• Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Aortic Innovations, LLCAll claims unpatentable
  PTAB · Mar 10, 2023 · IPR2021-01527 · APJ John G New · IPR · Final written decision

  Claims 8 and 13–17 are unpatentable as obvious over Spenser and Spenser II because their teachings support the claimed sealing features and endovascular delivery.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art in November 2012 would have been an interventional cardiologist with a working knowledge of heart valve designs and endovascular prostheses. Pet. 23. Petitioner asserts that such a skilled artisan would, where necessary, 10 work with a medical device engineer to experiment with or manufacture a prosthetic heart valve. Id. (citing Ex. 1003 ¶ 45). Patent Owner does not expressly dispute Petitioner’s definition. We consequently adopt Petitioner’s definition of a person of ordinary skill in the art as an interventional cardiologist with a working knowledge of heart valve designs and endovascular prostheses, that would, where necessary, work with a medical device engineer to experiment with or manufacture a prosthetic heart valve. We also find that Petitioner’s definition is commensurate with the level of skill reflected in the prior art. See, e.g., Exs. 1006, 1010, 1030, 1033; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We conclude that Dr. Buller has sufficient experience to qualify as an expert and a person of ordinary skill in the art. We find that Dr. Buller has experience as an interventional cardiologist with a working knowledge of heart valve designs and endovascular prostheses, as required by our definition of one of skill in the art. See Section II.A above. We find this, particularly, in view of Dr. Buller’s extensive experience with endovascular 21 Dr. Buller was awarded a B.Sc. in 1977 and a M.B. B.S. in 1980. An M.B. B.S. (Bachelor of Medicine, Bachelor of Surgery) is the primary medical degree in the United Kingdom. See MBBS (Bachelor of Medicine & Bachelor of Surgery), available at: https://scholar.harvard.edu/narender/classes/mbbs-bachelor-medicine-bachelor-surgery (visited January 30, 2023). It is the professional equivalent of an M.D. in the United States. 52 catherization and stent implantation, which relate intimately to a central issue of this inter partes review, viz., whether the device claimed in the ’172 patent can be delivered endovascularly. We acknowledge that Dr. Buller appears never to have personally performed a TAVR, but his knowledge of the device and the procedures appears to be intimate and thorough. As Petitioner points out, the arguments presented by Patent Owner have been previously considered by the Board, in the ’060 IPR. In that proceeding, we found that the Patent Owner in that case had failed to sufficiently demonstrate why Dr. Buller should not be considered an expert, let alone a person of ordinary skill in the art. See ’060 IPR, Paper 64 at 10– 11. We find the same reasoning applies here. Furthermore, with respect to the weight we should accord Dr. Buller’s” slip op. at 52

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

    “We disagree. Spenser II provides, and the prior art Norris provide ample motivation for combining a compressible cloth, as a sealing material, with the TAVR disclosed by Spenser. For example, Spenser II teaches (and Patent Owner concedes) that the problem of PVL was well known in the art at the time of invention: “Cardiac valve implantation is well known in the art. Less well addressed is how to detect possible leaks between the valve and surrounding blood vessel, how to seal such leaks, or how to design the valve such that it automatically seals the leaks.” Ex. 1011 ¶ 2. Figure 22 64 depicts Spenser II’s compressible cloth, which, added to the external surface of a TAVR, acts “to reduce or prevent paravalvular leaks.” Id. at ¶ 144; see also id. at ¶¶ 55, 145 (“To reduce or prevent paravalvular leakage, a layer of compressible material 256 is disposed along an outer surface of the stent 15 structure 252). Similarly, Norris expressly provides motivation for a skilled artisan to add a compressible outer cloth to a TAVR: Medical devices such as vascular and endovascular grafts and stent-grafts can include fabric components that function to promote sealing of the device to the lumen or structure in which it is implanted.… Regaining its [i.e., the fabric’s] original shape, structure, and dimensions [once implanted] is important to achieve an adequate seal between the exterior of the device and the lumen or structure in which it is implanted. This is critical because any gaps or voids between the device and the implant site can prevent a reliable seal, which can lead to complications and/or device failure. Ex. 1074, col. 1, ll. 20–35. We conclude that Spenser II, particularly as evidenced by the prior art Norris reference, would have provided motivation for a person of ordinary skill in the art to combine the compressible outer cloth of Spenser II with the TAVR disclosed by Spenser so as to reduce PVL and its associated serious problems.” slip op. at 64

