• Victoria’S Secret Stores LLC v. Andra Group, LPInstitution denied
  PTAB · Oct 22, 2020 · IPR2020-00853 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 5–8, and 11 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). Section 314(a) of Title 35 of the United States Code provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “For the reasons asserted by Patent Owner, we agree as to the ambiguous nature of (1) the “passing understanding” requirement in the first alternative definition proposed and (2) the “equivalent experience” requirement in the second alternative definition. See Prelim. Resp. 7. Further undermining Petitioner’s first alternative definition, as noted by Patent Owner, Petitioner’s declarant, Mr. Weadock, does not include the “passing understanding” requirement in his definition of the level of ordinary skill in the art. See Weadock Decl. ¶ 20, cited at Pet. 31. For these reasons, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner with the ambiguous aspects removed. For purposes of this Decision only, one of ordinary skill in the art at the time of the invention in the ’498 patent would have had a Bachelor’s degree in Computer Science or another engineering or technical field, with at least two years of experience in World Wide Web design.8” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “(1) “perspective view”; (2) “front,” “side,” and “rear” views; (3) “isometric” view; (4) “thumbnail image[s]”; (5) “master display field”; (6) “icon”; (7) “a distinctive characteristic [to said one of said plurality of thumbnail images]”; and (8) “article.” Pet. 32–40. Patent Owner responds by addressing those claim terms. Prelim. Resp. 10–25. We do not discern a need to construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 8 Although we do not adopt Petitioner’s definition in its entirety, we decline Patent Owner’s invitation to deny the Petition on this basis alone. See Prelim. Resp. 9. Rather, because we adopt Petitioner’s expert’s definition and the Petition relies on this testimony throughout, we examine the merits of the Petition. 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 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Patent Owner argues that “Petitioner errs in mapping a female model onto the claimed ‘article.’” Prelim. Resp. 30. We agree. As argued by Patent Owner, the record does not support Petitioner’s position that the scope of the term “article” (or “articles” in parts of claim 7) includes human beings. See id. at 30–32. As an initial matter, as noted by Patent Owner, Petitioner does not explain why a human being allegedly falls within the scope of the term “article.” See Prelim. Resp. 31 (“There simply is no argument or evidence set forth in the Petition to support the interpretation that the ‘article’ term recited in claim 1 encompasses a person.”). And although Petitioner notes the parties’ agreement, in the Texas District Court, that “article” means “item” (see Pet. 40), Petitioner does not explain why a human being allegedly falls within the scope of the term “item.” Petitioner does not identify any aspect of the claim language itself that supports Petitioner’s position as to the scope of the term “article.” And, as argued by Patent Owner, the Specification strongly supports the contrary view. See Prelim. Resp. 30–31. The Specification consistently frames an “article” as an inanimate object that is, for example, “offered for purchase” and has a “price” as well as a “manufacturer” and “supplier.” See, e.g., Ex. 1001, 1:48–52 (describing the “present invention” as “a network server with enhanced graphics and improved methods for displaying articles offered for purchase, to allow a purchaser to fully evaluate the article while shopping ‘on-line’” (emphasis added)), 4:10–11 (discussing the “price of the articles or products”), 6:28–29 (discussing “an analysis of a particular article from the manufacturer, supplier, network operator and/or any other clothing professional”), 6:41–42 (discussing “[i]nformation regarding the manufacturer of a particular article”), 8:49–52 (discussing how, “each time a” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,078,498
• Oticon Medical AB / Oticon Medical LLC et al. v. Cochlear LimitedNo claims unpatentable
  PTAB · Oct 14, 2020 · IPR2019-00975 · APJ James A Worth · IPR · Final written decision

