- Novartis Gene Therapies, Inc. / Novartis Pharmaceuticals Corporation v. Genzyme CorporationInstitutedPTAB · Jan 9, 2024 · IPR2023-01044 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted review of claims 1–3 and 17–34 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
- PTAB / AIA Trials › Real party in interest / privityOther
“Petitioner asserts that Novartis Gene Therapies, Inc. and Novartis Pharmaceuticals Corporation are the real parties in interest. Pet. 68. Patent Owner asserts that “Sanofi, the ultimate parent company of Genzyme Corporation, Genzyme Corporation, and Aventis, Inc. are the real parties-ininterest.” Paper 8, 2.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that the claim terms require no express construction. Pet. 21. Patent Owner does not challenge Petitioner’s position. Prelim. Resp. 30. Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,429,288 - Arthrex, Inc. v. P Tech, LLCAll claims unpatentablePTAB · Nov 21, 2023 · IPR2022-01043 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–20 are unpatentable: claims 8, 11, 13, 14, 16, and 18–20 are anticipated by Fumex, and the remaining claims are held unpatentable on obviousness grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“After considering the above factors and Petitioner’s proposed level of skill in the art, for purposes of our Institution Decision, we defined a person of ordinary skill in the art as someone having a medical degree and at least two years of experience performing surgeries with implantable medical devices, such as suture anchors. Inst. Dec. 10. Patent Owner and its expert Dr. Pedowitz agree with our analysis in the Institution Decision, and employ our definition of a person of ordinary skill in the art. PO Resp. 16; Ex. 2001 (Pedowitz Decl.) ¶ 21. After institution, Petitioner did not dispute our definition. See generally Reply. Accordingly, and for the reasons discussed in our Institution Decision, we maintain our definition of a person of ordinary skill in the art as someone having a medical degree and at least two years of experience performing surgeries with implantable medical devices, such as suture anchors. See Inst. Dec. 8–10.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the absence of any meaningful claim construction analysis of this term from the parties, and because we find that for purposes of resolving the disputes at issue in this Decision, a construction of “passage” is unnecessary, we decline to construe this term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In sum, the Specification and prosecution history use the terms “knotless” and “knot” in ways consistent with their known meanings in the art. “[T]o deviate from the plain and ordinary meaning of a claim term to one of skill in the art, the patentee must, with some language, indicate a clear intent to do so in the patent.” Hill-Rom Servs., Inc., 755 F.3d at 1373. The Specification and prosecution history are devoid of any clear intention to deviate from the so-called “legacy” meaning of “knotless,” as admittedly used in the context of “knotless suture anchors.” We see nothing in the intrinsic record that supports Patent Owner’s argument that it “coined” a different meaning for this term in connection with the claimed fasteners. We agree with Petitioner that “it strains logic that [inventor] Dr. Bonutti would include ‘knotless’ within a lengthy list of characteristics that a fastener could take on—and without any further explanation, definition, or stated benefits—if he intended ‘that it wasn’t the way the term might commonly have been used at that time.’” Reply 5–6 (quoting Ex. 1018 (Pedowitz Depo. Tr.), 20:15–22); see also Ex. 1018 (Pedowitz Depo. Tr.), 24:6–26:1, 27:12–18 (Dr. Pedowitz unable to identify any other portions of the Specification that use or define the term “knotless”), 27:19–24 (admitting that the Specification does not identify any benefits of a “knotless fastener” (per Patent Owner’s proposed construction)).” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In accordance with our construction of the term “knotless” fastener, we agree with Petitioner that because Fumex’s sleeve can be retained in place without tying a knot at the site where it is secured in place, Fumex discloses a “knotless” fastener as recited in claims 19 and 20. See Pet. 37– 38; Ex. 1002 (Jordan Decl.) ¶¶ 111–15. We adopt Petitioner and Dr. Jordan’s reasoning as our own. See id. We note that Patent Owner does not dispute that a knot is not tied in connection with securing Fumex’s fastener.20 See, e.g., Sur-reply 21 (arguing that “Fumex’s bone anchor retains the anchor in place in bone – not by tying a knot – but by forming a knot by pulling on one or both strands of the suture”). Instead, Patent Owner’s argument for why Fumex fails to teach a “knotless” fastener is based on its proposed claim construction. See PO Resp. 20 (“Fumex does not disclose a flexible hollow fastener that is ‘knotless’ as Patent Owner and Dr. Pedowitz have construed this term in this Proceeding.”); Sur-reply 1 (“It is undisputed that the claim construction of a ‘knotless’ fastener will decide this case.”), 23 (“If Patent Owner’s construction of “knotless” fastener is adopted, then claims 19 and 20 of the 20 In this regard, although Dr. Jordan referred to a “bigger knot” when discussing Fumex, he did not describe Fumex as requiring tying of a knot. See Ex. 2002 (Jordan Depo. Tr.), 19:21–20:8. Our construction requires elimination of knot-tying; it does not encompass the elimination of any structure that could be considered a “knot” in the general sense of the word. See Reply 21 n.6; Tr. 16:10–17:10. ‘453 Patent are not anticipated by Fumex, which fails to disclose a knotless fastener.”); see also Reply 21 (asserting that “Patent Owner has not disputed that Fumex meets Petitioner’s proposed construction of ‘knotless.’”). Because we reject Patent Owner’s proposed construction of “knotless” (see supra Section II.C.2), Patent Owner’s argument that Fumex fails to teach a “knotless” fastener is unavailing. In sum, for the reasons discussed above, we determine that Petitioner has shown by a preponderance of the evidence that Fumex anticipates claims 8, 11, 13, 14, 16, and 18–20.” slip op. at 45
