• Fitbit, Inc. v. Aliphcom, Inc. D/B/A JawboneAll claims unpatentable
  PTAB · Aug 15, 2017 · IPR2016-00607 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 16–19, 23, and 26 are unpatentable as anticipated by Lo; claims 20–22, 24, and 25 are unpatentable as obvious over the specified combinations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The broadest reasonable interpretation standard is intended to address just such situations, to encourage patentees to resolve ambiguities in claim language and encourage precision in claim drafting. See Cuozzo, 136 S. Ct. at 2145 (“use of the broadest reasonable construction standard . . . encourages the applicant to draft narrowly. This helps ensure precision while avoiding overly broad claims.”). Therefore, when faced with a claim term which has multiple reasonable interpretations in light of the specification, we must choose the broadest that is still reasonable. Here, that is the interpretation that encompasses a molding formed substantially across a side of the inner molding. We note, however, that we do not read the term as broadly as Fitbit implies, such that “substantially” would permit a small amount of coverage of that single side. We agree with Jawbone that this term of degree was intended to capture insubstantial differences in coverage, such as that depicted in Figure 9 (wherein the outer molding does not cover plug 904 and button 906). Accordingly, an outer molding that is formed substantially across a single side of an inner molding, would “cover all or 7 In our Decision on Institution, we phrased this interpretation as “on top of,” but did not intend to introduce a directional component (such as “above”) to the claim term that is unsupported by the ’811 patent. As Dr. Young understood, “the ‘top’ of the inner molding is the surface of the inner molding, not just the side that happens to point up as the ‘top’ when viewed in a cross-sectional image.” Ex. 2001 ¶ 47. To remove any potential confusion, we have rephrased the interpretation as “across a side of.” substantially all” of that inner molding within the broadest reasonable interpretation in light of the ’811 patent specification.” slip op. at 22

  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner

    “The problem with Dr. Young’s testimony—and, in turn, Jawbone’s position—is that it rests on a flawed premise. Contrary to Dr. Young’s statements, the ’811 patent does not state conclusively that the purpose of the outer molding recited in claim 16 is protection of the inner molding. The specification states that the outer molding “may also be configured to completely enclose or encase an underlying item in order to protect the inner molding, the protective layer, and any elements from damage.” Ex. 1001, 7:29–32 (emphasis added). But the specification also states that the outer molding may be used to provide “surface ornamentation” to an object. Id. at 6:6–8. Furthermore, the specification acknowledges that “protective” is used in two contexts in the patent: providing protection to the structure to which it is applied, but also “a protective property may be a characteristic of a coating that, when applied, protects a wearer or users” (for example, an anti-bacterial property). Id. at 12:36–51 (emphasis added). Neither Jawbone nor Dr. Young address why, if the purpose of the outer molding is to protect a user, it would be necessary to fully enclose the inner moldings instead of merely covering the surface that is to be in contact with a user. Dr. Young also cites, as evidence of the protective nature of the outer molding, several dependent claims which recite that the outer molding has protective features such as “protect[ing] against ultraviolet radiation” (claim 4) or a “waterproof seal” (claim 6). Ex. 2001 ¶ 51. The flaw in this argument is that these dependent claims depend from claim 1, not claim 16. While they may signal that the outer molding of claim 1 has a protective purpose, they are not relevant to claim 16. By contrast, claim 16 recites that at least one of the inner moldings has a protective property, and the dependent claims further specify protective properties for that inner molding, such as waterproofing, oleophobicity (fingerprint resistance), or antibacterial. Dr. Young hypothesized that there might be a reason to make an inner molding antibacterial, even if it is completely enclosed (Ex. 1029 61:4–13), but was unable to provide a single example of a product with a fully encased, antibacterial inner molding (id. at 62:24–63:7). The fact that claim 16’s inner molding has a protective property, therefore, diminishes the credibility of Dr. Young’s testimony that the outer molding must fully encase and protect the inner molding. In sum, we disagree with Dr. Young’s conclusion that the outer molding of claim 16 must have a protective property, and that in that context the only reasonable construction of “covers all or substantially all” is a molding that encases or encloses the inner molding.5 Jawbone’s remaining” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Reviewing Fitbit’s assertions regarding the written description and figures of Lo, we find that the reference discloses in a single embodiment all limitations of claim 16. Jawbone does not challenge the Petition as to the first two steps of claim 16, and we find that Lo discloses both applying a protective material substantially over one or more of a plurality of elements, and forming a protective inner molding substantially over that protective material. Furthermore, for the reasons discussed above, we find that Lo’s transmission medium is an outer molding that covers all or substantially all of the inner molding. With respect to dependent claims 17–19, 23, and 26, we find that Lo discloses the additional elements of these claims as set forth by Fitbit in its Petition. Pet. 24–28. For example, claim 18 requires that the protective property of the inner molding is waterproofing, and claim 19 recites water-resistance. We find that Lo discloses that its plastic housing provides water resistant properties. Ex. 1003, Abstract, ¶ 121. Jawbone does not contest any of these additional claim limitations or argue separately the patentability of the dependent claims apart from independent claim 16. Instead, Jawbone relies on its argument that there is no outer molding as recited in claim 16 (PO Resp. 23), and that Fitbit improperly combined embodiments (id. at 26), arguments we discussed and rejected above. For these reasons, and based on a review of the complete record, we find claims 16–19, 23, and 26 are anticipated by Lo.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Fitbit responds by arguing that, even if Lo requires ultrasonic transmission, a person of skill in the art “would have naturally selected a coating that does not render the Lo heart monitor useless.” Pet. Reply 23. While this is true, it also admits the premise of Jawbone’s argument. In other words, if the coatings of Huang render Lo’s monitor useless, a person of ordinary skill would not have combined Huang with Lo. Nevertheless, we do not agree with Jawbone’s characterization of Lo as describing ultrasonic transmission of the monitor as “critical.” The portion of Lo cited by Jawbone describes prior art devices, and states that “[p]rior ultrasonic monitors require applying water or an aqueous gel between the transducer module and the living subject to eliminate any air gap.” Ex. 1003 ¶ 17 (emphasis added). There is no statement that the plastic housing of the module—the “inner molding” of claim 16 that must have the protective properties supplied by Huang—must be ultrasonically transmissive. Indeed, it is the transmission medium of Lo that is explicitly described as having ultrasonic transmission properties, and Lo’s transmission medium addresses this deficiency in prior art devices. Id. at 58–59. Lo does not state whether its plastic housing is suitable for ultrasonic transmission, and there is no basis for concluding that the addition of Huang’s coatings—whether or not they disrupt ultrasonic transmission— would result in a non-functional device. We find that Fitbit, relying on the testimony of Dr. Cairns, has articulated a reason with rational underpinning for combining the coatings of Huang with the device of Lo. Pet. 29–30 (stating that it would have been obvious to “utilize the well understood application of hydrophobic materials, such as in Huang, to have imparted protective properties to the plastic housing in Lo”); Ex. 1002 ¶¶ 64–66. This combination would have been within the level of ordinary skill in the art, on which the experts largely agree.9 Jawbone’s arguments do not convince us otherwise. Furthermore, we find that the combination of Lo and Huang in this manner teaches all limitations of claims 20–22 for the reasons given by Fitbit, assertions that” slip op. at 30

