• Sports Nutrition Research, Ltd. v. Chemi NutraRehearing denied
  PTAB · Apr 3, 2020 · DER2013-00001 · APJ Jameson Lee · DER · Rehearing

  The Board denied rehearing and left in place its denial of institution because Petitioner showed no abuse of discretion in finding insufficient evidence of derivation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). When rehearing a decision on petition, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. For reasons discussed below, we decline to modify the Decision. Accordingly, the Request for Rehearing is denied.” slip op. at 2

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

    “In essence, Petitioner is arguing that a derivation proceeding should always be instituted no matter how deficient is the initial evidence presented by Petitioner in the Petition, because both Petitioner and Respondent can submit evidence after institution of trial. We disagree. In the above-quoted argument, Petitioner is referring to hypothetical evidence “to be” developed during trial. We cannot make a decision on whether to institute trial based on non-existent evidence. We properly reviewed the evidence submitted by Petitioner and determined that that evidence does not meet the substantial evidence standard for instituting a derivation proceeding.” slip op. at 5

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner

    “The constitutional arguments are without merit. The Federal Circuit has held that there is “no constitutional infirmity in [an] institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314.” Arthrex, 941 F.3d at 1340. Arthrex’s reasoning likewise applies to derivation proceedings under the AIA. See 35 U.S.C. § 135(a)(1). The Decision will not be vacated. Nor will a new panel be appointed.” slip op. at 11

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

    “of the MPEP. Paper 17, 4. These authorities, however, articulate general principles and do not support Petitioner’s assertion that the specific wherein clause at issue here represents merely an intended result and thus should not be accorded weight in determining patentability. Indeed, in Hoffer, the Court upheld the district court’s reading of the “whereby clause” at issue there as an actual limitation and not merely an intended result.3 Hoffer, 405 F.3d at 1330. “[W]hen the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. at 1329.” slip op. at 9

  Claim construction
  Patents in suitUS 10,869,843
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-00440 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4, 6–7, 10–16, 18, and 20 are unpatentable; claims 5 and 8 are not shown unpatentable. Substitute claims 21, 30, and 38 are unpatentable as obvious over Sackier and Kirsch.

  RulingsFinal written decision

  • Expert testimonyOther

    “3. Dr. Nicosia’s Declaration in support of its Opposition to Patent” slip op. at 7

  • Skill levelOther

    “B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the” slip op. at 16

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

    “B. “clip” The Parties now agree that “clip,” as the term is generally understood,” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed

    “as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We conclude that Petitioner has not met its burden of showing this element to be present in Sackier because Petitioner combines features from distinct embodiments in Sackier without establishing persuasively that those embodiments are so directly related to each other such that one of ordinary skill in the art, looking at the reference as a whole, would recognize a disclosure of the invention as claimed. Accordingly, although a very close call, we conclude that Petitioner has failed to demonstrate anticipation of claims 1, 12, and 20 by Sackier for this reason.” slip op. at 21

  Patent outcomesUS 9,271,731 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,271,731
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.No claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-00435 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4, 6–18, and 20 were not shown unpatentable over Malecki; the contingent motion to amend was denied as moot.

  RulingsFinal written decision

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

    “construction more persuasive because it is grounded in, and most consistent with, the specification of the ’731 patent. Contrastingly, Petitioner does not offer a specific interpretation of “inner walls” and its arguments are generally based on extrinsic evidence, including claim charts from the related district court litigation (Pet. 15), arguments from related proceedings (Pet. Reply 3), and the prior art reference (Malecki) relied on to challenge the claims (id. at 3–4). Petitioner criticizes the Patent Owner’s position but provides no express interpretation of “inner walls of the first and second clip arms;” instead, Petitioner argues why Patent Owner’s proposed construction is wrong. Pet. Reply 4–5. Dr. Nicosia does not expressly define or otherwise persuasively explain the definition of “inner walls” in his declarations either. See generally Exs. 1037, 1095, and 1109.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the time of the filing of the application that became the ’731 patent would have possessed the knowledge and skill of an engineer or similar professional 5 The parties have not introduced evidence of secondary considerations in this proceeding. with at least an undergraduate degree in engineering, or a physician having experience with designing medical devices. Pet. 10 (citing Ex. 1037 ¶ 11). Patent Owner does not dispute Petitioner’s proposal, and we adopt it based on the final record before us. It is also consistent with the level of skill evidenced by the references.” slip op. at 15

