• Gilead Sciences, Inc. v. Regents Of The University Of MinnesotaInstitution denied
  PTAB · May 28, 2020 · IPR2017-02005 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–9, 11, 12, and 28 were obvious over the ’787 patent and Brox.

  RulingsInstitution decision

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

    “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.” 35 U.S.C. § 314(a) (2012). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Parallel petitionsNot reached

    “ANALYSIS Discretionary Denial Patent Owner contends that we should exercise our discretion and deny institution because Petitioner filed four petitions to challenge the claims of the ’830 patent. Prelim. Resp. 11–12, 68. According to Patent Owner, “[f]our parallel petitions are inappropriate and have placed a substantial and unnecessary burden on the Board and Patent Owner.” Id. at 68. Petitioner points out that all four petitions were filed in 2017, before the Office started to disfavor multiple petitions against the same patent. Paper 33, 1. According to Petitioner, but for Patent Owner’s “efforts to stop these proceedings before they began” by asserting sovereign immunity, these proceedings would have concluded before the policy shift. Id. at 1–2. Under such circumstances, and because, as explained below, we deny institution based on substantive analysis of the Petition, we decline to consider whether institution should be denied on a discretionary basis.” slip op. at 7

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

    “Patent Owner discusses the terms “alkyl” and “aryl.” Prelim. Resp. 37–55. According to Patent Owner, “alkyl” means “a hydrocarbon group containing only single bonds.” Id. at 50. It points to Mcgraw-Hill Dictionary of Scientific and Technical Terms, which defines “alkyl” as “[a]n organic group that results from removal of a hydrogen atom from an acyclic, saturated hydrocarbon;” and “saturated hydrocarbon” as “[a] saturated carbon-hydrogen compound with all carbon bonds filled; that is, there are no double or triple bonds as in olefins and acetylenics.” Id. (quoting Ex. 2315, 64. 1754). Patent Owner argues that its construction is consistent with the disclosures of the ’830 patent. Id. at 50 (noting that in the ’830 patent, alkyl denotes “both straight and branched groups”) (quoting Ex. 1301, 5:15–16), Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018). 9 52 (observing that each named group of (C1-C6)alkyl in the ’830 patent is a hydrocarbon group containing only single bonds) (citing Ex. 1301, 6:37–39). Petitioner, although not offering any construction of the term, acknowledges that “alkyl” is “commonly understood” to include only saturated hydrocarbons. Pet. 21. On this record, we find Patent Owner’s argument persuasive and agree that “alkyl” is “a hydrocarbon group containing only single bonds.”” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For the R4 position, Petitioner argues that “aryl, aryl(C1-C6)alkyl” of the ’830 patent encompasses the “Ar” of the ’787 patent. Id., see also id. at 40 (“[B]oth the ’787 patent and the ’830 patent include an aryl substituent.”). We find that for the following two reasons, despite using the same term “aryl,” the R4 substituent options claimed in the ’830 patent does not encompass the “Ar” substituent selections of the ’787 patent. First, as discussed in the claim-construction section, the parties agree that “aryl,” as defined in the ’830 patent, excludes heteroaryl groups. Supra at 9; Pet. 21; Prelim. Resp. 42. “Aryl” in the ’787 patent, in contrast, “may be a heteroaromatic group containing one, two, three or four” heteroatoms. Ex. 1302, 4:65–5:3, see also id. at 3:56–58 (“Ar is a monocyclic aromatic ring moiety or a fused bicyclic aromatic ring moiety, either of which ring moieties is carbocyclic or heterocyclic and is optionally substituted.”). Second, when “aryl” is an ortho-fused bicyclic carbocyclic radical, the ’830 patent limits the system to “about nine to ten ring atoms.” Ex. 1301, 5:14–22. In contrast, in the ’787 patent, “an aryl group means an aromatic group containing 5 to 14 ring atoms.” Ex. 1302, 4:65–66. Because of at least these two differences, the “Ar” substituent selections of the ’787 patent are broader than the “aryl” substituent selections of the claims of the ’830 patent.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,815,830
• Live Power Intelligence Company Na, LLC v. Genscape Intangible Holding, Inc.No claims unpatentable
  PTAB · May 27, 2020 · IPR2019-00189 · APJ Wesley B Derrick · IPR · Final written decision

  Claims 1, 9, and 11 were not shown unpatentable under either § 103 ground because the petitioner did not establish that the combinations taught or suggested transmission to an end user.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Absent opposition from Patent Owner, we adopt Petitioner’s description of the level of ordinary skill in the art because it is consistent with the level of skill reflected in the Specification and the asserted prior art references. In that regard, and supporting our determination of the level of ordinary skill in the art, we determine that the prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9

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

    “The cited portions of the Specification are generally consistent with Petitioner’s position. See Phillips, 415 F.3d at 1315 (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term.’”). For example, the ’000 patent states that “[t]he central computing facility receives communications from all of the remote apparatuses monitoring a facility, facilities, line, or lines under measurement,” which is consistent with a “central computing site” or “central facility” being a single location. Ex. 1002, 3:35–36. The prosecution history includes limited discussion of the concept of a central station. Ex. 1010, 120–121, 134, 146, 163, 169–170. For example, the Examiner determines that a “ground station [disclosed in cited prior art] includes provisions for conversion of data to the form and parameters required by the central station” (id. at 120–121, 146, 163) and applicant contests the Examiner’s position (id. at 134, 169–170), but the limited discussion is not particularly directed to the meaning of “central station” as being a single location. For purposes of this Decision, we maintain our construction from the Institution Decision—construing the terms “central computing site” and “central facility” to mean a “single physical location distinct from monitors”—as this construction is consistent with the ordinary meaning of these terms, the portions of the written description of the ’000 patent cited by Petitioner, and the prosecution history of the ’000 patent.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “In sum, the deficiencies outlined above undercut Petitioner’s position that the combined prior art teaches or suggests the inventions of the challenged claims. The conclusory statements by Petitioner and Dr. Olsen as to the recited end user, as discussed above, fail to address how the relied upon element in Fernandes, i.e., the SCADA receiver, meets the recited limitation of transmitting to an “end user,” and are thus insufficient to satisfy Petitioner’s burden of proving obviousness.7 Magnum Oil Tools, 829 F.3d at 1380–81. Accordingly, we determine that Petitioner has not carried its burden to present sufficient evidence and support that the combination of Libove, Blatt, and Fernandes teaches or suggest limitations 1[G], 9[G], and 11[G].” slip op. at 23

