Ex. 1001, code (56) (listing McCloskey II under “References Cited”). Because we find that the same or substantially the same art was previously presented to the Office, we proceed to part two of the analysis.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are persuaded there is a reasonable likelihood that Petitioner would prevail in demonstrating that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Linnarsson and McCloskey to obtain the claimed subject matter. 6. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable.” slip op. at 18
- Obviousness (§103) › Analogous artNot reached
“GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1374 (Fed. Cir. 2023)). As Sanofi-Aventis holds, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, the Petition should not be denied for failing to state explicitly that the cited prior art references are analogous art to the ’197 patent. Rather, as Sanofi-Aventis further held: “A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to ‘respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.’” Sanofi-Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23). Accordingly, we need not address this issue for purposes of deciding whether to institute trial.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,240,197 - PTAB · Feb 1, 2024 · IPR2023-01298 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that Chell anticipates at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have possessed a strong understanding in the use and development of genetics and genomics approaches for detecting or monitoring human diseases, such as spatial detection of a target analyte (e.g., mRNA or DNA) in a tissue, and would typically have a Ph.D. in a relevant field (e.g., molecular biology, genetics, and bioinformatics) with two years of experience. Pet. 14 (citing Ex. 1002 ¶¶ 24–25). For the purposes of its Preliminary Response, Patent Owner does not provide its own proposed level of skill. Prelim. Resp. 10. For purposes of this Decision, we apply Petitioner’s unchallenged definition as it is consistent with the cited prior art and disclosure of the ’689 patent.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“a) contacting the tissue sample with a plurality of nucleic acid probes, wherein each of the nucleic acid probes comprise a target binding domain that binds to the at least one target analyte, wherein the tissue sample [has been] is treated to facilitate binding of the nucleic acid probes to the target analyte b/c) collecting the nucleic acid probes, or portions thereof, bound to the at least one target analyte in a first/second location of the tissue sample under conditions that release the nucleic acid probes, or portions thereof, from the first/second location of the tissue sample d/e) performing an extension reaction that incorporates at least one nucleic acid sequence that identifies the first/second location of the tissue sample into each of the nucleic acid probes, or portions thereof, collected in step (b), thereby forming a first plurality of extension products that comprise the nucleic acid probes, or portions thereof, collected in step (b) and the at least one nucleic acid sequence that identifies the first/second location of the tissue sample Ex. 1001, 145:51–147:11 (emphasis added). Thus, according to claim 1, the “nucleic acid probe” must 1) comprise a target binding domain that binds to the at least one target analyte, 2) be bound to the at least one target analyte; 3) be released in whole or as a portion, and 4) have a location-identifying nucleic acid sequence incorporated into it through an extension reaction. Steps a), b), and c) occur in relation to the target analyte, while steps d) and e) occur after the probe is” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We further interpret “collecting the nucleic acid probes” to mean “releasing all or a portion of the nucleic acid probe bound to the at least one target analyte through application of a force followed by retrieval of the released probe or portion of the probe.” The question then becomes whether So-465, which teaches replication of a probe that was bound and then at least partially released to make genomic amplicons, followed by collection of those genomic amplicons, anticipates collection of probes as recited in claims 1 and 16. On this record, we do not see sufficient evidence that the genomic amplicons disclosed in So-456 that Petitioner identifies as “captured” were ever “bound to the analyte” in part or in whole as required by the claim language, but rather were amplified in situ from the probe or partial probe that was released. Ex. 1005 ¶¶ 181–183. In particular, the process of So-456 differs from the ’689 patent claims in that the extension reaction to incorporate the tissue-identifying nucleic acid sequence in So-465 occurs after the identifier nucleotide is cleaved from the tissue sample. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Petitioner has not demonstrated that So-456 teaches this claim limitation or otherwise demonstrates that this limitation would have been inherent in the disclosure of So-456 for claims 1 and 16. For these reasons, on this record we determine that Petitioner has not shown a reasonable likelihood that So-456 anticipates either of independent claims 1 or 16.