• Illumina, Inc. v. Molecular Loop Biosciences, Inc.No claims unpatentable
  PTAB · Apr 15, 2026 · IPR2024-01419 · APJ Susan L C Mitchell · IPR · Final written decision

  Claims 1–9 were not shown unpatentable because the asserted references failed to disclose the claimed correcting step, and Chee was not prior art to claims 1–3 and 9.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “We have considered both parties’ arguments and evidence and determine that Patent Owner has presented sufficient evidence of reasonable the invention to practice every day during the critical period in order to demonstrate reasonable diligence. See Perfect Surgical Techniques, Inc. v. Olympus America, Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016). “[D]iligence need not be perfectly continuous—only reasonably continuous.” Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320, 1331 (2019). The key question is whether, “in light of the evidence as a whole, the invention was not abandoned or unreasonably delayed.” Id. (internal quotations omitted). Applying this standard, we determine that Patent Owner sufficiently demonstrates reasonably continuous diligence throughout the critical period.” slip op. at 32

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

    “introduced during said workflow by collapsing target:differentiator tag combinations observed more than once into a single count.” Ex. 1001, 131:46–48 (emphasis added). The “determining step” of claim 2 recites “determining a consensus base call for the target nucleic acid molecule sequences,” but performs “collapsing all sequence reads comprising a same differentiator tag into a single read,” before the “determining step.” Id. at 131:49–53. Patent Owner proposes an interpretation of these “collapsing” and “determining” steps recited in claims 1 and 2 and asserts that they should be construed as distinct steps performed in a particular order in which the “collapsing step” is performed before the “determining step.” PO Resp. 42–45. We agree. First, Patent Owner asserts a person of ordinary skill in the art would have understood that the “collapsing step” of claim 1 is distinct from, and must occur before, the “determining step” of claim 2 based on the plain language of claims 1 and 2. PO Resp. 42–43. Patent Owner argues that the “collapsing step” and the “determining step” are distinct steps because claims 1 and 2 use different terms to describe these distinct steps that are performed sequentially according to the claim language. Id. (citing Ex. 1001, 131:47–54; Ex. 2023 ¶ 133; Ex. 2024, 57:11–58:22). More specifically, Patent Owner explains that claim 1 recites a “collapsing step,” followed by claim 2, which depends from claim 1 and refers to “collapsing” before “determining a consensus base call” such that “claim 2 describes determining a consensus base call from collapsed reads, not performing ‘collapsing’ by determining a consensus base call.” Id. at 42 (citing Ex. 1001, 131:47–54). collapsing corrects for skewing, an issue related to over- or under-amplification, which is a separate and distinct problem from the sequence errors that a consensus base call is designed to address.” Id. at 43 (citing Ex. 1001, 27:47–50, 32:29–34). Patent Owner contends further that “‘[c]ollapsing’ is a different step, performed separately from determining any consensus base call, to provide even greater accuracy when subsequently determining a consensus base call” such that “if one were to collapse by determining the consensus base call, errors from amplification bias could still be represented in the consensus base call generated.” Id. at 43–44 (emphasis omitted, citing Ex. 2023 ¶¶ 134–37). Second, Patent Owner argues a person of ordinary skill in the art would have understood that the “collapsing step” of claim 1 is distinct from the “determining step” based on the specification of the ’730 patent. PO Resp. 43–45. For example, Patent Owner explains that the specification states that “[f]or any target:differentiator tag combination observed more than once, all such reads are ‘collapsed’ into a single read before consensus basecalls are determined. This will cancel the effect of bias on consensus basecall accuracy.” Id. at 43 (emphasis omitted) (quoting Ex. 1001, 72:63– 73:5) (citing Ex. 2023 ¶¶ 133, 138–142).” slip op. at 11

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

    “We have considered both parties’ arguments and evidence and agree with Patent Owner’s position. As discussed above, we agree with Patent Owner that the “collapsing step” recited in claim 1 and the “determining step” recited in claim 2 are two different steps required by the challenged claims such that “collapsing” does not mean determining a consensus base call or sequence, and must occur before any determining step. As a result, we determine Chee’s step of determining a consensus sequence does not disclose the “collapsing step” recited in claim 1 that requires collapsing “target:differentiator tag combinations.” We are also unpersuaded by Petitioner’s reliance on Chee’s process of correcting for amplification bias as disclosing the claimed collapsing step. As recognized by Patent Owner, the claim language of the “collapsing step” requires “collapsing target:differentiator tag combinations,” rather than collapsing only differentiator tags. In view of this requirement, Chee does not disclose the “collapsing step” because Chee teaches quantifying the starting nucleic acid molecules using their unique identifiers, rather than target:differentiator tag combinations. As Petitioner admits, “Chee’s technique for correcting amplification bias corrects quantitative errors without correcting sequencing errors” (Reply 15), whereas claim 1’s “collapsing step” corrects both quantitative errors and sequencing errors by using target:differentiator tag combinations. See Ex. 1001, 131:47–49 target:differentiator tag combinations).” slip op. at 41

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

    “Given this claim interpretation requiring collapsing target:differentiator tag combinations, it is undisputed that McCloskey, who uses unique barcodes alone, does not teach this limitation. Petitioner does not rely on Bignell as teaching this collapsing step. Accordingly, we conclude Petitioner has not shown that the combination of Bignell and McCloskey teaches the “collapsing step” recited in claim 1. Because claims 4 through 6 depend from claim 1, they also require the “collapsing step” of claim 1 that is not taught by the combination of Bignell and McCloskey.” slip op. at 54

  Patent outcomesUS 11,840,730 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 11,840,730
• Alamar Biosciences, Inc. v. Olink Proteomics ABNo claims unpatentable
  PTAB · Mar 4, 2026 · IPR2024-01353 · APJ Tawen Chang · IPR · Final written decision