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

    “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of 65 ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). As we have explained above, Spenser II itself, and as further evidenced by the prior art Norris reference, expressly teaches the combination of a compressible outer cloth with a TAVR for heart valve replacement procedures, with the explicit purpose of reducing or eliminating PVL. See, e.g., Ex. 1011 ¶¶ 55, 145, 155; Ex. 1074, col. 9, ll. 18–26. Furthermore, Norris evidences that it was well known in the art, at the time of invention, that “[m]edical devices such as vascular and endovascular grafts and stent-grafts can include fabric components that function to promote sealing of the device to the lumen or structure in which it is implanted.” Ex. 1011, col. 1, ll. 20–23. Norris further evidences that its compressible cloth can be used with endovascularly-delivered “cardiovascular applications, such as with a heart valve or stent-graft.” Id. at col. 9, ll. 20–21. In short, Patent Owner points to no requisite knowledge on the part of a skilled artisan that is not derived from the prior art or that could have been gleaned only from the disclosures of the ’172 patent’s Specification or claims. McLaughlin, 443 F.2d at 1395. We consequently conclude that Patent Owner’s arguments in this respect are without merit.” slip op. at 65

  Patent outcomesUS 10,792,172 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,792,172
• Medtronic Vascular, Inc. / Medtronic Galway Vascular Unlimited Company et al. v. TMT Systems, Inc.No claims unpatentable
  PTAB · Mar 7, 2023 · IPR2021-01532 · APJ Cynthia M Hardman · IPR · Final written decision

  The Board found claims 1, 2, 4, 10, 11, and 26 not unpatentable because Petitioner failed to show motivation to combine the cited references; it denied Patent Owner’s motion to exclude.

  RulingsFinal written decision

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

    “Despite a lack of teaching in Lazarus to use telescoping functionality with the circumferential support structures, Petitioner asserts that a person of ordinary skill in the art would have modified Quiachon’s continuous wire frame to impart telescoping functionality to the struts, to “further improve the known attachment system in Quiachon to yield the predictable results of having a compressible and expandable device that could hold an endovascular graft open at the site of an aneurysm.” Pet. 40; see also Ex. 1003 (Chaikof Decl.) ¶¶ 146–47, 150. We are not persuaded. Like Lazarus’s circumferential support structures, Quiachon’s wire frame expands circumferentially. Compare, e.g., Ex. 1006 (Lazarus), 11:14–20 (describing circumferential support structures that expand to attach the graft to the vessel wall), with Ex. 1004 (Quiachon), 15:3–39 (describing self-expanding attachment system that provides a fluid tight seal between the graft and vessel wall). Thus, even if a person of ordinary skill in the art would have been motivated to incorporate Lazarus’s longitudinal support structures into Quiachon’s attachment system to “achieve the flexibility and adjustability disclosed in Lazarus” as Petitioner asserts (Pet. 41), we find that the specific combination Petitioner proposes to reach the claimed subject matter is not supported by the record. More specifically, we agree with Patent Owner and credit Dr. Berry’s testimony that “there is no motivation that [a] person of ordinary skill in the art would have used telescoping members of longitudinal support structures for an attachment system that expands radially or circumferentially” to hold an endovascular graft open or achieve stent compression and expansion. Ex. 2083 (Berry Decl.) ¶¶ 116, 118; see also PO Resp. 42–43. Petitioner does not point us to anything in Lazarus or Quiachon that teaches or suggests operatively connecting the telescoping longitudinal support structures to form “a perimeter of variable length” or a “closed loop” as claimed. See, e.g., Sur-reply 5, 7 (asserting that “none of the references suggests telescoping arms configured” as “a perimeter of variable length or a closed loop”); Ex. 2084 (Chaikof Tr.), 174:20–22 (agreeing that Lazarus’s longitudinal support structures are not in a ring shape); Ex. 2124 (Chaikof Second Tr.), 76:13–77:23 (same), 78:17–79:2 (agreeing that Lazarus does not teach connecting the longitudinal support structures in an M shape). Petitioner does not adequately explain why a person of ordinary skill in the art would have incorporated telescoping functionality into Quiachon’s wire frame, given the lack of any teaching or suggestion in Lazarus or Quiachon to use telescoping functionality in circumferentially-expanding devices like Quiachon’s wire frame.” slip op. at 27

