- Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Oct 19, 2023 · IPR2023-00878 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Grunenwald anticipates claim 1 or that the asserted combinations cure its failure to disclose contacting chromatin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review requires 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). Determining whether to institute has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim. See 35 U.S.C. § 314(a). Accordingly, we deny the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner proposes constructions of four limitations: “insertional enzyme complex,” “nucleic acid insert element,” “adapter sequence,” and “barcode sequence.” Pet. 21–25. Patent Owner, for its part, states that “[n]o terms require construction for considering institution.” Prelim. Resp. 16. We determine that none of the four limitations identified by Petitioner requires an express construction for purposes of this Decision. It bears mentioning, however, that the ’995 patent states that “[t]he insertional enzyme can be a transposase.” Ex. 1001, 3:41–42. There is no dispute that Grunenwald discloses the use of a transposase and, thus, an insertional enzyme complex. See Pet. 27 (citing Ex. 1003 ¶¶98, 161); Prelim. Resp. 34 (“Grunenwald defines ‘transposase’ to include any transposase, thus including those that comprise antibodies that are specific to a protein that is part of said chromatin.” (citing Ex. 1003 ¶93)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“express construction of the term “chromatin.” The ’995 patent itself provides a definition, stating: The term “chromatin,” as used herein, refers to a complex of molecules including proteins and polynucleotides (e.g. DNA, RNA), as found in a nucleus of a eukaryotic cell. Chromatin is composed in part of histone proteins that form nucleosomes, genomic DNA, and other DNA binding proteins (e.g., transcription factors) that are generally bound to the genomic DNA. Ex. 1001, 12:54–60. This is the meaning that we apply in this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Ground 1 Petitioner asserts that Grunenwald anticipates independent claim 1, as well some of the dependent claims. Pet. 25. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Patent Owner argues that Grunenwald fails to anticipate claim 1, which failure undermines the entire Petition. Prelim. Resp. 16–17 (“Petitioner has failed to show that Grunenwald discloses each and every limitation as arranged in the claims, including, e.g., ‘contacting chromatin of a genome region,’ and thus cannot meet its burden as to any claim in Ground 1.” (quoting claim 1)), 38 (“Petitioner cannot meet its burden as to Grounds 2–8 for the same reasons Petitioner cannot meet its burden for Ground 1.”). Accordingly, we turn first to claim 1.” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,150,995 - PTAB · Oct 13, 2023 · IPR2023-00876 · APJ Michael J Fitzpatrick · IPR · Institution
Instituted IPR on claims 1–6; the Board found a reasonable likelihood that claim 1 would be unpatentable as obvious over Linnarsson and McCloskey.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In sum, on the record presented, it appears that Petitioner is correct in stating that “no arguments were made during examination with respect to McCloskey or any similar reference disclosing an oligonucleotide with two tags.” Pet. 70 (underlining added).” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable on this ground.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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 proposes constructions for “multiplex-identifier (MID)” and “providing a sample.” Id. Patent Owner, for its part, states 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. On the record before us, and for purposes of institution, we find there is no need to provide an express construction of any claim term.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 21–22 (citations omitted). At this stage of the proceeding, Patent Owner does not dispute the level of skill proposed by Petitioner. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the disclosure of the ’981 patent and the asserted prior art, and because there is no argument to the contrary at this stage of the proceeding, we apply Petitioner’s formulation in our analysis below.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,155,981 - Uber Technologies, Inc. v. Surgetech LLCInstitution deniedPTAB · Oct 12, 2023 · IPR2023-00735 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing and failed to identify its grounds and supporting evidence with particularity.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Even when that standard is satisfied, however, the Board has discretion to deny institution.4” slip op. at 2
- BurdenDenied
“Accordingly, we find that the Petition falls short of the requirement that it present “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). In our view, the large number of grounds is far out of proportion with the number of claims and the complexity of the issues involved. This excessiveness indicates that it would impose an undue burden for Patent Owner to respond to and for the Board to resolve all of the grounds asserted in the Petition. Moreover, in addition to the number of grounds asserted, Petitioner’s arguments in support of those grounds are unclear and impossible to discern. Petitioner does not separately discuss each individual ground, but instead lumps together the discussion of all grounds under a single heading. This grouping together of multiple grounds obscures the specific arguments advanced and the claims challenged in each individual ground. Moreover, we agree with Patent Owner that Petitioner does not adequately explain