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,377,689 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Dec 19, 2023 · IPR2023-01033 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution of IPR challenging claims 1–30, finding substantially the same art had been presented to the Office and no material error was shown under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17– 18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“enzyme complex” and “nucleic acid insert element.” Pet. 21. Patent Owner, for its part, states that “[n]o terms require construction for considering institution.” Prelim. Resp. 18. We determine that neither of the two limitations identified by Petitioner requires an express construction for purposes of this Decision. It bears mentioning, however, that the ’357 patent states that “[t]he insertional enzyme can be a transposase.” Ex. 1001, 3:47–48. There is no dispute that Grunenwald discloses the use of a transposase and, thus, an insertional enzyme complex. See Pet. 16 (citing Ex. 1003 ¶¶ 17, 93–94, 162); Prelim. Resp. 13 (“Grunenwald further defines ‘transposase’ to mean ‘an enzyme that is capable of forming a functional complex . . . and catalyzing insertion or transposition of the transposon end-containing composition into the double-stranded target DNA with which it is incubated in an in vitro transposition reaction.” (citing Ex. 1003 ¶ 93)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“express construction of the term “chromatin.” The ’357 patent itself provides a definition, stating: The term “chromatin,” as used herein, refers to a complex of molecules including proteins and polynucleotides (e.g. DNA, RNA), as found in a nucleus of a eukaryotic cell. Chromatin is composed in part of histone proteins that form nucleosomes, genomic DNA, and other DNA binding proteins (e.g., transcription factors) that are generally bound to the genomic DNA. Ex. 1001, 12:61–67. This is the meaning that we apply in this Decision.” slip op. at 6
Claim constructionDiscretionary denialPatents in suitUS 10,738,357 - Pioneer Pet Products, LLC v. Oil-Dri Corporation Of AmericaSome claims unpatentablePTAB · Dec 19, 2023 · IPR2022-01138 · APJ Richard H Marschall · IPR · Final written decision
Claims 1, 3–8, 10–16, and 18 are unpatentable over Goss; claims 2, 9, 17, and 19 were not shown unpatentable. The revised motion to amend is denied for lack of written-description support.
RulingsFinal written decision- BurdenFwd mixedMixed
“To prevail in its challenges, Petitioner must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d). “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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof in an inter partes review).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”) “would have at least a bachelor of science degree in chemistry, mineralogy, geological science, material science, chemical engineering, or mining engineering with at least two to five years of work experience relating to designing specific chemical mixtures including clay or other minerals, particularly absorbents.” Pet. 34 (citing Ex. 1004 ¶ 38). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp. 23. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We generally agree with Petitioner that the assumptions and approximations made in the calculations described in the ’397 patent to determine the external surface area of the components of the litter render the computations only a general approximation of the respective surface areas. See Pet. Reply 9–12. We need not, however, reach the issue of whether the 47% surface area limitation requires the use of the multi-step method disclosed in the ’397 patent because Petitioner followed that methodology in its arguments and evidence in its Reply. See Pet. Reply 13. Importantly, Patent Owner agrees that Petitioner followed the approach set forth in the ’397 patent, and argues that we need not construe “external surface area” to resolve any dispute between the parties. See PO Sur-reply 23–24 (arguing that we need not “determine whether ‘total external surface area’ must be determined using the same multi-step approach” in the ’397 patent to resolve the controversy because “the only calculation of external surface area relied on by Petitioner was presented in the Reply and it followed the methodology of the [’]397 Patent”); PO Supp. Sur-reply 2 (same). Based on our review of the current record, we need not and do not formally construe any claim terms to resolve the patentability issues in this inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 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))). To the extent some implicit claim construction disputes remain, we address those issues in the context of the challenges below.