  Patent outcomesUS 6,714,000 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,714,000
• SZ Dji Technology Co., Ltd. v. Autel Robotics USA LLCAll claims unpatentable
  PTAB · May 14, 2020 · PGR2019-00016 · APJ Erica A Franklin · PGR · Final written decision

  Claims 1–24 are unpatentable: claims 1–24 as obvious over Phantom 2 Manual and Kondo; claims 1–17 and 21–24 over Saika and Ichiba; claims 18–20 over Saika, Ichiba, and Phelps.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner and Patent Owner agree that the differences in their proposed definitions do not impact Petitioner’s grounds for unpatentability or Patent Owner’s responsive arguments. Pet. Reply 3; PO Sur-Reply 1. turn on which proposed definition is applied. In any event, having considered the evidence and the arguments, we find Petitioner’s rationale for its broader description of the level of ordinary skill in the art to be persuasive and supported by record as a whole. Accordingly, for this Decision, we adopt Petitioner’s description of a person of ordinary skill in the art, while maintaining that the 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

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

    “In the Patent Owner Response, Patent Owner asserts that “the term ‘fixed with’ needs no construction here because—whether the Board adopts Petitioner’s proposal or Patent Owner’s position—the . . . obviousness analysis will not ultimately be impacted.” PO Resp. 7. In the Reply, Petitioner agrees with Patent Owner that “the construction of ‘fixed with’ is not necessary to resolve the controversy in this proceeding.” Pet. Reply 2. Based upon our review of the record as a whole, we agree that no claim terms are in controversy with respect the asserted obviousness grounds. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). This finding is consistent with our analysis of the indefiniteness challenge, as discussed below in Section II.F.” slip op. at 13

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

    “invention. Based upon our review of the arguments and evidence, we find that it is. “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to at 658–59. Patent Owner argues that Kondo and the ’013 patent are not from the same field of endeavor because Kondo is concerned with batteries for hand-held power tools and the challenged patent is directed to batteries for UAVs. PO Sur-Reply 3–5. Petitioner asserts that the field of endeavor includes any area describing mechanisms for latching a battery in a portable consumer electronic device. Pet. Reply 5. We find that Petitioner’s description of the field of endeavor to be overly broad as the ’013 patent explicitly states that it “relates to [the] unmanned aerial vehicle field, more particularly, relates to a battery used for unmanned aerial vehicle and an unmanned aerial vehicle.” Ex. 1001, 1:18–20. Moreover, as Patent Owner correctly asserts, the only independent claim of ’013 patent recites “[a] multi-rotor unmanned aerial vehicle,” comprising components of such a UAV, including its battery compartment, battery, and battery latching mechanism. Id. at 5:42–64. In contrast, Kondo explicitly states that it “relates to a novel attachment structure which allows a battery pack including secondary cells to be detachably attached to a battery holder in a power-driven tool.” Ex. 1008, 1:6–9. Moreover, each of Kondo’s claims are directed toward such attachment structure for power-driven tools. Petitioner has not argued persuasively why we should consider either of the fields of endeavor for the challenged patent or Kondo to be more inclusive than what each patent explicitly describes its own field to be. Accordingly, we agree with Patent Owner that Petitioner has not shown that Kondo is in the same field of endeavor as the ’013 patent. However, our inquiry whether Kondo is analogous art does not end there. particular problem with which the inventors of the ’013 patent are involved, meaning it is “one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” Clay, 966 F.2d at 659. According to Petitioner, Kondo’s disclosure is reasonably pertinent because the problem it addresses, i.e., how to securely latch a battery package into a housing of an electronic device in a secure, user-friendly manner, is similarly addressed in the ’013 patent. Pet. 22–24; Pet. Reply 6–8. Patent Owner argues that Kondo is not reasonably pertinent based upon alleged differences between design considerations for UAV batteries compared to hand-held power tool batteries. PO Resp. 21–26, PO Sur-Reply 4–9. Patent Owner, however, does not adequately support those alleged differences with evidence or explain sufficiently why such differences would have caused the ’013 inventors to not take account of the battery latching mechanism used to detachably connect a battery in a different device, such as that taught by Kondo.” slip op. at 31

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

    “mechanism for its battery, although the Phantom 2 Manual does not provide details regarding such mechanism. Yet Patent Owner asserts that a skilled artisan would have “been far more likely to obtain, inspect, and experiment with the battery latching mechanism on an actual Phantom 2 rather than engaging in research to find alternatives.” PO Resp. 20. We discount that argument as Patent Owner’s position is unsupported by any legal authority and disregards patent law principles recognizing obviousness over a combination of prior art teachings. Next, Patent Owner asserts that the lack of detail in the Phantom 2 Manual regarding the battery latching mechanism used would “discourage, rather than encourage a POSA to modify the Phantom 2 battery,” with the Phantom 2 that would encourage or motivate a POSA to create a more secure latching mechanism.” Id. at 21. That argument, however, fails to consider that the motivation to combine may be found in a number of sources, including “the background, knowledge, creativity, and common sense of the person of ordinary skill,” as Petitioner asserts. Pet. Reply 9 (quoting ZUP, LLC, 896 F.3d at 1371). Based upon our review, Petitioner has set forth persuasive reasons why a person of ordinary skill in the art would have been motivated to review and combine a reference describing battery latching mechanisms for portable electronic devices, such as Kondo, with the Phantom 2 Manual. In particular, Petitioner asserts that such motivation is supplied by the lack of detail in the Phantom 2 Manual regarding the specific battery latching mechanism used. Pet. 22. We agree with Petitioner that a person of ordinary skill in the art would have been motivated to search and review references describing battery latching mechanisms for portable electronic devices to address that deficiency in the Phantom 2 Manual. See id. Further, Petitioner has demonstrated that a skilled artisan would have looked to Kondo because it is directed to and describes such a battery latching mechanism in detail. Id. at 22–23.” slip op. at 30

  Patent outcomesUS 10,044,013 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,044,013
• SZ Dji Technology Co., Ltd. v. Autel Robotics USA LLCAll claims unpatentable
  PTAB · May 14, 2020 · PGR2019-00014 · APJ Erica A Franklin · PGR · Final written decision

