• Parse Biosciences, Inc. v. 10x Genomics, Inc.All claims unpatentable
  PTAB · Sep 17, 2024 · IPR2023-00876 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–6 are unpatentable: claims 1–4 and 6 as obvious over Linnarsson and McCloskey, and claim 5 as obvious over those references and ordinary skill.

  RulingsFinal written decision

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

    “Clearly, the second Hall-Ellis declaration is offered to prove that McCloskey is a prior art printed publication. See, e.g., Ex. 1065 ¶50 (“In view of the foregoing, it is my opinion that [McCloskey] was publicly available no later than [January 3, 2008].”). Thus, the second Hall-Ellis declaration should have been served within ten business days of Patent Owner’s October, 27, 2023, objection to the admissibility of McCloskey. See 37 C.F.R. § 42.64(b)(2) (“The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.”). Because it was not filed until March 29, 2024, Patent Owner’s Motion to Exclude is granted with respect to the second Hall-Ellis declaration. In its Opposition to the Motion to Exclude, Petitioner argues that, under Hulu LLC v. Sound View Innovations, LLC, No. IPR2018-01039, Paper 29 (Dec. 20, 2019) (precedential), it was allowed to wait until its Reply to file the second Hall-Ellis declaration. Paper 37, 1–2. The Board in Hulu does state that, “if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication.” Hulu, at 15 (37 C.F.R. § 42.23). However, the Board’s statement was referring to the scope of permissible reply arguments under 37 C.F.R. § 42.23(b). See Hulu at 14 (quoting 37 C.F.R. § 42.23(b)’s requirement that “[a] reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response”). The Board in Hulu does not purport to interpret 37 C.F.R. § 42.64 or even discuss supplemental evidence. Petitioner clearly missed the deadline imposed by 37 C.F.R. § 42.64(b)(2), which was triggered by Patent Owner’s October 27, 2023, objection to McCloskey. Patent Owner’s Motion to Exclude is granted with respect to the second Hall-Ellis declaration (i.e., Ex. 1065).” slip op. at 16

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We find that both references are analogous art to the ’981 patent, as there is ample supporting evidence in the record, including that to which the Reply cites (citations identified in the immediately preceding paragraph). Indeed, Patent Owner does not dispute the merits of either argument. PO Sur-Reply 27–28. Rather, Patent Owner, argues that we “should not now permit Petitioner to rewrite its clearly-deficient Petition.” Id. at 28. Petitioner’s Reply does not re-write its Petition. What Petitioner’s Reply does, in response to Patent Owner’s arguments, is precisely what Sanofi-Aventis contemplates as being proper in a reply brief. Indeed, in ruling against the petitioner in Sanofi-Aventis, the Federal Circuit specifically noted that the petitioner could have used its reply brief “to explain how [the prior art reference] is analogous to the [challenged] patent” but did not do so. 66 F.4th at 1379–1380. Here, in contrast, Petitioner used its Reply brief to explain how Linnarsson and McCloskey are analogous to the ’981 patent. Petitioner’s explanation in its Reply brief was both proper and persuasive.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “That McCloskey is what it purports to be (a journal article) and that it was published in 2007 are corroborated by multiple pieces of evidence. McCloskey names four authors, all four of whom are named inventors of US 2007/0020640 A1, published Jan. 25, 2007 (“McCloskey ’640”). Ex. 1004, 1, Ex. 2001, code (76). Patent Owner concedes that McCloskey and McCloskey ’640 involve the same subject matter, having argued that the consideration of McCloskey ’640 supported discretionary denial of the Petition based on McCloskey. See, e.g., Prelim. Resp. 22 (“Petitioner’s secondary reference, an article by McCloskey, is at best cumulative of the far more detailed McCloskey ’640, which was raised by the Office and substantively discussed as the basis for a potential rejection using its asserted disclosure of a polynucleotide-specific tag—the same purported teaching for which Petitioner relies on McCloskey here.”). Notably, McCloskey ’640 was published on January 25, 2007. Ex. 2001, code (43). That is just days before McCloskey was received by BIOCHEMICAL GENETICS on January 31, 2007. See EX. 1004, 1 (“Received: 31 January 2007 / Accepted: 29 May 2007 / Published online: 23 October 2007”). In other words, it appears that the authors sought to have their research published in a scientific journal promptly after the subject matter of their research had been published by the Office. Further, the existence of McCloskey and its publication year of 2007 is confirmed by other sources in the record. See Ex. 1029, code (56) (United States Patent identifying as a cited reference: “McCloskey, et al. Encoding Pcr products with batch-stamps and barcodes. Biochem Genet. Dec. 2007;45(11-12):761-7. Epub Oct. 23, 2007.”); Ex. 1053, code (56) (same); Ex. 1060 (article’s bibliography citing “McCloskey ML, Stöger R, Hansen RS, Laird CD. Encoding PCR products with batch-stamps and barcodes. Biochem. Genet 2007;45:761–767. [PubMed: 17955361]”). Patent Owner’s Motion to Exclude is denied with respect to” slip op. at 19

