• Douglas Dynamics, L.L.C. / Douglas Dynamics, Inc. v. Meyer Products LLCSome claims unpatentable
  PTAB · Mar 1, 2017 · IPR2015-01839 · APJ Jacqueline T Harlow · IPR · Final written decision

  Claims 1, 2, 4–7, 28–31, 36, 38, 39, 43, and 44 are unpatentable under § 103(a); claims 8, 32, 33, and 48–54 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner

    “The disclosure of the ’829 patent is expressly addressed to the problem of, and a solution for, unreliable and vulnerable electrical connections caused by splicing auxiliary lights into OEM headlight wiring. The Background of the Invention explains that “[t]raditionally, the auxiliary lights were spliced into the existing wiring for the headlights of the vehicle.” slip op. at 11

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

    “As an initial matter, we observe that whether or not the preamble term “light circuit” is limiting has little bearing on the ultimate disposition of this inter partes review, as it is undisputed that Douglas has identified, for each asserted ground of unpatentability, disclosure of a light circuit. See PO Resp. 11–12. Furthermore, we agree with Douglas that “light circuit” does not connote any structure beyond that explicitly recited in the body of the claims. Indeed, it is unclear that either Meyer or Mr. Ricca disputes such conclusion. For example, Meyer states in its Patent Owner Response that” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “As a general rule, the words “a” or “an” in a patent claim carry the meaning of “one or more.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008). That rule is particularly applicable 15 where, as here, those words are used in combination with the open-ended antecedent “comprising.” See, e.g., Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). “An exception to the general rule that ‘a’ or ‘an’ means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.” Baldwin Graphic, 512 F.3d at 1342–43. We discern no such exception here. First, Meyer has not identified, and we do not discern, any requirement in the language of the claims to support the conclusion that the recited “an auxiliary light connector to connect an auxiliary light” must be a single auxiliary light connector.” slip op. at 15

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

    “As set forth above, Möller explicitly teaches the incorporation of microprocessors and microcontrollers to improve relay-circuitry-based vehicle electronics systems. Ex. 1006, 4:41–48. Contemporaneous prior art 33 references, including Gould and COP8, disclose advantages obtained through the incorporation of microprocessors and microcontrollers into relay circuitry for controlling end devices, further underscoring that an ordinarily skilled artisan would have sought to modify the relay circuitry of Knepel with the microprocessors and microcontrollers of Möller. See Ex. 1010, 9, 11; Ex. 1011, 14. Moreover, Dr. Neuhalfen testifies, without challenge, that it was well-known at the time of invention of the ’829 patent to use microprocessors to control original vehicle lights, as well as auxiliary lights, and identifies numerous advantages that the proposed combination would afford. Ex. 1014 ¶ 59. Indeed, Meyer’s expert, Mr. Ricca, agrees that it would not have been difficult for an ordinarily skilled artisan to supplement the circuit of Knepel to provide microprocessor control of the relays in that circuit. Ex. 1033, 182:6–11. In view of the teachings of Möller itself, and the contemporaneous prior art, as well as the testimony of Dr. Neuhalfen and Mr. Ricca, we find that a person of ordinary skill in the art at the time of the invention would have recognized the value of using known elements, i.e., microprocessors and microcontrollers, as taught by Möller, to improve the relay circuitry for controlling original vehicle lights and auxiliary lights of Knepel. We likewise find that a person of ordinary skill in the art would have appreciated that the microprocessors of Möller could be incorporated into, i.e., used to supplement, the relay circuitry of Knepel. See KSR, 550 U.S. at 418 (an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account” slip op. at 33

  Patent outcomesUS 6,265,829 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,265,829
• Pharmacosmos A/S v. Luitpold Pharmaceuticals, Inc.Some claims unpatentable
  PTAB · Jan 4, 2017 · IPR2015-01490 · APJ Lora M Green · IPR · Final written decision

  Claims 1–3, 10–15, 23, 25, 27, 30, and 41–43 are unpatentable; claims 17 and 47 were not shown unpatentable; claims 28 and 29 were cancelled.

