- Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00341 · APJ Barbara A Benoit · IPR · Institution
Instituted IPR of claims 1–16 on all asserted grounds after finding a reasonable likelihood that Lebrun and Wang render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). Under the principles set forth by our reviewing court, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither Petitioner nor Patent Owner propose express constructions for any claim terms. Pet. 12; Prelim. Resp. 34. For purposes of this decision, we agree that no claim terms need be expressly construed. Patent Owner arguments regarding the asserted grounds of unpatentability, however, raise particular claim scope contentions, particularly regarding “information related to the shared web browsing interaction” recited in each of the independent claims. We preliminarily address issues of claim scope in our later discussion of the asserted grounds of unpatentability.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, based on this preliminary record, we find Patent Owner’s assessment of “internet web browsing software development, web connectivity software development, or networking software development” to be too narrow in view of the asserted prior art that describes in large measure requesting and receiving web pages from web servers. Thus, we find that Petitioner’s assessment of “software development and/or web- based software” more appropriate for purposes of institution on this limited record. We also agree with Petitioner that additional education could have substituted for professional experience, and significant work experience could have substituted for formal education. For the purpose of this decision, for these reasons, we find that a person of ordinary skill in the art would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software. We apply that level of ordinary skill in this decision. Our decision, however, would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Accordingly, there is evidence to consider in making a determination whether Dr. Lieberman possesses the requisite ordinary level of skill. We, however, need not make such a determination for purposes of this decision because it has not been necessary for us to rely on Dr. Lieberman’s declaration in this decision. “No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015). “[E]xpert testimony is not required when the references and the invention are easily understandable.” Id. (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010)). “Board members, because of expertise, may more often find it easier to understand and soundly explain the teachings and suggestions of prior art without expert assistance.” Id. Here, the invention and prior art are presented in high-level functional terms and are easily understandable, as we indicated previously in Section II.A and as shown by our discussion of the invention and prior art throughout this decision. To determine that the Petition met the institution threshold of showing “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we have not relied on Dr. Lieberman’s declaration testimony. Patent Owner, of course, may raise the issue of Dr. Lieberman’s qualifications during trial.” slip op. at 58
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,483,448 - Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Institution
Instituted review of claims 1–18 on all asserted grounds because the petition showed a reasonable likelihood that at least one challenged claim was obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, based on this preliminary record, we find Patent Owner’s assessment of “internet web browsing software development, web connectivity software development, or networking software development” to be overly narrow in view of the asserted prior art that describes in large measure requesting and receiving web pages from web servers. Thus, we find that Petitioner’s assessment of “software development and/or web-based software” more appropriate for purposes of institution on this limited record. We also agree with Petitioner that additional education could have substituted for professional experience, and significant work experience could have substituted for formal education. For the purpose of this decision, for these reasons, we find that a person of ordinary skill in the art would have had (1) at least a bachelor’s a similar field, and (2) at least two years of work experience in software development and/or web-based software. We apply that level of ordinary skill in this decision. Our decision, however, would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Expert testimonyDecided for petitioner
“Accordingly, there is evidence to consider in making a determination whether Dr. Lieberman possesses the requisite ordinary level of skill. We, however, need not make such a determination for purposes of this decision because it has not been necessary for us to rely on Dr. Lieberman’s declaration in this decision. “No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015). “[E]xpert testimony is not required when the references and the invention are easily understandable.” Id. (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010)). “Board members, because of expertise, may suggestions of prior art without expert assistance.” Id. Here, the invention and prior art are presented in high-level functional terms and are easily understandable, as we indicated previously in Section II.A and as shown by our discussion of the invention and prior art throughout this decision. To determine that the Petition met the institution threshold of showing “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we have not relied on Dr. Lieberman’s declaration testimony. Patent Owner, of course, may raise the issue of Dr. Lieberman’s qualifications during trial.” slip op. at 46
