- Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Elm 3ds Innovations, LLCNo claims unpatentablePTAB · Aug 22, 2017 · IPR2016-00770 · APJ Glenn J Perry · IPR · Final written decision
Claims 12, 13, 24, 36, 37, 38, 83, 86, 87, and 132 were not shown unpatentable over the asserted combinations because the evidence did not establish substantial flexibility or motivation for the proposed dielectric substitutions.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, with support of its declarant Paul D. Franzon, Ph.D., contends that one of ordinary skill in the art at the time of the inventions of the challenge patents “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Pet. 7 (citing Ex. 1002 ¶¶ 52–53). Dr. Franzon’s testimony as to the level of 12 ordinary skill is based on “the type of problems encountered in the art, prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Ex. 1002 ¶ 53. Patent Owner did not propose expressly a particular level of ordinary skill. See generally PO Resp. At the oral hearing, Petitioner indicatedthat there did not seem to be any dispute as to the correct level of ordinary skill. Tr. 112:11–14 (“I don’t think there was any dispute about whether [Dr. Franzon’s proposed level of ordinary skill] was the correct level of skill, although Patent Owner can correct me.”). Having reviewed the prior art asserted in these proceedings (see, e.g., Exs. 1004–07, 1009, 2160), we determine that the level of ordinary skill proposed by Petitioner’s declarant is consistent with the challenged patent and the referenced prior art, and we adopt Petitioner’s proposed definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In the context of the Elm 3DS family, we find that the broadest reasonable interpretation of “substantially flexible” is the same as our construction under the Philips standard, which was the standard applied in IPR2016-00386. Under the broadest reasonable construction standard, we presume a claim term carries its ordinary and customary meaning, which “is the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). As discussed in detail in the Final Written Decisions in IPR2016-00386, IPR2016-00387, and IPR2016- 00388, the ordinary and customary meaning of “substantially flexible” is “largely able to bend without breaking.” Also as discussed extensively in” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“same as set forth in IPR2016-00708. Each of the challenged claims in this review require the use of a dielectric having a stress of less than 5 x 108 dynes/cm2 tensile. The evidentiary record in this case with regard to dielectric substitution adds nothing further to the evidentiary record established in IPR2016-00708. For the same reasons set forth in our Final Written Decision in IPR2016-00708, we determine that Petitioner has not met its burden to demonstrate by a preponderance of the evidence that a person of ordinary skill in the art would have made the proposed dielectric substitution.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As noted in our claim construction section, above and as referenced in our Final Written Decision in IPR2016-00386, a preponderance of the evidence establishes that, in the context of semiconductor substrates, mere thinning is not the same as flexibility—being able to bend without breaking. 20 Although Petitioner presents arguments attempting to demonstrate thinning, there are no arguments that this thinning necessarily results in flexibility. Thus, we determine that Petitioner has not met its burden to demonstrate that the required “substantial flexibility.” This reason alone sufficiently supports our conclusion. However, we also conclude, as set forth below that for a second, independent reason, Petitioner has not established that the challenged claims are unpatentable. Petitioner has not sufficiently established that one of ordinary skill would have substituted the dielectric material of Leedy ’695 for the various layers proposed for substitution in Hsu. Therefore we do not credit Leedy ’695 as providing any potential “substantial flexibility” to Hsu.” slip op. at 20
Patent outcomesUS 8,907,499 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,907,499 - Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.All claims unpatentablePTAB · Aug 10, 2017 · IPR2016-00530 · APJ Georgianna W Braden · IPR · Final written decision
The Board held claims 1–15, 18–20, 22–26, and 28–30 unpatentable as obvious over the five instituted combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the ’010 patent, the types of problems and solutions described in the ’010 patent and cited prior art, and the testimony of Drs. Kaufman and Kurfess, we adopt and apply Dr. Kaufman’s definition of a person of ordinary skill in the art at the time of the claimed invention. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on our review of the evidence, we determine that Swinton and Nobuaki teach these limitations because the cited portions of the references in the claim chart meet the respective limitations of claim 1, as Petitioner contends (Pet. 26–31). We also credit Dr. Kaufman’s declaration testimony regarding how Swinton and Nobuaki would have conveyed the limitations of claim 1 to one of ordinary skill in the art. Ex. 1003 ¶¶ 25–49. Dr. Kaufman’s detailed analysis is based on multiple citations to the references and, therefore, provides sufficient factual corroboration.