• Transgene / Bioinvent International AB v. Replimune LimitedNo claims unpatentable
  PTAB · May 25, 2023 · PGR2022-00014 · APJ Christopher G Paulraj · PGR · Final written decision

  The Board held claim 13 not unpatentable over Silvestre or Du, Choi, and Zitvogel, finding insufficient motivation to combine and reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “or “POSITA”) “would have had a Ph.D. in molecular biology, or a related field, with expertise in virology (including expertise growing, isolating, and rescuing viruses), immunology, and cancer biology with at least four years of post-Ph.D. experience in those areas.” Pet. 6 (citing Ex. 1007 ¶¶ 35, 96). Patent Owner does not argue otherwise. See PO Resp. 5. We adopt Petitioner’s uncontested definition as that definition is consistent with the level of skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “claim terms of the ’513 patent for purposes of determining whether to institute trial. For purposes of our analysis in this Final Written Decision, however, we find that it would be useful to clarify the scope of “oncolytic virus.” We agree with Petitioner that the Specification defines an “oncolytic virus” as “a virus that infects and replicates in tumor cells, such that tumor cells are killed.” Ex. 1001, 9:10–12. The Specification further clarifies that “the virus is replication competent,” and is preferably selectively replication competent in tumor tissue. Id. at 9:12–13. “A patentee is free to be his own lexicographer.” Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, consistent with its express definition in the Specification, to be a virus that infects and replicates in tumor cells, such that tumor cells are killed, wherein such a virus is replication competent.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “but contends that “oncolytic virus” should not be construed to encompass “viral vectors” such as those disclosed in Zitvogel. PO Resp. 5. Although Petitioner does not expressly contend otherwise, we agree with Patent Owner that “oncolytic virus” would not encompass Zitvogel’s “viral vectors,” which are defined in that reference to be “replication-defective” or “replication-impaired.” Ex. 1004, 19:26–29. We do not construe any other claim terms. See Vivid Techs., Inc. v.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner acknowledges that “while the bulk of Silvestre’s disclosure, including the working examples, is directed towards creating an oncolytic poxvirus, Silvestre discloses preparing modified oncolytic virus using other virus types, including HSV.” Pet. 44. It is undisputed, however, that Silvestre does not disclose a single embodiment of an oncolytic HSV that includes both a heterologous GM-CSF encoding gene and a heterologous CTLA-4 inhibitor encoding gene. Rather, Petitioner points to where each element could be found among broader lists of possible oncolytic virus classes, immune checkpoint targets, and therapeutic genes. Ex. 1002, 7:10– 15:49. As noted by Dr. Chiocca, if one were to randomly select any of the 11 We need not decide whether Silvestre anticipates independent claim 1, as the sole challenged claim 13 depends directly from claim 11. Thus, our determination that Petitioner has not shown that claim 11 is anticipated is sufficient to establish that Petitioner has not met its prerequisite burden for claim 13. Ex. 2009 ¶ 29. This type of picking and choosing is not anticipation. See Arkley, 455 F.2d at 587–88.” slip op. at 19

  Patent outcomesUS 10,947,513 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,947,513
• Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc.No claims unpatentable
  PTAB · May 22, 2023 · IPR2022-00218 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–15 were not shown unpatentable because the prior art did not establish the claimed projection magnification or scintillator; the revised contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We determine that the level of ordinary skill in the art, as articulated by Patent Owner, more accurately reflects the subject matter of the ’704 Patent and the asserted prior art than does Petitioner’s articulation. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Petitioner does not explain how “control theory” and “applied mathematics” (Pet. 16) relate to the subject matter of the ’704 Patent and the asserted prior art, and Petitioner’s reference to requisite level of skill. Furthermore, whereas Petitioner requires a POSITA to have “x-ray and computing imaging experience” (id.), Patent Owner more particularly specifies “x-ray microtomography experience” (PO Resp. 5), which is the field of art for the ’704 Patent, as well as many of the asserted prior art references. Ex. 1001, code (54) (“High resolution direct-projection type x-ray microtomography system using synchrotron or laboratory-based x-ray source”); Ex. 1007 (discussing X-ray microcomputed tomography); Ex. 1008 (discussing X-ray nanotomography and microtomography); Ex. 1010, code (54) (“Method and apparatus for utilizing an electro-optic detector in a microtomography system”); Ex. 1011 (title: “Three-dimensional X-ray Microtomography”). For these reasons, we apply Patent Owner’s definition of a POSITA. Even if we applied Petitioner’s definition of a POSITA, however, the outcome would be the same because our resolution of the controversy does not turn on the differences between the parties’ contentions about level of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In an inter partes review, we apply the same claim construction standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). (“all claim terms should receive their plain and ordinary meaning”); PO Resp. 5 (applying the same constructions as Petitioner). We determine that no claim term requires express construction for purposes of resolving any controversy between the parties. 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 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “On balance, we find that the testimony of Drs. Bentley and Arce about Jorgensen is more credible than Dr. Kia’s testimony, which is often conclusory and insufficiently supported by the evidence. Drs. Bentley and Arce do a better job of explaining and reconciling Jorgensen’s varying descriptions of the X-ray beam than does Dr. Kia. For example, although Dr. Kia relies on Jorgensen’s repeated references to a “cone-beam,” we find that Petitioner’s evidence does not outweigh the explanations provided by Drs. Bentley and Arce, particularly in view of Jorgensen’s description of the X-ray beam as “collimated” and “shielded by a lead-wrapped brass tube.” See II.D.2.d. and e., supra. Even if we consider Petitioner’s improper new reply argument about filling the CCD, we find that argument insufficient and does not outweigh Patent Owner’s unrebutted evidence about CCD pixel size. See II.D.2.f. and g., supra. In sum, viewing the record as a whole, we find that Petitioner has not shown persuasively that Jorgensen inherently discloses projection magnification within the claimed range.” slip op. at 38

