• Yita LLC / Jinrong (SH) Automotive Accessory Industrial Development Co. Ltd. v. Macneil IP LLCAll claims unpatentable
  PTAB · Jun 6, 2024 · IPR2023-00173 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious: claims 1–2 over Stanesic, Rothkop, and Cicotte; claims 3–6 over that combination with Lee, Fisker, Gruenwald, or Fu, respectively.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “tray is “deeply concave” but fails to direct us to any part of the Specification using the term “deeply concave” let alone a clearly stated definition of “deeply concave” in the context of a vehicle floor tray. The response to office action, cited by Patent Owner, refers to the tray as concave not deeply concave and thus, does not support Patent Owner’s proposed construction. Ex. 2097, 11. For these reasons, to the extent that Patent Owner relies on the prosecution history as a disclaimer of the full scope of claims, we find that the cited response to the office action does not constitute “a clear and unmistakable disclaimer of claim scope.” Uship, 714 F. 3d at 1315.” slip op. at 18

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

    “As explained below in our conclusion on motivation to combine, we” slip op. at 56

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

    “argument that Fu is not analogous art. PO Resp. 51. Dr. Kurfess first testifies that an ordinarily skilled artisan “never would have looked to Fu, or anything related to those fields, let alone micro-devices such as hearing aid shells to solve problems related to the automotive industry.” Ex. 2023 ¶ 144. Dr. Kurfess then testifies that “Fu is a disclosure for a hearing aid shell . . . and a [person of ordinary skill in the art] . . . would not consider the art of medical devices when trying to solve problems with vehicle floor mats.” Id. ¶ 188. Lastly, Dr. Kurfess testifies that “I completely disagree with Mr. Perreault’s conclusion that ‘a [person of ordinary skill in the art]” slip op. at 97

  Patent outcomesUS 9,138,917 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,138,917
• Painteq, LLC v. Orthocision, Inc.All claims unpatentable
  PTAB · Dec 1, 2023 · IPR2023-00451 · APJ Michael A Valek · IPR · Final written decision

  Claims 1–23 are unpatentable as obvious over Vestgaarden-981, Vestgaarden-818, and Lins, with Paltzer additionally applied to claims 6, 7, and 10–23.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s description of the level of ordinary skill in the art is sufficiently supported by the record. Therefore, we apply that understanding in our analysis herein.” slip op. at 9

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

    “Petitioner submits that the parties have submitted joint claim construction in the Florida litigation, and asserts that “[t]he grounds set forth in this [P]etition render the challenged claims obvious under either party’s construction.” Pet. 8 (citing Ex. 1002 ¶ 34; Ex. 1017). Nevertheless, Petitioner urges that “express construction is not necessary.” Id. at 7. We agree that no express construction is required for this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We agree with Petitioner. Figures 30, 32A and 32B in the Specification depict a working channel with tangs 180a and 180b. See Ex. 1001, Figs. 30, 32A–B. These figures and all of the related description in the Specification describing a working channel with tangs appear in the Parent (Ex. 1006, Figs. 30, 32A–B, 3:17–21, 6:47–54, 15:25–51), but not in the Grandparent. See also Ex. 1002 ¶¶ 42–43 (explaining the same). Accordingly, the Grandparent application does not provide sufficient written description for the limitations requiring that the working channel have tangs in the independent claims. See Ex. 1001, 42:7 (limitation 1.b.4 “at least one tang on a distal end”), 43:9–11 (limitation 10.b.2 “two bilateral blunt tangs on a distal end”), 44:31–32 (limitation 18.b.2 “plurality of blunt tangs on a distal end”). For this reason, the challenged claims are not entitled to the benefit of the Grandparent’s filing date.” slip op. at 10

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

    “We find that Petitioner has articulated sufficient reasoning with rational underpinning for combining the asserted references. Vestgaarden- 818 expressly incorporates the teachings of Vestgaarden-981, providing a motivation to use the implant and related tools taught in Vestgaarden-981 in its method for fusing a SI joint. Ex. 1010, 4:10–16. Moreover, we credit Dr. Bovinet’s testimony describing additional reasons for combining Vestgaarden-981’s implant and surgical implants with Vestgaaren-818’s method. Ex. 1002 ¶¶ 67–74. Petitioner’s reasoning for combining Lins’s guidance slots and protrusions is also supported by the evidence of record. Ex. 1002 ¶¶ 77–84. In particular, Dr. Bovinet persuasively testifies that a POSA would have motivated to make this combination because it “enables a surgeon to visually align the guide protrusions on a shaft with the guidance slots of the working channel,” which is “a major improvement” over the flat portion depth stop taught in Vestgaarden-981. Id. ¶ 83; see also id. ¶ 84 (“As someone who has personally performed hundreds of SI joint fusion surgeries, I can attest that the guide protrusions and guidance slots taught in Lins would offer a surgeon a significantly better user experience” as compared to Vestgaarden- 981’s flat portions). Finally, Petitioner has demonstrated that the combination would have produced a “predictable result” and therefore that a (citing Ex. 1002 ¶¶ 76, 85).” slip op. at 21

