- Life Spine, Inc. v. Globus Medical, Inc.All claims unpatentablePTAB · Jun 11, 2024 · IPR2022-01602 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1–3 and 8–10 are anticipated by Weiman, and claims 4–7 and 11–14 are obvious over Weiman and Mozeleski; the revised motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 11 (citing Ex. 1002 (Drewry Decl.) ¶¶ 76–79). Patent Owner does not dispute Petitioner’s proposal. See generally Response. We adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the cited prior art and is undisputed on this record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find persuasive, and credit, Mr. Drewry’s testimony that (1) a POSITA would have appreciated that the proposed modification to replace Weiman’s screw/socket with Waugh’s angled version provides benefits including “avoiding selected muscular and abdominal anatomical structures,” and (2) such “benefits would have been desirable for certain applications, such as those where the patient’s anatomy dictates that OLIF would provide the patient with the best medical outcome.” Ex. 1044 (Drewry Second Supp. Decl.) ¶¶ 23–26; see also Ex. 1043 (Waugh), ¶¶ 54, 87–90 (describing use of angled screw holes to, e.g., “receive a fastener via a surgical pathway” and configured “to penetrate endplate tissue of a vertebral body”). We find the weight of evidence supports Petitioner’s articulation of a POSITA’s understanding of how to use angles to avoid anatomical features” slip op. at 61
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no terms require construction “because they are shown to be anticipated and/or obvious regardless of construction.” Pet. 12. Patent Owner did not propose any terms for construction. See generally Response. We determine that no claim terms require express construction to render this Decision.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“j. Conclusion on Claim 1 For the above reasons, we determine that Petitioner has shown by a preponderance of the evidence that Weiman discloses each and every limitation of claim 1, and therefore anticipates claim 1.” slip op. at 28
Patent outcomesUS 9,956,087 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,956,087 - PTAB · Oct 13, 2023 · PGR2023-00022 · APJ Devon Zastrow Newman · PGR · Institution
The Board instituted PGR on claims 1–33 under all petition grounds, finding it more likely than not that at least one claim lacks written description and enablement.
RulingsInstitution decision- Skill levelSkill level board ownOther
“Based on the information presented, we agree with Patent Owner that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). We do not find it necessary to define the level of skill in the art at the time of the invention at this time. However, for purposes of deciding whether to institute trial, we find that Dr. Silverstone is qualified to provide helpful opinion testimony on the issues regarding which we cite his testimony in this decision. See Ex. 1003 ¶¶ 6–15.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Based on the above, we agree with Patent Owner that many of the arguments raised by the Examiner are highly similar to the challenges in this proceeding, particularly the written description challenge. However, some arguments differ. For instance, Petitioner’s enablement argument identifies that, contrary to Applicant’s statement during prosecution reproduced above, amino acids and protein structure outside the disclosed AAD-12 motif can also affect the activity of the claimed dioxygenases to degrade phenoxy auxin and pyridyloxy auxin. See Ex. 1003 ¶¶ 42–50, 79 (Dr. Silverstone describing the mechanics of protein binding and explaining why the ’055 patent disclosure fails to provide sufficient information to the skilled artisan to know which amino acids could be changed while retaining the ability to enzymatically degrade both phenoxy and pyridyloxy auxin herbicides). See also Pet. 27–34 (asserting, e.g., 85% homology to AAD-12 motif alone is insufficient to predict enzymatic degradation activity). While the Examiner’s rejections regarded the disclosure corresponding to the ability to degrade herbicides, the Examiner plainly relied on Applicant’s statements that the AAD-12 motif’s structure alone was responsible when deciding to withdraw the rejection. Ex. 1002, 355. The Examiner did not have the additional testimony supplied by the Silverstone declaration explaining otherwise. See Ex. 1003 ¶¶ 42–50, 79. Petitioner, through Dr. Silverstone, also addresses the effort the skilled artisan would have needed to undertake to determine what proteins outside of the AAD-12 motif would affect the ability of homologues to enzymatically degrade the recited herbicides, and provides evidence for consideration regarding the lack of a clear link between the AAD-12 motif and the ability to enzymatically degrade both phenoxy and pyridyloxy auxin herbicides. Ex. 1003, 347. Therefore, the arguments are not entirely overlapping. And while these issues do in part overlap with Petitioner’s arguments pertaining to enablement, we agree with Petitioner that the Examiner did not complete a written Wands analysis. Although we conclude that the arguments are not entirely overlapping, we proceed to the second step in the analysis, for completeness.