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “standard.” Amgen Inc. v. Sandoz Inc., No. 2022-1147, 2023 WL 2994166, at *10 (Fed. Cir. Apr. 19, 2023). “Inherency . . . may not be established by probabilities or possibilities.” Oelrich, 666 F.2d at 581. “The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. (emphasis added). Rather, the patent challenger must “show that the natural result flowing from the operation as taught would result in the performance of the questioned function.” Id.; see PersonalWeb Technologies, LLC v. Apple, Inc., 917 F.3d 1376, 1382–83 (Fed. Cir. 2019) (determining that the Board’s reliance on inherency was improper because the structure relied upon to meet a claim element “does not necessarily exist” in the reference). As discussed above, it is undisputed that there can be no projection magnification unless the X-ray beam is diverging, and there is a vigorous dispute about whether Jorgensen teaches a diverging X-ray beam. See negatively impacted by Petitioner’s and Dr. Kia’s admittedly incorrect interpretations of Jorgensen’s disclosures concerning “projected at a 4° angle” and “the X-ray beam geometry is used to achieve magnification.” Ex. 1007, H1104; see II.D.2.b. and c., supra. On balance, we find that the testimony of Drs. Bentley and Arce about Jorgensen is more credible than Dr. Kia’s testimony, which is often conclusory and insufficiently supported by the evidence. Drs. Bentley and Arce do a better job of explaining and reconciling Jorgensen’s varying descriptions of the X-ray beam than does Dr. Kia. For example, although Dr. Kia relies on Jorgensen’s repeated references to a “cone-beam,” we find that Petitioner’s evidence does not outweigh the explanations provided by Drs. Bentley and Arce, particularly in view of Jorgensen’s description of the X-ray beam as “collimated” and “shielded by a lead-wrapped brass tube.” See II.D.2.d. and e., supra. Even if we consider Petitioner’s improper new reply argument about filling the CCD, we find that argument insufficient and does not outweigh Patent Owner’s unrebutted evidence about CCD pixel size. See II.D.2.f. and g., supra. In sum, viewing the record as a whole, we find that Petitioner has not shown persuasively that Jorgensen inherently discloses projection magnification within the claimed range.” slip op. at 37

  Patent outcomesUS 7,400,704 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,400,704
• Restem, LLC. v. Jadi Cell, LLCNo claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–15 were not proven unpatentable: Majore did not anticipate claims 1–13 and 15, and the asserted obviousness combinations did not establish the claimed limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1007 ¶¶ 132, 133. Importantly, however, Dr. Olson does not cite anything to support his opinion that the ordinary artisan would have known that MSCs could be cultured to be renewable from subepithelial UC tissue. Nor does Dr. Olson explain why the artisan would have had this understanding aside from simply stating it. Majore uses the word “subepithelial” only once to explain that primitive stem cells are “distributed in subepithelial and intervascular regions,” but this does not teach what Dr. Olson asserts. Accordingly, Dr. Olson’s testimony is entitled to little weight. Xerox Corp., IPR2022-00624, Paper 9 at 15–16 (finding that an expert’s conclusory assertions that repeat the proposition for which they are offered without “any additional supporting evidence or provide any technical reasoning” in support are “conclusory and unsupported, add[] little to the conclusory assertion[s] for which [they are] offered to support, and is” slip op. at 52

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “21 The parties do not dispute that the preamble’s recitation of “isolated cell” serves as a limitation to claim 1 as it provides antecedent basis for its recitation later in the body of the claim. Accordingly, we treat the preamble as limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 31