  Patent outcomesUS 11,083,511 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosure
  Patents in suitUS 11,083,511
• DGL Group, Ltd. v. Hangzhou Chic Intelligent Technology Co., Ltd.All claims unpatentable
  PTAB · Oct 2, 2023 · IPR2022-00844 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1 and 4–25 are unpatentable as obvious over the Chen/Guangjing-based combinations; the Board did not reach the alternative Kickstarter-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “In its petition, DGL adopts the definition of the level of skill in the art as proposed by Hangzhou in the parallel district court litigation. Pet. 11 (citing Ex. 1016, 8). There, Hangzhou asserted that one skilled in the art— would have at least (1) a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a related field, or equivalent experience, and (2) at least two years of experience in the area of: (i) robotics or feedback control for electromechanical systems; (ii) mechanical design, dynamic analysis, and/or control design for mechatronic systems, or (iii) equivalent experience in (i) or (ii). Ex. 1016, at 8. Hangzhou agrees that the above definition from the parallel litigation should control. See PO Resp. 4–5. Because the parties’ definition of the level of skill in the art appears consistent with the level reflected by the prior art, we adopt it for purposes of our analysis.” slip op. at 7

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

    “Here, the parties summarize their claim construction positions from the parallel district court litigation for three claim terms: “electric balance vehicle,” “controller,” and the various iterations of the “control” limitation of the claims, i.e., “control the hub motors,” “controls the motors,” and “controlling the first and second hub motors.” Compare Pet. 22–23, with PO Resp. 8–9. At the same time, however, the parties state that an express claim construction is not needed for purposes of this inter partes review. See PO Resp. 8–9 (submitting “no construction was necessary.”); Pet. Reply 1 (submitting that “[c]laim construction is not required in this inter partes review.”). Nonetheless, the parties note their agreement that “electric balance vehicle” means “electric self-balancing vehicle.” PO Resp. 8; Pet. Reply 1. We find the parties’ construction of that term is reasonable and adopt it for purposes of our analysis. As for the other two claim terms, we agree with the parties that no further construction is needed to decide this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 7

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

    “Resp. 25–29. In doing so, Hangzhou makes the mistake of arguing the references individually without ever acknowledging the combination of their teachings as a whole. For instance, Hangzhou argues that the asserted combination is improper “because Chen at least does not disclose the inner cover.” PO Resp. 24. But DGL never argued that Chen discloses an inner cover. Instead, DGL observed that one skilled in the art “would have been inclined to employ the inner cover of Guangjing with the electric balance vehicle of Chen because of the benefits expressly taught by Guangjing: improved structural strength, lighter weight, lower battery load, faster response speed, and longer batter[y] run-time,” which “would have merely been the predictable result of using the elements of Guangjing according to their known function.” Pet. 29 (quoting Ex. 1003 ¶ 83) (emphases added). Similarly, Hangzhou argues that the asserted combination is improper because “Guangjing discloses controlling the device through the use of a steering rod” (PO Resp. 25–26) and “[i]ncluding the steering mechanism of Guangjing would be necessary for the user to control turning of the device” (id. at 24). But, again, DGL never proposed using Guangjing’s steering mechanism in the asserted combination. Instead, DGL argued that one skilled in the art would have modified each of the foot platforms in Chen to include an inner cover, thereby preserving the rotatable relationship of the two foot platforms and their ability to independently turn and otherwise operate the wheels as originally intended by Chen. See Pet. 30 (citing Ex. 1003 ¶ 85). We also disagree with Hangzhou’s contention that the asserted combination “would lead to an inoperative result.” PO Resp. 24. Apparently, Hangzhou believes that “combining the single piece, non- rotatable-frame of Guangjing, with that of Chen would result in a device capable of only moving directly forward or directly backward.” Id. (emphasis added). But that argument relies on the false premise that Guangjing’s single-piece framework would extend the length of both of Chen’s foot platforms, while ignoring DGL’s express position that one skilled in the art would necessarily account for the rotatable relationship of Chen’s foot platforms when incorporating Guangjing’s teaching of an inner cover. See Pet. 30 (citing Ex. 1003 ¶¶ 85–86); Pet. Reply 3–4 (same). Indeed, in undertaking the combination, it would have been unthinkable for one skilled in the art to destroy the very essence of Chen’s invention— independently rotatable foot platforms for steering the vehicle. More reasonably, one skilled in the art, seeing Guangjing’s teaching of an inner cover for improving the structural strength of a self-balancing vehicle, would have immediately envisaged installing an inner cover into each of Chen’s foot platforms in a manner that preserved the ability of the user to steer the vehicle via the rotatable foot platforms. In that regard, we find the testimony of DGL’s expert more persuasive and credible than Hangzhou’s expert. Compare Ex. 1003 ¶¶ 83–86, with Ex. 2006 ¶¶ 31–33, 36.” slip op. at 12

