- Aurobindo Pharma USA, Inc.No claims unpatentablePTAB · Dec 28, 2018 · IPR2017-01648 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 1–25 were not shown unpatentable over Timmins and Cheng because Petitioner did not establish that the combination would have targeted the claimed mean Tmax range.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“In the Patent Owner Response, Patent Owner acknowledged the Board’s characterization of the knowledge of an ordinarily skilled artisan as consistent with the proposals of both parties (PO Resp. 12–13), and neither party further addressed the proper level of ordinary skill in the art or disagreed with our characterization from the Institution Decision. See PO Resp., Reply. Our determination regarding the patentability of the challenged claims does not turn on the differences between the parties’ definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Patent Owner’s assessment. C. Testimony of Dr. Akhlaghi” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We agree with Petitioner that Dr. Akhlaghi’s qualifications and deposition testimony, when read in context, indicate that Dr. Akhlaghi is sufficiently experienced to opine on the knowledge of one of skill in the art at the time of the ’866 patent. As noted in the August 13, 2018 update to our Trial Practice Guide: An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. There is, however, no requirement of a perfect match between the expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). See Notice of Update to Office Patent Trial Practice Guide, 83 Fed. Reg. 156, (Aug. 13, 2018) (text of update available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr actice_Guide.pdf). In addition, we are well able to consider the value of an expert opinion and afford it appropriate weight. Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”) D. Claim Interpretation” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for patent owner
“Tmax” In our Institution Decision, we noted that the term “Tmax” appears in each of the challenged claims, and that both parties agreed that Tmax should be construed as stated in the Specification: “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours).” Inst. Dec. 7 (citing Pet. 24; Prelim Resp. 18; Ex. 1001, col. 7, ll. 49–53). We concluded that the proposed definition was consistent with the Specification and defined the claim term with reasonable clarity, deliberateness, and precision, and we adopted the parties’ construction. Neither party addressed the issue of construction of Tmax in further briefing, but the parties disagree about how Dr. Akhlaghi applied the definition in her testimony. See, eg., Pet. Reply 9–10. For purposes of analyzing the patentability of the challenged claims, we continue to interpret the term as “the time period which elapses after administration of the dosage form at which the plasma concentration of the drug attains the highest plasma concentration of drug attained within the dosing interval (i.e., about 24 hours),” because that definition is consistent with the Specification, and because the parties themselves agreed to the definition of Tmax. Inst. Dec. 7. E. Overview of the Prior Art slip op. at 11
- BurdenNot shown unpatentable
“Based on our review of the record, we determine that Petitioner has not shown sufficiently that combining the teachings of Timmins and Cheng as Petitioner contends would have resulted in a dosage form that provides a mean Tmax of metformin from 5.5 to 7.5 hours after administration.” slip op. at 19
Patent outcomesUS 6,866,866 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,866,866 - Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentablePTAB · Dec 28, 2018 · IPR2017-00440 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–4, 6–7, 10–16, 18, and 20 are unpatentable; claims 5 and 8 are not shown unpatentable. Substitute claims 21, 30, and 38 are unpatentable as obvious over Sackier and Kirsch.