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner propose express constructions for any claim terms. Pet. 12; Prelim. Resp. 32. For purposes of this decision, we agree that no claim terms need be expressly construed. Patent Owner particular claim scope contentions regarding “web browsing interaction data” recited in each of the independent claims. We preliminarily address those issues of claim scope in our later discussion of the asserted grounds of unpatentability.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,185,145 - Yita LLC / Jinrong (SH) Automotive Accessory Industrial Development Co. Ltd. v. Macneil IP LLCInstitutedPTAB · Jun 13, 2023 · IPR2023-00173 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1–6 on the asserted obviousness 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
“whether to institute an inter partes review under 35 U.S.C. § 314(a). See also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need not explicitly construe the term “vehicle floor tray” or any other claim term for the purposes of this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). However, we offer the following reasons for not adopting Patent Owner’s proposed construction. Claim 1 recites the term “vehicle floor tray” but does not recite any specific structural details of the tray. Ex. 1001, 19:42–60. Thus, nothing in the claim language suggests the structural aspects of a vehicle floor tray included in Patent Owner’s proposed construction.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, industrial design, or a closely related field, or equivalent formal training, education, or practical experience in a field relating to product design, CAD, or manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 27–28). Petitioner further contends that the person of ordinary skill in the art “would also have a minimum of three to five years of experience in plastics engineering, CAD, manufacturing, plastic product design, or a related industry,” but that “a higher level of training or practical experience might make up for less education, and vice-versa.” Id. Patent Owner does not, at this stage of the proceeding, dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 12. For the purposes of this Decision, we apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’917 patent and the prior art.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In his testimony concerning background prior art, Mr. Perreault relies on two prior art patents that disclose “floor mats” described similarly to Patent Owner’s description of a “vehicle floor tray.” See Ex. 1003 ¶¶ 29–30 (citing Ex. 1013 (“Bailey”); Ex. 1015 (“Tyler”)). Bailey describes a “floor mat” that is “molded or otherwise preformed into a tray-like shape which conforms to the contour of a portion of the carpeted automobile floor. The mat is dimensioned and configured to nest within and abut against the sides of a carpeted floor well of the vehicle.” Ex. 1013, 2:37–42, Fig. 6. Tyler describes “contoured vehicle floor mats” that “mate[] with the vehicle floorboard to hold the mat in place.” Ex. 1013, code (57), 1:52–54. Based on these exhibits, we find that Mr. Perreault’s testimony is not conclusory and not based on an improper definition of floor tray. Based on the present record and after considering Patent Owner’s contentions, Petitioner sufficiently establishes that Stanesic discloses the subject matter of the preamble. In particular, Stanesic discloses “a tray-like central area” and “the raised wall 22 has two walls that rise about one to about two inches from the base 15” (Ex. 1005, 2:61–62), which sufficiently supports Petitioner’s contention that Stanesic discloses, or at least suggests, a vehicle floor tray.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,138,917 - Yita LLC / Jinrong (SH) Automotive Accessory Industrial Development Co. Ltd. v. Macneil IP LLCInstitutedPTAB · Jun 13, 2023 · IPR2023-00172 · APJ Arthur M Peslak · IPR · Institution
The Board instituted inter partes review of claims 1–6 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review under 35 U.S.C. § 314(a). See also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“and Cicotte, the dispute for the first prong of the Advanced Bionics framework revolves around whether Rothkop is cumulative of Exhibits 2001, 2002, 2003, and 2004 cited in an IDS considered by the Examiner. Petitioner does not dispute that Cicotte is cumulative of Exhibit 2005 or 2006. See Prel. Reply. For the purposes of the § 325(d) analysis, we will assume, without deciding, that Rothkop is cumulative of at least one of the references Patent Owner relies on, i.e., Exhibits 2001, 2002, 2003, and 2004. We, thus, assume, without deciding, that the first prong of the Advanced Bionics framework is satisfied and move to the second prong. 4. Advanced Bionics Framework, Prong Two: Has Petitioner Demonstrated that the Office Erred in a Manner Material to the Patentability of the Challenged Claims? The ’655 patent issued from an application filed on August 6, 2014.” slip op. at 45