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Based on the final trial record, including our interpretation of “inner walls of the first and second clip arms” to mean “the exterior surfaces of the first and second clip arms that are inward-facing relative to the longitudinal axis of the clip,” Petitioner has not persuasively established that Malecki Embodiment #1 discloses this limitation. We find persuasive the testimony of Dr. Vaitekunas, that “[t]he jaws of Malecki Embodiment #1 have four walls,” and a person of ordinary skill in the art “would understand Figure 28A to illustrate links 404, 406 connecting to the side walls of jaws 308C, 310C on the side or lateral wall opposite (or underneath) the one shown in Figure 28A.” Ex. 2010 ¶¶ 66, 68. We agree with Dr. Vaitekunas that a person of ordinary skill in the art would not consider side or lateral walls as “inner walls” under the broadest reasonable interpretation of that term. Thus, the portion of the jaw identified by Petitioner as shaded in green (Pet. 26) is a portion of the side/lateral wall, not an inward-facing wall. See Ex. 2010 ¶ 68. Petitioner has also not persuasively established that linkages 404, 406 contact any outside portion of the inner wall. As noted by Patent Owner above, Petitioner’s expert admits that Malecki does not disclose links 404, 406 contacting the radially inward-facing walls. See Ex. 2012 at 274:12–23. We also do not find persuasive Petitioner’s pin engagement theory. First, neither Petitioner nor Dr. Nicosia persuasively establish that a slot and pin channel (Pet. 15) is used in Malecki Embodiment #1. See Ex. 1095 ¶ 27. As pointed out by Dr. Vaitekunas, Petitioner’s theory that an engagement between a pin and a pin hole satisfies the “engaging the inner walls of the first and second clip arms” limitation is based on structure that is simply not disclosed in Malecki. Ex. 2010 ¶ 69. Further, we agree with Dr. Vaitekunas that “[e]ven if contact does occur between a pin and a pinhole, the contact occurs in the pin hole, not the exterior surface of a radially inward-facing wall.” Id.” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Based on the final trial record, including our interpretation of “inner walls of the first and second clip arms” to mean “the exterior surfaces of the first and second clip arms that are inward-facing relative to the longitudinal axis of the clip,” Petitioner has not persuasively established that Malecki Embodiment #1 discloses this limitation. We find persuasive the testimony of Dr. Vaitekunas, that “[t]he jaws of Malecki Embodiment #1 have four walls,” and a person of ordinary skill in the art “would understand Figure 28A to illustrate links 404, 406 connecting to the side walls of jaws 308C, 310C on the side or lateral wall opposite (or underneath) the one shown in Figure 28A.” Ex. 2010 ¶¶ 66, 68. We agree with Dr. Vaitekunas that a person of ordinary skill in the art would not consider side or lateral walls as “inner walls” under the broadest reasonable interpretation of that term. Thus, the portion of the jaw identified by Petitioner as shaded in green (Pet. 26) is a portion of the side/lateral wall, not an inward-facing wall. See Ex. 2010 ¶ 68. Petitioner has also not persuasively established that linkages 404, 406 contact any outside portion of the inner wall. As noted by Patent Owner above, Petitioner’s expert admits that Malecki does not disclose links 404, 406 contacting the radially inward-facing walls. See Ex. 2012 at 274:12–23. We also do not find persuasive Petitioner’s pin engagement theory. First, neither Petitioner nor Dr. Nicosia persuasively establish that a slot and pin channel (Pet. 15) is used in Malecki Embodiment #1. See Ex. 1095 ¶ 27. As pointed out by Dr. Vaitekunas, Petitioner’s theory that an engagement between a pin and a pin hole satisfies the “engaging the inner walls of the first and second clip arms” limitation is based on structure that is simply not disclosed in Malecki. Ex. 2010 ¶ 69. Further, we agree with Dr. Vaitekunas that “[e]ven if contact does occur between a pin and a pinhole, the contact occurs in the pin hole, not the exterior surface of a radially inward-facing wall.” Id. Finally, Petitioner seems to recognize that a modification would be” slip op. at 25

  Patent outcomesUS 9,271,731 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,271,731
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Nov 15, 2018 · IPR2017-00135 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1, 3–5, and 10 are unpatentable as obvious over Kimura (claims 1, 3–5) and Kimura with Sackier (claim 10); claims 7, 11–15, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the time of the filing of the application that became the ’371 patent would have possessed the knowledge and skill of an engineer or similar professional with at least an undergraduate degree in engineering, or a physician having experience with designing medical devices. Pet. 8 (citing Ex. 1029 ¶ 11). Patent Owner does not dispute Petitioner’s proposal, and we adopt it for purposes of this Decision.” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “The issue we have with Patent Owner’s contentions, as pointed out by Petitioner, is that Patent Owner does not establish persuasively how its claims require the “reversible open/close” feature and the “tactile feel features.” See Pet. Reply 27–29. Even presuming that these features did indeed drive tremendous commercial success and industry praise for the commercial products, Patent Owner does not adequately explain in its analysis how the claims of the challenged patent require these particular features that drive commercial success. Patent Owner seems to suggest that a break section in the control wire will fracture and that this feature in the commercial product relates to the tactile feel. PO Resp. 57 (citing Ex. 2029 ¶¶ 91–93) (“After the yoke has disengaged, if the handle spool is moved further proximally, a break section in the control wire will fracture, leaving the ball within the yoke and uncoupling the control wire from the distal components of the device.”). This “break section in the control wire” is not, however, claimed or covered in claim 1, the claim that purportedly embodies the commercial product. The claims alleged to cover the product do not specifically require any “tactile feel feature.”3 Likewise, while the claims may allow for an opening and closing of the clip assembly, there is no requirement in these claims that the clip assembly, as “demanded” by physicians, repeatedly open and close. Thus, both of the drivers of commercial success and industry praise are not commensurate in scope with the claims of the patented invention. See Ex. 1046 ¶¶ 23–29 (explaining how features are not claimed).” slip op. at 16

