- PTAB · Mar 31, 2021 · IPR2020-00001 · APJ Jeffrey W Abraham · IPR · Final written decision
The Board canceled claims 1, 5, 8, and 10–12, but denied entry of substitute claims 20–25 because claims 20 and 24 were indefinite and claims 21–23 and 25 were obvious.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“LEVEL OF ORDINARY SKILL IN THE ART In the Institution Decision, we determined that “a person of ordinary skill in the art would have had sufficient experience and/or education in the food industry to possess an understanding of (1) sugar particle size as it pertains to brewed beverages and (2) sugar particle size screening.” Inst. Dec. 7. We observed that this level of ordinary skill is consistent with the level of ordinary skill that we adopted in a related case that involves similar subject matter. See Red Diamond, Inc. v. Southern Visions, LLP, PGR2019- 00045, Paper 9 at 6–8 (PTAB Oct. 15, 2019). We also asked the parties to expressly discuss the level of ordinary skill in the art in the remaining briefing if either party disagreed with our determination. Inst. Dec. 7–8. For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes the level of ordinary skill identified in the Institution Decision (see Revised MTA 7–8), and because we continue to find that the stated level of ordinary skill is consistent with the record.” slip op. at 5
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“consider” the Revised Motion to Amend and cancel original claims 1, 5, 8, and 10–12. Revised MTA 1. Because Patent Owner has not indicated that our consideration of the Revised Motion to Amend is contingent on a determination that original challenged claims 1, 5, 8, and 10–12 are unpatentable, we grant Patent Owner’s request to cancel original challenged claims 1, 5, 8, and 10–12. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018- 01129, Paper 15 at 3 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”) (“A request to cancel claims will not be regarded as contingent.”). The remaining issue before us is whether to grant the Revised Motion to Amend as to proposed substitute claims 20–25.” slip op. at 6
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“sugar, which indicates that between 2–25% of the particles in EFG sugar can have a size in the range of U.S mesh sieve nos. 20–30. Ex. 2003, 42 (showing the “Typical Analysis” for “X-fine” granulated sugar). Even if we were to agree with Patent Owner that this shows a typical analysis for EFG sugar, it still presents a variance of up to 20% for particles having a size in the range of U.S. mesh sieve nos. 20 and 30. Ex. 2003, 42. Thus, the evidence of record suggests that the particle size distribution for EFG sugar, including the number of particles falling in the range of U.S. mesh sieve nos. 3–35, can vary among different EFG sugars. Thus, the term “typical grocery store sugar,” “might mean several different things” in terms of the number of its particles having a size in the range of U.S. mesh sieve nos. 3–35, and “no informed and confident choice is available among the contending definitions.” HZNP Meds. LLC v. Actavis Labs UT, 940 F.3d 680, 698 (Fed. Cir. 2019) (quoting Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015)); Opp. 9; Reply 4.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“sugar in its products (Ex. 1008, 11:2–5), and Mr. Ebersole’s testimony demonstrates that a person of ordinary skill in the art would have known that Standard Grade and Medium Grade sugars are commercial grade granulated sugars and that the particles in Standard Granulated and Medium Granulated sugars “are almost entirely within the range of U.S. mesh nos. 3–35” (Ex. 2076 ¶ 51). The evidence of record thus supports Petitioner’s assertion that following the typical industry practice of using 1 ounce of tea particles and 1 pound of sugar per gallon of tea, and using a commercial grade granulated sugar (as taught by Cooper) such as Standard Granulated or Medium Granulated sugar (which are known to be “almost entirely within the range of U.S. mesh nos. 3–35”), would yield a product having a blend ratio of tea particles to sugar granules having a size in the range of U.S. mesh sieve nos. 3–35 in the range of 1:16–1:25, as recited in proposed substitute claims 21 and 23. Opp. 20–21; Ex. 1008, 11:2–5; Ex. 1001, 17–20, 57–65. In view of the foregoing, we find Petitioner has established sufficiently that the teachings of Cooper, considered in view of admitted prior art sweetening practices, teaches or suggests all of the limitations of proposed substitute claims 21 and 23. Petitioner has presented evidence demonstrating sufficiently that Cooper teaches the use of sugar having particle sizes falling “almost entirely” within the range of mesh 3–35, that following typical industry practices using such sugar would result in the claimed blend ratio of tea to sugar having a size in the range of mesh 3–35, and that a person of ordinary skill in the art would have had reason to brew commercial-sized batches of tea, with a reasonable expectation of success in doing so, as Cooper allows.” slip op. at 26
§ 103 obviousness§ 112 disclosurecites KSR · NautilusPatents in suitUS 9,549,634 - PTAB · Mar 31, 2021 · IPR2019-01662 · APJ Jeffrey W Abraham · IPR · Final written decision
The Board canceled claims 1, 8, 13, and 17; it denied entry of substitute claims 23–26 because claims 23 and 25 lacked written-description support and claims 24 and 26 were indefinite.