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “[JUDGE NEWMAN:] So if -- if the comparison is possible, why did you not present evidence of that comparison? MR. FITZPATRICK: We --we’ve had the -- we had this discussion with our -- with our expert, and our conclusion was that it’s just not -- it wasn’t necessary. The conclusion was that the -- the evidence that’s in the -- in the prior art references, including the fact that it clearly practices the exact same steps as the claims, that was sufficient to -- and would anticipate or render obvious the claims. That’s the only reason we didn’t present evidence -- our own evidence.” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Ex. 1007 ¶ 168 (alteration in original). We agree that an ordinary artisan would be motivated to look to the teachings of analogous references for information, but to establish obviousness, a party must show that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner has not provided sufficient rationale to explain why the ordinary artisan would have been motivated to make the isolated cell with the specific marker profile or why the artisan would have looked to the cited references themselves out of the wide range of references available in the art.” slip op. at 64

  Patent outcomesUS 9,803,176 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,803,176
• Streck, Inc. / Streck LLC v. Ravgen, Inc.No claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01577 · APJ Timothy G Majors · IPR · Final written decision

  Claims 55–61, 68, 69, 80–86, 89–92, 94, 126–130, 132, and 133 were not shown unpatentable under the asserted anticipation and obviousness grounds.

  RulingsFinal written decision

  • Strike new argumentNew argument consideredDenied

    “III. MOTIONS Motion to Strike (Paper 50) Petitioner filed a motion to strike portions of Patent Owner’s Sur- Reply. Paper 50. Patent Owner opposes the motion. Paper 53. Petitioner contends Patent Owner raised new argument about Exhibit 1014 (a paper authored by Dr. Patterson), which was submitted with the filing of the Petition but only cited by Patent Owner for the first time in its Sur-Reply. Paper 50, 1–3; PO Sur-Reply 14 (citing Ex. 1014). According to Petitioner, Patent Owner presents new argument about the reversibility of certain crosslinks caused by formaldehyde, cites new experimental data (in Ex. 1014, Fig. 2.1), and argues such matters would have been known before any possible priority date of the ’277 patent. Paper 50, 1–3. Moreover, Petitioner argues, the untimeliness of Patent Owner’s arguments about Exhibit 1014 prevented the exhibit’s author, Dr. Patterson, from addressing them to provide explanation or context. Id. at 2–3. For the reasons given below, we deny Petitioner’s motion to strike. First, we find that Patent Owner’s arguments on Exhibit 1014 are, on balance, responsive to issues raised by Petitioner in its Reply. It is true that Petitioner submitted Exhibit 1014 with its Petition and that Patent Owner did not cite it until its Sur-Reply. However, the points raised by Patent Owner about Exhibit 1014 respond to certain of Petitioner’s arguments raised for the first time in its Reply. For example, Petitioner argued a POSA would not have been concerned about formaldehyde’s use (such as cross-linking disclosed in Heinmoller that Patent Owner cited in its Response) and that those concerns arose only after the supposed priority date of the ’277 patent. 88 Pet. Reply 8–9. Patent Owner’s citation of Exhibit 1014 is responsive on such points (e.g., it discusses cross-linking with formaldehyde’s use), it published in 2000 and is thus earlier than some references Petitioner argued were too late to evidence a POSA’s knowledge, and, lastly, it was authored by Dr. Patterson and arguably called into question the credibility of rebuttal opinions he offered about the state of a POSA’s knowledge on such issues. Second, Exhibit 1014 does not, ultimately, help Patent Owner as we do not rely on the portions of Exhibit 1014 cited by Patent Owner or Patent Owner’s argument about them. As discussed in our analysis, if cross-linking (as reported in Heinmoller or, for that matter, Exhibit 1014) was a perceived problem, Dr. Patterson provides a credible explanation how it could be and likely was addressed by Pertl.54 Supra Section II(G)(3) (citing Ex. 1047).” slip op. at 88

  • ExcludeDenied

    “by the non-designating party. See generally Paper 60. We nevertheless reviewed the designated testimony. The objections are overruled, but were also considered during review.” slip op. at 90

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “evidence that any of the challenged claims are unpatentable based on grounds advanced in the Petition.” slip op. at 93

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “3. Conclusion For the reasons above, we find Petitioner has not established by a preponderance of the evidence that the combination of Chiu/Lee discloses “an agent that inhibits cell lysis, if cells are present” as recited in independent claims 55 and 81, and the claims depending therefrom. Accordingly, Petitioner has not established that claims 55–59, 61, 68, 69, 80–86, 89, 94, and 126–130 would have been obvious over Chiu and Lee.” slip op. at 52