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because Petitioner has shown that it is more likely than not that Petitioner will prevail in showing that at least one claim lacks sufficient written description and is not enabled, we conclude the challenged claims are eligible for post-grant review. V. CONCLUSION After considering the evidence and arguments presently before us, we determine Petitioner has shown it is more likely than not that at least one challenged claim of the ’055 patent lacks written description and is unpatentable. Accordingly, we institute a post-grant review. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 324(a), a post-grant review of claims 1–33 of the ’055 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 57
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“85% identity as “highly identical” in this field and that the “conserved motif residues comprise ‘the active site that is essential for catalytic activity.’” Prelim. Resp. 31 (citing Ex. 1001, 11:1–6)). However, on the record before us, we are unpersuaded that this is sufficient because the Specification lacks disclosure supporting that a polypeptide of, for example, 86% identity to SEQ ID NO: 2 would retain the ability to degrade herbicides if the 5 amino acids in the general formula of HX109D(X)111-134 T(X)136-261H(X)263-272R, and the required chain lengths are present. In this regard we are persuaded by the testimony of Dr. Silverstone (Ex. 1003 ¶¶ 48–93) regarding the limitations of the disclosure of the ’055 patent and the lack of information supporting the skilled artisan in understanding that the inventor possessed the entire claimed genus (e.g., lack of example at lower end of sequence identity and lack of information to assist the skilled artisan in predicting whether an α-ketoglutarate-dependent dioxygenase would interact with or degrade either phenoxy auxin herbicides and/or pyridyloxy auxin herbicides). Dr. Silverstone testifies, and we are persuaded on this record, that the skilled artisan would not have read the guidance in the disclosure and understood that the inventors possessed the ability to design a modified SEQ ID NO: 2 at the 85% identity level that retained the function of degrading the recited herbicides, let alone the full scope of the claimed genus. Id. Patent Owner argues that Dr. Silverstone’s testimony that conserved amino acids of the AAD-12 motif are present in other α- ketoglutarate-dependent dioxygenases but do not have the claimed dual activity (Ex. 1003 ¶ 48) is misplaced because it “ignores that the location and spacing of those residues in other αKG-dependent dioxygenases differ from those in the AAD-12 motif.” Prelim. Resp. 38. However, Patent Owner offers no evidence that supports its argument. Id. It is thus unpersuasive.” slip op. at 36
§ 112 disclosureDiscretionary denialPatents in suitUS 11,371,055 - Risen (Suzhou) Pharma Tech. Co. Ltd. v. Alzheon, Inc.Institution deniedPTAB · Jan 13, 2023 · PGR2022-00051 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution on all challenged claims, finding no reasonable likelihood of unpatentability under §§ 101 and 112(a), and denying Grounds 4–6 under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the arguments and evidence, we determine that the information presented fails to demonstrate it is more likely than not that at least one of the challenged claims of the ’742 patent is unpatentable for ineligibility, lack of written description, or non-enablement. We also exercise our discretion to deny institution of post-grant review under 35 U.S.C. § 325(d). slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“tramiprosate “showed a significant overall treatment effect” in “an APOE4+ sub-group,” including APOE4 homozygotes; “therapeutic interventions applied earlier in the course of AD more likely might achieve the goal of disease modification;” and that “AD would be optimally treated before significant cognitive impairment, during its pre-symptomatic or pre-clinical stages …”) (emphases removed). Accordingly, Caltagirone was previously presented to the Office and we also find that Caltagirone’s disclosures are substantially similar to, or cumulative of, other references previously considered by the Examiner.” slip op. at 49
- Adverse judgmentAdverse judgmentOther