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the following reasons, we do not adopt Patent Owner’s proposed construction. Claim 1 recites a “vehicle floor tray” but does not recite any specific structural details of the tray. Ex. 1001, 19:46–2:2. Thus, nothing in the claim language suggests the aspects of a vehicle floor tray included in Patent Owner’s proposed construction. Patent Owner does not direct us to an explicit lexicographic definition of the term “vehicle floor tray” in the Specification of the ’655 patent. Rather, Patent Owner relies on descriptions of aspects of the embodiment disclosed in Figure 1 of the ’655 patent. For example, the ’655 patent generally describes that “[f]loor trays have sidewalls.” Ex. 1001, 1:58. The ’655 patent states that in an “aspect” of the invention, “a vehicle floor tray has a central panel for the placement on the floor of a vehicle foot well, and at least first and second upstanding panels.” Id. at 5:28–30. In column 7, the ’655 patent describes that “[d]isposed around the central or floor panel 102 are a series of upstanding side panels, which will vary in number and configuration from one vehicle model to the next.” Id. at 7:47–49 (emphasis added). These portions of the Specification suggest that the term “vehicle floor tray” should not be limited to any particular number of side panels or any particular configuration such as the side panels are joined to the floor panel and each other. In the Summary of the Invention, the ’655 patent discloses “a vehicle” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For the following reasons, Patent Owner’s contentions are unavailing based on the present record. First, as discussed above, Patent Owner’s attempt to draw a distinction between floor trays and floor mats is unavailing based on the present record and undercut by its own exhibits describing Patent Owner’s vehicle floor trays as “mats.” See Ex. 2010; Ex. 2012; Ex. 2013; Ex. 2014. Second, as discussed above, the fact that Petitioner has not shown that someone previously scanned a vehicle footwell is unavailing because this challenge is based on obviousness, not anticipation. Third, the sentence in Rothkop that Patent Owner contends discloses a kind of scanner, not what is to be scanned, is “[t]he data input device may comprise a scanner 12 for scanning a physical part such as an existing seat, frame, or vehicle.” Ex. 1006, 4:61– 63. Based on the present record, we do not agree that this sentence discloses a type of scanner. Fourth, Patent Owner’s arguments concerning the claimed invention creating a new product versus reverse engineering an existing product in Rothkop raises potential fact questions that are best resolved at trial based on a fully developed record. Petitioner provides numerous reasons why a person of ordinary skill in the art would have been motivated to combine Stanesic, Rothkop, and Cicotte in such a manner that teaches or suggests all limitations of claim 1. Pet. 29–34. Petitioner sufficiently supports this reasoning with the testimony of Mr. Perreault that he supports with reference to Stanesic, Rothkop, Cicotte, and other references showing the background art. Ex. 1003 ¶¶ 147–157. Further, Patent Owner does not dispute Petitioner’s conclusion that the combination of Stanesic, Rothkop, and Cicotte “would be nothing more than applying known techniques . . . to a known method of producing a custom-fit vehicle floor tray . . . that is ready for improvement, yielding the predictable result of generating a custom-fit floor tray.” Compare Pet. 33, with Prelim. Resp. Based on the present record and after considering all of Patent” slip op. at 32
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,899,655 - LG Electronics Inc. / LG Electronics USA, Inc. v. Image Processing Technologies, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00104 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution on claim 1, finding the petition presented the same or substantially the same art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“under 35 U.S.C. § 325(d) to deny institution of an inter partes review. See 37 C.F.R. § 42.4(a) (The Director delegated her authority to determine whether trial should be instituted to the Board.). Section 325(d) of Title 35 of the United States Code states, in relevant part: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use a two-part framework for evaluating arguments under § 325(d): (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.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“applied the construction of “the [at least two] calculation units being configured to form a histogram representative of the parameter” (the “common parameter” limitation) as meaning “the histogram calculation units being configured to each form a histogram representative of at least one common parameter.” Ex. 1005 (IPR 336 Final Written Decision), 12– 14; see Ex. 1006 (IPR 1189 Decision Denying Institution), 9; Ex. 1007 (Reexam 056 Decision finding claim 1 patentable), 8.” slip op. at 11