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “(2) Analysis “[A] party seeking to invoke collateral estoppel must show: ‘(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.’” Google LLC v. Hammond Dev. Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022) (quoting In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994)). We agree with Patent Owner that Petitioner’s collateral estoppel argument fails at least because the same issues were not “actually litigated.” PO Resp. 65–66. The prosecution of the ’331 application is an ex parte proceeding, not an adversarial proceeding such as a district court litigation or inter partes review. Patent Owner demonstrates that “[d]eterminations made during a prior ex parte prosecution do not arise from adversarial litigation.” Id. at 66. Rather, “there is a general consensus among courts that . . . [a] patent prosecution is not an adversarial, litigation-type proceeding, but a wholly ex parte proceeding before the PTO because although the process involves preparation and defense of legal claims in a” slip op. at 41

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner, as the moving party, bears the burden of establishing that it is entitled to the requested relief. 37 C.F.R. §§ 42.20(c), 42.62(a). We determine that Patent Owner has not met its burden. Dr. Berry testified about Exhibits 1067 and 1071 at his deposition. See Ex. 1066 (Berry Tr.), 53:1–75:3, 234:13–242:2. Thus, even if the exhibits are not discussed in a brief or in a declaration, we find that they give context to the deposition testimony of record. The Board is well-positioned to determine and assign appropriate weight to the presented evidence, including based on the depth of discussion of the evidence in the record. See, e.g., Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014) (“[T]he Board, sitting as a non-jury tribunal, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial.”). Moreover, “there is a strong public policy for making all information filed in an administrative proceeding available to the public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012- 00010, Paper 59 at 40 (PTAB Feb. 24, 2014). In view of the above, we are unpersuaded that the probative value of Exhibits 1067 and 1071 is substantially outweighed by potential prejudice or confusion of issues. Rather than excluding these exhibits, we simply give them appropriate weight in our analysis.” slip op. at 46

  • Skill levelSkill level petitioner adoptedOther

    “For purposes of this proceeding, Patent Owner applies Petitioner’s proposed definition of the skilled artisan. PO Resp. 12. We adopt Petitioner’s proposed level of ordinary skill in the art because it is unopposed and is consistent with the cited prior art and the disclosure of the ’393 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 11

  Patent outcomesUS 7,101,393 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,101,393
• Unified Patents, LLC v. Joseph Y. Yoon Intellectual Property LLCAll claims unpatentable
  PTAB · Mar 2, 2023 · IPR2022-00002 · APJ Michael L Woods · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious: claims 1, 4, 6, and 9 over Foo; claims 1, 2, 4–9, 11, and 12 over Foo and Mazur; claim 3 over Foo and Canterberry; and claims 1, 4, …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, and is supported by the accompanying declaration testimony of Mr. Andrews, that a POSITA would have had “at least a [B]achelor’s degree in electrical engineering, or a related field, and at least two years of practical experience in automotive safety systems.” Pet. 9 (citing Ex. 1003 ¶¶ 80–83). Petitioner adds that “[t]hese descriptions are approximate, and a higher level of education or skill might make up for less experience, and vice-versa.” Id. In our Institution Decision, we adopted Petitioner’s definition of the level of ordinary skill in the art. Pet. 9. We invited the parties to address this definition in further briefing if there was any disagreement. See id. Neither party disputed the initial definition and we maintain that definition in this Decision. In particular, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “limitation by reciting a function to be performed rather than by reciting structure or materials for performing that function.” Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003). Use of the term “means” creates a rebuttable presumption that a claim term is a means-plus- function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This presumption may be rebutted if the claim recites structure sufficient to perform the described functions in their entirety. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). A term written in means-plus-function form is construed to cover “the corresponding structure, material, or acts described in the specification and equivalents thereof” for performing the recited functions. 35 U.S.C. § 112, ¶ 6. Construction of means-plus-function claim terms is a two-step process. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012). First, we determine the claimed function. Id. Second, we “identify the corresponding structure in the written description of the patent that performs the function.” Id.; see also Williamson, 792 F.3d at 1351. A “[s]tructure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352. In conducting this analysis, we may not incorporate structure from the written description beyond that which is necessary to perform the claimed function(s). See Micro Chemical, Inc. v. Great Plains Chemical Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999). Because the claim limitation recites the term “means,” there is a rebuttable presumption that the claim term is a means-plus-function limitation. Williamson, 792 F.3d at 1348. Furthermore, claim 1 does not identify sufficient structure for the “means for detecting a vehicle occupant.” Accordingly, on the record, we agree with Petitioner that this limitation should be interpreted as a means-plus-function term. Cf. TriMed, 514 F.3d at 1259. Based on the evidence in the record, we further agree with Petitioner’s proposed claim construction. In particular, we identify the claimed function as “detecting a vehicle occupant” and the structure corresponding to the function is a “seat mounted sensor,” such as, but not necessarily including, one “used to detect the approximate size of the passenger occupant by weight,” and equivalent structures. Ex. 1001, 6:56– 58; see also Micro Chemical, 194 F.3d at 1258 (“[T]he statute [does not] permit incorporation of structure from the written description beyond that necessary to perform the claimed function.”). For these reasons, we adopt Petitioner’s proposed construction that the “means for detecting a vehicle occupant” shall be construed under 35 U.S.C. § 112, ¶ 6, and that the corresponding structure for performing the function of “detecting a vehicle occupant” is “a weight sensor located in a seat, and equivalents thereof.” See Pet. 9.” slip op. at 10