these multiple-reference combinations, or why ordinarily skilled artisans would be motivated to combine them in the manner recited. In these circumstances, we determine that denial is appropriate because the Petition asserts voluminous and excessive grounds and fails to identify them with the requisite particularity. See Microsoft Corp. v. FG SRC, LLC, 860 Fed. Appx. 708, 713 (Fed. Cir. 2021) (“It is not the Board’s job to cobble together assertions from different sections of a petition or citations of various exhibits in order to infer every possible permutation of a petitioner’s arguments. Arguments in a petition must be made with particularity, not opacity”). We further determine that Petitioner fails to” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would at minimum have a bachelor’s degree in software/computer/electrical engineering, computer science, or industrial engineering and management including with respect to systems for dynamically managing inventory and pricing of transportation services or other types of inventory, or the equivalent.” Pet. 16. Petitioner also contends “[a]dditional graduate education could substitute for professional experience, or significant inventory and pricing management experience could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 17–18). Patent Owner does not dispute the level of ordinary skill identified by Petitioner. See Prelim. Resp. 10. For purposes of this Decision, we apply Petitioner’s proposed level of skill because, on the current record, it is consistent with the level of skill at the time of the claimed invention reflected by the ’598 patent and the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In sum, rather than present its challenges with particularity, the Petition simply reproduces large excerpts from multiple references while improperly incorporating by reference hundreds of pages from an expert declaration that frequently includes conclusory assertions. See, e.g., Ex 1003 ¶¶ 162, 188, 201, 226, 227, 240, 250, 264, 274, 282, 292, 302, 309, 318, 326, 332, 341, 363, 384, 387, 416, 428, 444, 456, 458, 476, 495, 504, 511, 521, 535, 633, 641 (stating in substantially similar terms that it “would have been routine to make such an implementation choice,” and “clear it results with a reasonable expectation of success”). Accordingly, we find that the Petition falls short of the requirement that it present “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). In our view, the large number of grounds is far out of proportion with the number of claims and the complexity of the issues involved. This excessiveness indicates that it would impose an undue burden for Patent Owner to respond to and for the Board to resolve all of the grounds asserted in the Petition. Moreover, in addition to the number of grounds asserted, Petitioner’s arguments in support of those grounds are unclear and impossible to discern. Petitioner does not separately discuss each individual ground, but instead lumps together the discussion of all grounds under a single heading. This grouping together of multiple grounds obscures the specific arguments advanced and the claims challenged in each individual ground. Moreover, we agree with Patent Owner that Petitioner does not adequately explain these multiple-reference combinations, or why ordinarily skilled artisans would be motivated to combine them in the manner recited.” slip op. at 19
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,334,598 - Uber Technologies, Inc. v. Surgetech LLCInstitution deniedPTAB · Oct 6, 2023 · IPR2023-00737 · APJ Michael L Woods · IPR · Institution
Denied institution of IPR for claims 1–10 because the petition lacked particularity and failed to show a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Petitioner’s citations to Dr. Regan’s testimony, as well as to Jacob, Tamura, and Kono, fail to show a reasonable likelihood that the cited art satisfies that the steps recited in limitations 9(g) and 9(h) are performed “based on the query,” as required in limitation 9(f). Petitioner’s treatment of these limitations lacks sufficient substantive analysis. See Pet. 60–62.” slip op. at 17
- BurdenDenied
“1. Petitioner fails to clearly map how the claim limitations are mapped to the prior art, and “simply combines the references together in a single, omnibus chart, with no delineation between grounds.” Id. at 9. 2. The Petition fails to identify how the references are being combined. Id. at 14. 3. Petitioner’s motivations to combine are deficient, as Petitioner simply relies on boilerplate language without “address[ing] the combination of any specific teachings in the prior art, let alone explain why a POSITA would have understood such combinations.” Id. at 20. We agree with Patent Owner. Petitioner has a duty to identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); see also Playtika Ltd. V. NexRF Corp., IPR2021- 00952, Paper 14 (denying institution based on discretionary factors and lack of sufficient particularity). The importance of this requirement has been stressed by our reviewing court. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”). Our Rules further require that the Petition must identify “specific portions of the evidence that support the challenge” (37 C.F.R. § 42.104(b)(5)) and that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent” (id. § 42.22(a)(2)). Our Practice Guide also instructs that “parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” Patent Trial and Appeal Board Consolidated Trial Practice Guide, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (Nov. 14, 2019), at 39.2 The Petition falls short of these requirements. Rather than present its challenges in a concise and understandable” slip op. at 10
- Skill levelSkill level board ownOther