  Patent outcomesUS 7,332,277 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,332,277
• Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Aortic Innovations, LLCNo claims unpatentable
  PTAB · Mar 24, 2023 · IPR2022-00034 · APJ John G New · IPR · Final written decision

  Petitioner failed to show claim 6 unpatentable because none of the seven asserted grounds established the required absence of an outer graft covering between the fibers and outer frame.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “November 2012 would have been an interventional cardiologist with a working knowledge of heart valve designs and endovascular prostheses.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “We determine that, as the plain language of the claim term suggests, an “outer graft covering” must circumferentially cover some, or all, of the metallic outer frame of the prosthetic heart valve. See Merriam-Webster, Cover, available at: https://www.merriam-webster.com/dictionary/cover (last visited March 2, 2023) (defining “cover,” relevantly, as “something that is placed over or about another thing”). See Ex. 3004. Consequently, we understand an “outer graft covering” to be a structure, such as a cloth or fabric or other material, that circumferentially covers all or part of, the metallic outer frame. Importantly, because an outer graft covering must cover the external surface of the outer frame, we understand this claim term to mean that the cover must extend over (i.e., “cover”) not only the struts and members of the metallic outer frame, but must also cover the open spaces, or interstices, in the intervals between those struts and members. Consequently, we construe the limitation reciting “free of an outer graft covering between the fibers and the outer frame” to mean that there can be no such outer graft covering present anywhere between the outwardly extending fibers and the metallic outer frame.” slip op. at 40

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Reply to Patent Owner’s Response, or otherwise provide any additional argument or evidence to demonstrate that the outer skirt of Levi does not constitute the outer graft covering prohibited by claim 6. Consequently, our initial determinations stand. Furthermore, our definition of outer graft covering herein as “a material or structure that circumferentially covers at least a portion of the outer surface of the prosthetic heart valve, such that both the struts and members of the metallic outer frame, as well as the 45 interstices between those struts and members, is covered by the outer graft covering” reinforces our prior conclusion that the outer skirt of Levi constitutes an outer graft covering that is prohibited by claim 6. We consequently conclude that Petitioner has not met its burden with respect to demonstrating, by a preponderance of the evidence, that Levi teaches or suggests the limitation reciting “wherein the outer seal is free of an outer graft covering between the fibers and the outer frame.”” slip op. at 45

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Both the descriptions and Figure 22 of Spenser II show a cloth covering the proximal outer surface of the metallic outer frame of the prosthetic heart valve, including the spaces between the struts and members of the frame. Furthermore, the reference discloses that any fibers extending outwardly from the cloth arise from the surface of the cloth, and are not attached directly to the frame, as depicted in Figure 11 of the ’846 Specification. Thus, even were such fibers made of the same material as the cloth, which is not clear from the reference’s disclosure, the cloth would be between the surface-residing fibers and the metallic outer frame. We conclude that a person of ordinary skill in the art would have recognized that the sleeve-like cloth or fabric of Spenser II corresponds to an outer graft covering between its fibers and its outer frame, and such a covering would be between Spencer II’s surface fibers and its metallic outer frame. Such an outer graft cover is expressly prohibited by the language of claim 6, even if it and associated extending fibers are of the same material.” slip op. at 48

  Patent outcomesUS 10,966,846 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,966,846
• Stryker Corporation / Wright Medical Technology, Inc v. Osteomed LLCNo claims unpatentable
  PTAB · Mar 14, 2023 · IPR2021-01452 · APJ Sheridan K Snedden · IPR · Final written decision

  The Board held that claims 1–6, 8–13, and 16–19 were not shown unpatentable under any asserted anticipation or obviousness ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would be an individual having at least a bachelor’s degree in engineering with at least two years of experience in the field, such as experience with the design of surgical implants, or a clinical practitioner with a medical degree and at least two years of experience as an orthopedic surgeon. Pet. 9 (citing Ex. 1002 ¶¶ 35–39). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. PO Resp. 24. For this Decision, we adopt and apply Petitioner’s proposal for the POSA level, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Patent Owner contends that the term “trajectory” as used in the Challenged Claims “means a fixed angle relative to the neutral bending axis of the joint.” PO Resp. 18. Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 12