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

    “We agree with Petitioner. The claim language does not use the word “means” or other nonce words and does not recite a function to be performed. Rather, the language connotes structure. The ’076 patent uses the term “sensing and diagnostic module” (see, e.g., Ex. 1001, 11:4–5) and we find persuasive Mr. Andrews’s unrebutted testimony that a “POSITA would have understood that a ‘sensing and diagnostic module’ or ‘SDM’ was the name for a known component of vehicle restraint system—namely, the airbag microcontroller that was typical as of the asserted priority date” (Ex. 1003 ¶ 93). We further agree with Mr. Andrews’s testimony that an “airbag microcontroller” is often referred to as a “sensing and diagnostic module.” Id. ¶ 94. Giving the claim language “airbag module controller” its ordinary and customary meaning, in light of the Specification and in agreement with Mr. Andrews’s testimony, we interpret the term “airbag module controller” as an airbag microcontroller, including, but not limited to, the “sensing and diagnostic modules” described in the ’076 patent. Phillips, 415 F.3d at 1312–17.” slip op. at 12

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

    “In the alternative, Petitioner reasons that, to the extent that Foo does not expressly disclose this limitation, it would have been obvious to a POSITA “at the time of filing to ensure that no unfired initiator remained following airbag deployment, for example, to prevent the risk of unintentional follow-on explosions at the crash scene, which could harm the vehicle occupants and emergency responders.” Pet. 20. Mr. Andrews testifies that “[i]t was also critical that no unreacted propellant remained in the air bag module and that the combustion reaction went to completion to prevent the risk of unintentional follow-on explosions at the crash scene, which could cause further harm to the vehicle occupants and emergency responders.” Ex. 1003 ¶ 158 (citing as evidence Ex. 1011, 4:17–23). Although we do not find that Foo explicitly discloses that there will be no unfired initiator remaining in Foo’s airbags are actuated, Petitioner has demonstrated by a preponderance of the evidence that it would have been obvious to modify Foo’s airbag module controller, if necessary, so that it provides “a sequential firing of both said pair of initiators such that there will be no unfired initiator left in said airbag module” for the purpose of improving safety, thereby satisfying the limitations recited in 1.2.” slip op. at 20

  Patent outcomesUS 9,376,076 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,376,076
• Mylan Pharmaceuticals Inc. v. Regeneron Pharmaceuticals, Inc.Institution denied
  PTAB · Mar 1, 2023 · IPR2023-00099 · APJ Erica A Franklin · IPR · Institution

  The Board denied institution on claims 1–3 because Patent Owner had statutorily disclaimed all challenged claims before institution.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentOther

    “‘patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent’ and ‘[n]o inter partes review will be instituted based on disclaimed claims.’” Gen. Elec. Co. v. United Tech. Corp., IPR2017-00491, Paper 9 at 2 (PTAB July 6, 2017) (precedential). “A disclaimer under 35 U.S.C. § 253(a) is ‘considered as part of the original patent’ as of the date on which it is ‘recorded’ in the Office (35 U.S.C. § 253(a)).” Id. at 2–3.” slip op. at 4

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

    “‘patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent’ and ‘[n]o inter partes review will be instituted based on disclaimed claims.’” Gen. Elec. Co. v. United Tech. Corp., IPR2017-00491, Paper 9 at 2 (PTAB July 6, 2017) (precedential). “A disclaimer under 35 U.S.C. § 253(a) is ‘considered as part of the original patent’ as of the date on which it is ‘recorded’ in the Office (35 U.S.C. § 253(a)).” Id. at 2–3.” slip op. at 4

  None
  Patents in suitUS 10,857,205
• Adama Agan Ltd. v. Bayer Cropscience LPInstitution denied
  PTAB · Feb 13, 2023 · PGR2022-00057 · APJ Susan L C Mitchell · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that claims 1–18 lacked written description or enablement, or were unpatentable over the asserted prior art.