RulingsFinal written decision- Skill levelSkill level board ownOther
“C. LEVEL OF ORDINARY SKILL IN THE ART In the Institution Decision, we determined that “a person of ordinary skill in the art would have had sufficient experience and/or education in the food industry to possess an understanding of (1) sugar particle size as it 1 “One degree Brix is one gram of sucrose in 100 grams of solution . . . . Brewed sweetened tea has a typical Brix level of 10½ to 11.” Ex. 1001, 1:35–43. pertains to brewed beverages, (2) sugar particle size screening, and (3) the storage and use of sugar in commercial settings.” Inst. Dec. 7. We observed that this level of ordinary skill is consistent with the level of ordinary skill that we adopted in a related case that involves similar subject matter. See Red Diamond, Inc. v. Southern Visions, LLP, PGR2019-00045, Paper 9 at 6– 8 (PTAB Oct. 15, 2019). We also asked the parties to expressly discuss the level of ordinary skill in the art in the remaining briefing if either party disagreed with our determination. Inst. Dec. 8. For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes the level of ordinary skill identified in the Institution Decision (see Revised MTA 12–13), and because we continue to find that the stated level of ordinary skill is consistent with the record.” slip op. at 4
- 112 supportMotion to amend, deniedDenied
“Structurally, Patent Owner has claimed a broad genus of brewing products – any product that includes sugar having particles in the range of U.S. mesh size nos. 3–35. Patent Owner attempts to further distinguish the genus by including the functional limitation of requiring the product to be capable of producing a tea with a Brix level of at least 10.5 degrees. Patent Owner does not dispute that there are products falling within the structural limitations that do not satisfy the functional limitations. Indeed, there is undisputed testing evidence on the record demonstrating that the entire range of recited structures does not perform the recited function. See Ex. 2076 at Exhibit C, 20–29 (Table 3); Revised MTA 8 (Patent Owner arguing the claims only cover products that include particles within the claimed range that perform the recited function). Here, we discern no evidence on this record of “a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at 1350. Nor do we discern “a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials” in the disclosures, or evidence that “the art has established a correlation between structure and function.” Id. Instead, we view Patent Owner’s proposed substitute claims to involve “merely drawing a fence around the outer limits of a purported genus,” which “is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.” Id. We recognize that the subject matter here is different from, and less complex than, the chemical and biochemical subject matter in Ariad. Nevertheless, the written description requirement still requires sufficient description to convey to one of skill in the relevant art that the inventors “had possession of the claimed invention” and “showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.” Id. at 1351, 1356. Thus we consider the difference in technology in determining “the level of detail required to satisfy the written description requirement,” but do not consider the difference in technology to eliminate entirely the need for some disclosure in the specification indicating possession of the claimed invention. Id. at 1351. Patent Owner has not directed us to any portion of the ’526 or ’881” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“Structurally, Patent Owner has claimed a broad genus of brewing products – any product that includes sugar having particles in the range of U.S. mesh size nos. 3–35. Patent Owner attempts to further distinguish the genus by including the functional limitation of requiring the product to be capable of producing a tea with a Brix level of at least 10.5 degrees. Patent Owner does not dispute that there are products falling within the structural limitations that do not satisfy the functional limitations. Indeed, there is undisputed testing evidence on the record demonstrating that the entire range of recited structures does not perform the recited function. See Ex. 2076 at Exhibit C, 20–29 (Table 3); Revised MTA 8 (Patent Owner arguing the claims only cover products that include particles within the claimed range that perform the recited function). Here, we discern no evidence on this record of “a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at 1350. Nor do we discern “a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials” in the disclosures, or evidence that “the art has established a correlation between structure and function.” Id. Instead, we view Patent Owner’s proposed substitute claims to involve “merely drawing a fence around the outer limits of a purported genus,” which “is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.” Id. We recognize that the subject matter here is different from, and less complex than, the chemical and biochemical subject matter in Ariad. Nevertheless, the written description requirement still requires sufficient description to convey to one of skill in the relevant art that the inventors “had possession of the claimed invention” and “showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.” Id. at 1351, 1356. Thus we consider the difference in technology in determining “the level of detail required to satisfy the written description requirement,” but do not consider the difference in technology to eliminate entirely the need for some disclosure in the specification indicating possession of the claimed invention. Id. at 1351. Patent Owner has not directed us to any portion of the ’526 or ’881” slip op. at 20