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

    “district court proceeding, Petitioner contends that “coupled to the sheath” means “slideable inside the sheath” and “the sheath confines the bushing.” Pet. 9. Petitioner provides no additional support. The district court tentatively rejected this broad interpretation. See Ex. 2003, 27–28 (“[T]he Court recommends that ‘coupled to the sheath’ be construed as ‘linked together, connected, or joined, but not slidable inside the sheath.’”). Patent Owner contends that Petitioner’s proposed construction of “coupled to the sheath” is “unreasonably broad,” but provides little citation to the intrinsic record before us. Prelim. Resp. 13–14. Instead, Patent Owner notes that the plain and ordinary meaning of coupled is “linked together, connected, or joined,” citing to an unrelated Federal Circuit decision as well as the related district court determination. Id. at 14; Ex. 2003, 28. In our proceeding, Petitioner has not provided persuasive evidence or argument to support its claim interpretation by merely pointing to what Patent Owner purportedly argued in district court. Based on the final record before us, “coupled to the sheath” means “linked together, connected, or joined” to the sheath. Our construction is consistent with the district court’s analysis and reflects the common understanding of the term “coupled” in the mechanical arts to require more than simply abutting or contacting. See generally Ex Parte Paul Robert Homrich, Appeal 2014-005786, 2016 WL 3541285, at *3 (PTAB, June 27, 2016) (“When used in mechanical systems, the plain and ordinary meaning of ‘coupled’ means to link together or connect,” and coupled requires more than contact or abut.).” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We are not persuaded that Petitioner has demonstrated sufficiently that Adams discloses “a bushing extending between a proximal end coupled to the sheath,” (Ex. 1027, 17:4–5) as required by claim 1 of the ’371 patent. Based on the final record, Petitioner’s contention that retainer 110 [bushing] is slidable inside the sheath, or confined by the sheath, does not establish persuasively that the proximal end of the bushing is coupled to the sheath as required by claim 1. The claimed coupling must be “proximal coupling” and Petitioner can only point to distal coupling via distal tabs 118, 119 (Pet. Supp. Reply 6) – this is not “proximal” coupling. Further, for the bushing and the sheath to be coupled requires them to be “linked together, connected, or joined” in some manner and Petitioner has not established any such connection for proximal coupling. Petitioner also has failed to establish a persuasive reason for linking or connecting retainer 110 and sheath 112 – indeed, doing so would negatively impact the ability of retainer 110 to freely slide out of sheath 112. See Prelim. Resp. 27. Adams suggest that when control wire 108 is actuated and the clip is locked into the lock sleeve, retainer release 109 pulls retainer 110 back, disengaging retainer tabs 118, 119 from the two retainer holes as depicted in Figure 4.” Ex. 1023, 7:26–44 Finally, we note that our decision would not change if we adopted the district court’s claim interpretation. The district court adopted a claim construction of “a bushing extending between a proximal end coupled to the sheath” as “linked together, connected, or joined, but not slidable inside the sheath.” Ex. 2003, 28 (emphasis added). Should the district court’s interpretation be the correct one, Patent Owner’s position is much stronger whereas Petitioner’s theory is based on slidable movement. See Pet. 9 (arguing for “slideable inside the sheath” and “the sheath confines the bushing”); Pet. Supp. Reply 6. Having now considered the evidence in the complete record established during trial, we are not persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 1 would have been anticipated by Adams. Petitioner has not established persuasively that Adams discloses “a bushing extending between a proximal end coupled to the sheath.” For this reason, Petitioner has failed to prove by a preponderance of the evidence that Adams anticipates claim 1.” slip op. at 22

  Patent outcomesUS 8,974,371 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,974,371
• Hyperbranch Medical Technology, Inc. v. Incept LLCAll claims unpatentable
  PTAB · Apr 9, 2018 · IPR2016-01836 · APJ Kristi L R Sawert · IPR · Final written decision

  Claims 1–6 and 8–12 are unpatentable as obvious under § 103 over Rhee ’500 or Rhee ’587, each combined with Bass or Tse.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Upon review of the parties’ respective definitions of a person of ordinary skill in the art, we adopt Petitioner’s definition as a person with either: (1) a Ph.D. in the field of chemistry, polymer chemistry, chemical engineering, materials science and/or a related field and having at least one year of educational or work experience in the synthesis and development of biocompatible polymer materials; (2) a bachelor’s degree in in [sic] the field of chemistry, polymer chemistry, chemical engineering, materials science and/or a related field and at least two years of work experience in the synthesis and development of biocompatible polymer materials; or (3) any education and experience equivalent to (1) or (2). Pet. 22 (citing Ex. 1003 ¶ 49). We find that Patent Owner’s definition of the ordinarily skilled artisan, i.e., a person having “a Ph.D. degree, or equivalent education, in polymer chemistry, or a bachelor of science degree in chemistry or a closely related field and several years of experience in the development and manufacture of polymer materials for use as tissue sealants,” PO Resp. 15–16 (citing Ex. 2006 ¶ 27), does not differ materially from Petitioner’s definition. Furthermore, our analysis would be the same under either parties’ definition.” slip op. at 9

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

    “1. “visualization agent” In its Petition, Petitioner proposed interpretations of certain claim terms. Pet. 18–22. The Board determined in its Institution Decision, however, that only the term “visualization agent” required express interpretation. Inst. Dec. 8 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). The Board set forth the broadest reasonable interpretation of “visualization agent” as “an agent that reflects or emits light at a wavelength detectable to a human eye so that a human eye may visualize the hydrogel coating.” Id. at 9. Neither party challenges that interpretation. See, e.g., Third Tr. 6:15–17. We have reassessed that determination in light of the arguments and evidence adduced at trial, and maintain that determination based on the full record.” slip op. at 11