“would at minimum have a bachelor’s degree in software/computer/electrical engineering, computer science, or industrial engineering and management with at least two years’ experience in inventory and pricing management, including with respect to systems for dynamically managing inventory and pricing of inventory, or the equivalent. Additional graduate education could substitute for professional experience, or significant inventory and pricing management experience could substitute for formal education. Pet. 10; see also Prelim. Resp. 7 (“This is the same level of skill agreed to by the parties in the litigation. Patent Owner applies this definition for purposes of this Preliminary Response.”). For purposes of this Decision, we adopt the parties’ assessment of the level of ordinary skill in the art. We find that their assessment is consistent with the ’999 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“Rather, the parties do not propose competing constructions for any term. Compare Pet. 8–9, with Prelim. Resp. 42–45. For purposes of this Decision, we give the claims their plain and ordinary meaning, and we need not and do not expressly construe any term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 10
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 11,360,999 - Orthocision, Inc. v. Pain Teq, LLCInstitutedPTAB · Sep 20, 2023 · IPR2023-00625 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1, 2, 9, and 10 over all five asserted § 103 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
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it will prevail in showing that at least one challenged claim of the ’129 patent is unpatentable under the presented grounds. Therefore, we grant institution of inter partes review. Our reasoning is discussed below. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties appear to largely agree on who the person of ordinary skill in the art would have been in terms of education and field of work experience; the disagreement being on the precise type and focus of that experience. Each party cites only its witness’s definition of the ordinarily skilled artisan as support for its proposed definition. Neither party nor their witnesses cite any further supporting evidence for their proposed definitions.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Considering the parties’ proposed interpretations, we find Petitioner’s unsupported on the current record. The portion of the ’129 patent’s written description and Petitioner’s proposed interpretation of “open tip” share little in common, for example, the Specification does not mention “an exposed tapered edge,” much less, suggest that the term “open tip” requires such. See Pet. 19. On the other hand, Patent Owner’s proposed interpretation is more supported in view of the ’129 patent’s Specification and the plain language of the claim as some sort of “opening” seems necessary for an “open tip.” Prelim. Resp. 10. However, Patent Owner appears to read too much structure from the written description into the claim language as a limitation because it is not apparent that an “open tip” requires all the structural features proposed by Patent Owner, i.e., the distal end of the abrading head has a leading edge that encloses the opening. “[W]hile it is true that claims are to be interpreted in light of the specification . . . , it does not follow that limitations from the specification may be read into the claims. . . . [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988). The claim terms “open” and “tip” and their combination, “open tip,” are common words, used in their ordinary way, and are understandable on their face. And, what the ’129 patent’s written description makes clear is that the abrading head of the invention has a void (some empty space) and that the tip of the abrading head is open to that void. See Ex. 1001, 6:14–50. This would include, but is not limited to Patent Owner’s proposed tip where the leading edge entirely encloses the void. Thus, we interpret the claim term “open tip,” consistently with the” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“A claim limitation is presumed to invoke 35 U.S.C. § 112(f) (or pre- AIA § 112(6)) if, as here, it explicitly uses the term “means” and includes functional language; this presumption is overcome if the limitation further includes the structure, material, or acts necessary to perform the recited function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Here, the word “means” is recited, followed by functional language, and the claim recites no structure associated with the means or function. Moreover, the parties appear to agree that this is a means plus function limitation. See Pet. 19–20; Prelim. Resp. 10–19. We find “releasing means” is a means plus function limitation and, based on the plain language of the claim, the recited “releasing means” is a component element of the also recited “slide hammer assembly,” as the above-quoted claim language defines. Ex. 1001, 13:10–17.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,020,129 - Pioneer Pet Products, LLC v. Oil-Dri Corporation Of AmericaNo claims unpatentablePTAB · Sep 12, 2023 · IPR2022-00691 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–17 were not shown unpatentable under any of the three §103 grounds because the Petition failed to establish a required limitation for each combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain 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.” Id.