- Google LLC v. Flypsi, IncAll claims unpatentablePTAB · Jul 29, 2024 · IPR2023-00361 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–11 are unpatentable: claims 1–11 are shown obvious on the decided grounds; the additional Taylor grounds are not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication. . . . More education can supplement practical experience and vice versa.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill. PO Resp. 6. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Based on the complete trial record, we adopt the assessment offered by Petitioner and undisputed by Patent Owner, as it is consistent with the ’105 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed
“the term, and invited further briefing. Dec. on Inst. 14–15. Patent Owner does not assert that this construction affects Petitioner’s “first way” obviousness assertions. PO Resp. 31. After consideration of the post- Institution briefing, we agree with Patent Owner that Petitioner’s “second way” obviousness assertions rely upon a lack of ordering in claims 1 and 2 such that the transmitting of pre-call information may occur prior to the receiving on an incoming call (Pet. Reply 3); therefore, the term “pre-call information” requires construction to resolve the controversy. The “general rule [is that], ‘[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.’” Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014). As discussed above, we do not find the asserted information having a bridge number be transmitted after a call to a secondary number is made. The plain language of the claim requires that the pre-call information include a bridge number “for connecting the handset to the incoming call at the switch”; i.e., information to be used with respect to the incoming call recited in limitation [1.d]. The transmission of the pre-call information may therefore be at any time such that its contents (the bridge number) may be used with respect to the recited incoming call. Consequently, we do not adopt Patent Owner’s proffered construction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“whether teachings other than Winbladh would be preferentially considered, improperly frame the obviousness question. Patent Owner and Dr. Akl emphasize that Winbladh uses a “‘host resource’ that manages multiple call legs,” arguing that is different from Backhaus’s “more limited” system that uses a “conventional call routing system.” PO Resp. 36–37 (citing Ex. 2010 ¶ 113). However, the obviousness question is “whether the relevant artisan would be motivated to make the combination to arrive at the claims’ actual limitations,” not whether such a combination would preserve all aspects of either Backhaus or Winbladh. See Axionics, Inc. v. Medtronic, Inc., 2023 WL 4410686 (Fed. Cir. July 10, 2023). Moreover, “it’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (quoting PAR Pharm., Inc. v. TWI Pharms, Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Further, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference [but rather] what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir. 2020) (“KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B”). Here, Petitioner’s combination provides for a pre-call transmission of local telephone number #βr, and would logically provide advantage in those situations in which a long distance number was originally used for the connection; i.e., those situations for which Winbladh is purposed. We further note that a combination need not work in all situations for a person having ordinary skill in the art to find it advantageous. See Intel tradeoffs should be weighed when a benefit occurs during only some operating conditions).” slip op. at 39
- Expert testimonyPetitioner expert creditedDecided for petitioner
“4 Patent Owner argues that we should still address its proposed construction of the term “channel” because it “significantly impacts the credibility” of Petitioner’s declarant, Dr. Bill Lin. Tr. 68:3–24; PO Sur-reply 3 n.1. We disagree. The portions of the Lin Declaration that we rely on in this Decision are credible because those portions are consistent with and supported by the other evidence of record. See Sections II.D–II.E.” slip op. at 9
Patent outcomesUS 10,051,105 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,051,105 - PTAB · Jul 26, 2024 · IPR2024-00342 · APJ Hyun J Jung · IPR · Institution