Patent outcomesUS 9,814,453 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,814,453 - Arthrex, Inc. v. P Tech, LLCAll claims unpatentablePTAB · Nov 21, 2023 · IPR2022-01066 · APJ Jeffrey N Fredman · IPR · Final written decision
Claims 1–26 are unpatentable under § 103, principally over Fumex and Grafton and the additional combinations; the Board did not reach alternative grounds 1, 3, 5, 7, and 9.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“In our Institution Decision we considered these factors and determined based on the record before us that “a person of ordinary skill in the art would have had a medical degree and at least two years of experience performing surgeries with implantable medical devices, such as suture anchors.” Inst. Dec. 9. Patent Owner agrees with this determination, stating Patent Owner and Dr. Pedowitz, Patent Owner’s expert, agree with the Board’s analysis at pages 7–9 of the Institution Decision that a POSITA [person of ordinary skill in the art] would have a medical degree and at least two years of experience performing surgeries with implantable medical devices, such as suture anchors. Ex 2001, ¶ 18. PO Resp. 21. After institution, Petitioner did not dispute our definition and did not further address the level of ordinary skill in the art in the Petitioner’s Reply. See generally Pet. Reply. Accordingly, we maintain our definition of a person of ordinary skill in the art as someone having a medical degree and at least two years of experience performing surgeries with implantable medical devices, such as suture anchors.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The ’259 Specification is permissive of multiple flexible elongated fastening members, generally termed sutures, teaching “the device may allow for the implantation of multiple sutures and fasteners in tissue with little or no repositioning of the device.” Ex. 1001, 4:61–63. The ’259 Specification does disclose a situation where “two passages 162 and 164 may be drilled in tissue, like a fractured bone 166, and two sutures or fastening members may be positioned through the passages, tensioned, and secured.” Id. at 18:11–14. But the ’259 Specification is also permissive of a single flexible elongated fastening member where a “suture 56 is looped through or connected with the fastener 52 such that one, two, or more sections, legs, strands, or portions of the suture 56 extend from the fastener 52.” Ex. 1001, 6:44–47. The intrinsic evidence therefore is open to Patent Owner’s interpretation of “a” as “one or more.” Nor does anything in the ’259 Specification supply a clear and manifest disavowal of that meaning.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“not established the necessary predicate that they coined the term “knotless” in the ’259 patent. The standard for “coining a term” or an inventor serving as their own lexicographer in a patent is set forth in Paulsen, which states Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision. “Where an inventor chooses to be his own lexicographer and to give terms uncommon meanings, he must set out his uncommon definition in some manner within the patent disclosure” so as to give one of ordinary skill in the art notice of the change. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). When Petitioner and Dr. Jordan point to prior art showing that there was a legacy meaning of “knotless,” and that this meaning of “knotless” differs from Patent Owner’s reliance on a meaning of “knotless” not stated or discussed in the ’259 patent, Petitioner reasonably relies upon the prior art meaning of “knotless.” See Ex. 1002 ¶ 46. On the full trial record, Patent Owner has not identified statements within the Specification which provide notice that the term “knotless” was intended to have a meaning distinct from the use as a fastener in a location without the use of a knot, as understood by Dr. Jordan. Ex. 1002 ¶ 44. And Dr. Jordan expressly stated that he considered jumbled sutures pressed into a hole and pulled tight as not a knot (i.e., knotless) but rather simply functioning as an anchor. Ex. 2002, 40:11–41:9. 3. Conclusion We therefore interpret the term “knotless” in the context of the fasteners on this trial record as reading on a suture-restraining structure that can be retained in place without tying a knot at the site where the fastener is secured in place.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner asserts that a “POSITA would have found Grafton’s braided suture to be an obvious choice of suture thread for use in Fumex’s bone anchoring device” because “a suture including polyethylene could have been chosen by a POSITA for applications requiring a relatively higher suture strength. Grafton expressly describes suture strength as being ‘an important consideration in any surgical suture material.’ Ex. 1005, ¶[0004]; Ex. 1002, ¶153.” Pet. 49–50. Petitioner also asserts Grafton specifically states that the suture is “ideal” for “rotator cuff repair, Achilles [sic] tendon repair, patellar tendon repair, and ACL/PCL reconstruction”—some of the very types of procedures for which Fumex’s bone anchoring device is intended to be used. Ex. 1004, 4:38-41, 1:7-12, 2:1-8; Ex. 1005, ¶[0009]; Ex. 1002, ¶152-53. Pet. 50. Petitioner asserts a “POSITA would have had a reasonable expectation of success in combining Fumex’s bone anchoring device with Grafton’s suture thread. Ex. 1002, ¶154.” Pet 51. Petitioner asserts “a POSITA would have expected Grafton’s flexible suture to be as capable of being threaded through Fumex’s flexible sleeve as any other suture. Ex. 1002, ¶¶155-56.” Pet. 51. Patent Owner asserts that “Fumex fails to describe or suggest that at least a portion of its thread is fabricated with polyethylene as required in claim element [1.3]. For this reason alone, claim 1 is not obvious from Fumex.” PO Resp. 28. Patent Owner does not, however, dispute the obviousness of claim element [1.3] in Ground 2 based on “the combination of Fumex and Grafton due in part to the high suture strength of polyethylene as disclosed by Grafton. Petition, 50, Ex 1002, ¶ 153.” Id. at 38–39. We agree with and adopt Petitioner’s undisputed analysis.” slip op. at 39