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“review of the record, we find that Petitioner fails to articulate an adequate rationale for the combination of Goss and House. The Petition contains only a single sentence addressing the issue, without any citation to record evidence or declaration support. See Pet. 46. In addition, the assertion merely states the conclusion that a “PHOSITA would understand that there is a rational underpinning to combine the teachings of Goss and House as required under patent law because both are related to cat litter having similar characteristics.” Id. This assertion, at most, addresses the fact that Goss and House are in the same field or that they are analogous art, but does not explain why a PHOSITA would have been motivated to combine Goss and House. See id. In addition, the Petition lacks sufficient explanation of how Petitioner proposes to combine Goss and House. See Pet. 46–53. Instead, when Petitioner relies on House in this challenge, it appears to be a back-up argument in the event that we find Goss fails to disclose the limitation. Merely stating that Goss and House both disclose a limitation does not explain which aspects of House Petitioner proposes adding to Goss or what the resulting litter composition would look like. See id. The details of the resulting litter based on the combination of Goss and House matter here because it could impact whether all limitations of a given claim are satisfied by the combination. For example, Petitioner relies exclusively on specific examples from Goss for the 47% surface area limitation, but adding some aspects of House’s litter components to meet other limitations could undermine Petitioner’s reliance on Goss’s specific examples. The failure of the Petition to set forth a specific combination elides these issues. See Pet. 46–51. Petitioner’s Reply arguably addresses some of these concerns by providing a more fulsome motivation section, backed by new expert testimony, and specific litter examples based on Goss and various cellulose filler materials allegedly disclosed by House. See Pet. Reply 24–25 (citing Ex. 1013 ¶ 7); see also PO Sur-reply 18–22 (arguing that Petitioner’s Reply still fails to articulate an adequate motivation to combine). This analysis goes far beyond the limited analysis in the Petition, and Petitioner provides no reason why it could not have been included in the Petition. See Pet. Reply 24–25. As noted below, in some situations petitioners should be afforded the opportunity to go beyond the arguments in a petition when addressing a new claim construction or other new argument raised by a patent owner or an” slip op. at 17
Patent outcomesUS 11,026,397 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,026,397 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Dec 18, 2023 · IPR2023-00955 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would be obvious, including a reasonable expectation of success in adding a distinguishing second tag.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references as proposed by Petitioner, would have had a reasonable expectation of success in achieving the claimed invention, including “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references as proposed by Petitioner, would have had a reasonable expectation of success in achieving the claimed invention, including “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.”” slip op. at 16
§ 103 obviousnesscites GrahamPatents in suitUS 10,240,197 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Dec 13, 2023 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 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, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references and knowledge of the person of ordinary skill in the art to achieve the subject matter of claim 1, would have had a reasonable expectation of success in doing so.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“In an inter partes review, it is the Petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotation marks and citations omitted). Based on the information presented here, there is not a reasonable likelihood of Petitioner prevailing in showing that a skilled artisan, even if motivated to combine the teachings of the prior art references and knowledge of the person of ordinary skill in the art to achieve the subject matter of claim 1, would have had a reasonable expectation of success in doing so.” slip op. at 16
§ 103 obviousnesscites GrahamPatents in suitUS 10,697,013 - PTAB · Nov 29, 2023 · IPR2023-00918 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR on claims 1–29 and all asserted grounds, finding at least Grounds 7–13 met the reasonable-likelihood threshold.
RulingsInstitution decision- Other 314aDenied
“The present Petition identifies thirteen Grounds, which employ a total of seven prior art references. See Pet. 1–2. Patent Owner contends that the Petition’s use of alternative combinations, within particular Grounds, results in “over twenty (20)” distinct bases for the invalidity of one or more claims. Prelim. Resp. 6. As Patent Owner concedes (id.), this is a far cry from the situation in Adaptics, where the Board confronted “hundreds of possible combinations.” Adaptics, 2019 Pat. App. LEXIS 4775, *25–*26. In addition, although the use of alternative prior art bases and string citations, in a petition, may present various challenges, we do not regard the present Petition as exceeding reasonable limits of particularity and specificity. Further, the alleged discrepancies in how the Petition “pars[es] the elements” of claim 28 (Prelim Resp. 7) do not appear to have impaired Patent Owner’s analysis thereof. See id. at 19–26, 39–43.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons provided below, we determine that Petitioner demonstrates a reasonable likelihood that it would prevail with respect to at least one claim of the ’620 patent challenged in the Petition. Specifically, at least Grounds 7–13 of the Petition satisfy this standard for instituting inter partes review.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“However, Petitioner, with reference to the Goldberg Declaration (Ex. 1002), argues that a sufficient reason exists, for combining Felt (Verizon) with Kerr, because “Kerr’s interfacing allows registration of the assets, and provides ease and control in human-machine interfacing,” which would have supported the distribution of targeted content. Pet. 14–15 (citing Ex. 1005 ¶ 96, Ex. 1002 ¶¶ 107–109). At the present stage of the proceeding, it appears that Petitioner has identified a sufficient reason to combine Felt (Verizon) with Kerr.” slip op. at 26