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

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quotation omitted). “Conversely, a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Id. Here, we determine that the preamble phrase “suitable to coat a tissue of a patient” is not merely a statement of purpose, but instead represents the “essence or a fundamental characteristic of the claimed invention.” Vizio, Inc. v. Int’l Trade Com’n, 605 F.3d 1330, 1340 (Fed. Cir. 2010). In Vizio, the Federal Circuit held that a preamble reciting “for decoding” certain data “is properly construed as a claim limitation” because the apparatus and method claims reciting that preamble “would have little meaning without the intended objective of decoding.” Id. at 1341. Similarly here, we determine that the method step of claim 1—namely, mixing reactive nucleophilic precursor species, electrophilic precursor species, and a visualization agent—would have little meaning without the intended objective of forming a hydrogel coating on the tissue of a patient. Put differently, there would be no reason to perform the method step of claim 1 but for forming a hydrogel coating on the patient’s tissue. See Ex. 1001, 39:56–40:2 (claim 1) (providing that the reactive precursors crosslink after contact with the tissue to form a hydrogel in the form of a coating). Thus, we determine that “suitable to coat a tissue of a patient” is limiting in this case because it gives “life and meaning” to method claim 1. We further find that the arguments and evidence in this case show that skilled artisans would reasonably interpret “suitable to coat a tissue of a patient” as encompassing a biocompatibility requirement. Although Petitioner correctly notes that “[n]one of challenged claims recite the term ‘biocompatible,” Petitioner acknowledges that skilled artisans understand “that hydrogels are, by their nature as water-swelled materials, known to be biocompatible.” Pet. Suppl. Br. 4–5. Petitioner’s expert, Dr. Lowman, declared that “biocompatibility is presumed as a fundamental aspect of the claimed and disclosed inventions.” Ex. 2018 ¶ 40. And in his deposition, Dr. Lowman testified that skilled artisans would understand “biocompatible” to mean that the hydrogel composition is “suitable for use and tolerated by a patient.” Ex. 2019, 13:2–11 (emphasis added). Thus, we agree with Patent Owner that “suitable to coat a tissue of a patient” reasonably encompasses a biocompatibility requirement for the hydrogel composition. slip op. at 12

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

    “3. Motivation to combine the prior art references and reasonable expectation of success Even “[i]f all elements of the claims are found in a combination of prior art references,” “the factfinder should further consider whether a person of ordinary skill in the art would [have been] motivated to combine those references, and whether in making that combination, a person of ordinary skill would have [had] a reasonable expectation of success.” Merck & Cie v. Gnosis S.P.A., 808 F.3d 829, 833 (Fed. Cir. 2015). The “motivation to combine” and “reasonable expectation of success” factors are subsidiary requirements for obviousness subsumed within the Graham factors. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007).” slip op. at 28

  Patent outcomesUS 7,009,034 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,009,034
• Argentum Pharmaceuticals LLC v. Cipla Ltd.Rehearing denied
  PTAB · Oct 31, 2017 · IPR2017-00807 · APJ Kristi L R Sawert · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in declining to construe the terms or in reserving disputed motivation and reasonable-expectation issues for trial.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We are not persuaded that the Board abused its discretion by declining to expressly interpret “nasal spray” and “suitable for nasal administration” in the Institution Decision. As the Board explained in the Institution Decision, Petitioner showed sufficiently for the purpose of institution that the prior art teaches pharmaceutical compositions in the form of nasal sprays. Instit. Dec. 14. Specifically, the Board found that the prior-art references explicitly teach nasal sprays that are administered nasally. See id. (citing Ex. 1007 (Hettche), 1:28–30, 2:12–17, 41–43), 15 (citing Ex. 1009 (Phillips), 32:57– 60, 33:12–14). Patent Owner does not allege its proposed construction of “nasal spray” and “suitable for nasal administration” is different from the plain and ordinary meaning of those terms to an ordinarily skilled artisan. Id. at 4–6; see also Prelim. Resp. 9–11. As a consequence, we are not persuaded that the Board overlooked or misapprehended this matter or that the Board would have declined institution on the obviousness grounds had it explicitly adopted Patent Owner’s proposed interpretation.” slip op. at 4

  • Expert testimonyOther

    “osmolality, poor spray quality, and unacceptable settling and caking” resulting from the attempted formulation of Cramer’s Example III. Id. at 8– 10; see also Prelim. Resp. 25. The Board, however, addressed those issues in the Institution Decision and determined that “Patent Owner’s arguments and expert testimony highlight disputed issues of fact about whether the skilled artisan would have been motivated to combine the teachings of Hettche, Phillipps, and Segal to arrive at the claimed subject matter, and would have had a reasonable expectation of success.” Instit. Dec. at 20 (citing Ex. 1002, 268–87; Ex. 2007 ¶¶ 40–47; Ex. 2111, 1; Ex. 2044, 1–2). The Board concluded that those “issues are best resolved following trial with the benefit of a full record.” Id. We are still of that view. Accordingly, we are not persuaded that the Board misapprehended or overlooked the issue of reasonable expectation of success.” slip op. at 5

  • BurdenOther

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review 1 Helmut Hettche, U.S. Patent No. 5,164,194 (Nov. 17, 1992) (“Hettche”). Ex. 1007. 2 Gordon H. Phillipps, et al., U.S. Patent No. 4,335,121 (Jun. 15, 1982) (“Phillipps”). Ex. 1009. 3 Catherine A. Segal, Int’l Publication No. WO 98/48839 (Nov. 5, 1998) (“Segal”). Ex. 1012. 4 FLONASE® (fluticasone propionate) Nasal Spray, 50 mcg Product Information (Dec. 1998) (“Flonase Label”). Ex. 1010. the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “In the Institution Decision, the Board determined that “no claim term requires express interpretation for purposes of this Decision.” Instit. Dec. 7. In its Rehearing Request, Patent Owner argues that the Board “misapprehended or overlooked the importance of construing the terms ‘nasal spray’ and ‘suitable for nasal administration’” found in all the challenged claims. Reh’g Req. 2. In particular, Patent Owner asserts that those terms mean “pharmaceutical formulations that are tolerable to patients, homogeneous, and can be suitably deposited onto the nasal mucosa.” Id. (citing Paper 7, Preliminary Response (“Prelim. Resp.”), 9). Patent Owner alleges that, had the Board construed “nasal spray” and “suitable for nasal administration,” then the Board would have denied the obviousness grounds because “none of the combinations of cited art teach a person of ordinary skill in the art how to make the claimed fixed-dose combination ‘nasal spray’ or formulation ‘suitable for nasal administration’ with a reasonable expectation of success.” Id. at 2–3 (citing Prelim. Resp. 9). We are not persuaded that the Board abused its discretion by declining to expressly interpret “nasal spray” and “suitable for nasal administration” in the Institution Decision. As the Board explained in the Institution Decision, Petitioner showed sufficiently for the purpose of institution that the prior art teaches pharmaceutical compositions in the form of nasal sprays. Instit. Dec. 14. Specifically, the Board found that the prior-art references explicitly teach nasal sprays that are administered nasally. See id. (citing Ex. 1007 (Hettche), 1:28–30, 2:12–17, 41–43), 15 (citing Ex. 1009 (Phillips), 32:57– 60, 33:12–14). Patent Owner does not allege its proposed construction of “nasal spray” and “suitable for nasal administration” is different from the plain and ordinary meaning of those terms to an ordinarily skilled artisan. Id. at 4–6; see also Prelim. Resp. 9–11. As a consequence, we are not persuaded that the Board overlooked or misapprehended this matter or that the Board would have declined institution on the obviousness grounds had it explicitly adopted Patent Owner’s proposed interpretation.” slip op. at 3