  Claims 1–12, 14, 16, 17, 25, 28, 33–35, 37–41, and 45–47 were not shown unpatentable because Petitioner failed to establish a rationale to combine Westerkull ’794 and Choi.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “At the oral hearing, Petitioner acknowledged that the differences between the parties’ assertions regarding the level of skill in the art would not be dispositive. Tr. 25:12–26:11. In view of the lack of material dispute on this issue, we adopt Patent Owner’s asserted level of skill, which we find to be supported by the testimony of Dr. Rentschler. See Ex. 2037 ¶¶ 54–55; see also Tr. 26:10–11 (Counsel for Petitioner: “We agree that the issues really here are highly mechanical.”).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We now turn to the issue of whether the preamble of claim 1 is limiting. Petitioner argues that the preamble recites an intended use because the body of claim 1 recites the structural limitations but the preamble does not. Pet. Supp. Br. 3. Petitioner also argues that the preamble recites an intended use because, in another case between the same parties involving a different claim relating to the same subject matter, the court concluded that the preamble recited an intended use. Id. at 3 (citing Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020)). Patent Owner argues that the preamble is limiting because the phrase “the bone” has its antecedent basis in the phrase “a skull bone” in the preamble. PO Supp. Br. 3 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). We determine, as a matter of reading the words of the claim, that the antecedent basis for “the bone” is “a skull bone” in the preamble of claim 1. See Ex. 1001, 5:56–57. Accordingly, we determine that the preamble is limiting. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 436 F.3d 1366 (Fed. Cir. 2006) (“anode gel” was understood to be the antecedent basis for “said zinc anode”).9 In other words, it is a requirement that the prosthesis is structured so that it is appropriate for being anchored into the skull bone. See Catalina 9 Patent Owner also argues that the cases relied on in the Petition to argue that the preamble is not limiting stand for the opposite proposition because, in those cases, the preambles were limiting because they introduced or defined terms later used in the claims. PO Supp. Br. 4 n.1 (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305–06 (Fed. Cir. 1999); Rowe v. Dror, 112 F.3d 473, 478-79 (Fed. Cir. 1997)). We agree with Patent Owner that the statement of law in the Petition, i.e., that a preamble may recite an intended use when the body of the claim recites all structural elements (see Pet. 19), is not dispositive of this case because the body of the claim refers back to the preamble. Marketing International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”). 2. the preamble: “bone fixture configured to anchor to bone” (claim 8) For similar reasons as for the preamble of claim 1, we determine that the preamble of claim 8 is limiting, i.e., because it provides antecedent basis for “the bone” in the body of the claim. However, the preamble of claim 8 only refers to “bone” and not to “a skull bone” and therefore does not itself impose a limitation of a “skull bone.” Compare Ex. 1001, 6:22, with id. at 5:56–57.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “means “a channel, distinct from the screw thread and distinct from the flange, extending around the cylindrical portion of the main body of the anchor, having an inner diameter and an outer diameter.” Pet. 20. Petitioner also asserts that a person of ordinary skill would understand that a circumferential groove is provided to “exert a compressive radial force on the skull bone to improve stability of the anchoring fixture.” Id. (citing Ex. 1013, 3; Ex. 1002 ¶ 36). The District Court construed “circumferential groove” to mean “a narrow channel extending around the cylindrical periphery of the main body of the implant.” Ex. 3001, 33.10” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “In response to our question inviting further briefing, Petitioner submits that “periphery” refers to the widest portion of the fixture inserted into the skull and distinct from the flange. See Pet. Reply 2. Patent Owner does not comment on the question. See PO Resp. 15–17. For purposes of this Decision, we determine that it is not necessary to further construe the term “periphery.” See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). 4. “wherein the anchoring fixture is configured for anchoring a hearing” slip op. at 14