  Claims 1–20 were not shown unpatentable: the asserted obviousness grounds failed, including because Kanan and Neri did not teach selecting the claimed cis-reactive cells.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Accordingly, for purposes of this decision we adopt Petitioner’s proposal of a person of ordinary skill in the art, with the following changes noted in italics below: A person with “an advanced degree, such as a Ph.D., in organic chemistry, molecular biology, biochemistry, or a related field; and about two years of experience in industry and/or laboratory experience relating to small molecules and proteins and would have been familiar with nucleic acid chemistry and conventional hybridization techniques; and (b) access to one or more team members having an advanced degree, such as a Ph.D., in organic chemistry, molecular biology, biochemistry, or a related field; and about two years of experience in industry and/or laboratory experience relating to high throughput screening techniques such as nucleic acid sequencing. A person could also have qualified as a POSA with less formal education and more technical or professional experience.11 We emphasize, however, that our decision would not change if we instead used Patent Owner’s proposed definition of a POSA.” slip op. at 13

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

    “Because the parties have placed the limitation “selecting all cis- reactive cells exhibiting the detectable trace” into controversy, we construe the term below, but only to the extent necessary to resolve the controversy. See 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)). For the reasons discussed below, we agree with Patent Owner that the plain and ordinary meaning of this phrase, in light of the language of the claims, the Specification, and the prosecution history of record, requires “selecting all of the [molecular complexes or structures] meeting the defined criteria for [cis-reactive cells (CRCs)] and exhibiting the detectable trace.” Sur-reply 8 (citing Ex. 2008 ¶¶ 94, 98–119). We further agree that cis-reactive cells should be construed to mean “an association of at least two interactor moieties, joined by an associated oligonucleotide.” (PO Resp. 9 (quoting Ex. 1001, 9:35-37)). Accordingly, we determine that, properly construed, the claims require that what is “selected” at step 1(d) — what is differentiated or set apart from other molecular complexes or structures in the reaction mixture at the conclusion of step 1(d) — to be “an association of at least two interactor moieties joined by an associated oligonucleotide” that exhibits the detectable trace.” slip op. at 16

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

    “We agree that Petitioner has not shown that the combination of Kanan and Neri teaches “selecting all cis-reactive cells exhibiting the detectable trace,” as we have construed that phrase above. In particular, we determine that, properly construed, the limitation requires the selection of “all associations of at least two interactor moieties joined by an associated oligonucleotide and exhibiting the detectable trace.” Instead, as described in Kanan, what is “selected” is the molecules of interest joined by bond formation, with only one of the molecules of interest coupled to a nucleic acid moiety. Thus, the selected molecular complex or structure does not comprise two interactors (i.e., two molecules of interest coupled to NAMs). Moreover, to the extent there are two interactors, they are joined by the bond between the molecules of interest rather than an associated oligonucleotide.” slip op. at 35

  • ExcludeMotion to exclude, deniedDenied

    “III. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE Patent Owner moved to exclude Exhibit 1008, on the ground that it contains settlement statements and that Rule 408 of the Federal Rule of Evidence prohibits Petitioner from using the statements to impeach or contradict Patent Owner. Mot. 5. Because we do not rely in our analysis on this exhibit, we dismiss the Motion to Exclude as moot.” slip op. at 43

  Patent outcomesUS 7,883,848 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,883,848
• Illumina Inc. v. Molecular Loop Innovations LLCNo claims unpatentable
  PTAB · Jan 13, 2026 · IPR2024-00964 · APJ Annette R Reimers · IPR · Final written decision

  Claims 1–8 were not shown unpatentable over either asserted §103 combination because the prior art did not teach the discarding step or establish a reasonable expectation of success.

  RulingsFinal written decision

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

    “specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice.” Phillips, 415 F.3d at 1323. “[T]he line between construing terms and importing limitations”, however, “can be discerned with reasonable certainty and predictability if [our] focus remains on understanding how a person of ordinary skill in the art would understand the claim terms.” Id. Ultimately, we construe claim terms to “capture the scope of the actual invention more accurately than either strictly limiting the scope of the claims to the embodiments disclosed in the specification or divorcing the claim language from the specification.” Id. at 1324. Here, we are tasked with resolving the dispute between the parties as to the scope of the source of the claimed cross-over error. See Sur-reply 2. Although claim 1 does not explicitly recite cross-over error is created during cluster amplification, the specification shows otherwise. It repeatedly, consistently, and exclusively describes cross-over errors as arising from the formation of chimeric molecules during the amplification step of the sequencing workflow. See Ex. 1001, Fig. 1, Fig. 2, 4:29–52 (describing “improper molecular overlap via formation of a heteroduplex between patient A’s nucleic acid template and patient B’s nucleic acid template” “[w]hen the amplification process begins”), 5:29–58 (the same), 6:25–44 (the same), 6:64–7:23 (the same).” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of skill in the art (“POSA”) “would have had (i) a Ph.D. in molecular biology, genetics, bioinformatics, or a related field and at least two years of experience in high-throughput sequencing technologies or (ii) a Master’s degree in one of the same fields with at least four years of experience in high-throughput sequencing technologies.” Pet. 17 (citing Ex. 1003 ¶¶ 19–20). Patent Owner states that it adopts Petitioner’s proposal for a POSA for purposes of this proceeding. PO Resp. 13 (citing Ex. 2001 ¶¶ 19–22). We adopt Petitioner’s proposed definition of the skill level as it is consistent with the prior art’s demonstration of the level of ordinary skill in the art at the time of the invention. We find both Dr. Spellman and Dr. Adalsteinsson are qualified to opine from the perspective of a POSA, because each has at least ordinary skill in the art. See Ex. 1003 ¶¶ 4–15; Ex. 2001 ¶¶ 4–9.” slip op. at 8