  Claim construction§ 103 obviousness
  Patents in suitUS 8,168,620
• Coherus Biosciences Inc. v. Abbvie Biotechnology Ltd.All claims unpatentable
  PTAB · Jun 9, 2017 · IPR2016-00188 · APJ Toni R Scheiner · IPR · Final written decision

  Claims 1–4 are unpatentable as obvious over van de Putte and Kempeni because the prior art supplied motivation and a reasonable expectation of success for the claimed dosing regimen.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “art as of June 8, 2001—the priority date of the ’135 patent, of which the ’680 patent is a continuation. Petitioner and Dr. Baughman explain that a skilled artisan would possess the skill sets of both a physician treating RA patients and a pharmacokineticist with experience in monoclonal antibodies. Pet. 28; Ex. 1006 ¶ 15; Ex. 1007 ¶ 12, 13. Dr. Baughman describes the ordinarily skilled physician as an M.D. with at least three years of experience treating RA patients, including with one or more anti-TNFα biologic agents. Ex. 1006 ¶ 15; see Pet. 28; Ex. 1007 ¶ 12 (Dr. O’Dell agreeing with Dr. Baughman’s definition of the skilled physician). Dr. Baughman describes the ordinarily skilled pharmacokineticist as having a Ph.D. in pharmacokinetics or a related field, and at least three years of experience with the pharmacokinetics and pharmacodynamics of biologic agents, either in industry or academia. Ex. 1006 ¶ 15; see Pet. 27. Patent Owner’s experts Dr. Gibofsky and Dr. Vinks apply Petitioner’s and Dr. Baughman’s description of the ordinary artisan. Ex. 2065 ¶¶ 53–54; Ex. 2069 ¶¶ 101– 103. We adopt that description of the level of ordinary skill in the art, because it is the description that both parties have applied in this proceeding and it is reflected by the prior art of record.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). On the other hand, “a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Here, the steps of the method, dosage amount, timing, route of administration, and active component are all specified in the body of the claim. The phrase “reducing the signs and symptoms of rheumatoid arthritis,” therefore, merely recites an intended use. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (statements of intended use typically do not limit the scope of a claim because they “usually do no more than define a context in which the invention operates”). Stated another way, the claims do not expressly recite any particular level of efficacy, meaningful or otherwise. Rather, the claims require administering the antibody in a particular dosage amount, by a particular route, at a particular interval—to a patient with moderately to severely active rheumatoid arthritis.” slip op. at 8

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

    “2. “40 mg dosage unit form” According to the ’680 patent, “dosage unit form” “refers to physically discrete units suited as unitary dosages for the mammalian subjects to be treated; each unit containing a predetermined quantity of active compound[.]” Ex. 1001, 23:9–12. Petitioner contends, “[b]ased upon this definition, a ‘40 mg dosage unit’ form would encompass a syringe filled with 40 mg of D2E7.” Pet. 17.” slip op. at 9

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

    “Patent Owner does not challenge Petitioner’s showing that the prior art discloses each element of claims 1–4. See generally PO Resp. Based on the full trial record, we determine that van de Putte and Kempeni collectively disclose each limitation of the challenged claims. That is, we agree with Petitioner that van de Putte discloses all of the elements of claims 1–4, with the exceptions of biweekly dosing, and administering the antibody in combination with methotrexate. As explained above, van de Putte discloses a study in which RA patients received weekly doses of 20, 40, or 80 mg of D2E7, or placebo, via subcutaneous self-administration over the course of three months. Ex. 1004, 1. D2E7, therefore, was administered in a pharmaceutically acceptable composition, in unit dosage form. Id. Further, D2E7 is a known recombinant human anti-TNFα antibody having the six CDRs and heavy chain constant region required by claims 1–4, and the amino acid sequences for the variable light and variable heavy chain regions required by claims 2 and 4. Ex. 1001, 3:40–42 (explaining that D2E7 is “described in U.S. Pat. No. 6,090,382, incorporated in its entirety herein by reference”); see Ex. 1008, 2:59–67. Petitioner also shows, by a preponderance of the evidence, that Kempeni accounts for the differences between van de Putte and the recited biweekly dosing frequency required by all of the challenged claims, as well as administering the antibody with methotrexate. Specifically, Kempeni describes a study in which patients received D2E7 via intravenous injection every two weeks for at least 6 months (i.e., 24 weeks), and also teaches that “D2E7 is safe and effective . . . in combination with methotrexate when administered by single and multiple intravenous and subcutaneous injections.” Ex. 1003, 2, 3.” slip op. at 15