“D. Statutory Disclaimer After the filing of the Petition in this proceeding, Patent Owner filed a statutory disclaimer, disclaiming claims 9 and 11–15 of the ’742 patent, effective October 7, 2022. Prelim. Resp. 12; Ex. 2001, 1. “No post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.207(e). We do not analyze the validity of claims 9 and 11–15 based on Petitioner’s challenges (e.g., Grounds 2 and 3) because these claims have been statutorily disclaimed.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least an M.D. or Ph.D. degree in a biomedical science or equivalent field. They would also have several years of clinical experience treating and/or conducting clinical trials of drugs for AD patients, or professional experience working in clinical trial design and execution related to drugs for AD or supervising such work. Pet. 14–15 (citing Ex. 1003 ¶ 62) (internal citation omitted). Patent Owner does not contest the characterization offered by Petitioner. Prelim. Resp. 12–13. For purposes of this Decision, we adopt Petitioner’s characterization as it is consistent with the level of skill in the art at the time of the invention as reflected by the ’742 patent and the cited 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 shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9
Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · GrahamPatents in suitUS 11,191,742 - Neuroderm Ltd. v. Abbvie Inc.InstitutedPTAB · Nov 14, 2022 · PGR2022-00040 · APJ Cynthia M Hardman · PGR · Institution
The Board instituted PGR on claims 1–17 based on all asserted grounds, finding the petition showed they more likely than not lacked written description support and enablement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons explained below, we find that Petitioner has met the threshold showing for post-grant review of claims 1–17 with respect to the first challenge (written description support for the claimed genus). On that basis, we institute post-grant review of all challenged claims. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018); 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims . . . .”). We address this challenge first, then provide the parties guidance on Petitioner’s second written description challenge (support for carbidopa itself).” slip op. at 19
- Skill levelSkill level board ownOther
“Ex. 1006, 1 (citations omitted). Accordingly, when considering the ’507 patent’s purpose, the type of problems encountered in the art, and prior art solutions to those problems, it is clear that with respect to levodopa/carbidopa treatments for Parkinson’s Disease, the pharmaceutical formulation and its resulting pharmacokinetics and patient experience are intertwined, thus supporting a requirement that a person of ordinary skill in the art have knowledge or experience in each of these areas. See, e.g., Indivior Inc. v. Dr. Reddy’s Labs., S.A., 930 F.3d 1325, 1345 (Fed. Cir. 2019) (finding no clear error in district court’s compromise measure of level of ordinary skill in the art as a team comprising different skill sets). In view of the above considerations, we preliminarily find that a person of ordinary skill in the art would be a member of a team that includes person(s) with (a) a Ph.D. in a field related to the development of pharmaceuticals (for example, pharmacology, pharmacokinetics, pharmaceutics, pharmaceutical chemistry, organic chemistry, biochemistry, molecular biology, medicinal chemistry, formulation development, or a related field), or equivalent degree, and 2–4 years of experience in the analysis of pharmacokinetic data, pharmaceutical formulation development, and/or drug discovery or development, or a B.S. or M.S. degree in a field related to the development of pharmaceuticals, or equivalent degree, and 4–6 years of experience in the analysis of pharmacokinetic data, pharmaceutical formulation development, and/or drug discovery or development, and (b) a medical degree or equivalent degree with experience in treating patients with Parkinson’s disease. In subsequent briefing, should the parties propose any differences from the team approach articulated above, they should support their proposal and address the impact, if any, of the differences on the pertinent disputes in this proceeding. Any final determination on the level of ordinary skill in the art will be made on the full trial record.” slip op. at 15
- Expert testimonyPetitioner expert creditedOther
“Additionally, based on their statements of qualifications and curricula vitae, for purposes of this Decision we find Drs. LeWitt and Sloan qualified to provide technical opinions from the perspective of a person of ordinary skill in the art. Ex. 1003 ¶¶ 1–10, pp. 87–119 (Dr. LeWitt’s statement of qualifications and curriculum vitae); Ex. 1004 ¶¶ 1–11, pp. 45–71 (Dr. Sloan’s statement of qualifications).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We agree with the parties that the express definition provided during prosecution should be adopted. See, e.g., Biotec Biologische Naturverpackungen GmbH v. Biocorp, Inc., 249 F.3d 1341, 1346–47 (Fed. Cir. 2001) (construing claims in accordance with definition provided in declarations submitted during prosecution). Accordingly, we preliminarily construe the term “a compound comprising levodopa” in accordance with the full definition Dr. Okun provided during prosecution, i.e., “any molecule with a levodopa core moiety including levodopa itself, as well as prodrugs, salts, and hydrates of levodopa.”” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,091,507 - Collegium Pharmaceutical, Inc. v. Purdue Pharma L.P., Purdue Pharmaceuticals L.P., And The P.F. Laboratories Inc.All claims unpatentablePTAB · Nov 19, 2021 · PGR2018-00048 · APJ Devon Zastrow Newman · PGR · Final written decision