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

    “The Petition states that “Petitioner does not believe that any terms require explicit construction in view of the prior art being presented.” Pet. 36. Despite this stated position, Petitioner proposed constructions for “multiplex-identifier (MID)” and “providing a sample.” Id. Patent Owner, in its Preliminary Response, stated that it “agrees that at this time, solely for purposes of an institution decision on the Petition, no terms require explicit construction.” Prelim. Resp. 45. In instituting the IPR, we found no need to provide an express construction of any claim term. Inst. Dec. 6. In the Patent Owner Response, Patent Owner repeats that it “does not believe any term needs construction,” but nonetheless “applies the Petition’s definitions for ‘MID’ and ‘sample.’” PO Resp. 19. The Petition defines MID as “‘a tag or combination of tags associated with a polynucleotide whose identity (e.g., the tag DNA sequence) can be used to differentiate polynucleotides in a sample.’” Pet. 36 (quoting Ex. 1001, 6:33–38). The Petition defines sample as “‘a quantity of material from a biological, environmental medical, or patient source in which detection, measurement, or labeling of target nucleic acids is sought.’” Id. (quoting Ex. 1001, 12:7– 10). We apply these same definitions in our analysis.” slip op. at 6

  Patent outcomesUS 10,155,981 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,155,981
• Nespresso USA, Inc. v. K-Fee System GmbHAll claims unpatentable
  PTAB · Sep 10, 2024 · IPR2023-00502 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious over the combined disclosures of Yoakim, Jarisch, and Rapparini.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “To obtain the benefit of the filing date of an earlier application, Patent Owner bears the burden of producing evidence to establish where each limitation of the challenged claims is disclosed in a single priority application. Studiengesellschaft Kohle, 112 F.3d at 1564; NTP, 654 F.3d at 1276. Petitioner identifies limitations of the challenged claims that are missing from each individual German priority application. Pet. 39–42. Patent Owner responds with no evidence or arguments suggesting that the identified limitations are disclosed in a single application. Resp. 10–12. On this record, no challenged claim is entitled to the benefit of the filing date of any of the three German priority applications; therefore, Jarisch qualifies as prior art under at least 35 U.S.C. § 102(e).” slip op. at 19