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

    “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 9 Because, as explained below, we find Petitioner has not met its burden to show reasonable expectation of success, we do not need to address whether Petitioner has shown sufficient reason to combine the asserted references. 821 F.3d 1359, 1367 (Fed. Cir. 2016); see also Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 966 (Fed. Cir. 2014) (stating that “failure to consider the appropriate scope of the . . . patent’s claimed invention in evaluating the reasonable expectation of success . . . constitutes a legal error”). Here, the claimed invention is a method for reducing template cross-over error. Thus, we must determine whether, in December 2010, an ordinarily skilled artisan would have reasonably expected that the combination of Parameswaran and Gloor would reduce template cross-over error. slip op. at 26

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

    “Thus, on this record, we are persuaded by Patent Owner’s argument that Parameswaran’s “unexpected perfect pairings of unmatched forward and reverse barcodes” are not cross-over error. PO Resp. 31 (citing Ex. 2001 ¶¶ 116–123). In addition, as Petitioner acknowledges, Parameswaran merely “distinguished,” but did not “discard” sequences with mismatches. Pet. 34. Parameswaran states that “[t]he low false-discovery rate for perfect matches strengthens the argument that any sequence with both 5’ and 3’ barcode motifs will be placed with reasonable accuracy into the correct bin.” Ex. 1004, 8. But, because Parameswaran achieved a “remarkably low misassignment rate,” it did not discard, but included any sequence with a matched barcode. Id. Indeed, Parameswaran explains that “[f]or our purposes, all sequences with a match to one of the two expected sequence motifs were considered as true members of the corresponding dataset.” Id. In its Reply, Petitioner emphasizes Parameswaran’s language “[f]or our purposes.” Reply 14 (citing Ex. 1004, 8). According to Petitioner, “[a] POSA would have understood from Parameswaran that chimeric sequences could be kept or discarded, depending on the sequencing ‘purpose.’” Id. (citing Ex. 1054 ¶¶ 79–82). Petitioner is asking us to deem unpatentable a claim based on its reading of “for our purposes,” a broad, undefined statement, to mean something specific—a suggestion to discard perfect unexpected pairings, which Parameswaran explicitly did not do. See Ex. 1004, 8. Petitioner has not presented sufficient evidence and persuasive argument for us to do so.” slip op. at 24

  Patent outcomesUS 11,041,852 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,041,852
• Sarepta Therapeutics, Inc. v. The Trustees Of The University Of PennsylvaniaNo claims unpatentable
  PTAB · Aug 20, 2025 · IPR2024-00580 · APJ Susan L C Mitchell · IPR · Final written decision

  The Board held claim 8 not shown unpatentable under each of three §103 grounds because Petitioner failed to establish motivation to combine the references with a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In addressing the level of ordinary skill in the art, Petitioner contends that a person of ordinary skill in the art (“POSA” or “POSITA”) would have had at least a Ph.D. in biochemistry, molecular biology, or a related field and between one and four years of post-doctoral experience in the field of gene therapy. Alternatively, a POSA would have had at least a Master’s or Bachelor’s Degree in biochemistry, molecular biology, or a related field, with a corresponding number of additional years of experience in the field of gene therapy. Pet. 12 (citing Ex. 1005 ¶¶ 111–115). Patent Owner states that it does not challenge Petitioner’s definition. PO Resp. 10. On this complete record, we accept Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’274 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11

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

    “Petitioner asserts that the ’274 patent “does not specify a particular program or set of program parameters that should be used to align sequences and calculate percent identity for purposes of determining whether a particular test sequence falls within the scope of the claims.” Pet. 21. Petitioner asserts that it analyzed the percent identity claim elements, as Patent Owner did in the parallel District Court litigation, Penn-II, “using the Clustal program at default settings to generate amino acid sequence alignments and calculate percent identity values.” Id. at 21–22. Petitioner, however, does not ask for any particular construction of any claim term. See id. Patent Owner states that it “does not challenge Petitioner’s articulation of the lack of a need for claim construction.” PO Resp. 10. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision. See 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)); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 12

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “According to the import of the complete recitation of paragraph 250 of the ’772 Publication set forth above that Petitioner relies upon for the motivation to improve efficient gene transfer in liver, AAV8 already fulfills this need. See Tr. 28:15–18. We do not read the ’772 Publication as calling for a search for a more efficient variant to improve efficient gene transfer in liver. We credit Dr. Samulski’s testimony that supports this view of the teachings of the ’772 Publication. Dr. Samulski testifies: Additionally, when the inventors compared AAV8’s expression in the liver against new serotypes AAVrh2, AAVrh10, AAVrh13, and AAVrh21, they found that AAV8 remained superior: EX1007, ¶ 253. Notably, AAV8 was shown to have over fifty percent (50%) greater expression in liver than AAVrh10. As I discuss more below, a skilled artisan in 2005 would not have expected a single amino acid substitution to significantly alter tropism in order to target to a different tissue. Thus, in my opinion, in 2005, a skilled artisan with the goal of targeting the liver would have selected the best known vector for delivery to liver at that time—AAV8. Ex. 2027 ¶ 42. We also agree with Dr. Samulski’s opinion that a POSA would have selected the best vector for liver, AAV8, instead of modifying another vector to increase tropism to liver. Dr. Samulski testifies: In my opinion, a skilled artisan in 2005 would not have looked solely to modify a vector to try to improve tropism to a particular tissue. As discussed throughout this declaration, changing tropism is difficult to predict, and a skilled artisan would not have had a reasonable expectation that changes could be made to improve or alter tropism. A skilled artisan would also have been concerned that changes, even small ones, could negatively impact other properties of the capsid protein. Therefore, rather than seek to modify a vector, a skilled artisan” slip op. at 29

