- Cisco Systems, Inc. / Oclaro, Inc. v. Oyster Optics, LLCSome claims unpatentablePTAB · Jan 24, 2019 · IPR2017-01719 · APJ Rama G Elluru · IPR · Final written decision
Claims 7, 8, and 12–20 are unpatentable as obvious; claims 1–6 and 9–11 were not shown unpatentable, principally because Nortel was not established as prior art.
RulingsFinal written decision- BurdenDecided for patent owner
“We agree that Petitioner cannot introduce new argument in a reply. Our regulations require the Petition to identify “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3),(4). The Supreme Court also has acknowledged that “petitioner’s contentions [in a petition] . . . define the scope of the litigation all the way from institution through to conclusion.” SAS, 138 S. Ct. at 1357. Furthermore, Petitioner’s Reply is limited to responding to arguments raised in the Patent Owner Response. See 37 C.F.R. § 42.23(b). Petitioner provided the specific explanation of why Bauch satisfies the limitation “the electronic feedback loop being fed back to the electronic input data stream” for the first time in the Reply. In the Petition, Petitioner stated that “Petitioner[] do[es] not believe that construction of any claims is required for, or material to, the resolution of this IPR.” Pet. 22. In contrast, in its Reply, Petitioner provides for the first time an express claim construction, which is the basis of Petitioner’s explanation as to why the limitation at issue is met. Reply 1–2 (“Thus, the proper construction must include . . . .”); id. at 3 (“Even if this claim element were construed to include feeding the feedback loop directly into the input data, it should be construed to also include . . . .”); id. at 3–4 (“[T]he claim language and specification provide that the meaning of Claim 1[b] includes separate inputs of an exclusive-or gate that receive the feedback and the input data stream.”). Petitioner’s Reply, however, does not sufficiently explain why the assertion of this express construction is consistent with its “plain and ordinary” claim construction position in the Petition. See id. at 1–4. Given that an electronic input data stream is neither a location nor a circuit or device, with regard to having the electronic feedback loop “fed back to the electronic input data stream,” Petitioner should have provided its claim construction and corresponding explanation as to why Bauch satisfies the limitation in the Petition. We conclude that in the circumstances here, Petitioner providing its explanation based on its claim construction, for the first time, in its Reply is improper and not acceptable. A reply is not an opportunity to start anew, to fill in gaps or to remedy omissions in a petition.” slip op. at 23
- Strike new argumentNew argument disregardedDecided for patent owner
“Our regulations require the Petition to identify “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3),(4). The Supreme Court also has acknowledged that “petitioner’s contentions [in a petition] . . . define the scope of the litigation all the way from institution through to conclusion.” SAS, 138 S. Ct. at 1357. Furthermore, Petitioner’s Reply is limited to responding to arguments raised in the Patent Owner Response. See 37 C.F.R. § 42.23(b).” slip op. at 23
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art Neither party has proposed an articulation for the level of ordinary skill in the art. We determine that no express finding is necessary, and that the level of ordinary skill in the art, in this case, is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“not sufficiently explain, either in the Petition or the Reply, why Bauch’s disclosure of inputting the electronic feedback and the input data steam to separate inputs of an exclusive-OR gate teaches the claimed “the electronic feedback loop being fed back to the electronic input data stream.” We, therefore, are not persuaded that the limitation “the electronic feedback loop being fed back to the electronic input data stream” is met by Bauch, as proposed by Petitioner. Thus, Petitioner has not shown that Bauch teaches this limitation of claim 1. Petitioner does not rely on the additional references for this limitation of claim 1. Accordingly, we determine that Petitioner has not established by a preponderance of the evidence that claim 1 would have been obvious over Bauch and Heflinger. 3. Summary In sum, we determine that Petitioner has not established by a preponderance of the evidence that claim 1, and for the same reasons dependent claims 4 and 64, would have been obvious over Bauch and Heflinger. Likewise, for the same reasons, with respect to asserted Ground 3, we determine that Petitioner has not established by a preponderance of the evidence that claims 1 and 4–65 would have been obvious over the combination of Bauch, Heflinger, and Nortel.6” slip op. at 27
Patent outcomesUS 6,469,816 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,469,816 - Pfizer, Inc. v. Chugai Pharmaceutical Co. Ltd.No claims unpatentablePTAB · Nov 28, 2018 · IPR2017-01358 · APJ Jacqueline T Harlow · IPR · Final written decision