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“For purposes of the present invention, the term “removably clumpable” refers to a litter that, when exposed to a wetting agent forms one or more clumps having a firmness of sufficient structural integrity and hardness to withstand mechanical separation from unwetted litter for disposal. A litter material having a clump strength of ≤1.33 using the Standard Drop Method Test (described below) 30 seconds, 1 hour, 12 hours, 24 hours, 36 hours or 72 hours after the clump is formed by exposure to a liquid is removably clumpable. A litter that is removably clumpable, i.e., has a clump strength of ≤ 1.33 using the Standard Drop Method Test, has a clump strength that is substantially the same as a litter comprised of only the sodium bentonite of the litter. PO Resp. 23–24 (quoting Ex. 1001, 5:24–36). Patent Owner contends that this passage makes clear that it “defined the term ‘removably clumpable’ to mean a litter having a clump strength of ≤ 1.33 using the Standard Drop Method Test at various times after the clump has formed.” Id. at 24 (citing Ex. 1001, 5:24–36, 11:5–7). Patent Owner further contends that Petitioner abandoned the claim construction it proposed in the Petition in its pre- Institution Decision Preliminary Reply, and that Petitioner now agrees with Patent Owner’s proposal, which we adopted in the Institution Decision. Id. (citing Paper 8, 1; Ex. 2012, 23:13–24:1).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although Mr. Raymond opines that “a PHOSITA would have clearly understood” that the combination satisfies the limitation, his opinion lacks adequate explanation to support his conclusion. See Ex. 1006 ¶ 139. 8 Patent Owner contends that in order to perform the calculation necessary to determine compliance with the 47% of the total external surface area limitation, the “loose fill bulk density” and “particle size distributions” (not mere average particle sizes) must be known. See PO Resp. 6. Petitioner disagrees, but attempted to follow the method set forth in the ’393 patent in its argument and evidence filed in connection with its Reply. See Tr. 8:15– 9:8. Petitioner does not meet its burden to show the combination teaches a limitation by simply stating that a PHOSITA would recognize that the limitation would be met, without explaining how or providing the data necessary to test the assertion. Because neither the Petition nor the declaration of Mr. Raymond identifies any particle sizes for the cellulose-containing filler material it relies on or any method of calculating the total surface area of the litter formulation, without that information, Petitioner fails to show that the proposed combination would have inherently, or necessarily, met the 47% of the total external surface area limitation.” slip op. at 20
- Strike new argumentNew argument disregardedDecided for patent owner
“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). Our rules also state that a “reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b); see also PTAB Consolidated Patent Trial Practice Guide (Nov. 21, 2019), available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf, 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”). Because of the governing statute, rule, and case law, “an IPR petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019); see also Intelligent Bio-Systems, 821 F.3d at 1369–70 (concluding that reply brief and accompanying declaration exceeded the proper scope of reply due to introduction of new theories and reliance on new evidence); Wasica Fin. GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286–87 (Fed. Cir. 2017) (holding that the petitioner improperly shifted its position away from that in the petition by relying on a different portion of a prior art reference and proposed modification). In other situations, “a reply may be proper if it is responsive and simply expands on previously raised arguments.” Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1383–84 (Fed. Cir. 2023) (summarizing cases). Accordingly, “there is no blanket prohibition against the introduction of new evidence during an IPR.” Id. at 1384. In some situations, for example, a reply may permissibly expand upon previously-made arguments in the petition without amounting to the introduction of a new rationale and without citing new evidence. See Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374, 1381 (Fed. Cir. 2018). slip op. at 24
Patent outcomesUS 9,439,393 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,439,393 - Synaffix B.V. v. Hangzhou Dac Biotech Co., Ltd.Institution deniedPTAB · Aug 22, 2023 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Institution
Institution was denied for claims 1–17, 20–21, 24–26, and 29–34 because petitioner did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the briefing and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claims 1–17, 20–21, 24–26, and 29–34 of the ’682 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Ex. 1018, 42–43. The Examiner found that Lees discloses NHS vinyl sulfone as a heterobifunctional linker used to attach a derivatized polysaccharide to one end and a protein to the other and found that this compound anticipated formula 55 of the Specification, which was encompassed by claim 1. Id. at 42–43.