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

    “The ’772 Publication, however, does not indicate as Petitioner asserts that a new variant is necessary to improve the efficiency of gene transfer to liver; the ’772 Publication indicates that AAV8 fulfills that need. See Ex. 1007 ¶ 250. In the paragraph that Petitioner relies upon for the alleged need to improve the efficiency of gene transfer to the liver, the ’772 Publication states in full: The tropism of each new vector is favorable for in vivo applications. AAV2/7 vectors appear to transduce skeletal muscle as efficiently as AAV2/1, which is the serotype that confers the highest level of transduction in skeletal muscle of the primate AAVs tested to date. Importantly, AAV2/8 provides a substantial advantage over the other serotypes in terms of efficiency of gene transfer to liver that until now has been relatively disappointing in terms of the numbers of hapatocytes stably transduced. AAV2/8 consistently achieved a 10 to 100-fold improvement in gene transfer efficiency as compared to the other vectors. The basis for the improved efficiency of AAV2/8 is unclear, although it presumably is due to uptake via a different receptor that is more active on the basolateral surface of hepatocytes. This improved efficiency will be quite useful in the development of liver-directed gene transfer where the number of transduced cells is critical, such as in urea cycle disorders and familial hypercholesterolemia. Id. (citations omitted) (emphasis added). According to the import of the complete recitation of paragraph 250 of the ’772 Publication set forth above that Petitioner relies upon for the motivation to improve efficient gene transfer in liver, AAV8 already fulfills this need. See Tr. 28:15–18. We do not read the ’772 Publication as calling for a search for a more efficient variant to improve efficient gene transfer in liver. We credit Dr. Samulski’s testimony that supports this view of the teachings of the ’772 Publication. Dr. Samulski testifies: Additionally, when the inventors compared AAV8’s expression in the liver against new serotypes AAVrh2, AAVrh10, AAVrh13, and AAVrh21, they found that AAV8 remained superior:” slip op. at 28

  Patent outcomesUS 11,680,274 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,680,274
• Gene Company Pty Ltd v. The Trustees Of Columbia University In The City Of New YorkNo claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00313 · APJ Tawen Chang · IPR · Final written decision

  Claims 1–54 were not shown unpatentable because Petitioner failed to establish a reasonable expectation of success for the proposed combinations; objective indicia also supported non-obviousness.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “As to the first issue, we agree with Patent Owner that defining the level of skill in view of the solution described in the patent risks improper hindsight. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 18 (“[T]he level of skill in the art is a . . . lens through which . . . the Board views the prior art and the claimed invention,” which “prevents . . . factfinders from using their own insight or . . . hindsight[] to gauge obviousness.”). We therefore do not include “practical knowledge about . . . the deuterium isotope effect, including the patents and publications discussed [in the Petition],” as part of our definition of a person of ordinary skill in the art.” slip op. at 18

  • Expert testimonyPetitioner expert creditedMixed

    “person of ordinary skill in the art would employ” in an obviousness analysis, we give some weight to Dr. Guengerich’s testimony. KSR, 550 U.S. at 418; Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (explaining that “motivation to combine may be found. . . in . . . the background knowledge, creativity, and common sense of the person of ordinary skill”). Nevertheless, even if we were to agree that an ordinarily skilled artisan would have seen the 1,5-shift in NRPE in Mata’s A2E biosynthetic pathway as a particularly desirable location for intervention, we are not persuaded that such a person would have been motivated to substitute C20 deuterated vitamin A for the vitamin A in Ortho Pharma’s composition and method, because Petitioner has not shown, by a preponderance of evidence, that such an artisan would have reasonably expected the substitution to retard the accumulation of A2E or to treat macular degeneration.” slip op. at 42

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

    “In our Institution Decision, we preliminarily construed the preamble of claim 28 as limiting. Inst. Dec. 30–31. Petitioner did not take issue with our construction, or dispute Patent Owner’s construction of the preambles of claims 1 and 29 as also limiting. After consideration of the full trial record, we maintain our construction of the preamble of claim 28 as limiting for the reasons set forth in our Institution Decision. For similar reasons and the reasons set forth in Patent Owner’s Response, we further construe the preambles of claims 1 and 29 as limiting. See PO Resp. 12–14. We further determine that we do not need to construe any other claim term in order to resolve the controversy between the parties. See 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)).” slip op. at 26

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

    “415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.” slip op. at 25

  Patent outcomesUS RE47,045 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Twinstrand Biosciences, Inc. v. Guardant Health, Inc.No claims unpatentable
  PTAB · Jan 26, 2024 · IPR2022-01400 · APJ Michael A Valek · IPR · Final written decision