The Board denied institution of review of claims 1–24 and 26–30 under § 314(a), finding that Petitioner had not shown that a second petition was necessary.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“In view of Patent Owner’s clear stipulation that it will not assert any additional claims of the ’733 patent against Samsung, and that it will not assert the ’733 patent against Google, Petitioner’s arguments regarding the large number of claims asserted in litigation fails to show that more than one petition is necessary. Paper 3, 3–4; Prelim. Reply 2–4; CTPG 59. Furthermore, all of the claims asserted in related litigation (claims 1– 14, 19, 21–24, 26, 29, and 30) are addressed in IPR2024-00341. Paper 3, 3; Ex. 1021, 2. Petitioner’s arguments that certain dependent claims are reached only in this proceeding, but not in IPR2024-00341, also fail to show that more than one petition is necessary. Paper 3, 4 (“Specifically, claim 25 is only challenged in the [IPR2024-00341] Petition, and claims 18, 20, and 28 are only challenged in the [present] Petition.”); Prelim. Reply 4–5. None of dependent claims 18, 20, or 28 is being asserted in related litigation, and Patent Owner stipulates not to add any additional claims to its infringement contentions if institution is denied here. Prelim. Sur-reply 3. Thus, Petitioner’s arguments that the present Petition reaches dependent claims 18, 20, and 28, which are not reached in IPR2024-00341, insufficiently shows that more than one petition is necessary. See CTPG 59. Petitioner also argues that the public availability of the primary reference (“TS-23.140”) used in IPR2024-00341 “is open to challenge by Patent Owner.” Paper 3, 1–2. “Patent Owner stipulates that if institution is denied in this proceeding, Patent Owner will not challenge the public availability of the TS-23.140 specification in the -00341 proceeding.” Prelim. Resp. 4. not challenge the public availability of TS-23.140, Petitioner fails to show that more than one petition is necessary. Paper 3, 1–2; CTPG 59, 61 (“If stating that issues are not material or in dispute, the patent owner should clearly proffer any necessary stipulations. For example, the patent owner may seek to avoid additional petitions by proffering a stipulation that certain claim limitations are not disputed or that certain references qualify as prior art.”). Petitioner further argues that the present Petition relies on a different type of primary reference and different art combinations than those in IPR2024-00341. Paper 3, 1–3. Petitioner, though, does not explain specifically why “challeng[ing] the claims from different perspectives” demonstrates that more than one petition is necessary. See id. Further, we agree with Patent Owner that there is substantial overlap in the art and art combinations, such as the substantially similar reliance on Ogawa in both proceedings. Prelim. Resp. 5–7; see also Paper 3, 5 (stating that “Petitioners have purposefully used the same secondary reference (Ogawa) in a similar manner in both petitions” with “similar motivations to combine these secondary references with the respective primary references” and that “Petitioners are presenting only two petitions, with each relying on different primary references, but the same secondary reference (Ogawa) that is applied in the presented combinations in a similar manner”). Given the substantial overlap in the art asserted, Petitioner’s arguments regarding different primary references and art combinations fail to show that more than one petition is necessary. See CTPG 59.” slip op. at 7
Discretionary denialPatents in suitUS 8,406,733 - PTAB · Jul 26, 2024 · IPR2024-00341 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–17, 19, 21–27, 29, and 30 because Petitioner showed a reasonable likelihood that claim 1 would be obvious over TS-23.140 and Ogawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“b) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the present record, Petitioner shows a reasonable likelihood of prevailing in its challenge to claim 1 as unpatentable over TS-23.140 and Ogawa.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) 3–5 years of experience in services and application implementation in communication networks,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 2 (citing Ex. 1003 ¶¶ 1–15, 21, 22). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we do not need to interpret expressly any claim term. 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)). We apply Petitioner’s understanding of the claim terms as above described.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner argues that TS-23.140 would have been implemented with a modem because “it was well-known to use a modem to enable communications over the networks described in TS-23.140,” “would have been a conventional and obvious way to implement what TS-23.140 describes,” and would have been “nothing more than utilizing familiar, known components to achieve a predictable result of facilitating TS- 23.140’s communications.” Pet. 9–10 (citing Ex. 1003 ¶¶ 61–63; Ex. 1004, 14, 17–19, 23–24; Ex. 1008 ¶¶ 27–28, 44, Figs. 1, 4); see also id. at 19 (summarizing the proposed combination). Petitioner also argues that there would have been a reasonable expectation of success in implementing a modem in TS-23.140. Id. at 10 (citing Ex. 1003 ¶ 63).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,406,733 - Google LLC v. Flypsi, Inc.All claims unpatentablePTAB · Jul 26, 2024 · IPR2023-00358 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–4 are unpatentable: claims 1, 2, and 4 as obvious over Backhaus and Taylor, and claim 3 as obvious over Backhaus, Saksena, and Taylor.