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,959,293 - PTAB · Apr 24, 2023 · IPR2023-00074 · APJ Erica A Franklin · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–8, 11, and 15 on all asserted grounds, finding a reasonable likelihood that claims 1, 2, 5–7, and 11 are obvious over the May Article.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Based on our review of the record, we find that Petitioner has not shown persuasively that the Examiner did not consider the same or substantially the same art that Petitioner relies upon for its obviousness challenges. Petitioner’s grounds primarily rely on three different “May” references, only one of which the Examiner considered during prosecution, i.e., the May Article. The additional primary references relied upon by Petitioner are the May Thesis, which provides a more detailed disclosure than the May Article, and the May Abstract, which provides less detail than the May Article, in terms of the HS2, HS3, and HS4 fragments used to generate the disclosed TNS9 vector. Those differences are only material with respect to whether each reference discloses the fragments as recited in independent claim 1, or renders those fragments obvious. As discussed in Section II.D.2., however, we determine that the May Thesis is not prior art. 11 The ’221 application claims priority to provisional application no. 60/301,861 (Ex. 1034) (“the ’861 provisional application”), filed June 29, 2001, and provisional application no. 60/302,852 (Ex. 1035) (“the ’852 provisional application”), filed on July 2, 2001, referred to, collectively, as “the provisional applications,” “the provisionals” and “the Provisionals.” Article, but in less detail, the May Abstract may be considered cumulative to the May Article. Because the May Thesis provides more explicit details regarding the fragments disclosed in the May Article, it may not be considered to be cumulative to the May Article. However, as discussed in Section II.D.2., we determine that the May Thesis is not prior art. When considering the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the May Article or Patent Owner distinguishes the May Article, we note that Patent Owner alleged during prosecution and here that the May Article is not prior art for a number of reasons, including that it is the work of the inventors and that it was published one year or less before the priority date asserted by Patent Owner for the challenged claims. We note also that Petitioner contends that the challenged claims are not entitled to the priority date asserted by Patent Owner, and recognized by the Examiner. Based on the foregoing, we conclude that substantially the same prior art that Petitioner relies upon was previously presented to the Examiner during prosecution. The first part of the § 325(d) framework is, therefore, met. Accordingly, we turn to the second part of the § 325(d) and determine whether error by the Office has been shown. See Advanced Bionics at 8.” slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) “at the time of the alleged invention would have had: (1) at least an advanced degree (e.g., a Master’s or Ph.D.) in biochemistry, biotechnology, protein chemistry, genetics, molecular and structural biology, bioengineering, or similar disciplines.” Pet. 18–19 (citing Ex. 1002 ¶¶ 14– 15). Petitioner further asserts that a POSA would have had “(2) several years of post-graduate training or related experience in one or more of these areas” and “(3) an understanding of vector design and the effect of LCR fragments on gene expression, including experience with how the LCR regulates gene expression.” Id. At this stage in the proceeding, Patent Owner does not dispute Petitioner’s description of the level of ordinary skill in the art. See Prelim. Resp. Because Petitioner’s uncontested definition of one of ordinary skill in the art is reasonable and consistent with the ’061 patent and the prior art of record, we adopt Petitioner’s definition for purposes of this Decision.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “that no term of the ’061 patent requires construction to resolve the challenges in this Petition.” Pet. 25 (citing Ex. 1002 ¶¶ 50–51) (footnote omitted). Patent Owner does not argue for any express claim constructions. See Prelim. Resp. Based upon our review of the current record, we determine that no claim terms require express construction for purposes of deciding whether to institute an inter partes review of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (Only those terms that are in controversy need be construed, “and only to the extent necessary to resolve the controversy.”).” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Rather, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Based on our consideration of the arguments and evidence presented at this stage of the proceeding, we determine, for purposes of this Decision, that claims 1, 2, 5–7, and 11 of the ’061 patent are not entitled to receive benefit of the filing date for either the ’861 provisional application or the ’852 provisional application. In particular, we find persuasive Petitioner’s arguments that the provisional applications do not satisfy the written description requirements of 35 U.S.C. § 112 for those claims. Independent claim 1 recites, in part, “a recombinant lentiviral vector which comprises a nucleic acid encoding a functional globin operably linked to a 3.2-kb nucleotide fragment . . . said vector providing expression of the globin in a mammal in vivo.” Ex. 1001, 11:57–67. Independent claim 11 recites, in part, “a recombinant lentiviral vector comprising a nucleic acid encoding a functional globin operably linked to a 3.2-kb nucleotide fragment . . . said vector providing expression of the globin in a mammal in vivo.” Ex. 1001, 12:64–13:7. Based upon our review, we agree with Petitioner that these limitations are not adequately described in the provisional applications. The ’061 patent Specification (and the ’221 Application) describe the term “functional globin gene” as: that does not produce a hemoglobinopathy phenotype, and which is effective to provide therapeutic benefits to an individual with a defective globin gene. The functional globin gene may encode a wild-type globin appropriate for a mammalian individual to be treated, or it may be a mutant form of globin, preferably one which provides for superior properties, for example superior oxygen transport properties. . . . Suitably, the globin may encode α-globin, β-globin, or γ-globin. Ex. 1001, 2:44–55 (emphasis added); see also Ex. 1032, 3:24–4:3 (same). Based on this description, we agree with Petitioner that the ’061 patent claims cover a recombinant vector comprising a nucleic acid encoding a “functional globin” genus that includes wild-type globin and mutant forms of globin, wherein the globin may encode different globin types, i.e., α-, β-, or γ-globin. Patent Owner does not identify, nor do we see, any portion of the provisional applications describing the genus of functional globin. Rather, as Petitioner demonstrates, the provisional applications describe one species of that genus, i.e., the wild-type human β-globin. Pet. 14–18. The provisionals do not describe the “functional globin” genus. Indeed, as Petitioner correctly asserts, during the ’061 patent prosecution, Applicants/Patent Owner, relied on a description of “functional globin,” quoted above, that does not appear and has not counterpart in the provisional applications. Compare Ex. 1001, 2:44–55 and Ex. 1032, 3:24–4:3 with Ex. 1034 and Ex. 1035.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,058,061 - PTAB · Apr 24, 2023 · IPR2023-00070 · APJ Erica A Franklin · IPR · Institution
The Board instituted IPR of claims 1, 10, 19, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over the May Article.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating matters under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) “at the time of the alleged invention would have had: (1) at least an advanced degree (e.g., a Master’s or Ph.D.) in biochemistry, biotechnology, protein chemistry, genetics, molecular and structural biology, bioengineering, or similar disciplines.” Pet. 17 (citing Ex. 1002 ¶¶ 14–15). Petitioner further asserts that a POSA would have had “(2) several years of post-graduate training or related experience in one or more of these areas” and “(3) an understanding of vector design and the effect of LCR fragments on gene expression, including experience with how the LCR regulates gene expression.” Id. At this stage in the proceeding, Patent Owner does not dispute Petitioner’s description of the level of ordinary skill in the art. See Prelim. Resp. Because Petitioner’s uncontested definition of one of ordinary skill in record, we adopt Petitioner’s definition for purposes of this Decision.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “no term of the ’179 patent requires construction to resolve the challenges in this Petition.” Pet. 22 (citing Ex. 1002 ¶¶ 49– 50) (footnote omitted). Patent Owner does not argue for any express claim constructions. See Prelim. Resp. Based upon our review of the current record, we determine that no claim terms require express construction for purposes of deciding whether to institute an inter partes review of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (Only those terms that are in controversy need be construed, “and only to the extent necessary to resolve the controversy.”).” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“As the Federal Circuit has noted, however, “[i]n order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Rather, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,541,179 - PTAB · Apr 13, 2023 · IPR2022-01577 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–10 on all petitioned grounds, finding a reasonable likelihood that claim 1 was anticipated by the HDI 3000 Manual.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’157 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have a degree in electrical engineering, biomedical engineering, or a related discipline, along with relevant experience (at least 2–3 years for a Ph.D., 3–5 years for a Master’s, and 5+ years for a Bachelor’s) researching or developing ultrasound systems or other medical imaging devices. EX1008, ¶¶21–26. The POSA would have general knowledge of ultrasound systems and related technologies as of January 15, 2001. Id. Pet. 7–8. Patent Owner applies Petitioner’s definition for purposes of its Preliminary Response. Prelim. Resp. 5. We adopt the parties’ accepted definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In this case, Patent Owner’s assertion that its proposed construction is “consistent with the specification” fails to articulate or apply the proper standard. For example, any interpretation whose scope is equal to or narrower than a proper construction would logically be consistent with that proper construction. Thus, Patent Owner could only establish that its proposed interpretation is equal to or narrower in scope than the proper interpretation. Comparing the claims to prior art using a claim construction potentially narrower than what is claimed would not be a fruitful exercise because the claim could read on the prior art but not on the unduly narrow interpretation. Cf. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (holding that a broad claim is anticipated by any narrow disclosure falling within the broad claim). Patent Owner’s assertion that its proposed construction is consistent with examples in the specification is also not persuasive, and no more persuasive than its prior implication that its proposed construction is not inconsistent with the specification. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.” (internal quotation omitted)). Similar to the situation in i4i, Patent Owner here has failed to explain how the claim is clearly limited to the examples in the specification. Instead, we construe “information of object” to be an identification of the object to be studied in the ultrasound examination, based on its plain language in the context of the claimed ultrasound device. We are not apprised of any language, on this record, in the ’157 patent or prosecution history that otherwise constrains what types of “object” would be inspected by the claimed device. For example, there is no indication that the machine is less capable than other ultrasound machines in a way that limits its use to examinations of certain things in a body such as a liver or a heart, but not simpler things in a body such as blood vessels or more complex things such as a fetus. Accordingly, we see no reason to constrain “object” to something other than those things in a body that a person of ordinary skill in the art would investigate during an ultrasound examination.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It does not appear necessary at this time to specifically construe any other claim terms. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
Claim construction§ 102 anticipationcites Phillips · KSRPatents in suitUS 6,901,157 - PTAB · Apr 13, 2023 · IPR2022-01576 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–3 on all petitioned grounds, finding a reasonable likelihood that claim 1 is unpatentable over Petruzzelli.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’985 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have a degree in electrical engineering, computer science, or a related discipline, along with relevant experience (at least 1– 2 years for a Ph.D., 2–3 years for a Master’s, and 3+ years for a Bachelor’s) researching or developing graphical user interfaces (GUIs) for ultrasound systems or other medical imaging devices. EX1007, ¶¶14–19. The person would have general knowledge of GUIs for ultrasound systems or other medical imaging devices as of April 18, 2014. Id.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner asserts that no claim terms require construction at this stage. Pet. 15. Patent Owner does not offer any claim constructions, but does challenge Petitioner’s choice not to offer any claim constructions, and suggests that we should deny the Petition on that basis. Prelim. Resp. 75– 77. We find Patent Owner’s arguments unavailing. First, we note that the parties have not offered competing claim constructions, such that there is no specific claim construction issue between the parties at this time. Second, we note that we consider Petitioner’s interpretation of the claims sufficiently clear based on their application of the claims on the art. Thus, we are able to proceed without explicitly construing any claim terms, and we are not persuaded to deny on that basis. In view of the above, we do not construe any claim terms. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,538,985 - PTAB · Apr 13, 2023 · IPR2022-01575 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR on claims 1–6, 12, 13, and 15 on all petition grounds, finding a reasonable likelihood that claim 1 is anticipated and/or obvious over Halmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented in the parties’ briefs, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging at least 1 of the claims 1–6, 12, 13, and 15 of the ’168 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe any terms require construction at this stage.” Pet. 10. At this stage of the proceeding, Patent Owner has not yet filed a response. For purposes of this decision, we do not expressly construe any terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)), cert. denied, 138 S. Ct. 1695 (April 30, 2018) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We have reviewed Petitioner’s evidence and argument, and find that Petitioner has sufficiently shown that Halmann discloses this limitation of claim 1 for the purposes of institution.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,867,168
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.