- Cyanotech Corporation v. The Board Of Trustees Of The University Of IllinoisSome claims unpatentablePTAB · Dec 12, 2014 · IPR2013-00404 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–14 and 26 are unpatentable over Grangaud and/or Grangaud with Dowling; claims 15, 21, and 22 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“treating damage caused by injury or disease (Resp. 14–15), however, the specification does not contain any indication that the patentee intended to act as his own lexicographer clearly defining “disease” and “damage” in the same manner. For example, the specification does not clearly convey the patentee’s intent to appoint a special meaning to the phrase “retinal damage or retinal disease.” We must determine, therefore, the ordinary meaning of “disease” and “damage” as used in these claims to one of skill in the art in light of the specification and prosecution history. In re Paulsen, 30 F.3d at 1480. In this regard, the term “damage,” as used in the specification, refers to damage resulting from injury or disease. Ex. 1001, 1:14–19. The specification does not equate damage and disease, but provides that damage may be caused by disease. Id. The meaning of the term disease, however, refers to conditions that may cause damage (such as degenerative eye disease), and are treatable themselves. Id. at 15:36–40. That is, the underlying cause of the damage is treatable, not just the damage alone. The University does not direct our attention to anything in the specification or prosecution that would clearly alter the ordinary meaning of “disease” and “damage.” Resp. 14–16. In view of the above, we do not construe “retinal damage” and “retinal disease” as a single concept. The evidence of record does not support a finding that the patentee acted as his own lexicographer by clearly defining the claim terms “damage” and “disease” in the same manner. In our Decision to Institute, we adopted the dictionary definition of “disease” and construed the term as “[a] morbid entity ordinarily characterized by two or more of the following criteria: recognized etiologic agent(s), identifiable group of signs and symptoms, or consistent anatomic alterations.” Dec. 8–9; see, Pet. ’401 (citing Ex. 1040). We adopted the dictionary definition of “damage” and construed the term as “[h]arm, diminution, or destruction of an organ, body part, system, or function.” Id. We maintain these constructions for “disease” and “damage” as they are consistent with the use of these terms in the Specification. “Retinal damage” refers to damage to the retina and “retinal disease” refers to disease of the retina. The phrase “retinal damage or retinal disease” refers to either retinal damage or retinal disease.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureUnpatentableNot shown unpatentableMixed
“To establish inherent disclosure, the evidence must show that a feature necessarily is described in the reference, and that it would be recognized by persons of ordinary skill. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999); cf. EMI Grp. N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1351 (Fed. Cir. 2001) (“Theoretical mechanisms or rules of natural law that are recited in a claim, that themselves are not patentable, however, do not need to be recognized by one of ordinary skill in the art for a finding of inherency.”). The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Inherency may not be established by probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As to secondary considerations, we note that factual inquiries for an obviousness determination include secondary considerations based on evaluation and crediting of objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Notwithstanding what the teachings of the prior art would have suggested to one with ordinary skill in the art at the time of the University’s invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471-1472 (Fed. Cir. 1984). However, such a conclusion requires the finding of a nexus to establish that the evidence relied upon traces its basis to a novel element in the claim and not to something in the prior art. Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013). All types of objective evidence of nonobviousness must be shown to have nexus. In re GPAC Inc., 57 F.3d at 1580 (nexus generally); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (commercial success); In re Antor Media Corp., 689 F.3d 1282, 1293 (Fed. Cir. 2012) (licensing); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (copying); Rambus Inc. v. Rea, 731 F.3d 1248, 1256 (Fed. Cir. 2013) (long-felt need); and In re Kao, 639 F.3d 1057, 1069 (Fed. Cir. 2011) (unexpected results). As discussed above, we conclude that claims 1, 3, and 8–12 are anticipated by Grangaud, as evidenced by Dowling. Because anticipation is the epitome of obviousness, a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (“[E]vidence establishing lack of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious. In view of the above, we conclude that Cyanotech has demonstrated the unpatentability of claims 1–14 and 26 by a preponderance of the evidence. (2) Claim 15 Claim 15 depends from claim 14. As discussed above, we conclude that the preponderance of evidence of record demonstrates that neuronal damage to a retina is inherent to the condition of vitamin A deficiency-induced xerophthalmia. The question before us with regard to claim 15, however, is whether” slip op. at 24