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication.” Pet. 4 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s description. PO Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 23–29. We rely only on the “second way” for purposes of this Decision. See Section II.D.3; Pet. 26–29. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–23; PO Sur-reply 11; Tr. 10:2–11, 68:3–24.1 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“art to combine the teachings of Backhaus and Taylor so that Backhaus’s SLS platform communicates with the PSTN using Taylor’s PSTN interface. Id. at 55–56; Ex. 1002 ¶ 101. Doing so would have been obvious because Backhaus teaches using its SLS platform with a PSTN, and Taylor provides an interface that allows an external system, such as Backhaus’s SLS platform, to communicate with a PSTN. Pet. 54–56; Ex. 1002 ¶ 101; Ex. 1005 ¶ 32; Ex. 1007 ¶¶ 4, 8. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Taylor’s PSTN interface with Backhaus’s SLS platform. Pet. 57; Ex. 1002 ¶ 102.” slip op. at 22
- Expert testimonyPetitioner expert creditedDecided for petitioner
“because it is “highly conclusory” and “internally contradictory,” and because Dr. Lin “could not explain his opinions at deposition.” PO Resp. 38–39; PO Sur-reply 15–17. In particular, Patent Owner contends that the Lin Declaration “does not contain any statement of the legal standards the expert understood or was applying, such as standards relating to defining the person of ordinary skill in the art, anticipation, or obviousness,” and Dr. Lin “could not recall whether Petitioner gave him instructions on any legal principle.” PO Resp. 39–40 (citing Ex. 2009, 9:1–11, 14:5–17:6, 23:6–11, 25:3–10, 26:9–22, 33:11–34:1, 34:3–11); PO Sur-reply 16. Patent Owner’s argument is unavailing. We do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. See Sections II.D.3, II.D.6, II.E.1, II.E.2. Thus, irrespective of whether the Lin Declaration discusses a particular legal standard, we do not disregard the entire Lin Declaration.” slip op. at 26
Patent outcomesUS 10,334,094 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,094 - Google LLC v. Flypsi, Inc.All claims unpatentablePTAB · Jul 26, 2024 · IPR2023-00357 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–4 are unpatentable: claims 1, 2, and 4 as obvious over Backhaus and Taylor, and claim 3 as obvious over Backhaus, Saksena, and Taylor.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s description. PO Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 22–26. We rely only on the “second way” for purposes of this Decision. See Section II.D.3; Pet. 25–26. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–23; PO Sur-reply 11; Tr. 10:2–11, 68:3–24.1 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“had reason to combine the cited teachings of Backhaus and Taylor. Pet. 50– 54 (citing Ex. 1002 ¶¶ 94–100). We agree with Petitioner’s rationale. Specifically, it would have been obvious to a person of ordinary skill in the art to combine the teachings of Backhaus and Taylor so that Backhaus’s SLS platform communicates with the PSTN using Taylor’s PSTN interface. Id. at 53; Ex. 1002 ¶ 97. Doing so would have been obvious because Backhaus teaches using its SLS platform with a PSTN, and Taylor provides an interface that allows an external system, such as Backhaus’s SLS platform, to communicate with a PSTN. Pet. 52–53; Ex. 1002 ¶ 97; Ex. 1005 ¶ 32; Ex. 1007 ¶¶ 4, 8. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Taylor’s PSTN interface with Backhaus’s SLS platform. Pet. 53–54; Ex. 1002 ¶ 98.” slip op. at 21
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Sur-reply 15–17. In particular, Patent Owner contends that the Lin Declaration “does not contain any statement of the legal standards the expert understood or was applying, such as standards relating to defining the person of ordinary skill in the art, anticipation, or obviousness,” and Dr. Lin “could not recall whether Petitioner gave him instructions on any legal principle.” PO Resp. 39–40 (citing Ex. 2009, 9:1–11, 14:5–17:6, 23:6–11, 25:3–10, 26:9–22, 33:11–34:1, 34:3–11); PO Sur-reply 16. Patent Owner’s argument is unavailing. We do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. See Sections II.D.3, II.D.6, II.E.1, II.E.2. Thus, irrespective of whether the Lin Declaration discusses a particular legal standard, we do not disregard the entire Lin Declaration.” slip op. at 26
Patent outcomesUS 11,218,585 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,218,585 - Google LLC v. Flypsi, Inc. (D/B/A Flyp)All claims unpatentablePTAB · Jul 26, 2024 · IPR2023-00359 · APJ James J Mayberry · IPR · Final written decision