  RulingsFinal written decision

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

    “based on the complex as a whole, rather than just the carbohydrate component, as Fishbane related to iron dextran complexes. Reply 10. We agree with Petitioner that the language of the term “substantially non-immunogenic carbohydrate component” itself only requires an assessment of the immunogenicity of the carbohydrate component, and disagree with Patent Owner that the claims require an assessment of the immunogenicity of the iron carbohydrate complex as a whole. In that regard, we note that the Specification of the ’702 patent supports our construction that the “substantially non-immunogenic carbohydrate component” is limited to the carbohydrate component as opposed to the iron carbohydrate complex as a whole. Specifically, the Specification teaches in the background section that previously available iron dextran products suffered from a “high incidence of anaphylactoid reactions . . . believed to be caused by the formation of antibodies to the dextran moiety,” while “[o]ther parenteral iron products (e.g., iron sucrose and iron gluconate) do not contain the dextran moiety, and the incidence of anaphylaxis with these products is markedly lower.” Ex. 1001, 1:53–57; see also id. at 11:3‒4 (“non-immunogenic carbohydrate component; no cross reactivity with anti-dextran antibodies”). Moreover, the language of independent claim 1 itself does not require a non-immunogenic complex, but only specifies that the “iron carbohydrate complex has a substantially non-immunogenic carbohydrate component.” Moreover, we decline to limit the term “substantially non- immunogenic carbohydrate complex” to require an incidence level of lower than 0.6%. Rather, what is supported by the claim language and the Specification is a low risk such that the incidence of adverse events of the carbohydrate complex is lower than dextran. See, e.g., Tr. 53‒54 (counsel for Patent Owner acknowledging that Fishbane was not incorporated by reference, and that it was only cited as a “see generally”).” slip op. at 10

  • Skill levelOther

    “We do not find a significant different between the requirements for the ordinary artisan proposed by Petitioner and Patent Owner. We agree with Petitioner (Pet. 14) that the best evidence of the level of skill in the art are the references themselves, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001), and, thus, we need not explicitly adopt either Petitioner’s or Patent Owner’s characterization of the level of skill in the art. Moreover, we note that the result of the analysis regarding the patentability of the claims would be the same under the requirements for the ordinary artisan proposed by either Petitioner or Patent Owner.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInherency foundUnpatentable

    “Petition (Pet. 22–27), we find that Petitioner has demonstrated by a preponderance of the evidence that Geisser teaches all the limitations of claim 1, either inherently or explicitly. That is, we agree with Petitioner that Geisser teaches a method of treating a disease characterized by an iron deficiency, specifically iron deficiency anemia (Pet. 23; Ex. 1003, Abstract, 1:4‒7, 2:4‒7, 9:30‒31). We further agree that Geisser teaches a method of administering an iron carbohydrate complex, that is, iron carboxymaltose, in a single dosage form of at least 0.6 grams of elemental iron, as Geisser teaches administering iron carbohydrate complexes as a single dose of 500‒ 1000 mg of iron. Pet. 23 (citing Ex. 1003, 1:26‒4:1, 8:7-10, 10:14‒17). In that regard, we credit the testimony of Dr. Linhardt that Geiser discloses iron carboxymaltose, and that Geisser describes a general synthetic method that is nearly identical to the method described in the ʼ702 patent. Ex. 1005 ¶¶ 8‒10, 13. In addition, as Geisser teaches one of the iron carbohydrate complexes explicitly recited by claim 1, that is, iron carboxymaltose, it would inherently meet the limitation that the carbohydrate component is substantially non-immunogenic and would have substantially no cross-reactivity with anti-dextran antibodies. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“Products of identical chemical composition can not have mutually exclusive properties.”). The teachings of Geisser support that finding, as Geisser specifically teaches that the complexes have low toxicity and a reduced danger of anaphylactic shock. Pet. 23 (citing Ex. 1003, 1:26‒ 2:1, 8:7‒10); see also Ex. 1001, 12:12‒14 (noting that as “[t]he iron carboxymaltose complex (e.g., VIT-45) generally does not contain dextran and [it] does not react with dextran antibodies.”).” slip op. at 18

  Patent outcomesUS 7,754,702 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,754,702
• Dermira, Inc. v. Purepharm, Inc.Some claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01594 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–3 and 5–8 are unpatentable as anticipated by Hays or obvious over the listed combinations; claim 4 was not shown unpatentable for lack of a reason to add another sweating therapy.

  RulingsFinal written decision

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

    “In interpreting claim terms, the claims themselves provide substantial guidance. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Here, claim 1, from which claims 2–8 depend, recites the dosed amount of glycopyrrolate in solution as “an amount ranging from 3.0 wt. % to 4 wt. %.” Because claim 1 describes the dosed amount by the strength/concentration, it supports our conclusion that term “dosed amount” is not limited by the volume of the glycopyrrolate solution.” slip op. at 6