  Claims 1–29 were not shown unpatentable over the asserted obviousness grounds because the prior-art combinations did not teach key limitations of claims 1, 17, and 29.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Having considered these arguments on the full trial record, we find Patent Owner has the better position because Petitioner’s showing that element 1(b) is taught by Schmitt is unpersuasive. We begin with Patent Owner’s argument concerning the distinction between the cfDNA molecules and the duplex tag comprising the molecular barcode found in the text of claim 1. Element 1(a) recites “a population of cell-free deoxyribonucleic acid (cfDNA) molecules.” Ex. 1001, 61:7–9. Element 1(b) recites “tagging a plurality of the cfDNA molecules in the population” of element 1(a) “with duplex tags comprising molecular barcodes to produce tagged parent polynucleotides . . . wherein the duplex tags are attached to both ends of a added). We agree with Patent Owner and credit the testimony of its declarant that this claim language distinguishes the duplex tags from the ends of the cfDNA molecule to which they are attached. Resp. 8; Ex. 2015 ¶¶ 38–39, 60, 61. That is, the duplex tag is not part of the cfDNA molecule itself, but rather is “attached to both the ends” of that molecule by “tagging” it as recited in element 1(b). We also agree with Patent Owner that given this distinction, claim 1 does not encompass Schmitt’s hybrid embodiment. Resp. 18–20. As Petitioner notes, “[i]n Schmitt’s hybrid-tag embodiment, the strands are grouped based on the combination of the short n-mer barcode and the end of the target DNA.” Pet. 11; see Resp. 17 (“[T]he combination of the endogenous shear sequence and exogenous 3-mer sequence together provide the SMI used for grouping and matching in Schmitt’s DCS process.”). Petitioner and its declarant illustrate the grouping in Schmitt’s hybrid embodiment with the following diagram. Pet. 12; Ex. 1002 ¶¶ 96–98. Petitioner’s diagram shows the PCR products produced from sequencing a “Target DNA” molecule that has been tagged with 3-mers X and Y according to Schmitt’s hybrid embodiment. See Ex. 1002 ¶ 98 (describing diagram). A portion of the endogenous sequence of the DNA molecule labeled L and R is used in combination with the 3-mer sequence to group the resulting strands into two families labeled the “X+L→R+Y Family” and the “R+Y→X+L Family.” Ex. 1002 ¶ 98; Ex. 2015 ¶ 62 (explaining that Petitioner’s diagram shows that “the relied upon hybrid SMI sequences of Schmitt include sequence from the sample DNA molecule not contained in the adapter or the duplex tags”). SMIs, differently label the strands and therefore are the recited “duplex tags.” See Pet. 27–28 (“duplex tags comprise both the fragment DNA end sequences and a shorter n-mer tag”) (emphasis added) (internal quotations omitted). However, we credit Dr. Quackenbush’s testimony that end sequences L and R are not “attached to both ends” of the cfDNA molecule by “tagging” it as recited in element 1(b). See Ex. 2015 ¶ 59–62 (explaining that Schmitt’s hybrid SMI sequences include a portion of the sample DNA molecule, which is “not contained in adapter molecules or duplex tags that are attached to the DNA molecules”). Rather, end sequences L and R are the pre-existing, endogenous ends of that molecule. Id. Thus, Petitioner’s theory of unpatentability does not account for the distinction the claim language draws between the cfDNA molecule and the duplex tags. Petitioner’s argument that the ’306 patent defines “duplex tag” as a” slip op. at 20

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

    “That is, although Meyer teaches that its particular protocol results in 40–60% tagging efficiency, Petitioner has not sufficiently explained why a person of ordinary skill in the art would have expected Meyer’s tagging efficiency to apply to Schmitt’s DCS method when used with Narayan’s sequencing of cfDNA. For example, the Petition does not address the differences between Meyer’s adapters and Schmitt’s adapters and how those differences affect the tagging efficiency. Meyer’s barcodes comprise “single self-hybridized palindromic oligonucleotides, carrying an Srf I restriction site in the middle (GCCCGGGC), a sequence tag at the 3’ end and the reverse complementary tag sequence at the 5’ end.” Ex. 1005, Fig. 1. Schmitt, on the other hand, teaches a “hybrid method” of tagging that uses a combination of the sheared ends of the DNA fragments and a “shorter n-mer tag (such as 1 or 2 or 3 or 4 or more degenerate or semi degenerate bases) in the adaptor.” Ex. 1083 ¶ 30. sticky-end adapter-DNA litigation to be even more efficient than Meyer’s blunt-end adapter-DNA ligation” is also unpersuasive. See Pet. 60–61. The KAPA data sheet discloses sticky-end adapter DNA ligation, but KAPA teaches that only 0.5 to 15% tagging efficiency is expected when the starting sample is 100 pg–100 ng of “high quality DNA.” Ex. 1015, 4. Thus, the KAPA data suggests that the use of sticky-end adapters, such as what Schmitt discloses, does not in and of itself teach or suggest the tagging efficiency limitations. Moreover, the record shows that tagging efficiency depends on a variety of other factors, including the quality of the input DNA. The KAPA data sheet states that tagging efficiency “can be significantly lower for DNA of lower quality.” Ex. 1015, 4. Fisher also explains that “the efficiency of adaptor ligation varies between samples, probably because of variation in input DNA quality.” Ex. 1031, 5–6. Petitioner’s argument that the DNA the KAPA data sheet refers to as “lower quality” is “from formalin-fixed, paraffin-embedded (‘FFPE’) samples (well known for having chemically damaged DNA)” is unavailing. See Reply 25–26 (citing Ex. 1098 ¶¶ 96–98). First, neither Petitioner, nor its declarant, address the similar teaching in Fisher. Second, even if the specific type of lower quality DNA in the KAPA data sheet is different, the salient point, i.e., that tagging efficiency depends on DNA quality, remains unrebutted. This is significant because Petitioner does not sufficiently address how the quality of the cfDNA of Narayan compares to the quality of the genomic DNA samples of Meyer and Schmitt or how that would affect the expected tagging efficiency. Petitioner’s assertion that “significant quantities of cfDNA could be isolated from blood samples” (see Reply 26), fact that a significant quantity of cfDNA could be obtained does not show that the quality of that DNA is similar such that a POSA using such would have expected to achieve a tagging efficiency similar to that in Meyer.” slip op. at 40