Patent outcomesUS 5,527,533 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,527,533 - Cyanotech Corporation v. The Board Of Trustees Of The University Of IllinoisSome claims unpatentablePTAB · Dec 12, 2014 · IPR2013-00401 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–14 and 26 are unpatentable as anticipated by Grangaud and obvious over Grangaud alone or with Dowling; claims 15, 21, and 22 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“treating damage caused by injury or disease (Resp. 14–15), however, the specification does not contain any indication that the patentee intended to act as his own lexicographer clearly defining “disease” and “damage” in the same manner. For example, the specification does not clearly convey the patentee’s intent to appoint a special meaning to the phrase “retinal damage or retinal disease.” We must determine, therefore, the ordinary meaning of “disease” and “damage” as used in these claims to one of skill in the art in light of the specification and prosecution history. In re Paulsen, 30 F.3d at 1480. In this regard, the term “damage,” as used in the specification, refers to damage resulting from injury or disease. Ex. 1001, 1:14–19. The specification does not equate damage and disease, but provides that damage may be caused by disease. Id. The meaning of the term disease, however, refers to conditions that may cause damage (such as degenerative eye disease), and are treatable themselves. Id. at 15:36–40. That is, the underlying cause of the damage is treatable, not just the damage alone. The University does not direct our attention to anything in the specification or prosecution that would clearly alter the ordinary meaning of “disease” and “damage.” Resp. 14–16. In view of the above, we do not construe “retinal damage” and “retinal disease” as a single concept. The evidence of record does not support a finding that the patentee acted as his own lexicographer by clearly defining the claim terms “damage” and “disease” in the same manner. In our Decision to Institute, we adopted the dictionary definition of “disease” and construed the term as “[a] morbid entity ordinarily characterized by two or more of the following criteria: recognized etiologic agent(s), identifiable group of signs and symptoms, or consistent anatomic alterations.” Dec. 8–9; see, Pet. ’401 (citing Ex. 1040). We adopted the dictionary definition of “damage” and construed the term as “[h]arm, diminution, or destruction of an organ, body part, system, or function.” Id. We maintain these constructions for “disease” and “damage” as they are consistent with the use of these terms in the Specification. “Retinal damage” refers to damage to the retina and “retinal disease” refers to disease of the retina. The phrase “retinal damage or retinal disease” refers to either retinal damage or retinal disease.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“In view of the above, we conclude that the preponderance of the evidence presented by Cyanotech demonstrates that retinal damage is inherent to the condition of vitamin A deficiency-induced xerophthalmia. Grangaud’s animals were kept on a vitamin A-deficient diet for about 2 months (Ex. 1002, 43), and Dowling supports a conclusion that animals kept on such a diet would have suffered retinal damage. Ex. 1026, 88–89. Dowling also supports a finding that restoration of vitamin A to the diet could reverse the damage caused by a vitamin A deficiency. Id. at 94–96. Grangaud did not administer vitamin A itself, but rather administered astaxanthin. Astaxanthin, however, is capable of being converted to vitamin A in rats, which then would be available to correct the retinal damage caused by a vitamin A-deficient diet, as well as treat ocular lesions resulting from xerophthalmia, thereby improving the vision of the rats. Pet., 14-16; Ex. 1002, 44; Ex. 1033 ¶¶ 42–43 and 51; Ex. 1045, 60 and 160. As such, the inherent action of astaxanthin would have resulted in improved vision in Grangaud’s animal model.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInherency not foundMixed
“In view of the above, we conclude that the preponderance of the evidence presented by Cyanotech demonstrates that retinal damage is inherent to the condition of vitamin A deficiency-induced xerophthalmia. Grangaud’s animals were kept on a vitamin A-deficient diet for about 2 months (Ex. 1002, 43), and Dowling supports a conclusion that animals kept on such a diet would have suffered retinal damage. Ex. 1026, 88–89. Dowling also supports a finding that restoration of vitamin A to the diet could reverse the damage caused by a vitamin A deficiency. Id. at 94–96. Grangaud did not administer vitamin A itself, but rather administered astaxanthin. Astaxanthin, however, is capable of being converted to vitamin A in rats, which then would be available to correct the retinal damage caused by a vitamin A-deficient diet, as well as treat ocular lesions resulting from xerophthalmia, thereby improving the vision of the rats. Pet., 14-16; Ex. 1002, 44; Ex. 1033 ¶¶ 42–43 and 51; Ex. 1045, 60 and 160. As such, the inherent action of astaxanthin would have resulted in improved vision in Grangaud’s animal model.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious. In view of the above, we conclude that Cyanotech has demonstrated the unpatentability of claims 1–14 and 26 by a preponderance of the evidence. (2) Claim 15 Claim 15 depends from claim 14. As discussed above, we conclude that the preponderance of evidence of record demonstrates that neuronal damage to a retina is inherent to the condition of vitamin A deficiency-induced xerophthalmia. The question before us with regard to claim 15, however, is whether” slip op. at 24