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Finally, for similar reasons, we find the testimony of Patent Owner’s declarant Mr. Sommers more credible and persuasive than the testimony of Petitioner’s declarant Dr. Gall. For example, Dr. Gall opines that Slater discloses a vise configuration, but fails to point to any portion of Slater disclosing that configuration with respect to the two-bone embodiment. See Ex. 1002 ¶ 131; Ex. 1027 ¶¶ 37–46. Again, this testimony may establish the desirability of such a configuration and that one of ordinary skill in the art, when using Slater’s plate, may do so in the manner Dr. Gall proposes, but that does not establish that Slater expressly or inherently discloses a vise-like configuration due to threaded engagement with only the second bone in Slater’s two-bone embodiment. We view the testimony of Mr. Sommers as more credible because it more accurately tracks Slater’s disclosures. See Ex. 2002 ¶¶ 81–82 (opining that Slater “does not describe whether there would also be threads” in the second of the three bones in the three-bone embodiment, in practice the threads may engage multiple bones, and Slater does not illustrate or describe how the screw would be used on a two-bone configuration), 75, 105–117 (opining that Slater fails to disclose the transfer of tensile load limitations).10” slip op. at 29

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “2011). “Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates a claim is assessed from the skilled artisan’s perspective. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference.” (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))).” slip op. at 13

  Patent outcomesUS 9,763,716 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,763,716
• Stryker Corporation / Wright Medical Technology, Inc. v. Osteomed LLCNo claims unpatentable
  PTAB · Mar 8, 2023 · IPR2021-01451 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1–6 and 8–13 were not shown unpatentable because the asserted prior art failed to establish the limitations of the challenged claims.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “68:7, 68:17–70:3, 70:16–19, 71:5–9, 74:6–25, 75:5–13, 77:14–22, 106:19– 107:17; Ex. 2003, 46:23–48:4, 90:24–91:23). We are not persuaded by Petitioner’s argument because Slater does not expressly or inherently disclose how its lag screw threads interact with the first and second bone. Slater’s Figure 4 “shows an elevation view of a second screw type 70” having “a longer shank to increase depth of penetration and has an abbreviated threaded portion to allow the majority of the shank to slide through aligned tibial and talus screw holes finally anchoring in the calcaneus bone.” Ex. 1005, 12:32–13:3. This description of screw type 70 in the three-bone configuration does not state that the screw only engages the third bone, the calcaneus bone, and describes the “majority of the shank” as “slid[ing] through” holes in the first two bones without stating that none of the threads engage a portion of, for example, the end of the second bone adjacent the third bone. See id. More importantly, even if this portion of Slater describes a three-bone embodiment where the threads only engage the third bone, Slater provides insufficient support for Petitioner’s position that the threads of screw type 70 only engage the second bone in Slater’s two-bone embodiment, which Petitioner relies on as the anticipatory embodiment of Slater. See Pet. 16; Ex. 1002 ¶¶ 114, 123–125 (arguing that Slater’s Figure 1 shows two-bone embodiment). Slater contains no details on this aspect of its alternative two-bone embodiment, such that the threads of the screw may engage the end of the first bone adjacent the second bone and still provide satisfactory results. At best, Petitioner and Dr. Gall’s related testimony establish that it would have been desirable, and perhaps obvious, to have the threads of screw type 70 only engage the second bone in Slater’s two-bone embodiment to create a vise-like configuration that transfers tensile load as claimed, but that does not establish that Slater expressly or inherently discloses such an embodiment to satisfy the anticipation standard.” slip op. at 22

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Finally, for similar reasons, we find the testimony of Patent Owner’s declarant Mr. Sommers more credible and persuasive than the testimony of Petitioner’s declarant Dr. Gall. For example, Dr. Gall opines that Slater discloses a vise configuration, but fails to point to any portion of Slater disclosing that configuration with respect to the two-bone embodiment. See Ex. 1002 ¶ 125; Ex. 1027 ¶¶ 37–46. Again, this testimony may establish the desirability of such a configuration and that one of ordinary skill in the art, when using Slater’s plate, may do so in the manner Dr. Gall proposes, but that does not establish that Slater expressly or inherently discloses a vise-like configuration due to threaded engagement with only the second bone in Slater’s two-bone embodiment. We view the testimony of Mr. Sommers as more credible because it more accurately tracks Slater’s disclosures. See Ex. 2002 ¶¶ 57–58 (opining that Slater “does not describe whether there would also be threads” in the second of the three bones in the three-bone embodiment, in practice the threads may engage multiple bones, and Slater does not illustrate or describe how the screw would be used on a two-bone configuration), 81–83, 108–120 (opining that Slater fails to disclose the transfer of tensile load limitations).2” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “motivation is contrary to the disclosure of Arnould for two reasons. PO Resp. 54–56. First, thickening the specified portion in Arnould “would be contrary to the purpose of Arnould’s disclosure” because “it is designed in a specific manner to allow a surgeon to bend the plate at that junction zone to conform the plate in situ to a patient’s bone anatomy.” PO Resp. 55–56; Ex. 1008 ¶ 20; Ex. 2002 ¶¶ 155–157; see also Ex. 2002 ¶ 157 (Arnould’s “junction zone 14” is “purposely not strengthened to allow for bending by the surgeon at time of implantation.”) (citing Ex. 1008 ¶ 38). Second, there is no motivation to modify the plate in Arnould “[b]ecause the highest stress of the Arnould plate does not occur at the junction zone 14 as Petitioners suggest.” PO Resp. 56–57. Rather, Arnould discloses that “the highest loading occurs in the cross-joint screw itself: ‘this screw essentially, if not exclusively, takes up the bending stress generated during the patient’s walking.’” PO Resp. 56 (quoting Ex. 1008 ¶ 6; citing Ex. 2002 ¶¶ 70, 165). “Because the highest stress of the Arnould plate does not occur at the junction zone 14 as Petitioners suggest, there would be no reason to modify that portion of the plate to accommodate additional stress as taught in Slater.” Id. at 57.” slip op. at 41