Claims 1–7, 12, and 13 were not shown unpatentable because Shadle did not establish the claimed molarity and conductivity limitations, and the obviousness showing was insufficient.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“and several years of postgraduate training or practical experience in a relevant discipline such as biochemistry, process chemistry, protein chemistry, chemical engineering and/or biochemical engineering, among others.” Pet. 6 (citing Ex. 1002 ¶ 28). Petitioner further contends that “[s]uch a person would also understand that protein purification is a multidisciplinary field, and could take advantage of the specialized skills of others using a collaborative approach.” Id. (citing Ex. 1002 ¶ 28). Patent Owner does not address Petitioner’s position on this matter and does not propose its own description for a person of ordinary skill in the art at the time of the invention. We agree with Petitioner, and adopt Petitioner’s description of the level of ordinary skill in the art at the time of invention of the ’815 patent. We also note that the applied prior art reflects a level of skill at the time of the claimed invention consistent with our determination. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Consistent with the Institution Decision, we determine that “the plain language of the claims, as well as the specification of the ’815 patent, indicates that the term ‘molarity’ refers to the total concentration of solute present in the solution, rather than the concentration of one particular solute.” Id. at 10–11. The claims of the ’815 patent refer consistently to the overall molarity of solutions, and not of any particular solute in a given solution. For example, claim 1 requires “an acidic aqueous solution of low conductivity . . . having a molarity of 100 mM or less” (Ex. 1001, 12:42–44 (emphasis added)), and further recites that the molarity of the “adjusted sample is 100 mM or less” (id. at 12:45–47 (emphasis added)). Claim 2 9 similarly limits the molarity of the “acidic aqueous solution.” Id. at 12:50– 52. Notably, these claims do not identify any particular solute to which the term molarity refers; rather, the claims of the ’815 patent describe solutions having certain characteristics, of which solution molarity is one. As we stated in our Institution Decision: Similarly, the specification of the ’815 patent refers to the molarity of the complete solution, rather than one solute in that solution. See, e.g., id. at 4:61–64 (“As used herein, a ‘neutral aqueous solution . . .’ generally refers to an aqueous solution . . . which has a molarity of 0 to 100mM”), 5:28–31 (“an ‘acidic aqueous solution of low conductivity’ generally refers to an aqueous solution . . . , which has a molarity of 0 to 100 mM”). The file history of the ’815 patent likewise references the molarity of the solution, rather than of a given solute in the solution. See e.g., Ex.1005, 82 (“an important feature of the present invention is to adjust pH value of the solution, the eluate, to from 4 to 8 while maintaining the molarity of the solution at 100mM or less.”), 107 (“0.1 M buffer was used as an eluent, and 1 M Tris-HCl was used to adjust the pH of the eluted fraction, that is, the fact that 0.1 M and 1 M solutions were used means that the molarity of the eluted fration [sic] must be over 0.1 M (100 mM)”). Inst. Dec. 11.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In the Institution Decision, we concluded that the claim terms “conductivity” and “ionic strength,” for which Petitioner proffered constructions in its Petition (Pet. 30, 35–36), did not require express construction for purposes of this proceeding. Dec. 8. Neither Petitioner nor Patent challenges that determination. See PO Resp. 11–22; Reply, passim. In its Response, Patent Owner proposes constructions for several additional 11 terms. Namely, Patent Owner contends that the preambles of claims 1 and 13 should be construed as limiting (PO Resp. 12), “to form particles” should be construed to require that the solution becomes clouded (id. at 16), and “the treated sample containing a physiologically active protein,” as recited in claim 5, should be interpreted to mean “the sample resulting from performing the method of claim 1, which concludes with removing particles in step 3” (id. at 17). Because interpretation of these claim terms is not necessary to our anticipation or obviousness analyses, we need not construe them. See Nidec, 868 F.3d at 1017.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either expressly or inherently. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016). “To establish that a prior art reference inherently—rather than expressly— discloses a claim limitation, ‘the limitation at issue necessarily must be present, or [is] the natural result of the combination of elements explicitly disclosed by the prior art.’” Endo Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381 (Fed. Cir. 2018) (alteration in original) (quoting PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014)). Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” slip op. at 14
Patent outcomesUS 7,927,815 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,927,815 - Pfizer, Inc. v. Chugai Pharmaceutical Co. Ltd.No claims unpatentablePTAB · Nov 28, 2018 · IPR2017-01357 · APJ Jacqueline T Harlow · IPR · Final written decision