Claims 1–17 are unpatentable for lack of written description and anticipation by the ’943 Publication; indefiniteness and lack of enablement were not shown.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“We are not persuaded that exclusion of the cited portions of Dr. Chambliss’ testimony or Exhibits 1073, 1074, 1075, 1082, 1083, 1084, 1085, 1086, 1088, and 1090 is warranted. While the parties disagree on the merits of Dr. Chambliss’ testimony as to whether PGGs were known to be gelling agents by persons of ordinary skill in the art at the time of the Priority Applications, Patent Owner does not persuade us that Dr. Chambliss fails to support his testimony with any reasonable logical or scientific basis. The exhibits that Patent Owner seeks to exclude, which include a patent, technical references, and a journal article, are relevant to the inquiry Dr. Chambliss performed in forming his opinion. We therefore do not see a basis for exclusion under FRE 702/703 or 37 C.F.R. § 42.64(c). Moreover, we find this evidence both admissible and relevant as it concerns a fundamental issue for our patentability analysis. Thus, we decline to exclude the evidence under FRE 401 or 402.” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“would have possessed “a degree in one or more fields of medicine, chemical engineering, chemistry, pharmaceutical science, and/or pharmacology and a number of years of industry training or experience in one or more of those fields.” Pet. 21 (citing Ex. 1002 ¶ 82). Petitioner further proposes that “[i]f the degree is a Ph.D[.], then the required industry experience need not be significant, e.g., two years or more, but if the technical degree is a B.S. or M.S., then the industry experience would be more significant, e.g., five years or more.” Id. We preliminarily adopted Petitioner’s definition of a POSA’s skill level in our Institution Decision as it was undisputed at the time and consistent with the evidence of record. Inst. Dec. 7–8. Neither Patent Owner nor Petitioner addresses the level of ordinary skill in the art in the post-institution briefing. We continue to adopt Petitioner’s proposed skill level for a POSA herein and have also taken into account the level of skill reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Applying this level of skill, we find that Dr. Chambliss and Dr. Constantinides are qualified to provide opinions as to the perspective and knowledge of a POSA. See Ex. 1002 ¶¶ 81–83; Ex. 2030 ¶¶ 58–63.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Patent Owner that the challenged claims recite methods of making formulations using recited features and ingredients. In addition, as we stated in our Decision on Institution, “[t]he claims define abuse deterrence in terms of when the dosage form is ‘subjected to t[a]mpering comprising heating at a temperature greater than about 45° C.’” Inst. Dec. 19 (quoting Ex. 1001, 41:50–52). Additionally, the claims and specification identify specific ingredients that can purportedly help achieve this abuse deterrence functionality. Id. Given these conclusions, further construction of “abuse deterrent,” which both parties generally agree relates to methods of making the drug dosage form less likely to be abused, is not necessary to resolve the issues before us.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateUnpatentable
“Notwithstanding these individual teachings, we find that the specification fails to demonstrate that the inventors of the ’961 patent possessed a dosage form comprising a combination of the recited components that also satisfied the recited functionality. We are persuaded that the specification fails to provide sufficient guidance that would have led the POSA to create the recited dosage form. See Fujikawan 93 F.3d at 1571; In re Ruschig, 379 F.2d 990, 995 (CCPA 1967). Rather, “one is left to select[] from the myriads of possibilities encompassed by the broad disclosure, with no guide indicating or directing that this particular selection should be made rather than any of the many others which could also be made.” Ruschig, 379 F.2d at 995.” slip op. at 34
Patent outcomesUS 9,693,961 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites NautilusPatents in suitUS 9,693,961 - Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.All claims unpatentablePTAB · Aug 14, 2017 · CBM2016-00034 · APJ Barbara A Benoit · CBM · Final written decision
Claims 1–24 are unpatentable under § 101; claims 1–3 and 5 are also anticipated by Riach, and specified claims are obvious over combinations of Riach, Graf, Gustin, and Anderson.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“For these reasons, we determine that claim 20—its focus and its” slip op. at 37