  Patent outcomesUS 9,838,807 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,838,807
• Nanocellect Biomedical, Inc. v. Cytonome/St, LLCInstitution denied
  PTAB · Sep 1, 2020 · IPR2020-00548 · APJ Wesley B Derrick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–3, 9, 17, and 18 unpatentable over any asserted §103 ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes review petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”); cf. Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)) (addressing “the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’”). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations and/or alterations of the prior art would render them unpatentable as obvious. At this preliminary stage, we determine whether the information in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations and/or alterations of the prior art. slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s or master’s degree in the field of bioengineering, mechanical engineering, chemical engineering, or analytical chemistry; or a bachelor’s or master’s degree in a related field and at least three years of experience in designing or developing microfluidic systems.” Pet. 14 (citing Ex. 1002 ¶¶ 46–49). Patent Owner reserves the right to dispute Petitioner’s proposed definition of the level of ordinary skill in the art, but applies Petitioner’s proposed definition “[s]olely for purposes of [the Patent Owner Preliminary Response].” Prelim. Resp. 29. On this record, we have no reason to fault Petitioner’s definition of the level of ordinary skill and, therefore, adopt it for the purposes of this Decision. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “For the purposes of this Decision, based on the current record, we determine that the claim term “pressure pulse” means “a transient increase in pressure” because this is the plain and ordinary meaning of the term and is consistent with the use of this term in the ’295 patent. We further note that this determination is consistent with the district court’s determination that the claim term “pressure pulse” has its “plain and ordinary meaning.” Ex. 2012, 5–6. Turning to the claim term “reservoir,” for the purposes of this Decision, based on the current record, we determine that the claim term has its plain and ordinary meaning of “a physical structure that contains fluid,” but decline to reach any determination as to the nature or type of fluid as it is not necessary to resolve the issues here. Wellman, 642 F.3d at 1361. This determination is consistent with the construction adopted by the district court. Ex. 2012, 4–5. As to the recited reservoir being “adapted for dampening or absorbing a pressure pulse” (claim 1), this, and other, limitations are addressed to the limited extent necessary in reaching our Decision that Petitioner has not established a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim. Wellman, 642 F.3d at 1361.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “reservoir that absorbs or dampens a pressure pulse. The required function of the side microchannels is wholly different, and there is no showing that what is required to absorb or dampen a pressure pulse is included in the disclosed structure for introducing hydrodynamic flow into the central microchannel that cells to be sorted pass through. See generally Pet. Petitioner and Dr. Weigl rely on Wada “describing that the fluid direction components ‘nudge’ materials across the width of the first channel,’” however, that is insufficient to support Petitioner’s contention that “the opposed microchannel structure in each of Figures 22 and 23 is configured to receive . . . and to dampen and absorb the pressure pulse.” Pet. 27–29; Ex. 1002 ¶ 126. On the record before us, thus, we are not persuaded that Wada includes any reservoir adapted for dampening or absorbing a pressure pulse such as recited in the claims. As to Dr. Weigl’s testimony to the contrary, we find it conclusory, largely unsupported as applied to Wada, and entitled to little weight. Dr. Weigl contends that the orientation of opposing microchannels across from one another indicates that one, or both, of them function as a reservoir that is adapted to dampening or absorbing a pressure pulse, and then points to structures in other references that are not shown to be similar or to have the same function as support. See Ex. 1002 ¶¶ 125– 139. This position is not sufficiently supported, though, particularly where there is insufficient explanation provided as to why what Dr. Weigl contends is disclosed in the further “background references” is what is also present in Wada’s disclosed structure, and what would follow based on its function. See generally Pet.; Ex. 1002. For example, while Dr. Weigl contends that the use of microchannel structure geometry with a channel, chamber or reservoir structure across the source of the transient pressure pulse for dampening or absorbing the transient pressure pulse was well known, and that it was understood that they can be used to mitigate undesirable flow fluctuations (see, e.g., Ex. 1002 ¶¶ 126–130), it simply does not follow that a pair of oppositely-oriented microchannels, as disclosed in Wada for providing fluid flow into the main microchannel, have similar structure or that they function in like manner, and Petitioner fails to set forth clearly how the structures are sufficiently similar at a level of detail sufficient to establish like function (see generally Pet.). Similarly, Petitioner’s reliance on the disclosed Joule heating wells in Wada as dampening or absorbing a pressure pulse or fluid (id. at 29–31) fails to establish sufficient basis for including structure that is adapted to dampen or absorb a pressure or fluid (see generally Pet.; Ex. 1002). As discussed above, as to “a first reservoir . . . adapted for dampening or absorbing a pressure pulse propagated across the flow channel,” what Wada discloses falls short, and Petitioner provides no reasonable basis for modifying what is, in fact, disclosed in Wada to arrive at the claimed invention. See generally Pet. Instead, as discussed above, Petitioner merely sets forth what one of ordinary skill in the art could have done. This is not sufficient to reasonably support a ground of obviousness. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Further, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Here, absent a sufficient explanation as to why the opposing microchannels in Wada function to dampen or absorb a pressure pulse, or would be adapted to do so, there is an insufficient showing that the ground set forth by Petitioner is not grounded on hindsight reconstruction. See Grain Processing, 840 F.2d at 907.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,623,295