Patent outcomesUS 10,376,259 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,376,259 - PTAB · Nov 21, 2023 · PGR2023-00026 · APJ Susan L C Mitchell · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that claims 1–19 were unpatentable, including because the proposed prior-art combination lacked a sufficient reason to select Ruminococcus for skin …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of post-grant review is authorized by statute only when “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”1 35 U.S.C. § 324; see 37 C.F.R. § 42.4. Upon considering the Petition, Preliminary Response, and the cited evidence, we conclude that Petitioner has not satisfied its burden under 35 U.S.C. § 324 to show that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“7 Patent Owner requested that we exercise our discretion to deny institution under 35 U.S.C. § 325(d). See Prelim. Resp. 11–49. Because we determine on the merits that no post-grant review should be instituted, we will not address Patent Owner’s arguments concerning Section 325(d).” slip op. at 44
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner counters that Petitioner has set the level of skill of a person of ordinary skill in the art too low. Prelim. Resp. 9–11; Ex. 2001 ¶ 25. Patent Owner asserts that a POSA would have a more advanced degree than a bachelor of science and would have more specific work experience. Id. For instance, Patent Owner asserts: A POSA for the ’838 Patent typically would have an advanced degree, such as an M.D. or a Ph.D., with experience and training in oncology, have several years of experience with administering oncology treatments to subjects and evaluating results of such treatments, and have experience or knowledge in microbiome science and its modulation, inclusive of studies that involve stool microbiome profiling, as well as experience in, or knowledge of, related research and development of bacterial-based cancer treatments. A POSA may also have worked as part of a multi-disciplinary team and drawn upon not only his or her own skills, but also taken advantage of certain specialized skills of others in the team, to solve a given problem. For example, such a team may include a clinician, an immunologist, microbiologist, bioinformatician, molecular biologist, manufacturing specialist, and/or pharmaceutical formulator. Prelim. Resp. 9–10 (citing Ex. 2001 ¶¶ 26–27). Patent Owner concludes that by applying the inappropriately low level of skill of a POSA, “Petitioner overstates the amount of guidance needed in the specification to describe and enable the claimed methods.” Prelim. Resp. 11. Patent Owner confirms, however, that all arguments on all grounds presented in the Preliminary Response “apply regardless of which party’s POSA definition is used.” Prelim. Resp. 11 n.2. We disagree with Patent Owner that a POSA is required to have a” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Patent Owner acted as its own lexicographer and expressly defined “isolated” and “purified” as follows. The term “isolated” encompasses a bacterium or other entity or substance that has been (1) separated from at least some of the components with which it was associated when initially produced (whether in nature or in an experimental 6 Available at https://www.uspto.gov/sites/default/files/documents/IndefinitenessMemo.pd f?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email& utm_name=&utm_source=govdelivery&utm_term=. setting), and/or (2) produced, prepared, purified, and/or manufactured by the hand of man. Isolated bacteria may be separated from at least about 10%, about 20%, about 30%, about 40%, about 50%, about 60%, about 70%, about 80%, about 90%, or more of the other components with which they were initially associated. In some embodiments, isolated bacteria are more than about 80%, about 85%, about 90%, about 91%, about 92%, about 93%, about 94%, about 95%, about 96%, about 97%, about 98%, about 99%, or more than about 99% pure. As used herein, a substance is “pure” if it is substantially free of other components. The term “purify,” “purifying” and “purified” refer to a bacterium or other material that has been separated from at least some of the components with which it was associated either when initially produced or generated (e.g., whether in nature or in an experimental setting), or during any time after its initial production. A bacterium or a bacterial population may be considered purified if it is isolated at or after production, such as from a material or environment containing the bacterium or bacteria population, and a purified bacterium or bacterial population may contain other materials up to about 10%, about 20%, about 30%, about 40%, about 50%, about 60% about, 70%, about 80%, about 90% or above about 90% and still be considered “isolated.” In some embodiments, purified bacteria and bacterial populations are more than about 80%, about 85%, about 90%, about 91%, about 92%, about 93%, about 94%, about 95%, about 96%, about 97%, about 98%, about 99%, or more than about 99% pure. In the instance of bacterial compositions provided herein, the one or more bacterial types present in the composition can be independently purified from one or more other bacteria produced and/or present in the material or environment containing the bacterial type. Bacterial compositions and the bacterial components thereof are generally purified from residual habitat products. Ex. 1001, 28:40–29:11. In reviewing the express definitions of “isolated” and “purified,” it is not surprising that the two similar terms, “isolated” and “purified,” may have overlapping definitions. We agree with Patent Owner that such overlap does not mean the definitions lack “reasonable clarity, deliberateness, and precision” that would inform a POSA with reasonable certainty about the scope of claim 1. We also agree with Patent Owner that a POSA would understand the two parts of the definition of “isolated” set forth above.” slip op. at 30