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Rather, to support the legal conclusion of obviousness “there must be some articulated reasoning with some rational underpinning” for combining the teachings of two prior art references. KSR, 550 U.S. at 418. Specifically, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art teachings. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention . . . .”). Petitioner’s arguments must be supported by a “reasoned explanation.” NuVasive, 842 F.3d at 1383 (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). Here, Petitioner has shown that a person of skill in the art would have had reason to combine Nobuaki’s teachings regarding a specific mechanism for moving currency into different storage compartments with the ATM system in Swinton in order to solve the common problem of transporting currency bills or checks in different compartments. See Pet. 14–15; Ex. 1003 ¶ 53. We agree with Petitioner’s position that a person of ordinary skill in the art would have been motivated to replace the storage bins and sorting mechanism of Swinton’s ATM with the sorting/storage device of Nobuaki. See Pet. 13–14; Reply 2; Ex. 1003 ¶¶ 51–54. Specifically, we credit the testimony of Dr. Kaufman that a person of ordinary skill in the art would have recognized that a goal of Swinton’s ATM was to transport checks or bills into separate compartments and Nobuaki teaches a specific mechanism for achieving that goal. Ex. 1003 ¶ 53 (citing Ex. 1004 ¶¶ 140, 343; Ex. 1012, 12:31–36). Therefore, we determine that one of ordinary skill in the art would have had a reason to combine the teachings of Swinton and Nobuaki and would have been led to do so by the teachings of these references. Accordingly, we find that challenged independent claim 1 would have been obvious under 35 U.S.C. § 103 in view of the disclosures of Swinton and Nobuaki.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for “a movably mounted plunger member” and “[first/second] wall surfaces bounding the [first/second] storage location and in opposed facing direction of the [first/second] backing plate.” Pet. 7–8. Patent Owner does not contest Petitioner’s proposed constructions and does not offer its own constructions. See generally PO Resp. After analyzing the claims and supporting specification of the ’010 patent, we determine that we need not provide express constructions for the claim terms noted by Petitioner. To the extent it is necessary, however, we discuss certain other claims terms in the context of analyzing whether the prior art renders the challenged claims unpatentable.” slip op. at 8
Patent outcomesUS 7,229,010 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,229,010 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Elm 3ds Innovations, LLCNo claims unpatentablePTAB · Aug 8, 2017 · IPR2016-00708 · APJ Glenn J Perry · IPR · Final written decision
Claim 1 was not shown unpatentable because the evidence did not establish substantial flexibility or a reason and reasonable expectation of success for the proposed dielectric substitutions.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, with support of its declarant Paul D. Franzon, Ph.D., contends that one of ordinary skill in the art at the time of the inventions of the challenge patents “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Pet. 5 (citing Ex. 1002 ¶¶ 52–53). According to Dr. Franzon, his testimony as to the level of ordinary skill is based on considering “the type of problems encountered in the art, prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Ex. 1002 ¶ 59. Patent Owner did not propose expressly a particular level of ordinary skill. See, e.g., generally PO Resp. At the oral hearing, however, Petitioner indicated” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In the context of the Elm 3DS family, we find that the broadest reasonable interpretation of “substantially flexible” is the same as our construction under the Philips standard. Under the broadest reasonable construction standard, we presume a claim term carries its ordinary and customary meaning, which “is the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). As discussed in detail in the Final Written Decisions in IPR2016–00386, IPR2016-00387, and IPR2016–00388, the ordinary and customary meaning of “substantially flexible” is “largely able to bend without breaking.” Also as discussed extensively in those Final Written Decisions, the inventor did not give the term “substantially flexible” a particular meaning in the specification with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The claim at issue here uses the term “substantially flexible” as a modifier of “structure” in the preamble of the claim and as a modifier of “monocrystalline semiconductor layer” in the body of the claim. Thus, a 13 “substantially flexible” structure is a structure that is able to bend without breaking; and a “substantially flexible monocrystalline semiconductor layer” requires a monocrystalline semiconductor layer that is able to bend without breaking.” slip op. at 13
