- PTAB · Dec 16, 2024 · IPR2024-00891 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 23–46 on all grounds, finding a reasonable likelihood that Shin anticipates at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“Under the circumstances presented here, we find that discretionary denial is not warranted for the Petition in this case due to the parallel petition in IPR2024-00890. Given the large number of claims asserted by Patent Owner against Petitioner in the district court litigation, we do not consider two petitions asserting two single-reference grounds against forty claims including five independent claims to be excessive. The CTPG provides that assertion of a large number of claims in litigation is one circumstance under which more than one petition may be necessary. CTPG at 59. Furthermore, the two petitions challenge different claims of the ’031 patent. Claim length and subject matter complexity also justify the additional briefing presented by two petitions for which Patent Owner has been afforded the same amount” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(see 37 C.F.R. § 42.4(a)) that the record demonstrates a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims on the merits, so we grant institution of the petitioned inter partes review. See 35 U.S.C. § 314(a). We decline to exercise our discretion to deny institution because of the parallel petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that A person of ordinary skill in the art (“POSA”) as of the asserted priority date would have had a bachelor’s degree in biomedical engineering, chemical engineering, chemistry, or a related or equivalent field, and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, including some experience with algorithms for calibrating such devices, or equivalent experience. Such experience could include either formal coursework in signal processing, computer science, or electrical engineering, or it could also be obtained during on-the-job experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. A POSA may have been part of an interdisciplinary team with others having the relevant experience set forth above and/or with clinicians. The prior art also evidences the level of skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since Petitioner does not propose any alternative construction for “drift profile” or construction of any other term in this proceeding, there is no dispute over claim terms that we need to decide to resolve. Accordingly, we will apply the ordinary and customary meaning of the claim terms in our analysis of the challenge grounds without express construction. See Nidec, supra. Id. (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). We note in passing, however, that Patent Owner’s stated definition of “drift profile” in its Preliminary Response seems to comport both with Petitioner’s proposal in the district court litigation4 as well as how the ’031 patent’s specification uses the terms “drift” and “profile” in the context of “sensitivity.” See Ex. 1001, 21:36–48 (discussing “drift”), 210:39–60 (discussing “profile”).” slip op. at 15
Claim construction§ 102 anticipationDiscretionary denialcites KSR · GrahamPatents in suitUS 11,020,031 - PTAB · Dec 16, 2024 · IPR2024-00890 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR for claims 1–2, 4, 6–15, and 20–22 because the petition showed a reasonable likelihood of prevailing on anticipation by Shin.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“In IPR2024-00891, Petitioner filed on the same date a parallel petition to challenge claims 23–26 of the ’031 patent on grounds similar to those asserted in this proceeding. In its “Explanation of Parallel Petitions” (Paper 3), Petitioner provides the following table to explain the claims challenged and grounds of unpatentability asserted in each petition: Paper 3, 2. Petitioner ranked the Petition filed in this proceeding as first. Id. at 3. Accordingly, we need not reach the issue of parallel petitions in this proceeding, and instead address the issue in our institution decision in IPR2024-00891.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“likelihood that each limitation of claim 1 is disclosed by Shin notwithstanding Patent Owner’s arguments. Accordingly, Petitioner has shown a reasonable likelihood to prevail in demonstrating unpatentability of claim 1 of the ’031 patent as anticipated by Shin.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art “because the Petition fails to demonstrate unpatentability even under that definition.” Prelim. Resp. 18. Petitioner’s proposed level of skill in the art is consistent with the ’031 patent and the asserted prior art except that we set the level to “at least two . . . years of experience.” Otherwise, on this record, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the parties do not present any dispute over the meaning of any claim term, we will apply the ordinary and customary meaning of the claim terms in our analysis of the challenge grounds without express construction. See Nidec, supra.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,020,031 - PTAB · Dec 11, 2024 · IPR2024-00906 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1, 4–6, and 8–27 on all five § 103 grounds, finding a reasonable likelihood that claim 1 is obvious over N93, Dua, and Herle.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Based on the current record, the weight of the evidence before us does not support a finding that that the same or substantially the same art or arguments were previously presented to the Office.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“demonstrated a reasonable likelihood of prevailing in its challenge to claim 1 under 35 U.S.C. § 103 as obvious over the combined teachings of N93, Dua, and Herle.” slip op. at 68