Claims 1–8 and 13 were not held unpatentable because Petitioner failed to prove anticipation by Shadle or obviousness over Shadle.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art at the time of the invention would have had “at least a graduate degree, such as a Ph.D., 6 and several years of postgraduate training or practical experience in a relevant discipline such as biochemistry, process chemistry, protein chemistry, chemical engineering and/or biochemical engineering, among others.” Pet. 6 (citing Ex. 1002 ¶¶ 28–29). Petitioner further contends that “[s]uch a person would also understand that protein purification is a multidisciplinary field, and could take advantage of the specialized skills of others using a collaborative approach.” Id. (citing Ex. 1002 ¶¶ 28–29). Patent Owner does not address Petitioner’s position on this matter and does not propose its own description for a person of ordinary skill in the art at the time of the invention. We agree with Petitioner, and adopt Petitioner’s description of the level of ordinary skill in the art at the time of invention of the ’289 patent. We also note that the applied prior art reflects a level of skill at the time of the claimed invention consistent with our determination. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Consistent with the Institution Decision, we determine that “the plain language of the claims, as well as the specification of the ’289 patent, indicates that the term ‘molarity’ refers to the total concentration of solute present in the solution, rather than the concentration of one particular solute.” Id. at 10. The claims of the ’289 patent refer consistently to the overall molarity of solutions, and not of any particular solute in a given solution. For example, claim 1 requires “an acidic aqueous solution of low conductivity having a molarity of 100 mM or less” (Ex. 1001, 12:50–51 (emphasis added)), and further recites that the “molarity of the neutralized 9 eluate is 100 mM or less” (id. at 12:54 (emphasis added)). Claim 2 similarly limits the molarity of the “acidic aqueous solution.” Id. at 12:59–61. Notably, these claims do not identify any particular solute to which the term molarity refers; rather, the claims of the ’289 patent describe solutions having certain characteristics, of which solution molarity is one. As we stated in our Institution Decision: Similarly, the specification of the ’289 patent refers to the molarity of the complete solution, rather than one solute in that solution. See, e.g., id. at 4:61–66 (“As used herein, a ‘neutral aqueous solution . . .’ generally refers to an-aqueous [sic] solution . . . which has a molarity of 0 to 100mM”), 5:28–31 (“an ‘acidic aqueous solution of low conductivity’ generally refers to an aqueous solution . . . , which has a molarity of 0 to 100 mM”). The prosecution history of the ’289 patent likewise references the molarity of the solution, rather than of a given solute in the solution. See e.g., Ex.1005, 12 (“an important feature of the present invention is to adjust pH value of the solution, the eluate, to from 4 to 8 while maintaining the molarity of the solution at 100mM or less.”), 37 (“0.1 M buffer was used as an eluent, and 1 M Tris-HCl was used to adjust the pH of the eluted fraction, that is, the fact that 0.1 M and 1 M solutions were used means that the molarity of the eluted fration [sic] must be over 0.1 M (100 mM)”). Inst. Dec. 10–11.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In its Response, Patent Owner proposes constructions for several additional terms. Namely, Patent Owner contends that the preamble of claim 1 should be construed as limiting (PO Resp. 12), “to form particles” should be construed to require that the solution becomes clouded (id. at 17), and “the treated sample containing an antibody,” as recited in claim 5, should be interpreted to mean “the sample resulting from performing the method of claim 1, which concludes with removing particles in step 4” (id. 11 at 18). Because interpretation of these claim terms is not necessary to our anticipation or obviousness analyses, we need not construe them. See Nidec, 868 F.3d at 1017.” slip op. at 11
- ExcludeOther
“Petitioner asserts that Patent Owner untimely introduced Exhibits 2201–2207 for the first time during the deposition of Petitioner’s Reply declarant, Dr. Przybycien. Paper 36, 4. Petitioner additionally asserts that the challenged exhibits are inadmissible because they are irrelevant. Id. Patent Owner responds that the objected-to exhibits were timely introduced because they were used to challenge opinions presented by Dr. Przybycien for the first time in conjunction with Petitioner’s Reply. Paper 44, 2. Patent Owner further asserts that the exhibits are relevant because they illuminate gaps in Dr. Przybycien’s Reply testimony. Id. at 3. Because we have not relied on Exhibits 2201–2207, or Dr. Przybycien’s testimony regarding those exhibits in this Final Written Decision, we dismiss Petitioner’s Motion to Exclude Exhibits 2201–2207 as moot.” slip op. at 33
Patent outcomesUS 7,332,289 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,332,289 - Grünenthal GmbH v. Antecip Bioventures II LLCAll claims unpatentablePTAB · Jun 22, 2018 · PGR2017-00008 · APJ Sheridan K Snedden · PGR · Final written decision
Claims 1–17 are unpatentable under § 112(a) for lack of written description because the claimed dosing regimen is not supported by the specification.
