- Peaklogic, Inc. v. Wave Neuroscience, Inc.Institution deniedPTAB · Mar 23, 2023 · IPR2022-01526 · APJ David Cotta · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claim 1 was anticipated by Klimesch or Jin, or obvious over their combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” For the reasons discussed below, Petitioner has not established a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claim 1 of the ’259 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“encountered in the art, the art’s 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). Petitioner contends that the person of ordinary skill in the art (“POSA”) would have had “a medical degree plus at least two years of academic and/or industry experience in the field of TMS.” Pet. 10. According to Petitioner, “[a]dditional professional and/or technical experience could substitute for education, and vice versa.” Id. Patent Owner does not challenge Petitioner’s proposed definition of the POSA for purposes of its preliminary response. See generally, Prelim. Resp. Petitioner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’259 patent. Accordingly, for purposes of this Decision, we accept Petitioner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Importantly, however, Dr. Silvetz does not cite anything to support his opinion that stimulation at a frequency above the peak alpha frequency moves the peak frequency. Id. Nor does Dr. Silvetz explain why such stimulation moves the peak frequency. Id. Accordingly, Dr. Silvetz’s testimony is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (Decision Denying Institution) (precedential) (finding that conclusory testimony that “does not cite to any additional supporting evidence or provide any technical reasoning to support [that testimony] . . . is entitled to little weight”); see also, 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”). peak alpha frequency moves the peak frequency to a higher frequency is not specific to the conditions under which rTMS was administered in Klimesch. This is problematic because Dr. Silvetz also testifies that the brain’s response to rTMS varies depending on the conditions under which it was administered. Ex. 1003 ¶ 20 (“The brain’s natural response varies depending on factors such as: a) the location of the electromagnet; b) the frequency of stimulation; c) the duration of stimulation; d) the number of stimulation pulses administered; e) the amplitude of the pulses administered; and f) the patient’s physiology.”). In summary, given that it not accompanied by supporting evidence, does not provide any technical reasoning, and is not specific to Klimesch, we give little weight to Dr. Silvetz’s testimony in determining whether Petitioner has established a reasonable likelihood that Klimesch inherently discloses the intrinsic frequency limitation. We do not determine here that Dr. Silvetz’s testimony is incorrect, only that it is insufficiently supported by evidence and technical reasoning to be accorded substantial weight.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although the parties have briefed construction of the terms “preselected intrinsic frequency” and “preselected Q-factor” (Pet. 13–20; Prelim. Resp. 11–16), there does not appear to be any dispute regarding the “preselected” aspect of these claim terms. Pet. 18, 20 (proposing that “preselected intrinsic frequency” and “preselected Q-factor” be construed to require “a fixed target [intrinsic frequency/Q-factor] . . . chosen before treatment”); Prelim. Resp. 16 (proposing that the Board should adopt the district court’s claim construction: “a targeted [intrinsic frequency/Q-factor] chosen before treatment”); Reply 4 (“the parties to the IPRs have agreed that, for the purposes of these IPRs, the Board should accept the claim construction as adopted by the district court”). Accordingly, we do not find it necessary to construe any claim terms in order to resolve this proceeding. See Vivid Techs. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,446,259 - BTC Corporation v. TG Biotech Co., Ltd.InstitutedPTAB · Nov 15, 2022 · IPR2022-00998 · APJ Ulrike W Jenks · IPR · Institution
The Board instituted IPR on claims 1–13 because Petitioner showed a reasonable likelihood that the claims were unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary of the Institution Decision For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’786 patent is unpatentable, we institute an inter partes review of all challenged claims based on the grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018), available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (“Guidance”). Our findings of fact, conclusions of law, and reasoning discussed below are based on the evidentiary record developed thus far, and made for the sole purpose of determining whether the Petition meets the threshold for initiating review. This decision to institute trial is not a final decision as to the patentability of any challenged claim or the construction of any claim limitation. Any final decision will be based on the full record developed during trial.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art would have had “an undergraduate science degree and would also have a Ph.D. in chemistry, pharmaceutical science, food science, or chemical engineering, pharmaceutically active materials from plant-based materials in an industrial or academic setting” and “would be familiar with the structure and utility of saponins, and generally aware of the scientific literature related to the extraction and pharmaceutical utility of gypenosides from GP and ginseng.” Pet. 13 (citing Ex. 1003 ¶ 18). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill. Prelim. Resp. 12. Because Petitioner’s proposed definition is unopposed and appears consistent with the Specification and art of record, we apply it here.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner requests construction of the terms “an effective amount for improving or treating the metabolic syndrome” in claims 11–13 as meaning “an amount that produces any measurable amount of improvement in the metabolic syndrome” (Pet. 13–15 (citing Ex. 1003 ¶ 91)) and “[a] pharmaceutical composition for improving and treating a metabolic syndrome, comprising at least one of at least 0.7% damulin A and at least 0.5% damulin B . . . and a pharmacologically acceptable carrier or excipient” in claim 8 as meaning “a pharmaceutical composition that includes an extract with 0.7% and 0.5% of damulin A and damulin B[, respectively,] along with a carrier or excipient” (id. at 15–16 (citing Ex. 1002, 64–65, 251–52, 280; Ex. 1001, 12:15–67, Table 2)). Patent Owner argues that “these constructions are not necessary.” Prelim. Resp. 13. We determine that is not necessary for purposes of this Decision to construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy)” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on these teachings in Kim 460, we agree with Petitioner that it would be reasonable to expect that the same source material derived from a different plant would behave similarly to heat treatment. See Pet. 24. Razmovski teaches that GP is suitable source of ginsenosides. See Ex. 1007, 199–200 (“These ginsenosides [identified from G. pentaphyllum] make up around 25% of the total gynosaponin in the plant and is the first example of ginseng saponins found outside of the Araliaceae family.”). malonyl-Rd are found in GP and are the same as those in P. ginseng. Id. at 200. The record, therefore, supports Petitioner’s position that substituting GP for the ginseng starting material in Kim 460 as suggested by Razmovski would similarly increase the amount of ginsenoside Rg3 + Rg5 in an extract made from the GP starting material. See also Ex. 1005, 4:26–31 (“[T]he processed ginseng product according to the present invention wherein a ratio of ginsenoside (Rg3+Rg5) to (Rc+Rd+Rb1+Rb2) is above 1.0 shows superior physiological activities as different from the prior processed ginseng product in which ginsenoside components such as Rg3 and Rg5 are hardly present.”). Our reviewing court has “recognized that inherency may supply a missing claim limitation in an obviousness analysis.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014). “[O]ur early precedent, and that of our predecessor court, established that the concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the ‘natural result’ of the combination of prior art elements.” Id. at 1195. Inherency may supply a missing claim limitation in an obviousness analysis. An inherent characteristic of a formulation can be part of the prior art in an obviousness analysis even if the inherent characteristic was unrecognized or unappreciated by a skilled artisan. It is long settled that in the context of obviousness, the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art. The Supreme Court explained long ago that it is not invention to qualities they failed to detect. Persion Pharms. LLC v. Alvogen Malta Operations Ltd., 945 F.3d 1184, 1189 (Fed. Cir. 2019) (citations, internal quotations marks, brackets and parentheticals omitted).” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,357,786 - Sandoz Inc. v. Boehringer Ingelheim International GmbHInstitution deniedPTAB · Nov 7, 2022 · PGR2022-00037 · APJ Devon Zastrow Newman · PGR · Institution
The Board denied institution because Petitioner did not show that the patent was eligible for post-grant review; the challenged claims were entitled to the pre-AIA priority date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we find that Petitioner has not identified any challenged claim that has an effective filing date on or after March 16, 2013. For this reason, we find that Petitioner has not shown sufficiently that the ’265 patent is eligible for post-grant review. IV. CONCLUSION After considering the evidence and arguments presently before us, we determine Petitioner has not shown that the ’265 patent is eligible for post-grant review. Accordingly, we do not institute a post-grant review. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 324(d), the Petition is denied.