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’241 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Creusere. See Ex. 1002 ¶ 28. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,445,241 - PTAB · Dec 11, 2024 · IPR2024-00907 · APJ Frederick C Laney · IPR · Institution
The Board instituted inter partes review on all challenged claims and all five §103 grounds, finding a reasonable likelihood that claim 1 is unpatentable over N93, Dua, and Herle.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(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 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. . . . If, after review of [Becton Dickinson] factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine 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.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“having “a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of wireless communications,” wherein “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1002 ¶ 28). Patent Owner does not contest Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 19. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’590 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Creusere. See Ex. 1002 ¶ 28. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,129,590 - PTAB · Nov 20, 2024 · IPR2024-00859 · APJ James A Tartal · IPR · Institution
The Board instituted review of claims 1–9, 13–19, and 28–30 on all petition grounds after finding a reasonable likelihood that Pace anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). In evaluating the exercise of discretion to deny institution under Section 325(d), we use the following two-part 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7–8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“C. Legal Standards for Anticipation and Obviousness A patent claim is anticipated if a single prior art reference either expressly or inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art is “cursory,” “unsubstantiated,” and “so vague as to be effectively meaningless.” Prelim. Resp. 26. According to Patent Owner, the Petition cites no evidence to substantiate the level of skill in the art, and Dr. Riviere’s declaration parrots the language in the Petition. Id. Although Patent Owner disputes the sufficiency of Petitioner’s definition of a person of ordinary skill in the art, Patent Owner does not propose a level of ordinary skill in the art of its own. See generally Prelim. Resp. Moreover, Patent Owner fails to present evidence that shows the level of ordinary skill in the art is different from Petitioner’s proposal, or that Petitioner’s proposal is in any way inconsistent with the level of skill reflected in the ’625 patent and the asserted references.8 We find that the ’625 patent and the cited prior art references reflect” slip op. at 30
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,510,625 - PTAB · Nov 20, 2024 · IPR2024-00861 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR on claims 1–7, 11, 13, and 15–17 because Abbott showed a reasonable likelihood that claims 1 and 15–17 are unpatentable over Aspel and Gutekunst.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(xii) Conclusion for Claims 1 and 15–17 Petitioner has shown sufficiently why a skilled artisan would have known to combine Aspel and Gutekunst with a reasonable expectation of success, and how that combination discloses or suggests each limitation of claims 1 and 15–17. Accordingly, we determine that the Petition establishes there is a reasonable likelihood Petitioner would prevail in showing that claims 1 and 15–17 of the ’541 patent are unpatentable in view of Aspel and Gutekunst.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Because Aspel and Gutekunst are both directed to systems for “remote monitoring of health parameters,” Petitioner contends that a skilled artisan “would have recognized Gutekunst discloses devices for monitoring and gathering a ‘user’s medical information’ that would complement the Aspel system” and would have had a reasonable expectation of success integrating Gutekunst’s disclosed device into Aspel’s monitoring system “to provide physiological parameters.” Id. at 31–32 (citing Ex. 1003 ¶¶ 94–100; Ex. 1005 ¶ 188; Ex. 1006 ¶¶ 85, 91, 93, 112–113, 189). Integrating Gutekunst into Aspel, Petitioner contends, “would have involved combining prior art elements (i.e., a glucose monitor sensor and mobile application on a user device) according to known methods to yield predictable