RulingsFinal written decision- Skill levelSkill level board ownOther
“with regard to claim 17. Nonetheless, we are not persuaded by Petitioner’s contentions. Rather, we find that the ’239 patent contains a sufficient written description of an oral dosage form containing “at least 10% zoledronic acid.” The specification describes a full panoply of zoledronic acid concentrations. Liquid compositions may contain “about 10% (w/v) to about 15% (w/v), about 15% (w/v) to about 20% (w/v), about 20% (w/v) to about 30% (w/v), about 30% (w/v) to about 40% (w/v), or about 40% (w/v) to about 50% (w/v) of zoledronic acid.” Ex. 1003, 10:25–28. Solid dosage forms may contain “at least about 10% (w/w), at least about 20% (w/w) . . .” up to “at least about 80% [w/w]” zoledronic acid. Id. at 10:30–32. Solid dosage forms also are described as containing zoledronic acid in ranges beginning from “about 10% (w/w) to about 30% (w/w), about 10% (w/w) to about 20% (w/w) . . .” all the way up to a range of “about 80% (w/w) to about 90% (w/w).” Id. at 10:32–39. The breadth of zoledronic acid concentration ranges disclosed is more comprehensive than, and therefore distinguishable from, the more limited concentration ranges disclosed in Wertheim (claimed range of “at least 35%” not supported by disclosure of 25% to 60% range disclosed in priority application). In short, we determine that a person of ordinary skill in the art – a medical doctor with experience treating CRPS – would have recognized that the “inventor invented what is claimed” and did not overreach in claiming “at least 10% zoledronic acid” in an orally administered dosage form for treating CRPS. See University of Rochester, 358 F.3d at 928 (Fed. Cir. 2004).” slip op. at 21
- Expert testimonyOther
“Unocal or Wertheim where the specification clearly allowed persons of ordinary skill in the art to recognize the claimed invention despite the absence of literal support. In Unocal, the original disclosure explicitly described the effects of altering the variables, explicitly described the claimed endpoints as preferred, or explicitly recited them in an original claim. Moreover, persuasive expert testimony was offered to support the finding that the specification reasonably conveyed to one skilled in the relevant art that the inventor possessed the later claimed invention. Unocal, 208 F.3d at 993, 998–99. In Wertheim, the CCPA held that the specification supported the claimed range of 35–60% where the specification described the range of 25–60% along with specific embodiments of 36% and 50%. 541 F.2d at 264–65. In this case, the ’239 patent specification does not clearly allow persons of ordinary skill in the art to recognize the “about 80 mg” endpoint as part of invention described in the ’239 patent. There is no disclosure of “about 80 mg” as a preferred endpoint, no disclosure of a specific embodiment including a dose of 80 mg, nor any other description suggesting the importance or criticality of the “about 80 mg” endpoint.” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed
“In this case, the ’239 patent specification does not clearly allow persons of ordinary skill in the art to recognize the “about 80 mg” endpoint as part of invention described in the ’239 patent. There is no disclosure of “about 80 mg” as a preferred endpoint, no disclosure of a specific embodiment including a dose of 80 mg, nor any other description suggesting the importance or criticality of the “about 80 mg” endpoint.” slip op. at 16
Patent outcomesUS 9,283,239 unpatentable§ 112 disclosurePatents in suitUS 9,283,239 - Initiative For Medicines, Access & Knowledge (I-Mak), Inc. v. Gilead Pharmasset LLCInstitution deniedPTAB · Jun 13, 2018 · IPR2018-00103 · APJ Lora M Green · IPR · Institution
The Board denied institution for claims 1–19 because the Petition did not show a reasonable likelihood that any challenged claim was anticipated by Klecker or Sommadossi, or obvious over Sommadossi and Klecker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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; see 37 C.F.R. §§ 42.4. Upon considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review for any challenged claim of the ’572 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“reasonable likelihood that claim 1 is anticipated by Klecker. To anticipate a reference must expressly or inherently disclose “within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (2008). Moreover, “anticipation is not proven by ‘multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.’” Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (internal citation omitted). “[A] disclosed genus may anticipate a claimed species when the genus is so small that one of ordinary skill in the art would ‘at once envisage each member of this limited class.’” Wasica Fin. GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1285 (Fed. Cir. 2017) (quoting AbbVie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology Tr., 764 F.3d 1366, 1379 (Fed. Cir. 2014)). In this case, we agree with Patent Owner that Petitioner is improperly using claim 1 as a roadmap to cherry pick teachings of the Klecker reference to arrive at compounds encompassed by the genus of that claim. For example, we acknowledge that Klecker teaches that a fluorine may be placed below the ring at the 2' position of the sugar ring. Ex. 1005, 19:25‒26. Petitioner does not point us to any teaching of Klecker, however, that teaches a compound that has both a methyl group and a fluorine at the 2' position of the sugar ring, regardless of whether the fluorine is in the up position or the down position. That is, although the broad genus of compounds disclosed by Klecker encompasses such compounds, Petitioner does not point us to any teaching, other than the broad disclosure of the genus, wherein “W, X, Y, [and] Z” may be “H, hydroxy, halogen, alkyl (C1- C6), alkoxy (C1-C6)a label containing moiety or a label” (Ex. 1005, 15:3‒5), that would direct the ordinary artisan to choose X and W such that one of X and W is methyl and the other is fluorine, much less pointing to support of X as fluorine and W as methyl.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner relies on the Declaration of Dr. Fortunak in asserting that because Klecker teaches the X position may be substituted with fluorine and teaches that W can be an alkyl (C1 – C6), the ordinary artisan would understand from “general knowledge and common sense that methyl is a preferred lower alkyl in that group.” Pet. 34 (citing Ex. 1002 ¶ 92). Dr. Fortunak, however, merely repeats the statement in the Petition without citing any evidentiary support. See Ex. 1002 ¶ 92; see also id. ¶¶ 93‒95 (discussing choosing other substituents in the structure of Klecker). Conclusory statements by an expert “that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Furthermore, Petitioner’s conclusory statements (Pet. 34‒35) that because C is the first substituent identified for J, and H and OH are the first two substituents identified for Y and Z and, thus, the ordinary artisan would immediately envisage a compound where J is C, Y is H, and Z is OH, do not sufficiently persuade us that the ordinary artisan would immediately envisage their implementation to arrive at compounds that fall within the genus of claim 1.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“To the extent that Petitioner (Pet. 51‒52) is invoking inherency in arguing that the express teaching of Sommadossi that R7 may be chloro, 6 Britton et al., U.S. Patent 5,420,266, issued May 30, 1995 (Ex. 1011). bromo and iodo, is also an express teaching that R7 may be fluoro, we disagree that the use of fluoro as the R7 group is inherent in the teachings of Sommadossi. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999), quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Even though the ordinary artisan may have understood that fluoro is also a halogen and may be substituted for chloro, bromo, or iodo, the fact remains that Sommadossi taught the use of, inter alia, chloro, bromo, or iodo at the R7 position, specifically, rather than a halogen element, generally. Ex. 1006, 13:24‒27. Petitioner’s argument (Pet. 52) that “Sommadossi taught that R6 could be ‘chloro, bromo, fluoro, [or] iodo,’” is actually counter to Petitioner’s assertions. That is, that statement demonstrates that Sommadossi knew that “fluoro” could be included in the list of halogens. Moreover, Sommadossi defined the term “halo” as “chloro, bromo, iodo, and fluoro.” Ex. 1006, 52:31. Thus, to avoid inadvertently excluding a halogen, Sommadossi could have used the term “halo” in listing the possible substituents for the R7 group, but chose not to do so. Accordingly, we determine that Petitioner has not sufficiently established that Sommadossi anticipates the compounds of claim 1. Because, as discussed above in our analysis of the anticipation ground over Klecker, all of the claims require the compound of that claim, or a particular compound that falls within the genus of claim 1, Petitioner has also not sufficiently demonstrated that any of the challenged claims are anticipated by Sommadossi. Accordingly, we decline to institute trial as to any of the challenged claims on the basis that the claim is anticipated by Sommadossi.” slip op. at 17
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,429,572 - PTAB · May 7, 2018 · PGR2017-00039 · APJ Grace Karaffa Obermann · PGR · Rehearing
The Board dismissed Patent Owner’s rehearing request as moot after granting the parties’ joint motion for adverse judgment and terminating the proceeding.