  RulingsInstitution decision

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

    “Institution of post-grant review is authorized by statute only when “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324; see 37 C.F.R. § 42.4. Upon considering the Petition, Preliminary Response, and the cited evidence, we conclude that Petitioner has not satisfied its burden under 35 U.S.C. § 324 to show that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the relevant art (“POSA”) “would have had at least a bachelor’s degree in agronomy, agricultural sciences, or a related field and at least 3-5 years of experience in the application of pesticides, including experience conducting weed science research, such as field trials to determine herbicide efficacy and safety.” Pet. 25 (citing Ex. 1002 ¶ 10). Patent Owner responds that it does not challenge Petitioner’s definition of a POSA at this stage of the proceeding. Prelim. Resp. 15. Because Petitioner’s definition of a person of skill in the art appears commensurate with the level of skill reflected in the asserted art in this case, as well as the ’463 patent itself, we apply Petitioner’s proposed level of ordinary skill in the art to determine whether it is more likely than not that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8

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

    “When claim 1 is read in light of the Specification of the ’463 patent, we find that Petitioner’s construction is too expansive and not commensurate with the appropriate scope of claim 1 when the Specification of the ’463 patent is considered. As the Specification of the ’463 patent makes clear, indaziflam has been in use as an herbicide and is well-characterized. See Ex. 1001, 3:17–6:6. The Specification of the ’463 patent incorporates by reference U.S. Patent No. 8,114,991, which describes indaziflam, and the Specification of the ’463 patent also describes several commercially available herbicides incorporating indaziflam as their active ingredient. See id. at 3:22–27, 4:15–41. The Specification of the ’463 patent sets forth embodiments with specific ranges for the amount of indaziflam. See id. at 5:45–6:6. Finally, the Specification of the ’463 patent states: A person having ordinary skill in the art would understand how to adjust dosages and concentrations depending on whether the composition is to be applied to a desirable plant or seed, part or habitat thereof, or directly to a site in which no desirable plants are present or growing (e.g., a monoculture of unwanted annual grass).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed

    “We find that Petitioner’s expansive construction of the claim phrase “a composition comprising a cellulose biosynthesis inhibitor” to be inconsistent with the meaning of the transitional phrase “comprising” within the context of the claim as a whole and also inconsistent with the teachings set forth in the Specification of the ’463 patent. The transitional phrase “comprising” is inclusive or open-ended and should be read to not exclude additional, unrecited elements or method steps. See, e.g., Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps.”); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”) (citing In re Baxter, 656 F.2d 679, 686 (CCPA 1981). Therefore, although the term “comprising” does not exclude additional steps or elements, that does not mean that any other step or element may or should be added, such as any other chemical, as Petitioner asserts. The Specification of the ’463 patent contemplates using indaziflam as the herbicidally active ingredient, but also contemplates the addition of other active ingredients in the composition. Ex. 1001, 5:59–65; 6:7–11. The Specification of the ’463 patent also contemplates the addition of other ingredients in the composition as well. Specifically, the Specification states: These formulations are produced in any desired or known manner, for example by mixing the active compounds with extenders, such as liquid solvents, pressurized liquefied gases and/or solid carriers, optionally with the use of surface-active agents, such as emulsifiers and/or dispersants and/or foam formers. Id. at 17:6–11. This and the remainder of the Specification does not suggest the expansive interpretation of the claim limitation argued by Petitioner. For example, the Specification explains that the point of the invention is to treat vegetation that is or will be consumed by livestock animals, and, more specifically, that such animals will provide food (e.g., milk or meat) for others (e.g., people or pets) further up the food chain. Id. at 2:31–35, 2:39– 59. Reason and the evidence of record support that such goals are not commensurate with co-applying any chemical in any amount to the same area. See also Ex. 1002 ¶¶ 22–23, 30, 34–36, 38–43, 55, 59–61, 63” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 11,166,463
• Ford Motor Company v. Safe Driving Technologies LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2021-01341 · APJ Ryan H Flax · IPR · Final written decision

  Claims 1–4 and 7–10 are unpatentable as obvious over Tan, Boies, Tan with Shuman and Behr, or Hardouin; Petitioner’s motion to exclude is granted.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “example, the types of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Petitioner asserts: An ordinary artisan would have been a person having, as of October 24, 2001, a Bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, or Computer Science, or an equivalent degree with at least two years of experience in electronic user interface systems and vehicle sensor systems or related technologies. Additional education may substitute for lesser work experience and vice-versa. (Ex.1003, ¶40.) Pet. 3 (citing Andrews Declaration). Patent Owner does not address the definition of the person of ordinary skill in the art, either to contest Petitioner’s proposal or to offer a different definition. See generally Resp. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’994 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 12