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “identified by Petitioner as the transfixation screw hole. Pet. 22; Ex. 1005, 12:23–25, 11:21–22. Here, I first note the specification does not describe a plate having a hole identified as a transfixation screw hole that would accommodate insertion of a screw at a plurality of angles through the same hole. Rather, the specification repeatedly describes the disclosed plate system as having a transfixation screw hole where it is the inner surface of that hole that is configured to direct a screw at a trajectory, which, according to Mr. Sommers, is language a person of ordinary skill in the art would understand to describe a degree of precision around a single fixed angle. Ex. 1001, 1:26–45, 2:8–14, 2:42–46; Ex. 2002 ¶¶ 50, 95, 97; PO Resp. 18– 19. For example, the specification describes how “increased plate thickness around transfixation screw hole 102 may also enable transfixation screw hole 102 to be machined into bone plate 100 at an angle relative to the top surface of bone plate 100.” Ex. 1001, 8:47–52 (emphasis added). In other embodiments, the central axis of the inner surface of the transfixation screw hole defines the trajectory. Id. at 1:46–47; 6:19–33. By comparison, other holes in the disclosed plates are not disclosed with the same level of effort toward precision when describing the trajectory of a screw. Indeed, the specification even includes a description of an oblong opening such as the one found in Slater, described as compression hole 132 and serves the purpose of tightening bones so as to “to press together at the interface of joint 106.” Id. at 8:53–9:26. Taken together, the specification, when read as a whole, describes plates with a transfixation screw hole configured at a single trajectory selected to achieve the functional objectives of the plate, namely, joint fusion, where that single trajectory is preferably between 30 and 70 degrees, and more preferably, 50 degrees. Id. at 6:19–33. Petitioner’s fails to direct us to any example or other disclosure to support its alternative interpretation, namely, a plate configured with a transfixation screw hole 102 configured to permit the placement of a screw at a plurality of trajectories or angles.” slip op. at 52

  Patent outcomesUS 9,351,776 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,351,776
• Stryker Corporation / Wright Medical Technology, Inc. v. Osteomed LLCNo claims unpatentable
  PTAB · Mar 8, 2023 · IPR2021-01450 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1–6, 8–14, and 17 were not shown unpatentable: Slater did not anticipate the claims, and the other grounds did not cure their deficiencies.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “153–154; Ex. 1005, 5:28–6:10, 6:18-28, 12:32–13:3, 19:25–26, 22:13–18, 27:11–17; Ex. 1026 ¶¶ 121–123; Ex. 1027 ¶¶ 37, 39–50; Ex. 1030, 67:23– 68:7, 68:17–70:3, 70:16–19, 71:5–9, 74:6–25, 75:5–13, 77:14–22, 106:19– 107:17; Ex. 2003, 46:23–48:4, 90:24–91:23). We are not persuaded by Petitioner’s argument because Slater does not expressly or inherently disclose how its lag screw threads interact with the first and second bone. Slater’s Figure 4 “shows an elevation view of a second screw type 70” having “a longer shank to increase depth of penetration and has an abbreviated threaded portion to allow the majority of the shank to slide through aligned tibial and talus screw holes finally anchoring in the calcaneus bone.” Ex. 1005, 12:32–13:3. This description of screw type 70 in the three-bone configuration does not state that the screw only engages the third bone, the calcaneus bone, and describes the “majority of the shank” as “slid[ing] through” holes in the first two bones without stating that none of the threads engage a portion of, for example, the end of the second bone adjacent the third bone. See id. More importantly, even if this portion of Slater describes a three-bone embodiment where the threads only engage the third bone, Slater provides insufficient support for Petitioner’s position that the threads of screw type 70 only engage the second bone in Slater’s two-bone embodiment, which Petitioner relies on as the anticipatory embodiment of Slater. See Pet. 24–25; Ex. 1002 ¶ 114 (arguing that Slater’s Figure 1 shows two-bone embodiment). Slater contains no details on this aspect of its alternative two-bone embodiment, such that the threads of the screw may engage the end of the first bone adjacent the second bone and still provide satisfactory results. At best, Petitioner and Dr. Gall’s related testimony establish that it would have been desirable, and perhaps obvious, to have the threads of screw type 70 only engage the second bone in Slater’s two-bone embodiment to create a vise-like configuration that transfers tensile load as claimed, but that does not establish that Slater expressly or inherently discloses such an embodiment to satisfy the anticipation standard.” slip op. at 22