results (i.e., receiving glucose data as taught in Gutekunst and providing it to the Aspel system, e.g., the Data Center). Id. at 32 (citing Ex. 1003 ¶ 101). Patent Owner notes that “in describing its Aspel-Gutekunst combination, [Petitioner] does not describe any modification to Aspel’s “server system” or “remote monitor” other than to work with Gutekunst’s glucose sensor and receiver to allow remote monitoring of Gutekunst’s glucose monitor.” Prelim. Resp. 16. Other than observing that Petitioner’s proposed modification involves a bodily incorporation of Gutekunst’s disclosed glucose monitoring device into Aspel’s monitoring system, Patent Owner does not appear to dispute a skilled artisan would have known to combine Aspel and Gutekunst in the manner proposed. See generally Prelim. Resp 14–18. After studying the evidence and arguments from both parties, we find Petitioner’s contention for why a skilled artisan would have known to combine Aspel and Gutekunst in the manner proposed sufficient for this stage of the proceeding.” slip op. at 14
- Obviousness (§103) › KSR rationalesInstituted
“After studying the evidence and arguments from both parties, we find Petitioner has carried its burden for this stage of the proceeding to establish that a skilled artisan would have recognized that the system Aspel discloses allows the wireless mobile remote monitor to send a user acknowledgment prior to the user accessing at least some of the analyte concentration sensor data associated with the alert being acknowledged. Patent Owner’s contrary position is unavailing because it rests solely on attorney argument that, at this stage of the proceeding, has no evidentiary support. Patent Owner offers no evidence from either an expert or the cited references to support the underlying premise––namely, absent an express statement by Aspel that a user accesses data for an alert after deciding to remove it from the report, a skilled artisan would not have found it obvious for Aspel’s disclosed system to have that functionality. However, Patent Owner does not dispute: (1) Aspel discloses a remote monitor that provides an acknowledgment of a received alert associated with analyte concentration sensor data of a host; and (2) Aspel discloses the remote monitor accessing that host data associated with the alert from the server system. See Prelim. Resp. 36–37. Again, recognizing that a skilled artisan is of “ordinary creativity” and “not an automaton,” Petitioner’s contention and cited evidence demonstrates sufficiently at this stage of the proceeding that allowing a remote user of Aspel’s system to access the data associated with an alert after deciding to remove the alert from the report is simply an arrangement of old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement. See KSR, 550 U.S. at 421.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of skill in the art is consistent with the ’541 patent and the asserted prior art, but we set the level to two years of experience because the qualifier “or more” is unnecessary. Otherwise, we accept and will use Petitioner’s proposed level for this Decision.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,801,541 - PTAB · Nov 20, 2024 · IPR2024-00841 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–3, 5–6, and 8–10 because the petition showed a reasonable likelihood that Gross anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating discretionary denial under § 325(d), the Board follows a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially 1 Amendments to 35 U.S.C. § 103 enacted by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) took effect on March 16, 2013. The ’364 patent claims priority to U.S. Provisional Application 60/660,743 filed March 10, 2005. Ex. 1001, code (22). Therefore, we apply the pre-AIA version of § 103. 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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 15. Petitioner’s proposed level of skill in the art is consistent with the ’364 patent and the asserted prior art except that we set the level to “at least two . . . years of experience.” Otherwise, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Although Patent Owner argues that Petitioner interprets certain claim language so as to render it superfluous or non-sensical (Prelim. Resp. 27–28, 30), for reasons explained later in this decision (see § IV.D.2.iv and §IV.D.2.viii, infra), we do not agree with Patent Owner’s argument on the current record. Accordingly, we apply the ordinary and customary meaning to the claim terms without express construction.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that the record demonstrates a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–3, 5–6, and 8–10 at least as to anticipation for the following reasons.” slip op. at 13
Claim construction§ 102 anticipationDiscretionary denialcites KSR · GrahamPatents in suitUS 10,709,364 - PTAB · Nov 20, 2024 · IPR2024-00840 · APJ Mitchell G Weatherly · IPR · Institution