RulingsFinal written decision- Expert testimonyOther
“3. Dr. Nicosia’s Declaration in support of its Opposition to Patent” slip op. at 7
- Skill levelOther
“B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“B. “clip” The Parties now agree that “clip,” as the term is generally understood,” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We conclude that Petitioner has not met its burden of showing this element to be present in Sackier because Petitioner combines features from distinct embodiments in Sackier without establishing persuasively that those embodiments are so directly related to each other such that one of ordinary skill in the art, looking at the reference as a whole, would recognize a disclosure of the invention as claimed. Accordingly, although a very close call, we conclude that Petitioner has failed to demonstrate anticipation of claims 1, 12, and 20 by Sackier for this reason.” slip op. at 21
Patent outcomesUS 9,271,731 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,271,731 - Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.No claims unpatentablePTAB · Dec 28, 2018 · IPR2017-00435 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–4, 6–18, and 20 were not shown unpatentable over Malecki; the contingent motion to amend was denied as moot.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“construction more persuasive because it is grounded in, and most consistent with, the specification of the ’731 patent. Contrastingly, Petitioner does not offer a specific interpretation of “inner walls” and its arguments are generally based on extrinsic evidence, including claim charts from the related district court litigation (Pet. 15), arguments from related proceedings (Pet. Reply 3), and the prior art reference (Malecki) relied on to challenge the claims (id. at 3–4). Petitioner criticizes the Patent Owner’s position but provides no express interpretation of “inner walls of the first and second clip arms;” instead, Petitioner argues why Patent Owner’s proposed construction is wrong. Pet. Reply 4–5. Dr. Nicosia does not expressly define or otherwise persuasively explain the definition of “inner walls” in his declarations either. See generally Exs. 1037, 1095, and 1109.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the time of the filing of the application that became the ’731 patent would have possessed the knowledge and skill of an engineer or similar professional 5 The parties have not introduced evidence of secondary considerations in this proceeding. with at least an undergraduate degree in engineering, or a physician having experience with designing medical devices. Pet. 10 (citing Ex. 1037 ¶ 11). Patent Owner does not dispute Petitioner’s proposal, and we adopt it based on the final record before us. It is also consistent with the level of skill evidenced by the references.” slip op. at 15
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Based on the final trial record, including our interpretation of “inner walls of the first and second clip arms” to mean “the exterior surfaces of the first and second clip arms that are inward-facing relative to the longitudinal axis of the clip,” Petitioner has not persuasively established that Malecki Embodiment #1 discloses this limitation. We find persuasive the testimony of Dr. Vaitekunas, that “[t]he jaws of Malecki Embodiment #1 have four walls,” and a person of ordinary skill in the art “would understand Figure 28A to illustrate links 404, 406 connecting to the side walls of jaws 308C, 310C on the side or lateral wall opposite (or underneath) the one shown in Figure 28A.” Ex. 2010 ¶¶ 66, 68. We agree with Dr. Vaitekunas that a person of ordinary skill in the art would not consider side or lateral walls as “inner walls” under the broadest reasonable interpretation of that term. Thus, the portion of the jaw identified by Petitioner as shaded in green (Pet. 26) is a portion of the side/lateral wall, not an inward-facing wall. See Ex. 2010 ¶ 68. Petitioner has also not persuasively established that linkages 404, 406 contact any outside portion of the inner wall. As noted by Patent Owner above, Petitioner’s expert admits that Malecki does not disclose links 404, 406 contacting the radially inward-facing walls. See Ex. 2012 at 274:12–23. We also do not find persuasive Petitioner’s pin engagement theory. First, neither Petitioner nor Dr. Nicosia persuasively establish that a slot and pin channel (Pet. 15) is used in Malecki Embodiment #1. See Ex. 1095 ¶ 27. As pointed out by Dr. Vaitekunas, Petitioner’s theory that an engagement between a pin and a pin hole satisfies the “engaging the inner walls of the first and second clip arms” limitation is based on structure that is simply not disclosed in Malecki. Ex. 2010 ¶ 69. Further, we agree with Dr. Vaitekunas that “[e]ven if contact does occur between a pin and a pinhole, the contact occurs in the pin hole, not the exterior surface of a radially inward-facing wall.” Id.