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham · NautilusPatents in suitUS 11,395,838 - PTAB · Nov 17, 2023 · IPR2023-00894 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–15 on all petitioned grounds, finding a reasonable likelihood of prevailing and declining discretionary denial under Fintiv and § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Legal Standards “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) (2012) (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 burden of proof in inter partes review).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownNo construction neededOther
“to be construed.” 37 C.F.R. § 42.104(b)(3). But only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA trial proceeding). For the purpose of this Decision, we need address only the terms “bore” and “at a terminal end.”” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Contrary to Patent Owner’s analysis, we preliminarily construe a “bore” as “a hole or passage made by or as if by the turning or twisting movement of a tool such that its interior walls have a cylindrical cross-section, and which do not exclude and may include holes or passages having tapered or stepped longitudinal cross-sections.” See supra Section II.C.1. As such, and on the limited record before us, Cognet discloses a bore and further satisfies all elements of claim phrase 1[c][iii]. c) Conclusion as to Ground 1 In view of the above preliminary construction, Petitioner establishes sufficiently that Cognet discloses claim element 1[c][iii]. Patent Owner does not dispute any other element of Ground 1 in its Preliminary Response. Having considered the evidence of record, we determine that Petitioner has established sufficiently that these remaining elements are also disclosed in Cognet. According, and solely for the purpose of institution, Petitioner has demonstrated a reasonable likelihood that Cognet anticipates claim 1.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On the present record, we decline to speculate whether the pending motion to stay might be successful. Accordingly, Fintiv Factor 1 is neutral.” slip op. at 29
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,298,166 - Apple Inc. v. Alivecor, Inc.All claims unpatentablePTAB · Oct 26, 2023 · IPR2022-01186 · APJ Jeffrey N Fredman · IPR · Final written decision
Claims 1–14 are unpatentable as obvious, including under the Albert–Vyshedskiy–Platt and Batkin–Vyshedskiy grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had either (1) at least a bachelor of science in electrical engineering, mechanical engineering, or biomedical engineering, or a related discipline, with at least two years of relevant multidisciplinary work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals, or (2) a medical degree and at least five years of relevant work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals. Pet. 5; Ex. 1003 ¶ 15. Patent Owner “applies the level of skill provided in the petition.” PO Resp. 9; Ex. 2003 ¶ 25. The level of ordinary skill in the art usually is evidenced by the prior art references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). For this decision, we apply Petitioner’s stated level of ordinary skill in the art, which is consistent with the level of skill reflected in the ’042 patent and the prior art of record.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Here, we construe only those claim terms that require analysis to determine the patentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”). Petitioner asserts “no formal claim constructions are necessary in this proceeding.” Pet. 5–6. Patent Owner asserts “no claim term needs to be expressly construed to find that Petitioner has not met its burden in establishing the unpatentability of the claims by a preponderance of the evidence. EX2003, ¶¶26-27.” PO Resp. 9. We agree that no terms require claim construction.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Ph.D., in support of the asserted grounds. Ex. 1003. Patent Owner relies upon the declaration of Dr. Roozbeh Jafari, Ph.D. Ex. 2003. Based on the statements of qualifications and curricula vitae, we find Petitioner’s declarant Dr. Sarrafzadeh qualified to provide technical opinions from the perspective of a person of ordinary skill in the art in this proceeding. See 1 Because the patent was filed before March 16, 2003, pre-AIA § 103(a) is applicable. 2 Albert et al., US 5,735,285, issued Apr. 7, 1998. Ex. 1022. 3 Vyshedskiy et al., US 2004/0220488 A1, published Nov. 4, 2004. Ex. 1005. 4 Platt et al., US 6,485,416, issued Nov. 26, 2002. Ex. 1006. 5 Annavaram et al., Multimodal Sensing for Pediatric Obesity Applications, Proceedings of the International Workshop on Urban, Community, and Social Applications of Networked Sensing Systems (UrbanSense) 1–5 (Nov. 2008). Ex. 1007. 6 Batkin et al., US 2005/0239493 A1, published Oct. 27, 2005. Ex. 1008. 