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

    “We find Patent Owner’s reliance on the ’994 patent’s FIELD OF THE INVENTION Section misplaced. To quote it in its entirety, it states: The present invention relates to the field of telematics, namely to the field of integrating information, communication, computing and entertainment technologies into vehicles for civilian or military use. The invention particularly relates to safety control systems for vehicles to reduce driver distraction, avoiding potentially dangerous conditions tending to produce accidents. Ex. 1001, 1:21–27 (emphasis added). Thus, even were we to consider this portion of the Specification informative of the meaning of “telematic device,” it does not limit such to “a central multifunction device,” as argued by Patent Owner, but states that the field of telematics relates to integrating information, communication, computing, and entertainment technologies into vehicles, generally. Id. Nothing about this statement requires all these features to be integrated into a single device, unless the vehicle is considered the single device (which neither party suggests). See Reply 4 (discussing this section of the ’994 patent). Further, we find nothing in the ’994 patent supporting Patent Owner’s contention that the claim term “telematic device” should be restricted to a central multifunction device that integrates together the features of information, communication, computing, and entertainment technologies. The ’994 patent never states this. See Ex. 1001. Moreover, we find the ’994 patent to be much more inclusive than exclusive when describing what a telematic device can be, i.e., the scope of the term. Upon reviewing the written description of the ’994 patent, we find it makes the following statements (all emphasis added):” slip op. at 17

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

    “We agree with Petitioner that the disputed claim language is, indeed, somewhat confusing. It appears to us from reading the language of claim 2 as a whole that Patent Owner understood that the phrase “include at least one of” could have been used rather than the language “including at least” because Patent Owner used these different phrases at different portions of claim 2. Compare Ex. 1001, 23:2, with id. at 23:14–15. Had Patent Owner intended that the disputed claim language require only one of the listed devices, it appears that Patent Owner understood how to claim that. Further, the full disputed phrase of claim 2 recites a “communication device including at least a pager, a telephone, a global location sensor, a temporal sensor, an optical sensor, a heading sensor, a bearing sensor, and an altitude sensor.” Id. at 23:14–17. However, adding to the ambiguity of the claim, this list of communication device components is tacked onto the end of a clause listing software applications (e.g., a telephone application and a wireless communication application), not devices. And, moreover, the term “communication device” is not preceded by an associated “a” or “the,” and there is no other “communication device” recited earlier in claim 2 (or claim 1 from which it depends), which further adds to the claim’s ambiguity. Patent Owner asserts that “at least” means “at least one” and Petitioner, at least in an alternative argument, appears to potentially agree and presented a case for unpatentability based on such an interpretation. See Pet. 9 (compare Grounds 1 and 2 with Ground 3). Furthermore, following Patent Owner’s stated position on this claim language in its Response (at page 19), Petitioner does not argue the matter in its Reply, other than stating at one point (not at the claim construction section) that “at least” means “all.” See Reply 1–7; but see id. at 14 (stating that the plain language of claim 2 requires all of the devices). Thus, we could adopt Patent Owner’s interpretation of claim 2’s” slip op. at 24

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

    “Petitioner asserts that it would have been obvious to the ordinarily skilled artisan to combine Shuman with Tan because Shuman’s teachings on its GPS would illuminate the capabilities of and data provided by Tan’s GPS; these are the same or similar devices and may have the same or similar capabilities. Id. at 63 (citing Ex. 1003 ¶ 261). Petitioner asserts that it would have been obvious to the ordinarily skilled artisan to also combine Behr with Tan because Behr’s disclosure of monitoring the time of day to ensure its GPS provides relevant, safe, and legal instructions would also similarly support Tan’s GPS functioning, and also because there would have been a benefit to including Behr’s pager’s functionality in Tan’s system because such was a relevant communication technology. Id. at 64–65 (citing Ex. 1003 ¶¶ 263, 265). We agree with Petitioner’s assertions and reasoning regarding combining these prior art references with a reasonable expectation of success, and Patent Owner does not argue otherwise. See generally Resp.” slip op. at 50

  Patent outcomesUS 9,713,994 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,713,994
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 24, 2023 · IPR2021-01209 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–4, 6, and 9–25 are unpatentable; claims 5, 7, and 8 are not shown unpatentable, based on anticipation by Kim and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which” slip op. at 9

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

    “C. Claim Construction In inter partes reviews, we interpret claims under the same standard” slip op. at 10

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

    “Accordingly, Petitioner fails to establish that Kim discloses “determining that the individual is a driver of the vehicle based at least in part on acceleration, forces, velocity, the at least one location point, and time.”” slip op. at 46

