- PTAB · Aug 30, 2024 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Remand
On remand, the Board instituted inter partes review of claims 1–17, 20–21, 24–26, and 29–34 on all grounds stated in the Petition.
RulingsRemand decision- Director reviewOther
“Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17 (“Inst. Dec.”). Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel. Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Director Review Panel (“DRP”) vacated our decision and remanded the case to this panel with a revised construction for claim 1. Paper 23 (“DRP Dec.”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect (2018). Upon reconsideration of the briefing and the evidence of record in light of the DRP’s claim construction, we conclude that Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable. Accordingly, we grant institution of inter partes review of claims 1–17, 20–21, 24–26, and 29–34 of the ’682 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Petitioner has demonstrated a material error by the Office in the prior consideration of Morales-Sanfrutos, Straus, Singh, and Lees. For instance, under the second prong of Advanced Bionics, we consider “(c) the extent to which the asserted art was evaluated during “(e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art.” Becton, Dickinson, 17–18. We agree with Petitioner that the Office overlooked Morales- Sanfrutos’ and Singh’s teachings during examination and reexamination. Pet. 79. Although Morales-Sanfrutos, Straus, and Singh were listed on an IDS, they were not the subject of a rejection during examination or reexamination. Moreover, for the reasons discussed below at this stage with regard to Petitioner’s grounds over Morales-Sanfrutos, as evidenced by Straus, and over Singh, Petitioner sufficiently demonstrates that the Office materially erred in overlooking Morales-Sanfrutos’s and Singh’s teachings regarding their linker structures. Id. Further, to the extent the Lees’ teachings were considered during examination and reexamination, Lees’ disclosure of a homobifunctional sulfone linker was overlooked. Lees’ homobifunctional linker, which Patent Owner argues is substantially similar to Harris’ homobifunctional linker, which Petitioner chiefly relies upon in Grounds 2–5, was not the subject of a rejection during examination. Pet. Resp. Brief 1; Prelim. Resp. 25–26. We agree with Petitioner that only Lees’ heterobifunctional linker was applied in a rejection during examination. Pet. Resp. Brief 1; Ex. 1018, 42–43, 62. 4. Conclusion For the foregoing reasons, we decline to exercise discretion to deny institution under § 325(d).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,131,682 - PTAB · Oct 28, 2014 · IPR2013-00266 · APJ Christopher L Crumbley · IPR · Final written decision
The Board denied entry of substitute claims 20–26 as obvious, and granted cancellation of challenged claims 1, 2, 4, 11, 12, 17, 18, and 19.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“1. the cleavable linker and the protecting group are cleavable under identical conditions Proposed substitute claim 20 recites, inter alia, “a base that is linked to a detectable label via a cleavable linker,” a “protecting group attached via the 3' oxygen atom” of the nucleotide, and a step of “removing the label and the protecting group of the nucleotide . . . under a single set of chemical cleavage conditions.” Mot. 2 (emphasis added). These limitations are similar to those present in original claim 1, which we construed in our Decision on Institution. Specifically, we construed removal of the label and the protecting group under a single set of conditions “to mean what its plain language indicates: removal of the label and the protecting group under a single set of conditions.” Dec. 6. Neither of the parties contested this construction subsequent to institution, and we discern no reason to modify our initial construction for the purposes of this decision. Proposed claim 20 also requires that the cleavable linker comprise a disulfide linkage, but does not specify the protecting group. Thus, “a single set of chemical cleavage conditions,” under the broadest reasonable interpretation standard, limits the structure of the protecting group to one which can be cleaved under the same conditions as a disulfide linkage, but does not require a specific structure, such as a disulfide linkage.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Illumina was essentially 100%. This is a significant and unexpected improvement over the disulfide cleavages of Ruby (~86%) and Herman (87%).” Ex. 2004 ¶ 84. There is no testimony, however, that the stated results were due to the claimed nucleotide rather than the reducing agent. While Dr. Romesberg refers to the “disulfide cleavage yield” as being unexpected, he does not testify that this yield was attributable to the claimed nucleotide configuration, rather than the reducing agent which performs the disulfide bond cleavage. Illumina has not distinguished the Vermaas results from the prior art by showing that the nucleotide is responsible for the disulfide yield, rather than it being a property of the disulfide bond and the yield being “the mere recognition” of the bond’s “latent properties,” which “does not render nonobvious an otherwise known invention.” Baxter, 952 F.2d at 392; In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997). Absent such evidence, Illumina has not shown that the claimed subject matter possesses “unexpected results relative to the prior art.” Galderma Labs., LP v. Tolmar, Inc., 737 F3d 731, 738 (Fed. Cir. 2013). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“After considering all the evidence as a whole, we conclude that Illumina has not met its burden in showing that the proposed substitute claims are patentable over the prior art considered in this Decision. The Motion to Amend is DENIED to the extent that it requests entry of substitute claims 20–26.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,158,346 - PTAB · Mar 18, 2014 · IPR2013-00626 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution on all challenged claims because Superior did not show a reasonable likelihood that the cited references taught layers permanently affixed together.