- Trend Micro, Inc. v. Webroot Inc.Institution deniedPTAB · Oct 13, 2023 · IPR2023-00657 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over Rockwood and Xie.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly do not institute an inter partes review of claims 1–20 of the ’224 patent. B.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We also find it unclear which reference Petitioner relies on for the correlating. It appears that Petitioner finds the correlating in Rockwood (the reference with the attacker profile), but if Rockwood is intended to provide the correlating, it is unclear what role Xie has in the combination. We further find that Petitioner does not adequately describe how these references might be combined. Rockwood describes a system that identifies attacks at a network edge as they occur,5 while Xie’s system looks for 5 Notably, the ’224 patent presents itself as an improvement over tools that “may reside at a network edge and may receive network events concerning the network from one or more hosts or systems” because “network edge devices have no ability to establish any sort of context from within the host or system that is generating the event.” Ex. 1001, 1:43–48. Rockwood appears to describe a network edge device. See Ex. 1004, 3:16–4:4 (“Each sensor 20 is located at a network port that receives TCP/IP packets or other similar network communications from network 100.”). similar changes across different hosts within a network over multiple days. There is insufficient explanation of how Xie’s correlating technique would be beneficial in a system like that of Rockwood. Finally, to the extent Petitioner intends to rely on Xie for correlating to an originating object, we find that reliance misplaced. Xie discloses a system that looks for corresponding changes over days across multiple hosts in a network to identify patterns that might be indicative of a problem. But Xie does not describe using correlation to identify an originating object. The correlation is between similar patterns across the network, meaning that, even when Xie identifies a correlation, it is not correlating an event to its originating object, but is merely identifying multiple close vectors (reflecting corresponding file changes) within a detection window. See Ex. 1005, 38. The system then identifies the involved hosts and files, which can be used by “system administrators [to] decide whether the updates are known administrative updates that should be suppressed, or some abnormal events that should be further investigated.” Id. at 39. Although Xie’s example used the “Lion” worm, the worm was known and introduced into the network for testing purposes, not identified by Xie’s system.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“object” to the network layer or operating system of the device from which the detected event originated.4 We do not agree that the network layer or OS of the originating system could be “a first object” within the meaning of these claims. The claims require that the first object “act[] on a target,” and we fail to see how the network layer or operating system of the device from 4 Although Rockwood indicates that the system can detect the attacker’s operating system (see, e.g., Ex. 1004, 12:39–41), it does not mention any “network layer.” That term appears to come from the Nielson Declaration. See Ex. 1002 ¶ 65–69. which the detected event originated would be “acting on” the destination IP address, which is what Petitioner identifies as the “target.”” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,257,224 - PTAB · Oct 4, 2023 · IPR2023-00724 · APJ Susan L C Mitchell · IPR · Institution
The Board instituted IPR on claims 1–10, finding a reasonable likelihood that claim 1 is anticipated by WO421 and Lovshin and obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“The Examiner’s statement that NCT657 “does not teach or disclose a higher amount of 1 mg semaglutide” is incorrect and also fails to consider the teachings of the dosing ranges of WO421 and Lovshin, and the maximum dose of 1.2 mg of semaglutide taught in NCT773. For these reasons, we determine that Petitioner has sufficiently demonstrated a material error on the part of the Examiner, and we therefore decline to exercise our discretion to deny institution of inter partes review under 35 U.S.C. § 325(d).” slip op. at 15
- Other 314aInstitution denied discretionary otherDecided for petitioner
“Petition under Section 314(a), “particularly in light of the significant §325(d) concerns regarding Grounds 1 and 2—which address only claims 1–3—and in view of the substantive infirmities of Ground 3–5.” Prelim. Resp. 66–67. Patent Owner does not address Petitioner’s assertions that a trial here would most likely conclude before the parallel Delaware litigation, and Petitioner’s stipulation “that if the Board institutes, Petitioner will not pursue in the district court any instituted grounds against the originally-issued claims unless a change in law otherwise permits.” Pet. 65–66 (citing Sand Revolution II, LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 12 (PTAB June 16, 2020)). We do not agree with Patent Owner’s assertions concerning Section 325(d) as set forth above, and find nothing here that would warrant the exercise of our discretion to deny institution based on 35 U.S.C. § 314(a) to deny institution of an otherwise meritorious petition.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VI. CONCLUSION Based on the current record, we determine Petitioner has shown a reasonable likelihood that it will prevail in establishing that at least one claim of the ’462 patent is unpatentable. Accordingly, we institute review of all claims challenged on all of the grounds in the Petition. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 64, available at https://www.uspto.gov/ sites/default/files/documents/tpgnov.pdf. At this stage of the proceeding, the Board has not made a final determination as to the patentability of any challenged claim. Our view with regard to any conclusion reached in the foregoing analysis could change upon completion of the record. VII. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is hereby instituted as to claims 1–10 of the ’462 patent based on the unpatentability challenges presented in the Petition; and” slip op. at 39