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on the final trial record, including our interpretation of “inner walls of the first and second clip arms” to mean “the exterior surfaces of the first and second clip arms that are inward-facing relative to the longitudinal axis of the clip,” Petitioner has not persuasively established that Malecki Embodiment #1 discloses this limitation. We find persuasive the testimony of Dr. Vaitekunas, that “[t]he jaws of Malecki Embodiment #1 have four walls,” and a person of ordinary skill in the art “would understand Figure 28A to illustrate links 404, 406 connecting to the side walls of jaws 308C, 310C on the side or lateral wall opposite (or underneath) the one shown in Figure 28A.” Ex. 2010 ¶¶ 66, 68. We agree with Dr. Vaitekunas that a person of ordinary skill in the art would not consider side or lateral walls as “inner walls” under the broadest reasonable interpretation of that term. Thus, the portion of the jaw identified by Petitioner as shaded in green (Pet. 26) is a portion of the side/lateral wall, not an inward-facing wall. See Ex. 2010 ¶ 68. Petitioner has also not persuasively established that linkages 404, 406 contact any outside portion of the inner wall. As noted by Patent Owner above, Petitioner’s expert admits that Malecki does not disclose links 404, 406 contacting the radially inward-facing walls. See Ex. 2012 at 274:12–23. We also do not find persuasive Petitioner’s pin engagement theory. First, neither Petitioner nor Dr. Nicosia persuasively establish that a slot and pin channel (Pet. 15) is used in Malecki Embodiment #1. See Ex. 1095 ¶ 27. As pointed out by Dr. Vaitekunas, Petitioner’s theory that an engagement between a pin and a pin hole satisfies the “engaging the inner walls of the first and second clip arms” limitation is based on structure that is simply not disclosed in Malecki. Ex. 2010 ¶ 69. Further, we agree with Dr. Vaitekunas that “[e]ven if contact does occur between a pin and a pinhole, the contact occurs in the pin hole, not the exterior surface of a radially inward-facing wall.” Id. Finally, Petitioner seems to recognize that a modification would be” slip op. at 25
Patent outcomesUS 9,271,731 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,271,731 - Apple Inc. v. California Institute Of TechnologyNo claims unpatentablePTAB · Dec 27, 2018 · IPR2017-00219 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1–8, 11–17, 19–22, and 24–33 were not shown unpatentable because the obviousness combinations lacked a reasonable expectation of success.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“one” as recited in claims 1 and 3 is “within 50% of one.” Pet. 24–25. Petitioner argues that this is consistent with the ’710 patent specification, which states that the inner code 210 of Figure 1, “can have a rate that is close to one, e.g., within 50%, more preferably 10% and perhaps even more preferably within 1% of 1.” Pet. 24–25 (quoting Ex. 1201, 2:62–64 and citing Ex. 1206 ¶¶ 102–103) (emphasis omitted). Patent Owner does not provide an express claim construction in this proceeding. In related proceeding IPR2017-00210, Patent Owner argues that the term “close to one” does not require construction and that the ’710 patent explains that the rate of a coder is the number of input bits divided by the number of output bits. IPR2017-00210, Paper 35, 18. We determine that “close to one” as recited in the challenged claims is construed as “within 50% of one.”” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We determine that Petitioner’s proposed definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’710 patent and the prior art of record. Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“As part of our obviousness analysis, we consider “the scope and content of the prior art.” See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In this regard, we credit Patent Owner’s testimony and evidence that an important aspect of the art in this case is the relative unpredictability of developing error-correction codes. See PO Resp. 5–6, 45–46 (citing Ex. 2004 ¶¶ 116–117; Ex. 2033, 256:21–257:12) (“The field of error correction coding has historically been characterized by significant experimentation and unpredictable results . . . . Even when well-performing codes are identified, the reasons for the improved performance are often not understood.”)); Ex. 2004 ¶ 47. We do not agree with Petitioner that the need to run experiments in an unpredictable field, such as error-correction coding, indicates anything about whether such experiments ultimately would have been successful at the time of the invention. Importantly, “[u]npredictability of results equates more with nonobviousness rather than obviousness, whereas that which is predictable is more likely to be obvious.” Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A., 865 F.3d 1348, 1356 (Fed. Cir. 2017). In the absence of any evidence rooted in the Petition that substantiates a reasonable expectation of success, Petitioner’s reliance on a known need for experimentation is not sufficient to support its obviousness rationale.9 See Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (“[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan would have had a reasonable expectation of success from doing so.” (internal quotation omitted)).” slip op. at 18