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“For the foregoing reasons, we conclude that claim 20 is directed to an” slip op. at 52
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“encompasses Riach’s process that copies a portion (but not all) of the original check image data to produce the required modified check image data. Accordingly, we agree that the portion of Riach on which Petitioner relies discloses step (b) of claim 1 that requires, among other limitations, the modified check image data not include at least some visual feature data included in the check image data. Pet. 30 (relying on Ex. 1008, 5:16–30, Figs. 4, 7).” slip op. at 73
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Apple, 839 F.3d at 1058 (quoting KSR, 550 U.S. at 418–19); see also KSR, 550 U.S. at 418 (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 89
Patent outcomesUS 7,314,163 unpatentable§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Enfish · Electric Power · Phillips · GrahamPatents in suitUS 7,314,163 - Ultratec, Inc. v. Captioncall, L.L.C.Institution deniedPTAB · Feb 22, 2017 · PGR2016-00037 · APJ Barbara A Benoit · PGR · Institution
The Board denied institution on all challenged claims because the petition did not show that any claim was more likely than not unpatentable under § 101 or § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of claims 1–23 of U.S. Patent No. 9,197,745 B1 (Ex. 1001, “the ’745 patent” or “the challenged patent”). Paper 1 (“Pet.”). Patent Owner, CaptionCall, L.L.C., filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). After considering the Petition and the Preliminary Response, we determine that the information presented in the Petition does not demonstrate it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.200(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of broadest reasonable construction standard in inter partes review9). Consistent with the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire patent disclosure at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for “message” recited in claims 2, 4–8, and 12 and for “module” recited in claims 2–6 and 8. Pet. 9–11. Patent Owner challenges Petitioner’s proposed claim constructions as overly narrow. Prelim. Resp. 8–9. We determine, however, that no claim terms need express construction for this decision.” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“We agree with Patent Owner (Prelim. Resp. 12) that claim 1, as a whole, is directed to an apparatus that facilitates voice communication and captioned text communication using a relay for hearing-impaired users over one or more communications networks and, under specified circumstances— when captioning has been enabled by the hearing-impaired user and the system determines that an attempted connection has failed—automatically reconnects to a captioning communication service. In other words, the claim is directed to a communication device that automatically reconnects to a captioning communication service following an unwanted interruption to the 12 captioning communication service in certain circumstances. See Ex. 1001, 1:13–16 (describing the field of the disclosure as relating to a communication device that automatically reconnects to the captioning communication service “following an unwanted interruption to the captioning communication session”). We determine that claim 1 as a whole is not directed to redialing a telephone as “callers have performed for as long as there have been telephones.” See Pet. 20. Moreover, the claim is directed to an apparatus having communication elements and a processor, and requires two connections and captioning, which, taken as a whole, distinguish claim 1 from a conventional telephone and further supports our determination that the claim merely involves, but is not directed to, the concept of reconnection or redialing. Moreover, looking at the elements individually, claim 1 requires communication elements coupled with a processor configured to able to connect a communication device and connect with a captioning session over two connections. Claim 1 recites a function—“automatically connect with the captioning communication service through a second connection to establish a captioning communication session during the voice communication session responsive to a determination that an attempted connection to the captioning communication service failed during a time in which a caption select option has been enabled by the hearing-impaired user, wherein the attempted automatic connection through the second connection is not made during a time in which the caption select option has been 13 disabled by the hearing-impaired user”—which requires more than “redialing” a telephone. See Prelim. Resp. 11–12. Specifically, the claimed apparatus only performs the “automatically connect” function if three conditions are met: (i) responsive to a determination that an attempted connection to the captioning communication service failed (ii) during a time in which a caption select option has been enabled by the hearing-impaired user, and (iii) “the attempted automatic connection through the second connection is not made during a time in which the caption select option has been disabled by the hearing-impaired user.