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“As to the issue of whether Muhire constitutes non-analogous art, Patent Owner identifies the proper inquiries, either of which would establish a reference as analogous art: (1) whether the reference is from the same field of endeavor as the claimed invention; and (2) whether the reference is reasonably pertinent to the problem faced by the inventor. Prelim. Resp. 33–34 (citing Bigio, 381 F.3d at 1325). However, Patent Owner does not analyze either inquiry, but merely states: “The Petition provides no evidence why a POSITA would look to making such a combination with the location tracking of Verizon; rather only a discussion of using separate layers is provided.” Id. at 34 (citing Pet. 35, Ex. 1002 ¶ 163). By contrast, Dr. Goldberg regards Muhire as being “focused in [sic] similar sector of technology” as the ’620 patent. Ex. 1002 ¶ 163. Further, Muhire addresses the delivery of customized advertising media content to online electronic devices (see Muhire ¶¶ 32–46) — a subject that could be regarded as the field of endeavor of the ’620 patent, which “relates to an online platform . . . for managing and/or delivering location and time based advertisements” (Ex. 1001, 1:20–24). Therefore, at this stage of the proceeding, we are not persuaded on the current record that Muhire constitutes non-analogous art.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,621,620 - Amcol International Corp. v. Oil-Dri Corporation Of AmericaSome claims unpatentablePTAB · Nov 29, 2023 · IPR2022-01107 · APJ Richard H Marschall · IPR · Final written decision
Claims 1, 3–8, 10–16, 18, and 19 are unpatentable over Goss; claims 2, 9, and 17 were not shown unpatentable, and the revised motion to amend was denied for lack of written description.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have a bachelor’s degree in chemistry or chemical engineering or an equivalent degree and sufficient work experience in animal litter process development. A bachelor’s degree is not explicitly necessary.” Pet. 4. Petitioner further contends that “[h]ands-on experience in the field of animal litter process development could substitute for possessing a degree if that individual’s experience is in contributing to and/or leading the process development effort rather than following a set of instructions given to them.” Id. at 4–5. Petitioner asserts that such a person “should have familiarity with the process of validating relevant test methods and qualifying analysts as well as familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite)” and that such a person “would have gained this familiarity through education, training and/or experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 14. We adopt the definition of the level of ordinary skill in the art proposed by Petitioner because it appears consistent with the record, including the prior art. See GPAC, 57 F.3d at 1579.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner makes a number of arguments, but we do not find them persuasive enough to undermine Petitioner’s showing based on Ms. Borgese’s analysis. Patent Owner’s primary argument stems from its assertion that the bulk densities vary depending on a number of variables and that Ms. Borgese bases her ranges on documents, the technical data sheets for FS-40 and the ’397 patent for BL(2), that have bulk densities that are not the “same” as the bulk densities for FS-40 and BL(2) in Goss due to the passage of time, differences in where the clay was mined, how the clay was processed, and how the bulk density was measured. See PO Resp. 18– 19, 21–33; PO Sur-reply 2, 5–9. We do not view Petitioner’s challenge as based on the premise that the FS-40 clay referenced in the technical data sheets and Blue Mountain clay in the ’397 patent are the exact same as the FS-40 and BL(2) clays in Goss, but instead the clays and their bulk densities are similar enough that they will fall within the bulk density ranges Petitioner uses in its calculations. See Pet. 21–23, 68; Pet. Reply 6–7, 10. As a result, Patent Owner’s repeated assertions that the clays or their properties are not the “same” or processed “exactly the same” fail to engage 5 Patent Owner suggests that Petitioner fails to meet the inherency standard because Ms. Borgese uses the term “potential” when describing the bulk density range of BL(2). See PO Resp. 32 (citing Ex. 1003 ¶ 117). We do not read Ms. Borgese’s opinion in the same manner. Instead, we read the reference to “the potential bulk density range of BL(2), 35–47 lbs/ft3” as referring to any bulk density within that range, not that there is only the mere potential that the bulk density may fall within that range. See Ex. 1003 ¶ 117. Petitioner’s argument that the bulk densities were at least similar, such that that they fall within the ranges Petitioner