  • BurdenMixed

    “Petitioner may well be correct that preferring a non-anticholinergic does not necessarily exclude administering “another oral and/or topical therapy for reduction of sweating,” as required by challenged claim 4. Petitioner, however, does not point to any credible evidence or otherwise explain why an ordinary artisan would have chosen another therapy to reduce sweating to be administered in combination with glycopyrrolate. Without some articulated reasoning with rational underpinning as to why an ordinary artisan would have added a second therapeutic for reducing sweating to the transdermal patch of Bodor, which uses the anticholinergic to eliminate the formation of an aqueous layer between the delivery system and the skin to enhance the penetration of the transdermal drug being delivered, Petitioner has not met its burden of demonstrating that claim 4 20 would have been obvious over the combination of Bobrove and Bodor. See KSR, 550 U.S. at 418.” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “(citing Ex. 1009, 1821). Hays instructs that glycopyrrolate solutions should be carefully applied while avoiding the mouth, nose, and eyes. Id. (citing Ex. 1009, 1798, 1809). For example, it discloses applying a cotton applicator dipped in the glycopyrrolate solution to the skin while holding the hair up out the way to treat patients with gustatory sweating in the hairline. Id. at 31 (citing Ex. 1009, 1819). Dr. Guy testifies that an ordinary artisan would have understood the cotton applicator in Hays “as being any of a cotton ball, a cotton pad, a cotton swab, or having a cotton component as a part of a larger applicator.” Ex. 1003 ¶ 72. According to Hays, glycopyrrolate in concentrations of 0.5%, 1.0%, and up to 4% provided effective control of gustatory sweating with no significant side effects. Pet. 29 (citing Ex. 1009, 1819). Thus, we agree with Petitioner that Hays discloses each and every limitation of claim 1.” slip op. at 11

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

    “Bobrove specifically teaches applying a “roll on” glycopyrrolate solution. Ex. 1008, 6:26–27, 6:36–37. It, however, also generally teaches that glycopyrrolate is administered topically. Id. at 4:1. Thus, one of ordinary skill in the art would have had a reason to look for other means to apply glycopyrrolate. As Dr. Guy testifies, “[t]here are a limited number of ways to topically deliver a drug to a patient’s skin.” Ex. 1003 ¶ 16. In addition, Bobrove suggests to avoid the eyes, nose, and mouth during the topical administration. Ex. 1008, 5:37–39. Given these considerations, Bodor provides an effective alternative: a cotton cloth to absorb the drug and rub it on the skin. Ex. 1030, 15:39–54; see also Ex. 1003 ¶ 17 (explaining that, at the time of the invention, an ordinary artisan would have known that use of medicated pads “allowed for topical application of a solution, for example to a subject’s face, while excluding application to sensitive areas such as the eyes or mucous membranes”). Thus, we conclude Petitioner has shown, by a preponderance of the evidence, that an ordinary artisan would have had a reason to combine the teachings of Bobrove and Bodor. In sum, Petitioner has shown, by a preponderance of the evidence, that an ordinary artisan would have had a reason to combine the teachings of Bobrove and Bodor, and that the combination teaches each and every limitation of claims 1 and 2. Claims 4, 5, and 8” slip op. at 19

  Patent outcomesUS 8,252,316 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,252,316
• Dermira, Inc. v. Purepharm, Inc.Some claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01593 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–3 and 5–10 are unpatentable as anticipated by Hays or obvious over the stated combinations; claim 4 was not shown unpatentable for lack of a reason to add another sweating therapy.

  RulingsFinal written decision

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

    “In interpreting claim terms, the claims themselves provide substantial guidance. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Here, the challenged claims recite the dosed amount of glycopyrrolate in solution as “an amount ranging from 1.0 wt. % to 6 wt. %” (claim 1); “an amount ranging from 2.0 wt. % to 6.0 wt. %” (claim 9); and “an amount ranging from 2.0 wt. % to 4.0 wt. %” (claim 10). Because the claims describe the dosed amount by the strength/concentration, they support our conclusion that term “dosed amount” is not limited by the volume of the glycopyrrolate solution.” slip op. at 6

  • Skill levelSkill level board ownOther

    “The parties disagree over the level of ordinary skill.8 See Pet. 17–18; PO Resp. 3; Reply 9. For purposes of this Decision, we do not need to resolve this dispute because the prior art itself reflects an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “not qualify as one of ordinary skill in the art because he is not a clinician, physician, or pharmacist. PO Resp. 3–4. We disagree with Patent Owner on this issue. All asserted references relate to topical administration of pharmaceutical compositions. See, e.g., Ex. 1008, 4:1; Ex. 1010, 2:35–38; Ex. 1030, 3:60–61. In addition, the challenged ’524 patent relates to the topical delivery of glycopyrrolate to reduce excessive sweating and minimize side effects. Ex. 1001, Abstract, 1:13–21. Dr. Guy has over 30 years of experience in fields including topical drug delivery, transdermal” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “water base and a vanishing cream base in 0.5 to 1% concentration. It completely controls gustatory sweating for several days or more.” Pet. 30 (citing Ex. 1009, 1821). Hays instructs that glycopyrrolate solutions should be carefully applied while avoiding the mouth, nose, and eyes. Id. at 31 (citing Ex. 1009, 1798, 1809). For example, it discloses applying a cotton applicator dipped in the glycopyrrolate solution to the skin while holding the hair up out the way to treat patients with gustatory sweating in the hairline. Id. (citing Ex. 1009, 1819). Dr. Guy testifies that an ordinary artisan would have understood the cotton applicator in Hays “as being any of a cotton ball, a cotton pad, a cotton swab, or having a cotton component as a part of a larger applicator.” Ex. 1003 ¶ 90. According to Hays, glycopyrrolate in concentrations of 0.5%, 1.0%, and up to 4% provided effective control of gustatory sweating with no significant side effects. Pet. 31 (citing Ex. 1009, 1819). Thus, we agree with Petitioner that Hays discloses each and every limitation of claim 1.” slip op. at 11