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“excerpts from Parker as purportedly describing aspects of the automatically reconnect limitation. Id. at 40–42. Petitioner does not assert that either the Ultratec User Guide or Parker alone would have conveyed to one of ordinary skill in the art the automatically connect function with the three conditional limitations (id.), nor is such an assertion required under 35 U.S.C. § 103. Petitioner is required under 35 U.S.C. § 103, however, to explain how the combination of the references would have conveyed to one of ordinary skill 25 in the art the recited automatically connect function with its three conditional limitations. Petitioner has not provided such an explanation, much less adequate analysis by Mr. Zatkovich or factual support as to how one of ordinary skill in the art would understand the separate disclosures of the references to teach the automatically connect limitations. Specifically absent from the Petition is any discussion as to how Petitioner’s combination of references would have conveyed to one of ordinary skill in the art the limitations of automatically connecting under the required conditions—the failed attempt limitation, the when-enabled limitation, and the when-not-disabled limitation. Petitioner’s combination relies on Parker’s reconnection function to establish a lost persistent connection, but Parker’s reconnection function does not do so conditionally, much less under the specific conditions required by claim 1. Petitioner does not explain how the combination of Parker’s unconditional reconnection function would be understood by one of ordinary skill in the art to retry conditionally based on whether the Ultratec User Guide’s caption button was enabling captioning and had not been disabled by the caption telephone user. Furthermore, Petitioner contends that “adding an auto-retry and/or auto-reconnect feature as in Parker to a captioned telephone device as disclosed in [the Ultratec User Guide and Engelke] would amount to simply adding a known technique to a known system, wherein the technique operates in the same way as it was already known to operate and dos not have any unpredictable result.” Pet. 34. As such, Petitioner’s combination 26 expressly relies on Parker’s auto-retry and/or auto-reconnect feature “as in Parker,” which is an unconditional retry in the event of a lost connection. In sum, neither reference by itself describes the automatically reconnect limitation and Petitioner fails to articulate how one of ordinary skill in the art would have understood the claimed automatic reconnect in view of the cited disparate disclosures from the references. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner asserts in a conclusory manner that the combination of a teaching of a button to enable or disable captioning with a teaching of automatic reconnection unrelated to whether captioning is enabled or disabled would have conveyed to one of ordinary skill in the art the automatic reconnection limitation. Petitioner fails to provide adequate explanation or factual support. This flaw of the Petition is particularly problematic when the threshold for institution is “more likely than not,” as here, rather than the threshold of “a reasonable likelihood” required to institute an inter partes review. Compare 35 U.S.C. § 324(a), with 35 U.S.C. § 314(a).” slip op. at 25
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSRPatents in suitUS 9,197,745 - PNC Bank, N.A. / U.S. Bank, N. A. et al. v. Secure Axcess, LLCAll claims unpatentablePTAB · Sep 8, 2015 · CBM2015-00009 · APJ Barbara A Benoit · CBM · Final written decision
Claims 1–32 are unpatentable as obvious over the SHTTP document and Arent.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“For the foregoing reasons, we determine that Petitioner has established by a preponderance of the evidence that the subject matter recited in claims 1–32 of the ’191 patent as a whole would have been obvious to one of ordinary skill in the art in view of the teachings of the SHTTP document and Arent. See 35 U.S.C. § 103(a).” slip op. at 71
- ExcludeMotion to exclude, deniedNot reached
“Information Prepared by Paul C. Clark” (Ex. 1018). Petitioner opposes, arguing that Exhibit 1018 is Dr. Clark’s notes used during his deposition. We did not refer to or rely on Exhibit 1018 in this Final Written Decision. As such, we need not reach the merits as to Patent Owner’s Motion to Exclude. Accordingly, Patent Owner’s Motion to Exclude certain evidence (Ex. 1018) is dismissed as moot.” slip op. at 71