• Nanocellect Biomedical, Inc. v. Cytonome/St, LLCInstitution denied
  PTAB · Sep 1, 2020 · IPR2020-00550 · APJ Wesley B Derrick · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 2, 5, 13, 16, 18, or 19 unpatentable over any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). We may not institute an inter partes review “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). Applying that standard, for the reasons set forth below, we decline to institute an inter partes review because Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1, 2, 5, 13, 16, 18, and 19.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we have no reason to fault Petitioner’s definition of the level of ordinary skill and, therefore, adopt it for the purposes of this Decision. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “For the purposes of this Decision, based on the current record, we determine that the claim term “pressure pulse” is “a transient increase in pressure” because this is the plain and ordinary meaning of the term and is consistent with the use of this term in the ’797 patent. We further note that this construction is consistent with the district court’s determination that the claim term “pressure pulse” has its “plain and ordinary meaning.” Ex. 2012, 5–6. We also determine, for the purposes of this Decision and based on the current record, that the claim term “reservoir” has its plain and ordinary meaning of “a physical structure that contains fluid.” We decline to reach any determination as to the nature or type of fluid, however, as it is not necessary to resolve the issues here. Wellman, 642 F.3d at 1361. This determination is consistent with the construction adopted by the district court. Ex. 2012, 4–5. As to the recited reservoir being “adapted for dampening or absorbing a pressure pulse” (claim 1), this and other limitations, are addressed to the limited extent necessary in reaching our Decision that Petitioner has not established a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim. Wellman, 642 F.3d at 1361.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “As discussed above, as to the “first reservoir . . . adapted for dampening or absorbing a pressure pulse propagated across the width of the flow channel” (claim 5) or “dampening or absorbing the pressure pulse using a first reservoir” (claim 1), what Wada discloses falls short, and Petitioner provides no reasonable basis for modifying what is, in fact, disclosed in Wada to arrive at the claimed invention. See generally Pet. Instead, Petitioner merely sets forth what one of ordinary skill in the art could have done. This is not sufficient to reasonably support a ground of obviousness. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Further, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Here, absent a sufficient explanation for why the relied on opposing microchannels actually function to dampen or absorb a pressure pulse, or would be adapted to do so, there is an insufficient showing that the ground set forth by Petitioner is not grounded on hindsight reconstruction. See Grain Processing, 840 F.2d at 907.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,011,797
• Lornic Design, Inc. v. Humboldt B.V.No claims unpatentable
  PTAB · May 26, 2020 · IPR2019-00346 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–5 and 7–22 were not shown unpatentable because Petitioner did not establish that Machacek, Breitschmid, or Plamper was analogous art.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Bonenberger has significant education and experience in industrial engineering and with snap-fit applications. Ex. 1012 ¶¶ 2–5; Ex. 1013; Ex. 2040, 63:24–64:11, 66:13–67:12. Mr. Bonenberger’s testimony about snap-fit connections and their application is potentially helpful in determining the scope of the knowledge of one of ordinary skill in the art and whether the asserted references could be combined. Regarding whether the testimony lacks sufficient basis in facts or data, Mr. Bonenberger’s declaration expressly indicates that Mr. Bonenberger is opining based on his knowledge and experience and providing his opinion of what one of ordinary skill in the art would have understood or would have done. See Ex. 1012 ¶¶ 11 (“I have also relied upon my education, training and experience in the fields of mechanical attachments in general and, in particular, snap-fit attachment development for product applications.”), 14 (“I agree that a PHOSITA will have a bachelor’s degree in mechanical engineering or equivalent work experience.”), 16 (“A PHOSITA would make no such distinction.”), 18 (“For example, there is nothing in the relative forces experienced by the snap-fit in the application of the ‘225 that would lead a PHOSITA to believe . . . ”), 19 (“A PHOSITA would have easily understood . . . ”), 20 (“A PHOSITA would have easily understood . . . ”), 21 (“A PHOSITA would have easily understood . . . ”), 22 (“Both of these are well within the understanding of a PHOSITA.”), 23 (“Such a construction would be well within the understanding of a PHOSITA . . . ”), 25 (“In reviewing Machacek, Breits[ch]mid and Plamper, there is nothing in these patents that would cause a PHOSITA to . . . ”); Ex. 2040, 68:14–21 (Mr. Bonenberger answering “yes” to the question “[s]o, this is an example of your talking from the perspective of what a PHOSITA would understand?”). Mr. Bonenberger has reliably applied the principles and methods to the facts of this proceeding. Furthermore, even if Mr. Bonenberger does not meet the parties’ definition of one of ordinary skill in the art, his testimony, in combination with other record evidence, is useful in determining what he believes one of ordinary skill in the art may have known at the relevant time period about snap-fit connections and their application. Thus, we deny Patent Owner’s Motion to Exclude with respect to Exhibit 1012.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the full record before us, we see no reason to disturb our preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art would have “a bachelor’s degree in mechanical engineering or with equivalent work experience.” Inst. Dec. 10–11 (citing Pet. 11; Ex. 1003 ¶ 46). This level of skill in the art is consistent with the disclosure of the ’225 patent and the prior art of record.” slip op. at 21