  Patent outcomesUS 8,529,811 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,529,811
• Guangdong Alison Hi-Tech Co., Ltd. v. Aspen Aerogels, Inc.Institution denied
  PTAB · Jun 8, 2017 · IPR2017-00413 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–3, 5–7, 9, or 49 unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

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

    “model of glass wool, Corning model 3950, is resilient. Ex. 1003 ¶¶ 95–101 (testing a sample of Corning model 3950 for compressibility and resilience). This does not support Dr. Scherer’s or Petitioner’s conclusion, however, that all types of glass wool are resilient. Nor does it, at least on this record, support the conclusion that the glass wool disclosed in Ramamurthi is resilient. Ramamurthi’s glass wool is described as “pyrex glass wool (Corning SiO2 fibers, 8 μm diameter).” Ex. 1004, 7:20–21. Much of this description matches the description of Corning model 3950. Ex. 1018, 1 (describing Corning model 3950 as “Glass Wool, PYREX” and having a “[f]iber diameter” of “0.008 mm”). But Ramamurthi describes its glass as constituting individual fibers laid down “in a thin layer,” which does not match the product tested by Dr. Scherer. Ex. 1004, 7:34–36. The fact that it would be possible to rearrange Ramamurthi’s glass wool fibers into a configuration or arrangement similar to that represented by Corning model 3950, which is resilient, is not sufficient to demonstrate the inherency of such resiliency in the material disclosed by Ramamurthi. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).” slip op. at 7