Claims 1–4 are unpatentable: claims 1, 2, and 4 over Backhaus and Taylor, and claim 3 over Backhaus, Taylor, and Saksena.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . at the time of the alleged invention of the ’554 patent would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication . . . More education can supplement practical experience and vice versa. Pet. 4–5 (referencing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 5. For the purposes of this Decision, we apply Petitioner’s undisputed definition of the level of ordinary skill in the art. We find that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’554 patent.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“challenged claims to resolve the underlying controversy.” Pet. 8. Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 22–26. As will be evident from our analysis below, we rely only on the “second way” for purposes of this Decision. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–22; Pet. Reply 3 (“Flyp does not even allege that its construction is relevant to the ‘second way’ the Petition addresses limitation [1.b].”); PO Sur-reply 11; Tr. 10:2–11, 68:3–24.5 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. 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)). Also, we determine that we need not expressly construe any other claim terms to resolve the parties’ disputes. To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“suggest that we categorially disregard Dr. Lin’s declaration. As a general point, our precedential decision in Xerox does not provide a blank condemnation of declaration testimony that is identical or virtually identical to language in a paper. Xerox found that the “cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox at 15; 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.”). Here, Dr. Lin cites to evidence to support certain testimony. See, e.g., Ex. 1003 ¶ 73 (citing to Ex. 1007 and Ex. 1011). Also, we do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. Finally, Patent Owner’s arguments go to the weight of Dr. Lin’s testimony. We assess the appropriate weight to give the testimony in our analyses below.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“provided a motivation to combine the teachings of a PSTN interface in Backhaus’s system, even though Backhaus discloses interfacing with the PSTN. Backhaus is silent as to how its system interfaces with the PSTN. As such, we agree with Petition that a person having ordinary skill in the art would have been motivated to connect SLS platform 115 with the PSTN and to also include a PSTN interface in order to facilitate such an connection when implementing Backhaus’s system and processes—such that SLS platform 115 could provide the disclosed second line services to many device users connected to the PSTN that is known to provide reliable communications. Pet. 50. Indeed, Patent Owner’s argument that Backhaus discloses interacting with the PSTN strengthens Petitioner’s position, demonstrating that a person having ordinary skill in the art, when considering Backhaus’s and Taylor’s teachings together, would have used a PSTN interface to ensure a connection with a PSTN. Cf. Pet. Reply 19 (“Rather, it shows that a [person having ordinary skill in the art] would have been motivated to ‘include a PSTN interface similar to that discussed in Taylor when implementing Backhaus’s telephony service system.’” (citing Pet., 49–51)).” slip op. at 32
Patent outcomesUS 11,012,554 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,012,554 - PTAB · Jul 15, 2024 · IPR2023-00611 · APJ Georgianna W Braden · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims, terminating the proceeding and entering judgment against Patent Owner.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 35 U.S.C. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Also, under 37 C.F.R. § 42.73(b)(2), actions construed as a request for entry of adverse judgment include disclaimer of a claim such that the party has no remaining claim in the trial. Here, Patent Owner has not only disclaimed all of the challenged claims of the ’224 patent, such that no claim remains in this proceeding, but also expressly requests entry of adverse judgment. Therefore, under § 42.73(b), adverse judgment is appropriate. Accordingly, we grant Patent Owner’s requests and enter adverse judgment against Patent Owner pursuant to § 42.73(b), thus terminating this proceeding and cancelling the portion of the July 16, 2024 hearing that was allotted to this proceeding and the ’224 patent.” slip op. at 2
NonePatents in suitUS 10,197,224 - Life Spine, Inc. v. Globus Medical, Inc.All claims unpatentablePTAB · Jun 13, 2024 · IPR2022-01600 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 1–20 are unpatentable as obvious: claims 1–7 and 9–20 over Olmos and Varela ’774, and claim 8 over Olmos, Varela ’774, and Oglaza.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention. Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”): would have had a bachelor’s degree in mechanical engineering or biomedical engineering and two or more years of experience in biomechanical engineering, biomedical engineering, and/or spinal implant devices. A person could also have qualified as a POSITA with some combination of more formal education (e.g., an M.D.) and less technical experience or less formal education and more technical or professional experience in the foregoing fields, and would have had further appreciation of various technical concepts in this field. Pet. 18 (citing Ex. 1002 ¶¶ 32–35). Patent Owner does not dispute Petitioner’s proposal. See Response 8. We adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the cited prior art and is undisputed. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“We credit Mr. Drewry’s testimony that it would have been well within the ordinary skill of a POSITA to make the proposed modifications. See Ex. 1002 (Drewry Decl.) ¶¶ 34, 56–71 (discussing the qualifications of a POSITA and the types of engineering concepts the POSITA would have understood); Ex. 1030 (Drewry Reply Decl.) ¶¶ 37, 48–56, 59–66. To the extent Mr. Culbert testifies otherwise, we do not find such testimony persuasive. Indeed, Olmos itself further supports Mr. Drewry’s testimony that a POSITA would have known how to modify dimensions to fit specific needs and make changes necessary to adapt features from one embodiment to fit another. See Ex. 1006 (Olmos) ¶¶ 153, 188 (providing a range of implant sizes and noting that “specific dimensions” of any disclosed 9 Patent Owner’s citation to Mr. Drewry’s deposition transcript at 87:13– 88:9 appears to be incorrect. We understand that the intended citation is 69:34–70:7. embodiment can be varied as is apparent to a POSITA and “all features discussed in connection with any one embodiment herein can be readily adapted for use in other embodiments herein to form various combinations and sub-combinations”). Given the POSITA’s ability to make the proposed modifications, we do not find that Patent Owner’s evidence regarding the number of modifications required undermines Petitioner’s articulated reasoning for the combination.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no terms require constructions differing from their plain and ordinary meaning.” Pet. 19. Patent Owner states that it “takes no position on Petitioner’s assertion because the Board need not construe any claim term to find that the Challenged Claims are not unpatentable.” Response 8. We find that for purposes of this Decision, we need not construe any claim term. See 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))).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
Patent outcomesUS 10,973,649 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,973,649 - PTAB · Jun 13, 2024 · IPR2024-00240 · APJ Deborah Katz · IPR · Institution
The Board instituted inter partes review of claims 1–42 on all asserted grounds, finding a reasonable likelihood of success and declining discretionary denial under §§ 314(a) and 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Director may not authorize an inter partes review “unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a). We determine whether to institute a post grant review on behalf of the Director. See 37 C.F.R. § 42.4(a). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Upon considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated there is a reasonable likelihood that the petition would prevail in showing that at least one challenged is unpatentable. Accordingly, we institute inter partes review of all challenged claims on all asserted grounds. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“patient is MSI-H after enrollment in a study in which pembrolizumab is to be administered is not within the scope of the claim step “in response to determining that the colorectal cancer is microsatellite instability high or DNA mismatch repair deficient, treating the patient with a therapeutically effective amount of pembrolizumab.” At this point in the proceeding, though, we do not interpret the claim step as meaning anything other than the treatment of colorectal cancer patients after they have been determined to be microsatellite instability high or DNA mismatch repair deficient. Although the term “in response to” in claim 1 requires that treatment of the patient occur after the determination that the colorectal cancer is MSI-H, we do not interpret the term to mean that other patients are not treated or that the recruitment and enrollment of patients for a clinical trial has any bearing on the steps recited in claim 1. We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Patent Owner has not directed us to evidence that one of ordinary skill in the art would have understood treating a patient “in response to” the determination that the patient has a condition excludes treatment of other patients without the condition, although it does require that treatment of the patient occur after the determination that the colorectal cancer is MSI-H. The language of claim 1 refers only to patients that are determined to have microsatellite instability high or DNA mismatch repair deficient colorectal cancer, not to other patients. (See Ex. 1001, 25:40–50.) At this point in the proceeding, the record does not indicate that the treatment of patients determined not to be MSI-H is be factored into whether the teaching of treating patients determined to be MSI-H anticipates the method of claim 1. At this point in the proceeding, we construe the “in response to” limitation of claim 1 to mean that pembrolizumab is administered to a patient after the patient has been determined to be microsatellite instability high or DNA mismatch repair deficient, regardless of whether pembrolizumab is also administered to other patients.