  • Prior constructionPrior construction adoptedDecided for petitioner

    “adopted the interpretations quoted above for “female receiving end,” “narrowed entrance,” “the receiving space being substantially larger than the narrowed entrance channel along the longitudinal axis of the whip,” and “the narrowed entrance channel is directed facing away from the profiled side of the whip.” Inst. Dec. 12. Patent Owner agrees with Petitioner that the terms listed in the Petition should have the same interpretations as determined by the district court. PO Resp. 5 (citing Pet. 12). As shown above in emphases, some interpretations include “during use of the brush element.” Petitioner argues that “[n]owhere does the Court require, nor did the Board adopt a definition that requires, that the ‘use’ be the specific cleaning of animal carcasses shown in the ’225 patent.” Pet. Reply 10. We do not need to decide whether the use is specific to cleaning animal carcasses because, even if the use were not so specific, for the reasons set forth below in Section G., we would still determine that Machacek, Breitschmid, and Plamper are not in the same field of endeavor as the ’225 patent, are not reasonably pertinent to the problem facing the inventor of the ’225 patent, and would not have logically commended themselves to the inventor’s attention in considering the problem of the ’225 patent. The full record before us, thus, provides no reason to modify our preliminary decision to adopt the district court’s interpretations for the terms listed and discussed above. We, therefore, continue to apply the above-identified district court’s interpretations for (1) “female receiving space,” (2) “narrowed entrance channel” and “narrowed entrance,” (3) “the receiving space being substantially larger than the narrowed entrance channel along the longitudinal axis of the whip,” and (4) “the narrowed entrance channel is directed facing away from the profiled side of the whip” to resolve the parties’ dispute. Pet. 12–14; Ex. 1011, 16.” slip op. at 23