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “In other words, even if we accept that Dr. Howle has some experience designing medical devices and components, and that those experiences represent work designing products similar to mechanical beverage systems, Patent Owner fails to direct the Board to evidence sufficient to establish that this experience, in the aggregate, amounts to “at least five years” or involved “experience with sensors for recognizing identifiers.” Dec. 8 (adopting Patent Owner’s own proposed definition of ordinary skill in the art); see Sur-reply 3 (citing Ex. 1066, 34:16–35:9; Ex. 1067, 101:3–12, 102:30– 104:9; Ex. 2017 ¶¶ 3, 4) (failing to establish adequately, if at all, how Dr. Howle’s qualifications include the requisite minimum five-year period of relevant design experience). Accordingly, we determine that Dr. Howle is not qualified to offer expert testimony from the perspective of a person having ordinary skill in the art in this proceeding.12 Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). The Federal Circuit has made plain that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case,” including the issue of patent “validity,” the “witness must at least have ordinary skill in the art.” 12 To be clear, we are not saying that a witness supplying expert opinions must have satisfied the requirements of the level of ordinary skill in the art on or before the priority date of the challenged patent, which Patent Owner seems to understand. See Sur-reply 4–5. Instead, we evaluate whether Dr. Howle had at least the requisite qualifications of a person having ordinary skill in the art by the time he rendered his opinions. Osseo Imaging, LLC v. Planmeca USA, Inc., Appeal No. 2023-1627, slip op. at 7 (Fed. Cir. Sept. 4, 2024) (“[A]n expert can acquire the necessary skill later and develop an understanding of what a person of ordinary skill knew at the time of the invention,” however, where “the expert was not a person of ordinary skill at the time of the invention may well be used during cross-examination to undermine the credibility of the expert.”); see id., slip op. at 5–6 (affirmatively quoting Kyocera). Id. (Board’s emphasis). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. “‘Admitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’” That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). Alternatively, even if we accept that Dr. Howle possesses “at least five years” of relevant design experience, on this record, we agree with Petitioner that his opinions are entitled to less weight than those of Petitioner’s witness, Mr. Jobin. Reply 27. Unlike Dr. Howle, Mr. Jobin is a designer by profession, with more than 30 years of industry experience. Reply 27 (citing Ex. 1003 ¶¶ 5–30). For example, Mr. Jobin designed a home-based beer dispensing system utilizing cartridge identification technologies. Id. (citing Ex. 1003 ¶ 24). Mr. Jobin also “has substantial experience with sensors for recognizing identifiers.” Id. (citing Ex. 1003 ¶ 19; Ex. 1072, 3712–19, 67:22–70:19). Dr. Howle, by contrast, “has never designed a beverage machine.” Reply 22; see generally Sur-reply (declining to contest that assertion).13” slip op. at 14

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

    “In Petitioner’s contrary view, Jarisch teaches how to move a code in a centrifugal brewing system to the bottom of the flange and how to configure a light-conductive material so that the detector’s light source will reach the bottom of the flange. Pet. 45–46; Reply 21–22 (Ex. 1003 ¶¶ 194–195; Ex. 1005 ¶¶ 82–84, Fig. 5). Although Figure 61 of Yoakim discloses a flare in its brewing chamber, bodily incorporation is not required, and we are directed to no persuasive argument or evidence that Yoakim could not be configured with a straight chamber, as depicted in Figure 5 of Jarisch. We credit the testimony of Mr. Jobin that a person of ordinary skill in the art would have sought to place the code at the bottom of the flange and would have had a reasonable expectation of success in so doing. Ex. 1003 ¶ 184. For reasons explained above, we assign little or no weight to Dr. Howle’s conflicting testimony because he has little or no experience designing a mechanical beverage system or similar product. See supra 10– 16. Petitioner lays out persuasive reasons why Dr. Howle’s testimony, on this particular point, is “conclusory” and rests on “bodily incorporation” of the references. Reply 24; see id. at 22–24 (pointing out with particularity fundamental flaws in Dr. Howle’s opinions); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). In addition, Patent Owner contends that Yoakim requires that the capsule holder be capable of receiving a set of multiple volume capsules and that there is a “snug fit” to avoid “unbalances.” Sur-reply 8 (citing Ex. 1004 ¶¶ 205, 479, 484, 507, 512). According to Patent Owner, Petitioner does not explain adequately how the use of Jarisch’s “straight chamber” with a capsule holder that does not engage with the side wall of the capsule would allow insertion of multiple volume capsules or permit a “snug fit” in the modified device of Yoakim. Id. at 8–9. Patent Owner’s view that Yoakim discloses the use of certain capsules which might not fit into a device with Jarisch’s non-flared structure is ineffective to undercut the sufficiency of Petitioner’s showing on this point. Petitioner is not seeking a bodily incorporation of Yoakim and Jarisch and, in any event, other embodiments of Yoakim do not require the type of flared capsule identified by Patent Owner. Ex. 1004, Fig. 63. Furthermore, we credit the testimony of Mr. Jobin that one of ordinary skill in the art would have understood how to design the chamber of Yoakim to allow reading of a barcode on the underside of the flange. Ex. 1003 ¶¶ 187–195. With respect to the argument that the use of Jarisch’s design would not allow a snug fit, we are directed to no persuasive evidence that Jarisch’s lack of contact between the capsule side wall and the holder would render the device inoperable or less effective. Resp. 39–40; see Reply 22 (citing Ex. 2019, 36:18–37:6). Indeed, as Petitioner points out, Jarisch indicates that its device, including its capsule holding means, allows the capsule to be successfully driven in rotation. Reply 22 (citing Ex. 1005 ¶ 23).” slip op. at 49