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“which indicates that between 2–25% of the particles in EFG sugar can have a size in the range of U.S mesh sieve nos. 20–30. Ex. 2003, 42 (showing the “Typical Analysis” for “X-fine” granulated sugar). Even if we were to agree with Patent Owner that this shows a typical analysis for EFG sugar, it still presents a variance of up to 20% for particles having a size in the range of U.S. mesh sieve nos. 20 and 30. Ex. 2003, 42. Thus, the evidence of record suggests that the particle size distribution for EFG sugar, including the number of particles falling in the range of U.S. mesh sieve nos. 3–35, can vary among different EFG sugars. Thus, the term “typical grocery store sugar,” “might mean several different things” in terms of the number of its particles having a size in the range of U.S. mesh sieve nos. 3–35, and “no informed and confident choice is available among the contending definitions.” HZNP Meds. LLC v. Actavis Labs UT, 940 F.3d 680, 698 (Fed. Cir. 2019) (quoting Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015)); Opp. 7–10; Reply 4. Proposed substitute claims 24 and 26 compare the dissolution of the claimed beverage brewing product against the dissolution of a product using typical grocery store sugar (i.e., EFG). Patent Owner explains that the size of the particles affects dissolution – namely that larger sugar is more advantageous – in the claimed invention. See, e.g., Revised MTA 5; Ex. 1001, 9:23–27, 10:19–22. This suggests that an EFG sugar product having a greater percentage of large particles will be capable of dissolving “more of granulated sugar” as compared to an EFG sugar product having a lower percentage of large particles. As a result, using the dissolution properties of “typical grocery store sugar” as a comparator in the claims is problematic as there is a potential for inconsistent results based on which particular EFG sugar product is used. The potential for inconsistent results undermines Patent Owner’s argument that these claims satisfy the definiteness requirement because a person of ordinary skill in the art “can buy EFG . . . and perform brew tests with it in order to determine the scope of the claims.” Reply 4. Particle size is a critical factor for proposed substitute claims 24 and 26, which require a comparison of dissolution properties of the sugar used in the recited brewing product and typical grocery store sugar. Patent Owner contends “[t]here is an ‘informed and confident’ choice for ‘typical grocery store sugar’ - EFG sugar.” Reply 4. The evidence of record, however, shows the number of large particles (3–35 mesh) varies among EFG sugars. Ex. 2003, 42; Ex. 1004, at pages 51–53. In view of this, we find a person of ordinary skill in the art would not have understood “typical grocery store sugar” identifies sugar having particles of a particular size with sufficient specificity to allow the comparisons that proposed substitute claims 24 and 26 require. Accordingly, proposed substitute claims 24 and 26 are indefinite because they “fail[ ] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014); see USPTO Memorandum on the Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021); MPEP 2173.05(e) (9th ed., Rev. 08.2017, June 2020).” slip op. at 25
§ 112 disclosurecites NautilusPatents in suitUS 9,725,232 - PTAB · Oct 13, 2020 · PGR2019-00045 · APJ Christopher C Kennedy · PGR · Final written decision
The Board cancelled claims 13, 18, and 19, but denied substitute claims 23–25 because their percentage-and-range limitations introduced new matter.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“3. Scope of Proposed Substitute Claims A motion to amend “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Although Patent Owner does not appear to separately address this requirement in the Revised Motion to Amend, see generally Revised MTA, we have reviewed the proposed substitute claims and determine that they do not enlarge the scope of the claims of the patent because they add limitations that render each proposed substitute claim narrower than original challenged claim 13.2 Petitioner does not contend otherwise. See generally Opp. On this record, we determine that the Revised Motion to Amend satisfies this requirement.” slip op. at 9
- 112 supportMotion to amend, deniedDenied