Patent outcomesUS 5,527,533 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,527,533 - Respironics, Inc. v. Zoll Medical CorporationSome claims unpatentablePTAB · Sep 17, 2014 · IPR2013-00322 · APJ Scott E Kamholz · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Owen; claims 2, 4, 5, 8, 9, 16, 19, and 20 were not shown unpatentable. The contingent motion to amend was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“cite numerous passages in the ’003 patent, none of these passages serves to define “patient compliance [and use] data” in a manner that justifies disregarding that term. Although the ’003 patent does describe patient compliance data as relating to whether the patient is using the device improperly, or at all (Ex. 1001, 5:49-52), it is used within the context of assessing whether the patient is following (i.e., complying with) instructions. To construe the terms as encompassing any data related to patient use is, therefore, unreasonably broad.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“We focus our analysis on the “means for monitoring and storing” limitation in claims 4 and 19. Claim 4 recites: “means for monitoring and storing operations information of the medical device and patient compliance and use data.” Claim 19 recites: “means for monitoring and storing patient medical parameters, device performance data and patient compliance data.” Respironics argues that the structures disclosed in the ’003 patent as performing the “monitoring” and “storing” functions are a medical device and a memory. Pet. 8. Zoll does not contest this structural correspondence. We maintain our determination that these limitations invoke 35 U.S.C. § 112 ¶ 6, and that the structures corresponding to each of these limitations are a medical device and a memory. We have considered the parties’ arguments and evidence concerning” slip op. at 8
Patent outcomesUS 6,681,003 mixedClaim construction§ 102 anticipationPatents in suitUS 6,681,003 - Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentablePTAB · May 9, 2014 · IPR2013-00048 · APJ Scott E Kamholz · IPR · Final written decision
Claims 5, 13, 17, 29, 33, 37, 45, and 49 are unpatentable; the remaining challenged claims are not shown unpatentable, principally because key material-property limitations were not proved.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The evidence supports a conclusion that the broadest reasonable interpretation of the term “moisture” is liquid water—that is, a condition of 100% relative humidity. The written description uses the term “moisture” in a context that suggests liquid water. See, e.g., Ex. 1001, 28:65-67 (applying a “wax/water slurry” to surface of sample film in order “to retain moisture”); 35:17-18 (applying heat to remove “moisture” from samples, suggesting removal of liquid water). Moreover, where the written description discusses water in vapor form, the inventors use the word “humidity” or “atmospheric moisture,” but not “moisture” alone. See, e.g., id. at 21:47 (referring to “atmospheric moisture”); 28:48, 60, 65 (referring to “humidity”). The ’189 patent further discloses that a “ribbon assembly can be buried under ground or water for long distance connections, such as between cities,” which is consistent with the proposition that an optical fiber coating must endure long periods of immersion in liquid water without delaminating. Ex. 1001, 67:43-45. In light of the context in which the term “moisture” appears in the specification, we conclude that the inventors used that term in its ordinary sense to refer to liquid water. The ’189 patent, thus, is directed to a coating composition that, after radiation cure, has sufficient adhesion to glass to prevent delamination in the presence of liquid water. We decline to resolve what temperature, or length of time of exposure to liquid water the coating must endure, without delaminating, in order to satisfy the claimed adhesion property. Resolving those conditions is not necessary to our analysis, which focuses on whether Corning’s wet adhesion test, conducted under conditions of 95% relative humidity, is probative of the extent to which a cured coating delaminates from glass when exposed to liquid water.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We do not agree with Corning that the ’189 patent defines the term “stripping temperature” as “about 90°C to about 120°C.” Rather, the patent indicates that stripping temperature is “typically” within this range. Ex. 1001, 13:32-34; accord id. at 14:21-25 (“[F]or most coating compositions the design ribbon stripping temperatures are usually about 90° C. to about 120° C., but may be different depending on the specific design parameters for the particular coating composition.”). This disclosure is too imprecise to serve as a definition. See Paulsen, 30 F.3d at 1480. The ’189 patent does refer repeatedly, however, to 90°C as an exemplary stripping temperature. E.g., Ex. 1001, 31:14-15, 31:41-42, 50:55. The ’189 patent also identifies 100°C as an exemplary stripping temperature, particularly in the context of measuring change in length. Id. at 14:46-47, 18:44-45. Whatever other temperatures this term encompasses, it certainly encompasses at least the ones specifically identified. See Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.”). The limitation requires no further construction.