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “been brought to the attention of the ordinary skilled artisan, the application of Machacek to Debaere, despite the differences in male and female connections and the forces involved, would have been a matter of ordinary skill to a “person of ordinary creativity.” See Pet. 17–19; Pet. Reply 2–8; see also Tr. 45:6–47:2 (Patent Owner’s counsel addressing ordinary skill). However, Petitioner does not argue sufficiently or present sufficient evidence that Machacek logically would have commended itself to the inventor’s attention in considering the problem of the ’225 patent. See Pet. 17–19; Pet. Reply 2–8; Ex. 1003 ¶ 60. Specifically, Petitioner does not present sufficient argument and evidence why one of ordinary skill in the art would have looked to Machacek for a solution to the problem addressed by the ’225 patent or why Machacek’s pinwheel testing device that reduces the risk of transferring blood borne disease logically would have commended itself to an inventor’s attention when considering the problem of replacing brush elements attached to a rotatable body that imparts rotation to the brushes rotatably attached to it. Clay, 966 F.2d at 659. Even considering the structural similarities of Debaere and Machacek, which is Petitioner’s basis for combining the references, the full record does not explain why or how one of ordinary skill in the art would have considered Machacek at all so that the asserted structural similarities would have been perceived or Machacek would have prompted applying a particular connection to Debaere. Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47

  Patent outcomesUS 9,433,225 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,433,225
• Eli Lilly And Company v. Teva Pharmaceuticals International GmbHNo claims unpatentable
  PTAB · Mar 31, 2020 · IPR2018-01711 · APJ James A Worth · IPR · Final written decision

  The Board held claims 1–18 of the ’907 patent not unpatentable over Olesen, Tan, and Queen under §103, finding Lilly had not met its burden.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “appreciable difference in the parties’ respective definitions of a person of ordinary skill in the art. Inst. Dec. 8. Accordingly, we determined for purposes of our Institution Decision that a person of ordinary skill in the art” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “2. “effective amount” The term “effective amount” is recited in all of the independent” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Reply. In fact, Petitioner argues that “[t]he prior art expressly recognized the downside of treating migraine patients with CGRP inhibitors having a short half-life,” citing to a report that CGRP8-37 (a peptide fragment of CGRP) “‘proved ineffective in migraine treatment’ due to ‘its low potency and short half-life.’” Pet. 31 (citing Ex. 1031, 323; Ex. 1014 ¶ 124) (emphasis by Petitioner). Accordingly, we find that Petitioner has not sufficiently established that a POSA would have been motivated to humanize an anti-CGRP antibody fragment.” slip op. at 93

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “the cross-examination of Dr. Ferrari as beyond the scope of Dr. Ferrari’s direct testimony. Mot. Excl. 9. Upon review of the Ferrari Declaration, Exhibit 2268, we agree that questions on cyclic AMP were beyond the scope of the Ferrari Declaration. Accordingly, we grant this aspect of the motion.” slip op. at 159

  Patent outcomesUS 9,884,907 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,884,907
• Eli Lilly And Company v. Teva Pharmaceuticals International GmbHNo claims unpatentable
  PTAB · Mar 31, 2020 · IPR2018-01710 · APJ Richard J Smith · IPR · Final written decision

  The Board found that Lilly did not prove claims 1, 3, 4, 8–17, 19, 20, and 24–31 of the ’045 patent, or claims 1–18 of the ’907 and ’908 patents, unpatentable over Olesen, Tan, and …

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “appreciable difference in the parties’ respective definitions of a person of ordinary skill in the art. Inst. Dec. 8. Accordingly, we determined for purposes of our Institution Decision that a person of ordinary skill in the art” slip op. at 13

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “conclusion based on underlying factual findings. Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018)). The underlying factual findings include whether the reference was publicly accessible. Id. (citing In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011)). In an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication. Id. (citing Medtronic Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)); see also In re Wyer, 655 F.2d 221, 227 (CCPA 1981) (a party asserting a reference as a prior art printed publication should provide sufficient proof of accessibility).” slip op. at 152