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“with Patent Owner that “[i]t is completely irrelevant what Dr. Frey claims he could do in the year 2018 when armed with Caltech’s patent disclosures and publications, [the inventor’s] original coding work, contemporary resources, (e.g., Dr. Frey (¶51) used Matlab, a software program that received over 35 version updates since May 2000), and 18 years of post-filing date knowledge” PO Sur-Reply 7. Because this evidence is not tied to the state of the art at the time of the invention, it is not probative of anticipated success. See Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1367 (Fed. Cir. 2017) (quoting Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)) (“Those charged with determining compliance with 35 U.S.C. § 103 are required to place themselves in the minds of those of ordinary skill in the relevant art at the time the invention was made, to determine whether that which is now plainly at hand would have been obvious at such earlier time.” (emphasis added)). As part of our obviousness analysis, we consider “the scope and content of the prior art.” See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In this regard, we credit Patent Owner’s testimony and evidence that an important aspect of the art in this case is the relative unpredictability of developing error-correction codes. See PO Resp. 5–6, 45–46 (citing Ex. 2004 ¶¶ 116–117; Ex. 2033, 256:21–257:12) (“The field of error correction coding has historically been characterized by significant experimentation and unpredictable results . . . . Even when well-performing codes are identified, the reasons for the improved performance are often not understood.”)); Ex. 2004 ¶ 47.” slip op. at 18
Patent outcomesUS 7,116,710 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,116,710 - Apple Inc. v. California Institute Of TechnologyNo claims unpatentablePTAB · Dec 27, 2018 · IPR2017-00210 · APJ Trevor M Jefferson · IPR · Final written decision
The Board held claims 1–8, 11–17, 19–22, and 24–33 not unpatentable because Apple did not prove anticipation by Frey or obviousness over the asserted combinations.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“given reference qualifies as a prior art “printed publication” involves a caseby-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). Petitioner has put forth date stamp evidence that a copy of the conference proceedings including Frey was at least received in the Cornell University Library by March 20, 2000. Ex. 1015, 16. Petitioner also put forth a declaration of Pamela Stansbury, an employee in the Original Cataloging Unit of the Cornell University Library, who testifies that, based upon her review of library records and her knowledge of standard operating procedures, Frey was “publicly available at the Cornell University Library as of March 20, 2000.” Ex. 1031 ¶ 4; see also Paper 22, 5 (Petitioner’s motion to submit supplemental information, which includes a description of Exhibit 1031); Paper 32 (granting Petitioner’s motion to submit supplemental information). Patent Owner does not dispute that Frey was publicly available as of March 20, 2000. See PO Resp. 15. Based on Petitioner’s evidence, we determine that Frey qualifies as a prior art printed publication as of March 20, 2000.” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“It is well established that when a party seeks to prove conception via the oral testimony of a putative inventor, the party must proffer evidence corroborating that testimony. . . . There is no particular formula that an inventor must follow in providing corroboration of his testimony of conception. Rather, whether a putative inventor's testimony has been sufficiently corroborated is determined by a ‘rule of reason’ analysis, in which ‘an evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor's story may be reached.’ However, that ‘rule of reason’ analysis does not alter the requirement of corroboration of an inventor's testimony. Evidence of the inventive facts must not rest alone on the testimony of the inventor himself. Singh, 317 F.3d 1240–41 (internal citations omitted) (quoting Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)). With respect to priority and antedating a reference, the Federal Circuit has stated the following regarding burdens and required documentary support: When the issue of priority concerns the antedating of a reference, the applicant is required to demonstrate, with sufficient documentation, that the applicant was in possession of the later-claimed invention before the effective date of the reference. Demonstration of such priority requires documentary support, from which factual findings and inferences are drawn, in application of the rules and law of conception, reduction to practice, and diligence. The purpose is not to determine priority of invention—the province of the interference practice—but to ascertain whether the applicant was in possession of the claimed invention sufficiently to overcome the teachings and effect of an earlier publication of otherwise invalidating weight. In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015) (emphases added); see also Perfect Surgical Techniques, Inc. v. Olympus America, Inc., 841 F.3d 1004, 1008 (Fed. Cir. 2016) (citing Steed). “The principles are legal, but the conclusions of law focus on the evidence, for which the Board’s factual findings are reviewed for support by substantial evidence.” Steed, 802 F.3d at 1316; see also NFC Tech., LLC v. Matal, 871 F.3d 1367, 1371 (Fed. Cir. 2017).