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Here, we agree with the parties that the preamble of claim 1 is limiting. The preamble provides context for the requirement of claim 1 that administration of the semaglutide is “to a subject in need thereof.” See Ex. 1001, 35:42–44. The preamble, when read in the context of the entirety of claim 1, recites a limitation of administering semaglutide to a subject with type 2 diabetes. Based on the constructions of the preamble provided by the parties, it appears they agree that the preamble does not require any particular level of efficacy. We agree. The Specification of the ’462 patent makes clear that “treatment” or “treating” as used in the ’462 patent does not require any particular degree of efficacy as these terms include the “full spectrum” of treatments for a condition. See Ex. 1001, 5. For instance, the Specification of the ’462 patent provides: In one embodiment the term “treatment” or “treating” as used herein means the management and care of a patient for the purpose of combating a condition, such as a disease or a disorder. In one embodiment the term “treatment” or “treating” is intended to include the full spectrum of treatments for a given condition from which the patient is suffering, such as administration of the active compound to alleviate the symptoms or complications; to delay the progression of the disease, disorder or condition; to alleviate or relieve the symptoms and complications; and/or, to cure or eliminate the disease, disorder, or condition as well as to prevent the condition. Ex. 1001, 5:16–27.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,335,462 - Mylan Pharmaceuticals Inc. v. Novo Nordisk A/SInstitution deniedPTAB · Oct 2, 2023 · IPR2023-00723 · APJ Robert A Pollock · IPR · Institution
The Board denied institution on claims 1–6 because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence (1966). In analyzing the obviousness of a combination of prior art elements, it can be important to identify a reason that would have prompted one of skill in the art “to combine . . . known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the specific subject matter of a challenged claim is not necessary to establish obviousness. Id. Rather, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. Accordingly, a party that petitions the Board for a determination of unpatentability based on obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (internal quotations omitted). slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). In addressing the level of ordinary skill in the art, Petitioner contends that “[t]he claimed subject matter falls within the medicinal chemical and pharmacological arts and encompasses the skills, education, and expertise of a team of individuals working together to develop and formulate GLP-1 analogs to treat patients having type-2 diabetes or related conditions.” Pet. 7. The persons of ordinary skill in the art (“POSA”) making up the team would have an M.D., Pharm.D., or doctoral degree(s) in chemistry, biochemistry, pharmaceutics, pharmaceutical sciences, chemical engineering, biochemical engineering or related fields, peptides or proteins, and experience with the development, design, manufacture, formulation, or administration of therapeutic peptides or proteins, and the literature concerning protein or peptide formulation and design or diabetes treatments. Id. at 7–8 (citing Ex. 1020 ¶ 27; Ex. 1022 ¶ 27; Ex. 1024 ¶ 21; Ex. 1026 ¶¶ 25–26). 13 Patent Owner does not offer a different level of ordinary skill in the art. See generally Prelim. Resp. On the current record, and for the purposes of this decision, we accept Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’343 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] 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)). C. Claim Construction” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Moreover, “the specification ‘is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term.’” In re Abbott 13 We need not consider Petitioner’s similar alternative definitions. See id. at 8–9. v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)). The parties contend that no claim term requires construction. Pet. 13. Prelim. Resp. 15. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. v. Matal, 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))). D. Overview of Asserted References” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“On the record before us, however, Dr. Flatt’s assessment of the relative benefit one of ordinary skill in the art would have accorded the higher Ki of mono-substituted compound 3 as compared to the “much longer plasma half-life” of Dong’s bi-substituted compounds is at odds with Dong’s selection of bi-substituted compound 4 for clinical trials. See Ex. 1013, 670– 671 (Table 1). We are also skeptical of Dr. Flatt’s assertion that one of ordinary skill in the art would have recognized that Dong’s substitution of Aib for alanine at position 8 “would complement and work synergistically with liraglutide’s [other] properties,” including the fatty acylation of Lys26. See Ex. 1020 ¶ 181. In this respect, Patent Owner notes that, unlike liraglutide, Dong’s GLP-1 analogs were not acylated, whereas Knudsen 2001 counseled against N-terminal modifications in the context of acylation. Prelim. Resp. 28–30, 46 (citing Ex. 1011, 680–681). In addressing such combinations, Knudsen 2001 states, for example, that “Desamino His7 represents one of the more potent suggestions to a modification giving metabolic stability (81 ). Nevertheless, as seen when comparing 19 (687 pM) to 5 [liraglutide] (68 pM), considerably more potent compounds could be obtained by not modifying the N-terminus when a combination with acylation was desired.” Id. at 680. As such, we are unpersuaded on the record before us that one of ordinary skill in the art would have had a reasonable expectation that the Aib8 modification would be beneficial or otherwise “complement and work synergistically with” the acylated Lys26 of liraglutide or semaglutide. See Ex. 1020 ¶ 181.