7 Sacco Boschetti, US 7,394,899 B2, issued July 1, 2008. Ex. 1021. curricula vitae, we find Patent Owner’s declarant Dr. Jafari qualified to provide technical opinions from the perspective of a person of ordinary skill in the art in this proceeding. See Ex. 2003 ¶¶ 1–9.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Patent Owner asserts that Petitioner’s reliance on avoidance of voice interference as a rationale is based on hindsight. See PO Resp. 17–19. Petitioner does not point to any specific disclosure in either Albert, Vyshedskiy, or Platt that suggests voice interference would have been an issue in the transmission of the ECG acoustic signals, instead relying on statements of Dr. Sarrafzadeh such as to choose a carrier frequency from about 6 kHz to about 20 kHz (e.g., 42 f3=7,500 Hz, f4=10,000 Hz, f5=12,500 Hz, f6=15,000 Hz, f7=17,500 Hz, f8=20,000 Hz) to avoid interference from human voice, which can reach the frequency of about 5 kHz. Ex. 1003 ¶ 53 (cited in Pet. 12). Dr. Jafari acknowledges in deposition testimony that “the interference was a known fact. But in the context of how this invention is expected to operate, was novel at the time in my opinion.” Ex. 1027, 65:23–65:1. We agree with Dr. Jafari and Patent Owner that simply because interference of sound waves was a known phenomenon at the time of the invention does not demonstrate that the ordinary artisan would have had reason to select particular carrier frequencies for the ECG acoustic signals that avoided human voice frequencies in the absence of any disclosure that such frequencies were known to interfere. Rather, we agree with Patent Owner that this is hindsight reasoning because until the ’042 patent pointed out this concern in the context of claim 1, there is no indication the prior art recognized that human voice interference was an issue.” slip op. at 29
Patent outcomesUS 9,649,042 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,649,042 - Apple Inc. v. Alivecor, Inc.Some claims unpatentablePTAB · Oct 26, 2023 · IPR2022-00872 · APJ Jeffrey N Fredman · IPR · Final written decision
Claims 1, 2, 4–8, 10, 12, and 13 are unpatentable as obvious; claims 3, 9, and 11 were not shown unpatentable because the combinations lacked a persuasive reason to record spoken messages simultaneously with ECG …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“PO Resp. 9. Patent Owner asserts “a POSA would have understood the plain and ordinary meaning of the term ‘acoustic signal’ [is] a signal that is transmitted as a sound wave through the ambient environment.” Id.; Ex. 2003 ¶ 25. Patent Owner therefore asserts a POSA would have understood the claimed “frequency modulated ECG acoustic signal” is a signal that is transmitted as a sound wave through the ambient environment, [and excludes] signals transmitted by electronic or wireless radio means, because claim 1 requires the acoustic signal to be “received from a built-in microphone of the smartphone.” PO Resp. 9; Ex. 2003 ¶ 26. Petitioner responds by asserting that “a POSITA would have understood that acoustic transmission is a form of wireless transmission.” Pet. Reply 24; Ex. 1021, 46:7–47:5 (citing the Jafari Deposition where Dr. Jafari stated “in the event of an acoustic signal, there is no need to connect a wire”) Having considered the entire record, we do not find there is a substantive dispute over the term “acoustic signal” as both Patent Owner and Petitioner agree that acoustic signals include wireless signals transmitted as a sound wave through the environment. We will apply this understanding in our further analysis.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) would have had either (1) at least a bachelor of science in electrical engineering, mechanical engineering, or biomedical engineering, or a related discipline, with at least two years of relevant multidisciplinary work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals, or (2) a medical degree and at least five years of relevant work experience designing wearable devices and/or sensors for measuring physiological signals or parameters of mammals.” slip op. at 5
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“interference of sound waves was a known phenomenon at the time of the invention does not demonstrate that the ordinary artisan would have had reason to select particular carrier frequencies for the ECG acoustic signals that avoided human voice frequencies in the absence of any disclosure that such frequencies were known to interfere. Rather, we agree with Patent Owner that this is hindsight reasoning because until the ’882 patent pointed out this concern in the context of claim 1, there is no indication the prior art recognized that human voice interference was an issue.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMixed
“that Vyshedskiy’s disclosure of a list of preferred carrier frequencies represents a permissible “obvious to try” situation. In KSR, the Supreme Court stated that a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421. And simply because the prior art “discloses a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The instant facts represent a situation where, at the time of invention in 2010, it would have been obvious to try the known carrier frequencies of Vyshedskiy for modulation of the acoustic ECG signal of Albert in the claimed frequency range of 6 kHz to 20 kHz because these carrier frequencies would have been obvious alternatives to try to address Vyshedskiy’s disclosed design need for simultaneous measurement of heart sound auscultation and ECG heart cycle. See Pet. 17 (citing Ex. 1005 ¶¶ 13– 15).” slip op. at 27