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

    “away” from structures like Guangjing’s inner framework. PO Resp. 30. According to Hangzhou, Guangjing’s inner framework equates to the “prior art” device that Chen disparages, which includes “a multi-component parallelogram structure” that “adds to the weight, bulk, complexity, and potential for mechanical failure.” Id. at 29 (quoting Ex. 1004 ¶ 5). We disagree. In quoting Chen, Hangzhou omits that the “multi-component” structure disparaged by Chen is used “to coordinate/link movement of the two platform sections and the wheels,” which reasonably refers to a mechanical linkage for steering the vehicle. Ex. 1004 ¶ 5. Chen’s disparagement of a multi-part steering linkage does not, in our view, teach away from using a static cover or frame to strengthen the underside of the foot platform itself, as taught by Guangjing. Nor can Hangzhou reasonably argue that Guangjing’s inner cover would add to the vehicle’s weight or bulk, given Guangjing’s express disclosure that the inner framework “reduc[es] the overall weight of the vehicle body.” Ex. 1006, 2:15–16; see also id. at 2:27–29 (“the weight is slightly lighter”). Similarly, Hangzhou argues that Chen’s disclosure of the platform sections being formed of “metal, sturdy plastic, or other suitable material” that is “reinforced” means that Chen “specifically teaches away from including additional structures, which would include an inner cover.” PO Resp. 29–30 (citing Ex. 1004 ¶ 18). Again, we disagree. Chen simply states that “[t]he housing may be molded and incorporate strengthening reinforcements” and “[t]he housing may be formed of metal, sturdy plastic or other suitable material.” Ex. 1004 ¶ 18 (emphasis added). Thus, these are not requirements in Chen. At most, Chen is describing a preferred embodiment. However, “[a] reference does not teach away ‘if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.’” Huawei Techs. Co. v. Iancu, 813 F. App’x 588, 591–92 (Fed. Cir. 2020) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)). Here, while Chen may indicate a “general preference” for the use of strengthening reinforcements or certain materials, nothing in Chen criticizes, discredits, or otherwise discourages the use of Guangjing’s inner cover. Indeed, in our view, one skilled in the art would have recognized that replacing Chen’s molded strengthening reinforcements in each of the foot platforms with an inner cover, as taught by Guangjing, is nothing more than substituting one strength-enhancing structure for another equivalent structure. Accordingly, Chen does not teach away from employing the inner cover of Guangjing in the electric balance vehicle of Chen.” slip op. at 13

  Patent outcomesUS 10,597,107 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,597,107
• Eli Lilly And Company v. Teva Pharmaceuticals International GmbHAll claims unpatentable
  PTAB · Sep 25, 2023 · IPR2022-00739 · APJ David Cotta · IPR · Final written decision

  Claims 1–30 are unpatentable as obvious over Sun, Dodick, and Sharma; the Board did not reach the separate Dodick and Sharma ground.

  RulingsFinal written decision

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

    “(iii) Conclusion with respect to Group I patients In sum, we find that the only difference between Sun’s patients who” slip op. at 33

  • Expert testimonyPetitioner expert creditedOther

    “be advantageous as compared to galcanezumab on the basis that galcanezumab is a “less selective agent” than erenumab. Patent Owner and Dr. Grosberg cite Shi 2016 (Ex. 2049) as teaching the “high selectivity” of erenumab for blocking the CGRP complex as compared to “less selective agents,” and use this teaching to imply that galcanezumab is less selective than erenumab. PO Resp. 22; Ex. 2037 ¶ 218. But, as Dr. Hay explains, “[t]he ‘less selective agents’ that Shi 2016 refers to are the small-molecule CGRP receptor antagonists, Gepants, not galcanezumab.” Ex. 1239 ¶ 29. We find Dr. Hay’s testimony on this point persuasive, as it is consistent with Shi 2016. See Ex. 2049, 2 (discussing concerns regarding small molecule CGRP antagonists that have prevented their approval and opining that “[a] monoclonal antibody may be a preferred modality to target the CGRP receptor”). Moreover, Shi 2016 concludes with a discussion of the advantages of the superior selectivity of mAbs as a class. Id. at 8 (discussing advantages of mAbs over small molecule CGRP-receptor antagonists, noting “[i]n addition to high potency and superior selectivity, which may provide the benefit of fewer off-target side effects, monoclonal antibodies provide advantages that make them better suited for preventive treatment compared with small molecules”); Ex. 1239 ¶ 32 (interpreting Shi as teaching that “antibodies as a class have limited off-target effects as compared to small molecules because they bind to fewer biological targets and are therefore considered more specific.”). Accordingly, the evidence of” slip op. at 50

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

    “1. “A subject having refractory migraine” The phrase “a subject having refractory migraine” appears in the preamble to claim 1. Ex. 1002, 173:2–3. The parties agree that the preamble is limiting because it provides context and antecedent basis for terms in the body of the claim. Pet. 12 (“Claim 1’s preamble . . . should be construed as limiting at least because it provides context and antecedent [basis] for the claimed ‘therapeutically effective amount.’”); PO Resp. 9 (“There is no dispute that the preamble ‘[a] method of treating or preventing migraine in a subject having refractory migraine, the method comprising’ is reasons expressed by the parties. Rapoport v. Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001) (finding that the phrase “treatment of sleep apneas” in the preamble of an interference count was limiting because it provided antecedent basis for the phrase “to a patient in need of such treatment” in the body of the interference count); see also Eli Lilly Co. v. Teva Pharmas Int’l GmbH, 8 F.4th 1331, 1340–41 (Fed. Cir. 2021) (discussing construction of claims directed to “methods of using a composition for a specific purpose,” explaining, “while there is no bright-line rule for determining whether a preamble is limiting, we have generally construed statements of intended purpose in such method claims as limiting”). We turn now to the meaning of the phrase “a subject having refractory migraine.” The parties agree that the ’161 patent expressly defines the phrase “a subject having refractory migraine.” Pet. 13; PO Resp. 9. In this regard, the ’161 patent states: As used herein, refractory migraine patients (or “subject having refractory migraine”) are considered refractory if they have a documented inadequate response (in a medical chart or by treating physician’s confirmation) to at least two preventive medications (from a different cluster, defined below). Refractory migraine patients can also be considered refractory if they have a documented inadequate response (in a medical chart or by treating physician’s confirmation) to two to four classes of prior preventive medications (from different cluster[s], as defined below), e.g., inadequate response to two classes of prior preventive medications, inadequate response to three classes of prior preventative medications, or an inadequate response to four classes of prior preventative medications. Ex. 1002, 18:61–19:7. Thus, a “subject having refractory migraine” should be construed as: a migraine patient having a documented inadequate least two preventive medications from a different cluster. Id.” slip op. at 8