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “That argument is not persuasive. A reference need not identify or discuss another prior art patent or application in order for that reference to be deemed relevant or analogous art. Nor do we endeavor to determine why, or why not, a particular reference is discussed in a prior art reference. The analogous art inquiry focuses on reasonable pertinence and involves assessing the similarities between the claimed invention and the prior art, including the problems addressed and the closeness of the subject matter, as viewed by an ordinarily skilled artisan. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020); see Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380-81 (Fed. Cir. 2019) (relevant analysis focuses on comparing the disclosed embodiments, function, and structure of the claimed invention to the disclosures of the prior art). Against that backdrop, we reject Patent Owner’s suggestion that the inquiry involves whether the inventors of Jarisch saw a need to discuss Yoakim’s disclosure in Jarisch’s priority document.” slip op. at 45

  Patent outcomesUS 10,994,923 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,994,923
• 10x Genomics, Inc. v. Bruker Spatial Biology, Inc.Instituted
  PTAB · Sep 5, 2024 · IPR2023-01300 · APJ Devon Zastrow Newman · IPR · Institution

  The Board instituted IPR on claims 1–13 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). For the reasons set forth below, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute an inter partes review of the challenged claims in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have possessed a strong understanding in the use and development of genetics and genomics approaches for detecting or monitoring human diseases, such as spatial detection of a target analyte (e.g., mRNA or DNA) in a tissue, and would typically have a Ph.D. in a relevant field (e.g., molecular biology, genetics, and bioinformatics) with two years of experience. Pet. 21–22 (citing Ex. 1044 ¶¶ 24–36). For the purposes of its Preliminary Response, Patent Owner does not provide its own proposed level of skill. Prelim. Resp. 7. For purposes of this Decision, we apply Petitioner’s unchallenged definition as it is consistent with the cited prior art and disclosure of the ’142 patent.” slip op. at 12

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

    “Thus, according to claim 1, to synthesize a first/second plurality of DNA products by performing a synthesis reaction, the “DNA products” must 1) use the oligonucleotides collected in steps (a) and (b) as templates from which the DNA is synthesized, and 2) incorporate a source location-identifying nucleic acid sequence.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “(2) Analysis Neither party has offered a construction for “collecting oligonucleotides under conditions that release them” in claim 1. We note that, in the related litigation, the district court determined that “under conditions that release” should have its plain and ordinary meaning. Ex. 1052, 38. For purposes of institution, we also apply the plain and ordinary meaning of this claim phrase and do not need to expressly construe the claim phrase for purposes of institution. On this record, for the reasons explained by Petitioner and as supported by its declarant testimony, we conclude Petitioner has sufficiently shown that So-456 discloses the “collecting oligonucleotides under conditions that release them” limitation recited in claim 1.” slip op. at 42

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,473,142
• Synaffix B.V. v. Hangzhou Dac Biotech Co., Ltd.Other
  PTAB · Aug 30, 2024 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Remand

  On remand, the Board instituted inter partes review of claims 1–17, 20–21, 24–26, and 29–34 on all grounds stated in the Petition.

  RulingsRemand decision

  • Director reviewOther

    “Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17 (“Inst. Dec.”). Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel. Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Director Review Panel (“DRP”) vacated our decision and remanded the case to this panel with a revised construction for claim 1. Paper 23 (“DRP Dec.”).” slip op. at 2

