- Tiktok Inc. v. Cellspin Soft, Inc.InstitutedPTAB · Oct 1, 2024 · IPR2024-00768 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on claims 1–10 because Petitioner showed a reasonable likelihood of prevailing on both obviousness grounds: Hiroishi, Kahn, Endsley, and Bluetooth; and Singh129 with Singh906.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has 9 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 10 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1034 (Guidance) 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 10
- Other 314aDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“On this record, we find that Petitioner has adequately demonstrated that the Examiner erred in a manner material to patentability. This follows from our finding that on the current record, Petitioner has shown a reasonable likelihood that the challenged claims are not entitled to a priority date earlier than August 6, 2019, and would have been obvious over Singh129 and Singh906. See infra Section III.F. We find Patent Owner’s assertion that the Examiner understood that “[a]dding the Bluetooth feature to the existing mobile application is the reason for [the] ‘incorporated reference’ in Cellspin’s disclosure” is not supported on this record, including because Patent Owner does not cite any portion of the prosecution history that reflects this alleged understanding. Prelim. Resp. 21. For the above reasons, we decline to exercise our discretion to deny inter partes review under § 325(d).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time the invention was made. See Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”) would have had: at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field consumer electronics, with exposure to digital camera technology and wireless communications. Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6–7 (citations omitted) (citing Ex. 1030 (Lett Decl.) ¶¶ 94–95). Patent Owner does not provide an explicit definition of a POSITA. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. 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 18
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,234,121 - Tiktok Inc. v. Cellspinsoft, Inc.InstitutedPTAB · Sep 30, 2024 · IPR2024-00770 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, and 9–18 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has 8 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 9 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1034, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The analyze this issue under the following two-part framework set forth in Advanced Bionics: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, IPR2019-01469, Paper 6, 8.” slip op. at 10
- Other 314aDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition, notwithstanding its merits, based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“iii. Conclusion – Grounds 1A–B After considering the arguments and cited evidence of record, we determine that for purposes of institution, Petitioner sufficiently shows that both the combination of Hiroishi, Takahashi and Bluetooth in Ground 1A and the combination of Hiroishi, Kahn, and Bluetooth in Ground 1B teach or suggest each limitation of claims 1, 2, 4–7 and 9–18,20 and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with a reasonable expectation of success. See, e.g., Pet. 11– 68. Accordingly, on this record, Petitioner shows a reasonable likelihood of prevailing on Grounds 1A–B, and on this basis, we institute an inter partes review of all challenged claims. See 37 C.F.R. § 42.208(a). 19 While the term “WMTP” appears in these figures, it does not seem to be defined or discussed elsewhere in Kahn. 20 At this stage, Patent Owner does not make any additional arguments against Petitioner’s showing for the dependent claims.” slip op. at 42
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,904,030 - Tiktok Inc. v. Cellspinsoft, Inc.InstitutedPTAB · Sep 30, 2024 · IPR2024-00759 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR of claims 1–26 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1025, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) as of December 28, 2007 would have “had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof.” Pet. 3 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the current record, Patent Owner’s claim construction arguments are unpersuasive for several reasons. First, in addition to reciting a “user identifier,” claim 1 separately recites “wherein said user identifier uniquely identifies a particular user of the web service.” Ex. 1001, 11:66–67. The fact that the surrounding claim language specifies that the “user identifier” must uniquely identify a user “strongly implies” that such a requirement is not required by the term itself. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (explaining that the context in which a claim term is used “can be highly instructive” and that the fact that “the claim in this case refers to ‘steel baffles’ . . . strongly implies that the term ‘baffles’ does not inherently mean objects made of steel”); Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (“the reference in some claims to a ‘registration server being further characterized in that it is free of content managed by the architecture’ strongly implies that the term ‘registration server,’ standing alone, does not inherently mean a server that is free of managed content”). Moreover, there is no need to construe “user identifier” to include a requirement that it identify uniquely a user of a web service, as in Patent Owner’s proposed construction, because that requirement is apparent from the surrounding claim language. Second, Patent Owner has not shown that the authentication requirement in its construction, i.e., that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service,” is supported by the intrinsic record. Patent Owner’s authentication requirement is not apparent from the claim language, nor has Patent Owner attempted to show that a POSITA would have understood the ordinary meaning of “user identifier” to require such. The only intrinsic support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.9 This disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been shown, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials,” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,862,757 - Tiktok Inc. v. Cellspinsoft, Inc.InstitutedPTAB · Sep 30, 2024 · IPR2024-00757 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1–5 because the Petition showed a reasonable likelihood of prevailing on obviousness over Aaltonen and Drescher.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1025, 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 8