  • ExcludeMotion to exclude, deniedMixed

    “A. Exhibits 1065, 1073, 1088, 1089, 1220, and 1221 We do not rely on Exhibits 1065, 1073, 1088, 1089, 1220, and 1221 in our Final Written Decision. Accordingly, we dismiss Patent Owner’s Motion as it relates to these exhibits.” slip op. at 107

  Patent outcomesUS 11,028,161 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,028,161
• Eli Lilly And Company v. Teva Pharmaceuticals International GmbHAll claims unpatentable
  PTAB · Sep 25, 2023 · IPR2022-00738 · APJ David Cotta · IPR · Final written decision

  Claims 1–30 are unpatentable as obvious over Sun, Dodick, and Sharma; the Board did not reach the alternative ground.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the problems” slip op. at 6

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

    “1. “A subject having refractory migraine” The phrase “a subject having refractory migraine” appears in the preamble to claim 1. Ex. 1001, 173:2–3. The parties agree that the preamble is limiting because it provides context and antecedent basis for terms in the body of the claim. Pet. 12 (“Claim 1’s preamble . . . should be construed as limiting at least because it provides context and antecedent [basis] for the claimed ‘therapeutically effective amount.’”); PO Resp. 9 (“There is no dispute that the preamble ‘[a] method of treating or preventing migraine in a subject having refractory migraine, the method comprising’ is limits the claim for the reasons expressed by the parties. Rapoport v. Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001) (finding that the phrase “treatment of sleep apneas” in the preamble of an interference count was limiting because it provided antecedent basis for the phrase “to a patient in need of such treatment” in the body of the interference count); see also Eli Lilly Co. v. Teva Pharmas Int’l GmbH, 8 F.4th 1331, 1340–41 (Fed. Cir. 2021) (discussing construction of claims directed to “methods of using a composition for a specific purpose,” explaining, “while there is no bright-line rule for determining whether a preamble is limiting, we have generally construed statements of intended purpose in such method claims as limiting”). We turn now to the meaning of the phrase “a subject having refractory migraine.” The parties agree that the ’160 patent expressly defines the phrase “a subject having refractory migraine.” Pet. 13; PO Resp. 9. In this regard, the ’160 patent states: As used herein, refractory migraine patients (or “subject having refractory migraine”) are considered refractory if they have a documented inadequate response (in a medical chart or by treating physician’s confirmation) to at least two preventive medications (from a different cluster, defined below). Refractory migraine patients can also be considered refractory if they have a documented inadequate response (in a medical chart or by treating physician’s confirmation) to two to four classes of prior preventive medications (from different cluster[s], as defined below), e.g., inadequate response to two classes of prior preventive medications, inadequate response to three classes of prior preventative medications, or an inadequate response to four classes of prior preventative medications. Ex. 1001, 18:59–19:5. Thus, a “subject having refractory migraine” should be construed as: a migraine patient having a documented inadequate least two preventive medications from a different cluster. Id.” slip op. at 8

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “understand the term “adverse event” to be limited to “serious” events. Ex. 2004, 1; Ex. 1208, 1; Ex. 1209, 6; Ex. 1210, 8. The only evidence to the contrary is the testimony of Dr. Grosberg. Ex. 2037 ¶ 45. Because Dr. Grosberg’s testimony is inconsistent with the evidence he relies upon, we decline to give it substantial weight. We recognize that the Specification of the ’160 patent includes language imposing some degree of severity on the “adverse event.” Specifically, the adverse event must be significant enough to cause treatment to be “interrupted” because the event made the treatment become “intolerable by the patient.” But, we find no support in the record for imposing an additional severity requirement by effectively limiting the term “adverse event” to “serious adverse events.” Accordingly, we decline to construe the term “adverse event” to mean “a serious undesirable experience associated with the use of a treatment” as proposed by Patent Owner. PO Resp. 12. We do not find it necessary to further construe the term “adverse event” to resolve this dispute.” slip op. at 14

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

    “d) Conclusion regarding Sun’s disclosure of the claimed patients For the reasons discussed supra §§ II.F.1.a–c, we find that Petitioner” slip op. at 40

  Patent outcomesUS 11,028,160 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,028,160
• Nextremity Solutions, Inc. / Zimmer Biomet Holdings, Inc. et al. v. Extremity Medical, LLCAll claims unpatentable
  PTAB · Jul 26, 2023 · IPR2022-00802 · APJ Jeffrey N Fredman · IPR · Final written decision