  Claims 1–12 are unpatentable as obvious over the stated combinations of prior art; Petitioner did not show claims 1–12 indefinite.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner and Patent Owner agree that the differences in their proposed definitions do not impact Petitioner’s grounds for unpatentability or Patent Owner’s responsive arguments. Pet. Reply 3; PO Sur-Reply 1. We agree and note that our consideration of the issues presented does not turn on which proposed definition is applied. In any event, having considered the evidence and the arguments, we find Petitioner’s rationale for its broader description of the level of ordinary skill in the art to be persuasive and supported by record as a whole. Accordingly, for this Decision, we adopt Petitioner’s description of a person of ordinary skill in skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

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

    “the single term for which Petitioner proposed a claim construction, i.e., “fixed with.” Dec. 8–9. In particular, we determined that, in view of Specification, the broadest reasonable construction of the claim phrase “fixed with the clamp button” is “fastened to, attached or placed and not readily moveable with respect to the clamp button, such that it does not merely abut against the clamp button nor is it detachably connected to it.” Id. at 9. In the Patent Owner Response, Patent Owner asserts that “the term ‘fixed with’ needs no construction here because—whether the Board adopts Petitioner’s proposal or Patent Owner’s position—the . . . obviousness analysis will not ultimately be impacted.” PO Resp. 9. In the Reply, Petitioner agrees with Patent Owner that “the construction of ‘fixed with’ is not necessary to resolve the controversy in this proceeding.” Pet. Reply 2. Based upon our review of the record as a whole, we agree that no claim terms are in controversy with respect to the asserted obviousness grounds. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). This finding is consistent with our analysis of the indefiniteness challenge, as discussed below in Section II.F.” slip op. at 13

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

    “(1) Motivation to Combine The parties agree that the Phantom 2 includes some type of latching mechanism for its battery, although the Phantom 2 Manual does not provide details regarding such mechanism. Yet Patent Owner asserts that a skilled artisan would have “been far more likely to obtain, inspect, and experiment with the battery latching mechanism on an actual Phantom 2 rather than engaging in research to find alternatives.” PO Resp. 22. We discount that argument as Patent Owner’s position is unsupported by any legal authority and disregards patent law principles recognizing obviousness over a combination of prior art teachings. Next, Patent Owner asserts that the lack of detail in the Phantom 2 Manual regarding the battery latching mechanism used would “discourage, rather than encourage a POSA to modify the Phantom 2 battery,” particularly because Petitioner has not identified “any problem associated with the Phantom 2 that would encourage or motivate a POSA to create a more secure latching mechanism.” Id. at 23. That argument, however, fails to consider that the motivation to combine may be found in a number of sense of the person of ordinary skill,” as Petitioner asserts. Pet. Reply 9 (quoting ZUP, LLC, 896 F.3d at 1371). Based upon our review, Petitioner has set forth persuasive reasons why a person of ordinary skill in the art would have been motivated to review and combine a reference describing battery latching mechanisms for portable electronic devices, such as Kondo, with the Phantom 2 Manual. In particular, Petitioner asserts that such motivation is supplied by the lack of detail in the Phantom 2 Manual regarding the specific battery latching mechanism used. Pet. 23. We agree with Petitioner that a person of ordinary skill in the art would have been motivated to search and review references describing battery latching mechanisms for portable electronic devices to address that deficiency in the Phantom 2 Manual. See id. Further, Petitioner has demonstrated that a skilled artisan would have looked to Kondo because it is directed to and describes such a battery latching mechanism in detail. Id. at 23–24.” slip op. at 32

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

    “The parties dispute whether Kondo is analogous art to the claimed invention. Based upon our review of the arguments and evidence, we find that it is. “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Clay, 966 F.2d at 658–59. Patent Owner argues that Kondo and the ’000 patent are not from the same field of endeavor because Kondo is concerned with batteries for handheld power tools and the challenged patent is directed to batteries for UAVs. area describing mechanisms for latching a battery in a portable consumer electronic device. Pet. 24; Pet. Reply 6. We find Petitioner’s description of the field of endeavor to be overly broad as the ’000 patent explicitly states that it “relates to [the] unmanned aerial vehicle field, more particularly, relates to a battery used for unmanned aerial vehicle and an unmanned aerial vehicle.” Ex. 1001, 1:18–20. Moreover, as Patent Owner correctly asserts, the only independent claim of ’000 patent recites “[a] multi-rotor unmanned aerial vehicle,” comprising components of such a UAV, including its battery compartment, battery, and battery latching mechanism. Id. at 5:34–6:16. In contrast, Kondo explicitly states that it “relates to a novel attachment structure which allows a battery pack including secondary cells to be detachably attached to a battery holder in a power-driven tool.” Ex. 1008, 1:6–9. Moreover, each of Kondo’s claims are directed toward such attachment structure for power-driven tools. Petitioner has not argued persuasively why we should consider either of the fields of endeavor for the challenged patent or Kondo to be more inclusive than what each patent explicitly describes its own field to be. Accordingly, we agree with Patent Owner that Petitioner has not shown that Kondo is in the same field of endeavor as the ’000 patent. However, our inquiry whether Kondo is analogous art does not end there. Next, we consider whether Kondo is reasonably pertinent to the” slip op. at 33

  Patent outcomesUS 9,979,000 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 9,979,000
• SZ Dji Technology Co., Ltd. v. Autel Robotics USA LLCAll claims unpatentable
  PTAB · May 13, 2020 · IPR2019-00250 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 9–17 are unpatentable as obvious: claims 9–11 over Andersson and Urmson, claims 12–13 over Andersson, Urmson, and Fregene, and claims 14–17 over Urmson, Augenbraun, and Fregene.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “one of ordinary skill in the art at the time of invention “would have had at least an undergraduate degree in robotics or computer engineering, or equivalent knowledge, training, or experience, with at least two years of experience working with the design and development of autonomous devices or speed control systems for autonomous speed adjustment.” Pet. 16; Ex. 1003 ¶¶ 19–20 (same).” slip op. at 7