RulingsRehearing decision- RehearingRehearing, deniedNot reached
“our decision instituting a post grant review. Paper 11. On April 16, 2018, the parties filed a Joint Motion for Adverse Judgment. Paper 16 (“Joint Motion”). In the Joint Motion, Patent Owner informed the Board that, in the event that we grant the Joint Motion and terminate the proceeding, Patent Owner “considers its request for rehearing to be moot and withdraws its request.” Id. at 1. Concurrently herewith, we issue a Judgment and Final Written Decision that grants the Joint Motion and terminates the proceeding. Accordingly, on this record, we dismiss Patent Owner’s Request for Rehearing (Paper 11) as moot. It is ORDERED that Patent Owner’s Request for Rehearing (Paper 11) is dismissed as moot.” slip op. at 2
- Adverse judgmentAdverse judgmentGranted
“our decision instituting a post grant review. Paper 11. On April 16, 2018, the parties filed a Joint Motion for Adverse Judgment. Paper 16 (“Joint Motion”). In the Joint Motion, Patent Owner informed the Board that, in the event that we grant the Joint Motion and terminate the proceeding, Patent Owner “considers its request for rehearing to be moot and withdraws its request.” Id. at 1. Concurrently herewith, we issue a Judgment and Final Written Decision that grants the Joint Motion and terminates the proceeding. Accordingly, on this record, we dismiss Patent Owner’s Request for Rehearing (Paper 11) as moot.” slip op. at 2
NonePatents in suitUS 9,463,183 - PTAB · May 7, 2018 · PGR2017-00039 · APJ Grace Karaffa Obermann · PGR · Adverse judgment
The Board entered adverse judgment against Petitioner after the parties agreed Petitioner had abandoned its challenge to claims 1–13.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. See 37 C.F.R. § 42.73(b). On April 16, 2018, the parties filed a Joint Motion for Adverse Judgment against Petitioner. Paper 16 (“Joint Motion”). On May 3, 2018, the parties indicated that they “jointly continue to consent to entry of adverse judgment against” Petitioner as advanced in the Joint Motion. Paper 18, 1. The parties direct us to 37 C.F.R. § 42.73(b)(4), which we construe as an admission that Petitioner has abandoned the contest. Paper 16, 1; Paper 18, 1. CONCLUSION Under these circumstances, entry of judgment adverse to Petitioner is appropriate, and thus, granted. It is ORDERED that adverse judgment is entered against Petitioner under 37 C.F.R. § 42.73(b)(4); and” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsGranted
“On May 3, 2018, with our prior authorization, the parties filed a Joint Motion to Limit the Petition. Paper 18. Concurrently herewith, we issue an order granting the parties’ Joint Motion to Limit the Petition to remove the two grounds of unpatentability based on 35 U.S.C. § 112, leaving the challenge to claims 1–13 based on 35 U.S.C. § 103 as the sole ground remaining in dispute.” slip op. at 2
NonePatents in suitUS 9,463,183 - Alcatel-Lucent USA Inc. / Ciena Corporation et al. v. Oyster Optics, LLCInstitution deniedPTAB · May 1, 2018 · IPR2017-02173 · APJ Jameson Lee · IPR · Institution
The Board denied institution because petitioner had not shown a reasonable likelihood of prevailing on any challenged claim, chiefly because it did not establish a reason to loop transmitted signals back to the receiver.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In each of independent claims 1, 14, 25, and 36, prior to the recitation of “the optical signals,” there is only one introduction of an element as “optical signals.” That element is the signals transmitted by the transmitter. Independent claims 1, 14, 25, and 36 each recite “the transmitter transmitting optical signals for telecommunication as a function of the input data.” Ex. 1101, 6:51–53, 7:32–34, 8:12–14, 8:57–59 (emphasis added). Nothing else is expressly introduced in any of independent claims 1, 14, 25, and 36 as optical signals. Although data carried by the second optical fiber also are optical signals, they are referred to in these claims simply as data and not as optical signals. Thus, in these claims there is clear antecedent basis for the recitation “the optical signals.” The recited term refers to optical signals transmitted by the recited transmitter on the transceiver card.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner’s explanation does not constitute reasoning with rational underpinning for routing the signals from the first optical fiber, transmitted by the recited transmitter on the transceiver card, to the second optical fiber to be sent back and received by the receiver on the same transceiver card. Notably, Petitioner uses the word “could” to support its reasoning. But the issue is not whether one with ordinary skill in the art “could” perform an operation but whether one with ordinary skill in the art, without hindsight based on the disclosure of the ’327 patent, would have reason to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”); Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Petitioner has not articulated sufficient motivation for one with ordinary skill in the art, without hindsight based on the claims of the ’327 patent, to convert transmitted output into received input on the same transceiver card.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the foregoing reasons, Petitioner has not shown a reasonable likelihood that it would prevail in establishing that claims 1 and 36 would have been obvious over the combination of Kitano and Choy. 4. Claims 2 and 9 Each of claims 2 and 9 depends directly from claim 1 and thus includes all the limitations of claim 1. 35 U.S.C. § 112, fourth paragraph. All of the Petition’s deficiencies in the context of claim 1 carry through to each of dependent claims 2 and 9. Accordingly, we determine that Petitioner has not shown a reasonable likelihood that it would establish unpatentability of claims 2 and 9 as obvious over Kitano and Choy.” slip op. at 27