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“For the reasons discussed above regarding claim interpretation of Y, Z, Q and T, Patent Owner has the better argument for claims 1 and 2. Specifically, Y and Z are independent groups that function without reliance this ground for claims 1 and 2 rely on sulfone to assist vinyl to enable the reaction above, Petitioner is unlikely to prevail in establishing that Morales- Sanfrutos discloses the Y or Z limitations and has therefore not established a reasonable likelihood of prevailing in showing that the disclosures of Morales-Sanfrutos in light of Straus anticipate claims 1 and 2. With regard to claims 3, 6, 24, 25, and 33 we are persuaded by Patent Owner’s argument that Petitioner’s assignment of sulfone for the Q moiety is incorrect because that group becomes complexed to HRP through a vinylsulfone mediated reaction, making a derivatized protein, e.g., HRP-11. Prelim. Resp. 48 (citing Ex. 1005, 4046). In this structure, sulfone is no longer an independent group available to be identified as Q because it has been complexed to the Cb moiety, making the Q moiety limitation not shown in the HRP-11 conjugate. Thus, Petitioner has not established a reasonable likelihood of prevailing in showing that Morales-Sanfrutos discloses the Q limitation and has therefore not established a reasonable likelihood of prevailing in showing that the disclosures of Morales-Sanfrutos in light of Straus anticipate claims 3, 6, 24, 25, and 33.17” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“d) Petitioner’s allegations of obviousness A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In this section, we determine whether Petitioner shows sufficiently, for purposes of institution, that claims 1, 20, 21, and 29–31 would have been rendered obvious by Harris.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,131,682 - Rideco Inc. v. Via Transportation, Inc.No claims unpatentablePTAB · Aug 17, 2023 · IPR2022-00740 · APJ Michael L Woods · IPR · Final written decision
Petitioner failed to prove claims 1–13, 15, and 17–20 unpatentable under the asserted obviousness grounds, chiefly because Lambert did not teach system-selected virtual bus stops.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the parties’ arguments and evidence of record, we adopt Petitioner’s asserted level of ordinary skill. We find that Petitioner’s level of skill is consistent with the problems identified and solutions provided in the ’411 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to the backend artificial intelligence components in a ride-sharing system, as Patent Owner contends. See Pet. Reply 6–7; see also PO Resp. 20–23. We disagree with Patent Owner’s assertions that the ’411 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 20–23. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent to explain why the art of the ’411 patent is limited to artificial intelligence components in determining the relevant skill in the art. See id.; see also Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’411 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art for a patent that never even uses the term. We agree with Petitioner that a skilled artisan with an understanding of computer programming and navigation systems, as well as two to four years of experience in location-based systems, would understand the “computer-implemented transportation system” of the ’411 patent. In summary, we find that the relevant level of ordinary skill in the art “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37).” slip op. at 14
- Expert testimonyDecided for petitioner
“Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews’s testimony that he has experience in “locationbased systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. This experience demonstrates that Mr. Andrews had at least two years of experience in “optimization modeling.” The parties agree, however, that Mr. Andrews does not have experience working with ride-sharing systems. Nevertheless, Patent Owner’s definition includes artisans who lack that particular experience. Specifically, Patent Owner’s definition provides that: A person with an advanced degree (a master’s or Ph.D.) in computer science, operations research, industrial engineering, applied mathematics or a related field and a focus on data science, artificial intelligence or operations research would also have been an ordinary artisan in the field of the ’411 patent even if that person lacked two years of specific experience with ride-sharing systems. PO Resp. 20 (emphases added). In other words, even if the first prong of Patent Owner’s definition requires the expert’s experience to be “in the context of ride-sharing systems,” Mr. Andrews would nevertheless satisfy the qualifications of a POSITA under the second prong, which does not require experience with “ride-sharing systems.” See id. This Decision does not turn on the differences between the parties’ characterization of a skilled artisan.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The parties are in agreement. Despite the parties’ briefing on this term, the parties do not dispute the construction of “virtual bus stops.” Absent any controversy, we adopt the parties agreed-upon construction of the term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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))). Specifically, we adopt the parties’ construction that “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” Compare PO Resp. 23, with Pet. Reply 4. We further adopt the parties’ construction that the system need not use artificial intelligence—whatever that may mean—to select the virtual bus stops. Compare PO Sur-reply 5, with Pet. Reply 4; see also supra § III.A (“[W]e need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never even uses the term.”).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“performs actions (see, e.g., Ex. 1004, 2:49–52; 2:63–67, 3:19–20, 3:34–35), we decline to infer from Lambert’s single sentence (id. at 4:17–23) that Lambert’s server is also programmed to perform the step of “dynamically selecting pickup and dropoff locations” (i.e., virtual bus stops). In other words, if Lambert’s server was programmed to select pickup and dropoff locations, as Petitioner would have us believe, we find that Lambert’s disclosure would have stated so. It does not.” slip op. at 39