  Claim 59 is unpatentable as anticipated by Brumfield, Marcus, and Chandran; the motion to amend proposing substitute claim 62 is denied because claim 62 is unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find this argument unpersuasive. As Patent Owner notes, Petitioner’s expert provides a definition of POSITA that is very similar to that recited by Patent Owner in its Motion to Amend, substantively differing only in the number of years of experience of the engineer at issue. This congruity supports the conclusion that the level of ordinary skill in the art may be recognized in the prior art itself. Okajima, 261 F.3d at 1355 (“the absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”).” slip op. at 9

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

    “In our Institution Decision, we agreed with Petitioner that the “portion of the preamble reciting ‘for compressing bone’ is not limiting to the claim” and found that other terms did not require construction. Dec. 8–9. We agreed with Petitioner that “[t]he phrase ‘for compressing bone’ merely identifies an intended use.” Pet. 20; Dec. 9. Patent Owner does not dispute this interpretation. See generally PO Resp. We agree with Petitioner that “the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Therefore, having considered the entire record developed during trial, we adhere to the preliminary construction that the limitation “for compressing bone” does not impose a structural limitation on claim 59 and that the other terms do not require construction.” slip op. at 11

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

    “Patent Owner disputes the Petition generally but Patent Owner does not identify any error in Petitioner’s foregoing arguments. Accordingly, we adopt the factual statements regarding the specific teachings of the references as findings of fact. See generally In re NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016) (explaining that the Board need not make specific findings as to claim limitations that Patent Owner does not dispute are disclosed in the prior art). We have reviewed Petitioner’s analysis and the underlying evidence cited in support and conclude that Petitioner has shown, by a preponderance of the evidence, that the limitations of claim 59 are disclosed by Brumfield.” slip op. at 26

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

    “For the reasons discussed below, Patent Owner has shown that proposed substitute claim 62 meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. For the reasons discussed below, however, Petitioner has proven by a preponderance of the evidence that proposed substitute claim 62 is unpatentable over prior art. Therefore, we deny Patent Owner’s Revised Motion to Amend.” slip op. at 38

  Patent outcomesUS 8,303,589 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 8,303,589
• Spinal Elements, Inc. v. Spectrum Spine IP Holdings, LLCAll claims unpatentable
  PTAB · Aug 17, 2022 · PGR2021-00050 · APJ Ulrike W Jenks · PGR · Final written decision

  Claims 1–7 are unpatentable over Greenhalgh; claims 8–9 are unpatentable over Greenhalgh alone or with Lynn. Substitute claims 20–28 lack written-description support.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “The parties generally agree that a person of ordinary skill in the art would have been a mechanical or biomedical engineer with several years of 6 We note that a Second Dr. Serhan Declaration is referenced in one of Patent Owner’s exhibit lists, but this document was never filed in this proceeding. See Tr. 33:15–25. experience or an orthopedic surgeon or neurosurgeon with experience designing or developing medical devices. Pet. 18–19; PO Resp. 31. On this record, we adopt the parties’ definition of the level of skill in the art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9

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

    “We note that “act upon” is not defined in the Specification of the ’575 patent. “Act upon” appears for the first time in claim 1 of the ’575 patent. The Specification describes that “the cage assembly may comprise an expander such as an expansion screw or a shim which, when inserted, selectively expands the body of the cage assembly to a desired size.” Ex. 1001, 4:26–29. The Specification further describes that “translation of the elongate expander proximally toward the trailing end expands the cage body by separating the at least a portion of the upper portion from at least a portion of the lower portion.” Id. at 6:56–59. (emphasis added). We determine that “expander expands the cage” is construed in light of the Specification to mean that the expander acts upon both the upper and lower portion of the cage to move the upper and lower portions further apart. We note, however, there is no requirement that each portion is moved away from the longitudinal expander by the same amount.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner

    “The Specification does not define “unobstructed” or “obstructed.” Based on the disclosure in the Specification, the prosecution history, 7 and the annotated Figure 5A and 5B above, the term “unobstructed” is understood to mean that there are no obstacles or structures lying in the path of the window created by the upper portion, lower portion, and elongate expander that would impede the view through the window. Figure 5B does not show any features that impede the view through the aligned window and thereby shows an “unobstructed view.” Tr. 40:20–41:11, see id. 41:5–6 (“Figure 5B shows nothing extending into the window, and that’s the only 7 Petitioner explains that “the plain meaning of an ‘open’ window is well understood to be a state allowing passage through the window.” Pet. 21 (citing Ex. 1003 ¶ 63). According to Petitioner, Patent Owner expressly defined “unobstructed” during prosecution to “mean there are no features lying in the path and blocking the window.” Id. at 21–22. Patent Owner acknowledges that the term “unobstructed” was added during prosecution in order to distinguish over Baynham (US 2007/0270968 Al, published Nov. 22, 2007). PO Resp. 36–37; Ex. 1002, 29–30. The only example of an obstructing feature identified during prosecution is an axle (or jack screw) that extends down the center of the opening which acts like a bar. Id. at 22 (citing Ex. 1002, 29–30); see Tr. 41:5–8 (“Figure 5B [of the ’575 patent] shows nothing extending into the window, and that’s the only support that there is. There’s no[] qualifying language in the specification that would allow a retreat to specify a particular amount that was considered acceptable.”) support that there is.”). Unobstructed does not refer to the entirety of each window, but rather where they overlap relative to one another. We determine that “unobstructed” means “there are no features lying in the path and blocking the window.”” slip op. at 15