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

    “obvious to a person of ordinary skill in the art given the teachings of Sonoda and either Ramamurthi or Ryu. Pet. 53–55. Claim 7 depends from claim 1. Ex. 1001, 14:63–64. Accordingly, claim 7 incorporates all the limitations of claim 1. 37 C.F.R. § 1.75(c). Petitioner’s obviousness argument rests on the assertion that “Sonoda discloses all the limitations of claim 1.” Pet. 53. As discussed above, however, we determine that Petitioner has not shown sufficiently that Sonoda discloses the “lofty fibrous batting sheet” that is recited in claim 1. Petitioner does not argue that Ramamurthi or Ryu remedies this deficiency. Even if Petitioner had so argued, as discussed above, we determine that Petitioner has not shown sufficiently that either Ramamurthi or Ryu discloses the “lofty fibrous batting sheet” that is recited in claim 1. Because Petitioner’s argument for the obviousness of claim 7 relies on Sonoda anticipating claim 1, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing the obviousness of claim 7 over the combination of Sonoda and either Ramamurthi or Ryu.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “the determination that Ramamurthi’s glass wool inherently possesses both bulk and resilience. First, Dr. Scherer testifies that all glass wool shows these properties. Ex. 1003 ¶ 94 (“Glass wool (and materials like it) are compressible and resilient enough to re-expand back to their original shape. Glass wool may also have low thermal conductivity and low density, qualities that contribute to the ‘loftiness’ of the fibrous material.”). Dr. Scherer does not provide an explanation supporting this conclusion for all types of glass wool or all “materials like it.” Id. Accordingly, this testimony “is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,078,359
• Bubbletight, LLC v. Baker Hughes Oilfield Operations, Inc.Institution denied
  PTAB · May 15, 2017 · IPR2017-00326 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 7, 8, 10, 13–16, and 24–27 were unpatentable over Baker, Baker and Xie, or Baker and Toth.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “III. CONCLUSION Based on the arguments in the Petition and the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood that it would prevail on its challenge that claims 1–3, 7, 8, 10, 13–16, and 24–27 of the ’978 patent are unpatentable. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied.” slip op. at 22

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “[t]he use of the term substantially-continuous, cellular nanomatrix is intended to describe the extensive, regular, continuous and interconnected nature of the distribution of nanomatrix material 220 within powder compact 200. As used herein, “substantially-continuous” describes the extension of the nanomatrix material throughout powder compact 200 such that it extends between and envelopes substantially all of the dispersed particles 214. Substantially-continuous is used to indicate that complete continuity and regular order of the nanomatrix around each dispersed particle 214 is not required.” slip op. at 9

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

    “with one another. One embodiment discloses using a powder substrate to form a matrix between the dispersed particulates (see, e.g., Ex. 1006, 9:3– 19), and the other discloses forging, consolidating, or sintering the dispersed particulates to form a composite without the use of a powder substrate (id. at 14:16–24). Accordingly, Petitioner’s anticipation argument with respect to Baker requires combining disclosures from separate embodiments. This is not a permissible way to argue anticipation. “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed” and, therefore, “cannot anticipate under 35 U.S.C. § 102.” Id. Instead, Petitioner appears to be arguing that a person of ordinary skill in the art would somehow combine the separate disclosures in Baker’s two embodiments, which cannot support a case of anticipation. If Petitioner is arguing, however, that Baker’s alternate, powderless embodiment would inherently produce a substantially-continuous, cellular nanomatrix, that argument also fails. Inherent anticipation applies when the missing element is necessarily present in the recited reference. See In re Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (“A reference may anticipate inherently if a claim limitation that is not expressly disclosed ‘is necessarily present, or inherent, in the single anticipating reference.’” (quoting Verizon Servs. Corp. v. Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010))). Thus, based on our construction of “substantially-continuous, cellular nanomatrix” set forth above, Petitioner must show that a nanoscale-thick network of generally repeating, interconnected compartments or cells that encompass and interconnect the dispersed particles by extending between and enveloping substantially all of the dispersed particles is necessarily present in Baker. Neither Petitioner nor Dr. Hartwig sufficiently demonstrates that Baker’s powderless, alternate embodiment would invariably include “a substantially-continuous, cellular nanomatrix” as required by claims 1 and 25 of the ’978 patent.” slip op. at 17

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

    “If Petitioner is arguing, however, that Baker’s alternate, powderless embodiment would inherently produce a substantially-continuous, cellular nanomatrix, that argument also fails. Inherent anticipation applies when the missing element is necessarily present in the recited reference. See In re Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (“A reference may anticipate inherently if a claim limitation that is not expressly disclosed ‘is necessarily present, or inherent, in the single anticipating reference.’” (quoting Verizon Servs. Corp. v. Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010))). Thus, based on our construction of “substantially-continuous, cellular nanomatrix” set forth above, Petitioner must show that a nanoscale-thick network of generally repeating, interconnected compartments or cells that encompass and interconnect the dispersed particles by extending between and enveloping substantially all of the dispersed particles is necessarily present in Baker. Neither Petitioner nor Dr. Hartwig sufficiently demonstrates that Baker’s powderless, alternate embodiment would invariably include “a substantially-continuous, cellular nanomatrix” as required by claims 1 and 25 of the ’978 patent.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,101,978
• Old Republic General Insurance Group, Inc. / Old Republic Insurance Company et al. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Apr 12, 2017 · IPR2015-01992 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, 4–12, 14–24, and 34–48 are unpatentable over the stated grounds; claims 3 and 13 were not shown unpatentable, and claims 25–33 and 49 were disclaimed.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “On February 8, 2017, Patent Owner informed the Board that it had “disclaimed claims 25–33 and 49” of the ’002 patent, thereby “rendering the institution of claims 25–33 and 49 in the subject inter partes review proceeding moot.” Paper 18, 1; Ex. 2005 (disclaimer of claims 25–33 and 49 pursuant to 37 C.F.R. § 1.321(a)).” slip op. at 2