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,620,327 - Hamilton Beach Brands, Inc. v. F’Real Food, LLCRehearing deniedPTAB · Apr 25, 2018 · IPR2017-00765 · APJ Lora M Green · IPR · Rehearing
The Board denied Hamilton Beach’s rehearing request and maintained its denial of institution, citing follow-on petition concerns and its discretion under §§ 314(a) and 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with those principles in mind.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“The Board has discretion not to institute an inter partes review. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”); see also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”). When exercising that discretion, the Board may take into account whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Conopco, Inc. v. The Proctor & Gamble Co., Case IPR2014-00628, slip op. 5– 10 (PTAB October 20, 2014) (Paper 21) (declining to institute because substantially the same arguments previously were presented to the Board). The issue of whether substantially the same arguments were raised previously in IPR2016-01105 arises in the present case. In addition, when determining whether to exercise our discretion not to institute a trial proceeding under 35 U.S.C. § 314(a), we seek to balance the equities between the parties, i.e., Petitioner’s desire to be heard against Patent Owner’s interest in avoiding harassment through repeated challenges. 5 Exhibit 1002 in IPR2016-01105. 6 U.S. Patent Publication No. 2002/0189460 A1, filed April 11, 2002, published December 19, 2002, to Brown et al. (“Brown”). Exhibit 1003 in IPR2016-01105. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (post-grant proceedings conducted under the AIA “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). In circumstances such as the present case, the Board considers the potential inequity of a petitioner filing serial attacks against the same claims of a patent, while benefiting from patent owner’s arguments and/or the Board’s decision in prior cases. See, e.g., Nautilus Hyosung Inc. v. Diebold, Inc., Case IPR2017-00426 slip op. at 12–16 (PTAB June 22, 2017) (Paper 17) (citing Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-00034, slip op. at 6–11 (PTAB April 13, 2017) (Paper 9); Baker Hughes Inc. v. LiquidPower Specialty Prods., Inc., Case IPR2016-01896, slip op. at 9–11 (PTAB March 31, 2017) (Paper 10); Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd., Case IPR2017-00197, slip op. at 4–11 (PTAB March 31, 2017) (Paper 10); NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 8 (PTAB May 4, 2016) (Paper 9); Toyota Motor Corp. v. Cellport Sys., Inc., Case IPR2015- 01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7)); see also Conopco, Case IPR2014-00628, slip op. at 11–12. Therefore, we must balance the parties’ competing interests when determining whether to exercise our discretion and decline to institute. Id.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner
“An important reason for denying institution in the instant proceeding was that Petitioner had the advantage of Patent Owner’s preliminary response in IPR2016-01105, as well as the claim construction and analysis set forth in the decision denying institution in that proceeding. That is, Petitioner had the benefit of that information in crafting the challenges set forth in the instant proceeding, and, thus, was able to address Patent Owner’s arguments made in its preliminary response in IPR2016-01105, as well as address the concerns of the Board set forth in the decision denying institution in IPR2016-01105. Consideration of these factors is consistent with the principles set forth in General Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, 15−19 (PTAB Sept. 6, 2017) (Paper 19) (“General Plastics”) (designated precedential Oct. 18, 2017) (setting forth a non-exhaustive list of factors to be considered in determining whether to institute a follow-on petition, including whether the same petitioner previously filed a petition directed to the same claims of the same patent, and whether, at the time of filing of the second petition, the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition). We noted further that Sato “was published nearly 30 years ago,” and Karkos issued on December 26, 2000. Dec. 11. We determined that Petitioner had not established that those references were not available to Petitioner when it filed the petition in IPR2016-01105. Id. We declined to provide a second chance merely because Petitioner’s “highly experienced searchers” did not find those references before the filing of the petition in IPR2015-01105. Id. (citing Pet. 6). That