  Patent outcomesUS 8,679,524 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,679,524
• Advanced Micro Devices, Inc. v. LG Electronics Inc.Some claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01409 · APJ Garth D Baer · IPR · Final written decision

  Claims 4, 8, and 9 are unpatentable under § 103; claim 30 was not shown unpatentable because the prior art did not teach shutdown based on total processor use below a threshold.

  RulingsFinal written decision

  • BurdenOther

    “III. ANALYSIS A. PRINCIPLES OF LAW Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).” slip op. at 7

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

    “Public accessibility” is the touchstone in determining whether a reference is a “printed publication.” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference is publicly accessible upon a satisfactory showing that such document has been made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)). slip op. at 13

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

    “construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). 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). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “We decline to disregard all of Mr. Gafford’s testimony. In light of Mr. Gafford’s education and experience (a Bachelor of Science Degree in Electrical Engineering and over 43 years working for corporations in the design, manufacturing, and support for computer systems and microprocessors, see Ex. 1011 ¶¶ 14–20), we see no reason why Mr. Gafford’s frequent participation in other cases—even to ultimately mixed results—makes his testimony here unhelpful in understanding the evidence in this case. See Fed. R. Evid. 702(a). In assessing the merits of this case, we have considered the proffered testimony from Mr. Gafford, as well as Patent Owner’s Declarant Dr. Friedman, and accorded weight based on the testimony’s substantive persuasiveness.” slip op. at 29

  Patent outcomesUS 7,636,863 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,636,863
• Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd.Some claims unpatentable
  PTAB · Jul 7, 2016 · IPR2015-00529 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–8 and 10–19 are unpatentable as obvious over the INOmax label, Bernasconi, Loh, and Goyal; claims 1, 7, 12, and 14 are also anticipated and obvious over the INOmax label.

  RulingsFinal written decision

  • Expert testimonyOther

    “method of providing pharmaceutically acceptable nitric oxide gas requires providing information to the medical provider to safely administer the nitric oxide gas,” thus “confirm[ing] that the ‘providing . . . information’ step is functionally related to the steps in the claimed method.” PO Resp. 31–33. As an initial matter, whether the claims should be interpreted as requiring such a functional relationship is a legal conclusion. See PO Resp. 13. Patent Owner’s conclusion regarding functional relationship between claim terms is based, at least in part, on an overly-limited reading of “pharmaceutically acceptable nitric oxide gas,” as discussed above. See PO Resp. 27. Further, we do not read the transcript testimony relied on by Patent Owner as clearly admitting a functional relationship between the steps of “providing pharmaceutically acceptable nitric oxide gas” and the information of (ii). See PO Resp. 31–32 (citing Ex. 2022, 78:15–80:4, 81:11–22, 111:2–17)). To the contrary, Dr. Beghetti appears to have testified that the claim elements are not directly related. Ex. 2022, 86:10– 25. Although Patent Owner points to In re Distefano, 808 F.3d at 848, as evidence that a “printed matter analysis includes ‘factual findings’” (PO Sur Reply 4, n.6), which inform the ultimate legal conclusion, we do not find the evidence as a whole compelling.” slip op. at 19

  • ExcludeMotion to exclude, deniedOther

    “IV. PETITIONER’S MOTION TO EXCLUDE Petitioner moves to exclude certain portions of Ex. 2024 on the grounds that they “are declarations and supporting materials submitted during patent examination . . . in violation of 37 C.F.R. § 42.53(a)” and “lack foundation (FRE 602) and authentication (FRE 901) and constitute impermissible hearsay (FRE 901).” Paper 31, 2–3. Petitioner likewise moves to exclude Exhibit 2029 as not relied on in the Patent Owner Response or by Patent Owner’s expert. Id. at 3. As we do not rely on the objected-to materials in this opinion, we dismiss the motion as moot.” slip op. at 45