  Patent outcomesUS 9,017,680 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,017,680
• Orstar Industrial Co., Ltd. v. Cosmo Lighting Inc.All claims unpatentable
  PTAB · Jan 13, 2017 · IPR2015-01787 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over Popovich and Lin-US, and over Popovich, Lin-US, and Lin-CN.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For the foregoing reasons, we are not persuaded that the level of ordinary skill in the art requires specific experience in the packaging of optoelectronic devices as is argued by Patent Owner. We also are not persuaded that the level of ordinary skill in the art requires education in the form of a Master Degree in Material Sciences, Electrical Engineering, or Mechanical Engineering, as is argued by Patent Owner. Instead, we are persuaded by Petitioner’s statement of the level of ordinary skill in the art, and our finding of the level of ordinary skill is similar to that proposed by Petitioner, but with a slight modification, i.e., that a basic level of technical education is required, at the level of an Associate Degree (two year college program) in Physics, Electrical Engineering, Mechanical Engineering, or Industrial Engineering. We find that the level of ordinary skill in the art is that of one having at least an Associate Degree or Bachelor’s Degree in Physics, Mechanical Engineering, Electrical Engineering, or Industrial Engineering, plus 1–4 years of working experience with semiconductor electronic device packaging or printed wiring board assembly. A more advanced degree would be paired with a shorter period of working experience.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Patent Owner has not articulated a persuasive reason for giving Dr. Pugliandla’s testimony little or no weight. Petitioner submits other evidence contrary to Dr. Denbaars unsupported assertion that LED’s are never encapsulated in glass. Reply 8 (citing Ex. 1022). For example, Exhibit 1022 is a journal article, dated 2006 and titled “Optical characteristics of spherical glass encapsulated LEDs.” Ex. 1022, Title. Moreover, as discussed above, we are not persuaded that a person of ordinary skill in the art of the ’978 patent would be required to have specific experience in the packaging of optoelectronic devices as opposed to electronic packaging in general. We are, thus, not persuaded that Dr. Pugliandla’s answers, during deposition, to two questions about the material used for transparent encapsulation is wrong or that the entirety of his testimony should be given little or no weight based on this disagreement. In fact, Dr. Pugliandla is highly qualified in the area of electronic packaging. Dr. Pugliandla has several degrees, including a Ph.D. in chemistry. Reply 8–9; Ex. 1002 ¶ 9. He spent many years working in the areas of electronic packaging and surface mount technology, has taught courses in electronic packaging, and has served as a member of the Board of Directors for the National Surface Mount Technology Association. Id. at ¶¶ 12–18. We are persuaded that Dr. Pugliandla’s education and experience is relevant to the issues discussed in the ’978 patent. Moreover, given the subject matter of the ’978 patent and Dr. Pugliandla’s experience in electronic packaging, we do not find his admitted lack of direct experience in optoelectronic device packaging (see Ex. 2002, 38:15–22) as basis to accord his testimony little or no weight. On this record, we still credit the testimony of Dr. Pugliandla over the contrary testimony of Dr. Stephen P. Denbaars (Dr. Denbaars)6 about whether glass is commonly used as transparent material to encapsulate LEDs or never used to encapsulate LED. An expert does not have to have direct hands-on design experience on a subject to know what existed as a common technique on that subject.” slip op. at 12

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

    “C. Claim Construction We construe all terms, whether or not expressly discussed here, using the broadest reasonable construction in light of the ’978 patent specification. 37 C.F.R. § 42.100(b). For purposes of the Institution Decision, we expressly construed the following terms: (1) “contact-pad area” as “an opening in an insulating layer of a conducting wire where electrical contact can be made”; and (2) “encapsulating” as “enclosing.” Decision 8–15. In the post-institution briefs, Patent Owner disputes only the construction of “encapsulating.” For purposes of this decision, therefore, we continue to apply the construction of “contact-pad area” as set forth above and we address the construction of the term “encapsulating” below. We construe all other terms using the broadest reasonable construction in light of the ’978 patent specification.” slip op. at 14

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

    “Thus, the only relevant question is whether we should append the phrase “on all sides” to our construction. We are not persuaded that encapsulating components requires that each and every side of the components be surrounded by encapsulating material. In other words, when only a subset of surfaces of a device is exposed to the environment, the plain and ordinary meaning of encapsulate would include covering only those exposed surfaces with encapsulating material. The ’978 patent supports this understanding by describing the process of encapsulating the components in Figure 6 as “a layer of transparent package 5 is further applied to an outer side of every paired first and second contact-pad areas 13, 23 on the first and second conducting wire 1, 2 and the surface mounted light emitting component 3 bonded thereto . . . .” Ex. 1001, 4:63–5:15 (emphasis added). This understanding is also consistent with the ’978 patent’s stated goal of encapsulation, preventing the components “from electrically contacting with an external environment,” “protect[ing] the surface mounted light emitting components 3 against failure due to contacting with external dust and particles,” and strengthening the connections by “protecting . . . against damage and separation . . due to external impact.” Id. Ex. 1002 ¶ 46 (“The use of encapsulating materials to [improve the ruggedness and reliability] is a common practice in the electronic assembly industry, and was commonly practiced for decades prior to the critical date of the ’978 patent.”); see also, Ex. 2001 ¶¶ 65–67 (Dr. Denbaars testifying that without full enclosure, a device would not be protected from the environment); Ex. 2002, 46:4–19 (Dr. Puligandla testifying similarly). The relevant components are fully protected from the external environment when the surfaces exposed to such environment are covered by encapsulating material. We, therefore, continue to give the term “encapsulating” its plain and ordinary meaning: enclosing the exposed surfaces of the recited components. We do not construe the term encapsulating, however, to require covering all component surfaces by encapsulating material.” slip op. at 15