- Skill levelSkill level board ownOther
“Petitioner’s expert adopted the level of ordinary skill in the art at the time of the invention used by Patent Owner’s expert. See Ex. 2006 ¶ 8 (testimony by Patent Owner’s declarant identifying the level of ordinary skill); Ex. 1002 ¶ 29 (testimony by Petitioner’s declarant). We do not 31 disagree with the parties. Therefore, one of ordinary skill in the art would have a bachelor’s degree in computer science, computer engineering, or an equivalent field and least two years of work experience in the area of information technology.” slip op. at 31
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We agree with Petitioner and its declarant that the provisional application does not disclose the claimed authenticity key or preferences file or the claimed use thereof, as recited in each of independent claims 1, 17, 29, 31, and 32. The provisional application describes the invention in a few sentences. The scarcity of detail fails to provide sufficient disclosure of the claimed steps. For example, we see no disclosure of inserting any data in the provisional application, much less inserting something that could be identified as an authenticity key. Although a shared secret is disclosed, the shared secret is not described as being inserted into the web page or any other data. See id. at 5–6 (“The invention proposes to utilize the shared secret data created as part of being” a credit card holder of a particular credit 33 card company.). Moreover, the record evidence indicates that the provisional application does not disclose the recited “authenticity key.” Pet. 20 (citing Ex. 1002 at 18, ¶ 37). Thus, we agree with Petitioner that the provisional application lacks written description support for “authenticity key,” which is recited by all claims in the ’191 patent. Accordingly, we determine Arent is prior art under 102(a) to the ’191 patent and is available for consideration in this covered business method patent review.” slip op. at 33
Patent outcomesUS 7,631,191 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,631,191 - American Express Company / American Express Travel Related Services Company, Inc. et al. v. Metasearch Systems, LLCAll claims unpatentablePTAB · Mar 13, 2015 · CBM2014-00001 · APJ Howard B Blankenship · CBM · Final written decision
Claims 2, 6, and 8 are unpatentable under §§ 101 and 103(a); Patent Owner’s motion to amend is denied.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“In this case, representative claim 2 recites eight steps for a search that is “associated with at least one travel related item,” and which include receiving the search results, communicating the results along with an advertisement, receiving an order for the item, and processing the order. See Ex. 1001, col. 145, ll. 33–61. Although the claimed process requires computer hardware and software (e.g., step (a) of claim 2, “receiving a Hypertext Transfer Protocol request from a client device”), we agree with Petitioner that the claim embraces 5 The Court’s decision is sometimes referenced as Ultramercial III. The Federal Circuit heard the second appeal from the U.S. District Court after the Supreme Court vacated the Federal Circuit’s first decision. 772 F.3d at 711–12. the abstract idea of marketing an item on a metasearch Web site with keyword ads and providing a way to order the item.” slip op. at 13
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptIneligibleUnpatentable
“Next, or in step two of the analysis, we search for an “inventive concept”— i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Alice, 134 S. Ct. at 2355. In this case, the claims recite, for the most part, an ordered combination of steps that contain Internet operations that were conventional at the time of invention. For example, the claims recite communicating with a client device using a Hypertext Transfer Protocol [HTTP]. Momma.com demonstrates that browsers on Internet client devices used such a protocol at the time of invention. See Ex. 1005, 10 (for “Microsoft Internet Explorer,” go to the address “http://www.mamma.com”). The claims further recite a “metasearch engine,” which also was conventional at the time of invention. See id. at 5 (“Mamma is a meta search engine”); see also Prelim. Resp. 3 (Patent Owner did not claim that “metasearching” was novel at the time of invention). Patent Owner argues that designing more than a “rudimentary” metasearch engine in the late 1990’s was not a trivial task. PO Resp. 44. The argument is premised on the assumption that the claims require more than “rudimentary” metasearching. The claims recite, however, as in claim 2, a “metasearch engine to send at least one search query to a plurality of unique hosts”—e.g., a metasearch engine capable of sending a single search query to a plurality (e.g., two) different hosts. The claims are drawn to implementing the abstract idea of marketing an item on a metasearch Web site with keyword ads and some way to order the item with routine, conventional activity. Such an implementation does not transform the abstract idea into patent eligible subject matter.