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Similarly, in view of the complex technology involved in integrated circuit fabrication and, particularly and the agreement of both experts that dielectrics have different properties and different methods of forming dielectrics in integrated circuit fabrication result in dielectrics having different properties (as discussed previously), we determine that Petitioner’s contentions and Dr. Franzon’s broad conclusions (Pet. 45–47; Ex. 1002 ¶¶ 111, 113–14) that one of ordinary skill in the art would have reasonable expectation of success to be insufficient to meet its burden, which requires a preponderance of evidence. For example, as discussed previously, we find Petitioner’s contention that Leedy ’695 thus discloses that its dielectrics can be easily used in place of other dielectrics to be insufficiently supported by the evidence of record. 27 Accordingly, having considered the Petition, Patent Owner’s Response, and Petitioner’s Reply, as well as the relevant evidence discussed in those papers, we determine that Petitioner has not met its burden to demonstrate by a preponderance of the evidence that a person of ordinary skill in the art would have reason to combine the asserted references to arrive at the claimed invention or that a person of ordinary skill would have had a reasonable expectation of success in making the combination proposed by Petitioner.” slip op. at 27
Patent outcomesUS 8,907,499 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,907,499 - L’Oréal USA, Inc. v. Liqwd, Inc.Institution deniedPTAB · Jul 19, 2017 · PGR2017-00011 · APJ Christopher M Kaiser · PGR · Institution
The Board denied institution of PGR on claims 1–10 because Petitioner did not show that any claim was more likely than not unpatentable under § 112.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may not be instituted “unless the Director determines . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“Moreover, “[a]pplicants can define . . . claim scope during prosecution,” just as they can in a patent specification. Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015). Here, during prosecution of the ’419 patent, the applicant stated that “[t]he term ‘hair coloring agent’ refers to a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair it is applied to based on visual inspection.” Ex. 1005, 7. To define specific terms used to describe an invention, the applicant need only set out the definition “with reasonable clarity, deliberateness, and precision,” “so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). On the present record, the definition of the term “hair coloring agent” set out in the prosecution history of the ’419 patent is sufficiently clear, deliberate, and precise to give a person of ordinary skill in the art notice that the term is used in the ’419 patent in a manner that does not include substances other than “colorant[s] or pigment[s] that [are] customarily used in hair care products,” even if those other substances might be described as “hair coloring agents” outside the context of the ’419 patent. Ex. 1005, 7. Accordingly, we should give effect to that definition. Because Patent Owner’s proposed construction of “wherein the mixture does not contain a hair coloring agent” gives effect to the prosecution history’s definition of “hair coloring agent,” we adopt Patent Owner’s proposed construction for purposes of the present decision. Thus, on the present record, and for purposes of the present decision, we construe “wherein the mixture does not contain a hair coloring agent” as “wherein the mixture applied to the hair does not have a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair it is applied to based on visual inspection.”” slip op. at 6
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not shown unpatentable
“to determine the scope of the claims. As discussed above, however, we interpret “wherein the mixture does not contain a hair coloring agent” as “wherein the mixture applied to the hair does not have a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair it is applied to based on visual inspection.” We have not been directed to evidence of record that a person of ordinary skill in the art would have considered a bleaching agent to be “a colorant or pigment.” Pet. 7 (describing bleaching as a “process[] that destroy[s] pigment to change hair color,” as opposed to a “process[] that deposit[s] dyes, pigments, or other substances onto the hair to change hair color”); Ex. 1006 ¶¶ 14–15 (contrasting “dyeing,” meaning “processes that alter or change hair color by depositing dyes, pigments, or other substances onto the hair,” with “bleaching,” meaning “the application of an oxidizing agent to hair to destroy the natural or artificial pigment”). Accordingly, on the present record, we are not persuaded that Petitioner has shown that it is more likely than not that claims 1–10 of the ’419 patent are indefinite.” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“wherein the mixture does not contain a hair coloring agent.” Pet. 36–39; Prelim. Resp. 39–40. If “a hair coloring agent” encompasses bleaching agents, then the claims all require a bleaching formulation and simultaneously exclude a bleaching agent, a scope that Petitioner argues is not described in the specification of the ’419 patent. As discussed above, however, we interpret “wherein the mixture does not contain a hair coloring agent” as “wherein the mixture applied to the hair does not have a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair it is applied to based on visual inspection.” We have not been directed to evidence of record that a person of ordinary skill in the art would have considered a bleaching agent to be “a colorant or pigment.” Pet. 7 (describing bleaching as a “process[] that destroy[s] pigment to change hair color,” as opposed to a “process[] that deposit[s] dyes, pigments, or other substances onto the hair to change hair color”); Ex. 1006 ¶¶ 14–15 (contrasting “dyeing,” meaning “processes that alter or change hair color by depositing dyes, pigments, or other substances onto the hair,” with “bleaching,” meaning “the application of an oxidizing agent to hair to destroy the natural or artificial pigment”). Accordingly, on the present record, we are not persuaded that Petitioner has shown it is more likely than not that claims 1–10 of the ’419 patent lack written description support. slip op. at 12
Claim construction§ 112 disclosurePatents in suitUS 9,498,419 - Global Tel*link Corporation v. Securus Technologies, Inc.Rehearing grantedPTAB · Jul 12, 2017 · IPR2015-01226 · APJ Kevin F Turner · IPR · Rehearing
The Board denied rehearing in all other respects, leaving in place the denial of the motion to amend proposed claims 29–50 as not shown patentable over the prior art.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“reviewer all audio of the call, including background audio,” and “enables reconstruction of the call, including background noise,” respectively. Patent Owner construes these limitations from the perspective of the prior art, taking into account “the significant technical differences between systems” (id. at 7), so that some of the background audio would not encompass all audio of the call. We construe those limitations from the perspective that they do not recite “all background noise,” and a system that records all audio above a certain threshold would record all background noise above that threshold, even if other background audio, at levels below the threshold, would not be captured. Such a system would 4 capture all of the audio, above a threshold, including background audio, and would be commensurate with the specified limitations of claims 29 and 43. More generally, and consistent with the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire patent disclosure at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We do not accept the intent of the patent drafter, unless it is clear that the drafter intends for a meaning of a terms or terms to be different from their ordinary meanings by defining the term in the specification with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the instant case, Patent Owner has indicated that no specific construction is required beyond applying the plain meaning of the terms when read in light of the patent specification. Reh’g Req. 8 (citing Paper 28, 15). Also in the instant case, Patent Owner may have intended to distinguish over systems that intentionally avoiding recording sounds, or are different than how typical prior art systems functioned, but we must examine the claim terms adopted, and construe them according to the broadest reasonable construction consistent with the specification. “All audio of the call” is consistent with all of the audio of a call captured, i.e., above a threshold level, even if portions of the audio below that threshold are not captured.” slip op. at 4
Claim constructionPatents in suitUS 8,135,115 - Generico, LLC / Flat Line Capital LLC et al. v. Dr. Falk Pharma GmbHAll claims unpatentablePTAB · May 19, 2017 · IPR2016-00297 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1 and 16 are unpatentable as obvious over the Sept. 2007 Press Release, Endonurse, and Davis-1985 in view of either Marakhouski or Brunner.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“is an express definition for the term “remission.” In the Specification, the term, “DAI score,” is expressly defined in the following passage: Ulcerative colitis disease activity was assessed using a modified Sutherland Disease Activity Index1 (DAI), which is a sum of four subscores based on stool frequency, rectal bleeding, mucosal appearance on endoscopy, and physician’s rating of disease activity. Each subscore can range from 0 to 3, for a total possible DAI score of 12. Ex. 1001, 17:7–12.4 When the express definitions for “remission” and “DAI score” are read together, the claim 1 phrase “remission is defined as a DAI” slip op. at 9
- Skill levelSkill level board ownOther