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“To interpret “stable,” we begin with how the term is used in independent claims 7 and 19. Both terms recite “stable” in relation to the pharmaceutical formulation as a whole by reciting “wherein the formulation is stable.” Ex. 1001, 189:62–190:27. From this, we conclude that the ordinary artisan, as defined above to have a relevant advanced degree and at least two years of experience in development or manufacture of therapeutic protein formulations, would have understood that the components of a “stable” formulation would maintain their integrity and desired function following preparation, including when stored as described. This meaning is supported by the following language in the specification pertaining to the disclosed pharmaceutical compositions: Pharmaceutical compositions according to the present invention are described in further details hereinbelow. In one aspect, the pharmaceutical compositions disclosed herein are physico-chemically stable and maintain the integrity of an antibody comprised in said pharmaceutical composition, for example when stored for 8 weeks at 40° C. as shown hereinbelow. Ex. 1001, 84:20–26. We also note, as Petitioner argued, that the prosecution history supports that the formulation components needed to remain functional during storage, and that Patent Owner cited to formulation integrity after a storage period of 8 weeks at 40° C as evidence of such integrity. Ex. 1004, 7380. As disclosed in the ’265 patent, Examples 9 and 12 measure function and identity of the components following storage to confirm formulation stability.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“burden of showing that claim 7 or 14 lacks written description support in the priority application, which Petitioner has conceded provides the same support as the ’265 patent specification. In this regard, we agree that the reasoning in Fresenius likewise applies: there is no legal requirement that a patent specification must include test results or working examples demonstrating stability for every possible composition that is covered by the claims. Fresenius at 13, citing Ariad Pharms., 598 F.3d at 1352 (stating that “the written description requirement does not demand either examples or an actual reduction to practice”). Formulations 2 and 3, disclosed in the ’265 patent specification, which Petitioner acknowledges falls within the scope of claims 7 and 14 (Pet. 26–27 (citing Ex. 1002 ¶¶ 134, 135)), were shown to be stable for 8 weeks in a syringe. Moreover, the ordinary artisan was provided with guidance in making such formulations from the teachings of the specification and has additional knowledge from the art. See Ex. 1001, 85:32–94:35. Claims 7 and 14 identify specific structures (risankizumab) and required excipients within a defined pH range, which are stable as confirmed by testing results presented in the specification. Prelim. Resp. 33; Ex. 1001, 94:14–36. On this record, we conclude that the evidence presented does not establish that it is more likely than not that an ordinarily skilled artisan would not have reasonably believed that the inventors of the ’265 patent possessed the claimed subject matter, each limitation of which is demonstrated as supported in the specification. As we have interpreted the claim term “wherein the formulation is stable” to mean “wherein the formulation maintains the functional integrity of the antibody and other components, for example when stored for 8 weeks at 40° C,” the specification supports maintenance of functional integrity as shown by the stability of Formulations 2 and 3, including when stored for a period of time. For this reason, we find that Petitioner has not shown that the ordinary artisan would not have understood the inventors of the ’265 patent possessed the subject matter of claims 7 and 14 as of the filing date of the priority application.” slip op. at 23
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“We acknowledge that in the Fresenius case, the extensive testing disclosed in that specification supported the ordinary artisan’s ability to formulate stable compounds using such guidance, and that the specification here discloses less testing. See, e.g., Sur-Reply. 8–9. Nevertheless, it is Petitioner’s burden on this issue, and we are not persuaded that the concerns raised by Dr. Klibanov provide sufficient evidence of actual instability to justify institution on this record. See, e.g., Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1577 (Fed. Cir. 1984) (finding lack of evidence that district court erred in upholding claims as enabled where defendant did not identify inoperable embodiments despite extensive testing). In particular, we are persuaded that, on this record, Petitioner’s lack of evidence of instability of any formulation falling within the limitations of claim 14 indicates that Petitioner has not established sufficiently, for purposes of trial institution, that it is more likely than not that an ordinarily skilled artisan would not have been able to practice the full scope of claim 14 invention based on the teachings of the specification.” slip op. at 28
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,078,265 - Zak Designs, Inc. v. Camelbak Products, LLCInstitution deniedPTAB · Oct 25, 2022 · IPR2022-00803 · APJ Carl M Defranco · IPR · Institution