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“5. Combining Knowledge Broker and Mamma.com Patent Owner argues that a person of ordinary skill in the art would not have been motivated to combine the “disparate technologies” of Mamma.com and Knowledge Broker and would not have known how to do so “without complex, lengthy, and uncertain experimentation.” PO Resp. 62. According to Patent Owner, the “two technologies” of “metasearch engines and structured e-commerce comparison shopping services providing product purchase functionality and associated advertisements—were vastly different technologies during the late 1990s and in particular in 1999-2000.” Id. at 59. A person of ordinary skill in the art would “not have been motivated to combine metasearch engines with structured e-commerce comparison shopping sites due to numerous other technical challenges present at the time.” Id. at 63. We agree with Petitioner, however, that the claims do not require addressing the “technical challenges” submitted by Patent Owner. Pet. Reply 11–12. Adding advertisements to Knowledge Broker would not require combining a metasearch engine with other “technologies” such as “structured ecommerce comparison shopping sites.” For example, the advertisements could be supplied from the hosts. Patent Owner acknowledges there is no limitation as to where the advertisement comes from. Tr. 61:20–25.” slip op. at 26
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersNot shown unpatentableDecided for petitioner
“The Declaration does not point to any evidence in the record in support of the allegations. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a). Moreover, Dr. Carbonell does not allege, let alone show, that others tried and failed to solve the problem allegedly solved by the ’924 patent. See Tex. Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993) (“[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem.”); In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992) (declarations that failed to show a long-felt need and failure of others to meet that need, and which offered only opinion evidence that has little value without sufficient support, were insufficient to establish nonobviousness). Further, on this record, the “desirability of combined search and shopping functionality” (Ex. 2006 ¶ 40) was not unmet at the time of invention. Patent Owner acknowledges that e-commerce services that allowed a user to query structured databases predated the invention. E.g., PO Reply 8–9, 12, 62 (discussing “SoftBot” and “ShopBot” e-commerce services). For the foregoing reasons, we find that Patent Owner’s evidence in support of a long-felt but unmet need is entitled to little weight in support of nonobviousness.” slip op. at 29
Patent outcomesUS 8,326,924 unpatentable§ 101 eligibility§ 103 obviousnesscites Mayo · Bilski · Phillips · KSR · GrahamPatents in suitUS 8,326,924 - Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentablePTAB · Dec 17, 2014 · CBM2013-00035 · APJ Michael W Kim · CBM · Final written decision
Claims 1–25 and 29 are unpatentable: claims 2–15, 20–23, and 29 over Paul; claims 1–19, 23–25, and 29 for lack of written description. Claims 26–27 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPreamble limitingDecided for patent owner
“Accordingly, we look to the ordinary meaning of the term “subsidy”— financial assistance given by one to another.5 The ’516 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’516 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, 3:21–27 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’516 patent describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs 5 AMERICAN HERITAGE DICTIONARY 896 (3d ed. 1992) (defining “subsidy” as “1. Monetary assistance granted by a government to a person or group in support of an enterprise regarded as being in the public interest. 2. Financial assistance given by one person or government to another.”). available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, 4:41–43 (referring to Fig. 3). For these reasons, in the Decision to Institute, the Board construed “subsidy” as “financial assistance given by one to another.” Dec. 7–9. Neither party challenges this construction. Having considered whether the construction set forth in the Decision to Institute should be changed in light of evidence introduced during trial, we are not persuaded any modification is necessary. Therefore, we maintain the construction of “subsidy” as “financial assistance given by one to another.”” slip op. at 7
- BurdenNot shown unpatentable
“The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable
“The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 24
Patent outcomesUS 7,664,516 mixedClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 7,664,516
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.