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect (2018). Upon reconsideration of the briefing and the evidence of record in light of the DRP’s claim construction, we conclude that Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable. Accordingly, we grant institution of inter partes review of claims 1–17, 20–21, 24–26, and 29–34 of the ’682 patent.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “We find that Petitioner has demonstrated a material error by the Office in the prior consideration of Morales-Sanfrutos, Straus, Singh, and Lees. For instance, under the second prong of Advanced Bionics, we consider “(c) the extent to which the asserted art was evaluated during “(e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art.” Becton, Dickinson, 17–18. We agree with Petitioner that the Office overlooked Morales- Sanfrutos’ and Singh’s teachings during examination and reexamination. Pet. 79. Although Morales-Sanfrutos, Straus, and Singh were listed on an IDS, they were not the subject of a rejection during examination or reexamination. Moreover, for the reasons discussed below at this stage with regard to Petitioner’s grounds over Morales-Sanfrutos, as evidenced by Straus, and over Singh, Petitioner sufficiently demonstrates that the Office materially erred in overlooking Morales-Sanfrutos’s and Singh’s teachings regarding their linker structures. Id. Further, to the extent the Lees’ teachings were considered during examination and reexamination, Lees’ disclosure of a homobifunctional sulfone linker was overlooked. Lees’ homobifunctional linker, which Patent Owner argues is substantially similar to Harris’ homobifunctional linker, which Petitioner chiefly relies upon in Grounds 2–5, was not the subject of a rejection during examination. Pet. Resp. Brief 1; Prelim. Resp. 25–26. We agree with Petitioner that only Lees’ heterobifunctional linker was applied in a rejection during examination. Pet. Resp. Brief 1; Ex. 1018, 42–43, 62. 4. Conclusion For the foregoing reasons, we decline to exercise discretion to deny institution under § 325(d).” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,131,682
• Honeywell International Inc. v. DSM IP Assets B.V.Institution denied
  PTAB · Aug 21, 2024 · IPR2024-00493 · APJ Erica A Franklin · IPR · Institution

  The Board denied institution because Honeywell did not show a reasonable likelihood that claims 1–9 were unpatentable over any of its three obviousness combinations.

  RulingsInstitution decision

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

    “Accordingly, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its obviousness challenge of independent claim 1 or dependent claims 2–9 over the combination of Simmelink and Section 73.1015.” slip op. at 23

  • Skill levelOther

    “PHOSITA) at the time of the ’532 patent “would have had at least a Bachelor’s degree in the field of chemistry, chemical engineering, polymer chemistry, or materials science and at least three years of relevant work experience in the field of high strength fibers.” Pet. 8 (citing Ex. 1003 ¶ 18). Petitioner adds that individuals with different educational backgrounds could still be of ordinary skill in the art if they have “additional experience [that] compensates for a deficit in their education and experience stated above.” Id. According to Patent Owner, a person or ordinary skill in the art, would have (i) a bachelor’s degree in chemistry, polymer chemistry, materials science, chemical engineering, or biomedical engineering and (ii) three years of experience in designing and manufacturing gel-spun UHMWPE yarns. At this level of skill, a PHOSITA would have a detailed understanding of the information provided in the Technology Background, Section II, supra, including (i) the differences between linear HDPE and UHMWPE, (ii) the history underlying Section 73.1015 and the early failures of the 1960s-era blue, melt-extruded polyethylene sutures, (iii) why the molecular orientation of polyethylene molecules leads to strong yarns in the special case of gel-spun UHMWPE, and (iv) the challenges associated with coloring gel-spun UHMWPE yarns, especially for end-use medical applications. Prelim. Resp. 33–34. We note that the parties’ proposed definitions are largely similar, except that Patent Owner additionally recognizes a Bachelor’s degree in biomedical engineering and requires experience in designing and manufacturing gel-spun UHMWPE yarns. In any event, we do not need to the same under either proposed definition.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “a skilled artisan would have understood that the “gel spinning” process recited in the claims requires the use of a solvent during the spinning process. Indeed, the Specification describes this term, as follows: Gel spinning is understood to include at least the steps of spinning filaments from a solution of ultra-high molecular weight polyethylene in a spin solvent; cooling the filament obtained to form a gel filament removing at least partly the spin solvent from the gel filament; removing at least partly the spin solvent from the gel filament; and drawing the filament in at least one drawing step before during or after removing spin solvent. Ex. 1001, 2:31–37. We recognize the inventor’s lexicography as dispositive with respect to the meaning of the term “gel spinning.” See Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir.” slip op. at 8