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Analysis To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). When evaluating a prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 49 CCPA 993, 301 F.2d 676, 681 (1962)). We analyze the instant ground with these principles in mind.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We are persuaded by Patent Owner’s arguments that Petitioner failed to establish a reasonable expectation of success for the proposed modifications to Frey and Divsalar. Petitioner’s argument in response acknowledges the missing expectation of success evidence by relying on the experimental nature of the field. Pet. Reply 9. Petitioner states that [a]s [Patent Owner] concedes, rigorous mathematical analysis of codes is difficult, and, as a result, POSAs routinely developed codes by experimentation. POR, 4. Encouraged by Frey’s results, POSAs would have been motivated to use Frey’s irregularity in Divsalar. Indeed, this is exactly what Dr. Frey suggested to Dr. Divsalar in an email dated December 8, 1999. Ex. 1035, App. A; Ex. 1064, 185:5–8. The Petition showed that POSAs would have had a reasonable expectation of success because it was trivial to modify Divsalar to make it irregular by repeating some of the information bits more than others, which meets the limitations of the claimed invention. Pet., 44–47. . . . Dr. Mitzenmacher agreed that simply repeating the first two bits in Divsalar “q+10” times and the rest “q” times would make the code irregular. Ex. 1062, 153:11-154:8. Pet. Reply 9 (emphasis added). To buttress the argument that a skilled artisan would have had a reasonable expectation of success in the proposed modifications, Petitioner introduces new testimony and simulations from a new declarant, Dr. Frey, to confirm that using Frey’s irregularity in Divsalar would not have been difficult and would have yielded a reasonable expectation of success. Id. at 10 (citing Ex. 1068). Yet, even if we were to deem the testimony and simulation to be within the proper scope of a reply brief,6 they do not support a reasonable expectation of success at the time of the invention. We agree with Patent Owner that “[i]t is completely irrelevant what Dr. Frey claims he could do in the year 2018 when armed with Caltech’s patent disclosures and publications, [the inventor’s] original coding work, contemporary resources, and some 18 years of post-filing date knowledge.” PO Sur-Reply 6. Because this evidence is not tied to the state of the art at the time of the invention, it is not probative of anticipated success. See Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1367 (Fed. Cir. 2017) (quoting Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)) (“Those charged with determining compliance with 35 U.S.C. § 103 are required to place themselves in the minds of those of ordinary skill in the relevant art at the time the invention was made, to determine whether that which is now plainly at hand would have been obvious at such earlier time.” (emphasis added)).” slip op. at 28
Patent outcomesUS 7,116,710 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,116,710 - Roland Corporation v. Inmusic Brands, Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00335 · APJ Debra K Stephens · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended basis to show the claimed acoustic noise reducing cavity in the cited references or their combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “must specifically identify 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” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates” (In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted)). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “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.” Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps....” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As set forth above, we were not persuaded by Petitioner’s arguments that Puschner anticipated an acoustic noise reducing cavity. Moreover, as we stated in our Decision, Petitioner did not “identify where Yoshino ’117, directed to an ‘electronic percussion instrument and vibration detection apparatus,’ teaches or suggests the claimed ‘acoustic noise reducing cavity’” (Dec. 21). Petitioner provided no cites to Yoshino ’117 to support its assertion that Yoshino ’117 teaches “an acoustic noise reducing cavity in an electronic drum” in either the Petition or the Declaration of Dr. Paradiso with respect to this asserted ground (Pet. 19–20; Ex. 1002 ¶ 74). We also determined Petitioner had not proffered persuasive argument as to why an ordinarily skilled artisan would have found it obvious to combined the teachings (Dec. 21). Rather, Petitioner merely proffered the conclusory statement that “it would have been obvious” because of “a desire to reduce acoustic sound . . .” (Pet. 19–20) –– i.e., it would have been obvious to have the recited feature. Moreover, we determined Petitioner had not “explained how the teachings of Puschner’s and Yoshino ’117’s different structures would have been combined to teach the invention,” as recited in claim 15 (Dec. 21). Petitioner has not identified any matter that the Board misapprehended or overlooked, or identified where each matter was previously addressed, in the relevant portions of the Petition or cited evidence. Petitioner did not fully address how the references taught the limitation or the reasons for combining the teachings.” slip op. at 6