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

    “nexus and therefore fails to establish that any alleged evidence of objective indicia supports a finding of non-obviousness. Accordingly, we give Patent Owner’s reliance on objective indicia of non-obviousness no weight in our obviousness analysis.” slip op. at 65

  Patent outcomesUS 9,152,609 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,152,609
• Carlisle Fluid Technologies, Inc. v. Akurate Dynamics, LLCAll claims unpatentable
  PTAB · Jan 11, 2023 · IPR2021-01256 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–5, 11, and 17–20 as obvious over Kogelbauer; claims 8–10 and 13–16 over Kogelbauer and Cline; claim 7 over Kogelbauer and Kropfield; claims 6 and 12 over Kogelbauer and Kukesh.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art at the relevant time would have had “at least a bachelor’s degree in chemical engineering or a similar discipline, and three years of experience in the research, design, or implementation of systems for controlling the feed rates of multiple components.” Pet. 27 (citing Ex. 1003 ¶ 70). Dr. Rockstraw repeats verbatim the identical one-sentence conclusion stated by Petitioner. Ex. 1003 ¶ 70. Dr. Rockstraw does not provide any facts, data, or analysis to support his opinion. His opinion on the level of ordinary skill is entitled to no probative weight. 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Merely repeating a conclusory argument from the Petition in the declaration testimony of a proposed expert does not give that argument enhanced probative value. Patent Owner does not propose a level of ordinary skill, nor does Patent Owner comment on Petitioner’s proposed ordinary level of skill. The asserted prior art reflects knowledge of chemistry, chemical engineering, mechanical engineering (such as pumps and sensors), electrical engineering (signal communication), and computer science (such as computer processors). Accordingly, consistent with the uncontested level of ordinary skill adopted in our Decision to Institute this proceeding, and based on the asserted prior art in the record before us, we determine a person of ordinary skill in the relevant technology at the relevant time would have had a bachelor’s degree in one or more of the areas of chemistry, chemical engineering, mechanical engineering, electrical engineering, or computer science, and two years of relevant experience. A recipient of other academic degrees may qualify as a person of ordinary skill if they have taken coursework or have experience in the pertinent technology. Additional education, such as an advanced degree, could offset less work experience; additional work experience could offset less education or coursework.” slip op. at 19

  • Skill levelSkill level board ownDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art at the relevant time would have had “at least a bachelor’s degree in chemical engineering or a similar discipline, and three years of experience in the research, design, or implementation of systems for controlling the feed rates of multiple components.” Pet. 27 (citing Ex. 1003 ¶ 70). Dr. Rockstraw repeats verbatim the identical one-sentence conclusion stated by Petitioner. Ex. 1003 ¶ 70. Dr. Rockstraw does not provide any facts, data, or analysis to support his opinion. His opinion on the level of ordinary skill is entitled to no probative weight. 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Merely repeating a conclusory argument from the Petition in the declaration testimony of a proposed expert does not give that argument enhanced probative value. Patent Owner does not propose a level of ordinary skill, nor does Patent Owner comment on Petitioner’s proposed ordinary level of skill. The asserted prior art reflects knowledge of chemistry, chemical engineering, mechanical engineering (such as pumps and sensors), electrical engineering (signal communication), and computer science (such as computer processors). Accordingly, consistent with the uncontested level of ordinary skill adopted in our Decision to Institute this proceeding, and based on the asserted prior art in the record before us, we determine a person of ordinary skill in the relevant technology at the relevant time would have had a bachelor’s degree in one or more of the areas of chemistry, chemical engineering, mechanical engineering, electrical engineering, or computer science, and two years of relevant experience. A recipient of other academic degrees may qualify as a person of ordinary skill if they have taken coursework or have experience in the pertinent technology. Additional education, such as an advanced degree, could offset less work experience; additional work experience could offset less education or coursework.” slip op. at 19

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

    “Patent Owner does not propose any claim constructions. Given the lack of dispute on this record, we need not construe the claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute).” slip op. at 21

  • BurdenFwd all claims unpatentableUnpatentable

    “3. Conclusion for Claims 1 and 20 Based on Kogelbauer We agree with and adopt Petitioner’s uncontested assertions and Dr. Rockstraw’s uncontested opinions concerning claims 1 and 20. Our analysis above applies to the apparatus in independent claim 1, and the method in independent claim 20. Based on the evidence and analysis above, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1 and 20 would have been obvious based on Kogelbauer.” slip op. at 33

  Patent outcomesUS 10,159,996 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,159,996
• Unified Patents, LLC v. Ak Meeting IP LLCInstituted
  PTAB · Jan 9, 2023 · IPR2022-01142 · APJ Ryan H Flax · IPR · Institution

  Instituted IPR of claims 1–14 on all asserted grounds: anticipation by or obviousness over Roy or Chang, and obviousness over Simonoff and Naef.