Instituted IPR of claims 1–3, 5, 11–13, 16–20, 24–26, 28, 34–36, and 39–43 on all asserted grounds after finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“DexCom, Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “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). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims, and we institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party identifies any claim language requiring express interpretation, and we currently discern no such claim language. The parties are free to expressly address the meaning of any claim language during the trial. B. Legal Standards” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“likelihood of proving that Brauker describes the subject matter recited in the preamble of claim 1 and limitation 1a. 10 We do not consider the issue of whether Brauker “expressly state[s]” that its predetermined threshold is non user settable to be dispositive of whether Brauker describes step 1b in an anticipation context. Rather, we seek to determine at trial what Brauker describes to an ordinarily skilled artisan. “An anticipating reference must describe the patented subject matter with sufficient clarity and detail to establish that the subject matter existed in the” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“claim 1 except for the requirement in limitation 1b that the second function determines whether a “predicted glucose value” meets a criterion that is not set by a user. Pet. 60–66. For this aspect of limitation 1b, Petitioner argues that an ordinarily skilled artisan would have found it obvious to incorporate Brauker’s function of determining whether a predicted glucose level meets a threshold into the STS Guide’s second function comparing a glucose level to non user settable criteria. Id. at 62–65. Petitioner argues that an ordinarily skilled artisan “would have known the advantages of using a predicted low glucose alarm in addition to a real time low glucose alarm, because a predicted low glucose alarm in advance of potential hypoglycemia helps prevent hypoglycemia by giving the user more time to act, for example, by eating sugar.” Id. at 63 (citing Ex. 1003 ¶ 146; Ex. 1007, 1149; Ex. 1011, 932). Petitioner also contends that prior art establishes the advantages of using alarms based on both real time and predicted glucose values. Id. at 64 (citing Ex. 1003 ¶¶ 11, 15; Ex. 1010, 68). Petitioner contends that an ordinarily skilled artisan would have been particularly motivated to add a predicted, non user settable low glucose alarm because [an ordinarily skilled artisan] would have known that non user settable criteria tied to hypoglycemia often relate to clinical danger, [Ex. 1013, 725] (“The user should never go below 50 mg / dL at any time without an alarm.”), and that it is particularly beneficial to have an advance warning of a clinical danger. [Ex. 1003 ¶ 147.] Pet. 64 (internal footnote omitted). Petitioner argues that an ordinarily skilled artisan would have reasonably expected to successfully modify the system described in the STS Guide as proposed because the STS Guide and Brauker both relate to alerts to reduce the severity of hypoglycemia and delivering alarms due to low predicted glucose levels was well known before the alleged invention of claim 1. Id. at 65 (citing Ex. 1003 ¶ 149; Ex. 1005 ¶ 15; Ex. 1010, 68; Ex. 1007, 1150; Ex. 1020; Ex. 1021).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,119,528 - PTAB · Nov 20, 2024 · IPR2024-00797 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted inter partes review of claims 14–16 and 18–20 on both asserted § 103 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
“We conclude that the record demonstrates a reasonable likelihood that Petitioner would prevail with respect to challenged claims 14–16 and 18–20 for the following reasons.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that A POSITA as of the claimed priority date would have had a Bachelor’s degree in biomedical engineering, electrical or computer engineering, computer science, or a related or equivalent field and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) in wireless communication related to medical devices or equivalent experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. The prior art also evidences the level of skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPlain and ordinary meaningDecided for petitioner
“We determine that “authentication” and “identification” are well- understood and widely used terms in communications (including wireless), and these terms do not require any specialized constructions for this proceeding. The ordinary and customary meaning of “authentication” is verifying the identity of communicating devices or users, or, in other words, determining that a device or user is what or who they represent themselves to be. See, e.g., Ex. 1003 ¶¶ 30, 32; Ex. 2002, 175.