Patent outcomesUS 8,509,882 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,509,882 - Extractiontek Sales LLC v. Gene Pool Technologies, Inc.No claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00832 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–19 were not shown unpatentable under the six §103 grounds because Petitioner failed to articulate an adequately supported reason to combine Hebert with Britt or Buese.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“On the full trial record, we adopt Petitioner’s proposed level of ordinary skill in the art, with Patent Owner’s additions. The additions are consistent with the evidence of record. For example, we find that adding chemistry and biology degrees is appropriate in view of Dr. Miller’s testimony that college-level chemistry and biology courses typically include training on extractive technologies. Ex. 1021 (Miller Tr.), 38:9–39:18. We also agree with Patent Owner that the educational level of the inventors may be considered (see Env’t Designs, Ltd., 713 F.2d at 696), and on this record, we accept Patent Owner and Dr. Miller’s undisputed representation that “named inventor Jason Wasserman had a bachelor’s degree in Agricultural Science and Sustainable Agriculture, a life sciences degree.” Ex. 2008 (Miller Decl.) ¶ 42; PO Resp. 4. Thus, for the reasons above, we define a person of ordinary skill in the art as someone who would have had (1) a bachelor’s degree in chemistry, biology, mechanical engineering, chemical engineering, petroleum engineering, or an equivalent field of physical science, life science, or engineering; and some academic or industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices; or (2) at least four years of industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Mr. Chess. First, as noted above, his declaration simply parrots the arguments in the Petition and thus does not add any analysis not already discussed above. See, e.g., TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“conclusory expert testimony is inadequate to support an obviousness determination”); InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1353–54 (Fed. Cir. 2014) (reversing district court’s judgment of invalidity because the expert testimony “failed to provide any meaningful explanation for why one of ordinary skill in the art would be motivated to combine these references at the time of this invention”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Aug. 24, 2022) (precedential). Second, we agree with Patent Owner that Mr. Chess’s opinion on motivation to combine is entitled to little, if any, weight in view of his crossexamination testimony, which expressly undermined any reason to combine Britt and Hebert. See PO Resp. 2–3, 12. When specifically asked to explain paragraph 73 of his Declaration regarding his opinion articulating a motivation to combine Britt and Hebert, Mr. Chess responded: “I’m personally not motivated to combine anything from any of these guys together. I think they’re all knuckleheads and didn’t know what they were doing, to be frank.” Id. at 24 (quoting Ex. 2009 (Chess Depo. Tr.), 185:2–6, see also 181:11–12 and 183:5 (directing Mr. Chess to paragraph 73 of his Declaration)). Petitioner attempts to rehabilitate this testimony by arguing that during cross-examination, Mr. Chess identified “inefficiencies” that” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We agree with Petitioner that “exposing . . . for a predetermined period of time” should “be given [its] plain and ordinary meaning.” Reply 7–8. To the extent the plain and ordinary meaning needs elaboration, we adopt the agreed-upon construction of “predetermined period of time” from the related district court litigation, i.e., a “period of time determined in advance.”12 Ex. 3001, 11. For clarity, we note that nothing in this plain and ordinary meaning limits the term to a batch process or excludes a continuous process. We do not see any basis to read into this limitation requirements that the source material contact a volume of solvent within a closed or sealed container. See Sur-reply 4. Although the Specification indicates that the step of exposing the source material to the solvent for a predetermined period of time may take place in a canister that is “closed to fluid communication,” Patent 12 Patent Owner appears to acquiesce to this construction in this case, stating that “Patent Owner is not proposing a different construction of the limitation ‘predetermined period of time,” which the parties to the District Court action agreed means ‘period of time determined in advance.’” Sur-reply 3–4. Owner has not pointed us to any persuasive intrinsic evidence indicating that the exposing step must take place in a canister that is “closed to fluid communication.” The Specification “uses the broad permissive term ‘may’ when describing a ‘user may use the output valves to direct the extract mixture contained in an associated canister to extract container.’” Reply 10 (quoting Ex. 1001, 5:37–39, emphasis Petitioner’s). Accordingly, Patent Owner does not persuade us that the intrinsic record “strongly support[s] that ‘exposing the source material to the solvent for a predetermined period of time to create an extract mixture’” requires a batch process or excludes a continuous process. See PO Resp. 6. 2. Conclusion We determine that “exposing . . . for a predetermined period of time” should be given its plain and ordinary meaning, i.e., “exposing . . . for a period of time determined in advance.”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The failing in Petitioner’s arguments is that the Petition never identifies what “rationale” Hebert allegedly provides for a person of ordinary skill in the art “to expose the source material to the solvent for a predetermined period of time.” Pet. 14. We have examined each citation and argument in the Petition, but find no articulation of a reason why a person of ordinary skill in the art would have applied this teaching in Hebert to Britt and Buese’s processes. We walk through each citation and argument below.13” slip op. at 24