  • Strike new argumentNew argument disregardedOther

    “V. OBJECTIONS TO DEMONSTRATIVES The parties also submit competing objections to demonstrative exhibits used at trial. Papers 46, 47. Specifically, both parties object to certain slides as setting forth a new argument not previously made in any paper. Papers 46, 47. The parties are reminded that demonstrative exhibits are illustrative only and are not part of the trial record. Indeed, in accordance with our Order on requests for oral argument, neither party filed its demonstratives with the Board. See Paper 45, 2 (“Notwithstanding 37 C.F.R. § 42.70(b), the parties shall not file any demonstrative exhibits in this proceeding without prior authorization from the Board. 37 C.F.R. § 42.5(b). Demonstrative exhibits are intended to be visual aids to assist a party in making its oral presentation and will not be entered into the record of these proceedings.”). Nevertheless, in this Final Written Decision, we rely on the arguments presented properly in the parties’ briefs and the evidence of record and do not consider any new arguments not previously set forth in any paper. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). (“No new evidence or arguments may be presented at the oral argument.”).” slip op. at 45

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “The Applicant amended the preamble of the rejected independent claims to recite “[a] method of providing pharmaceutically acceptable nitric oxide gas,” as presently set forth in claims 1 and 7. Id. at 746–747. Subsequent to the amendment, the Examiner withdrew the objection. Id. at 765; see id. at 733 (“If all the priority issues are resolved then it appears that the primary reference in the 103 rejection will no longer be prior art.” (italics omitted)). On pages 19 and 20 of its Response, Patent Owner argues that the preamble is, therefore, limiting in light of Catalina Mktg. International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002), which holds that “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates the use of the preamble to define, in part, the claimed invention.” Although the prosecution history shows that amendment of the preamble only indirectly distinguished the claims over the prior art by establishing an earlier priority date, we conclude that both the Applicant and the Examiner treated the preamble as a claim limitation. Accordingly, we agree with Patent Owner that the preamble language “pharmaceutically acceptable nitric oxide gas” is limiting.” slip op. at 11

  Patent outcomesUS 8,846,112 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,846,112
• Fiserv, Inc. v. Datatreasury CorporationSome claims unpatentable
  PTAB · Sep 1, 2015 · CBM2014-00088 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 22, 25, 26, 29, 36, 38–43, 50, 51, 55, 62, and 63 are unpatentable as anticipated by Campbell; the remaining instituted claims were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDecided for petitioner

    “B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibits 1062–1065, filed by Petitioner on April 7, 2015, over two months after Petitioner filed its Reply and 22 days before oral hearing. PO Mot. Excl. 2–3. Petitioner characterizes its submission as “supplemental information” and “apologizes for its oversight” of the “minor procedural defect” of not seeking authorization to file a motion for supplemental information. Pet. Opp. Mot. Excl. 2. We dismiss as moot Patent Owner’s Motion to Exclude because we hereby order the expungement of Exhibits 1062–1065 for being filed without prior authorization.” slip op. at 8

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

    “before (Jack Henry CBM, Paper 17, 9–10).6 PO Resp. 21–22. Patent Owner notes that, if we do not adopt that construction, it will “abide by the Board’s decision.” Id. at 21. We decline to adopt the district court construction, a construction previously considered and not adopted, in the absence of arguments explaining why we should adopt that construction, and in the presence of a statement that Patent Owner will abide by our construction should we not choose to adopt that construction. Upon consideration of the record before us, we maintain that the broadest reasonable interpretation of “subsystem identification information” is “information that identifies a subsystem.”” slip op. at 11