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“plots is whether they exhibit a linear region of negative slope. Corning argues that they do, and the description in Exhibit 2015 that a region of the Shustack Example I plot showing a “linear relationship” was used to calculate slope bears out this argument. See Ex. 2015, 1. DSM, in contrast, argues that Corning’s plots lack “a substantially smooth linear region” but offers little evidence to support this assertion beyond Dr. Taylor’s statements that the plots “have no linear region from which to measure a slope” and that they lack any “substantial linear region.” See Resp. 31; Ex. 2032 ¶ 86. Dr. Taylor gives no credible explanation for the basis on which he reaches these conclusions. Even if Dr. Taylor provided some underlying facts or data for this conclusion, Dr. Taylor’s statements do not support DSM’s argument that there is no substantially smooth linear region. As between the conflicting evidence on this point, we credit Corning’s evidence, particularly from Exhibit 2015, in which Corning’s Mr. Gleason identifies the region of linear relationship as extending between displacements of 2.76 mm and 7 mm. DSM does not explain why this determination is invalid. We agree with Corning that the plots for Shustack Example I show a linear region of negative slope from 2.76 mm to 7 mm. To be sure, the signal is noisy, and the plots are jagged, but that does not mean that a linear relationship is not discernible in that region.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundNot shown unpatentable
“For these reasons, we credit Corning’s testing evidence over DSM’s. We are persuaded that Corning has shown that Shustack Example I and Szum ’928 Example 5B each inherently possess a fiber pull-out friction within the scope of every challenged claim. 2. “Sufficient Adhesion” As discussed above in section II.A.1, each of claims 1-4 and 9-12” slip op. at 27
Patent outcomesUS 6,298,189 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,298,189 - Corning Incorporated v. DSM IP Assets B.V.Some claims unpatentablePTAB · May 1, 2014 · IPR2013-00053 · APJ Zhenyu Yang · IPR · Final written decision
Claims 35, 39, 44, and 53-57 are unpatentable as anticipated by Murphy; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Corning’s proposed claim construction of “absorption maximum” as unreasonably broad in light of the Specification. Dec. 6. Based on the language in the Specification, the Board explained that [A]n absorption maximum does not include a “wavelength with the highest absorbance on either side of [the identified valley within the range of 240 and 360 nm]” unless that wavelength is also “a point on the curve wherein the tangent to the curve is parallel with the horizontal axis.” Id. After the institution of the trial, the parties did not further brief this issue. The Board hereby adopts its previous construction.” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedNot shown unpatentableDecided for petitioner
“factual findings. Brown v. Barbacid, 276 F.3d 1327, 1332 (Fed. Cir. 2002). To establish an actual reduction to practice, the inventor must prove that: (1) an embodiment of the invention was constructed that meets all the limitations of the claim-at-issue; and (2) the inventor appreciated that the invention would work for its intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“patent under 35 U.S.C. § 102(e). Pet. 9. According to Corning, examples 8- 13 and a-d of Murphy meet all the limitations recited in claims 35, 39, 44, and 53-57, and thus, anticipate these claims. Id. at 40-46. DSM did not dispute that Murphy meets all the limitations recited in the challenged claims. Nor did it dispute that the effective filing date of Murphy is December 23, 1999. PO Resp. 41. Instead, it contended that Murphy could not qualify as § 102(e) prior art, because the inventors of the ’543 patent made the claimed invention through an actual reduction to practice before December 23, 1999. Id. at 41-55. As evidence, DSM submitted a “Rule 37 C.F.R. § 1.131 Declaration of Timothy E. Bishop,” one of the co-inventors of the ’543 patent. Ex. 2041. DSM also attached Exhibits A, B, and C to the Bishop Declaration as proof to antedate Murphy.4” slip op. at 5
- ExcludeMotion to exclude, deniedDenied
“We find Corning’s arguments unconvincing. Nevertheless, we deny DSM’s Motion to Exclude. Similar to a district court in a bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”). Thus, in this inter partes review, the better course is to have a complete record of the evidence to facilitate public access as well as appellate review. See id. (“If the record on review contains not only all evidence which was clearly admissible, but also all evidence of doubtful admissibility, the court which is called upon to review the case can usually make an end of it, whereas if evidence was excluded which that court regards as having been admissible, a new trial or rehearing cannot be avoided.”).” slip op. at 19
Patent outcomesUS 7,276,543 mixedClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,276,543
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.