  • Strike new argumentNew argument disregardedDenied

    “We are not persuaded. First, this is an inappropriate new argument. The Petition presents a different mapping, alleging that the “duplex tag” comprises both the endogenous end sequence of the cfDNA molecule and the 3-mer barcode of Schmitt’s hybrid tag embodiment. Pet. 27 (“the duplex tags comprise both the fragment DNA end sequences and ‘a shorter n-mer tag’ to serve as ‘unique molecular identifiers’”) (quoting Ex. 1083 ¶ 30, Ex. 1002 ¶¶ 162–163); see also Tr. 62:13–63:19 (Petitioner’s counsel noting he was unaware of any explicit statement in the Petition that Schmitt’s duplex tag comprised just the 3-mer without the end sequence). Nor did Petitioner regarding element 1(b). See Reply 8–10. Rather, consistent with the mapping in the Petition, the Reply identifies “Schmitt’s hybrid tags,” i.e., the combination of the endogenous end sequence and the n-mer, as the duplex tags in element 1(b). See Reply 8 (urging that “duplex tags” are “tags that differently label the complementary strands,” which “is precisely what Schmitt’s hybrid tags do”). Because this argument was not previously presented, Patent Owner has not been afforded a sufficient opportunity to address it. Thus, Petitioner’s new argument excluding the end sequences in Schmitt’s hybrid tag embodiment from the alleged “duplex tags comprising molecular barcodes” has been waived. Second, even if we were to consider it on the merits, Petitioner’s new mapping for element 1(b) is inconsistent with Petitioner’s allegations for element 1(e). Element 1(e) recites “reducing or tracking redundancy” in sequence reads “using at least sequencing information from the molecular barcodes of the duplex tags to determine distinct cfDNA molecules.” Ex. 1001, 61:26–30. For these limitations, the Petition points to Schmitt’s grouping of reads into families based on their SMI and asserts that Schmitt determines distinct cfDNA molecules based on “the complementary nature of the SMI on the two strands of the duplex.” See Pet. 30–32 (internal quotations omitted). Thus, like Petition’s mapping for element 1(b), Petitioner’s allegations for element 1(e) rely on a duplex tag that includes both the 3-mer and the end sequence of the cfDNA molecule. Petitioner has not sufficiently explained, much less shown by a preponderance of the evidence, that Schmitt teaches or suggests the limitations in element 1(e) based on its new mapping of the 3-mer alone as duplex tags.” slip op. at 25

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied

    “We do not rely on any of these exhibits in rendering our decision on Petitioner’s grounds. Therefore, we dismiss as moot Petitioner’s motion to exclude Exhibits 1069, 1074, 1078, 1079, and 1085–1088.” slip op. at 46

  Patent outcomesUS 11,149,306 not shown unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,149,306
• Apple Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 30, 2023 · IPR2022-00037 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 were not shown unpatentable under the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’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. 8. In proposing a different level of ordinary skill in the art, Patent Owner does not explain why its proposed skill level is more appropriate.12 PO Resp. 16. In addition, the parties’ proposed definitions are materially similar. 12 Petitioner does not address the level of ordinary skill in the art in its Reply. definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 10

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

    “We determine that we need not expressly construe “movement sensor” to resolve the parties’ disputes because doing so would have no effect on the analysis below. See 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, 200 F.3d at 803 (Fed. Cir. 1999)). To the extent the parties raise claim construction issues in addressing the asserted grounds, we address such issues below.” slip op. at 12

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

    “Also, the Petition merely states that “Ono supports instances where the user stops the step-counting mode operation using switch S2 after the processor detects that” the target distance or the target number of steps has been reached and notifies the user by generating an alarm sound. Pet. 53 (emphasis added). In this case, supporting the notion of the user stopping the step-counting mode operation in response to the alarm is not the same as teaching or suggesting the notion to one of ordinary skill in the art. The possibility that a user could stop the step-counting operation in response the alarm is insufficient to render claims 1 and 20 obvious to one of ordinary skill in the art. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Petitioner’s reliance on the Hewlett-Packard and Unwired Planet cases (Pet. 56) is unavailing, as the facts in those cases are distinguishable from the facts of the present proceeding. Namely, both of those cases involved prior art references that disclosed operations that satisfied a claimed feature some, but not all, of the time. Hewlett-Packard, 340 F.3d at 1326; Unwired Planet, 841 F.3d at 1002. Here, Ono does not disclose the user stopping the step-counting mode operation in response to the alarm even some of the time. In view of the above, we determine, based on the full record, that the combination of Ono and Hutchings does not disclose limitations [1f] or [20f]. Accordingly, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claims 1 and 20 are unpatentable over the combination of Ono and Hutchings.” slip op. at 28

  • BurdenNot shown unpatentable

    “We have determined incorporated Grounds 1, 2, 3A, 3B, and 4, as well as Ground 5A, deficient for the reasons discussed above. Furthermore, to the extent Petitioner contends that any of these combinations somehow adds something to supplement or strengthen the patentability analysis of the incorporated grounds, we note that neither the Petition nor Dr. Kenny provides sufficient particularity to support such a position. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Accordingly, we are not persuaded on the complete record before us that Petitioner has demonstrated, by a preponderance of the evidence, that: (1) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Amano, Conlan, Kaufman, and Hickman (Ground 5B); (2) claims 1–5, 8–11, 20, 25, 30, 31, 36, 39–42, 45–47, 49, and 61–65 are unpatentable over the combination of Ono, Hutchings, Amano, and Conlan (Ground 6A); (3) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Amano, Conlan, and Hickman (Ground 6B); (4) claims 1, 3–5, 8–11, 20, 25, 30, 36, 39–42, 61–65, 144, and 147 are unpatentable over the combination of Ono, Hutchings, Amano, and Kaufman (Ground 7); (5) claims 1–5, 8, 10, 20, 25, 30, 31, 39, 41, 42, 45–47, 49, 61–65, 144, and 147 are unpatentable over the combination of Ono, Hutchings, Conlan, and Kaufman (Ground 8A); and (6) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Conlan, Kaufman, and Hickman (Ground 8B).” slip op. at 36

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,059,576
• Rideco Inc. v. Via Transportation, Inc.No claims unpatentable
  PTAB · Aug 17, 2023 · IPR2022-00740 · APJ Michael L Woods · IPR · Final written decision

  Petitioner failed to prove claims 1–13, 15, and 17–20 unpatentable under the asserted obviousness grounds, chiefly because Lambert did not teach system-selected virtual bus stops.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Having considered the parties’ arguments and evidence of record, we adopt Petitioner’s asserted level of ordinary skill. We find that Petitioner’s level of skill is consistent with the problems identified and solutions provided in the ’411 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to the backend artificial intelligence components in a ride-sharing system, as Patent Owner contends. See Pet. Reply 6–7; see also PO Resp. 20–23. We disagree with Patent Owner’s assertions that the ’411 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 20–23. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent to explain why the art of the ’411 patent is limited to artificial intelligence components in determining the relevant skill in the art. See id.; see also Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’411 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art for a patent that never even uses the term. We agree with Petitioner that a skilled artisan with an understanding of computer programming and navigation systems, as well as two to four years of experience in location-based systems, would understand the “computer-implemented transportation system” of the ’411 patent. In summary, we find that the relevant level of ordinary skill in the art “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37).” slip op. at 14