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

    “disclose bidirectional cage expansion. We note that “bidirectional” does not 8 Newton’s third law states that for every action (force) in nature there is an equal and opposite reaction. appear in the language of claim 1 of the ’575 patent nor does it appear anywhere in the Specification of the ’575 patent. All that is required by claim 1 is for the cage body to expand, which requires “the expander to act upon portions of the upper portion and the lower portion to expand the cage body by separating at least a portion of the upper portion from at least a portion of the lower portion.” Ex. 1001, 8:27–31. Thus, separation of the upper portion and lower portion upon the longitudinal translation of the elongate expander is all that is required to meet the claim element.” slip op. at 22

  Patent outcomesUS 10,709,575 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,709,575
• Continental AG / Contitech AG et al. v. Gates CorporationAll claims unpatentable
  PTAB · Jul 29, 2022 · IPR2021-00466 · APJ Scott A Daniels · IPR · Final written decision

  Claims 9–26 are unpatentable as obvious over Hasaka; the Board did not reach the remaining obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the ’934 patent “would have had a Bachelor’s Degree in mechanical engineering, textile engineering, or a similar discipline, with one to two years of experience in this or a related field.” Pet. 5. Patent Owner does not dispute Petitioner’s asserted level of ordinary skill in the art. See PO Resp. 8 (stating that Patent Owner “generally agrees with Petitioner’s definition of a [person of ordinary skill in the art]”). Petitioner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’934 patent and the asserted prior art references. We rely on Petitioner’s proposed 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 ownOther

    “limitation of claim 24 as Patent Owner characterizes it. First, this phrase is in the preamble prior to the word “comprising,” and does not, in our opinion, provide antecedent basis for any subsequent limitations in the body of the claim. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”). Second, the phrase plainly reads as a desired result or effect of “selecting said first twist multiplier to be at least about 1.5 times said second twist multiplier,” which is the last step recited in the body of claim 24. Ex. 1001, 14:1–2. See Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004) (The Federal Circuit explaining that “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.”) (citations omitted). Notably, neither “flex fatigue” nor “improved flex fatigue” are mentioned in the specifically recited steps of the claimed method. Ex. 1001, 13:13–14:2. Third, Patent Owner mainly asserts that this phrase “is a fundamental characteristic of the claim and consequently, is a limitation of claim 24.” PO Resp. 7–7. Such a desired result, improving flex fatigue, as it is recited in claim 24, in our view, does not explain satisfactorily why this phrase in “the preamble is necessary to give life, meaning, and vitality” to the claimed method. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1306 (Fed. Cir. 1999). Accordingly, we are not persuaded that this phrase is a limitation.” slip op. at 9

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

    “would have been motivated to use the disclosed 9.65 TPI first twist rate with the specific example’s 2.82 TPI second twist rate because using the 9.65 first twist rate would be a simple substitution of the specific example’s first twist rate with another first twist rate that was also disclosed in the same patent.” Id. ¶ 68. We are persuaded by Dr. Adanur’s testimony in this case. The motivation to interpolate values in disclosed ranges, such as those in Hasaka, is well-settled in our case law. See In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974) (claimed invention is rendered prima facie obvious by the teachings of a prior art reference that discloses a range that touches the range recited in the claim). Using the values provided by Dr. Adanur which are taken directly from Hasaka’s disclosure, a TM ratio of 1.97 is obtained which falls directly within the range recited in claim 9. Where a claimed range falls within a range disclosed in the prior art, a presumption of obviousness applies. See Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed Cir. 2004) (rehearing denied). To the extent Patent Owner argues that the first twist multiplier is not a result-effective variable, we disagree. PO Resp. 4. It is reasonably clear from Kovac that a person of ordinary skill in the art would have understood that increasing the twist rate of the yarn results in an increase in flex fatigue resistance while decreasing tensile strength of the yarn. Ex. 1007, 4:15–46. Kovac’s disclosure, and Dr. Adanur’s reliance on it to support his testimony as to the knowledge of a person or ordinary skill in the art, is confirmed by Patent Owner’s declarant, Dr. Wu, who testified that “[i]t also was my understanding at the time that the prior art disclosed that both an increase in either the first or second twist resulted in a higher flexural fatigue resistance.” Wu declaration ¶ 7; see also In re Applied Materials, Inc., 692 property is affected by the variable is sufficient to find the variable result-effective.”). We find the evidence and testimony of the declarants for both parties persuasive that a person of ordinary skill in the art understood that increasing the first or second twist rate resulted in a corresponding increase in the respective first and second TMs and a higher flex fatigue resistance which are therefore result-effective variables. Overall, we are persuaded by Petitioner’s optimization argument, becuase the discovery of an optimum value of a result effective variable is ordinarily within the skill of the art, and thus usually obvious. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980); Aller, 220 F.2d at 456. slip op. at 33