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,129,343 - Mylan Pharmaceuticals Inc. v. Novo Nordisk A/SInstitution deniedPTAB · Oct 2, 2023 · IPR2023-00722 · APJ Robert A Pollock · IPR · Institution
Institution was denied for claims 1, 2, 4–11, 13, and 15 because Petitioner did not show a reasonable likelihood of proving them obvious under any of the three grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In addressing the level of ordinary skill in the art, Petitioner contends that “[t]he claimed subject matter falls within the medicinal chemical and pharmacological arts and encompasses the skills, education, and expertise of a team of individuals working together to develop and formulate GLP-1 analogs to treat patients having type-2 diabetes or related conditions.” Pet. 7. The persons of ordinary skill in the art (“POSA”) making up the team would have an M.D., Pharm.D., or doctoral degree(s) in chemistry, biochemistry, pharmaceutics, pharmaceutical sciences, chemical engineering, biochemical engineering or related fields, with at least two years of experience in developing therapeutic peptides or proteins, and experience with the development, design, manufacture, formulation, or administration of therapeutic peptides or proteins, and the literature concerning protein or peptide formulation and design or diabetes treatments. ¶ 24).14 Patent Owner does not offer a different level of ordinary skill in the art. See generally Prelim. Resp. On the current record, and for the purposes of this decision, we accept Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’122 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] 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)).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties contend that no claim term requires construction. Pet. 16. Prelim. Resp. 16. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our 14 We need not consider Petitioner’s similar, but alternative, definitions. See id. at 8–9. v. Matal, 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))).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons provided below, we determine Petitioner has not satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’122 patent is unpatentable, we do not institute an inter partes review on the Grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yesor-no institution choice respecting a petition, embracing all challenges included in the petition”); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018).1” slip op. at 2
- BurdenNot shown unpatentable
“Considering the record before us, Petitioner has not shown sufficiently that one of ordinary skill in the art would be motivated to make the required modification with a reasonable expectation of success. (4) Hindsight and Reasonable Expectation of Success One of ordinary skill in the art seeking to modify liraglutide would need undertake at least four discrete steps to arrive at semaglutide—some of which entail multiple options and decision points (e.g., the selection and placement of di-AEEA, and whether to replace, or add to, the existing γ-glu linker). As discussed above, we find Petitioner’s justification for these individual steps problematic. Taken as whole, and considering the vast number of modifications suggested in the art—and indeed, the large number of amino acids suggested as cites for modification—Petitioner has failed to meet its burden of demonstrating why a skilled artisan would have been motivated to make all of the identified substitutions and no others. See e.g., Ex. 1010, 4130 (Figure 3) (identifying amino acids available for derivatization (Ser18, Gln23, Lys26, Glu27, Lys34, and Arg36) or modification (Ala8)); Ex. 1011, 680–681 (identifying desamino His7 as “one of the more potent suggestions to a modification giving metabolic stability,”); Ex. 1012 at, e.g., 9:21-19:59; 192:30–60 (Table 1), 193:35–46 (disclosing numerous GLP-1 analogs, including those with greater half-lives or potency than liraglutide, and teaching that each could be further modified, including with amino acid substitutions and/or acylation at multiple positions, numerous the fatty and amino acids); Ex. 1013, 670–671 (disclosing that GLP-1 analogs bearing modifications at both positions 8 and 35 maintain efficacy but “have much longer plasma half-life than mono-substituted compounds”).” slip op. at 43
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,536,122 - Novartis Pharmaceuticals Corporation v. Shilpa Pharma, Inc.All claims unpatentablePTAB · Sep 29, 2023 · IPR2022-00886 · APJ John G New · IPR · Final written decision