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSITA”) as of December 28, 2007 “would have had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof.” Pet. 3 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSITA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“On the current record, Patent Owner’s claim construction arguments are unpersuasive for several reasons. First, in addition to reciting a “user identifier,” claim 1 separately recites “wherein each user identifier uniquely identifies a particular user of the web service.” Ex. 1001, 12:10–13. The fact that the surrounding claim language specifies that the “user identifier” must uniquely identify a user “strongly implies” that such a requirement is not required by the term itself. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (explaining that the context in which a claim term is used “can be highly instructive” and that the fact that “the claim in this case refers to ‘steel baffles’ . . . strongly implies that the term ‘baffles’ does not inherently mean objects made of steel”); Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (“the reference in some claims to a ‘registration server being further characterized in that it is free of content managed by the architecture’ strongly implies that the term ‘registration server,’ standing alone, does not inherently mean a server that is free of managed content”). Moreover, there is no need to construe “user identifier” to include a requirement that it identify a user of a web service, as in Patent Owner’s proposed construction, because that requirement is apparent from the surrounding claim language. Second, Patent Owner has not shown that the authentication requirement in its construction, i.e., that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service,” is supported by the intrinsic record. Patent Owner’s authentication requirement is not apparent from the claim language, nor has Patent Owner attempted to show that a POSITA would have understood the ordinary meaning of “user identifier” to require such. The only intrinsic support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.10 This disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been shown, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials,” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,756,336 - PTAB · Sep 30, 2024 · IPR2024-00769 · APJ Gregg I Anderson · IPR · Institution
The Board instituted inter partes review of claims 1–15 on all asserted grounds, finding a reasonable likelihood that the claims are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1034,8 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Section 325(d) provides discretion to “reject the petition” if “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The analyze this issue under the following two-part framework set forth in Advanced Bionics: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is 9 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, IPR2019-01469, Paper 6, 8.” slip op. at 12
- Other 314aDecided for petitioner
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition, notwithstanding its merits, based on the policy considerations and concerns Patent Owner alleges.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field of consumer electronics, with exposure to digital camera technology and wireless communications. . . . Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6 (citing Ex. 1030 ¶¶ 94–95). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the Lett Declaration and is consistent with the ’766 patent. Accordingly, we apply Petitioner’s articulation.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,900,766 - Tiktok Inc. v. Cellspin Soft, Inc.InstitutedPTAB · Sep 30, 2024 · IPR2024-00760 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood that at least claim 1 is obvious over Aaltonen and Drescher.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. Ex. 1023,8 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 14
- Other 314aDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we discern no discretion under § 316(b) to deny the Petition based on the policy considerations and concerns Patent Owner alleges.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner alleges a person of ordinary skill in the art would have had at least a Bachelor of Science in electrical engineering, computer engineering, computer science, or a related field, with at least two years of relevant work experience in wireless communications and/or networking systems, or equivalents thereof. []. Superior education could compensate for a deficiency in work experience, and vice-versa. []. Pet. 3–4 (citing Ex. 1003 ¶ 21). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. Petitioner’s proposal is supported by the testimony of Dr. Traynor and is consistent with the ’260 patent. Accordingly, we apply Petitioner’s articulation.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On the current record, Patent Owner’s claim construction arguments are unpersuasive. First, Patent Owner has not shown that the authentication requirement in its construction is supported by the intrinsic record. Patent Owner’s proposed construction requires that the user identifier be a “text string” that “contains sufficient information to authenticate a user of the web service.” Prelim. Resp. 35. Patent Owner’s authentication requirement is not a part of the claim language, nor has Patent Owner attempted to show that a person of ordinary skill in the art would have understood the ordinary meaning of “user identifier” to require such. Authentication does appear in the ’260 patent in the context of BT. Specifically, BT “can crypto graphically authenticate the identity of another BT device.” Ex. 1001, 3:61– 63. Authentication of the user does not appear in the specification. The only intrinsic evidence support Patent Owner cites are figures and related disclosure describing a preferred embodiment in the ’802 application.9 The disclosure uses different terms, e.g., “user preferences” and “login information,” which on this record Patent Owner has not sufficiently connected to the “user identifier” in claim 1. See Ex. 2009 ¶¶ 18, 23, 25–26. Even if that connection had been made, the disclosure Patent Owner cites is permissive in nature, stating, e.g., that “user preferences may comprise authentication credentials” and not that authentication credentials are required. Id. ¶ 23. Thus, on the current record, we decline Patent Owner’s invitation to import an authentication requirement into the claims through the construction of “user identifier.”” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,898,260 - PTAB · Sep 27, 2024 · IPR2024-00650 · APJ Deborah Katz · IPR · Institution