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

    “In their briefing, the parties dispute the meaning of two claim phrases—(1) speed commands and (2) speed command category. See Pet. 16–19; PO Resp. 7–12. Patent Owner additionally identifies “minimum safe speed” and “constraints” as terms for construction. PO Resp. 12–15. Petitioner proposes that “speed command category” means “information output by the speed planner that ‘indicates why the desired speed was selected’” and that “speed commands” means “commands or signals to adjust the vehicle’s speed.” Pet. 16–17, 19. Patent Owner proposes the following constructions: “speed commands” to mean “commands relating to the speed of the autonomous vehicle”; “speed command category” to mean “information reflecting the reason for the desired speed”; “minimum safe speed” to mean “desired speed for the vehicle when obstacles are present”; and “constraint(s)” to mean “a limit that generally cannot be violated.”” slip op. at 9

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

    “In weighing the evidence before us, we disagree with Patent Owner’s arguments. Based on our review of the arguments and evidence of record, we determine that the term “autonomous vehicle” may include varying levels of autonomy, and that although it may include both speed and steering control, it does not require the presence of both as Patent Owner urges (PO Resp. 25). This understanding is consistent with the Specification of the ’174 patent, which refers to autonomous vehicles embodied in the ’174 patent exclusively in the context of speed control. See Ex. 1001, 2:1–10, 2:40–4, 3:29–50, 3:58–4:2, 4:3–5, 4:29–33, 5:1–11, 5:51–55, 6:4–7, 6:15– 20, 8:23–27, 8:65–9:7, 9:18–22, Figs. 1, 4. For example, the ’174 patent explains that [c]onventional path planning algorithms, however, do not inherently indicate the speed at which the vehicle should traverse the path. By automatically providing appropriate speed targets that are safe, feasible and achievable by the autonomous vehicle during path traversal, embodiments of the present invention enable an autonomous vehicle to complete tasks safely and quickly. Id. at 2:43–49 (emphasis added). According to Patent Owner, the statement in the ’174 patent that an autonomous vehicles is “capable of navigating and maneuvering without human control,” “needs to determine the characteristics of its environment required to enable it to carry out the task it has been assigned,” and “needs to plan and follow a path to its destination while detecting and avoiding obstacles,” supports its contention that autonomous vehicles require both speed and steering control. Id. at 1:53–61; PO Resp. 25; Sur-reply 4; Ex. 2001 ¶¶ 77–78. However, this lone statement, describing the goals of the Defense Advanced Research Projects Agency (“DARPA”) Grand Challenge—not the embodiments of the ’174 patent—is insufficient to convey to the skilled artisan that the term autonomous vehicle in the context of the ’174 patent requires only full autonomy (i.e., a system comprising both speed and steering control). Because we find that the claimed autonomous vehicle does not require full autonomy, we determine that Andersson’s teaching of an adaptive cruise control system based on both sensor input and database information is sufficient to teach an autonomous vehicle.13 Therefore, having considered the record evidence and arguments advanced, we determine that Petitioner has demonstrated by a 13 As we observed in our Decision on Institution (Dec. 12 n.4), Petitioner argues that Urmson, in addition to Andersson, describes an “autonomous vehicle.” Pet. 20, n.7 (citing Ex. 1008, 468–469); Ex. 1003 ¶ 78, n.4 (same). Patent Owner does not address Petitioner’s assertion. See generally PO Resp. Rather, Patent Owner, as well as Dr. Reinholtz, describes Urmson as an autonomous vehicle. Pet. 19; Ex. 2001 ¶¶ 65–68. preponderance of the evidence that an “autonomous vehicle” is taught or suggested by Andersson.” slip op. at 19

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “preponderance of the evidence that each limitation of claim 9 is taught or suggested by the combination of Andersson and Urmson and further that the skilled artisan would have had reason to make the suggested combination with a reasonable expectation of success. 5. Analysis of Claims 10 and 11 With respect to dependent claims 10 and 11, Petitioner identifies where the combination of Andersson and Urmson suggests each limitation of these claims. Pet. 37–41. Petitioner demonstrates that Urmson describes a geometric planner that calculates a planned path and the speed planner determines the maximum safe speed for points on the planned path, as required by claims 10 and 11. Id. at 37–40 (citing Ex. 1008, 479, 488, 490– 91; Figs. 14, 25; Ex. 1003 ¶¶ 132–136, 172–174; Ex. 1004, 6:27–31). With respect to claim 11, Petitioner also demonstrates that “Andersson discloses that ‘it may be possible to connect a system as stated above with a route planner’ and ‘[b]y knowing the intended route, a speed plan for the entire route may be calculated in advance, thereby estimating mean speed, travel time, fuel consumption and so on.’” Id. at 40–41 (quoting Ex. 1004 at 6:27– 31). Further, Petitioner explains that Urmson also discloses that its speed algorithms “process[] the entire path once setting speeds well beyond the sensing horizon of the vehicle.” Pet. 41, n.12 (quoting Ex. 1008, 491). Thus, according to Petitioner, Andersson and Urmson disclose the additional limitations of claim 11. Patent Owner does not substantively address Petitioner’s arguments with respect to claims 10 and 11 in its Patent Owner Response. See generally PO Resp. Instead, Patent Owner argues that “[c]laims 10 and 11 and [sic] are patentable for the same reasons set forth above with regard to claim 9.” Id. at 33. Upon review of the arguments and evidence of record, we determine that Petitioner has demonstrated by a preponderance of the evidence that each of the limitations recited in claims 10 and 11 are present in or suggested by the combination of Andersson and Urmson and the skilled artisan would have had reason to make the combination with a reasonable expectation of success. See NuVasive, 841 F.3d at 974.” slip op. at 31