“The ’688 patent relates to a method for administering granulated mesalamine to treat ulcerative colitis. The claimed method is the result of pharmacokinetic studies and clinical studies conducted by the inventors. Ex. 2036 ¶¶ 7, 10–12, 19, 21 (inventor declaration describing pharmacokinetic and clinical studies); Exs. 2029, 2045, 2048–2050 (reports and protocol for pharmacokinetic and clinical studies). Most of the written description of the ’688 patent relates to these studies. Ex. 1001, 6:27–35, 6:43–7:25, 16:1–45, 17:1–35, 21:17–33:64, Figs. 1–3 (clinical studies); id. at 7:26–31, 14:5–15:67, 16:47–67, 17:38–21:15 (pharmacokinetic, in vitro, and animal studies). According to Dr. Johnson’s testimony, neither of the inventors is a medical doctor, and neither has experience treating patients. Ex. 1067, 16:23–17:8, 22:19–23:3. Co-inventor William Forbes has a doctorate in pharmacy (“Pharm.D.”) and was Vice President of Research and Development for Salix at the relevant time. Ex. 1012, 1; Ex. 1067, 24:14– 25:17. Co-inventor Lorin Johnson5 has a Ph.D. in molecular biology and” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for patent owner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 8,865,688 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,865,688 - Broadsign International, LLC v. T-Rex Property ABInstitution deniedPTAB · Apr 26, 2017 · CBM2017-00008 · APJ Barbara A Benoit · CBM · Institution
The Board denied institution because the challenged patent was not shown eligible for CBM review; claims 1, 11, 12, 49, 51-55, and 58-74 were disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We conclude that the information in the Petition does not demonstrate that the challenged patent is eligible for covered business method patent review. In addition, even after Patent Owner submitted, on February 7, 2017, its Preliminary Response and evidence of filing statutory disclaimer, Petitioner did not request an opportunity to present arguments that any other claims would meet the threshold financial requirement for a covered business method patent review. The remaining challenged claims 13, 42, 43, 48, 50, 56, and 57 on their face do not evince claiming a financial product or service, and the written description describes the invention as being broader than placement of commercial advertising. See, e.g., Ex. 1001, 2:50–53 (encompassing “direct placement of commercial advertisements, public service announcements and other content on electronic displays”). Accordingly, we determine that Petitioner has failed to meet its burden of showing that the challenged patent is eligible for covered business method patent review. Therefore, we do not institute a covered business method patent review for claims 13, 42, 43, 48, 50, 56, and 57 of the ’603 patent.” slip op. at 9
- Adverse judgmentAdverse judgmentOther
“that it filed with the Office a statutory disclaimer of claims 1–12, 17, 19, 20, 22, 28–33, 45–47, 49, 51–55, and 58–74 of the challenged patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2001, 4; see Prelim. Resp. 7. The disclaimer of a claim “shall . . . be considered as part of the original patent.” 35 U.S.C. § 253(a). The language “considered as part of the original patent” means that a patent subject to a disclaimer under § 253(a) “is treated as though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (citing Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). Thus, even though claims of the challenged patent existed at the time the Petition here was filed, we must now treat the challenged patent as if it had never included those claims. 1. Disclaimed Claims Challenged in the Petition Of the challenged claims, Patent Owner disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Ex. 2001, 4. A covered business method patent review cannot be instituted based on disclaimed claims. 37 C.F.R. § 42.207(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), disclaiming one or more claims in the patent. No post-grant review will be instituted based on disclaimed claims.”). Accordingly, no covered business method patent review will be instituted for disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Nevertheless, our analysis continues because not all of the claims challenged in the Petition have been disclaimed by Patent Owner.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes constructions for several terms that recite “means.” Pet. 33–35; see 37 C.F.R. § 42.104(b)(3) (A petition must set forth “[h]ow the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”). Patent Owner does not address directly Petitioner’s proposed constructions. See generally Prelim. Resp. 1–11. We conclude that no term needs to be construed expressly in order for us to determine whether a covered business method patent review should be instituted.” slip op. at 6
Claim constructionPatents in suitUS 6,430,603 - Steadymed Ltd. v. United Therapeutics CorporationAll claims unpatentablePTAB · Mar 31, 2017 · IPR2016-00006 · APJ Jacqueline T Harlow · IPR · Final written decision