  RulingsInstitution decision

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

    “institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions, we conclude Petitioner demonstrates a reasonable likelihood it would prevail in showing that claims of the ’124 patent are unpatentable under the presented grounds. Therefore, we institute inter partes review of all challenged claims (1–14) under the grounds raised in the Petition, pursuant to 35 U.S.C. § 314. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 7 (citing Ex. 1003 ¶¶ 28–30).9 Patent Owner states that it “adopt[s] Petitioner’s proposed level of ordinary skill in the art because it comports with the technology and claims of the ’124 Patent as well as the asserted prior art.” Prelim. Resp. 5. Patent Owner adds that “[t]he expert witnesses of the parties are persons of (at least) ordinary skill in the art of the ’124 Patent and its claims.” Id. We accept Petitioner’s proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’124 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[]” 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)). B.” slip op. at 17

  • Expert testimonyPetitioner expert creditedOther

    “In re Merck for this point). And, further, when considering obviousness, the prior art must be considered for all of its teachings, including unpreferred embodiments. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). With this precedent in mind, we restate that Simonoff’s disclosure appears to fully include Naef’s disclosure. Ex. 1006, 3:24–29. Further, both references apparently identify the existence and general functionality of central-server systems for remote computer collaboration where the server is in charge of updating all networked computers’ displays, even if Naef’s disclosed invention is not such a system, but instead puts a client computer in control. See generally Ex. 1006; Ex. 1007. Finally, Petitioner’s witness, Dr. Terveen, testifies that the person of ordinary skill in the art would have had good reason to “improve Simonoff’s similar collaboration system” by having its server return update/annotation messages back to the source client along with the other clients during its “multi-casting,” as suggested by Naef, because this would “avoid[] conflicts between user inputs and [would] allow[] the source client to see the edits as the other clients would see them. Ex. 1003 ¶73 (citing Ex. 1015, 12:56–67; Ex. 1008, 45; Ex. 1006, 24:22–27). At this stage of the proceedings, we credit Dr. Terveen’s testimony and find Petitioner’s position reasonable. We are not persuaded by Patent Owner’s arguments or evidence at this stage (we are not entirely sure what qualifies Mr. Sunatori’s as a reliable witness at this point) so as to dissuade us from instituting trial on this ground.” slip op. at 52

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

    “Owner’s positions on claim construction, both identifying that claim construction is unnecessary and then proposing the above-indicated claim construction. Prelim. Reply 1. Petitioner argues that neither the disputed claim language itself nor the Specification supports Patent Owner’s proposed claim construction because the claims simply state “that the output message includes information defining the content to be shared, not the input message itself or a copy of it.” Id. Petitioner cites two portions of the ’124 patent’s written description that contradict Patent Owner’s narrow definition of the claim language––the first indicating that input messages and output messages may be in different formats and have different data and that the output messages can be generated once the input messages are read (Ex. 1001, 14:27–33), and the second indicating that the output messages could combine multiple input messages, and that output messages represent input messages that themselves represent computer input such as a mouse drag (id.at 33:1–9). We agree with Petitioner that the record does not support narrowing the meaning of the disputed claim language as argued by Patent Owner and, based on the present record, we do not expressly construe this claim language.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,963,124
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 9, 2023 · IPR2021-01118 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–5, 7, 8, 10–16, and 18 are unpatentable; claims 6, 9, and 17 were not shown unpatentable, because the asserted prior art did not establish all limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 9

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

    “2. Discussion Petitioner argues that Kim discloses every limitation of claim 1, and” slip op. at 23

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

    “2. Discussion We begin our analysis by addressing Patent Owner’s asserted objective indicia of non-obviousness, and then turn to the merits of Petitioner’s specific obviousness challenges before us.” slip op. at 52

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

    “the combination of Kim and Baker discloses “comparing the at least one current geographic location to the first geographic location; setting the location of the individual to the individual is in an outside of the vehicle location, when a distance between the at least one current and the first geographic locations exceeds a predetermined threshold.” Accordingly, we determine that Petitioner has not established by a preponderance of the evidence that claim 6 would have been obvious based on Kim and Baker.” slip op. at 90

  Patent outcomesUS 8,527,140 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,527,140

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.