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Finally, for similar reasons, we find the testimony of Patent Owner’s declarant Mr. Sommers more credible and persuasive than the testimony of Petitioner’s declarant Dr. Gall. For example, Dr. Gall opines that Slater discloses a vise configuration, but fails to point to any portion of Slater disclosing that configuration with respect to the two-bone embodiment. See Ex. 1002 ¶ 114; Ex. 1027 ¶¶ 37–46. Again, this testimony may establish the desirability of such a configuration and that one of ordinary skill in the art, when using Slater’s plate, may do so in the manner Dr. Gall proposes, but that does not establish that Slater expressly or inherently discloses a vise-like configuration due to threaded engagement with only the second bone in Slater’s two-bone embodiment. We view the testimony of Mr. Sommers as more credible because it more accurately tracks Slater’s disclosures. See Ex. 2002 ¶¶ 57–58 (opining that Slater “does not describe whether there would also be threads” in the second of the three bones in the three-bone embodiment, in practice the threads may engage multiple bones, and Slater does not illustrate or describe how the screw would be used on a two-bone configuration), 81–83, 108–120 (opining that Slater fails to disclose the transfer of tensile load limitations).3” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “but find Patent Owner to have the better position, which we adopt as our own. In particular, we agree with Patent Owner that the proposed motivation is contrary to the disclosure of Arnould for two reasons. PO Resp. 58–60. First, thickening the specified portion in Arnould “would be contrary to the purpose of Arnould’s disclosure” because “it is designed in a specific manner to allow a surgeon to bend the plate at that junction zone to conform the plate in situ to a patient’s bone anatomy.” PO Resp. 59–60; Ex. 1008 ¶ 20; Ex. 2002 ¶¶ 158–159; see also Ex. 2002 ¶ 160 (Arnould’s “junction zone 14” is “purposely not strengthened to allow for bending by the surgeon at time of implantation.”) (citing Ex. 1008 ¶ 38). Second, there is no motivation to modify the plate in Arnould “[b]ecause the highest stress of the Arnould plate does not occur at the junction zone 14 as Petitioners suggest.” PO Resp. 60. Rather, Arnould discloses that “the highest loading occurs in the cross-joint screw itself: ‘this screw essentially, if not exclusively, takes up the bending stress generated during the patient’s walking.’” PO Resp. 59–60 (quoting Ex. 1008 ¶ 6; citing Ex. 2002 ¶¶ 70, 173). “Because the highest stress of the Arnould plate does not occur at the junction zone 14 as Petitioners suggest, there would be no reason to modify that portion of the plate to accommodate additional stress as taught in Slater.” Id. at 60.” slip op. at 40

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “screw between 30 and 70 degrees. Upon review of this claim structure for the ’608 patent, I agree with Patent Owner that a person of ordinary skill in the art would understand that, in the context of the intrinsic record, this means that any given plate has a single fixed angle, and that different plates could have a different fixed angle, with plates having single fixed angles in the range between 30 and 70 degrees. PO Resp. 20 (Ex. 2002 ¶ 96; see also Ex. 1001, 6:25–30). Here, I also credit Mr. Sommer’s explanation that a person of ordinary skill in the art would understand that to mean that a surgeon would be provided with a kit that includes multiple plates, each one with a single fixed angle of, for example, 50, 55, 60, 65 and 70 degrees. Ex. 2002 ¶ 96; Sur-Reply, 4. Moreover, claim 5 further limits the trajectory of claim 4 to “a transfixation angle of about 50 degrees measured from the neutral bending axis.” Ex. 1001, cl. 5. Claim 6 further limits claim 1 and requires that “the inner surface of the transfixation screw hole is configured to lockably engage the head of the transfixation screw,” and that engagement of the screw head and screw hole would inherently constrain the configuration of the screw hole to a particular angle. Thus, each of dependent claims 2–6 further limit claim 1 along the lines of a single “trajectory” and are more specifically directed to plates configured with a screw hole that defines a single trajectory. Finally, while the term “trajectory” used in isolation may not necessarily connote a fixed angle, the assessment here is whether the independent claim’s recitation of an inner surface of a screw configured to direct a screw at a trajectory is describing a fixed angle, and more specifically, describing a screw hole configured to direct a screw at a single trajectory. In view of the claim structure of independent claims 1 and 11, the content of the specification, and testimony of Mr. Sommer’s, summarized above, I determine it does. The claims expressly require a transfixation screw hole that itself is “configured to direct the transfixation screw through the transfixation screw hole . . . at a trajectory,” which in context of the claim itself indicates that a screw hole directs the trajectory of the screw, even if other factors may also influence the trajectory. Cf. Reply 3–4. In other words, we agree with Patent Owner that “[a person of ordinary skill in the art] reading [claims 1 and 11] in light of the intrinsic record would understand that [the claim language describing the recited screw hole] means that the shape of the inner surface of the transfixation screw hole is such that it guides the screw at a fixed angle.” PO Resp. 19; Ex. 2002 ¶ 95.” slip op. at 54