Claims 1–22 are unpatentable under § 102(b) and § 103(a), based on the Board’s anticipation and obviousness grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“proposed construction (PO Resp. 17). Indeed, if any conclusion can be drawn from the specification excerpts highlighted by UTC, it is that the claim term “product” is defined solely by the recited claim limitations. See Ex. 1001, 5:45–46 (referring to the purportedly improved impurity of the “product of the process according to the present invention.”).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. Discussion Each of the challenged claims, including independent claims 1 and 9,” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“below, we are persuaded by SteadyMed’s showing that an ordinarily skilled artisan, at the time of invention of the ’393 patent, would have had reason to combine, and a reasonable expectation of success in combining, Moriarty and Phares. “[T]he skilled artisan need not be motivated to combine [the prior art] for the same reason contemplated by [the inventor].” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). In this regard, we note that in addition to teaching that intermediate purification is unnecessary to the production of treprostinil diethanolamine salt by the disclosed process (Ex. 1005, 40–42), Phares explicitly describes the Moriarty process in disclosing the production of (-)-treprostinil, the enantiomer of (+)-treprostinil (id. at 42). Ex. 1009 ¶¶ 50, 77–78. Accordingly, we are persuaded that an ordinarily skilled artisan would have modified the process of Moriarty to incorporate the step of adding and dissolving diethanolamine to treprostinil as taught by Phares (Ex. 1005, 24) to eliminate the requirement for intermediate purification, thus, improving synthetic efficiency and reducing cost.” slip op. at 47
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for patent owner
“minimize all impurities in all pharmaceuticals to the extent possible, such a general agency preference for improved purity is insufficient to establish a long-felt but unmet need for improved treprostinil, in particular. See Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993) (“[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem.”). Indeed, adherence to UTC’s position would dictate a conclusion of nonobvious for any pharmaceutical product exhibiting any improvement in purity over prior art versions of that same product.” slip op. at 61
Patent outcomesUS 8,497,393 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,497,393 - Green Cross Corporation v. Shire Human Genetic Therapies, Inc.No claims unpatentablePTAB · Mar 22, 2017 · IPR2016-00258 · APJ Robert A Pollock · IPR · Final written decision
The Board held claims 1–3, 16, and 17 not shown unpatentable under § 103 because Jin was not prior art.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“are unpatentable, which includes the burden of establishing that any reference upon which it relies constitutes prior art under 35 U.S.C. § 102. 35 U.S.C. § 316(e); see Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1996) (holding that the challenger “bore the burden of persuasion . . . on all issues relating to the status of [the asserted reference] as prior art”). However, because Petitioner offered Jin into evidence, which qualifies on its face as prior art under §102(e), Patent Owner bears the burden of producing evidence supporting a date of invention prior to the critical date of Jin. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–80 (Fed. Cir. 2015). As discussed below, Patent Owner elected to antedate, and thereby remove, Jin as prior art by showing that the inventor actually reduced the claimed invention to practice prior to Jin’s 102(e) priority date(s). As a result, the burden of production returned to Petitioner to demonstrate that the invention set forth in the challenged claims was not actually reduced to practice as of the date alleged. Id. at 1380. In order to establish an inventor’s actual reduction to practice, Patent Owner must show: (1) construction of an embodiment meeting all limitations of the challenged claims; (2) that the invention would work for its intended purpose, and (3) sufficient evidence to corroborate the inventor’s testimony. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006). “Sufficiency of corroboration is determined by using a ‘rule of reason’ analysis, under which all pertinent evidence is examined when determining the credibility of an inventor's testimony.” Id. at 1170 (citation omitted). “[I]t is not[, however,] necessary to produce an actual over-the-shoulder observer. Rather, sufficient circumstantial evidence of an independent nature can satisfy the corroboration requirement. Furthermore, an actual reduction to practice does not require corroboration for every factual issue contested by the parties.” Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998) (internal citations omitted). “[E]ach corroboration case must be decided on its own facts with a view to deciding whether the evidence as a whole is persuasive.” Id. at 1331 (citation omitted),” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“provided sufficient evidence to show that it reduced to practice an embodiment encompassing all elements of the challenged claims prior to the critical date of Jin, and Petitioner does not convince us otherwise. Accordingly, we find that Jin is not § 102(e) prior art, as Petitioner contends. Because Petitioner’s ground for challenging the ’556 Patent as obvious depends on Jin, we conclude that Petitioner has not proven by a preponderance of the evidence that the challenged claims are unpatentable. F.” slip op. at 24