Claims 1–4 are unpatentable under §102 over Mutz; the Board did not reach the §103 Mutz and Gidwani or §102 Gidwani grounds.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons set forth below, we determine that Petitioner Novartis Pharmaceuticals Corporation (“Petitioner”) has established, by a preponderance of the evidence of record, that challenged claims 1–4 of Patent Owner Shilpa Pharma Inc.’s (“Patent Owner”) U.S. Patent No. 9,266,816 B2 (Ex. 1001, the “’816 patent”) are unpatentable. Additionally, because we find that Petitioner has established that claims 1–4 are unpatentable, we dismiss as moot Petitioner’s Motion to Exclude Evidence (Paper 59). Furthermore, for the reasons we set forth below, Patent Owner’s Motion to Exclude Evidence (Paper 48) is dismissed-in-part as moot and denied-in-part. Both parties’ unopposed Motions to Seal are granted. See Papers 31, 33, 39, 40, 42, 46, 52, 56, 57, 60, 62, 68. Finally we deny Petitioner’s Motion for Sanctions against Patent Owner. (Paper 43).” slip op. at 2
- ExcludeMotion to exclude, grantedMixed
“§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons set forth below, we determine that Petitioner Novartis Pharmaceuticals Corporation (“Petitioner”) has established, by a preponderance of the evidence of record, that challenged claims 1–4 of Patent Owner Shilpa Pharma Inc.’s (“Patent Owner”) U.S. Patent No. 9,266,816 B2 (Ex. 1001, the “’816 patent”) are unpatentable. Additionally, because we find that Petitioner has established that claims 1–4 are unpatentable, we dismiss as moot Petitioner’s Motion to Exclude Evidence (Paper 59). Furthermore, for the reasons we set forth below, Patent Owner’s Motion to Exclude Evidence (Paper 48) is dismissed-in-part as moot and denied-in-part. Both parties’ unopposed Motions to Seal are granted. See Papers 31, 33, 39, 40, 42, 46, 52, 56, 57, 60, 62, 68. Finally we deny Petitioner’s Motion for Sanctions against Patent Owner. (Paper 43).” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“claims, Petitioner’s request that we do so as a sanction against Patent Owner is denied. Furthermore, having reviewed the arguments and evidence presented by Petitioner and Patent Owner, we conclude that the evidence is not sufficiently conclusive to warrant the additional imposition of financial sanctions. We consequently deny Petitioner’ Motion for Sanctions.” slip op. at 82
Patent outcomesUS 9,266,816 unpatentable§ 102 anticipationcites PhillipsPatents in suitUS 9,266,816 - PTAB · Sep 22, 2023 · IPR2023-00481 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 17, 19, 20, and 22–27 because Hopewell showed a reasonable likelihood that the claims would have been obvious over Bodor and Stelmasiak.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Analysis: Claim 17 Based on the present record, Petitioner persuades us that it is reasonably likely to prevail in establishing that claim 17 would have been obvious over Bodor and Stelmasiak. We agree with Petitioner’s showing that Bodor teaches or suggests a method for treating MS, including RRMS, by orally administering cladribine tablets over a two-month induction period at a total dose of between 100 mg to 140 mg (equivalent to 1.4–2.0 mg/kg for the average patient) and, thus, satisfies claim 17’s preamble15 and step (i). See, e.g., Pet. 46–51. Bodor also expressly teaches such an” slip op. at 32
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Because we agree that Bodor and Stelmasiak were presented previously to the Office, we turn to part two of the Advanced Bionics framework—whether there was a material error by the Office.” slip op. at 54
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artInstituted
“reasonably likely to prevail in establishing that claim 17 would have been obvious over Bodor and Stelmasiak. We agree with Petitioner’s showing that Bodor teaches or suggests a method for treating MS, including RRMS, by orally administering cladribine tablets over a two-month induction period at a total dose of between 100 mg to 140 mg (equivalent to 1.4–2.0 mg/kg for the average patient) and, thus, satisfies claim 17’s preamble15 and step (i). See, e.g., Pet. 46–51. Bodor also expressly teaches such an” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“maintenance period” or a secondary cladribine-free period, we find it logical, credible, and consistent with Dr. Miller’s testimony, that a POSA would have understood Bodor to suggest retreatment and that a POSA would know that retreatment is often needed given the chronic, incurable nature of MS. See, e.g., Ex. 1002 ¶¶ 86–87, 100–102 (testifying that a POSA would have thought to readminister cladribine according to Bodor’s initial treatment regimen, disclosed as suitable for MS treatment, and optimize if needed). Moreover, Petitioner provides evidence-backed reasoning supporting why it would have been routine and obvious to “tailor” the dosage, including by starting with a lower dose and “step-wise” increase it until a desired therapeutic effect is achieved. See, e.g., Ex. 1022, 24:1–9;16 Ex. 1002 ¶ 93. The POSA would have also been aware, from at least Stelmasiak, that it’s possible to give lower amounts of cladribine in a maintenance phase versus an induction phase, keeping lymphocyte counts in a suppressed state, and providing therapeutic benefits even over extended periods where no cladribine is administered. Ex. 1013, 5–7 (describing a decrease in relapse rate and EDSS improvements over a twenty-four month study period). That, combined with Bodor’s teachings and an expectation that a lower dose and intermittent cladribine-free periods would help manage 16 See also Ex. 1022, 26:2–8 (teaching that dosages are given with concomitant, continuous clinical evaluations by a skilled practitioner to “determine subsequent therapy” and “evaluating whether to increase, reduce or continue a particular treatment dose”). ¶¶ 50–52, 91, 95, 103. Based on Petitioner’s evidence and reasoning, we find it reasonably likely that a POSA would have found it obvious to modify Bodor’s method to arrive at steps (iii) and (iv) of claim 17. We also find that the preliminary record, on