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

    “for the yarn from of 17 to 38 per 10 cm, and range of the second twist rate (in the opposite direction) for the cord that is 10 to 23 per 10 cm. Ex. 1004, 6:47–48. Dr. Adanur has testified that Hasaka’s disclosed cord twist rates result ultimately in a specific range of TPIs, and hence TMs, given that the denier is constant across both the first and second TM’s, and that a person of ordinary skill in the art “would have been motivated to find the optimal TPI values for the first and second twists that, when combined, produces the optimal cord.” Adanur I ¶ 66. Given the finite ranges disclosed by Hasaka, Dr. Adanur testifies that a person of ordinary skill in the art “would have tried the various first twist TPI values on the disclosed two-1,000 denier strand with a reasonable expectation of success because the materials, configuration of yarn, and the twist rate, would all be easily achieved using standard equipment and materials at the time.” Id. ¶ 67. Dr. Adanur testifies that given Kovac’s disclosure relating to the level of knowledge and skill in the art, i.e., that increasing the twist rate of yarn, i.e. the first twist rate, results in increasing fatigue resistance, up to a point, a person of ordinary skill in the art “would have considered it obvious to try the finite number of disclosed first twist rate TPI values, including the disclosed 9.65 TPI value, to obtain a cord with a first-to-second TM ratio of 1.97.” Id. Pointing to the Background section of the ’934 Dr. Adanur testifies that “there was a market pressure and design need for designing belts and load carrying cords with improved flexural fatigue.” See id. (citing Ex. 1001, 1:46–49 (“The need remains for a high modulus load carrying cord, including for incorporation in an endless belt or similar rubber composite article, which exhibits a good balance of load carrying capability and flexural fatigue resistance.”)). “would have been motivated to use the disclosed 9.65 TPI first twist rate with the specific example’s 2.82 TPI second twist rate because using the 9.65 first twist rate would be a simple substitution of the specific example’s first twist rate with another first twist rate that was also disclosed in the same patent.” Id. ¶ 68. We are persuaded by Dr. Adanur’s testimony in this case. The motivation to interpolate values in disclosed ranges, such as those in Hasaka, is well-settled in our case law. See In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974) (claimed invention is rendered prima facie obvious by the teachings of a prior art reference that discloses a range that touches the range recited in the claim). Using the values provided by Dr. Adanur which are taken directly from Hasaka’s disclosure, a TM ratio of 1.97 is obtained which falls directly within the range recited in claim 9. Where a claimed range falls within a range disclosed in the prior art, a presumption of obviousness applies. See Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed Cir. 2004) (rehearing denied). To the extent Patent Owner argues that the first twist multiplier is not a result-effective variable, we disagree. PO Resp. 4. It is reasonably clear from Kovac that a person of ordinary skill in the art would have understood that increasing the twist rate of the yarn results in an increase in flex fatigue resistance while decreasing tensile strength of the yarn. Ex. 1007, 4:15–46. Kovac’s disclosure, and Dr. Adanur’s reliance on it to support his testimony as to the knowledge of a person or ordinary skill in the art, is confirmed by Patent Owner’s declarant, Dr. Wu, who testified that “[i]t also was my understanding at the time that the prior art disclosed that both an increase in either the first or second twist resulted in a higher flexural fatigue resistance.” Wu declaration ¶ 7; see also In re Applied Materials, Inc., 692 property is affected by the variable is sufficient to find the variable result-effective.”). We find the evidence and testimony of the declarants for both parties persuasive that a person of ordinary skill in the art understood that increasing the first or second twist rate resulted in a corresponding increase in the respective first and second TMs and a higher flex fatigue resistance which are therefore result-effective variables. Overall, we are persuaded by Petitioner’s optimization argument, becuase the discovery of an optimum value of a result effective variable is ordinarily within the skill of the art, and thus usually obvious. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980); Aller, 220 F.2d at 456.” slip op. at 32

  Patent outcomesUS 7,254,934 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,254,934
• Haas Automation, Inc. v. Olati LLCAll claims unpatentable
  PTAB · May 13, 2022 · IPR2021-00146 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–8 are unpatentable: claims 1, 2, 4, and 6 are anticipated by Oraby; claims 7 and 8 are obvious over Oraby and Edie, among other grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Decision on Institution, we agreed with Patent Owner’s arguments and adopted Patent Owner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 10. Petitioner indicates that it does not challenge this determination for the purposes of this proceeding. Pet. Reply 1. Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “1. “at least one controller . . . adjusts the power” In the Decision on Institution, we determined that there was no need to construe explicitly the phrase “at least one controller . . . adjusts the power.” Dec. Inst. 11–12 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Neither party disagrees with this determination. Pet. Reply 7 & n.4; PO Resp. 8–9. Thus, on the full record, there is no controversy between the parties regarding the construction of this phrase. Furthermore, explicitly construing this phrase would have no effect on the analysis below. Accordingly, we need not construe this phrase to resolve the issues in dispute in this proceeding. See Nidec, 868 F.3d at 1017; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). After considering the parties’ arguments regarding Patent Owner’s proposed claim construction for the phrase “adjusts the power exerted by at least one of the spindle drive system and the feed drive system in real-time based on the real-time determinations,” we declined to adopt the proposed construction in the Decision on Institution. Dec. Inst. 13–16 (citing Prelim. Resp. 9–11; Paper 8, 2–4; Paper 9, 2–3). Neither party has addressed this proposed construction in their post-institution briefing. Therefore, on the complete trial record before us, we need not construe this phrase to resolve Realtime Data, 912 F.3d at 1375.” slip op. at 11

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

    “d) Conclusion In summary, we construe “real-time” to mean “autonomously during a machining operation and performed quickly enough to achieve a desired machining system performance.”” slip op. at 18