  Patent outcomesUS 7,926,978 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,926,978
• Geosys-Intl, Inc. v. Farmers Edge Precision Consulting Inc.Some claims unpatentable
  PTAB · Aug 17, 2016 · IPR2015-00709 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–24 are unpatentable as obvious; Petitioner did not show claim 25 would have been obvious.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s declarant, Dr. Johannsen, testifies that a person of ordinary skill in the field of this invention “would have had at least a Bachelor of Science degree in Agricultural Systems Management, Agriculture, Agronomy, or a related degree and would have had several years of experience with precision farming.” Ex. 1009 ¶ 16. Patent Owner’s declarant, Dr. Heiniger, testifies that a person of ordinary skill in this field would have “at least a Bachelor of Science degree in agronomy or a related field, and at least a Masters Degree in a discipline that involves engineering systems using remote sensing data or comparable work experience. Such a person would have had some practical experience integrating these remote sensing systems.” Ex. 2033 ¶ 18; see also PO Resp. 26 (same). Although Dr. Heiniger’s position is not exactly the same as Dr. Johannsen’s, Dr. Heiniger adds that the “[d]ifferences between who Dr. Johannsen and I view as a person of ordinary skill in the art are not material to my opinions . . . .” Ex. 2033 ¶ 19. The differences between Dr. Johannsen’s and Dr. Heiniger’s articulations of the level of ordinary skill in the art are fairly minor. Our analysis below, including the conclusions we reach, would be substantially the same under either proposal. Nevertheless, after considering the evidence of record, we adopt Dr. Heiniger’s definition of the level of ordinary skill in the art.” slip op. at 8

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

    “In the Decision to Institute, we construed the phrase “calculating a map”5 in claims 1, 6, 8, 13, 15, 17–19, and 24 to mean “performing calculations to produce a map.” Dec. to Inst. 7. With respect to the phrase “maximum possible crop yield” in claims 1, 8, and 15, we declined to adopt Petitioner’s proposed construction of “yield goal” and instead applied the ordinary and customary meaning of the claim language. Id. at 8–9. We further determined that no other claim term required express construction. Id. at 9. Following institution, neither party challenged those constructions or proposed other terms for construction. Therefore, for the reasons explained in the Decision to Institute, we maintain the constructions set forth therein. 5 We understand the phrase “calculating a map” to have the same construction, regardless of whether it appears as “calculating . . . a map,” “calculate . . . a map,” or “calculating a map.”” slip op. at 6

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

    “calculating nitrogen needs for a field.” Ex. 1001, 1:39–40. Hauwiller’s system is open to a variety of recommendation equations, as Patent Owner’s declarant agrees. See Ex. 1006, 8:36–48, 9:18–21, 9:34–38, 13:30–35, 13:39–45; Ex. 1020, 8:11–16. This openness supports the obviousness of employing within Hauwiller’s system a conventional equation (or certain aspects of a conventional equation) such as the one set forth in the Background of the ’912 patent. Further, while the conventional equation includes several variables, a basic teaching of the equation is that in calculating the fertilizer recommendation, the amount of nitrogen already present should be subtracted from the nitrogen needed to realize the yield goal. See Ex. 1001, 1:39–50. Dr. Johannsen’s testimony that “subtraction of existing nutrients from the nutrient amount was a conventional thing to do particularly because it helps reduce leaching due to over fertilization” is consistent with this understanding of the conventional equation. See Ex. 1009 ¶ 71. We also recognize that the ’912 patent describes the equation as being a conventional approach for calculating nitrogen needs “for a field” rather than for a specific site within the field. Ex. 1001, 1:39–40. But Hauwiller recognizes that “[d]esired yield potential varies depending upon the soil characteristics by location” and, for that reason, describes the desirability of constructing “a yield goal map for creating an application map based upon site specific yield goals.” Ex. 1006, 9:32–41 (emphasis added). Thus, Hauwiller teaches the advantages and desirability of a site specific approach. We agree with Petitioner that the “subtracting” step would have been obvious by applying the teachings of the equation in the Background of the ’912 patent to the site-specific approach of Hauwiller. The evidence supports Petitioner’s contentions summarized above, and we agree with Petitioner that claim 15 would have been obvious based on Hauwiller and the prior art described in the Background of the ’912 patent, even taking into account the secondary considerations discussed in Section II.E. below. We have considered Patent Owner’s arguments to the contrary, but we do not find them persuasive for the reasons discussed below.” slip op. at 12

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We agree with Petitioner that Patent Owner has not shown the required nexus between the alleged objective indicia of nonobviousness and the merits of the claimed invention. Although the agreements between Petitioner and the former owner of the ’912 patent convey rights under the ’912 patent, they involve significantly more than the pertinent licenses. The 2008 and 2011 agreements convey licenses to a broader portfolio of U.S. and Canadian patents as well as copyrights, trademarks, and a domain name. Ex. 2022, 4–6; Ex. 2023, 4–6. Moreover, the licenses to intellectual property are just one facet of these agreements, the primary purpose of which is “to set forth the terms upon which Geosys shall provide sales, marketing and support for Field InSite as part of the Geosys FarmSat Platform.” Ex. 2022, 2; Ex. 2023, 2. Similarly, the 2012 agreement conveys rights beyond the ’912 patent. Ex. 2024, 2–3. Patent Owner does not point to, and we do not find, any portion of these agreements assigning a particular royalty rate or value for the ’912 patent. Given the breadth of the agreements and the absence of evidence or explanation from Patent Owner concerning nexus, any determination of how much of the value of the agreements is attributable to the ’912 patent would be speculative. See In re Cree, 818 F.3d 694, 703 (Fed. Cir. 2016). Further, the 2012 agreement calls for a lump sum payment for all of the rights conveyed, the amount of which is less than a reasonable estimate of potential litigation costs. Ex. 2024, 2–3. This detracts further from Patent Owner’s argument that the agreements support the nonobviousness of the ’912 patent. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907– 08 (Fed. Cir. 1985) (noting that licensing programs “are not infallible guides to patentability. They sometimes succeed because they are mutually beneficial to the licensed group or because of business judgments that it is cheaper to take licenses than to defend infringement suits, or for other reasons unrelated to the unobviousness of the licensed subject matter.”). Patent Owner’s argument based on its acquisition of the ’912 patent is also unpersuasive. The evidence that Patent Owner cites in support of that argument shows only that The Mosaic Company filed and subsequently dismissed a Canadian patent infringement suit against Patent Owner. See Exs. 2025, 2026.8 Patent Owner does not cite to the agreement by which ownership of the ’912 patent was transferred, nor does Patent Owner provide the details of that agreement. The evidence Patent Owner relies on does not support Patent Owner’s argument that its decision to acquire the ’912 patent constitutes objective evidence of nonobviousness of the ’912 patent. Finally, the commercial success argument Patent Owner presents in a” slip op. at 36