“description support for numerical ranges identified by the parties is General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018).4 In that case, the Federal Circuit explained: The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.”). The Federal Circuit has also stated that, “[i]n the absence of blazemarks” that point to a particular species or sub-genus, “simply describing a large genus of compounds is not sufficient to satisfy the written description requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). We find those cases to be instructive because we discern no guidance in the original disclosure that points to the percentage+range limitation of proposed substitute claim 23. Nor do we find anything in the original disclosure that would “allow one skilled in the art to immediately discern” 4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply. the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to any mesh sieve number range other than 3–35, and Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to having a particular proportion of particles (e.g., 61 wt%) falling within some narrower mesh sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“description support for numerical ranges identified by the parties is General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018).4 In that case, the Federal Circuit explained: The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.”). The Federal Circuit has also stated that, “[i]n the absence of blazemarks” that point to a particular species or sub-genus, “simply describing a large genus of compounds is not sufficient to satisfy the written description requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). We find those cases to be instructive because we discern no guidance in the original disclosure that points to the percentage+range limitation of proposed substitute claim 23. Nor do we find anything in the original disclosure that would “allow one skilled in the art to immediately discern” 4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply. the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to any mesh sieve number range other than 3–35, and Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to having a particular proportion of particles (e.g., 61 wt%) falling within some narrower mesh sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.” slip op. at 14
§ 112 disclosurePatents in suitUS 10,071,852 - PTAB · Oct 28, 2014 · IPR2013-00266 · APJ Christopher L Crumbley · IPR · Final written decision
The Board denied entry of substitute claims 20–26 as obvious, and granted cancellation of challenged claims 1, 2, 4, 11, 12, 17, 18, and 19.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“1. the cleavable linker and the protecting group are cleavable under identical conditions Proposed substitute claim 20 recites, inter alia, “a base that is linked to a detectable label via a cleavable linker,” a “protecting group attached via the 3' oxygen atom” of the nucleotide, and a step of “removing the label and the protecting group of the nucleotide . . . under a single set of chemical cleavage conditions.” Mot. 2 (emphasis added). These limitations are similar to those present in original claim 1, which we construed in our Decision on Institution. Specifically, we construed removal of the label and the protecting group under a single set of conditions “to mean what its plain language indicates: removal of the label and the protecting group under a single set of conditions.” Dec. 6. Neither of the parties contested this construction subsequent to institution, and we discern no reason to modify our initial construction for the purposes of this decision. Proposed claim 20 also requires that the cleavable linker comprise a disulfide linkage, but does not specify the protecting group. Thus, “a single set of chemical cleavage conditions,” under the broadest reasonable interpretation standard, limits the structure of the protecting group to one which can be cleaved under the same conditions as a disulfide linkage, but does not require a specific structure, such as a disulfide linkage.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Illumina was essentially 100%. This is a significant and unexpected improvement over the disulfide cleavages of Ruby (~86%) and Herman (87%).” Ex. 2004 ¶ 84. There is no testimony, however, that the stated results were due to the claimed nucleotide rather than the reducing agent. While Dr. Romesberg refers to the “disulfide cleavage yield” as being unexpected, he does not testify that this yield was attributable to the claimed nucleotide configuration, rather than the reducing agent which performs the disulfide bond cleavage. Illumina has not distinguished the Vermaas results from the prior art by showing that the nucleotide is responsible for the disulfide yield, rather than it being a property of the disulfide bond and the yield being “the mere recognition” of the bond’s “latent properties,” which “does not render nonobvious an otherwise known invention.” Baxter, 952 F.2d at 392; In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997). Absent such evidence, Illumina has not shown that the claimed subject matter possesses “unexpected results relative to the prior art.” Galderma Labs., LP v. Tolmar, Inc., 737 F3d 731, 738 (Fed. Cir. 2013). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“After considering all the evidence as a whole, we conclude that Illumina has not met its burden in showing that the proposed substitute claims are patentable over the prior art considered in this Decision. The Motion to Amend is DENIED to the extent that it requests entry of substitute claims 20–26.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,158,346
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.