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

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1019, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image to refer to different collections of data. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information [that] accompan[ies] those images.” Id. at 5:25–26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed in a prior claim construction of this term, we are persuaded that information identifying the sending institution is a SSID. See Jack Henry CBM, Paper 37, 8–11. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1003 ¶¶ 64–65, 78–84, 91 (Petitioner’s Declarant, Dr. Knox, testifying that the encrypted information in Campbell identifies the receiving institution). Patent Owner argues that Campbell discloses that the controller may be configured to handle encrypted information, which means that it “does not necessarily encrypt subsystem information” and that encryption is not “necessarily always . . . accomplished.” PO Resp. 32–34.14 Patent Owner does not provide an explanation as to how this, even if true, would preclude anticipation: Campbell would still disclose encrypted SSIDs if it disclosed the encryption as a capability but not a necessity of the system. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983) (“The law of anticipation does not require that the reference ‘teach’ what the subject patent teaches. . . . . [I]t is only necessary that the claims under attack, as construed by the court, ‘read on’ something disclosed in the reference, i.e., all limitations of the claim are found in the reference, or ‘fully met’ by it”); see also Pet. Reply 5–6 (arguing that there is no requirement that the prior 14 Later in its Response, Patent Owner argues that, although Campbell may “encrypt the name of th[e] bank,” Campbell does not “encrypt[] identification information that identifies a particular subsystem of the . . . Bank.” PO Resp. 48–49. Thus, Patent Owner appears to recognize that in fact Campbell discloses encrypting the name of the bank (while disputing that the name is sufficient to be a SSID). art mandate the use of a disclosed feature). Notwithstanding, we disagree that Campbell only occasionally encrypts SSIDs, for the reasons explained in the prior paragraph. Reviewing the record before us, we are persuaded that Campbell discloses transmitting an encrypted SSID.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “relay network over a telecommunications company network. Ex. 1002, 12:50–61. Patent Owner’s Declarant, Mr. Ginsberg, acknowledges that Campbell describes transmission of signals over a public switched telephone network, but states that “the ‘central offices’ are not described as being remote from the receiving bank.” Ex. 2004 ¶ 22. Mr. Ginsberg appears to be discussing the portion of Campbell where it describes the signals 16 “Wide Area Network (WAN)[:] A data communications network that covers geographically separated areas, typically containing cities. Thus a WAN is usually composed of Local Area Networks (LAN) interconnected by other communications links hired from a PTT or other common carrier.” Focal Dictionary of Telecommunications (1999) available at http://search.credoreference.com/content/entry/bhfidt/wide_area_network_w an/0 (Ex. 3002). produced by the sending bank being transmitted on network access lines 22 to reach telephone network 10 and, more specifically, that “[t]he signals received by the network on line 22 may be transmitted through the network 10 via . . . one or more central offices to the check image processing node 12.” Ex. 1019, 3:17–43. Mr. Ginsberg does not explain how this passage supports his conclusion. Whether the “central offices” (not relied on by Petitioner for this claim) are remote to the sending bank has no bearing, which we can see, on whether Campbell describes a WAN. Campbell describes transmission of information between the sending bank and the node over a public switched telephone network; it is that communication that Petitioner asserts occurs over a WAN. See Pet. Reply 11–12; Pet. 30–31. A public switched telephone network covers geographically distinct locations. One of ordinary skill in the art would understand that transmitting information over such a network generally involves the sender and receiver being in different locations; likewise, the system of Campbell makes little sense if the banks and the node are all in the same location.17 Accordingly, Mr. Ginsberg’s testimony on this point is unpersuasive. On the other hand, Petitioner’s Declarant, Dr. Knox, explains how the Campbell system uses a public switched telephone network and a frame relay network, which Dr. Knox testifies is a type of WAN. Ex. 1003 ¶ 158. This testimony is persuasive, under its own reasoning and because, as” slip op. at 21

  Patent outcomesUS 6,032,137 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,032,137
• Fiserv, Inc. v. Datatreasury CorporationSome claims unpatentable
  PTAB · Sep 1, 2015 · CBM2014-00087 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 22, 26, 29, 36, 38–42, 46–49, 58–60, 66–69, 73, 74, 80, 82–84, 88–91, 102, 106–110, and 114–123 are unpatentable as anticipated by Campbell; the remaining challenged claims were not shown …

  RulingsFinal written decision

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

    “In our Decision to Institute this trial, we determined the broadest reasonable interpretation of “subsystem identification information” is “information that identifies a subsystem.” Dec. Inst. 8. There, as here, we relied on our prior interpretation of this term in the Jack Henry CBM. See Jack Henry CBM, Paper 17, 9–10; id., Paper 37, 9–12. Notably, we determined, as an ancillary matter to construing the term, that “nothing in the claims, as would be understood by a person of ordinary skill in the art in view of the specification, requires any form of ownership or other type of corporate relationship between the various subsystems; only that they function in the manner set forth in the claims.” Id., Paper 37, 12.5” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibits 1062–1065. PO Mot. Excl. 2–3. Petitioner filed the disputed exhibits on April 7, 2015, which was more than two months after Petitioner filed its Reply and 22 days before oral hearing. Id. Petitioner characterizes its submission as “supplemental information” and “apologizes for its oversight” of the “minor procedural defect” of not seeking authorization to file a motion for supplemental information. Pet. Opp. Mot. Excl. 2. We dismiss as moot Patent Owner’s Motion to Exclude because we hereby order the expungement of Exhibits 1062–1065 for being filed without prior authorization.” slip op. at 9