  • BurdenMixed

    “2. Analysis To anticipate a claim a “prior art reference must disclose each and every feature of the claimed invention, either explicitly or inherently.” Eli Lilly & Co. v. Zenith Goldline Pharm., 471 F.3d 1369, 1375–76 (Fed. Cir. 2006). An inherent disclosure may be found when an asserted prior art reference “necessarily” includes the unstated limitation. Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002).” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “Upon review of Petitioner’s arguments and supporting evidence, we are persuaded that Petitioner has identified where each limitation of independent claim 1 is disclosed in Huang. Claims 11, 34, and 40 contain limitations similar to claim 1, Petitioner provides detailed arguments as to where each limitation of these claims is disclosed in Huang, and Patent Owner does not present any arguments for these claims separate from those 7 At oral argument, Patent Owner asserted that we should not consider Petitioner’s argument that the icons of Huang contain URL information because this argument was presented for the first time in Petitioner’s Reply. Tr. 32:19–35:5. Patent Owner did not file a motion to exclude this evidence, however, or request a sur-reply to address any allegedly new issues raised for the first time in Petitioner’s Reply. Id. at 34:18–23. Nor is it evident why Petitioner’s arguments are not appropriate rebuttal arguments addressing Patent Owner’s proposed construction of “pointer.” Accordingly, we decline to exclude Petitioner’s URL arguments and evidence.” slip op. at 15

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

    “be used in conjunction with the mobile interface agent, including “a computer, cable set top box, cellular phone, or other device.” Ex. 1001, 4:44–45. Patent Owner does not explain why the description of a “pointer” in one “context,” i.e., on a computer or PDA, represents a clear and deliberate attempt to define the term in all contexts, such that all pointers must be a “reference” to “a type of menu item” and be “accessible on a computer, PDA, or server.” See In re Paulsen, 30 F.3d at 1480 (noting that an inventor is “free to define the specific terms used to describe his or her invention,” but “this must be done with reasonable clarity, deliberateness, and precision”). The broadest definition of the term “pointer” in the ’002 patent is “a link/shortcut to an item.” Ex. 1001, 10:8–10 (“As discussed above, a pointer is a link/shortcut to an item such as . . . .”); Dec. on Inst. 10. This definition is consistent with the description of “pointers” in the ’002 patent written description and claims. Ex. 1001, 20:4–6 (“wherein the pointers provide links to access the corresponding user specific resources and information.”). Accordingly, we construe “pointer” to mean “a link or shortcut to an item.”” slip op. at 9

  Patent outcomesUS 6,546,002 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,546,002
• Aevoe Corp. v. Racing Optics, Inc.Institution denied
  PTAB · Nov 7, 2016 · IPR2016-01165 · APJ Michelle N Ankenbrand · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, or 3–4, 7–9 were unpatentable on the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 42.4(a). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying that standard, and upon consideration of the information presented in the Petition and the Preliminary Response, we deny the Petition and do not institute an inter partes review.” slip op. at 2

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

    “A. Claim Construction The Board interprets claims in an unexpired patent using the “broadest reasonable construction in light of the specification of the patent.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The parties do not direct us to any claim terms that are in controversy. See Pet. 4; see generally Prelim. Resp. Upon review of the parties’ arguments and supporting evidence, we determine that no claim term requires construction for purposes of this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “[I]nherency may supply a missing claim limitation in an obviousness analysis.” See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014). To establish an inherent disclosure, a party must show that the limitation at issue is “necessarily present” or “the natural result of the combination of elements explicitly disclosed by the prior art.” Id. at 1195–96 (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d at 581 (citations omitted). Petitioner contends that Wilson “teaches the same structural slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “When an anticipatory reference “is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence.” Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). Here, Petitioner does not show sufficiently that the structure and configuration of Kitaguchi’s cover sheet necessarily, or inherently, traps air. Although Petitioner refers to the use of an adhesive along the outer periphery of Kitaguchi’s cover sheet as creating a seal that traps air between the cover sheet and the display, that argument is unsupported by sufficient objective evidence. Indeed, Petitioner directs us only to Dr. Cairns’s bare opinion testimony that the “continuous adhesive layer [illustrated in Kitaguchi’s Figure 1 embodiment] would act as a seal and trap air between the film and the display surface in the same way described in the ’545 Patent.” Ex. 1005 ¶ 20. “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) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); see Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (a lack of objective support for expert opinion “may render the testimony of little probative value in a validity determination”). Accordingly, based on the record before us, Petitioner is not reasonably likely to prevail in showing that claims 1 and 5 are anticipated by Kitaguchi.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,128,545
• Clark Filter, Inc. v. Camfil USA, Inc., D/B/A Camfil Air Pollution ControlInstitution denied
  PTAB · Oct 3, 2016 · IPR2016-00982 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing any of the challenged claims are unpatentable. Accordingly, we do not institute inter partes review.” slip op. at 2