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on the current record, we are not persuaded that Superior is reasonably likely to show that Seo teaches a flexible inner layer and an exterior hard layer permanently affixed together. As Speck points out, Seo teaches that it is “impossible” to apply a different material to the surface of the body base of the phone case. Ex. 1002, 2:7-9. Neither Superior nor Dr. Kazmer addresses this teaching or explains how it can be consistent with the notion that Seo teaches permanently affixing Seo’s soft silicone layer to the hard resin layer. On the contrary, this teaching suggests that a soft silicone layer would not adhere or bond to a hard resin layer, and thus must be attached to the hard layer in the mechanical manner that Seo teaches. Moreover, we are not persuaded that Seo’s mechanical attachment method is “permanently affixed,” such that the hard and soft layers cannot be separated without damaging the layers or the rivets that connect the layers. Superior relies on Seo’s teaching that the layers are “integrally formed” or “integrally attached” to support this contention. Pet. 10. But there is insufficient evidence in the record to persuade us that “integrally” attached necessarily means “permanently” attached. Moreover, the combination of the softness and flexibility of Seo’s inner silicone layer with the “impossibility” of applying that layer to the surface of Seo’s hard outer layer leaves open the possibility that the layers may be separated without damaging the layers or the rivets that connect the layers. Thus, we are not persuaded on the present record that Superior is reasonably likely to prevail in showing that any of the challenged claims is anticipated by Seo, would have been obvious over Seo, or would have been obvious over Seo and Cozip.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the written description define the term. In the absence of an express definition, it is reasonable to consult a general dictionary definition of the word for guidance in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). “Permanent” is commonly understood to mean “continuing or enduring without fundamental or marked change; stable.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 922 (11th ed. 2005). To “affix” means “to attach physically.” Id. at 21. Based on these definitions, the ordinary meaning of the phrase permanently affixed would be “attached physically such that the attachment continues or endures without fundamental or marked change.” Thus, a flexible inner layer and an exterior hard layer are permanently affixed when they cannot be separated without “fundamental[ly] or marked[ly] chang[ing]” – i.e., damaging – the layers or the bond between the layers. For purposes of this decision, therefore, permanently affixed, in the context of claim 1, requires that the flexible inner layer and the outer hard layer cannot be separated without damaging the layers or the bond between the layers.1” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on the current record, we are not persuaded that Superior is reasonably likely to show that Seo teaches a flexible inner layer and an exterior hard layer permanently affixed together. As Speck points out, Seo teaches that it is “impossible” to apply a different material to the surface of the body base of the phone case. Ex. 1002, 2:7-9. Neither Superior nor Dr. Kazmer addresses this teaching or explains how it can be consistent with the notion that Seo teaches permanently affixing Seo’s soft silicone layer to the hard resin layer. On the contrary, this teaching suggests that a soft silicone layer would not adhere or bond to a hard resin layer, and thus must be attached to the hard layer in the mechanical manner that Seo teaches. Moreover, we are not persuaded that Seo’s mechanical attachment method is “permanently affixed,” such that the hard and soft layers cannot be separated without damaging the layers or the rivets that connect the layers. Superior relies on Seo’s teaching that the layers are “integrally formed” or “integrally attached” to support this contention. Pet. 10. But there is insufficient evidence in the record to persuade us that “integrally” attached necessarily means “permanently” attached. Moreover, the combination of the softness and flexibility of Seo’s inner silicone layer with the “impossibility” of applying that layer to the surface of Seo’s hard outer layer leaves open the possibility that the layers may be separated without damaging the layers or the rivets that connect the layers. Thus, we are not persuaded on the present record that Superior is reasonably likely to prevail in showing that any of the challenged claims is anticipated by Seo, would have been obvious over Seo, or would have been obvious over Seo and Cozip.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The above images depict perspective and front views of the Cozip case. Ex. 1003 at 8, 10. Superior asserts that Cozip discloses a case with “an exterior hard layer ha[ving] four corner joints with cut-away portions.” Pet. 28. Superior argues that “it would have been obvious to one of ordinary skill in the art to fill the shell and corners of Cozip . . . with the flexible layer of Seo.” Id. at 33. Superior, therefore, is proposing that a person of ordinary skill would attach Seo’s soft silicone layer to Cozip’s polycarbonate case, with Cozip’s cut-away portions serving as the “dispensing portions” as taught by Seo. Superior reasons that it would be obvious to fill permanently the cut away portion of Cozip with the flexible inner layer 20 of Seo to attach tightly and integrally the inner layer 20 to Cozip’s outer layer as taught by Seo. Pet. 39 (citing Ex. 1002, 5:9-16). But Superior does not explain how attaching Seo’s inner silicone layer to Cozip’s case would result in “permanently affix[ing]” the two layers together, given that Seo teaches that it is “impossible to apply different material to the surface of the body case.” Ex. 1002, 2:7-9. Accordingly, as with the grounds based on Seo as the primary reference, we are not persuaded that Superior is reasonably likely to show that a person of ordinary skill in the art at the time of the invention would “permanently affix” Seo’s soft silicone layer to Cozip’s polycarbonate case. Therefore, we do not institute an inter partes review on any of the grounds based on Cozip as the primary reference.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,204,561
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.