uses. See, e.g., PO Resp. 4, 21–24, 30–31; Ex. 2009 ¶¶ 97–98 (Dr. Johnston limiting opinion to whether the clays are the “same”). As an example, when asked about the potential differences in bulk density between Goss’s filing date in 1997 and the 1999 technical data sheet, Ms. Borgese states that “[b]entonite clays have not changed significantly in a period of two years.” Ex. 2008, 24:7–15; see also Ex. 1003 ¶¶ 202–203 (opining that “modest difference in particle-size distribution between FS-40 disclosed in Goss [and] . . . the FS-40 Information Sheet ’99 only minimally impacts the bulk density”). Given Ms. Borgese’s personal experience making animal litters and using bentonites, we view her testimony as credible absent some evidence that any differences in bulk density would fall outside the ranges she uses. Patent Owner provides no such evidence. Nearly all of Patent Owner’s evidence goes to whether the clays and bulk densities would be the exactly the “same” in Goss as in the sources that Ms. Borgese relies on, and do not address how similar the bulk densities would be and do not attempt to establish that there are bulk densities for Goss’s FS- 40 and BL(2) clays that would fall outside the ranges Ms. Borgese uses. In the rare instances where Patent Owner does argue that the bulk densities would not be similar, or would not fall within Dr. Borgese’s ranges, Patent Owner fails to cite any evidence to support the assertion. See PO Resp. 23, 32–33. Even if we found Dr. Johnston’s testimony generally credible on the point that bulk densities may differ across time even when mined and” slip op. at 28
- Expert testimonyPetitioner expert creditedDecided for petitioner
“persuasiveness of Petitioner’s arguments and evidence. Petitioner relies heavily on Ms. Borgese’s testimony, a chemical engineer with “firsthand experience in animal litter Process Development and Product Development creating animal litter from raw materials.” Ex. 1003 ¶¶ 3–4. Ms. Borgese has experience working with bentonite and fillers, and has validated test methods related to “particle size distribution, bulk density, moisture, [and] clump strength.” Id. ¶ 4. She also “used a variety of processing methods to produce animal litter” and is a named inventor on three animal litter patents. Id. Patent Owner does not dispute Ms. Borgese’s qualifications, does not 4 As to the whether Goss inherently discloses the 47% surface area limitation, Patent Owner does not dispute that Goss inherently discloses the limitation if Petitioner’s bulk density ranges are correct. See PO Resp. 15– 33. argue that she lacks firsthand experience that would enable her to testify as to the properties of the bentonite clays and litters at issue in this case, or otherwise dispute that she meets the parties’ agreed-upon definition of a person of ordinary skill in the art. Pet. 4–5; PO Resp. 14. That definition presumes “experience in animal litter process development” and “familiarity with the composition and chemistry of various clays used in animal litter (including sodium bentonite).” Pet. 4–5. We find Ms. Borgese’s education and first-hand experience in animal litter process development, including experience with bentonite, sufficient to testify credibly as to the known bulk densities of the bentonite clays at issue in the case. As to Goss’s FS-40 sodium bentonite clay made by Wyo-Ben, Ms. Borgese opines that the range of bulk density for the material in Goss is between 58–64 lb/ft3 based on Wyo-Ben’s own technical data sheets from 1999 and 2002, which “describe the same (or similar) FS-40 (‘sodium bentonite’) composition.” Ex. 1003 ¶¶ 82–83, 106, 117; Pet. 21–22, 35. Then, in an effort “to be conservative in [her] analysis,” Ms. Borgese uses a broader range of 55–65 lb/ft3 for Goss’s FS-40 in her calculations. Ex. 1003 ¶ 117. Even when pushing her assumptions in directions that would result in the lowest possible external surface area percent for sodium bentonite, all of the calculations across the full range of potential bulk densities still meet the 47% surface area limitation. Id. ¶¶ 117–122; Pet. 43–46. Based on our review of the arguments and evidence, we find Ms. Borgese’s testimony as to the range of Goss’s FS-40 bulk density credible and persuasive.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“Borgese relies on (Exhibits 1018 and 1024), but the effort lacks procedural and substantive merit. Patent Owner’s argument in its Patent Owner Response describes the documents as “[i]nadmissible” without seeking any specific relief, but Patent Owner’s Sur-reply makes clear that Patent Owner seeks exclusion. See PO Resp. 20; PO Sur-reply 13. While Patent Owner seeks to exclude these documents, it fails to follow our rules applicable to such efforts. Our rules require objections to evidence to be filed within specific timeframes, and a “motion to exclude evidence must be filed to preserve any objection.” 37 C.F.R. § 42.64(c). In addition, the “motion must identify the objections in the record in order and must explain the objections.” Id. Patent Owner failed to file a separate “motion” or even refer to its hearsay arguments as a “motion” despite the fact that it seeks to exclude evidence. PO Resp. 20. Nor did Patent Owner “identify the objections in the record” in support of its “motion.” Id. In addition, Patent Owner fails to cite any authority that permits what amounts to a motion to exclude within the confines of the merits briefing, which forced Petitioner to devote space in its merits brief to opposing the motion to exclude. See id.; Pet. Reply 19–23. Under these circumstances, we deny the motion as procedurally improper. In addition, even if we reached the merits, we would not exclude the documents or Ms. Borgese’s opinions based on them given that she reasonably relied on the technical data sheets as reliable sources of bulk density data provided by Wyo-Ben, the manufacturer of the clays in question. See Pet. Reply 22–23; Ex. 1003 ¶¶ 82–83.” slip op. at 32