- ExcludeMotion to exclude, deniedDenied
“Motions i. Patent Owners Motion to Exclude Evidence (Paper 74) Patent Owner moves to exclude Exhibits 1035, 1036, 1037, 1038, 1039, 1400, 1049, and 1051, each of which relates to Petitioner’s obviousness case. As discussed above, Petitioner has failed to satisfy the threshold issue of demonstrating that Jin, the primary reference relied upon in its obviousness ground, is prior art to the ’556 Patent. Accordingly, we do not address the substance of Petitioner’s obviousness arguments and, thus, do not rely on the challenged exhibits in our analysis. Accordingly, we deny Patent Owner’s Motion as moot. ii. Petitioner’s Motion to Exclude Evidence (Paper 75) Petitioner moves to exclude Exhibit 2207 (“Webb Exhibit 4”) which is purportedly an unredacted version of the TKT report (Exhibit 2115). See Paper 81, 1. As we have no need to rely on the challenged exhibit or associated testimony in our analysis, Petitioner’s motion is denied as moot.” slip op. at 24
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“iii. Petitioner’s Request for Expungement of Papers 71 and 72 In its Response to Patent Owner’s Motions for Observations Regarding Cross-Examination of Drs. Carbonell and Webb, Petitioner requests that we expunge, or accord no weight to, Patent Owner’s Motions for Observations because Patent Owner “made no effort to faithfully quote any testimony, and its ‘observations,’ which are often crammed with multiple citations, improperly narrate and mischaracterize the testimony cited, are rife with legal argument, and include references to unauthorized exhibits.” Paper 80, 1–3 (footnotes omitted); Paper 82, 1–3 (same). Although we are not convinced that Patent Owner “color[s] so far outside the lines” as Petitioner contends, we do not rely in our analysis on Patent Owner’s Motions for Observations. Accordingly, Petitioner’s request is denied as moot.” slip op. at 25
Patent outcomesUS 9,051,556 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,051,556 - The Gillette Company v. Shavelogic, Inc.Rehearing deniedPTAB · Mar 16, 2017 · IPR2016-00699 · APJ Richard H Marschall · IPR · Rehearing
The Board denied Gillette’s rehearing request and left intact the denial of institution on claims 1–6 because the petition did not show that Ohtsubo disclosed the construed limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for Rehearing could have been made, but were not, in the Petition. Despite relying almost exclusively on Figure 7E for its construction, which shows the longitudinal axis of inertia passing through the center of mass of the handle, the Petition never addresses the center of mass or explains why the limitation should not be construed to require an axis passing through the center of mass. Pet. 10. Petitioner addresses the issue for the first time in the Request for Rehearing. We cannot misapprehend or overlook arguments never made in the Petition.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“inertia,” a limitation found in claim 1, the only independent claim. In our Decision, we noted that Petitioner argued “longitudinal axis of inertia” did not have a defined meaning to one of ordinary skill in the art, and that Figure 7E of the ’282 patent discloses the longitudinal axis of inertia. Dec. 6. We agreed that Figure 7E discloses the limitation, and that the figure, for purposes of the Decision, was controlling on the meaning of the term given the absence of any textual description of the term in the specification and the parties’ reliance on Figure 7E. Id. at 8. We concluded that because Figure 7E discloses the longitudinal axis of inertia passing through the center of mass of the handle, and specifically labels the center of mass in the figure, that “at a minimum” the limitation “requires a longitudinal axis that passes through the center of mass of the handle.” Id. at 9. Based on that construction, we agreed with Shavelogic, Inc. (“Patent Owner”) that Petitioner failed to establish that the prior art discloses the limitation, and we denied institution. Id. at 11–13.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Our conclusion as to the claim construction did not purport to construe the entire phrase “longitudinal axis of inertia of the handle” and only concluded that, “at a minimum,” the phrase requires a longitudinal axis that passes through the center of mass of the handle. Dec. 9. We did not suggest that the center of mass alone defined the axis, or further define the scope of “longitudinal axis of inertia.” Our limited construction was sufficient to address the issues raised by the Petition because Petitioner did not adequately establish that the prior art disclosed the limitation, so construed. Ohtsubo” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 8,789,282
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.