The Board denied institution because Zak did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Yamashita meets each of the recited claim elements. See id. at 15–42. Based on our review of Zak’s mapping, however, we find that Zak fails to show that Yamashita discloses or otherwise suggests element [1.11] of claim 1, namely, “a user release mechanism adapted to automatically disengage the first and second catch structures upon actuation of the user release mechanism and thereby release the mouthpiece assembly to move via its bias from the stowed configuration to the dispensing configuration.”” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“But, although Figures 7 and 9 of Yamashita depict the catch structures engaged for stowed configuration of straw 20 and disengaged for dispensing configuration of the straw, Zak ignores intervening Figure 8 of Yamashita, which shows that merely sliding user release mechanism 33 to the left does not “automatically disengage the first and second catch structures” so as “to release of mouthpiece assembly 20 to move via its bias from the stowed configuration to the dispensing configuration,” as required by claim 1. That is because, in addition to user release mechanism 33 on the left-most end of rotating hood 35, Yamashita’s Figure 8 shows a snap-fit closure in the form of a protrusion and corresponding recess on the right-most end of hood 35 that keeps the hood in a closed state despite actuation of user release mechanism 33.6 See Ex. 1006, Fig. 8. Indeed, Yamashita explains that the straw remains in a “closed state,” i.e., a stowed configuration, despite the leftward movement of user release mechanism 33: “when the slider 33 moves to the left in the direction of the arrow X shown in FIG. 8, the hood stopper 33d separates from the hood 35 . . . [a]t this moment, [] the opening of the straw 20 is in the closed state due to the closed hood 35.” Id. at 19– 20. That hood 35 is still “closed” after actuation of user release mechanism 33 can only mean that the snap-fit closure on the right-most end of hood 35 must be actuated to automatically open the hood and release the straw from a stowed configuration to a dispensing configuration.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“We find that Zak’s reasoning for the asserted combination lacks rational basis. In particular, we fail to comprehend why one skilled in the art would look to Dall’Agnese’s elastic tab given that Yamashita’s snap-fit closure is already pressure-actuated for conveniently popping open hood 35. Indeed, Zak’s declarant expressly admits that one skilled in the art would have known from “studying the other teachings in Yamashita and from the general context” that “the user might apply pressure to the hood with the thumb to disengage these catch structures and pop the hood open.” Ex. 1003 ¶115 (citing Ex. 1006 ¶ 59). So, given Zak’s admission that Yamashita’s snap-fit closure already has the capability of being pressure-actuated, there is no need to add Dall’Agnese’s user release mechanism for performing the same function. Thus, Zak fails to provide sufficient reasoning with evidentiary underpinning for combining Dall’Agnese’s elastic tab with Yamashita’s snap-fit closure. As such, Zak fails to demonstrate a reasonable likelihood of showing that claims 1 and 21 are unpatentable as obvious over Yamashita and Dall’Agnese. And, because Zak’s challenge of dependent claims 2 and 5–9, which are not argued separately, suffers the same deficiency of a reason to combine Yamashita and Dall’Agnese t. 83–90), we likewise determine that Zak falls short in demonstrating a reasonable likelihood that those dependent claims are unpatentable as obvious over Manganiello and Dall’Agnese.” slip op. at 15
§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,782,028 - PTAB · Oct 5, 2022 · IPR2022-00844 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1 and 4–25, finding a reasonable likelihood that claims 8, 10, 11, and 14–16 are obvious over Chen and Guangjing.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“§ 314(a) to deny institution based on the parallel infringement action in the U.S. District Court for the Eastern District of New York. Prelim. Resp. 21– 25. We decline to do so for the simple reason that, not only is there no trial date set in the parallel action, there is no indication whatsoever that the district court will render a final judgment before the statutory deadline of a final decision in this proceeding. See id. at 23; see also Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, at 8–9 (June 21, 2022). Indeed, Hangzhou simply speculates that a trial is “highly likely” to occur before our final decision, whereas the district court’s docket informs us otherwise, namely, that fact discovery is still ongoing and expert discovery has yet to begin. See Ex. 3001 (District Court Docket Entries 51, 53–58 (dated Mar. 11, 2022–Aug. 25, 2022)). And, although the magistrate judge in the parallel action issued a recommendation on claim construction, Hangzhou has objected to the magistrate judge’s recommendation and sought review by the district court judge, meaning that deadlines for fact and expert discovery, let alone a trial date, have yet to be set because they all depend on the date of the district court’s Markman decision. See Ex. 2004, at 3–4 (setting completion of fact discovery for “90 days after Markman decision” and completion of expert discovery for 105 days after close of fact discovery). Thus, in our view, those factors collectively weigh against exercising our discretion to deny institution under § 314(a) in view of the parallel action.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we do not perceive the need to construe any of these claim terms, as the threshold question of institution can be decided regardless of their construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 7
- Skill levelSkill level patent owner adoptedOther