  • Expert testimonyDecided for petitioner

    “Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews’s testimony that he has experience in “locationbased systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. This experience demonstrates that Mr. Andrews had at least two years of experience in “optimization modeling.” The parties agree, however, that Mr. Andrews does not have experience working with ride-sharing systems. Nevertheless, Patent Owner’s definition includes artisans who lack that particular experience. Specifically, Patent Owner’s definition provides that: A person with an advanced degree (a master’s or Ph.D.) in computer science, operations research, industrial engineering, applied mathematics or a related field and a focus on data science, artificial intelligence or operations research would also have been an ordinary artisan in the field of the ’411 patent even if that person lacked two years of specific experience with ride-sharing systems. PO Resp. 20 (emphases added). In other words, even if the first prong of Patent Owner’s definition requires the expert’s experience to be “in the context of ride-sharing systems,” Mr. Andrews would nevertheless satisfy the qualifications of a POSITA under the second prong, which does not require experience with “ride-sharing systems.” See id. This Decision does not turn on the differences between the parties’ characterization of a skilled artisan.” slip op. at 15

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

    “The parties are in agreement. Despite the parties’ briefing on this term, the parties do not dispute the construction of “virtual bus stops.” Absent any controversy, we adopt the parties agreed-upon construction of the term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 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))). Specifically, we adopt the parties’ construction that “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” Compare PO Resp. 23, with Pet. Reply 4. We further adopt the parties’ construction that the system need not use artificial intelligence—whatever that may mean—to select the virtual bus stops. Compare PO Sur-reply 5, with Pet. Reply 4; see also supra § III.A (“[W]e need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never even uses the term.”).” slip op. at 18

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

    “performs actions (see, e.g., Ex. 1004, 2:49–52; 2:63–67, 3:19–20, 3:34–35), we decline to infer from Lambert’s single sentence (id. at 4:17–23) that Lambert’s server is also programmed to perform the step of “dynamically selecting pickup and dropoff locations” (i.e., virtual bus stops). In other words, if Lambert’s server was programmed to select pickup and dropoff locations, as Petitioner would have us believe, we find that Lambert’s disclosure would have stated so. It does not.” slip op. at 39

  Patent outcomesUS 10,197,411 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,197,411
• Apple Inc. v. Rfcyber Corp.No claims unpatentable
  PTAB · Jul 18, 2023 · IPR2022-00412 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–19 were not shown unpatentable because the Dua, GlobalPlatform, and Philips combination did not establish the claimed emulator personalization.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the full record before us, we agree with Petitioner that a person of ordinary skill in the art should have some level of experience relating to mobile payment technology. For example, the title of the ’787 patent, “Method and Apparatus for Conducting E-commerce and M-commerce,” provides a strong indication that mobile payments are a key aspect of the disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its technical field as: “The present invention is generally related to commerce over networks. Particularly, the present invention is related to electronic purses that can be advantageously used in portable devices configured for both electronic commerce (a.k.a., e-commerce) and mobile commerce (a.k.a., m-commerce),” which reinforces that mobile payment technology is a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s uncontroverted testimony that mobile payment experience is required, which we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10. On the other hand, we agree with Patent Owner that network security is an important aspect of the ’787 patent’s invention. But to the extent that Patent Owner is asserting that mobile payment technology and computer or network security are distinct concepts such that the proper level of ordinary skill would include experience in one or the other but not both, we disagree. Rather, we view the ’787 patent as relating to methods and apparatuses for 1:17–21) and describing security as being an aspect of the commerce (see id. at code (57) (“[A] mechanism is provided to enable a portable device to conduct transactions over an open network with a payment server without compromising security.”), 2:16–19 (“During a transaction, the security keys are used to establish a secured channel between an embedded e-purse and an SAM (Security Authentication Module) or backend server.”)). For the above reasons, we find Petitioner’s contentions on this issue more persuasive on the full record before us. In order to avoid any doubt that we consider computer or network security to be an element of mobile payment technology, we determine for the purposes of this Decision that one of ordinary skill in the art would have at least a Bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, including computer or network security. In addition, a lack of professional experience could be remedied by additional education, and vice versa.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner

    “ordinary skill in the art should have some level of experience relating to mobile payment technology. For example, the title of the ’787 patent, “Method and Apparatus for Conducting E-commerce and M-commerce,” provides a strong indication that mobile payments are a key aspect of the disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its technical field as: “The present invention is generally related to commerce over networks. Particularly, the present invention is related to electronic purses that can be advantageously used in portable devices configured for both electronic commerce (a.k.a., e-commerce) and mobile commerce (a.k.a., m-commerce),” which reinforces that mobile payment technology is a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s uncontroverted testimony that mobile payment experience is required, which we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10. On the other hand, we agree with Patent Owner that network security is an important aspect of the ’787 patent’s invention. But to the extent that Patent Owner is asserting that mobile payment technology and computer or network security are distinct concepts such that the proper level of ordinary skill would include experience in one or the other but not both, we disagree. Rather, we view the ’787 patent as relating to methods and apparatuses for 1:17–21) and describing security as being an aspect of the commerce (see id. at code (57) (“[A] mechanism is provided to enable a portable device to conduct transactions over an open network with a payment server without compromising security.”), 2:16–19 (“During a transaction, the security keys are used to establish a secured channel between an embedded e-purse and an SAM (Security Authentication Module) or backend server.”)). For the above reasons, we find Petitioner’s contentions on this issue more persuasive on the full record before us. In order to avoid any doubt that we consider computer or network security to be an element of mobile payment technology, we determine for the purposes of this Decision that one of ordinary skill in the art would have at least a Bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, including computer or network security. In addition, a lack of professional experience could be remedied by additional education, and vice versa. Regarding Petitioner’s assertion that Mr. Gomez’s testimony should be given little to no weight, Patent Owner argues that Mr. Gomez is well qualified under both proposed levels of ordinary skill. Sur-reply 4–5. During the hearing, Petitioner modified its position somewhat, arguing that Mr. Gomez’s “testimony should be accorded little to no weight, particularly where he weighs in on issues specific to financial transactions and smart cards.” Tr. 8:15–18 (emphasis added). Petitioner stated further that “[w]e’re simply asking the Board to take into the account each individual expert’s background knowledge on a per issue basis.” Id. at 59:26–60:2. Based on the full record, we disagree that all of Mr. Gomez’s testimony” slip op. at 12