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

    “The parties agree that the term “central” requires an aperture that is “in, at, or near the center” or “of, at, or forming the center” of a structural element. Pet. 12 (citing Ex. 1017, 1) (Petitioner asserting the definition “in, at, or near the center” applies); Prelim. Resp. 17 (citing Ex. 1017, 1) (Patent Owner asserting a hybrid definition, “of, at, or forming the center,” applies). Petitioner asserts “central” applies to “any portion of the overall claimed structure (e.g., filter flange assembly, filter element, or other structure),” and not just the filter flange assembly. Pet. 12. Patent Owner counters that the term “central aperture” “cannot be divorced from the surrounding claim language giving it context,” which indicates that the “central aperture” is at the center of the “filter flange assembly,” and “not some random ‘other structure,’ as Petitioner argues.” Prelim. Resp. 17 (citing Ex. 1017, 1). In this case, the claims themselves identify the “rectangular filter flange assembly” as the structural element having a central aperture. Thus, we agree with Patent Owner that the term “central aperture” applies to the rectangular filter flange assembly and not “any portion of the overall claim structure,” as asserted by Petitioner. This understanding is consistent with the written description of the ’037 patent, which describes and depicts an” slip op. at 8

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

    “We have construed “central aperture” as “an aperture that is in, at, or near the center of the rectangular filter flange assembly.” Upon review of the parties’ arguments and supporting testimony, we agree with Patent Owner that Petitioner and Mr. Haynam have not explained sufficiently why one of ordinary skill in the art, upon reviewing the ’037 patent as a whole, would conclude that any of openings 25 and 26 of Nostrand constitute a “central aperture.” First, as is evident from Figures 5 and 8 of Nostrand, openings 25 and 26 are not “in” or “at” the center of outlet plate 22 or spider plate 9, respectively. Indeed, spider plate 9 and post 10 physically prevent an aperture from being “in” or “at” the center of either structure. Second, Petitioner has not provided evidence or argument that persuasively demonstrates that one of ordinary skill in the art would consider one or more of Nostrand’s openings to be “near” the center of a rectangular filter flange assembly. Finally, Mr. Haynam does not explain sufficiently why one of ordinary skill in the art would consider four openings surrounding a central location in a solid plate (i.e., openings 26 in spider plate 9) to collectively constitute a “central aperture.” See Ex. 1002 ¶ 58; see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (noting that the “[l]ack of factual support” for an expert opinion “may render the testimony of little probative value”). As we find that Petitioner has not demonstrated that every element of independent claim 1 is disclosed in Nostrand, we need not address Petitioner’s arguments relating to claim 4. Based on the foregoing, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that Nostrand anticipates claims 1–5 of the ’037 patent.” slip op. at 13