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

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1019, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image to refer to different collections of data. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information [that] accompan[ies] those images.” Id. at 5:25–26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed in a prior claim construction of this term, we are persuaded that information identifying the sending institution is a SSID. See Jack Henry CBM, Paper 37, 9–12. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1003 ¶¶ 64–65, 78–84, 91 (Petitioner’s Declarant, Dr. Knox, testifying that the encrypted information in Campbell identifies the receiving institution).” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “bank and the node over a public switched telephone network; it is that communication that Petitioner asserts occurs over a WAN. See Pet. Reply 10; Pet. 21–22. A public switched telephone network covers geographically distinct locations. One of ordinary skill in the art would understand that transmitting information over such a network generally involves the sender and receiver being in different locations; likewise, the system of Campbell makes little sense if the banks and the node are all in the same location. Accordingly, Mr. Ginsberg’s testimony on this point is unpersuasive. On the other hand, Petitioner’s Declarant, Dr. Knox, explains how the Campbell system uses a public switched telephone network and a frame relay network, which Dr. Knox testifies is a type of WAN. Ex. 1003 ¶ 158. This testimony is persuasive, under its own reasoning and because, as we mentioned above, the WAN in the ’988 patent involves a frame relay network over a telecommunications company’s network.” slip op. at 22

  Patent outcomesUS 5,910,988 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 5,910,988
• Apple Inc. v. Virnetx Inc.Some claims unpatentable
  PTAB · Aug 24, 2015 · IPR2014-00482 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1, 4, 6, 10, 13–15, 17, 20, 22, 26, 29–31, 33, 35, and 37 are unpatentable; claims 12 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “We previously determined that, under a broad but reasonable construction, one of skill in the art would have understood the term “virtual private network communication link,” in light of the Specification, to include “a transmission path between two devices that restricts access to data, addresses, or other information on the path, generally using obfuscation methods to hide information on the path, including, but not limited to, one or more of authentication, encryption, or address hopping.” Dec. on Inst. 6–7. 1 Patent Owner disputes this interpretation and argues that the term “virtual private network communication link” must be “a communication path between computers in a virtual private network” (PO Resp. 8), “requir[es] computers within a VPN to communicate directly” (PO Resp. 10), and requires a “network of computers,” which, according to Patent Owner must be “more than a ‘path between two devices.’” PO Resp. 14. We decline to modify our previous construction of this term in the manner suggested by Patent Owner because such a modification is immaterial in this proceeding for reasons set forth below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed to the extent necessary to resolve the case).” slip op. at 3

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

    “understood that a “secure computer network address” must be “associated with a computer capable of virtual private network communications” because a claim recites “sending an access request message to the secure computer network address using a virtual private network communication link.” PO Resp. 16. We agree with Patent Owner that claim 1, for example, recites “sending an access request message to the secure computer network address using a virtual private network communication link.” However, Patent Owner does not explain sufficiently why an explicitly recited claim limitation must be incorporated into the construction of an associated claim term. Indeed, if one of ordinary skill in the art would have understood that all secure computer network addresses must be associated with a computer capable of VPN communications and that any computer network address that is associated with computers that are incapable of VPN communications would be understood by one of ordinary skill in the art not to be a “secure computer network address” (even if authorization for access is required), then any such recited claim limitation would be superfluous. Patent Owner also argues that “VirnetX’s proposed construction has been agreed to by its litigation adversaries and has been adopted by a district court.” PO Resp. 17. Even if Patent Owner’s proposed construction “has been agreed to by” parties in litigation and the district court, Patent Owner does not assert or demonstrate persuasively that one of ordinary skill in the art would have broadly but reasonably construed the term “secure computer network address” in light of the Specification to require association with a computer capable of virtual private network communications. In any event, Patent Owner does not appear to contend that the cited references fail to disclose a secure computer network address that is associated with a computer capable of VPN communications and, therefore, does not demonstrate sufficiently that the construction of “secure computer network address” will bear on the outcome of the issues in this inter partes review. We decline to modify our construction of this term.” slip op. at 5

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

    “computer network address” of “the server-side proxy” (and not the “host”). PO Resp. 32 (emphasis omitted). In other words, Patent Owner argues that, in contrast to claim 1, which requires sending a query message requesting an address and receiving a response message containing the address requested in the query message, Kiuchi discloses sending a query message requesting an address of “the host” but receiving a response message containing an address of “the server-side proxy,” rather than “the host.” Based on this presumption that “the host” of Kiuchi differs from the “server-side proxy” of Kiuchi, Patent Owner argues that Kiuchi fails to disclose the claimed invention and also that “the Board has exceeded its statutory authority by instituting in part on rationales that were not before it.” PO Resp. 30. However, Patent Owner does not explain sufficiently a difference between “the host” and the “server-side proxy” of Kiuchi. Kiuchi discloses that a client-side proxy “asks the C-HTTP name server whether it can communicate with the host” and that, in response, the C-HTTP name server examines “the requested server-side proxy” and responds by sending the IP address of the server-side proxy. Ex. 1004, 65 (emphasis added). In other words, Kiuchi discloses that “the host” that is requested is the requested “server-side proxy.”” slip op. at 13