“would have at least (1) a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a related field, or equivalent experience, and (2) at least two years of experience in the area of (i) robotics or feedback control for electromechanical systems; (ii) mechanical design, dynamic analysis, and/or control design for mechatronic systems, or (iii) equivalent experience in (i) or (ii). Prelim. Resp. 5. DGL does not contest Hangzhou’s definition of the level of skill in the art. See Pet. 11 (DGL adopting definition asserted by Hangzhou in the related district court action “for the purposes of this proceeding only”). At this stage, Hangzhou’s formulation of the level of skill in the art appears reasonable and consistent with the level of skill reflected in the asserted prior art. Hence, we adopt it for purposes of institution.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We disagree with Hangzhou for several reasons. First, the preliminary record clearly supports DGL’s showing that, at a minimum, the combination of Chen and Guangjing discloses an inner cover in the manner recited by claim element [3]. See Pet. 27–30. To the extent Hangzhou faults DGL’s reason for why one skilled in the art would have combined the teachings of Chen and Guangjing, we are unpersuaded for the simple reason that Hangzhou focuses repeatedly on an element in Guangjing not relied upon by DGL—namely, Guangjing’s “steering rod” for controlling the vehicle—and otherwise argues the references individually without ever acknowledging the combination of their teachings as a whole. See Prelim. Resp. 25–30, 33–35. In other words, Hangzhou looks at the references too narrowly by improperly focusing on differences in the steering control for the self-balancing vehicles when, more aptly, the focus should be on the housing for the components of the vehicles. As the record currently stands, neither Chen nor Guangjing teaches away from incorporating an inner cover or similar framework within the outer housing of a self-balancing vehicle in order to strengthen its overall structure while also making it lighter. Thus, we determine that DGL demonstrates a reasonable likelihood that challenged claim 8 is unpatentable as obvious over the combined teachings of Chen and Guangjing, even accounting for Hangzhou’s arguments to the contrary.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,597,107 - PTAB · Sep 27, 2022 · IPR2022-00739 · APJ David Cotta · IPR · Institution
The Board instituted IPR on claims 1–30, finding a reasonable likelihood that the claims would have been obvious over Sun, Dodick, and Sharma.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In explaining why the claims of the ’444 application were allowable, the Examiner stated that “the art is silent regarding the efficacy of past treatments” and, more specifically, that “the prior art does not explicitly call out” the species of migraine patients for whom “two or more conventional therapies have been tried and failed.” Ex. 2008, 655–656. In making this statement, the Examiner appears to have overlooked Sun’s suggestion to use an anti-CGRP antibody to treat refractory patients. See e.g., Ex. 1006 ¶¶ 68 with two different classes of migraine prophylactic agents.”); see also, infra § III.F.1. Patent Owner does not identify anything in the prosecution history of the ’161 patent to suggest that the Examiner accounted for Sun’s teachings in allowing the ’161 patent to issue. Given that this error in overlooking Sun’s teachings was central to allowance of the patent that issued from the ’444 application, we find that this error was material. We recognize that Patent Owner disputes that Sun suggests treating the claimed refractory patients, but, on this record, we do not find Patent Owner’s arguments persuasive for the reasons discussed infra § III.F.1. On the current record, Petitioner has sufficiently demonstrated that the Examiner erred materially in finding that the prior art did not suggest using anti-CGRP antibodies to treat refractory patients. Accordingly, we choose not to exercise our discretion under 35 U.S.C. § 325(d) to deny institution on the basis that the prior art has already been considered during prosecution.” slip op. at 11
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Prelim. Resp. 6–7. Petitioner offers a similar definition of the POSA, with the principal differences being: 1) that Petitioner does not identify neurobiology and pharmacology as relevant fields for a POSA having an of a multi-disciplinary team. Pet. 11. We find the additional exposition in Patent Owner’s definition of the POSA helpful. Moreover, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’161 patent. Accordingly, for purposes of this Decision, we accept Patent Owner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). At this stage in the proceeding, the differences between Petitioner’s and Patent Owner’s identification of the POSA do not materially affect our decision with respect to institution. Put another way, we would reach the same decision under either definition.