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

    “art could rearrange the orientation of Nostrand’s primary filter element into a 4-3-4 or 2-1-2 array, Pet. 58; Ex. 1002 ¶ 136, Petitioner supports this argument by citation to MPEP 2144.04 and, in particular, MPEP 2144.04 § VI, entitled “Reversal, Duplication, or Rearrangement of Parts.” In this section of the MPEP, however, it is noted: The mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant’s specification, to make the necessary changes in the reference device. MPEP 2144.04 § VI (citing Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984)); see also Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008) (noting that “some kind of motivation must be shown” to explain why a person of ordinary skill in the art would have modified a prior art reference to achieve the patented method). Here, Petitioner provides no reasoned explanation as to why one of skill in the art would modify the array of Nostrand to a 4-3-4 or 2-1-2 configuration. See Ex. 1002 ¶ 136 (Mr. Haynam testifying that other configuration are available, but not explaining why these configurations would be chosen in place of the configuration depicted in Nostrand).” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,673,037
• Avx Corporation v. Greatbatch, Ltd.All claims unpatentable
  PTAB · Sep 20, 2016 · IPR2015-00908 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–9, 11–22, 24–34, and 36–38 are unpatentable, and the motion to amend is denied, because Stevenson anticipates the claims.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends that the relevant field is more specific and narrower than filter capacitors and requires knowledge of electromagnetic interference (EMI) filtering and implantable medical devices (IMDs) and that Petitioner’s declarant lacks such knowledge. Prelim. Resp. 27–30. On the present record, we determine a person of ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, chemistry, and/or physics, along with several years of relevant applied research or industry work experience in the field of filter capacitors, including electromagnetic interference (EMI) filtering and implantable medical devices (IMDs). Our conclusion is supported by Petitioner’s asserted prior art references, which disclose filter capacitors for electromagnetic interference (EMI) filtering and implantable medical devices (IMDs). Ex. 1002, 1:17–24; Ex. 1003, 1:9–14; Ex. 1004, 1:12–21. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect the level of skill in the art). On the present record and based upon the stated qualifications of Petitioner’s declarant, Ex. 1007 ¶¶ 2–5; Ex. 1008, we consider Petitioner’s declarant qualified to opine from the viewpoint of a person of ordinary skill in the art regarding Petitioner’s asserted grounds of unpatentability.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Wolf’s ground plates 132, 134, and 136 were known alternatives for providing conductive coupling between the interior and peripheral edge of a component in a capacitor assembly. Ex. 1007 ¶ 47; Ex. 1003, 9:17–21, 5:62–6:11, 12:40–61, Figs. 20 and 21; Ex. 1004, 3:64–4:3, 6:66–7:10, 8:38– 42, Fig. 5. We credit the unrebutted testimony of Mr. Galvagni that substituting Wolf’s ground plates for the ground plane of Brendel provides the predictable result of creating a path to ground for the filtering of unwanted signals from the terminal pin of a feedthrough assembly. Ex. 1007 ¶ 48; Ex. 1004, 4:48–56, 7:11–16, 8:28–32; KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976))). A person of ordinary skill in the art would have been motivated to substitute Wolf’s ground plates for Brendel’s ground plane to avoid manufacturing complexity. Ex. 1007 ¶ 46. More particularly, the unrebutted testimony of Mr. Galvagni establishes that ground plates having a flat profile, as disclosed in Wolf, are more readily manufactured than a ground plane that needs to be sputtered or plated into a small hole for receiving a ground pin, as disclosed in Brendel. Ex. 1007 ¶ 49; compare Ex. 1003, 7:22–32, 12:40–61, Fig. 21 (showing ground plane 430 that has been sputtered into counter-bored hole for receiving ground pin), with Ex. 1004, 9:53–65, 10:19–24, 10:35–40 (describing steps S104 and S114 for forming flat conductive layers). Thus, the evidence establishes that a person of ordinary skill in the art “would have seen a benefit” to making the substitution proposed by Petitioner. KSR, 550 U.S. at 424.” slip op. at 24

  • BurdenDecided for petitioner

    “Based on the foregoing, we find that Petitioner has shown by a preponderance of the evidence that Stevenson discloses every element of the challenged claims, arranged as set forth in the claims. See Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (“Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.”). Patent Owner does not present any persuasive argument or objective evidence to refute Petitioner’s showing that claims 1–9, 11–22, 24–34, and 36–38 of the ’076 patent are anticipated by Stevenson. See Paper 13. 3 The identification of this layer by the identifier 282 in Figure 71 appears to be a typographical error. Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–9, 11–22, 24–34, and 36–38 of the ’076 patent are anticipated by Stevenson.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the foregoing, we find that Petitioner has shown by a preponderance of the evidence that Stevenson discloses every element of the challenged claims, arranged as set forth in the claims. See Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (“Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.”). Patent Owner does not present any persuasive argument or objective evidence to refute Petitioner’s showing that claims 1–9, 11–22, 24–34, and 36–38 of the ’076 patent are anticipated by Stevenson. See Paper 13. 3 The identification of this layer by the identifier 282 in Figure 71 appears to be a typographical error. Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–9, 11–22, 24–34, and 36–38 of the ’076 patent are anticipated by Stevenson.” slip op. at 16

  Patent outcomesUS 7,035,076 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,035,076
• Lifewave, Inc. v. Edward BlendermannInstitution denied
  PTAB · Sep 7, 2016 · IPR2016-00571 · APJ Sheridan K Snedden · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 2, 9, 12, 14, 16, or 18 unpatentable.

  RulingsInstitution decision

  • 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 established a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’590 patent. See 35 U.S.C. § 314(a). We, therefore, deny the Petition for an inter partes review.” slip op. at 2

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

    “improving muscle strength and endurance during physical activity by wearing a nutrient holding device.” We recognize that, in general, “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). “But, . . . preamble language will limit the claim if it recites not merely a context in which the invention may be used, but the essence of the invention without which performance of the recited steps is nothing but an academic exercise.” Id. (citing Griffin v. Bertina, 285 F.3d 1029, 1033 (Fed. Cir. 2002)).” slip op. at 5

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

    “2. “the thickness of said holding device may be up to 3 mm” Petitioner contends that the phrase “thickness of said holding device may be up to 3 mm” recited in claim 2 is reasonably construed to mean “the material of the holding device separating the nutrients from the user’s skin must be 3 mm or less.” Pet. 18–19. We disagree. The claims recite both a holding device and a covering for said holding device, such that “the nutrient material is only separated from the body by the covering of said holding device.” The thickness element of claim 2 expressly limits the holding device, not the covering that separates the body and the nutrients.” slip op. at 7