  Patent outcomesUS 7,979,174 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,979,174
• SZ Dji Technology Co., Ltd. v. Autel Robotics USA LLCAll claims unpatentable
  PTAB · May 13, 2020 · IPR2019-00249 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious: claims 1, 2, and 4–7 over Andersson and Urmson; claim 3 with Augenbraun, claim 6 with Mandow, and claim 8 with Fregene.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “one of ordinary skill in the art at the time of invention “would have had at least an undergraduate degree in robotics or computer engineering, or equivalent knowledge, training, or experience, with at least two years of experience working with the design and development of autonomous devices or speed control systems for autonomous speed adjustment.” Pet. 17; Ex. 1003 ¶¶ 19–20 (same). Although Patent Owner acknowledges that claims are interpreted from the perspective of one having ordinary skill in the art (PO Resp. 7), Patent Owner does not argue for any particular level of ordinary skill in the art in the Patent Owner Response. See generally PO Resp. Dr. Reinholtz, however, testifies that “a person of ordinary skill in the art (‘POSA’) at the time of the invention of the ’174 patent would have a Bachelor’s degree in engineering or computer science and would have had at least two years of experience developing control systems for electromechanical systems, including autonomous vehicles,” and that “[a]dditional education could substitute for professional experience and significant work experience could substitute for formal education.” Ex. 2001 ¶ 27. Upon review of the arguments set forth by Drs. Ducharme and Reinholtz, we adopt Dr. Reinholtz’s description of one of ordinary skill in the art, as it is consistent with the prior art of record and persuasively considers how the necessary level and type of education may be offset by work experience in the relevant field. We observe that neither party contends that the difference in education and experience level offered by Drs. Ducharme and Reinholtz would have any impact on the parties’ arguments or conclusions in this case. We agree with the parties and note that our conclusions in this Decision do not depend on which proposed definition is applied.” slip op. at 7

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

    “We discern little difference between the parties’ respective constructions. Further, during the hearing, both parties expressed a general view that claim construction was unlikely to affect the parties’ positions.9 Tr. 8:11–13, 9:13–15, 14:11–12, 15:2–4, 28:18–19, 43:3–12, 45:20–22; see also Reply 2 (asserting that “the challenged claims are unpatentable even under Patent Owner’s constructions”). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the 9 The parties disagree as to what is required for the prior art to teach an “autonomous vehicle,” but notably, neither party requested construction of that term in their respective briefs. See generally Pet.; PO Resp. We address the interpretation of the term “autonomous vehicle” below to the extent necessary to resolve the dispute raised by the parties’ substantive arguments. controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). We determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “teaches away.16 To teach away, a reference must discourage one of ordinary skill in the art from following the path set out in the reference, or lead that person in a direction divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[A] reference will teach away if 16 As an initial matter, Patent Owner’s “teaching away” argument simply repeats the arguments presented (and rejected) above in Sections II.D.2.b. and c., i.e., Patent Owner’s position that the prior art does not teach a “speed planner” or a “speed command category,” as claimed. it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.”). “A reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). “Silence does not imply teaching away.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 964 (Fed. Cir. 2014). Therefore, the fact that Andersson exemplifies a neural network—in a preferred embodiment (Ex. 1004, 4:47– 60, 6:7–9)—does not teach away from pursuing the path taken in the ’174 patent. Similarly, Patent Owner’s additional position that because the speed planner of Andersson does not calculate speeds or output speed command categories based on sensor input, it teaches away from modifying Andersson’s system, is unsound. Silence, without more, is not a teaching away. Allergan, 754 F.3d at 964.” slip op. at 26

  Patent outcomesUS 7,979,174 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,979,174
• Gilead Sciences, Inc. v. Regents Of The University Of MinnesotaInstitution denied
  PTAB · Apr 22, 2020 · IPR2017-01753 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–9, 11–21, 23, 24, and 26–28 were obvious over the ’985 patent, Maruyama, and Sato.

  RulingsInstitution decision

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

    “We have authority under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a) (2012). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • Parallel petitionsNot reached

    “ANALYSIS Discretionary Denial Patent Owner contends that we should exercise our discretion and deny institution because Petitioner filed four petitions to challenge the claims of the ’830 patent. Prelim. Resp. 9. According to Patent Owner, “[f]our parallel petitions are inappropriate and have placed a substantial and unnecessary burden on the Board and Patent Owner.” Id. Petitioner points out that all four petitions were filed in 2017, before the Office started to disfavor multiple petitions against the same patent. Paper 39, 1. According to Petitioner, but for Patent Owner’s “efforts to stop these proceedings before they began” by asserting sovereign immunity, these proceedings would have concluded before the policy shift. Id. at 1–2. Under such circumstances, and because, as explained below, we deny institution based on substantive analysis of the Petition, we decline to consider whether institution should be denied on a discretionary basis.” slip op. at 7

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

    “Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, and absent any special definitions, we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any term expressly.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundNot shown unpatentable

    “First, Petitioner relies on compounds 5 and 6 of the ’985 patent as the lead compounds for further modification. In each of those two compounds, the potential variables identified in formula VII are predetermined. Petitioner does not explain sufficiently why an ordinarily skilled artisan would have maintained the predetermined R16, R18, R19, R20, and W, and only modified R17. Second, the ’985 patent teaches that R17 of formula VII, which corresponds to R2 in challenged claim 1, could be “hydrogen, halo, hydroxy, (C1-C6)alkyl, (C3-C6)cycloalkyl, (C1-C6)alkoxy, (C3-C6)cycloalkyloxy, (C1-C6)alkanoyl, (C1-C6)alkanoyloxy, trifluoromethyl, azido, cyano, –N(Rz)C(=O)N(Raa)(Rab), –N(Rz)C(=O)ORac, or NRadRae.” Ex. 1102, 5:24– 29, 45:24–30. It further teaches that Rz is hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, or phenethyl; 14 Raa and Rab are each independently hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, or phenethyl; or Raa and Rab together with the nitrogen to which they are attached are pyrrolidino, piperdino or morpholino; and Rac is hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, or phenethyl; and Rad and Rae are each independently hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, pheneyl, or (C1-C6)alkanoyl; or Rad and Rae together with the nitrogen to which they are attached are pyrrolidino, piperidino or morpholino. Id. at 5:46–60, 45:49–64. Thus, the “several options” at the 2' position, according to Petitioner’s characterization (Pet. 39), in fact include thousands of possibilities. As Patent Owner correctly points out, “the ’985 Patent discloses many different substituents for the 2’ position and expresses no preference for the particular substituent (fluorine) [Petitioner] picked.” Prelim. Resp. 40.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,815,830
• Rimfrost As. v. Aker Biomarine Antarctic As.All claims unpatentable
  PTAB · Mar 6, 2020 · IPR2018-01730 · APJ John E Schneider · IPR · Final written decision