Patent outcomesUS 11,026,397 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,026,397 - Life Vac, LLC v. Dcstar Inc.Institution deniedPTAB · Nov 29, 2023 · PGR2023-00032 · APJ Michael L Woods · PGR · Institution
The Board denied institution because the petition did not show that claims 1–17 were more likely than not unpatentable over Lih, Tarrats, and da Costa or anticipated by Lih.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“institute an post-grant review if “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition fails to demonstrate that it is more likely than not that at least 1 of the Challenged Claims is unpatentable. Accordingly, we deny institution of post-grant review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s and Patent Owner’s proposed definitions are similar, with a primary difference being that Petitioner’s definition more broadly includes people having experience with “medical devices in general.” Compare Pet. 18–19, with Prelim. Resp. 6–7. Patent Owner contends that Petitioner’s standard is “unreasonably broad,” arguing that Patent Owner’s definition for a skilled artisan “more reasonably focuses on the nature of the subject invention.” Prelim. Resp. 7. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art. We are not persuaded that a skilled artisan would have necessarily required experience with respiratory devices, as Patent Owner proposes. See Prelim. Resp. 6–7. We find Petitioner’s definition, which would include “a mechanical or biomedical engineer with at least 5 years of experience in designing or developing medical devices in general,” is consistent with the ’575 patent and the asserted prior art. Pet. 18–19; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner expressly construes “bottom plate” and “check valve.” See Pet. 20–21. Patent Owner proposes a construction for “bottom plate,” “check valve,” and “connector.” Prelim Resp. 8–11. For purposes of this Decision, we need not and do not formally construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Each of the Challenged Claims requires a connector with a “bottom plate,” yet Petitioner fails to explain how the combined references would yield a connector with such a plate. See Prelim. Resp. 30–33 (arguing the same); see also Ex. 1001, 10:14–17 (independent claim 1), 10:46 (independent claim 3), 11:63 (independent claim 9); 12:35–36 (independent claim 13). Neither of Lih’s connector (element 118, Fig. 3) nor Tarrats’s “connector” (element 15, Fig. 1) has a “plate,” and Petitioner fails to explain how the lower surface of da Costa’s piston is being used to modify Lih’s or Tarrats’s connector to satisfy the claimed structure. See 35 U.S.C. § 322(a)(3); see also 37 C.F.R. § 42.204(b)(5); see also Pet. 28–29. Further, Petitioner relies on da Costa’s heart resuscitating device, rather than its dechoking device, in modifying Lih. See Pet. 29 (citing da Costa’s Figure 6 and relief valves 55, 56). da Costa’s heart resuscitation device, however, is used for pumping air into a patient’s lungs for the purpose of initiating blood circulation in the event the patient’s heart stopped working. See, e.g., Ex. 1005, 6:43–52. The pressure relief valves cited by Petitioner are presumably used to prevent over-pressurizing and under-pressurizing the patient’s lungs, which we understand would be dangerous for the patient. We do not see a skilled artisan as incorporating da Costa’s pressure relief valves into Lih’s choking intervention device, which is structured to prevent pumping air into a patient. See, e.g., Ex. 1004, 4:3–5 (“bellows assembly 102 may include a relief valve 108 configured to allow air to escape . . . when the bellows 104 is being compressed”). Petitioner explains that the combination would “avoid pushing the obstruction farther into the user’s airway while in use and to initiate blood circulation” (see Pet. 29), yet Lih’s valve 108 already “avoid[s] pushing the obstruction farther into the user’s airway” and “initiat[ing] blood circulation” benefits a heart-resuscitation device, not Lih’s dechoking device. Accordingly, we agree with Patent Owner that the proposed combination lacks sufficient reasoning. See Prelim. Resp. 33–37. We further agree with Patent Owner that modifying Lih’s device so that it pumps air into a patient’s lungs for the purpose of “initiating blood circulation,” as reasoned by Petitioner (see Pet. 29), would render Lih’s device unsuitable as a dechoking device, which is its intended purpose. See Prelim. Resp. 37–38 (arguing the same). To reiterate, Lih’s dechoking device avoids introducing air into the patient’s lungs, which would further lodge an obstruction in the patient’s trachea. See Ex. 1004, 4:3–5.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,478,575
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.