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

    “Claim 1 describes gel spinning as the manner by which the filaments comprised in the claimed colored multi-filament yarn are obtained. This, on its face, is a product-by-process claim element because it describes the filament structure being obtained in a particular way, i.e., by gel spinning. See Kamstrup A/S v. Axioma Metering UAB, 43 F.4th 1374, 1382 (Fed. Cir. 2022) (agreeing with the Board that “cast in one piece” is a product-by-process claim element as it describes the structure being cast “in a particular way”). For this element to be limiting, it must impart “structural and functional differences” that distinguish the claimed product from the prior art. See Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1365–67 (Fed. Cir. 2009). Patent Owner argues persuasively that gel spinning imparts structural and functional differences to the claimed product because the process “creates overlap between polyethylene molecules within the UHMWPE filaments that maximizes the intermolecular Van der Waals interactions, resulting in highly crystalline filaments with high tensile strength.” Prelim. Resp. 38, 22 (citing Ex. 1014, 62–66). According to Patent Owner, “the structure of the gel spun UHMWPE is substantially different from other types of UHMWPE such as compression-molded and ram-extruded UHMWPE used to make joint replacements and other orthopedic implants.” Id. at 38.” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,280,532
• Visa Inc. v. Cortex MCP, Inc.Instituted
  PTAB · Aug 1, 2024 · IPR2024-00490 · APJ Russell E Cass · IPR · Institution

  The Board instituted inter partes review of claims 1–17 on all four asserted obviousness grounds, finding a reasonable likelihood of unpatentability on at least one claim.

  RulingsInstitution decision

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

    “Based on the ’973 patent Specification, the language of claim 1, and the testimony of Dr. Shamos, we preliminarily determine, at this stage of the proceeding, that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. For purposes of institution, we need not determine whether the term “OVER file” necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. 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.”). However, as discussed further in Section II.D.2(d) below, we determine that Petitioner has made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” We emphasize that our construction of “OVER file” is preliminary and based on the present record, and we encourage the parties to further develop the record on claim construction during the trial.” slip op. at 11

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

    “2. “verified by an issuing agency” Petitioner states that “[c]laims 1, 2, 8, 9, 16, and 17 recite an OVER file comprising ‘a virtual representation of the credential that has been verified by an issuing agency to be an official representation of the credential.’” Pet. 13. Petitioner argues that “[d]uring prosecution of the parent application, Applicant argued that this phrase requires that the issuing agency verify that the virtual representation is an official representation of the credential.” Id. (citing Ex. 1007, 40, 44–45). “Accordingly,” Petitioner contends, “this petition construes this phrase to require that an issuing agency have verified a virtual representation in an OVER file as being an official representation of a credential.” Id. (citing Ex. 1005 ¶¶ 89–92). Patent Owner does not appear to dispute this contention at this stage of the proceeding. See Prelim. Resp. 21–22. For purposes of institution, we will apply Petitioner’s proposed construction of this term.” slip op. at 12

  • Skill levelSkill level petitioner adoptedOther

    “those fields.” Id. Patent Owner does not offer a proposed level of ordinary skill at this stage of the proceeding. See generally Prelim. Resp. 21. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’973 patent and the asserted prior art of record.” slip op. at 15

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

    “of institution that one of ordinary skill would have found it obvious for the issuer of Oborne’s tokens to verify the token. We find logical Petitioner’s contention, supported by Dr. Shamos’s testimony, that one of ordinary skill would have found it obvious for an issuer, after generating the token, to verify that it was an official representation of the credential using the credential information it already has, because such verification would increase confidence that the token legitimately represented the credential. Pet. 22; Ex. 1005 ¶ 212. Dr. Shamos provides further support by testifying that this verification would be a “routine step,” and would mitigate the problems caused by “[t]he existence of unofficial, forged or altered tokens in the marketplace,” which “would create problems for both issuers and users.” Ex. 1005 ¶ 212. We find that these arguments, at this stage of the proceeding, provide sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” for purposes of institution. KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). Although Patent Owner criticizes these arguments as “hindsight,” Patent Owner fails to provide any reasoning explaining why one of ordinary skill would not have been motivated to have the issuer verify the token as Petitioner and Dr. Shamos contend. See Prelim. Resp. 28.” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,329,973
• Visa Inc. v. Cortex MCP, Inc.Instituted
  PTAB · Aug 1, 2024 · IPR2024-00489 · APJ Russell E Cass · IPR · Institution