  Claims 1–20 are unpatentable across the stated anticipation and obviousness grounds; the contingent motion to amend with substitute claims 21–29 is denied because those claims are obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At institution, we preliminarily adopted Petitioner’s definition of an ordinarily skilled artisan, and determined that the prior art itself was sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. Inst. Dec. 8. We note that Patent Owner states that it “accepts [Petitioner’s] definition of a POSITA.” PO Resp. 15. Accordingly, for this Decision, we adopt Petitioner’s definition, while maintaining that the prior art demonstrates the appropriate level of ordinary skill in the art. 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). Moreover, we have reviewed the credentials of Drs. Tallon and Hoem, and consider each of them to be qualified to provide their opinion on the level of skill and the knowledge of a person of ordinary skill in the art at the time of the invention.” slip op. at 10

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

    “Such broadening usages as ‘about’ must be given reasonable scope; they must be viewed by the decision maker as they would be understood by persons experienced in the field of the invention. Although it is rarely feasible to attach a precise limit to ‘about,’ the usage can usually be understood in light of the technology embodied in the invention.” Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1554 (Fed. Cir. 1996). After considering the parties’ arguments and reviewing the Specification of the ’765 patent, we conclude that Petitioner’s proposed construction is consistent with the intrinsic evidence. Although the ’765 patent does not explicitly address the issue of “about,” the meaning of the term can be discerned from a careful reading of the Specification. Example 8 of the ’765 patent reports the analysis of phospholipid available Krill product. Ex. 1001, col. 31, l, 46–col. 32, l. 42. Table 22, reproduced above, reports the calculated values for the various phospholipids in values to a tenth of a percent. Id. at col. 32, ll. 18–38. In the discussion of the table, the values are rounded to the nearest whole number, not the nearest tenth. Id. at col. 32, ll. 11–15. This is consistent with the approach advanced by Petitioner. IPR2018-00295, Paper 35, 12.3 Similarly here, we find that although the Specification does not explicitly define the term “about,” its meaning may be discerned from the manner by which the Specification refers to reported values for phospholipid profiles of krill oil. Ex. 1001, 32:18–44 (Table 22). In the discussion of the lipids reported in Table 22, the values are rounded to the nearest whole number, not the nearest tenth. Id. at 32:47–52. This is more consistent with the approach advanced by Petitioner than by Patent Owner. Thus, as determined in that Final Written Decision, and for the reasons set forth therein, “the term ‘greater than about 5% w/w’ shall be construed to mean ‘greater than 4.5% w/w.’” IPR2018-00295, Paper 35, 13.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We have considered the arguments of the parties and the evidence of record and conclude that claims 5 and 6 are not anticipated by Catchpole. While we agree with Petitioner that Catchpole teaches compositions that can Catchpole discloses a krill oil composition having that amount of acylalkyphospholipids. Catchpole teaches a method of separating lipid materials from a feed material. Ex. 1009, 4. The feed material used in Catchpole may be derived from “terrestrial animals, marine animals, terrestrial plants, marine plants, or micro-organisms such as microalgae, yeast and bacteria. Preferably the feed material is derived from sheep, goat, pig, mouse, water buffalo, camel, yak, horse, donkey, llama, bovine or human.” Id. at 7. Catchpole does not specifically disclose a Krill extract that contains greater than 10% acylalkyphospholipids. The only specific disclosure of the acylalkyphospholipid content of krill oil is in Table 16 discussed above, which discloses an acylalkyphospholipid content of 4.8%, less than the 6% and 7% recited in claims 5 and 6. Based on the foregoing we conclude that claims 5 and 6 are not anticipated by Catchpole. E. Ground 2 - Obviousness Based on Catchpole Combined with Sampalis” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (citing Pharmacia & Upjohn Co. v. Mylan Pharm., Inc., 170 F.3d 1373, 1379 (Fed Cir. 1999)). “It is well established that collateral estoppel, also known as issue preclusion, applies in the administrative context.” MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018) (citations omitted); Webpower, Inc. v. WAG (Final Written Decision). The application of collateral estoppel is not limited to patent claims that are identical. Ohio Willow Wood, 735 F.3d at 1342. “Rather, it is the identity of the issues that were litigated that determines whether collateral estoppel should apply. . . . If the differences between the unadjudicated patent claims and the adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies.” Id. As our reviewing court has explained, collateral estoppel precludes a party from relitigating an issue if: (1) prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v. Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (quoting Stephen Slesinger, Inc. v. Disney Enters., Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 21

  Patent outcomesUS 9,072,752 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,072,752
• Rimfrost As v. Aker Biomarine Antarctic AsAll claims unpatentable
  PTAB · Jan 13, 2020 · IPR2018-01179 · APJ Erica A Franklin · IPR · Final written decision

  Claims 33–61 are unpatentable as obvious across four grounds; the Board denied Patent Owner’s contingent motion to amend claims 75–84 as those substitute claims were also obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At institution, we preliminarily adopted Petitioner’s definition of an ordinarily skilled artisan, and determined that the prior art itself was sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. Inst. Dec. 9. We note that Patent Owner states that it “accepts [Petitioner’s] definition of a POSITA.” PO Resp. 16. Accordingly, for this Decision, we adopt Petitioner’s definition, while maintaining that the prior art demonstrates the appropriate level of ordinary skill in the art. 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). Moreover, we have reviewed the credentials of Drs. Tallon and Hoem, and consider each of them to be qualified to provide their opinion on the level of skill and the knowledge of a person of ordinary skill in the art at the time of the invention.” slip op. at 11