  Patent outcomesUS 8,529,608 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,529,608
• Infineon Technologies AG v. Arigna Technology Ltd.No claims unpatentable
  PTAB · Feb 15, 2023 · IPR2021-01382 · APJ Garth D Baer · IPR · Final written decision

  Claims 8 and 9 were not shown unpatentable because Fujii did not disclose the claimed range, and the claimed range was critical over Inagawa and Hebert.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person with a master’s degree in electrical engineering (or a related degree) and at least three to five years of experience in the area of miniaturization, optimization, and fabrication processes of semiconductor devices used in integrated circuits.” Pet. 8. Further, “[a] person with less education, but more relevant practical experience, is also a person of ordinary skill in the art.” Id. Patent Owner does not provide a description of the person of ordinary skill. See PO Resp. 18. Petitioner’s description is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). We adopt Petitioner’s description.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “B. CLAIM CONSTRUCTION We determine we need not explicitly construe any terms to determine unpatentability. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe 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 5

  • Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable

    “As the court in E.I. DuPont recognized, an overlapping range in the prior art is sufficient for obviousness “in the absence of evidence indicating that there is something special or critical about the claimed range.” E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1008 (Fed. Cir. 2018). Petitioner asserts Patent Owner “failed to present such [criticality] evidence.” Pet. Reply 1–2. We disagree. Instead, we agree with Patent Owner that the claimed 10–40 nm range is critical (and thus not obvious) because it “provide[s] an optimal balance between cell size and short circuit defect rate.” PO. Resp. 63. This criticality is reflected in the ’867 patent’s Figure 8, which shows that dimensions below 10 nm result in significant increases in short-circuit defect rate, while dimensions above 40 nm undesirably increase size without further reducing short-circuit defect rate. Ex. 1001, 11:20–32, Fig. 8.” slip op. at 9

  • Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia with nexusDecided for patent owner

    “prior art is sufficient for obviousness “in the absence of evidence indicating that there is something special or critical about the claimed range.” E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1008 (Fed. Cir. 2018). Petitioner asserts Patent Owner “failed to present such [criticality] evidence.” Pet. Reply 1–2. We disagree. Instead, we agree with Patent Owner that the claimed 10–40 nm range is critical (and thus not obvious) because it “provide[s] an optimal balance between cell size and short circuit defect rate.” PO. Resp. 63. This criticality is reflected in the ’867 patent’s Figure 8, which shows that dimensions below 10 nm result in significant increases in short-circuit defect rate, while dimensions above 40 nm undesirably increase size without further reducing short-circuit defect rate. Ex. 1001, 11:20–32, Fig. 8.” slip op. at 9

  Patent outcomesUS 8,247,867 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,247,867
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 2, 2023 · IPR2021-01333 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 18, 26, 27, 29, and 31 were not shown unpatentable because Ogasawara did not disclose claim 18’s determining limitation, and the obviousness grounds did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had a “Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the ’252 patent was filed before the effective date of the relevant amendment, the pre-AIA versions of §§ 102, 103 apply. working with image processing, image recognition, or a related field.” Pet. 17 (citing Ex. 1003 ¶ 43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jeffrey Rodriguez. Ex. 1003 ¶ 43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 15. We adopt Petitioner’s description, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in federal district court in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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) (2020). Patent Owner proposes construing the term “the image” in all challenged claims to refer to “the same, single image.” PO Resp. 20. Based on this proposed construction, Patent Owner argues that the combination of Ogasawara and Bolle does not teach the limitations of claim 31. Id. at 59–60. As discussed below, for reasons unrelated to the term “the image,” Petitioner does not meet its burden to show that the challenged claims are unpatentable. See Sections II.D–II.F. Therefore, we determine that the term “the image” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 6

  • BurdenNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  Patent outcomesUS 7,899,252 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,899,252

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.