balance, supports Petitioner’s contention that the POSA would have reasonably expected success in modifying the art to arrive at the subject matter of claim 17. Bodor discloses a method for treating MS with administration of oral cladribine and provides further guidance for adjusting the dosage or duration as needed to produce a desired therapeutic result. See, e.g., Ex. 1022, 22:18–22, 23:15–20, 24:1–9. Stelmasiak further evidences efficacy in treating RRMS with cladribine administration, including in oral and parenteral forms. Ex. 1013, 7. And neither Bodor nor Stelmasiak stands alone; as pointed out by Petitioner and Dr. Miller, several studies predating the ’903 patent describe the use of cladribine for treating MS, including RRMS, and such studies inform the POSA’s background knowledge—a necessary consideration in any obviousness analysis. See Pet. 19–21, 44; Ex. 1002 ¶¶ 35–49, 115; Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“[T]he knowledge of such an artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious.”). Indeed, many of these studies are incorporated by reference into Bodor. Ex. 1022, 22:27–23:6 (incorporating, e.g., Romine (Ex. 1031) and Rice (Ex. 1018), after teaching that “various dosage amounts and dosing regimens have been reported in the literature for use in the treatment of multiple sclerosis”). slip op. at 33
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,377,903 - PTAB · Sep 22, 2023 · IPR2023-00480 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 36, 38, 39, and 41–46, finding a reasonable likelihood that at least one claim would have been obvious over Bodor and Stelmasiak.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Analysis: Claim 36 Based on the present record, Petitioner persuades us that it is reasonably likely to prevail in establishing that claim 36 would have been obvious over Bodor and Stelmasiak. We agree with Petitioner’s showing that Bodor teaches a method for treating MS by orally administering cladribine tablets over a two-month induction period at a total dose of between 100 mg to 140 mg (equivalent to 1.4–2.0 mg/kg for the average patient) and, thus, satisfies claim 36’s preamble14 and step (i). See, e.g., Pet. 45–49. Bodor also expressly teaches such an induction period is followed by a ten-month cladribine-free period—meeting claim 36’s step (ii) (reciting a cladribine-free period of between about 8–10 months), as argued by Petitioner. Id. at 49–50; Ex. 1022, 23:15–20. Although Bodor does not explicitly describe a subsequent “maintenance period” or a secondary cladribine-free period, we find it logical, credible, and consistent with Dr. Miller’s testimony, that a POSA would have understood Bodor to suggest retreatment and that a POSA would know that retreatment is often needed given the chronic, incurable nature of MS. See, e.g., Ex. 1002 ¶¶ 86–87, 100–102 (testifying that a POSA would have thought to readminister cladribine according to Bodor’s initial treatment regimen, disclosed as suitable for MS treatment, and optimize if 13 This paragraph is a high-level summary of Patent Owner’s argument (Prelim. Resp. 1–3, 51); we discuss Patent Owner’s argument in more detail in our analysis below but summarize here to reduce repetition. 14 We need not determine whether the preamble is limiting because, at this stage, there is no dispute that it is taught or suggested in the asserted art. supporting why it would have been routine and obvious to “tailor” the dosage, including by starting with a lower dose and “step-wise” increase it until a desired therapeutic effect is achieved. See, e.g., Ex. 1022, 24:1–9;15 Ex. 1002 ¶ 93. The POSA would have also been aware, from at least Stelmasiak, that it’s possible to give lower amounts of cladribine in a maintenance phase versus an induction phase, keeping lymphocyte counts in a suppressed state, and providing therapeutic benefits even over extended periods where no cladribine is administered. Ex. 1013, 5–7 (describing a decrease in relapse rate and EDSS improvements over a twenty-four month study period). That, combined with Bodor’s teachings and an expectation that a lower dose and intermittent cladribine-free periods would help manage potential side effects, supports Petitioner’s challenge. See, e.g., Ex. 1002 ¶¶ 50–52, 91, 95, 103. Based on Petitioner’s evidence and reasoning, we find it reasonably likely that a POSA would have found it obvious to modify Bodor’s method to arrive at steps (iii) and (iv) of claim 36. We also find that the preliminary record, on balance, supports Petitioner’s contention that the POSA would have reasonably expected success in modifying the art to arrive at the subject matter of claim 36. Bodor discloses a method for treating MS with administration of oral cladribine and provides further guidance for adjusting the dosage or duration as needed to produce a desired therapeutic result. See, e.g., Ex. 1022, 22:18–22, 23:15–20, 24:1–9. Stelmasiak further evidences efficacy in 15 See also Ex. 1022, 26:2–8 (teaching that dosages are given with concomitant, continuous clinical evaluations by a skilled practitioner to “determine subsequent therapy” and “evaluating whether to increase, reduce or continue a particular treatment dose”). forms. Ex. 1013, 7. And neither Bodor nor Stelmasiak stands alone; as pointed out by Petitioner and Dr. Miller, several studies predating the ’947 patent describe the use of cladribine for treating MS, and such studies inform the POSA’s background knowledge—a necessary consideration in any obviousness analysis. See Pet. 19–21, 44; Ex. 1002 ¶¶ 35–49, 115; Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“[T]he knowledge of such an artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious.”). Indeed, many of these studies are incorporated by reference into Bodor. Ex. 1022, 22:27–23:6 (incorporating, e.g., Romine (Ex. 1031) and Rice (Ex. 1018), after teaching that “various dosage amounts and dosing regimens have been reported in the literature for use in the treatment of multiple sclerosis”).” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“interpreted to resolve Petitioner’s challenge. Patent Owner’s interpretation is broader and encompasses Petitioner’s interpretation. Nevertheless, to address the arguments made and give guidance for trial, we determine that the weight of the evidence on this preliminary record supports Patent Owner’s interpretation, and we conclude that the dosing of cladribine given during the “maintenance period” can be same as or lower than the total dose given during the induction period. We explain below. First, the language of the claims supports Patent Owner’s interpretation. Claim 36 expressly recites that the total dose reached at the end of the induction period (step (i)) “is from about 1.7 mg/kg to about 3.5 mg/kg.” See supra Section II(D). Claim 36, step (iii), recites that the total dose of cladribine reached at the end of the maintenance period “is about 1.7 mg/kg.” The plain language of claim 36, thus, indicates that the cladribine dosing given during the induction period and the maintenance period can be the same—each “about 1.7 mg/kg.” Claim 36 also encompasses regimens where the maintenance period dosing (e.g., 1.7 mg/kg) is lower compared to the induction period dosing (e.g., 3.5 mg/kg). But the plain language of the claims does not require a lower total dose in the maintenance period. Petitioner’s construction narrows the claims and, in effect, asks us to rewrite the lower bound of the range recited in claim 36’s induction period step to be some value higher than “about 1.7 mg/kg.” We decline to do so.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“reasonably likely to prevail in establishing that claim 36 would have been obvious over Bodor and Stelmasiak. We agree with Petitioner’s showing that Bodor teaches a method for treating MS by orally administering cladribine tablets over a two-month induction period at a total dose of between 100 mg to 140 mg (equivalent to 1.4–2.0 mg/kg for the average patient) and, thus, satisfies claim 36’s preamble14 and step (i). See, e.g., Pet. 45–49. Bodor also expressly teaches such an induction period is followed by a ten-month cladribine-free period—meeting claim 36’s step (ii) (reciting a cladribine-free period of between about 8–10 months), as argued by Petitioner. Id. at 49–50; Ex. 1022, 23:15–20. Although Bodor does not explicitly describe a subsequent “maintenance period” or a secondary cladribine-free period, we find it logical, credible, and consistent with Dr. Miller’s testimony, that a POSA would have understood Bodor to suggest retreatment and that a POSA would know that retreatment is often needed given the chronic, incurable nature of MS. See, e.g., Ex. 1002 ¶¶ 86–87, 100–102 (testifying that a POSA would have thought to readminister cladribine according to Bodor’s initial treatment regimen, disclosed as suitable for MS treatment, and optimize if 13 This paragraph is a high-level summary of Patent Owner’s argument (Prelim. Resp. 1–3, 51); we discuss Patent Owner’s argument in more detail in our analysis below but summarize here to reduce repetition. 14 We need not determine whether the preamble is limiting because, at this stage, there is no dispute that it is taught or suggested in the asserted art. supporting why it would have been routine and obvious to “tailor” the dosage, including by starting with a lower dose and “step-wise” increase it until a desired therapeutic effect is achieved. See, e.g., Ex. 1022, 24:1–9;15 Ex. 1002 ¶ 93. The POSA would have also been aware, from at least Stelmasiak, that it’s possible to give lower amounts of cladribine in a maintenance phase versus an induction phase, keeping lymphocyte counts in a suppressed state, and providing therapeutic benefits even over extended periods where no cladribine is administered. Ex. 1013, 5–7 (describing a decrease in relapse rate and EDSS improvements over a twenty-four month study period). That, combined with Bodor’s teachings and an expectation that a lower dose and intermittent cladribine-free periods would help manage potential side effects, supports Petitioner’s challenge. See, e.g., Ex. 1002 ¶¶ 50–52, 91, 95, 103. Based on Petitioner’s evidence and reasoning, we find it reasonably likely that a POSA would have found it obvious to modify Bodor’s method to arrive at steps (iii) and (iv) of claim 36. We also find that the preliminary record, on balance, supports Petitioner’s contention that the POSA would have reasonably expected success in modifying the art to arrive at the subject matter of claim 36. Bodor discloses a method for treating MS with administration of oral cladribine and provides further guidance for adjusting the dosage or duration as needed to produce a desired therapeutic result. See, e.g., Ex. 1022, 22:18–22, 23:15–20, 24:1–9. Stelmasiak further evidences efficacy in 15 See also Ex. 1022, 26:2–8 (teaching that dosages are given with concomitant, continuous clinical evaluations by a skilled practitioner to “determine subsequent therapy” and “evaluating whether to increase, reduce or continue a particular treatment dose”). forms. Ex. 1013, 7. And neither Bodor nor Stelmasiak stands alone; as pointed out by Petitioner and Dr. Miller, several studies predating the ’947 patent describe the use of cladribine for treating MS, and such studies inform the POSA’s background knowledge—a necessary consideration in any obviousness analysis. See Pet. 19–21, 44; Ex. 1002 ¶¶ 35–49, 115; Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“[T]he knowledge of such an artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious.”). Indeed, many of these studies are incorporated by reference into Bodor. Ex. 1022, 22:27–23:6 (incorporating, e.g., Romine (Ex. 1031) and Rice (Ex. 1018), after teaching that “various dosage amounts and dosing regimens have been reported in the literature for use in the treatment of multiple sclerosis”).” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“weight-based dosing. Prelim. Resp. 29–30. According to Patent Owner, Stelmasiak remarks on there being “no correlation” between the magnitude of lymphocyte reduction and the drug dose expressed per kg of body weight; similarly, Patent Owner cites Stelmasiak’s disclosure that “there was no indication that a ‘good response’ is related to the actual cladribine dose per body weight.” Id. (citing Ex. 1013, 6–7) (emphasis omitted). We do not agree that this rises to a teaching away. These cited disclosures relate to Stelmasiak’s attempt to explain the observed variance in lymphocyte counts among its patients, and to identify “any factor” that might have differentiated between those patients that were responders versus the non-responders. Ex. 1013, 6–7. Stelmasiak was “unable” to identify such a factor. But Stelmasiak nowhere teaches that expressing dosages in mg/kg and administering those dosages would result in a less effective or ineffective MS treatment. To the contrary, at most, Stelmasiak suggests that doing so would not have changed the results for its study and patient group. We also note that other technical literature of record describes cladribine studies where dosages are expressed in mg/kg form and recognizes a dose-dependent effect, including on the level of lymphocyte reduction. See, e.g., Ex. 1002 ¶¶ 91–92 (discussing Rice (Ex. 1018) (noting dose-dependent reduction in lymphocyte counts and lesion volume) and Selby (Ex. 1047)). Patent Owner’s “teaching away” argument is also weakened by Bodor, which, while teaching a regimen based on an alleged “flat” dosing (10 mg/day), defines “effective amount[s]” for MS treatment by referencing dosages expressed on a mg/kg basis—“from about 0.04 to about 1.0 mg/kg/day.” Ex. 1022, 22:17–22, 23:15–20. Whatever distinction Patent Owner seeks to erect between so-called “flat” and “weight-based” dosing is differentiator.” slip op. at 43
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,713,947 - Google LLC / Youtube, LLC v. Robocast, Inc.Institution deniedPTAB · Sep 18, 2023 · IPR2023-00593 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–62 were unpatentable under the asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 39; see also id. at 45–46 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt.” slip op. at 26
- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“E. Real Parties in Interest Petitioner identifies Google LLC and YouTube, LLC as real parties in interest. Pet. 1. Patent Owner identifies Robocast, Inc., as a real party in interest. Paper 5, 2.” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“Petitioner supports its proposal with testimony by Dr. Schmandt. See Ex. 1102 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Dr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14
- Prior constructionPrior construction adoptedDecided for patent owner
“We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1123, 16–17; Prelim. Resp. 10–12. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 22 and 46, as well as dependent claim 45, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1123, 2–13; Ex. 2107, 5; Prelim. Resp. 9. For purposes of this Decision, we accord all other terms recited in the challenged claims their plain and ordinary meaning. See Ex. 1123, 17–20, 26–29 (court adopting plain and ordinary meaning of “plurality of accessible resources,” “content,” “without requiring user input,” “in accordance with said show structure,” “providing,” and “search results”); see Prelim. Resp. 8 (Patent Owner advocating that “any additional claim language be[] accorded its plain and ordinary meaning”).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,965,932 - Google LLC / Youtube, LLC v. Robocast, Inc.Institution deniedPTAB · Sep 18, 2023 · IPR2023-00592 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 and 63–67 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals. Second, we have also considered Mr. Schmandt’s testimony, and he provides no meaningful additional information to support reading Shimizu as Petitioner advocates. See Ex. 1002 ¶¶ 119, 121–128. In testimony not cited by Petitioner, Mr. Schmandt admits that “Shimizu does not appear to disclose further details about how duration information is specified or stored within its system, or whether such intervals between nodes can be changed.” Id. ¶ 120. This testimony undermines Petitioner’s position that Shimizu’s hypertext nodes include duration information. Mr. Schmandt elaborates in testimony that Petitioner cites, but does not explain: In a real-world implementation of the proposed combination, for example, the display time could have been specified within the node information structure 9 of Shimizu. I note that node information structure 9 in Shimizu also contains display procedure slot 62 (Fig. 6), which points to “a procedure program function used when the node in question is to be displayed on the screen.” (Shimizu, 6:52-55.) Shimizu thus contemplates that node information structure 9 may contain information about how the node will be displayed to the user, and as such, it would have been obvious that durational information could also have been included as part of node information structure 9. This durational amount could have been a default display time specified by the user, or a display time specific to the node in question, as explained above. * * * Shimizu itself clearly contemplates