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

    “As noted by Petitioner, the Board construed the phrase “greater than about 5% w/w” as meaning “greater than 4.5% w/w” in a Final Written Decision addressing similar claims of a related patent. Pet. Reply 12. Specifically, in IPR2018-00295, the Board’s analysis of the claim phrase “greater than about 5% w/w” of krill oil in the Final Written Decision reads as follows: Such broadening usages as ‘about’ must be given reasonable scope; they must be viewed by the decision maker as they would be understood by persons experienced in the field of the invention. Although it is rarely feasible to attach a precise limit to ‘about,’ the usage can usually be understood in light of the technology embodied in the invention.” Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1554 (Fed. Cir. 1996). After considering the parties’ arguments and reviewing the Specification of the ’765 patent, we conclude that Petitioner’s proposed construction is consistent with the intrinsic evidence. Although the ’765 patent does not explicitly address the issue of “about,” the meaning of the term can be discerned from a careful reading of the Specification. Example 8 of the ’765 patent reports the analysis of phospholipid fractions of a product of the invention and a commercially available Krill product. Ex. 1001, col. 31, l, 46–col. 32, l. 42. Table 22, reproduced above, reports the calculated values for the various phospholipids in values to a tenth of a percent. Id. at col. 32, ll. 18–38. In the discussion of the table, the values are rounded to the nearest whole number, not the nearest tenth. Id. at col. 32, ll. 11–15. This is consistent with the approach advanced by Petitioner. IPR2018-00295, Paper 35, 12.10 Similarly here, we find that although the Specification does not explicitly define the term “about,” its meaning may be discerned from the manner by which the Specification refers to reported values for phospholipid profiles of krill oil. Ex. 1001, 32:55–67 (Table 22). In the discussion of the lipids reported in Table 22, the values are rounded to the nearest whole number, not the nearest tenth. Id. at col. 32:47–52. This is more consistent with the approach advanced by Petitioner than by Patent Owner. Thus, as determined in that Final Written Decision, and for the reasons set forth therein, “the term ‘greater than about 5% w/w’ shall be construed to mean ‘greater than 4.5% w/w.’” IPR2018-00295, Paper 35, 13. Similarly, we construe the recitation in claim 33 requiring “greater than about 3% ether phospholipids” as meaning “greater than 2.5% ether phospholipids,” and we construe the recitation in claim 46 of “greater than 4% ether phospholipids” as meaning “greater than 3.5% phospholipids.” Although Petitioner and Patent Owner propose additional claim constructions, we determine that explicit construction of those additional claim terms is not necessary for purposes of this Decision.” slip op. at 14

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

    “Based upon our review of the arguments, however, it does not appear that those differences between the claims analyzed in IPR2018-00295 and the challenged claims are material to the issue presented by Patent Owner regarding whether a person of ordinary skill in the art would combine ranges for specific lipid components in an extract from references that use different extraction techniques. Indeed, a side-by-side comparison of the argument set forth in Patent Owner’s Response filed in IPR2018-00295 and the Patent Owner’s Response filed here reveals that the same, virtually verbatim, arguments were made in both cases, absent changes in, e.g., citations and referring to Bottino II instead of Frick 1984 as disclosing a “non-selective” Folch extraction of krill. Compare IPR2018-00295, Paper 14, 14–22, with IPR2018-01179, Paper 12, 24–31. In the Final Written Decision, Patent Owner’s arguments, repeated here, were rejected. IPR2018-00295, Paper 35, 34–39. In any event, we do not apply collateral estoppel to this issue, as the parties have not fully briefed their positions in this proceeding. However, we determine that the analysis in the Final Written Decision for IPR2018-00295 regarding whether a skilled artisan would have been motivated to combine ranges for specific lipid components in an extract from references using different, i.e., “selective and non-selective” extraction techniques is applicable here. In particular, for the same reasons discussed in the IPR2018-00295 Final Written Decision, we accord persuasive weight to Dr. Tallon’s testimony that a POSITA would have known that the relative proportions of natural krill and hence the natural krill oil constituents could be varied in predictable ways by applying a single solvent or combination of solvents including super critical fluid extraction to selectively extract specific groups of lipid components based on their different solubility, and by blending these selective extracts in known and predictable ways to produce a desired krill oil composition. Ex. 1006 ¶¶ 104, 106, 110; see IPR2018-00295, Paper 35, 37–39. We note that Dr. Tallon provided similar testimony in IPR2017-00746, Ex. 1006 ¶ 212, which the Board also credited in determining that the claims of the ’877 patent, directed to a method of producing krill oil comprising extracting oil from denatured krill product with a polar solvent, IPR2017- 00746, Paper 23, 47–48, are unpatentable. Indeed, the Federal Circuit affirmed that Final Written Decision and the Board’s finding that “the lipid components of krill oil can be extracted using any number of suitable solvents, that the proportions of the components could be varied in predictable ways, and that the resulting extracts could be blended to produce a final krill oil product.” Aker Biomarine Antarctic, 786 F. App’x at 254. Moreover, as discussed in the IPR2018-00295 Final Written Decision, the ’765 patent, which shares the same Specification as the challenged patent, describes the compositions of the invention as being prepared by “blending the neutral and polar lipid extracts.” IPR2018-00295, Paper 35, 39, Ex. 1001, 12:34–35. As explained there, “[t]he Specification provides no further guidance regarding the blending step but instead relies on the” slip op. at 35

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Having considered the amended limitations of the substitute claims, and incorporating our analysis and conclusions regarding for the reiterated arguments regarding a motivation to combine and reasonable expectation of success from our discussion of the original claims, we conclude that the preponderance of the evidence demonstrates that substitute claims 75–82 are unpatentable as obvious over the combination of Yoshitomi, Catchpole, Bottino II, Sampalis I, Randolph, Sampalis II, and NKO; substitute claim 83 is unpatentable as obvious over the combination of Yoshitomi, Catchpole, Bottino II, Sampalis I, Fricke, Randolph, Sampalis II, and NKO; and substitute claim 84 is unpatentable as obvious over Yoshitomi, Catchpole, Bottino II, Sampalis I, Sampalis II, Randolph, and NKO. Accordingly, Patent Owner’s contingent Motion to Amend is denied. of this issue here is consistent with what was decided in that Final Written Decision. CONCLUSION For the foregoing reasons, we conclude that Petitioner has established by a preponderance of the evidence that claims 33–38, 40–43, 46–49, 51–52, 55–58, and 60 are unpatentable as obvious over Breivik II, Catchpole, Bottino II, and Sampalis I; claim 39 is unpatentable as obvious over Breivik II, Catchpole, Bottino II, Sampalis I, and Sampalis II; claims 44, 50, 53, and 59 are unpatentable as obvious over Breivik II, Catchpole, Bottino II, Sampalis I, and Fricke; and claims 45, 54, and 61 are unpatentable as obvious over Breivik II, Catchpole, Bottino II, Sampalis I, and Randolph. Additionally, we deny Patent Owner’s contingent Motion to Amend. V. ORDER Accordingly, it is hereby: ORDERED that based on a preponderance of the evidence, claims 33–61 of the ’453 patent are unpatentable; FURTHER ORDERED, Patent Owner’s Motion to Amend is denied;” slip op. at 51