The Board instituted IPR of claims 1–38 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We determine whether to institute an inter partes review on behalf of the Director. See 37 C.F.R. § 42.4(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“determined to be microsatellite instability high or DNA mismatch repair deficient were placed into a study arm and then treated with pembrolizumab. (See Ex. 1005, Ex. 1003 ¶¶ 60–73.) Because treatment of the patients was performed only after MSI-H status was determined, the MSI-H Study Record teaches treating the patients “in response to” determining their MSI- H status.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“have been expected, Petitioner cites to Brown as teaching that PD-1 inhibitors are inherently more effective when treating tumors comprised of cells that are easy for immune cells to recognize. (See Pet. 41 (citing Ex. 1034, 747).) Petitioner argues further that Duval teaches that MSI-H cancers have cells that are easy for immune cells to recognize. (See Pet. 41 (citing Ex. 1087, 5002).) Dr. Neugut’s testimony supports Petitioner’s argument that the cited teachings of Brown and Duval, as well as other references, would have motivated a person of ordinary skill in the art to obtain the results of the MSI-H Study Record. (See Ex. 1003 ¶¶ 124, 130, 132; see Pet. 41.) Petitioner argues further that Brown and Duval would have motivated one of ordinary skill in the art to obtain the results of the MSI-H Study Record by treating patients with common types of MSI-H cancers, including endometrial, small bowel, and gastric cancers. (See Pet. 41 (citing Ex. 1003 ¶ 130).) Petitioner argues further that the state of the art, as demonstrated by Brown and Duval, as well as other references, would have provided one of ordinary skill in the art with a reasonable expectation of success because physicians were successfully treating patients with cancers that were known to be MSI-H with PD-1 inhibitors. (See Pet. 42 (citing Ex. 1003 ¶¶ 131, 132).)” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the ’219 patent would have been a medical doctor or a professional in a related field with at least five years of experience with treating cancer. (See Pet. 11 (citing Neugut Decl., Ex. 1003 ¶19).) Petitioner argues further that the ordinarily skilled artisan would have experience in or access to a person with knowledge of clinical studies for therapeutics and how they work and to a pathologist with comparable experience. (See id.) Dr. Neugut’s testimony supports Petitioner’s arguments regarding the level of skill that an ordinarily skilled artisan in the relevant field would have. (See Ex. 1003 ¶ 19.) Accordingly, in the analysis below, and in the absence of argument by Patent Owner to the contrary, we apply the level of skill set forth by Petitioner and refer to Dr. Neugut’s testimony of what one of ordinary skill in the art would have understood at the time the application that became the ’491 patent was filed, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,634,491 - Orthocision, Inc. v. PTL Opco LLCNo claims unpatentablePTAB · Sep 18, 2024 · IPR2023-00625 · APJ Ryan H Flax · IPR · Final written decision
Claims 1, 2, 9, and 10 were not shown unpatentable under any asserted § 103 ground because Petitioner did not adequately explain how or why the prior art would be combined.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not specifically address Petitioner’s proposed definition. See generally Resp. Patent Owner’s witness, Dr. Bovinet, uses a slightly different, but not materially so, definition of the ordinarily skilled artisan than Petitioner. See Ex. 2005 ¶ 13. Thus, the parties appear to agree on who the person of ordinary skill in the art would have been in terms of education and field of work experience. We accept and adopt 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 ’129 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 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Summary on Claim Construction We maintain our earlier constructions of “open tip” and “releasing means . . . .” See DI 16–24. We determine that no other express construction of any claim term is necessary for purposes of rendering this Decision. See Nidec Motor Corp., 868 F.3d at 1017. Although we maintain here our constructions of “open tip” and “releasing means . . . ,” we do so only for the sake of completeness. These claim constructions, ultimately, are not determinative of the outcome of this proceeding because, regardless of the meaning of any claim term, including these disputed terms, we find that Petitioner fails to adequately explain why any claim would have been obvious under the asserted grounds. We explain this in detail below. C.