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion Petitioner shows, based on the present record, where each of the limitations of claim 1 is taught or suggested in the combination of Sun, Dodick, and Sharma. Pet. 21–30. For the reasons discussed supra §III.F.1 we are not persuaded by Patent Owner’s argument that Sun does not disclose treating the claimed patient population. Prelim. Resp. 45–52. Petitioner also provides evidence-backed reasoning to support its argument that a skilled artisan would have had reasons for treating the claimed patient population with galcanezumab. Pet. 30–33. Patent Owner does not challenge that the POSA would have been so motivated and, on the present record, we find Petitioner’s reasoning persuasive. See generally, Prelim. Resp. Finally, Petitioner provides reasons why the POSA would reasonably have expected treating the claimed refractory migraine patients to be successful. Pet. 33– 40. For the reasons discuss supra § III.F.3, we are not persuaded by Patent Owner’s argument that the POSA would not reasonably have expected success. Prelim. Resp. 52–56. Accordingly, we conclude that Petitioner has established a reasonable likelihood that it will prevail in showing that claim 1 would have been obvious over the combination of Sun, Dodick, and Sharma. 30 are taught or suggested in the prior art, and that these claims would have been obvious over the combination of Sun, Dodick, and Sharma. Pet. 42– 45. Petitioner’s contentions with respect to these dependent claims are, at this stage, uncontested by Patent Owner. We have considered Petitioner’s showing with respect to dependent claims 2–30 and find that it is backed by documentary and testimonial support sufficient to support institution.” slip op. at 48
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“A subject having refractory migraine.” The phrase “a subject having refractory migraine” appears in the preamble to claim 1. Ex. 1002, 173:2–3. The parties agree that the preamble is limiting because it provides context and antecedent basis for terms in the body of the claim. Pet. 12 (“Claim 1’s preamble . . . should be construed as limiting at least because it provides context and antecedent [basis] for the claimed ‘therapeutically effective amount.’”); Prelim. Resp. 8 (“The parties agree that the preamble . . . is limiting at least because it provides context and antecedent basis to the terms in the body of the claim, e.g., ‘administering to the subject a therapeutically effective amount’ of the recited antibody.”). We agree that the preamble of claim 1 limits the claim for the reasons expressed by the parties. Rapoport v. Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001) (finding that the phrase “treatment of sleep apneas” in the preamble of an interference count was limiting because it provided antecedent basis for the phrase “to a patient in need of such treatment” in the body of the interference count); see also Eli Lilly Co. v. Teva Pharmas Int’l GmbH, 8 F.4th 1331, 1340 (Fed. Cir. 2021) (“while there is no bright-line rule for determining whether a preamble is limiting, we have generally construed statements of intended purpose in such method claims as limiting”). slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,028,161 - PTAB · Sep 27, 2022 · IPR2022-00738 · APJ David Cotta · IPR · Institution
The Board instituted review of claims 1–30 on both §103 grounds, finding a reasonable likelihood that the claims would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“cumulative of Zeller, as discussed above, they were considered by the Examiner. Accordingly, we determine that the first part of the Advanced Bionic framework is satisfied. We turn next to the second part of the Advanced Bionic framework, i.e., determining whether Petitioner has demonstrated material error by the Office. Patent Owner argues that Petitioner did not identify any material error” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion Petitioner shows, based on the present record, where each of the limitations of claim 1 is taught or suggested in the combination of Sun, Dodick, and Sharma. Pet. 21–30. For the reasons discussed supra §III.F.1 we are not persuaded by Patent Owner’s argument that Sun does not disclose treating the claimed patient population. Prelim. Resp. 45–52. Petitioner also provides evidence-backed reasoning to support its argument that a skilled artisan would have had reasons for treating the claimed patient population with galcanezumab. Pet. 30–33. Patent Owner does not challenge that the POSA would have been so motivated and, on the present record, we find Petitioner’s reasoning persuasive. See generally, Prelim. Resp. Finally, Petitioner provides reasons why the POSA would reasonably have expected treating the claimed refractory migraine patients to be successful. Pet. 33– 40. For the reasons discuss supra § III.F.3, we are not persuaded by Patent Owner’s argument that the POSA would not reasonably have expected success. Prelim. Resp. 52–57. Accordingly, we conclude that Petitioner has established a reasonable likelihood that it will prevail in showing that claim 1 would have been obvious over the combination of Sun, Dodick, and Sharma. 30 are taught or suggested in the prior art, and that these claims would have been obvious over the combination of Sun, Dodick, and Sharma. Pet. 42– 45. Petitioner’s contentions with respect to these dependent claims are, at this stage, uncontested by Patent Owner. We have considered Petitioner’s showing with respect to dependent claims 2–30 and find that it is backed by documentary and testimonial support sufficient to support institution.” slip op. at 48