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

    “We are not persuaded. Dr. Shealy’s opinion is not supported by objective evidence. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). The record otherwise lacks sufficient evidence to support Dr. Shealy’s conclusion that wearing Pinter’s device for promoting energy flow would inherently result in a method of improving muscle strength and endurance during physical activity. See Motorola, Inc. v. Interdigital Technology Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983) (reversing trial court’s judgment of invalidity because expert’s testimony of inherent anticipation, unsupported by the evidentiary record, cannot serve as a basis for a finding of anticipation). In view of the above, we find that Petitioner has failed to establish that Pinter discloses a “method of improving muscle strength and endurance during physical activity” as required by claims 1, 2, 9, 12, 14, 16, and 18.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,617,590
• Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-01818 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–11 of the ’730 patent and claims 1–15 of the ’988 patent are unpatentable as obvious over the Advisory Committee Art, with claims 2 and 10 of the ’988 patent also obvious over that …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In view of the claims at issue here, we are not persuaded that the level of ordinary skill in the art is limited to the level of skill or interest of a pharmacist that dispenses FDA-approved drugs, such as one that “sits behind the counter at Walgreens.” Id. at 31:1–5. We adopt the level of ordinary skill in the art as described by Petitioner and its witness, Dr. Valuck, because it is consistent with the subject matter before us, the ’730 patent, and with prior art of record, such as Talk About Sleep (Ex.1033), Honigfeld (Ex. 1034), Elsayed (Ex. 1035), and Lilly (Ex. 1036). See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 12

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

    “Upon considering all of the evidence before us, we are not persuaded that the plain and ordinary meaning of “periodic” in the context of the ’730 patent limits “periodic reports” to those generated only at regular intervals, as Patent Owner contends. PO Resp. 28. Rather, the term includes reports generated at regular intervals and reports generated “now and again” or “intermittently,” without any particular regularity in time between events. Thus, we construe “periodic reports” as recited in the challenged claims to refer to reports that are generated at regular intervals or intermittently, i.e., now and again, including those not generated at regular intervals.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “For the reasons given above, we find Petitioner’s evidence sufficient to prove by a preponderance that Exhibits 1004–1006 were publicly accessible on the FDA’s website not later than July 1, 2001.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “of the ’730 patent (and claims 1, 4–9, and 12–15 of the ’988 patent) would have been obvious over the ACA (Exhibits 1003–1006), because the ACA is a public disclosure of the proposed risk management system for Xyrem—the same system covered by the ’730 and ’988 patents. Pet. 18–38; Reply 1. Petitioner relies on the Declaration testimony of Dr. Valuck in support of its argument that a POSA would have had “ample” reason to combine the ACA documents because the documents were prepared for the Advisory Committee Meeting and “relate to the same restricted distribution program, which the meeting was convened to discuss.” Pet. 19 (citing Ex. 1007 ¶ 51). Petitioner asserts, in particular, the Preliminary Clinical Safety Review (Ex. 1004), Briefing Booklet (Ex. 1005), and Xyrem Video and Transcript (Ex. 1006) were “all distributed together for a single meeting before the FDA seeking approval for prescription Xyrem®,” and the FDA Advisory Committee Transcript and Slides (Ex. 1003) was “a public transcript of and presentation given at the meeting itself.” Id. at 19 (citing Ex. 1007 ¶ 51) (emphasis added). In addition, according to Petitioner, all four ACA documents “clearly relate to the same restricted distribution program, which the meeting was convened to discuss,” and are “all linked from a single [web] page.” Id. Patent Owner does not address directly the cited evidence in the context of motivation to combine the ACA. Patent Owner challenges the motivation of a POSA to confirm that a patient has read the Xyrem educational material prior to shipping the drug product to the patient (step 1.4), an issue we address below. PO Resp. 37, 49–59. We agree with Petitioner’s analysis and determine that a POSA would have had ample motivation to combine the ACA documents, which were prepared at the same time, relate to the same drug product and the same restricted drug distribution system, were discussed together at the same Xyrem Advisory Committee Meeting, and were made available via file links from a single FDA web page.” slip op. at 39