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner asserts that “Yarger and Love are analogous art because they are both related to aspects of securely communicating analyte measurements over wireless links in CGM systems.” Id. at 20–21 (citing Ex. 1005, code (57); Ex. 1006, code (57); Ex. 1003 ¶ 69; In re Bigio, 381 F.3d 1320, 1325–27 (Fed. Cir. 2004)). Patent Owner does not dispute Petitioner’s contentions that Yarger and Love are analogous, and that a POSITA would have been motivated to combine them with a reasonable expectation of success. See generally Prelim. Resp. We determine that Petitioner shows sufficiently that Yarger and Love are analogous and that a POSITA would have been motivated to combine them with a reasonable expectation of success. Specifically, Yarger and Love are directed to similar glucose monitoring systems and are thus in the same field of endeavor and address the same problems. See, e.g., Pet. 20– 21; Ex. 1005, codes (54, 57), ¶ 1; Ex. 1006, codes (54, 57), ¶ 2. Since Yarger already monitors and displays glucose levels, including clinically significant conditions such as hypoglycemia or hyperglycemia, adding Love’s teaching to generate alarms and notifications for such conditions would improve Yarger’s similar system in the same way as taught by Love. See, e.g., Pet. 19–21; Ex. 1005 ¶¶ 3, 17; Ex. 1006, codes (54, 57), ¶¶ 70, 78. Since this modification merely requires “routine programming” adding logic to compare glucose levels and generate an alarm when a clinically significant threshold is exceeded, a POSITA would have had a reasonable expectation of success in making the modification. See, e.g., Pet. 20; Ex. 1003 ¶ 73. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,375,222 - PTAB · Nov 19, 2024 · IPR2024-00853 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR on all challenged claims, finding a reasonable likelihood that Abbott would show claims 1 and 12 unpatentable over Gawlick and Valdes.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“known to combine Gawlick and Valdes with a reasonable expectation of success, and how that combination discloses or suggests each limitation of claims 1 and 12. Accordingly, we determine that the Petition establishes there is a reasonable likelihood Petitioner would prevail in showing that claims 1 and 12 of the ’204 patent are unpatentable in view of Gawlick and Valdes.” slip op. at 33
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that A person of ordinary skill in the art (“POSITA”) as of December 2012 would have had a Bachelor’s degree in biomedical engineering, chemical engineering, mathematics, statistics, or computer science (or a related or equivalent field), and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) systems for measuring and monitoring (including remote monitoring) of a host’s analyte data, or similar data, or equivalent experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Each of these POSITAs may be part of an interdisciplinary team with others having the relevant experience set forth above and/or with clinicians involved in diagnosing, treating, monitoring, and managing patients using medical devices.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner has carried its burden for this stage of the proceeding to establish that a skilled artisan would have considered it obvious to integrate Valdes’s disclosed system and method for communicating glucose concentration information between devices into Gawlick’s disclosed system and method for adjusting an alert rule used to indicate a status of a patient. Petitioner’s evidence supports sufficiently that the proposed Gawlick and Valdes combination is simply an arrangement of old elements with each functioning as intended and yields no more than would have been expect from such an arrangement. Petitioner’s cited evidence shows: (1) Gawlick teaches a medical alert system 100 that includes a patient monitor system 106, which broadly covers one or more electronic devices that continuously, periodically, and/or upon request monitor the physiological characteristics of patients; (2) Gawlick teaches a medical alert system 100 that uses the patient monitor system to monitor blood glucose physiological characteristics and allows for adjustable alert rules to be established to indicate the status of a patient’s blood glucose; and (3) Valdes teaches a system for communicating glucose concentration information between devices using a receiver designed to transfer information related a patient’s blood glucose physiological characteristics continuously monitored by a sensor to a network system. See Ex. 1003 ¶¶ 101–109; Ex. 1005 ¶¶ 1, 20, 21, 37, 39, 112–113, Figs. 16, 17, 26, 27; Ex. 1007 ¶¶ 4, 20, 39, 59, 92–93, 97, 110, 118, 177. Recognizing that a skilled artisan is of “ordinary creativity” and “not an automaton” (KSR, 550 U.S. at 421), Petitioner’s cited evidence demonstrates that Valdes’s disclosed system is an example of a patient monitor system that Gawlick suggests integrating into its disclosed medical alert system. As such, we are persuaded Valdes and Gawlick provide sufficient support for Petitioner’s contention that integrating Valdes’s system into Gawlick’s system is nothing more than combining known elements in a known way, which would produce predictable results (i.e., allowing Gawlick’s system to receive and monitor data associated with the physiological characteristics of a patient’s blood glucose).” slip op. at 18
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,213,204
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