Patent outcomesUS 9,145,532 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,145,532 - Extractiontek Sales LLC v. Gene Pool Technologies, Inc.Some claims unpatentablePTAB · Oct 23, 2023 · IPR2022-01011 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–7 and 9–11 are unpatentable over the asserted obviousness grounds; claims 8 and 12–20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“On the full trial record, we adopt Petitioner’s proposed level of ordinary skill in the art, with Patent Owner’s additions. The additions are consistent with the evidence of record. For example, we find that adding chemistry and biology degrees is appropriate in view of Dr. Miller’s testimony that college-level chemistry and biology courses typically include training on extractive technologies. Ex. 1017 (Miller Tr.), 38:9–39:18. We also agree with Patent Owner that the educational level of the inventors may be considered (see Env’t Designs, Ltd., 713 F.2d at 696), and on this record, we accept Patent Owner and Dr. Miller’s undisputed representation that “named inventor Jason Wasserman had a bachelor’s degree in Agricultural Science and Sustainable Agriculture, a life sciences degree.” Ex. 2008 (Miller Decl.) ¶ 32; PO Resp. 5. Thus, for the reasons above, we define a person of ordinary skill in the art as someone who would have had (1) a bachelor’s degree in chemistry, biology, mechanical engineering, chemical engineering, petroleum engineering, or an equivalent field of physical science, life science, or engineering; and some academic or industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices; or (2) at least four years of industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices.” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Based on this experience, we determine that Dr. Miller qualifies as a person of ordinary skill in the art because by 1992, he had “at least four years of industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices,” as required by the level of ordinary skill we adopt herein. He also avers that he gained additional training and engaged in additional extraction work prior to the effective filing date. Id. Additionally, between 2015 and 2020, Dr. Miller “enter[ed] the cannabis extraction and concentration industry, designing, building, and operating [his] own facility,” further qualifying him as a person of ordinary skill in the art. Ex. 2002 (Miller Decl.) ¶ 10; see also Reply 6 (acknowledging Dr. Miller’s post-2015 “experience and expertise in closed loop extraction systems”). Although this work started in 2015 (two years after the effective filing date of 2013), a person of ordinary skill in the art need not have been one of ordinary skill at the time of a patent’s filing date. See U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc., IPR2014-00639, Paper 27, at 18 (Sept. 14, 2015) (“A witness must provide testimony about the level of skill in the art as of the critical date; however, the witness need not have acquired that knowledge as of the critical date.”). For the reasons discussed above, we determine that Dr. Miller is qualified in this proceeding to testify from the perspective of a person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We find that Patent Owner has the better argument. Patent Owner’s citations demonstrate that “[t]he ’751 patent consistently describes ‘solvent collection line’ as a line, a pipe, hose, or tube used for the transport of gasses or liquids,” and that this usage is consistent with the way both parties’ declarants use the term “line.” PO Resp. 29–30; Ex. 1001, 9:16–10:41, 14:65–15:10, Figs. 1, 2, 5; Ex. 2002 (Miller Decl.), ¶ 60; Ex. 2003 (Chess Depo. Tr.), 100:6–17, 145:20–146:7, 169:18–171:2. In contrast, Petitioner’s argument is undermined by the same passage it cites. Specifically, “what the ’751 Patent explains in the same paragraph Petitioner cites is that the ‘solvent collection line 190 is configured to pass through condensing system 105 between second pump 102 and solvent collection container 15.’” Sur-reply 14–15 (quoting Ex. 1001, 8:60–63) (emphasis Patent Owner’s). “Figure 5 shows that both ‘solvent collection line 190’ and ‘coolant line 109’ are still ‘lines’ as they pass through ‘first condenser column 107.’” Id. at 15 (citing Ex. 1001, Fig. 5, 9:48–58). Figure 1, in contrast, shows that coolant pump 104 is a component that is distinct from coolant line 109. See id. (citing Ex. 1001, Fig. 1, 9:6–25). For the above reasons, we construe “line” to mean “a pipe, hose, or tube.”” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not define the exact contours of a “canister interface,” including deciding whether it is “more than a mere connector.” Nor do we need to construe the claim term “support.” It is sufficient to note that a canister interface is not simply the system’s canisters themselves. The plain language of the claims recite that the “canister interface” must be configured to “support” the canisters (thereby distinguishing the canister interface from the canisters themselves). The Specification likewise distinguishes the canister interface and the canisters, indicating that the canister interface “allow[s] canisters to be easily detached and reattached.” Ex. 1001, 11:61– 62. Similarly, Mr. Chess distinguished a “detachable canister interface” from the system’s canisters/containers, characterizing the former as a “fitting of some sort so that you can disconnect or connect the solvent source container to the extraction vessel or canister.” Ex. 2003 (Chess Depo. Tr.), 182:10–16 (emphasis added).” slip op. at 46
Patent outcomesUS 9,144,751 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,144,751 - Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Colibri Heart Valve LLCSome claims unpatentablePTAB · Oct 11, 2023 · IPR2022-00878 · APJ Lynne H Browne · IPR · Final written decision