  Patent outcomesUS 7,668,730 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,668,730
• Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-01814 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–11 of the ’730 patent and claims 1–15 of the ’988 patent are unpatentable as obvious over the Advisory Committee Art, with claims 2 and 10 of the ’988 patent also obvious over that …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We begin with the premise that a hypothetical POSA is presumed to be aware of the pertinent art in the field of endeavor at the time of the invention, and to be a person of ordinary creativity. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407-09, 420-21 (2007). As the title, field of the invention, and background discussion in the ’730 patent make clear, the relevant field of endeavor is the distribution of sensitive prescription drugs prone to abuse or causing serious adverse reactions. Ex. 1001, Title (54), 1:4–26. Petitioner provides substantial evidence of the state of the art of such sensitive drug distribution systems as of December 17, 2001, one year before the ’730 patent priority date. Pet. 3–6: Ex. 1001, filing date (22). Xyrem is a sensitive prescription drug prone to potential abuse or diversion. Ex. 1001, 3:14–19. Prior to Xyrem, sensitive prescription drugs such as Accutane, Clozaril, and thalidomide were known to use controlled distribution systems to protect against potential side effects, abuse, and diversion. Pet. 4–5 (citing Ex. 1007 ¶¶ 21–24). Accutane, a prescription drug from the 1980s that could cause birth defects, was distributed under a program requiring i) informed consent forms completed by patient and physician, ii) patient counseling to avoid pregnancy and use of birth control, and iii) a negative blood serum test for pregnancy prior to beginning treatment. Id. at 4 (citing Ex. 1007 ¶ 21). Distribution of Clozaril, indicated for treating schizophrenia but also capable of causing a fatal blood disorder, was controlled using a national registry system and computerized database for identifying patients and physicians. Id. at 4–5 (citing Ex. 1007 ¶ 22). In 1999, the manufacturers of thalidomide developed a system that combined the computerized registry of Clozaril with the controls imposed by the Accutane distribution system. Id. at 5 (citing Ex. 1007 ¶ 24). Based on such prior art activity, we find that by December 2002 a person of ordinary skill would have known the active ingredient in Xyrem – sodium oxybate – was a sensitive drug susceptible to abuse and diversion, and such person would have known of several available techniques to control and mitigate the risks associated with Xyrem’s distribution. Id. at 3 (citing Ex. 1007 ¶ 20); Ex. 1007 ¶¶ 21–27, 47.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “1. “exclusive central pharmacy” and “exclusive computer database” In our Decision on Institution, we construed the term “exclusive central pharmacy” to mean “single or sole pharmacy,” and the term “exclusive computer database” to mean “single or sole computer database.” Dec. on Inst. 21. Our constructions are consistent with those proposed by Petitioner, and Patent Owner takes no position regarding Petitioner’s arguments in this regard. Pet. 10; PO Resp. 25 n.8. Based on our review of the complete record, we do not perceive any reason or evidence that now compels any deviation from these interpretations.” slip op. at 14

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

    “We are not persuaded by Patent Owner’s arguments or the testimony of Dr. DiPiro and Dr. Bergeron in support thereof. Patent Owner does not explain adequately why generating a report for a particular purpose or “ad hoc” precludes it from being a report generated periodically. See, e.g., PO Resp. 28 (citing Ex. 2046 ¶ 33 (testimony by Dr. DiPiro stating that “POSA would not consider ‘ad hoc’ reports to be ‘periodic’ because they are not generated with any regular frequency.”); Ex. 2047 ¶ 31 (testimony by Dr. Bergeron stating same). As noted above, the specification does not limit “periodic reports” to those generated with “regular frequency.” Moreover, to the extent that Figure 4B in the ’730 patent illustrates generating “ad hoc” reports, as Patent Owner contends, such disclosure supports a construction that the recited “periodic reports” include such “ad hoc” reports. Ex. 1001, 6:9–7:2; Reply 13–14 (citing Ex. 1047, 6; Ex.1048, 9 (ll. 12–19), Fig. 4 (436)). Patent Owner also points us to a Merriam-Webster’s Collegiate Dictionary definition of the term “periodic,” which defines the term as “occurring or recurring at regular intervals,” or something that is “repeated.” PO Resp. 28 (citing Ex. 2043, 3). Petitioner points us to several other dictionary definitions, which define “periodic” as also including “intermittent.” Reply 15 (citing Ex. 1049, 3 (defining “periodic” as including “occurring repeatedly from time to time”); Ex. 1050, 3 (defining “periodic” as including “[t]aking place now and then” or “INTERMITTENT”); Ex. 1051, 3 (defining “periodic” as including “[h]appening or appearing now and then” or “intermittent, occasional”). Upon considering all of the evidence before us, we are not persuaded that the plain and ordinary meaning of “periodic” in the context of the ’730 patent limits “periodic reports” to those generated only at regular intervals, as Patent Owner contends. PO Resp. 28. Rather, the term includes reports generated at regular intervals and reports generated “now and again” or “intermittently,” without any particular regularity in time between events. Thus, we construe “periodic reports” as recited in the challenged claims to refer to reports that are generated at regular intervals or intermittently, i.e., now and again, including those not generated at regular intervals.” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “For the reasons given above, we find Petitioner’s evidence sufficient to prove by a preponderance that Exhibits 1004–1006 were publicly accessible on the FDA’s website not later than July 1, 2001.” slip op. at 35

  Patent outcomesUS 8,457,988 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,457,988

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.