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,424,827 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00475 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Google’s rehearing request and left in place denial of institution because the Petition did not show Cheyer was publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify 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.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5
- Other 314aDenied
“request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 6,742,021 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00384 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–18 because the petition did not show Cheyer was publicly accessible and qualified as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify 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.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify 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.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,523,061 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00474 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied on all challenged claims because Cheyer was not shown reasonably likely to have been publicly accessible as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify 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.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“we denied the Petition as to all claims. We determined that Petitioner had failed to satisfy its burden of demonstrating a reasonable likelihood of showing, under 35 U.S.C. § 102(b), that its principal reference, Cheyer,1 was disseminated or publicly accessible prior to one year before the effective filing date of the ’021 patent and, therefore, did not qualify as prior art under 35 U.S.C. § 102(b). Dec. 6–15.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website. Id. at 14.” slip op. at 5
- Other 314aDenied
“request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 6,742,021 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00476 · APJ Debra K Stephens · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 1–27 because Cheyer was not shown reasonably likely to qualify as publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides a request for rehearing “must specifically identify 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” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot reached
“how to retrieve Cheyer, included in Moran’s footnote citation, did not persuade us that Cheyer was publicly accessible (id. at 15; see Pet. 3)). Importantly, we note Petitioner has not shown the link provided in the footnote worked, or that the link, which is to a “Bibliography” page (see Ex. 1029), provided Cheyer’s paper or a publicly accessible link to Cheyer’s paper. In particular, Petitioner does not provide a copy of this Bibliography page to show what actually was on this page and how or if an ordinarily skilled artisan would have been able to access Cheyer’s paper from the Bibliography page. In our Decision, we noted Petitioner failed to provide testimonial or other evidence that the link provided in the article actually worked at the relevant time period, what content was included at the linked website, how one would find Cheyer after selecting the link, or which version of Cheyer allegedly was accessible via the link (Dec. 15). We also explained that this latter showing is of special importance here because Petitioner acknowledges that there were several different versions of Cheyer (id. at 12 (citing Pet. 3)).” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“professional computer scientist or engineer directed to find an article on a section of a website would have been unable to do so with reasonable diligence” (id. at 7–8). Petitioner’s argument fails for several reasons. First, it is a new argument not appropriately raised on rehearing. Second, Petitioner identifies no support in the record for the assertion that Cheyer was actually available (see Ex. 2001 and 2002) or that an ordinarily skilled artisan would have been able to find Cheyer, only Petitioner’s speculation.2 Finally, this argument overlooks that the burden is on Petitioner, not the Board, to demonstrate a reasonable likelihood of prevailing on this issue.” slip op. at 7
§ 102 anticipationPatents in suitUS 6,757,718
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.