Claims 55–72, 78–80, 83, and 84 are unpatentable over the instituted grounds; Petitioner did not show claim 85 unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art would have been a mechanical engineer, medical device engineer, or an interventional cardiologist with a working knowledge of stent-based prostheses for use in a patient’s heart or vasculature to replace and/or repair a diseased valve, intravascular delivery systems for the delivery of such prostheses, and methods associated with the delivery and implantation of such prostheses in a patient. Pet. 31 (citing Ex. 1026 ¶ 27). Patent Owner “does not dispute Petitioner[’s] definition of a person of ordinary skill in the art.” PO Resp. 2. 8 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“Terms Defined by the ’400 Patent 1. Both parties discuss claim terms (“substantially conical,” “folds,” “biocompatible membrane [that] does not comprise a treated tissue,” “cusp,” “cuff wall,” “frame,” “mobile leaflet layer” or “mobile leaflet,” “proximal,” “non-transverse”, and “plurality of . . . leaflets”) which are defined by the ’400 patent’s explicit definition of these terms or its explicit definition of a related term (e.g., definition of “folding” also defines claim term “folds”). Pet. 26–28; PO Resp. 26–28. Both parties assert that the definitions in the ’400 patent define these claim terms. Id. We agree. For the claim terms defined by the ’400 patent, Patent Owner has acted as its own lexicographer by setting out the definitions of these claims terms in the specification of the ’400 patent. Thorner v. Sony Comput. Ent. Am., LLC, 669 F.3d 1362, 1365 10 We note that throughout its claim construction arguments, Patent Owner refers to the claim construction of the word “attach;” however, the claim term at issue is “attached.” We understand Patent Owner to be referring to this claim term and treat Patent Owner’s arguments as if they refer to the claim term “attached.” discussed in Sections D–F below, we construe these terms in accordance with their definitions set forth in the ’400 patent.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“f) Conclusion Re Claim Construction For “Attached” We begin our analysis by reiterating that under the Phillips standard, claim terms are generally given their ordinary and customary meaning as would be understood by one with ordinary skill in the art in the context of the specification, the prosecution history, other claims, and even extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips, 415 F.3d at 1312–17. When a patent owner wishes to employ a definition that is different from the ordinary and customary meaning of a claim term, it may do so by acting as its own lexicographer setting out the definition of that claim term in the specification of its patent. Thorner, 669 F.3d at 1365. As discussed in Section II.C.1 above, Patent Owner has acted as its own lexicographer and defined numerous claim terms in the ’400 patent. See Ex. 1001, 11:41–13:18. Thus, it is readily apparent that when Patent Owner intended to employ a definition of a claim term that differed from the the ordinary and customary meaning of that claim term, Patent Owner provided such a definition. A person of ordinary skill in the art would infer accordance with their ordinary and customary meaning. Having considered the full record before us including the evidence, testimony, and argument in support of the parties’ positions, we agree with Petitioner that the claim term “attached” should be construed in accordance with its ordinary and customary meaning, which the parties agree is “fastened, secured, or joined, directly or indirectly.”12 Pet. Reply 1; PO Resp. 15. We do not find that the context of the ’400 patent further narrows this term such that a person of ordinary skill in the art would have understood “attached” to require attachment “at the same location.” Accordingly, we apply the ordinary and customary meaning of the claim term “attached” in considering the challenges set forth in the Petition discussed below.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“testimony, and arguments in support of both parties’ positions, we agree with Petitioner that Melsheimer’s cusps are substantially conical as required by independent claim 55. The definition of “substantially conical” set forth in the ’400 patent does not require that every part of the structure in question resemble a cone. Ex. 1001, 12:47–54. Rather, it requires a structure that “resembles a cone or portion thereof at some point in the practical use of the structure” and a “cross-sectional perimeter or area of the structure in the operationally closed position that decreases moving from the level of the leaflet apposition to the proximal end of the valve.” Id. (emphasis added). Melsheimer discloses receptacles 18 that are cone-shaped. Ex. 1003, Fig. 4A. Although, Melsheimer’s leaflet 16 and receptacle 18 pairs are not entirely cone-shaped, they do still resemble a cone. Further, Melsheimer’s receptacles 18 have the required cross-sectional perimeter. See id. Accordingly, we determine that these pairs (i.e., Melsheimer’s cusps) are “substantially conical” in accordance with the definition set forth in the ’400 patent. Conclusion For Grounds 1–3 Having considered the full record before us including the evidence, testimony, and arguments of both parties, we determine that Petitioner shows by a preponderance of the evidence that claims 55, 56, 58, 59–61, 63, 65, and 66 are anticipated by Melsheimer (Ground 1). We further determine that claims 57, 64, 78, and 79 are unpatentable over Melsheimer alone or in combination with Eberhardt (Ground 2) and that claims 62, 83, and 84 are unpatentable over Melsheimer alone or in combination with Pavcnik (Ground 3).” slip op. at 31
Patent outcomesUS 9,737,400 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,737,400
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.