  Patent outcomesUS 9,375,453 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,375,453
• Rimfrost As v. Aker Biomarine Antarctic AsAll claims unpatentable
  PTAB · Jan 13, 2020 · IPR2018-01178 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1–32 are unpatentable as obvious over the stated reference combinations; the contingent motion to amend substitute claims 62–74 is denied because those claims are unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At institution, we preliminarily adopted Petitioner’s definition of an ordinarily skilled artisan, and determined that the prior art itself was sufficient to demonstrate the level of ordinary skill in the art at the time of the invention. Inst. Dec. 9. We note that Patent Owner states that it “accepts [Petitioner’s] definition of a POSITA.” PO Resp. 16. Accordingly, for this Decision, we adopt Petitioner’s definition, while maintaining that the prior art demonstrates the appropriate level of ordinary skill in the art. 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). Moreover, we have reviewed the credentials of Drs. Tallon and Hoem, and consider each of them to be qualified to provide their opinion on the level of skill and the knowledge of a person of ordinary skill in the art at the time of the invention.” slip op. at 11

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

    “As noted by Petitioner, the Board construed the phrase “greater than about 5% w/w” as meaning “greater than 4.5% w/w” in a Final Written Decision addressing similar claims of a related patent. Pet. Reply 12. Specifically, in IPR2018-00295, the Board’s analysis of the claim phrase “greater than about 5% w/w” of krill oil in the Final Written Decision reads as follows: Such broadening usages as ‘about’ must be given reasonable scope; they must be viewed by the decision maker as they would be understood by persons experienced in the field of the invention. Although it is rarely feasible to attach a precise limit to ‘about,’ the usage can usually be understood in light of the technology embodied in the invention.” Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1554 (Fed. Cir. 1996). After considering the parties’ arguments and reviewing the Specification of the ’765 patent, we conclude that Petitioner’s proposed construction is consistent with the intrinsic evidence. Although the ’765 patent does not explicitly address the issue of “about,” the meaning of the term can be discerned from a careful reading of the Specification. Example 8 of the ’765 patent reports the analysis of phospholipid fractions of a product of the invention and a commercially available Krill product. Ex. 1001, col. 31, l, 46–col. 32, l. 42. Table 22, reproduced above, reports the calculated values for the various phospholipids in values to a tenth of a percent. Id. at col. 32, ll. 18–38. In the discussion of the table, the values are rounded to the nearest whole number, not the nearest tenth. Id. at col. 32, ll. 11–15. This is consistent with the approach advanced by Petitioner. IPR2018-00295, Paper 35, 12.10 Similarly here, we find that although the Specification does not explicitly define the term “about,” its meaning may be discerned from the manner by which the Specification refers to reported values for phospholipid profiles of krill oil. Ex. 1001, 32:55–67 (Table 22). In the discussion of the lipids reported in Table 22, the values are rounded to the nearest whole number, not the nearest tenth. Id. at 32:47–52. This is more consistent with the approach advanced by Petitioner than by Patent Owner. Thus, as determined in that Final Written Decision, and for the reasons set forth therein, “the term ‘greater than about 5% w/w’ shall be construed to mean ‘greater than 4.5% w/w.’” IPR2018-00295, Paper 35, 13. Similarly, we construe the recitation in claim 1 requiring “greater than about 3% ether phospholipids” as meaning “greater than 2.5% ether phospholipids,” and we construe the recitation in claim 14 of “greater than 4% ether phospholipids” as meaning “greater than 3.5% phospholipids.”” slip op. at 14

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

    “Based on those prior art teachings, Petitioner asserts that the ordinarily skilled artisan also would have had a “reasonable expectation of producing a polar krill oil having the percentage of constituents as recited in the claims.” Id. at 53. Likewise, Dr. Tallon testifies that a person of ordinary skill in the art “would have known that the relative proportions of the natural krill and hence the natural krill oil constituents could be varied in predictable ways by applying a single solvent or combination of solvents . . . to selectively extract specific groups of lipid components . . . , and by blending these selective extracts in known and predictable ways to produce a desired krill oil composition,” indicating that an ordinarily skilled artisan would have had a reason to combine the teachings of the cited references and a reasonable expectation of success in doing so in a manner that yields the claimed invention. Ex. 1006 ¶ 104. Based on our review of the record as a whole, we determine that a preponderance of the evidence supports Petitioner’s contention that an ordinarily skilled artisan would have had reason to combine the teachings of Breivik II, Catchpole, Bottino II, and Sampalis I, with a reasonable expectation of successfully arriving at the inventions of claims 1–3, 5–10, 12, 14–17, 19–20, 23–26, 28, and 30–32. Next, we address Patent Owner’s arguments and Petitioner’s assertion of collateral estoppel.” slip op. at 30

  • BurdenUnpatentable

    “Based on the foregoing, we conclude that Petitioner has established by a preponderance of the evidence that claims 1–3, 5–10, 12, 14–17, 19–20, 23–26, 28, and 30–32 are unpatentable over the combined teachings of Breivik II, Catchpole, Bottino II, and Sampalis I. F. Obviousness of Remaining Grounds Based upon Combinations including Breivik II, Catchpole, Bottino II and Sampalis I Each of the three remaining grounds rely upon similar combinations of Breivik II, Catchpole, Bottino II, and Sampalis I, as set forth in the ground analyzed above, in Section II. E. Pet. 7, 56–66. The remaining grounds combine additional references to address various limitations of dependent claims 4, 11, 13, 18, 21, 22, 27, and 29. Id. Patent Owner challenges those additional grounds only by relying on its arguments presented with respect to the ground based upon Breivik II, Catchpole, Bottino II, and Sampalis I. PO Resp. 33–35. According to Patent Owner, the additional references relied upon in the remaining grounds do not “cure the deficiencies noted above for the core four references.” Id. We have considered the combined teachings of the cited references for each of the remaining grounds, along with Petitioner’s arguments and Dr. Tallon’s testimony and, based on the record as a whole, we determine that Petitioner has established by a preponderance of the evidence that claims 4, 11, 13, 18, 21, 22, 27, and 29 are unpatentable over those combined teachings for the reasons discussed herein regarding the combination of Breivik II, Catchpole, Bottino II, and Sampalis I, and based upon Petitioner’s additional evidence and arguments in each of the remaining grounds, which we adopt as our own. See Pet. 56–66; Ex. 1006 ¶¶ 439–457.” slip op. at 37

  Patent outcomesUS 9,375,453 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,375,453

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.