  • Strike new argumentNew argument consideredDenied

    “(Ex. 2239), and also the opportunity to submit a Sur-reply (Paper 43). Therefore, we determine that Patent Owner has failed to meet its burden to show that the arguments and evidence should be stricken. See 37 C.F.R. § 42.20; Genzyme Therapeutic Prods. L.P. v. Biomarin Pharm Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016); see also Anacor Pharms., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (reply may document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness). Accordingly, this aspect of the motion is denied.” slip op. at 163

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “Reply. In fact, Petitioner argues that “[t]he prior art expressly recognized the downside of treating migraine patients with CGRP inhibitors having a short half-life,” citing to a report that CGRP8-37 (a peptide fragment of CGRP) “‘proved ineffective in migraine treatment’ due to ‘its low potency and short half-life.’” Pet. 31 (citing Ex. 1031, 323; Ex. 1014 ¶ 124) (emphasis by Petitioner). Accordingly, we find that Petitioner has not sufficiently established that a POSA would have been motivated to humanize an anti-CGRP antibody fragment.” slip op. at 93

  Patent outcomesUS 8,586,045 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,586,045
• Eli Lilly And Company v. Teva Pharmaceuticals International GmbHNo claims unpatentable
  PTAB · Mar 31, 2020 · IPR2018-01712 · APJ James A Worth · IPR · Final written decision

  The Board held claims 1–18 of the ’908 patent not unpatentable because Lilly failed to prove the Olesen, Tan, and Queen obviousness ground by a preponderance of the evidence.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Reply. In fact, Petitioner argues that “[t]he prior art expressly recognized the downside of treating migraine patients with CGRP inhibitors having a short half-life,” citing to a report that CGRP8-37 (a peptide fragment of CGRP) “‘proved ineffective in migraine treatment’ due to ‘its low potency and short half-life.’” Pet. 31 (citing Ex. 1031, 323; Ex. 1014 ¶ 124) (emphasis by Petitioner). Accordingly, we find that Petitioner has not sufficiently established that a POSA would have been motivated to humanize an anti-CGRP antibody fragment.” slip op. at 93

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “form, not relevant, vague, mischaracterized the witnesses’ prior testimony, called for a legal conclusion, lacked clarity, or contained compound questions. Mot. Excl. 7–12. We consider Patent Owner’s arguments in this regard to address issues of weight rather than admissibility, and we deny these aspects of the motion. See Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014) (sitting as a non-jury tribunal, the Board may assign appropriate weight to evidence presented) (citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941)).” slip op. at 158

  • Strike new argumentNew argument consideredDenied

    “(Ex. 2239), and also the opportunity to submit a Sur-reply (Paper 43). Therefore, we determine that Patent Owner has failed to meet its burden to show that the arguments and evidence should be stricken. See 37 C.F.R. § 42.20; Genzyme Therapeutic Prods. L.P. v. Biomarin Pharm Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016); see also Anacor Pharms., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (reply may document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness). Accordingly, this aspect of the motion is denied.” slip op. at 163

  Patent outcomesUS 9,884,908 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,884,908
• Illumina, Inc. v. The Trustees Of Columbia University In The City Of New YorkAll claims unpatentable
  PTAB · Sep 9, 2019 · IPR2018-00797 · APJ Michelle N Ankenbrand · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over the instituted grounds; the Board also denied Petitioner’s motion to exclude and found no estoppel against Patent Owner.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “II. PETITIONER’S MOTION TO EXCLUDE In support of its briefing, Patent Owner provided a declaration of” slip op. at 9

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “proceedings or would otherwise have a collateral estoppel effect on the current proceedings. See Paper 59, 4–5. For the reasons set forth below, we determine that the claims of the ’985 patent have material differences from the claims at issue in the previous proceedings, and that there is no inconsistency between Patent Owner’s positions in the current proceeding and in the previous proceedings. Accordingly, we determine that there is no estoppel attaching to Patent Owner with respect to the present inter partes reviews. Below, we provide a brief history of the previous proceedings and then address Petitioner’s contentions.” slip op. at 61