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

    “Like the database in Lister, the University of Sheffield’s University Library database allowed members of the public, at least as early as 2004, to “electronically search[] the University Library index” via the internet or the library’s computer terminals, and using any of the author, department, date, and, most importantly, title. See Ex. 1010 ¶ 7. Indeed, Ms. Abbs states that, once a thesis such as Oraby is received by the library, “at least the title, author, related department, and date of completion are recorded in the University Library’s records.” Id. ¶ 3 (emphasis added). Furthermore, like the manuscript in Lister, Oraby has a title that is descriptive of its subject matter—“Mathematical Modelling and In-Process Monitoring Techniques for Cutting Tools” (Ex. 1004, 1)—as Oraby indeed covers “mathematical models which describe the cutting tool-workpiece interaction” and “accurate on-line monitoring of tool-state” (see id. at 3). Thus, a reasonably diligent researcher in the field of CNC machining interested in ways to improve the 11 The court ultimately held, however, that the manuscript did not qualify as prior art because there was insufficient evidence that the aforementioned “date that [the manuscript] was included in either [of the two] databases that permitted keyword searching of titles” had actually antedated the patent’s critical date. Lister, 583 F.3d at 1316–17. library’s database by title for references disclosing such improvements. Furthermore, given Oraby’s title that describes its subject matter covering particular improvements in the CNC machining process, Oraby would have been discovered through such an electronic search. As such, Ms. Abbs’ declaration is sufficient evidence to establish by a preponderance of the evidence that Oraby was publicly available before the ’432 patent’s critical date and therefore qualifies as a printed publication.” slip op. at 21

  Patent outcomesUS 8,136,432 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,136,432
• New World Medical, Inc. v. Microsurgical Technology, Inc.All claims unpatentable
  PTAB · Apr 20, 2022 · IPR2021-00017 · APJ James A Tartal · IPR · Final written decision

  Claims 1–3, 6, 9, and 10 are unpatentable as anticipated by Quintana; claims 4, 5, 7, 8, and 11 are unpatentable as obvious over Quintana.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had either “a medical degree and at least two years’ experience with treating glaucoma and performing glaucoma surgery,” or “an undergraduate or graduate degree in biomedical or mechanical engineering and at least five years of work experience in the area of ophthalmology, including familiarity with ophthalmic anatomy and glaucoma surgery.” Pet. 26 (citing Ex. 1003 ¶ 24). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. Resp. 10 n.5. We adopt Petitioner’s definition as we find it is undisputed and consistent with the level of skill in the art at the time of the invention, as reflected by the prior art and the ’885 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 13

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

    “Neither Petitioner nor Patent Owner propose any express construction for a claim term. See Pet. 27; Resp. 10. We find that no express construction of any claim term is necessary for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14

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

    “Quintana’s disclosure expressly states that “[o]nly the tip of the instrument is introduced into Schlemm’s canal, and the [trabecular meshwork] is stripped slowly, gently and easily from the canal’s lumen towards the anterior chamber as the needle progresses,” which informs one of ordinary skill in the art that the beveled edges of the needle cut and remove a strip of trabecular meshwork tissue. See Ex. 1004, 4; see also id. at 8 (“[f]urther studies are necessary to disclose the ‘in vivo’ behaviour of the sectioned trabecular meshwork”), caption to Figure 2 (“[t]he tip of the needle stripping the trabecular meshwork”); see also Ex. 1030 ¶¶ 7–10 (Dr. Netland discussing Quintana from the perspective of one of ordinary skill in the art).” slip op. at 34

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

    “Reasons Supporting Obviousness Over Quintana We find for the reasons provided below that Petitioner has shown by a preponderance of the evidence persuasive reasons the subject matter of the Challenged Claims, as a whole, was taught by Quintana, in light of the knowledge of a person of ordinary skill in the art. We further find that, to the extent a feature of Quintana relied upon by Petitioner would have required modification to correspond to a feature of a Challenged Claim, Petitioner has shown by a preponderance of the evidence a person of ordinary skill not only could have made the modification, but would have had reason to do so in light of the knowledge of a person of ordinary skill in the art. Patent Owner argues a lack of motivation to modify Quintana “to create first and second spaced-apart cutting edges.” Resp. 31–32. As explained above, we find Quintana discloses this feature without modification. See supra Section II.E.1. Patent Owner also broadly argues no motivation for any of the proposed modifications because Quintana “never describes creating and removing a strip of [trabecular meshwork],” and that Petitioner does not show how the asserted modification “would have been advantageous” and are “the product of speculation, conjecture and hindsight.” Resp 33–34. As explained above, we find Quintana discloses cutting a strip of trabecular meshwork and Patent Owner’s argument fails to address the reasons Petitioner identifies for each proposed modification. See supra Section II.E.1. We likewise find no persuasive evidence to support Patent Owner’s undeveloped arguments that any modification proposed by Petitioner of Quintana based on the knowledge in the art would have rendered Quintana’s device “unfit for its intended purpose” or that Quintana “would have taught away . . . for fear of reducing the effectiveness of the device.” Resp. 33–34. We find persuasive Petitioner’s argument in its Reply that Patent Owner “fails to explain how modifying Quintana’s needle as proposed by [Petitioner] would have increased the risk of injury to [Schlemm’s Canal], and no disclosure in Quintana that criticizes, discredits, or discourages “investigation into the modifications proposed by [Petitioner]. Reply 24 (citing Ex. 1004, 4). We further focus our discussion below on any additional determinative issues in dispute.” slip op. at 51

  Patent outcomesUS 9,820,885 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,820,885

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.