  Patent outcomesUS 7,171,912 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,171,912
• Geosys-Intl, Inc. v. Farmers Edge Precision Consulting, Inc.All claims unpatentable
  PTAB · Aug 17, 2016 · IPR2015-00708 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–29 are unpatentable as obvious under § 103 over the three instituted combinations of Hauwiller, the patent Background, and, for specified claims, Dickson or Shibusawa.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The differences between Dr. Johannsen’s and Dr. Heiniger’s articulations of the level of ordinary skill in the art are fairly minor. Our analysis below, including the conclusions we reach, would be substantially the same under either proposal. Nevertheless, after considering the evidence of record, we adopt Dr. Heiniger’s definition of the level of ordinary skill in the art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownPlain and ordinary meaningOther

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In the Decision to Institute, we construed the phrase “calculating a map”4 in claims 1–3, 12, 14, 20–22, and 28 to mean “performing calculations to produce a map.” Dec. to Inst. 6–7. With respect to the phrase “maximum possible crop yield” in claims 1, 14, and 20, we declined to adopt Petitioner’s proposed meaning of that term as “yield goal” and instead applied the ordinary and customary meaning of the claim language. Id. at 7–8. We further determined that no other claim term required express construction. Id. at 8. Following institution, neither party challenged those constructions or proposed other terms for construction. On the record now before us, we do not discern reason to deviate from the constructions set forth in the Decision to Institute.” slip op. at 5

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

    “a “conventional method” that is used for calculating nitrogen needs for a field. Ex. 1001, 1:39–40. Hauwiller’s system is open to a variety of recommendation equations, as Patent Owner’s declarant agrees. See Ex. 1005, 8:36–48, 9:18–21, 9:34–38, 13:30–35, 13:39–45; Ex. 1020, 8:11–16. This openness supports the obviousness of employing within Hauwiller’s system a conventional equation (or certain aspects of a conventional equation) such as the one set forth in the Background of the ’620 patent. Furthermore, while the conventional equation includes several variables, a basic teaching of the equation is that in calculating the fertilizer recommendation, the amount of nitrogen already present should be subtracted from the nitrogen needed to realize the yield goal. See Ex. 1001, 1:39–50. Dr. Johannsen’s testimony that “subtraction of existing nutrients from the nutrient amount was a conventional thing to do particularly because it helps reduce leaching due to over fertilization” is consistent with this understanding of the conventional equation. See Ex. 1008 ¶ 71. We also recognize that the ’620 patent describes the equation as being a conventional approach for calculating nitrogen needs “for a field” rather than for a specific site within the field. Ex. 1001, 1:39–40. But Hauwiller recognizes that “[d]esired yield potential varies depending upon the soil characteristics by location” and, for that reason, describes the desirability of constructing “a yield goal map for creating an application map based upon site specific yield goals.” Ex. 1005, 9:32–41 (emphasis added). Thus, Hauwiller teaches the advantages and desirability of a site-specific approach. We agree with Petitioner that the “subtracting” step would have been accomplished by applying the teachings of the equation in the Background of the ’620 patent to the site-specific approach of Hauwiller. The evidence supports Petitioner’s contentions summarized above, and we agree with Petitioner that all of the features of claims 1 and 20 are disclosed in Hauwiller and the prior art described in the Background of the ’620 patent, and that there is adequate reason to combine the teachings of the prior art. We have considered Patent Owner’s arguments to the contrary, but we do not find them persuasive for the reasons discussed below.” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We have considered Patent Owner’s and Dr. Heiniger’s opposing views. We observe that Dr. Heiniger does not explain adequately the basis of his opinion that, despite the teachings of the prior art, a person of ordinary skill in the art would have “thought that yield data from previous years would not work for that purpose” because a skilled artisan would have viewed yield data as “fundamentally different” from a measure of biomass. See Ex. 2033 ¶ 167. We also do not discern that either Patent Owner or Dr. Heiniger adequately considers that, in view of the teachings of the prior art, one of ordinary skill in the art would have known that “leaf area index” is a known measure of biomass. See Ex. 1001, 1:63–65. In that regard, they do not explain why a skilled artisan would not understand readily that leaf area index constitutes the type of field history data and previous crop information that Hauwiller contemplates as useful in developing a map for a given field. Accordingly, on the record before us, we conclude that Petition has shown where all the features of claims 2 and 21 are found in the prior art, and that there is articulated reasoning why a person of ordinary skill in the art would have combined the teachings of Hauwiller and the Background of the ’620 patent. Patent Owner’s and Dr. Heiniger’s general views to the contrary, in our view, do not account appropriately for how a skilled artisan would have understood the teachings of the prior art.” slip op. at 23

  Patent outcomesUS 6,889,620 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,889,620

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.