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for patent owner

    “analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50

  Patent outcomesUS 9,868,985 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,868,985
• Garmin International, Inc. / Garmin USA, Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 28, 2019 · IPR2018-00565 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 4, 5, 7–14, 56–58, 140, 144, and 146 were not shown unpatentable under § 103 over the instituted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “The ’576 patent does not include an explicit definition for “interpreting.” See generally Ex. 1001. We note, however, that claims 1 and 13 recite “a “microprocessor capable of . . . interpreting . . . said movement data.” With this language in mind, the ’576 patent discloses that the device “employs a user-programmable microprocessor which receives, interprets, stores and responds to the movement data.” Id. at 2:13–15; see also id. at Abstract (making substantially similar statement). These disclosures indicate that “interpreting” is distinct from receiving, storing, and responding to the data, and are consistent with claims 1 and 13, which recite “interpreting” distinctly from receiving, storing, and responding. Furthermore, the ’576 patent discloses that microprocessor 32 “receives the signals generated by the movement sensor 30 for analysis and subsequent processing” and “analyzes and responds to the movement data signals from the sensor 30.” Id. at 4:52–57 (emphases added). Therefore, in the context of the claims and the Specification of the ’576 patent, we determine that the ordinary and customary meaning of the phrase “interpreting . . . said movement data” is “analyzing the movement data.”” slip op. at 11

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We note, however, that Federal Circuit has recently held that “the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, No. 2018-1167, 2019 WL 3418549, at *16 (Fed. Cir. July 30, 2019). The Federal Circuit addressed arguments made under both the due process and takings clauses of the Fifth Amendment in so holding. Id. at *11–16. We discern no other argument from Patent Owner in this case other than those expressly rejected by the Federal Circuit. Thus, in view of Celgene, we find Patent Owner’s argument unpersuasive.” slip op. at 13

  • BurdenNot shown unpatentable

    “On balance, we are not persuaded on the full record that Stewart discloses that processor 52 controls the comparing function. Accordingly, we determine that Petitioner has not met its burden of establishing that Stewart’s processor 52 interprets movement data. Regarding the limitation of the microprocessor being capable of “detecting a first user-defined event based on the movement data and at least one of the user-defined operational parameters regarding the movement data,” Petitioner asserts that Stewart discloses a processor detecting an event, such as a spearing movement in football, based on acceleration data and a defined/predetermined threshold. Pet. 25 (citing Ex. 1004, 5:4–7, 14:6–11). Petitioner also asserts that it would have been obvious to one of ordinary skill in the art to modify Stewart’s system to enable user adjustment of the predetermined threshold to accommodate different users as taught by Rush. Id. at 25 (citing Ex. 1010 ¶¶ 59). As an initial point, we note that Petitioner relies on the same disclosures from Stewart (i.e., Ex. 1004, 5:4–7, 14:6–11) for disclosing both interpreting data and detecting an event, but does not provide a sufficient explanation of how these same disclosures teach two different claim limitations. Moreover, we disagree that Stewart expressly discloses that processor 52 detects an event such as spearing. Stewart merely discloses that it may be “possible to determine if a football player is improperly using his helmet (e.g., illegal spearing)” without specifying that such determination is performed by processor 52. See Ex. 1004, 14:4–14). As discussed above, Stewart’s disclosure with respect to the accelerometer responses exceeding a predetermined threshold indicates that this processing is accomplished by a receiver remote from the self-contained helmet system and, thus, is not performed by the processor. See id. at 14:6–9 (disclosing that when correlating accelerometer responses “with desirable punches exceeding a predetermined threshold,” the responses are “processed and scored at a ringside receiver”). For these reasons, we determine that Petitioner has not shown that the combination of Stewart and Rush teaches or suggests the detecting limitation of claim 1.” slip op. at 21

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,059,576

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.