determination was another factor that informed our decision to exercise our discretion and decline to institute inter partes review in the instant proceeding. See, e.g., General Plastics at 16 (noting that other factors to be considered in granting a follow-on petition are whether at the time of filing of the first petition petitioner knew of the prior art asserted in the second petition or should have known of it, and whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent). Finally, we noted that we were “troubled by the implications of Petitioner’s overarching premise – that it is cost-effective and appropriate to wait for a claim construction and institution decision by the Board, and then launch a follow-on patent challenge in reliance on additional references that challenge the same patent claims already addressed by the Board.” Dec. 13 (citing Pet. 7‒8). As noted in the Decision denying institution, however, “[s]uch tactics increase the costs to Patent Owner and impose unnecessary demands on the finite resources of the Board.” Id.; see, e.g., General Plastics at 16 (noting another factor to be considered is the finite resources of the Board).” slip op. at 7
- Other 314aInstitution denied discretionary otherDecided for patent owner
“The Board has discretion not to institute an inter partes review. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”); see also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”). When exercising that discretion, the Board may take into account whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Conopco, Inc. v. The Proctor & Gamble Co., Case IPR2014-00628, slip op. 5– 10 (PTAB October 20, 2014) (Paper 21) (declining to institute because substantially the same arguments previously were presented to the Board). The issue of whether substantially the same arguments were raised previously in IPR2016-01105 arises in the present case. In addition, when determining whether to exercise our discretion not to institute a trial proceeding under 35 U.S.C. § 314(a), we seek to balance the equities between the parties, i.e., Petitioner’s desire to be heard against Patent Owner’s interest in avoiding harassment through repeated challenges. 5 Exhibit 1002 in IPR2016-01105. 6 U.S. Patent Publication No. 2002/0189460 A1, filed April 11, 2002, published December 19, 2002, to Brown et al. (“Brown”). Exhibit 1003 in IPR2016-01105. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (post-grant proceedings conducted under the AIA “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). In circumstances such as the present case, the Board considers the potential inequity of a petitioner filing serial attacks against the same claims of a patent, while benefiting from patent owner’s arguments and/or the Board’s decision in prior cases. See, e.g., Nautilus Hyosung Inc. v. Diebold, Inc., Case IPR2017-00426 slip op. at 12–16 (PTAB June 22, 2017) (Paper 17) (citing Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-00034, slip op. at 6–11 (PTAB April 13, 2017) (Paper 9); Baker Hughes Inc. v. LiquidPower Specialty Prods., Inc., Case IPR2016-01896, slip op. at 9–11 (PTAB March 31, 2017) (Paper 10); Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd., Case IPR2017-00197, slip op. at 4–11 (PTAB March 31, 2017) (Paper 10); NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 8 (PTAB May 4, 2016) (Paper 9); Toyota Motor Corp. v. Cellport Sys., Inc., Case IPR2015- 01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7)); see also Conopco, Case IPR2014-00628, slip op. at 11–12. Therefore, we must balance the parties’ competing interests when determining whether to exercise our discretion and decline to institute. Id.” slip op. at 5
Discretionary denialPatents in suitUS 7,520,658 - Incyte Corporation v. Concert Pharmaceuticals, Inc.Rehearing grantedPTAB · Apr 9, 2018 · IPR2017-01256 · APJ Tina E Hulse · IPR · Rehearing
The Board granted Incyte’s rehearing request and instituted review of claims 1–15 on Ground 3, finding it had applied overly restrictive standards for lead compound analysis and combining references.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“The party requesting rehearing has the burden to show that the decision should be modified. Under 37 C.F.R. § 42.71(d), the request for rehearing must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Having considered the Request for Rehearing, the current record, and our Decision denying institution, we are persuaded that we applied an overly restrictive standard for the lead compound analysis and for the reason to combine the cited references. See Reh’g Req. 2–12. Accordingly, we grant Petitioner’s Request for Rehearing and concurrently issue a decision granting institution on Ground 3. Paper 14.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having considered the Request for Rehearing, the current record, and our Decision denying institution, we are persuaded that we applied an overly restrictive standard for the lead compound analysis and for the reason to combine the cited references. See Reh’g Req. 2–12. Accordingly, we grant Petitioner’s Request for Rehearing and concurrently issue a decision granting institution on Ground 3. Paper 14.” slip op. at 3
NonePatents in suitUS 9,249,149
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.