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Prelim. Resp. 6–7. Petitioner offers a similar definition of the POSA, with the principal differences being: 1) that Petitioner does not identify neurobiology and pharmacology as relevant fields for a POSA having an M.D., and 2) that Petitioner does not propose that a POSA could also be part of a multi-disciplinary team. Pet. 11. POSA helpful. Moreover, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’160 patent. Accordingly, for purposes of this Decision, we accept Patent Owner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). At this stage in the proceeding, the differences between Petitioner’s and Patent Owner’s identification of the POSA do not materially affect our decision with respect to institution. Put another way, we would reach the same decision under either definition.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“A subject having refractory migraine.” The phrase “a subject having refractory migraine” appears in the preamble to claim 1. Ex. 1001, 173:2–3. The parties agree that the preamble is limiting because it provides context and antecedent basis for terms in the body of the claim. Pet. 12 (“Claim 1’s preamble . . . should be construed as limiting at least because it provides context and antecedent [basis] for the claimed ‘therapeutically effective amount.’”); Prelim. Resp. 8 (“The parties agree that the preamble . . . is limiting at least because it provides context and antecedent basis to the terms in the body of the claim, e.g., ‘administering to the subject a therapeutically effective amount’ of the recited antibody.”). We agree that the preamble of claim 1 limits the claim for the reasons expressed by the parties. Rapoport v. Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001) (finding that the phrase “treatment of sleep apneas” in the preamble of an interference count was limiting because it provided antecedent basis for the phrase “to a patient in need of such treatment” in the body of the interference count); see also Eli Lilly Co. v. Teva Pharmas Int’l GmbH, 8 F.4th 1331, 1341 (Fed. Cir. 2021) (“while there is no bright-line rule for determining whether a preamble is limiting, we have generally construed statements of intended purpose in such method claims as limiting”). slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,028,160 - Apple Inc. v. Logantree, LPInstitutedPTAB · Sep 1, 2022 · IPR2022-00040 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes a claim construction for the term “movement sensor.” Pet. 5–6. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“skill in the art to modify the device of the Allum-Raymond combination “to include Conlan’s buttons to enable the device to gather data (e.g., subject’s balance or movement) as it relates to a particular event specified by the user input buttons.” Id. at 21–22 (citing Ex. 1003 ¶ 79). Petitioner also articulates reasons, supported with the testimony of Dr. Kenny, to combine the relied-upon aspects of the references with a foreseeable chance of success. Id. at 22–24 (citing Ex. 1008, 7:8–10, 16:17–19; Ex. 1010, 1:65–2:2, 4:5–57, 5:64–6:67, 9:1–15, 10:6–65, 11:58–62, Fig. 2; Ex. 1003 ¶¶ 79–84). At this stage of the proceeding, we are persuaded that Petitioner’s rationale and evidence are sufficient to show that a person of ordinary skill in the art would have combined Conlan with Allum and Raymond in the manner proposed. Furthermore, we are persuaded on this record that Petitioner has made an adequate showing that the combination of Allum, Raymond, and Conlan discloses the claimed user input.” slip op. at 18
Claim construction§ 103 obviousnessPatents in suitUS 6,059,576 - Apple Inc. v. Logantree, LPInstitutedPTAB · Sep 1, 2022 · IPR2022-00037 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted inter partes review of claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 on all asserted grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes a claim construction for the term “movement sensor.” Pet. 17–18. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Regarding this combination, Petitioner argues that it would have been obvious to one of ordinary skill in the art “to implement Ono’s device, as suggested by Hutchings, with accelerometers to measure accelerations in three dimensions, rotational sensors to provide the angle of rotation along each axis of the translational coordinate.” Id. at 24 (citing Ex. 1102, 4:21–32, 4:55–65, 5:3–16, 8:44–9:17, 9:48–12:37, Figs. 6–7; Ex. 1100 ¶¶ 62–65). Petitioner also articulates reasons, supported with the testimony of Dr. Kenny, to combine the relied-upon aspects of the references with a reasonable expectation of success. Id. at 25–26 (citing Ex. 1102, 2:15–31, 2:45–61, 1:60–64, 3:32–44, 4:7–26, 9:48–10:18, 10:43–51, Figs. 7–9; Ex. 1101, 13:40–42, 18:28–19:6; Ex. 1100 ¶¶ 63–64). At this stage of the proceeding, we are persuaded that Petitioner’s rationale and evidence are sufficient to show that a person of ordinary skill in the art would have combined Ono and Hutchings in the manner proposed. Furthermore, we are persuaded on this record that Petitioner has made an adequate showing that the combination of Ono and Hutchings discloses the claimed movement sensor. In particular, Hutchings discloses unit 48 having three accelerometers that measure accelerations in three dimensions and unit 50 having three rotational sensors that measure the angle of rotation along the three coordinate axes. Ex. 1102, 8:49–59, Fig. 6. We are persuaded at this stage of the proceeding that this arrangement would have been capable of measuring data associated with unrestrained movement in any direction.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“m) Conclusion For the above reasons, we determine, based on the current record, that the Petition shows a reasonable likelihood that Petitioner would prevail in demonstrating that claim 1 is unpatentable over Ono and Hutchings.” slip op. at 22