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Ex. 1001, 6:28–38 (emphasis added). However, the language of claim 1 is very clear on the functionality of the “open tip,” expressly reciting that “the open tip cuts bone tissue away from the sacrum or the ilium.” Id. at 13:19– 20. Thus, the claim language itself provides the required functionality of the “open tip,” and we do not agree with Petitioner that additional functionality relating to where bone tissue might go once cut, as discussed in the Specification, should be read into the claims as a limitation. Patent Owner’s newly proposed interpretation is similar to Petitioner’s in that it requests addition of functionality discussed as an example in the Specification, but not recited in the claim’s expressly recited functional language relating to the “open tip.” We disagree with Patent Owner that the concept of dislodged tissue entering a void defined by the open tip is necessary to understanding the claim element. And, once more, Patent Owner reads too much structure from the written description into the claim language as a limitation because it is not apparent that the recited “open tip” language requires that we further clarify that any interior void defined by the open tip is on the interior of the abrading head, and behind the exterior abrading surfaces, or between interior surfaces of a first pair of opposing sides, as proposed by Patent Owner. “[W]hile it is true that claims are to be interpreted in light of the specification . . . , it does not follow that limitations from the specification may be read into the claims. . . . [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988).” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“A claim limitation is presumed to invoke 35 U.S.C. § 112(f) (or pre- AIA § 112 ¶ 6) if, as here, it explicitly uses the term “means” and includes functional language; this presumption is overcome if the limitation further includes the structure, material, or acts necessary to perform the recited function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Here, the word “means” is recited, followed by functional language, and the claim recites no structure associated with the means or function. Moreover, the parties agree that this is a means plus function limitation. See Pet. 19–20; Resp. 9. We find “releasing means” is a means plus function limitation and, based on the plain language of the claim, the recited “releasing means” is a part of the also recited “slide hammer assembly,” as the above-quoted claim language defines. Ex. 1001, 13:10–17. Construing a claim term under 35 U.S.C. § 112(f) involves two steps: (1) identifying the claimed function; and then (2) determining what structure, if any, disclosed in the Specification corresponds to the claimed function. Williamson, 792 F.3d at 1351. In conducting this analysis, we may not incorporate structure from the written description beyond that which is necessary to perform the claimed function. See Micro Chemical, Inc. v. Great Plains Chemical Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).” slip op. at 20
Patent outcomesUS 11,020,129 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,020,129 - Apotex Inc. v. Novo Nordisk A/SInstitutedPTAB · Sep 11, 2024 · IPR2024-00631 · APJ Susan L C Mitchell · IPR · Institution
The Board instituted review of claims 1–10 on all petitioned grounds, finding a reasonable likelihood of unpatentability, and granted Apotex’s motion to join the Mylan IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016); see also 35 U.S.C. § 314(a). In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), the Board set forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. These factors are as follows: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 5–6. In evaluating these factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. at 6. The Director has also issued interim guidance to the Board on applying the factors. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Under 37 C.F.R. § 42.5(b), we “may waive or suspend a requirement of [part 42 of the Board’s rules] and may place conditions on the waiver or suspension.” Here, we agree with Petitioner that it has shown sufficient reason for us to waive the one-month from institution joinder motion deadline. See 37 C.F.R. § 42.122(b). Petitioner waited until it had a sufficient business reason to file this Petition, and subsequently promptly filed its Petition and Motion for Joinder. Most critically, Petitioner raises no new unpatentability grounds, the trial schedule for the Mylan IPR need not be adjusted, and Petitioner agrees to serve in a silent understudy role. We determine that joinder with the Mylan IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 13
Discretionary denialPatents in suitUS 10,335,462 - PTAB · Sep 10, 2024 · IPR2024-00563 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1, 12, and 28 because Petitioner showed a reasonable likelihood of prevailing on obviousness over Gil, Norden, Dean, Alphagan, and Federal Register.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential). “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the District of New Jersey is more than three years, argues that “a trial may not be held until 2026—well after a FWD would be expected in this proceeding.” Pet. 15 (citing Ex. 1027, 2); Reply 8. Based on this evidence of the median time to trial in the district, we find factor 2 weighs in favor of institution. See Fintiv Memo 3 (“[W]hen considering the proximity of the district court’s trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.”)” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingOther
“guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d 1314. Claim 1 is directed to “[a] method for reducing eye redness in a human subject having ocular hyperemia.” The preamble is limiting because (1) it provides the antecedent bases for “said human” and “said reduction of eye redness” recited in the body of the claim; and (2) “it is a statement of the intentional purpose for which the method must be performed.” See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1341–43 (Fed. Cir. 2021). The preamble, however, does not require that eye redness is actually reduced. Id. Nor does the body of the claim recite any efficacy requirement.” slip op. at 24
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“In claim construction, “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d 1314. Claim 1 is directed to “[a] method for reducing eye redness in a human subject having ocular hyperemia.” The preamble is limiting because (1) it provides the antecedent bases for “said human” and “said reduction of eye redness” recited in the body of the claim; and (2) “it is a statement of the intentional purpose for which the method must be performed.” See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1341–43 (Fed. Cir. 2021). The preamble, however, does not require that eye redness is actually reduced. Id. Nor does the body of the claim recite any efficacy requirement.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,596,600
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.