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

    “Petitioner contends that all claim terms, except “emulator” and “midlet,” should have their plain and ordinary meaning. Pet. 12. As to the claim terms “emulator” and “midlet,” Petitioner contends that the ’787 patent expressly defines those terms “so those definitions are controlling.” Id. (citing Ex. 1001, 4:47–50, 5:20–22). Patent Owner argues that “claim construction is not required to resolve any issues” in this proceeding. PO Resp. 9. We determine that we need not expressly construe any claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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” slip op. at 14

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

  Patent outcomesUS 9,189,787 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,189,787
• Rideco Inc. v. Via Transportation, Inc.No claims unpatentable
  PTAB · Jun 23, 2023 · IPR2022-00286 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted combinations failed to teach or render obvious system-selected virtual bus stops and a pair of associated stops.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Discussion We have considered the parties’ arguments and evidence of record, and we adopt Petitioner’s asserted level of ordinary skill because it is consistent with the problems identified and solutions provided in the ’824 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to backend artificial intelligence components in a ride-sharing system as Patent Owner contends. See Pet. Reply 10–11; see also PO Resp. 31–32. We disagree with Patent Owner’s assertions that the ’824 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 31–32. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent in determining the relevant skill in the art to explain why the art of the ’824 patent is limited to artificial intelligence components. See id.; Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’824 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims, without support, that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never uses the term. We agree with Petitioner that an artisan with an understanding of computer programming and navigation systems as well as two to four years of experience in location-based systems would understand the “computer-implemented transportation system” of the ’824 patent. In summary, we find that the relevant level of ordinary skill in the art “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Having addressed the relevant skill in the art, we address Patent Owner’s contention that Mr. Andrews “is not qualified to offer opinions concerning the artificial intelligence components of a ride-sharing system that are at issue in the ’824 patent.” PO Resp. 37. As discussed previously, we disagree with Patent Owner’s proposed qualifications for a person of ordinary skill in the art, and have adopted Petitioner’s position. Patent Owner does not offer an opinion as to whether Mr. Andrews would be qualified as a person of ordinary skill in the art under Petitioner’s definition. The record reflects that Mr. Andrews possessed an advanced degree in electronic engineering, had a working knowledge of computer programming and navigation systems, and had more than two years of experience with location-based systems, user interfaces, and databases at the time of the ’824 patent. See, e.g., Ex. 1003 ¶¶ 4–19; Ex. 1009. Therefore, we find that Mr. Andrews is qualified to offer opinions as a person of ordinary skill in the art for the ’824 patent under the relevant definition. Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews testimony that he has experience in “location-based systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. Furthermore, given Mr. Andrews’s advanced degree, Patent Owner’s definition would allow Mr. Andrews to have less than two years of experience in the pertinent fields. PO Resp. 30; Ex. 1003 ¶ 6.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Under these circumstances, where the parties now agree that the ordinary meaning should apply to “virtual bus stops” and the district court adopted the same approach, we see no reason to depart from applying the ordinary meaning in this proceeding. We therefore apply the plain and ordinary meaning proposed by the parties, where “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” As to the construction of dependent claim 8, we agree with Patent Owner that we need not formally construe the term to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 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))). As to Petitioner’s remaining arguments, we do not read artificial intelligence or other limitations into the claims as Petitioner warns against, and Petitioner does not argue for any specific construction in relation to these arguments that would require us to resolve a specific claim construction dispute. See Pet. Reply 4–10.” slip op. at 16

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Ex. 1004, 4:17–23. The Petition does not cite to any declarant support, additional prior art, other embodiments in Lambert, or any obviousness analysis when addressing “virtual bus stops.” See Pet. 25. Although for later aspects of claim 1 the Petition relies on Poykko and an obviousness analysis when arguing that it would have been obvious to configure Lambert’s server to operate in a certain way (e.g., to access memory that includes a database of locations as taught by Poykko), the Petition does not rely on such an analysis when first addressing “virtual bus stops” alone. See id. The combination of Lambert’s statement above with Poykko and other aspects of Lambert, potentially with allegedly obvious modifications of Lambert, may serve as the basis of Petitioner’s arguments for these later limitations involving “virtual bus stops,” but these later allegations do not reach back and redefine Petitioner’s more limited argument with respect to “virtual bus stops” in isolation.8 To the extent Petitioner argues in its Reply that a combination of Lambert and Poykko or other obviousness arguments 8 In our Institution Decision, we noted that Patent Owner, at that stage of the proceeding, failed to properly address Petitioner’s proposed combination of Lambert and Poykko for various “virtual bus stop” limitations. Inst. Dec. 22–23. That said, we do not view the Petition’s arguments and evidence as to “virtual bus stops” limitation in isolation, prior to addressing the “memory” limitation and adding Poykko and obviousness to the analysis, as relying on a combination of Lambert and Poykko or obviousness. See Pet. 25. satisfy the “virtual bus stops” limitation, we agree with Patent Owner that this introduces an improper new theory in the Reply. See PO Sur-reply 20– 22.” slip op. at 29

  Patent outcomesUS 9,816,824 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,816,824

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.