  The Board instituted inter partes review of claims 1–21 on all four asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined 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 (2018); see also 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2

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

    “[t]he term ‘officially verifiable electronic representation’ is not a term of art” and “was devised purely for use in the Cortex Patents.” Ex. 1005 ¶ 85. Patent Owner does not argue otherwise. Prelim. Resp. 21–22, 33–34. The ’859 patent Specification states that an OVER file “may provide a secure file format and platform for the storage and verification of key user or consumer credentials.” Ex. 1003, 3:62–65. The Specification further explains that the OVER file is “representative of the user’s credentials” and “[t]he OVER file credentials may comprise any officially verifiable electronic credential, such as, for example, a government issued identification, such as a driver’s license, non-driver’s identification card, or professional license,” as well as “privately issued credentials” or “any other credential that may be electronically verified by an issuing agency.” Id. at 4:4–5, 4:10–20. Claim 1 also recites that the OVER file “compris[es] a virtual representation of the credential” of a user. Ex. 1003, 22:3–4. Dr. Shamos states that he “interpret[s] an OVER file as encompassing a file comprising a virtual representation in the form of an image of (or associated with) the credential, but also encompassing a file comprising a virtual representation in the form of a token.” Ex. 1005 ¶ 90. Based on the ’859 patent Specification, the language of claim 1, and the testimony of Dr. Shamos, we preliminarily determine, at this stage of the proceeding, that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. For purposes of institution, we need not determine whether the term “OVER file” necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. 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.”). However, as discussed further in Section II.D.2(d) below, we determine that Petitioner has made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” We emphasize that our construction of “OVER file” is preliminary and based on the present record, and we encourage the parties to further develop the record on claim construction during the trial. slip op. at 10

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

    “3. Other Terms The parties do not propose constructions for any other claim terms, and we determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Dr. Shamos, Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would typically have a bachelor’s degree in computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 3 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. ¶¶ 76–81). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of those fields.” Id. Patent Owner does not offer a proposed level of ordinary skill at this stage of the proceeding. See generally Prelim. Resp. 21. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’859 patent and the asserted prior art of record.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,749,859
• Visa, Inc. v. Cortex MCP, Inc.Instituted
  PTAB · Aug 1, 2024 · IPR2024-00488 · APJ Kara L Szpondowski · IPR · Institution

  The Board instituted IPR on claims 1–17 and all asserted grounds after finding a reasonable likelihood that claim 1 was unpatentable over Oborne.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . 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). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Section 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Within this two-part framework, the Board considers a number of non-exclusive factors in evaluating whether to exercise its discretion under § 325(d). See Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first para.) (“Becton, Dickinson”); see also Advanced Bionics at 9–11. The factors set forth in Becton, Dickinson are as follows: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023) (“Wolfspeed”).” slip op. at 16

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

    “[t]he term ‘officially verifiable electronic representation’ is not a term of art” and “was devised purely for use in the Cortex patents.” Ex. 1005 ¶ 83. Patent Owner does not argue otherwise. Prelim. Resp. 22–23, 33–34. The ’854 patent Specification states that an OVER file “may provide a secure file format and platform for the storage and verification of key user or consumer credentials.” Ex. 1002, 3:57–60. The Specification further explains that the OVER File is “representative of the user’s credentials” and “[t]he OVER file credentials may comprise any officially verifiable electronic credential, such as, for example, a government issued identification, such as a driver’s license, non-driver’s identification card, or professional license,” as well as “privately issued credentials” or “any other credential that may be electronically verified by an issuing agency.” Id. at 3:66–67, 4:5–14. Claim 1 also recites that the OVER file “compris[es] a first virtual representation of an original credential of a user.” Id. at 21:50–52. Dr. Shamos states that he “interpret[s] an OVER file as encompassing a file comprising a virtual representation in the form of an image of (or associated with) the credential, but also encompassing a file comprising a virtual representation in the form of a token.” Ex. 1005 ¶ 88. Based on the ’854 patent Specification, the language of claim 1, and the testimony of Dr. Shamos, we preliminarily determine, at this stage of the proceeding, that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. For purposes of institution, we need not determine whether an “OVER file” necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. 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.”). However, as discussed further in Section III.E.2(b) below, we determine that Petitioner has made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” We emphasize that our construction of “OVER file” is preliminary and based on the present record, and we encourage the parties to further develop the record on claim construction during the trial. slip op. at 10