Patent outcomesUS 10,197,411 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,197,411 - PTAB · Aug 11, 2023 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–10, 13–18, and 20–32 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on this record, it appears that the main distinction between Petitioner’s ordinary skilled artisan and Patent Owner’s is that Patent Owner further requires familiarity with wireless networks. We note, however, that the monitoring systems of the asserted prior art include wireless networks. In view of this, because Petitioner’s requirement of experience designing railcar, train, vehicle, or any other similar monitoring systems includes some familiarity with wireless networks, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’223 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“this proceeding. Pet. 15. Patent Owner asserts that the term “housing” means “an enclosure.” Prelim. Resp. 29. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“30 of the ’223 patent are entitled to claim priority back to the ’713 application. The test for sufficiency of written description “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In particular, we do not agree with Patent Owner that it can simply pluck the temperature sensor from LeFebvre and insert it into the sensor device disclosed in the ’713 application. Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013) (“Working backward from a knowledge of [the claims], that is by hindsight,” [patentee] seeks to derive written description support from an amalgam of disclosures plucked selectively from the [prior] application.”) (first alternation in original).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,223 - PTAB · Jul 26, 2023 · IPR2023-00539 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–18 and 20–22 on all four § 103 grounds because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“An ordinary meaning of “heuristic” is “involving or serving as an aid to learning, discovery, or problem-solving by experimental and especially trial-and-error methods.” Merriam-Webster.com at “http://www.merriam-webster.com/dictionary/heuristic” (accessed June 12, 2023) (Ex. 3001). Heuristics in the ’673 patent are (1) empirical data used to correlate sensed bearing adapter temperature to bearing temperature, (2) correlating sensed pressure in a trainline to brake pressure, (3) converting bolster/side frame displacement to load, (4) estimating a temperature of tank contents from inner jacket temperature, (5) using dynamic bearing data at an adapter with a fast Fourier transform (FFT) algorithm to isolate dominant modes, and amplify at rolling frequency to indicate faults, (6) converting radial acceleration to vehicle speed using dynamics and wheel and axle diameters, (7) using dynamic bearing data at an adapter and kurtosis in a time domain with a probability density function to indicate bearing damage, (8) applying a probability density function and kurtosis to dynamic data at a bearing adapter and other truck components to indicate track defects, (9) using a simple FFT algorithm with data from adapters to isolate known hunting frequencies or detect flange impacts to identify hunting, and (10) correlate wheel temperature to tread temperature using empirical data. Ex. 1001, 8:20–12:39 (chart of sensed parameter, sensor type, output, and heuristic). Interpreted in light of the ’673 patent specification, a “heuristic” is a rule, algorithm, function, formula, graphing function, or similar mechanism applied to data to assist in analyzing and/or interpreting the data.” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or mechanical engineering or a related field with at least two years’ experience designing monitoring systems for railcar components, or monitoring systems for similar industrial equipment with rotating components,” and “[l]ess work experience could be compensated by a higher level of education, such as a master’s degree, and vice versa.” Pet. 14 (citing Ex. 1003 ¶ 45). 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Changes made to 35 U.S.C. § 103 in the AIA do not apply to any application for patent filed before March 16, 2013. Because the ’673 patent has an effective filing date before March 16, 2013, we refer to the pre-AIA versions of § 103. 3 US 2007/0152107 A1, published July 5, 2007 (Ex. 1005, “LeFebvre”). 4 US 2007/0208841 A1, published Sept. 6, 2007 (Ex. 1007, “Barone”). 5 US 2011/028540 A1, published Nov. 17, 2011 (Ex. 1006, “Armitage”). Patent Owner contends that a skilled artisan “is a person with at least a B.S. degree in electrical or computer science or a related field, with at least two years’ experience with sensing systems for railcars or similar industrial equipment, including familiarity with wireless networks and heuristics and statistical data analysis for failure prediction,” and “[l]ess work experience could be compensated for by a higher level of relevant education and vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 36–40). We adopt Patent Owner’s proposed level as more consistent with the ’673 patent and prior art, but our analysis is the same under either proposal.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We apply the following two-part framework under § 325(d): (1) 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 first part of the framework is satisfied, 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 (Feb. 13, 2020) (precedential). To determine whether the Petition presents “the same or substantially the same” art or arguments previously presented to the Office, we consider the factors set forth in Becton, Dickinson.6 Id. at 7 n.8. Becton, Dickinson provides a non-exclusive set of factors to use in applying the framework of 35 U.S.C. § 325(d).” slip op. at 49
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,981,673
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.