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“H Study Record teaches treating colorectal cancer patients after they were determined to be microsatellite instability high or DNA mismatch repair deficient with pembrolizumab. (See MSI-H Study Record, Ex, 1005, 4 (Arms and Interventions); see also id., 2 (Study Identification), 3 (Study Description), 4–5 (Outcome Measures), 5–6 (Eligibility); see Neugut Decl., Ex. 1003, ¶¶ 58–62.) At this point in the proceeding, Petitioner has sufficiently shown that there is a reasonable likelihood of a causal relationship in the MSI-H Study Record between treatment of colorectal cancer patients and the determination of their MSI status — all colorectal cancer patients determined to be microsatellite instability high or DNA mismatch repair deficient were treated. Whether or not other patients were treated or enrolled in the study does not detract from this teaching.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Furthermore, to the extent the MSI-H Study Record does not disclose the limitation of “in response to determining that the colorectal cancer is microsatellite instability high or DNA mismatch repair deficient, treating the patient with a therapeutically effective amount of pembrolizumab,” the record before us supports this limitation being rendered obvious by Pernot and the MSI-H Study Record. Specifically, because Pernot teaches that colorectal cancer patients are good candidates for immunotherapy, the evidence of the current record shows that one of ordinary skill in the art would have had a reason to use to PD-1 inhibitors to treat colorectal cancers. (See Ex. 1006, 3741.) Additionally, the focus in the MSI-H Study Record on a clinical study treating colorectal cancer patients who had been determined to be MSI-H with prembrolizumab indicates that it would have been obvious to test for this condition before treatment. The additional references discussed by Petitioner contribute further to a reasonable likelihood that Petitioner will prevail. For example, Libson reports the successful treatment of a colorectal cancer patient having MSI-H status with a PD- 1 inhibitor (see Ex. 1057, 463-64) and Champiat discusses evaluating the clinical activity of PD-1 agents in DNA mismatch repair, such as MSI+, colorectal cancer (see Ex. 1032, e27817-5). (See Pet. 44.) Thus, based on the entire record before us, Petitioner presents a reasonable likelihood that the method of claim 1 would have been considered obvious by one of ordinary skill in the art.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,591,393 - Life Spine, Inc. v. Globus Medical, Inc.All claims unpatentablePTAB · Jun 11, 2024 · IPR2022-01602 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1–3 and 8–10 are anticipated by Weiman, and claims 4–7 and 11–14 are obvious over Weiman and Mozeleski; the revised motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11 (citing Ex. 1002 (Drewry Decl.) ¶¶ 76–79). Patent Owner does not dispute Petitioner’s proposal. See generally Response. We adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the cited prior art and is undisputed on this record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find persuasive, and credit, Mr. Drewry’s testimony that (1) a POSITA would have appreciated that the proposed modification to replace Weiman’s screw/socket with Waugh’s angled version provides benefits including “avoiding selected muscular and abdominal anatomical structures,” and (2) such “benefits would have been desirable for certain applications, such as those where the patient’s anatomy dictates that OLIF would provide the patient with the best medical outcome.” Ex. 1044 (Drewry Second Supp. Decl.) ¶¶ 23–26; see also Ex. 1043 (Waugh), ¶¶ 54, 87–90 (describing use of angled screw holes to, e.g., “receive a fastener via a surgical pathway” and configured “to penetrate endplate tissue of a vertebral body”). We find the weight of evidence supports Petitioner’s articulation of a POSITA’s understanding of how to use angles to avoid anatomical features” slip op. at 61
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no terms require construction “because they are shown to be anticipated and/or obvious regardless of construction.” Pet. 12. Patent Owner did not propose any terms for construction. See generally Response. We determine that no claim terms require express construction to render this Decision.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“j. Conclusion on Claim 1 For the above reasons, we determine that Petitioner has shown by a preponderance of the evidence that Weiman discloses each and every limitation of claim 1, and therefore anticipates claim 1.” slip op. at 28
Patent outcomesUS 9,956,087 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,956,087
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.