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

    “There is a sufficient basis, based on the ’854 patent Specification, to construe “scan” to include an optical scan. See Ex. 1002, 7:64–8:16, 14:19– –29. Further, the ’834 patent Specification states that “the OVER File storage client may generate an information code in the form of a networked or radio transmission, such as, for example, a Near Field Communication (NFC) or Bluetooth” and, in the context of “a user [] present[ing] a stored OVER File credential to a third party for verification,” the Specification appears to at least suggest that NFC interaction involves a scan of the information code. See Ex. 1002, 12:17–50, see also id. at 5:17–35. Accordingly, for purposes of this Decision, we will apply a construction of “scan” that encompasses an optical scan as well as an NFC interaction.” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,954,854
• Google LLC v. Flypsi, Inc. (D/B/A Flyp)All claims unpatentable
  PTAB · Jul 31, 2024 · IPR2023-00360 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–6 are unpatentable: claims 1–5 as obvious over Backhaus and Logan, and claim 6 as obvious over Backhaus, Logan, 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 ’770 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 communication . . . More education can supplement practical experience and vice versa. Pet. 4 (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 ’770 patent.” slip op. at 13

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

    “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. 45–46. As will be evident from our analysis below, we conclude that it would have been obvious to employ an IP-based communication. There is no dispute that an IP-based communications channel satisfies the term channel as used in the claims. 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)).” slip op. at 14

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

    “not require the pre-call information to be transmitted after the call is received at the switch. 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., 764 F.3d at 1398. As discussed in greater detail below, we do not find the asserted claims, read in light of the Specification,6 to require that the pre-call information having a bridge number be transmitted after a call to a secondary number is made. We begin with the words of the claim. See, e.g., Phillips, 415 F.3d at 1314 (“[T]he context in which a term is used in the . . . claim [at issue] can be highly instructive.”). The complete “transmitting” step recites: transmitting pre-call information to the handset over the at least one data channel the pre-call information including the bridge telephone number and the handset-associated telephone number, such that the handset is capable of displaying the handset-associated telephone number to a user and, based on user input, accepting the incoming call by connecting with the switch over the at least one voice channel using the bridge telephone number. Ex. 1001, 10:29–37. The plain language of the claims requires that the pre-call information is transmitted such that the handset is capable of displaying the handset-associated telephone number and accepting the incoming call. Nothing in this language precludes the pre-call information from being transmitted before the incoming call is received at the switch— the requirement is that the information makes the handset capable of displaying the handset-associated telephone number to a user and accepting” slip op. at 18

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “The Petition, at page 41, makes the argument. We also do not agree with Patent Owner and Dr. Akl that a person having ordinary skill in the art would not have been motivated to employ IP-based communications for the pre-call information. Dr. Akl testifies that [i]f the relationship number was split into a separate transmission[] and transmitted faster than the call itself, as the Petition appears to suggest, then the relationship number could arrive before the call. In this case, the handset would have a notification relating to a call that is not ready to accept, which would be a bad experience for the user because the user would be able to see the incoming call notification but would be unable to accept it. Ex. 2010 ¶ 81. But this testimony ignores the fact that the scenario discussed in Backhaus is the case where a third party caller calls for the first time, and a relationship number is created. See Ex. 1005 ¶ 53. If the pre-call information arrives before the call, then the SLS module on the phone can use the information to display the caller information once the call is connected. Such an approach may avoid the situation where “unknown caller” needs to be displayed, for example. See id. ¶ 55. Indeed, Backhaus suggests Petitioner’s proposed use. See id. ¶ 73 (“Such channels can be used in setting up the relationship databases, sharing information between the SLS module 105 and the SLS platform 115.”). Because Dr. Akl’s testimony is inconsistent with Backhaus’s express teachings, we give it little weight.” slip op. at 42

  Patent outcomesUS 9,667,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,667,770
• Google LLC v. Flypsi, IncAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,051,105

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.