the ability to customize the display of nodes, and as explained above, node information structure 9 (Fig. 6) includes display procedure slot 62 which points to a program function or procedure used to display the node content, thus making clear that node information structure 9 can hold information about how the node will be displayed. Id. ¶¶ 124, 128. Mr. Schmandt’s testimony that Shimizu would need to be modified for its hypertext nodes to include duration information is strong evidence that Shimizu does not disclose hypertext nodes that include duration information. This testimony (from ¶ 124) also suggests that Shimizu’s predetermined intervals and times could be included in the procedure program function to which display procedure slot 62 points, rather than in the hypertext node, thereby providing additional evidence Shimizu’s predetermined intervals and times are included in structure other than hypertext nodes. See also Ex. 1003, 6:52–55.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web.” Pet. 6–7. Petitioner adds that “[s]uch a person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 7 (citing Ex. 1002 ¶¶ 13–17). Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. Petitioner supports its proposal with testimony by Mr. Schmandt. See Ex. 1002 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Mr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his “analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14
- Prior constructionPrior construction adoptedDecided for patent owner
“We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1023, 16–17; Prelim. Resp. 10–12. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 1 and 63, as well as in certain dependent claims, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1023, 2–13; Ex. 2007, 5; Prelim. Resp. 9. Third, we construe “interactively variable duration information,” which is recited in each of challenged claims 1, 11, 12, and 64, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1023, 22–23; Prelim. Resp. 12–15.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals.” slip op. at 27
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,965,932 - Google LLC / Youtube, LLC v. Robocast, Inc.Institution deniedPTAB · Sep 18, 2023 · IPR2023-00591 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 22–36 and 39–45 because Petitioner did not show a reasonable likelihood that the asserted obviousness grounds would succeed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42–43; see also id. at 48 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). We agree with Patent Owner. In its Summary of the Invention, Shimizu describes “mak[ing] it possible to build with ease an application program illustratively causing the display of the nodes to be switched in a specific order and at predetermined intervals.” Ex. 1103, with the predetermined intervals being included in the application program, rather than the hypertext nodes. Similarly, in its Description of the Related Art, Shimizu describes “mak[ing] it possible to create an application program that may be displayed on the screen by reading, from primary or secondary storage and within a predetermined time, the node information held by the nodes that are linked sequentially starting from a particular node.” Id. at 3:12–16 (emphasis added). This passage, too, is better read as disclosing that the predetermined times are included in the application program, rather than the hypertext nodes. Neither of Petitioner’s cited passages states that the hypertext nodes include predetermined intervals/times.” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Petitioner filed a paper explaining its basis for filing multiple petitions challenging the ’451 patent and arguing that we should not exercise discretion to deny one of the petitions pursuant to the guidance in the Consolidated Trial Practice Guide (Nov. 2019) at 59 (“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.”). Paper 3. Patent Owner filed an objection to Petitioner’s filing of multiple petitions, arguing that we should deny one of them pursuant to the Trial Practice Guide’s guidance. Paper 8. Because we deny the Petition on the merits, we do not reach whether multiple petitions are appropriate to challenge the ’451 patent.” slip op. at 3
- Parallel petitionsNot reached
“1 Petitioner filed a paper explaining its basis for filing multiple petitions challenging the ’451 patent and arguing that we should not exercise discretion to deny one of the petitions pursuant to the guidance in the Consolidated Trial Practice Guide (Nov. 2019) at 59 (“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.”). Paper 3. Patent Owner filed an objection to Petitioner’s filing of multiple petitions, arguing that we should deny one of them pursuant to the Trial Practice Guide’s guidance. Paper 8. Because we deny the Petition on the merits, we do not reach whether multiple petitions are appropriate to challenge the ’451 patent.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web,” and “could also have qualified with more formal education and less technical experience, or vice versa.” Pet. 5 (citing Ex. 1102 ¶¶ 13–18). Patent Owner, without citing evidence, contends that a skilled artisan “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems”; “would also have approximately 3–5 years of professional experience with these topics”; and “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Prelim. Resp. 5–6. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art, and which is supported by expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). However, we do not see a substantial difference between the parties’ proposals. Thus, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,155,451
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.