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

    “of ordinary skill in the art would have combined Kiuchi with the other references.” PO Resp. 3. Petitioner provides reasons with supporting factual underpinnings to support the conclusion that the combination of Kiuchi and Bhatti (and/or Tavs) would have been obvious to one of ordinary skill in the art. Pet. 34–35, 38–39. For example, Petitioner states that one of ordinary skill in the art would implement Kiuchi’s user agent such that the user agent sends an access request for content stored on the origin server, in the same manner that Bhatti describes sending an access request from a user terminal for content stored [on] a content server. Pet. 38. Petitioner also states that “[i]t would have been obvious to one of ordinary skill at the time of the ’180 patent to modify the client-side proxy and server-side proxy described by Kiuchi to support the service-level categorization and differentiation described by Tavs in order to give priority to business-relevant traffic during peak network congestion.” Pet. 34. Patent Owner does not dispute the reasons provided by Petitioner as to why it would have been obvious to one of ordinary skill in the art to have combined teachings of Kiuchi and Bhatti (and/or Tavs) but argues that this obviousness ground “is critically flawed because the Petition relies solely on missing expert testimony for its rationale for combining” the references. PO Resp. 54, 56. However, Patent Owner does not explain why Petitioner is required to provide expert testimony in support of a proposed ground of unpatentability. Nor does Patent Owner explain the supposed flaws in the rationale provided by Petitioner.” slip op. at 21

  Patent outcomesUS 7,188,180 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,188,180
• Jack Henry And Associates, Inc. v. Datatreasury Corp.Some claims unpatentable
  PTAB · Jul 8, 2015 · CBM2014-00057 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 26, 27, 42, and 46 are unpatentable: Campbell anticipates five claims, and Campbell with Blackwell renders five claims obvious.

  RulingsFinal written decision

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

    “stamp . . . , an identification number to identify the merchant originating the scan and any additional useful information.” Ex. 1001, 8:14–17 (emphasis added). The DAT_TERMINAL_ID, which is part of the unencrypted tag, “uniquely identifies the DAT 200 which is used by the customer.” Id. at 10:27–33. The DAT 200, also known as the remote data access terminal (id. at 4:62–63) is shown in Figure 2 and is a collection of components found at the merchant (e.g., bank). Id. at 5:20–38. Thus, in this particular example, the SSID (which is not encrypted) identifies the remote data access terminal, for example, the subsystem that scans and sends images at a bank. Nothing about the term “subsystem identification information,” as set forth in the claims or specification, indicates that only the remote data access subsystems can have an SSID; this is merely an example. Accordingly, we construed SSID in a manner that encompassed a preferred embodiment but, because the specification provided no indication that the term should be read more narrowly, we did not limit SSID to the particular embodiment identified by Patent Owner. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “Regarding Petitioner’s improper use of sub-exhibits within an exhibit, we note that, although parties are not permitted to file combined documents as Petitioner has done in Exhibit 1026, see 37 C.F.R. § 42.6(a)(3), exclusion would be too extreme a remedy in this instance, where there is insufficient prejudice to Patent Owner. A more reasonable remedy would be to have Petitioner re-file the documents, but at this late stage of the proceeding, where briefing has closed, there is no compelling reason to have Petitioner re-file the documents.” slip op. at 13

  • BurdenMixed

    “We agree with Petitioner that Campbell discloses a plurality of sending and receiving banks. Ex. 1018, 6:9–14 (describing subscribing and non-subscribing banks using the system). Petitioner, however, relied on the node in Campbell to show the central location limitation of independent claim 26, not the remote bank. Pet. 31. Petitioner does not explain how Campbell describes a plurality of nodes (or, conversely, how the receiving bank describes each feature of the central location). Accordingly, Patent Owner’s observation that Petitioner has failed to address the claim limitations is persuasive. We determine that Petitioner has failed to show by a preponderance of the evidence that Campbell anticipates the subject matter of claim 29.” slip op. at 20

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

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1018, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image for different things. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information that accompan[ies] those images.” Id. at 5:25– 26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed above in our claim construction section, we are persuaded that information that identifies the sending institution is an SSID. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1026, 14 (Petitioner’s expert, Dr. Michalson, testifying that the encrypted information in Campbell identifies the receiving institution). Reviewing the record before us, we are persuaded that Campbell discloses transmitting an encrypted SSID.” slip op. at 17

  Patent outcomesUS 5,910,988 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,910,988

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.