Claim construction§ 103 obviousnessPatents in suitUS 6,059,576 - Spinal Elements, Inc. v. Spectrum Spine IP Holdings, LLCAll claims unpatentablePTAB · Aug 17, 2022 · PGR2021-00050 · APJ Ulrike W Jenks · PGR · Final written decision
Claims 1–7 are unpatentable over Greenhalgh; claims 8–9 are unpatentable over Greenhalgh alone or with Lynn. Substitute claims 20–28 lack written-description support.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“The parties generally agree that a person of ordinary skill in the art would have been a mechanical or biomedical engineer with several years of 6 We note that a Second Dr. Serhan Declaration is referenced in one of Patent Owner’s exhibit lists, but this document was never filed in this proceeding. See Tr. 33:15–25. experience or an orthopedic surgeon or neurosurgeon with experience designing or developing medical devices. Pet. 18–19; PO Resp. 31. On this record, we adopt the parties’ definition of the level of skill in the art. 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 regarding ordinary skill level 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 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We note that “act upon” is not defined in the Specification of the ’575 patent. “Act upon” appears for the first time in claim 1 of the ’575 patent. The Specification describes that “the cage assembly may comprise an expander such as an expansion screw or a shim which, when inserted, selectively expands the body of the cage assembly to a desired size.” Ex. 1001, 4:26–29. The Specification further describes that “translation of the elongate expander proximally toward the trailing end expands the cage body by separating the at least a portion of the upper portion from at least a portion of the lower portion.” Id. at 6:56–59. (emphasis added). We determine that “expander expands the cage” is construed in light of the Specification to mean that the expander acts upon both the upper and lower portion of the cage to move the upper and lower portions further apart. We note, however, there is no requirement that each portion is moved away from the longitudinal expander by the same amount.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“The Specification does not define “unobstructed” or “obstructed.” Based on the disclosure in the Specification, the prosecution history, 7 and the annotated Figure 5A and 5B above, the term “unobstructed” is understood to mean that there are no obstacles or structures lying in the path of the window created by the upper portion, lower portion, and elongate expander that would impede the view through the window. Figure 5B does not show any features that impede the view through the aligned window and thereby shows an “unobstructed view.” Tr. 40:20–41:11, see id. 41:5–6 (“Figure 5B shows nothing extending into the window, and that’s the only 7 Petitioner explains that “the plain meaning of an ‘open’ window is well understood to be a state allowing passage through the window.” Pet. 21 (citing Ex. 1003 ¶ 63). According to Petitioner, Patent Owner expressly defined “unobstructed” during prosecution to “mean there are no features lying in the path and blocking the window.” Id. at 21–22. Patent Owner acknowledges that the term “unobstructed” was added during prosecution in order to distinguish over Baynham (US 2007/0270968 Al, published Nov. 22, 2007). PO Resp. 36–37; Ex. 1002, 29–30. The only example of an obstructing feature identified during prosecution is an axle (or jack screw) that extends down the center of the opening which acts like a bar. Id. at 22 (citing Ex. 1002, 29–30); see Tr. 41:5–8 (“Figure 5B [of the ’575 patent] shows nothing extending into the window, and that’s the only support that there is. There’s no[] qualifying language in the specification that would allow a retreat to specify a particular amount that was considered acceptable.”) support that there is.”). Unobstructed does not refer to the entirety of each window, but rather where they overlap relative to one another. We determine that “unobstructed” means “there are no features lying in the path and blocking the window.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“disclose bidirectional cage expansion. We note that “bidirectional” does not 8 Newton’s third law states that for every action (force) in nature there is an equal and opposite reaction. appear in the language of claim 1 of the ’575 patent nor does it appear anywhere in the Specification of the ’575 patent. All that is required by claim 1 is for the cage body to expand, which requires “the expander to act upon portions of the upper portion and the lower portion to expand the cage body by separating at least a portion of the upper portion from at least a portion of the lower portion.” Ex. 1001, 8:27–31. Thus, separation of the upper portion and lower portion upon the longitudinal translation of the elongate expander is all that is required to meet the claim element.” slip op. at 22
Patent outcomesUS 10,709,575 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,709,575
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.